Madras High Court
Dhiren Krishna Paul Trading As vs Health And Glow Retailing Private Ltd on 4 January, 2012
Author: R. Mala
Bench: R. Banumathi, R. Mala
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated: 04.01.2012
Coram
THE HONOURABLE MRS.JUSTICE R. BANUMATHI
AND
THE HONOURABLE MS.JUSTICE R. MALA
O.S.A.Nos.183 to 187 of 2007 &
O.S.A.Nos.228 and 229 of 2007
1.Dhiren Krishna Paul trading as
Health and Glow Clinic
BA-43, Salt Lake City, Sector-1
Kolkata-700 064.
2.Dr.PB'S Health and Glow Clinic
Private Limited
BA-43, Salt Lake City, Sector-1
Kolkata-700 064. .. Appellants in O.S.A.Nos.183 to
187 of 2007 & Respondents in
O.S.A.Nos.228&229 of 2007
Vs.
Health and Glow Retailing Private Ltd.,
Having registered Office at
Sun Plaza, Unit No.III, 3rd floor
G.N.Chetty Road, T.Nagar
Chennai-600 017. .. Respondent in O.S.A.Nos.183
to 187 of 2007 & Appellant in
O.S.A.Nos.228&229/2007
PRAYER: Appeals filed under Order XXXVI and Rule 9 of Original Side Rules, read with Clause 15 of the Letters Patent Act against the common order dated 13.06.2007 made in O.A.Nos.310 & 311 of 2007 in C.S.No.236/2007 and A.Nos.2941 & 2942 of 2007 in O.A.Nos.311 & 310 of 2007 in C.S.No.236/2007 and A.No.2943 of 2007 made in C.S.No.236/2007 & A.Nos.2919 & 2918 of 2007 in C.S.No.236 of 2007 respectively.
For Appellants : Mr.Pratap Chatterjee, senior counsel
(in O.S.A.Nos.183 from Kolkatta
to 187 of 2007) Mr.Ranjan Bachawat
Mr.Manoj Malhotra
Mr.S.Ravee Kumar
Mr.M.Hariharan for M/S.Maha Associates
For Respondent : Mr.Arvind P.Data, senior counsel for
(in O.S.A.Nos.183 Mr.Bharath, Mr.K.Prem,
to 187 of 2007) Mrs.Gowri Tirumurthi for M/S.Anand & Anand
C O M M O N J U D G M E N T
R. MALA, J.
O.S.A.No.183 of 2007This appeal has been filed against the order dated 13.06.2007 made in O.A.No.310 of 2007 for granting an interim injunction restraining the defendants, their servants and agents and others from using the words HEALTH & GLOW or HEALTH AND GLOW or any other mark, name, logo, monogram or label.
O.S.A.No.184 of 2007This appeal has been filed against the order dated 13.06.2007 made in O.A.No.311 of 2007 for granting an interim injunction restraining the defendants, their servants, agents, dealers, stockists and others associated with them from reproducing using as sign age or otherwise, printing, publishing or distributing any label, printed matter, stationery which is colourable imitation or substantial reproduction of Applicant's HEALTH AND GLOW (Device).
O.S.A.Nos.185 and 186 of 2007 These appeals have been filed against the order dated 13.06.2007 made in A.Nos.2941 & 2942 of 2007 to vacate the injunction granted in O.A.Nos.311 & 310 of 2007 in C.S.No.236 of 2007.
O.S.A.No.187 of 2007This appeal has been filed against the order dated 13.06.2007 made in A.No.2943 of 2007 in C.S.No.236 of 2007 to reject the plaint under Order 7 Rule 11 of Civil Procedure Code.
2.Respondent as a Plaintiff filed a suit stating that he is a registered Proprietor of the Trade Mark as well as the Device Health and Glow and also claiming to be the Proprietor of the Copyright in the style and manner in which the trade name and mark are artistically written and used by the Plaintiff in Health and Glow Retailing Private Limited. Since Appellants/Defendants have filed applications for registering trade name as Health and Glow, Respondent/Plaintiff constrained to file a suit for the following reliefs viz.,: a) A permanent injunction restraining the Defendants, their principal officers, servants, agents, their assignees in business, dealers, stockists and others associated with them from using the words Health & Glow or any other mark, name, logo, monogram or label that is or may be identical with or deceptively similar to the registration 1) HEALTH & GLOW or 2)HEALTH AND GLOW (DEVICE) trademarks of the plaintiff, or to market, sell, offer for sale, license, advertise, directly or indirectly deal in any goods and services online or offline amounting to infringement of the plaintiff's registered trademark Nos.802306, 1315016 and 1315017 in classes 3 and 3 & 5 respectively;
b) A permanent injunction restraining the Defendants from using as a domain name/website address, marketing, selling, offering for sale, licensing, advertising, either directly or indirectly dealing in any goods using the words Health and Glow or any other mark identical with or similar to the trade name, mark and device of the plaintiff, as may cause or be likely to cause confusion or deception amounting to passing off of the Defendants' goods and services as those of the plaintiff;
c) A permanent injunction restraining the Defendants, from reproducing, using as signage or otherwise, printing, publishing or distributing any label, printed matter, stationery or packaging which is a colourable imitation or substantial reproduction of the plaintiff's Health & Glow label as depicted in paragraph 13 of this plaint, amounting to infringement of plaintiff's copyright thereto;
d)A decree for delivery upto the plaintiff for destruction of all packaging, labels, block, dyes, stickers, signage, advertising materials, all types of stationary and brochures and all other infringing materials of the Defendants bearing the words Health & Glow;
e) A preliminary decree in favour of the plaintiff directing the defendants to render account of profits made through use of the Health & Glow mark and a final decree thereafter be passed in favour of the plaintiff for the amount of profits that have been found to be made by the defendants after it had rendered accounts;
f)for a direction to the defendants to pay damages to the tune of Rs.25 lakhs.
3.Averments in the plaint are as follows:
(i)Respondent/Plaintiff is having registered Office at Chennai and carrying on business as Retail Service Provider in beauty and health care merchandise, eversince 1997.
(ii)Respondent/Plaintiff has been using the trade mark and the trade device known as 'Health and Glow, written in a stylised manner with the image of a dancing girl inside the letter 'G' eversince 1997. It was registered under the Trade Marks Act, in respect of goods under Classes 3 and 5 bearing Registration Nos.802306, 1315016 and 1315017 and filed two more applications for registration bearing Nos.1420632 and 804746 in respect of services and goods under Classes 42 and 3 are pending before the Registrar of Trade Marks.
(iii)Respondent/Plaintiff has 43 retail outlets in Chennai, Bangalore, Mumbai and Hyderabad and has a good reputation and built up enormous goodwill for the chain of retail stores run by them. They offer for sale, a wide range of Colour Cosmetics, Skin Care, Hair Care, Herbal Products, Fragrances and Beauty Accessories, Aromatherapy Products, Men's Cosmetics, Baby Care, Personal Care Items and Toiletries and Pharmaceutical Products.
(iv)As a result of the enormous advertisement cost, over the year, the total annual turnover of the Respondent/Plaintiff rose from Rs.7.25 crores in 1998-99 to Rs.52.83 crores in 2005-2006. One of the shareholders of the Plaintiff's Company maintains a website providing information about the goods and services offered by the plaintiff. In May 2006, Respondent/Plaintiff came across an advertisement in the Trade Marks Journal dated 15.09.2005 showing that the first Appellant/first Defendant herein had filed an application for registration of a Trade Mark containing the words Health and Glow in respect of goods and services under Class 5. Respondent/Plaintiff immediately filed a notice of opposition before the Registrar, which was pending.
(v) In March 2007, Appellants/Defendants run a cosmetic Homoeopathy Health Clinic and they also have a website www.healthandglowclinic.com. Therefore, Respondent/Plaintiff filed a suit for infringement of their registered trade mark, for passing off the products and services of the Appellants/Defendants as those of the Respondent/Plaintiff and for infringement of the copyright.
(vi)Along with the suit, Respondent/Plaintiff filed an applications in O.A.Nos.310 and 311 of 2007 for an interim injunction. On 23.03.2007, an interim injunction was granted.
4.The Appellants/Defendants herein have filed an application to vacate injunction (i.e.) A.Nos.2941 and 2942 of 2007 to vacate the injunction granted in O.A.Nos.311 and 310 of 2007. Appellants/Defendants filed an another application in A.No.2943 of 2007 for rejection of plaint under Order 7 Rule 11 C.P.C. The learned Single Judge after considering both sides, allowed the applications in O.A.Nos.310 and 311 of 2007 and dismissed the applications to vacate injunction in A.Nos.2941 and 2942 of 2007 in O.A.Nos.311 and 310 of 2007 and also dismissed A.No.2943 of 2007, against which, the present appeals have been preferred.
5.Learned senior counsel from Calcutta Mr.Pratap Chatterjee, appearing for the Appellants/Defendants would submit as follows:
(i)This Court has no territorial jurisdiction to entertain the suit for entertaining the cases on passing off. He fairly conceded that the suit can be filed in respect of infringement of the trade before this Court.
(ii)Originally, Respondent/Plaintiff is 'RPG Guardian Private Limited'. They had changed the name of their company as Health & Glow Retailing Private Limited, only on 02.03.2007 and filed a suit on 21.03.2007. But the Appellants/Defendants have filed an application on 30.04.2004 itself for the trade mark of 'Health & Glow Clinic", Complete Health With Homeopathy. So there is no infringement of registered trade mark of Respondent herein.
(iii) Respondent/Plaintiff has not manufacturing any products in the name and style of 'Health and Glow" and they are only retailing/marketing the goods of reputed firms. Per contra, Appellants/Defendants are doing their medical services in the name and style of 'Health and Glow Clinic" (i.e.) Homeopathic medicines. They are not selling their products and they are giving only treatment to their patients.
(iv)Respondent/Plaintiff has no reputation of trade mark throughout India. But admittedly, they are having only retail shops at Chennai, Bangalore, Secundrabad and Hyderabad. So ingredients of Section 29(4) of the Trade Marks Act was not made out.
(v)Order of the Learned Single Judge is suffered by perversity, since he never raised a plea for protection under Section 35 of the Trade Marks Act and the learned senior counsel for the Appellants/Defendants has not advanced his argument in respect of Section 29(5) of the Trade Marks Act. Hence, the learned Single Judge himself taken the plea suo motu and rendered findings against the Appellants/Defendants herein and so it suffers perversity. Hence he prayed for setting aside the order passed by the learned Single Judge. To substantiate his arguments, he relied upon the following judgments.
(i)2010 (112) Bombay LR 4165 (Vanita Dilip Chawla v. Fresh Meals India pvt. Ltd. and others)
(ii)2010 (44) PTC 25(Bombay) (Raymond Limited v. Raymond Pharmaceuticals Pvt. Ltd.,)
(iii)2010 (42) PTC 572 (Delhi) (ITC Limited v. Philip Morris Products Sa and others)
(iv)2011 (46) PTC 152 (Delhi) (Kamdhenu Ispat Limited v. Kamdhenu Pickles & Spices India Pvt. Ltd. and another)
(v)2010 (42) PTC 514 (Nestle India Limited v. Mood Hospitality Pvt. Ltd.)
(vi) 2011 (4) CTC 417 (Blue Hill Logistics Pvt. Ltd. v. Ashok Leyland)
(vii)(2006) 9 SCC 41 (Dhodha House v. S.K.Maingi)
(viii)2008 (10) SCC page 595 (Dabur India Limited v. K.R.Industries)
(ix)2006 (33 PTC) 348 (Dabur India Limited v. K.R.Industries)
(x) 2006 (33 PTC) 107 (Dabur India Limited v. K.R.Industries)
(xi)ILR 2009 (1) Delhi 674 (P.M.Diesel v. Patel Field Marshall Industries)
(xii)2006 (33) PTC 561 (Delhi) (The Jay Engineering Works Ltd. v. Ramesh Aggarwal)
(xiii)2001 (3) CTC 652 (Premier Distilleries Pvt. Ltd. Rep. by its Director K.S.Sekar v. Sushi Distilleries, rep. by its partner N.Ganesan, Bangalore)
(xiv)(2008) 10 SCC 479 (K.Narayanan & Anr. v. S.Murali)
(xv) 2008 (1) CTC 601 (Duro Flex Pvt. Ltd. v. R.P.Home (P) Ltd.) (xvi) 2007 (35 PTC) 774 (Austin Reed v. Suntex Garments and others) (xvii)(2001) 5 SCC 95 (Uniply Industries v. Unicorn Plywood Ltd and others) (xviii)(1990) Suppl (SCC) 721 (Wander Ltd. v. Antox India (P) Ltd. ) (xix) (1999) 7 SCC 1 (Colgate Palmolive (India) Ltd. v. Hindustan Lever Ltd.) (xx) (1997) 10 SCC 520 (Dinesh Mathur v. O.P.Arora and others) (xxi)AIR 1995 SC 2372 (M/S.Gujarat Bottling Co. Ltd. and others v. Coca Cola Company and others) (xxii) AIR 1992 (Delhi) 302 (Sri Gopal Engg. & Chemical Works Ltd.) v. M/S. Pomx Laboratory) (xxiii) 1996 PTC 142 (Montari Overseas Ltd. v. Montari Industries Ltd.) (xxiv) 1994(2) LW 510 (Modern Food Products v. Ushodaya Enterprises Limited) (xxv) AIR 1960 SC 142 (Corn Products Refining Co., v. Shangrila Food Products Ltd.,) (xxvi) 1996 PTC 512 (Vishnudas Trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd.) We would refer to the above judgments at appropriate place.
6.Refuting the same, Mr.Arvind P.Data, learned senior counsel appearing for the Respondent/Plaintiff submits as follows:
(i)In respect of jurisdiction for passing off, this Court has no jurisdiction. But however, the main prayer sought for by the Respondent/Plaintiff is only for infringement of trade mark and copyright. Hence, this Court has jurisdiction.
(ii)Once the Appellants/Defendants have withdrawn the application before the Registrar, Trade Mark, they have no locus standi to advance their argument by challenging the order passed by the learned Single Judge.
(iii)Respondent/Plaintiff is having his business as retail shops. At the time of filing of the suit, they are having 43 retail shops. So they are having reputation.
Hence the learned Single Judge has considered this aspect and granted injunction, which does not suffer any perversity. Therefore, he prayed for dismissal of the appeals. To substantiate his argument, he relied upon the following judgments:
(i) 142 (2007) DLT 724 (Cadbury India Ltd. & others v. Neeraj Food Products)
(ii)1996 (16 PTC) Delhi (Montari Industries Ltd. v. Montari Overseas Ltd.)
(iii) 1995 DLT 771 (Mars Incorporated v. Kumar Krishna Mukerjee and others)
(iv) AIR 1990 Delhi 19 (M/S.Hindustan Pencils Pvt. Ltd. v. India Stationery Products Company and another)
(v) 2011 (4) SCC 85 ( T.V.Venugopal v. Ushodaya Enterprises Ltd., and another)
(vi) 1994 SCC (2) 448 (Power Control Appliances v. Sumeet Machines Pvt. Ltd.)
(vii) 2004 (28) PTC 121 SC (Midas Hygeine Industries Pvt. Ltd. v. Sudhir Bhatia and others)
(viii) AIR 1970 SC 1649 (Ruston and Hornsby Ltd. v. The Zamindara Engineering Company Ltd.)
(ix) 99(2002) DLT 678 (Caterpillar Inc. v. Mehtab Ahmed and others)
(x) 156(2009) DLT1 (Ford Motor Company and another v. Mrs.C.R.Borman and another)
(xi) 2011 (45) PTC 253 Delhi (Vardhman Properties Ltd., CA v. Vardhman Developers and Infrastructures)
(xii) 2009(41) PTC 523 Delhi (Sasken Communication Technologies Ltd., v. Anupam Aggarwal and others)
(xiii) 2003(27) PTC 241 (SC) Hardie Trading Ltd., and another v. Addisons Paint and Chemicals Ltd.)
(xiv) 1997(17) PTC 523 Delhi, 2000 PTC 365 (SC) and (2004) 5 SCC 257 (Godfrey Philips India Ltd. v. Girnar Food and Beverages Pvt. Ltd.)
(xv) Judgment in the High Court of Delhi in Suit No.180 of 1984 (Globe Super Parts v. Blue Super Flame Industries) (xvi) 1919-10-LW-137 (Venkatappier v. Ramaswami Aiyar and another) (xvii) 2010 (4) SCC 518 (State of Maharashtra v. Hindustan Construction Company Limited) (xviii) 2005(30 PTC) 233 SC (Dhariwal Industries Ltd. and another v. M.S.S. Food Products) (xix) 1990 Supp (1) SCC 727 (Wander Ltd. and another v. Antox India Pvt. Ltd.) (xx) 2011 (4) CTC 417 (Blue Hills Logistics Private Ltd. v. Ashok Leyland Limited) (xxi) AIR 1986 Delhi 343 (Swaran Singh v. Usha Industries (India) and another) (xxii) AIR 1996 Bombay 149 (Kirloskar Diesel Recon Pvt. Ltd. and another v. Kirloskar Proprietory Ltd. and others )
7.Now this Court has to decide whether this Court has jurisdiction to entertain the suit in respect of passing off? At this juncture, it is appropriate to consider Section 134 of Trade Marks Act, which is pari materia with Section 62 of the Copyrights Act.
Section.134.Suit for infringement, etc., to be instituted before District Court.
(1) No suit-
(a) for the infringement of a registered trade mark; or
(b) relating to any right in registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiffs trade mark, whether registered or unregistered;
shall be instituted in any Court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub-section (1), a District Court having jurisdiction shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.
Explanation:For the purposes of sub-section(2), person includes the registered proprietor and the registered user.
8.It is true, as per the argument advanced by Mr.Pratap Chatterjee from Calcutta, learned senior Counsel appearing for the Appellants/Defendants, Section 1(c) of Section 134 is consciously excluded in Section 134(2) of the Trade Marks Act. In such circumstances, learned senior counsel for the Respondent/Plaintiff also fairly conceded that for relief of passing off, this Court has no jurisdiction.
9.At this juncture, it is appropriate to consider the decision relied upon by both sides counsel reported in (2006) 9 SCC 41 (Dhodha House v. S.K.Maingi), in which, it was held that even though the case has been filed under Copyrights Act, as per Section 62(2) of the Copyrights Act, the plaintiff has invoked jurisdiction where he is residing and he must actually and voluntarily reside or carry on business or personally work for gain. In paragraph-51, it is held as follows:
"51.The plaintiff was not a resident of Delhi. It has not been able to establish that it carried on any business at Delhi. For our purpose, the question as to whether the defendant had been selling its produce in Delhi or not is wholly irrelevant (sic). It is possible that the goods manufactured by the plaintiff are available in the market of Delhi or they are sold in Delhi but that by itself would not mean that the plaintiff carried on any business in Delhi. In the above case, the plaintiff was not a resident of Delhi and he has not done his business at Delhi. In the case on hand, the Respondent/Plaintiff is having business at Chennai. Hence, this Court has jurisdiction in respect of infringement of trade mark and copyright.
10.Mr.Pratap Chatterjee, learned senior counsel appearing for the Appellants/Defendants would submit that mere advertisement in the paper published in the daily will not give a cause of action for filing the suit for passing off in Chennai. To substantiate the same, he relied upon the decision reported in 156 (2009) DLT1 (Ford Motor Company and another v. Mrs.C.R.Borman and another) in para-10, it is held as follows:
"10. .. .. The Division Bench of the High Court, as has been noted hereinbefore, did not advert to the issue as to whether the defendant had been selling its product in Delhi on a commercial scale or not. It is, therefore, not necessary for us also to dilate further on the said question. We have furthermore noticed hereinbefore that the advertisement appearing in a journal or newspapers by itself would not confer any jurisdiction on the Court, if it otherwise did not have any. "
11.At this juncture, it is appropriate to consider the decision reported in 2008 (10) SCC page 595 (Dabur India Limited v. K.R.Industries) in para-34, it is held as follows:
34.What then would be meant by a composite suit? A composite suit would not entitle a court to entertain a suit in respect whereof it has no jurisdiction, territorial or otherwise. Order 2 Rule 3 of the Code specifically states so and, thus, there is no reason as to why the same should be ignored. A composite suit within the provisions of the 1957 Act as considered in Dhoda House (supra), therefore, would mean the suit which is founded on infringement of a copyright and wherein the incidental power of the Court is required to be invoked. A plaintiff may seek a remedy which can otherwise be granted by the court. It was that aspect of the matter which had not been considered in Dhoda House (supra) but it never meant that two suits having different causes of actions can be clubbed together as a composite suit. In the above decision, it was never mentioned that two suits having different causes of action can be clubbed together as a composite suit. So we are of the view that this Court has no jurisdiction in respect of entertaining the suit for passing off.
12.Let us now consider prayer (b) sought for by the Respondent/Plaintiff:
"(b) A permanent injunction restraining the Defendants from using as a domain name/website address, marketing, selling, offering for sale, licensing, advertising, either directly or indirectly dealing in any goods using the words Health and Glow or any other mark identical with or similar to the trade name, mark and device of the plaintiff, as may cause or be likely to cause confusion or deception amounting to passing off of the Defendants' goods and services as those of the plaintiff;
Furthermore, in Judges summons in O.A.No.310 of 2007, in which, it is stated as follows:
"(b)This Hon'ble Court should not be pleased to grant an order of ad interim injunction restraining the respondents/defendants, their principal officers, servants, agents, their assigns in business, dealers, stockists and others associated with them from using the words "HEALTH AND GLOW" or "HEALTH AND GLOW" or any other mark, name, logo, monogram or label that is or may be identical with or deceptively similar to the registered 1) HEALTH & GLOW AND/OR 2) HEALTH AND GLOW (Device) trademarks of the Applicant or to market, sell, offer for sale, license, advertise, directly or indirectly deal in any goods and/or services online or offline, which may amount to infringement of the Applicant's registered trademark Nos.802306, 1315016 and 1315017 in classes 3 and 3 & 5 respectively or passing off the respondents goods and services as those of the Applicant's, pending disposal of the above said suit and thus render justice?"
So it is only a consequential relief. But the main relief is only in respect of infringement of trade mark and copyright. In such circumstances, we are of the view that merely because one of the prayer is passing off, it is not a ground for rejecting the plaint for want of jurisdiction. So we are of the considered opinion that it is not a ground for rejecting the plaint, since the relief of passing off only a consequential relief. Hence, we are of the view that the findings of the learned Single Judge in respect of rejection of plaint does not warrant any interference and therefore, O.S.A.No.187 of 2007 is liable to be dismissed.
13.Now we have to decide whether there is any infringement of the registered trade mark of the Respondent/Plaintiff by the Appellants/Defendants. As per the document No.1-Certificate of Incorporation, filed by the Respondent/Plaintiff, RPG Guardian Private Limited has been established on 12.12.1996. Ministry of Company Affairs has issued a fresh Certificate of Incorporation Consequent upon change of name only on 02.03.2007, in which, it was specifically mentioned that the name of the said Company has changed to "Health & Glow Retailing Private Limited" and this certificate was issued pursuant to Section 23(1) of the Companies Act. The suit has been filed on 21.03.2007. Respondent/Plaintiff has changed their Company's name as "Health & Glow" only to file a suit. At this juncture, let us consider Section 28 of Trade Marks Act, right conferred by registration. Admittedly, Respondent/Plaintiff is a registered trade mark holder in respect of "Health & Glow Retailing Private Limited and they filed an application on 13.10.2004 in Trade Mark No.1315016 and that was registered on 30.03.2006 without symbol. It was found only in the word "Health & Glow". Class-3 and 5 of the above registration is extracted hereunder:
"3.Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasiv preparations, soaps, perfumery, essential oils.
5.Pharmaceutical, veterinary and sanitary preparations, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth, dental was, disinfectants, preparations for destroying vermin fungicides, herbicides."
Subsequently, another application in trade mark No.1315017 dated 13.10.2004, which was registered on 15.06.2006 with the 'Dancing Girl' in the word 'G' in respect of same goods for class-3 and 5. It is pertinent to note that the Appellants/Defendants herein have filed an application in trade mark No.1281703 on 30.04.2004, which was published in the trade mark journal on 15.09.2005, wherein it was stated that "User claimed since 31.01.2004.
14.At this juncture, it is appropriate to consider page-338 of the typed set of documents filed by the Respondent/Plaintiff. In page-338, a journal was published on February 14, 2005, which shows that in "Trade Mark No.802306-May 15, 1998, User claimed since 17/02/1997." But pages 3 to 6 as above referred to, filed by Respondent/Plaintiff are different from page-338 of the same typed set of documents. In such circumstances, no reliance can be placed on the document filed in page-338 stating that Respondent/Plaintiff claiming user from 17.02.1997 onwards and that has been published on 14.02.2005, but whereas the application was filed by Appellants/Defendants on 30.04.2004 itself. Per contra, Respondent/Plaintiff filed their application much later (i.e.) on 13.10.2004, but they obtained registered trade mark on 30.03.2006 and 15.06.2006 respectively. In such circumstances, this Court is not inclined to accept the argument advanced by the learned senior counsel appearing for the Respondent/Plaintiff that Appellants/Defendants herein are using the trade name as "Health and Glow" with same 'Dancing Girl' in the word 'G', dishonestly. We are unable to endorse the views of the learned Single Judge in paragraph-62 that there is no bonafide in adoption of the mark by the defendants. The finding of the learned Single Judge in paragraph-62 that there is no bonafide in adoption of the mark by the defendants is liable to be set aside.
15.Now this Court has to decide whether there is infringement of trade mark under Section 29, which is as follows:
"29. Infringement of registered trade marks:
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particu1ar, he-
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under. the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark;
or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by an advertising of that trade mark if such advertising-
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character;
or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
16.Learned senior counsel for Appellants/Defendants would take us to Section 29(4) to 29(6) of the Trade Marks Act and submit that even though Respondent/Plaintiff has not advanced any argument in respect of sections 29(5) and 35 of the Trade Marks Act, the learned Single Judge has suo motu taken the matter and held that the defendants are not entitled to the protection under the provision of Section 35 of the Act, in the light of Section 29(5) of the said Act.
17. In view of the above submission, it is necessary for us to consider the counter filed by the Respondent. In their counter, they never mentioned about the claiming of protection under Section 35 of the Trade Marks Act. But they stated in para-22 of their counter, they are providing treatments for chronic patients in world wide including Nepal, Russia, Germany, Franch, Israel and Dubai etc. Now learned senior counsel appearing for the Appellants/Defendants would submit that "Health and Glow" is only a generic word and their Homeopathic Clinic is providing treatments to their patients for various ailments such as Arthritis, Children's disease, Chronic backaches, Depression, Constipation, Hair Loss, Piles, Menopause Syndrome, Acne, Allergies, Asthma, Hyperactivity, Migraines, Psoriasis etc. It is only to keep the health of the patients well. He further submitted that they are also providing treatments to skin care, hair loss and weight loss, to give glow on the face. So it is only a generic word and it is not a new word coined by Respondent/Plaintiff exclusively for their use. Before this, Respondent/Plaintiff filed an application before the Registrar of Trade Mark for registering the trade mark of "Health and Glow". The Appellants/Defendants have filed an application for registering the trade mark on 30.04.2004 itself. Furthermore, as per page-338 of the typed set of papers, a journal was published on February 14, 2005. So we are of the opinion that the word "Health and Glow" is only a generic word and it is not a word coined exclusively by Respondent/Plaintiff. To substantiate the case of the Appellants/Defendants, learned senior counsel relied upon the following decisions:
(i) 2010 (44) PTC 25(Bombay) (Raymond Limited v. Raymond Pharmaceuticals Pvt. Ltd.,) in which, it is held as follows:
13.It was submitted that because a name is included in the definition of the term mark if the defendant uses a name which is identical or similar to the registered trade mark, then it will amount to infringement within the meaning of infringement of the registered mark, within the meaning of sub-section (4) of section 29 of the Act. If this submission on behalf of the plaintiff is accepted, then it can be seen that use of registered trade mark of the plaintiff as part of the trade name when the goods marketed by the defendant are similar to the goods marketed by the plaintiff would be covered by sub-section (1) of section 29 and may also be covered by Sub-Section (2) of Section 29. .. ..
(ii) 2011 (46) PTC 152 (Delhi) (Kamdhenu Ispat Limited v. Kamdhenu Pickles & Spices India Pvt. Ltd. and another) in paragraphs-22, 23 and 26, it is held as follows:
22.As far as the claim for dilution, a species of infringement under Section 29 (4) is concerned, the trademark owner has to show four distinct elements. Though trademarks are concerned with protection of marks which have acquired a degree of distinctiveness, in relation to particular goods and services, courts have, over the years recognized that in relation to marks which have achieved notoriety as to have a reputation about the quality of products which the manufacturer, or services the originator (of the mark) is associated with, then, even in relation to dissimilar goods - or unrelated products, protection of such brand name, mark or acquired distinctiveness is essential. This measure of protection to marks in relation to similar junior marks, but for dissimilar goods is, in substance the protection against dilution (or Blurring or tarnishment) or the mark. Prior to the 1999 Act, Indian law had developed through case law; the new Act changed that, and has enjoined protection against dilution, if certain essential elements are established; they are:
(1) The impugned mark is identical or similar to the senior mark;
(2) The senior or injured mark has a reputation in India;
(3) The use of the impugned mark is without due cause;
(4) The use of the impugned mark (amounts to) taking unfair advantage of, or is detrimental to, the distinctive character or repute of the registered trade mark.
23. Unlike in infringement of trademark in relation to similar goods or services, in the case of dilution (infringement of mark by use in respect of dissimilar goods or services) there is no presumption of infringement of the mark. This means that each element has to be established.
26. The plaintiff's reputation in its mark may at best be said to contain an association with steel, and allied goods, even in somewhat related fields such as cement; however there is nothing suggestive that such association extends to pickles and such like packaged products manufactured and sold by the defendants. This aspect is crucial, because the plaintiff does not deny that it is not selling competing goods. The class of users of the plaintiff's goods are not the kind who would associate the defendant's mark as those of the plaintiff's. Taking into consideration all these factors, and the materials on record, the court is satisfied there is no linkage between the defendant's mark and the plaintiffs' products, so as to cause detriment to the latter, and undue advantage to the former.
(iii) 2011 (4) CTC 417 (Blue Hill Logistics Pvt. Ltd. v. Ashok Leyland) in paragraphs 20 to 22 and 24, it is held as follows:
"20. The scheme and provisions of the Act clearly disclose the dichotomy between "Goods" on the one hand and "Services" on the other. Section 2(i)(j) defines "Goods" in an identical terms to the 1958 Act i.e. as meaning anything which is the subject of trade or manufacture. However, Section 2(1)(z) added a definition of the term "Services" as follows: "Section 2(1)(z) - "Services" means service of any description which is made available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising."
21. The distinction between "Goods" and "Services" is made clear by the provisions of the 2002 Rules. Under Rule 22(1) of the 2002 Rules, "Goods" and "Services" are to be classified in the manner specified in the Fourth Schedule. The Fourth Schedule contains various classes of 'GOODS' Classes 1 to 34. Thereafter, under a separate heading 'SERVICES' follow Classes 35 to 42. Classes 35 to 42 are exclusively services making it clear that Classes 1 to 34 are exclusively goods. Class 42 includes "Providing of food and drink" which would mean food items listed in Class 29 to 34 do not include any services in respect of food items and drinks. Class 42 also contains a residuary class i.e. "services that cannot be classified in other classes". This residuary class applies only to services and does not extend to goods. This also shows that "Goods" and "Services" are treated separately.
22. The significant guide is found in Section 2(3) of the Act which reads as follows:-
"Section 2(3) for the purposes of this Act, goods and services are associated with each other if it is likely that those goods might be sold or otherwise traded in and those services might be provided by the same business and so with descriptions of goods and descriptions of services." Association of Trade Marks are defined under Section 2(1)(c):
2(1)(c) "Associated trade marks" means trade marks deemed to be or required to be registered as associated trade marks under this Act.
24.The onus is on the registered proprietor who is invoking the provisions of Section 29 of the Act to establish that the Plaintiff's mark is infringed under sub-section (2)(a) or sub-section (2)(b) of Section 29 of Trade Marks Act. Where the rival marks are identical and the goods or services are also identical, there is a statutory presumption of confusion and accordingly a prima facie case of infringement would exist. The onus then shifts to the Defendant. Considering the above decisions, we are of the view that "Health & Glow" is only a generic word. The onus is on the registered proprietor who is invoking the provisions of Section 29 of the Act to establish that the Plaintiff's mark is infringed under sub-section (2)(a) or sub-section (2)(b) of Section 29 of Trade Marks Act. Where the rival marks are identical and the goods or services are also identical, there is a statutory presumption of confusion and accordingly a prima facie case of infringement would exist. The onus then shifts to the Appellants/Defendants herein.
18.Admittedly, Respondent/Plaintiff is not manufacturing any products and they are marketing the products manufactured by various reputed Companies like VLCC, Himalaya, Ponds, Johnson, Nivea, Himami, Pepsodent, Lakme, Dabur etc. Per contra, Appellants/Defendants herein have Homeopathy Clinic in the name and style of "Health and Glow Clinic" and they are preparing and prescribing homeopathic medicines only to their patients, who are taking treatment from them. So in such circumstances, burden is heavily upon the Respondent/Plaintiff to prove that there is an infringement of registered trade mark.
19.It is appropriate to consider the subsections of Section 29 of the Trade Marks Act. We may usefully refer to the following passages from the Book "Law of Trade Marks & Geographical Indications, by K.C.Kailasam/Ramu Vedaraman, 2003 Edition, published by Wadhwa and Company Nagpur, India, in page nos.390 to 396, which reads as follows:
"Section 29 deals with infringement of trade marks and explicitly states as to the various acts which constitute infringement. When a registered trade mark is used by a person who is not entitled to use such a trade mark under the law, it constitutes infringement. In pursuance of the relative grounds for refusal of registration specified in clause 11, the scope of this clause has been enlarged to explicitly state that a registered trade mark is infringed, if--
(a) the mark is identical and is used in respect of similar goods or services; or
(b) the mark is similar to the registered trade mark and there is an identity or similarity of the goods or services covered by the trade mark; or
(c)the trade mark is identical an is used in relation to identical goods or services;
Sub-clause (4) seeks to lay down that a registered trade mark is infringed by a person, if he uses a mark which is identical or similar to the trade mark, but on goods or services which are not similar, provided the registered trade mark has a reputation in India and the use of the mark without due cause would take unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark.
Sub-clause (5) seeks to prevent a person from adopting someone elses trade mark as part of that persons trade name or business name by explicitly providing that such action shall also constitute an infringement under this act. This provision will bring this clause in harmony with the proposed amendments to sections 20 and 22 of the Companies Act, 1956.
What constitutes infringement?
In this context, the ingredients of section 29(1) are as follows:
1.The plaintiffs mark is registered.
2. The defendants mark is identical with, or deceptively similar to the plaintiffs registered mark.
3.The defendants use of the mark is in the course of trade in respect of goods/services covered by the registered trade mark.
4.The use by the defendant is in such manner as to render the use of the mark likely to be taken as being use as a trade mark.
5.The defendants use of the mark is not by way of permitted user and accordingly unauthorized infringing use.
While the above is a general proposition of law, as per Section 29(1), the various circumstances in which the trade mark is infringed are enumerated in sub-sections (2) to (9) of section 29.
Where the defendants use of the mark is identical with or deceptively similar to the registered mark and the use is not by way of permitted use Where the defendants mark is identical with the plaintiffs mark, the question is simple. The plaintiff has not to prove his use of the registered trade mark, but merely to establish that the defendant is using a trade mark which is identical with to the plaintiffs mark and in respect of goods/service which are covered by the plaintiffs registration. The plaintiff need not prove that the defendants use is likely to deceive or cause confusion.
In the Sphinx case, it was held by the court the registration shows his title to the mark, and if the infringer has absolutely copied the mark and made a facsimile representation of it, you do not want any further evidence. The thing speaks for itself. You have copied. As I understand LORD HALSBURY in the case in the house of Lords of the North Cheshire and Manchester Brewery V. Manchester Brewery Co., that is sufficient by itself, without more The test to be applied in determining whether two marks are identical with or too nearly resembles each other or is likely to deceive or cause confusion or deceptively similar is in nutshell the test of an average person with imperfect recollection. The court has to visualize a customer or a tradesman or a citizen who may happen to have dealings with the company complaining or who may happen to want to purchase the goods manufactured by such company and decide whether such a customer or tradesman or citizen would get confused and whether an ordinary citizen who may have occasion to deal with the company in the course of business dealings would mistake one for the other.
Under Section 2(d), the words deceptively similar are defined 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 deceive or cause confusion.
20.Learned senior counsel for the Appellants/Defendants would submit that once sub-section (5) of Section 29 of the Trade Marks Act applies, other subsections will not be applicable. To substantiate the same, he relied upon the decision reported in 2010 (44) PTC 25(Bombay) (Raymond Limited v. Raymond Pharmaceuticals Pvt. Ltd.,) in para-14, it is held as follows:
"14. .. .. A special provision has now been made to deal with that situation by incorporating sub-section 5 of Section 29 and therefore, so far as subject of using of registered trade mark as a trade-name is concerned, provision is contained in sub- section 5 of Section 29 and therefore on that subject no other provision would apply. Generalia Specialibus non derogant is a cardinal principle of interpretation. It means that the general provision will always yield to a special provision. Construed in accordance with the fundamental principle, a special provision governing cases of a defendant using a registered mark as a part of his trade-name is incorporated in Section 29(5) and therefore, that subject will be governed only by that provision and therefore reliance on any other provision including Section 29(4) is ruled out. Thus, we have no doubt in our mind that the Plaintiffs could not have relied on the provisions of Section 29(4) of the Trade-mark Act. In the present case, there is no dispute that the Defendants do not deal in the goods in respect of which the trade-mark of the Plaintiffs is registered. What is to be noted here is that the phrase used by sub-section 5 is "dealing in goods or services in respect of which the trade-mark is registered ". The Legislature has not used the phrase "goods similar or goods identical to the goods in respect of which the trade mark is registered. Thus, in order to claim that use of a registered trade-mark as part of trade-name by the Defendants amounts to infringement, the Plaintiffs have to establish that the Defendants are dealing in the goods in respect of which the mark is registered. In other words, if the Defendants are not dealing in goods in respect of which the trade-mark is registered, then the use of the registered trade-mark as a part of trade-name by the Defendant would not amount to infringement. In the present case admittedly the Defendants are not dealing in the goods in respect of which the trade-mark of the Plaintiffs is registered and therefore, there is no question of the Plaintiffs being entitled to any temporary injunction. "
There is no quarrel over the proposition. Once a person uses the trade mark as part of their trade name under Section 29(5), the suit will be governed by that provision and therefore reliance on any other provision including Section 29(4) is ruled out. So this Court has to consider each and every provision.
21. It is true, trade mark has been registered as "Health and Glow" by the Respondent/Plaintiff. But the Appellants/Defendants firm is a unregistered one using name as "Health & Glow Clinic". Section 29(4)(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered. Admittedly, Respondent/Plaintiff is having retail shops. Even though they have obtained trade mark in respect of class 3 and 5 of the schedules, Respondent/Plaintiff has not manufactured any products or goods, but they are only marketing the products from reputed firms like VLCC, Himalaya, Ponds, Johnson, Nivea, Himami, Pepsodent, Lakme, Dabur etc. On perusal of page-306 of the typed set of papers, it was stated as follows: "Free makeover by Revlon on Friday, Saturday and Sunday; Free Sampling of Phantom Energy Drink on Friday, Saturday and Sunday, which shows that Respondent/Plaintiff is promoting the sale by giving samples of reputed firms and sold their products and provide Free Mehandi and nail polishing and free samples to their customers. Whereas Appellants/Defendants are having clinic and practising homeopathic medicines by rendering service in the name of "Health and Glow", but they are manufactured and prepared homeopathic medicines and prescribed to their patients.
22.Clause (c) of Section 29(4) of Trade Marks Act requires several conditions to be satisfied. They are:-
1. The registered trade mark must have a reputation in India; and
2. The use of the mark in question is without due cause; and
3. Such use must take unfair advantage of or be detrimental to the distinctive character or repute of the registered trade mark.
The language employed is conjunctive. To fulfil clause (c) of Section 29(4), all above three conditions are to be satisfied.
23. The first question, which arises is, whether the mark Health and Glow has reputation in India. As pointed out earlier, respondent/plaintiff is not manufacturing any products; but is only selling cosmetics/products of various concerns. That is the products of various other firms are marketed by respondent/plaintiff with the name of Health and Glow.
24.Now this Court has to consider whether the Respondent/Plaintiff is having reputation in India? Admittedly as per the documents filed by them at the time of filing the suit, they are having 43 retail shops in various places at Chennai, Bangalore, Secundrabad and Hyderabad. But except this, there is no prima facie evidence to show that their registered trade mark "Health & Glow" has reputation in India. But the learned Single Judge has not considered this aspect. In para-54 of his order, it is held as follows:
"54. Admittedly, the defendants are providing medical, hygiene and beauty care services. The plaintiff is selling cosmetics and items relating to hair care and beauty care and the defendants are also providing treatment for hair care as seen from their advertisements. The advertisements published by the defendants in various newspapers in West Bengal, filed as Document No.6 series and compiled from pages 22 to 112 of the typed set of papers, show that they offer skin treatment, hair growth therapy and weight loss management. The plaintiff is also selling products relating to hair care and treatment. Therefore, at least, prima facie, I am satisfied that the defendants are attempting to take unfair advantage of the reputation of the registered trade mark of the plaintiff. Since the defendants seek to do it without any explanation as to how they also arrived at the combination of the same two words and of the same device, I am convinced that the defendants have done this without due cause. Hence, it is clear, at least prima facie, that the pre-requisites of Section 29(4) are satisfied and that therefore, the defendants cannot escape through the gate way of usage of the trade mark on dissimilar products and services."
Admittedly, Respondent/Plaintiff is selling cosmetics and items relating to hair care and beauty care. But they are not providing any treatment or service. Per contra, Appellants/Defendants are only providing homeopathy treatment to their patients for skin treatment, hair growth therapy and weight loss management. In addition to that, they are providing ayurvedic medicines to other ailments viz., Arthritis, Children's disease, Chronic backaches, Depression, Constipation, Hair Loss, Piles, Menopause Syndrome, Acne, Allergies, Asthma, Hyperactivity, Migraines, Psoriasis etc. In such circumstances, we are of the view that the learned Single Judge erroneously held that the Appellants/Defendants are attempted to take unfair advantage of the reputation of the registered trade mark of the Respondent/Plaintiff. It is true, Appellants/Defendants have given explanation as to how they arrived at the combination of the same two words and of the same device. In the counter, as already stated that in para-18 and 21, Appellants/Defendants filed an application on 30.04.2004, prior to that of the Respondent/Plaintiff, who applied for registering the trade mark on 13.10.2004. In such circumstances, learned Single Judge has not considered this fact and erroneously held that the Appellants/ Defendants have attempted to take unfair advantage of the reputation of the registered trade mark of the Respondent/Plaintiff. As already stated that except having 43 retail shops at Chennai, Bangalore, Secundrabad and Hyderabad, there is no evidence to show that Respondent/Plaintiff is manufacturing cosmetics or items relating to health care, hair care and beauty care. Per contra, they are only marketing the reputed cosmetics and goods for health care, hair care and beauty care. The products are marketed by 'Health and Glow'.
25.In the context of Section 29(4)(c) of Trade Marks Act, the next question to be considered is, whether appellants/defendants adopted the mark without due cause. Section 29(4)(c) enacts use of the mark without due cause and takes unfair advantage of or is detrimental to the distinctive character or reputation of the registered trade mark. The purpose of Section 29(4) is to protect the value and goodwill of the trade marks, particularly in cases, where they are well known from being unfairly taken advantage of or detrimental to the distinctive character.
26.Since the Appellants/Defendants are having Homeopathy Clinic, they coined the word "Health and Glow", which is a common word. As per the Oxford English Dictionary, Indian Edition, "Health" means the state of being free from illness or injury; a person's mental or physical condition.
"Glow" means a strong feeling of pleasure or well-being: a glow of pride.
"Health and Glow", generic word has been adopted by the appellants relating to medicine that too hair loss, weight loss and treatment for Arthritis, Children's disease, Chronic backaches, Depression, Constipation, Piles, Menopause Syndrome, Acne, Allergies, Asthma, Hyperactivity, Migraines, Psoriasis etc. The name Health and Glow has been adopted by appellants/defendants only to indicate the medical services rendered by appellants/defendants. It cannot be said that the appellants/defendants had adopted the name Health and Glow without undue cause. It cannot be said that by using the name Health and Glow in their clinics in West Bengal, the appellants/defendants have taken unfair advantage or the adoption of the mark is so detrimental to the mark of respondent/plaintiff. we are of the view that Respondent/Plaintiff has not prima facie proved the pre-requisites of Section 29(4) of the Trade Marks Act. Hence, Respondent/Plaintiff is not entitled any injunction.
27.It is pertinent to note in 1998, that RPG Guardian Limited entered into a sale and purchase agreement with Spencer and Company Limited. In Clause-(iii) of the said agreement, it was specifically mentioned that "operating a chain of retail stores under the Trade name Health and Glow". It is true, in para-33 of his judgment, learned Single Judge considered various documents:
(i) Document Nos. 1 to 4 shows that Respondent/Plaintiff was adopted trade mark of "Health and Glow" from the year 1996 onwards and Respondent/Plaintiff has obtained registration of both words in trade mark and device mark.
(ii)Considering document No.6 (i.e.) Agreement of sale and purchase dated 16.10.1998, in clause-(iii) Respondent/Plaintiff mentioned that they were operating a chain of retail stores under the trade name "Health and Glow".
(iii)Document Nos.7 to 19, dated 14.07.2000, 27.06.2003, 25.07.2003, 12.03.2004, 14.06.2004, 11.10.2004, 19.09.2005, 15.10.2005, 01.04.2006, 07.06.2006, 23.08.2006, 19.09.2006 and 19.10.2006, are rental agreements in respect of the places at Chennai that the Respondent/Plaintiff has retail shops. Except Document Nos.9,10 and 12 , other documents are not mentioned about the name of "Health and Glow", trade mark.
(iv)Document No.9-Agreement for Lease dated 25.07.2003, in clause-1, it was stated that "the original Planning permit and sanctioned building plan for Commercial usage as Health and Beauty Store, approved by competent authorities."
(v)Document No.10-Operating Cum Management Agreement, dated 12.03.2004, in which, it was stated that the First Party is a reputed retail outlet having health and beauty outlets under the name and style "Health & Glow" in various major cities in India. But whereas in clause-9, it was stated that the Second Party shall also indicate prominently in the bill to be provided to the customers, the name and logo of "Health & Glow".
(vi) Document No.12-Leave and Licence Agreement, dated 11.10.2004, in clause-2 and 3, it was stated as follows:
"2.The Licensee is engaged in the business of operating retail outlets in beauty, cosmetics and pharmacy, under the name and style "Health & Glow" in major cities across India, hereinafter referred as 'Business'.
3.The Licensee approached the Licensor for being permitted to occupy and use the shop being Shop No.1B in the Level 1 of Abirami Mega Mall, a super built up area of 416 sq.ft. (including Common Area) or thereabouts for the purpose of carrying on their Business."
(vii) Document Nos.20 to 25 are related to the retail stores of Respondent/Plaintiff at Hyderabad, Secunderabad and Bangalore.
(viii) Document Nos.26 to 30 are the licenses issued by the local bodies at Hyderabad and Bangalore.
(ix) Document Nos.31 to 38 are Annual Reports of the Plaintiff's Company.
(x)Document Nos.39 to 45 are the news items published in some of the English and Vernacular news papers about the opening of stores by the Respondent/Plaintiff.
(xi)Document Nos.50 to 54 are the licenses issued by the local body at Chennai.
28.It is true, learned senior counsel for Respondent/Plaintiff would submit that since Appellants/Defendants have withdrawn their application before the Registrar of trade Marks, to register the trade, they have no locus standi to advance argument in this appeal. But it is true in the order dated 21.08.2007, it was specifically mentioned that an undertaking of the Appellants/Defendants "Appellant Company does not wish to proceed with the registration of the trade mark" is recorded. But it will not take away the right of the Appellants/Defendants to advance their arguments to set aside the order of the learned Single Judge. Furthermore, now Appellants/Defendants are running the Clinic in the name of "H & G Clinic".
29.To sum up, "Health and Glow" is a generic word, which is related to "Health", which leads to "glow". Respondent/Plaintiff is doing only business in selling cosmetics and health care products from reputed firms. Even though they had obtained trade mark registration in class-3 and 5 of the schedules, they have not prepared any products or goods. But they are marketing the goods from well reputed firms like VLCC, Himalaya, Ponds, Johnson, Nivea, Himami, Pepsodent, Lakme, Dabur etc. But whereas Appellants/Defendants are preparing homeopathic medicines and providing treatment to their patients for ailments such as Arthritis, Children's disease, Chronic backaches, Depression, Constipation, Piles, Menopause Syndrome, Acne, Allergies, Asthma, Hyperactivity, Migraines, Psoriasis etc., including skin treatment, hair growth therapy and weight loss management. But Respondent/Plaintiff is having their retail shops in various places only at Chennai, Bangalore, Secundrabad and Hyderabad, not entire India. There is no prima facie evidence to show that Respondent/Plaintiff is having reputation of registered trade mark throughout India. Besides, since plaintiff has not established the reputation, it cannot be said that the appellants/defendants had taken unfair advantage of reputation of registered trade mark of Respondent/Plaintiff. Since the Appellants/Defendants are doing medical practising, they are doing the same with due cause. In such circumstances, we are of the view that Respondent/Plaintiff has not proved that the Appellants/Defendants have infringed their registered trade mark right. Furthermore, as already stated that Kamdhenu's case is squarely applicable to the facts of the present case, because Respondent/Plaintiff is marketing the products from well reputed firms, but whereas the Appellants/Defendants are doing medical services by running Homeopathy Clinic and preparing medicines for their patients.
30.It is true as per the dictum of the Apex Court that the judgment of the learned Single Judge cannot be interfered, unless it is proved patently illegal or perverse. At this juncture, it is appropriate to consider the arguments advanced by the learned senior counsel for Appellants/Defendants contending that they have not claimed protection under Section 35 of the Trade Marks Act, because it is not their family name. But they coined the word in respect of their service rendered by them, since they are doing medical practising. In such circumstances, learned Single Judge without pleadings and arguments advanced by Appellants/Defendants suo motu considered the fact whether the Appellants/Defendants are entitled to protection under Section 35 of the Trade Marks Act. Hence, we are of the view that findings given by the learned Single Judge without pleadings are perverse. So we are inclined to interfere with the findings of the learned Single Judge.
31.As stated supra, Respondent/Plaintiff has not prima facie proved the pre-requisites of Section 29(4) of the Trade Marks Act. Hence, Respondent/Plaintiff is not entitled any injunction. Therefore, the order passed by the learned Single Judge is liable to be set aside.
32.Since the respondent is not entitled to injunction, the appellants are not entitled to proceed further in contempt application. So O.S.A.Nos.228 and 229 of 2007 are liable to be dismissed and hence they are hereby dismissed.
33.In fine, Setting aside the order dated 13.06.2007 made in O.A.Nos.310 & 311 of 2007 and A.Nos.2941 & 2942 of 2007, O.S.A.Nos.183 to 186 of 2007 are allowed.
Confirming the order dated 13.06.2007 made in A.No.2943 of 2007 in C.S.No.236 of 2007, O.S.A.No.187 of 2007 is dismissed.
O.S.A.Nos.228 and 229 of 2007 are dismissed.
Both the parties are directed to bear their own costs.
Consequently, connected Miscellaneous Petitions are closed.
[R.B.I.,J] [R.M.,J]
04.01.2012
Index: Yes/No
Internet: Yes/No
Note to Office:
Issue order copy on 06.01.2012
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To
The Sub Assistant Registrar,
Original Side,
High Court, Madras.
R.BANUMATHI,J.
and
R. MALA, J.
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Pre-delivery Judgment made in O.S.A.Nos.183 to 187 of 2007 and O.S.A.Nos.228 and 229 of 2007
04.01.2012