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* IN THE HIGH COURT OF DELHI AT NEW DELHI

Decided on: 9th May 2014

+ IA No. 11461/2013 (u/O 39 R 1 & 2 CPC) in CS(OS) 1431/2013

ANCHOR HEALTH AND BEAUTY

CARE PVT LTD ..... Plaintiff
Through Mr. Sandeep Sethi, Senior Advocate
with Mrs. Prathiba M. Singh and
Mr.Karan Bajaj, Advocates
versus

PROCTER & GAMBLE MANUFACTURING

(TIANJIN) CO LTD & ORS ..... Defendants
Through Mr. A.M. Singhvi and Mr.Sanjay
Jain, Senior Advocates with Mr.
Prashant Gupta and Mr. Bhardwaj
Jaishankar, Advocates
CORAM:
HON'BLE MR. JUSTICE JAYANT NATH

JAYANT NATH, J.
1. The present application is filed by the plaintiff seeking an interim
injunction to restrain the defendants no. 1 to 3 in any manner using the
mark/expression “ALL-AROUND PROTECTION”/“ALLROUNDER”
either as a trade mark, trading style or in any other manner especially in
relation to toothpaste. Other reliefs are also sought.
2. The accompanying plaint is filed by the plaintiff seeking a relief of
permanent injunction and other connected reliefs in relation to its registered
trademark “ALLROUND” or the mark/expression “ALLROUND
PROTECTION”. As per the averments in the plaint for the trademark
“ALLROUND” the plaintiff applied for registration on 2nd September 2005
and the registration was granted on 26th August 2008. It is urged that the said

CS(OS) 1431/2013 Page 1 of 18

trademark has been used by the plaintiff extensively thereafter. The said
mark is a well known mark and extensively associated with the plaintiff and
its activities. The plaintiff avers to have used the mark “Anchor ALL
ROUND PROTECTION” extensively with huge publicity in international
print and electronic media. The annual sales turn-over of the plaintiff for the
years 2006-12 is said to be above `300 crores. It is further urged that the
plaintiff has been extremely vigilant and zealously protecting its intellectual
property rights for its registered mark “ALLROUND” and the expression
„ALLROUND PROTECTION”. Reference is made to Suit no. 1579/2007
filed by the plaintiff titled Anchor Health and Beauty Care Pvt. Ltd. vs.
V.Kaushik & Ors. which is related to use of the registered mark of the
plaintiff by another toothpaste company being Colgate Palmolive India
Limited who was using the expression “ALL-AROUND DECAY
PROTECTION”. The defendant in that suit during pendency of the hearing
of the injunction application had changed the mark and expression and
accordingly this Court on 25.04.2013 disposed of the injunction application.
3. It is urged that sometimes in the end of May 2013 the plaintiff came
across news reports that the defendants were planning to enter into the
toothpaste market. In the first week of July the plaintiff is learnt to have
been shocked to know that defendants have on July 02, 2013 launched its
product under the mark ORAL-B “ALL-AROUND PROTECTION”. It is
urged that the said mark “ALL-AROUND PROTECTION” is a complete
imitation of the plaintiff‟s registered mark “ALL ROUND” and the use of
the same with respect to identical products constitutes infringement of the
registered trademark of the plaintiff and passing off. It is urged that the
entire purpose is to ride piggyback upon the enormous reputation which the
trade mark “ALLROUND” and mark “ALLROUND PROTECTION” of the

CS(OS) 1431/2013 Page 2 of 18

plaintiff has earned due to extensive advertising. On July 14, 2013 the
plaintiff further learnt from an advertisement that the defendants have
launched another product by the name of “ORAL-B ALL ROUNDER”. It is
urged that the use of the mark “ALL ROUNDER” is also in complete
violation of the plaintiff‟s rights of its registered trademark “ALLROUND”.
Reference is made to certain orders passed by the United States Food &
Drug Administration Department (FDA), the Department which due to death
of 51 people in 2007 had banned import of toothpastes manufactured in
China. It is urged that this restriction still continues and that the toothpaste
of the defendant is imported from China.
4. The defendants have filed their written statement. It is urged by the
defendants that the present Suit is liable to be dismissed as it is structured on
an inherently invalid trademark, being a completely descriptive expression
incapable of having characteristics of a trademark. The expression
“ALLROUND” has invariably been used by the plaintiff in conjunction with
the word „PROTECTION‟ in relation to toothpaste and is thus devoid of any
distinctive character. Being descriptive, it is not capable of distinguishing
the goods of one person from those of another person. Further, it is
submitted that the expression “ALLROUND” denotes characteristics,
ingredients, features and quality of the product in question and could not
have been registered as a trademark in view of the embargo contained in
Section 9 of the Trade Marks Act, 1999. It is next urged that even otherwise
the plaintiff is not using the expression “ALLROUND” as a trademark. It is
contended that in all the documents filed by the plaintiff including
advertisements, packaging etc the prominently featured trademark is
“ANCHOR” and “ANCHOR” alone. The plaintiff has always promoted and
projected ANCHOR as its primary mark. It is submitted that the defendants

CS(OS) 1431/2013 Page 3 of 18

have been advised to file a rectification petition. It is further submitted that
a rectification petition has already been filed on such or similar grounds by
Colgate Palmolive Company which is pending. Reliance is placed on
Section 17 of the Trademarks Act. It is urged that the words used by the
plaintiff are common to the trade apart from being non-distinctive in
character. It is also stated that words similar to “ALL ROUND
PROTECTION” are being used in most of the toothpaste brands in
different variants.
5. It is further stated that the defendants are a subsidiary of The Procter
& Gamble Company. The said (P & G) Company markets oral care
products under the multi-billion brands of Crest© and Oral-B©. It is further
claimed that Oral-B© was the first toothbrush to go to the moon as it was on
board Apollo 11 mission for the first moon landing. It is averred that Crest
and Oral-B are one billion dollar brands each being recognized globally for
their quality and innovation. It is further averred that defendants first
launched ORAL-B product in India in 1996. Ever since the said launch in
1996 the mark ORAL-B has been used extensively and continuously by the
defendants. The defendants have launched their ORAL-B toothpaste in
June/July 2013 and that the defendant No.3 has incurred substantial
promotional and advertising expenditure in respect of ORAL-B products. It
is further urged that the defendant has made false submissions inasmuch as
the ban of import of toothpaste in USA, relating to toothpaste containing
Diethylene Glycol (DEG), which did not cover the product of the defendant.
Based on the above, it is urged that the present application is liable to be
dismissed.
6. I have heard learned counsel for the parties extensively on hearings
spread over several dates. Parties have filed their submissions.

CS(OS) 1431/2013 Page 4 of 18

7. Learned senior counsel appearing for the defendant has strongly
opposed the present injunction application. He submits that the plaintiff is
the registered proprietor of the mark “ALLROUND”. He submits that the
mark “ALLROUNDER” as used by the defendant is a secondary mark used
in conjunction with the primary mark ORAL-B. Further their mark “ALL -
AROUND PROTECTION” is also used in relation to their product ORAL-B
Pro Health. Hence, it is urged that there is no infringement of the trademark
of the plaintiff. It is further urged that though the registered mark of the
plaintiff is “ALLROUND”, the plaintiff has never used the standalone mark
“ALLROUND” but has instead always used the expression “ALLROUND
PROTECTION”. Hence, it is urged that the plaintiff is disentitled to claim
exclusive rights or any equitable relief in respect of the standalone mark
“ALLROUND”. Reliance is placed on Veerumal Praveen Kumar v. Needle
Industries (India) Limited & Anr., 93(2001) DLT 600; Fedders Llyod
Corp. Vs.Fedders Corp.2005(30) PTC 353 (Del) and Cluett Peabody & Co.
Inc. vs. Arrow Apparals, 1998 (18) PTC 156 to support the present
proposition. It is further urged that as the plaintiff is using the mark “ALL
ROUND PROTECTION” and the said expression is not a registered mark,
hence no action for infringement of the said mark would be maintainable. It
is further urged relying on the judgment of this Court in the case of Marico
Limited vs. Agro Tech Foods Limited, 2010 X AD (Del) 214 that if a
defendant is using his own word/mark as a trademark prominently in
addition to the descriptive word/mark, nothing further is required to show
the bona fides of the defendant that there is no infringement of trademark as
alleged.
8. It is urged that no relief can be granted to the plaintiff inasmuch as the
expression “ALLROUND PROTECTION” is inherently descriptive

CS(OS) 1431/2013 Page 5 of 18

inasmuch as the same is used in a descriptive manner to describe the quality
and characteristics of its goods, namely, the tooth paste. Reliance is placed
on Section 30(2) (a) of the Trade Marks Act which states that registered
trademark is not infringed where it is used in relation to goods and services
to indicate kind, quality and other characteristics of the goods. It is strongly
urged that use of descriptive words in whatsoever manner does not amount
to infringement. A common descriptive mark can only be protected if it has
acquired secondary meaning by virtue of substantial use, which in the
present case the plaintiff has failed to establish.
9. Learned counsel has also relied upon judgment of the Division Bench
of this High Court in the case of Nestle India Limited v. Mood Hospitality
Private Limited 2010 (42) PTC 514 (Del.) (DB) and also the case of Marico
Limited v. Agro Tech Foods Limited (supra), to contend that where a mark
is used in a descriptive manner to describe the quality of the product and not
as a trade mark, there is no infringement of the registered trade mark and no
injunction can be granted.
10. It is further stated that no case of passing off is made out as the
defendant‟s mark “ALL ROUNDER” and the expression “ALL-AROUND
PROTECTION” are not deceptively similar to the plaintiff‟s registered mark
“ALLROUND”. Reliance is placed on judgment of the Hon‟ble Supreme
Court in the case of Ruston & Hornsby Ltd. vs. The Zamindara
Engineering Co. (1969) 2 SCC 727.
Learned senior counsel appearing for the plaintiff has strongly refuted
the submissions of the learned counsel for the defendant. It is submitted that
a mark is descriptive if it describes the intended purpose, function or use of
the goods. It is urged that the mark “ALLROUND” and “ALLROUND
PROTECTION” are not descriptive and even though they are common in

CS(OS) 1431/2013 Page 6 of 18

linguistic use they do not describe the intended purpose, quality and nature
of goods. The mere fact that the word is a dictionary word does not mean
that the mark is descriptive. It is further urged that defendants have
themselves applied for and got their mark registered in the United States.
The mark “ALL-AROUND PROTECTION” has been registered by the
defendant in the United States. They have also applied for registration in
India of the mark “ALLROUNDER”. It is urged that when the defendants
have themselves applied and got registration of the trademark “ALL-
AROUND”, they cannot now claim and it does not lie in their mouth to
claim that the mark is a generic expression or descriptive. Reliance is
placed on Automatic Electric Ltd. vs. R.K.Dhawan & Anr., 1999 (19) PTC
81.
It is also denied that use of the mark “PROTECTION” alongwith the
plaintiff‟s registered trademark “ALLROUND”, namely, as “ALLROUND
PROTECTION” amounts to non-use of the trademark “ALLROUND”.
Reliance is placed on the judgment of the Hon‟ble Supreme Court in the
case of Hardie Trading Ltd. and Anr. vs. Addisons Paint and Chemicals
Ltd., (2003) 11 SCC 92 to contend that the use as done by the plaintiff
tantamount to user of the trademark. Reliance is also placed on Laxmikant
V. Patel vs. Chetanbhat Shah & Anr., (2002) 3 SCC 65. It is further alleged
that even a prominent part of the mark deserves protection. Reliance is
placed on judgment of this Court in the case of Himalaya Drug Company
vs. S.B.L. Ltd., 2013 (53) PTC 1 (Del) and United Biotech Pvt. Ltd. vs.
Orchid Chemicals and Pharmaceuticals Ltd & Ors., 2012 (50) PTC 433
(Del). It is further urged that in order to seek protection for a mark it is not
necessary that the mark has to be the main mark.
It is further urged that the plaintiff is the prior adopter of the

CS(OS) 1431/2013 Page 7 of 18

registered mark “ALLROUND” and the mark “ALLROUND” alongwith the
word “PROTECTION” is in continuous use since 2005 whereas defendant is
a new player having allegedly launched its product in July 2013. It is urged
that in fact when the present suit was filed, the product had yet to be actually
launched or had just been launched.
11. I will first deal with the submission of the defendant, namely, that the
mark of the plaintiff is descriptive. Reliance is placed on Section 30(2) (a)
read with Section 35 of the Trade Marks Act to claim that a registered
trademark is not infringed with the use of the mark in relation to goods
which indicate the kind and quality or other characteristics of the goods. It
has been urged that the plaintiff has procured the registration on false
information and that the defendants have already been advised to seek
rectification of the alleged trademark. The defendants have not denied that
they have moved an application for registration of their mark
“ALLROUNDER”. They have also not denied that they have obtained
registration of the mark “ALL-AROUND PROTECTION” in the United
States. They have, however, urged that the term “ALLROUNDER” is a
product neutral expression. Further regarding registration of the mark in
United States it is urged that the said registration in United States is
inconsequential to the present proceedings as the Trade Marks Act applies
only to the jurisdiction of India. It is further urged that a descriptive word
will not change its character merely by an act of the defendant.
12. What is the effect of these background facts i.e. that the defendants
have themselves applied for registration of the mark “ALLROUNDER” and
have also obtained registration of the mark “ALL-AROUND
PROTECTION” in USA. In my view it is not permissible for the defendant
to approbate and reprobate. Reference in this context may be had to the

CS(OS) 1431/2013 Page 8 of 18

judgment of the Full Bench of this Court in Rajneesh Kumar Singhal vs.
The State (National Capital Territory of Delhi), 89 (2001) DLT 511. In
paragraph 6 the Court held as follows:-

6. The submission of the learned senior counsel overlooks the

fact that a party cannot normally be allowed to approbate and
reprobate. If a party has taken up a specific stand at a particular
stage of the court proceedings it should not be open for him to
take a contrary position at a subsequent stage of litigation or in
different proceedings. The principle serves well as it does not
allow a litigant to blow hot and cold at successive stages of the
same litigation, or another litigation. The doctrine is well
illustrated in Dwijendra Narain v. Joges Chandra 39 C.L.J.
40 where it was held as follows:-
“It is an elementary rule that a party litigant cannot be permitted
to assume inconsistent positions in Court, to play fast and loose,
to blow hot and cold, to approbate and reprobate, to the
detriment of his opponent. This wholesome doctrine applies not
only to the successive stages of the same suit, but also to
another suit than the one in which the position was taken up,
provided that the second suit grows out of the judgment in the
first.”

13. Reference may also be had to the judgment of this Court in the case of
Automatic Electric vs. R.K.Dhawan, (supra). That was a case which
pertained to a suit for injunction filed by the plaintiff for its registered
trademark DIMMERSTAT. The defendant in that case is said to have
adopted the trademark DIMMER DOT. The defendants in that case took the
stand in the said matter that the word DIMMER being a generic word is
incapable of serving a trademark function. It was urged that the said word
signifies an auto variable transformer and no trader could monopolize its
use. The defendants in that case had got their trademark DIMMER DOT
registered in Australia. In those facts this Court did not accept the contention
of the defendant in that case that DIMMER is a generic expression. In

CS(OS) 1431/2013 Page 9 of 18

paragraph 16 this Court held as follows:-

“16. The defendants got their trade mark “DIMMER DOT” registered
in Australia. The fact that the defendant itself has sought to claim
trade proprietary right and monopoly in “DIMMER DOT”, it does not
lie in their mouth to say that the word “DIMMER” is a generic
expression.”

14. In view of the said legal position I do not wish to go into the
submission of the defendant as to whether the word “ALLROUND” or
“ALLROUND PROTECTION” is a generic word. It clearly does not lie for
the defendant to raise the said submission in the given facts. Their
submission about the mark being generic has to be rejected.
15. I may now deal with the connected argument of the defendants
namely that the defendants are using the mark to describe the quality of the
product and not as a trade mark. In this context, reliance has been placed by
the learned senior counsel for the defendants on the judgment of the
Division Bench of this High Court in the case of Nestle India Limited v.
Mood Hospitality Private Limited (supra). In that case the respondent had
registration of trade mark “YO!” and “YO! China”. The appellant was
manufacturing and marketing noodles under the name and style of Maggi
Cuppa Mania in two flavours Masala Yo! and Chilly Chow Yo!. It was
argued by the appellant in that case that no infringement is made out by the
use of Yo! by the appellant in connection with Masala Yo! and Chilly
Chow Yo! in as much as the appellant claimed that it was using the
distinguishing trade mark “Maggi” along with it. The Court held that as the
manner in which the mark Yo! was used i.e. Masala Yo! and Chilly Chow
Yo!, it was not used to indicate connection between the appellant‟s product.
The mark Yo! was not used as a trade mark. The said expression described
the characteristics of the goods in the sense that they referred to the flavor of
CS(OS) 1431/2013 Page 10 of 18
the noodles. It was on those grounds that the Court vacated the injunction in
favour of the respondent in that case.
16. However, in the present case a perusal of the impugned trade mark
and the packaging of the defendants would show that the mark “ALL-
AROUND PROTECTION” is being used as a standalone mark and not to
describe any quality of the product. The qualities of the product are
described separately on the packaging. The facts of the present case are
different from the facts as contained in the judgment of Nestle India Limited
v. Mood Hospitality Private Limited (supra). It cannot be said that the mark
“ALLROUND PROTECTION” as used by the defendant is not being used
as trade mark but as descriptive of the qualities of the product.
17. Similarly, in Marico Limited vs. Agro Tech Foods Limited (supra),
the registered trade mark was “LOSORB” and “LO-SORB”. The appellant
therein was also using the word “LOW ABSORB” though it was not a
registered trade mark. Defendant therein was using the trade mark
“Sundrop” with the expression “WITH LOW ABSORB TECHNOLOGY”.
Hence, the issue was as to whether an action of passing off would be
maintainable against the defendant for use of the mark LOW ABSORB and
for infringement of the mark LOSORB and LO-SORB. The Court came to
the conclusion that the mark LOW ABSORB only describes the
characteristics of the product i.e. edible oil and ordinarily and normally
incapable of being distinctive. Hence, interim injunction as prayed for on the
ground of passing off was rejected. Injunction for infringement action for
LOSORB and LO-SORB was also rejected as prima facie the registration of
the plaintiff‟s mark in that case was invalid and no action for infringement
would lie.
18. However, in the facts of the present case, I have already held that on

CS(OS) 1431/2013 Page 11 of 18

account of the fact that the defendants themselves have applied for
registration of the trade mark “ALLROUNDER” and have also got
registration of the trade mark “ALL-AROUND PROTECTION”, it would
not lie for them to claim the said mark to be descriptive. The said judgment
of Marico Limited vs. Agro Tech Foods Limited (supra) would not apply to
the facts of the present case.
19. The next contention of the defendant is that the plaintiff has not used
the registered mark “ALLROUND” but has been using the mark
“ALLROUND PROTECTION” and hence the plaintiff is not entitled to
equitable relief of injunction. It was argued that on account of disuse of the
mark “ALLROUND” plaintiff cannot seek injunction.
20. The said contention is without merits. Plaintiff has as per the
defendants been using the mark “ALLROUND PROTECTION”. To claim
that because of this there is non-use of the registered trade mark
“ALLROUND” in this background is an argument only playing with words.
The contentions cannot be accepted.
21. The reliance of the learned senior counsel for the defendant on the
judgments in the case of Veerumal Praveen Kumar v. Needle Industries
India Limited (supra) and Fedders Llyod Corp. vs. Fedders Corp. (supra)
to support this contention is misplaced. In the case of Veerumal Praveen
Kumar v. Needle Industries India Limited (supra) on the facts of the case
the Court recorded a finding that there has been no sale of the respondent
after 1981. The only sale perhaps was stated to be of the period 1977 to
1979. Hence, there was non-user of the trademark and this Court held that
where there is non-user for a long period of time then mere registration of
the mark would not entitle the plaintiff to an injunction. The same is the
view taken by judgment of this Court in the case of Fedders Llyod Corp. vs.

CS(OS) 1431/2013 Page 12 of 18

Fedders Corp. (supra).
22. Reference may also be had to the judgment of the Supreme Court in
the case of Hardie Trading Ltd. and Anr. vs. Addisons Paint and
Chemicals Ltd. (supra) relied upon by learned senior counsel for the
plaintiff where in paras 41, 42, 45 and 49 the Hon‟ble Supreme Court held
as follows:-

“41. The question therefore is - is the word "use" in

Section 46(1) so limited? The phrase used in Section 46 is
"bonafide use thereof in relation to those goods". The phrase
has been defined in Section 2(2)(b) of the Act as:

"2.(2)(b) to the use of a mark in relation to goods shall be

construed as a reference to the use of the mark upon, or in
any physical or in any other relation whatsoever, to such
goods"; (emphasis supplied)

42. This shows that the use may be other than physical. It may
be in any other relation to the goods. Given this statutory
meaning, we see no reason to limit the user to use on the goods
or to sale of goods bearing the trademark.
….
45. In Section 2(2)(b) of the Act, we have the additional words
"any" and "whatsoever" qualifying the words 'other relation'
giving the words a much wider meaning. Reading this
definition into Section 46(1) it is clear that the word 'use' in
Section 46(1) may encompass actions other than actual sale.
….

49. The law has since been changed so that at present as 'intent
not to resume' use of the mark is to be proved [See McCarthy
on Trade Marks and Unfair Competition (3rd Edn.). Vol.2, para
17.03]. Nevertheless, "since abandonment results in a forfeiture
of rights, the courts are reluctant to find an abandonment".

CS(OS) 1431/2013 Page 13 of 18

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

23. Reference may also be had to the judgment of Supreme Court in the
case of Ruston & Hornsby Ltd v. The Zamindara Engineering Co. (supra).
In that case the appellant had a registered trade mark “RUSTON”. The
respondent therein started using trade mark “RUSTAM INDIA”. The High
Court in that case, found there to be deceptive resemblance between the
words RUSTON and the mark RUSTAM and hence the use of the bare word
RUSTAM constituted infringement of the appellant‟s trade mark RUSTON.
However as the respondent was using the mark RUSTAM INDIA, the High
Court held that mark was ceased to be deceptively similar to the appellant‟s
trade mark. The Supreme Court negated the contention stating that the fact
that the word INDIA is added to the respondent‟s trade mark RUSTAM is of
no consequence and the appellant is entitled to succeed in its action for
infringement of its trade mark.
24. Similarly, in the case of Laxmikant V. Patel v. Chetanbhai Shah and
Another (supra), the plaintiff was using the trade name “Muktajivan Colour
Lab”. Defendant also started using the same name and style. Hence the
plaintiff initiated an action for passing off. The trial court made observations
that in the business name the plaintiff sometimes used QSS as prefix to
“Muktajivan Colour Lab”. The prefix QSS was a short form of Quick
Service Station and was merely an adjective prefixed to the name. The
Supreme Court held that it is the word “Muktajivan” which makes
distinctive the business name of the plaintiff. Hence the Court was of the
view that a clear case for grant of ad interim injunction as prayed for by the
plaintiff, was made out.
CS(OS) 1431/2013 Page 14 of 18
25. Hence, there is no merit in the submission of the defendant. Merely
because plaintiff has used the mark “ALLROUND PROTECTION” the
mark “ALLROUND” cannot be said to have fallen in disuse.
26. Even otherwise the plaintiff has contended that it has used the mark
“ALL ROUND” per se also. It will be for the plaintiff to prove this at the
trial.
27. Now I come to the issue as to whether the use of the mark
“ALL-AROUND” or “ALLROUNDER” by the defendant is an
infringement of the registered trademark of the plaintiff “ALLROUND”.
What is to be seen is as to whether the trademark “ALL-AROUND
PROTECTION” or “ALLROUNDER” can be said to be identical with or
deceptively similar to the trademark of the plaintiff. Both the plaintiff and
defendant are using the said mark on the same good i.e. tooth paste.
28. The plaintiff has relied upon the judgment of the Division Bench of
this Court in the case of Himalaya Drug Company vs. S.B.L. (supra).
Relevant portion of paragraphs 19 and 20 read as follows:-
“19. It is settled law that where the defendant‟s mark contains
the essential feature of the plaintiff‟s mark combined with other
matter, the correct approach for the court is to identify an
essential feature depending particularly “on the court‟s own
judgment and burden of the evidence that is placed before the
Court”. In order to come to the conclusion whether one mark is
deceptively similar to another, the broad and essential features
of the two are to be considered. They should not be placed side
by side to find out if there are differences, rather overall
similarity has to be judged. While judging the question as to
whether the defendant has infringed the trade mark or not, the
court has to consider the overall impression of the mark in the
minds of general public and not by merely comparing the
dissimilarities in the two marks.
20. The ascertainment of an essential feature is not to be by
ocular test alone but if a word forming part of the mark has

CS(OS) 1431/2013 Page 15 of 18

 come in trade to be used to identify the goods of the owner of
the trade mark, it is an infringement of the mark itself to use
that word as the mark or part of the mark of another trader for
which confusion is likely to result. The likelihood of confusion
or deception in such cases is not disproved by placing the two
marks side by side and demonstrating how small is the chance
of error in any customer who places his order for goods with
both the marks clearly before him, for orders are not placed, or
are often not placed, under such conditions. It is more useful to
observe that in most persons the eye is not an accurate recorder
of visual detail and that marks are remembered rather by
general impressions or by some significant detail than by any
photographic recollection of the whole”…..”

29. Similarly, the plaintiff has also relied upon the judgment of a
Division Bench of this Court in United Biotech vs. Orchid Chemicals
(supra) where in paragraphs 21 and 24 this Court held as follows:-
“21. The argument was that as per sub-Section (1) of
Section 17 of the Act, the exclusive right of the registered
proprietor is to use the trademark "taken as a whole" and not "in
part" which the respondent was trying to claim. It was argued
that from the reading of the latter part of sub-Section(2) of the
aforesaid provision. It was made abundantly clear that the
registration would not confer any right in the matter forming
only art (sic) of the whole of the trade mark was registered and
the IPAB had ignored the words "not" and "in" occurring in this
petition thereby committing a grave error. ..
…….
24. The entire arguments are on the wrong premise and it
proceeds on the basis of common feature of the two marks
suffix "ZID" and since the respondent has registration and trade
mark "ORZID", it cannot bare a part of it, i.e., "ZID". What has
been seen in a case like this is as to whether the mark
"FORZID" is deceptively similar to "ORZID". That is the test
which is to be applied and in a process, it is to be seen as to
whether the two marks are structurally and phonetically similar
and would cause deception in the minds of consumers. When

CS(OS) 1431/2013 Page 16 of 18

 we judge the matter from this angle, we find ourselves in
agreement with the view taken by IPAB as well as the learned
Single Judge. Although the mark "ORZID" is a label mark, the
word mark "ORZID" is an essential feature which has been
covered by the registration.”
30. Reference may be had to the judgment of the Hon‟ble Supreme Court
in the case of Ramdev Food Products Pvt. Ltd. vs. Arvindbhai Rambhai
Patel & Ors., AIR 2006 SC 3304 where in paragraph 88 this Court held as
follows:-
88. “Although, the defendant may not be using the actual trade
mark of the plaintiff, the get up of the defendant's goods may be
so much like the plaintiff's that a clear case of passing off could
be proved. It is also possible that the defendant may be using
the plaintiff's mark, the get up of the defendant's goods may be
so different from the get up of the plaintiff's goods and the
prices also may be so different that there would be no
probability of deception of the public. However, in an
infringement action, an injunction would be issued if it is
proved that the defendant is improperly using the plaintiff's
mark. In an action for infringement where the defendant's trade
mark is identical with the plaintiff's mark, the Court will not
enquire whether the infringement is such as is likely to deceive
or cause confusion. The test, therefore, is as to likelihood of
confusion or deception arising from similarity of marks is the
same both in infringement and passing off actions.”

31. In my view prima facie use of the mark “ALL-AROUND

PROTECTION” and “ALLROUNDER” is an infringement of the registered
trade mark of the plaintiff “ALLROUND”. The broad and essential features
of the three marks are identical. There are various similarities in the essential
features of the said marks which are likely to deceive and confuse a
consumer. The essential feature of the registered trade mark of the plaintiff
is “ALLROUND”. This feature is also the essential feature of the impugned
marks.
CS(OS) 1431/2013 Page 17 of 18
32. The balance of convenience is also in favour of the plaintiff. When
the present suit was filed, the defendants had just started marketing of their
toothpaste with the impugned trademarks. In case the defendants are not
restrained, irreparable injury is likely to be caused.
33. In view of the above the defendants are restrained by an interim
injunction from using the impugned trademark “ALL-AROUND
PROTECTION”/ “ALLROUNDER” or any other mark deceptively similar
to the plaintiff‟s trademark “ALLROUND”, till disposal of the
accompanying suit. The order shall operate after four weeks from today, to
enable the defendants to take appropriate steps to comply with the same.
I.A. no. 11461/2013 is allowed. No costs.
CS(OS) 1431/2013
List before the Joint Registrar on 07.07.2014, for further proceedings.

JAYANT NATH
(JUDGE)
MAY 09, 2014
n

CS(OS) 1431/2013 Page 18 of 18