Carlsberg India Pvt. Ltd. vs.

Radico Khaitan Ltd.

Carlsberg India Pvt. Ltd. vs. Radico Khaitan Ltd.

2012 (49) PTC 54 (Del.) (DB)

Radico Khaitan Ltd. (Plaintiff) instituted a suit for infringement of Trade Mark & Passing off
against Carlsberg India Pvt. Ltd. (Defendant). The disputes were over the marks ‘8 PM’ and
‘PALONE 8 PM, which were being used by the parties in the below depicted manner:

The grievance of the Plaintiff was that the use of the numeral ‘8’ by the Defendant in relation
to it’s beer infringes and violates  the statutory and common law rights of the plaintiff in it’s
well known and registered mark ‘8 PM’.

CASE OF THE PLAINTIFF:

 Plaintiff adopted the mark 8 PM in 1997 and has been using the same since 1999.
 Plaintiff sold a record of one million cases of 8 PM Whisky in the first year of it’s
launch which was recorded in Limca Book of Records.
 Plaintiff is the Registered Proprietor of 8PM family of marks in India as well as in
other jurisdictions.
 The Defendant is in the same trade. It is well aware of the reputation of the Plaintiff’s
mark ‘8 PM’.
 The conduct of the Defendant in using the impugned mark/numeral in respect of same
goods and that too in same font and colour is malafide.
  The Defendant is also using a slogan ‘8 KA DUM ‘which is similar to Plaintiff’s
campaign ‘AATH KE THAATH’.

CASE OF THE DEFENDANT

 The Defendant saw a high demand of strong beer in the Indian market and launched
in January, 2011 a stronger variant of it’s well-established brand OKOCIM PALONE
under PALONE 8 label having Alcohol By Volume (ABV) of approximately 8%  and
the use of numeral ‘8’ by Defendant is a bona fide description of its goods.
 The Plaintiff is not entitled to the exclusive proprietary rights over the numeral mark
‘8’ as the Plaintiff has not obtained any registration for ‘8’ nor is there any application
for the mark ‘8’ per se.
 The goods beer and whisky are totally different and belong to different segments and
class of consumers.
 Plaintiff’s whisky is priced at approximately INR 300 whereas the Defendant’s beer 
is priced at INR 65.
 There are number of major players in the alcohol trade to be using the numeral 8 on
their labels.

SINGLE JUDGE

The Learned Single Judge held in favour of the Defendant on the following grounds:

 The numeral mark 8 is prima facie of non distinctive character.

 The marks of both the Plaintiff as well as the Defendant are not identical but at best
these can be considered deceptively similar.
 The Registration obtained by the Plaintiff gearing the mark ‘8 PM’ was granted under
the old act, i.e. Trade and Merchandise Marks Act , 1958 in Part-B and therefore,  as
per the said Act, under Section 29(2), in an action for infringement of a trade mark in
case the registration in Part-B and the defendant is able to satisfy the Court that the
mark is not likely to deceive or cause confusion in the trade, the relied under those
circumstances shall not be granted to the Plaintiff. Therefore, the Hon’ble Single judge
heal that the use of mark ‘PALONE 8’ by the Defendant is not an infringement under
the old Act of 1958 and therefore the said Act is also not an infringement under the
Trade Marks Act, 1999 as per clear reading of Section 159(5) of the Trade Marks Act,
1999.
 As per the search report, there is another third party who has a registration for the
mark ‘8 PM’ for Beer and not the Plaintiff. The Plaintiff has relied on their registration
of the mark ‘8 PM’ for mineral water and this is a surrounding circumstance for the
purpose od the grant or non grant of injunction.
 ‘8’ is not per se registered in view of Section 17 of the Trade Marks Act, 1999.
 If one may apply the test of identity of composition, identity of consumers, price
ranges, consuming public as tests, the goods ‘Beer’ and ‘Whisky’ are not the same, 
price wise there is a great price variation.
 The Plaintiff has failed to make out any prima facie case in it’s favour.

However, the Learned Single Judge held that in order to avoid any confusion  the defendant
is directed to use the mark PALONE and numeral-8 together in the same line. The numeral-8
is allowed to be used by the defendant in different writing style in different colour other than
in golden colour. The mark ‘PALONE 8’ would be used by the defendant in the same size of
lettering and fonts.

DIVISION BENCH

Two cross appeals were filed against the order of the Learned Single Judge. One by the
Plaintiff, that they seek a complete ban on use of numeral ‘8’ by the Defendant and the other
by the Defendant against the limited injunction granted by the Learned Single Judge
requiring the Defendant to change it’s packaging, font, colour, etc.

ON DESCRIPTIVE USE OF “8” BY DEFENDANT

On this aspect, The Hon’ble Division Bench tested the mark ‘8’ as used by Defendant on
three aspects:

(a) Does the numerical 8 indicate any quality, functionality, property, content etc. of the
product itself?

The said question was answered in the negative on the ground that as the percentage of
alcohol content is 7.5% and not “8”, the choice of “8” is arbitrary than descriptive as it does
not indicate any quality or property of the product.

(b) Does the numeral “8” appear “in a manner of speaking” on the label or has been given
undue prominence so as to appear as a trademark?

The Division Bench held that “8” is the most prominent component of the Defendant’s label.
Such a use cannot be termed as a descriptive use and is clearly in the nature of Trade Mark
use.

(c) Does the product, aside from the numeral “8”, carry any other mark which is intended to
be the “brand name” or “trademark” by which consumers are to ask for the product?

The said question was answered in the negative on the ground that numeral “8” is the single
most prominent feature of the label, the product for all practical purposes is being sold under
the mark “8” and consumers are likely to identify  and ask for the product as “8” and not
“PALONE 8”

ON INFRINGEMENT

Relying on Section 17 of the Trade Marks Act, 1999 the Division Bench held that an action
for trademark infringement in respect of the composite word mark “8 PM” against Carlsberg,
which uses “PALONE 8”, where the only commonality is “8” must prima facie fail.

ON PASSING OFF
The Hon’ble Division Bench applied the last two prongs of the Jif Lemon trinity, as to
whether there is any likelihood of confusion and any resultant damage thereby. The answers
for both of the tests were found to be in negative.

On the question of Trade Dress, in the ‘8 PM’ Label, the Court held that unique elements of
the Plaintiff’s Label have not been copied by Defendant. The mere manner of writing the
numeral “8” or the size of it cannot be a sufficient ground for Plaintiff to obtain an injunction.

Thus, the Division Bench dismissed the appeal filed by the Plaintiff and allowed the appeal
filed by the Defendant. The appeal of the Defendant was allowed for the reason that the
ground on which the Learned Single Judge has granted the injunction, i.e. to avoid any bleak
chances of misrepresentation is no ground for granting an injunction.

T.V. Today Network Ltd. & Anr. v. Kesari Singh Gujjar & Ors.

T.V. Today Network Ltd. & Anr. v. Kesari Singh Gujjar & Ors.

CS(OS) no. 1085 of 2005 before the Hon’ble High Court of Delhi at New Delhi

Decided on: 7th October, 2013

The Plaintiffs (T.V. Today Network Ltd. & Living Media India Ltd.) filed a suit for
permanent injunction against the Defendants who were using the Trade Mark ‘Aaj Tak’.
Plaintiffs were seeking a decree restraining the Defendant from passing off of their
publication as those of the Plaintiffs along with delivery up, rendition of accounts and
damages.
After the filing of the suit in August, 2005 Plaintiff No. 2 (Living Media India Ltd.) obtained
registration for the Trade Mark ‘Aaj Tak’. Therefore, the Plaintiffs added the relief of
permanent injunction seeking restrain on infringement of Trade Mark ‘Aaj Tak’.

PLAINTIFF’S CASE

 In 1995, Plaintiff No. 2 decided to start a news programme in Hindi under the name of
‘Aaj Tak’.
 The Plaintiff No. 2 was a registered proprietor of the Trade Mark ‘Aaj Tak’ in Classes
38 and 41 of the Fourth Schedule of the Trade Marks Act, 1999 and Plaintiff No. 2
operated a 24-hour news channed under the said name ‘Aaj Tak’ since 2000.
 As on 30th April, 2005, ‘Aaj Tak’ had a total viewership of 19.4 million and market
share of 25.5%. The turnover of the Plaintiff for the year 2004-05 was Rs. 1390.68
lakhs
 In 2005, Plaintiff discovered that Defendants were publishing a newspaper under the
name ‘Aaj Tak’.

DEFENDANT’S CASE

 The Defendants have been publishing their newspaper for the past 10 years, i.e. since
1996.
 The suit suffers from laches and acquiescence as the Plaintiffs knew about the
presence of the Defendant since 1996.
 The Registration of the Plaintiff does not cover newspaper.
 Defendants’ newspaper is governed by the Press and Registration of Books Act, 1867
whereas the Plaintiffs are running a TV Channel.

HELD

 That the act of the Defendants constitutes infringement of Registered Trade Mark of
the Plaintiff as well as Passing Off under Section 29(1), 29(2) and Section 29(4) of the
Trade Marks Act, 1999.
 The Defendants are liable to pay the Plaintiffs Rs. 5 lakhs as punitive damages and
Rs. 25,000 as costs.

BASIS

 The Plaintiffs admittedly hold registration for the mark ‘Aaj Tak’, wherein they have
claimed a user since June, 1995.
 The certificates  constitute prima facie evidence of the date from which use is claimed
and the use claimed is prior to the dates on which the Defendants had applied for
registration of the newspaper under the mark ‘Aaj Tak’.
 The mark adopted by the Defendants is identical to the registered mark of the
Plaintiffs phonetically, structurally and visually.
 As per International Classification of Goods and Services (Nice Classification) the
sub-classification in Classes 38 concerns ‘news agencies/wire services’ and sub-
classification in Classes 41 concerns ‘news reporter services’ and ‘publication of texts,
 other than publicity texts’ and thus dissemination of news and news reporting would be
covered under Classes 38 and 41.
 Even if Classes 38 and 41 are held not to cover newspapers, the publishing of
newspapers is an allied and cognate activity similar to the goods and services for which
the word mark ‘Aaj Tak’ has been registered in favour of Plaintiffs.
 Adoption and use of the impugned mark by the Defendants will cause detriment to the
distinctive character and repute of the Plaintiff’s mark.
 Defendants have not led any evidence and thus the failure by the Defendants to
examine themselves and to submit themselves to cross-examination as witnesses would
result in discrediting the truth of their case.
 The Press and Registration of Books Act, 1867 does not deal with various aspects of
trade marks, the rights of a trade mark owner and remedies for infringement.

Castrol Ltd. and Anr. Vs. A.K. Mehta and Anr.

Castrol Ltd. and Anr. Vs. A.K. Mehta and Anr.

1997 (17) PTC 408 Del (DB)

Appellant No. 1 was a Company incorporated under the law of England. Appellant No. 2,
Castrol India Ltd. was a Company incorporated under the Indian Companies Act, 1956 It
carries on business at a large and extensive scale in high grade automotive and industrial
lubricants, greases, brake fluids, wood-preservatives, metal cleaning compounds etc. It also
trades in anti-freezing compounds, hydraulic fluids etc.

Appellant No. 1 was registered proprietor of the trade mark Castrol and logo of Castrol.

Respondents were using container with the mark Bestrol. The Appellants filed a suit and
obtained an ex-parte injunction. However, the said injunction was vacated by the Single
Judge. Hence the present appeal.

The reasoning of the learned single judge towards vacating the injunction was two fold.

1. Respondents had been using mark Bestrol for more than 10 years and so the suit suffered
from delay and latches;

2. Appellants had themselves permitted the user of the trade mark Castrol by third party in
the year 1993 and thus the Appellants cannot have grievance if the same trade mark is used
by the defendant.

In support of it’s plea of use, the Respondents submitted sales figures and advertisements.
The Division Bench observed that the said sales figures are not necessarily related to
lubricants and the Respondents have not brought on record any material to hold the figure of
sales being referable to lubricants only. The advertisement was a single piece and thus was
not taken into consideration.

Held: On Delay

“From the evidence adduced by the defendants a plea of concurrent user cannot at all be
spelled out. Hence the suit filed by the plaintiffs cannot be said to be suffering from delay and
laches.”

It was further held “….neither a case of delay or laches is made out nor the plea of delay and
laches should be entertained in the interest of general public….”

Held: On Permitted Use by third party

The Court observed “A leave or license given to the defendants in that suit, in lieu of the
compromise cannot be termed as a license to the defendants herein to use Bestrol.”

Other Issues raised:

The Respondents contended that use by Appellant No. 1 cannot be taken advantage of by
Appellant No. 1 as Appellant No. 2 is not a ‘registered user’ within the meaning of Sections
48 and 49 of the Trade & Merchandise Marks Act, 1958.
The Court held “Section 48 is not mandatory but permissive in its operation as the use of the
word ‘may’ in its test shows. If an ‘user’ wants himself to be registered, the provisions of
Sections 48 and 49 are attracted. However, such registration is not compulsory. The object
behind Sections 48 and 49 is to prevent trafficking in trade marks which is not the case here.
User by Appellant No. 2 in India has been established which will ensure to the benefit of
Appellant No. 1 in accordance with Sub-section (2) of Section 48 of the Act and the two
Appellants have been joined as co-plaintiffs. The Appellants are entitled to relief in either
case-whether a case of infringement is made out or a case of passing off is made out.”

On Similarity of Marks:

The use of the word Bestrol is deceptively similar with the word Castrol and hence cannot be
allowed.

The Appeal was allowed.

Hindustan Pencils (P) Ltd. v. India Stationery Products Co. and Anr.

Hindustan Pencils (P) Ltd. v. India Stationery Products Co. and Anr.

AIR 1990 Delhi 19

Plaintiff adopted the mark Nataraj with the device of dancing Nataraj in 1961 and got the
same registered.

Plaintiff’s Case:

Plaintiff got to know somewhere in the middle of the year 1985 that the Defendants had
registered a copyright similar to that of the Plaintiff’s label and consequently Plaintiff filed an
application for cancellation of the Registration of Copyright.

Defendants have not only used the registered name of the Plaintiff but have also used the
device of the dancing Nataraj which has been registered by the Plaintiff.

Defendants’ Case:
There has been an inordinate delay in filing the suit and on this ground alone no interim
injunction should be granted to the Plaintiff.

The Plaintiff knew about the Defendants since 1982 and chose to approach the Court only in
1988.

Defendants conceded that if the Defendants’ defense of the Plaintiff being guilty of
inordinate delay or acquiescence is not accepted then, in that case, interim injunction may
have to be issued because there is, admittedly, an infringement by the Defendants of the
Plaintiff’s registered trade mark.

Issue:

Whether the Plaintiff is entitled to the grant of an interim injunction in light of inordinate
delay or laches or acquiescence, as alleged by the Defendants.

Observations:

• Delay by itself is not a sufficient defense to an action for interim injunction, but delay
coupled with prejudice caused to the Defendant would amount to laches. It is for the
Defendant to show that there has been prejudice caused by reason of the delay.

• Some Courts have declined to grant interim injunction, on ground of laches or

acquiescence, while not refusing permanent injunction on the ground that:
“while laches may not be a sufficient bar to a permanent injunction, it may well be a bar to
preliminary relief. The preliminary injunction is sought upon the theory that there is an
urgent need for speedy action to protect the plaintiff’s rights. By sleeping on its rights a
Plaintiff demonstrates the lack of need for speedy relief and cannot complain of the delay
involved pending any final relief to which it may be entitled after a trial on all the issues.”

• It appears difficult to comprehend the distinction which the courts have sought to make
between the grant of interim injunction and permanent injunction. If on the facts which are
clearly discernible from the record it appears that after trial a permanent injunction is likely to
be, granted, notwithstanding the delay on the part of the Plaintiff in approaching the Court,
there appears to be no reason as to why temporary injunction should be refused.

• It is no doubt true that trade mark, copyright or a patent belongs to a registered owner and is
his monopoly. Nevertheless, especially as far as trade marks are concerned, the said mark is
also meant to distinguish the goods of the owner of the mark from that of the other
manufacturers. This distinguishing mark is primarily, probably solely, for the benefit of the
consumer. It is the duty of the courts to protect the interest of such unwary customers. It is no
doubt true that giving protection to the consumer would necessarily amount to giving relief to
the Plaintiff, even though Plaintiff may have slept over his right for a number of years.

• Even though there may be some doubt as to whether laches or acquiescence can deny the
relief of permanent injunction, judicial opinion has been consistent in holding that if the
Defendant acts fraudulently with the knowledge that he is violating the Plaintiff’s rights then
in that case, even if there is an inordinate delay on the part of the Plaintiff in taking action
against the Defendant, the relief of injunction is not denied.

• The defense of laches or inordinate delay is a defense in equity. In equity both the parties
must come to the Court with clean hands. An equitable defense can be put up by a party who
has acted fairly and honestly.

• If a party, for no apparent or valid reason, adopts a mark belonging to another, whether
registered or not, it will be difficult for that party to avoid an order of injunction because the
Court may rightly assume that such adoption of the mark by the party was not an honest one.
The Court would be justified in concluding that the Defendant, in such an action, wanted to
cash in on the Plaintiff’s name and reputation and that was the sole, primary or the real
motive of the Defendant adopting such a mark.

• Where there is an honest concurrent user by the Defendant then inordinate delay or laches
may defeat the claim of damages or rendition of accounts but the relief of injunction should
not be refused.

• Where the Plaintiff, however, is guilty of acquiescence, there different considerations may
apply. As already noted, acquiescence may mean an encouragement by the Plaintiff to the
Defendant to use the infringing mark.

• It will be for the Defendant in such cases to prove acquiescence by the Plaintiff.
Acquiescence cannot be inferred merely by reason of the fact that the Plaintiff has not taken
any action against the infringement of its rights.

• Applying the aforesaid principles to the present case, an important factor which has to be
seen is whether the user or adoption by the Defendants was honest or fraudulent. In the
present case, the Defendants have used the same spelling for the word “Nataraj” as have been
used by the Plaintiff. Not only this, the device of the dancing Nataraj has been copied by the
Defendants. Therefore, the said defenses are not available to the Defendant.

• Acquiescence means encouragement, on the part of the Plaintiff to the Defendant. There
should be a mistaken belief by the Defendant that there is no objection to the Plaintiff using
its mark. In the present case the Plaintiff has taken action by applying to the Registrar of
Copyright.

• No specific notice was sent to the Defendant. Such non-action may disentitle the Plaintiff
for the award of damages or rendition of accounts, but such inaction does not show any
consent or acquiescence on the part of the Plaintiff to the Defendant’s using the said mark.
No overt act has been done by the Plaintiff which could, in any manner, amount to
encouraging the Defendant to continue to use the infringing mark.

• Any infringer who uses or adopts some one else’s mark must be aware of the consequences
which may follow. Any growth after notice is at the risk and peril of the Defendant. The
Defendants certainly had notice of application of the Plaintiff having been filed against it in
the year 1985 for cancellation of registration of the copyright. If the Defendants continued to
do business by using the impugned mark. it did so at its own peril.

Held:

The application for interim injunction was allowed.

Pratibha M. Singh v. Singh and Associates

Pratibha M. Singh v. Singh and Associates

IN THE HIGH COURT OF DELHI AT NEW DELHI

Date of Decision: 14th October, 2014

CS(OS) No. 1173 of 2012

In the present case, one Advocate filed a suit against another law firm on the ground of
infringement of Trade Mark and passing off. After, a lot of efforts by the Hon’ble Court,
towards reaching an amicable settlement in the matter, no settlement was arrived at and the
matter was argued at length.

Plaintiff’s Main Contentions:

• Plaintiff has been using the Trade Mark ‘Singh & Singh’ since 1997 and the said trade mark
has acquired goodwill and reputation.

• In April, 2012, Plaintiff learnt that Advocates working in the name and style of the
Defendant were making unsolicited approaches to the foreign associates and clients of the
Plaintiff.
• As the Defendant use the mark ‘Singh & Associates’, there are instances of confusion
amongst the clients.

Defendant’s Main Contentions:

• Surname “Singh” is extremely common in India.

• The proprietor of the Defendant, namely Mr. Manoj K. Singh adopted it bonafidely.

• There is no similarity between ‘Singh & Singh’ and ‘Singh & Associates’

• That the Plaintiff was aware of the Defendant at least since 2010.

Court’s Observations and Approach:

In light of the fact, that the dispute is between two advocates, the matter should be
approached not with a purely legal approach but with a lasting legal solution, in the sense of a
judge occupying a father figure.

The application for interim relief was disposed with the following observation:

The Defendant, would add the words “Founder Manoj K. Singh” under it’s logo. (In arriving
at the said conclusion, the Hon’ble Court relied on the concept of ‘Priming’ (implicit memory
effect in which exposure to one stimulus influences a response to another stimulus) and
‘Word Association’).

The Court further observed:

“It cannot be lost sight of that persons looking for “Singh & Singh” and “Singh &
Associates” in the context of Intellectual Property Laws would not expect either of the two to
have allowed such a possibility and would expect their Advocates to take care, to protect at
least their own name. We have to judge the situation not only in the context of Indians but
also in context of foreigners with whom both, plaintiff and defendant, claim to be having
large dealings. Such foreigners are not expected to know of ‘Singh’ being a common
surname in India and to thus be cautious.”

“I may also observe that I find it in the interest of both to have such distinctions, lest their
clients form an opinion that if they cannot protect their own name, they cannot be expected to
protect the clients’ interest.”

The application was disposed off with the direction as stated above.

Vicco Laboratories, Bombay v. Hindustan Rimmer, Delhi

Vicco Laboratories, Bombay v. Hindustan Rimmer, Delhi

 AIR 1979 Delhi 114

Plaintiff was manufacturing and marketing since 1965 vanishing cream containing turmeric
and sandal wood under the name of Vicco Turmeric Vanishing Cream. Plaintiff had been
marketing the said cream in tubes in cartons. The carton and tubes had a distinctive get up
and colour scheme, i.e., red background with yellow floral design and printing in white
letters. On two sides of the carton there were floral designs with the words ‘Vicco Turmeric’
in first line, words ‘Vanishing Cream’ in the second line and words ‘An Ayurvedic
Preparation’ in the third line. On the third side of the carton there was floral design with the
words ‘manufactured in India by’ printed in the first line and the Plaintiff’s ‘name and
address in the second and third line. On the fourth side of the carton the uses of the said
cream were mentioned. The get-up, colour scheme, arrangement of features on the tube was
also similar except that the writings on the tube were yellow. The cap of the tube was yellow
and the tube had a Yellow strip in the bottom. The total sales of the said product since April,
1975 up to December, 1977 are of Rs. 1,77,31,377/-.

The Defendant’s launched an identical product called ‘Cosmo’ and the colour scheme, get-
up, layout and arrangement of features of the same were identical to Plaintiff’s product
‘Vicco’.

Plaintiff’s Contentions:

• By reason of sales and publicity their product has become popular in the market and by
reason of distinctive get-up and colour scheme, the tube and the carton have come to be
associated by the trade and the members of the public as the product of the Plaintiff
exclusively.
• In November, 1977, the Plaintiff learnt that the Defendant had begun marketing a vanishing
cream in cartons and tubes which are a colourable imitation of the Plaintiff cartons and tubes
which is a malafide act of passing off of the Defendant’s cream as those of the Plaintiff.

Defendant’s Contentions:

• Defendant started selling ‘Cosmo Turmeric Vanishing Cream’ in Nov. 1977, that they are
using their own descriptive words as well as floral design giving their address on the carton
and tube along with manufacturing license and excise license number and also the retail
price.

• Trade marks ‘VICC0’ and ‘COSMO’ are different visually as well as phonetically and no
mistake is possible while purchasing the vanishing cream either of the Plaintiff or of the
Defendant.

Court’s Observations:

Plaintiff’s claim passing off by the Defendant of it’s product as and for the product of the
Plaintiff on the basis of copy of the distinctive get-up and colour scheme of the tubes and the
cartons by them. The Defendant is not entitled to represent it’s goods as being the goods of
the Plaintiff. The two marks ‘Vicco’ and ‘Cosmo’ used by the Plaintiff and Defendant,
respectively are no doubt different and the mark ‘Cosmo’, by itself is not likely to deceive but
the entire get-up and the colour scheme of the tube and the carton adopted by the Plaintiff and
the Defendant are identical in every detail and are likely to confuse and deceive the customer
easily. The get-up and the colour scheme of the Plaintiff adopted in every detail by the
Defendant for their tube and carton cannot be said to have been adopted by the Defendant
unintentionally.

The Defendant was injuncted from using a deceptively similar colour packaging as that of the
Plaintiff.

Glaxosmithkline Consumer Healthcare Ltd. Vs. Abbott Healthcare Pvt. Ltd. and Ors.

Glaxosmithkline Consumer Healthcare Ltd. Vs. Abbott Healthcare Pvt. Ltd. and Ors.;

2009(40) PTC 437 (Cal)

Plaintiff, the manufacturers of Horlicks had a tagline “”Taller, stronger, sharper” for it’s
health food drink powder . Defendant was using the line “sabse tallest, strongest, brightest”
as a prominent feature of a commercial for a similar product called Pediasure. Plaintiff filed a
suit for passing off against the Defendant.
Plaintiff’s Contentions:

The slogan being the most prominent feature of its commercial, it has come to be so
exclusively associated with the plaintiffs product that any form of imitation thereof by any
other person would amount to deceit and trading upon the goodwill of the plaintiff.

Defendant’s Contentions:

In the promotion of a nutritional drink, it is only natural that the manufacturer would harp on
the efficacy of the product in honing physical and mental attributes.

One manufacturer of a nutritional drink cannot claim a monopoly over an idea that is generic
to the product and is directly connected to the alleged efficacy of the product.

Issues:

Whether the three words have, or even the theme conveyed by the three words has, come to
be so exclusively associated with the plaintiff or the plaintiffs product and the recall value
thereof is so overwhelming that it leads to confusion and deceit that are the twin planks in
establishing passing off; and

Whether the plaintiff can, in law, claim any exclusivity over the concept and the manner of
depiction thereof.
Observations:

Laudatory epithets may be used by a manufacturer but to claim exclusivity a higher element
of distinctiveness has to be demonstrated. The more descriptive the epithets, the closer the
resemblance of the epithets to the efficacy of the product, the more remote will be the
presumption as to the exclusivity of the combined effect of the epithets.

The manufacturer of a nutritional drink would seek to impress on the healthy values of the
drink. The target users in case of these rival products are children. Every nutritional drink has
to be allowed the freedom to puff and emphasise on the features of growth that will result in
its user gaining height, weight and mental sharpness for these are but attributes of growth that
a nutritional drink would seek to profess.

The nature of the right that is sought to be asserted would make it irrelevant as to whether a
part or the entirety of the slogan is copied. That the three key words used by the first
defendant in its exit line vary in form, or in one case in the use of the word, matters little if it
is appreciated that it is the theme over which a manufacturer can claim exclusivity. It is, thus,
irrelevant that the plaintiff and the first defendant use different grammatical variations of the
words “tall” and “strong” and that “sharp” and “bright” are distinct, albeit bearing the same
sense that is sought to be projected. The essence of a right that the plaintiff here canvasses is
as much dependent on the resemblance of the words as on the identity of its thematic content.

If in puffing its product, the plaintiff and the first defendant hit upon features that are generic
to the nature of the product, the earlier user or the bigger player or the large spender cannot
claim exclusivity on the epithets. If it is the idea of taller, stronger and sharper that the
plaintiff seeks to make as its very own, it may not have it. If it is a much lesser case of
confusion arising out of the verisimilitude of the manner of depiction thereof of the same idea
by another trader, the complaining trader may get the consolation of the defendant being
required not to copy the form of expression of the idea. The exclusivity in such a case will
not be in the words or the theme used by way of puff, but in how they are said or shown or
depicted. The first defendant does not copy the stylised form in which the plaintiff presents
its slogan in the commercial.

The Application of the Plaintiff was dismissed.

Laxmikant V. Patel Vs. Chetanbhai Shah and Anr.

Laxmikant V. Patel Vs. Chetanbhai Shah and Anr.

2002 (24) PTC 1 (SC)

Appellant had a business of Colour lab and studio since 1982 in the name of ‘Muktajivan’
Colour Lab and Studio. In order to expand, Appellant promoted his wife and brother-in-law
to open a new colour lab in the name and style of ‘Muktajivan’ Colour Studio at two other
localities in Ahmedabad. In 1997, Appellant filed a suit for passing off against the
Respondents. The Respondents, who were earlier carrying on similar business in the name of
‘Gokul Studio’, sometime before or after institution of the suit for passing off by the
Appellant, adopted the name and style of ‘Muktajivan’ Colour Lab and Studio. Respondents
argued that Appellant was earlier carrying on business in the name of ‘M.J.’ and it was in the
year 1995 that Appellant substituted ‘Muktajivan’ in place of ‘M.J.’ Respondents also argued
that the locality where the Respondents had started their business was away from the area
where the Appellant was carrying on his business.

District Court’s Observations:

• Appellant carries his business in the trade name ‘Muktajivan’ Colour Lab at least since
1995.

• Respondents had recently adopted the word ‘Muktajivan’ in his business name had so done
on or about the date of the institution of the suit.

• Respondents’ studio’s name was ‘somewhat identical’ with the trade name of the Appellant.

Decision:

Injunction was refused on the ground that the business of the Respondents was in the other
part of the city of Ahmedabad, at a distance of about 4 to 5 kms.

High Court’s Observations in Appeal by the Appellant:

• Respondents’ business had already come into existence on the date of the institution of the
suit and therefore they could not be restrained by issuance of injunction.

• No pleadings suggested that the other two businesses using ‘Muktajivan’ as part of their
trade names were so using the name under the authority and licence of the Appellant .
Therefore Appellant was not entitled to grant of an injunction restraining only the
Respondents.

Decision:

The appeal was dismissed.

Appellant filed an appeal before the Supreme Court of India. Supreme Court ruled on the
basis of finding arrived at by the Trial Court that Appellant has been doing his business under
the impugned name at least since 1995.

Supreme Court’s Observation:

On the law of Passing off:

• An action for passing-off will lie wherever the defendant company’s name, or its intended
name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion
confusion between the two businesses.

• Where there is probability of confusion in business, an injunction will be granted even

though the defendants adopted the name innocently.

• With the lapse of time such business or services associated with a person acquire a
reputation or goodwill which becomes a property which is protected by courts.

• The law does not permit any one to carry on his business in such a way as would persuade
the customers or clients in believing that he goods or services belonging to someone else are
his or are associated therewith. It does not matter whether the latter person does so
fraudulently or otherwise.

• The three elements of passing off action are the reputation of goods, possibility of deception
and likelihood of damages to the plaintiff. In our opinion, the same principle, which applies
to trade mark, is applicable to trade name.

• Plaintiff does not have to prove actual damage in order to succeed in an action for passing
off. Likelihood of damage is sufficient.

• Once a case of passing off is made out the practice is generally to grant a prompt ex-parte
injunction followed by appointment of local Commissioner, if necessary.

On merits/facts of the Case:

Appellant is expanding his business through his wife and brother-in-law. On or about the date
of the institution of the suit the Respondents were about to commence or had just commenced
an identical business by adopting word ‘Muktajivan’ as a part of his business name although
till then his business was being run in the name and style of Gokul Studio. The intention of
the Respondents to make use of business name of the Appellant is apparent.

In a city a difference of 4 or 5 kms. does not matter much.

It is the word ‘Muktajivan’ the employment of which makes distinctive the business name of
the Appellant and it is the continued use of `Muktajivan’ which has created a property therein
linked with the Appellant.

The Appeal was allowed.

Sanjay Kapur & Anr. v. Dev Agri Farms Pvt. Ltd.;

Sanjay Kapur & Anr. v. Dev Agri Farms Pvt. Ltd.;

2014 (59) PTC 93 (Del)

Plaintiff was selling tea pouches in a particular packaging since 1981. As per the Plaintiff the
packaging was distinctive. It comprised a soft paper packet shaped in rectangular sided
cuboid. This packet was shipped in a fabric sleeve and was closed at top by a
dory/drawstring. The said pack is then decorated with ribbon and the label tied around the
fabric bag.

Plaintiff filed a suit for infringement of Copyright and passing off against the Defendant. As
per the Plaintiff, the Defendant was using a similar packaging.

Defendant contested the suit on the ground of delay (Defendant claimed use since 2008) and
packaging being non-distinctive and common to trade. Defendant also urged that the
competing products are gift pack aromatic organic teas and hence very expensive and the
buyer is an informed, sophisticated buyer, who will not be confused. Alternatively, the
Defendant argued, that even if the trade dress is considered similar, the trade marks are
different.

The Hon’ble Court relied on Section 2(zb) of the Trade Marks Act, 1999 which defines
“Trade Mark” to recognize protection of shapes as trade marks.
The Hon’ble Court further relied on long user of the Plaintiff, extensive sales of the Plaintiff,
advertisements in newspapers since 1992 and turn over of the Plaintiff to come to a
conclusion towards distinctiveness in the packaging.

The Hon’ble Court found the cuboidal/rectangular shape with unique stand-up pack with
Indian look fabric with the traditional dori on top used with a glossy packing to be distinctive.

The argument of third-party use was rejected by relying on Pankaj Goel v. Dabur India
Ltd.; 2008 (38) PTC 49.

The argument of the Defendant of being inn the trade since 2008 was also rejected as the
same appeared to be doctored.

Lastly, the Court relied on Laxmikant V. Patel v. Chetanbhai Shah & Anr. to hold that fraud
is not necessary in passing off, neither the proof of actual damage is necessary and only a
likelihood of damage is sufficient.

The Defendant was restrained from using an identical or deceptively similar packaging as
Plaintiff’s Packaging

Blue Cross Laboratories Ltd. Vs. RB Remedies Pvt. Ltd.

Blue Cross Laboratories Ltd. Vs. RB Remedies Pvt. Ltd.

IN THE HIGH COURT OF BOMBAY

Decided On: 27.01.2015

Plaintiff was registered proprietor of the trade mark ‘CEDON’ as of 14.08.1996 in respect of
pharmaceutical products.

In August 2014, the Plaintiff learnt about the use of the mark ‘CEFDON’ by Defendant in
respect of similar goods, namely, antibacterial dry cough syrup.
The Defendant was located outside the jurisdiction of Bombay High Court and the cause of
action for passing off had arisen outside the jurisdiction of this Court. In light of the same, the
Plaintiff filed a leave petition for combining the two causes of action, i.e. infringement of
trade mark as well as passing off.

The said special leave was allowed to the Plaintiff on three grounds:

(i) As the same set of facts, as those alleged in respect of the cause of action of infringement,
were the foundation of the plea of passing off.

(ii) To avoid multiplicity of proceedings

(iii) No prejudice was likely to be caused to the Defendant thereby.

Defendant’s Case:

• Plaint has been affirmed on behalf of the Plaintiff by an unauthorized person. Plaintiff has
not produced on record any resolution passed by its Board of Directors for instituting the suit
herein or authorizing the signatory to affirm the plaint on its behalf; and that therefore, having
regard to Section 291 of the Companies Act read with Order 29 Rule 1 of CPC, the Plaintiff
is barred from instituting the Suit, requiring rejection of its plaint under Order 7 Rule 11.

• The Defendant has adopted the mark CEFDON honestly. Principal drug used in the product
is Cefpodoxime, from which the Defendant has coined the word ‘CEFDON’ and adopted it in
respect of its goods, just as the Plaintiff has coined the word ‘CEDON’ from Cefpodoxime.

• The present suit suffers from delay as the Defendant has been using the mark CEFDON
since 2008.

• Goods in respect of which the parties’ respective trademarks are used are Schedule H drugs
sold only on prescriptions of medical practitioners and there is no likelihood of any confusion
amongst the buying public.

• Plaintiff’s trade mark being descriptive of the particular drug used in its preparation, no
monopoly can be claimed by the Plaintiff.

• ‘CEDON’ and ‘CEFDON’ contain common elements which are commonly used in the
trade.

Held:

On the issue of authority of the signatory of the Plaint

Under Order 29 Rule 1, in a suit by or against a corporation any pleading may be signed or
verified on behalf of the corporation by its Secretary. Suresh Mahalingam is the Company
Secretory of the Plaintiff Company. The Plaintiff has produced the requisite Form 32 filed in
respect of his appointment.

The plaint has, thus, been affirmed properly. In any event, the question, namely, whether or
not the signatory of a pleading is authorised to affirm a pleading or institute the suit or
proceeding, is a question which arises in the trial of the suit. The suit cannot be said to be
barred by any law within the meaning of Clause (d) of Rule 11 of Order 7, if the authority of
the signatory and declarant is not produced with the plaint or shown to exist at the time of
filing of the suit.

On honesty of adoption

The Defendant claims to have adopted the word ‘CEFDON’ as its mark honestly. Honesty of
adoption by itself is no defence to the action of infringement, though it may have some
relevance from the point of view of a passing off action.

The Defendant claims to have adopted the word ‘CEFDON’ from the name of the principal
drug contained in the product, namely, Cefpodoxime. This may per se be an honest adoption,
but then there was the Plaintiff’s trade mark ‘CEDON’ already on the Register. The
Defendant could only be said to have adopted its mark ‘CEFDON’ at its own peril. Any
actual intention on the part of the Defendant to pass off his goods as those of the Plaintiff is
not an essential ingredient of a passing off action. It is sufficient if there is a likelihood of the
goods being so passed off.

On delay

It is a well settled position of law that mere delay, without anything more, is never regarded
as a good defence to an infringement action. Defendant claims to have used the mark for
about five years. The sales of Defendant through this period are not significant enough to
impute the Plaintiff with any knowledge of the Defendant’s use of the mark – leave aside any
intention of abandonment of the right to relief.

On similarity of marks/likelihood of confusion

Marks ‘CEDON’ and ‘CEFDON’ per se appear to be deceptively similar. There is sufficient
phonetic and visual similarity between the two marks, leading to a palpable possibility of
confusion.

The test to be adopted is still is, whether an unwary customer, who goes to purchase the
medicine, may end up mistakenly buying one medicine in place of the other. The factors
leading to the mistake may be many. In the first place, a close phonetic and visual similarity
may lead to a mistake on the part of the prescribing doctor in writing the name of the
medicine, more so because of the same principal drug contained in the two medicines. It may
even be a case of misspelling. The dispensing chemist may make a mistake in reading the
name or even slur over it. Besides, it is well known that in practice, medicines of common
ailments such as cough and cold are sold in our country without insisting on prescriptions.
Closer the similarity of the two marks, the greater the chances of such mistakes. Thus, one
will have to go by the degree of similarity between the two marks.

The goods bearing the two trade marks contain the same generic drug; bear the same potency;
and the two marks very nearly resemble each other. The whole of the Plaintiff’s mark
‘CEDON’ is copied in the Defendant’s mark with merely the addition of the alphabet ‘F’
between ‘E’ and ‘D’. It lends a very high degree of visual similarity to the two marks. Even
phonetically, the similarity is of a very high order. The marks contain two phonetic phrases
each, ‘CE’ and ‘DON’ in ‘CEDON’, and ‘CEF’ and ‘DON’ in ‘CEFDON’. The
pronunciation of the alphabet ‘F’ as a component of the phonetic element formed by ‘CEF’
does not materially alter the overall phonetic effect of the word ‘CEFDON’ from that of
‘CEDON’.

On descriptive nature of the Plaintiff’s mark ‘CEDON’

Though the Plaintiff’s trade mark, just as the Defendant’s, appears to be derived from the
name of the principal drug used in the product, i.e. Cefpodoxime, it cannot be said to be
descriptive. It is a known fact that names of pharmaceutical products are often coined from
the names of the drugs used in them. It facilitates the medical practitioners’ recollection of
the products with reference to the drugs used in them. Unless the word thus coined so closely
resembles the name of the drug/s from which it is derived, it cannot be a case of description
of the product. In the present case, the Plaintiff’s mark does not describe the product. It
cannot be called generic as opposed to distinctive.

On the words ‘CEDON’ and ‘CEFDON’ being common to trade

The Defendant has not produced any material or shown that the word ‘CEDON’ or alphabets
forming it are of common use in the trade by reason either of the name of the principal drug
being used commonly to form marks in relation to similar medicines or otherwise. It is not
shown that the two marks ‘CEDON’ and ‘CEFDON’ contain common elements which are
also used in the trade. This is a matter of fact and unless there is evidence of extensive use of
a common element in the trade, it is not possible to deny interim relief to the registered
proprietor on this ground.

On importance of a registered trade mark

The monopoly is derived from its registration. The registration is prima facie proof of its
registrability, that is to say, its being distinctive and not descriptive and its being capable of
being accordingly registered. By relying on its registration, the Plaintiff can certainly claim
an injunction against an identical or descriptively similar trade mark.

The application of the Plaintiff for interim relief was allowed.

Pidilite Industries Ltd. v. Jubilant Agri & Consumer Products Ltd.

Pidilite Industries Ltd. v. Jubilant Agri & Consumer Products Ltd.

 2014 (57) PTC 617 (Bom)

Plaintiff was the registered proprietor of the trademark ‘FEVICOL MARINE’ and various
other marks using the words ‘FEVICOL MARINE’.

Plaintiff’s Registrations:

Defendant was using the mark ‘JIVANJOR MARINE’ for identical products. The Plaintiff
filed a suit against the Defendant for infringement of trade mark and passing off.

Plaintiff’s Case:

• Plaintiff adopted the mark MARINE in the year 2003 and is using the same since then.

• Despite the house mark, ‘FEVICOL’, the product of the Plaintiff is demanded in the name
of ‘MARINE’.

• ‘MARINE’ is an adhesive used in relation to wet and/or humid conditions.

• Orders received by the Plaintiff and invoices issued by the Plaintiff refer to ‘MARINE’ and
not ‘FEVICOL MARINE’.
• The Defendant has also copied the pictorial depiction of a plank of wood dipping into water
with water being splashed as used by the Plaintiff.

• When the Defendant has by itself applied for a mark comprising the word ‘MARINE’, the
Defendant cannot claim that the Plaintiff’s mark is descriptive, generic or common to trade.

Defendant’s Case:

• The word ‘MARINE’ is descriptive and not inherently distinctive.

• There are several products available in the market containing the word ‘MARINE’.

• Rule of estoppel does not apply to the present case because the Defendant had applied for a
label mark registration for the entire get up for packaging including the descriptive words
‘MARINE PLUS’.

• Plaintiff cannot claim rights in the word ‘MARINE’ in light of Section 17 of the Trade
Marks Act, 1999.

• The essential features of the rival marks are ‘FEVICOL’ and ‘JIVANJOR’, which are the
house marks of the parties and the house marks are the deciding factors to test confusion.

Court’s observations:

• The word ‘MARINE’ forms a very prominent part of the registered trade mark of the
Plaintiff.
• Defendant has itself applied for registration of a mark described by it as the ‘MARINE
PLUS’ (Label) comprising of the words ‘MARINE PLUS’ as its leading and essential feature
and is therefore stopped from contending that the word ‘MARINE’ is descriptive or has
become publici juris or ‘common to trade’.

• The word ‘MARINE’ means ‘of or relating to the sea’ and therefore nowhere describes the
Plaintiff’s product. If the Plaintiff was using the mark ‘MARINE’ in a descriptive sense, there
was no need to use the words ‘Waterproof Adhesive’ to add to the description.

• The Defendant has not only copied the Plaintiff’s mark ‘MARINE’ but even the artistic
work of wooden plank being dipped into water.

• Had the Defendant not been using ‘MARINE’ as a trade mark it would have never applied
for registration of the label mark comprising ‘MARINE’.

• The argument of the Defendant that the law of estoppel will not operate against it as it has
not applied for the word mark but for a label mark comprising the words ‘MARINE PLUS’
cannot be acceded to as the applicability of principle and/or rule of estoppel is not restricted
to cases where the mark objected to and mark applied for are identical, but covers cases
where there is identity of the prominent and/or essential features.

• Keeping regard to Section 17 of the Act, the protection and/or exclusivity will be conferred
on these features and not on insignificant trivia. If the Defendant’s arguments are accepted,
the consequences will be startling. Composite marks will become useless. The same will be
infringed with impunity by the simple expedient of using a trademark which has, as its
essential or prominent feature(s), the essential and prominent feature of the registered mark
with the addition of other matter. The mandate of Section 17(1) will be totally frustrated.

• Nothing in Section 17(2)(b) of the Act bars the Plaintiff’s entitlement to the relief as
claimed. The Defendant’s claim in this behalf is premised on the assumption that the word
‘MARINE’ is ‘ common to the trade’ and/or ‘of a non-distinctive character’. For this plea to
succeed, the Defendant must establish that the word ‘MARINE’ is either ‘common to the
trade’ or ‘of a non-distinctive character’. The onus to do so is entirely on the Defendant who
has failed to discharge the same.

• The contention of the Defendant that House marks are to be seen is not tenable as it is
evident that the product identification mark used by the Defendant is ‘Marine PLUS’ and that
the same is being used as a trademark. The consumers can never identify the product only by
the house mark and it is inevitable that the products are referred to and called out only by
their product identification marks. It is the settled position that the use of a mark as a sub-
brand also amounts to infringement and an injunction ought to follow. The mark ‘MARINE’
by itself has gained tremendous reputation and goodwill and further distinctiveness and
secondary meaning which is associated by the consumers, trade and public at large with the
Plaintiff alone.

• The invoices produced by the Defendant themselves show that the products of the
Defendant are also referred to as ‘Marine Plus Cop’, ‘JJ Marine Plus, ‘JJ Marine PLUS CLP,
‘J Marine Plus Cop’, i.e. ‘Marine Plus’ being the leading and essential feature and not
‘Jivanjor’. Furthermore, the fact that the Defendant refers to its ‘mark’ as ‘Jivanjor Marine
PLUS ‘ itself is an admission on the part of the Defendant that ‘Marine PLUS’ is being used
as a trademark/part of its trademark.

The Defendant was restrained from using the mark ‘MARINE’ as well as a deceptively
similar label as that of the Plaintiff.

ITC Limited v. Nestle India Ltd. –

Curious case of ‘The Magic Noodles’
ITC Limited v. Nestle India Ltd.

Decided on: 29.04.2015

In the High Court of Madras

Image from here

Facts:

Plaintiff, being India’s foremost private Sector Companies, entered the Indian instant noodles
market with Sunfeast Yippee! In two variants: (a) Yippee! Magic Masala and (b) Classic
Masala. In March, 2013 Plaintiff came to know that the Defendant has launched instant
noodles under a similar mark being ‘MAGICAL MASALA’.

Plaintiff filed a suit for passing off against the Defendant alleging that the use of the mark
‘MAGICAL MASALA’ by the Defendant amounts to passing off of the Defendant’s goods
as that of the Plaintiff sold under the mark ‘MAGIC MASALA’.
The present judgment is an interim order passed in the said suit. The trial is still to be
concluded and final judgment is still to be rendered.

Plaintiff’s Case:

• Owing to it’s excellent quality, geographical reach and reputation, ‘MAGIC MASALA’ has
attained distinctiveness and is associated with Plaintiff alone.

• Retailers in the trade and public ask for applicant’s noodles by the mark ‘Magic Masala’.

• Defendant has been losing market share to Plaintiff’s noodles and has therefore resorted to
unfair competition by using ‘MAGICAL MASALA’.

• Defendant has many variants of it’s noodles and therefore there is no need of the
Respondent to use the mark ‘MAGICAL MASALA’.

Defendant’s Case:

• The use of ‘MAGICAL MASALA’ by the Defendant falls within permitted use as per
provisions of Section 30(2)(a) of the Trade Marks Act, 1999.

• Defendant is using ‘MAGICAL MASALA’ as a flavor descriptor. ‘MAGICAL MASALA’

conveys flavor and not origin.

• ‘MAGICAL MASALA’ is a laudatory and descriptive epithet lauding the spicy

characteristics and quality of Masala, which is sold along with the product in a sachet by the
name of ‘tastemaker magical masala’.
• Law of Trade Marks or common law of passing off does not permit any interference in use
of expressions, marks or terms, marks, which are an apt description of character, quality, kind
of product, and not used as indication of source, or original of the product, and the use of the
product descriptor in terms of its characteristic such as flavour, ingredients, benefits, quality,
etc, cannot be considered as trade mark or mark.

• Defendant’s product is sold under the mark ‘MAGGI’, having 80% market share.

• ‘MAGICAL MASALA’ or ‘MAGIC MASALA’ are common expressions which cannot be

a subject matter of any proprietary rights.

• Defendant is using the word ‘MAGIC’ prior to Plaintiff for it’s products and as far as
‘MASALA’ is concerned, the same is common word to describe spices. Therefore, combined
use of ‘MAGIC’ and ‘MASALA’ by the Plaintiff is not proprietable.

• Both the parties are selling their noodles under their respective brands namely, ‘Sunfeast
ITC Yippee’ and ‘Maggi’ which appear very prominently on the labels. Therefore, there
cannot be any confusion. This is more so in the light of the fact that the products are sold in
an entirely different packaging.

• The words ‘MAGIC MASALA’ is widely used not only by the Defendant, but also by other
manufacturers, like i) Lay’s Magic Masala, ii) Balaji Magic Masala, iii) Hello Just 2 Good!
Magic Masala iv) Samrudhni Kitchen Magic Masala, v) SDS Magic Masala, vi) Bindass
Masala Magic.

Issues:

1. Whether the Plaintiff’s mark ‘MAGIC MASALA’ is inherently distinctive or is descriptive

but has acquired secondary meaning ?

2. Whether the Plaintiff has made out a prima facie case for grant of injunction?

Observations of the Court:

Issue 1:

The Hon’ble Court relied on McCarthy on Trademarks and Unfair Competition (3rd Edition),
to hold that the mark ‘MAGIC MASALA’ is a ‘suggestive trade mark’ as imagination is
required on the part of the customers to get some direct description of the product from the
term.

The Court observed that “descriptive term directly and clearly conveys information about the
ingredients, qualities, or characteristics of the product or service, the ‘suggestive term only
indirectly suggests these things.”
The Court further observed that word/mark ‘MAGIC MASALA’ indirectly suggests magical
change by consuming the Plaintiff’s product and therefore, the word/mark ‘Magic’ or
‘Magical’ cannot be considered as descriptive and it is only distinctive word or mark, having
secondary meaning.

The Court also observed that having regard to the fact that the word ‘MAGIC MASALA’ is
distinctive, the Plaintiff is entitled to the relief of injunction even accepting the case of the
Defendant that the trade dress of the two products are entirely different.

Issue 2:

On the second issue, the Court observed that the Plaintiff’s product is popularly known as
‘MAGIC MASALA’, though it is marketed under the brand Sunfeast Yippee, admittedly,
Plaintiff is the prior user of the word ‘MAGIC MASALA’, and Plaintiff has proved it’s
market share, and considering all these aspects, a prima facie case has been made out by the
Plaintiff.

The Defendant was restrained from using the mark ‘MAGICAL MASALA’ or any other
deceptively similar mark to Plaintiff’s mark ‘MAGIC MASALA’ till the pending disposal of
the suit.

Author’s Comments: From my experience of practicing Intellectual Property rights, I am of

the opinion that the order suffers from a number of fallacies. Though it is only a prima facie
finding and may be reversed after trial, the conclusions and findings in the order appear far
from being correct.

A bare perusal of both the products of the parties shows that the mark ‘MAGIC MASALA’
or the mark ‘MAGICAL MASALA’ do not perform source identifying functions. Primary
function of a trade mark is to identify the source of the product. The manner of writing the
words ‘MAGIC MASALA’ in the Plaintiff’s products does not indicate the same to be a trade
mark. The trade mark in such a case appears to be ‘Yippee’ or the house mark ‘Sunfeast’.
This is also evident from the fact that the words ‘MAGIC MASALA’ do not appear to be
prominent on the product of the Plaintiff and appear to be indicative of the fact that the same
pertains to a particular type of flavor. The said fact is also co

rroborated from the Plaintiff’s case itself that they launched two products (a) Yippee Magic
Masala and (b) Classic Masala. The distinguishing feature between the two is the type of
Masala/spice being used. Therefore, Plaintiff’s usage of the words ‘MAGIC MASALA’ is
directed towards the contents of the product and thus appears to be descriptive and not in a
trade mark sense.
Further, the Hon’ble Court relies on the bare pleadings that the product of the Plaintiff is
referred in the trade and by public as ‘MAGIC MASALA’, the Hon’ble Court cites no
documentary evidence filed by the Plaintiff in support of the same and such an observation
has been made only on the basis of mere pleading. In our opinion, before making an opinion
that the product of a particular party is referred by a name which is not the primary trade
mark, Court should require a minimal amount of evidence. Even in the Atlas Cycle
Industries Ltd. v. Hind Cycles Limited; (1973) ILR 1 Delhi 393, the Court while
considering the trade marks ‘EASTERN STAR’ and ‘ROYAL STAR’, held the mark
‘STAR’ per se to be protectable when evidence was lead by the Plaintiff towards the fact that
the cycle of the Plaintiff have to come to be known as ‘STAR’ Cycles because of the device
of the Star. In this case, there is no evidence, and such a strong opinion appears to be grossly
incorrect.

Moreover, even considering for argument’s sake that ‘MAGIC MASALA’ is protectable as a
trade mark, the use by the Defendant is totally descriptive. Defendant is not using the mark in
a trade mark sense and thus should be entitled to use the same. The principles as laid down
in Automatic Electric Ltd. v. R.K. Dhawan & Anr.; 1999 (19) PTC 81 and also in Pidilite
Industries Ltd. v. Jubilant Agri & Consumer Products Ltd.; 2014 (57) PTC 617
(Bom) are also not applicable to this case as the Defendant has not applied for the mark
‘MAGICAL MASALA’ or any label of which ‘MAGICAL MASALA’ appears to be
prominent. The Hon’ble High Court of Delhi  in  Automatic Electric Ltd. v. R.K. Dhawan
& Anr. had held that when a Defendant applies for a mark it cannot plead the same to be
generic or common to trade. The said judgement has been uphold even by the Division Bench
of the Delhi High Court. Pidilite Industries Ltd. v. Jubilant Agri & Consumer Products
Ltd. extends the principle further and states that when a Defendant applies for a composite
mark, it cannot state that the prominent feature of the said mark is descriptive, generic or
common to trade.

The observation of the Hon’ble Court that ‘MAGIC MASALA’, is a suggestive mark appears
to be incorrect. It is correct that suggestive marks merit the same degree of protection as
arbitrary trade marks and do not require any proof of secondary meaning but the question is
whether ‘MAGIC MASALA’ is a suggestive mark. In our opinion, ‘MAGIC MASALA’ is
not a suggestive mark. The reason for the same is as follows, a ‘suggestive mark’ may not
impart information directly but indirectly towards the product or it’s features. For example, a
bus service by the name of ‘GREYHOUND’ (for speed) and/or ‘FACEBOOK’ for online
social networking are suggestive trade marks as they require some imagination to connect
them with a good or service. ‘GREYHOUND’ for shirts would be arbitrary as it has nothing
to do with the product in question. Therefore, the words ‘MAGIC MASALA’ does not impart
any information indirectly in respect of the goods in question, i.e. ‘Noodles’, in fact, it
imparts, information directly as to the flavor of the Noodles. ‘MAGIC MASALA’ cannot be
a suggestive trade mark for any food related product the flavor of which is enhanced by use
of spices. If Plaintiff would have been using ‘MAGIC CIRCLES’ for noodles owing to the
nature of their consumption through forks into a circle, the same would have been a
suggestive mark.

Further, the expression ‘MAGIC’ is something which is used all over the world as an
expression of enhancing a saleability of a product. The expression ‘MAGIC’ may not be
strictly laudatory but has come to be used with vendible articles that it’s usage is nothing but
laudatory, i.e. used to enhance the saleability of a particular product. Some of the examples to
demonstrate that ‘MAGIC’ should be construed as laudatory are as follows:
Lastly, even disregarding, that the word ‘MAGIC’ is laudatory. Expression ‘MAGICAL’ as
being used by Defendant comes more closer to being laudatory as it gives an impression of
leading the consumer into a magical world after consumption of the Defendant’s product.

The order of the Hon’ble Court also does not take into account third party use, considering
the fact that it is a passing off action and the Defendant had provided details of third party
use. No observation in this regard has been made by the Hon’ble Court.
In our opinion, the order needs to be reviewed or set aside.

Jagan Nath Prem Nath v. Bhartiya

Dhoop Karyalaya
Jagan Nath Prem Nath v. Bhartiya Dhoop Karyalaya

AIR 1975 DELHI 149

facts:

The Appellant was the manufacturer and dealer of ‘agarbattis’ under a registered trademark
comprising the numerals ‘555’. Respondent was the registered user of trademark ‘Rajkamal’
in respect of agarbattis. The numerals ‘555’ did not appear anywhere in his registered
trademark. However, the Respondent subsequently added the numerals ‘555’ in his own
mark.

Appellant filed a suit for infringement of trade mark as well as passing off against the
Respondent. Subsequent to the institution of the suit, the Respondent had applied to the
Registrar of Marks under Section 28 of the Trade and Merchandise Marks Act, 1958
(hereinafter ‘the Act’) for rectification of the registered trade mark of the Appellant by either
deleting the numerals ‘555’ or by disclaiming the rights for the exclusive user of the
numerals.

Appellant’s Arguments:

• Appellant has the exclusive right to use the trademark ‘555’ in relation to the goods in
respect of which the trademark is registered.

• The Respondent’s registered mark or device mark does not contain the numerals. This
prima facie establishes that the Respondent has added the numerals deliberately, as these
numerals have come to be associated in the mind of the public with a particular quality of
agarbattis made by the Appellant.

Respondent’s Arguments:

• Appellant is not the only manufacturer of agarbattis with the numerals ‘555’ in his
trademark. Two other trademarks, viz., ‘Kasturi Agarbati 555’ and ‘Anand Darbar Batti 555’
are also registered on record. This indicates that the numerals ‘555’ have come to be regarded
in the trade as denoting superior quality of the product of the manufacturer and the Appellant
cannot establish any exclusive right over the use of the numerals.

• Where a distinct label is registered as a whole, such a registration does not confer any
exclusive statutory right on the proprietor to use any particular word or name contained
therein, apart from the mark as a whole.

• The registered label of the Appellant was a composite label and the numerals were only in
the corner along with the words ‘highly perfumed’. The numerals, therefore, do not form a
distinctive part of the trademark.

• Balance of Convenience is in favour of the Respondent.

Observations made by the Hon’ble Court:

i. Whether the Appellant can claim exclusive right over the numerals ‘555’ when other
manufacturers also use the same numerals in their registered trademarks?

Yes. The Hon’ble Court interpreted Section 28 (3) of the Act and held that even though the
Appellant may not be in a position to enforce any right against the other two registered
holders of the trade mark using the numerals ‘555’, Appellant is entitled, to enforce all his
rights against every third person (including the Respondent) who is not a registered holder of
the trade mark.

ii. Whether the mark or the label can be dissected, apart from the mark as a whole, to hold
that the Respondent has caused an infringement of the Appellant’s trademark?
Yes. The Hon’ble Court cited the case of M/s. Atlas Cycle Industries Ltd. Vs. Hind Cycle
Ltd.; (1973) ILR 1 Delhi 393 to elucidate that in an action for infringement of a trademark,
there could be two possibilities:

(a) that the Defendant’s mark is identical to the Plaintiff’s mark; or

(b) that the Defendant’s mark is deceptively similar.

First is a clear case of infringement. In the second case, it must be ascertained whether the
mark is likely to deceive or cause confusion in relation to the goods in respect of which the
Plaintiff got his mark registered.

It is important to find out the distinguishing or essential feature of the trade mark already
registered and the main feature or the main idea underlying the trade mark.

The Appellant does not need to prove that the whole of his registered trade mark has been
copied. It is enough if he shows that the Defendant’s mark is similar to the Plaintiff’s mark as
it would be remembered by persons possessed of an average memory with its usual
imperfections or that its essential particular or the distinguishing or essential feature has been
copied.

The Hon’ble Court found numeral ‘555’ to be the essential feature of the Plaintiff’s trade
mark to the extent that the use of the same in respect of identical goods

iii. Whether the balance of convenience is in favour of the Respondent?

No. The numerals ‘555’ are a subsequent addition to the Respondent’s trademark and as such
not prima facie bona fide. Moreover, as the Appellant is the registered holder of the trade
mark with numerals ‘555’ he has a better right to restrain the Respondent from using it vide
section 28(1) of the Act. The question of balance of convenience is relevant only when at
least the two parties are on the same level and their rights are about equal, which is not the
case here.

Author: Aadhya, National Law University, Odisha

Britannia Industries Ltd. v. ITC Ltd.

Britannia Industries Ltd. v. ITC Ltd.

FAO(OS) (Comm) No. 77 of 2016

Division Bench (Delhi High Court)

2017 (70) PTC 66 (Del)

Brief Facts:

The Respondent, ITC Ltd. filed a civil suit against the Appellant, Britannia Industries Ltd. for
passing off and infringement of Copyright of the trade dress of Respondent’s product
‘Sunfeast Farmlite All Good’ which is a No Added Sugar and No Maida digestive biscuit.

As per the Respondent, Appellant’s product ‘Nutrichoice Digestive Zero’ which was also a
No Added Sugar and No Maida product had a packaging which was deceptively similar to
Respondent’s product packaging of ‘Sunfeast Farmlite All Good’. Allegedly, both the
products were being sold in the colour combination of Yellow and Blue.

The said suit was listed before the Learned Single Judge of the Hon’ble High Court of Delhi.
After hearing arguments on the application for interim relief, the Learned  Single Judge
granted a temporary injunction in favour of the Respondent in the following terms:

“An interim injunction is, accordingly, issued restraining Britannia from using the impugned
packaging get-up/wrapper for its Nutri Choice Digestive Zero biscuits in the present form
during the pendency of this suit. It will however be open to Britannia to adopt the packaging
it uses for the product internationally or while retaining the yellow colour, substitute the blue
colour in the impugned packaging with any other distinctive colour other than variants of
blue. In sum, it can adopt any packaging which is distinctively different from the packaging
that is currently used by ITC for its Sunfeast Farmlite Digestive All Good biscuits.”
Aggrieved by the said decision, the Appellant filed the present appeal.

Some Observations of the Learned Single Judge:

 When a new product with a distinctive packaging is introduced, it is not necessary for
the Plaintiff to show that it has established a formidable reputation in that product for a
number of years.
 The factum of sales of 5 crores was a significant factor in examining the question of
reputation of the product, as also the factum of Rs 14 crores spent on advertising.
 Britannia had been late in introducing its “Digestive Zero” variant till after six months
after ITC introduced its product and this was a factor which weighed in favour of ITC.
 Sales of Rs 5 crores of the said biscuits in a short span of five months was indicative
of the growing reputation of ITC‟s product which deserved protection.
 Even if it were to be accepted that yellow as a colour was integral to Britannia’s
packaging scheme for Digestive biscuits, Britannia’s purpose could well be served by
adopting a colour other than blue, to combine with the yellow colour of its packaging.

Appellant’s Contentions (observed in the order in question)

 Britannia Digestive biscuits are being sold under three different variants. One variant
is the “Nutri Choice Hi Fibre Digestive” biscuit. The other variant is the “Nutri Choice
Digestive 5 Grain” biscuit and the third variant is the one in issue, that is, the “Nutri
Choice Digestive Zero” biscuit.
 First invoice of ITC is of May 2016.
 Colour blue was being used worldwide in relation to sugarless or zero sugar products.
 Britannia was using similar packaging for its Digestive Hi Fibre and Digestive 5
Grain biscuits, which all had the features of stacked biscuits, ears of wheat and other
grains. The Digestive Hi Fibre packaging, which was also a pillow packing, had a
yellow-red combination. The Digestive 5 Grains packing employed the yellow – green
combination. In this context, it was suggested on behalf of Britannia that the packing
for “Nutri Choice Digestive Zero” biscuits employed the yellow – blue combination to
distinguish its other products.
 All three variants of Appellant’s Digestive biscuits had the same genre of package
design and the similar colour concepts. Yellow was the primary colour with a
combination of red for Digestive Hi Fibre and a combination with green for the
Digestive 5 Grain biscuits and now with a combination of blue for its Digestive Zero
biscuits.
 5 crores sales of ITC’s product is not substantiated by any Chartered Accountant’s
Certificate.
 14 crores spent on advertising is not only in respect of the get-up, but more so for the
trade marks and other features of the product.

Division Bench’s observations:

 Britannia has been restrained from using the colour blue. It has been permitted to
retain the colour – yellow. In other words, the entire controversy in the present appeal
centers around the use of blue and / or its variants in the packaging. It is, therefore,
clear that in case the appellant / Britannia uses the same packaging, but substitutes the
 blue with any other colour, which is not a variant of blue, then there would be no case
for passing off. (Paragraph 8)
 It is evident that a passing off action has to be examined from the standpoint of three
factors: (1) goodwill and reputation; (2) misrepresentation / possibility of deception;
and (3) likelihood of damage. (Paragraph 10)
 In a passing off case, it is the goodwill which is sought to be misappropriated. It is
this misappropriation which provides a cause of action at common law.
 ITC, in order to succeed at this stage, must establish, at least prima facie, that the
combination of yellow and blue that is used in its packaging for its “Sunfeast Farmlite
Digestive – All Good” biscuit has become distinctive specifically of its goods.
(Paragraph 15)
 The issue here, in this case of passing off, is not that a new biscuit or a new product
has acquired popularity in a short span of time, but whether the get-up and, in
particular, the colour combination of yellow and blue has become exclusively
identifiable with the plaintiff‟s product ? (Paragraph 16)
 We are of the view that the focus ought to be on the question whether the get-up (the
yellow-blue combination of the package) was exclusively and distinctively associated
with ITC.
 In the present case, we find that ITC in its advertisements mainly relies on its trade
marks and business name. That being the case, ITC would, in any event, have greater
difficulty in establishing its claim based on general getup and in the present case, on the
combination of yellow and blue. (Paragraph 18)
 We do not think that in the short span of time and, particularly when Britannia has
alleged that the first invoice of ITC is of May 2016, the yellow-blue combination in the
packaging of ITC‟s biscuits had become so identified with ITC so as to enable ITC to
prevent its use by competitors. (Paragraph 19)
 There are a good number of products which use the colour blue for sugarless, zero
sugar or sugar free products. (Paragraph 21)
 Britannia has been using yellow as the primary colour in combination with red and
green for its earlier products and, therefore, its natural evolution into a combination of
yellow and blue for the Digestive Zero product was quite understandable.
 The appropriation of and exclusivity claimed vis-à-vis a get-up and particularly
a colour combination stands on a different footing from a trade mark or a trade
name because colours and colour combinations are not inherently distinctive. It
should, therefore, not be easy for a person to claim exclusivity over a colour
combination particularly when the same has been in use only for a short while. It
is only when it is established, may be even prima facie, that the colour
combination has become distinctive of a person’s product that an order may be
made in his favour. We feel that the present is not such a case. When the first element
of passing off, in our view, is not established, we need not examine the other elements
of misrepresentation and likelihood of damage. (Paragraph 23)

The Division Bench observed that ITC was not entitled to an interim injunction and therefore
the impugned order of the Learned Single Judge was set aside.
Kamal Trading Co. and Ors. v.
Gillette U.K. Ltd.
Kamal Trading Co. and Ors. v. Gillette U.K. Ltd.

1988 (8) PTC 1 (BOM)

Brief facts:

Respondent was a subsidiary of an American company, Gillette Company, in U.K. The

Gillette Company and its subsidiaries had been carrying on worldwide business of
manufacture and sale of safety razor blades, safety razors, shaving cream, shaving brushes,
etc. since several years. Respondent had been using the registered trade mark ‘7 O’CLOCK’
in connection with its goods since 1913.

Respondent entered into an agreement with Indian Shaving Products Limited, an Indian
Company, for manufacture and sale of safety razor blades in India. The agreement of
collaboration was entered into because the goods manufactured by the Respondent were not
imported in India after the year 1958 because of the import restrictions. Under the
collaboration agreement, the Indian company was entitled to use the trade mark ‘7 O’
CLOCK’ but with the addition of the word ‘EJTEK’.

In 1985, Respondent became aware that the Appellants were selling tooth brushes under the
trade mark ‘7 O’ CLOCK’. Respondent instituted an action before the District Court for
injunction to restrain the Appellants from manufacturing, selling or offering for sale the tooth
brush and similar goods bearing the trademark ‘7 O’CLOCK’. Learned District Court Judge
granted an interim injunction in favour of the Respondent and restrained the Appellants from
using the mark ‘7 O’CLOCK’. The Appellants filed an appeal before the Hon’ble High Court
of Bombay.

Arguments on behalf of the Appellants:

 The mark ‘7 O’CLOCK’ is not an invented mark.

 Respondent is not entitled to relief as the Respondent has approached the Court after a
considerable delay from the date of the knowledge of the user of the mark by the Appellants.

 The mark is used in respect of tooth brushes (Class 21), whereas the Respondent does not
deal in tooth brushes, and his products lie in Class 8. Moreover, the goods manufactured by
the Respondent are not sold in India since 1958 and, therefore, the goodwill or reputation
which the Respondent may have acquired stands extinguished.

 Reliance was placed upon the decision in the case of Erven Warnink B.V. & Anr. vs. J.
Townend & Sons (Rull) Ltd. & Anr. [1980] R.P.C. 31, where it was observed that it is
essential for the Respondent in a passing off action to show at least the following facts:

a. That his business consists of, or includes, selling in England, a class of goods to which the
particular trade name applies;

b. That the class of goods is clearly defined, and that in the minds of the public, or a section
of the public, in England the trade name distinguished that class from other similar goods;

c. That because of the reputation of the goods, there is goodwill attached to the name;

d. That the plaintiff, as a member of the class of those who sell the goods, is the owner of
goodwill in England which is of substantial value;

e. That he has suffered, or is really likely to suffer, substantial damages to his property in the
goodwill by reason of the defendants selling goods which are falsely described by the trade
name to which the goodwill is attached.
As the Respondent has not established any of the conditions required, relief should not be
granted.

 In pursuance of the ad-interim order, the Appellants has altered the mark used in respect of
their products and, therefore, it is now not necessary to grant injunction claimed by the
Respondent.

Arguments on behalf of the Respondent:

 The trade mark ‘7 O’CLOCK’ had acquired worldwide reputation and any customer
purchasing the goods with that mark would immediately connect the goods to the house of
Gillette which are the registered owners of the mark ‘7 O’CLOCK’.

 Respondent became aware of the user of the mark in November 1985, but the Respondent
did not know who were using that mark and that fact has become known only when the goods
manufactured by the Appellants were seized. Respondent thereupon, immediately, served
notice upon the Appellants advising to cease the user of the offending mark, but the
Appellants declined to take any corrective measure, with the result that the suit was required
to be instituted by the Respondent in August, 1986.

Court’s Observations:

The user of the mark ‘7 O’CLOCK’ by the Appellants would clearly result in deceiving the
customer with the impression that the toothbrushes come from the house of Gillette. It is not
possible to conclude that the goodwill or the reputation stands extinguished merely because
the goods are not available in the country for some duration. It is necessary to note that the
goodwill is not limited to a particular country because in the present day, the trade is spread
all over the world and the goods are transported from one country to another very rapidly and
on extensive scale. The goodwill acquired by the manufacturer is not necessarily limited to
the country where the goods are freely available because the goods though not available are
widely advertised in newspapers, periodicals, magazines and in other medias. The result is
that though the goods are not available in the country, the goods and the mark under which
they are sold acquires wide reputation. There exists a likelihood of deception.

The Court also observed that the conduct on the part of the Appellants indicate that the
anxiety was to trade upon the reputation of the mark ‘7 O’CLOCK’ and therefore, when the
Appellants are guilty of total dishonesty, it is futile to claim that when the aggrieved party
goes to the Court, the Appellants should be permitted to use the mark by making some
alteration. Accordingly, the appeal was dismissed.

Cadila Health Care Ltd. v. Cadila

Pharmaceuticals Ltd.
Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.
 2001 PTC 541 (SC)

Full Bench

Brief Facts:

Appellant and Respondent were Pharmaceutical companies who had taken over the assets and
business of erstwhile Cadila Group after its restructuring under Section 391 & 394 of the
Companies Act.

One of the conditions in the scheme of restructuring of the Cadila Group was that both the
Appellant and the Respondent got the right to use the name “Cadila” as a corporate name.

The Appellant manufactured a drug under the brand name “FALCIGO” which contained
Artesunate for the treatment of cerebral malaria, commonly known as Falcipharum.

On August 20, 1996 the Appellant applied to the Trade Marks Registry, Ahmedabad for
registration of the mark “FALCIGO” in Part-A, Class-5 of the Trade and Merchandise Marks
Act.

On October 7, 1996, the Drugs Controller General (India) granted permission to the
Appellant to market the said drug under the trade mark of “FALCIGO” all over India.

On April 10, 1997, Respondent Company was granted permission from the Drugs Controller
General (India) to manufacture and import from abroad a drug containing Mefloquine
Hydrochloride.
The Appellant claimed that it was in April 1998 when it came to their notice that the drug
manufactured by the Respondents was also used for the treatment of Falcipharum Malaria
and was sold under the trade mark of “FALCITAB”.

The Appellant then filed a suit in the District Court at Vododra, Gujarat seeking injunction
against the Respondent from using the trade mark “FALCITAB”.

The interim injunction application made by the Appellant was dismissed.

Subsequently, an appeal was filed by the Appellant in the. Hon’bl High Court reached the
conclusion that it could not be said that there was a likelihood of confusion cause to an
unwary customer in respect of the disputed marks.

The Appellant then approached the Hon’ble Supreme Court against the order of the Hon’ble
High Court.

Case of the Appellant:

• It was claimed by the Appellant that the drug manufactured by the Respondent Company
would be passed off as Appellant’s drug “FALCIGO” for the treatment of the same disease in
view of confusing similarity and deception in the names

• It was submitted on behalf of the Appellant that although the possibility of confusion in a
drug being sold across the counter may be higher but the fact that a drug is sold under
prescription or only to physicians cannot by itself be considered a sufficient protection
against confusion. The physicians and pharmacists are trained people yet they are not
infallible and in medicines, there can be no provisions for mistake since even a possibility of
mistake may prove to be fatal.

Case of the Respondent:

• Word “Falci”, which is the prefix of the mark was taken from the name of the disease
Falcipharum Malaria. It is a common practice in pharmaceutical trade to use part of the word
of the disease as a trade mark to indicate to the doctors and chemists that a particular
product/drug is meant for a particular disease.

• It was also the case of the Respondent that admittedly the two products in question were
Schedule L drugs which can be sold only to the hospitals and clinics with the result that there
could not even be a remote chance of confusion and deception.

Court’s Observations:

The Hon’ble Supreme Court in its judgement refused to interfere with the order appealed
against and examined the principles that are to be kept in mind while dealing with an action
for infringement or passing off especially in cases of medicinal products.

The well-settled principles of law applicable to such cases are:

• The real question to decide in such cases is to see as to how a purchaser, who must be
looked upon as an average man of ordinary intelligence, would react to a particular trade
mark, what association he would form by looking at the trade mark, and in what respect he
would connect the trade mark with the goods which he would be purchasing.

• It is apparent that confusion or mistake in filling a prescription for either product could
produce harmful effects. Under such circumstances, it is necessary for obvious reasons, to
avoid confusion or mistake in the dispensing of the pharmaceuticals.

• Physicians are not immune from confusion or mistake. Furthermore it is common

knowledge that many prescriptions are telephoned to the pharmacists and others are
handwritten, and frequently handwriting is not unmistakably legible. These facts enhance the
chances of confusion or mistake by the pharmacists in filling the prescription if the marks
appear too much alike when handwritten or sound too much alike when pronounced.”

• The drugs have a marked difference in the compositions with completely different side
effect. The test should be applied strictly as the possibility of harm resulting from any kind of
confusion by the consumer can have unpleasant if not disastrous results.

• The courts need to be particularly vigilant where the defendants drug, of which passing off
is alleged, is meant for curing the same ailment as the plaintiffs medicine but the
compositions are different. The confusion is more likely in such cases and the incorrect
intake of medicine may even result in loss of life or other serious health problems.

• As far as present case is concerned, although both the drugs are sold under prescription but
this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In
view of the varying infrastructure for supervision of physicians and pharmacists of medical
profession in our country due to linguistic, urban, semi-urban and rural divide across the
country and with high degree of possibility of even accidental negligence, strict measures to
prevent any confusion arising from similarity of marks among medicines are required to be
taken.

• Keeping in view the provisions of Section 17-B of the Drugs and Cosmetics Act, 1940
which inter alia indicates that an imitation or resemblance of another drug in a manner likely
to deceive being regarded as a spurious drug it is but proper that before granting permission
to manufacture a drug under a brand name the authority under that Act is satisfied that there
will be no confusion or deception in the market. The authorities should consider requiring
such an applicant to submit an official search report from the Trade Mark office pertaining to
the trade mark in question which will enable the drug authority to arrive at a correct
conclusion.

Moreover in deciding whether a particular trade mark is likely to deceive or cause confusion
that duty is not discharged by arriving at the result by merely comparing it with the trade
mark which is already registered and whose proprietor is offering opposition to the
registration of the mark.

The Hon’ble Supreme Court also laid down some factors for deciding the question of
deceptive similarity. However, it suggested that weightage to be given to each of these factors
should depend upon the facts and circumstances of each case. The factors are enumerated
below:

a) The nature of the marks i.e. whether the marks are word marks or label marks or composite
marks, i.e. both words and label works.

b) The degree of resembleness between the marks, phonetically similar and hence similar in
idea.

c) The nature of the goods in respect of which they are used as trade marks.

d) The similarity in the nature, character and performance of the goods of the rival traders.

e) The class of purchasers who are likely to buy the goods bearing the marks they require, on
their education and intelligence and a degree of care they are likely to exercise in purchasing
and/or using the goods.

f) The mode of purchasing the goods or placing orders for the goods; and

g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity
between the competing marks.

The matter was remitted to the trial court to try the suit keeping the above factors in mind.

Author: Aishwarya Pundir, ILS Law College, Pune

Bikanervala v. New Bikanerwala
Bikanervala v. New Bikanerwala

2005 (30) PTC 113 (Del)

Facts of the case:

The Plaintiff is a partnership firm involved in manufacturing and marketing ethnic food
including sweets and namkeens since 100 years. In 1981, they opened an outlet in Karol
Bagh under the trade mark “Bikanervala”.

In 1992, Plaintiff also adopted an artistic label

titled “Bikanervala” duly registered under The
Copyright Act, 1957.

In 2004, Plaintiff found that the Defendant is running a shop and restaurant in Janakpuri
under the trade mark “New Bikanervala”. In view of this, the Plaintiff has filed a suit for
perpetual injunction restraining the Defendant from using the aforesaid trademark. The
Plaintiff has also sought an order for rendition of account of profits illegally earned by the
Defendant and also an order directing the Defendant to destroy all impugned items which
used the disputed trademark.

The Plaintiff also filed an application for grant of ad interim injunction during pendency of
the suit. The present decision is on that interim application.

Arguments on behalf of the Plaintiff:

• Once the word “Bikaner” is suffixed with “Vala”, the combined word becomes a coined and
innovative word and the Plaintiff has an exclusive right to use it.
The Plaintiff’s trade has been a runaway success for more than two decades having goodwill
and reputation. The trademark is so famous that it has acquired secondary significance and is
highly distinctive.

There is a definite likelihood of confusion and deception among the trade and public.

• The Plaintiff contends that although the trade mark is a geographical name of a city, under
the common law of passing off there are no exceptions by way of any geographical and/or
descriptive names, which may constitute disqualification for statutory registration.

• In the case of Bharat Tiles and Marble Private Ltd. v. Bharat Tiles Manufacturing
Company, 1978 GLR 518, Court laid down a principle of law that mere fact that geographical
descriptive name adopted is not always a defense in a ‘passing off’ action. The Court also
reiterated the settled position that name of the business can also be a trade name.

• The trade mark ‘BIKANERVALA’ has to be considered as a whole and it is not correct to
split up the trade mark into its constituent parts and, therefore, the use of the trade mark
‘NEW BIKANERWALA’ results in passing off.

• The Plaintiff cited numerous cases in which the Court held that a generic or descriptive
name which indicates the origin of the product could receive the protection against passing
off.

Arguments on behalf of the Defendant:

• Plaintiff’s suit for the relief of passing off is not maintainable. “Bikaner” is a geographical
city in Rajasthan and it does not qualify as a trade mark. The expression ‘Bikanervala’
conveys definite and specific meaning in ordinary language so as to indicate the origin of the
person or the product from Bikaner.

• The expression “Bikanervala” is neither innovative nor original.

• The word “Bikanervala” for Bikaneri sweets, namkeens, etc is common as a generic
expression and cannot acquire any degree of distinctiveness.

• No person is entitled to claim an exclusive right to the use of the word either ‘BIKANER’
or ‘WALA’ either independently or in conjunction. In this connection, provisions of Section
9 of the Trade marks Act, 1999 are relied upon which prescribe registration of the trade mark
in the nature of geographical names or which have direct reference to the character and
quality of the goods.

Court’s Observations:

• Court is required to take only a prima facie view of the matter so as to see if the Plaintiff has
been able to make out a good case in its favour for grant of such an ad interim injunction.
• A perusal of the documents submitted by the Plaintiff proving the fact that they have been
using the trade mark “Bikanervala” since 1981 and that the artistic label has been registered
since 2000, along with the undisputed fact that the Defendant started using “New
Bikanervala” only in 2004, leads to prima facie conclusion that the Plaintiff was in fact long,
prior and extensive user of the trade mark.

• Plaintiff’s trademark, ‘BIKANERVALA’ is entitled to protection. The Plaintiff is using the

mark since more than 20 years; its turnover being more than Rs. 300 crores in the past few
years. Plaintiff has made out a prima facie case in his favour. On the other hand, the
Defendant has only prefixed “New”.The balance of convenience also lies in the Plaintiff’s
favour.

• It was established that the trademarks/tradenames like ‘Kabuliwala’, ‘Rohtakwala’ et .

despite being referable to geographical terms are good trademarks and have, in fact, been
registered with the Registrar of Trademarks.

• In a case Laxmikant V. Patel v. Chetanbhat Shah and Anr., 2002 (4) PTC 1 (SC), the
Hon’ble Supreme Court reiterated the general principle – “refusal to grant an injunction in
spite of the availability of facts, which are prima facie established by overwhelming evidence
and material available on record justifying the grant thereof, occasion a failure of justice and
such injury to the Plaintiff would not be capable of being undone at a latter stage.”

Hence, the Plaintiff’s application was allowed and the Defendant was restrained by means of
an ad interim injunction.

Author: Divyasha Mathur, ILS Law College, Pune

Larsen and Toubro Limited v.

Lachmi Narain Trades and Ors.
Larsen and Toubro Limited v. Lachmi Narain Trades and Ors.

2008 (36) PTC 223 (Del) (DB)

Facts:

Appellant (Larsen and Toubro Ltd.) was engaged in diverse business activities, with
subsidiaries using the prefix ‘LandT’ for over half a century. It applied for registering the
marks ‘Larsen and Toubro’ and ‘LandT’, the applications of which were pending
consideration.
Appellant filed a suit for injunction. At the stage of interim relief, the Learned Single Judge
of the Delhi High Court ordered that the Respondents can use the words ‘LandT’ only in an
extended form as – “LNT/ELENTE – Lachmi Narain Traders” – so as to avoid any
confusion. The Appellant appealed against the same before the Division Bench of the Delhi
High Court.

Issues:

(i) Whether the use of the words ‘LNT/ELENTE’ by the Respondents is bona fide? If the
answer is in the negative, can these words become permissible simply by adding the
expression ‘Lachmi Narain Traders’?

(ii) Whether the fact that the products of the Respondents are nowhere related to those of the
Appellant grant them the right to use a similar trademark?

Appellant’s Contentions:

• Respondents had no other reason to use the abbreviation ‘LNT’ but to capitalise on
Appellant’s goodwill.

Respondents’ Contentions:

• ‘LNT’ was the abbreviation of their family business ‘Lachmi Narain Trades’, started in
1952 and running under the said name since 2001.
• ‘LNT’ cannot be said to be similar to ‘LandT’.

• Since the products marketed by the Respondents under the trademark LNT/ELENTE are not
even manufactured by the Appellant, there was no justification for restraining the use of the
said trademark.

Court’s Decision:

(i) No

Rationale of decision: The abbreviation ‘LNT’ does not appear to be bona fide because even
when the Respondents have been in business for a number of years, they started using the
said abbreviation as late as in the year 2001.The trademark ‘LandT’ is identified with the
goods marketed by the Appellant and the use of a similar trademark‘LNT’is likely to
create confusion.As a result, its use cannot become permissible simply by using it with some
other expression like ‘Lachmi Narain Trades’.

(ii) No

Rationale of decision: A passing off action would lie where a wrong impression is created as
if the product was of someone else, even if the Respondents were not producing any goods
similar to that of the Appellant. Even if the Respondents’ activities are remote, they are likely
to be presumed a possible extension of Appellant’s activities by the buyers.

The appeal was allowed and the Respondents were restrained from using the words
‘LNT/ELENTE’. However, the Division Bench allowed the Respondents to use ‘Lachmi
Narain Trades’ in its full and extended form only.

Nirma Limited v. Nimma

International and Anr.
Nirma Limited v. Nimma International and Anr.

2010 (42) PTC 307 (Del)

Facts:

Plaintiff (Nirma Ltd.), was the proprietor of the trademarks ‘Nirma’ and ‘Nima’, registered in
1979 and 1982 respectively, under the class dealing with detergent powder, toilet soaps, etc.
Plaintiff was aggrieved by the Defendants’ (Nimma International and Anr.) use of the marks
‘Nimma International’ and ‘Nimson’s Nima Care’ for its cosmetic products.

Plaintiff filed a suit for permanent injunction against the Defendants seeking to restrain them
from using the aforesaid marks as the same amounted to infringement of Plaintiff’s
trademarks as well as passing off.

Plaintiff’s Case:

These two trademarks of the Plaintiff have been constantly advertised through various media
leading to huge sales, as a result of which the Plaintiff is the largest player in the Indian
detergent market and second largest in toilet soaps.

Defendants’ Case:

Defendants commenced their business in 1999 and applied for registration of the marks
‘Nimma’, ‘Nimint’, ‘Nirmaline’ and ‘Nima Care’ in 2001.

Their mark ‘Nimson’s Nima Care’ is used for lip guard and white petroleum jelly, and its use
is honest as it has been adopted by the first Defendants out of regard for his mother’s nick
name ‘Nimma’.

All the Plaintiff’s trademarks are in the name of the company Nirma Chemical Works Ltd.,
which is separate from Nirma Ltd. (the Plaintiff), and no evidence of assignment of the marks
in favour of the Plaintiff exists on record.

Issues:
(i) Whether the Plaintiff can be said to be the registered proprietor of the said trademarks?

(ii) Whether the mark ‘Nirma’ is worthy of being protected from dilution?

(iii) Whether the marks ‘Nimson’ and ‘Nimma’ are deceptively similar to ‘Nirma’ and
‘Nima’?

Court’s Observations:

(i) Yes

Rationale of decision: The documents submitted indicate that the Plaintiff applied for
registration of assignment of the marks by their registered owner, and that request is pending
before the Trade Marks office. According to previous precedents, as long as there is
assignment of trademark, the fact that it is pending registration would not prevent the
claimant from bringing an action for infringement. Priority in adoption and use of trade mark
is superior to priority in registration.

(ii) Yes

Rationale of decision: The materials on record prove that the Plaintiff is prior user of the
trademark ‘Nirma’, and that the mark has a widespread recognition in Indian detergent and
soap market.

(iii) Both are not

Rationale of decision: Applying the previous decisions of the Supreme Court, it was held that
the two marks ‘Nimson’ and ‘Nirma’ are phonetically as well as semantically different, and
the trade channels and class of purchasers of goods sold under these marks also differ. Hence,
‘Nimson’ is not deceptively similar to ‘Nirma’.

But the case of ‘Nimma International’ is different. Proprietorship of any registered trademark
in respect of ‘Nimma’ is not proved through the Defendants’ documents, while the Paintiff’s
registration in respect of its mark ‘Nirma’ is strong and has acquired a reputation in three
decades. Use of ‘Nimma’ will lead the public to believe that the goods belong to the Plaintiff.

Thus, Defendants were allowed to use ‘Nimson’ but were restrained from using ‘Nimma’, or
any other mark including ‘Nima’.

Pandit Kulfi and Cafe v.

Pandit Kulfi
Pandit Kulfi and Cafe v. Pandit Kulfi
 2016 (65) PTC 414 (Rajasthan)

Brief Facts:

Appellant was proprietor of the mark ‘PANDIT’ for Kulfi, Ice Creams and other milk
products. Appellant came to know that the Respondent is also using the mark ‘PANDIT’ for
Kulfi. Appellant filed a suit for Permanent injunction against the Respondent along with an
application for interim relief. The said application was dismissed by the District Court,
Jaipur. Against the said order of dismissal the Appellant filed an appeal before the Hon’ble
High Court of Rajasthan. The present decision is on the said appeal.

Appellant’s Case:

 Appellant is the registered proprietor of the mark and has an enviable goodwill and
reputation in the city of Jaipur.

Respondent’s Case:

 The mark used by the Respondent is not ‘PANDIT’ but ‘SHRI BALAJI PANDIT’
which is not similar to the mark of the Plaintiff.
 The Defendant is using the said mark for the past 20 years.
 The expression ‘PANDIT’ is a generic term.

Court’s Observations:
Having regard to the photographs of the manner of usage of the competing marks by the
parties, it is apparent that the Respondent has written the words ‘Shri Balaji’ in a very small
fonts and highlighted the words ‘PANDIT KULFI’ in bigger fonts, the customers may be
mislead that it must be the Appellant. Such name being deceptively similar to the registered
mark of the Appellant, the Respondent prima facie is guilty of infringement of trade mark of
the Appellant and passing off its goods as those of the Appellant.

The Appeal was allowed and the Respondent was injuncted from using the word ‘PANDIT’
till the pendency of the suit

Kalindi Medicure Pvt. Ltd. vs Intas Pharmaceuticals Ltd. And ... on 4 October,
2006
Equivalent citations: 136 (2007) DLT 200, 2007 (34) PTC 18 Del