Rajasthan High Court - Jaipur
Rajendra Singh Shekawat vs M/S Shrinath Heritage Liquor Pvt Ltd on 17 February, 2014
Author: Alok Sharma
Bench: Alok Sharma
IN THE HIGH COURT OF JUDICATURE FOR RAJASTHAN AT JAIPUR BENCH JAIPUR O R D E R S.B. CIVIL MISC. APPEAL NO.242/2014 (Rajendra Singh Shekawat Vs. M/s. Shrinath Heritage Liquor Pvt. Ltd.) Date of Order : February 17, 2014 HON'BLE MR. JUSTICE ALOK SHARMA Mr. R.P. Singh, Sr. Advocate with Mr. G.D. Bansal, for the plaintiff-appellant. Mr. D.S. Poonia with Mr. Amit Sharma, for the defendant-respondent. BY THE COURT
1) This civil misc. appeal impugns the order dated 07.01.2014, passed by the learned District Judge, Jhunjhunu whereunder the plaintiff-appellant's (hereinafter 'the plaintiff') application under Order 39 Rule 1 & 2 CPC, seeking temporary injunction against the defendant-respondent (hereinafter 'the defendant') from using the word MAHANSAR in its trademark Mahansar D.J. Special has been dismissed.
2) The plaintiff is the registered trademark holder for manufacturing and sale of wine under trademarks MAHARAJA MAHANSAR and MAHARANI MAHANSAR under registration Nos.1376212 and 1234856 since 2003. It is the plaintiff's case that the defendant subsequently commenced business in November, 2013 in the manufacture and sale of wine under a trademark Mahansar D.J. Special which was allegedly deceptively similar to that of the plaintiff's trademarks and tantamounted to an infringement under Section 29 of the Trade Marks Act, 1999 (hereinafter 'the Act of 1999') or in any event passing off the defendant's goods as that of the plaintiff entailing financial loss as also reputation and goodwill for the plaintiff and corresponding business and financial gain for the defendant. It was stated that the word MAHANSAR per se as a part of his trademark MAHARANI MAHANSAR and MAHARAJA MAHANSAR constituted its essential feature and the use of the said word by the defendant in its trademark was wholly illegal and in contravention of the Act of 1999 as infringement / passing off.
3) In its reply of denial to the application under Order 39 Rule 1 & 2 CPC, the defendant submitted that the trademark of the plaintiff and that of the defendant neither similar or deceptively similar in any essential feature or copying of any distinctiveness and the two were in fact entirely different in getup, colour, font and label design. It was submitted that the mere incidental commonality of the word MAHANSAR that too in different style was of no effect for the reason that MAHANSAR per se was generic word being a village name which the plaintiff could not appropriate on account of it being a part of his registered trademark as a whole. Stating that even otherwise the mode and manner of use of the said word by the defendant in its trademark was completely different from the mode in which the said word was used in the plaintiff's registered trademarks, it was prayed that the application be dismissed.
4) Considering the rival claims, the learned court below, after a visual of the two trademarks in question and consideration of the respective merits of the cases of the contesting parties, vide its impugned order dated 07.01.2014 dismissed the application for temporary injunction. It was held that prima facie the defendant's trademark could not be said to be similar or deceptively similar with that of the plaintiff's trademarks or so designed to cause confusion within the minds of the consuming public as to make out a prima facie case of passing off. Hence this civil misc. appeal.
5) Mr. R.P. Singh, Sr. Advocate with Mr. G.D. Bansal, appearing for the plaintiff, has submitted that the approach of the learned trial court in addressing the application for temporary injunction was absolutely contrary to law inasmuch as it juxtaposed the competing trademarks of the plaintiff and the defendant and then compared the two. He submitted that the court below thereafter further erred in emphasizing the dissimilarities of the two trademarks as against their similarity which could deceive and confuse the public. This, Sr. Counsel submitted, was contrary to the enunciation of law by the Hon'ble Supreme Court in the case of Amritdhara Pharmacy Vs. Satya Deo Gupta [AIR 1963 SC 449], in Cadila Health Care Ltd. Vs. Cadila Pharmacecuitacals Ltd. [(2001) 5 SCC 73] and in Heimz Italia & Anr. Vs. Dabur India Ltd. [(2007) 6 SCC 1]. It was submitted that the test to be applied was that of a usual purchaser with average intelligence and imperfect recollection who having once purchased goods with a particular trademark, goes out to the market again to purchase the same goods. Such a purchaser does not juxtapose the two trademarks and then decide which of the two is to be purchased. Instead he only carries an imperfect recollection of the trademark earlier purchased and has only a hazy recollection of the trademark essential attributes. He is therefore prone to mistaking a trademark of deceptive similarity on sale at a shop as the one which he had purchased earlier and hence can make the purchase thereof. This is what the law seeks to prevent and this is exactly what the defendant has done by using the word MAHANSAR in its trademark. Sr. Counsel emphatically submitted that an ordinary purchaser does not look at the goods to be purchased with a critical eye to detect dissimilarities, but would be overtaken by the deceptive similarities of the infringing trademark with that of the registered (or prior user) trademark earlier purchased by him. It was submitted that the impugned order dated 07.01.2014 is thus liable to be quashed and set aside for having misapplied and overlooked the two tests detailed hereinabove. Sr. Counsel then submitted that the essential feature of the plaintiff's trademarks is the word MAHANSAR and and the use of that as a part of the trademark of the defendant was sufficient to make out a case of infringement under Section 29 of the Act of 1999 for simulating a deceptive similarity or in any event in creating confusion about the trademark to bring it within the mischief of passing off. It was finally submitted that in the facts of the case and material obtaining on record, the learned court below ought to have held that the trademark of the defendant was similar to that of the plaintiff or that it could otherwise deceive and cause confusion in the minds of the consuming public into believing that the goods sold by the defendant were that of the plaintiff or at least that the goods were in someway connected with the plaintiff. More so in view of the fact that the product of the plaintiff and the defendant are in the same class and related to identical trade channels.
6) Per contra, Mr. D.S. Poonia with Mr. Amit Sharma, appearing for the respondent-defendant (hereinafter 'the defendant'), submitted that the allegation of similarity or deceptive similarity with a registered trademarks entailing its infringement is to be discharged by the plaintiff. The deception and the confusion leading to loss of reputation, goodwill and profit for a passing off action is similarly to be proved by the plaintiff. It was submitted that the Act of 1999 does not lay down any criteria for determining what is similarity or deceptive similarity or what is likely to deceive or cause confusion. Therefore every case must depend on its own particular facts and the value of authorities lies not so much in the actual decisions therein as to the tests applied in different cases for determining when infringement of a trademark is made out or a trademark is likely to deceive or cause confusion relevant to a passing off action. It was submitted that the one of the question which arose in the plaintiff's case before the court below as also arises before this Court is whether every part or word of a registered trademark becomes the monopoly of the holder of the trademark use whereof alone would tantamount to infringement for reason of deceptive similarity or otherwise be taken to be sufficient to deceive and confuse potential consumers resulting in either financial loss, loss of reputation and goodwill to the registered holder of the trademark. Counsel has emphasized that an important aspect in a suit for infringement of a trademark is the legal requirement that both the trademarks must be similar as a whole and not in part as it is settled law that the registered holder of a trademark owns the whole of the trademark and not parts thereof separately. Counsel submitted that the Hon'ble Supreme Court in the case of Amritdhara Pharmacy (Supra) has held that division of a trademark and of words in it for the purposes of determining as to whether there is an infringement is a dangerous and impermissible method to proceed on. It was submitted that in the present case use of the word Mahansar by the defendant has been questioned as infringement of trademark of the plaintiffon a wrong testas it is nobody's case that the defendant's trademark is identical as a whole to that of the plaintiff. The best case of the plaintiff is that of deceptive similarity flowing from the commonality of an alleged essential feature i.e. the word MAHANSAR. This in turn is based on the assumption that the generic word MAHANSAR, a small village, has acquired secondary meaning where the invocation of the said word would inevitably relate as a manufacture of the plaintiff in the minds of the consuming public. Counsel emphatically submitted that the Trademark Act is not a prescription for creation of a monopoly in respect of a generic word, geographic place or common words without any distinctiveness. Indeed a generic word can come to acquire secondary meaning but that is not a matter of assumption but subject to requisite proof in the course of a trial. Counsel however hastened to add that the word MAHANSAR, which is the subject of dispute in the instant case, has no secondary meaning inasmuch no proof whatsoever such as consumer surveys or reports loss of profit were filed before the trial court, nor before this Court to establish that MAHANSAR has acquired a secondary meaning, a distinctiveness owing to which the use thereof connotes or evokes a relationship with the plaintiff owing to which a dishonest intention can be attributed to the defendant. It was pointed out that the plaint itself does not aver as to how and in what manner the reputation and goodwill achieved by the plaintiff in respect of his product entitled him to contend that the word MAHANSAR in his trademark had come to acquire a distinctness and a secondary meaning to shut out others from using that generic word in the course of their business. It was submitted that the defendant has been given an award for the best Automation of the year, 2013 under Assocham Food Tech Implementation Award, 2013 at the national level in an international conference. Vis a vis passing off it was submitted that the defendant's trademark has a different getup, different font, different colour and label design, packaging as also price differentiation with the defendant's goods being more expensive. It was submitted that consuming public (liquor drinkers) are conscious of the product they desire to imbibe from time to time and thus are not likely to be confused or deceived vis a vis the trademark of the plaintiff on the one hand and the defendant on the othermore so as the product is sold only from specialised licenced shops. No dishonest intention can be made out in the facts of the case merely from the use of a generic wordthe name of a village.
7) Counsel for the defendant then submitted that as the order of the court below is a discretionary order and broadly in accordance with the principles for grant of interim injunction, it ought not to be interfered with in an appeal even if in the opinion of this Court the facts of the case might have called for a different prima facie conclusion. Emphasizing the limitation of appellate power against discretionary orders it was submitted that the Hon'ble Supreme Court has held that unless the case set up in appeal is one of a clear and apparent perversity or misdirection in law occasioning manifest injustice to the other party, the interim order passed by the lower court should be sustained. Instead the trial court should be directed to decide the suit for injunction against the alleged infringement and / or passing off expeditiously such that equities between the contesting parties are evenly balanced and no party to the litigation is put to an irreparable loss and disadvantage. It was submitted that the case before this Court is admittedly not a case of palpable and incontrovertible infringement of trademark as admittedly the competing trademarks are not similar or even deceptively similar as the word MAHANSAR at the stage of an interlocutory application with requisite evidence cannot be said to have achieved a distinctiveness and a secondary meaning to partake character of an essential feature of the plaintiff's trademark. Evidence on that count has to be laid and proved in the course of regular trial to the trial court's satisfaction. He submitted that no prima facie case of passing off can also be made out as the two trademarks are not similar with the potential to deceive and confuse but on various counts i.e. getup, colour, font, label design and price are different. No dishonest intention can be found at this stage. Counsel submitted that in the facts of the case, the judgment of the Hon'ble Supreme Court in Shri Vardhman Rice and General Mills Vs. Amarsingh Chawalawala [(2009) 10 SC 257] and in Bajaj Auto Limited Vs. TVS Motor Company Ltd. [(2009) 9 SCC 797] dealing with the issue of interim injunction in infringement / passing off action should be followed and the learned trial court should be directed to decide the plaintiff's suit within a period of four months with requisite safeguards for the plaintiff.
8) Heard the counsel for the parties and perused the impugned order dated 07.01.2014. Considered.
9) The crux of the submission of Mr. R.P. Singh, Sr. Advocate, appearing for the plaintiff is that the discretion exercised by the trial court in dismissing the plaintiff's application under Order 39 Rule 1 & 2 CPC is vitiated for reason of applying two wrong tests i.e. (i) the trial court wrongly exercised its discretion on the basis of comparison of two competing trademarks in dispute by placing one against the other; (ii) it also erred in observing that dissimilarity of the two trademarks was to be addressed rather than the similarities between them. In my considered opinion, the submissions of the Sr. Counsel are a general statement of law without specifics of the case at hand in the context in which the observations of the court below were made. It is quite obvious that the learned Judge could not have put himself literally into the shoes of the typical purchaser who having purchased the goods with a given trademark at one point of time, goes out to purchase the same once again. The learned Judge could have only simulated such a scenario trying to replicate the exact mental process and experience of a typical customer who makes a purchase at one time and the subsequent purchase thereafterthe interval with regard to time being uncertain. The simultaneous viewing of the two trademarks, one of the plaintiff and the other of the defendant was not an exercise in comparative detailing as in a picture quiz but only for the purpose of estimating the effect or impression as also its potential depth produced in the mind of the typical customer of the goods in issueliquor. The cognitive mental exercise undertaken by the learned Judge in court was essential and quite inevitable with reference to the dispute before him and his conclusions cannot be impugned on this count alone. I am also unable to agree with the contention of Sr. Counsel that the order dated 07.01.2014 passed by the lower court is liable to be set aside for having emphasized dissimilarities as against similarities in ascertaining the infringement of the plaintiff's trademark or in dishonestly passing off its goods as that of the plaintiff by deceptive similarity leading to confusion in the minds of the consuming public. No part of the impugned judgment bears out the contention. Contrarily the lower court has considered the purported similarity in the two trademark and held that the only similarity in issue was with regard to use of the word MAHANSAR (and that too in different styling). Yet in the context of the word used in the two trademarks, it appeared that the similarity was not distinctive but insignificant and passe inasmuch as while in the plaintiff's trademark the word MAHANSAR followed the word MAHARAJA in one trademark and the word MAHARANI in the other trademark, all in the same font, in the case of the defendant the mode was different with the word Mahansar (different styled) preceding the words D.J. Special (smaller font). Having noted the prima facie insignificance of the similarity alleged only in the use of what at this stage is a generic word, the trial court then proceeded to also notice the dissimilarity lying evidently and clearly in a different getup, font, colour, price and label design. This to my mind did not entail any breach of the test laid down by the Hon'ble Supreme Court that similarity not dissimilarity should be considered while evaluating the question in infringement / passing off in a trademark action.
10) It is an admitted fact that while the trademarks of the plaintiff were MAHARAJA MAHANSAR and MAHARANI MAHANSAR, that of the defendant was Mahansar D.J. Special. On the principle that right in respect of a trademark has to be taken as a whole and not as a right to separate parts thereof, it is evident that the two trademarks are not similar. The question that however remains is with regard to alleged deceptive similarity of the defendant's trademark based on its commonality in the word Mahansar with that of the plaintiff's trademarks MAHARAJA MAHANSAR and MAHARANI MAHANSAR. For this it needs to be found whether the word MAHANSAR in the plaintiff's trademark is its essential feature. The Hon'ble Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories [AIR 1965 SC 980] has held that the identification of the essential feature of a trademark is in essence a question of fact dependant upon the evidence laid in the first instance before the trial court as regards the usage of trade. Deceptive similarity of the offending trademark based on the alleged copying of an alleged essential feature is thus plainly a question of fact so also is the question whether the word MAHANSAR by itself had acquired a secondary meaning to transform it (a generic word) and give it a distinctiveness with the consequent exclusive right to its use to the registered / prior user thereof. The rights of the rivals in trade based on alleged copying / using of essential feature of trademark of one by the other are vexed questions of fact which can only be resolved in a regular trial. The law enunciated being that the appellate court ought not to interfere with the discretion exercised by the trial court unless it is palpably erroneous or flies in the face of settled law, in the facts of the case obtaining I would be disinclined to interfere with the impugned order dated 07.01.2014.
11) Consequently, I would dismissed this appeal. However, to balance equities between the parties following the judgments of the Hon'ble Supreme Court in the cases of Shri Vardhman Rice (Supra) and Bajaj Auto Limited (Supra), the defendant is directed to submit its monthly accounts of production and sale of its brand Mahansar D.J. Special by the 10th of the following month with the trial court with a copy duly acknowledged in writing to the plaintiff or his counsel. The plaintiff on his part in the event of succeeding in his suit would be free to claim restitution. The trial court is directed to dispose of the plaintiff's suit within four months from presentation of a certified copy of this order. This would only be possible in a day to day hearing. This is so directed. No adjournment in the pending suit be granted except on an written application giving out the reasons for adjournment. Adjournments shall be by a reasoned and speaking order and not otherwise.
12) The appeal is accordingly dismissed. Stay application needs no address in view of the appeal itself being dismissed.
(ALOK SHARMA), J MS/-
All corrections made in the judgment/order have been incorporated in the judgment/order being emailed.- Manoj Solanki, Jr. P.A.