Peshawar Soap And Chemicals Ltd. vs M/S. Godrej Soaps Ltd.
2000 Latest Caselaw 1261 Del

ORDER

Vikramajit Sen, J.

1. The allegations in the plaint and the interim application are that the Plaintiff is using the trade mark "Kesh Nikhar" since 1935 and is its proprietor under registration No. 216597 of 17.7.1963. This trade mark has been renewed from time to time. The Plaintiff has also applied for registration of the trade mark "Nikhar Beauty Bar" on 3.3.1997 vide application number 216597 in Class 3. It has also been pleaded that the Plaintiff is the registered proprietor of the Copyright No.A-30760/70 of Kesh Nikhar Label. Kesh Nikhar has been continuously, regularly and extensively used by the Plaintiff in respect of soaps since 1935 with past sales of approximately Rs.200 crores, and `present' sales of Rs.30 crores. It is the Plaintiff's assertion that the word "Nikhar" is an essential and integral part of the registered trade mark. Approximately Rs.2 crores are being spent annually on advertisement of "Kesh Nikhar". In June 2000 the Plaintiff learnt that the Defendant had marketed a soap with the mark `Nikhar'. Hence the present suit for infringement of Trade Mark and Copyright, and for passing-off was filed seeking an injunction and orders for the rendition of accounts was filed. On 16.6.2000, K. Ramamoorthy J. granted an ex parte ad interim injunction restraining the Defendants from using the name `Nikhar' until further orders.

2. The Defendants reply is that Plaintiff has been using the Trade Mark PESCO KESH NIKHAR and has never used the Trade Mark `NIKHAR' and has mischievously sought to mislead the Court by filing a wrapper of its product under the Trade Mark `NIKHAR' which word and wrapper has not been previously used by the Plaintiff. ORG MARG, reputed to be an independent, largest and well respected retail audit body had not reported the use of the brand name NIKHAR in its Report of May 2000. It is the Defendant's submission that the competing Trade Marks are PESCO KESH NIKHAR and GODREJ NIKHAR, which are structurally, phonetically and visually not deceptively similar. It is submitted that whilst the Plaintiff's product is a shampoo in cake form the Defendant's product is a bath soap; there is a significant price difference between them; the packaging is entirely different - one is in a carton the other in a wrapper, Plaintiff's product is packed vertically and Defendant's horizontally. It has further been averred that since the Trade Marks GODREJ and PESCO have been prominently used, confusion or deception is inconceivable. The Defendant is stated to have spent in excess of Rs.1 crore on publicity. The Defendant has also asserted that the word KESH NIKHAR per se had not been registered and what is registered is a composite trade mark containing the device of a woman combing her hair with the names PESCO as also KESH NIKHAR present thereon. According to the Defendant the Plaintiff has never used the word NIKHAR BEAUTY BAR, KESH NIKHAR or NIKHAR.

3. Before discussing the plethora of precedents pressed by both parties I shall deal with their cartons/wrappers. Having examined that carefully I am of the view that there is insignificant commonality between the Plaintiff's carton, which is in red with an artwork of a woman, and the Defendant's wrapper, which is in yellow with a female model's photograph. There is no likelihood of any confusion, leave alone deception, between them. I hold the same opinion even in respect of the Plaintiff's wrapper on page 62-A which is in purple/lilac and contains an outwork of flowers. The pagination of the plaint, applications and documents, is significantly tell-tale, in that it is evident that the wrapper was included in the documents just before the plaint was filed, (in all likelihood created at that time also), with a view to cause an impression that `NIKHAR' soap was already being marketed by the Plaintiff. Had the Plaintiff already put this product on the market it would have been boldly stated so in the plaint and there would have been no reason for the Plaintiff to plead that the word `NIKHAR' is an essential and integral part of the registered Trade Mark `KESH NIKHAR'. Use of the words `KESH NIKHAR & `NIKHAR' in parenthesis appears incongruous since it is not the Plaintiff's case that these words have been conjointly used in any of its products. From a perusal of the plaint it is clear that it is the Defendant who has used the word `NIKHAR' since this is the grievance aired and voiced therein.

4. Mr. R.K. Anand, Learned Senior Counsel appearing for the Plaintiff cited Ruston & Hornsby Ltd. v. The Zamindara Engineering Co., , in which the dispute revolved around the marks `RUSTAM INDIA' and `RUSTON'. The Supreme Court observed that when the marks were similar the enquiry should be directed to the likelihood of confusion or deception, which enquiry is relevant equally for infringement or passing off actions. It also held that since the marks `RUSTAM' and `RUSTON' were deceptively similar, it made no difference that the mark actually was `RUSTAM INDIA'. Mr. Anand next cited K. R. Chinna Krishna Chettiar v. Ambal & Co., , where the conflict was between the registered trade mark SRI AMBAL and the mark SRI ANDAL; both were different divinities/goddesses. The Court upheld the injunction on the grounds of phonetic similarity, disregarding the fact that the names were of different goddesses, a distinction that would have been evident to the public in India. Reference was also made to the decision in M/s.Jay Bharat Industries v. M/s. R.T. Engineering & Electronics Co., , in which the Learned Judge had framed the query viz. whether the mark `MASTER' and `REEC MASTER' are phonetically similar, then answered it in the affirmative, and injuncted the use of `REEC MASTER'. Mr. Anand also referred to Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, . The Respondent who had commenced business from Eranakulam was the proprietor of the Trade Marks `NAVARATNA' and `NAVARATNA PHARMACEUTICAL LABORAtorIES'. The appellants were engaged in Jullundar in a similar business, using the Trade Mark `NAVRATNA KALPA' registration whereof was declined consequent upon the objection lodged by the Respondent. The Supreme Court affirmed the finding that since the Respondent had been using the Trade Mark long before 1937, even though the mark might not satisfy the requirements of Section 6(1) of the Trade Marks Act, 1940, it was worthy. of protection observing that "length of user would, of course, be a material factor for the mark to become distinctive" having "by such a long user........become exclusively associated with the goods of the respondent in the market". It was further observed as follows, after which the appeal was dismissed with costs:

"The other ground of objection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered trade mark and in equating the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark. We have already pointed out that the suit by the respondent complained both of an invasion of a statutory right under S.21 in respect of a registered trade mark and also of a passing off by the use of the same mark. The finding in favor of the appellant to which the learned Counsel drew our attention was based upon dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in their colour and other features and their general get-up together with the circumstance that the name and address of the manufactory of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent's claim that the appellant had passed off his goods as those of the respondent. These matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement if a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy in the event of the use by another of that mark or a colourable imitation thereof. While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of "the exclusive right to the use of the trade mark in relation to those goods" (Vide S.21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of 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. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff".

5. In Amritdhara Pharmacy v. Satyadeo Gupta, , the contention was that the mark `LAKSHMANDHARA' was likely to deceive and cause confusion because of its similarity with `AMRITDHARA'. Since it was the finding that the Respondent had used the name for a long period to the knowledge of the other, this acquiescence was a special circumstance under Section 10(2) entitling concurrent user. It must be underscored that the Court found that the concurrent user of the two marks was likely to deceive or cause confusion even though, to my mind, there is phonetic dissimilarity. Therefore if there is conceptional identify, in conformity with the ratio of this decision, an injunction ought to be granted, as the consumer "would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailment". Although this case appears not to have been relied on in M/s. Hindustan Pencils Pvt. Ltd. v. M/s. India Stationery Products Co. and another, , the reasoning of the Learned Judge is on the very same lines.

6. The dispute in London Rubber Co. Ltd. v. Durex Products, , was disposed off on similar considerations and hence I shall not delve into its details. In Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., , the concurrent finding was that the concerned mark, namely, `SHREE' had not been adopted in a distinguishing or distinct manner and was not a word which could have been exclusively used by any trader. It was held that the Respondent could protect its rights in a passing off action but could not be heard to complain of infringement. It was also observed 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". This decision was followed in Godfrey Phillips India Ltd. v. Girnar Food & Beverages Pvt. Ltd., , where the Apex Court held that the Plaintiff could pray for an injunction of passing-off despite a disclaimer of the relevant words "SUPER CUP". To the same effect is the decision in Charan Dass & M/s. Veer Industries (India) v. M/s. Bombay Crockery House, 1984-PTC-102, where the plaintiffs mark was 'PERFECT' and 'SWASTIC PERFECT' and it had disclaimed the word `perfect'.

7. In Corn Products Refining Co. v. Shangrila Food Products Ltd., , the competing marks were `GLUCOVITA' and `GLUVITA'. It was observed that in deciding the question of similarity it is a person of average intelligence and of imperfect recollection that has to be kept in mind; and trade connection between the different goods is of equal significance. The Respondent's mark `GLUVITA' was held to be non-registrable. In Kedar Nath v. Monga Perfumery & Floor Mills, , it was found that merely because the mark `SUDERSHAN' used by both parties was prefixed by the Defendant with the word `VIJAY', it did not disentitle the Plaintiff from the relief of injunction. The very same view was expressed in Kochhar Oil Mills Ltd. v. M/s. Chhatar Extractions Ltd., 1995 (1) Arbitration Law Reporter 120, in respect of the mark 'PAKWAN' for refined oil in spite of the fact that the mark/word was descriptive, was sold to a different clientele and the Defendant had offered to prefix this mark with his own trading name, namely, Chhatar. The applicability of this string of judgments would now have to be reconsidered keeping in perspective the recent decision of the Apex Court in M/s. S.M. Dyechem Ltd. V. M/s. Cadbury (India) Ltd., 2000 (4) SCALE 713.

8. Prior user of the Trade Mark `USHA' was held to be sufficient reason for the passing off an injunction in Usha Intercontinental Ltd. & Ors. v. Usha Television Ltd., 1987-PTC-240-A. In M/s. R.P. Locks Company v. M/s. Sehgal Locks Co. and others, 1988-PTC-10, it was opined that the defendant's contention that they were using their name Sehgal Lock Co. along with the Trade Mark `HARVCON' may be relevant in a case of passing off action but was irrelevant since the Plaintiff had filed an infringement action in the context of its well established Trade Mark `HARRISON'. Reliance, perhaps misplaced on the facts at issue, was placed on National Bell Co. v. Metal Goods Mfg. Co. Ltd. and another, AIR 1971 SC 898. In M/s. Bhatia Plastics v. M/s. Peacock Industries Ltd. and another, 1995-PTC-150, the Plaintiff's registered mark `MAYUR' was protected against the Defendant's use of the Trade Mark `PEACOCK'. The Privy Council in Colgate Palmolive Ltd. and another v. K.F. Pattron, [1978] R.P.C. 635, found the packaging of toothpaste `COLGATE' and `TRINGATE' to be similar and containing borrowed features and granted the injunction; it reiterated that the proper test was whether the ordinary purchaser of normal memory, purchasing with ordinary caution could not be expected to make a close and careful side-by-side examination of the two products and also the use of the syllable `trin' for a product being marketed in Trinidad may well imply to its public that it was the local product of Colgate.

9. In Registrar of Trade Marks v. Hamdard National Foundation (India), the Division Bench was to adjudge the legal propriety of the Appellant's refusal to register the mark `SAFI' on the finding that it was a descriptive word having direct reference to the character and quality of goods and was incapable of distinguishment. The Trade Mark `SAFI' was given judicial imprimatur and the views of the Appellant were rejected. The following passage is extremely instructive and calls for reproduction:

"There are words which have a direct relation to the character and quality of goods which nevertheless may lose their primary meaning and acquire in a particular trade a secondary meaning as indicated to people interested, whether as traders or as the public in trade, the goods of a particular manufacturer. When that does occur and the evidence shows that the word has attained a secondary meaning then, in my opinion, the word is registrable as trade-mark".

"It is, therefore, possible that there may be some words which though they may have reference to the character and quality of goods yet have over a course of period, become associated with the goods of a particular trader and in that sense they would certainly be capable of distinguishing the goods of a particular trader and which would satisfy the test of Section 9 (5) of the Act and would be entitled to be registered in Part `B' of the register."

10. The last case cited by Shri Anand, Learned Senior Counsel for the Plaintiff was where the Plaintiff herein was also the party instituting the suit in the previous litigation. The contention was between the Trade Mark `KESH NIKHAR' and `BAL NIKHAR'. The Learned Judge held in the decision reported in M/s. Peshawar Soap & Chemicals Pvt. Ltd. and another v. M/s. Anil Soap and Chemical Works and others, 1989-PTC-191, that the two marks were `deceptively similar' and injuncted the Defendant also on the grounds of infringement.

11. From the precedents discussed above the following legal propositions emerge - (a) the true and appropriate test is whether an ordinary purchaser of normal memory, purchasing with common caution, who could not be expected to make a close and careful examination of the products in juxtaposition, was likely to be induced or confused into buying the wrong product. The commercial reality is that newcomers most often arrange incentives of myriad natures to get the retailer to promote its product. The customers/purchasers choice is undermined by stratagems such as the purveyor implying that the products are the same; it would be sanguine to expect that the shopkeeper will explain the differences in the source of the two products and/or put both products before the confused or unaware client in order to help him to take his decision. (b) Even though a disclaimer may have been recorded, this would not disentitle such a party to complain of imitation in a passing-off action. (c) Acquiescence, or laches or failure to object would disentitle a challenge to a similar mark since the rival would have built-up a reputation and clientele and that then apple-cart of balance of convenience ought not to be upset. (d) Acquiescence would also lend legal legitimacy to exclusive user of a descriptive word, which if contemporaneously challenged would call for cancellation. (e) Use of a prefix to the same mark is no justification for permission to use two identical or similar marks. (f) User of the mark is of preeminent importance and would override the rights of the owner of a registered mark who had not entered the market till the time its competitor did.

12. The Defendant has prayed for the vacation of the ex parte injunction on a number of grounds. (1) It is contended that the Plaintiff has created a confusion in the plaint between the mark KESH NIKHAR and NIKHAR, and that while stating that its product is the former, it has attempted to convey that the latter is a world renounced trademark; (2) That in its application for registration of the mark NIKHAR Beauty Bar the Plaintiff has falsely and misleadingly claimed user since 1935, since it is the mark KESH NIKHAR which has been used since then; (3) From surveys conducted by/on behalf of the Defendant it has been revealed that the Plaintiffs have never used the mark NIKHAR and this mark has been employed only as recently as June 2000; (4) The Defendant launched its GODREJ NIKHAR on 27th May 2000 and hence was the first user of this word; (5) The Defendant's assertion that the Plaintiff mark is PESCO KESH NIKHAR, and that it has not used the trade mark NIKHAR, has been admitted by the Plaintiff to the extent that its mark was "KESH NIKHAR" whereas "PESCO" has been separately registered; (6) Unless there is user of the Trade Mark concurrent with its registration, no exclusive rights will ensure to the holder; (7) The Plaintiff has a trade mark registration only for its label and not for the word "KESH NIKHAR" per se, and the labels of the Defendant and Plaintiff are so dissimilar that a passing off action should be dismissed summarily; (8) The word `NIKHAR' is descriptive, meaning cleanliness and for this reason the Defendant has only applied for label registration; (9) The Plaintiff has neither pleaded nor proved that the word `NIKHAR' has acquired a secondary meaning; (10) That the Plaintiff's product is a shampoo in cake form whilst the Defendant's product is a toilet soap; (11) The addition of the Defendant's house mark `GODREJ' eliminates any possibility of confusion; (12) Because of the Plaintiff's misrepresentations, it has disentitled itself of discretionary relief. (13) The Plaintiff's registration is for a Label mark and not a word mark, and hence all precedents relating to `word marks' is irrelevant. (14) For the forgoing reason there has been a violation of Section 81.

13. The Defendant has also relied on a catena of precedents, first amongst which is M/s. S.M. Dyechem Ltd. case (supra) in which the rival marks were PICNIC used by the Defendant and PIKNIK of the Plaintiff. The Plaintiff started business, principally in four products like potato chips and wafers, corn-pops and preparations made of rice. It thereafter applied for registration for other products including confectionery chocolates etc., which was granted after advertisement on 1.9.1993. The Respondent contended that `CADBURY PICNIC' was introduced in 1998 for chocolates etc. It applied for the rectification of the Plaintiff's mark on 19.3.1999. It also contended that `CADBURY PICNIC' and/or PICNIC and/or the Label had been registered in over 110 countries, and had attained a transborder reputation and goodwill. The Plaintiff had never intended to transact business in chocolates. The Apex Court condensed the contentions into seven compartments as under:

"11. On these contentions, the following points arise for consideration:

(1) Whether the defendant could, in the present interlocutory proceedings, based on infringement and passing off, raise any defense that the registration of plaintiff's mark was itself "invalid" because the plaintiff's mark did not satisfy the ingredients of clauses (a) to (3) of section 9(1) and was, in particular, not "distinctive" as required by section 9(1)(e)?

(2)Whether, on the other hand, plaintiff could rely on the presumption in section 31 and also contend that under Section 32 the "validity" of the registration of the plaintiff's mark had become conclusive on the expiry of 7 years long before defense was raised in the suit (such time reckoned from date of application for rectification under section 23(1) and whether there were any exceptions to the said bar?

(3) Whether, assuming that section 31 and section 32 did not come in the way of the defendant on merits the word `PIKNIK' was not distinctive and id not satisfy section 9 (1)(e)?

(4) For grant of temporary injunction, should the Court go by principle of prima facie case (apart from balance of convenience) or comparative strength of the case of either parties or by finding out if the plaintiff has raised a `triable issue'?

(5) Whether, assuming that plaintiff's registration was valid, the comparative strength of the case on the question of infringement is in favor of plaintiff?

(6) Whether, alternatively, the plaintiff had made out that for grant of temporary injunction treating the suit as a `passing off' action, the relative strength of the case, was in plaintiff's favor?

(7) Whether there was unreasonable delay on the part of the plaintiff in filing suit and whether the High Court was justified in interfering in appeal in interlocutory proceedings?

14. On the first three issues the Court opined that if rectification proceedings had been initiated the suit must be stayed to await the verdict, but the Court could still pass temporary injunctions. It was their Lordships opinion that it would be impermissable for the Civil Court to go into the question of `validity' or `distinctiveness' of the Plaintiff's Trade Mark as these issue would properly be decided in the rectification proceedings. The Hon'ble Supreme Court further observed that the case could well be disposed off "by considering whether there is prima facie any deception and hence infringement and whether there is any `passing off'." On the 4th issue their Lordships held that the test of the existence of a `triable issue' must give way in trade mark matters to the principle of `comparable strength' of the cases of the adversaries. The methodology employed by their Lordships for deciding with the 5th point is of special significance, as it would have a direct bearing on the resolution of the controversies raised in the present application. It was opined that "a mark is said to be infringed by another trader if, even without using the whole of it, the latter uses one or more of its essential features.........Ascertainment of an essential features is not to be by ocular test alone; it is impossible to exclude consideration of the sound of words forming part or the whole of the mark.......It is no answer to a charge of infringement - as contrasted with a passing off action - that the defendant's mark, whilst including the plaintiff's mark, includes other matters too. Still less is it an answer that by something outside that actual mark the defendant has distinguished his goods from those of the plaintiff - by adding his own name (Kerly para 14.22). But this principle is not absolute. It is also accepted that the addition of his own name by the defendant is an element to be considered and may turn the scales in favor of the defendant. It was further observed that whilst resemblance was important in the instance of words, in the cases of devices and composite marks dissimilarity in essential features is more important than similarity. The leading character of each i.e. the "whole thing" both orally and visually would be the relevant indicia; where marks are of similar nature, more regard must be had to the parts that are not common, since this will be the indicator of what impression is left on the mind. The Court should ascertain whether the Defendant has copied any of the distinctive arrangements of the common elements. These principles were applied by the Court in resolving the dispute between PIKNIK and PICNIC by holding that apart from the word the script was also an essential feature; but that the "dissimilarities appear to be clear and more striking to the naked eye than any similarity between the marks". It applied the Palmolive case test of `relative strength of pleas' to decline a temporary injunction to the Plaintiff. The Apex Court further observed that where the essential features have been copied, the Court would not return a finding on whether there was an intention to deceive or cause confusion in infringement actions. It is significant that their Lordships considered it unnecessary to delve into the aspect of transborder reputation in the facts of the case. It was further opined that a suit for passing off may fail but a suit for infringement may succeed because the additions, the get up and trade dress may enable a Defendant to escape in a passing of action. Diverging from previous decisions it was held that "the fact that the Defendant's wrapper contains the word `Cadbury' above the words PICNIC is therefore a factor to be taken into account."

15. In McCain International Ltd. v. Country Fair Foods Ltd. and another, [1981] RPC 69, the Court of Appeal reversed the decree of injunction, as it was of the opinion that (1) that, the plaintiffs having consistently advertised and sold their product under the name "McCain oven chips", this was strong evidence that the name "oven chips" was descriptive of the product and the name "McCain" indicated the source of original of the product. (2) "oven chips" was an ingenious and apt description of the product, although the consumer could not have become aware of what the expression meant until the product came on the market; once on the market the name "oven chips" would inform the consumer of the nature of the product." In Parle Products Ltd. v. Bakemans Industries Ltd, 1998 PTC (18), a Single Judge of the High Court of Madras had to consider whether the Plaintiff had made out a case for the grant of an injunction against the Respondent's biscuits Glucogold for its biscuits Parle-G Gluco. The Learned Judge, following the dicta of the Supreme Court in Corn Products case (supra) found in favor of the Defendant, in that the Gluco was a generic description of use of glucose in the product and that the work or mark which was originally a trade mark had subsequently become publico Jurisdiction and that the marks were always used with a suffix/prefix i.e. GLUCOGOLD and PARLE-G GLUCO. In Rupee Gains Tele-Times Pvt. Ltd. v. Rupee Times, 1995 PTC (15), it was held by S.K. Mahajan, J. that since the word Rupee was a not distinctive term but was a generic term, the Plaintiff was not entitled to an injunction.

16. The decision rendered in White Horse Distillers Ltd. v. The Upper Doab Sugar Mills Ltd. & Anr. 1984 Arb. L.R. 97 is not of much assistance since its gravamen is that the balance of convenience is against the Plaintiff if the action can be assailed on the grounds of delay. The case Mc Andrew v. Basset, 1864 Ch. 4 D.J.& S. 380 at page 356 was cited for the proposition that an injunction should be granted only in respect of a product which is a vendible article in the market.

17. With this understanding of the law pertaining to legal disputes of the nature raised in these proceedings, let me now return to the facts of the case. The first feature is that the word `NIKHAR' is not an extremely relevant for soaps, and quite obviously was one of the primary reasons why the Plaintiff has used it for several decades, along with the word `KESH', which is also not an artificial or created word and means hair. One should not lose sight of the fact that the Plaintiff's product is undisputedly a shampoo in a cake form and not a beauty soap. Kesh Nikhar therefore is a combination of descriptive words already prevalent in vernacular vocabulary, and individuality is imparted thereto by the prefix of `PESCO', which is particular only to the Plaintiff. The extract from the Trade Marks Journal No. 388 dated 1.8.1965 starts with the inscription - The Hindi words "Kesh Nikhar" appearing on the mark mean "Hair shine". In Bhargava's Dictionary `nikhar' is stated to mean cleanness, embellishment, elegance. The Copyright registration, No. A-30 760/80, is in respect of Kesh Nikhar (carton) and not purely the two words in their conjoint user. The following observation of Lord Simonds in Yorkshire 71 RPC 150 at 154 is as relevant today as it was several years ago:

"The more apt a word is to describe the goods of a manufacturer, the less apt it is to distinguish them, for a word that is apt to describe the goods of A is likely to be apt to describe the similar goods of B. It is, I think, for this very reason that a geographical name is prima facie denied registrability. For just as a manufacturer is not entitled to a monopoly of a laudatory or descriptive epithet, so he is not to claim for his own a territory, whether country, county or town, which may be in the future if not now, the seat of manufacture of goods similar to his own......"

17. Learned counsel for the Plaintiff had relied heavily on the following passage from the treatise of Narayanan titled - Law of Trade Marks and Passing Off:

"8.69. Factual Distinctiveness. Distinctiveness is not necessarily an inherent or innate quality; it can be acquired. Where the primary signification of the word is descriptive in relation to the goods to which it is applied as a trade mark, the applicant may be able to show that by long user of the mark it has lost its primary signification and has acquired a secondary signification as denoting his goods and his goods only.

Acquired distinctiveness has to be considered only where the mark lacks sufficient degree of inherent distinctiveness. The extent to which courts will require proof of acquired distinctiveness depends upon the nature of the case; the less the mark is inherently distinctive the greater will be the requirement as to acquired distinctiveness.

Although acquisition of distinctiveness of trade mark is often a long, laborious and time consuming process, no minimum period of user has been prescribed by Statute for the purpose. There may be cases where a trade mark may attain the requisite distinctiveness within a short period and it is not possible to predict or lay down any hard and fast rule about the period of time on the expiry whereof only a trade mark by user can attain distinctiveness required under the Act. Each case will depend on the attending circumstances and the evidence adduced in support of the acquisition of distinctiveness."

18. As was emphatically pointed out by Shri Chidambaram, learned Senior Counsel appearing on behalf of the Defendant, it has not been averred by the Plaintiff that the mark KESH NIKHAR or NIKHAR has by long user lost its primary signification and acquired a secondary signification which is particularly and singularly indicative of the Plaintiff's goods. What has been averred in the plaint is that over the past sixty-five years `KESH NIKHAR' soap has come to be associated with the Plaintiff. My attention was also drawn to the fact that this product was accorded registration as a soap in contradistinction to a `shampoo'; however, the Court is called to consider the actual sales of the product and in this aspect there is little doubt that the Plaintiff has marketed only a cake shampoo. No doubt, the Plaintiff has also applied for registration of the trade mark Nikhar Beauty Bar in March 1997 but this by itself would not create any preferential rights in favor of the Plaintiff, unless it is shown that a soap by the name Nikhar Beauty Bar has been genuinely manufactured and marketed by the Plaintiff. I am immediately reminded of the decision of the Court of Appeals in the `Merit' and `Nerit' controversy, where, despite the manufacture of one million cigarettes under the trade mark Nerit, the Court declined protection since it was not convinced that this manufacture was with the intent to market this product, but rather for blocking the introduction of MERIT cigarettes on the grounds of prior user of a similar word.

19. The registration accorded to the Plaintiff under the Copyright Act, in 1980, was for Kesh Nikhar (Carton). A perusal of the Plaintiff's packaging/carton for KESH NIKHAR, KESH BAHAR and BAL SANWAR will make it immediately evident that the distinctive feature in all the products is the artwork of the woman, and even here, the prominent aspect is her long flowing hair which is engaging her attention and activity. When a prospective customer examines the product in its packaged form, it is this aspect which would be looked for primarily. I have already observed that the soap allegedly marketed by the Plaintiff under the trade mark `Nikhar' is so recent as to make it conspicuously obvious that it was intended to thwart the Defendant's product of the same trade mark but in an entirely distinguishable and different trade-dress. While on the topic of the `fides' of the parties, the Defendant has taken the trouble to undertake a market search prior to the launch of its soap, and I am prima facie convinced that the reputed, independent agency had reported the absence of the Plaintiff's soap under the trade mark Nikhar. It will be relevant to mention that the Defendant has categorically averred in its application under Order XXXIX Rule 4 that the Plaintiff "has never, thus far, used the trade name NIKHAR in the course of trade" and in respect of this statement there is, significantly, non-traverse and absence of denial. Inasmuch as Mr. R.K. Anand, learned Senior Counsel for the Plaintiff had argued that the word NIKHAR is an integral part of KESH NIKHAR, the argument admits that `Nikhar' had not been previously exploited. It was also for this reason that Mr. Anand had drawn attention to Section 2(f) of the Act. I am also of the prima facie view that it is the Defendant who has shown prior user of the word `Nikhar' in soap. As opined by the Division Bench of this Court in Metro Playing Card Co. Vs. Wazir Chand Kapoor, , prior acceptance of an application for registration of a trade-mark or its advertisement confers no right, instead `honest concurrent user' is to be looked for. The Defendant has not claimed exclusivity in the use of the word `NIKHAR' as it cannot do; it has prominently imposed the `Godrej' banner on its wrapping, which is of great importance as has been recognised by the Supreme Court in M/s S.M. Dyechem Ltd. case (supra). A customer is not likely to buy the Defendant's NIKHAR soap instead of the Plaintiff's KESH NIKHAR cake shampoo, unless he is so careless as not to merit consideration. The word `NIHAR' is so descriptively topical and relevant in the soap business that Courts of Law must be loath and reluctant to grant anyone exclusive user or ownership over it. For all these manifold considerations and reasons I am convinced that a prima facie case has not been made out by the Plaintiff. Even if it be assumed that the Plaintiff is genuinely interested in manufacturing and selling its NIKHAR soap, the Defendant appears to have entered the market first; and even otherwise both products are at their nascent stages so that laissez-faire principles will settle the controversy. I empathise with the Plaintiff. It has been using the trade mark KESH NIKHAR for several decades and is obviously peeved that the Defendant should pick on the word NIKHAR, which the Plaintiff could as easily have chosen and exploited in the market. The Plaintiff may draw solace from the fact that the best ideas are often the first to be imitated.

20. The Plaintiff's I.A. 6078/2000 under Order XXXIX Rules 1 and 2 is dismissed but with no order as to costs. The Defendant's I.A. 6354/2000 under Order XXXIX Rule 4 is allowed.

IA 6799/2000 & IA 8175/2000 Dismissed as infructuous

IA 7628/2000, 8906/2000

21. These are applications under Order XXXIX Rule 2A filed by the Plaintiff. The allegation is that despite having been served on 22nd June, 2000 with the injunction orders passed by this court, the Defendants have gone ahead for selling their soap under the mark NIKHAR'. An Invoice of Raj & Company for 24 NIKHAR soaps has been filed in which the Buyer is Ramesh Stores, Yusuf Sarai, along with the Cash Memo of the latter for six of these soaps. Apart from these transactions, the Plaintiff has also complained of a newspaper Report in the Economic Times dated 31st July, 2000 which mentions the smart and innovative marketing of NIKHAR soap. In its Reply, the Defendants have clarified that the article was academic and the interview given was not with a view to advertise Godrej Nikhar or overreach the injunction. The Defendant has categorically denied that it had made any sale of Godrej Nikhar after the passing of the injunction. The Defendant has further explained that M/s Raj & Co. are not the exclusive distributors of the Defendant and that their relations are on a principal to principal basis, and that the Defendant's officers have immediately issued instructions/requests to all concerned, not to effect any sales of this product.

22. In the second applications the Plaintiff has complained that the sales of Godrej Nikhar soap are continuing and that the "defendant on their e-mail through @ BATCHAT programme and Ezemart.com the computer Network of the Defendant, a Cyber Shop Marketing of the Defendant is still selling and advertising soap under the mark NIKHAR. The said advertisements of the defendant is still being displayed on e-mail/internet and one such display has been made on 12th August, 2000 and 19th August, 2000." Printouts have been filed along with Cash Memos/Bills of alleged sales of Godrej Nikhar from sundry shops as also from Cyber Shop Marketing Pvt. Ltd. In its Reply, the Defendant has pleaded that these websites which have been mentioned are not owned by the Defendant and the Defendant has no control over them. It has further been averred by the Defendant that the products of the Defendant sold through these websites are not sourced from the Defendant. Sales of Godrej Nikhar relate the preinjunction stocks released by C & F agents of the Defendant prior to 23rd June, 2000.

23. The judicial powers of committal for contempt of its orders are to be employed very sparingly, only when it is evident that they have been contumaciously disobeyed or ignored. These powers should be exercised when there is preponderant and abundant evidence that the party has willfully violated or disregarded the orders. In the launch of any product on a wide- spread scale, it would be sanguine to expect that there would not be any stray and unintentional violations of an interdiction against sales thereof. I am satisfied that there is an absence of conclusive proof of any intentional violation of the orders. The Cash Memos filed do not convince me that they are indicative of sales carried out by the Defendant. It is true that the Defendant's webpage carried details/particulars of Godrej Nikhar but I would accept the Defendant's explanation that the webpage was created prior to the issuance of the injunction, and ignore the failure to immediately delete all information pertaining to this product on learning of the orders. This exercise should have been followed, but the unqualified apology together with the remedial action on the facts being brought to the limelight have persuaded me of the inappropriateness of going into the matter any further. For contempt to be made out, there must be a conscious act of disobedience, and not merely a failure to act with full diligence. The existence of reference to Godrej Nikhar had quite possibly escaped the attention of the Defendant. It is not conduct that would necessarily invite initiation of contempt proceedings.

24. The applications are dismissed.