Bombay High Court
International Foodstuffs Co. Llc vs Parle Products Pvt Ltd. And Anr on 11 April, 2016
Bench: G.S. Patel
209-NMS2624-12-LONDONDAIRY.DOC
Shephali
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION NO. 2624 OF 2012
IN
SUIT NO. 2497 OF 2012
INTERNATIONAL FOODSTUFFS CO.
LLC., a limited liability company incorporated
under the Laws of U.A.E., having its address at A1
Wadha Street, Industrial Area No. 1, Post Office
Box 4115, Sharjah, U.A.E. and represented in India
through its constituted attorney Ms. Sangeeta
Chavan, having her office at c/o Allana House,
Allana Road 2nd Floor, Colaba, Mumbai 400 001. ...Applicants/
Plaintiffs
Versus
1 PARLE PRODUCTS PVT. LTD.
a company incorporated under the Indian
Companies Act, 1956, having its registered
office at V. S. Khandekar Marg, Vile Parle
(E), Mumbai 400 057.
2 PARLE BISCUITS PVT. LTD., a company
incorporated under the Indian Companies
Act, 1956, having its address at North Level
Crossing, Vile Parle (E), Mumbai 400 057.
...Defendants
Mr. Vinod Bhagat, a/w Mr. Dhiren Karania, i/b M/s. G. S. Hegde &
V. A. Bhagat, for the Plaintiffs.
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Mr. Viraag Tulzapurkar, Senior Advocate, Mr. Ramesh Gajria
and Ms. Deepa Hate, i/b M/s. Gajria & Co., for Defendants
Nos. 1 and 2.
CORAM: G.S. PATEL, J
DATED: 11th April 2016
ORAL JUDGMENT:
1.
This order will dispose of the Plaintiff's application for
infringement and passing off. The Plaintiff claims that the
Defendants' product, a boiled confectionary sweet, is sold under a
mark that so closely resembles the mark used by the Plaintiff for its
ice cream that the Plaintiff is entitled to an injunction on both
causes of action, i.e., trademark infringement and passing off.
2. I disagree. My reasons follow.
3. To begin with, there is a very great deal of controversy about
whether the Plaintiff does or does not have any entitlement to the
mark in question. I have, however, for the purposes of this Notice
of Motion, made it clear that I am not addressing this issue. It will
be left open to the trial of the Suit. I will proceed further on the
basis that the Plaintiff is indeed the proprietor of its mark at page 29
of the Plaint.
4. This is the mark "LONDON DAIRY", depicted in a stylised
fashion. The two words are used separately. They are depicted on a
a device of a banner or ribbon. The colour scheme is unique. It uses
a dark or navy blue for the distinctive font against a white
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background. The banner or ribbon has a gold border. Above the
word "LONDON" is a stylised graphic or what appears to be the
London Bridge.
5. It is not in dispute that this mark is used by the Plaintiff in
respect of, and only of, ice-cream. This is a matter of some
consequence, since it is the case of Mr. Tulzapurkar for the
Defendants that the Plaintiff has not ever used this mark for any
other product, and has admitted that it uses this mark only for ice-
cream. The Defendants' mark is shown at Exhibit "P1" at page
225. This is the mark "LONDONDERRY". It is used as a single
word. The colour scheme is entirely different. The Defendants'
packet is a bright red. The letters are in white and in a different
font. There is a pictograph of what appears to be a splendid pastoral
scene with well-fed farm animals roaming hither and yon and a
winsome milkmaid in a flowing dress and an apron. This pictorial is
set in a half oval device. There is a sweeping line over it with some
text. On one face of the wrapper -- though there is a dispute about
it whether this is the front or the rear face; I believe it is the former
-- is the Defendants' house mark "Parle".
6. Mr. Bhagat for the Plaintiff submits that these points of
distinction are all irrelevant. For, he submits, there is absolutely no
phonetic distinction between the two marks. They cannot possibly
be pronounced differently. The Plaintiff has a registration in Class
30 which covers the goods, i.e., boiled confectionary sweets, for
which the Defendants are using their mark.
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7. The facts are not many. The Plaintiff has been in business
since 1975 or thereabouts. It is a Dubai-based company. We are
concerned here with a particular range of products, i.e., various
flavours of ice-cream. According to the Plaintiff it is the registrant
of the mark "LONDON DAIRY", the word per se since 2001. The
word "LONDON" was specifically disclaimed even at the time. In
2007, the Plaintiff obtained registration for the label mark. There is
another registration of 2005 for "LONDON DAIRY CAFE" in
Class 42 (now Class 43). The word mark and the label mark are
both registered in Class 30. In 2011 the Defendants applied for
registration for the mark "LONDONDERRY". This is still pending
registration. According to the Defendants, they began using the
mark in 2011 and have used it continuously since.
8. The Plaintiff claims to be part of a group of companies that
between them cover a wide range of products. It says its
predecessor built a strong market share in various brands in various
countries across the world. Annexed to the plaint are statements of
global sales data of 'London Dairy' products sold in various Middle
Eastern jurisdictions, India, Singapore and Jordan. These are
expressed in US dollars and they are indeed significant. In 2011
alone, the sales were more than US $ 32 million. Similarly, there are
considerable amounts expended in sales and promotions (more than
USD 5 million in 2011-2012). There are also sample invoices, both
foreign and domestic. The Plaintiff has also shown its domestic
sales from 2010 onwards. These are to be found at pages 56 and 57
of the Plaint. They are expressed both in volume (litres) and in
crores. Relative to the international sales, these are perhaps modest.
In 2011-2012, they were roughly Rs. 5.5 Crores.
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9. The Plaintiff says that the Defendants dishonestly adopted
their mark 'LONDONDERRY'; the 2nd Defendant has been using
it under license from Defendant No. 1. At this stage, I must note
that there are two different marks of which the Defendants have
sought registration. These are shown at pages 226 and 227 of the
Plaint. At page 226, Exhibit "Q", is the mark 'LONDONDERRY'
as a single word. The mark at page 227 shows two separate words
'LONDON' and 'DERRY'. Mr. Tulzapurkar states, and I will
accept this, that the only mark used by the Defendants is the one at
page 226, i.e., "LONDONDERRY" as a single word.
10.
Mr. Bhagat's submission is that unless the Defendants are
able to show that their adoption of the mark is bona fide, the
injunction must follow, the Plaintiff being a prior registrant of the
mark in question and there being no discernible phonetic
distinction between the two. He relies on the decision of the
Supreme Court in Ruston & Hornsby Ltd. vs The Zamindara
Engineering Co.1 in support of his submission that where the two
marks are deceptively similar the Plaintiff is entitled to an
injunction on the cause of action in infringement. He also relies on
a decision of this Court (Kathawalla, J.) in Pidilite Industries Limited
vs Jubilant Agri &: Consumer Products Limited. 2 There the dispute
turned on the use of the word "Marine" and whether it was being
used in the context of plywood in a purely descriptive sense or 'in a
trade marky sense'. Kathawalla J concluded that the Plaintiff's use
of the mark was as a trade mark and not in a descriptive sense and,
therefore, granted the injunction sought. There were various other
(1969) 2 SCC 727
Notice of Motion (L) No. 1717 of 2013 in Suit (L) No. 752 of 2013,
decision dated 13th January 2014.
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factors that went into that case, and these may not apply to the case
at hand.
11. Similarly, Mr. Bhagat relies on the decision of the Delhi High
Court in Indian Hotels Company Ltd. & Anr. vs Jiva Institute of Vedic
Science & Culture.3 for the proposition that it is for the Defendants
to show that their adoption of their mark was bona fide, failing
which the injunction must follow. Similarly, references are made to
the decisions in Automatic Electric Limited vs R. K. Dhawan & Anr.4
and Gorbatschow Wodka KG vs John Distilleries Limited, 5 the latter
for its finding that there was no bona fide explanation in adopting so
close a design of a bottle. Finally, the submission is that the
Defendants ought to have conducted a search 6 and if they failed to
do so they have only themselves to blame.
12. Mr. Bhagat now raises an argument that I wholly unable to
follow. Apart from saying that there is a phonetic similarity and,
therefore, there should be a blanket protection, he says that the
Plaintiff also manufactures confectionery although under another
mark 'Tiffany' and, therefore, they should get an injunction
restraining the Defendants' use of 'LONDONDERRY'. Parsing the
submission yields this: that because the Plaintiff has another mark
'Tiffany' for confectionery, therefore the Defendants' use of
'Londonderry' for boiled sweets must be held to be an passing off
2008 (37) PTC 468 (Del.) (DB)
1999 PTC (19) 81
2011 (47) PTC 100 (Bom.)
Bal Pharma Ltd. vs Centaur laboratories Pvt. Ltd. & Anr., 2002 (24) PTC
226 (Bom.) (DB).
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or an infringement of the Plaintiff's mark 'London Dairy' for ice-
cream. This submission only needs to be stated to be rejected.
13. What Mr. Bhagat points out in saying this is actually a facet
central to Mr. Tulzapurkar's case for the defence. He says that the
Defendants' application for the use of their mark at Exhibit "Q" at
page 226 although in class 30 does not include ice-cream.
Therefore, this is a factor that must weigh against the Plaintiff and
not for it, for it is a fundamental strut of the Defendants' case that
the Plaintiff has never used its mark for anything other than ice-
cream. It is not enough, Mr. Tulzapurkar submits, and I think he is
correct, to say that because one has registration in a class that
includes very many items therefore protection is axiomatically to
that mark in respect of all the items in that class, however
dissimilar, however disconnected and irrespective of whether or not
there is any use of the mark for those other types of goods. Mr.
Tulzapurkar points out that factually there is no dispute about this.
The Plaintiffs have admitted that their use is only in respect of ice-
cream.7 He submits that non-use for more than five years
consecutively for other goods in Class 30 is sufficient ground for
removal of the mark at least as regards other goods in view of the
provisions of Section 47 of the Trade Marks Act, 1999.
14. Every registrant, he submits, should be required to be careful
to specify the goods within the class, even multiple goods, for
which the use is proposed. At any rate, by virtue of this admitted
and demonstrated non-user, the Plaintiffs must be deemed to have
limited their use only to ice-cream within Class 30. I think Mr.
Notice of Motion paperbook, paragraph 11, p. 111.
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Tulzapurkar is correct. Certainly this is how I would understand an
entry in that class. A registration must be read in a reasonable and
rationale fashion. I do not think that the purpose of this statute is to
afford such wide ranging protection irrespective of use. There is
also sufficient authority for this, as Mr. Tulzapurkar points out
when he relies on the Supreme Court decision in Vishnudas Trading
as Vishnudas Kishandas v Vazir Sultan Tobacco Co. Ltd., Hyderabad
& another.8 This was a case that related to different tobacco
products, viz., the kind used in cigarettes and the kind used in other
preparations such as chewing tobacco and so on. In paragraphs 44,
45 and 46 of its decision, the Supreme Court specifically addressed
itself to this question. It said that a class in the Fourth Schedule to
the Act may include a very large number of goods or articles, each
separately identifiable and vendible, but not necessarily all being
goods of the same description as commonly understood in trade or
common parlance. Within that particular class to which tobacco
products related, there were a number of distinctly identifiable
goods, marketed separately, and used differently. The contention
that registration for a class carried with it protection across the
entire spectrum of the goods in that class was not accepted by the
Supreme Court. We are in very much the same position here.
15. In addition, this argument that all the goods in that class are
'cognate' and 'allied' is one that I simply cannot accept. Visually
there is nothing at all common between the two marks. The words
themselves are different. Londonderry is a county in Northern
Ireland. The Plaintiff's mark refers to a milk product
manufacturing unit in the England's capital. The two may have the
AIR 1996 SC 2275
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same pronunciation but that is not the entirety of the test. The
Plaintiff's product is entirely distinct. It is packaged differently. It
requires refrigeration. Its price point is entirely distinct as well. The
Plaintiff's products are indeed expensive by Indian standards,
starting at Rs. 80/- and going only northward from there. The
Defendants' boiled sweet is available in single sachets priced at
Rs.0.50. I should not be at all surprised if, at this price, these sweets
are used in unusual, but quintessentially Indian ways, as, perhaps,
return change at our highway toll gates. The point is that the
vendibility of the two products is so entirely different that, in
addition to the visual distinctiveness, I can see no possibility at all
of any person, however average his intellect or imperfect his
recollection, or even that unfortunate from Foster J's dictum in
Morning Star Cooperative Society v Express Newspapers,9 confusing
one for the other. When it comes to questions of similarity, the test
is one of perception. Like beauty, this lies in the eye of the
beholder; in trade mark cases, that of the Judge.
16. Mr. Tulzapurkar's next point again questions registration,
but again this is something I choose to leave open for the purposes
of this Notice of Motion. I do not think it is necessary to discuss
this. He submits that this case falls within the three narrow
exceptions mentioned by the Supreme Court in the Full Bench
decision in Lupin Limited v Johnson & Johnson. Perhaps. But that
can await another day. It is certainly unnecessary for a decision on
this Notice of Motion.
[1979] FSR 113. The same phrase was used again in the same year by
Denning LJ in Newsweek Inc v British Broadcasting Corp [1979] RPC 441.
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17. Of more significance for the present purposes, is Mr.
Tulzapurkar's submission under Section 36(2)(b) of the Act. This
section must be read with Section 17 of the Act. The two sections
are set out below.
"17. Effect of registration of parts of a
mark.-- (1) When a trade mark consists of
several matters, its registration shall
confer on the proprietor exclusive right
to the use of the trade mark taken as a
whole.
(2) Notwithstanding anything contained in
sub-section (1), when a trade mark--
(a) contains any part--
(i) which is not the subject of
a separate application by
the proprietor for
registration as a trade
mark; or
(ii) which is not separately
registered by the
proprietor as a trade mark;
or
(b) contains any matter which is
common to the trade or is
otherwise of a non-distinctive
character,
the registration thereof shall not confer
any exclusive right in the matter forming
only a part of the whole of the trade mark
so registered."
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"36. Saving for words used as name of
description of an article or substance of
service.-- (1) The registration of a trade
mark shall not be deemed to have become
invalid by reason only of any use after
the date of the registration of any word
or words which the trade mark contains or
of which it consists as the name or
description of an article or substance or
service:
Provided that, if it is proved either--
(a) that there is a well known and
established use of the said word as the
name or description of the article or
substance or service by a person or
persons carrying on trade therein, not
being use in relation to goods or services
connected in the course of trade with the
proprietor or a registered user of the
trade mark or (in the case of a
certification trade mark) in relation to
goods or services certified by the
proprietor; or
(b) that the article or substance was
formerly manufactured under a patent that
a period of two years or more after the
cesser of the patent has elapsed and that
the said word is the only practicable name
or description of the article or
substance,
the provisions of sub-section (2) shall
apply.
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(2) Where the facts mentioned in clause
(a) or clause (b) of the proviso to sub-
section (1) are proved with respect to any
words, then,--
(a) for the purposes of any
proceedings under section 57 if
the trade mark consists solely
of such words, the registration
of the trade mark, so far as
regards registration in respect
of the article or substance in
question or of any goods of the
same description, or of the
services or of any services of
the same description, as the
case requires, shall be deemed
to be an entry wrongly remaining
on the register;
(b) for the purposes of any other
legal proceedings relating to
the trade mark,--
(i) if the trade mark consists
solely on such words, all
rights of the proprietor
under this Act or any other
law to the use of the trade
mark; or
(ii) if the trade mark contains
such words and other
matter, all such right of
the proprietor to the use
of such words,
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in relation to the article or
substance or to any goods of the same
description, or to the service or to
any services of the same description,
as the case requires, shall be deemed
to have ceased on the date on which
the use mentioned in clause (a) of
the proviso to sub-section (1) first
became well known and established or
at the expiration of the period of
two years mentioned in clause (b) of
the said proviso."
18.
The word 'London' is disclaimed, says Mr. Tulzapurkar, and
as to the word 'Dairy' it can never independently enjoy any
protection. It is very much a common word. It is publici juris; of
public right. No protection attaches to it. Even taken as a whole, he
submits that this is not a mark that can ever claim protection.
Again, this may be a submission that is extremely broad in its
implications at this prima facie stage. I do not think it is necessary to
go quite that far just yet. I think it is sufficient to accept that the
Plaintiff's registration and rights are in any case restricted to the
only goods on which it has used them, i.e., ice-cream, and, should it
be able to show so, to others that are commonly linked with ice-
cream (such as other ice-cream preparations of some kind or the
other). I do not think, however, that this can be extended to every
single item in Class 30. That would take within its sweep all manner
of goods such as sugar confectionery, candies, biscuits, pasta,
macaroni, noodles, baking powder, spaghetti, mayonnaise, vinegar,
coffee, tea, rice, artificial coffee, bread, pastry and so on. The
Charminar principle, if I might be permitted a coinage of my own,
from Vazir Sultan must apply here.
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19. Mr. Tulzapurkar then submits that as regards passing off, the
Plaintiff had no reputation in India to speak of till 2010. There is
nothing to indicate that it had so wide an international reputation
that it could claim transborder protection. The Defendants' use
commenced in April 2011, and the relevant date, therefore, is the
date of the Defendants' adoption of their mark. The goodwill and
reputation that the Plaintiff must show, to satisfy one of the three
probanda of the 'classical trinity' in passing off law, must be
between 2010 and the time of the Defendants' adoption of their
mark. This, Mr. Tulzapurkar submits, the Plaintiffs are unable to
do. There are no significant sales in 2011. Of the many invoices
annexed to the Plaint, the ones that do show use of the mark are all
in relation only to the ice-cream. Others do not show use of the
mark at all. Passing off is an action in deceit, and the Plaintiff must
show or demonstrate, at least prima facie for the present purposes,
that the Defendants' use and adoption is calculated to deceive, such
that purchasers of fifty paise boiled sweets in single serve sachets
will imagine they are purchasing a product from the repertoire of a
maker of expensive ice-cream. I do not think so.
20. Mr. Tulzapurkar, therefore, submits that what we have before
us here is a case where there are a multitude of surrounding
circumstances that must be considered and cannot be possibly be
ignored:10 the packaging, the goods themselves, their price point,
the distinct words and stylization and so on. There is yet another, to
my mind, and that is everyday context. There may certainly be
places that vend both; but those are not the only places one finds
the Defendants' sweets. In a country where every empty urban
Kaviraj Pandit Durga Dutt Sharma v Navaratna Pharmacuitical
Laboratories, AIR 1965 SC 980
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space is a business opportunity of some kind, the Defendants'
sweet is the kind of thing that one finds sold by street corner
vendors, pavement hawkers and so on. None of these are 'outlets'
for the Plaintiff's products. No one purchasing a fifty paise sweet
manufactured by the Defendants will ever be cast into a state of
'wonderment' about whether this confection has anything whatever
to do with the Plaintiff's ice-cream.
21. Mr. Tulzapurkar then treats me to two separate compilations
of authorities on infringement and passing off to establish that on
neither cause of action has the Plaintiff made out a case for grant of
an injunction. There can be no quarrel with the propositions that
Mr. Tulzapurkar advances. The three cases of significance to which
I would make reference are of course the Delhi High Court Division
Bench judgments in Marico Limited v Agro Tech Foods Limited,11
Himalaya Drug Company v. SBL Limited, 12 and Bhole Baba Milk
Food Industries Limited v Parul Food Specialities Private Limited. 13
The last of these is particularly interesting because there the
Respondent in the Appeal had adopted a mark featuring Lord
Krishna in relation to ghee and other dairy products. The Single
Judge modified an ad-interim order. The Division Bench held that
in this case even a deity can be uniquely associated with a particular
product and that would not by itself make the product distinctive if
it was otherwise descriptive. Again, on the question of passing off
the decision of the Chancery Division in Wolf and Son v Nopitsch &
Others14 is relevant because again this involved the use of two
2010 (44) PTC 736 (Del.) (DB)
2010 (43) PTC 739 (Del.)
2011 (48) PTC 235 (Del.) (DB)
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words, one of which was related to the name of a country and the
other described a type of pencil lead: 'Spanish Graphite'. The
plaintiffs claiming an injunction in passing off failed. The Court
held inter alia that the plaintiffs could not show that their use of the
mark had become so distinctive that none other could use it. The
Court looked at the evidence that was supplied and found that
indeed there were others, including some who supplied goods to
the plaintiffs themselves, describing these goods as 'Spanish
graphite'. Mr. Tulzapurkar also refers to the decision of a Single
Judge of this Court in Faber-Castell Aktiengesellschaft v M/s. Pikpen
Private Limited.15 One of the questions before the Bobde J was about
passing off and although an injunction was granted for other
reasons, on the question of passing off in respect of the word
'TEXTLINER', he held that the word itself was not adapted to
distinguish and was not even capable of distinguishing the goods of
particular manufacturer from those of another. Mr. Tulzapurkar
may be correct, after all, in saying that the words 'London Dairy'
are inherently non-descriptive, a combination of a disclaimed word
and a word publici juris to the extent that no exclusivity can attach to
it at all, even for ice-cream. Certainly it cannot be extrapolated to a
monopoly on all marks that merely sound similar but are used on
entirely distinct and different products in wholly distinct packaging
and with a different pricing.
22. I will assume, for the Plaintiff, that that the words "London
Dairy", when used in relation to ice-cream, might connote the
goods of the Plaintiff and the Plaintiff alone. But that is not what
the Defendants do. That is not what they do at all. They do not
2003 (4) Mh.L.J. 264
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vend or manufacture ice-cream. They vend nothing like it. They are
manufacturing a good that falls in the same Class but is entirely
distinguishable in every word and in every way except the phonetic.
That is surely not enough. What of the visual similarity? The
structural? The attendant circumstances? The lack of any
meaningful reputation or goodwill? The want of demonstration of
deceit or misrepresentation? The very many differences in colour,
trade dress, the goods themselves and their pricing? Is a court to
ignore all these only because of a phonetic similarity? No law says
that all this must be ignored, or that a solitary test of
pronounciation will suffice to defeat all else that weighs against.
23. It is only on the basis of this phonetic similarity -- there is no
other basis for this action at all -- that the Plaintiffs have sought
this injunction. I do not think that there is sufficient warrant for
such an injunction.
24. The Notice of Motion is dismissed. There will be no order as
to costs.
(G. S. PATEL, J.)
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