Karnataka High Court
Reebok India Company (A Company ... vs Gomzi Active Also Styling Itself As ... on 22 June, 2006
Equivalent citations: ILR2006KAR3961, 2007(34)PTC164(KARN), 2006 (5) AIR KAR R 105
Author: B.S. Patil
Bench: B.S. Patil
JUDGMENT B.S. Patil, J.
Page 0783
1. The controversy involved in this appeal pertains to the use of the trade slogan "I AM WHAT I AM". The Appellants herein are aggrieved by the grant of temporary injunction restraining them from using the Logo "I AM WHAT I AM" along with their trade mark.
2. The Appellants herein are defendants in the suit, O.S.No. 16861/2005 filed by the Respondent/Plaintiff seeking permanent injunction against them restraining them from using on their products the logo/trade slogan "I AM WHAT I AM" and for payment of damages in a sum of Rs. 15,000/-and for rendition of accounts.
3. It is the case of the plaintiff that the trade slogan "I AM WHAT I AM" is its distinctive style and design atleast since 1998, used on its Garments which Page 0784 is alleged to have been stolen/pirated by the defendants, thus infringing their proprietary rights including intellectual property. The Plaintiff further asserted that they were the first to use the logo "I AM WHAT I AM" and therefore the plaintiff alone can claim rights over the said slogan as a Trade Mark.
4. The defendants contended that:
(1) As per Section 2(1)(w) of the Trade Marks Act, 1999, the expression, "Registered Trade Mark" means a Trade Mark which is actually on the register of Trade Marks maintained by the Government of India and which is in force. Admittedly, the slogan, "I AM WHAT I AM" not being a registered Trade Mark, the plaintiff was not entitled for any relief. They further contended that the plaintiff has filed applications to register the logo "I AM WHAT I AM" only on 18th May 2005 under the Trade Marks Act, 1999 which was still to be examined. Therefore, no infringement action can be initiated on the basis of the alleged violation of an unregistered trade mark.
(2) They further contended that no documents were produced to show the user of the logo "I AM WHAT I AM" since the year 1998. That the slogan "I AM WHAT I AM" was only a common generic English phrase and the proprietor of such slogan, without any design or device has to establish that by extensive and continuous use, the slogan had become distinctive of the products of the plaintiff, so that the phrase having lost its primary meaning acquired a secondary meaning in the market in relation to such products manufactured by the plaintiff, acquiring reputation and goodwill. It is their further case that no extensive, commercial efforts were put by the plaintiffs to develop the phrase "I AM WHAT I AM", so as to acquire a secondary meaning, The same is neither pleaded nor evidenced by production of any materials, is their contention. On the contrary, the defendants have resorted to extensive use of the trade slogan, "I AM WHAT I AM" and have spent crores of rupees on thee advertisement and have already filed application for registration of the trade mark in Japan, Canada, USA, China during the early part of 2005 and the plaintiff, with a malafide intention has come forward to claim proprietary rights over the trade slogan is their assertion in the written statement.
5. The Court below, upon consideration of the pleadings and the documents produced, has held that the trade mark of the plaintiff, under which the plaintiff carried on his business was "GOMZI" and not "I AM WHAT I AM". It is further recorded that the plaintiff did not file any application to get the slogan "I AM WHAT I AM" registered as a trade mark until May 2005. The court has primafacie found that "I AM WHAT I AM" cannot be construed as a logo or trade mark of the plaintiff.
6. Having held that as per Sub-section 1 of Section 27 of the Trade Marks Act, 1999 no person shall be entitled to institute any proceeding to prevent or to recover damages for the infringement of an unregistered trade mark and that the plaintiff not having got the slogan "I AM WHAT I AM" registered as a trade mark, could not claim injunctive relief, the court has, however, distinguished the claim for prima-facie title from that of a prima facie Page 0785 case for the purpose of seeking injunctive reliefs. It has proceeded to record a finding that the plaintiff has by producing "JAM" (Just Another Magazine) dated 29.06.2002, 14.07.2002 and 29.07.2002, wherein advertisements concerning high fashions GOMZI apparels were appearing, has shown to have used and published the slogan "I AM WHAT I AM" in its advertisement long back during the year 2002. Whereas, the use of the trade slogan "I AM WHAT I AM" by the defendants dated back to September 2004. Therefore, as the plaintiff adopted and started the use of the slogan "I AM WHAT I AM" long prior to the use by the defendants, under the common law, he acquired reputation and goodwill of the consumers who have associated themselves with the said slogan of the plaintiff. Hence, the plaintiff is held to be entitled for protecting his rights for exclusive use of the slogan "I AM WHAT I AM". The slogan "I AM WHAT I AM" now sought to be used by the defendants, the trial court holds, being deceptively similar was likely to cause confusion in the minds of the general public. The plaintiff is therefore held entitled for temporary injunction. Aggrieved by the said order the present appeal is filed by the defendants.
7. Learned Counsel appearing for the appellants-defendants vehemently contends that the plaintiff-respondent has not whispered anything regarding the goodwill acquired by the use of the trade slogan "I AM WHAT I AM" in the plaint. If the plaintiff wanted to rely on the alleged goodwill, he ought to have shown the nature of investment made for acquiring such a goodwill by producing sales figures, advertisements and other details. The essential pre-requisite is that over a period of time the logo or the trade slogan had developed a secondary meaning, from which goodwill is derived. The trial court has based its conclusion on the alleged passing off action in the absence of any plea to that effect. For applying passing off principle, the principles referred to in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (for short 'Cadila Health Case') are applicable and those principles are not forthcoming from the facts of the present case is his argument. That, there was absolutely no material for the Court below to hold that the plaintiff was the founder of the slogan "I AM WHAT I AM" and that the trade slogan acquired a distinctive character as a result of its usage by the plaintiff is what is canvassed. Counsel for the appellant/defendants has placed reliance on the decisions reported in 2005 (3) CMLR Page 12 by drawing analogy to a similar trade slogan "Have a Break, Have a Kit Kat" which fell for consideration in that case. The Counsel thus supports the contention stating that the slogan "I AM WHAT I AM" does not fall in the category of Intellectual Property. He has placed reliance on the judgment of the Apex Court reported in A.I.R. 1965 S.C. 1980 to point out the difference between infringement and passing off. Reliance is also placed on the decision in (2002) 5 S.C.C. 573 to emphasise that possibility of deception has to be seen. He submits that the judgment of the Apex Court in Hardy v. Enderson is wrongly applied to the facts of the present case.
8. Per contra the learned Counsel for the respondent supports the findings recorded by the court below contending that the definition of the expression Page 0786 "trade mark" includes even a set of words. He draws the attention of the Court to the following reported decisions:
i) Laxmikant V. Patel v. Chetanbhai Shah and Anr. ;
ii) Satyam Infoway Ltd. v. Sifynet Solutions (P) Ltd. ;
iii) Milment of the Industries and Ors. v. Allergan Inc. A.I.R 2004 S.C.W. 3174,
iv) Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. ,
v) Soore Detergents v. D. Mohanraj .
He submits that the party who was first in the use of the trade slogan in the world market cannot be denied injunction. In this regard he relies on the judgment in A.I.R. 2004 S.C.W. 3174. Reliance is also placed on the decision in the case to contend that in a passing off action the plaintiff need not prove actual damage but likelihood of damage is sufficient.
8 (a). The respondent has filed Cross Objection challenging the findings recorded by the court below in so far as it relates to the findings that the trade slogan "I AM WHAT I AM" was not a trade mark.
9. Upon hearing the learned Counsel for the parties and on perusal of the order passed by the court below, the point that arises for consideration is as to:
Whether the findings recorded and the order passed granting temporary injunction by the court below suffers from illegality or perversity so as to call for interference by this Court in this appeal.
10. The essence of the controversy as is discernable from the respective stand taken by the parties adverted to herein above surrounds on the question whether the trade slogan "I AM WHAT I AM" has acquired a distinctive character as a result of its usage by the plaintiff in relation to the goods manufactured and marketed by the plaintiff. Whether the average consumer who is reasonably well informed and reasonably observant and circumspect is likely to be misled and deceived to perceive the product of the defendants as originating from its source by the slogan used or the trade slogan with which it is associated. In other words, whether the trade slogan "I AM WHAT I AM" has come to identify the product of the plaintiff generally so that any piracy or misuse of the trade slogan "I AM WHAT I AM" by any others including the defendants herein would mislead the public.
11. It has to be established by the person claiming the benefit of distinctive usage that over a period of time the slogan has developed a secondary meaning and a goodwill. Therefore, it is essential to see what are the pleadings in this regard by the plaintiff. The entire case of the plaintiff, as sought to be projected, revolves on the passing off action. The only pleading in this regard in the plaint can be found at paragraph 'H'. It is stated therein that 'through its various outlets the defendants were misusing the trade mark of the plaintiff namely "I AM WHAT I AM" in an illegal manner, in a grand deceptive manner so as to mislead the users in believing that it is the product of "GOMZEE" and thereby it is causing immense loss to the plaintiff and is making unlawful gains for itself. The action of the defendants is deliberate and is intended to promote its sales at the cost of the plaintiff.', Page 0787
12. The plaintiff has relied upon the advertisements in JAM (Just Another Magazine) stated to be a magazine wherein the trade slogan "I AM WHAT I AM" is mentioned above the trade mark "GOMZEE - ACTIVE". Similar advertisement is found for the year 2002. The extracts of the xerox copy of the said magazine is made available. These extracts are of the year 2002. Though the plaintiff claims that he has been using this trade slogan w.e.f. 1998 no material in this regard is produced in older to show that on account of continuous usage of the phrase "I AM WHAT I AM" as a trade slogan, it has acquired a distinctive character of a trade mark as an element of slogan, so that the relevant consumers construe the trade slogan and identify the plaintiffs product 'GOMZEE' with the trade slogan. In the decision rendered by the Supreme Court in the case of Laxmikant V. Patel v. Chetanbhai Shah and Anr. reported in 2002 (3) S.C.C. 65, the Apex Court white laying down the principle for grant of injunction in the case of passing off action held that the plaintiff, in such a case must prove a prima facie case and balance of convenience in his favour that he was suffering an irreparable injury. An action for passing off, the Apex Court held, will lie wherever the defendant company's name or its intended name is calculated to deceive and to divert business from the plaintiff or to occasion a confusion between the two business, as normally the name of a business would have attached to it a goodwill which the Courts will protect. The Apex Court referring to the decision in the case of Oertli v. Bowman 1957 RPC 388 (CA) has observed that it was essential to the success of any claim to passing-off based on the use of a given mark or get-up that the plaintiff should be able to show that the disputed mark or get-up has become, by user in the country, distinctive of the plaintiffs goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get up will be understood by the trader and the public in that country as meaning that the goods an. the plaintiff's goods'. In the said case, as the facts would reveal MUKTAJIVANA COLOUR LAB was established by the plaintiff who was rendering quality services to the customers and had earned a reputation and had developed a goodwill associated with the said trade name. The defendants started a Colour Lab by the very same trade name. On an action brought by the plaintiff, it was held by the Apex Court that plaintiff was entitled to restrain the defendant from using directly or indirectly the word 'MUKTAJIVANA' in their trade name associated with the business and services of Colour Lab and Studio. Reliance placed by the learned Counsel for the plaintiff-respondent herein on this decision in support of his contention that the phrase "I AM WHAT I AM" is associated with the trade name of the plaintiffs GOMZEE and has become his trade mark, whereunder it has acquired goodwill by its continuous usage does not find support from the facts and the law laid down in the aforementioned decision. On the other hand, as rightly submitted by the learned Counsel for the defendants (appellants herein) the trade slogan "I AM WHAT I AM" being more in the nature of a generic phrase has not been shown to have acquired any distinctive character vis-a-vis the goods produced by the plaintiff.
13. Learned Counsel for the plaintiff has also placed reliance on the judgment rendered by the Apex Court in the case of Milment of the Industries and Ors. v. Allergan INC. reported in 2004 AIR SCW 3174 to contend that in a passing off Page 0788 action the principle that a party who was first in the world market cannot be denied injunction has to be kept in mind. In the said case an Indian Pharmaceutical Company was using the mark on its pharmaceutical products 'OCUFLOX' used as a medicinal preparation manufactured and marketed. Respondents were the first users of the mark 'OCUFLOX' and they marketed the products in several countries in Europe, Australia and South Africa and had acquired a distinctive feature worldwide. It is held that it would lead to an anomalous situation if an identical mark in respect of similar drug is allowed to be sold in the market. Placing reliance on the ratio laid down in the case of Cadila Health Care Limited v. Cadila Pharmaceuticals Limited , the Apex Court held that the marks in question were the same and were in respect of pharmaceutical products. The Courts below had found on facts that the respondent's product was advertised before the appellants entered the field. In the circumstances, observing that the prior user was a matter required to be examined on evidence, the Court felt it appropriate to continue the injunction as the same was operating during the past several years with a direction to expedite the disposal of the case.
14. The distinguishing feature here, in this case is, as regards the absence of necessary pleadings by the plaintiff regarding its continuous usage for the past several years and the absence of proof of the bare assertion that it had been using the slogan since 1998. Further, how REEBOK products could be mistook for GOMZI only because the general trade slogan "I AM WHAT I AM," is not shown. Although it has produced extracts from three magazine of the year 2002 with the phrase "I AM WHAT I AM" written above, they are not in themselves sufficient to record a prima facie finding that there has been a continuous usage of the trade slogan which has resulted in the plaintiff deriving a distinctive character in the trade slogan so as to identify its product in the market by the said slogan, as the registered trade marks in both the cases are different. This is a matter of evidence. The Trial Court was in error in not noticing the absence of necessary pleadings and the essential supporting documents to establish a prima facie case in this regard by the plaintiff. There is nothing to show as to how the plaintiff coined this trade slogan and how it used as a business slogan continuously and consistently.
15. A party would be entitled to relief under Order 39 Rules 1 and 2 provided it satisfies the Court that it has a prima facie case; that balance of convenience is in his favour and that irreparable loss and injury would be caused to him if interim relief is not granted. The aforesaid three phrases, as emphasised time and again, are 'not rhetoric phrases but elastic words to meet a wide range of situation in given set of facts and circumstances'. The burden is always on the plaintiff/applicant to satisfy the Court that a prima facie case exists in his favour. The court must further satisfy itself that non-interference by the Court would result in irreparable injury to a party seeking relief. Irreparable injury means that the injury must be a material one, one that the Court cannot adequately compensate by way of damages. The Court is expected to exercise sound judicial discretion to find out the amount of substantial mischief or injury which is likely to be caused to one party if injunction is refused and compare it with mischief or injury that is likely to be caused to the other party if the injunction is granted. Grant of temporary Page 0789 injunction entails serious consequences on the party against whom it is issued. Therefore, it cannot be lightly ordered unless the requisite conditions and circumstances are established by the person who seeks protection.
16. In the facts of the present case, it cannot also be stated, at this stage, that the consumers of the plaintiff are misled in identifying its products and they are deceived by the alleged piracy and the alleged use of the trade slogan by the REEBOK INDIA COMPANY. It is not in dispute that both the plaintiff and the defendants have a different trade name and a different and distinct registered trade mark. While the plaintiff is operating under the registered trade mark 'GOMZEE' the defendants have the registered trade mark 'REEBOK' with a sign. By the mere use of the common phrase and expression "I AM WHAT I AM" it cannot be said that a customer with reasonable prudence and circumspection would be misled to purchase the products manufactured by the defendants mistaking them for the products manufactured by the plaintiff. Whether there is, prima facie, any deception resulting in passing off and consequent loss or likelihood of damage to the plaintiff, is not forthcoming. The registered trade mark of both the parties are totally different. They can be easily distinguished. Whether the usage of the general phrase "I AM WHAT I AM" has resulted in any such confusion in the mind of the customer is also ultimately a matter to be established by leading evidence by the plaintiff. At this stage, there is no material to infer such a confusion in the mind of the customer and therefore the plaintiff is not entitled for protection by issue of a temporary injunction. Useful reference may be made to the judgments of the Apex Court in this regard reported hi the case of S.M. Dyechem Ltd. v. Cadbury (India) Ltd. . In Paragraph 47 referring to the differences between passing off and infringement, the Court observed thus,-
Here the point is in relation to relative strength of the parties on the question of passing off. As discussed under Point 5, the proof of resemblance or similarity in cases of passing off and infringement are different. In a passing off action additions, get up or trade-dress might be relevant to enable the defendant to escape. In infringement oases, such facts do not assume relevance. (See Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories Ltd. ; Ruston & Hornsby Ltd. v. The Zamindara Engineering Co. and Wander Ltd v. Antox India Put Ltd. (1990 Suppl SCC 727) In Para 49 referring to Halsburys on Trade Mark, the Court observed as under;
In the same tone, Halsbury (Trade Marks, 4th Edn, 1984 Vol. 48, para 187) says that in a passing off action the "degree of similarity of the name, mark or other features concerned is important but not necessarily decisive, so that an action for infringement of unregistered trade mark may succeed on the same fads where a passing off action fails or vice versa.
Dealing with the buyers ignorance and chances of being deceived it is observed as under:
As to scope of a buyer being deceived, in a passing off action, the following principles have to be borne in mind. Lord Romer, LJ has said in Payton & Co., v. Snelling Lampard & Co. (1900) 17 RFC 48 that it is Page 0790 a misconception to refer to the confusion that can be created upon an ignorant customer. The kind of customer that the Courts ought to think of in these cases is the customer - who knows the distinguishing characteristics of the plaintiff's goods, those characteristics which distinguish his goods from other goods in the market so far as relates to general characteristics. If he does not know that, he is not a customer whose views can properly be regarded by the Court (See the cases quoted in N.S. Thread & Co. v. Chadwick & Bros. AIR 1948 Madras 481, which was a passing off action). In Schweppes' case, Lord Halsbury said, if a person is so careless that he does not look and does not treat the label fairly but takes the bottle without sufficient consideration and without reading what is written very plainly indeed up the face of the label, you cannot say he is deceived.
17. The judgment of the Apex Court in the case of Kaviraj Pandit Durgadutt Sharma v. Navaratna Pharmaceuticals Laboratories reported in A.I.R. 1965 S.C. 98 which brings out the distinction between a passing off action and an infringement action supports the stand of the appellant, though it has to be stated here that the question involved in that case pertained to the Registered Mark namely "Navaratna Pharmaceutical Laboratories which was sought to be imitated by the defendant therein by using the mark "Navaratna Pharmacy".
18. As regards the cross objections filed, it need only to be stated that admittedly "I AM WHAT I AM" is not a registered Trade Mark of the plaintiff. It is in this background that the plaintiff has based its claim on 'Passing off'. It is the further case of the Plaintiff/Cross Objector that the matter is pending before the Registrar of Trade Marks, as regards the registration of the slogan as a 'Trade Mark'. It is unnecessary to go into the question whether the slogan 'I AM WHAT I AM' can be a 'Trade Mark'. Therefore the Cross Objections filed by the plaintiff deserves to be disposed off with these observations.
19. The judgments relied on by the counsel appearing for the respondent are not applicable to the facts of the case, as stated herein above. The conclusion reached by the court below is totally baseless and perverse. If wrong principles are applied by the trial court under Order 39 Rule 1 CPC while granting temporary injunction, the appellate court can certainty interfere in interlocutory proceedings. Here, the trial court has not applied the established principles regarding the passing off action while finding out the prima facie case. In the result and for the foregoing reasons, I pass the following:
ORDER
(i) The Appeal is allowed. The order under challenge is set aside.
(ii) Cross Objection filed is disposed off in the light of the observations made above.
(iii) The trial court is directed to dispose of the case early, preferably within 6 months, It is made clear that the observations made above in the course of the judgment are confined only to the disposal of the application seeking temporary injunction and shall not affect the disposal of the matter on merits by the trial court.