Delhi High Court
Fybros Electric Private Limited vs Vasu Dev Gupta Trading As Vasu ... on 25 May, 2023
Author: C.Hari Shankar
Bench: C.Hari Shankar
$~54
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.O. (COMM.IPD-TM) 13/2021 & I.A. 13372/2021
FYBROS ELECTRIC PRIVATE LIMITED ..... Petitioner
Through: Mr. Ajay Amitabh Suman, Adv.
versus
VASU DEV GUPTA TRADING AS VASU ELECTRONICS
& ANR. ..... Respondents
Through: Mr. Umesh Mishra and Mr.
Satish Kumar, Advs. for D-1
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
O R D E R (O R A L)
% 25.05.2023
1. This is a petition under Section 57 of the Trade Marks Act, 1999 (―the Act‖, hereinafter). The petitioner is the registered proprietor of the following marks:
S. TRADE DATE OF APP. NO. CLASS STATUS
No. MARK/ FILING AND
LABEL USER CLAIM
1. 10th December 1762041 09 Registered
2008
Proposed to be
used
2. 20th March 2015 2927191 09 Registered
User claim:
06.11.2008
3. 26th November 1758032 09 Registered
2008
Proposed to be
used
Signature Not Verified
Signed By:KAMLA
RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 1 of 20
Signing Date:29.05.2023
14:18:39
4. 26th November 1758036 09 Registered
2008 Proposed
to be used
5. 26th November 1758033 11 Registered
2008 Proposed
to be used
6. 26th November 1758037 11 Registered
2008 Proposed
to be used
th
7. 10 December 1762045 11 Registered
2008 Proposed
to be used
th
8. 20 March 2015 2927192 11 Registered
6th
November
2008
2. The mark is, therefore, registered in favour of the
petitioner in, inter alia,
(i) Class 9 covering ―Electrical Accessories And Fittings,
Switches, Switch Gears, Wire And Cables Scientific, Nautical, Surveying, Electric, Photographic, Cinematographic, Optical, Weighing, Measuring, Signaling, Checking (Supervision), Life Saving And Teaching Apparatus And Instruments; Apparatus For Recording, Transmission Or Reproduction Of Sound Or Images; Magnetic Data Carriers, Recording Discs; Automatic Vending Machines And Mechanisms For Coin-Operated Apparatus; Cash Registers, Calculating Machines, Data Processing Equipment - And Computers; Fire Extinguishing Apparatus‖, with effect from 10th December 2008 and
(ii) Class 11, covering ―Apparatus For Lighting, Heating, Steam, Generating, Cooking, Refrigrating, Drying Ventilating, Water Supply And Sanitary Purpose‖, also with effect from 10th Signature Not Verified Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 2 of 20 Signing Date:29.05.2023 14:18:39 December 2008.
3. The petitioner avers that the petitioner has been using the mark in relation to a wide range of electrical goods including electrical accessories and fittings, electrical switches, main switches and fuse units, wires and cables and other allied and cognate goods since 2008. It is claimed that, by dint of continuous user, the mark has built up considerable reputation and is, by now, a source identifier, identifying the goods of the petitioner.
4. To vouchsafe its credibility and reach in the market, the petitioner has provided particulars of its sales figures from the years 2011-12 to 2019-20. During the year 2019-20, the sales figures of the petitioner are to the tune of ₹ 252 crores.
5. The petitioner is aggrieved by the registration of the mark NJBROS as a word mark in favour of the respondent in Class 11 w.e.f 8th March 2019, covering ―Apparatus For Lighting, Heating, Steam Generating, Cooking, Refrigerating, Drying, Ventilating Purposes; LED & Decorative Lights, LED Bulb, CFL Lights, Cooling Appliances & Installations, Fan, Cooler, Electric Kettle, Ice Machines, & Apparatus, Cooking Utensils (Electric); Refrigerator, Freezer, Cookers Incorporating Grills, Ovens, Microwave Ovens, Air Conditioning And Water Purifying Installations And Apparatus, R.O. Systems. Heater, Water Heaters, Water Immersion Heaters, Geyser, Coffee Brewers (Electric), Household Air Cleaners, Toaster, Electric Waffle Irons, Hearing Elements Included In Class 11‖.
Signature Not Verified Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 3 of 20 Signing Date:29.05.2023 14:18:396. The petitioner uses its mark for electrical goods including electrical accessories and fittings, electrical switches, main switches and fuse units, wires, cables and other allied goods whereas Respondent 1 uses the NJBROS mark for manufacturing, marketing and selling of electronics and home appliances. On that, there is no dispute.
7. Mr. Ajay Amitabh Suman, learned Counsel for the petitioner submits that the impugned mark NJBROS is liable to be removed from the register of trade marks under Section 57(2)1 of the Trade Marks Act, and the register rectified accordingly, as Section 11(1)(b)2 proscribes its registration. He submits that
(i) the mark NJBROS is deceptively similar to the mark ,
(ii) the goods in respect of which the two marks are presently being used are allied and cognate,
(iii) the petitioner has, moreover, a subsisting registration for its mark in Class 11, for the same goods in respect of which the impugned NJBROS mark is registered in favour of 1
57. Power to cancel or vary registration and to rectify the register. -
***** (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the Registrar, and the Registrar or the High Court, as the case may be, may make such order for making, expunging or varying the entry as it may think fit.
211. Relative grounds for refusal of registration. -
(1) Save as provided in Section 12, a trade mark shall not be registered if, because of -
(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of the goods Signature Not Verified or services covered by the trade mark, Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 4 of 20 Signing Date:29.05.2023 14:18:39 the respondent and
(iv) there is, therefore, a likelihood of confusion in the minds of the public, if the marks are allowed to co-exist.
8. Mr. Suman submits that, while the petitioner claims user since 2010-11 and has placed, on record, invoices from the said period, evidencing such user, as well as an agreement dated 21st May 2019 executed among the petitioner, M/s Balaar Marketing Pvt. Ltd. and Ms. Shruti Hasan, the respondent applied for registration of the impugned mark on ―Proposed To Be Used‖ basis.
9. As such, submits Mr. Suman, the petitioner has, over the respondent, the advantage of priority of registration as well as priority of use. Ergo, applying Section 57 read with Section 11(1)(b) of the Trade Marks Act, he submits that the impugned NJBROS word mark is liable to be taken off from the register of trademarks.
10. Mr. Umesh Mishra, learned Counsel for the respondent, has opposed the submissions of Mr. Suman. He submits that the adoption of the impugned mark NJBROS by his client was bona fide, as his client had two sons, Nitin and Jatin, who are brothers and it was to commemorate this fact that the mark NJBROS was coined.
11. Moreover, submits Mr. Mishra, the petitioner cannot claim exclusivity in respect of the common ―BROS‖ suffix in the there exists a likelihood of confusion on the part of the public, which includes the likelihood of Signature Not Verified association with the earlier trade mark. Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 5 of 20 Signing Date:29.05.2023 14:18:39 and NJBROS marks, as the suffix BROS is common to the trade, being an often-used abbreviation of ―brothers‖. He, therefore, invokes Section 173 of the Trade Marks Act to oppose the submission of Mr. Suman.
12. Mr. Mishra has also handed over, across the Bar, a computer generated trade mark search report from the website of the Office of the Controller General of Patents, for the search thread ―BROS‖, which has thrown up a number of marks, in order to support his contention that the suffix BROS is common to the trade.
13. In this context, Mr. Mishra places reliance on the judgment of the Supreme Court in J. R. Kapoor v. Micronix India4 and Hoffman- La Roche v. Geoffrey Manners5 and the decision of a Coordinate Single Bench of this Court in Soothe Healthcare Pvt Ltd v. Dabur India Ltd6.
14. Mr. Suman, responding to the submissions of Mr. Mishra, points out that there is no averment or pleading, in the response filed by the respondent to the petitioner's petition, to the effect that the 3
17. Effect of registration of parts of a mark. -
(1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole. (2) Notwithstanding anything contained in sub-section (1), when a trade mark -
(a) contains any part -
(i) which is not the subject of a separate application by the proprietor for
registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-
distinctive character,
the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.
41994 Supp (3) SCC 215 5 (1969) 2 SCC 716 6 Signature Not Verified 2022 (19) PTC 27 (Del) Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 6 of 20 Signing Date:29.05.2023 14:18:39 suffix BROS is common to the trade. The respondent cannot, he submits, be permitted to urge a point which is not pleaded by it.
15. He further submits that, by merely showing a proliferation of marks in the trade mark register which have BROS as a part thereof, the respondent cannot seek to make out a case that the suffix BROS is common to the trade. He relies, for this purpose, on the decision of a Division Bench of this Court in Pankaj Goel v. Dabur India Ltd.7
16. Mr. Suman also cites Automatic Electric Limited v. R. K. Dhawan8 to contend that, having itself applied and obtained registration of the NJBROS mark, the respondent could not seek to urge that the suffix BROS is common to the trade.
17. Mr. Suman further submits that, apart from the fact that the respondent's user is later in point of time to the petitioner's, as the respondent was, in 2019, applying for registration of the impugned mark on proposed to be used basis, there is not a single document of user placed on record by the respondent.
18. Apropos the submission of Mr. Mishra that the adoption, by his client, of the mark NJBROS is a bona fide adoption, Mr. Suman would seek to submit that the argument is merely hindsight wisdom and that, in the absence of any material to indicate that, while applying for the NJBROS mark, the respondent had conducted a complete search to examine whether similar marks were registered, the adoption 7 Signature Not Verified 2008 (38) PTC 49 (Del) Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 7 of 20 Signing Date:29.05.2023 14:18:39 of the mark cannot be regarded as bona fide. He relies, for this purpose, on the decision of a Coordinate Single Bench of this Court in Radico Khaitan Ltd. v. Devans Modern Breweries Ltd.9
19. Mr Suman also cites K. R. Chinna Krishna Chettiar v. Shri Ambal and Co., Madras10 and Amritdhara Pharmacy v. Satya Deo Gupta11.
Analysis
20. I have heard learned Counsel for both sides and perused the material on record.
21. A few days ago, the petitioner's mark had been asserted before me, in CO (Comm IPD-TM) 10/2021 (Fybros Electric Pvt Ltd v. Mukesh Singh), which was decided vide judgment dated 18th May 202312. In that case, the conflicting marks were - the asserted mark in the present case - and the impugned device mark .
22. On the basis of the material which has been cited by Mr. Suman in the present case - which was also cited in that matter - I have already upheld the claim of the petitioner to user of the device mark since 2010-11. That finding applies, mutatis mutandis, to the present case as well. The findings, in that regard, which would apply 8 77 (1999) DLT 292 9 258 (2019) DLT 177 10 (1969) 2 SCC 131 11 1963 (2) SCR 484 12 Signature Not Verified 2023 SCC OnLine Del 2948 Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 8 of 20 Signing Date:29.05.2023 14:18:39 equally to the present case, may be reproduced thus:
―12. Mr. Suman submits that was registered in favour of the petitioner on a proposed to be used basis, and the petitioner had furnished documents evidencing user since 2011. He has drawn my attention to invoices, placed on record, which indicate user of the mark by the petitioner from 2011 to 2018. He has also drawn my attention to an agreement dated 21st May 2019, executed between a sister concern of the petitioner, Ms. Shruti Haasan and M/s Pab Entertainment Solutions. The covenants of the agreement are of no relevance; suffice it to state that the term ―product‖ is thus defined in the said agreement:
―They shall mean and include electrical products, including with limitation, wires & cables, switch-gears, LED lights, and modular switches & accessories, and particularly excluding any electronic goods, chandeliers, and white goods (as is commonly understood), manufactured, marketed, distributed and sold by the Company, under the brand ―Fybros‖ which brand may also be marketed as ―Fybros by Kundan Cab‖ in any part of the Territory during the Term.
13. Mr. Suman submits that, inasmuch as the application seeking registration of the impugned mark had been filed by Respondent 1 on 7th September 2020 on proposed to be used basis, the user of the impugned mark, by Respondent 1, could not be earlier than 7th September 2020.
14. The petitioner has, therefore, both priority of user and priority of registration, vis-à-vis Respondent 1.‖
23. All that is left, therefore, is to examine the aspect of whether the impugned mark NJBROS is liable to be taken off the register by applying Section 57 read with Section 11(1)(b) of the Trade Marks Act.
24. This issue is also substantially covered by my decision in Fybros12, in which I have held that the marks and are phonetically similar. The classic test to be applied in the case of Signature Not Verified Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 9 of 20 Signing Date:29.05.2023 14:18:39 phonetic similarity is that propounded by Parker, J in Pianotist Co.
Application13, which reads thus:
―You must take the two words. You must judge them, both by their look and by their sound. You consider the goods to which they are to be applied. You must consider 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‖
25. Applying the Pianotist13 test, the Supreme Court, in Amritdhara Pharmacy11 and K. R. Chinna Krishna Chettiar10, held the marks ―Amritdhara‖ and ―Lakshmandhara‖, in the first case and ―Sri Ambal‖ and ―Sri Andal‖ in the second, to be phonetically similar.
It was further held by the Supreme Court, in the said cases, especially in K. R. Chinna Krishna Chettiar10, that, where the asserted mark essentially consisted of a word, and the word which constituted the dominant part of the defendants/respondents mark was phonetically similar, the presence of added material in the rival device marks would not derogate from the similarity between the two marks. The relevant passages from Amritdhara Pharmacy11 and K.R. Krishna Chettiar10 may be reproduced, to advantage, as under:
From Amritdhara Pharmacy11 ―7. Let us apply these tests to the facts of the case under our consideration. It is not disputed before us that the two names "Amritdhara" and "Lakshman-dhara" are in use in respect of the same description of goods, namely a medicinal preparation for the alleviation of various ailments. Such medicinal preparation will be purchased mostly by people who instead of going to a doctor wish to purchase a medicine for the quick alleviation of their suffering, both villagers and townsfolk, literate as well as illiterate. As we said in Corn Products Refining Co. v. Shangrila Food Products 13 Signature Not Verified [1906] 23 RPC 774 Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 10 of 20 Signing Date:29.05.2023 14:18:39 Ltd.14 the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity-of the two names "Amritdhara" and "Lakshmandhara" is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of the two composite words "Amritdhara" and "Lakshmandhara". We do not think that the learned Judges of the High Court were right in saying that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as ―current of nectar‖ or ―current of Lakshman‖. He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between ―current of nectar‖ and ―current of Lakshman‖. ―Current of Lakshman‖ in a literal sense has no meaning; to give it meaning one must further make the inference that the ―current or stream‖ is as pure and strong as Lakshman of the Ramayana. An ordinary Indian villager or townsman will perhaps know Lakshman, the story of the Ramayana being familiar to him; but we doubt if he would etymologise to the extent of seeing the so-called ideological difference between ―Amritdhara‖ and ―Lakshmandhara‖. He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailments.
8. We agree that the use of the word ―dhara‖ which literally means ―current or stream‖ is not by itself decisive of the matter. What we have to consider here is the overall similarity of the composite words, having regard to the circumstance that the goods bearing the two names are medicinal preparations of the same description. We are aware that the admission of a mark is not to be refused, because unusually stupid people, ―fools or idiots‖, may be deceived. A critical comparison of the two names may disclose some points of difference, but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. The trade mark is the 14 Signature Not Verified AIR 1960 SC 142 Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 11 of 20 Signing Date:29.05.2023 14:18:39 whole thing-the whole word has to be considered. In the case of the application to register ―Erectiks‖ (opposed by the proprietors of the trade mark ―Erector‖) Farwell, J., said in William Bailey (Birmingham) Ltd. Application15:
―I do not think it is right to take a part of the word and compare it with a part of the other word; one word must be considered as a whole and compared with the other word as a whole.... I think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word.‖ *****
12. On a consideration of all the circumstances, we have come to the conclusion that the overall similarity between the two names in respect of the same description of goods was likely to cause deception or confusion within the meaning of Section 10(1) of the Act and the Registrar was right in the view he expressed. The High Court was in error in taking a contrary view.‖ (Emphasis supplied)
26. The petitioner's mark is registered in Classes 9 and 11 and the respondent's mark is registered in Class 11. Mr. Mishra sought to contend that, even though the petitioner has registration in Class 11, proof of user of the asserted FYBROS mark is only available with respect to goods relatable to Class 9. In other words, he submits, there is no material to indicate user of the asserted FYBROS mark in respect of any other goods, even if the mark is registered for various goods both in Classes 9 and 11.
27. The submission is, to my view, misconceived in view of the specific words in which Section 11(1)(b) is couched. Section 11(1)(b) proscribes registration of a trademark if, on account of (i) its similarity to an earlier trademark and (ii) the identity or similarity of the goods Signature Not Verified 15 (1935) 52 RPC 137 Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 12 of 20 Signing Date:29.05.2023 14:18:39 or services covered by the trademark, there exists a likelihood of confusion on the part of the public. The expression ―covered by the trademark‖ cannot be equated, in my view, with the words ―in respect of which the mark is used‖. Coverage of a trademark has to be decided on the basis of the certificate of registration which sets out the goods in respect of which the trademark is registered. All such goods would be ―covered by the trademark‖.
28. As such, as the petitioner and the respondents both have registrations of the competing marks in Class 11, covering the same goods, the argument of Mr. Mishra that actual user of the petitioner's mark in respect of goods covered by Class 11 is not forthcoming, fails to impress.
29. That apart, even if one were to go by user of the competing marks, it is seen that the petitioner uses the mark in respect of wires, cables, switchgears and lightning systems and the respondent uses NJBROS for electronic items and home appliances. Clearly, the goods in respect of which the petitioner and respondent use the rival marks are allied and cognate, even if not identical. The nature of goods in respect of which the respective marks have been registered in favour of the petitioner in Class 9 and the respondent in Class 11 are also allied and cognate. The likelihood of confusion, therefore, is ex facie present.
30. Section 11(1)(b) encompasses both identity and similarity of goods or services covered by the rival marks.Signature Not Verified Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 13 of 20 Signing Date:29.05.2023 14:18:39
31. The first two criteria envisaged by Section 11(1)(b), i.e. similarity of the petitioner's and respondent's marks and identity or similarity of the goods or services covered by the rival marks, therefore, stands satisfied.
32. All that has to be established, then, for Section 11(1)(b) to apply is that, owing to these factors, there exists a likelihood of confusion on the part of the public. The two marks are used in respect of allied and cognate goods and, even if one were to go by the registration under Classes 9 and 11, there is every likelihood of confusion in the public if both the marks are allowed to subsist.
33. Even otherwise, it is, by now, common knowledge that most industries embark on a variety of enterprises which, at times, may be entirely unconnected with each other. Where two marks are similar, therefore, in the perception of a customer of average intelligence and imperfect recollection, the facts that the marks may be used in respect of goods which may not be the same cannot be treated as a factor which would lessen, or mitigate, the possibility of confusion arising as a result of similarity of the mark.
34. As such, Section 11(1)(b) of the Trade Marks Act clearly applies in the present case.
35. Mr. Mishra has sought to contend that the petitioner could not claim exclusivity over the BROS suffix, as it is common to the trade.Signature Not Verified Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 14 of 20 Signing Date:29.05.2023 14:18:39
36. He has relied, in this context, on the judgment of the Supreme Court in J. R. Kapoor4 and F. Hoffman La Roche5 as well as of the Coordinate Bench of this Court in Soothe Healthcare6. The issue in controversy is not, essentially, a claim to exclusivity over the suffix BROS. Even seen as a whole, the marks and NJBROS are phonetically similar.
37. That apart, as Mr. Suman has pointed out, the plea of the suffix BROS being common to the trade has not even been raised in the response filed by the respondent to the present rectification petition.
The respondent cannot be permitted to urge, during argument, a submission which has not been even been pleaded, especially where the submission relates to questions of fact.
38. Though, therefore, the plea of the suffix BROS being common to the trade is thus not available to the respondent in the present case, I may observe that, even in law, the submission, as advanced by Mr. Mishra, is misconceived. A plea that the suffix BROS is common to the trade cannot be raised merely by providing a search history of ―BROS‖ from the website of the Registrar of Trade Marks. Even otherwise, when one peruses the list of results that have been thrown up consequent to the search using the search screen BROS as provided by Mr. Mishra across the Bar, it is seen that there are only five registrations, which use BROS as a suffix, and appear to still be subsisting. In every other case, the mark is either different, abandoned or opposed.
Signature Not Verified Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 15 of 20 Signing Date:29.05.2023 14:18:3939. That apart, the manner in which a plea of a mark, or part thereof, being common to the trade, can be advanced stands settled by various pronouncements, including the judgment of a Division Bench of this Court in Pankaj Goel v. Dabur India Ltd16. This Bench has, in its recent decision in Under Armour v. Aditya Birla Fashion & Retail Ltd17., had occasion to examine this aspect of the matter, and I deem it appropriate, with humility, to reproduce paras 31 to 34 of the said decision, thus:
―31. Mr. Lall also advanced the contention that the mark ―ARMOUR‖ was common to trade and that the plaintiff was, therefore, operating in what he, interestingly, called a ―crowded market place‖. He relied, for this purpose, on a tabular statement, filed with the reply to the present application, in which there is a reference to a large number of marks which include the word ―ARMOUR‖. Thus, submits Mr. Lall, even the register of trade marks, insofar as the word ―ARMOUR‖ is concerned, was crowded.
32. With all due respect to the felicity of Mr. Lall in presenting, for judicial consideration, the somewhat innovative concept of a crowded market place, the Trade Marks Act does not recognise any such concept.
The proscription against claiming of exclusivity in respect of part of a mark is to be found in Section 17(2). That provision proscribes claiming of exclusivity in respect of part of a registered trademark, where the said part is ―common to the trade‖. A Division Bench of this Court has already examined the ingredients which are required to be satisfied before Section 17(2) can be invoked against the plaintiff, to dispute the entitlement of the plaintiff to seek claim exclusivity in respect of the whole or part of the mark which is asserted in the plaint. In Pankaj Goel v. Dabur India16, this Court has spoken thus:
―21. As far as the Appellant's argument that the word MOLA is common to the trade and that variants of MOLA are available in the market, we find that the Appellant has not been able to prima facie prove that the said ‗infringers' had significant business turnover or they posed a threat to Plaintiff's distinctiveness. In fact, we are of the view that the Respondent/Plaintiff is not expected to sue all small type infringers who may not be affecting 16 (2008) 38 PTC 49 (DB) 17 2023 SCC OnLine Del 2269 Signature Not Verified Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 16 of 20 Signing Date:29.05.2023 14:18:39 Respondent/Plaintiff business. The Supreme Court in National Bell v. Metal Goods18, has held that a proprietor of a trademark need not take action against infringement which do not cause prejudice to its distinctiveness. In Express Bottlers Services Pvt.
Ltd. v. Pepsi Inc19, it has been held as under:--
―....To establish the plea of common use, the use by other persons should be shown to be substantial. In the present case, there is no evidence regarding the extent of the trade carried on by the alleged infringers or their respective position in the trade. If the proprietor of the mark is expected to pursue each and every insignificant infringer to save his mark, the business will come to a standstill. Because there may be occasion when the malicious persons, just to harass the proprietor may use his mark by way of pinpricks.... The mere use of the name is irrelevant because a registered proprietor is not expected to go on filing suits or proceedings against infringers who are of no consequence... Mere delay in taking action against the infringers is not sufficient to hold that the registered proprietor has lost the mark intentionally unless it is positively proved that delay was due to intentional abandonment of the right over the registered mark. This Court is inclined to accept the submissions of the respondent No. 1 on this point... The respondent No. 1 did not lose its mark by not proceeding against insignificant infringers...‖
22. In fact, in Dr. Reddy Laboratories v. Reddy 20 Pharmaceuticals , a Single Judge of this Court has held as under:--
―...the owners of trade marks or copy rights are not expected to run after every infringer and thereby remain involved in litigation at the cost of their business time. If the impugned infringement is too trivial or insignificant and is not capable of harming their business interests, they may overlook and ignore petty violations till they assume alarming proportions. If a road side Dhaba puts up a board of ―Taj Hotel‖, the owners of Taj Group are not expected to swing into action and raise objections forthwith. They can wait till the time the user of their name starts harming their business interest and starts misleading and confusing their customers.‖‖ (Emphasis supplied)
33. Relying on Pankaj Goel16, this Bench has, in a recent decision in Glaxosmithkline Pharmaceuticals Ltd. v. Horizon Bioceuticals Pvt.
Ltd.21, observed as under:
18(1970) 3 SCC 665 19 (1989) 7 PTC 14 20 (2004) 29 PTC 435 21 Signature Not Verified 2023 : DHC : 2390 Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 17 of 20 Signing Date:29.05.2023 14:18:39 ―7.2.4 The onus to establish the existence of the ingredients to substantiate a plea that a mark, or a part thereof, is common to the trade, is unquestionably on him who so asserts. It is for Mr. Khera, therefore, to positively establish, at least prima facie, that the suffix DEX is common to the trade in pharmaceutical preparations. I do not think that he has succeeded in doing so.
7.2.5 How has Mr. Khera attempted to discharge this burden? He has cited a number of pharmaceutical products, the names of which end in DEX. The question is - does the burden on him thus stand discharged?
7.2.6 Pankaj Goel17 would indicate otherwise, but, before adverting to that decision, another facet of this issue merits mention.
***** 7.2.8 For the rest, the issue stands covered by the passages from Pankaj Goel16 reproduced supra. Merely citing marks of products containing DEX as a suffix is insufficient to substantiate a contention that DEX, as a suffix, is common to the trade in pharmaceutical preparations. On the defendant, pleading that the part of the brand name, common to the product of the plaintiff and the defendant, is publici juris, is cast the onus to establish the assertion. This, according to Express Bottlers 19 16 Services and Pankaj Goel , requires the defendant to show (i) substantial use, by the proprietors of the marks cited by it, (ii) the extent of trade in products bearing the said marks and (iii) that the said marks pose a threat to the distinctiveness of the mark asserted by the plaintiff. Else, would not be possible for this Court to return a finding that the mark of the plaintiff, or the part thereof which, according to the defendant, is common to the trade, is indeed so. 7.2.9 By corollary, it would be even more impermissible for the defendant to plead that the plaintiff‗s mark, or a part thereof, has become common to the trade, thereby invoking Section 17(2)(b) of the Trade Marks Act, by merely citing registrations, existing on the Register of Trade Marks, of names containing the asserted mark, or a part thereof. As is often correctly pleaded in these cases, ―common to register‖ is qualitatively different from ―common to the trade‖. One may register a mark and leave it unused. Products bearing marks which stand registered in the Register of Trade Marks may never see the market, or may, at best, make sporadic appearances. Such registrations cannot divest the plaintiff‗s mark of distinctiveness, or disentitle the plaintiff to injunction. 7.2.10 Plainly put, a mark, though registered, may not make it ―to the trade‖. Section 17(2)(b) applies only where the asserted mark, Signature Not Verified or a part thereof, is common ―to the trade‖. The use of the article Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 18 of 20 Signing Date:29.05.2023 14:18:39 ―the‖, in Section 17(2)(b) is, in my considered opinion, significant. There is a clear difference between the expressions ―common to trade‖ and ―common to the trade‖.
7.2.11 It is an elementary principle of legislative interpretation that the legislature is presumed not to indulge either in superfluity or tautology. Every word used in parliamentary legislation is intended, axiomatically, to have been deliberately used22. This principle applies with greater force where the use of the concerned word or phrase is not necessary to make the provision, in which it is used, syntactically complete. If, therefore, the legislature has, in the phrase ―common to trade‖, inserted the definitive article ―the‖, that insertion has to be treated as deliberate and intended to serve a particular purpose. Etymologically, the insertion of the definitive article ―the‖ is obviously intended to make the provision applicable to ―the trade‖ which could, in a manner of speaking, be analogised to ―the market‖. The use of the definitive article ―the‖ indicates that the accompanying word ―trade‖ is to be understood, in the provision, as a noun, and not a verb. As a noun, ―trade‖ has been defined in several judgments of the Supreme Court. Perhaps the most comprehensive definition is to be found in Fatechand Himmatlal v. State of Maharashtra23, which defines ―trade‖, used as a noun, as meaning ―lending, movements of goods, transactions linked with merchandise order, flow of goods, the promotion of buying and selling advance, borrowings, discounting bills and mercantile documents, banking and other forms of supply of funds‖. What, therefore, section 17(2)(b) requires is commonness, of the asserted mark or part thereof, to ―the trade‖; in other words, in the trade relating to the goods to which the mark pertains, the use of part of the mark must be found to be ―common‖. ―The trade‖ referring to actual flow of goods in the market, it is necessary for the defendant who invokes Section 17(2)(b) to establish that, in the market relating to such goods, the use of the asserted mark, or part thereof, is common.
7.2.12 The word ―common, too, has its own significant etymological connotation. Commonality cannot be easily presumed. It has to be established as a statistical reality. ―Common is defined in P. Ramanatha Aiyar‗s authoritative Advanced Law Lexicon, as ―describing something that happens very frequently, or that applies equally to a number of people, without exclusion or differentiation. The Worcester Dictionary, also quoted in Ramanatha Aiyar, defines ―common, as an adjective, as meaning ―usual, accustomed, shared among several; owned by several jointly; belonging to the public; general; universal; frequent, 22 Refer Umed v. Raj Singh, (1975) 1 SCC 76; Dilbagh Rai Jerry v. UOI, (1974) 3 SCC 554 : AIR 1974 SC 130 23 (1977) 2 SCC 670 : AIR 1977 SC 1825 Signature Not Verified Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 19 of 20 Signing Date:29.05.2023 14:18:39 customary, habitual. Plainly stated, therefore, for the use of an expression to be regarded as ―common to the trade‖, the persons who are asserting as to establish, positively, that the use of the expression in the trade is frequent, customary or habitual. Registering of a multiplicity of marks containing the expression can go no way, whatsoever, towards that end.
7.2.13 In other words, what Section 17(2)(b) envisages is, firstly, the existence of a trade in the articles, or class of articles, in respect of which the asserted mark is used by the plaintiff and, secondly, frequent, customary or habitual use, in that trade, of the mark, or part of the mark, asserted by the plaintiff which the defendant claims to have become ―common to the trade‖. By its very nature, satisfaction of this test would require appreciation of evidence. It would require the Court to be satisfied of (i) the existence of a trade in the article, or class of articles, in respect of which the plaintiff uses the asserted mark and (ii) common, i.e. frequent, customary or habitual use, in that way, of the mark or part thereof. It is only, therefore, where there is sufficiently overwhelming evidence, of the satisfaction of these two ingredients, placed on record by the defendant, that the Court may, at a prima facie stage, justify the invocation of Section 17(2)(b), by holding that the mark asserted by the plaintiff, or a part thereof, has become ―common to the trade‖, thereby disentitling the plaintiff from claiming exclusivity in respect thereof.
7.2.14 Tested on this touchstone, it cannot be said that Mr. Khera has made out a case for holding the plaintiff disentitled from claiming exclusivity on the ground that the suffix DEX is common to the trade. The Court does not have, with it, statistical data regarding the market presence of other pharmaceutical compounds, the brand names of which end with DEX. When one excludes, from the examples cited by Mr. Khera, those products which contain dexamethasone or dextromethorphan, the remaining examples cannot, at the prima facie stage, make out a case under Section 17(2)(b) of the Trade Marks Act. The principle that the mere failure, on the part of the plaintiff, to sue every infringer, cannot disentitle it from claiming exclusivity vis-à-vis the infringer whom it chooses to sue, would also apply in such circumstances.‖
34. The aforenoted observations apply mutatis mutandis, to the facts of the present case. Mere citing of a multitude of marks, which are available on the register of trade marks and which include, as a part or as the whole thereof, ―ARMOUR‖, cannot make out a case of the marks asserted in the present case, or even of part thereof, being common to the trade.‖
40. The plea that the suffix BROS is common to the trade and that, Signature Not Verified Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 20 of 20 Signing Date:29.05.2023 14:18:39 therefore, the petitioner cannot maintain the present petition is, therefore, not sustainable in law.
41. The only other plea that survives for consideration is the submission that the adoption of the mark in NJBROS was bona fide. Bona fide adoption is not a ground on which the rigour of Section 11(1)(b) can be avoided. No doubt, Section 11 is subject to Section
12. Section 12, however, does not deal with bona fide adoption but deals with honest and concurrent user. Honest and concurrent user, as a principle of trademark law, has its own distinct ingredients. The mere fact that the respondent may have coined the mark NJBROS has a portmanteau of the first letters of the name of his two sons along with BROS as a suffix cannot detract from the fact that, owing to the existence, prior in point of time, of the petitioner's registered FYBROS mark, the mark was not eligible for registration.
42. In view thereof, the continuance of the impugned mark on the register of trademarks cannot be upheld.
43. The impugned mark, therefore, is liable to be removed from the register of trademarks under Section 57(2) read with Section 11(1)(b) of the Trade Marks Act.
44. The petition accordingly succeeds and is allowed.
45. The Registrar is directed to remove, forthwith, from the register of trademarks, the impugned mark NJBROS.
Signature Not Verified Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 21 of 20 Signing Date:29.05.2023 14:18:3946. Let a copy of this order be forwarded to the Registrar for necessary compliance.
C.HARI SHANKAR, J MAY 25, 2023 ar Signature Not Verified Signed By:KAMLA RAWAT C.O. (COMM.IPD-TM) 13/2021 Page 22 of 20 Signing Date:29.05.2023 14:18:39