Abis Exports India Private ... vs Mr. Gunjam Nalode Sole Proprietor ...
2022 Latest Caselaw 7639 Chatt

                                     1
                                                          MA No.101 of 2022

                                                                         AFR

            HIGH COURT OF CHHATTISGARH, BILASPUR
                     (Judgment Reserved on 21.11.2022)
                     (Judgment Delivered on 19.12.2022)

                            MA No. 101 of 2022

{Arising out of order dated 19.10.2022 passed by the Judge, Commercial
Court (District Level), Nava Raipur, Chhattisgarh in Commercial Suit Class
A/3/2022}

1.    ABIS Exports India Private Limited A Company Incorporated Under
      The Indian Companies Act, 1956, Having Its Registered Office At IB -
      Corporate House, Indramara Village Post Pendri, Rajnandgaon,
      Chhattisgarh - 491441.

                                                     ---- Appellant/Plaintiff

                                  Versus

1.    Mr. Gunjam Nalode Sole Proprietor of Shri Mahavir Udyog Having Its
      Registered Office At Ward No. 9 Girdhar Nagar, Teacher's Colony
      Durg, Chhattisgarh - 491001

      AND ALSO AT

      Address 1- Dhamdha Road, Grage Line Karhidih Sikola Bhata,
      District - Durg (C.G.) 491001

      Address 2- Village Samodha, Dhamdha Road, District Durg (C.G.)
      491001.

      Address 3- Dhillon Complex, 6942 + 4H6, Akash Ganga, Supela,
      Bhilai (C.G.) 490023 (Defendant)

                                                  ---- Respondent/defendant

For Appellant : Shri Nirnay Gupta, Shri Hasnain Alvi, Shri Rishabh Sharma and Shri Saumitra Kesharwani, Advocates

For Respondent : Shri Amrito Das, Shri Yashkaran Singh and Shri Shreyansh Mehta, Advocates

MA No.101 of 2022

Hon'ble Shri Justice Goutam Bhaduri & Hon'ble Shri Justice N.K. Chandravanshi

CAV JUDGMENT

Per Goutam Bhaduri, J

1. The instant miscellaneous appeal filed by the appellant/plaintiff against

the order dated 19.10.2022 passed by the Judge, Commercial Court

(District Level), Nava Raipur, Chhattisgarh in Commercial Suit Class-

A/3/2022, whereby the application (I.A. No.1/2022) for grant of interim

relief filed under Order 39 Rule 1 & 2 of the CPC has been dismissed.

2. The appellant/plaintiff ABIS Exports India Private Limited claiming

itself to be a company duly incorporated under the Companies Act

stated that :-

 they are engaged in the business of manufacturing and

selling livestock feed, poultry products, FMCG products,

edible oil, dairy products and allied range of products and

also runs chain of restaurants under the well known ABIS

Marks;

 the company was incorporated in the year 1985 by four

brothers namely Amir Ali, Bahadur Ali, Iqbal Ali and Sultan

Ali and according to their first alphabet names ABIS was

established;

 the appellant and sister concerns are also engaged in Indian

Agro and Food Industries and working under the company

brand name ABIS;

MA No.101 of 2022

 the product manufactured by the appellant bearing trademark

ABIS is being used continuously and extensively since

1998;

 it has various offices in the State of Chhattisgarh and more

than 10,000/- employees working in the offices located at

Rajnandgaon, Raipur and Hyderabad, etc. and over a period

of time they have received a tremendous response from the

market, traders and the general public and thereby acquired

goodwill and reputation over the period of time;

 with the passage of time they diversified its business in

various fields i.e. manufacturing, distributing, importing,

exporting, stocking, marketing and selling of various

livestock feeds including poultry, fish and shrimp, poultry

and dairy products, edible oil and allied range of FMCG

products under the name ABIS Gold, ABIS Feed, ABIS

Rice, ABIS SHRIMP, ABIS Grower, ABIS Brooder, ABIS

Starter, ABIS Finisher, ABIS Silver, ABIS Rice Plus, ABIS

Star, ABIS Soya Power, ABIS Star Soya, ABIS Acustar,

ABIS Laziz, ABIS Soya DOC and ABIS Dairy;

 the company is also registered as ABIS Trademark.

According to the appellant, apart from poultry, livestock feed

and dairy products by adopting and using labels in respect of

its ABIS range of products and services, one of its flagship

products, being soya bean oil is manufactured and sold by

MA No.101 of 2022

the appellant under the mark ABIS Gold and the same is

being sold by the appellant since 2007;

 the appellant through its inhouse designer have designed a

new artwork/packaging/trade dress for the said goods bearing

the trademark ABIS Gold under the ABIS Label and was

being used openly, continuously and extensively with a view

to distinguish its goods from those of others;

 the appellant has also spent substantial amount of money on

publicity, advertisement and sales promotion as also on

research and development to popularize the said ABIS

marks, ABIS label and the goods and services offered

thereunder;

 the appellant spent considerable amount on advertising and

promotional initiatives and for the financial year 2021-22 the

sales of the appellant was to the tune of Rs.636.18 crores

(approx.) and appellant had posted on the domain name

www.ibgroup.co.in which is accessible to public from any

part of the world;

 the appellant also offers the product in the e-commerce

platform and portals and the soyabean oil under the product

ABIS Gold is being sold to different purchasers and

therefore, is a well known trademark under the provisions of

the Trade Marks Act, 1999 (hereinafter referred to as 'the

Act, 1999');

MA No.101 of 2022

 the appellant alleged that in the year 2021 the appellant

found that the respondent was manufacturing and marketing

products i.e detergent cake/ washing powder &soap/hand

wash/dish wash/toilet cleaners/bleaching substances under

the infringement trade mark ABIS Gold, which is identical

and deceptively similar to the product of the appellant ABIS

label;

 having came to know about the trade mark of the respondent,

the appellant conducted search on the OnLine data

base/official website of the trade mark registry in various

classes for the marks ABIS and ABIS Gold and found that

different trade marks are registered;

 respondent's logo / label are as under :

 according to the appellant, the application of the respondent

under class 3 in relation to detergent cake, washing powder,

soap, hand wash, dish wash, etc. having ABIS Gold label

was accepted by the trademark registry on 17.12.2020 and

the registration certificate was issued on 23.05.2021, which

has been objected and necessary applications have been filed

by the appellant;

MA No.101 of 2022

 the appellant came to know that the respondent is operating a

website namely www.abisgold.com to sale their goods;

 appellant claimed that appellant is the owner of the said

ABIS marks which was registered in the year 2007 and

contended that said domain name has been fraudulently

registered by the respondent in the year 2020;

 having carried out the investigation, the appellant found that

the respondent is manufacturing and marketing identical and

similar products as that of the appellant by deliberately

displaying marks / label on the official website and the said

ABIS label is deceptively similar and confusing to the

ordinary man to show that they are associated with the

appellant's company;

 eventually a cease-and-desist notice was served by the

appellant through its advocate asking the respondent to

refrain itself from using such products being sold under the

logo / label of the appellant, but it was never stopped by the

respondent and subsequently a report to the police was made

under Section 103 (a) of the Act, 1999. Thereafter, criminal

complaint was filed; and

 according to the appellant despite the said act, the products

of the respondent are found in the market and hence the civil

suit was filed under Sections 134 & 135 of the Act, 1999 for

permanent injunction for infringement of trademark, copy

MA No.101 of 2022

right and passing off along with damages read with Section

29 of the Act, 1999. Along with the said suit, an injunction

application was filed under Order 39 Rule 1 & 2 of CPC,

which has been dismissed by the Commercial Court vide the

order impugned. Thus this appeal.

3. Learned counsel appearing for the appellant/plaintiff would submit

that :

 the certificate of incorporation and the very genesis of the

company started with Amir Ali, Bahadur Ali, Iqbal Ali and

Sultan Ali, which marks the word 'ABIS', which was

incorporated in the year 1985 and thereafter with the passage of

time, it acquired goodwill and reputation and associated with the

general public since 1985;

 referring to range of products and the history, learned counsel

would submit that the company has spent hefty amount in

research and development and in the field of e-commerce, ABIS

can be found with the domain name, which has attachment with

the reputation, goodwill and prior user of the logo;

 under Section 2 (zg) of the Act, 1999, ABIS Gold is a well

known trade mark and by effect of Section 27 of the Act, 1999

since ABIS Gold is registered as such the company is entitled to

maintain the suit as being a prior user and passing off the

product by the respondent;

MA No.101 of 2022

 referring to sub-section (2) of Section 27 of the Act, 1999,

learned counsel would submit that apart from the remedy under

the company law, the appellant is entitled to initiate an action

against any person for passing off goods or services;

 according to the appellant, the respondent/defendant was using

the domain name and structure which are phonetically same and

therefore, have committed a breach of Act of 1999;

 by referring to emblem of ABIS, photographs and colour,

learned counsel would submit that the appellant is a long and

prior user and random google search in the Internet would show

the product of the appellant;

 the appellant has achieved awards, which recognized the

goodwill whereas the defendant is using the logo of the

appellant to sale its products;

 according to the appellant only 'iABIS' is registered whereas

other application filed by the respondent for registration is being

objected;

 by referring law laid down by the Supreme Court in the matter

of Laxmikant V. Patel Vs. Chetanbhai Shah and another

{(2002) 3 SCC 65}, learned counsel would submit that name

under which a business trade will always be a trade mark and

further would submit that whenever independently the questions

of trade or service mark are in question, the name of a business

MA No.101 of 2022

normally is attached to it and it would be a goodwill that the

courts will protect and an action for passing-off will then lie;

 further referring to the law laid down by the Supreme Court in

the matter of Satyam Infoway Ltd. Vs. Siffynet Solutions (P)

Ltd. {(2004) 6 SCC 145} learned counsel would submit that the

domain name of the appellant i.e. website is an intellectual

property and the business identifiers, serving to identify and

distinguish the business and infringement of it by passing off,

the domain name shall have all the characteristics of a trade

mark and an action for passing off can be found where domain

names were involved;

 by placing reliance upon the decision of the Supreme Court in

the matter of Mahendra & Mahendra Paper Mills Ltd. Vs.

Mahindra & Mahindra Ltd. {(2002) 2 SCC 147} learned

counsel would submit that the prayer for grant of an

interlocutory injunction is at a stage when the existence of the

legal right asserted by the plaintiff and its alleged violation are

both contested till they are established at the trial on evidence

the Court can consider the prima facie case. The court, at this

stage, acts on certain well settled principles of administration of

this form of interlocutory remedy which is both temporary and

discretionary;

 learned counsel would also place reliance upon the decision of

Supreme Court in the matter of S. Syed Mohideen v. P.

MA No.101 of 2022

Sulochana Bai {(2016) 2 SCC 683} to submit that even if the

registration is done the passing off could not be allowed and the

use of the mark/ carrying on business under the name confers

the rights in favor of the person and generates goodwill in the

market and when prior user and subsequent user are registered

proprietors, for the purposes of examining who generated the

goodwill, the statutory rights would prevail over the common

law which is proper remedy than that of infringement; and

 lastly by placing reliance upon the decision of the Supreme

Court in the matter of Midas Hygiene Industries (P) Ltd. And

another vs. Sudhir Bhatia & others {(2004) 3 SCC 90} learned

counsel would submit that mere delay will not defeat any action

under the Copyright Act and the Trade Marks Act.

4. Learned counsel appearing for the respondent, per contra, would submit

that:-

 the respondent is engaged in the business of manufacturing and

selling detergent cake, washing powder, soap, hand wash,

dishwasher, toilet cleaners, bleaching preparation and

substances for laundry use, cleaning, polishing, scoring and

abrasive preparations, salt, spices, coffee, tea, rice and similar

products and for the purposes of assigning an identity to such

class of products marketed by the respondent, the respondent

formulated and adopted the abbreviation 'ABIS', which stood for

'A Best Immaculate Surfactant' and consequently the origin,

MA No.101 of 2022

form and essential features of the respondent's trade mark is

different;

 according to the respondent, it is in active participant in the

concerned industry since 2014 and the annual sales worth

Rs.2,95,96,859/- for the financial year ending 31.03.2022,

therefore, the respondent also maintains ex facie goodwill and

reputation in the market for their products;

 the respondent's products fall within an entirely different class

of products to that of the appellant and therefore it cannot be

attached as alleged that dishonest adoption of the trade mark of

the appellant;

 the respondent has obtained a valid and appropriate registration

of the trade mark, which was granted to them after undergoing

due scrutiny and procedure as enumerated in the Act, 1999;

 as per Section 9 (2) (a) of the Act, 1999 the trade mark being

sought to be registered should not be of such nature as to

deceive the public or cause confusion;

 the range of products manufactured and marketed by the

appellant would be confined to the goods traded by them and

the products of the appellant are falling under class 29, 30 & 31

whereas, the respondent procured registration for its products

under the purview of class 3, therefore, the product being

different both can co-exist;

MA No.101 of 2022

 in order to claim ''well known trade mark'' as claimed by the

appellant, certain procedure is prescribed under Section 11 (6),

(7) & (8) of the Act, 1999 and hence without following the due

process the appellant cannot claim for any passing off because

the nature of goods and services of both the parties are entirely

different;

 mere registration of trade mark would not allow the appellant to

enjoy monopoly over the products and the respondent would

submit that the meaning of the word 'ABIS' is also known as

'Lion, Brave';

 according to the learned counsel, the term 'passing off' implies

that the respondent must have sold the goods in a manner which

has deceived or would likely to deceive the public into thinking

that the respondent's goods or services are that of the appellant,

but the product being entirely different, the passing off is

completely beyond imagination;

 since the product of respondent being different nature, it cannot

be claimed that the deceptive market is adopted by the

respondent; and

 under these circumstances, learned counsel would submit that

the balance of convenience heavily lies in favour of the

respondent because the appellant has failed to establish prima

facie case in its favour and also failed to prove the irreparable

loss. The order passed by the learned commercial court

MA No.101 of 2022

dismissing the interlocutory application of the appellant herein

is just and proper, warranting no interference of this Court and

hence prays for dismissal of the instant appeal.

5. We have heard learned counsel appearing for the parties at length and

perused the documents appended thereto.

6. In an action for infringement or passing off, it is usual, rather essential,

to seek an injunction temporary or ad-interim. The principles for the

grant of such injunction are the same as in the case of any other action

against injury complained of.

7. In the instant case, the appellant claimed that it has a right over the

word 'ABIS'. The said word derived from the first alphabet of names of

four brothers namely; Amir Ali, Bahadur Ali, Iqbal Ali and Sultan Ali.

The respondent stated that the word ABIS is a generic word which

refers to Lion or Brave in Pharsi and Urdu language which, prima facie,

is correct. Thus, if the names of four brothers have been set out in such

a mode, which denotes the word ABIS, it cannot be referred to only

intellectual property of the appellant. The word ABIS since has

different specific meaning and denotes bravery or lion cannot be

construed to create a monopoly to appellant. Likewise, the use of word

'Gold' is also a common word and for use of word Gold no special

rights can be claimed by the appellant.

8. The contention of the respondent that their goods are registered in a

different class and there is no infringement of trade mark ABIS, which

has to be judged from a business and commerce point of view and

MA No.101 of 2022

factor such as trade channels, nature of goods and use of goods ought to

be considered. The classification may not be the decisive factor but

when it is claimed that registered trade mark is infringed by a person

and when such question comes then the similarity of goods and service

covered by such trade mark whether is likely to cause confusion in the

public or an association with the registered trade mark would be a

factor to be considered. The similarity of goods would include a case

where the impugned goods are cognate and allied to the goods of

appellant/plaintiff, for which the trademark is registered. In the instant

case, the trade mark of the appellant registered for manufacturing and

selling livestock feed, poultry products, FMCG products, edible oil,

dairy products and allied range of products also runs chain of

restaurants whereas the respondent is dealing in manufacturing and

selling detergent cake, washing powder, soap, hand wash, dishwasher,

toilet cleaners, bleaching preparation and substances for laundry use,

cleaning, polishing, scoring and abrasive preparations, salt, spices,

coffee, tea, rice and similar products. So in the case on hand, there is

apparent difference of product manufactured which are used by the

public at large for a different cause. Comparing the competing marks,

though phonetically identical but structurally and visually do not appear

to be similar trade mark that of the appellant. The appellant has an

exclusive right to the use of trade mark in relation to the goods or

services in respect of which the trade mark is registered, whereas the

trade mark of the respondent is also registered for a different range of

MA No.101 of 2022

product, therefore, the identity of the goods are completely different

and the product of the respondent being detergent cake, soap, etc.,

prima facie, it is not likely to cause any confusion on the part of the

public. The test for comparison of the two word marks was formulated

by Lord Parker in Pianotist Co. Ltd.'s application [(1906) 23 RPC 774]

as follows:

'You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion, that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods --then you may refuse the registration, or rather you must refuse the registration in that case.'

9. In order to find out the above principles whether satisfied, the

respective documents were perused. It is not in dispute that the

appellant's registration is with respect to goods fallen under classes 29,

30 and 31, which deals in manufacturing and selling livestock feed,

poultry products, FMCG products, edible oil, dairy products and allied

range of products. Whereas the respondent is engaged in the business

of manufacturing and selling detergent cake, washing powder, soap,

hand wash, dishwasher, toilet cleaners, bleaching preparation and

substances for laundry use, cleaning, polishing, scoring and abrasive

MA No.101 of 2022

preparations, salt, spices, coffee, tea, rice and similar products and for

which the respondent procured registration for its products under the

purview of class 3.

10. The Supreme Court in the matter of Vishnudas Trading as Vishnudas

Kishendas vs. Vazir Sultan Tobacco Co. Ltd., Hyderabad and

Another {(1997) 4 SCC 201} had an occasion to deal with the similar

principles wherein certain manufactured tobacco under the brand name

'Charminar' was being sold. The Supreme Court held that so long such

registration remains operative, the respondent Company is entitled to

claim exclusive use of the said brand name in respect of articles made

of tobacco coming under the said broad classification manufactured

tobacco. Thereafter, when the appellant made an application for

registration of quiwam and zarda under the same brand name

"Charminar", such prayer for registration was not allowed. The

application for rectification of the registration made in favour of the

respondent Company so that the said registration is limited only in

respect of the articles being manufactured and marketed by the

respondent Company, namely, cigarettes. The Supreme Court held that

if a trader or manufacturer actually trades in or manufactures only one

or some of the articles coming under a broad classification and such

trader or manufacturer has no bona fide intention to trade in or

manufacture other goods or articles which also fall under the said broad

classification, such trader or manufacturer should not be permitted to

enjoy monopoly in respect of all the articles which may come under

MA No.101 of 2022

such broad classification and by that process preclude the other traders

or manufacturers to get registration of separate and distinct goods

which may also be grouped under the broad classification. It further

held that if registration has been given generally in respect of all the

articles coming under the broad classification and if it is established that

the trader or manufacturer who got such registration had not intended to

use any other article except the articles being used by such trader or

manufacturer, the registration of such trader is liable to be rectified by

limiting the ambit of registration and confining such registration to the

specific article or articles which really concern the trader or

manufacturer enjoying the registration made in his favour.

11. The Supreme Court also held that if rectification in such circumstances

is not allowed, the trader or manufacturer by virtue of earlier

registration will be permitted to enjoy the mischief of trafficking in

trade mark. The Supreme Court at para 47 held thus:-

47. The respondent Company got registration of its brand name "Charminar" under the broad classification "manufactured tobacco". So long such registration remains operative, the respondent Company is entitled to claim exclusive use of the said brand name in respect of articles made of tobacco coming under the said broad classification "manufactured tobacco". Precisely for the said reason, when the appellant made application for registration of quiwam and zarda under the same brand name "Charminar", such prayer for registration was not allowed. The appellant, therefore, made application for rectification of the registration made in favour of the respondent Company so that the said registration is limited only in respect of the articles being manufactured and marketed by the respondent

MA No.101 of 2022

Company, namely, cigarettes. In our view, if a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bona fide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers from getting registration of separate and distinct goods which may also be grouped under the broad classification. If registration has been given generally in respect of all the articles coming under the broad classification and if it is established that the trader or manufacturer who got such registration had not intended to use any other article except the articles being used by such trader or manufacturer, the registration of such trader is liable to be rectified by limiting the ambit of registration and confining such registration to the specific article or articles which really concern the trader or manufacturer enjoying the registration made in his favour. In our view, if rectification in such circumstances is not allowed, the trader or manufacturer by virtue of earlier registration will be permitted to enjoy the mischief of trafficking in trade mark. Looking to the scheme of the registration of trade mark as envisaged in the Trade Marks Act and the Rules framed thereunder, it appears to us that registration of a trade mark cannot be held to be absolute, perpetual and invariable under all circumstances. Section 12 of the Trade Marks Act prohibits registration of identical or deceptively similar trade marks in respect of goods and description of goods which is identical or deceptively similar to the trade mark already registered. For prohibiting registration under Section 12(1), goods in respect of which subsequent registration is sought for, must be (i) in respect of goods or description of goods being same or similar and covered by earlier registration and (ii) trade mark claimed for such goods must be same or deceptively similar to the trade mark already registered. It may be noted here that under sub-section (3) of Section 12 of the Trade Marks Act, in an appropriate case of honest concurrent use and/or of other special circumstances, same and deceptively

MA No.101 of 2022

similar trade marks may be permitted to another by the Registrar, subject to such conditions as may deem just and proper to the Registrar. It is also to be noted that the expression "goods" and "description of goods" appearing in Section 12(1) of the Trade Marks Act indicate that registration may be made in respect of one or more goods or of all goods conforming a general description. The Trade Marks Act has noted distinction between description of goods forming a genus and separate and distinctly identifiable goods under the genus in various other sections e.g. goods of same description in Section 46, Sections 12 and 34 and class of goods in Section 18, Rules 12 and 26 read with Fourth Schedule to the Rules framed under the Act.

12. Testing of two trade marks in order to prima facie view, the goods of

respondent manufactured and sold under the impugned trade mark

ABIS are not cognate and allied as they related to different sector than

that of goods of appellant. The appellant is operating the business of

livestock product, edible oil, restaurant etc. whereas the products of the

respondent are detergent cake, soap, etc. Therefore, the consumer end

is different which may not be confusing and, as such, we are of the

prima facie opinion that the rival goods not being similar in nature, the

case of infringement under Section 29 (2) of the Act, 1999 is not made

out.

13. Section 9 (2) (a) of the Act, 1999 itself puts a rider that a mark shall not

be registered as a trade mark if it is of such nature as to deceive the

public or cause confusion. Respondent having been registered as ABIS,

prima facie, it can be inferred that before such registration the official

act was carried out which is required under the provisions of the Act,

1999 and, therefore, presumption of correctness would be attached to it

MA No.101 of 2022

until rebutted otherwise. Therefore, the right of the respondent cannot

be shelved unless the registration of trade mark is cancelled by the

competent authorities.

14. Section 28 (3) of the Act, 1999 further contemplates that where two or

more persons are registered proprietors of trade marks, which are

identical with or nearly resemble each other, the exclusive right to the

use of any of those trade marks shall not be deemed to have been

acquired by any one of those persons as against any other of those

persons merely by registration of the trade marks but each of those

persons has otherwise the same rights as against other persons as he

would have if he were the sole registered proprietor. Therefore, in view

of Section 28 (3) once the trademark is registered, then the appellant

cannot claim preferential right as against the other registered trademark

except the third party.

15. The appellant further claimed that they are the well known trademark.

Section 2 (zg) of the Act, 1999 defines the 'well known trade mark' as

under:-

'2 (zg) "well-known trade mark", in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first- mentioned goods or services.'

MA No.101 of 2022

16. Section 11 (6) & 11 (7) of the Act, 1999 defines the procedure to

declare any trademark as well known trademark. The said Section

reads as under:-

11. Relative grounds for refusal of registration.--

                                 xxx          xxx          xxx
                                 xxx          xxx          xxx
                                 xxx          xxx          xxx

(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including--

(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;

(ii) the duration, extent and geographical area of any use of that trade mark;

(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;

(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent that they reflect the use or recognition of the trade mark;

(v) the record of successful enforcement of the rights in that trade mark; in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.

(7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of

MA No.101 of 2022

the public for the purposes of sub-section (6), take into account--

(i) the number of actual or potential consumers of the goods or services;

(ii) the number of persons involved in the channels of distribution of the goods or services;

(iii) the business circles dealing with the goods or services, to which that trade mark applies.

Reading of the aforesaid provision would show that the Registrar, Trade

Mark would be obliged to consider the relevant statutory rider while

declaring a trademark to be a well-known trademark.

17. Rule 124 of the Trade Mark Rules, 2017 (hereinafter referred to as the

'Rules, 2017') prescribed the procedure for determination of well-

known trade mark by Registrar. The same reads thus:-

124. Determination of Well Known Trademark by Registrar. -- (1) Any person may, on an application in Form TM-M and after payment of fee as mentioned in First schedule, request the Registrar for determination of a trademark as well-known. Such request shall be accompanied by a statement of case along with all the evidence and documents relied by the applicant in support of his claim.

(2) The Registrar shall, while determining the trademark as well-known take in to account the provisions of sub section (6) to (9) of section 11.

(3) For the purpose of determination, the Registrar may call such documents as he thinks fit.

(4) Before determining a trademark as well-known, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objection.

MA No.101 of 2022

(5) In case the trademark is determined as well-known, the same shall be published in the trademark Journal and included in the list of well-known trademarks maintained by the Registrar.

(6) The Registrar may, at any time, if it is found that a trademark has been erroneously or inadvertently included or is no longer justified to be in the list of well-known trademarks, remove the same from the list after providing due opportunity of hearing to the concerned party.

18. On reading of the aforesaid provision, it is manifest that even before

determining a trade mark as well known, the Registrar may invite

objections from the general public to be filed in certain forms within a

stipulated time and after the trade mark is determined as well known,

the same shall be published in the trade mark journal and included in

the list of well-known trademarks maintained by the Registrar.

19. In the instant case, though the appellant claimed itself as well-known

trade mark, but nothing is on record to substantiate the same. In a

passing off action, the product of the appellant and the respondent

would have a significant impact. The appellant deals in manufacturing

and selling of livestock feed, poultry products, FMCG products, edible

oil, dairy products and allied range of products; whereas the respondent

is engaged in the business of manufacturing and selling detergent cake,

washing powder, soap, hand wash, dishwasher, toilet cleaners,

bleaching preparation and substances for laundry use, cleaning,

polishing, scoring and abrasive preparations, salt, spices, coffee, tea,

rice and similar products, therefore, if an individual person goes to

MA No.101 of 2022

purchase edible oil, certainly he would not come back with a detergent

cake in his hand. Therefore, the balance of comparative hardship is

missing and the misrepresentation to the public or likelihood of

confusion in the minds of public or the potential customer would not,

prima facie, exist.

20. The Supreme Court in the matter of Laxmikant V. Patel (supra)

observed that the plaintiff must prove a prima facie case, availability of

balance of convenience in his favour and his suffering an irreparable

injury in the absence of grant of injunction. In a case of passing off, the

plaintiff does not have to prove actual damage in order to succeed in an

action for passing off and likelihood of damage is sufficient. As to how

the injunction granted by the Court would shape depends on the facts

and circumstances of each case. The Supreme Court further held that

an action for passing-off will then lie wherever the defendant

company's name, or its intended name, is calculated to deceive, and so

to divert business from the plaintiff, or to occasion a confusion between

the two businesses.

21. An action for passing off is a common law remedy, being an action for

deceit. In order to find out the case of passing off, the Supreme Court

in the matter of Cadila Health Care Ltd. v. Cadila Pharmaceuticals

Ltd., {(2001) 5 SCC 73}, laid down factors for deciding the question of

deceptive similarity which are as follows "

a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.

MA No.101 of 2022

b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.

c) The nature of the goods in respect of which they are used as trade marks.

d) The similarity in the nature, character and performance of the goods of the rival traders.

e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.

f) The mode of purchasing the goods or placing orders for the goods and

g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

22. In the instant case, prima facie, it is manifest that both the products are

entirely different. The product claimed by the appellant is in different

category and it cannot be covered by a blanket monopoly to term it as a

passing off. Even when no screen shots have been placed by the

appellant to compare with the range of products then we are unable to

appreciate how it is going to confuse in respect of domain name. In

fact, the appellant is using the domain name www.ibgroup.co.in

whereas the respondent is using the domain name of

www.abisgold.com

23. Prima facie, reading of the domain names of both the parties appear that

they are different. On comparison of the domain name, it does not

show that it would cause any deceptive or confusion in the mind of a

purchaser who normally would be an intelligent one while dealing with

MA No.101 of 2022

the internet purchase. Further the class of purchasers/consumers is also

different. Thus, the appellant is unable to, prima facie, prove that the

respondent has used their domain name.

24. Consequently, the balance of inconvenience and irreparable loss do not

lie in favour of the appellant as the sale of detergent cake by the

respondent may not suffer any loss to the business of the appellant i.e.

livestock product, etc.

25. Applying the well settled principles of law, as discussed above, to the

facts of the present case and for the reasons as stated supra, the appeal,

sans substratum, deserves to be and is hereby dismissed.

26. There shall be no order as to cost(s).

               Sd/-                                                   Sd/-


      (Goutam Bhaduri)                                     (N.K. Chandravanshi)
           Judge                                                   Judge


Gowri

                                                   MA No.101 of 2022

                          Head Note

To show infringement of trademark - must be judged by their look and by their sound and also must consider the goods to which they are to be applied. Further to be considered the nature and kind of customer who would be likely to buy those goods.

O;kikj fpUg ¼VªsMekdZ½ dk vfrya?ku n'kkZus ds fy;s & lkeku dk vkadyu] mlds :i rFkk /ofu ls fd;k tkuk pkfg;s rFkk mu lkekuksa ij Hkh fopkj fd;k tkuk pkfg;s] ftu ij mls vuqiz;ksx fd;k tkuk gSA blds vfrfjDr xzkgd ds izdkj rFkk izd`fr ij Hkh fopkj fd;k tkuk pkfg;s] tks mu lkekuksa dk laHkkfor dzsrk gksxkA