Bombay High Court
Intouch Leather House India Pvt. ... vs Ishaan Overseas on 21 November, 2016
Bench: G.S. Patel
Intouch Leather House India Pvt Ltd v Ishaan Overseas
225-NMS1318-16.DOC
ATUL
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION NO. 1318 OF 2016
IN
SUIT NO. 357 OF 2016
INTOUCH LEATHER HOUSE INDIA
PVT LTD
A company incorporated under the
Companies Act, 1956 having its registered
office at 37, Altamont Road, Maskati Corner,
Kemp's Corner, Mumbai 400 026 ... Plaintiff
versus
ISHAAN OVERSEAS
Through its proprietor, Mr. Manjit Singh
Sandhu at Flat No. 4, 1st Floor, Bhavna
Building, N.S. No.1, Plot No. 61,
Vallabhnagar Society, Near Cooper
Hospital, Opposite Nanak Niwas, Mumbai
400 056 ... Defendant
A PPEARANCES
FOR THE PLAINTIFF Mr. B. Poojari, i/b Asian Patent Law.
FOR THE DEFENDANT Mr. Shoaib I. Memon.
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Intouch Leather House India Pvt Ltd v Ishaan Overseas
225-NMS1318-16.DOC
CORAM : G.S.Patel, J.
DATED : 21st November 2016
ORAL JUDGEMENT:
1. I have heard Mr. Poojari for the Plaintiff and Mr. Memon for
the Defendant at some length.
2. The action is in trade mark infringement and passing off. The
Plaintiff has registration of a device mark as also of a word mark,
ESBEDA. The Plaintiff claims to have adopted it in 2006. It is used
for designer leather products such as handbags, luggage, purses and
wallets. The word ESBEDA is written in a special slab serif font in
capitals. There is a device which looks like a stylized lower-case "e"
with a mirror image, the two being joined at the centre.
Representations of the marks are annexed,1 as are registration
certificates under various classes.2
3. One Maniben Shamji Bheda used to do business in leather
products in the name and style of M/s Intouch Leather. In
September 2006, her son Satish Shamji Bheda coined the mark,
combining, the Plaintiff says, the phonetic of the first letter 'S' of
his first and middle names and a phonetic equivalent of his surname,
Bheda, to form 'ESBEDA'. He also conceived, designed and
developed the artwork in the logo of the stylized lower-case 'e' and
its mirror image joined in the centre. Another label superimposing
the device on the word mark came later, developed with the help of
1 Plaint, Exhibits "A1" and "A2", pp. 31-32.
2 Plaint, Exhibits "C1" to "C7", pp. 36 to 55.
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commercial artists. Applications for trade mark registration were
made on 12th September 2006 in Classes 18 and 25. On its
incorporation, the Plaintiff took over the business of M/s Intouch
Leather. On 26th June 2009, the Plaintiff filed application No.
1833696 for registration of the 'e'/mirror image logo in Class 18,
claiming user since 2006. The first two registrations in the name of
Mrs. Maniben Shamji Bheda were assigned to the Plaintiff on 3rd
February 2010. The Plaintiff has made the necessary applications to
have itself recorded as the registered proprietor of the earlier two
marks. It now claims to be the registered proprietor of all three
marks.
4. The Plaintiff says that it has used the marks continuously and
without interruption. There are annexed to the plaint copies of the
year-wise turnover.3 Mr. Poojari claims that the turnover even for
the last year is considerable, in excess of Rs. 38 crores, and that the
Plaintiff thus has garnered goodwill and reputation in the Esbeda
word and device marks. I must note that while the Chartered
Accountant's certificate does not specifically attest to this turnover
being only in respect of this mark and the logo or device. I will,
however, proceed on the footing that these figures are indeed of
sales of products under this mark. Copies of various booklets,
brochures and advertisements are also annexed.4
5. The Plaintiff's complaint is that it found in July 2015 that the
Defendant had adopted a mark which the Plaintiff claims is
3 Plaint, Exhibit "D", pp. 56-57.
4 Plaint, Exhibits "E" & "F", pp. 58-99.
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deceptively and confusingly similar to that of the Plaintiff. A
representation of this mark is annexed.5 The mark in question is
EDMODA. The device adopted is of the numeral "3" along with its
mirror image, both interlinked and set in a green and gold ring. The
Defendant uses this mark on ladies' bags, travelling bags and school
bags. The Plaintiff found that the Defendant had applied under
No.2945258 in Class 18 on 20th April 2015 for registration of this
mark, claiming user since that date. The Plaintiff sent cease and
desist notices through its lawyers to the Defendant on 28th July
2015, 2nd September 2015, 24th September 2015 and 6th October
2015.6
6. Mr. Poojari would have it that the Defendant's mark is
phonetically, visually and structurally the same as that of the
Plaintiffs. It is difficult to accept this. Merely because each has six
letters, and each begins with "E" and ends with "A", it is not
possible to conclude that the well-heeled and affluent consumers of
the Plaintiff's products who typically form its consumer base would
be unable to tell one from the other, or that in the words of a
Division Bench of this Court in M/s Hiralal Parbhudas v M/s Ganesh
Trading Co & Ors7 would be cast into a state of wonderment.
Although Mr. Poojari is correct in saying that the offending mark
need not be an exact replica,8 this is not the issue here. Visually and
5 Plaint, Exhibit "G", p. 100.
6 Plaint, Exhibits "H-1" to "H-4", pp. 101-109. One of these letters was
returned undelivered; the others were not, though the
acknowledgement cards were not returned either.
7 AIR 1984 Bombay 218.
8 Ruston & Hornsby Limited v The Zamindara Engineering Co., (1970) 2
SCR 222.
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phonetically certainly the two marks are sufficiently distinct. Mr.
Memon also points out that the Plaintiff itself uses the mark in a
variety of different ways and not in a single consistent manner. It
does not confine itself to the registered mark. The Defendant's
mark is in all capitals, but that is just about where all similarity ends.
The font and stylization are distinct, as is the device and its
placement. I do not believe it is correct to move backward from a
presumption of confusion -- of which I have no material at all in any
case -- and then assume, ex hypothesi, that there is a similarity. The
test of similarity must be applied first, and one must then proceed to
the other tests.
7. As to passing off, that is a distinct cause of action, one in the
tort of deceit. To succeed on that cause of action, the mark
complained must at least prima facie be shown to be calculated to
deceive even though actual confusion need not be shown. The three
probanda that constitute the so-called Classical Trinity set out by
Oliver LJ in Reckitt & Colman Products Ltd v Borden Inc.9 are to be
applied: (i) goodwill owned by a claimant; (ii) misrepresentation;
and (iii) damage to that goodwill. This trifecta places on a plaintiff
the burden of proving goodwill in its goods or services, trade dress,
brand, mark or even the thing itself. A plaintiff must also show false
representation (it matters not that this is unintended) to the public
that leads it to believe that the goods or services of the defendant are
those of the plaintiff. Fraud is not a necessary element.10 The test of
deception or its likelihood is that of the ordinary consumer, she of
9 [1990] 1 All ER 873.
10 Laxmikant V. Patel v Chetanbhai Shah & Anr., (2002) 3 SCC 65.
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average intelligence and imperfect recollection. Here again, the
similarity tests used in infringement actions have a role to play: a
court will look to the aural, visual and conceptual similarity. A
plaintiff need not prove actual or special damage; a reasonably
foreseeable probability is sufficient. The Plaintiff's consumers,
whatever their mental acuity, are almost certainly of more than
average wealth and education and will undoubtedly be able to tell
one product from the other. The three probanda in the classical
trinity case all must be satisfied. Absent any one, there can be no
question of an injunction in passing off. If there is no similarity or
likelihood of confusion, and there is nothing to show any element of
deceit on the Defendant's part, then no injunction in passing off can
follow.
8. I am thus unable to find for the Plaintiff on either cause of
action. The Notice of Motion is dismissed. There will be no order as
to costs.
(G. S. PATEL, J.)
21st November 2016
