Bombay High Court
Mangalam Organics Ltd vs N Ranga Rao And Sons Pvt Ltd on 3 September, 2025
2025:BHC-OS:14413
IAL-7446-2025.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (LODGING) NO. 7446 OF 2025
IN
COMMERCIAL IP SUIT NO. 194 OF 2025
Mangalam Organics Ltd ... Applicant/
Org Plaintiff.
Versus
N Ranga Rao And Sons Pvt Ltd ... Defendant
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Adv. Hiren Kamod a/w Adv. Anees Patel, Usha Chandrasekhar, Avisha
Mehta and Rajamtangi i/by Suvarna Joshi for the Plaintiffs.
Adv. Rashmin Khandekar a/w Adv. Anand Mohan, Rahul Dhote, Shwetank
Tripathi, Nipun Krishnaraj and Vidit Desai i/by ANM Global for the
Defendant.
------------
Coram : Sharmila U. Deshmukh, J.
Reserved on: July 11, 2025.
Pronounced on : September 3, 2025.
ORDER:
1. This is an action for infringement of trade mark and passing off.
2. The case of the Plaintiff is that in or around March, 2017, the
Plaintiff coined and conceived the mark 'CAMPURE' for use in respect
of various camphor-based products and camphor derived products
such as deodorants, room fragrancing preparations, air fragrancing
preparations, soaps, hair conditioners, hair lotions and sanitary
preparations being toiletries wherein camphor is the main ingredient.
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The Plaintiff conceived and designed a unique and stylized logo
bearing "CAMPURE" as one of its leading and essential
features. The Plaintiff applied for registration of the mark "CAMPURE"
and under Class 3, 4 and 5 and obtained registrations
which are valid and subsisting.
3. It is submitted that in the year 2014, the Plaintiff launched its
camphor product bearing a unique cone shape trade dress wrapped in
non-woven fabric, which trade dress was registered in Class 5 and was
launched under the Plaintiff's trade mark "MANGALAM". The Plaintiff
has been using the trade mark "CAMPURE" and since the
year 2017 in respect of its cone shaped camphor product. In order to
demonstrate the goodwill and reputation, the statement of sales
figure and the advertisement expenses are set out in paragraph 11 of
the plaint and for the period from 2017 to 2024, the sales figure is Rs.
1,10,23,58,982/- and Rs. 29,25,90,351/- respectively. It is submitted
that the Plaintiff maintains his website www.houseofmangalam.com
wherein the Plaintiff's goods inter alia bearing the said trade mark
"CAMPURE"/ are prominently promoted and offered for
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sale. The Plaintiff's trade mark has established a distinct identity in the
market and the Plaintiff has acquired valuable statutory and common
law rights in their registered trademarks.
4. In or around December, 2022, the Plaintiff learnt from market
sources that the Defendant was preparing to launch its cone shape
camphor product under the name "Air Kapur Camphor Cone" in a trade
dress potentially identical with the Plaintiff's cone shape camphor
products. The Plaintiff addressed legal notice dated 2 nd December,
2022 to the Defendant conveying concerns over the Defendant's
intention to launch of cone shape camphor product in identical shape
as that of the Plaintiff. Vide reply dated 5 th December, 2022, the
Defendant contended that the Defendant's camphor products are sold
under the Defendant's registered trade mark. It was stated that the
Plaintiff does not hold any trade mark registration in respect of cone
shape trade dress and the Plaintiff's trade mark Application No.
4465571 is facing opposition and the Plaintiff's trade mark no 5339527
stands liable to be refused for being non-distinctive as per the
Registrar of Trade Marks examination report. The Plaintiff has stated
in the plaint that the Plaintiff's cone shaped trade dress is not the
subject matter of the present suit.
5. It is stated that subsequent to the Defendant's reply dated 5 th
December, 2022, the Plaintiff did not come across any cone shape
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camphor product of the Defendant. In or around July-2024, while
conducting general due diligence on the trade mark registry's online
records, the Plaintiff came across Defendant's trade mark registration
for the impugned mark "AIR KARPURE" bearing no. 4732154 dated 4th
November, 2020 in Class 05 applied on proposed to be used basis
which was identical/deceptively similar to the Plaintiff's trade mark
"CAMPURE". The Plaintiff also came across the Defendant's website
www.karpure.in which revealed that the Defendant is using the mark
"AIR KARPURE" as device mark wherein the word 'AIR'
is written in the smaller font about the word "KARPURE" written in
larger font in respect of camphor products such as air fresheners, "air
pouch", camphor tablets, camphor mosquito repellents, etc. as also the
device mark is used in respect of range of personal care
products.
6. On 1st August, 2024, the Plaintiff applied to the trade mark
registry seeking rectification of the register/cancellation of the
Defendant's impugned registration for the mark "AIR KARPURE" and
on 20th January, 2025 the Defendant filed its counter statement to the
Plaintiff's rectification Application contending that the impugned mark
'AIR KARPURE' was adopted by the Defendant in 2020 and commenced
its use since 2022.
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7. In the affidavit-in-reply, it is submitted that the Defendant was
initially established as proprietary concern in 1948 by the grandfather
of the current director of the Defendant which was then converted into
partnership firm and subsequently into private limited company on
23rd December, 2014. The Defendant in course of his business coined
and adopted various distinctive marks such as CYCLE, CYCLE BRAND
THREE IN ONE, WOODS, LIA, HERITAGE, RHYTHM, etc., and the house
mark "Cycle" is acknowledged as well known mark by the Madras High
Court as well as published in the list of well known trade marks.
8. The Defendant has used the tagline in respect of its products in
the fragrance industry such as "Everyone has a reason to pray", "Pray
for India", "Bhagwan Hai", "Purity of Prayers" which is the foundation
on the basis of which the word pure has been used as integral part of
the Defendant's promotional campaign. The Defendant has been
granted registration for the word mark "Cycle Pure" as well as the
device mark along with tagline in Class 16, 3, 41 and 35. In
October/November, 2020, the Defendant honestly coined and adopted
the Defendant's mark 'KARPURE'/ 'AIR KARPURE' for use of the same
in relation to inter alia sanitary preparations, disinfectants, foams,
sprays, liquid etc falling in Class 5 and 11. The Defendant's mark
"KARPURE" was coined based on the combination of the Sanskrit name
for camphor i.e. Karpura and Pure which is unique and inherently
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distinctive. The logo devised by the Defendant's employee prominently
displays the Defendant's cycle logo at top right corner. The Defendant
has applied for registration of "AIR KARPURE" and "KARPURE" mark on
4th November, 2020 which are valid and subsisting in Class 5 and 11 and
in respect of registration of "AIR KARPURE" in Class 5 rectification
Application is filed by the Plaintiff which is pending.
9. It is stated that in or about 2022, the Defendant commenced the
use of the impugned mark in relation to the Defendant's goods and the
long association of the said mark with the Defendant's goods has
resulted in the mark being highly distinctive of the Defendant's goods.
The sales figure in respect of the goods marketed under the
Defendant's mark for the year 2024-25 was Rs. 479 lakhs. It is
submitted that the Defendant being registered proprietor, no suit for
infringement can lie against the registered proprietor. It is submitted
that the Plaintiff has concealed the material fact that its trade mark
registration no. 3643444 for the mark 'CAMPURE'/ for
wider specification of goods including Deodorizers and air purifiers
was opposed by one Lifestar Pharma Private Limited", being proprietor
of mark 'CALAPURE' in which the Plaintiff filed its counter statement
stating that its mark 'CAMPURE' is entirely different from the mark
'CALAPURE' and that no one can claim monopoly over the word 'PURE'
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as several marks including the mark "CAROPURE" were existing in
record of trade mark registry. Pursuant to the opposition, the Plaintiff
entered into memorandum of understanding whereby it restricted its
specification of goods to deodorizers and purifiers including air
purifying preparations, air deodorizing preparations, deodrants. It is
stated that the rival marks are dissimilar and distinct, visually,
phonetically, structurally and conceptually from each other. It is further
submitted that the Plaintiff has failed to make out any case of goodwill
and reputation in the Plaintiff's mark prior to the adoption of the
Defendant's mark. It is further stated that on 2 nd December, 2022, the
Plaintiff had sent cease and desist notice which was responded by the
Defendant and the suit has been filed after four years and therefore
the Plaintiff's Application suffers from delay, laches and acquiescence.
It is submitted that the Court will not have jurisdiction in case of
passing off as the Defendant is selling its product online wherein the
products can be ordered and delivered in every part of India.
10. In rejoinder, it is contended that this is fit case for the Court to
go behind validity of the Defendant's registration of the impugned
mark even at the interim stage. It is stated that the Defendant has
obtained registration of its mark in Class 11 which is by playing fraud as
Class 11 in not the relevant class. The Defendant's impugned mark
"KARPURE", "AIR KARPURE" and device mark are identical/deceptively
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similar to the Plaintiff's trade mark "CAMPURE" when the rival marks
are taken as a whole rather than in parts.
11. It is stated that the opposition to the registration of the
Plaintiff's mark filed by the third party was withdrawn pursuant to
memorandum of understanding and the stand taken in the counter
statement does not constitute material or relevant fact. It is
contended that the Plaintiff does not claim any exclusivity of the
standalone word "PURE" and the marks when taken as a whole are
similar. It is stated that in the opposition proceedings, the third party
opponent's mark "CALAPURE" was phonetically, visually and
conceptually dissimilar to the Plaintiff's trade mark "CAMPURE" which
consisted of three syllable and eight letters whereas the Plaintiff's
mark comprises of two syllable and seven letters and in the present
case the rival mark comprises of two syllable and seven letters. It is
stated that in the present case the rival goods in the customer base in
trade channels are the same leading to possibility of confusion. It is
stated that there is no delay, laches or acquiescence on part of the
Plaintiff and the cease and desist notice pertained only to the cone
shape camphor product.
SUBMISSIONS:
12. Mr. Kamod, learned Counsel for the Plaintiff has taken this
Court through the registration certificates of the Plaintiff's mark, the
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sale figure, advertisement expenses and the invoices to demonstrate
user and registration since the year 2017. He submits that in reply to
the cease and desist notice, the Defendant had contended that the
Defendant's camphor products are sold under the Defendant's
registered trade mark without mentioning that the Defendant trade
mark is "KARPURE". He submits that as the Plaintiff had learnt about
the potential launch by the Defendant of cone shape trade dress, the
cease and desist notice was issued and as the said product was not
launched, there is no question of any delay. He would further point out
that the Defendant had applied for registration of the word mark 'AIR
KARPURE' on 4th November, 2020 on proposed to be used basis in Class
5. The user by the Defendant is of the year 2022 and the Plaintiff has
filed for rectification/cancellation of Defendant's mark which is
pending.
13. He would further draw attention of this Court to paragraph 35
of the plaint to contend that the Defendant has used the impugned
mark in relation to similar goods as that of the Plaintiff's such as
bathing soap, air freshener, liquid, mosquito repellent, suspendible
sachet air freshener and camphor cone/ pouch. He submits that the
Defendant uses the word "AIR" in negligible font and the trademark
"KARPURE" is phonetically similar to the Plaintiff's mark "CAMPURE".
He submits that the impugned mark uses the alphabet 'P' in capital
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case similar to that of Plaintiff's mark.
14. He submits that the Defendant has registration of the word
mark Cycle in Class 5 which it does not use. He submits that the
explanation tendered that the mark is adopted by combination of the
Sanskrit word 'KARPURA' and 'PURE' is unacceptable. He submits that
the registration of the Defendant's mark 'AIR KARPURE' is ex-facie
illegal as the essential features of the Plaintiff's mark are copied and
this Court can go behind the validity of registration and restrain the
Defendant.
15. He submits that for the purpose of passing off, the relevant date
is date of user i.e. 2022. He submits that there is no delay, laches and
acquiescence as notice issued by Plaintiff in 2022 was not for
'KARPURE' but for cone shaped trade dress.
16. He submits that in the opposition application to the Plaintiff's
mark, the mark was 'CAROPURE' and the stand taken was 'CAMPURE'
was different. He submits that the word 'CAROPURE' 'CAMPURE' and
'CALAPURE' are dissimilar and there is no question of any estoppel. He
submits that for the purpose of acquiescence, the Defendant has not
shown that he has altered his position. He submits that the Court will
have jurisdiction in respect of passing off action as the Defendant's
products are available on e-commerce website of Amazon and are
delivered within the jurisdiction of this Court. In support he relies upon
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the following decisions.
1 Corona Remedies Pvt Ltd vs. Franco-Indian Pharmaceuticals Pvt
Ltd.1
2 Encore Electronics Ltd vs. Anchor Electronics & Electricals 2
3 Sun Pharmaceuticals Industries Limited vs. Emcure
Pharmaceuticals Ltd3
4 Hiralal Parbhudas vs. Ganesh Trading Company4
5 Pidilite Industries Ltd vs. Poma-Ex Products5
6 Pidilite Industries Limited vs. Riya Chemy6
7 Kantilal Premji Maru vs. Madan Kumar7
8 Hab Pharmaceutical and Research Ltd & Anr. vs. Regain
Laboratories & Anr (decision of this Court in IAL-2307-2023 In Com
IPR Suit No. 489 of 2022 Original side dated 18th July 2023.)
17. Per contra, Mr. Khandekar learned Counsel appearing for the
Defendant submits that the Plaintiff is not entitled to any interim relief
as there is suppression of material fact as regards the opposition to the
Plaintiff's registration of the mark 'CAMPURE'. He submits that in the
counter statement, the Plaintiff had taken the stand that the mark
'CALAPURE' and 'CAMPURE' are different and distinct and there is no
monopoly over the word "Pure" and therefore prosecution history
estoppel will operate in the present case. He further submits that
1 MANU/MH/0410/2023
2 2007 SCC OnLine Bom 147
3 MANU/MH/0020/2012
4 AIR 1984 Bom218
5 2017(72) PTC1 (Bom)
6 2023(1)ABR 710
7 MANU/MH/1038/2018
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there is no similarity between the rival marks and the Defendant is
registered proprietor of the mark 'AIR KARPURE'/KARPURE in Class 5
and Class 11 and points out to the registrations. He submits that there
can be no monopoly about the common descriptive word "Pure" and
where the common element between the two rival marks is descriptive
and common to the trade greater regard has to be paid to uncommon
elements of the rival marks. He further submits that the Defendant is
leading manufacturer in the fragrance industry and has adopted
various distinctive trade mark of "Cycle" which is acknowledged as well
known trade mark and that by virtue of tagline the word "Pure" is part
of registration of mark. He submits that there is no case made out for
going beyond the registration, that there is overlap of classification
and the registration is not ex-facie illegal.
18. He submits that the Plaintiff seeks restraining order against the
Defendant from using the impugned mark KARPURE /
/ AIR KARPURE / or the impugned
domain name which relief cannot be asked as the Defendant is the
registered proprietor. In support he relies upon following decision:-
1 Liberty Oil Mills Ltd vs. BRS Refineries Pvt Ltd 8
2 Skol Breweries Ltd. Vs Som Distilleries & Breweries Limited 9
8 2016 SCC OnLine Bom 10470
9 2012 (49) PTC 231 (Bom).
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3 Medley Pharmaceuticals Ltd vs. Megh Healthcare Pvt Ltd10
4 J & P Coats Ltd vs. Popular Thread Mills11
5 Laser Shaving (India) Pvt Ltd vs. Rkrm International Products
Pvt Ltd (decision of this Court in Interim Application No. 110 of 2025
in Comip Suit No. 44 of 2014 Original Side dated 25th June, 2025)
6 F. Hoffmann-LA Roche vs. Geoffrey Manners & Co pvt. Ltd 12
7 Macleods Pharmaceuticals Ltd vs. Swisskem Healthcare13
8 Corona Remedies Pvt. Ltd. vs. Franco-Indian Pharmaceuticals
Pvt Ltd.(supra)
9 Skol Breweries Ltd vs. Fortune Alcobrew Pvt Ltd. 14
10 Allied Auto Accessories Ltd vs. Allied Motors Pvt. Ltd 15
11 Paramjeet Singh Nande vs. Paramount Toys & Ors. (decision of
this Court in IAL-35055-2023 in Comm IP Suit No. 332 of 2024
Original Side order dated 17th June, 2025.
19. In rejoinder Mr. Kamod would submit that for the application of
doctrine of estoppel it has to be shown there are contrary stand has
been taken by the Plaintiff and the Defendant has altered its position.
He submits that the decisions relied upon are in the case of medicinal
preparations and it is not the Defendant's case that the word 'PURE' is
common to the trade. He submits that the dishonesty of the Defendant
is evident from the fact that his registration of the mark 'KARPURE' is
in respect of Class-11 for apparatus whereas he uses the mark in
respect of soap. He submits that the passing off action is maintainable
as the Plaintiff is prior user and the consumer will be left in state of
10 2016 SCC OnLine Bom 4317
11 1996 (39) DRJ (DB)
12 (1969) 2 SCC 716
13 2019 SCC OnLine Bom 1186
14 2012 SCC OnLine Bom 513
15 2002 SCC OnLine Bom 1138
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wonderment as the marks are phonetically and structurally similar and
the added material will not come in aid of the Defendant.
REASONS AND ANALYSIS :
20. The Plaintiff seeks an injunction against use by the Defendant's
of the impugned mark "KARPURE"
/ /
21. AIR KARPURE / or the domain name
www.karpure.in or any other device/logo/domain name identical or
deceptively similar to the Plaintiff's registered trade mark and for
relief against passing off.
22. Dealing first with the objection of maintainability of suit against
registered proprietor, the statutory provisions does not bar the
institution of the suit for infringement of trade mark against the
registered proprietor of a trademark. The aspect of maintainability of
suit against registered proprietor for infringement is no longer res
integra and it is settled that the suit seeking action for infringement
and passing off is maintainable even against a registered proprietor.
[See Kantilal Premji Maru vs Madan Kumar (supra)]. The real question
is whether the Plaintiff has made out a prima facie case so as to
restrain a registered proprietor from use of its trade mark.
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23. In so far as the Plaintiff is concerned, in paragraph 6 of the
plaint and Exhibit "A", the Plaintiff has set out the various registrations
obtained by the Plaintiff for the said trade mark CAMPURE /
as under:
Sr. Trademark Registration Class and Goods
No.
No. and Date
06/08/2017 deodorizers and purifiers
include air purifying
preparations; air
deodorizing preparations;
deodorants; deodorants for
clothing and textiles only.
25/09/2017 deodorizers and purifiers
including air purifying
preparations; air
deodorizing preparations;
deodorants; deodorants for
clothing and textiles only.
22/02/2022 deodorants; room
fragrancing preparations;
air fragrancing
preparations; soaps; hair
conditioners; hair lotions
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and sanitary preparations
being toiletries.
22/02/2022 deodorants; room
fragrancing preparations;
air fragrancing
preparations; soaps; hair
conditioners; hair lotions
and sanitary preparations
being toiletries.
05/09/2022 essential oils; Pine essential
oils; Aromatic essential oils;
Perfumery, essential oils;
Non-medicated hand wash,
floor cleaning preparations
05/09/2022 essential oils; Pine essential
oils; Aromatic essential oils;
Perfumery, essential oils;
Non-medicated hand wash,
floor cleaning preparations.
05/09/2022 candles and wicks for
lighting; prayer candles;
perfumed candles; scented
candles
05/09/2022 candles and wicks for
lighting; prayer candles;
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perfumed candles; scented
candles
24. The registrations are substantiated by production of the
certificates at Exhibit "B" to "B-8" of the Plaint. The annexures when
perused shows that the Plaintiff's Registration No 3607515 dated 6 th
June, 2017 is in respect of the mark "CAMPURE", where all alphabets
are depicted in capital case. It is in the mark of which was
registered on 25th September, 2017, that the Plaintiff depicted its mark
by using the middle letter "P" in capital case. The wordmark "CamPure"
using similar depiction of middle letter P was registered on 22 nd
February, 2022 vide Registration Number 5339528. The factum of the
subsequent registration of the wordmark "CamPure" in the year 2022
is significant as one of the similarities claimed by the Plaintiff is the use
of by the Defendant of the middle alphabet "P" in capital case in its
trade mark. Pertinently, the Defendant had applied for registration of
its mark in the year 2020 itself.
25. The Defendant applied for registration of its trade marks 'AIR
KARPURE' and "KARPURE" in Class 5 and 11 on 4 th November, 2020 on
proposed to be used basis. The details of the Defendant's registration
are as under:
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Sr. Trade Mark Application No. Application Registration
No. and Class Date Date
1 AIR KARPURE 4732154 04/11/2020 02/09/2022
Class 5
2 AIR KARPURE 4732155 04/11/2020 02/05/2021
Class 11
3 KARPURE 4732156 04/11/2020 02/05/2021
Class 11
26. In or around July, 2022, the Defendant's employee at the
instance of the Defendant created the original artwork of
/ and the no objection certificate
dated 22nd July, 2022 is placed on record.
27. Section 29 of the T.M. Act, 1999 which governs the infringement
of trade mark provides that a registered trade mark is infringed by a
person, who not being a registered proprietor uses in course of trade, a
mark which is identical with or deceptively similar to the registered
trade mark. The provision makes it clear that to constitute
infringement of a registered trade mark, the basic requirement of
Section 29 of T.M. Act, 1999 is use of identical/deceptively similar mark
by a person who is not a registered proprietor. In the present case, the
Plaintiff and Defendant are both registered proprietors of their
respective trade marks and therefore remedy of infringement under
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Section 29 of T.M. Act, 1999 is not available to the Plaintiff. The
pleadings in the plaint when read holistically would prima facie indicate
that the Plaintiff has premised its suit on the requirements of Section
29 of the T.M. Act, 1999 by contending about the deceptive similarity
of the rival marks, which expression finds place in Section 29 of the
T.M. Act, 1999.
28. In Corona Remedies Pvt Ltd vs. Franco-Indian Pharmaceuticals
Pvt Ltd, (supra) the Hon'ble Division Bench of this Court considered
the provisions of Section 28(3) of the T.M. Act,1999 to hold that once
trade mark is registered, remedy of infringement is not available
against the registered proprietor. In that context the Co-ordinate
Bench considered the decision of the Hon'ble Apex Court in the case of
S. Syed Moideen vs. Sulochana Bai 2016 (2) SCC 683 where the
Hon'ble Apex Court held that as per Section 28(3) the owner of
registered trade mark cannot sue for infringement of it against a trade
mark which is registered and that the provisions of Section 27(2) as
regards the passing off would still be available.
29. In order to restrain the Defendant from the use of its registered
trade mark, the Plaintiff seeks to assail the validity of registration of
the Defendant's trade mark. Though there are no specific pleadings
which will indicate the grounds on which the validity is assailed,
considering the arguments canvassed this Court has proceeded to
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consider the aspect of validity of the registration of the Defendant's
mark on the basis of the provisions of Section 9(2)(a) and Section 11 of
T.M. Act, 1999. Section 9 deals with the absolute grounds for refusal
and Section 11 deals with relative grounds of refusal of registration.
The statutory provisions provides that a mark which by reason of
identity/similarity to earlier registered trade mark and
similarity/identity of goods is likely to cause confusion on part of the
public which includes likely association with the earlier registered
trade mark should not be registered. The refusal of registration would
therefore be based on a finding that the subsequent mark is so
identical or similar to the earlier registered trade mark so as to cause
confusion amongst the public.
30. The rights which are conferred by virtue of registration of the
mark is set out in Section 28 of T.M. Act, 1999 which reads as under:
"28. Rights conferred by registration.--(1) Subject to
the other provisions of this Act, the registration of a
trade mark shall, if valid, give to the registered
proprietor of the trade mark the exclusive right to the
use of the trade mark in relation to the goods or
services in respect of which the trade mark is
registered and to obtain relief in respect of
infringement of the trade mark in the manner
provided by this Act.
(2) The exclusive right to the use of a trade mark given
under sub-section (1) shall be subject to any
conditions and limitations to which the registration is
subject.
(3) Where two or more persons are registered
proprietors of trade marks, which are identical with or
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nearly resemble each other, the exclusive right to the
use of any of those trade marks shall not (except so
far as their respective rights are subject to any
conditions or limitations entered on the register) be
deemed to have been acquired by any one of those
persons as against any other of those persons merely
by registration of the trade marks but each of those
persons has otherwise the same rights as against
other persons (not being registered users using by way
of permitted use) as he would have if he were the sole
registered proprietor."
31. Section 28(3) of T.M. Act, 1999 provides for an eventuality
where two or more persons are registered proprietors of identical or
nearly resembling trade marks and in such cases, the exclusive right
cannot be enforced against the other registered proprietor. The rights
of registered proprietor is further protected by Section 30 of T.M. Act,
1999 which limits the effects of registered trade mark and Section
30(2)(e) provides that a registered trade mark is not infringed where
the use of the registered trade mark, being one of two or more trade
marks registered under the Act, which are identical or nearly resemble
each other, is in exercise of the right to use of the trade mark given by
registration under this Act.
32. Conjoint reading of Section 28 (3) and Section 30(2) (e) of the T.
M. Act 1999 thus protects the right of use of the trade mark conferred
by registration of trade mark, if valid, by keeping out the action for
infringement where the mark is used in exercise of right conferred by
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the registration. The significant use of the words, if valid, occurring in
Section 28(3) of the T. M. Act,1999 came up for consideration of the
Hon'ble Full Bench of this Court in the case of Lupin Ltd. vs. Johnson
and Johnson16 where the Hon'ble Full Bench was considering whether
the Court can venture into the question of validity of registration of
the trademark at an interlocutory stage upon defence of invalidity of
registration being taken and Hon'ble Full Bench concluded its findings
in paragraph 59(3), (5), (6) and (8) are as under:
"59. (3) A challenge to the validity of the registration of
the trade mark can finally succeed only in rectification
proceedings before the Intellectual Property Appellate
Board. However, there is no express or implied bar taking
away the jurisdiction and power of the Civil Court to
consider the challenge to the validity of the trade mark
at the interlocutory stage by way of prima facie finding.
(Paras 34 and 53)
(5) However, a very heavy burden lies on the defendants
to rebut the strong presumption in favour of the plaintiff
on the basis of the registration at the interlocutory stage.
The plaintiff is not required to prove that the registration
of a trade mark is not invalid, but only in the cases where
the factum of registration is ex facie totally illegal or
fraudulent or shocks the conscience of the Court that the
Court may decline to grant relief in favour of the
plaintiff. (Paras 25, 27 and 55)
(6) It is not sufficient for the defendant to show that the
defendant has an arguable case for showing invalidity.
The prima facie satisfaction of the Court to stay the trial
16 [2015(1) Mh.L.J. 501)
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under section 124 of the Act is not enough to refuse
grant of interim injunction. It is only in exceptional
circumstances, such as, the registration being ex facie
illegal or fraudulent or which shocks the conscience of
the Court that Court will refuse the interim injunction in
favour of the registered proprietor of the trade mark.
(Para 57)
(8) Though it is considered as a practice of this Court in
granting injunction in favour of the plaintiff having a
registered trade mark, the same cannot be treated as a
total embargo on the power of the Court to refuse grant
of interim injunction. In exceptional cases, that is in cases
of registration of trade mark being ex facie illegal,
fraudulent or such as to shock the conscience of the
Court, the Court would be justified in refusing to grant
interim injunction. (Para 33)"
33. The Hon'ble Full Bench upheld the power of the Court to travel
beyond the registration but with the caveat that the same can be done
only in exceptional cases where the registration is ex-facie illegal or
fraudulent or which shocks the conscience of the Court. The threshold
to be met is not that of prima facie arguable case of invalidity but a
higher threshold of ex-facie illegality or fraud or which shocks the
conscience of the Court. For a plea of invalidity to fit in the small
window left open in Lupin's case, the Court is required to be prima
facie satisfied upon bare comparison of rival marks and without
embarking on a detailed inquiry, that the subsequent mark by reason
of its identity/similarity with the earlier registered trade mark is likely
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to cause confusion amongst the public. The burden to be discharged is
heavy and rightly so as the registration of the trademark confers
statutory rights on the proprietor which should not be interfered with
lightly.
34. The Defendant had applied for registration of its mark on 4 th
November, 2020 and upon acceptance of the application for
registration, as per the procedure, the Application must have been
advertised in the prescribed manner. The Plaintiff did not file any
opposition to the Defendant's registration and the fact that the
Defendant's mark had been granted registration indicates that it has
passed the muster of Section 9 and 11 of the T. M. Act, 1999.
35. In order to appreciate whether the registration of the
Defendant's mark is ex facie illegal or which shocks the conscience of
the Court, it would be apposite to reproduce the rival marks for
comparison as under:
Plaintiff's trade mark Defendant's impugned marks
KARPURE /
CAMPURE /
/
AIR KARPURE /
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36. It needs to be borne in mind that what is required to be ascertain
is ex facie illegality in the registration of the Defendant's mark and not
prima facie arguable case of invalidity of registration. In that context,
the marks have to be compared and if upon a bare comparison, it can
be demonstrable that the use of the Defendant's mark by virtue of its
identity/similarity with the earlier registered trade mark is likely to
cause confusion, the Defendant can be restrained from use of its
registered mark by holding the registration to be ex-facie illegal.
Whether the rival marks are likely to cause confusion by reason of its
identity/similarity is a matter of first impression. When so viewed, the
Defendant's marks does not resemble the Plaintiff's marks in a manner
as to cause confusion as to whether the mark is that of the Plaintiff or
the Defendant. As the illegality is not ex facie demonstrable, no case
of infringement is made out and the case ought to have been put to
rest here in so far as action of infringement is concerned. However, as
substantial arguments were advanced on the similarities between the
rival marks, which otherwise could be appreciated in the background of
Section 29 of T.M. Act, 1999, going one step further, this Court has
proceeded to consider whether prima facie case of arguable similarity
is made out.
37. It is well settled that the marks have to be viewed as a whole and
it is not permissible to dissect the marks and compare parts of the
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mark. Prima facie, the Defendant is using its registered mark as device
mark / whereas the Plaintiff is using
its mark . The Defendant's mark is depicted in stylized
cursive font with the initial alphabet K" written in form of a flower
whereas the Plaintiff's mark is depicted in block letters
with the middle letter "P" in capital case towering over the starting
alphabet "C". In the Defendant's mark the middle letter "P" even in
capital case is contiguous with the rest of the letters. The Plaintiff's
mark is depicted inside a distinct elongated shape, which is not so in
case of the Defendant's mark. The manner of depiction of the rival
marks and the artwork used in the rival marks prima facie sets apart the
rival marks. There is no possibility of slurring over the word "r" of the
impugned mark so as to sound phonetically similar to the word "m". It
needs to be noted that the relevant consumer base for the products
which are deodorizers, air purifiers etc would be an average educated
class with the ability to differentiate between the rival marks and the
products. Prima facie, the Plaintiff has not been able to meet the
threshold of ex-facie illegality so as to deprive the Defendant of the
use of its registered trade mark. Upon prima facie comparison of the
rival marks, in my view, there is no similarity/resemblance between the
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two marks which will lead of causing confusion among the public or
likely association of the Defendant's goods as that of the Plaintiff.
38. Though arguments were advanced on fraudulent registration, it
is well settled that where plea of fraud is raised, it is necessary to set
out the necessary particulars of fraud which are missing in the present
case. It is not sufficient to reproduce the expression used in the
decision of Lupin Ltd. vs. Johnson and Johnson (supra) without
specific pleadings to demonstrate the fraud. In so far as the dishonest
adoption is concerned, the argument is that the registration is made in
Class 5 in respect of goods which do not fall in Class 5. Prima facie, the
registration of the Defendant's mark "AIR KARPURE" under Class 5 is
also in respect of room and car freshners and deodorizers, which is
similar to the Plaintiff's registration for deodorizers and purifiers, air
deodorizing preparations. If the classifications in Class 3 and 5 are
seen, there is certain overlapping between the classification as some of
the products can fall in either of the classifications. The Defendant is
prima facie using the registered mark in relation to the goods in
respect of which the mark is registered. Pertinently, in the case of
Allied Auto Accessories Ltd vs Allied Motors Pvt Ltd(supra), the Co-
ordinate Bench of this Court held that guidelines or classification lists
which are published are only administrative guidelines.
39. In the case of Kantilal Premji Maru vs. Madan Kumar (supra)
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this Court applying the Lupin principles to the rival marks in that case
held the same to be ex-facie illegal. The rival marks were "Classic
Steels" and and Defendant's mark was "5 Classic Care". The Court
noted that the word "Classic" written in distinctive font in Plaintiff's
registered trade mark is bodily lifted and copied by the Defendant in
its trade mark. Similarly in Pidilite Industries Limited vs Riya
Chemy(supra), the Plaintiff's mark as "M-Seal" and Defendant's mark
was "R-Seal". In Pidilite Industries vs Poma-Ex Products(supra), the
rival marks were "FEVIKWIK" and "KWIKHEAL". It is in such facts of
that cases, the Court went beyond the registration and held the same
to be ex-facie illegal.
40. The decision in Hiralal Prabhudas vs Ganesh Trading Company
and Ors (supra) sets out the settled test for considering the case of
deceptive similarity in proceedings arising out of rejection of
application for rectification.
41. In the case of Encore Electronics Ltd vs. Anchor Electronics &
Electricals (supra) the Hon'ble Division Bench of this Court considered
the phonetic similarity between the rival marks and took into
consideration principle laid down by the Hon'ble Apex Court in the case
of Cadila Health Care Ltd vs. Cadila Pharmaceuticals Ltd. 17 There is
no quarrel with the principles laid down in the said judgments
17 (2001) 5 Supreme Court Cases 73
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following the decision of the Hon'ble Apex Court and what assumes
significance is the application of the principle to the facts of each case.
The precedents would bind in so far as the tests are concerned and not
in respect of the factual aspects. The well settled principles laid down
by the Court will differ in its application to the facts of each case which
is required to be considered by comparing the rival marks concerned
therein. When the well settled tests are applied to the present case,
the Plaintiff has failed to make out an exceptional case so as to
warrant going beyond the registration of the Defendant's mark and
deprive the Defendant who is registered proprietor of its statutory
right of use of its mark.
42. Another reason which disentitles the Plaintiff to the
discretionary relief is suppression of material fact as the Plaintiff has
not placed on record the stand taken by the Plaintiff in the counter
statement to the opposition of the registration of its mark. In case of
Phonepe Private Limited vs Resilient Innovations Private Limited
(2023 SCC Online Bom 764), the Co-ordinate Bench of this Court has
held that the stand taken by the Plaintiff therein before the Registrar
of Trade marks in the examination report is a relevant factor and by
not placing its own stand, the Plaintiff dis-entitled itself to grant of
discretionary reliefs under Order XXXIX Rules 1 and 2 of CPC.
43. The Plaintiff seeks to restrain the Defendant, who is also the
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registered proprietor from use of its registered mark by claiming
exclusive use of its mark. It was therefore necessary for the Plaintiff
to place on record all facts which led to the registration of the
Plaintiff's own marks. The non disclosure of the opposition to the
Plaintiff's registration and the stand taken by the Plaintiff in the
counter statement, which had to be produced by the Defendant, dis-
entitles the Plaintiff to grant of discretionary relief.
44. There is bonafide explanation for adoption of the mark by the
Defendant as its mark contains the word "Pure" which forms part of its
earlier registered marks and is in consonance with its various tag lines
using purity as its theme.
45. Prima facie, the Defendant's registration being valid and
subsisting till date entitles the Defendant to use of the registered
trade mark under Section 28(3) read with Section 30(2) (e) of the T.M.
Act, 1999 and there is no infringement of statutory rights of the
Plaintiff by reason of the use of the Defendant's validly registered
trade marks.
46. In so far as the common law remedy of passing off is
concerned, the relevant date which is required to be considered is the
adoption of the Defendant's mark i.e. in the year 2022. In the case of
Sun Pharmaceuticals Industries Limited vs. Emcure Pharmaceuticals
Ltd., (supra), the Hon'ble Single Judge held that the mere fact of
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registration has no relevance and the requisite goodwill and reputation
has to be shown on the date on which the Defendant use their
impugned mark. In the present case the Defendant has used the mark
admittedly in the year 2022 and the relevant date for the purpose of
considering the action of passing off is 2022.
47. To succeed in an action for passing off, the three ingredients to
be prima facie established are goodwill, misrepresentation and
damage. It is trite that an action for passing off is maintainable even
against a registered proprietor. It is required to be demonstrated that
by reason of the extensive use of the mark by the Plaintiff the same
has acquired enormous goodwill and reputation that the registered
mark is associated exclusively with the Plaintiff's goods, that the use of
the mark is likely to cause damage, and, that there is mis-
representation by the Defendant. Paragraph 11 of the plaint pleads
that the sales figure and advertisement expenses in respect of entire
range of products sold under the registered mark "CAMPURE" for the
year 2022-23 was Rs. 28,37,62,674/- and Rs. 4,07,79,619/- respectively.
To support the figures, the Chartered Accountant's certificate is
annexed at page 283 of the plaint which certifies that the sales figure
and the advertisement expenses are in respect of all camphor product
from 2014 onwards. What is necessary to be substantiated is the stand
alone sales figure in respect of products marketed under the mark
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'CAMPURE' / device mark, which will indicate the goodwill
and reputation earned by the Plaintiff in respect of the relevant marks
and not the sales figure of all camphor products of the Plaintiff. There
is no material on record pointed out on the basis of which it can be
prima facie held that the Plaintiff's registered mark has acquired such
distinctive character that the consumers identify the mark with that of
the Plaintiff's products only.
48. The material on record shows that the rival marks are used by
the Plaintiff and the Defendant respectively in respect of their various
products. It was necessary for Plaintiff to specifically plead about the
Plaintiff's products marketed under its mark which is so marketed by
the Defendant so as to pass off its goods as that of the Plaintiff. The
plea is that the Plaintiff's cone shaped trade dress is not the subject
matter of the present suit and thereafter the plaint proceeds to set
out the similarity in the packaging of the cone shaped trade dress.
There is absence of specific pleading about specific products of the
Defendants designed to pass off as that of the Plaintiffs.
49. The question to be asked as set out in Ruston & Hornsby Ltd vs
The Zamindara Engineering Company [(1969) 2 SCC 727] is whether
the Defendant is selling the goods so marked as to be designed or
calculated to lead purchasers to believe that they are the Plaintiff's
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goods. Prima facie comparison of the rival products set out in
paragraph 35 of the plaint indicates dissimilarity in the packaging in
which the rival products are vended. There is marked difference in the
manner in which the Defendant is vending its products. There is
variation in the colour scheme, packaging and the general look of the
Defendant's packaging. The difference in physical appearances or the
packaging plays a significant role in case of passing off. The
differences are prima facie sufficient to distinguish the goods of the
Defendant from that of the Plaintiff. Viewed thus, the Plaintiff has
failed to make out prima facie case for passing off.
50. Though contention has been raised by Mr. Khandekar against
grant of interim injunction on the ground of delay, laches and
acquiescence, it is well settled that delay by itself is not sufficient as
defense in an action for infringement and in so far as acquiescence is
concerned it is necessary to show some positive act on part of the
Plaintiff based on which the Defendant had altered its position. There
is no such material which has been placed on record and therefore the
contention on the ground of delay, laches and acquiescence fails.
51. In light of the above discussion, the Interim Application fails and
stands dismissed.
[Sharmila U. Deshmukh, J.]
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