M/S Kirorimal Kashiram Marketing ... vs M/S Sachdeva & Sons Industries ...
2008 Latest Caselaw 2225 Del

     *IN THE HIGH COURT OF DELHI AT NEW DELHI

       +I.A. No. 8858/2007 in CS (OS) No. 1416/2007

%11.12.2008                             Date of decision: 11.12.2008

M/S KIRORIMAL KASHIRAM MARKETING
AND AGENCIES PRIVATE LIMITED                                      ....Plaintiff

                                 Through:       Mr. S.K. Bansal and Mr.
                                                Pankaj Kumar, Advocates

                                    Versus

M/S SACHDEVA & SONS INDUSTRIES PVT. LTD.                         ....Defendant

                                 Through:       Mr. Janender Kr. Chumbak,
                                                Advocate

CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

1.    Whether reporters of Local papers may YES
      be allowed to see the judgment?

2.    To be referred to the reporter or not?          YES

3.    Whether the judgment should be reported
      in the Digest?                        YES


RAJIV SAHAI ENDLAW, J.

1. The application of the plaintiff for interim relief is for

consideration. The plaintiff has instituted the suit for injunction to

restrain infringement of its trade mark and for ancillary relief of

delivery, rendition of accounts, damages, etc.

2. The trade mark of the plaintiff is Double Deer registered on

5th August, 1985 with respect to Rice for sale in the States of Punjab,

Himachal Pradesh, Haryana, Jammu and Kashmir, Rajasthan,

Gujarat, West Bengal, Tamil Nadu, Assam, Maharashtra and Union

Territory of Delhi. The trade mark has been renewed from time to

time and assigned from time to time. The plaintiff also holds a

registration certificate dated 18th January, 1990 of its label showing

two deer facing each other and with a Flag between them and with

the name Double Deer Brand Special Dehraduni Basmati Rice

written above them, also in respect of Rice for sale in the States of

Tamil Nadu, Kerala, Andhra Pradesh, Karnataka and Union Territory

of Pondicherry. Documents with respect to the aforesaid

registrations have been filed before the Court.

3. The plaintiff claims to be engaged in the business of

processing, marketing and exporting of Rice. The plaintiff claimed,

through its predecessors in title to have adopted the

word/brand/label Double Deer with devise of two deer as aforesaid

as a trade mark as far back in the year 1966. Though it is admitted

that from time to time changes in the artistic feature of the label

have been made but the mark Double Deer with devise of two deer

is stated to have been used continuously since the year 1966. The

plaintiff also claims to have applied for registration of the aforesaid

mark and label in Class 30 as well as in Class 42 including for export

purposes and which applications for registration are stated to be

pending. The registration of the art work as a copy right is also

stated to be pending.

4. The defendant is stated to be engaged in the same

trade/business as the plaintiff i.e. of manufacturing, marketing,

processing of Rice. The defendant is pleaded to have adopted in

relation to its aforesaid business the trade mark Deer with the

devise of a single Deer. The plaintiff claiming infringement and

passing off, instituted the present suit on learning of such action of

the defendant from the application of the defendant for registration

in Class 30 for export only, in the Trade Mark Journal on 16th

October, 2006. The plaintiff also claims to have filed an opposition

to the application of the defendant for registration. It is further

pleaded that the inquiries of the plaintiff have revealed that the

defendant has so far not started using the impugned trade mark but

was found soliciting inquiries and having intention to commercially

exploit the said trade mark. . The counsel for the plaintiff has relied

upon Izuk Chemical Works vs. Babu Ram Dharam Prakash 2007

(35) PTC 28 (Delhi).

5. No ex parte interim relief though prayed was granted to the

plaintiff. The defendant has filed the written statement pleading that

its mark is completely different from that of the plaintiff; Deer is a

generic and ordinary dictionary word and no monopoly or exclusive

usage can be claimed in respect thereto. It is pleaded that the two

marks are different because, while the plaintiff is Double Deer, the

defendant is Deer, while the plaintiff's label consists of two Deer

with a flag between them, the defendant's label comprises of one

Dear only; while the plaintiff prints its label on the corner of the bag

of the rice along with the words M/s Tirbeni Flour Mills, Rohtak

(Haryana), the defendant prints its label in the middle of its rice bags

and along with words Imported Aged Rice and Naturally Aromatic;

that the fonts and style of the two labels and the colour combination

of the two labels are entirely different. The defendant has also

pleaded that the defendant till date has never sold even a single

product with mark Deer in India and even exports made by the

defendant with respect to the trade mark Deer were made in the

year 1996 and no sale in the name or the mark of Deer has been

made thereafter. It is pleaded that the mark of the defendant was

for export purposes only and the suit of the plaintiff was thus not

maintainable and no case of infringement or passing off was made

out. It is further pleaded that the matter was under adjudication

before the Registrar of Trade Marks and the plaintiff had instituted

the present suit to harass the defendant.

6. The counsel for the plaintiff has argued that the defendant has

with mala fide intention in its application for registration claimed

user since 1985 though no documents have been filed before the

Registrar of Trade Marks or before this Court showing user since

then. I, however, do not find that this aspect requires adjudication at

this stage since the defendant has not sought to defeat the prayer of

the plaintiff for interim relief for the reason of delay by the plaintiff

in approaching the Court. Moreover, the defendant in its written

statement (supra) has itself stated that it has not used the mark

challenged by the plaintiff at any point of time save for export

purposes in the year 1996 only.

7. In my view, the essential feature of the trade mark of the

plaintiff in the present case is Deer and the use of the word

'Double' or the use of two Deer on the label of the plaintiff in

contradistinction to one on that of the defendant would not make the

mark of the defendant different from that of the plaintiff. The goods

with respect to which the mark is being used by plaintiff as well as

the defendant are the same. The test to be applied in such cases is as

to how the mark/label will be recalled in the mind of the

consumer/patrons of the goods/services. The recall factor may also

vary from goods to goods. While the recall factor may be very high/

precise in relation to goods of personal nature such as perfumes,

toiletries, blades/razors, designer clothes, it is not so accurate in

relation to other goods. In my view the goods in the present case,

viz. rice are not such in relation to which the buyer is likely to

remember that what he had liked/appreciated or bought on an

earlier occasion, which can be anything from a month to a year,

considering the shelf life of rice was a Double Deer or a Single

Deer. The buyer who may have thus intended to purchase the rice of

the plaintiff can easily be led into buying the rice of the defendant.

The entire purport of this law is to prevent this from happening. A

product such as rice is again not always bought by the consumer

himself and the task may be delegated by one family member to the

other or even to a domestic help. This is likely to increase the

chances of deception/confusion. The test to be applied in relation to

such goods has to be different from goods generally bought by the

consumer themselves.

8. Though not referred to by the counsels, I have come across the

order of another single judge of this court in Kirorimal Kashiram

Marketing & Agencies Pvt. Ltd. Vs. Shree Sita Chawal Udyog

2008 (37) PTC 466 Del. on an application for interim relief filed in

another suit filed by plaintiff against some other party. The mark of

the defendant in that case was Golden Deer. Interim injunction was

denied holding that the differences of two as against one deer,

colour combination, shape etc. were features distinguishing the two

marks.

9. The decision of the Intellectual Property Appellate Board in

Kirorimal Kashiram Mktg. & Agencies Pvt. Ltd. Vs. Ravinder

Kumar Khanna 2008 (37) PTC 654, again relating to the plaintiff

has also come to my notice. Therein also the opposition of the

plaintiff herein to the mark K.C. Double Deer Brand in respect of

Cardamom was rejected inter-alia on the ground of Double Deer

being ordinary English word to which none can claim monopoly and

being incapable of distinguishing the goods of the plaintiff herein. It

was also held there was no phonetic or visual resemblance in the two

marks. Yet another reason was the difference in nature of goods with

respect to which the two marks were to be used.

10. Ordinarily I would have followed the dicta of this court in the

other case filed by plaintiff. However, I find, that the Division Bench

of this court in Atlas Cycle Industries Ltd. Vs. Hind Cycles Ltd.

ILR 1973 1 Del 393 has held that the fact that there are some

additional features in the defendant's mark which show marked

differences is immaterial in an action for infringement; even in

passing off action the test is whether additional features in

defendant's mark are sufficient to distinguish the same from that of

the plaintiff. The test is of reasonable probability of deception from

the point of view of average purchaser. The further test laid down

was of how such a purchaser would connect the trademark with the

goods he would be purchasing - it is impossible that a man looking at

a trademark would take every single feature of the trademark; the

question would be what would be normally retained in his mind after

looking at the trade norm, what are the salient features of the

trademark which in future would lead him to associate the particular

goods with that trademark. Emphasis was also laid on regard being

given to surrounding circumstances and the main idea underlying

the mark. It was further held that the test is practically the same in

an action for passing off as in an action for infringement. The

Division Bench held Royal Star to be an infringement of Easter Star

for the reason that average consumer would remember/associate

star only with the product of the plaintiff in that case.

11. In consonance with the above principles (i) in Amrit Dhara

Pharmacy Vs. Satya Deo Gupta AIR 1963 SC 449 Lakshman Dhara

was found deceptively similar to Amrit Dhara, (ii) in K.R. China

Krishna Chettiar Vs. Ambal & Co. AIR 1970 SC 146 Sri Andal was

found deceptively similar to Sri Ambal in spite of pictorial

dissimilarity (iii) in De Cordova Vs. Vick Chemical Co. 68 RPC 103

Karsote Vapour Rub was held infringing Vick Vaporub Salve (iv) in

Dev Pesticides Pvt. Ltd. Vs. Shiv Agro Chemical Industries

2006 (32) PTC 434 Mad. (DB) Super Boom was held infringing

Boomplus and Boom flower (v) in Shaw Wallace & Co. Ltd. Vs.

Superior Industrious Ltd. 2003 (27) PTC 63 Del. Haywards 5000

was found infringing Hayawards5000 Super Strong beer invoking

the imperfect memory of an average consumer and invoking the test

of the way/manner in which the mark would be remembered (vi) and

finally in Izuk Chemical Works (Supra) use of Superstar was

prima-facie found infringing Moonstar and device of star of the

plaintiff in that case.

12. It is also recorded in the decision (Supra) of the Intellectual

Property Appellate Board that there are more than a score

trademarks comprising of the word or device or both Deer which

have been either advertised or registered in favour of different

proprietors. However, this court at this stage is not concerned with

use by parties other than those to the suit and no material has been

placed also in that regard. In any case that decision also does not

record anyone else using the same with respect to rice; as the

plaintiff is doing. The Board also while holding that there was

resemblance decided against plaintiff herein because of use by other

party therein for different goods and since long the same is not the

case here.

13. Applying the principles above, the possibility of

confusion/deception between Double Deer & Deer in relation to

rice, is to be judged. Rice, traditionally, as far as at least this country

is concerned was not a branded item. It was sold in terms of place of

origin and quality. It is only recently that it has been branded. A

large number of shops continue to sell rice as an unbranded item. So

brand for rice is an exception rather than norm. It is in the light of

this circumstance that the tests enumerated above of deception have

to be applied. Brand for rice is normally not of importance or the

criteria for the consumer. I feel that recall value for a person

repeating purchase of rice of the plaintiff or purchasing the same for

appreciation by word of mouth is Deer and not Double or Aromatic

or other features on the label. In my view, the label or the get up or

the colour combination on the bag/pouch of product such as rice is

not of much significance and the distinguishing features on

label/bags of plaintiff and defendant cannot come in the way of

interim relief for plaintiff if otherwise found entitled thereto. A

commodity such as rice is not stored in households in bags in which

it is sold. The bag may not be seen otherwise than at time of

purchase and not at all by the actual consumer of the family

members. They would be concerned with Deer only and are likely to

be deceived into buying Deer brand while wanting to buy Double

Deer brand.

14. The counsel for the defendant urged that there could be no

injunction with respect to a generic name as Deer. He has further

argued that the defendant was not selling in India and was selling

only in USA and as such the suit of injunction did not lie before this

Court inasmuch as no activity was being carried on by the defendant

within the jurisdiction of this Court. Lastly, it was contended that

even though the defendant has already stated that it was not using

the mark even for the export purposes, if any injunction is granted by

this Court, the same will prejudice the Registrar of Trade Marks who

is to decide the opposition filed by the plaintiff to the application of

the defendant for registration.

15. As far as the last submission of the defendant is concerned, in

my view, any order made on this application is on a prima facie view

of the matter and is not a final adjudication and does not come in the

way of the final decision of the suit and such a decision on a prima

facie view of the matter cannot possibly in law affect or prejudice the

Registrar of Trade Marks while performing his statutory function. I

may, however, add that if this was the primary concern of the

defendant, as it appears from the facts and the submissions, it was

open to the defendant to give an undertaking before this Court not to

use the trade mark till the decision of the opposition application.

The defendant having not done that, cannot prevent the application

of the plaintiff for interim relief from being adjudicated. The plaintiff

who claims to be the registered owner and prior user of the trade

mark with respect to the same goods, cannot be prevented from

approaching the Court to restrain the defendant from using the trade

mark during the pendency of the opposition application, if the

defendant's mark is found to be infringing the mark of the plaintiff.

The Registrar of Trade Marks has no jurisdiction/power to, during

the pendency of the application for registration or opposition

thereto, restrain the applicant from using the mark. It is also found

that application for registration and opposition thereto remain

pending for long and if the argument of the counsel for the

defendant is to be accepted that would tantamount to giving a

license to any person by making an application to the Registrar

Trade Marks, to infringe the trade mark of the plaintiff till the

pendency of the application/opposition. The said argument of the

defendant though rejected, nevertheless it is clarified that nothing

contained in this order shall affect or prejudice the Registrar in

taking an independent view in the exercise of his/her statutory

functions, this order being only on the prima facie view of the

matter.

16. By seeing the label and the mark of the plaintiff and the

defendant, I am prima facie of the opinion that the mark/label of the

defendant is deceptively similar to that of the plaintiff. The buyers

of the goods are likely to retain in their memories the word deer or

the pictures of the deer in association with the goods. The said

buyers are likely to be confused by the two trade marks and I find

the chances of the buyers distinguishing between the two marks to

be minimal. Even otherwise in the present day retail explosion,

when from time to time the manufacturers/sellers of goods come out

with schemes to empty their shelves, the use of the expression

double has become very common. The said word is normally used to

denote as well as promote scheme where double the quantity is

being offered at the prices much lower than double. The word

double is also normally associated with strength and quality and the

only impression which a consumer of Rice is likely to carry is that the

Rice of the brand Double Deer is double in quantity or quality than

that of the mark/label Deer and the consumer cannot be expected to

differentiate. The customer is likely to believe both as originating

from the same source and the consumer cannot be in the normal

course of human behavior be expected to understand that the two

are of different manufacturers having no connection whatsoever with

each other.

17. In the face of the documents of the plaintiff of registration

since 1985 and user since even prior thereto, I also find it hard to

believe that the defendant who is engaged in the same trade did not

know the mark/label of the plaintiff. If such knowledge is to be

imputed to the defendant, then I do not find any reason for the

defendant to adopt the mark adopted by it, but to take advantage of

and ride on the popularity and goodwill of the plaintiff. The

argument of the counsel for the defendant of a generic/dictionary

word is also not found applicable in the present case. Firstly,

majority of the trade marks have a dictionary meaning. Some

surveys show 60% of the existing trade marks to be having a

dictionary meaning. Secondly, the said argument is applicable to

cases where the word has a close connection or connotation with the

goods/services. I do not find any connection of a deer to Basmati

Rice. In these circumstances, the adoption of the mark/label by the

defendant to rice, does not show that the defendant by using the said

mark/label is referring to the product in any manner whatsoever.

The only reference which can be there is to the mark of the plaintiff.

The conduct of the defendant is also not found bona-fide. The

defendant in its application for registration claimed use of the mark

since 1985 but in the written statement pleaded use only in 1996.

18. The registrations of the plaintiff are by reference to certain

States only of the country. Even if the defendant were to contend

that he does not intend to market in the same States as the plaintiff,

in my view, the same would still not make any difference. The action

of the plaintiff is for passing off also. With the advent of travel and

communications, the state boundaries in terms of interstate trade

and commerce are disappearing and today when there is frequent

and large scale movement of natives from one State to the others,

they travel with their preferences and prejudices and no mileage can

be permitted to be drawn by one party to the trade mark and

associated goodwill of the other, particularly, when no apparent

reason is given or found for adoption by the other of

similar/deceptively similar trade mark though in a different State.

Similarly, the plea of the defendant that it intends to only export

under the said mark/label does not find favour with me. Export,

under Section 56 of the Act is use of the trade mark. There is no

restriction on the plaintiff exporting its goods. If the plaintiff were to

export its goods, the buyers in different countries are similarly, as in

this country, likely to be confused by similar/deceptively similar

trade marks.

19. The contention of the counsel for the defendant that this court

would have no jurisdiction as the goods were meant for export only

has no merit. The use by the defendant of a trade mark for export

purposes is a use in the course of trade within the meaning of

Section 29 of the Act and the plaintiff which claims to be carrying on

business within the territorial jurisdiction of this Court is under

Section 134 (2) of the Act entitled to invoke the jurisdiction of this

Court against the defendant.

20. The elements of irreparable loss and injuries are also found in favour

of the plaintiff and against the defendant. While it is the admitted position

that the plaintiff is carrying on business using its trade mark, the

defendant claims to have used it for export purposes only in the year 1996.

The defendant has categorically stated that it has after 1996 not used the

trade mark. The defendant is not likely to suffer any prejudice if restrained

from using the same during the pendency of the suit.

21. The application of the plaintiff is accordingly allowed. The defendant

is restrained from using the mark/label impugned in the present case or

any other mark or label deceptively similar to that of the plaintiff during

the pendency of suit.

RAJIV SAHAI ENDLAW (JUDGE)

December 11, 2008 RB