Bombay High Court
Yogi Ayurvedic Products Pvt.Ltd vs The Yogi And 2 Ors on 8 February, 2021
Author: G. S. Patel
Bench: G.S. Patel
32-IAL1606-2021 IN COMIPL1604-2021.DOCX
Atul
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO. 1606 OF 2021
IN
COMMERCIAL IP SUIT (L) NO. 1604 OF 2021
Yogi Ayurvedic Products Pvt Ltd ...Plaintiff
Versus
The Yogi & Ors ...Defendants
Mr Alankar Kirpekar, with Jaya Manghwani, & Shekhar Bhagat, i/b
MAG Legal, for the Plaintiff.
CORAM: G.S. PATEL, J
DATED: 8th February 2021
PC:-
1. Mr Kirpekar has attempted service. He will file an Affidavit of
Service by 12th February 2021. He states that service by email has
Digitally been effected. Service in hard copy by courier has not been done or
signed by
Atul G.
Atul G.
Kulkarni has been obstructed. The premises in question are closed. Not only
Kulkarni Date:
2021.02.09
11:17:43
that, but the security staff in the building do not let anybody enter.
+0530
The Defendants are in Uttar Pradesh. Mr Kirpekar states that he has
no choice but to press his application for ad-interim relief after
attempted notice. I agree. Above all, it seems that while the
Defendants are avoiding service, they continue to vend their products
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online; and there is a prima facie case made out against them. I will
therefore permit Mr Kirpekar to proceed with his application for ad
interim relief.
2. The Plaintiff, a private limited company, with its registered
office in Belgaum and an administrative office in Nashik, has filed this
suit for injunction and damages seeking protection for a certain class
of goods under the trade mark 'YOGI' with formative marks.
3. The 1st Defendant is a partnership firm. Defendants Nos. 2
and 3 appear to be its partners. The Defendant No. 1 seems to have
started an online presence through a website called
www.theyogi.store, with a corresponding email ID. It has also sought
registration of a trade mark 'THE YOGI' under two application Nos.
3856862 and 4301535.
4. The Plaintiff claims that it has well over a dozen prior
registrations, and the Defendants are infringing these. There is also a
case sought to be made out in passing off. The rival goods by the
Defendants are found in Mumbai, and hence there is no Petition for
leave under Clause XIV of the Letters Patent.
5. The Plaintiff was originally incorporated as Shalaka
Enterprises Pvt Ltd. Its name was subsequently changed several
times. According to the Plaintiff, it and its predecessors-in-title
adopted the trade mark 'YOGI' and other formative marks of which
that expression is the essential, prominent, central, leading, and
memorable feature. In paragraph 5 of the plaint there is a list of
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registrations of the YOGI formative marks; ranging from an oral
hygiene preparation under Class 3 registered as a word mark, to hair
wash, also in Class 3, registered as a device mark. There are
registrations of the word YOGI itself and of various formative marks.
The Plaintiff's applications for the word mark YOGI in Class 3 and
Class 5 are pending registration. There are, therefore, a number of
registrations of which YOGI is the central feature, and multiple
device or label marks containing YOGI have already received
registrations.
6. According to the Plaintiff, it or its predecessors-in-title
adopted the mark about 10 or 11 years ago in 1999-2000. There were
manufacturing licenses for these preparations, most of which are
Ayurvedic. The first license was of 22nd February 2002. Some
details are annexed. There is evidence to show that there was an
agreement of 2003, between one of the Plaintiff's predecessors-in-
title and the Plaintiff, for sale of Ayurvedic products. In 2009, the
Plaintiff obtained a license for manufacturing and marketing the
products under this mark. There is also an assignment from the
predecessor-in-title in favour of the Plaintiff, so that there can be little
doubt that the Plaintiff is now the registered proprietor of the marks
in question. It is on this basis that the Plaintiff says that it has been
using the mark openly and continuously since 1999-2000.
7. According to the Plaintiff, there are significant volumes of sales
generated through sales of these products. Across all products, for
the years 2015-2016, the sales were in excess of Rs. 3.93 crores.
Advertisement expenses were over Rs. 1.6 crores. For 2016-2017, the
sales touched nearly Rs. 5 crores. This figure was exceeded
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considerably in 2017-2018, although there has been a slight decline
subsequently. These business cycles will not matter much, at least at
this prima facie stage. There is also evidence to show that the Plaintiff
has spent a considerable amount on advertising. In 1999, the Plaintiff
registered the domain name www.yogiindia.com. The products of the
Plaintiff are depicted here. They are also available at other online
retailers and vendors. Thus, the Plaintiff says that they have earned
considerable reputation and goodwill in the mark.
8. According to the Plaintiffs, sometime in January 2021, from a
search in the Trade Mark Registry, the Plaintiff found that the
Defendants had sought registration of the mark 'THE YOGI', both
as a word and a device mark, in relation to identical or very similar
Ayurvedic and herbal preparations. These applications are pending
registration. Application No. 3856862 is for the word mark 'THE
YOGI'. It is entered on a 'proposed-to-be-used' basis. The other
mark under application No. 4301535 was filed on 23rd September
2019 for a device mark 'THE YOGI', also shown as 'proposed-to-be-
used'.
9. On further investigation, the Plaintiff found that the
Defendants had tried to create an online presence under the domain
name www.theyogi.store. This was apparently established on 27th
March 2018. The Defendants, strangely, purport to use the symbol
'TM' on their products, although they have no registration of any
mark.
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10. I turn now to Mr Kirpekar's submissions. It is true that the
mark YOGI itself, as a word per se, is yet pending registration in
Classes 3 and 5. It has however received registrations as a word mark
in Class 17, and as a device mark in Classes 1, 16, 28, 29, 30, 31, and
32. I will accept, and Mr Kirpekar does not seriously contest, that the
word YOGI is not an invented word. It is a common word in almost
any Indian vernacular language, and what is represented in English is
a transliteration of that word. It has a common meaning. Yet, Mr
Kirpekar submits, this does not of and by itself make word YOGI
descriptive of the product. The conjunction of YOGI and the
product cannot be said to be one where the word describes the nature
of the product or even its origin. It is like, he submits, using the name
of a common Indian animal -- say, 'Haathi' -- in conjunction with
matchsticks or cigarettes. The appellation is common and receives no
protection on its own. Its use with a range of products may, however,
be unique to a claimant and may lend itself to a claim of exclusivity
when used with those, or similar, goods. The common nature of the
word itself is not a determinant sufficient to refuse relief. What
matters is that the word YOGI used in conjunction with these
Ayurvedic and herbal preparations has attained distinctiveness
within that segment.
11. There is, prima facie, considerable force in this argument. The
Plaintiff may never be able to get a restraint against the world at large
from using the word YOGI in relation to, let us say laptops,
computers, or automobiles, but within the class and the market
segment that the Plaintiff occupies, there is no reason why the
registration, when granted, should not be entitled to statutory
protection. This is not the kind of case that falls within the limited
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exceptions carved out in Lupin Limited v Johnson & Johnson,1 where
one would need to order an investigation into how any of these marks
came to be registered. One must accept the registration as it stands in
relation to the products, goods, and services in respect of which the
mark and its formative marks are used. This will apply as much to the
word mark as to the device mark itself. The test in infringement,
therefore, is whether in relation to this market segment and this class
of goods (Ayurvedic/herbal preparations), the Defendants mark
'THE YOGI' can be said to be deceptively and confusingly similar
to the Plaintiffs mark 'YOGI'.
12. The fact that the Plaintiff's applications in classes 03 and 05
are pending will also not make a material distinction. What is of
consequence here is not so much the statutory classification as the
range of products and the nature of their preparation. It would be
difficult to carve out a distinction such as this: that the Plaintiff can
maintain an infringement action for its YOGI mark for one set of
Ayurvedic or herbal goods, but for another set that falls in class 03 or
05, it must be confined to a cause of action in passing off. This is not
intended as a generalization, but is specific to the facts of this case,
where, prima facie, there is enough material to show distinctiveness
in the mark in relation to Ayurvedic and herbal preparations.
13. Indeed, I believe there is sufficient phonetic, structural, and
visual similarity between the two marks. The test remains that of the
consumer of imperfect recollection and average intelligence. He is
1 2014 SCC OnLine Bom 4596 : (2015) 1 Mah LJ 501 (FB) : (2015) 1 Bom
CR 497 (FB)
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unlikely to make a distinction between products under the mark
YOGI and those under the mark THE YOGI when the product
range is almost -- or even exactly -- the same. This may require
illustration, and if one looks at the range of products that are listed
against the registrations, in a table below paragraph 5 of the plaint,
one sees that there is everything here from hair care products to
digestives; and even soft drinks such as a lemon ginger punch called
YOGI VITA. The range itself tells us that if any similar product is
introduced by a competitor, the average consumer is bound to (i)
mistake one for the other; and (ii) be led to believe that the new
product actually emanates from the Plaintiff.
14. The second aspect is, of course, the cause of action in passing
off. In 1978-79, Diplock LJ set out five guidelines for passing off
actions in Erven Warnink v Townend & Sons Ltd.2 Oliver LJ in Reckitt
& Colman Products Ltd v Borden Inc.3 distilled these into the three
probanda in the tortious actions in passing off that we now know as
the 'Classic Trinity': (i) goodwill owned by a claimant; (ii)
misrepresentation; and (iii) damage to that goodwill. The Classic
Trinity places on a plaintiff the burden of proving goodwill in its
goods or services, trade dress, brand, mark or even the thing itself. A
plaintiff must also show false representation (it matters not that this
is unintended) to the public that leads it to believe that the goods or
services of the defendant are those of the plaintiff. Fraud is not a
necessary element.4 The test of deception or its likelihood is that of
the common person. Here again, the similarity tests used in
2 [1979] AC 731, 742 (HL). This is the famous 'Advocaat' case.
3 [1990] 1 All ER 873
4 Laxmikant V. Patel v Chetanbhai Shah & Anr, AIR 2002 SC 275.
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infringement actions have a role to play: a court will look to the aural,
visual and conceptual similarity. A plaintiff need not prove actual or
special damage; a reasonably foreseeable probability is sufficient.
15. As to the question of the website, many companies have
alternative domain names. Two identical ones should not be
permitted, particularly when the Plaintiffs domain name includes its
registered mark. This is another reason to grant Plaintiff the reliefs
sought.
16. On any measure, therefore, there is a more than sufficient
prima facie case made out. The balance of convenience is clearly with
the Plaintiff. Irretrievable prejudice will be caused to the Plaintiff if
reliefs are denied and by any additional delay. Mr Kirpekar points out
that despite not accepting service, the Defendants are evidently
taking online orders. His Attorneys put through a trap order today for
something called 'The Yogi Red Onion Shampoo' on Amazon and
delivery has been promised in a few days. This makes it all the more
necessary to grant the injunction.
17. In this view of the matter, I am inclined to make an ad-interim
order in terms of prayer clauses (a), (b), and (c) of the Interim
Application which read thus:
"a) that pending the hearing and final disposal of the suit,
the Court Receiver, High Court, Bombay be appointed
under Order XL Rule 1 of Civil Procedure Code, 1908 as the
Receiver of the Respondents' products bearing the
impugned trade mark 'THE YOGI' or any other product bearing the mark deceptively similar to the Applicant's Page 8 of 11 8th February 2021 32-IAL1606-2021 IN COMIPL1604-2021.DOCX aforesaid Trade Marks as shown in Exhibits "B" to "B-22"
to the Plaint and/or Exhibit "J-1" to the Plaint with all powers to enter in the premises of the Respondents and/or their servants, agents, dealers, stockist and distributors at any time of the day or night without notice to the Respondents and/or their servants, agents, dealers, stockist and/or distributors and in presence of Applicant's representatives and with the help of local police authorities, if found necessary by Court Receiver, to seize and take charge, possession and control of the impugned products bearing the impugned trade mark 'THE YOGI' and also to take charge and possession of all other goods, records, account books showing manufacture, stock and/or sale/export of impugned products bearing the said impugned trade mark in possession and control of the Respondents and/or their agents, servants, distributors, stockist and/or dealers;
(b)that pending the hearing and final disposal of the Suit the Respondents by themselves, through their Directors, agents, servants, stockists, dealers and/or distributors, partners, exporters, assignees or otherwise be restrained by an order of temporary injunction of this Hon'ble Court from infringing the Applicant's registered Trade Marks bearing registration Nos. 836921, 1240305, 1514090, 3727330, 836920, 974590, 1240304, 3727336, 3961590, 974060, 975011, 975241, 975248, 975249, 975250, 975251, 975252, 1594001, 1594003, 1594004, 3727335, 3727337 and 3961589 registered in various cognate and relevant classes of the Fourth Schedule of the Trade Marks Act, 1999 as shown in Exhibits 'B' to 'B-22' to the Plaint by using the impugned trade mark "THE YOGI" and/or impugned website www.theyogi.store as shown in Exhibits 'L', 'M', 'O', and 'O-1' to the Plaint and/or any other deceptively similar trade mark to the Applicant's Trade Mark Nos. 836921, 1240305, 1514090, 3727330, 836920, 974590, 1240304, 3727336, Page 9 of 11 8th February 2021 32-IAL1606-2021 IN COMIPL1604-2021.DOCX 3961590, 974060, 975011, 975241, 975248, 975249, 975250, 975251, 975252, 1594001, 1594003, 1594004, 3727335, 3727337 and 3961589 as shown in Exhibits 'B' to "B-22' to the Plaint registered in various cognate and relevant classes of the Fourth Schedule of the Trade Marks Act, 1999 so as to infringe the registered trade mark of the Applicant in any manner whatsoever;
(c)that pending the hearing and final disposal of the Suit the Respondents by themselves, through their Directors, agents, servants, stockists, dealers and/or distributors, partners, exporters, assignees or otherwise be restrained by an order of temporary injunction of this Hon'ble Court from manufacturing and/or trading and/or otherwise dealing in the products bearing the impugned trade mark 'THE YOGI' and/or from using the impugned website www.theyogi.store as shown in Exhibits 'L', 'M'. 'O', and 'O-1' to the Plaint or any other trade mark deceptively similar to the Applicant's well-known trade mark 'YOGI' so as to pass off or enable others to pass off the Respondents' goods as and for that of the Applicant's goods in any other manner whatsoever."
18. The Court Receiver will not insist on hard-copy correspondence, but will act on production by email of a digitally signed copy of this order.
19. The Court Receiver must immediately seize and seal all offending products found in the premises of the Defendant. The Court Receiver is empowered to break open, if necessary with police assistance, the locks and doors of all such premises belonging to the Defendant. The police authorities to act forthwith on production of a digitally signed copy of this order.
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20. The Court Receiver to submit report to this Court by 23rd March 2021.
21. Affidavit in Reply is to be filed and served on or before 12th March 2021. Affidavit in Rejoinder is permitted to be filed and served on or before 19th March 2021.
22. List the Interim Application for hearing and final disposal on 23rd March 2021.
23. Liberty to the Defendant/s to apply for a variation, modification, or recall of this order after one week's prior written notice to the Advocates for the Plaintiff.
24. Liberty to the Plaintiffs to communicate a copy of this order to Amazon, Flipkart and all other retailers as well.
25. This order will be digitally signed by the Private Secretary of this Court. All concerned will act on production of a digitally signed copy of this order..
(G. S. PATEL, J) Page 11 of 11 8th February 2021