Ansari Bilal Ahmadlal Mohd vs Shafeeque Ahmed Mohammad Sayeed
2018 Latest Caselaw 362 Bom

                                  1/18                                                     comap94.17.sxw


         IN THE HIGH COURT OF JUDICATURE AT BOMBAY
               ORDINARY ORIGINAL CIVIL JURISDICTION

                      COMMERCIAL APPEAL NO. 94 OF 2017
                                     IN
                    NOTICE OF MOTION (L) NO. 2311 OF 2016
                                     IN 
                           SUIT (L) NO. 810 OF 2016


 Ansari Bilal Ahmadlal Mohd.
 Indian National trading under name 
 and style of JBM Herbal Pharmacy
 Proprietary Firm having address
 at 722, Dargha Diwan Shah,
 Hafiz Nagar, Bhiwandi 42,
 Dist. Thane.                                                                   ...   Appellant

          V/s.

 Shafeeque Ahmed Mohammed Sayeed
 an adult, Indian inhabitant
 trading under name and style
 M/s. Nageena Ayurvedic Pharmacy,
 181, Attarwala Compound,
 Near Apsara Talkies, Kalyan Road, 
 Bhiwandi, Thane.                                                               ...   Respondent


 Mr. M.A. Khan for the appellant.

 Mr. Alankar Kirpekar, Ms. Jaya Manghwani, Shekhar Bhagat i/b. 
 MAG Legal for respondent.  




::: Uploaded on - 12/01/2018                                     ::: Downloaded on - 13/01/2018 02:07:34 :::
                                   2/18                                                     comap94.17.sxw



                           CORAM :          NARESH H. PATIL  AND
                                            R.G. KETKAR, JJ.

         JUDGMENT RESERVED ON: 23rd November, 2017.
     JUDGMENT PRONOUNCED ON: 12th January, 2018.



 JUDGMENT (PER NARESH H. PATIL, J)

Admit. Heard finally by consent of parties.

2. This appeal is directed against the order passed by the learned

Single Judge of this Court (Coram: G.S. Patel, J) in Notice of Motion

(L) No. 2311 of 2016 in Suit (L) No.810 of 2016 dated 26th October,

2016. The appellant is original defendant. The respondent-plaintiff

filed Suit in the Ordinary Original Civil Jurisdiction of this Court

invoking the provisions of Trade Marks Act, 1999 praying for various

reliefs as described in the Suit. Pending hearing of the Suit a Notice

of Motion was filed by the plaintiff for interim reliefs which are

incorporated in impugned order in paragraph 26 by the learned Single

Judge. The defendant filed reply to the said Notice of Motion. The

learned Single Judge granted prayer clauses (a), (b),(c) and (d) of the

3/18 comap94.17.sxw

Notice of Motion.

3. The plaintiff filed a Suit for infringement of registered trade

marks being a label mark of "SUKOON OIL" bearing registration

no.1421905 in class 03 and also 1377947 in class 05. The Suit was

filed for infringement of copyright in "SUKOON" label.

4. The plaintiff stated that in the year 1993 his father Mohammad

Sayeed Gulam Husaain Attarwale independently created a distinctive

label i.e. "SUKOON OIL" and "NAGEENA SUKOON OIL". The

plaintiff's father started using the label since the year 1993 and

manufacturing and marketing "SUKOON OIL" used as a pain

relieving massage oil under the said distinctively designed label and

mark. The said business was carried out by the plaintiff's father in

the name and style of M/s. Nageena Ayurvedic Pharmacy. The

plaintiff's father manufactured products under the style "NAGEENA

SUKOON OIL".

4/18 comap94.17.sxw

5. It is the plaintiff's case that on 12 th February, 1994 plaintiff's

father applied for trade mark registration of "SUKOON" label. The

plaintiff's father expired on 4th June, 2000. The plaintiff's pharmacy

has been manufacturing labels, photocopies of which were produced on

record alongwith invoices raised by M/s. Super Arts. The plaintiff

applied for registration of trade mark "SUKOON" label in class 05 on

17th August, 2005. The said application was numbered as 1377947.

The application was accepted and advertised with condition that

registration of this trade mark shall give no right to the exclusive use

of device of lungs and word OIL and letters N, A and P. It is

plaintiff's case that said trade mark was registered in class 05 after

completion of entire procedure. The plaintiff has also applied for word

mark "SUKOON" separately in class 05 and the said application is

pending registration. The plaintiff states that he is registered

proprietor of word mark "NAGEENA" by virtue of registration

No.1838403 in class 03.

6. The plaintiff further stated that in the month of July 2016 it

5/18 comap94.17.sxw

came to the plaintiff's knowledge that product under the mark

"SUKOON" is sold by one JBM Herbal Pharmacy in Mumbai.

Plaintiff made research in this regard and found that defendant had

also made an application for registration of "HEENA SUKOON OIL"

device mark claiming user since 1st June, 2012. The plaintiff's enquiry

revealed that defendant was engaged in the manufacturing, marketing

and selling a similar Ayurvedic/Unani medicine under the Trade Mark

"SUKOON" and also under the deceptively similar label bearing the

word "HEENA" written and depicted in similar manner to the word

"NAGEENA", plaintiff's label.

7. The plaintiff states that by manufacturing, selling and/or

offering for sale the impugned product, the defendant is violating

plaintiff's valuable, intellectual and intangible proprietary rights

contained in the registered trade mark "SUKOON" label and/or its

essential ingredients i.e. word "SUKOON". It is stated that defendant

has deliberately adopted the impugned trade mark with malafide

intention of passing off their product as and for that of the plaintiff.

6/18 comap94.17.sxw

The plaintiff placed on record necessary certificates issued by the

trade mark authorities, invoices, photocopies of labels, examination

report and affidavits in support of the contentions.

8. The defendant filed reply to the Notice of Motion. According to

defendant the calligraphy used by defendant company is of different

style compared to that of plaintiff's label which is described in

Paragraph-3 by the defendant as under:

(i) As Plaintiff label display lungs and whereas label of Defendant display full skeleton.

(ii) Representation is different.

(iii) Plaintiff label is totally different than that of Defendant,

(iv) in no manner both the bottles i.e. bottle of Plaintiff and Defendant is likely create confusion,

(v) the word "SUKOON" reflects the nature of the product,

(vi) The word "SUKOON" is written in one the bottle of the Defendant is different in fonts, colour and style as compare to

7/18 comap94.17.sxw

written on the bottle of the plaintiff.

9. According to defendant-appellant herein, there was no confusion

or deception since the product of plaintiff and defendant have different

looks. These products are mainly used by mill and or textile loom

workers. The essential features of the label marks is the word mark

and not the colour combination. Since the two trade marks are entirely

different, the plaintiff cannot seek protection on the ground of usage of

the word "SUKOON" as the same is not even registered at the behest

of the plaintiff. It is submitted that word "SUKOON" on the product

is being used in the descriptive sense and not as a trademark. The

claim of the plaintiff with regard to the colour combination and get up

of the label being original artistic work is absolutely false. Defendant

referred to provisions of Section 2(zd) and Section 30(2) of the Trade

Marks Act, 1999. On the claim of passing off, defendants submits that

since the expression used by the defendants is bonafide expression of

character and quality of its own goods, the use of the said expression

by the defendant is protected under Section 35 of the Trade Marks

Act, 1999 and according to the defendant the plaintiff has failed to

8/18 comap94.17.sxw

make out a prima-facie case of passing off. The defendant submitted

that plaintiff failed to establish that the trade label in question is a

deceptively similar to the plaintiff's label. The word "SUKOON" is

used by defendant in association with "HEENA" which is distinctive

in nature. The word "HEENA" is used by the defendant since the

year 2012. The word "SUKOON" is common to trade for massage oil

as many parties are using the same or a similar mark for massage oil.

It is submitted that registration of label mark titled "SUKOON OIL"

under class 3 has a disclaimer on the other registrations of the marks

and labels in respect of usage of device of Lungs and word OIL and

letters N, A and P which is imposed by the Registrar of Trademarks.

In this sense it was denied that "SUKOON" trademark has become

distinctive with the ayurvedic preparation of plaintiff and is

exclusively associated with the plaintiff.

10. Learned Counsel appearing for the appellant-defendant

submitted that there is an error on the part of the learned Single

Judge in allowing the Notice of Motion. The defendant has suffered a

9/18 comap94.17.sxw

grave loss and injury due to restrictive orders passed by the learned

Single Judge of this Court which has affected his business. Learned

Counsel submitted that there is nothing distinctive in the label mark

of the plaintiff. The registration of the plaintiff is a device mark.

Colour combination of plaintiff's label and defendant's label are

entirely different. The design and description of the words are

entirely different and dissimilar, therefore, there is no question of

defendant carrying his trade transaction with the product "HEENA

SUKOON OIL" with a deceptively similar label as of the plaintiff

which is sold in the market as "NAGEENA SUKOON OIL". Learned

Counsel has referred to the certificate issued by the Trademark

authorities, the photocopies of labels, applications made by the

plaintiff and defendant for getting marks registered.

11. The learned Counsel appearing for respondents submitted that

the appellant-defendant is applying wrong test in trying to establish

that there is no deceptive similarity. The label of the plaintiff is an

essential prominent feature which is "SUKOON". The plaintiff has

10/18 comap94.17.sxw

applied separately for registration of word "SUKOON". The appellant

is using this mark since the year 1993. Counsel submitted that the

learned Single Judge has gone through the entire record and after

taking into consideration the material placed on record and

submissions advanced has reached conclusions which do not call for

interference by this Court. By placing reliance on the case of

Wander Ltd. & anr. v/s. Antox India P. Ltd. 1 the learned Counsel

submits that Appellate Court will not reassess the material and seek

to reach a conclusions different from the one reached by the Court

below solely on the ground that if it had considered the material at the

trial stage it would have come to a contrary conclusion. It is

submitted that the learned Single Judge has exercised its discretion

in a judicious manner and appellant has failed to establish that the

interlocutory order granted by the learned Single Judge was contrary

to the established principles.

12. We have perused the record placed before us, impugned order,

judgments cited and considered the submissions advanced. We have

1 1990 (Supp) Supreme Court Cases 727.

11/18 comap94.17.sxw

also seen the original sample bottles of the NAGEENA SUKOON

OIL and HEENA SUKOON OIL. The learned Single Judge observed

that alongwith plaint, statement of year-wise purchases and sales

from the year 2002-2003 to 2014-2015 was annexed by the plaintiff.

The sale of the product had risen considerably from Rs.29,208/- in

2002-2003 to the extent of Rs. 1.52 Crores in the year 2014-2015.

The learned Single Judge had even described in detail the

discrepancies in labels of both the parties. Prima-facie case was

noticed on the material placed on record, by the learned Single Judge.

13. It is the defendant's contention that SUKOON word cannot be

used by the plaintiff in distinctive sense as everybody uses the word

"SUKOON" not in a distinctive sense but in a common generic sense

of the word. Therefore, plaintiff cannot claim exclusivity of the word

"SUKOON". Taking into consideration the record placed before us,

the registration obtained by the plaintiff and the label marks, we find

that the plaintiff has prima-facie established that the defendant has

been using the label marks used by the plaintiff of his product

12/18 comap94.17.sxw

"HEENA SUKOON OIL" which is deceptively similar to the

plaintiff's product known and styled as "NAGEENA SUKOON OIL".

The plaintiff has placed on record convincing material to show that

they have been dealing with this product since the year 1993. The

device label marks are printed at the behest of the plaintiff. Trade

marks registrations are obtained, certificate of which is produced on

record. The defendant has also applied for the registration of trade

mark recently in the year 2013. According to defendant, word

"HEENA" is used by the defendant since the year 2012. It is also

noticed that rise in sale of plaintiff's product gives a reasonable cause

to the plaintiff to raise claim of infringement of a trade mark and

passing off against the defendant. On the principle of interference in

the discretionary orders passed by the trial Court and test applied for

in case of passing off and infringement of the trade mark, the learned

Counsel appearing for the respondent-plaintiff has placed reliance on

following case laws:

i) Mr. Laxmikant V. Patel v/s. Chetanbhai Shah & anr.2

2 (2002) 3 SCC 65

13/18 comap94.17.sxw

ii) Siddhant Ice Creams Pvt. Ltd. & ors. v/s. Tanco Enterprises & ors.3

iii) Alaknanda Cement Private Limited v. Ultratech Cement Limited4

iv)Automatic Electric Limited v/s R.K. Dhawan & anr.5

v) Wander Ltd. & anr. v/s. Antox India P. Ltd. (cited supra)

vi)Corn Products Refining Co. v/s. Shangrila Foodo Products

Ltd.6

vii) Indian Hotels Company Ltd. & anr. v/s. Jiva Institute of Vedic Science & Culture7

viii) Pidilite Industries Limited v/s. Jubilant Agri &

Consumer Products Limited8

3 Notice of Motion 1148/11 in Suit 820/11 4 2011 SCC OnLine Bom 1487 5 1999 SCC OnLIne Del 27 6 (1960) 1 SCR 968 7 2008(37) PTC 468 Delhi 8 2014(57) PTC 617 {Bom}

14/18 comap94.17.sxw

14. In the case of Wander Ltd. (cited supra), the observations are

based on principles in respect of interference by the Appellate Court

in discretionary orders passed by the trial Court. The relevant portion

of Paragraph 14 in the said judgment is reproduced as under:

"14. The appeals before the Division Bench were

against the exercise of discretion by the Single Judge.

In such appeals, the appellate court will not interfere

with the exercise of discretion of the Court of first

instance and substitute its own discretion except where

the discretion has been shown to have been exercised

arbitrarily, or capriciously or perversely or where the

court had ignored the settled principles of law

regulating grant or refusal of interlocutory injunctions.

An appeal against exercise of discretion is said to be an

appeal on principle. Appellate court will not reassess

the material and seek to reach a conclusion different

from the one reached by the court below if the one

reached by that court was reasonably possible on the

material. The appellate court would normally not be

justified in interfering with the exercise of discretion

15/18 comap94.17.sxw

under appeal solely on the ground that if it had

considered the matter at the trial stage it would have

come to a contrary conclusion. If the discretion has been

exercised by the trial court reasonably and in a judicial

manner the fact that the appellate court would have

taken a different view may not justify interference with

the trial court's exercise of discretion..........".

15. In the case of Laxmikant V. Patel (cited supra), the Apex

Court observed in Paragraph 8 as under:

"8. It is common in trade and business for a trader or a

business man to adopt a name and/or mark under which

he would carry on his trade or business. According to

Kerly (Law of Trade Marks and Trade Names, 12 th Edn.,

para 16,49), the name under which a business trades will

almost always be a trade mark (or if the business provides

services, a serice mark, or both). Independently of

questions of trade or service mark, however, the name of a

business (a trading business or any other) will normally

have attached to it a goodwill that the courts will protect.

16/18 comap94.17.sxw

An action for passing-off will then 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 a confusion between the two

businesses. If this is not made out there there is no case.

The ground is not to be limietd to the date of the

proceedings, the Court will have regard to the way in

which the business may be carried on in the future, and to

its not being carried on precisely as carried on at the date

of the proceedings. Where there is probability of confusion

in business, an injunction will be granted even though the

defendants adopted the name innocently."

16. In the case of Alaknanda Cement (cited supra) the Division

Bench of this Court referred to Paragraph 28 of the judgment in the

case of Kaviraj Pandit Durga Dutt Sharma v/s. Navaratna

Pharmaceutical Laboratories {AIR 1965 Supreme Court 980} in which

the Supreme Court has observed that:

"28. Expressed in another way, if the essential features

of the trade mark of the plaintiff have been adopted by the

17/18 comap94.17.sxw

defendant, the fact that the get-up, packing and other

writing or marks on the goods or on the packets in which

he offers his goods for sale show marked differences, or

indicate clearly a trade origin different from that or the

registered proprietor of the mark would be immaterial;

whereas in the case of passing off, the defendant may

escape liability if he can show that the added matter is

sufficient to distinguish his goods from those of the

plaintiff."

17. During the course of hearing it was submitted that majority of

consumers of these products are labourers from Bhiwandi area. The

test to be applied in the case is of a person of average intelligence and

imperfect recollection. The device, label mark has to be seen in its

entirety and after taking into consideration the facts of the case, a

decision has to be arrived at as to whether the mark of the defendant

is deceptively similar to the plaintiff's one.

18. From the record placed before us and conclusion drawn by the

18/18 comap94.17.sxw

learned Single Judge and after considering the submissions advanced,

we are convinced that a strong prima-facie case of passing off has been

made out by the plaintiff. We do not notice any arbitrariness in the

view adopted by the learned Single Judge. The issues have been dealt

with by the learned Single Judge in a reasonable and judicious

manner. In exercise of our appellate jurisdiction, we do not find that

appellant-defendant has made out a case for interference. There is no

merit in the appeal. The Appeal stands dismissed.

         (R.G. KETKAR, J)                                         (NARESH H. PATIL, J.)

   L.S. Panjwani, P.S.