Delhi District Court
M/S Gunaji Moraotrao Thaokar & Co vs M/S Vinod Biri Company on 10 August, 2007
IN THE COURT OF SHRI NEERAJ KUMAR GUPTA
ADDL.DISTRICT JUDGE;DELHI
Suit No. 33/2007
M/s Gunaji Moraotrao Thaokar & Co. ......Plaintiff
Versus
M/s Vinod Biri Company ........Defendants
ORDER
This order shall dispose of an application U/o XXXIX Rules 1 & 2 CPC filed by the plaintiff whereby he sought the relief that during the pendency of the suit, the defendant, his servants, agents, dealers and representatives etc may be restrained from manufacturing, selling, offering for sale or otherwise dealing in 'Chewing Tobacco' under the trademark or label of 'SARWO SHRESTHA THAWKAR ZARDA' under the wrapper similar and/or deceptively identical to the trademark of the plaintiff and the artistic wrapper of the plaintiff.
2. The case of the plaintiff is that it is a registered partnership firm carrying on the business of Chewing Tobacco since the year 1962 and has been using the trademark "SARVOTRKRISTA NAGPURI ZARDA" and even the label has distinct and unique features.
3. It is also the case of the plaintiff that not only the trademark is duly registered under the Trade Merchandise Marks Act but even they are owners and registered proprietors of the artistic work in the aforesaid trademark being its first adopter, authors and originators under the provisions of Copyright Act.
4. It is also the case of the plaintiff that it had incurred lacs and lacs of rupees in giving wide publicity and in issuing advertisements for this trademark and for chewing tobacco the trademark of the plaintiff connotes the goods and merchandise of the plaintiffs origin and none else.
5. It is also the case of the plaintiff that the sales of the plaintiff runs into crores of rupees and because of continuous, extensive and exclusive use of the trademark for the last more than 45 yearsfor their products, the plaintiff had acquired unique goodwill and enviable reputation in the minds of the purchasing public and they identify the goods of the plaintiff to be of superior quality, and the purchasing public who is illiterate mostly takes the trademark of the plaintiff as a guarantee for excellent quality.
6. It is also the case of the plaintiff that the defendants have recently adopted and pirated the trademark 'SARVOSHRESTTHAWKAR ZARDA'with other artistic features, writing style, colour combination and arrangement of words similar to that of trademark/label registered in favour of the plaintiff in respect of Chewing Tobacco and the label of the defendant is a slavish copy of the plaintiffs' label.
7. It is also the case set up by the plaintiff that the totality of the labels as used by the defendants gives an impression of having connection with the plaintiffs and the defendant is already facing a criminal prosecution for selling pirated products of the plaintiffs and that the defendants being well aware of the trademark and the copyrights of the plaintiffs have deliberately and with dishonest and malafide intention adopted the plaintiffs registered trademark and cartons, only to trade upon the plaintiffs hard earned reputation and to earn profits in illegal manner and the sole intention of the defendant is to pass all their inferior and substandard products as the common public may not differentiate between the actual word used on the label and can be deceived easily by taking the products of the defendant believing the same to be product of the plaintiffs.
8. It is also the case of the plaintiff that though the defendant had also obtained a trademark with respect to the products but the plaintiff had filed a notice of opposition in this regard before the Registrar of Trademark which is still pending and that the defendant had started using the trademark only recently.
9. It is also the case of the plaintiff that because of the acts on the part of the defendants the plaintiff had not only suffered monetary loss but its image and reputation had also been damaged and pecuniary compensation cannot be adequate remedy.
10. It is also stated that in addition to the above, there is a great likelihood that the actual or potential customers will be further induced into:
a) Believing that the plaintiff endorses the defendants goods and the products offered by the defendants command the same level of quality and reliability that is synonymous with the goods of the plaintiff company .
b) Believing that the Defendants have some connection/association with the Plaintiff Company, in terms of a direct nexus or affiliation with plaintiffs trademark, or
c) Subscribing to the goods of the defendants or to dealing in some manner with the defendants under the trademark believing them to be licensed or authorized by the Plaintiff to do the said business.
11. So far as the cause of action is concerned,t he plaintiff has stated that it has a branch office at Delhi and plaintiff has sold its products at Delhi also. The opposition by the defendant to the averrments is basically on three counts:
1) First objection is that the defendant has got a trademark registered which fact is not disputed and as such, the defendant is legally permitted to sell its products under the trademark qua which he had sought registration.
2) Second objection is to the effect that as per the plaintiff's own case, the defendant do not reside or work at Delhi nor there is any averment that the defendant had sold the goods at Delhi and it is also not the case of the plaintiff that it has registered office at Delhi. It is stated that there is no branch office at Delhi and the plaintiff has no sale of goods at Delhi and the bills produced by the plaintiff i.e dated 01.11.2006, 15.12.2006 and 17.12.2006 if minutely examined, will reveal that they are not genuinine bills and have been fabricated by the plaintiffs just to create the cause of action at Delhi, as on the bills sale tax number, central excise number or license number do not find any mention.
3) Thirdly, it is stated that even otherwise if a comparative study of trademark/labels of the plaintiff is made, there is no similarity between the two. The defendant in his written statement had given a chart regarding comparative study and the same is as under:
COMPARATIVE STUDY Label/Trademark of Plaintiffs Label/Trademark of defendants
1. The name "Sarvotkrista Nagpuri The name Sarvoshrest Thakkar Zarda" appears Zarda" appears
2. The photo of a person with cap The photo of a different person watching towards right direction with cap watching towards left appears direction appears.
3. The navy blue colour on the label The navy blue colour on the in very much bright label in very much light
4. The manufacturer is M/s Gunaji The manufacturer is M/s Vinod Marotrao Thaokar & Co. Biri Company, Ram Mandir Ward, Bada Bazar, Bhandhara appears.
5. Reg. 263410 appears Reg. Trade Mark 1130821 appears.
6. Gunaji Marotrao Thaokar appears Marotrao Vithoba Thaokar appears
7. At the back most letters are in At the back most letters are in Hindi or in Marathi. English or in Marathi.
12. I have heard the ld counsels for the parties and have gone through the entire record.
13. So far as the first objection that the defendant has also got its trademark registered is concerned, no doubt, the effect of registration is that no other person can use a registered trade mark without the consent of its proprietor. But, it does not permit the proprietor to use its mark in a manner which will enable him to pass off his goods as those of someone else. Reliance in this regard is placed upon Cheddi Lal v. Shakura Bibi AIR 1967 Allahabad 269.
14. So in the present case both have got a registered trademark but it cannot be disputed that the trademark of the plaintiff is much prior in time to that of the defendant and registration of trademark itself does not give an absolute right to use the mark in a manner which will enable him to pass over his goods as those of someone else. So, mere registration of trademark cannot be taken prima facie as a defence to the suit if it amounts to passing off the goods of others.
15. What will amount to passing off the goods of another depends upon circumstances of each and every case. How some of the factors which are well established to be looked into in this regard are whether there is any:
a) Resemblance between the two marks may be phonetic, visual, auditory or may lie in the meaning of word Mark.
b) the focus is shifted from the making of comparison by the parties, to the state of mind of public in deciding whether it will be confused.
c) The resemblance may also be in the basic idea represented by the plaintiff'smark which idea may be depicted in a completely different representation and the object of the inquiry in ultimate analysis is whether the mark used by the decendant as a whole is deceptively similar to the said registered mark of the plaintiff or not.
d) In order to come to conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered and it would be enough that the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one, to accept the other, if offered to him and the question has to be approached from the point of a man of average intelligence and imperfect recollection.
e) It is to be seen whether the user by the defendant can be considered as an honest concurrent user. From the point of view of broad similarity or general impression which the two trade marks give one cannot decide deceptive similarity. One cannot compare two trade marks by putting them side by side by trying to find out similarities and differences in the two marks. The text is: What one has to see in the overall impression which the trade mark gives. Because this is what members of the public carry in their minds. Where the appellants were aware that there were other similar registered trade marks, they could not use the said mark presumably in the hope of getting registration at a subsequent date. Such a user cannot be considered as an honest concurrent user. ....... National Chemicals & Colour Co. v Reckitt & Colmen of India Ltd. AIR 1991 Bom
76.
16. In Pidilite Industries Pvt Ltd v Mittees Corpn, AIR 1989 Del 157, the plaintiff used the name "Fevicol" for its adhesive and the defendant used "Trevicol" for similar adhesive. The suffix 'Vicol' is common in the two marks. However, there is difference as regards the prefix. There appears to be, an overall comparison of the two marks, a visual similarity as well. The writing style of the two marks is also almost identical. The two marks are deceptively similar both phonetically and visually.
17. In J.B. Industries v R.T. Engg. & Electronics, AIR 1978 Guj 60:90 Guj LR 345, it was held that the diesel engines manufactured by the plaintiff and the defendant were useful to the agriculturists and the agriculturists to whom the plaintiff and the defendant predominantly catered were illiterate and as such unwary customers, the mark 'RaceMaster'on the engines of the defendant must be deemed to have infringed the mark 'Master' on the engines of the plaintiff, especially when there was visual resemblance between the engines manufactured by the plaintiff and the defendant.
18. In the case of Corn Products Refining Co. vs. Shangrila Food Products Ltd PTC (Suppl)(1) 13 (SC), it was held by Hon'bleSupreme Court that Section 8 (a)-----Infringement----Deceptive similarity---In deciding whether two marks are so similar as to be likely to deceive or cause confusion, the similarity of idea is a relevant factor.
19. In the case of Deep Chand Arya Industries, Delhi vs. M/s Kiron Soap Works, Bareilly and others 1981 PTC 108, it was held that the cause of action regarding infringement of trademark and infringement of copyright can be joined together in one suit as the two reliefs are inter linked.
20. In the case of Ranbaxy Laboratores Limited vs. Akme Drug & Pharmaceuticals & Anr 2007 (34) PTC 573 (Del.), it was held that the colour scheme, arrangement of features, get up and layout of the label are similar and the product belongs to the same industry, the plaintiff is entitled for injunction. In the said case, the similarity in the writing style was also found to be identical.
21. It is on these lines the similarity has to be seen.
22. The comparison made by the defendant in this regard which is made on technical lines only, prima facie, cannot be said that the trade mark adopted by the defendant is dissimilar to the trade mark of the plaintiff as it is deceptively similar and the writing style and the arrangement and colouring and other distinctive features go to show that to a lay person who is purchasing chewing tobacco the so called difference may be meaningless and it can be said prima facie that the layman will purchase the product of the defendant believing the same to be of plaintiff. It is clear that word Zarda at the end of the mark is same. The word 'Sarvo' in Sarvoshresth and Sarvoutkrist is the same, the writing style of the words and the impression are also the same. No doubt the word Thawkar had been used instead of word Nagpuri but that will not make any difference and the same is only in the middle and the fact also remains that in the label of the plaintiff it is specifically mentioned that it is Thakkar Nirmit and the name of Nirmata is mentioned as Gunaji Marutarao Thakkar & Co. Defendant had not explained as to why it has used the word Thakkar and prima facie it can be said that it has been used only with a view to represent to the general public that the product of the defendant is from the same manufacturer as that of the plaintiff.
23. The difference in the face of the person depicted on the plaintiff'smark and the direction of its pointing out will not be material one, as both are shown wearing cap and even the word Marutarao Bithowa Thakkar has been used on the front side of the label.
24. The said difference and the other difference are matter of minute examination which a person of even a reasonable intelligence what to say of illiterate person who are the users of the bidis cannot distinguish, rather do not care for it at all. At the costs of repetition, the defendant had not, at all, explained as to where from he had used the word Marotrao Vithoba Thaokar.
25. The trademark as well as other features of the label is positively similar.
26. So far as the jurisdiction aspect is concerned, though an averrment is made that defendant is selling its product in Delhi in the plaint, which fact has been denied by the defendant. The plaintiff had not, prima facie, filed any document to show that the defendant had sold the goods at Delhi.
27. Admittedly, it is not the case of the plaintiff that by virtue of Section 16 or Section 20, the defendant resides or carries its business at Delhi, or is having its business at Delhi.
28. It is also not the case of the plaintiff that the defendant has got its trade mark registered at Delhi.
29. The next contention raised by the plaintiff that the Delhi court has jurisdiction by virtue of Section 62 (2) of the Copyright Act is misplaced.
30. It is evident that sub-section 2 of Section 62 of Copyright Act creates jurisdiction at a place where the plaintiff resides or carry on its business but infringement primarily complained of in the present case is of trade mark. No such provision of conferring jurisdiction on a Court where the plaintiff resides exists in the Trademark and Merchandise Mark Act, 1958, and by not following a provision to the similar effect as in the 1957 Act, the Parliament had made conscious omission. It is well settled that the court shall not readily presume the existence of jurisdiction of a court which was not conferred by the Statute.
31. As per the Copyright Act, the case as per the valuation made is to be tried by a court of Civil judge and it is only because of Trademark Act, the suit has been filed before a District Court as only the District Court has jurisdiction to try a case under the Trademark Act and it is a trite law that a judgment and order passed by the court having no territorial jurisdiction would be a nullity. (Kiran Singh & another vs. Chaman Passwan & Other AIR 1954 Supreme Court 340).
32. Even by application of order 2 R.3 where cause of action can be merged, jurisdiction will not be conferred upon a court which had none, so as to enable it to consider the infringement of trademark. In the case of Dhodha House & Patel Field Marshal Industries vs. S.K. Maingi & PM Diesel Ltd 2006 (32) PTC 1 (SC), it was held that merely because of infringement of Copyright has also been claimed under the 1957 Act, suit for violation of Trademark Act would not be maintainable in a court simply because of Section 62 (2) of the 1957 Act.
33. In the present case also, the primary ground upon which the jurisdiction of this court has been invoked is the violation of 1958 Act but in relation thereof the provisions of sub-section 2 Section 62 of the 1957 Act cannot be invoked.
34. The next ground for invoking jurisdiction of this court taken in the plaint is that the plaintiff has a branch office at Delhi and as such, is carrying its business at Delhi. It is not the case of the plaintiff that it has got manufacturing facilities available at Delhi, and the sale reflected in some of the bills or for a period of 2 months cannot be termed, as such, to be a commercial sale and merely because the goods are being sold in Delhi would not itself mean that the plaintiff carries on any business in Delhi.
35. As such, it is a case where Delhi courts have no jurisdiction and even the documents i.e bills appear to be created one as the relevant particulars regarding the excise number and sales tax number etc. are not mentioned on the bills which also appears prima facie to have been issued on the one and the same date. It is rather a case where since the plaintiff has not come with clean hands, it is not entitled to any discretionary relief. As a result, the injunction application is dismissed.
Announced in open court ( Neeraj Kumar Gupta) 10th August, 2007 Addl. District Judge, Delhi.