Calcutta High Court
Berger Paints India Limited vs Jsw Paints Private Limited on 12 December, 2023
IN THE HIGH COURT AT CALCUTTA
(Ordinary Original Civil Jurisdiction)
COMMERCIAL DIVISION
Present:
The Hon'ble Justice Krishna Rao
IA No: GA 1 of 2020
In CS 64 of 2020
Berger Paints India Limited
Versus
JSW Paints Private Limited
Mr. Surajit Nath Mitra, Sr. Adv.
Mr. Sayantan Basu
Mr. Sourav Sengupta
Mr. Amain Baid
... For the plaintiff.
Mr. Ranjan Bachawat
Mr. Debnath Ghosh, Adv.
Ms. Vaibhavi Pandey
Mr. Shaunak Mitra
Mr. Salfiqar Ali
Md. Zulfiqar Ali Al Quaderi
Ms. Shivangi Thard
... For the defendant.
Hearing Concluded On : 18.10.2023
Judgment on : 12.12.2023
2
Krishna Rao, J.:
1. The plaintiff has filed the present application being G.A. No. 1 of 2020
praying for injunction restraining the defendant from infringing the
petitioner's registered trademark "SILK" or its variants by using the
trademark "HALO SILK".
2. The petitioner company was originally incorporated on 17th December,
1923 in West Bengal, India. It commenced Paints business from that
date or soon thereafter and the first Paint Factory was established in
Howrah, West Bengal with the corporate name Hadfields India Limited.
Thereafter, a series of change in the name of the Plaintiff Company had
taken place and now it is known as Berger Paints India Limited.
3. The petitioner company has an international presence in Nepal,
Bangladesh, Poland, United Kingdom, France, Ukraine and Russia
directly or through its subsidiaries. The petitioner's sister Company in
Bangladesh is the dominant leader, with over 65% market share in that
country. The petitioner company has maintained its position of being
amongst the top two Paint Companies in India, and the sales turnover
of its products, amounts to more than Rs.6000 Crores for the financial
year 2018-2019.
4. The petitioner company (which expression shall include the predecessor
in interest) owns more than 250 trade marks in India, and most of
them are registered in India. One of such trademarks was adopted by
the petitioner Company in an independent and bona fide manner which
was the trade mark "SILK", sometimes on or about 07.06.1980 in
respect of goods dealt in by the petitioner company and the petitioner
has been using the said mark since then, either standalone or in
conjunction with some other marks and charters.
5. The expression SILK was first ingeniously adopted by the plaintiff
company in respect of a wide ambit of paint products and it has been in
use ever since the adoption in the year 1980. The said trade mark SILK
has been in use by the petitioner company in myriad forms for paint
and other related products. First commercial use of the expression SILK
as the mark, LUXOL SILK was made way back in the year 1980 in
relation to Paints, Primers, Emulsions, Enamels, and Varnishes
amongst others. The trade mark LUXOL SILK has become one of the
"premium highly sought after brands" in the field of Paint and allied
products in India. The mark SILK are being used either standalone, or
along with its house mark BERGER/LEWIS BERGER and other
trademarks, but the products marketed and sold under the mark SILK
are called, asked for and described by the customers or traders with the
name SILK, which has been an established trade mark in India. The
trade mark SILK registered in favour of the plaintiff in different forms
and manners are as follows :
Sl. Trade Trade Mark No. Class Goods/Services Status
No. Mark
1. SILK 2598721 02 Paints, Registered
As of Enamels,
19.09.2013 Primers and
Varnishes
(other than
Insulating
Varnish) and
Dry Colours for
Paints,
Distempers,
Lacquers,
Lacquering
Matters ( Not
for Laundry or
Toilet use),
Preservatives
against Rust
and
Deterioration of
Wood, Dyes,
Dyestuffs,
Resins, Fire
Retarding
Paints and
Compounded
Paints, Cement
Paints,
Preservatives
against Heat
and Corrosion,
Powder Paints
and Dry Paints,
Acrylic Paints
and Emulsion,
Gum Resins,
Thinners.
Sl. Trade Mark Trade Mark Class Goods/ Status
No. No. Services
2. SILK 2641641 02 Paints, Registered
DESIGNZZ as of Enamels,
12/12/2013 Primers and
Varnishes
(other than
Insulating
Varnish) and
Dry Colours
for Paints,
Distempers,
Lacquers,
Lacquering
Matters ( Not
for Laundry
or Toilet use),
Preservatives
against Rust
and
Deterioration
of Wood,
Dyes,
Dyestuffs,
Resins, Fire
Retarding
Paints and
Compounded
Paints,
Cement
Paints,
Preservatives
against Heat
and
Corrosion,
Powder Paints
and Dry
Paints,
Acrylic Paints
and
Emulsion,
Gum Resins,
Thinners.
3. Bp British 369887 02 Paints, Registered
Paints as of Varnishes,
LUXOL 19.12.1980 Enamel in the
SILK Nature of
Paints all
being goods
included in
Class 2
Sl. Trade Mark Trade Mark Class Goods/Services Status
No. No.
4. LUXOL SILK 369885 02 Paints, Registered
as of Varnishes
19.12.1980 (other than
Insulating
Varnish) and
Enamel in the
Nature of
Paints all being
the goods
included in
Class 2
5. LUXOL SILK 988901 02 Paints, Registered
SPLENDO as of Varnishes,
UR 08.02.2001 Lacquers,
Powder Paints,
Dry Paints,
Chemical
Colouring
Composition,
Dye and
Dyestuffs, Gum
Resins
6. LEWIS 1498685 02 Paints, Registered
BERGER as of Varnishes,
BREATHE 25.10.2006 Acrylic
EASY SILK Emulsion,
EMULSION Enamels,
Primer,
Colouring
Matters,
Preservatives
against Rust
and
Deterioration of
Wood, Dyestuff,
Powder
Coatings,
Coluring
Resins
7. LEWIS 1498707 02 Paints, Registered
BERGER as of Varnishes,
COLORBA 25.10.2006 Acrylic
NK SILK Emulsion,
SPLENDO Enamels,
UR Primer,
LUXURY Colouring
EMULSION Matters,
PRECIOUS Preservatives
INTERIOR against Rust
WALL and
PAINT Deterioration of
Wood, Dyestuff,
Powder
Coatings,
Coluring
Resins
8. LEWIS 1498710 02 Paints, Registered
BERGER as of Varnishes,
SILK 25.10.2006 Acrylic
LUXURY Emulsion,
EMLUSION Enamels,
PRECIOUS Primer,
INTERIOR Colouring
WALL Matters,
PAINT Preservatives
against Rust
and
Deterioration of
Wood, Dyestuff,
Powder
Coatings,
Coluring
Resins
9. LEWIS 2322928 02 Paints, Registered
BERGER as of Enamels,
SILK 27/04/2012 Primers and
Varnishes
(other than
Insulating
Varnish) and
Dry Colours for
Paints,
Distempers,
Lacquers,
Lacquering
Matters ( Not
for Laundry or
Toilet use),
Preservatives
against Rust
and
Deterioration of
Wood, Dyes,
Dyestuffs,
Resins, Fire
Retarding
Paints and
Compounded
Paints, Cement
Paints,
Preservatives
against Heat
and Corrosion,
Powder Paints
and Dry Paints,
Acrylic Paints
and Emulsion,
Gum Resins,
Thinners.
10. LEWIS 2641642 02 Paints, Registered
BERGER as of Enamels,
SILK 12/12/2013 Primers and
DESIGNZZ Varnishes
(other than
Insulating
Varnish) and
Dry Colours for
Paints,
Distempers,
Lacquers,
Lacquering
Matters ( Not
for Laundry or
Toilet use),
Preservatives
against Rust
and
Deterioration of
Wood, Dyes,
Dyestuffs,
Resins, Fire
Retarding
Paints and
Compounded
Paints, Cement
Paints,
Preservatives
against Heat
and Corrosion,
Powder Paints
and Dry Paints,
Acrylic Paints
and Emulsion,
Gum Resins,
Thinners.
11. XP LEWIS 3335353 02 Paints, Registered
BERGER As of Enamels,
SILK 12.08.2016 Primers and
GLAMOR Varnishes
(other than
Insulating
Varnish) and
Dry Colours for
Paints,
Distempers,
Lacquers,
Lacquering
Matters ( Not
for Laundry or
Toilet use),
Preservatives
against Rust
and
Deterioration of
Wood, Dyes,
Dyestuffs,
Resins, Fire
Retarding
Paints and
Compounded
Paints, Cement
Paints,
Preservatives
against Heat
and Corrosion,
Powder Paints
and Dry Paints,
Acrylic Paints
and Emulsion,
Gum Resins,
Thinners.
12. LEWIS 3335347 02 Paints, Registered
BERGER As of Enamels,
SILK 12.08.2016 Primers and
GLAMOUR Varnishes
(other than
Insulating
Varnish) and
Dry Colours for
Paints,
Distempers,
Lacquers,
Lacquering
Matters ( Not
for Laundry or
Toilet use),
Preservatives
against Rust
and
Deterioration of
Wood, Dyes,
Dyestuffs,
Resins, Fire
Retarding
Paints and
Compounded
Paints, Cement
Paints,
Preservatives
against Heat
and Corrosion,
Powder Paints
and Dry Paints,
Acrylic Paints
and Emulsion,
Gum Resins,
Thinners.
13. LEWIS 2641639 02 Paints, Registered
BERGER As of Enamels,
SILK 12/12/2013 Primers and
IMULSION Varnishes
S (other than
Insulating
Varnish) and
Dry Colours for
Paints,
Distempers,
Lacquers,
Lacquering
Matters ( Not
for Laundry or
Toilet use),
Preservatives
against Rust
and
Deterioration of
Wood, Dyes,
Dyestuffs,
Resins, Fire
Retarding
Paints and
Compounded
Paints, Cement
Paints,
Preservatives
against Heat
and Corrosion,
Powder Paints
and Dry Paints,
Acrylic Paints
and Emulsion,
Gum Resins,
Thinners.
14. Experience 2765811 02 Paints, Registered
Silk As of Enamels,
01/07/2014 Primers and
Varnishes
(other than
Insulating
Varnish) and
Dry Colours for
Paints,
Distempers,
Lacquers,
Lacquering
Matters ( Not
for Laundry or
Toilet use),
Preservatives
against Rust
and
Deterioration of
Wood, Dyes,
Dyestuffs,
Resins, Fire
Retarding
Paints and
Compounded
Paints, Cement
Paints,
Preservatives
against Heat
and Corrosion,
Powder Paints
and Dry Paints,
Acrylic Paints
and Emulsion,
Gum Resins,
Thinners.
15. DuniyaDekhegi 2765808 02 Paints, Registered
Jab Silk As of Enamels,
SeSaje 01/07/2014 Primers and
Zindagi Varnishes
(other than
Insulating
Varnish) and
Dry Colours for
Paints,
Distempers,
Lacquers,
Lacquering
Matters ( Not
for Laundry or
Toilet use),
Preservatives
against Rust
and
Deterioration of
Wood, Dyes,
Dyestuffs,
Resins, Fire
Retarding
Paints and
Compounded
Paints, Cement
Paints,
Preservatives
against Heat
and Corrosion,
Powder Paints
and Dry Paints,
Acrylic Paints
and Emulsion,
Gum Resins,
Thinners.
16. ACRI-SILK 2739987 02 Paints, Registered
As of varnishes,
20/05/2014 lacquers,
preservatives
against rust &
deterioration of
wood, colouring
matters, dye
stuffs, natural
resins, metals
in foil & powder
form for
painters &
decorators,
enamels,
distempers,
varnishes,
thinners,
strainers,
acrylic paints,
anti-corrosive
paints, anti-
fouling paints,
anti-static
paints,
automotive
paints, cement
preservatives,
ceramic paints,
dispersion
paints,
emulsions in
the nature of
paints,
luminous
paints, paints,
powder paints,
rubber paints
textured
paints.
Sl. Trade Trade Mark Class Goods/Services Status
No. Mark No.
17. LUXOL 369886 17 Insulating Registered
SILK As of Varnishes and
19.12.1980 Materials other
than Glass of
Porcelain
included in
Class 17 for
Insulation
18. B. British 369884 17 Insulating Registered
Paints as of Varnishes and
LUXOL 19.12.1980 Materials other
SILK than Glass and
Porcelain
included in
Class 17 for
Insulation
19. LEWIS 2322924 37 Painting (interior Registered
BERGER as of and exterior),
SILK 27/04/2012 repairing and
renovation of
building (interior
and exterior).
20. LEWIS 2322927 01 Synthetic Resine Registered
BERGER as of Chemical
SILK 27/04/2012 Compounds and
substances,
Colouring and
Tanning;
Polyurethane,
Chemical
solution and
Chemical
Preparations
used against
Deterioration of
Wood, Chemical
Solutions used
in Paints,
Polymer Binder,
Emulsifying
Agents,
Chemical
Coating
Containing
Phosphorus for
use in Industrial
Treatment of
Metals to render
them resistant o
Corrosion,
Chemical
Composition
(Not being in the
Nature of Paints)
for use in the
industrial
Process of
Mechanical
Deformation of
Iron and Steel,
Chemical
Compositions
(Not in the
Nature of Paints)
for the
Treatment of
Non-Ferrous
Metals in the
Course of
Manufacture
Chemical,
Substance used
in Industry for
use in the
Treatment of
Metals.
21. LEWIS 2322923 17 Insulating Registered
BERGER As of Varnishes.
SILK 27/04/2012
22. XP 3335356 35 Wholesale, Registered
LEWIS As of Retail Outlet &
BERGER 12.08.2016 Departmental
SILK Store,
GLAMOR Showroom To
Enable the
Customers To
View And
Purchase of
Paints, Primers,
Chemical
products and
Paint related
products,
Wholesale &
Retail outlets
and shops
including
services relating
To distribution,
trading and
marketing of
Paints, Primers,
Chemical
products and
Paint related
products,
Advertising,
Radio
Advertising and
Commercials,
Television
Advertising and
Commercials,
Creating
Advertisement
Films, Providing
Online Shopping
Services,
Business
Management
and Business
Administration.
23. XP 3335357 37 Painting (interior Registered
BERGER As of and exterior),
SILK 12.08.2016 repairing and
GLAMOR renovation of
building (interior
and exterior)
building
construction
24. LEWIS 3335346 01 Synthetic Registered
BERGER As of Resins,
SILK 12.08.2016 Chemical
GLAMOR Compounds and
Substances,
Colouring and
Tanning,
Polyurethane,
Chemical
Solution and
Chemical
Preparations
used against
Deterioration of
Wood, Chemical
Solutions used
in Paints,
Polymer Binder,
Emulsifying
Agents,
Chemical
Coating
Containing
Phosphorus for
use in Industrial
Treatment of
Metals to render
them resistant
to Corrosion.
25. XP 3335352 01 Synthetic Registered
LEWIS As of Resins,
BERGER 12.08.2016 Chemical
SILK Compounds and
GLAMOR Substances,
Colouring and
Tanning,
Polyurethane,
Chemical
Solution and
Chemical
Preparations
used against
Deterioration of
Wood, Chemical
Solutions used
in Paints,
Polymer Binder,
Emulsifying
Agents,
Chemical
Coating
Containing
Phosphorus for
use in Industrial
Treatment of
Metals to render
them resistant
to Corrosion.
Sl. Trade Trade Mark No. Class Goods/Services Status
No. Mark
26. LEWIS 3335348 16 Paper, Paper Registered
BERGER As of Stationery,
SILK 12.08.2016 Newspaper,
GLAMOR Periodicals,
books,
Magazines,
Paper Articles,
Printed
Matters, Office
Requisites,
Instructional
and Teaching
Materials, Files,
Publications,
Pads, Posters,
Calenders,
Pamphlet,
Computer
Printout,
Computer
Programmes,
Stationery for
Computers,
Journals,
forms,
Manuals,
Photographs,
Cards, Guide
Books.
27. XP LEWIS 3335354 16 Paper, Paper Registered
BERGER As of Stationery,
SILK 12.08.2016 Newspaper,
GLAMOR Periodicals,
books,
Magazines,
Paper Articles,
Printed
Matters, Office
Requisites,
Instructional
and Teaching
Materials, Files,
Publications,
Pads, Posters,
Calenders,
Pamphlet,
Computer
Printout,
Computer
Programmes,
Stationery for
Computers,
Journals,
forms,
Manuals,
Photographs,
Cards, Guide
Books.
28. XP 3335355 17 Insulating Registered
BERGER As of Varnishes.
SILK 12.08.2016
GLAMOR
29. LEWIS 3335350 35 Wholesale, Registered
BERGER As of Retail Outlet &
SILK 12.08.2016 Departmental
GLAMOR Store,
Showroom To
Enable the
Customers To
View And
Purchase of
Paints, Primers,
Chemical
products and
Paint related
products,
Wholesale &
Retail outlets
and shops
including
services
relating To
distribution,
trading and
marketing of
Paints, Primers,
Chemical
products and
Paint related
products,
Advertising,
Radio Adverting
and
Commercials,
Television
Adverting and
Commercials,
Creating
Advertisement
Films,
Providing
Online
Shopping
Services,
Business
Management
and Business
Administration.
30. LEWIS 3335351 37 Painting Registered
BERGER As of (interior and
SILK 12.08.2016 exterior)
GLAMOR repairing and
renovation of
building
(interior and
exterior),
building
construction
Insulating
Varnishes.
31. LEWIS 3335349 17 Insulating Registered
BERGER As of Varnishes.
SILK 12.08.2016
GLAMOR
32. Duniya 2765810 37 Painting Registered
Dekhegi As of (Interior and
Jab SILK 01/07/2014 Exterior),
Se Saje Repairing and
Zindagi Renovation of
Building
(Interior and
Exterior).
33. Duniya 2765809 35 Wholesale, Registered
Dekhegi As of Retail Outlet &
Jab SILK 01/07/2014 Store,
Se Saje Showroom To
Zindagi Enable The
Customers To
View And
Purchase of
Paints, Primers,
Chemical
products and
Paint Related
products,
Wholesale&
Retail outlets
and shops
including
services
relating To
distribution,
trading and
marketing of
Paints, Primers,
Chemical
products and
Paint related
products,
Advertising,
Radio
Advertisingand
Commercials,
Television
Advertising and
Commercials,
Creating
Advertisement
Films,
Providing
Online
Shopping
Services.
34. Experience 2765812 35 Wholesale, Registered
Silk As of Retail Outlet &
01/07/2014 Store,
Showroom To
Enable The
Customers To
View And
Purchase of
Paints, Primers,
Chemical
products and
Paint Related
products,
Wholesale &
Retail outlets
and shops
including
services
relating To
distribution,
trading and
marketing of
Paints, Primers,
Chemical
products and
Paint related
products,
Advertising,
Radio
Advertising and
Commercials,
Television
Advertising and
Commercials,
Creating
Advertisement
Films,
Providing
Online
Shopping
Services.
35. Experience 2765813 37 Painting Registered
Silk As of (Interior and
01/07/2014 Exterior),
Repairing and
Renovation of
Building
(interior and
Exterior).
6. The plaintiff company in order to promote its reputed trade mark "SILK"
and its variants made extensive publicity campaign, advertisements in
various media and other sales promotional campaigns, in such a
manner that the said brand/name/trademark "SILK" and its variants
subliminally sticks in the minds of the consumers as the product of the
plaintiff company.
7. In the first part of December' 2019, the plaintiff came to know that the
defendant who is a new comer on the field of paints, has been pushing
their paint products with the mark "SILK" under the grab of expression
"HALO". The plaintiff has issued a legal notice dated 4th December,
2019, to the defendant calling upon the defendant to immediately cease
and desist from using the Trade Mark of the plaintiff "SILK" either
standalone or in conjunction with the other trade mark, together with
"HALO", for the paint products and also to refrain from making any
advertisement and promotion of the products with the mark "SILK".
The defendant had sent a reply by denying to comply with the
requisitions made on behalf of the plaintiff.
8. Mr. Surajit Nath Mitra, Learned Senior Advocate representing the
plaintiff submitted that the trade mark containing the expression
"SILK" adopted by the defendant constitutes infringement of the
plaintiff's well known and registered trade mark "SILK" and variants
thereof, besides a violation of the plaintiff's common law rights in the
said trade mark. The defendant adopted the trade mark wantonly and
knowing fully well about the plaintiff's business carried under the
reputed trade mark "SILK" as well as statutory rights therein.
9. Mr. Mitra submitted that in order to put a shield on the notoriety and
impropriety in the adoption of the trade mark "SILK" for paint products
has been pushing the products with the name or expression "HALO
SILK". The adoption of the expression/ mark "SILK" for the paint
products by the defendant, even as the part of the trade mark is not
permissible and certainly is an act of infringement of the plaintiff's
reputed and registered trade mark "SILK" and variants thereof.
10. Mr. Mitra submitted that the defendant has deliberately adopted the
plaintiff's reputed and registered trade mark "SILK" on its products, in
order to derive wrongful advantage and to trade upon the enormous
popularity, goodwill and reputation of the plaintiff's products.
11. Mr. Mitra submitted that the defendant has no right and is not entitled
to use the plaintiff's trade mark "SILK". The defendant was aware of the
fact that the trade mark "SILK" or its variants thereof is the sole and
exclusive property of the plaintiff, particularly for paint products and
the plaintiff alone has the right to exploit the same.
12. Mr. Mitra in support of his case has relied upon the following case laws:
i. 1989 (9) PTC 14 (Cal) (Express Bottlers Services
Pvt. Ltd. -vs- Pepsi Inc.& Ors.).
ii. 2004 (29) PTC 435 (Del) (Dr. Reddy's Laboratories
Ltd. -vs- Reddy Pharmaceuticals Limited).
iii. AIR 1955 SC 558 (Registrar of Trade Mark -vs-
Ashok Chandra Rakhit Ltd.).
iv. 1984 SCC OnLine Del 465: 1984 PTC 102 (Charan
Dass & Veer Industries (India) -vs- Bombay
Crockery House).
v. 2016(66) PTC 1[SC] (S. Syed Mohideen -vs- P.
Sulochana Bai).
vi. 2015 SCC OnLine Cal 3866 (Khadim India Ltd. -
vs- Lifestyle International Private Ltd.).
13. Per contra, Mr. Ranjan Bachawat, Learned Senior Advocate
representing the defendant submitted that the expression "SILK" on the
defendants packaging is not used as a trade mark or in the trade mark
sense, but only with a view to describe and identify the characteristics
/quality/finish offered by its product variants. He submits that the use
of term "SILK" by the defendant does not constitute infringement as
contemplated under the Trade Marks Act.
14. Mr. Bachawat submitted that that the expression "SILK" is being used
only as description to indicate the kind and characteristic of the paint's
finish and texture and not as a trade mark. He submits that the
expression "SILK" as used upon the range of products sold under the
house mark "JSW PAINTS" and bearing the product identification mark
HALO,AQUAGLO,AURUS or PIXA is a common industry jargon for
explaining the type of paint finish that has a mid-shine finish and is
easy to maintain considering that surfaces with "SILK" finish can be
wiped.
15. Mr. Bachawat submitted that the use of the expression "SILK" for paint
finish is customary in the trade and is not capable of being protected as
a trade mark with respect to paints, emulsions and distempers. He
submits that no amount of use of the said term can provide any
exclusive right in the said term in one manufacturer of paints to the
exclusion of another. He submits that the plaintiff is attempting to
claim a monopoly in the term "SILK" in respect of paints which is not
permissible under law. He submits that the plaintiff has sought to
claim exclusive right in the term "SILK" but the plaintiff has failed to
demonstrate any statutory or common law with regard to the same.
16. Mr. Bachawat submitted that the registration sought to be relied upon
by the plaintiff subject to disclaimers and the conditions imposed by
the Registrar of Trade Mark who is the statutory authority on the Trade
Marks in India. He submits that the plaintiff is not entitled to claim any
exclusive right over word "SILK" per-se.
17. Mr. Bachawat submitted that in the month of January' 2020, the
defendant has filed Trade Mark Application Nos. 4416451 in Class 2
and 4416452 in Class 2 for the labels being used for the silk finish
variant for the product bearing the mark "HALO". He submits that the
application filed by the defendant were directly accepted and advertised
by the Registrar of Trade Mark and they were not considered to be
similar to any other trade mark in the Trade Mark Register.
18. Mr. Bachawat submitted that the term "SILK" forms a part of any other
registrations obtained by the petitioner, such registrations cannot in
law confer any monopoly or exclusive rights in favour of the petitioner
in the descriptive term SILK in view of the express language of Section
17 of the Trade Marks Act irrespective of whether or not a disclaimer or
condition has been imposed upon the petitioner.
19. Mr. Bachawat relied upon the following case laws in support of his
case:
i. (2018) 16 SCC 632 (Parakh Vanijya Private Limited
-vs- Baroma Agro Product and Others).
ii. 2010 SCC Online Cal 134 (Three -N-Product Private
Limited -vs- Emami Limited).
iii. ILR(2010) II Delhi 85 (Cadila Health Care Ltd.-vs-
Gujrat Co-operative Milk Marketing Federation
Ltd.&Ors).
iv. 2021 SCC Online Cal 3068 (Shree Ganesh Besan
Mills and Others -vs- Ganesh Grains Limited and
Another).
20. It is relevant to extract the relevant provisions of the Trademarks Act,
1999 ("the Act"):
Section 2(1)(h): 'deceptively similar'-- A mark shall be deemed to be
deceptively similar to another mark if it so nearly resembles that other
mark as to be likely to deceive or cause confusion;
xxxxxxxxxxxxxxxxxxxxxxxxxxx
Section 29. Infringement of registered trademarks-- (1) A Registered
trade mark is infringed by a person who, not being registered proprietor
or a person using by way of permitted use, uses in the course of trade,
a mark which is identical with, or deceptively similar to, the trade mark
in relation to goods or services in respect of which the trade mark is
registered and in such manner as to render the use of the mark likely
to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a
registered proprietor or a person using by way of permitted use, uses in
the course of trade, a mark which because of--
(a) its identity with the registered trade mark and the similarity of the
goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or
similarity of the goods or services covered by such registered trade
mark; or
(c) its identity with the registered trade mark and the identity of the
goods on services covered by such registered trade mark is likely to
cause confusion on the part of the public, or which is likely to have an
association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall
presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a
registered proprietor or a person using by way of permitted use, uses in
the course of trade, a mark which--
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those
for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of
the mark without due cause takes unfair advantage of or is detrimental
to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such
registered trade mark, as his trade name or part of his business
concern dealing in goods or services in respect of which the trade mark
is registered.
(6) For the purposes of this section, a person uses a registered mark, if,
in particular, he--
(a) affixes it to goods or the packaging thereof;
(c) offers or exposes goods for sale, puts them on the market, or stocks
them for those purposes under the registered trade mark, or offers or
supplies services under the registered trade mark;
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such
registered trade mark to a material intended to be used for labeling or
packaging goods, as a business paper, or for advertising goods or
services, provided such person, when he applied the mark, knew or had
reason to believe that the application of the mark was not duly
authorized by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade
mark if such advertising--
(a) takes unfair advantage of and is contrary to honest practices in
industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of
or include words, the trade mark may be infringed by the spoken use of
those words as well as by their visual representation and reference in
this section to the use of a mark shall construed accordingly.
21. A trademark, it is said, denotes a connection in the course of trade
between a manufacturer and his goods. It is an identification
characterized famously as "a badge of origin". An important aspect here
is that the mark should be distinctive; it should be capable of
distinguishing the goods and services of one from another. The heart of
trademark protection revolves around protecting consumers from being
mislead. Trademarks impart source and producer identifying cues (or
markers), and thereby provide consumers with the means to make
judgments concerning the goods before sampling or purchasing them.
One of the essential conditions for protection is that the mark should
have acquired some distinctiveness, and the claim for that is not
founded on mere continued use. The unfair use of a mark which is
identical, or similar to the trademark in question leads the courts, in
infringement actions, to examine the rival marks, as a whole, to
determine the scope or potentiality or likelihood of confusion. This was
explained in Durga Putt Sharma v. Navaratna Pharmaceuticals
Laboratories, (1965) 1 SCR 737once the use by the defendant of the
mark which is claimed to infringe the plaintiffs 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. 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 sometimes 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. The persons who would be deceived are, of course, the
purchasers of the goods and it is the likelihood of their being deceived
that is the subject of consideration. The resemblance may be phonetic,
visual or in the basic idea represented by the plaintiffs mark. The
purpose of the comparison is for determining whether the essential
features of the plaintiffs trade mark are to be found in that used by the
defendant. The identification of the essential features of the mark is in
essence a question of fact and depends on the judgment of the Court
based on the evidence led before it as regards the usage of the trade. It
should, however, be borne in mind that the object of the enquiry in
ultimate analysis is whether the mark used by the defendant as a
whole is deceptively similar to that of the registered mark of the
plaintiff.These tests have been applied in subsequent decisions reported
as F. Hoffman La Roche & Co v. Geoffrey Manner Co Pvt) Ltd.
1969(2) SCC 716; Cadila Health Care Ltd. v. Cadila
Pharmaceuticals Ltd., (2001) 5 SCC 73, and Ramdev Food
Products (P) Ltd. v. ArvindbhaiRambhai Patel, (2006) 8 SCC 726. In
the last decision (Ramdev) the Supreme Court noted the decision of the
European Court in Canon Kabushiki Kaisha v. Metro Goldwyn
Mayer Inc., 1999 RPC 117 to the following effect:
"28. That case concerned the interpretation of Article 4(1)(b) of the
directive insofar as it refers to 'a likelihood of confusion on the part
of the public, which includes the likelihood of association with the
earlier trade mark'. The court explained that it had been submitted
that 'the likelihood of association may arise in three sets of
circumstances: (1) where the public confuses the sign and the mark
in question (likelihood of direct confusion); (2) where the public
makes a connection between the proprietors of the sign and those of
the mark and confuses them (likelihood of indirect confusion or
association); (3) where the public considers the sign to be similar to
the mark and perception of the sign calls to mind the memory of the
mark, although the two are not confused (likelihood of association in
the strict sense) (para 16 of the judgment).
29. The court stated that it was therefore necessary to determine
'whether Article 4(1)(b) can apply where there is no likelihood of
direct or indirect confusion, but only a likelihood of association in the
strict sense' (para 17 of the judgment). It concluded: 'The terms of
the provision itself exclude its application where there is no
likelihood of confusion on the part of the public' (para 18 of the
judgment). Thus, the court held that 'the mere association which the
public might make between two trademarks as a result of their
analogous semantic content is not in itself a sufficient ground for
concluding that there is a likelihood of confusion' within the meaning
of Article 4(1)(b).
40. That view is also confirmed by the judgment of the court in
Sabel, in which it held that the 'likelihood of confusion must ... be
appreciated globally, taking into account all factors relevant to the
circumstances of the case' (at para 22). It is true that that statement
was made in a different context: the court was there considering the
question whether conceptual similarity of the marks alone could give
rise to confusion within the meaning of Article 4(1)(b), in a situation
in which the goods in question were clearly the same. However, the
statement is one of general application."
22. As Section 29(1) and (2) of the Act clarify, infringement actions cover
resemblance or deceptive similarity between a registered mark and
another, in relation to the same or similar goods. In such case, if the
requisite degree of resemblance is established, infringement has to be
presumed, by virtue of Section 29(3). However, the legislature has
devised a slightly different standard in case of infringement of
trademarks, where the goods or products are not similar, but are
dissimilar. This is, in Trademark law parlance, known as action for
trademark dilution.
23. The old law in India, i.e the Trade and Merchandise Marks Act, 1958,
did not provision for trademark dilution, as in the case of Section 29(4).
The principle of dilution therefore, was developed by our courts, having
regard to internationally recognized standards about the need to
protect generally well known trademarks, whose exploitation, without
any good cause in relation to diverse and dissimilar products or
services could injure and "dilute" its appeal. Thus, in Daimler
Benzaktiegesellschaft v. Eagle Flask Industries Ltd., ILR (1995) 2
Del 817 this court held that:
"14. There are marks which are different from other marks. There
are names and marks which have become household words.
Mercedes as name of a Car would be known to every family that
has ever used a quality car. The name "Mercedes" as applied to a
car, has a unique place is the world. There is hardly one who is
conscious of existence of the cars/automobilies, who would not
recognize the name "Mercedes" used in connection with cars.
Nobody can plead in India, where "Mercedes" cars are seen on
roads, where "Mercedes" have collaborated with TATAs, where
there are Mercedes Benz--Tata trucks have been on roads in very
large number, (known as Mercedes Benz Trucks, so long as the
collaboration was there), who can plead that he is unaware of the
word "Mercedes" as used with reference to car or trucks;
15. In my view, the Trade Mark law is not intended to protect a
person who deliberately, sets out to take the benefit of somebody
else's reputation with reference to goods, especially so when the
reputation extends worldwide. By no stretch of imagination can it
be said that use for any length of time of the name "Mercedes"
should be not, objected to.
16. We must keep in mind that the plaintiff company exists in
Germany. An insignificant use by too small a product may not
justify spending large amounts needed in litigation. It may not be
worthwhile.
17. However, if despite legal notice, any one big or small, continues
to carry the illegitimate use of a significant world wide renowned
name/mark as is being done in this case despite notice dated 04-
07-1990, there cannot be any reason for not stopping the use of a
world reputed name. "None should be continued to be allowed to
use a world famed name to goods which have no connection with
the type of goods which have generated the world wide reputation.
18. In the instant case, "Mercedes" is a name given to a very high
priced and extremely well engineered product. In my view, the
defendant cannot dilute that by user of the name Mercedes with
respect to a product like a thermos or a casserole."
The observations have been assimilated in case law, by the courts in
India, and applied, wherever trademark dilution was alleged
(Ref Larsen & Toubro Limited v. LachmiNarain Traders, ILR
(2008) 2 Del 687, Sunder ParmanandLalwani and Ors. v. Caltex
(India) Ltd., AIR 1969 Bombay 24; Bata India Ltd. v. M/s. Pyare
Lal & Co. Meerut City, AIR 1985 All 242; Kiriloskar Diesel Recon
(P) Ltd. v. Kirloskar Proprietary Ltd., AIR 1996 Bom 149).
24. The Act, as existing is not explicit about dilution-it does not refer to
that term. Yet, the entire structure of Section 29(4) is different from the
earlier part, and in effect expresses Parliamentary intent about the
standards required for a plaintiff to establish dilution of its trademark,
in relation to dissimilar goods or products. This is because:
(1) The "likelihood of Confusion" test which is the essential basis of
Trademark law, is not incorporated in relation to infringement of the
kind Section 29(4) envisions. Section 29(1) -- which talks of
trademark infringement, generally, prescribes that the impugned
mark should be "identical with, or deceptively similar to" the
registered trademark. Section 29(2), (which deals with trademark
infringement) enacts that the impugned mark should be similar or
identical with the registered mark, as to cause confusion in relation
to similar goods. The emphasis on similar goods is the recurring
theme in each of the sub clauses (a), (b) and (c)) and the
identity/similarity requirement along with the similarity of goods are
twin, conditions (established by the use of the conjunctive "and").
However, Section 29(4) posits identity or similarity of the mark
alone but, in relation to dissimilar goods.
(2) The object of the "dilution" form of infringement (under Section
29(4)) in effect, is a wider trademark protection without the
concomitant likelihood of confusion requirement, as it is in respect of
dissimilar or unrelated products and services.
(3) The confusion requirements under Section 28 are different from
those under Section 29(4). Section 29(4) does not refer to the need for
proving confusion anywhere in the relevant portions. Obviously the
emphasis here is different.
(4) The plaintiff has to establish, under Section 29(4) apart from the
similarity of the two marks (or their identity) that his (or its) mark--
(i) has a reputation in India;
(ii) the use of the mark without due cause
(iii) the use (amounts to) taking unfair advantage of or is detrimental
to, the distinctive character or repute of the registered trade mark.
(5) Importantly, there is no presumption about trademark
infringement, even if identity of the two marks is established, under
Section 29(4). In contrast, Section 29(3) read with Section 29(2)(c)
enact that if it is established that the impugned mark's identity with
the registered trade mark and the identity of the goods on services
covered by such registered trade mark is likely to cause confusion on
the part of the public, or which is likely to have an association with
the registered trade mark, "the court shall presume that it is likely to
cause confusion on the part of the public."
25. The test of similarity or confusion had been indicated, in Sabel
BV v. Puma AG, [1998] RPC 199 as follows:--
"... The likelihood of confusion must therefore be
appreciated globally, taking into account all factors
relevant to the circumstances of the case....That global
appreciation of the visual, aural or conceptual similarity or
the marks in question, must be based on the overall
impression given by the marks, bearing in mind, in
particular, their distinctive and dominant components ...
The average consumer normally perceives a mark as a
whole and does not proceed to analyse its various details."
It was held, in Adidas-Salomon AG v. Fitnessworld Trading Ltd.,
0041 Ch 120, that it is not necessary to establish confusion or the
likelihood of confusion in order to establish infringement under this
head. The plaintiff has to show that there is sufficient degree of
similarity between the mark with a reputation and the sign (i.e. the
impugned mark) to have the effect that the relevant section of the
public establishes a link between the sign and the mark. The court also
cautioned that all tests have to be cumulatively satisfied, or else the
courts would be indulging in over-protection to the registered mark,
affecting competition:
'Above all, it is necessary to give full weight to the
provisions of Article 5(2) as a whole. Thus the national
court must be satisfied in every case that the use of the
contested sign is without due cause; and that it takes
unfair advantage of, or is detrimental to, the distinctive
character or the repute of the mark. These requirements,
properly applied, will ensure that marks with a
reputation, whether or not the reputation is substantial,
will not be given unduly extensive protection.'
26. Explaining what is meant by "reputation" it was held, in General
Motors Corp v. Yplon SA, [1999] All ER (EC) 865 by the ECJ that in
order to have a reputation a trade mark had to satisfy a 'knowledge
threshold'. This was described as follows:
"26 The degree of knowledge required must be
considered to be reached when the earlier mark is
known by a significant part of the public concerned by
the products or services covered by that trade mark.
27 In examining whether this condition is fulfilled, the
national court must take into consideration all the
relevant facts of the case, in particular the market share
held by the trade mark, the intensity, geographical
extent and duration of its use, and the size of the
investment made by the undertaking in promoting it."
27. The need to establish "linkage" or mental association of the offending
mark, with that of the plaintiffs is one of the vital essentials for
securing relief in any claim for dilution. This was emphasized as
follows, by Professor McCarthy (McCarthy, J. Thomas. McCarthy
on Trademarks and Unfair Competition, Vol. IV, 4th ed. 1996 (loose leaf
updated December 2005, release 36):
"... if a reasonable buyer is not at all likely to think of the senior
user's trademark in his or her own mind, even subtly or
subliminally, then there can be no dilution. That is, how can there
be any "whittling away" if the buyer, upon seeing defendant's mark,
would never, even unconsciously, think of the plaintiffs mark? So
the dilution theory presumes some kind of mental association in
the reasonable buyer's mind between the two parties and the
mark."
"On the one hand, well-known mark owners say that people should
not reap where they have not sown, that bad faith should be
punished, that people who sidle up to their well-known marks are
guilty of dishonest commercial practice. These vituperations lead
nowhere. One might as well say that the well-known mark owner is
reaping where it has not sown when it stops a trader in a
geographic or market field remote from the owner's fields from
using the same or a similar mark uncompetitively.
28. The discussion on the subject would not be complete without a
reference to the judgment of the European Court, on the issue, in Intel
Corp Inc v. CPM United Kingdom Ltd., 2009 ETMR 13. The
claimant, Intel Corp Inc, registered trademark proprietor in respect of
various marks, in the United Kingdom and several European countries,
sued Intel-mark, the user of "Intel" in relation to telemarketing services.
The courts in the United Kingdom had refused relief, holding that there
was no dilution of the mark "Intel" despite its "huge" reputation;
nevertheless the Court of Appeals made a reference to the European
Court, which concurred with the view of the domestic courts. In the
judgment, it restated the principles governing the field, as follows:
"44 As regards the degree of similarity between the
conflicting marks, the more similar they are, the more likely
it is that the later mark will bring the earlier mark with a
reputation to the mind of the relevant public. That is
particularly the case where those marks are identical.
45 However, the fact that the conflicting marks are
identical, and even more so if they are merely similar, is
not sufficient for it to be concluded that there is a link
between those marks.
46 It is possible that the conflicting marks are registered for
goods or services in respect of which the relevant sections
of the public do not overlap.
47 The reputation of a trade mark must be assessed in
relation to the relevant section of the public as regards the
goods or services for which that mark was registered. That
may be either the public at large or a more specialised
public (see General Motors, paragraph 24).
48 It is therefore conceivable that the relevant section of the
public as regards the goods or services for which the earlier
mark was registered is completely distinct from the
relevant section of the public as regards the goods or
services for which the later mark was registered and that
the earlier mark, although it has a reputation, is not known
to the public targeted by the later, mark. In such a case,
the public targeted by each of the two marks may never be
confronted with the other mark, so that it will not establish
any link between those marks.
49 Furthermore, even if the relevant section of the public as
regards the goods or services for which the conflicting
marks are registered is the same or overlaps to some
extent, those goods or services may be so dissimilar that
the later mark is unlikely to bring the earlier mark to the
mind of the relevant public.
50 Accordingly, the nature of the goods or services for
which the conflicting marks are registered must be taken
into consideration for the purposes of assessing whether
there is a link between those marks.
51 It must also be pointed out that certain marks may have
acquired such a reputation that it goes beyond the relevant
public as regards the goods or services for which those
marks were registered.
52 In such a case, it is possible that the relevant section of
the public as regards the goods or services for which the
later mark is registered will make a connection between
the conflicting marks, even though that public is wholly
distinct from the relevant section of the public as regards
goods or services for which the earlier mark was
registered.
53 For the purposes of assessing where there is a link
between the conflicting marks, it may therefore be
necessary to take into account the strength of the earlier
mark's reputation in order to determine whether that
reputation extends beyond the public targeted by that
mark.
54 Likewise, the stronger the distinctive character of the
earlier mark, whether inherent or acquired through the use
which has been made of it, the more likely it is that,
confronted with a later identical or similar mark, the
relevant public will call that earlier mark to mind.
55 Accordingly, for the purposes of assessing whether
there is a link between the conflicting marks, the degree of
the earlier mark's distinctive character must be taken into
consideration.
56 In that regard, in so far as the ability of a trade mark to
identify the goods or services for which it is registered and
used as coming from the proprietor of that mark and,
therefore, its distinctive character are all the stronger if that
mark is unique -- that is to say, as regards a word mark
such as INTEL, if the word of which it consists has not
been used by anyone for any goods or services other than
by the proprietor of the mark for the goods and services it
markets -- it must be ascertained whether the earlier mark
is unique or essentially unique.
57 Finally, a link between the conflicting marks is
necessarily established when there is a likelihood of
confusion, that is to say, when the relevant public believes
or might believe that the goods or services marketed under
the earlier mark and those marketed under the later mark
come from the same undertaking or from economically-
linked undertakings (see to that effect, inter alia, Case C5-
342/97 Lloyd Schuhfabrik Meyer [1999] ECR 1-3819,
paragraph 17, and Case C-533/06 02 Holdings and 02
(UK) [2008] ECR 1-0000, paragraph 59).
58 However, as is apparent from paragraphs 27 to 31 of
the judgment in Adidas-Salomon and Adidas Benelux,
implementation of the protection introduced by Article
4(4)(a) of the Directive does not require the existence of a
likelihood of confusion.
59 The national court asks, in particular, whether the
circumstances set out in points (a) to (d) of Question 1
referred for a preliminary ruling are sufficient to establish a
link between the conflicting marks.
60 As regards the circumstance referred to in point (d) of
that question, the fact that, for the average consumer, who
is reasonably well informed and reasonably observant and
circumspect, the later mark would call the earlier mark to
mind is tantamount to the existence of such a link.
61 As regards the circumstances referred to in paragraphs
(a) to (c) of that question, as is apparent from paragraph 41
to 58 of this judgment, they do not necessarily imply the
existence of a link between the conflicting marks, but they
do not exclude one either. It is for the national court to base
its analysis on all the facts of the case in the main
proceedings.
62 The answer to point (i) of Question 1 and to Question 2
must therefore be that Article 4(4)(a) of the Directive must
be interpreted as meaning that whether there is a link,
within the meaning of Adidas-Salomon and Adidas
Benelux, between the earlier mark with a reputation and
the later mark must be assessed globally, taking into
account all factors relevant to the circumstances of the
case.
63 The fact that for the average consumer, who is
reasonably well informed and reasonably observant and
circumspect, the later mark calls the earlier mark with a
reputation to mind is tantamount to the existence of such a
link, within the meaning of Adidas-Salomon and Adidas
Benelux, between the conflicting marks.
64 The fact that:
-- the earlier mark has a huge reputation for certain
specific types of goods or services, and
-- those goods or services and the goods or services for
which the later mark is registered are dissimilar or
dissimilar to a substantial degree, and
-- the earlier mark is unique in respect of any goods or
services, does not necessarily imply that there is a link,
within the meaning of Adidas-Salomon and Adidas
Benelux, between the conflicting marks...."
29. It may be seen from the preceding discussion that the dilution of
trademark, is a species of infringement. Though trademarks are
concerned with protection of marks which have acquired a degree of
distinctiveness, in relation to particular goods and services, courts
have, over the years recognized that in relation to marks which have
achieved notoriety as to have a reputation about the quality of products
which the manufacturer, or services the originator (of the mark) is
associated with, then, even in relation to dissimilar goods -- or
unrelated products, protection of such brand name, mark or acquired
distinctiveness is essential. This measure of protection to marks in
relation to similar junior marks, but for dissimilar goods is, in
substance the protection against dilution (or Blurring or tarnishrrent)
of the mark. Prior to the 1999 Act. Indian law had developed through
case law; the new Act changed that, and has enjoined protection
against dilution, if certain essential elements are established; they are:
(1) The impugned mark is identical or similar to the senior
mark;
(2) The senior or injured mark has a reputation in India;
(3) The use of the impugned mark is without due cause;
(4) The use of the impugned mark (amounts to) taking unfair
advantage of, or is detrimental to, the distinctive character or
reputation of the registered trade mark.
Unlike in the case of infringement of trademark in relation to similar
goods or services, in the case of dilution (infringement of mark by use
in respect of dissimilar goods or services) there is no presumption of
infringement of the mark. This means that each element has to be
established.
30. The plaintiff here relies on exclusive materials in the form of brochures,
sale figures and brand awareness of its paint Berger SILK. The mark of
the plaintiff and the mark of the defendant are as follows :
Mark of the Plaintiff Mark of the Defendant
31. The plaintiff has annexed registration certificate of the Trade Mark of
SILK, LUXOL SILK, Berger SILK, Berger SILK DESIGNZZ, Berger SILK
GLAMOR and Experience Silk.
32. As per the Trade Mark registration of the defendant the Trade Mark is
JSW Paints HALO and Aurus. The Trade Mark image is :
33. From the documents annexed by both the parties in their pleading, it is
admitted that the defendant is also using the word "SILK" but the
defendant submits that the defendant is not using the word "SILK" as
Trade Mark. The use of the expression "SILK" for paint finish is
customary in the trade and is not capable of being protected as
trademark with respect of paints, emulsions and distempers.
34. The judgment reported in 2004 (29) PTC 435 (Del) (Dr. Reddy's
Laboratories Ltd. -vs- Reddy Pharmaceuticals Limited), which
reads as follows:
"17.Learned counsel for the defendant has
vehemently argued that the plaintiff is not entitled
to this discretionary relief on account of its
acquiescence and laches in objecting to the use of
trade mark "Reddy" by the defendant company. It
is submitted that since 1997 the plaintiff knew
that the defendant is trading and functioning
under the trade name "Reddy" but it never
objected and to the contrary it kept on having
business dealings with the defendant and
appointed him a Delcredere Agent in April, 2003.
This plea of the defendant is also prima
facie untenable for the reason that till August,
2003 there was no clash of interests between the
plaintiff and defendant company and in fact the
defendant was engaged in advancing and
promoting the business of the plaintiff company
by acting as its agent for the sale of bulk drugs.
The threat came in August, 2003 when the
defendant introduced in the market its
pharmaceutical preparations and thereby
threatened the business interests of the plaintiff
company. This move of the defendant was mala
fide on the face of it as it was not manufacturing
pharmaceutical preparations earlier but now it
was trying to market the pharmaceutical
preparations manufactured by others under the
trade mark "Reddy". The plaintiff immediately
raised objections, meetings were held and when
nothing came out the plaintiff rushed to the Court.
As such there was neither any acquiescence nor
any laches on the part of the plaintiff to object to
the impugned action of the defendant. It cannot
be said that the plaintiff has allowed the
defendant to build a reputation or goodwill in
trade name "Reddy" for use on pharmaceutical
preparations. Moreover, the owners of trade
marks or copy rights are not expected to run after
every infringer and thereby remain involved in
litigation at the cost of their business time. If the
impugned infringement is too trivial or
insignificant and is not capable of harming their
business interests, they may overlook and ignore
petty violations till they assume alarming
proportions. If a road side Dhaba puts up a board
of "Taj Hotel", the owners of Taj Group are not
expected to swing into action and raise objections
forthwith. They can wait till the time the user of
their name starts harming their business interests
and starts misleading and confusing their
customers."
In the case of Dr. Reddy's Laboratories, the Court found that the
plaintiff product "OMEZ" was copied by the defendant by introducing
the same drug under the brand name "OMRE" with s similar strip,
design and wrapper. The defendant introduced "RECOLITE" also in
place of plaintiff product "MUCOLITE". All these actions of the
defendant have no room for doubt that the intention of the defendant
was to deceive and encash upon the reputation and goodwill of plaintiff
in the trade mark "Dr. Reddy's" by using the trade mark "Reddy" and
thereby induce the purchasers/ consumers to purchase its products
under an impression that the product have been manufactured and
produced by the plaintiff company. In the present case there in no case
of fraud and the defendant is not using the word SILK as trademark.
The said case has no application to the facts of the present suit. The
said case pertained to a case of dishonest adoption of the trade mark
"Dr.Reddy" by a declared agent.The defendant, being the agent of the
plaintiff, had dishonestly appropriated the mark "Dr. Reddy". Even in
the domain name, the defendant had purported to dishonestly use the
mark "Dr. Reddy" with a fraudulent intent.
35. The judgment reported in AIR 1955 SC 558 (Registrar of Trade
Mark -vs- Ashok Chandra Rakhit Ltd.), which reads as follows:
"8. The third thing to note is that the avowed
purpose of the section is not to confer any direct
benefit on the rival traders or the general public but
to define the rights of the proprietor under the
registration. The registration of a trade mark
confers substantial advantages on its proprietor as
will appear from the sections grouped together in
Chapter IV under the heading "Effect of
Registration". It is, however, a notorious fact that
there is a tendency on the part of some proprietors
to get the operation of their trade marks expanded
beyond their legitimate bounds. An illustration of
an attempt of this kind is to be found in In re
Smokeless Powder Co.'s Trade Mark. Temptation
has even led some proprietors to make an
exaggerated claim to the exclusive use of parts or
matters contained in their trade marks in spite of
the fact that they had expressly disclaimed the
exclusive use of those parts or matters. Reference
may be made to Greers Ltd. v. Pearman and
Corder Ltd. commonly called the "Banquet" case.
The real purpose of requiring a disclaimer is to
define the rights of the proprietor under the
registration so as to minimise, even if it cannot
wholly eliminate, the possibility of extravagant and
unauthorised claims being made on the score of
registration of the trade marks.
9. The last feature of the section is its proviso.
That proviso preserves intact any right which the
proprietor may otherwise under any other law have
in relation to the mark or any part thereof. The
disclaimer is only for the purposes of the Act. It
does not affect the rights of the proprietor except
such as arise out of registration. That is to say, the
special advantages which the Act gives to the
proprietor by reason of the registration of his trade
mark do not extend to the parts or matters which
he disclaims. In short, the disclaimed parts or
matters are not within the protection of the statute.
That circumstance, however, does not mean that
the proprietor's rights, if any, with respect to those
parts or matters would not be protected otherwise
than under the Act. If the proprietor has acquired
any right by long user of those parts or matters in
connection with goods manufactured or sold by him
or otherwise in relation to his trade, he may, on
proof of the necessary facts, prevent an
infringement of his rights by a passing off action or
a prosecution under the Indian Penal Code.
Disclaimer does not affect those rights in any way."
The above case dealt with the rectification of a mark "Shree". It has
been specifically held in the said case that the Registrar may well have
thought that the fact that all other traders who had got their trade
marks containing the word "Shree" registered had to submit to a
disclaimer of the word "Shree", whereas the respondent company had
got its trade mark containing the word "Shree" registered without a
disclaimer was calculated to cause embarrassment to other traders and
might conceivably encourage the respondent company to contended
that the registration of its trade mark by itself and without further
evidence gave it a proprietary right to the exclusive use of the word
"Shree". The Hon'ble Supreme Court held that where a distinctive label
is registered as a whole, such registration cannot possibly give any
exclusive statutory right to the proprietor of the trade mark to the use
of any particular word or name contained therein apart from the mark
as a whole.
36. The judgment reported in 2015 SCC OnLine Cal 3866 (Khadim India
Ltd. -vs- Lifestyle International Private Ltd.), which reads as
follows:
"22. A trade mark is undoubtedly a visual
device; but it is well-established law that the
ascertainment of an essential feature is not to be
by ocular test alone. Since words can form part, or
indeed the whole, of a mark, it is impossible to
exclude consideration of the sound or significance
of those words. Thus it has long been accepted
that, if a word forming part of a mark has come in
trade to use to identify the goods of the owner of
the mark, it is an infringement of the mark itself to
use that word as the mark or part of the mark of
another trader, for confusion is likely to result. It is
sufficient to refer to the words of Lord Cranworth
L.C., in Seixo v. Provezende (1866 LR 1 Ch. 192)
'If the goods of a manufacturer have, from the mark
or device he has used, become known in the
market by a particular name, I think that the
adoption by a rival trader of any mark which will
cause his goods to bear the same name in the
market, may be as much a violation of the rights of
that rival as the actual copy of his device'. The
likelihood of confusion or deception in such cases is
not disproved by placing the two marks side by
side and demonstrating how small is the chance of
error in any customer who places his order for
goods with both the marks clearly before him, for
orders are not placed, or are often not placed,
under such conditions. It is more useful to observe
that in most persons the eye is not an accurate
recorder of visual detail, and that marks are
remembered rather by general impressions or by
some significant detail than by any photographic
recollection of the whole".
In the case of Khadim (Supra), the plaintiff had registration in the
word mark "PRO" and the plaintiff was also the owner of a label mark
comprising the word "PRO" with stylized design and was also the owner
of copyright of its mark by virtue of registration. But in the present
case, the registration mark of the plaintiff "SILK" is beset with
disclaimers/limitations/conditions and thus the case referred by the
Counsel for the plaintiff is distinguishable from the facts of the present
case.
37. The judgment reported in ILR (2010)II DELHI 85 (Cadila Health Care
Ltd.-vs- Gujarat Co-Operative Milk Marketing Federation
Ltd.&Ors.) wherein the Delhi High Court held that :
"14. In consonance with the above view we
are also not in a position to agree with the
appellant that the word Sugar Free' has become so
distinctive of the sugar substitute and has acquired
such a secondary meaning in the sugar substitute
market that it cannot refer to any other food
product except the appellant's sugar substituted
product labelled Sugar Free'. There cannot be any
doubt that the word sugar free' is not inherently
distinctive and is clearly descriptive in nature. In
fact, the word Sugar Free' in essence clearly only
describes the characteristics of the appellant's
product and therefore, cannot afford it the
protection sought in the plaint by restraining the
respondent from using the phrase sugar free'.
Sugar Free', prima facie has not attained any
distinctiveness, as alleged by the appellant outside
the field of sugar substitute artificial sweeteners
and the appellant would not be entitled to
exclusively claim the user of the expression sugar
free' in respect of any product beyond its range of
products and the respondent cannot be restrained
from absolutely using the expression Sugar Free',
particularly in the descriptive sense. A mere
descriptive usage of the expression Sugar Free' by
the respondent may thus blunt the edge of claim of
distinctiveness by the appellant. However, we
make it clear that if any party enters into the
domain of artificial sweeteners with the trademark
Sugar Free' the appellant may have a just cause in
seeking restraint."
38. The judgment reported in 2021 SCC Online Cal 3068 (Shree Ganesh
Besan Mill and Others -vs- Ganesh Grains Limitedand Another)
wherein the Hon'ble Division Bench of this Court held that :
"111. As the word mark Ganesh is very
common to the flour trade generic, non-distinctive
and moreover as it is the name of a most popularly
worshipped Hindu god, the registration of this
mark in favour of the respondent No. 1 prima facie
appears to be invalid. The respondents do not have
any exclusive right of ownership of this mark. They
cannot restrain the appellants from using the word
mark "Ganesh", in an infringement action.
112. However in my opinion the respondents
have a proprietary right over the label mark or
trade dress under which their goods are sold,
containing the word mark "Ganesh" along with
artistically coloured designs. Specially important in
this trade dress is the character, size, font and
style of writing "Ganesh" prominently,
accompanied by the above colour combination and
design. In my opinion the appellants have imitated
the character, size, font and style of writing
"Ganesh". The prominence of "Ganesh" in their
label mark also containing the word mark
"Ganesh" and colourful designs is such, that the
label resembles the trade dress of the respondents,
causing deception and confusion in the trade. The
appellants seem to be trading on the goodwill of the
respondents. In those circumstances, an action in
passing off action lies. The respondents have been
able to make out a prima facie case in passing off.
113. The appellants are entitled to use the
mark "Shree Ganesh" under Section 35 of the
Trademarks Act, 1999.
114. Considering all the circumstances the
impugned interim order granting a blanket
injunction restraining use by the appellants of the
respondents' trademark is modified to the extent
that they will be entitled to use the label mark with
the following modifications:
115. The word "Ganesh" in isolation cannot
be used. The words: "Shree Ganesh Besan Mill"
has to be written on the label in the same character
font and style and in a non-prominent way,
differently from the style in which it is written on
the label of the respondents' products. The place of
manufacture Raipur, Chhattisgarh should also be
mentioned so as not to cause any confusion or
deception in the trade."
39. The judgment reported in (2018) 16 SCC 632 (ParakhVanijya Private
Limited -vs- Baroma Agro Product and Others) wherein the Hon'ble
Supreme Court held that :
"5. The appellant is the registered owner of
the label mark in Class 30 in respect of rice, flour
and preparations made from cereals, bread, cakes,
biscuits, pastry and spices. The appellant sells
biryani rice and the most prominent feature of its
label mark is the word "MALABAR". The appellant-
plaintiff is granted registration in Class 30 for its
products. Class 30 of the classification of goods
and services under the statute covers diverse
spices and other edible materials as wheat, rice,
coffee, tea, etc. In the registration under Class 30,
there is a disclaimer for the word 'MALABAR'. The
disclaimer is worded thus:
"Condition & Limitation : Registration of this
trade mark shall give no right to the exclusive use
of word 'MALABAR' and all other descriptive
matters."
6. The appellant though claims exclusive right
over the word "MALABAR" since there is a disclaimer
to the exclusive use of the word "MALABAR", the
appellant has no right over the exclusive use of the
word "MALABAR". The respondents have also inter
alia brought on record the materials to show the
registration of other goods under Class 30 with the
word "MALABAR MONSOON" granted in favour of
Amalgamated Bean Coffee Trading Co. Ltd. for
coffee cream, coffee included in Class 30. The
registration of the mark "MALABAR MONSOON" under
Class 30 also contains similar disclaimer of the
word "MALABAR". Likewise, the label "MALABAR
COAST" has been registered in Class 30 for coffee,
tea, cocoa, sugar, etc. in favour of Tropical Retreats
(P) Ltd. which again contains a similar disclaimer
for the exclusive use of the word "MALABAR COAST".
Having regard to the materials placed on record,
we are of the view that the High Court rightly held
that the appellant cannot claim exclusive right over
the use of the word "MALABAR".
7. Insofar as the label mark used by the
parties is concerned, we have perused the label
mark of the appellant selling biryani rice with word
"MALABAR" and also the modified label mark of the
respondents. The label of the respondents
containing the words "BAROMA", "MALABAR",
"GOLD" are circled having a different get-up from
that of the appellant. By comparison of the two
label marks, in our view, both appear to be
substantially different. There appears to be no
similarity between both the labels, more so,
deceptive similarity. Keeping in view the interest of
the respective parties who are said to be having
substantial turnover in their respective business,
the High Court rightly held that the respondents
would be entitled to use the word "MALABAR" in
conjunction with "BAROMA" with the different get-up
as approved by the High Court. We do not find any
serious infirmity warranting interference with the
impugned order.
40. In the present case in the Trade Mark applications of the plaintiff being
Application No.2598721, Class-02; Application No. 988901, Class-2;
Application No. 2322923, Class-17 and Application No. 2641642,Class-
2, conditions have prescribed as follows : "Registration of this Trade
Mark shall give no right to the exclusive use of the word silk except as
depicted"
41. It is also not denied that reputed emulsion manufacturers like Asian
Paints, Dulux, Shalimar, Nerolac, Crown Trade and Johnstone's market
emulsion of certain high sheen finish by describing the same as "SILK"
which refers to finish of the product.
42. The defendant sells its product under the mark "HALO" wherein the
word "SILK" is the ultimate finish of the paint sold under the mark
"HALO". The "SILK" finish is one of many, such as matt,satin,gloss all
of which are marked by the defendant under the mark "HALO". It is the
specific case of the defendant that the defendant has not applied for the
registration of the mark "SILK" and the defendant does not intent to
market its product under a trade mark "SILK".
43. The products of the defendant are sold under the mark "HALO", such
as, with the word "Silk" being used only to define the finish/sheen of
the paint. The plaintiff's product under the mark "SILK" are sold in the
following manner.
Mark of the plaintiff Mark of the defendant
Thus, the packaging, shape of container and the colour scheme of
the products of the plaintiff and the defendant are completely different.
44. This Court perused the label mark of the plaintiff selling Berger Paint
with the word "SILK" and the label mark of the defendant selling JSW
paint "HALO" containing the word "SILK". By comparison of the two
marks, in my view both appears to be substantially different and there
is no similarity between both the labels.
45. Upon examining the containers and labels, this Court found that there
is no actual similarity between the marks "SILK" of both the plaintiff
and the defendant. This Court held that the plaintiff failed to establish
deceptive similarity. In view of the above, the prayer for injunction as
prayed for the plaintiff is refused.
46. G.A. No. 1 of 2020 is thus dismissed.
(Krishna Rao, J.)
