Gujarat High Court
Piruz Khambatta Thro Poa Zubin ... vs Deputy Registrar Of Trademarks on 4 December, 2023
NEUTRAL CITATION
C/CIA/18/2023 ORDER DATED: 04/12/2023
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IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/CIVIL APPEAL NO. 18 of 2023
With
CIVIL APPLICATION (FOR STAY) NO. 1 of 2023
In R/CIVIL APPEAL NO. 18 of 2023
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PIRUZ KHAMBATTA THRO POA ZUBIN KHAMBHATTA
Versus
DEPUTY REGISTRAR OF TRADEMARKS
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Appearance:
MR DEVANG NANAVATI, SENIOR ADVOCATE with MR JATIN Y
TRIVEDI(2616) for the Petitioner(s) No. 1
for the Respondent(s) No. 1
MR AKSHAY A VAKIL(5473) for the Respondent(s) No. 2
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CORAM:HONOURABLE MR. JUSTICE NIRAL R. MEHTA
Date : 04/12/2023
ORAL ORDER
1. This Civil Appeal under Section 91 of the Trade Marks Act, 1999 (for short 'the Act') has arisen from the order dated 12.7.2023 passed by the Assistant Registrar of Trade Marks in Trademark Opposition No.AMD/250912 to TM Application No.1392122 in Class 32 for trade mark/label 'RASANAND'.
2. A label mark consisting of words 'RASANAND', the real flavor of India with device of leaf was sought to be registered by the respondent herein vide Application No.139213 in Class 32 on 18.10.2005 in respect of fruit juice, carbonated and Page 1 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined non-carbonated soft drink and concentrate for preparation for the same with user claimed since 8.8.2004.
3. After due process, the said application was advertised in Trademark Journal No.1346-0 dated 16.6.2006 and was made available to public on 29.8.2006. Pursuant to the same, on 28.12.2006, the appellant herein has filed a notice of opposition objecting to the registration of the impugned trade mark mainly based on Sections 9, 11 and 18 of the Act. According to the appellant, they are one among the leader in the business of manufacturing a wide variety of food products since last decades. The appellant is the proprietor of various well-known trade mark including the trade mark with words 'RAS' including RASNA, RASANA, RUSS, RACHNA, RASME, RASRAJ, RASIK, ORANJOLT, JUICY, ORCHY, AMRIT, JUC-UP etc. According to the appellant herein, the trade mark sought to be registered 'RASANAND' is deceptively similar to various trade mark of opponent including RAS, RASNA AND RASANA and thereby, use of the said impugned trade mark by the respondent herein would lead to immense confusion amongst the purchasing public and the trade.
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4. The respondent herein filed the counter statement on 9.10.2017 stating, inter-alia, that since the year 2004, they are manufacturing, marketing and selling the fruit juice, carbonated and non-carbonated soft drink and adopted the impugned trade mark in relation to the said goods. Thereafter, both the parties have submitted evidence in support of their contentions by way of affidavit. It is pertinent to note that the respondent herein thereafter filed an application being Trademark/M on 20.12.2021 requesting, inter-alia, to restrict their goods to read as 'fruit juice', non-carbonated soft drink.
5. The Assistant Registrar of Trade Mark , having heard the learned advocates appearing for the respective parties and having gone through the material produced on record by way of evidence, vide its order dated 12.7.2023, dismissed the Trademark Opposition No.AMD/250912 filed by the appellant and ordered to process TM Application No.1392122 in Class 32 for registration.
6. Being aggrieved and dissatisfied by the aforesaid, the appellant herein has approached this Court by way of this Appeal under Section 91 of the Act.
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7. I have heard learned Senior Advocate Mr.Devang Nanavati assisted by learned advocate Mr.Jatin Trivedi for the appellant and learned advocate Mr.Akshay Vakil for the respondent.
8. With the consent of both the learned advocates for the respective parties, the present Appeal is taken up for final hearing. Accordingly, learned advocates for the respective parties have supplied the paper-book of the record and proceedings of the Registrar of Trade Marks.
9. Learned Senior Advocate Mr.Devang Nanavati for the appellant, while assailing the impugned order, has made the following submissions:
(I) Learned Senior Advocate Mr.Devang Nanavati submitted that the reasoning and conclusion based on observation is ex-
facie erroneous and thereby, the impugned order deserves to be quashed and set aside. That the findings recorded by the learned Assistant Registrar inasmuch as the goods of both the parties are different is against the evidence on record. Thus, Page 4 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined according to learned Senior Advocate Mr.Devang Nanavati, the impugned order passed by the Assistant Registrar is not with proper application of mind and thereby, requires to be quashed and set aside.
(II) Learned Senior Advocate Mr.Devang Nanavati submitted that while passing the impugned order, the learned Assistant Registrar, Trade Marks has completely lost sight from the provisions of statutes and established proposition of law. According to learned Senior Advocate Mr.Devang Nanavati, the learned Assistant Registrar has not properly appreciated the law of infringement as well as relevant facts on record and thereby, he requested this Court to quashed and set aside the impugned order.
(III) Learned Senior Advocate Mr.Devang Nanavati vehemently submitted that the impugned trade mark is ex- facie deceptively similar to the trade mark owned by the present appellant which would most likely to cause confusion amongst the customers and traders with average intelligence and imperfect recollection. Thus, according to learned Senior Advocate Mr.Devang Nanavati, if the impugned mark is Page 5 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined allowed to be registered, in that event, the same would be in violation of Section 11(1) of the Act.
(IV) Learned Senior Advocate Mr.Devang Nanavati submitted that the learned Assistant Registrar has committed an error in not appreciating the provision of Section 11(2) of the Act. According to learned Senior Advocate Mr.Devang Nanavati, the registered trade mark of the present appellant i.e. 'RASNA' is a well-known trade mark in India and thus, in view of Section 11(2) of the Act, the impugned order directing registration of trade mark called 'RASANAND' is complete violation of provision of Section 11(2) of the Act and thereby, requires to be quashed and set aside.
(V) Learned Senior Advocate Mr.Devang Nanavati submitted that the learned Assistant Registrar, Trade Marks has not given due consideration to the provisions of Section 11(8) r/w Section 11(10) of the Act. According to learned Senior Advocate Mr.Devang Nanavati, Section 11(10) of the Act is mandatory for the Registrar to protect well-known Trade Mark against the identical or similar marks. Learned Senior Advocate Mr.Devang Nanavati further submitted that Page 6 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined however, the learned Assistant Registrar has not appreciated the fact that the Trade Mark ' RASNA' has been determined as well-known Trade Mark in the market by the Delhi High Court in the case of Piruz Khambatta v. Soex India Pvt. Ltd., the Delhi High Court was pleased to prevent the use of words 'PAN RASNA' and that has resulted into serious miscarriage of justice.
(VI) So as to substantiate the contentions, learned Senior Advocate Mr.Devang Nanavati has relied upon the following decisions;
(1) Amritdhara Pharmach v. Satya Deo Gupta, reported in AIR 1963 SC 449.
(2) Rupa & Co. Ltd. & Anr. v. Dawn Mills Co. Ltd. & Anr., reported in AIR 1998 Guj. 247.
(3) Kabushiki Kaisha Toshiba Trading as Toshiba Corp. v. Mr.S.K. Sil & Anr., reported in 2011 SCC Online 3128. (4) Tata SIA Airlines Limited v. Union of India, reported in Page 7 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined 2023 SCC Online Del 3446.
(5) Pidilite Industries Limited v. Jubilant Agri & Consumer Products Ltd., reported in 2014 SCC Online Bom 50. (6) Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., reported in (2001) 5 SCC 73.
9.1 By making above submissions, learned Senior Advocate Mr.Devang Nanavati for the appellant requested this Court to allow the present Appeal by quashing and setting aside the impugned order passed by the learned Assistant Registrar, Trade Marks.
10. Per contra, learned advocate Mr.Akshay Vakil for the respondent, while supporting the impugned order, has made the following submissions:
(I) Learned advocate Mr.Akshay Vakil has vehemently opposed the present Appeal contending, inter-alia, that the impugned order passed by the learned Assistant Registrar, Trade Marks is perfectly justified and is within four corners of Page 8 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined law and thereby, does not require any interference by this Court.
(II) Learned advocate Mr.Akshay Vakil submitted that the respondent has adopted the Trade Mark 'RASANAND' in artistic manner which is visually, graphically and phonetically entirely different from the Trade Mark 'RASNA' of the appellant and thereby, objection under Sections 9 and 11 of the Act cannot be maintained. Thus, the impugned order passed by the learned Assistant Registrar is absolutely legal and cannot be said to be any perversity therein.
(III) Learned advocate Mr.Akshay Vakil submitted that the words 'RASNA' and 'RASANAND' are entirely different and thereby, not capable of creating any confusion and deception amongst the public. According to learned advocate Mr.Akshay Vakil, the words 'RASNA' and 'RASANAND' cannot be inter-
changeable. Learned advocate Mr.Akshay Vakil submitted that the suffix part 'ANAND' creates a different phonetic sound. He also submitted that visually also, the words 'RASNA' and 'RASANAND' are different and thereby, those words cannot be said to be identical or similar trade marks.
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Under the circumstances, learned advocate Mr.Akshay Vakil submitted that the impugned order passed by the learned Assistant Registrar, Trade Marks cannot be said to be illegal. (IV) Learned advocate Mr.Akshay Vakil further submitted that the words 'RASNA' and 'RASANAND' are substantially different and, therefore, the appellant has never considered 'RASANAND' to be similar to the other Trade Marks i.e. 'RASNA, RASANA, RUSS, RACHNA, RASME, RASRAJ, RASIK, ORANJOLT, JUICY, ORCHY, AMRIT, JUC-UP' etc. The appellant has never applied for registration of trade mark for 'RASANAND'.
(V) Learned advocate Mr.Akshay Vakil submitted that the mark 'RASNA' as claimed to be the well-known trade mark, is only entitled protection qua the identical and similar mark and not altogether entirely different mark. Learned advocate Mr.Akshay Vakil submitted that the mark 'RASNA' and "RASANAND' both cannot be said to be visually, structurally and phonetically identical or similar and thereby, according to learned advocate Mr.Akshay Vakil, the provisions of Section 11(8) r/w Section 11(10) of the Act are not applicable.
Page 10 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined (VI) Learned advocate Mr.Akshay Vakil lastly submitted that
undisputedly, the respondent is using the mark 'RASANAND' on its product since 8.8.2004 and since then till the matter was decided by the learned Assistant Registrar, Trade Marks, the appellant has not produced any single evidence so as to justify their apprehension that mark 'RASANAND' has ever created any confusion amongst the customers and the traders. He further submitted that the appellant has not initiated any proceedings before the competent civil court with regard to the injunction of the use of mark 'RASANAND'. Learned advocate, therefore, submitted that by-now, the product with mark 'RASANAND' is in market since more than 19 years and thereby, has gained credential on its own and if the registration as sought for is not granted, it would amount to immense loss to the respondent.
(VII) In support of his contentions, learned advocate Mr.Akshay Vakil has placed reliance upon the following decisions :
(1) Novartis AG v. Crest Pharma Pvt. Ltd. & Anr., reported Page 11 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined in 2009 (41) PTC 57 (Del).
(2) Strassenburg Pharmaceuticals Limited v. Himalaya Drug Company & Anr., reported in 2002 (24) PTC 441 (Cal).
(3) Chanel Ltd. v. Sunder Chemicals Agarbatti Works (P) Ltd. & Anr., reported in 2003 (6) PTC 52 (Del.).
(4) Chemical Industrial and Pharmaceutical Laboratories Ltd. v. A. Wulfing & Anr., reported in PTC (Suppl) (1) 205 (Bom).
(5) Cadila Healthcare Ltd. v. Swiss Pharma Pvt. Ltd., reported in 2002 (24) PTC 708 (Guj.).
10.1 By making above submissions, learned advocate Mr.Akshay Vakil requested this Court to dismiss the present Appeal.
11. I have heard the learned advocates appearing for the respective parties and have gone through the documentary evidence produced by way of paper-book by the learned Page 12 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined advocates appearing for the respective parties. No other and further submissions have been canvassed by the respective parties, except what is stated herein-above.
12. Having heard the learned advocates appearing for the respective parties and having perused the material on record, a short question that falls for consideration of this Court is whether the marks "RASNA' and 'RASANAND' can be said to be deceptively similar and thereby, the learned Assistant Registrar, Trade Marks has committed any error while passing the impugned order ?
13. Before I proceed to decide the aforesaid question, in my view, one thing that has to be kept in mind is that the Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Thus, from basic yet important observations recorded by Parkar,J. in Pianotist Company's Application reported in (1906) 23 RPC 774 require to be kept in mind, which can be quoted, thus :
"You must take the two words. You must Judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider Page 13 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined 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"
14. At this stage, it would be apt to have pictorial comparison of both the products with their marks so as to have more clarity while adopting the aforesaid test : Page 14 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023
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15. Having compared the above two products with their respective marks, in my considered opinion, both the marks cannot be said to be deceptively similar. Ex-facie, the marks are distinct to each other phonetically, graphically, visually and structurally. The respondent's impugned mark 'RASANAND' cannot be said to be deceptively similar to the registered mark 'RASNA' of the appellant. While pronouncing 'RASANAND', the same is also not creating any confusion in the mind of the customers, who actually wanting to buy product called 'RASNA'.
16. The product mark 'RASANAND' has altogether different meaning. Basically, 'RASANAND' is a joint of two Gujarati words which, if separated, can be read as 'RAS' and 'ANAND' and both have different descriptive meaning. At this stage, it also requires to be noted that the mark 'RASANAND' has been created as one joint Gujarati word. But, by way of different colours, both the words 'RAS' and 'ANAND' are distinguished. Thus, in my view, the customers and/or traders do not get confused as both are visually different. Therefore, the mark 'RASANAND' cannot be in any manner said to be deceptive to the word 'RASNA'. Even the customers with imperfect Page 16 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined recollection with average intelligence would not be confused between 'RASNA' and 'RASANAND' as both the marks are distinctly different to each other.
17. In addition to the aforesaid, if we compare both the products with their marks, their colour, lable, shape and size of bottles, everything that may create confusion are distinctively different. In my view, the customers and/or traders, those who are intending to buy a specific product called 'RASNA', would not in any manner be deceived and/or confused against the impugned mark 'RASANAND'.
18. In the backdrop of the aforesaid discussion, now, I would deal with the contentions raised by learned Senior Advocate Mr.Devang Nanavati for the appellant in seriatim :
(I) The main contention of the learned Senior Advocate Mr.Devang Nanavati for the appellant that the impugned mark if allowed to be registered, the same would violate the provision of Section 11 of the Act is concerned, in my opinion, the provision of Section 11(1) of the Act would only be applicable in case if the identity of the mark sought to be Page 17 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined registered with an earlier trade mark is similar in terms of goods or service and there exists likelihood of confusion on part of the public. In the instant case, as discussed herein-
above, the impugned mark 'RASANAND' cannot be said to be identical or deceptively similar as that of mark 'RASNA'. Both the products and marks are visually, phonetically, graphically and structurally different and thereby, the confusion amongst the public is not likely to arise. Under the circumstances, the contention raised by learned Senior Advocate Mr.Devang Nanavti is not worth accepting and is accordingly rejected. (II) So far as the second contention with regard to application of provision of Section 11(2) of the Act is concerned, in my view, the said provision is applicable in case of marks sought to be registered is identical or similar with the earlier trade mark declared as well-known mark in India. If the provision of Section 11(2) is read, it appears that the said provision is enacted to protect registered well-known mark in India. From the use of later mark which would take unfair advantage or be detrimental to the distinctive character or repute of the earlier well-known trade mark. However, in the instant case, in my view, the mark 'RASANAND' is Page 18 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined completely different as that of mark 'RASNA'. Pertinently, admitted, the mark 'RASANAND' is already in market since the year 2004 and since then till today, the appellant could not bring on record any evidence so as to suggest that in all these years, the mark ''RASANAND' has gained unfair advantage or acted detrimental to the repute of the mark 'RASNA'. Under the circumstances, if the well-known mark is not in any way prejudicial by the mark sought to be registered, in that event, the provision of Section 11(2) of the Act would not come into play and accordingly, the contention raised by the appellant is rejected.
(III) So far as the contention raised by learned Senior Advocate Mr.Devang Nanavati with regard to the provision of Section 11(8) r/w Section 11(10) of the Act is concerned, in my considered opinion, the provision of Section 11(8) and application thereof is not relevant. I say so because the provision of Section 11(8) obliges the Registrar to consider trade mark as well-known trade mark for registration if the said trade mark is determined to be well-known in one relevant section of the public in India by the Registrar. In my view, here is not a case that the Registrar has refused to Page 19 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined register well-known trade mark. So far as the provision of Section 11(10) is concerned, the Registrar is cast with a duty to protect a well-known trade mark against the identical or similar trade mark and to take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark. The said provision, in my considered opinion, also not applicable because the trade mark - 'RASANAND' which is sought to be registered cannot be said to be identical or similar with trade mark 'RASNA' claimed to be a well-known trade mark and thereby, the argument advanced by learned Senior Advocate Mr.Devang Nanavati with regard to provision of Section 11(8) r/w Section 11(10) of the Act is misconceived being misconception of law and accordingly, the same is rejected.
(IV) So far as the reliance placed by learned Senior Advocate Mr.Devang Nanavati for the appellant in case of Amrutdhara Pharmacy (Supra) is concerned, the Apex Court in the said case had an occasion to consider overall similarity of two composite words 'Amrutdhara' and 'Lakshmandhara'. In the said case, both the names are in use in respect of the same description of goods i.e. medicinal preparation for the Page 20 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined alleviation of various ailments and thus, the Apex Court having observed that both the names structurally and phonetically similar and thereby, likely to deceive or cause confusion. However, in the instant case, if both the words 'RASNA' which is a Rose Syrup and 'RASANAND' which is a Rose Sarbat are compared, such comparison would not lead to create any confusion between the two products, as both the marks 'RASNA' and 'RASANAND' are distinctively different visually, phonetically, structurally and graphically. Under the circumstances, if the comparison test adopted in the said judgment of the Apex Court, then it would reveal that both the words 'RASNA' and 'RASANAND' would not create any deception and/or confusion amongst the customers and the traders.
(V) So far as the reliance placed by learned Senior Advocate Mr.Devang Nanavati for the appellant in case of Rupa & Co. Ltd. (Supra) is concerned, the dispute therein was about usage of word 'DON' conjunctively or disjunctively in respect of hosiery products. While deciding the said case, the Apex Court has relied upon the judgment in case of K.R. Chinna Krishna Chettiar v. Sri Ambal & Co. & Anr., reported in AIR Page 21 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined 1970 146, wherein the Apex Court has observed, thus, as under :
"The resemblance between the two marks must be considered with reference to the ear as well as the eye and ocular comparison is not always the decisive test. Therefore, even if there be no visual resemblance between the two marks, that does not matter when there is a close affinity of sound between the words which are distinctive features of the two marks."
The Apex Court, in the case of Rupa & Co. Ltd. (Supra) further observed in Para.49 as under :
"Applying the test as aforesaid, the Court came to the conclusion that : "There is no evidence of actual confusion, but that might be due to the fact that the appellant's trade is not of long standing. There is no visual resemblance between the two marks, but ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. There is a close affinity of sound between 'Ambal' and 'Andal' .......... The distinguishing feature of the respondents mark is Ambal while that of the appellant's mark is Andal. The two words are deceptively similar in sound. The name Andal does not cease to deceptively similar because it is used in conjunction with a pictorial device."
Keeping in mind the aforesaid, if the facts of the present Page 22 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined case are considered, it would appear that the two marks, namely, 'RASNA' and 'RASANAND' cannot be said to be visually resembling or even occularly similar. Thus, if the two marks are considered with reference to the ear as well as eye, in my considered opinion, the same are not deceptively similar.
(VI) So far as the reliance placed by learned Senior Advocate Mr.Devang Nanavati for the appellant in case of Kabushiki Kaisha Toshiba Trading as Toshiba Group (Supra) is concerned, the Delhi High Court in the said case had an occasion to deal with the well-known brand called 'TOSHIBA'. The original defendant in the said case, who was in the business of escalator and lift, was offering its product under the trade mark 'TOSHIBA'. Thus, the owner of the well-known brand 'TOSHIBA' a company formed in Japan instituted a suit for injunction against the defendant from manufacturing, importing, selling, offering for sale or advertising under the mark 'TOSHIBA'. In the said context, the Delhi High Court having held that 'TOSHIBA' is a well-known brand in India and also enjoying the trans border reputation and thereby, considering the provision of Section 29(4) of the Act, passed Page 23 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined the decree of injunction as prayed for protecting the well- known brand 'TOSHIBA'. However, in the instant case, it is pertinent to note that the case in hand is not for any injunction or for any other purposes. The present case arises from the registration of trade mark and thereby, the provision of Section 11(8) and Section 11(10) are to be kept in mind. The protection to the well-known brand is to be given in case if the mark sought to be registered is identical or similar. However, in the instant case, the mark 'RASNA' as claimed to be well-known brand cannot be by any stretch of imagination said to be identical and/or deceptively similar to the mark 'RASANAND' which is sought to be registered. Under the circumstances, in my considered opinion, allowing registration of mark 'RASANAND' would not amount to violation and/or any kind of prejudice to the so called well- known brand 'RASNA'.
(VII) So far as the reliance placed by learned Senior Advocate Mr.Devang Nanavati for the appellant in case of Tata SIA Airlines Limited (Supra) is concerned, in which the Delhi High Court had an occasion to consider a case Tata SIA Airlines Limited who sought a writ of mandamus directing the Page 24 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined respondent therein to consider for inclusion of trade mark 'VISTARA' in the list of well-known trade mark. Considering the facts of the said case, it appears that the petitioner's application for inclusion of trade mark 'VISTARA' in the list of well-known trade mark refused by the Registrar and in that context, the Delhi High Court, while considering the provision of Section 11(6), (7) and (8), decide the said case. However, in my considered opinion, the facts of the case on hand are entirely different than the facts of the case before the Delhi High Court. In my view, reliance placed by learned Senior Advocate Mr.Devang Nanavati on the aforesaid judgment is thoroughly misconceived as the scope and proceedings of the case before the Delhi High Court and the case on hand are entirely different.
(VIII)So far as the reliance placed by learned Senior Advocate Mr.Devang Nanavati for the appellant in case of Pidilite Industries Limited (Supra) is concerned, the Bombay High Court had an occasion to consider the trade mark called 'FAVICOL MARINE' and 'JIVANJOR MARINE PLUS' and the Bombay High Court having considered the pictorial deception has held that the defendant therein had copied the plaintiff's Page 25 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined mark 'MARINE' but even the artistic work comprising the device of a wooden plank being dipped into the water and the water splashing. Thus, the Bombay High Court was of the opinion that the contention of adoption was not honest and bona fide. In the instant case, if the pictorial depiction of two marks 'RASNA' and 'RASANAND' are compared, it would reveal that artistically, phonetically, structurally, visually and graphically, both the marks are distinctively separate. The impugned mark 'RASANAND' is a joint Gujarati word, however, depicted by usage of two different colours with 'RAS' in 'RED' colour and 'ANAND' in 'BLUE' colour. Thus, in my considered opinion, the facts of the case before the Bombay High Court are materially different than the facts of the present case on hand and thus, the same would not be helpful to the appellant.
(IX) So far as the reliance placed by learned Senior Advocate Mr.Devang Nanavati for the appellant in case of Cadila Healthcare Ltd. (Supra) is concerned, the Apex Court had an occasion to consider the trade mark of drug 'FALCIGO' and 'FALSITAB' used for falcipharum malaria. The said judgment was delivered by the Apex Court specially in cases relating to Page 26 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined the medical products. The parameters laid down therein were with regard to the pharmaceutical and medical products. It is pertinent to note that the said case had arisen from the proceedings of civil suit for injunction. Whereas in the instant case, there is no suit filed by the appellant for injunction. At this stage, it is also apt to note that in the aforesaid judgment, the Apex Court while taking note of a decision in the case of Morgenstern Chemical Company observed that in the field of medical products, it is particularly important that great care be taken to prevent any possibility of confusion in the use of trade marks. Whereas the case on hand is not of a trade mark relating to any medicinal product. As discussed herein-above, in the case on hand, both the trade marks are distinct in nature and not capable of being confused with each other.
19. In view of the aforesaid discussion, in my considered opinion, the trade marks 'RASNA' and 'RASANAND' cannot be said to be deceptively similar to each other. Even otherwise, in all these years, the appellant could not able to bring on record a single piece of evidence suggesting actual confusion of customers and/or traders between the marks 'RASNA and Page 27 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023 NEUTRAL CITATION C/CIA/18/2023 ORDER DATED: 04/12/2023 undefined 'RASANAND', though the product 'RASANAND' is co-exist in the market since now more than 19 years.
I answer the question accordingly.
20. For the foregoing discussion, the present Civil Appeal fails being bereft of any merits and the same is hereby dismissed accordingly, with no order as to costs.
21. In view of order passed in main Civil Appeal, Civil Application does not survive and is disposed of accordingly.
(NIRAL R. MEHTA,J) V.J. SATWARA Page 28 of 28 Downloaded on : Fri Dec 08 20:35:36 IST 2023