Indian Kanoon - Search engine for Indian Law

9. Learned counsel has also relied upon judgment of the Division Bench of this High Court in the case of Nestle India Limited v. Mood Hospitality Private Limited 2010 (42) PTC 514 (Del.) (DB) and also the case of Marico Limited v. Agro Tech Foods Limited (supra), to contend that where a mark is used in a descriptive manner to describe the quality of the product and not as a trade mark, there is no infringement of the registered trade mark and no injunction can be granted.

10. It is further stated that no case of passing off is made out as the defendant‟s mark "ALL ROUNDER" and the expression "ALL-AROUND PROTECTION" are not deceptively similar to the plaintiff‟s registered mark "ALLROUND". Reliance is placed on judgment of the Hon‟ble Supreme Court in the case of Ruston & Hornsby Ltd. vs. The Zamindara Engineering Co. (1969) 2 SCC 727.

Under the majority rule, evidence of abandonment must be clear and convincing. The New York Court of Appeals stated that "Abandonment being in the nature of a forfeiture, must be strictly proved."

23. Reference may also be had to the judgment of Supreme Court in the case of Ruston & Hornsby Ltd v. The Zamindara Engineering Co. (supra). In that case the appellant had a registered trade mark "RUSTON". The respondent therein started using trade mark "RUSTAM INDIA". The High Court in that case, found there to be deceptive resemblance between the words RUSTON and the mark RUSTAM and hence the use of the bare word RUSTAM constituted infringement of the appellant‟s trade mark RUSTON. However as the respondent was using the mark RUSTAM INDIA, the High Court held that mark was ceased to be deceptively similar to the appellant‟s trade mark. The Supreme Court negated the contention stating that the fact that the word INDIA is added to the respondent‟s trade mark RUSTAM is of no consequence and the appellant is entitled to succeed in its action for infringement of its trade mark.

25. Hence, there is no merit in the submission of the defendant. Merely because plaintiff has used the mark "ALLROUND PROTECTION" the mark "ALLROUND" cannot be said to have fallen in disuse.

26. Even otherwise the plaintiff has contended that it has used the mark "ALL ROUND" per se also. It will be for the plaintiff to prove this at the trial.

27. Now I come to the issue as to whether the use of the mark "ALL-AROUND" or "ALLROUNDER" by the defendant is an infringement of the registered trademark of the plaintiff "ALLROUND". What is to be seen is as to whether the trademark "ALL-AROUND PROTECTION" or "ALLROUNDER" can be said to be identical with or deceptively similar to the trademark of the plaintiff. Both the plaintiff and defendant are using the said mark on the same good i.e. tooth paste.

.......

24. The entire arguments are on the wrong premise and it proceeds on the basis of common feature of the two marks suffix "ZID" and since the respondent has registration and trade mark "ORZID", it cannot bare a part of it, i.e., "ZID". What has been seen in a case like this is as to whether the mark "FORZID" is deceptively similar to "ORZID". That is the test which is to be applied and in a process, it is to be seen as to whether the two marks are structurally and phonetically similar and would cause deception in the minds of consumers. When we judge the matter from this angle, we find ourselves in agreement with the view taken by IPAB as well as the learned Single Judge. Although the mark "ORZID" is a label mark, the word mark "ORZID" is an essential feature which has been covered by the registration."