Bombay High Court
Mrs. Sharmilee Kapur And Anr vs Mr. Kiran Bharekar on 9 March, 2021
Bench: P. K. Chavan
901-ao-1092-2019.doc
Shailaja
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
CIVIL APPELLATE JURISDICTION
APPEAL FROM ORDER NO.1092 OF 2019
a/w
CIVIL APPLICATION NO.1238 OF 2019
1. Mrs. Sharmilee Kapur, ]
Age:- 35 years, Occ: Business, ]
R/at: 122/1, Lane-4, North Main ]
Road, Koregaon Park, Pune 411 001. ]
2. M/s. Sparsh Infratech Pvt. Ltd. ]
A company registered under the ]
Companies Act, 1956, ]
(now under Act of 2013) ]
Having its registered office at Pune, ]
Through its Director - ]
Mr. Nikhil Kapur ]
Age - 41 years, Occ: Business, ]
R/at:-122/1, Lane - 4, North Main Road, ]
Koregaon Park, Pune - 411 001. ]
Represented by constituted power of ]
Attorney holder ]
Mr. Milind Suresh Takale ]
Age: 48 years, Occupation : Service, ]
R/at: 33/38, Erandwane, Pune - 411 004.] Appellant
Vs.
Digitally signed by Shailaja S.
Shailaja S. Halkude Halkude
Date: 2021.03.11 11:39:31 +0530 1 of 18
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Mr. Kiran Bharekar, ]
Trading as TanMan, ]
Age:- Adult, Occ:- Business, ]
R/at: Bhukum, Off. Bharat Petrol Pump, ]
Pune 412 115, Maharashtra, India. ] Respondent
.....
Mr. Ojas Deolankar, for Appellant/Applicant.
Mr. Rohit Lanke a/w Mr. Rajesh A. More, for Respondent.
.....
CORAM : PRITHVIRAJ K. CHAVAN, J.
RESERVED ON : 4TH MARCH, 2021.
PRONOUNCED ON : 9th MARCH, 2021.
JUDGMENT:
1. Feeling aggrieved with rejection of an application-Exhibit 5 in
Regular Civil Suit No.01 of 2019 for temporary injunction by the Ad-
hoc District Judge-6, Pune on 19 th July, 2019, the appellant has
preferred this appeal under Order- XLIII, Rule-1 (r) of the Code of
Civil Procedure, 1908 (for short 'C.P.C').
2. Facts germane for disposal of the appeal can be summarized as
follows;
Appellant No.1 is a registered proprietor and owner of the
trademark "atmantan-be transformed". Appellant No.1 has given
exclusive right to use the said trademark to appellant No.2 since
2009. Appellant No.2 is a Company incorporated under the
Companies Act, 1956. Appellant No.2 is running a Luxury Wellness
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Destination in Mulshi, near Pune in the name and style as "atmantan
be transformed". It deals in human health, hygiene, beauty care and
hospitality. The appellants state that they have been providing
health, medical, spa services, hygienic and beauty care since long
time. They are well known for their high degree of professional
management at every level and quality of unmatched services.
3. It is the contention of the appellants that as it's trade name
itself suggests that it is a wellness resort in its retreat philosophy is an
amalgamation of concepts of atma (soul), mana (mind) and tan
(body). They have Doctors and experts in Ayurveda, Indian
Naturopathy, Chinese Medicine, Energy Healing, fitness,
Physiotherapy and cuisine. The trademark of the appellants is well
known and well perceived by the public with trust and conviction.
4. The appellants had filed an application for registration of
trademark for "atmantan be transformed" under class 44 under the
Trademark Act, 1999 bearing No.3084414 on 21st October, 2015. It is
a registered trademark under the Trademark Act, 1999 bearing
Certificate No.1615440.
5. According to the appellants, they have been recipients of many
awards due to their hard work, dedication and unmatched standards.
6. The respondent has moved an application for the trademark
registered under similar brand name viz; " TanMan" which bears
application No.3716564 under class:44. The respondent claims to be
the proprietor of the said trade name. The respondent has moved an
application for registration on 1st January, 2018. It is the contention
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of the appellants that the name of the respondent's mark is
deceptively similar and almost identical to that of the appellants. The
only difference between the two marks is that the respondent's mark
"TanMan" is a mere re-arrangement of appellants' mark 'atmantan be
transformed". The appellants contended that the respondent has very
smartly and with mala fide intention has adopted word "TanMan" as
his trade name. Adoption and use of the infringing mark is direct
infringement of the registered mark of the appellants. Such adoption
has created and is creating confusion among the customers and the
public at large.
7. A legal notice dated 22nd February, 2018 was served upon the
respondent directing him to refrain from using and displaying the
infringing mark and the associated name anywhere in public and not
to carry out activities or render services under the infringing mark.
8. Thus, according to the appellants, the respondent has caused
infringement and passing-off, of the goodwill of the trademark of the
appellants by using in the course of their trade/business a mark
which is identical with or deceptively similar to the appellants' mark
which is likely to cause confusion among the general public.
9. The respondent, however, has denied almost all the averments
of the plaint in his written statement and reply.
10. At the outset, the respondent has prayed for dismissal of the
suit itself as neither it discloses a cause of action nor there is proper
and correct valuation of the suit, in the sense, that though the
appellants have prayed for permanent injunction as well as damages,
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however, Court fees have been paid only for the relief of damages
and not for the relief of temporary injunction. Be that as it may.
11. The respondent has come with a specific case that there is
neither any infringement caused to the trademark of the appellants
nor there is passing off, of the goodwill of the trademark of the
appellants by using in the course of trade/business a mark which is
identical with or deceptively similar to the appellants' mark. It is
contended that the appellants are conveniently silent upon the
details of the alleged infringement or alleged passing off or the
alleged deception or alleged confusion being played upon the
customers and general public allegedly by the appellants.
12. Merely stating the words like 'infringement', passing off',
"deception" or "confusion" will not satisfy the mandate laid down by
the Trademark Act, 1999 for seeking a relief. There are no details
tendered by the appellants for the so-called apprehension they feel
against the action of the respondent. It is the contention of the
respondent that he never caused infringement of any
mark/logo/brand allegedly owned by the appellants or any other
person.
13. It is contended that the trademark owned by the respondent
does not bear any resemblance to any mark which may be owned by
the appellants by virtue of size, shape, colour, texture or any other
means and thus, it is impossible for a reasonable person to be
confused between the trademark owned by the appellants and any
alleged mark owned by the respondent.
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14. The respondent has contended that the appellants are allegedly
running a wellness resort and spa centre under alleged mark;
whereas the respondent is running an "Ayurvedic
Research/Treatment Centre" and as such there is complete
differentiation even between the business activities of the respective
parties.
15. According to the respondent, as the name suggests it is an
"Ayurvedic Research/Treatment Centre" owned by him which has in
its philosophy paid a tribute to the great Sage Bharadwaj who
brought ayurveda from the Gods to human health. Sage Bharadwaj
seeking the knowledge of ayurveda with his full concentration is thus
named "TANMANA MUNI and hence the Ayurvedic Research/
Treatment Centre owned by the respondent is named after him. As
such, respondent's mark is thus an invented mark and a coined word.
Use of the mark "TanMan" will not cause any confusion or deception
in the mind of the customers or clients in the course of trade. It is
contended that even a comparative reading of the words " atmantan
be transformed" and "TanMan" would make it crystal clear that there
is no infringement on the part of the respondent as the words are
neither similar nor identical in the light of the legal position also.
16. Heard Mr. Ojas Deolankar, learned Counsel for the appellants
and Mr. Rohit Lanke, learned Counsel for the respondent.
17. Learned Counsel for the appellants contends that the
registered trademark protects the appellants. There is quite similarity
in the trademark of the appellants and the mark of the respondent
which has caused infringement of the trademark of the appellants as
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it is deceptively similar, identical and confusing. He contends that
nature of the trade/business is similar to that of the appellants which
is being carried out at a location which is at distance of about 30 k.m.
That would definitely mislead the public. It is also the contention of
the learned Counsel that there is phonetic similarity in the trade
name of the appellants and that of the respondent.
18. The learned Counsel has drawn my attention to a fact that
when there is a google search, trade name of the respondent also
scrolls down along with that of the appellants which would definitely
affect not only the reputation and business of the appellants but also
it would affect the goodwill earned by the appellants by passage of
time.
19. In support of his submission, learned Counsel for the
appellants has placed reliance on a judgment in the case of Parle
Products (P) Ltd Vs. J.P & Co. Mysore , 1972 SCR (3) 289 and Rahul
Uttam Suryawanshi Vs. Sunil Manikchand Kasliwal, 2017 (1) Mh.
L.J., 315.
20. On the other hand, learned Counsel for the respondent while
supporting the impugned order of rejection of the relief of temporary
injunction to the appellants, highlighted following few aspects;
(a) the trademark is neither similar nor identical;
(b) the appellants run a resort while the respondent
run a research centre based on Ayurveda;
(c) the mark of the appellants is "atmantan be
transformed" whereas the mark of the respondent
is "TanMan" which is quite different having a
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different image, different phonetic with no visual
similarity.
(d) colour combination is not identical.
(e) services provided by the respective institutions
are quite different.
Lastly, it is contended that apart from an oral statement made before
the Court, there is no evidence, much less, documentary evidence to
show that the appellants are in fact suffering loss to their
business/trade because of the mark of the respondent.
21. In support of his submission, learned Counsel for the
respondent has placed reliance on a judgment of the Hon'ble
Supreme Court in case of Cadila Health Care Ltd Vs. Cadila
Pharmaceuticals Ltd., 2001 (3) Supreme 1.
22. Without going into the minute details of the merits of the case,
what is required to be seen is as to whether the order impugned
warrants interference in the appeal, in the sense, whether the learned
District Judge has rightly exercised his discretion by refusing to grant
equitable relief to the appellants?
23. At the outset, whenever there is a case of an infringement of
the registered trademark, broadly speaking what is required to be
considered is as to whether the person who alleged to have infringed
the mark uses in his course of trade a mark which is identical with or
deceptively similar to the trademark in relation to any goods in
respect of which the trademark is registered. The term "deceptively
similar" means a mark which so nearly resembles another mark as
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likely to deceive or cause confusion. For that, broad and essential
features are to be considered, meaning thereby, they should not be
placed side by side to find out if there are any differences in the
design, and if so, whether they are of such character as to prevent
one design from being mistaken for the other. If the impugned mark
bears such an overall similarity to the registered mark as would be
likely to mislead a person usually dealing with one to accept the
other if offered to him. These are broadly the observations of the
Hon'ble Supreme Court in case of Parle Products (P) Ltd Vs. J.P &
Co. Mysore 1972 SCR (3) 289.
24. It has also been observed in this judgment by the Hon'ble
Supreme Court which reads thus;
"In this case, the packets of biscuits
manufactured by the appellants and respondent
were practically of the same size, the colour
scheme of the two wrappers was almost the
same and the designs of both, though not
identical, bore such a close resemblance that
one could easily be mistaken for the other. If
one was not careful enough to note the peculiar
features of the wrapper on the plaintiffs' goods,
he might easily mistake the defendant's'
wrapper for the plaintiffs' if shown to him some
time after he had seen the plaintiffs' wrapper.
Though the trial court and the High Court had
concurrently found that the defendants'
wrapper was not deceptively similar to that of
the plaintiffs, the finding must be set aside as it
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was not arrived at on a proper consideration of
the law, 1294 F.H]
Durga Dutt v. Navaratna Laboratoties [1965] 1
S.C.R 737 followed.
Karly's Law of Trade Marks and Trade Names,
9th ed. Para 838, referred to".
25. In the said case, the trial Court after examining features on the
two wrappers and packets of the biscuits, took a view that there were
greater points of dissimilarity than of similarity between the two and
as such it was unlikely that the defendants' goods could be passed off
as and for the goods of the plaintiffs. The trial Court concluded that
there was no chance of a seller committing fraud on a customer and
an ordinary purchaser would certainly refuse to purchase the
defendants' goods if he was offered them as and for the plaintiffs'
goods. Thus, it is held by the trial Court that the plaintiffs had failed
to establish their case.
26. After considering the matter at length, the Hon'ble Supreme
Court observed that though the trial Court and the High Court had
concurrently found that the defendants' wrapper is not similar to that
of the plaintiffs, the findings must be set aside as they have not
arrived at on appropriate consideration of law. Thus, the ratio laid
down by the Hon'ble Supreme Court in the case of Parle Products (P)
Ltd (supra) can be distinguished on facts of the case in hand. The
registered trademark of the appellants and that of the respondent are
quite distinct, different and dissimilar in all aspects. There is no
question of a common man getting confused. The
registered trademark of the appellants is " atmantan be
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transformed" whereas, the trademark of the respondent is
"TanMan". If these two trademarks are compared, one would find
that the trademark owned by the appellants does not bear any
resemblance to that of mark of the respondent, either in size, shape,
colour, texture or any other means and, therefore, it would be too
hard to infer that a reasonable person would get confused or
deceived by the trademark of the respondent.
27. The trademark of the appellants is " atmantan be transformed"
and the trademark of the respondent is " TanMan". Photostat copies
indicate that those two words are not at all similar or deceptively
similar, in any manner, and there can be no confusion in the mind of
any person. For that matter, the appellants have not quoted any
incident as to how and when the customers or clients were in fact
confused by the trademark of the respondent. It is submitted by the
learned Counsel for the respondent that even the Website of the
appellants and that of the respondent are quite different and,
therefore, contention of the learned Counsel for the appellants that if
one scrolls the google, an impression is gathered that the
respondent's trademark is that of the appellants' one is without any
substance.
28. As already stated, logo of the respondent's trademark depicts a
lotus and a woman sitting with crossed legs. It can be seen that both
marks are spelled differently and even phonetic is also different.
There is no oral, visual or any other kind of similarity between two
marks owned by either of them.
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29. Looking to the class of clientele of the appellants, who avail
different kinds of services is altogether different from clientele of the
respondent which is an Ayurvedic Research Centre, which offers
Ayurvedic treatment and also carries out a research in the field of
Ayurvedic science under the brand name " TanMan " whereas the
appellants are running a resort viz; " atmantan be transformed" 30
kms away from the place of business of the respondent.
30. Thus, prima facie, no sane man would say that there is
infringement on the part of the respondent in respect of words
"TanMan" and "atmantan be transformed" as they are neither similar
nor identical when the two are compared.
31. In case of Parle Products (P) Ltd (supra), the Hon'ble Supreme
Court made a reference of Karly's Law of Trade Marks and Trade
Names, 9th Edition. The facts before the Hon'ble Supreme Court in
case of Parle Products (P) Ltd (supra) were quite peculiar, however,
ratio can be distinguished in view of the discussion made
hereinabove.
32. Learned Counsel for the appellants has also placed reliance on
a judgment of this Court in case of Rahul Uttam Suryawanshi Vs.
Sunil Manikchand Kasliwal, 2017 (1) Mh. L.J., 315. It would be
apposite to reproduce paragraphs 25, 26, 29 and 35 which read thus;
"25. It is not in dispute that the trade mark of the
plaintiff is not only registered but the user of the said
trade mark of the plaintiff is also prior in point of time
than the user thereof by the defendant.
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26. The Division Bench of this Court in case of M/s
National Chemicals and Colour Co. and ors vs. Reckitt
and Colman of India Limited and anr, AIR 1991 Bombay
76 has held that one cannot compare two trade marks by
putting them side by side and by trying to find out
similarities and differences in the two marks. It is held
that what one has to see is the overall impression which
the trade mark gives, because this is what members of
the public carry in their minds. I am not inclined to
accept the submission of the learned counsel for the
defendant that the trade name "SUPER MOR CHHAP"
used by the defendant is not deceptive or phonetically
similar to that of the trade mark and the trade name of
the plaintiff.
29. In my view, there is no substance in the submission
of the learned counsel for the defendant that the plaintiff
and the defendant are carrying on business of different
kinds of products and there is no effect on the business
of the plaintiff by virtue of the defendant selling his
products in the name of "SUPER MOR CHHAP". It is not
in dispute that the products sold by the defendant i.e.
lime plaster is an essential element of the building
construction. In my view, both the parties are thus
carrying on similar business. There is no substance in the
submission that the impugned order allowing the
plaintiff to use "MOR CHHAP" trademark exclusively is
contrary to sections 15, 17, 28 and 30 of the Trade
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Marks Act, 1999 or that the same is not permissible. In
my view, whether the plaintiff has to apply for
registration of the part of the trademark or for the entire
trademark being used by the plaintiff, the choice is of the
plaintiff and not the defendant.
35. In my view, the impugned trade mark of the
defendant is structurally, phonetically and visually
similar to the registered trade mark of the plaintiff and is
likely to cause confusion in the mind of the customers
with average intelligence and imperfect recollection as to
the source of origin of the goods. In my view, the
plaintiff as an owner of the registered trade mark, is thus
entitled to protection under section 29 of the Trade
Marks Act, 1999 in view of the defendant committing
infringement thereof".
Facts of the said case are quite different than that of the case in hand.
In the said case, impugned trademark of the defendants was
structurally, phonetically and visually similar to that of the registered
trademark of the plaintiffs which is likely to cause confusion in the
minds of the customers with average intelligence and imperfect
recollection as to the source of origin of the goods. Here, in this case,
the impugned trademark of the respondent, as already stated, is
neither phonetically nor visually similar to that of the trademark of
the appellants and, therefore, this ratio would not be of any
assistance to the appellants.
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33. On the other hand, the learned Counsel for the respondent has
placed reliance on a judgment of the Hon'ble Supreme Court in case
of Cadila Health Care Ltd Vs. Cadila Pharmaceuticals Ltd., 2001 (3)
Supreme 1. Medicinal product was involved in the said case. Action
was alleged regarding passing of trademark of medicinal product. A
suit for injunction was filed and pending the suit, a prayer for interim
injunction is made. In that case, the appellant was making
"FALCIGO" and the respondent was making " FALCITAB" medicine.
Both for cure of same disease. The trial Court refused temporary
injunction which was upheld by the High Court. The Hon'ble
Supreme Court refused to interfere in the concurrent findings of the
trial Court and the High Court. It is held thus;
"Held: When the special leave came up for hearing,
detailed arguments were heard and, for the reasons to be
given, this Court did not interfere with the orders passed
by the courts below but gave directions regarding
expeditious disposal of the suit. In this judgment, we
give the reason for not interfering and also set out the
principles which are to be kept in mind while dealing
with an action for infringement or passing off specially in
the cases relating to medicinal products. The reason for
not interfering with the order appealed against was that
there may be possibility of evidence being required on
merits of the case and directions were given for speedy
trial of the suit. Expression of opinion on merits by this
Court at this stage was not thought advisable".
Relevant portion of paragraphs 13 and 14 reads thus;
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"As was observed by Parker, J. in Re Pianotist Co. s
Application (1906) 23 RPC 774 which was also a case of
the comparison of two words-
"You must take the two words. You must judge
them, both by their look and by their sound. You must
consider the goods to which they are to be applied. You
must consider the nature and kind of customer who
would be likely to buy those goods. In fact you must
consider all the surrounding circumstances; and you
must further consider what is likely to happen if each of
those trade marks is used in a normal way as a trade
mark for the goods of the respective owners of the
marks" (p.777)
For deceptive resemblance two important
questions are: (1)who are the persons whom the
resemblance must be likely to deceive or confuse, and
(2)what rules of comparison are to be adopted in judging
whether such resemblance exists. As to confusion, it is
perhaps an appropriate description of the state of mind of
a customer who, on seeing a mark thinks that it differs
from the mark on goods which he has previously bought,
but is doubtful whether that impression is not due to
imperfect recollection.
Paragraph 14;
Secondly, while dealing with the question of burden of
proof in an action for infringement of trade mark, this
Court in Durga Dutt Sharma's case (supra) held as under:
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"When once the use by the defendant of the mark which
is claimed to infringe the plaintiff's mark is shown to be
"in the course of trade", the question whether there has
been an infringement is to be decided by comparison of
the two marks. Where the two marks are identical no
further questions arise; for then the infringement is made
out. When the two marks are not identical, the plaintiff
would have to establish that the mark used by the
defendant so nearly resembles the plaintiffs registered
trade mark as is likely to deceive or cause confusion and
in relation to goods in respect of which it is registered
(Vide S. 21). A point has sometimes been raised as to
whether the words "or cause confusion" introduce any
element which is not already covered by the words "likely
to deceive" and it has some times been answered by
saying that it is merely an extension of the earlier test
and does not add very materially to the concept indicated
by the earlier words "likely to deceive". But this apart, as
the question arises in an action for infringement the onus
would be on the plaintiff to establish that the trade mark
used by the defendant in the course of trade in the goods
in respect of which his mark is registered, is deceptively
similar. This has necessarily to be ascertained by a
comparison of the two marks - the degree of resemblance
which is necessary to exist to cause deception not being
capable of definition by laying down objective
standards".
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34. Having taken into account the decisions referred hereinabove
and in view of the overall discussions, I am of the considered view
that no case is made out warranting interference in the impugned
order. Consequently, the appeal being devoid of merits, stands
dismissed. Costs to be the costs in cause.
35. In view of dismissal of the appeal, Civil Application No.1238 of
2019 does not survive, hence stands disposed of.
[PRITHVIRAJ K. CHAVAN, J.]
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