Delhi High Court
Rajesh Jain vs Amit Jain & Anr. on 14 October, 2014
Author: Rajiv Shakdher
Bench: Rajiv Shakdher
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Judgment reserved on: 16.09.2014
% Judgment delivered on: 14.10.2014
+ IA Nos.9398/2014 & 11729/2014
in CS(OS) 1433/2014
RAJESH JAIN ..... Plaintiff
Versus
AMIT JAIN & ANR. ..... Defendants
Advocates who appeared in this case:
For the Plaintiff: Mr Sachin Chopra & Mr Kamal Bansal, Advs.
For the Defendants: Mr K.K. Sharma, Sr. Adv. with Mr Suwarn Rajan, Mr Harsh
Vardhan & Mr Akshay Srivastava, Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SHAKDHER
RAJIV SHAKDHER,J
IA No.9398/2014 (O. 39 1 & 2 r/w S. 151 CPC) & 11729/2014 (O. 39 R. 4
r/w S. 151 CPC)
1. The plaintiff who is the proprietor of Sudarshan Cosmetics has filed
the instant suit for permanent injunction, infringement of registered
trademark, and copyright, and action for passing off with reliefs for
delivering up the impugned material as also for damages. Summons in the
suit and notice in the plaintiff's interlocutory application being: IA No.
9398/2014 was issued on 16.05.2014.
1.1 On that date the court passed an ad interim ex parte order restraining
the defendants from selling their goods under the impugned mark "Blue
Very". The defendants were also restrained from reproducing the artistic
features of the packaging labels of the plaintiff, as also its get up, lay out and
colour combination. The injunction extended to the defendants, the
proprietors, directors, servants, stockists, dealers, wholesalers, representatives
CS(OS) 1433/2014 Page 1 of 22
and any other person acting for and on their behalf.
2. On service being completed, the defendants moved an application
under Order 39 Rule 4 of the Code of Civil Procedure, 1908 (in short CPC),
which was numbered as IA No. 11729/2014. Notice in this application was
issued by this court, on 02.07.2014. Since then, the defendants have filed
their written statement, as well, as directed by this court vide order dated
04.08.2014.
3. At the very outset it may be relevant to note that the plaintiff had
obtained an injunction from this court, inter alia, based on the similarity of
the trade dress and the packaging of the product manufactured and sold by
him and that which was manufactured and sold by the defendants. The
picture, as appearing in the plaint and in the accompanying document filed, is
extracted hereinbelow for the sake of convenience.
CS(OS) 1433/2014 Page 2 of 22
3.1 The defendants in their written statement apart from other averments,,
to which I will be making a reference hereinafter, filed their packaging,
which depicts a completely different trade dress. For the sake of
convenience, the same is also extracted hereinbelow.
3.2 Faced with this situation, the counsel for the plaintiff, Mr Sachin
Chopra, narrowed down the scope of his submissions to rights in the
trademark used by the plaintiff, which is "BLUE VALLEY". Mr Sachin
Chopra readily conceded that the plaintiff could have no quarrel with the
trade dress as depicted above, save and except qua the use of the mark
"BLUE VERY", which according to him was deceptively similar to the
plaintiff's trademark BLUE VALLEY.
4. In order to adjudicate upon the claims made, at the interlocutory stage,
by the plaintiff, one would require to take note of certain averments and facts,
which have emerged from the record. These are broadly, as follows.
CS(OS) 1433/2014 Page 3 of 22
5. The plaintiff avers that he has invented the trademark Blue Valley
which is a coined and invented word, and that, it has been used in relation to
goods manufactured and sold by him, which are essentially cosmetics, since
the year 2006. To be precise, user is claimed by the plaintiff since
01.04.2006. The plaintiff further avers that an application for registration of
the trademark was filed on 17.10.2006, which was advertised in the
trademark journal no. 1421-0, datelined 01.08.2009. The plaintiff states that
a trademark registration certificate was issued to him, on 30.03.2010.
5.1 Usual assertions have been made by the plaintiff that the trademark
Blue Valley is a well-known trademark, and that, he has been able to
establish and sell his product extensively under the said trademark. In the
plaint though sales figure have been given commencing from financial year
2008-09 to 2013-14. The details of the sales figures, as adverted to in
paragraph 12 of the plaint are as follows: 2008-2009 - Rs. 3,98,369; 2009-
2010 - Rs. 11,82,456/-; 2010-2-11 - Rs. 9,33,404/-; 2011-2012 - Rs.
23,65,742/-: 2012-2013 - Rs. 44,30,552/- and 2013-2014 - Rs. 35,64,400/-.
5.2 There are assertions made with regard to the trade dress as well, and as
indicated above, I do not intend to refer to them, as that part of the claim, is
not contested to by the plaintiff, before me.
5.3 What is, however, disconcerting is the averment made in paragraph 16
of the plaint that the plaintiff was granted registration in respect of the
trademark Blue Valley, without adverting to the fact that the registration was
accompanied by a disclaimer that he had no exclusive right in the word
"BLUE".
5.4 In so far as the defendants are concerned, the averment made is that,
the plaintiff, became aware of its mark in the last week of March, 2014, when
he was surfing the official website of the trademark registry,
CS(OS) 1433/2014 Page 4 of 22
http://ipindia.nic.in/tmr_new/default.htm. It is also averred that, it is at this
juncture, that the plaintiff gained knowledge that defendant no.1 had made an
application for registration of the trademark, Blue Very, vide TM Application
No. 2446504, in class 3, in respect of all types of cosmetics.
5.5 It is further averred that defendant no.1 is a competitor of the plaintiff
who is conducting his business via a proprietorship concern by the name of
Vinayak Industries, and that, defendant no.2 is the licensee of defendant no.1.
It is thus stated that the defendants are infringing the plaintiffs mark, and that,
defendant no.1 in his application has claimed use of his mark, Blue Very,
since 01.12.2012.
5.6 There are also assertions in the plaint to the effect that the defendants
have violated the provisions of the Standards of Weights and Measures
(Packaged Commodities), Rules 1977 (in short 1977 Rules), and that, their
packaging does not contain the name of the manufacturer, the customer care
number, and other mandatory details. The plaintiff, thus avers, that the
defendant's mark Blue Very is deceptively similar to the plaintiff registered
trademark Blue Valley. It is the case of the plaintiff that the defendants' use
of the trademark Blue Very is dishonest and, actuated with malice to earn
profits illegally, based on the goodwill and reputation of the plaintiff's mark.
6. I must also note that while the plaintiff, as indicated above, claim's
knowledge of alleged infringement of its mark by the defendant in March,
2014, when he supposedly surfed the trademark registry website, there is a
very oblique reference to the suit filed by defendant no.2, in the District
Court, at Rohini, against the plaintiff. There is neither any reference to the
nature of the suit filed by the defendant nor are the details like the case
number, and the date on which summons were issued in the suit, adverted to.
The plaintiff has juxtaposed his issuance of legal notice dated 03.05.2014,
CS(OS) 1433/2014 Page 5 of 22
with the averments with respect to the suit filed by defendant no.2.
6.1 These are aspects which I have chosen to make a reference as the
defendants both in the written statement and application seeking vacation of
stay and have made it a point to assert that the plaintiff has deliberately not
adverted to material facts, and thus, misled the court.
6.2 Having said so, I must also notice that the plaintiff has filed the copy
of the plaint as a part of his documents, accompanying the plaint. As to what
would be the effect of the same, with regard to the relief of interim
injunction, I would discuss in the later part of my judgement.
7. The defendants on their part have broadly indicated as follows:
(i) that defendant no.1 is in the business of manufacture and sale of
cosmetics, which includes all allied and cognate goods.
(ii) It is averred that defendant no.1, had honestly and bonafidely
conceived and adopted the trademark Blue Very (word per se and artistic
work), as also the label, in 2012. Defendant no.1, is said to be the author and
owner of the copyright in the artistic work involved in the trademark/ label
Blue Very.
(iii) It is also averred that defendant no.2 is a licensee of defendant no.1,
and has, thus, been permitted by defendant no.1 to manufacture, market and
sell cosmetics under the trademark, Blue Very. It is claimed that defendant
no.1, has filed for registration of the trademark Blue Very, and the label,
being its owner and proprietor, vide application no. 2446504. This
application is said to have been made on 21.12.2012, in respect of goods
falling in class 3. A claim is made that the trademark Blue Very is a well-
known mark and that it has acquired distinctiveness and secondary
significance, which is relatable to the defendants' goods.
CS(OS) 1433/2014 Page 6 of 22
(iv) It is also averred that the plaintiff has misled court, in as much as, he
did not explicitly state in the plaint that his trademark Blue Valley, when
advertised in trade mark journal 1421-0, datelined 01.08.2009, carried a
disclaimer, which was indicative of the fact that the plaintiff had no exclusive
right in the word 'BLUE'. Furthermore, it is averred that the plaintiff has
registration in the word per se whereas, the plaintiff is claiming registration
in respect of the label and hence attempting to mislead the court.
(v) There is also an assertion that since, the plaintiff was interfering in the
business activities of the defendants on the strength of its registered
trademark Blue Valley, defendant no.2 had filed a suit in District Court for
declaration and permanent injunction under Section 142 of the Trade Marks
Act, 1999 (in short the T.M. Act) and under Section 60 of the Copyright Act,
1957 (in short C.R. Act), from issuing groundless threats.
(vi) It is averred that the plaintiff failed to give a true picture of the action
filed by defendant no.2, in the plaint.
(vii) It is also averred that the plaintiff has failed to disclose the name of the
artist, who designed the artistic label for the plaintiff and the details of the
consideration paid by him to the concerned artist. The assertion of the
plaintiff that he is the proprietor of the label is denied and on the contrary it is
asserted that the plaintiff has indulged in piracy.
(viii) There is a denial qua the assertion of the plaintiff that he has been
continuously using the trademark Blue Valley since 2006, or that, it is a well-
known trademark within the meaning of Section 2(1)(z)(g) of the T.M. Act.
(ix) It is asserted that there is no replication of the artistic features, get up,
lay out or colour combination, which forms part of the plaintiff's packaging
and/or trade dress.
CS(OS) 1433/2014 Page 7 of 22
(x) There is a specific assertion that all compliances are made including
those with respect to the 1977 Rules.
8. In the background of the pleadings, Mr Sachin Chopra, who appears
for the plaintiff, submitted that the plaintiff was entitled to the interim order
being made absolute, in view of the fact that there was a deceptive similarity
between the plaintiff's mark Blue Valley and the mark Blue Very adopted by
the defendants. It was Mr Chopra's submission that this court would have to
consider the fact that not only was there a phonetic similarity, but also the
fact that the parties before it were in the same trade channel and hence there
was every likelihood of confusion being caused as amongst the consumers of
the product.
9. Mr Sharma, on the other hand, made a point to highlight the fact that
the plaintiff had obtained an order of ad interim injunction by deliberately
being economic with the averments made pertaining to two crucial facts:
First, the mark Blue Valley was registered with disclaimer qua the word
'BLUE' and that, registration was only in the word per se and not the label.
Second, the plaintiff made only a passing reference to suit filed by defendant
no.2 in the District Court, without adverting to the nature of the action.
9.1 This apart, Mr Sharma also alluded to the fact that the documents filed
by the plaintiff did not establish user since 2006, as claimed in the trademark
application filed when registration of the trademark Blue Valley was sought
to be obtained. Mr Sharma also made it a point to take me through the
documents filed by the plaintiff, in particular, the invoices filed by him.
Based on the invoices, it was submitted that not only were the invoices far
and few in between, which related to a period commencing from October,
2008 but also that they carried the name "Su-zon's Health Care Industries",
and not the name of the plaintiff's proprietorship concern, which is Shree
CS(OS) 1433/2014 Page 8 of 22
Sudarshan Cosmetics.
9.2 Mr Sharma submitted that the plaintiff included a pictorial
representation of what purported to be the defendants' trade dress; a trade
dress, which was different from the one that the defendants used and hence
succeeded in creating a false impression of deceptive similarity, with spectre
of likelihood of confusion amongst the consumers. To drive home the point,
Mr Sharma referred to the pictorial representation of the defendants' trade
dress as appended with the defendants' written statement as against that
which is included in the plaint.
9.3 It was, thus, Mr Sharma's contention that there was no similarity
ocular or phonetic between the plaintiff's trademark and that of the
defendants. Mr Sharma further stated that the plaintiff's mark was not a
well-known mark, as claimed, which is clearly evident from the documents
with regard to the sale effected by the plaintiff between 2006 and May 2013.
10. I must only note that faced with queries with regard to the inclusion of
invoices in the name of Su-zon's Healthcare Industries and the volume of
sales, learned counsel for the plaintiff, Mr Sachin Chopra, during the course
of the arguments sought to introduce a sheaf of documents, which was
objected to by the counsel for the defendants. While, these were not taken on
record by me, they were nevertheless filed; an action which led me to pass an
order on 16.09.2014. By this order, I directed removal of these documents
from the record, as at that particular stage it worked to the detriment of the
defendants and would have necessarily, delayed adjudication of the captioned
applications. A photocopy of the documents was, however, shown to the
court; and a cursory perusal of the same did show that they would not affect
the result of the two interlocutory applications on which I have to rule.
11. Having considered the pleadings, the documents on record and the
CS(OS) 1433/2014 Page 9 of 22
submissions of counsels, what emerges is as follows:
(i) The plaintiff did file an application for registration of its trademark
Blue Valley, with a device. The application was filed in the name of the
plaintiff, on 17.10.2006, bearing no. 1497439. A trademark certificate was
issued, evidently, on 30.03.2010.
(ii) The trademark journal bearing no. 1421-0 dated 01.08.2009, advertised
the plaintiff's mark, Blue Valley, prior to its acceptance under Section 20(1)
of the T.M. Act for the following goods, "creams, Vaseline, talcum powder
and hair oils"; which stands, included in class 3. The journal, made it clear,
that the plaintiff had no exclusive right in the word "Blue". The extract from
the journal, though filed by the plaintiff, was included as a part of the plaint
filed by defendant no.2, in the District Court. There was no separate index
filed adverting to this document. In the plaint, where there is reference to the
fact that the trademark Blue Valley, was advertised in journal no. 1421-0,
dated 01.08.2009, there is no further reference made to the fact that it was
advertised with a disclaimer.
(iii) The trade dress of the defendant as pictorially depicted in the plaint in
paragraph 30, is remarkably different; an aspect which was conceded by the
learned counsel for the plaintiff. As indicated, right at the beginning he had
no objection to the packaging of the defendants as placed on record; the
objection was with regard to the use of the trademark Blue Very.
(iv) The invoices, as correctly pointed out by the counsel for the
defendants, placed on record by the plaintiff commenced from 07.10.2008,
while user is claimed of the trademark Blue Valley from 01.04.2006.
(v) There are five invoices in the name of the plaintiff's proprietorship
firm Sudreshan Cosmetics as well, spanning the period between November
CS(OS) 1433/2014 Page 10 of 22
and December, 2012. The value of the invoices ranges from Rs. 10,175 to
Rs. 27,135/-. The invoices include, goods other than those sold under the
trademark Blue Valley.
(vi) I must also point out that, though the registration is for products
referred to above, in class 3, such as, creams, Vaseline and hair oils; the
parties before me are particularly concerned about the hair removal cream,
which is sold under their respective marks. Furthermore, the record also
contains invoices of cartons and packaging materials purchased, without any
corresponding reference to sales made. There are also on record laboratory
reports of various cosmetics produced by the plaintiff, from private firms.
(vii) The plaintiff has also placed on record legal notices issued on
03.05.2014, which are identical in nature, served various dealers/ entities
including the defendants. Even according to the plaintiff, these notices were
posted on 06.05.2014. It is around this time that defendant no.2 had filed a
suit for declaration and permanent injunction under Section 142 of the T.M.
Act, with a prayer for grant of injunction against issuance of groundless
threat, under Section 60 of the C.R. Act. This suit is numbered as:
CS/573/2014, and is titled Anuj Kumar Jain vs Rajesh Jain. The summons
in the suit were issued, on 06.05.2014. As to what is the position of the suit,
none of the parties apprised the court as regards the stage at which the said
suit is placed.
12. On the basis of the above, what is required to be examined is that,
whether or not plaintiff can claim exclusive rights to the trademark Blue
Valley, in view of the registration obtained by him. Undoubtedly, a person is
said to infringe a registered trademark under the provisions of Section 29 of
the T.M. Act, (if he is not a registered proprietor or a person using the
trademark by way of permitted use), if he uses, in the course of the trade, a
CS(OS) 1433/2014 Page 11 of 22
mark, which is identical with or deceptively similar to the registered trade
mark, in relation to goods and services qua which the rival mark is registered.
12.1 In the present case, while the trade channel is the same, that is, both
parties are in the business of manufacturing cosmetics, and in particular,
selling hair removal cream, which is used by ladies, the marks are not
identical.
12.2 What is required to be considered is whether the two rival marks can
be considered as deceptively similar. The expression 'deceptively similar' is
defined in Section 2(1)(h) of the T.M. Act. The definition reads as follows:
"A mark shall be deemed to be deceptively similar to another mark, if it so
nearly resembles that other mark as to be likely to deceive or cause
confusion".
13. Clause (b) of sub-section (2) of Section 29 indicates that a registered
mark is infringed by a person when there is similarity with the registered
trademark and identity or similarity qua goods or services, covered by such
registered trademark; which is likely to cause confusion in the mind of the
public or which is likely to create an association with the registered mark.
The provision, of course, will not apply to a registered proprietor or a person
using the same mark by way of permitted use.
13.1 Under clause (b) sub-section (2) of Section 30 a registered trademark is
not infringed, where it is registered subject to any condition or limitations.
14. In the instant case the condition for registration is that the plaintiff
cannot claim exclusive right over the word "Blue". In ascertaining whether
the use of the word Blue in conjunction with the word Very by the defendants
is likely to cause confusion, as to the origin of the goods, that is, have the
effect of relating the defendants goods to the plaintiff, one would have to bear
CS(OS) 1433/2014 Page 12 of 22
in mind not only the phonetic similarity, but also the visual similarity and the
similarity in ideas, if any, conveyed by the marks.
14.1 In construing similarity, one would have to consider the overall
impression formed on the mind of the consumer, which would include the
similarity of words and legends used on the device. In the case of words,
which are common in trade and over which no monopoly can be claimed,
(which in this case is the word Blue), one would necessarily have to give less
weightage when examining the aspect of resemblance, which arises on
account of the presence of such common word. To ascertain whether there is
likelihood of confusion in the mind of the public or association with the word
mark the overall impression caused by both the common and uncommon will
have to be taken into account.
14.2 Therefore, while evaluating the weightage to be given to the word
Blue, one would need to ascertain as to whether the word Blue is common in
the cosmetic trade. A brief scan of the website of the trademark registry
would show that at least 338 (approximately) marks have been registered
under class 3 with the pre-fix blue. Just to cite a few examples, the following
marks find a mention on the website of Trade mark Registry: Blue Willi's,
Blue Whale, Blue Valentine, Blue Wave etc. To be noted one mark, which
is, Bluevalley, is seem to be registered but has not been objected to by the
plaintiff herein.
14.3 As indicated above, the test would be of an overall impression, albeit
of an ordinary and reasonable man, who has an imperfect recollection. These
are broad tests, which have to be applied to facts of each case. But before I
proceed further, let me advert to a few cases on the subject of deceptive
similarity.
15. In the case of Micronix India vs Mr. J.R. Kapoor 105 (2003) DLT
CS(OS) 1433/2014 Page 13 of 22
239, the two rival marks were Micronix and Microtel. Micronix was a
registered mark and, therefore, the plaintiff's, who were the proprietors of the
said mark were seeking an injunction qua the defendants on the use of the
rival mark Microtel. The matter, at the interlocutory stage, had travelled to
the Supreme Court, which vacated the injunction granted in favour of the
plaintiff. The Single Judge of this court in the final adjudication came to the
conclusion that there was neither visual nor phonetic similarity between the
two marks. While doing so, the court took into account the fact that the word
"micro" was common to the electronic trade and the style, colour
combination of the two rival trademarks was entirely different. A limited
injunction was, however, granted qua the use of the word booster with the
word 'R'; which the defendant had been using as a part of its mark.
15.1 The important aspect being, that the court adopted the test of overall
impression as articulated by the Supreme Court in the judgement obtaining
between the same parties.
15.2 In the case of F. Hoffmann-la Roche & Co. Ltd. vs Geoffrey Manner
& Co. Pvt. Ltd. (1969) 2 SCC 716 the Supreme Court was hearing an appeal
from a judgement of the Division Bench of the Bombay High Court, whereby
the appellant's plea for rectification of the register by removing the
respondent's trademark 'Dropovit', had been rejected. The appellant had
obtained registration of its trademark 'Protovit'. The appellant sought removal of the rival mark Dropovit from the register of trademarks. The court affirmed the rule that it was necessary to apply both, the visual and phonetic test, and that, the rival marks had to be compared as a whole. According to the court: the true test is, whether the rival marks are likely to cause deception or, confusion or, mistake in the minds of person accustomed to the existing trademark. The application of the principle is best illustrated CS(OS) 1433/2014 Page 14 of 22 in the following observations of the court:
"......8. In order to decide whether the word "DROPOVIT" is deceptively similar to the word "PROTOVIT" each of the two words must, therefore, be taken as a whole word. Each of the two words consists of eight letters, the last three letters are common, and in the uncommon part of the first two are consonants, the next is the same vowel 'o', the next is a consonant and the fifth is again a common vowel 'o'. The combined effect is to produce an alliteration. The affidavits of the appellant indicate that the last three letters "VIT" is a well known common abbreviation used in the pharmaceutical trade to denote vitamin preparations. In his affidavit dated January 11, 1961 Frank Murdoch, has referred to the existence on the Register of about 57 trade marks which have the common suffix "VIT" indicating that the goods are vitamin preparations. It is apparent that the terminal syllable "VIT" in the two marks is both descriptive and common to the trade. If greater regard is paid to the uncommon element in these two words, it is difficult to hold that one will be mistaken for or confused with the other. The letters 'D' and 'P' in "DROPOVIT" and the corresponding letters 'P' and 'T' in "PROTOVIT" cannot possibly be slurred over in pronunciation and the words are so dissimilar that there is no reasonable probability of confusion.
9. In the High Court, counsel for the respondent made a statement that the respondent was willing that the court should direct in exercise of its powers under Section 56(2) that the Registrar should limit the respondent's trade mark "DROPOVIT"
to medicinal and pharmaceutical preparations and substances containing principally vitamins and that the appeal should be decided on this basis. The question of deceptive similarity must therefore be decided on the basis of the class of goods to which the two trade marks apply subject to the limitation agreed to by the respondent. From the nature of the goods it is likely that most of the customers would obtain a prescription from a doctor and show it to the chemist before the purchase. In such a case, except in the event of the handwriting of the doctor being very bad or illegible the chance of confusion is remote. As we have already observed the evidence shows that there are as many as 57 trade marks in the Register of Trade Marks with the suffix "VIT". Therefore, even an average customer would know that in respect of vitamin preparations the word "VIT' occurs in large number of trade marks and because of this he would naturally be on his guard CS(OS) 1433/2014 Page 15 of 22 and take special care against making a mistake....."
15.3 Another case in point is the judgement of the Chancery Division of the English Court in the case of Chappie Ld. vs Warrington Canners Ld. (1955) 72 R.P.C. 73. This was a case where interlocutory relief was sought. The two rival marks were Kit-E-Kat and Pretty Kitty. The former was a registered mark and, therefore, the plaintiff had applied for grant of interlocutory injunction against the defendants seeking restraint on the use of the trademark Pretty Kitty. Both parties were in the business of manufacturing cat foods. In this case as well, the plaintiff had given up the issue of visual similarity as the get-up of the rival labels was different. The only question that the court was called upon to decide, at the interlocutory stage, was whether there was a possibility of confusion while giving oral orders. The court, in fact, articulated the dangers of carrying the doctrine of "imperfect recollection"
too far and, as a matter of fact quoted a judgement of its own court in a case involving the plaintiff and another defendant. The relevant observations in this regard are extracted hereinbelow:
".....The plaintiffs really rest their case on the question of the doctrine of imperfect recollection. In connection with that I feel that I have to bear in mind what was said by Roxburgh, J. in the case of Chappie Ld. Vs Spratts Patents Ld. (1954) 71 R.P.C. 453. In the course of his judgement he says on p. 457: "On the other hand I am impressed with the danger of "carrying this doctrine of imperfect recollection too far. There must be some limit to it. It is a question of degree. The precise limit can much better be determined at the trial when the judge's own impression will be assisted, no doubt, by evidence of what actually has occurred: whereas I have no such evidence at all". I am virtually in the same position because the Defendants have only been selling cat food under this Trade Mark "Pretty Kitty" for a matter of a few months, and none of the evidence filed on behalf of the plaintiffs deals with any actual case of confusion......
....Shortly, the conclusion I have come to is that I should follow the same course that Roxburgh, J. followed in the case before him CS(OS) 1433/2014 Page 16 of 22 and while expressing no view whatsoever as to what is likely to be the outcome of this litigation I should proceed upon the footing that for the immediate future, between now and the trial, as I see it there is little chance of any serious damage accruing to the plaintiffs - certainly not damage of a nature or quantity which could not be adequately dealt with by an injunction and damages later.
Further, I take into account what Roxburgh, J. did, namely, that by the time the trial arrives the Judge who hears the case will have a much better opportunity of judging, because by that time a sufficient period may have elapsed to show whether or not there is in fact going to be confusion: whereas at the present moment it must be entirely a matter of speculation...."
15.4 In the case of the Coca-Cola Co. of Canada Ld. Vs Pepsi-Cola Co. of Canada ld. (1942) 59 R.P.C. 127 the Privy Council was called upon to decide as to whether the mark Pepsi-Cola was deceptively similar to the registered mark Coca-Cola so as to cause confusion in the minds of the general public. The Privy Council recognized the fact that the word Cola was not only common to the two marks but a word common in use in Canada by manufacturers and marketers of beverages. Therefore, the distinctive feature in the two marks was, according to the court, the uncommon parts which were Pepsi and Coca. The court, having regard to the same, made the following apposite observations:
".... In these circumstances the question for determination must be answered by the court, unaided by outside evidence, after a comparison of the Defendant's marks as used with the Plaintiff's registered mark, not placing them side by side, but by asking itself whether, having due regard to relevant surrounding circumstances, the Defendant's mark as used is similar (as defined by the Act) to the Plaintiff's registered mark as it would be remembered by persons possessed of any average memory with its usual imperfections....
..... If it be viewed simply as a word mark consisting of "Coca"
and "Cola" joined by a hyphen, and the fact be borne in mind that Cola is a word in common use in Canada in naming beverages, it CS(OS) 1433/2014 Page 17 of 22 is plain that the distinctive feature in this hyphenated word is the first word "Coca" and not "Cola". "Coca" rather than "Cola" is what would remain in the average memory. It is difficult, indeed impossible, to imagine that the mark "Pepsi-Cola" as used by the defendant in which the distinctive feature is, for the same reason, the first word "Pepsi" and not "Cola", would lead anyone to confuse it with the registered mark of the plaintiff.
If it is viewed as a design mark, the same result follows. The only resemblance lies in the fact that both contain the word "Cola" and neither is written in block letters, but in script with flourishes; but the letters and flourishes in fact differ very considerably, notwithstanding the tendency of words written in script with flourishes to bear a general resemblance to each other. There is no need to specify the differences in detail; it is sufficient to say that, in their Lordships' opinion, the mark used by the Defendant, viewed as a pattern or picture, would not lead a person with an average recollection of the Plaintiff's registered mark to confuse it with the pattern or picture represented by that mark..." 15.5 In the matter of Marly Laboratory Ld's Application to Register a Trade mark (1952) 69 R.P.C. 156 the Court of Appeal dismissed the opposition of a company by the name of Morny Ld. to an application for registration of mark by its trade rival Marly Laboratory Ld. The mark of which, registration was sought by Marly Laboratorty Ld., was in a form of a signature, which according to the opposing party. i.e., Morny Laboratory Ltd., appeared apparently looked like morny. The registration was sought in respect of cosmetic and non-medicated toilet preparations. The court applying the test (to the mark proposed to be registered), of likely deception or confusion, came to the conclusion that the test had been correctly applied based on evidence led before the Registrar of Trademark. The Court of Appeal thus sustained the orders of the authorities below. While dismissing the appeal, it enunciated the following principle:
"....I think that these matters were carefully weighed and carefully estimated both by the learned Judge and by Mr. Faulkner and, having examined the decision and judgement, I CS(OS) 1433/2014 Page 18 of 22 content myself by saying with Lloyd-Jacob, J., that there is here "no reasonable likelihood in this case of deception or confusion being caused to any substantial number of persons if the mark applied for is used fairly and in the normal manner in respect of the cosmetics preparations and non-medicated toilet preparations in respect of which the mark is sought to be registered": in other words, I think that the Applicants did discharge the burden which lay upon them of showing that their suggested mark offended neither of the prohibitions of Sec. 11 or Sec. 12...."
15.6 In the case of Max Factor Hollywood & London (Sales) Ld. v. Callinan Giles & Coy. Ld. (1959) 4 R.P.C. 96, the court was considering an interlocutory motion brought by the plaintiff in respect of its action for infringement and passing off. The plaintiff's cosmetic preparation was described as 'top secret'; which was a hair spray. The hair spray essentially was used to hold a lady's hair in position, and thus, prevented the hair from getting ruffled, untidy or unsightly.
15.7 The defendant's preparation, which was merchandized under the expression 'top model', apart from keeping a lady's hair steady and tidy, also provided an attractive tint to the hair. The device used by both parties was a tin accompanied by a pressure button. As is obvious, the common factor in the two expressions was the use of the word 'top'. The court at the interlocutory stage, based on the evidence available with it, declined to grant an interlocutory injunction.
16. It is clear upon examination of the principles enunciated, in the cases given above, that the ordinary reasonable man often referred to by courts is none other than the judge himself, who on looking at the word mark, in the setting in which it appears, is required to arrive at a conclusion as to whether or not there is deceptive similarity. In ascertaining whether or not the impugned mark is deceptively similar to the registered mark, that part of the rival mark which is common to the trade, is given, relatively, less CS(OS) 1433/2014 Page 19 of 22 significance. Though, while determining as to whether or not there is deceptive similarity, the rival marks are to be taken as a whole. It has to be, however, borne in mind that while applying the test of imperfect recollection, it must not be raised to an unrealistic level. There should be a reasonable likelihood of deception or confusion being caused to a substantial number of persons, provided the impugned mark is used fairly and in the usual manner.
16.1 To this, I must add, that the expression "likely to cause confusion on the part of the public", appearing in sub-section (2) of Section 29 of the T.M. Act, is not an alternative to the expression "likely to have association with the registered mark"; on the other hand, serves to define its scope. [see Sabel BV v. Puma AG, Rudolf Dassler Sport (1998) R.P.C. 199].
16.2 Having looked at the two marks "Blue Valley" and "Blue Very", in the setting in which they appear, I am not able to persuade myself, at this stage, that there is similarity of the nature, which is likely to cause confusion or have the consumers associate defendants' goods with those of the plaintiff. The similarities, in this case are negligible, while the variants are many. The evidence, presently available on record, puts the matter in the zone of speculation with regard to a likelihood of the confusion being caused in the minds of the consumers, as to the source and origin of the goods in issue. This aspect may attain greater clarity at the stage of trial of the suit.
17. Apart from the above, before I conclude, I must also indicate that the averments made in the plaint did lack an element of candour. In the plaint, there was no reference to the disclaimer made, appearing in the trade mark journal, with respect to the word Blue. An honest reference to the nature of action instituted by defendant no.2 was also missing. While Mr Chopra is right that the extract from the journal was filed with the documents, by the plaintiff, it was, as indicated above, included as a part of the plaint filed by CS(OS) 1433/2014 Page 20 of 22 defendant no. 2, with no separate index. The plaintiff quite literally adhered to the adage of having the court discover a "needle in a hay stack". The invoices for the period 2008-2009 pertain to Su-zon's Health Care Industries. There is no averment in the plaint, as to what is the connection with the Su- zon's Health Care Industries and the plaintiff. There are, presently, no invoices on record for the period 2010 and 2011. As indicated above, there are about five (5) invoices of Shree Sudarshan Cosmetics, which is a proprietorship concern of the plaintiff.
17.1 Mr Chopra, learned counsel for the plaintiff, in his oral submissions did try to suggest that Shree Sudarshan Cosmetics was earlier referred to as Su-zon's Health Care Industries, I could not but help notice the photocopy of the documents, which the plaintiff sought to place on record, (which I refused for the reasons stated above), that Su-zon's Health Care Industries was conceived as a partnership firm, on 02.12.2006, between the wife of the plaintiff, that is, Mrs Sangita Jain and, one, Sh. Purshottam Jain, each holding 50% share in the partnership firm.
17.2 This material, even if taken on record, could not have helped the cause of the plaintiff, unless necessary amendments were made in the plaint. Therefore, the material presently available on record, to the extent it pertains to Su-zon's Health Care Industries, is completely irrelevant unless it is backed by relevant pleadings.
17.3 While, there is a reference to sales figures in paragraph 12 of the plaint vis-a-vis the period spanning 2008-09 to 2013-2014, the plaintiff has failed to file any of its balance sheets which would have, at least, prima facie, established the veracity of these claims. As noticed above, the defendants have disputed the plaintiff's claim that its trademark Blue Valley is a well- known mark, which has attained distinctiveness and secondary meaning to an CS(OS) 1433/2014 Page 21 of 22 extent that it enables the consumers to relate the mark to the plaintiff's goods. One must bear in mind that the consumers of the product in issue, which is a hair removal cream, will comprise generally of ladies, who would surely be able to distinguish, the two rival marks.
18. Therefore, for the reasons given hereinabove, I am not inclined to continue with the interim order dated 16.05.2014, passed by this court. It is accordingly vacated.
19. Needless to say, the observations made above by me, are prima facie in nature and will not affect the merits of the case.
20. The defendants though, are directed to maintain accounts of sales made by them of various cosmetics products, including hair removal cream, under the trademark Blue Very, and file the same, every quarter, with this court, with a copy to the plaintiff.
CS(OS) No. 1433/201421. List on 26.11.2014 before the learned Jt. Registrar for completion of pleadings, and admission and denial of documents. The parties will adopt the modality of filing affidavits to admit and deny each other's documents.
RAJIV SHAKDHER, J OCTOBER 14, 2014 kk CS(OS) 1433/2014 Page 22 of 22