Calcutta High Court
Metravi Instruments Private Limited vs Dhanbad Lab Instruments India Private ... on 25 February, 2025
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
IN THE HIGH COURT AT CALCUTTA
ORIGINAL SIDE
(Intellectual Property Rights Division)
BEFORE:
The Hon'ble Justice Ravi Krishan Kapur
IA NO: GA-COM/1/2024,
GA-COM/6/2025
IP-COM/7/2024
IN THE MATTER OF :
METRAVI INSTRUMENTS PRIVATE LIMITED
VS
DHANBAD LAB INSTRUMENTS INDIA PRIVATE LIMITED AND ORS.
For the petitioner : Mr. Susrea Mitra, Adv.
Mr. Bhupendra Gupta, Adv.
Mr. Harsh Tiwari, Adv.
Mr. Samriddha Sen, Adv.
Ms. Ojasvi Gupta, Adv.
Mr. Anwar Hossain, Adv.
For the respondents : Mr. Sudhir Sinha, Adv.
Ms. Priti Jain, Adv.
Judgment on : 25.02.2025
RAVI KRISHAN KAPUR, J.:
1. This is an application seeking interlocutory reliefs in a suit for passing off.
2. The petitioner is a company incorporated on 25 March 2009 and is inter-alia
engaged in the business of marketing, selling and distribution of digital clamp
testers, multi meter electrical, electronic test and measuring instruments,
ready off the shelf scientific and industrial instruments and equipments of
premium quality. Originally, the predecessor in interest of the petitioner, Mr.
Vikram Raj Bhansali through his firm M/s Arun Enterprises coined and
adopted the mark METRAVI as far back as on 1 July 1998 for its products in
class 9 and has since been extensively, continuously and uninterruptedly
using the same.
3. Subsequently, the predecessor in interest of the petitioner had also obtained
registration in respect of the word mark METRAVI on 1 April 1998 and the
same remains valid and subsisting. With the passage of time, the products
and services of the petitioner gained immense goodwill which led to the
incorporation of the petitioner company in 2009. On 17 December 2015, M/s
Arun Enterprises sold, transferred, conveyed and assigned the trademark
METRAVI together with its goodwill by executing a deed of assignment.
Thereafter, the petitioner applied for transfer and ownership of the mark and
has since assigned the same in its favour. As such, METRAVI has been the
house mark of the petitioner since 12 August 1999. Subsequently, the
petitioner has also made substantial investments towards advertising and
promotion of their goods bearing the above mark.
4. The respondent no 1 is a company incorporated on 16 November 2016 and is
engaged in similar business of manufacturing, selling and distribution of
identical products as that of the petitioner. Initially, the respondent no.1 was
a distributor of PCE Instruments Limited. In or about January 2024, the
petitioner came to learn that, the respondent no 1 has obtained registration of
the impugned mark 'METERIVA' on a proposed to be used basis under class 9
in respect of similar products as that those manufactured, distributed and
sold by the petitioner.
5. It is alleged by the petitioner that the impugned mark METERIVA is
phonetically, structurally and visually similar to that of the petitioner's mark
METRAVI. The trade dress and get up of the impugned product is also
deceptively similar to the products being sold by the petitioner. The impugned
products are also being sold on e-commerce websites of the respondent nos. 2
and 3. Consequentially, there is scope for confusion and deception. It is
further alleged that the respondent no 1 was fully aware of the existence of
the petitioner company and its business and had approached the petitioner in
June 2022 and October 2023 respectively for distributing the petitioner's
products. In fact, the respondent no 1 had also purchased some products of
the petitioner for sale. The mark of the petitioner is distinctive and has earned
immense goodwill and reputation amongst customers. In selling the goods
under the impugned mark, the respondents are also trying to ride on the
goodwill and reputation of the petitioner by intentionally adopting a
phonetically, structurally and visually deceptively similar mark as that of the
petitioner. In support of such contentions, the petitioner relies on
Lakshmikant V. Patel vs. Chetanbhai Shah & Anr. (2002) 3 SCC 65, Regency
Plywood Industries Pvt. Ltd. vs. Chowdhury Enterprise & Ors. (2024) SCC
OnLine Cal 10655, Madhu Food Products vs. Surya Processed Food Pvt. Ltd.
(2024) SCC OnLine Del 5818 (DB) and Amba Shakti Steels Ltd. vs. Sequence
Ferror Pvt. Ltd. (2024) SCC OnLine Del 6179 (DB).
6. On behalf of the respondent no 1 it is contended that, the petitioner has
falsely asserted that the petitioner does not possess any intangible assets.
The trademark and goodwill being in the nature of intangible property is not
reflected in the financial statements of the petitioner. The petitioner has also
suppressed the consideration for assignment of the mark. In any event, both
the rival products are dissimilar to each other. There is neither phonetic nor
visual similarity which warrants any interference in this proceeding. The term
MET is common to both the petitioner and respondent no.1's mark and there
can be no exclusivity which can be claimed in respect thereof. In support of
such contentions, the respondents rely on J.R. Kapoor vs. Micronix India
(1994) SUPPL 3 SCC 215, F. Hoffman LA Roche & Co. Ltd. vs. Geoffrey
Manners & Co. Pvt. Ltd. (1969) 2 SCC 716, Astrazeneca UK Ltd. vs. Orchid
Chemical & Pharmaceuticals Ltd. [2007] (34) PTC 469 DB and Subway IP LLC
vs. Infinity Food & Ors. (2023) SCC OnLine Del 150.
7. In order to decide whether a word is phonetically similar or not, diverse
factors need to be taken into consideration i.e. whether the recollection of
such trade names are likely to be faltered or confused with or whether the
pronunciation of such word would likely to be indistinct or imperfectly heard.
The fact that individuals could enunciate words in a variety of distortions,
slurs or even mispronounce the words must also be weighed in deciding the
question of similarity between word marks. Resemblances and differences
tend to create a certain degree of impression in the mind which customers
may relate to with regard to the respective goods or products when used.
Such impressions may lead to deception and confusion amongst consumers
at large.
8. The two competing trade names involved in this case have mere interchange
of letters. Misrepresentation lies at the heart of an action for passing off. Both
parties are operating in the same filed of activity. In such circumstances,
there was an obligation on the respondent no.1 coming into the same market
to ensure that its products are not confused with that of another. The
respondent no 1 was fully aware of the existence of the petitioner's mark prior
to the launch of the impugned mark. There were business dealings between
the two parties. Such prior dealings are documented. It was only when such
business dealings unfavourably ended between the parties did the respondent
no 1 apply for registration of the impugned mark under class 9 for similar
products. Prima facie, when pronounced or a mere glance at the competing
marks as a whole, there lies a real possibility of phonetic and visual deception
and confusion.
9. In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 it
has been held as follows:
"18. We are unable to agree with the aforesaid observations in Dyechem case
[(2000) 5 SCC 573]. As far as this Court is concerned, the decisions in the last four
decades have clearly laid down that what has to be seen in the case of a passing-
off action is the similarity between the competing marks and to determine whether
there is likelihood of deception or causing confusion. This is evident from the
decisions of this Court in the cases of National Sewing Thread Co. Ltd. case [(1953)
1 SCC 794 : AIR 1953 SC 357] , Corn Products Refining Co. case [AIR 1960 SC 142
: (1960) 1 SCR 968] , Amritdhara Pharmacy case [Amritdhara Pharmacy v. Satya
Deo Gupta, AIR 1963 SC 449] , Durga Dutt Sharma case [Durga Dutt Sharma v.
Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980] , and Hoffmann-La
Roche & Co. Ltd. case [Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. (P)
Ltd., (1969) 2 SCC 716] . Having come to the conclusion, in our opinion incorrectly,
that the difference in essential features is relevant, this Court in S.M. Dyechem Ltd
vs Cadbury (India) Ltd, (2000) 5 SCC 573, sought to examine the difference in the
two marks 'piknik' and 'picnic'. It applied three tests, they being: (1) is there any
special aspect of the common feature which has been copied? (2) mode in which the
parts are put together differently i.e. whether dissimilarity of the part or parts is
enough to make the whole thing dissimilar, and (3) whether, when there are
common elements, should one not pay more regard to the parts which are not
common, while at the same time not disregarding the common parts? In examining
the marks, keeping the aforesaid three tests in mind, it came to the conclusion,
seeing the manner in which the two words were written and the peculiarity of the
script and concluded (at SCC p. 597, para 39) that 'the above three dissimilarities
have to be given more importance than the phonetic similarity or the similarity in
the use of the word picnic for piknik'.
19. With respect, we are unable to agree that the principle of phonetic similarity has
to be jettisoned when the manner in which the competing words are written is
different and the conclusion so arrived at is clearly contrary to the binding precedent
of this Court in Amritdhara case [AIR 1963 SC 449] where the phonetic similarity
was applied by judging the two competing marks. Similarly, in Durga Dutt Sharma
case [AIR 1965 SC 980] it was observed that: (AIR p. 990, para 28)
"In an action for infringement, the plaintiff must, no doubt, make out that the use of
the defendant's mark is likely to deceive, but where the similarity between the
plaintiffs and the defendant's mark is so close either visually, phonetically or
otherwise and the court reaches the conclusion that there is an imitation, no further
evidence is required to establish that the plaintiff's rights are violated."
10. In Laxmikant V. Patel vs. Chetanbhai Shah (2002) 3 SCC 65 it has been held
as follows:
10. A person may sell his goods or deliver his services such as in case of a
profession under a trading name or style. With the lapse of time such business or
services associated with a person acquire a reputation or goodwill which becomes
a property which is protected by courts. A competitor initiating sale of goods or
services in the same name or by imitating that name results in injury to the
business of one who has the property in that name. The law does not permit any
one to carry on his business in such a way as would persuade the customers or
clients in believing that the goods or services belonging to someone else are his or
are associated therewith. It does not matter whether the latter person does so
fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are,
and ought to be, the basic policies in the world of business. Secondly, when a
person adopts or intends to adopt a name in connection with his business or
services which already belongs to someone else it results in confusion and has
propensity of diverting the customers and clients of someone else to himself and
thereby resulting in injury.
11. The petitioner is also the prior user and adopter of the mark which has also
been registered in its favour. The respondent no.1 had adopted the impugned
mark only in 2022. Confusion and deception regarding the source and origin
of the goods under the impugned mark is highly probable and there is every
likelihood for such confusion to happen amongst innocent customers. Upon a
bare perusal of the two competing trademarks, the interchange of the same
letters of the two marks and similar trade dress used against the similar
products in the same class, creates a real possibility for deception and
confusion. The explanation offered by the respondent no.1 in choosing the
impugned mark is unconvincing and unacceptable. Non-disclosure of the
consideration for assignment of the mark by the petitioner is irrelevant and
inconsequential. Prima facie, the impugned mark "METERIVA" is phonetically,
structurally and visually deceptively similar to the mark of the petitioner.
12. The decisions cited on behalf of the respondent no.1 are distinguishable and
inapposite. The decision in Subway IP LLC vs. Infinity Food & Ors. (Supra)
dealt with the question whether 'SUBERB' was phonetically similar to
'SUBWAY'. In this background, it was held that no exclusivity or monopoly
could be claimed over two syllable words of which the first syllable is 'SUB'.
On the contrary, in the facts of this case the two words taken as a whole
alongwith surrounding circumstances tend to cause confusion or deception.
Similarly in J.R. Kapoor v. Micronix India (1994) SUPPL. 3 SCC 215 it was
found that no exclusivity could be claimed over the prefix 'MICRO' and the
suffix was dissimilar phonetically and otherwise. As such, this decision is also
distinguishable.
13. In view of the above, the petitioner has been able to establish a strong case on
merits. The balance of convenience and irreparable are also in favour of
orders being passed as prayed for by the petitioner.
14. In such circumstances, the ad interim order dated 8 April 2024 stands
confirmed. GA-COM 1 of 2024 in I.P (Com) 7 of 2024 stands allowed. There
shall be an order in terms of the prayer (a) of the Notice of Motion.
Consequently, GA 6 of 2024 for vacating of the order dated 8 April 2024
stands dismissed.
(RAVI KRISHAN KAPUR, J.)
