Calcutta High Court
Biswanath Hosiery Mills Limited & ... vs Micky Metals Limited on 24 August, 2021
1
IA NO. GA 1 of 2020
In
CS NO. 113 of 2020
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
COMMERCIAL DIVISION
BISWANATH HOSIERY MILLS LIMITED & ANR
V.
MICKY METALS LIMITED
For the Plaintiffs : Mr. S.N Mookherjee, Sr. Adv.
Mr. Debnath Ghosh, Adv.
Mr. Sarosij Dasgupta, Adv.
Mr. Pubali Sinha Chudhury, Adv.
Mr. Harshita Ginodia, Adv.
Ms. Mini Agarwal, Adv.
For the Respondents : Mr. R. Bachawat, Sr. Adv
Mr. R. Mitra, Adv.
Mr. S. Roychowdhury, Adv.
Mr. Bhaskar Mukherjee, Adv.
Ms. Debjani Ghosh, Adv.
Mr. Nafisa Yasmin, Adv.
Hearing concluded on : March 22, 2021
Judgment on : August 24, 2021
DEBANGSU BASAK, J. :-
1. In a suit for infringement of trademark and passing off the
plaintiffs have sought interim protection by way of the present
application.
2. Learned advocate appearing for the plaintiffs has submitted
that, the plaintiff No. 1 is a registered proprietor of various "LUX"
trademarks. The mark "LUX" had been adopted by the founder of
the plaintiff No. 1 in the year 1957. The plaintiff No. 1 has also
copyright over "LUX" label having certificate of registration dated
August 8, 1972. The plaintiff No. 2 is a subsidiary of the plaintiff
No. 1 and that the plaintiff No. 2 has been using the name "LUX"
since 1995 as its corporate name. He has relied upon the
photographs of the packaging of the products of the plaintiffs.
According to him, the packaging of the plaintiffs is distinct.
3. Learned advocate appearing for the plaintiffs has submitted
that, the plaintiffs have in total 22 registrations in India. He has
referred to the sales figure and the advertisement and promotional
expenses of the plaintiffs from the year 2008 - 2009 onwards. He
has also referred to the sale invoices of the plaintiff from the year
1986 showing massive business and popularity of the trademark
"LUX". According to him, the sales, publicity, quality and product
and uninterrupted and continuous user of the word "LUX" has been
recognised by the Intellectual Property Appellate Board in
Biswanath Hosiery Mills Ltd. versus Friends Hosiery and Another
on July 15, 2020. He has referred to the other orders which the
plaintiffs have obtained from various Court proceedings in order to
protect the trademark "LUX". He has contended that, by virtue of
such popularity, brand value, public demand and quality of
products the mark "LUX" of the plaintiffs has become well-known.
The plaintiffs have received awards. The launch events of various
"LUX" brands by the plaintiffs have been usually covered by leading
media houses. He has referred to the personalities who have been
the brand ambassador of the plaintiffs. He has submitted that, the
products of the plaintiffs are sold all over the world. The plaintiffs
have market presence in 47 countries around the world. The
plaintiffs have obtained trademark registration in various countries
abroad.
4. Learned advocate appearing for the plaintiffs has submitted
that, the defendant applied for registration of "LUX TMT" as a device
in class 6 on October 25, 2019 on proposed use basis. Such
application had been withdrawn by the defendant. The defendant
had obtained registration of the word "LUX TMT 500+ ISI" in class
6, for TMT Bars and Rods on April 30, 2012 with User Date shown
as January 1, 2008. The plaintiffs have challenged the same. The
defendant has obtained registration of "LUX TMT DURGAPUR"
mark in class 6 on proposed to be used basis. Such application is
also under challenge by the plaintiffs. The defendant had applied
for registration of the mark "LUX-EK SOLID SOCH" on December 5,
2019 "on proposed to be used basis" and the same is also under
challenge at the behest of the plaintiffs.
5. Learned advocate appearing for the plaintiffs has submitted
that the defendant is a subsequent user of an identical and
deceptively similar mark as that of the plaintiffs. He has referred to
the affidavit in opposition of the defendant and submitted that, the
defence that the defendant have put forward, are unacceptable.
6. Learned advocate appearing for the plaintiffs has referred to
the conduct of the parties subsequent to the cease and desist notice
issued on November 18, 2019. He has submitted that, since the
plaintiffs are the prior users of the mark "LUX", the rights of the
plaintiffs are superior to the registration and are unaffected by
registrations obtained under the Trade Marks Act, 1999. He has
relied upon 2016 Volume 2 Supreme Court Cases 683 (S. Syed
Mohideen v. P Sulochana Bai). He has contended that, the Court
while assessing whether a mark is well-known or not has to refer to
Section 11(6) of the Trade Marks Act, 1999. He has referred to
Section 29(1)(2) and (3) of the Act of 1999 and submitted that,
confusion and deception among the general public which are
ingredients for success under such subsections are not ingredients
for Section 29(4) of the Act of 1999. According to him, the
ingredients are trespass, innovation and dilution. He has referred to
and relied upon Section 32 of the Act of 1999.
7. Learned advocate appearing for the plaintiffs has relied upon
2011 Volume 4 Supreme Court Cases 85 (T.V. Venugopal v.
Ushodaya Enterprises Ltd. and Another), 1997 SCC Online
Bom 578 (Aktiebolaget Volvo of Sweden v. Volvo Steels Ltd. of
Gujarat), 2013 (56) PTC 243 (Bloomberg Finance Lp v. Prafull
Saklecha & Others), 2018 Indlaw CAL 408 (Exxon Mobil
Corporation v Mr P K Sen), 2011 (5) MhLJ 369 (Kalpataru
Properties Private Ltd. Mumbai and Another v. Kalpataru
Hospitality and Facility Management Services Private
Limited), 2009 SCC Online Cal 531 (Sony Kabushiki Kaisha v
Mahaluxmi Textile Mills), 1997 SCC Online Bom 253 (ESSEL
Packaging Ltd. and Others v. Essel Tea Exports Ltd.), 2005
Volume 2 Calcutta High Court Notes 278 (Amar Nath
Chakraborty v. Dutta Bucket Industries and Others) and 1994
Volume 2 Supreme Court Cases 448 (M/s Power Control
Appliances and Others versus Sumeet Machines Private
Limited). He has contended that, interim orders as prayed for
should be granted.
8. Learned senior advocate appearing for the defendant has
submitted that, the plaintiffs have filed the suit by an authorised
representative which is not permissible. He has referred to Order
XXIX Rule 1 of the Code of Civil Procedure, 1908. According to him,
pleadings should be signed and verified on behalf of the Corporation
by the secretary or any director or other principal officer of the
Corporation. Since the application has been affirmed by an
authorised representative who is not the secretary nor the director
or principal officer of the plaintiffs, the application is liable to be
dismissed. In support of such contentions, reliance has been placed
on the order dated July 26, 2016 passed in IA GA No. 82 of
2016 in CS No. 4 of 2014 (PKS Limited v. State Trading
Corporation of India Ltd and Others) and the order dated May
4, 2017 passed by the Division Bench in APO 259 of 2017 GA
689 of 2017 in CS 269 of 2009 (Ghanshyam Sarda v. Gobind
Kumar Sarda).
9. Learned senior advocate appearing for the defendant has
submitted that, the plaintiffs are in the business of hosiery goods
and have various label mark registrations in class 25. The
defendant has two registered trademarks in class 6 in its favour for
TMT bars and rods. He has relied upon 2016 volume 2 Supreme
Court Cases 683 (S. Syed Mohideen v. P. Sulochana Bai) in
support of his contention that, one registered proprietor cannot sue
another registered proprietor for infringement of trademark in view
of section 28(3) of the Trade Marks Act, 1999. Therefore according
to him, the plaintiffs are not entitled to any relief in respect of
infringement of trademark.
10. So far as the claim for infringement of copyright is concerned,
learned senior advocate appearing for the defendant has contended
that, the plaintiffs have a copyright registration dated August 8,
1972. He has referred to the copyright registration. He has
contended that, the defendant became aware of a judgement
reported that 2002 (25) PTC 86 (Hindustan Lever Limited v.
Biswanath Hosiery) wherefrom it appears that Hindustan Unilever
Ltd had filed an application under Section 50 of the Copyright Act,
1957 for rectification of the copyright register by expunging the
registration in favour of the plaintiffs No. 1 before the Copyright
Board. The Copyright Board had held that Biswanath Hosiery had
copied the word "LUX" from Hindustan Unilever Ltd and the same is
not an original word. It had ordered the Register of Copyrights be
rectified by expunging the word registered in favour of the plaintiff
No. 1.
11. Learned senior advocate appearing for the defendant has
submitted that, the plaintiffs being aware of the litigation between
them and Hindustan Unilever Ltd ought to have disclosed the same.
Not having done so, the plaintiffs are not entitled to any relief. In
support of such contention he has relied upon 2017 SCC Online
Cal 16310 (M/S Sudarshan Seeds Pvt. Ltd. v. Vishal Krishi
Products Pvt. Ltd.).
12. Learned senior advocate appearing for the defendant has
submitted that, "LUX" is not a well-known mark. He has relied
upon a list of entities/persons that have got "LUX" registered in
various classes. The plaintiffs' mark "LUX" does not feature in the
list of well-known marks published on the website of the trademark
registry.
13. Learned senior advocate appearing for the defendant has
submitted that, in case of different field of activity no injunction is
granted. In support of such contentions he has relied upon 2010
(44) PTC 209 (Skol Breweries v. Unisafe Technologies), 2011
(47) PTC 129 (IHHR Hospitality Pvt. Ltd. v. Bestech India Pvt.
Ltd.), 2016 (66) PTC 173 (Essel Propack Ltd. v. Essel
Kitchenware Ltd.), 2016 (67) PTC 271 (Reliance Industries Ltd.
v. Concord Enviro System Pvt. Ltd.). He has submitted that the
application of the plaintiffs should be dismissed.
14. The plaintiffs have claimed that the defendant infringed the
trademark of the plaintiffs, infringed the copyright of the plaintiffs
and is guilty of passing of the product of the defendant as that of
the plaintiffs.
15. In S. Syed Mohideen (supra) the Supreme Court has
considered the interplay of Section 27(2) and 28(3) of the Trade
Marks Act, 1999 and held that, the rights conferred by registration
are subject to the rights of the prior user of the trademark. The
rights of prior user are superior than that of registration and are
unaffected by the registration rights under the Act of 1999. In
common-law jurisdiction passing off right is broader remedy than
that of infringement.
16. Even if the mark is found to be a generic word, yet if it is such
that has attained distinctiveness and is associated with the
business of the plaintiff for considerable time and thereafter the
defendant adopts a similar word as one of his two marks to induce
innocent users to use or buy the product of the defendant, which
establishes dishonest intention and bad faith, the court should
grant an injunction to protect the business of the plaintiff. User of
similar word by a competitor coupled with dishonest intention and
bad faith would empower the court to restrain such user and
misuser to do equitable justice to the aggrieved party. This has been
observed in TV Venugopal (supra) by the Supreme Court. In the
facts of that case, the plaintiff had been engaged in the business of
publishing a newspaper in Telugu entitled as Eenadu. The
defendant had been engaged in the manufacture of incense sticks
and marketed such products as Ashika's Eenadu. In the facts of
that case, the Supreme Court had found that the mark of the
plaintiff Enadu had acquired extraordinary reputation and goodwill.
The products and services of the defendant had been found to be,
related, identified and associated with the word Eenadu. In such
circumstances, the Supreme Court had found that the defendant
could not be referred or termed as an honest concurrent user of the
mark Eenadu.
17. In Aktiebolaget Volvo of Sweden (supra) it has been
observed that, existence of common field of activity is not an
essential feature as a matter of law in a passing off action. In the
facts of that case, the court had found that, although the projects of
the parties were not similar, but there was some overlapping
between the field of activity between the plaintiffs and the
defendants. The court has also held that, the plaintiffs enjoyed a
very wide and large goodwill and reputation over the brand name
Volvo almost throughout the world.
18. Bloomberg Finance Lp (supra) has noted the distinctions
between Sections 29(4) and Sections 29(1)(2)(3). It has observed
that, a stronger protection is afforded to a mark that has a
reputation without the registered proprietor of such mark having to
demonstrate the likelihood of confusion arising from the use of an
identical or similar mark in relation to the similar goods and
services. In the facts of that case, the plaintiff had been enjoying an
injunction granted by the US Court.
19. In Exxon Mobil Corporation (supra) the plaintiff was a part
of Fortune 500 companies and the plaintiff and the defendant had a
registration in the same class. It has observed that, the protection
extended by Section 29(4) of the Act of 1999 even to the similar
goods and services, is based upon the doctrine of dilution. It has
explained dilution to be at type of violation of trademark, in which
the defendant's use, while not causing a likelihood of confusion,
blurs the distinctiveness or tarnishes the image of the plaintiff's
mark.
20. Kalpataru Properties Private Limited (supra) has held that,
an action for infringement of registered trademark and for passing
off is maintainable even if goods and services being dealt with by
the parties are not similar.
21. In Sony Kabushiki Kaisha (supra) the Full Bench of the
Calcutta High Court has considered an appeal in a suit for
infringement and passing off. It has considered 2001 Volume 5
Supreme Court Cases 73 (Cadila Health Care Ltd. v. Cadila
Pharmaceuticals Ltd.). It has observed that none of the
authorities cited before it laid down in absolute terms that the
difference in the class or category of goods of the rival traders would
defeat an action for passing off. It has further observed that, it is
not their Lordships opinion that the class or category of goods or
services to which a trademark is applied ought to be altogether
ignored while testing the passing off action.
22. ESSEL Packaging Ltd. and Others (supra) has held that
trading must not only be honest but must not even intentionally be
unfair. Applying such test, an injunction had been granted.
23. In Amar Nath Chakraborty (supra) the Division Bench of the
Calcutta High Court has considered an application for injunction in
a suit for declaration and injunction alleging violation of a
registered trademark and copyright and complaining of passing off.
In facts of that case, the Court had considered the two labels of the
contesting parties and held that they were similar in size and
shape. The Court had also found that in both the trademarks,
colour combination were similar. Taking into account the shape,
colour combination and other artistic design of the label, the Court
had found that the word 'MAJ' was deceptively similar to the word
'TAJ'. It has observed that once it is established that the label of the
defendant is deceptively similar to that of the plaintiff and the
plaintiff has been using the label from an earlier point of time, the
Court has no other alternative but to grant injunction restraining
the defendant from using such trademark unless the defendant can
show positive act of the plaintiff consenting the use of the trade
mark of the defendant.
24. In Power Control Appliances and Others (supra) the
Supreme Court has considered Section 30(1)(b) and 105 of the
Trade and Merchandise Marks Act, 1958. It has observed that,
acquisence is one of the defences available under Section 30(1)(b) of
the Act of 1958. It has held as follows:-
"26. Acquiescence is sitting by, when another is invading
the rights and spending money on it. It is a course of
conduct inconsistent with the claim for exclusive rights in
a trade mark, trade name etc. It implies positive acts; not
merely silence or inaction such as is involved in laches.
In Harcourt v. White [(1860) 28 Beav 303 : 54 ER 382] Sr.
John Romilly said: "It is important to distinguish mere
negligence and acquiescence." Therefore, acquiescence is
one facet of delay. If the plaintiff stood by knowingly and
let the defendants build up an important trade until it had
become necessary to crush it, then the plaintiffs would be
stopped by their acquiescence. If the acquiescence in the
infringement amounts to consent, it will be a complete
defence as was laid down in Mouson (J.G.) &
Co. v. Boehm [(1884) 26 Ch D 406] . The acquiescence
must be such as to lead to the inference of a licence
sufficient to create a new right in the defendant as was
laid down in Rodgers v. Nowill."
25. In Skol Breweries (supra) the plaintiff had complained of
trademark infringement by dilution. In the facts of that case, the
Court had found that, the plaintiff failed to establish its claim and
therefore proceeded not to grant relief to the plaintiff. In IHHR
Hospitality Pvt. Ltd. (supra) the Delhi High Court in the facts of
that case did not find any material on record to establish that the
mark of the plaintiff had acquired such a high brand equity in India
that its use by persons other than the plaintiff in respect of totally
unrelated goods/services will dilute the reputation which the brand
of the plaintiff enjoys in India. In Essel Propack Ltd. (supra) the
Bombay High Court had found that the mark 'Essel' was registered
in several classes for various groups under the Trade Marks Act.
The Court had refused the prayer for injunction. In Reliance
Industries Limited (supra), the Court had considered whether the
logo of the defendant was deceptibly similar to that of the logo of the
plaintiff or not. It had found that the rival logos were completely
different and therefore proceeded not to grant any relief to the
plaintiff.
26. Difference in the class or category of goods of the rival parties
would not per se defeat an action for passing off. However, the
difference in the class or category is one of the factors that the
Court has to take into consideration. A plaintiff can also sustain an
action for passing off even on the basis of a generic word if the
plaintiff is able to establish that, the generic word used as a mark
has attained such distinctiveness and has been associated with the
business of the plaintiff for a considerable period of time. In such a
situation the plaintiff has to establish that the defendant has used
the mark subsequently to induce innocent buyers or users to buy
or use the defendant's product as that of the plaintiff's. The plaintiff
has to establish that the conduct of the defendant has been in bad
faith and with dishonest intention.
27. The plaintiffs have been using the word "LUX" much prior to
the defendant in marketing their products. The word "LUX" by itself
is not a new coinage brought about by the plaintiffs. The word
"LUX" means the measure of the light. There is nothing unique in
the word for the plaintiffs to claim that they coined the word. In fact
the plaintiffs have not claimed to do so. The word "LUX" has been
used by various legal entities to market their products.
28. The plaintiffs had been involved with litigation with Hindustan
Liver Limited with regard to the registration of copyright existing in
favour of the plaintiffs. Hindustan Liver Limited had applied under
Section 50 of the Copy Right Act for rectification of the copyright
register by expunging registration no. A 814-72. The Copyright
Board in the case reported at 25 PTC 86 (CP) had directed the
Register of copyright to be rectified by expunging the word "LUX"
with registration no. A-814/72 in the name of Giridhari Lal Todi
proprietor of M/s Biswanath Hosiery. The plaintiffs have placed on
record a subsequent order of the Copyright Board which recalled its
earlier order directing rectification of the copyright register.
29. The word "LUX" has been registered in favour of at least two
parties namely the plaintiffs and Hindustan Liver Limited in
different classes. The plaintiffs and the defendants are in different
classes of business. The plaintiffs are in Hosiery Business while the
defendant is a manufacturer of TMT Bars. It is highly unlikely that,
Hosiery goods and TMT Bars would be sold in the same shop.
30. The mark of the plaintiffs does not feature in the list of well-
known marks published on the website of the trademark registry
prepared under Rule 124 of the Trade Marks Rules, 2017. The
plaintiffs have not applied for their trademark to be treated as a well
known trademark in terms of Rule 124 of the Trade Marks Rules,
2017.
31. Taking into account that, once the trademark of the plaintiffs
was decided to be taken off the register and thereafter restored on
consent it is apparent that there is superior right in respect of
"LUX" if not the same right existing in favour of another legal entity.
Such legal entity is not a party to this suit. The fact that there
exists a superior if not similar right in respect of the word "LUX" in
favour of a third party, discounts the claim of the plaintiffs of
distinctiveness of the mark "LUX". On the consideration of the facts
and circumstances of the case, it cannot be said that the plaintiffs'
mark "LUX" has attained such distinctiveness so as to allow the
plaintiffs to succeed at the interim stage of the suit.
32. The objection of the defendant that, the suit filed by an
authorised representative on behalf of a company is not
maintainable in law is not decided at this stage as the same can be
treated as a curable defect and that, the plaintiffs can be afforded
one opportunity to correct such defects, if there be any.
33. In such circumstances, I find no reason to grant any interim
relief to the plaintiffs. IA GA No. 1 of 2020 in CS No. 113 of 2020 is
dismissed without any order as to costs.
[DEBANGSU BASAK, J.]
