Amir Chand Om Prakash vs Hari Darshan Sevashram Pvt. Ltd.
2001 Latest Caselaw 1650 Del

JUDGMENT

V.S. Aggarwal, J.

1. M/s. Amir Chand Om Prakash (for short the plaintiff) has filed the present suit for permanent injunction to restrain the defendant (M/s Hari Darshan Sevashram Pvt. Ltd,) from infringement of the trade mark of the plaintiff and for action in passing off. The plaintiff seeks to restrain the defendant from selling, manufacturing, advertising, directly or indirectly dealing in dhoopbatti, agarbatti, hawan samagri and other cognate and allied goods with the device of LORD HANUMAN/MAHABIR/BAJRANGBALI or in a similar fashion selling or offering for sale in dealing with the above said agarbatti etc.

2. The facts alleged are that plaintiff is carrying on the business of manufacture and sale of dhoopbatti, agarbatti, hawan samagri. Since the inception of the business plaintiff had conceived and adopted the trade mark MAHABIR device mark LORD HANUMAN/MAHABIR/BAJRANGBALI which conveys the same device of Hanuman in any manner. The said device has been used extensively. The plaintiff is the registered proprietor of the trade mark MAHABIR device mark MAHABIR/HANUMAN/BAJRANGBALI in respect of dhoopbatti. By virtue of the prior adoption, long and established user coupled with vast publicity given to the trade mark MAHABIR the plaintiff claims that it has acquired exclusive and bona fide right to the use of the trade mark MAHABIR with the device mark MAHABIR/HANUMAN/BAJRANGBALI. The use of any identical or confusingly similar device mark HANUMAN in any manner is bound to cause confusion and deception in the minds of the purchasing public at large. The plaintiff has established large and exclusive sale in this regard.

3. Defendant M/s Hari Darshan Sevasharam Pvt. Ltd. is stated to be engaged in the business of manufacturing and marketing of dhoopbatti, agarbatti, hawan samagri. It has also adopted the trade mark HARI DARSHAN DHARMIK DHOOP and has adopted the device mark LORD HANUMAN with mala fide intentions. It infringes the trade mark of the plaintiff and passing off the goods of the plaintiff. On these broad facts the above said civil suit has been filed.

4. Needless to state that defendant in the written statement has contested the suit. It is alleged that the civil suit suffers from unnecessary delay. The defendants are carrying on the business of manufacturing and marketing of dhoop under the trade mark 'HARI DARSHAN' Dharmik Dhoop for last many decades. The plaintiff is stated to be not the owner of the impugned trade mark/device 'MAHABIR'. There are many other registered proprietors of the trade mark device HANUMAN/MAHABIR. Thus the plaintiff has no locus standi to maintain the suit. The defendant claims that its predecessors had filed the suit against the plaintiff for infringement and passing off the trade mark RAM HARI DARSHAN. The suit was decreed and as a counter blast the present suit has been filed. The suit has been filed basically out of jealousy and business rivalry. In fact the defendant claims that it has been using the device of various Gods and Goddesses in respect of its product of dhoop and agarbatti for very long time. One big carton 'HARI DARSHAN DHARMIK DHOOP' containing 12 packets of different devices of 12 Gods and Goddesses is marketed by the defendant. The plaintiff has taken out one packet containing the device of HANUMAN and has not brought to the notice of the court that there are 11 other packets of different Gods and Goddesses. As a matter of fact the defendant never sells the goods under the packet containing the device of HANUMAN.

5. During the pendency of the present suit the plaintiff has preferred IA 11887/2000 seeking an ad interim injunction to restrain the defendant, its representatives from directly or indirectly dealing in dhoop, agarbatti, and hawan samagri bearing the device mark LORD HANUMAN or BAJRANGBALI in any manner. By virtue of the present order the said interim injunction application which too is being contested to proposed to be disposed.

6. Learned counsel for the plaintiff at the outset urged that plaintiff has the registered trade mark MAHABIR device mark HANUMAN/MAHABIR/BAJRANGBALI in respect of dhoopbatti included in class 3 under the provisions of Trade and Merchandise Marks Act, 1958. The same is valid till the year 2006. Therefore, the plaintiff alone has the exclusive right over the said trade mark and the defendant does not have any such registered trade mark and consequently cannot use the said device.

7. To buttress his argument reliance has been placed on large number of precedents by the learned counsel and it would be advantageous to refer to some of them before coming to a conclusion In the case of Prem Nath Mayer v. Registrar of Trademarks and Anr. . The appellant before the Division Bench of the Calcutta High Court had contended that registration of 'MA DURGA' brand with the device in that particular case was the mark proposed to be registered and it resembled the registered trade mark of the appellant. Such resemblance would lead to confusion and deception. The device of lion weighed heavily with the Division Bench of the court and the Calcutta High Court held that burden of proving that trade mark which a person sought to register was not likely to deceive or cause confusion was on the person who comes to the court. It was held that essential feature in registered trade mark was the device of lion and the idea that is conveyed to a prospective purchaser is the symbol of lion. The use of the same mark of a lion in the applicants trade mark proposed to be registered therefore would lead to confusion. The court held:

".....Relying upon these observations counsel for the appellant contended and we think rightly, that the essential feature in the registered trade mark of the appellant in this case was the device of a Lion and the idea that is conveyed to a prospective purchaser is the symbol of the Lion. It is the concept or idea of a Lion that is carried in his mind by an average purchaser of ordinary intelligence. The use of the same mark of a Lion in the respondent's trade mark proposed to be registered would undoubtedly lead to confusion in the mind of a purchaser."

8. This court in the case of Kedar Nath v. Monga Perfumery & Flour Mills was also concerned with similar principles of law. It had been alleged by the plaintiff that he is manufacturing and selling dhoop and agarbatti and trading under the name and style of Mysorewala Sugandhit Dhoop Factory. The plaintiff was manufacturing and selling dhoop under the trade mark SUDERSHAN. The defendant was also manufacturer of dhoop and it was alleged that he was deliberately infringing plaintiff's trade mark. He had introduced his dhoop with the trade mark SUDERSHAN pre-fixed by the word VIJAY. The court after discussing the expression 'deceptively' as occurring under Section 2(d) of the Act held:

".....On an ocular examination it appears that there is close similarity and identity in the essential features of the two cartons. In my opinion the carton, mark and the label etc. of the defendant constitute a clear infringement of the plaintiff's registered trade mark and of his statutory right to its exclusive use. The infringement of the registered trade mark of the plaintiff committed by the defendant being contrary to the provisions of Section 28 is illegal and defendant cannot be allowed to continue in its illegal activity. The balance of convenience is in favor of the plaintiff. The defendant has several other brands of dhoop and he can carry on his business of selling dhoop-batti in the other brands. As the defendant has failed to place material facts before the Court from which it can be inferred that the defendant has been using his trade mark since 1952. I have no considered it necessary to put the plaintiff on terms. The plaintiff has a statutory right to the exclusive use of the trade mark. He complains of infringement. To protect his right in the property, for trade mark is a property an injunction should be issue din his favor."

9. A Division Bench of this court in the case of Century Traders v. Roshan Lal Duggar & Co. and Ors. was dealing with a matter in an action for passing off. It was held that number of actual damage or fraud is unnecessary in a passing off action and that if there is a likelihood of offending trade mark invading the proprietary right, a case for injunction would be made out. For sake of convenience the relevant paragraph of the judgment of the Division Bench of this court can conveniently be referred:

"....In our view the proof of actual damage or fraud is unnecessary in a passing off action whether the relief asked for is injunction alone or injunction, accounts and damages. If there is a likelihood of the offending trade mark invading the proprietary right, a case for injunction is made out. We are fortified in coming to this conclusion by the observations in a bench decision of this court in Prima Chemical Works v. Sukhdayal, 2nd (1974) 1 Delhi 545."

10. In identical terms is the decision of this court in the case of Vijay Foam & Co. v. V.K. Bajaj & Co. 1994 PTC 19. The plaintiff was stated to be a registered proprietor of the trade mark ROYAL. The defendant was using the trade mark ROYAL TOUCH and keeping in view the peculiar facts it was held that it infringes the right of the plaintiff and ad interim injunction as such had been granted.

11. It is obvious from aforesaid that touchstone for examining the said controversies is as to whether the device or the trade mark used by the defendant would infringe the right of the plaintiff or not. This can be seen by the view point of an ordinary person of normal prudence. The first sight examination also caries the weight as to whether a normal person would take it to be the goods of the plaintiff or not. If the normal person is likely to know that what he is to purchase is not the goods of the plaintiff, in that event it cannot be termed that there is any such infringement of the trade mark. Registration, of course, gives certain rights but not a right to the extent in the manner in which the plaintiff seeks that nobody should use the expression HANUMAN or the device thereto.

12. The defendants learned counsel had brought to the notice of the court in the list of 4th December, 2000 large number of other manufacturers who are using the expression HANUMAN or device thereto. It is not this sole factor that is the tilting factor. One cannot ignore the fact that the name HANUMAN is a household name and if it is used in any form which is not deceptively similar to the device of the trade mark of the plaintiff, in that event it will not be proper to state that it infringes the right of the plaintiff.

13. That being the position one can conveniently refer to the documents that have been placed on the record. The plaintiff has placed on the record its wrapper pertaining to dhoop, agarbatti or Deluxe Dhoop. The wrapper/label contained in capital letters or in Devnagri script written MAHABIR followed by the photograph of LORD HANUMAN in different poses. So far as the defendant is concerned, the wrappers that was placed on the record contains the words HARI DARSHAN DHARMIK DHOOP written in Roman script as well as Devnagri. It also has the photograph of LORD HANUMAN. In addition to that the defendant has brought on record its carton stating that in fact it only sells dhoop in 12 packets giving different photographs of 12 Gods and Goddesses. The same has been placed on the record. It reveals that HARI DARSHAN has been written in Devnagri scripts as well as in Roman script followed by the word DHARMIK DHOOP. It contends 12 different packets that the photographs, one of them is of LORD HANUMAN.

14. Can in these circumstances the court come to the conclusion that it would be infringing the trade mark of the plaintiff or not?

15. We know from the decision from the Supreme Court in the case of Corn Products Refining Co. v. Shangrila Food Products Ltd. that the question whether two marks are likely to give rise to confusion or is not a question of first impression. It is for the court to decide the same. Absolute identity of two competing trade marks or their close resemblance is one of the test for determining the question of likelihood of deception and confusion. The Supreme Court had held:-

"...It is well known that the question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the court to decide that question. English cases proceeding on the English way of pronouncing an English word by Englishmen, which it may be stated is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity....."

16. Similarly in the case of F. Hoffimann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd. while considering somewhat a similar controversy held that marks must be compared as a whole. It would not be proper to take a portion of the word and say that because one portion of the word differs from the corresponding portion of the word there is no sufficient similarity. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons. The Supreme Court had compared the trade marks Dropovit and Propovit and found that they were not similar. Identical was the view point expressed in the case The Coa-Cola Co. of Canada v. Pepsi-Cola Co. of Canada . 1970 RPC Vol. 59 Page 127. It was held that marks were not similar as to cause confusion. The only similarity lay in the word Cola and the plaintiff could not claim a monopoly in that word. There was no evidence that any one had been misled or is likely to be misled. The facts were that the plaintiff company was the owner of the registered trade mark Cola written on the script form and applied to beverages and syrup. The defendant company had the registered trade mark Pepsi Cola in the same area for similar goods. The answer given in that case was in the negative.

17. A Division Bench of this court in the case of Kellogg Company v. Pravin Kumar Bhadabhai 1996 PTC (16) 187 was concerned with the matter where the appellant Kellogg Company sells corn flakes with carton which describes the carton as Kellogg Corn Flakes (the original and the best). The respondent was selling corn flakes using the carton more or less similar in size but with the title AIMS ARISTO CORN FLAKES. The question that came up for consideration before the Division Bench was as to whether it infringes the mark of the plaintiff or not. After scanning through the various precedents the court held that it does not infringe the trade mark of the appellant and concluded:

"....We are of the view, prima facie that even though the get up is similar, the different names Kellogg's and AIMS ARISTO prominently displayed, make all the difference and this is not a fit case for interference with the order of the learned Single Judge refusing injunction."

18. More recently another Division Bench of this court in the case of Veerumal Praveen Kumar v. Needle Industries (India) Ltd. and Anr. FAO (OS) No. 115/2000 decided on August 24, 2000 while going into the same controversy held:-

"There can be no doubt about the proposition that the considerations in an action for infringement of a mark and in passing of action is different as set out by the Supreme Court in Ruston & Hornsby's case (supra). However, in the present case the learned Single Judge himself found that there was distinctiveness between the two cards and labels and we have agreed with the said conclusion. The mere mention of the trade mark '555' along with the other features prima facie, does not give any rights to respondent no. 1, taking into consideration the non-user of the registered mark for over a long period of 40 years (except in short intervening period of about 1-1/2 years from 1997 to 1979)."

19. Reverting back once again to the facts of the case as mentioned above and re-mentioned at the risk of repetition, the plaintiff is selling its goods under the title MAHABIR. It bears the device of LORD HANUMAN. Defendant is selling its goods with a carton and name HARI DARSHAN DHARMIK DHOOP. It contains different photographs of Gods and Goddesses and one packet has the photograph of LORD HANUMAN. Merely because the device of LORD HANUMAN is printed by itself will not deceive an ordinary customer because the prominence is given to the name HARI DARSHAN and it is not exclusively the prominence of the device that matters. Yet an ordinary customer is not likely to be deceived. It is difficult to accept the plea of the plaintiff in the peculiar facts of the case that it infringes the plaintiffs right. As a necessary corollary it follows that plaintiff cannot be termed to be having a prima facie case to permit this court to grant an ad interim injunction. Consequently the contention must fail and IA referred to above is dismissed.

20. By way of abundant caution it is added that nothing said herein should be taken as an expression of opinion on the merits of the matter.

21. Documents should be filed within four weeks. List it before the JR on 15th March, 2001 for admission/denial.