Vinay Aggarwal vs Rims Marketing Pvt. Ltd. on 17 July, 2019

[Cites 13, Cited by 0]

Delhi High Court

Vinay Aggarwal vs Rims Marketing Pvt. Ltd. on 17 July, 2019

1. Present suit is filed by the plaintiff seeking a decree of permanent injunction to restrain the defendant from selling, manufacturing, offering for sale, advertising etc. directly or indirectly dealing in goods inter alia LOCKS and other allied and cognate goods under the trade mark/label ELEPHANT or any other trade mark incorporating the word ELEPHANT either as a prefix or suffix or device of Elephant or any other deceptively similar trade mark/domain name so as to amount to passing off. Other connected reliefs are also sought.

2. The case of the plaintiff is that drawer locks under the mark/label ELEPHANT are being manufactured by DALI METAL MANUFACTURING CO.LTD. a Chinese company on behalf of the plaintiff since 2005. In 2015 an agreement was executed between DALI METAL MANUFACTURING CO.LTD. and the plaintiff wherein it was CS(COMM) 428/2017 Page 1 of 11 agreed that the plaintiff will be an exclusive distributor for locks under the trade mark/label ELEPHANT throughout the territory of India. The plaintiff filed an application with the Trade Marks Registry for protection of its trade mark and its label under name ELEPHANT. The plaintiff has been using the mark/label ELEPHANT continuously and exclusively since 2005.

3. It is pleaded that in August 2016 plaintiff came across LOCKS under the trade mark ELEPHANT. On enquiry it came to know that defendants were passing off their goods under the trademark label/name ELEPHANT which were being sold in Delhi. Cease and desist notice was given to the defendant on 30.8.2016. It was pleaded that the defendant is guilty of passing off of the plaintiff's trademark and infringement of the copyright, trade dress of the plaintiff.

4. The aforesaid matter came up for hearing on 3.7.2017 when in IA No.7107/2017 this court passed an ex parte injunction order restraining the defendants etc. from manufacturing, selling, offering for sale or advertising, directly or indirectly dealing in goods inter alia locks and other allied and cognate goods under the trademark/label ELEPHANT or any other mark incorporating the word ELEPHANT either as a prefix or a suffix or any other deceptively similar trademark/domain name.

5. Defendants have now filed IA No.2050/2018 under Order 39 Rule 4 CPC seeking vacation of the interim order.

6. I have heard learned counsel for the parties.

7. Learned counsel for the plaintiff has pointed out that in the written statement filed by the defendants on 16.8.2017 they have clearly stated that they are procuring locks from the local market and using the trade mark ELEPHANT JINLI. Subsequently it is pointed out that an application was CS(COMM) 428/2017 Page 2 of 11 filed sometimes in 2016 by the defendants before the Trademark Registry for registration of the said trademark. ELEPHNT JINLI where user was claimed since 2015. This application for registration has subsequently been withdrawn. Reliance is placed on accompanying affidavit with the application to state that the defendants are making false averments.

8. Learned counsel for the defendant relies upon Agreement entered into with DALI METAL MANUFACTURING CO.LTD. China who is the manufacturer of the locks under the said brand name ELEPHANT JINLI and ELEPHANT LOCKS. As per the said agreement dated 09.12.2018, it is stated that the said DALI METAL MANUFACTURING CO.LTD. has entered into an Agreement with the defendant for locks of the brand ELEPHANT JINLI. The aforesaid agreement also acknowledges that it has entered into an agreement with the plaintiff for sale of the locks with the brand name ELEPHANT.

9. A perusal of the agreement between the plaintiff and the said DALI METAL MANUFACTURING CO.LTD. dated July 2015 would show that the plaintiff is entitled to file registration for ELEPHANT logo with the trademark Registry in the name of the plaintiff. It also states that DALI METAL MANUFACTURING CO.LTD. can sell their locks (with ELEPHANT logo) to customers in India.

10. Subsequently, an addendum agreement was also executed on 12.3.2018 whereby DALI METAL MANUFACTURING CO.LTD. authorised the plaintiff to sell and distribute ELEPHANT JINLI alongwith ELEPHANT LOGO, drawer locks and hardware. It also states that they have cancelled the distributorship and dealership certificate of the defendant and all other similar distributor/dealer certificates issued by them to any other CS(COMM) 428/2017 Page 3 of 11 company other than the plaintiff.

11. I may also have a look at the conduct of the defendants. In the written statement that was filed on 16.8.2017 the defendants state that they have never imported any locks from China having a mark ELEPHANT or ELEPHANT JINLI. It also states that the defendant company has supplied its client ELEPHANT locks in negligible small quantity which were purchased from open market on specific request of the client. Subsequently the defendant has filed an application for registration of its trademark ELEPHANT JINLI. This application was filed on 17.02.2018. Alongwith this application an affidavit dated 05.02.2018 is filed which is notarised on 06.02.2018 which states that defendants has adopted the trademark ELEPHANT JINLI on 24.6.2015 i.e. before the date of filing of the written statement.

12. Now, the defendant has produced an agreement with DALI METAL MANUFACTURING CO.LTD. dated 09.12.2018 which states that the defendant has the rights to use the mark ELEPHANT JINLI.

13. I cannot help noticing that DALI METAL MANUFACTURING CO.LTD. seems to be creating confusion by entering into the contradictory agreements with the parties. The said company first entered into an agreement with the plaintiff in 2015 where it was given exclusive distributor rights in locks under the trademark/label ELEPHANT. In 2017 the defendant entered into an agreement with the said Chinese company. Thereafter, the plaintiff entered into an addendum agreement on 12.03.2018 with the said DALI METAL MANUFACTURING CO.LTD. which authorised the plaintiff to sell and distribute locks with the trademark/label ELEPHANT JINLI alongwith ELPHANT LOGO, drawer locks and CS(COMM) 428/2017 Page 4 of 11 hardware. The said DALI METAL MANUFACTURING CO.LTD. has now again changed its mind and entered into an agreement on 09.12.2018 with the defendant.

14. Apart from the above confusion, the conduct of the defendant does not appear to be bonafide. Some time the defendant states that it is procuring locks from the local market and using the trademark ELEPHANT. Before the Trademarks Registry they have moved an application for registration of the trademark ELEPHANT JINLI stating the user since 2015. However, the facts do show that prima facie the plaintiff is prior user of the trademark and using the same since 2005. The defendant can claim user at best from 2016 or even later.

15. I may now see as to whether the trade mark used by the defendant ELEPHANT JINLI is deceptively similar to the plaintiff's trade mark ELEPHANT and amounts to passing off by the defendant of its goods as that of the plaintiff. In this context reference may be had to the judgment of the Supreme Court in the case of Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73. The Supreme Court formulated the test as follows:-

"16. Dealing once again with medicinal products, this Court in F. Hoffmann-La Roche & Co. Ltd. Vs. Geoffrey Manner & Co. Pvt. Ltd., 1969(2) SCC 716 had to consider whether the word "Protovit" belonging to the appellant was similar to the word "Dropovit" of the respondent. This Court, while deciding the test to be applied, observed at page 720-21 as follows:-

The test for comparison of the two word marks were formulated by Lord Parker in Pianotist Co. Ltd. application as follows:

CS(COMM) 428/2017 Page 5 of 11

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion, that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods-then you may refuse the registration, or rather you must refuse the registration in that case.

It is necessary to apply both the visual and phonetic tests. In Aristoc Ltd. v. Rysta Ltd. the House of Lords was considering the resemblance between the two words "Aristoc" and "Rysta". The view taken was that considering the way the words were pronounced in English, the one was likely to be mistaken for the other. Viscount Maugham cited the following passage of Lord Justice Lukmoore in the Court of Appeal, which passage, he said, he completely accepted as the correct exposition of the law:

The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of Section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a CS(COMM) 428/2017 Page 6 of 11 teacher of elocution. The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that persons wants.

It is important that the marks must be compared as wholes. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. Thus in Lavroma case Lord Johnston said:

we are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop."

On the facts of that case this Court came to the conclusion that taking into account all circumstances the words Protovit and Dropovit were so dissimilar that there was no reasonable probability of confusion between the words either from visual or phonetic point of view.

xxx"

16. Similarly, the learned Single Judge of this court in Stiefel Laboratories, Inc. & Anr. vs. Ajanta Pharma Ltd., 2014 (59) PTC 24 (Del.) held as follows:-

"29. In the case of Indian Hotels Company Limited versus Ashwajeet Garg & Others (CS (OS) 394 of 2012 Order dated 01.05.2014), I had the occasion of considering various judicial pronouncements and culling out the following legal principles for determining the deceptive similarity of marks:

CS(COMM) 428/2017 Page 7 of 11

i. Action for infringement is a statutory remedy conferred on the registered proprietor of a registered trademark. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories: AIR 1965 SC 980 ii. Registration of trademark gives the proprietor the exclusive right to the use of the trademark in connection with the goods in respect of which it is registered. American Home Products v. Mac Laboratories : AIR 1986 SC 137 iii. If the essential features of the trademark of the Plaintiff have been adopted by the Defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets shows marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial. American Home Products v. Mac Laboratories : AIR 1986 SC 137 xxxxxxx v. Phonetic similarity constitutes an important index of whether a mark bears a deceptive or misleading similarity to another. Encore Electronics Ltd. v. Anchor Electronics and Electricals Pvt. Ltd. : 2007(35) PTC 714. vi. The Court must consider the usage of words in India, the manner in which a word would be written in Indian languages and the similarity of pronunciation if the rival marks are used K.R. Chinna Krishna Chettiar v. Sri. Ambal & Co. and Anr.: AIR 1970 SC 146 vii. Resemblance between the two marks must be considered with reference to the ear as well as the eye. K.R. Chinna Krishna Chettiar v. Sri. Ambal & Co. and Anr.: AIR 1970 SC 146 viii. The rival marks have to be compared as a whole. The two competing marks must be judged both by their look and by their sound. All the surrounding CS(COMM) 428/2017 Page 8 of 11 circumstances must be considered. Amritdhara Pharmacy versus Satyadeo Gupta : AIR 1963 SC 449 ix. Where the similarity between the Plaintiffs and the Defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the Plaintiffs rights are violated. Kehsav Kumar Aggarwal Versus M/s. NUT Ltd. 2013 (199) DLT 242 x. Competing marks have to be compared keeping in mind an unwary purchaser of average intelligence and imperfect recollection. Amritdhara Pharmacy versus Satyadeo Gupta : AIR 1963 SC 449 xi. Broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any marked differences in the design and get up.

xii. A single actual use with intent to continue such use eo instanti confers a right to such mark as a trademark. Century Traders v. Roshan Lal Duggar Co., : AIR 1978 (Del) 250 xiii. The applicant has to establish user of the aforesaid mark prior in point of time than the impugned user by the non-applicant. Clinique Laboratories LLC and Anr.

Versus Gufic Limited and Anr. : 2009(41) PTC 41(Del), Siyaram Silk Mills Ltd. v. Shree Siyaram Fab Pvt. Ltd., :

(2012) 2 Mah LJ 49, The Singer Company Limited & Anr. Versus Ms. Chetan Machine Tools & Ors ILR :

(2009) 3 Del 802 : (2009) 159 DLT 135, Chorion Rights Limited Versus Ishan Apparel, : ILR (2010) 5 Del 481 xxxxxxxx"

CS(COMM) 428/2017 Page 9 of 11

17. Clearly, the test is to see as to whether the essential features of the trade mark of the plaintiff have been adopted by the defendant. Phonetic similarity would constitute an important index.

18. It is clear from a comparison of the said two label/marks that the label/mark being used by the defendant is bound to create confusion. In my opinion, the trade mark of the defendant ELEPHANT ZINLI is prima facie phonetically and structurally similar to the trade mark of the plaintiff ELEPHANT. The likelihood of confusion cannot be ruled out. There is no merit in the contentions of the defendant to the contrary.

19. In my opinion, the proposed usage by the defendant would be contrary to the rights of the plaintiff in the mark ELEPHANT. Accordingly, I confirm the interim order of this court dated 3.7.2017. IA No.7107/2017 is accordingly allowed. IA No.2050/2018 is dismissed. CS(COMM.)428/2017 Following issues are framed:-

1. Whether the plaintiff has rights in the trademark ELEPHANT for usage under class 6? OPP

2. Whether the defendant is entitled to use the trademark ELEPHANT JINLI? OPD

3. Whether the defendant is guilty of breach of passing off the goods of the defendant as that of the plaintiff? OPP

4. Whether the plaintiff is entitled to claim damages from the defendant? If so, how much damages have been suffered by the plaintiff? OPP

5. Relief.

Parties to file list of witnesses within three weeks. Plaintiff to file affidavit by way of evidence of its witnesses within three weeks thereafter.

CS(COMM) 428/2017 Page 10 of 11

List on 06.09.2019 before Joint Registrar for fixing dates for cross- examination of plaintiff's witnesses.

JAYANT NATH, J.

JULY 17, 2019/n corrected & released on 10.08.2019 CS(COMM) 428/2017 Page 11 of 11

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Delhi High Court