Hearst Communications, Inc. vs Dinesh Varyani & Another
2009 Latest Caselaw 1662 Del

                                                            REPORTABLE

*             IN THE HIGH COURT OF DELHI AT NEW DELHI

+              I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008

%                                 Date of Decision : April 27th , 2009.


HEARST COMMUNICATIONS, INC.              .... Plaintiff.
                      Through Mr. Pravin Anand, Ms.Ishani
                      Chandra, advocates.

                                 VERSUS

DINESH VARYANI & ANOTHER             .... Defendants.
                      Through Ms.Sandhya Kohli, Advocate.


CORAM:
HON'BLE MR. JUSTICE SANJIV KHANNA

1. Whether Reporters of local papers may 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

SANJIV KHANNA, J:

Facts

Hearst Communications Inc.-the plaintiff has filed the present

application seeking interim injunction for restraining Mr. Dinesh

Varyani and Jayant Printery-the defendants from using the

mark/word COSMOWOMAN or any other deceptively similar mark.

Plaintiff has also prayed for some other interim reliefs.

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.1

2. The plaintiff publishes an English magazine COSMOPOLITAN,

which it is stated has 57 editions published in 32 languages and is

distributed in over hundred countries. It is claimed by the plaintiff

that the COSMOPOLITAN magazine was first published in 1902 and

included short stories and the like. However, in 1965

COSMOPOLITAN shifted its appeal towards young career women

focusing on contemporary male female relationship, fashion, health,

beauty etc.

3. The mark/word COSMOPOLITAN was registered in India in

favour of the plaintiff on 10th January, 1992 in Class 16 and on 21st

March, 1997 in Class 9. Though the plaint and the interim application

raise a plea of infringement of the mark/word COSMOPOLITAN by

the defendants by using the word/mark COSMOWOMAN for their

magazine, the said contention was not urged and argued before me.

The word COSMOPOLITAN and COSMOWOMAN are different and

there is hardly any likelihood or possibility of deception or confusion.

Visually, phonetically or otherwise, the two marks/words

COSMOPOLITAN AND COSMOWOMAN are distinct. Case of

infringement of the mark/word COSMOPOLITAN was therefore rightly

not urged before me and in any case prima facie case for

infringement has not been made out.

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.2

4. The case of the plaintiff for passing off rests on the plea that

the word/mark "COSMO" used by the defendant along with the word

"WOMAN" as title/name of their magazine violates intellectual

property rights of the plaintiff. It is stated that the word/mark

"COSMO" is synonymous with the plaintiff. It is used by the plaintiff

as a title/header of many articles and regular features in the

magazine COSMOPOLITAN. My attention has been drawn to various

articles in the magazine like COSMO QUIZ, COSMO BEAUTY, COSMO

CAREER, etc. Secondly, it is pleaded that women who feature on the

cover of the COSMOPOLITAN magazine are referred to as „COSMO

Girls‟. Thirdly, it is stated that the plaintiff is publishing a magazine

under the title „COSMO Girl‟ in U.S.A. and the said magazine can be

subscribed online from their website. Fourthly, the plaintiff has a

supplement to the magazine COSMOPOLITAN by the name of

COSMO MAN. Fifthly, the plaintiff has been using the words

COSMO-TV and COSMO Radio in Spain, Italy and Canada for

broadcast. Lastly, the mark COSMO has been registered by the

plaintiff in some countries. Thus, it is claimed that the word/mark

COSMO is distinctly associated with the plaintiff and the defendants

have indulged in passing off by using the mark "COSMOWOMAN" as

a name of their magazine.

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.3

5. The plea for interim injunction in respect of passing off has to be

adjudicated while keeping in mind three aspects, prima facie case,

balance of convenience and irreparable loss and injury.

Infringement and Passing off

6. Gist of passing off action is falsehood or saying something

about oneself which is calculated to mislead. It is conduct of

business so as to lead the consumers to believe that the goods or

business are of another. No one is permitted to sell his own goods or

do business under the pretence that they are the goods or business

of another person. In Durga Dutt Sharma versus Navaratana

Pharmaceutical Laboratories, AIR 1965 SC 980, the Supreme

Court distinguished an action for infringement from an action of

passing off in the following words:

"28. 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 Section 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

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.4 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."

7. To succeed in a claim for passing off, three elements are

required to be established by the plaintiff; (1) reputation (2)

Deception and (3) damage. In some decisions, Courts have

identified five characteristic which should be present in a passing off

action. These are (1) Misrepresentation (2) made by trader in course

of trade (3) to prospective customers of his or ultimate consumers of

goods or services supplied by him (4) which is calculated to injure the

business or goodwill of another trader (in the sense that this is a

reasonably foreseeable consequence) and (5) which causes actual

damage to business or goodwill of a trader by whom action is

brought or will probably do so.

Classification of Words in a Trademark

8. It was initially submitted that the word COSMO is not a

dictionary word and has no meaning. It was stated that the word

COSMO has been coined by the plaintiff. However, learned counsel

for the defendants has placed on record copy of Concise Oxford

Dictionary wherein the word "COSMO" has been defined as „relating

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.5 to the world or the universe cosmology‟. Webster‟s dictionary defines

the word COSMO as „universe, used in formulation of a compound‟.

My attention is also drawn to extracts from www.yourdictionary.com

wherein the word COSMO has been defined as „the World, universe,

cosmology‟. In view of the aforesaid material, it is not possible to

accept the contention of the plaintiff that the word COSMO is not a

dictionary word but a coined word. The word means universe or the

world.

9. Confronted with the aforesaid factual position, learned counsel for

the plaintiff relied upon judgment of the Court of Appeal, U.S. titled

Abercrombie and Fitch Company versus Hunting World Inc

reported in 189 U.S.P.Q. 759 wherein distinction has been made

between (i) generic (ii) descriptive (iii) suggestive and (iv) arbitrary

or fanciful words/marks. It was submitted that the word COSMO is

arbitrary or fanciful when used in association with a woman‟s

magazine. The Court of Appeal in the said case has lucidly drawn

distinction between the four classes but has observed that line of

demarcation between the four is not always easy to decipher and is a

cause of difficulty. Difficulties, it is observed, are compounded

because the mark may shift from one category to another in the light

of differences in usage through time or because the mark may have

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.6 one meaning to one group of users and a different meaning to

another group and the same term may be put to different uses with

respect to a single product. The distinction is relevant in America

because of Lanham Act which imposes pre-conditions for registration

of a word/mark. A generic word/mark refers to or is understood to be

referring to the genus of which the particular product is a species,

cannot be registered under the Lanham Act even if they come to

acquire secondary meaning. Descriptive marks/words can be

registered subject to evidence that they have become distinctive by

exclusive and continuous use for over five years but subject to

conditions and balancing the rights of competitors. A suggestive

word/mark requires imagination, thought and perception to reach a

conclusion as to the nature of the goods unlike a descriptive term

which conveys immediate idea of the ingredients, quality and

characteristics of goods. Suggestive terms are entitled to registration

without proof of secondary meaning or distinctiveness. Fanciful or

arbitrary mark/words enjoy all rights accorded to suggestive terms

without need of debating whether the term is merely descriptive and

with ease of establishing inference. Arbitrary or fanciful words have

no association/connection with the goods/articles or the trade.

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.7

10. The aforesaid distinction relates to registration of mark and

conditions which have to be satisfied for registration in U.S.A. under

the Lanham Act. The above distinction has been noticed in some

Indian decisions, but the Trade Mark Act, 1999 relating to registration

of marks does not explicitly and directly makes any such distinction.

In Caterpillar Inc. Vs. Mehtab Ahmed and Others reported in 99

(2002) DLT 678 court delineated various categories of words used in

a trademark:

"10. The words or marks can broadly be divided into six categories. The first category of words is "generic". These words have dictionary meaning and are neither specific nor special. These words belong to genus. Generic name is name of genus which names the species. Such words are neither brand names nor have any protection by a registered trade mark. The words which are directly descriptive or quality of goods belong to second category. Such words are adjective expressing quality or attribute of an article or goods. These are neither patented nor proprietary names. These words are in common parlance known as laudatory epithets.

11. Third category is that of directly descriptive words. These words describe the character or the quality or attribute of the goods or articles but without an element of laudation. The words of second and third category if used as a mark acquire secondary meaning on account of constant and long user. Fourth category is of 'indirectly descriptive words'. These words are those which have indirect or remote reference to the nature or quality of goods. The element of directness is wanting in these words. Such words can be used as a mark or trademark irrespective of the fact whether they acquire secondary meaning or not.

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.8

12. Words which are fanciful or arbitrarily applied to goods and do not have either direct or remote reference to the nature or quality of goods fall within fifth category. The words belonging to categories two, three and five if used in relation to a particular goods can be protected if attempt is made to pass them off by way of deceptive similarity either in look or sound.

13. The last category is of "invented words". No meaning is attached to these words. These are composed by imagination and are designed for the first time. These words demonstrate or display efforts or skill of imagination, faculty or power of inventing. These words are invented in relation to a particular good. Such words are inherently distinctive and therefore have to be protected in any case. These words are designed or contrived through imagination for the first time wherein ability as well as flight or efforts of imagination is displayed.

14. As regards marks or trademarks falling within categories 2 to 5 namely 'directly descriptive words having laudatory epithets, 'directly descriptive words without laudatory epithets, indirectly descriptive words and words not being descriptive have also to be protected as some of them over a period acquire secondary meaning while others due to prior and consistent user denote source and origin and if any attempt is made to either mutilate them or simulate them such an attempt amounts to passing off as it demonstrates element of malafideness for cashing upon the reputation and goodwill of such marks. Likelihood of confusion as to source or origin of a particular goods sold under a particular trade mark broadly amounts to an act of passing off.

11. In Lloyd Insulations (India) Limited v. Punj Lloyd

Insulations Pvt. Ltd, ILR (1999) 1 Del 410 learned single judge

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.9 has culled out four points which have to be examined on the

question of deception in a passing off action. These are:

"20. The following points can be easily culled from the authorities alluded to above :

(a) In case of a trade name which consists of descriptive words small difference will be taken to be sufficient enough in between the trade names of the plaintiff and that of the defendant. Whereas in case of a trade mark a mere similarity in the trade mark is per se actionable.

(b) In an action for passing off a mere similarity in the two trade names is not sufficient to conclude that it will cause confusion and would mislead the customer to take the one for the other. It has further to be shown that similarity in their names has misled a customer to take one for the other.

(c) Nobody can claim property in a mere descriptive word used by him as his trade name unless and until it is shown that the said descriptive word has acquired a secondary meaning and has lost its primary character and is so much associated with the goods of the plaintiff that a mere mention of it brings before his eyes the picture of the goods of the plaintiff.

(d) In case a fancy word has been shown as part of a name then the same is distinctive per se and if another trader takes that word as part of his trade only a slight variation then he can be said to have created confusion."

12. In the present case, we are not concerned with registration of

the word/mark COSMO. The said mark is not registered in India in

the name of the plaintiff. Further registration of a mark as per Trade

Marks Act, 1999, does not destroy or negate all common law rights of

the defendants.

Reputation and Goodwill

13. Passing off actions as examined above are distinct from

infringement actions. What is protected in an action of passing off is

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.10 not the proprietary right of the plaintiff in any word or mark but the

goodwill and reputation of the plaintiff which is likely to be harmed.

The proprietary right in the goodwill or reputation of the plaintiff is

protected. Nature and extent of goodwill and reputation depends

upon distinctiveness of the mark in the eyes of the public or class of

public and association of the said mark with the plaintiff and not

registration of the mark. Goodwill and reputation are created when a

mark is used by a person and the public or class is aware and

connects or associates the mark with the plaintiff‟s business or

goods. Distinctiveness and association with plaintiff is a precondition

to claim invasion of goodwill and reputation, though burden of proof

can vary depending upon category of the mark i.e. general,

descriptive, fancifully, arbitrary etc. Whether a plaintiff has reputation

or goodwill is primarily a question of fact and has to be proved by

cogent material and evidence. It is obligatory and necessary for the

plaintiff to place necessary material on record to establish reputation

and goodwill. There is no assumption in a passing off action that the

plaintiff has goodwill and reputation. For grant of interim injunction

the plaintiff must therefore establish reputation and goodwill in the

word/mark COSMO in India to succeed.

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.11

14. Goodwill and reputation of a person can vary from country to

country. When a plaintiff carries on business in several countries,

separate goodwill is attached to each country. Nature or extent of

goodwill or reputation of a plaintiff in India depends upon the

association of the word/mark with the plaintiff in India and not in a

third country.

15. Trans border reputation and spill over of international

reputation is accepted in India, even when the plaintiff is not

engaged in business or trade in India. Trans border reputation is

established when the plaintiff enjoys substantial goodwill and

reputation outside India and its spill over effect is found in India i.e.

the plaintiff has come to be associated with the said mark and enjoys

goodwill and reputation even in India. Injunction, whether interim or

permanent, is granted to protect goodwill and reputation of the

plaintiff in India and not in cases where the plaintiff does not have

goodwill and reputation in India but has goodwill and reputation in a

locality or a location outside India.

16. On the question of prima facie case the fact that the plaintiff is

airing COSMO-TV or COSMO radio in Spain, Latin America and

Canada is not relevant as the signals/broadcasts are not being aired

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.12 in India. No details with regard to viewership or any claim on the

basis of trans-border reputation in India has been made with

reference to COSMO TV and COSMO radio. Consumers in India have

not heard of COSMO TV or radio. The reputation, if any, is confined

to the particular location/area and there is no trans-border spill over.

17. The claim of the plaintiff based upon internal articles or

features in the magazine COSMOPOLITAN with the heading or name

COSMO QUIZ, COSMO BEAUTY, COSMO CAREER, etc. is devoid of

merit. These articles or features are a part of the magazine

COSMOPOLITAN and do not have any independent existence. It is

difficult to accept the contention of the plaintiff that the words

COSMO QUIZ, COSMO BEAUTY, COSMO CAREER, etc. as used in the

articles/features, have become distinctive enough to be recognized

and associated with the plaintiff in their own right and independently.

A heading given to a feature or an article can become distinctive on

its own, in rare but some cases but the plaintiff to base his

claim/right for passing off on the said basis should have sufficient

evidence and material to justify the said claim/right. Mere use of the

word "cosmo" in heading and title of articles in a magazine under a

different name is not sufficient to claim reputation. I do not think

there is sufficient prima facie material or evidence to support the

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.13 case of the plaintiff that headings given to articles or features with

the heading COSMO in the magazine COSMOPOLITAN by themselves

have become distinctive enough to be protected by interim injunction

in a passing off action against a magazine with the name/mark

COSMOWOMAN. The same reasoning equally applies to the

supplement "COSMO MAN" which is not sold or marketed separately

but as a part of the magazine COSMOPOLITAN. Reference in some

foreign magazines to women who have featured on the cover of the

COSMOPOLITAN magazine as a cosmo girl also does not establish

goodwill and reputation of the plaintiff in India, which is required to

be protected because of publication of a magazine by the name of

"COSMOWOMEN".

18. The mark "COSMO" has been registered by the plaintiff in some

countries but it is not registered in India. The plaintiff had on 15th

February, 2006 filed an application for registration of the mark

COSMO Girl in India to which the defendants had filed opposition on

27th August, 2006. The matter is still pending before the Registrar. As

far as circulation of the magazine COSMO Girl in India is concerned,

there is hardly any evidence and material to support the same.

Admittedly, the said magazine is published in U.S.A and caters to the

interest and is directed towards teenage girls there. Even if it is

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.14 presumed that the magazine has some circulation in India, it is read

by niche selective clientele who are aware and have knowledge about

the said magazine and have grown up or familiar and interested in

the features and articles relating to teenage girl life in America. I do

not think this fact alone justifies grant of interim injunction

restraining the defendants from using the word/mark "COSMO

WOMAN" as a name for their magazine which entirely caters to a

different class of woman, namely middle class and upper middle

class.

19. Learned counsel for the plaintiff referred to judgments of the

European Courts dealing with the question of registration and

submitted that the word/mark "COSMO" has been held as distinctive

and associated exclusively with the plaintiff. The first case is

regarding registration under the name "COSMO News" claimed by a

third party. It may be noted that the word COSMO stands registered

in favour of the plaintiff in U.K. and in that context the opposition

filed by the plaintiff to registration of the word/mark "COSMO News"

was upheld on the ground that there is a likelihood of confusion

including likelihood of association between the plaintiff and the said

third party. The word/mark COSMO does not stand registered in

India and the issues and questions involved in the present case are

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.15 different. The question whether mark/word "COSMOWOMEN" should

be registered in the name of the defendants does not arise for

consideration. In this case while examining the question of unfair

advantage, detrimental effect on the distinctive character or repute,

it was observed that:

"No material has been submitted by the opponent to prove reputation of its other earlier marks also claiming reputation: "THE COSMOPOILTAN SHOW", "COSMOPOLITAN TELEVISION" and "COSMO GIRL". The office therefore concludes that the information provided cannot support the claim of reputation, and particularly not a claim of reputation within the relevant territory. A mere suggestion of the existence on the market cannot be interpreted as proving reputation."

20. The second European decision/case relied upon pertains to claim

for registration of the words/mark COSMOPOLITAN for cosmetics.

The decision is not relevant for adjudication of the present case. The

third case specifically refers and relates to the word COSMOPOLITAN.

On the other hand, learned counsel for the defendants has relied

upon the decision of the Trade Mark Registry, Australia rejecting

opposition of the plaintiff to a registration application filed by third

party for mark COSMO in respect of leather and imitation leather

bags, cosmetics, beauty and vanity cases, etc. Rejecting the

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.16 opposition it was pointed out that that there was little or no material

to gauge reputation of the mark COSMO in Australia. Further

reputation in the mark "COSMO" does not automatically transfer to

fashion or beauty goods.

21. On the question of goodwill, reputation and misrepresentation,

the defendants have pointed out that the word COSMO is a dictionary

word and they had decided to adopt this word along with word

WOMEN after making an application for registrar of newspapers in

India. My attention in this regard was drawn to proviso to Section 6

of the The Press and Registration of Books Act, 1867 which stipulates that

registration under the said Act shall be granted to newspaper proposed to be

published, when the Magistrate on enquiry from the Press Registrar is

satisfied that the title of the news paper proposed to be published is

not same or similar to any other news paper published in the same

language or in the same State. It is stated that the Registrar of

newspapers has granted permission to the defendants to publish the

magazine COSMO WOMEN. Grant of registration under the aforesaid Act

may not be conclusive or determinative factor in a passing off action but is a

relevant circumstance. The defendants have also placed on record

results of web search using the search engine „Google‟ which shows

the word COSMO is being extensively used by several persons other

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.17 than the plaintiff. It is therefore argued that the word COSMO is

public juris and the claim of the plaintiff that it has become distinctive

and associated with the plaintiff so as to cause damage to their

goodwill and reputation when the defendants publish the magazine

COSMOWOMEN should not be accepted. It is thus submitted that

there is material which shows the word COSMO is being used by

several parties as a trade name for the purpose of trading and is not

being exclusively used or associated with the plaintiff. Even in India,

third parties are using the word "Cosmo" eg. Cosmo Films Ltd.,

Cosmo Phane etc. Even magazines like Cosmo-World, Cosmo

Current, Cosmo India etc. are published. Learned counsel for the

plaintiff however submitted that infringement of the mark COSMO by

third parties does not confer any legal right on the defendant to

indulge in passing off. The aforesaid proposition in law is correct.

However, the said argument fails to notice the actual plea of the

defendants. The plea of the defendants is that the word COSMO is

not distinctive and associated with the plaintiff. It is public juris or a

dictionary word which is extensively used by several persons across

the world. The plea raised is to counter the claim of the plaintiff

that the word COSMO is distinctive and associated with the

plaintiff. The said contention has not been raised to defend or as

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.18 a shield to passing off claim because third parties are also indulging

in passing off.

22. The plaintiff can claim exclusive right to the mark COSMO in

India if it is shown and established that the word COSMO by constant

user has come to be associated with the plaintiff that when a

purchaser purchases any magazine in India with the mark

COSMOWOMAN, the purchaser visualises and connects the magazine

with the plaintiff. A common English dictionary word cannot be

made basis for a passing off action to claim monopoly rights, unless

right to exclusivity is established due to long and durable association

of the said word with the plaintiff and if others are allowed to use the

word loss or damage would occur. Distinctiveness or secondary

meaning is an essential precondition, whether the mark is descriptive

or fancy etc., but burden of proof is higher in descriptive marks.

Exclusivity and public‟s association of the mark/word "COSMO" with

the plaintiff has not been established. The plaintiff has not

established that the defendants have acted in a manner calculated to

deceive the public or there is reasonable possibility of deception.

Profile of Consumer/User

23. The consumers or readers of the defendant‟s and the plaintiff‟s

magazine are well educated and well read women and some men.

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.19 While examining the question of deception, the profile of the user or

the consumer who should be or is likely to be deceived or confused is

to be taken into consideration. In Khoday Distilleries Limited

versus Scotch Whisky Association reported in (2008) 10 SCC

723, the Supreme Court observed that while deciding the question of

deceptive similarity, one of the factors to be taken into consideration

is a class of purchasers who are likely to buy the goods bearing the

two marks, their education, intelligence and degree of care that is

likely to be exercised in purchasing or using the goods. Where the

class of purchasers is illiterate and poor, the test applied is different

in comparison to cases when the product is consumed by educated

and rich. Court in the said case observed:

"74. This Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. inter alia laid down the law in the following terms:

"35. Broadly stated, in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered:

* * *

(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."

77. Where the class of buyers, as noticed hereinbefore, is quite educated and rich, the test to be applied is different from the one where the product would be purchased by the villagers, illiterate and poor. Ordinarily, again they, like tobacco, would purchase alcoholic beverages by their brand name. When, however, the product is to be purchased both by villagers and town people, the test of

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.20 a prudent man would necessarily be applied. It may be true that the tests which are to be applied in a country like India may be different from the tests either in a country of England, the United States of America or Australia."

24. Women magazines in English are purchased by well educated

discerning consumers after deliberation, unlike a product of mass

consumption which is consumed by illiterate and poor without

considerable thought and deliberation. It is for this reason that in

cases like Delhi Press Patra Prakashan Limited V/s Diamond

Pocket Books (P) Limited reported in 46 (1992) DLT 423, the

marks/titles "Grahshobha" and "Grahlakshmi" were held to be not

deceptively similar. In this case, reference was also made to an

earlier decision of 1911 in Ridgeway Company V/s The

Amalgamated Press Limited reported in 1911-12, The Times Law

Reports Vol-28 at page 149 wherein passing off action failed when

the two marks were "Everybody‟s Magazine" and "Everybody‟s

Weekly". Decision in Playboy International Incorporated V/s

Bharat Malik and Another reported in 2001 PTC 328 (Del) is

distinguishable for the reason the learned single Judge came to the

conclusion that the mark/title "Playboy" was distinguished mark

adopted by the plaintiff in 1950s and had acquired extensive and

exclusive association with the plaintiff all over the world. The Court

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.21 also came to the conclusion that the defendant was trying to take

advantage of the said goodwill and widespread reputation by

adopting the word „Play‟ in the magazine titled "Playway". The factual

matrix in the present case is different. The Calcutta High Court

decision in Hearst Corporation Vs. Dalal Street Communication

Limited reported in (1996) PTC (16) 126 in respect of the marks/title

"Esquire" and "E-square" is based upon the phonetic similarity

between the two words and an unwary purchaser getting confused.

In another case Rupee Gains Tele-Times Private Limited versus

Rupee Times reported in 1995 PTC (15) 384, application for

interim injunction restraining the defendant from using the word

"Rupee" was rejected for various reasons including that, financial

journals are read by articulate and intelligent readers who can easily

make out the difference in the two publications.

25. The prospective consumers and their deception is an important

consideration which has to be kept in mind while considering a claim

for passing off. The goods in question are same i.e. magazine.

However, the consumers who read the plaintiff‟s magazine and the

defendants‟ magazine are all well educated, well conversant with

English and have discerning eye which is normally not associated

with goods of mass consumption which are even used by illiterate

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.22 consumers. Class of consumers of the two products are only well

read and educated persons. The consumers of the defendants‟

products are middle class and upper middle class women between

the age group 20 years and elderly. The readers of the plaintiff‟s

magazines are elite women almost the same age group but having a

more liberal outlook towards life because of the nature of the articles

and content. Both products are not consumed by villagers, illiterate,

poor or lower and marginal sections of the society. The class of

consumers is educated enough to distinguish between two magazines

and their publishers.

Delay and Laches

26. There is evidence on record that the plaintiff was aware that the

defendants‟ had started the publication COSMO WOMAN in the year

2004. The defendants have placed on record editorial note under the

heading "copycat alert" published in the magazine Cosmopolitan,

November 2004 issue allegedly making reference to the defendants‟

publication COSMO WOMAN. The present suit for injunction was filed

in 2008 four years after the defendants had started publishing the

magazine under the title COSMO WOMAN. There is therefore delay in

approaching the court. The plaintiff, however, claims that this delay

is not fatal for grant of interim injunction. Question of delay is

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.23 relevant, when issue of irreparable harm and balance of convenience

is examined. In some cases, interim injunction has been granted

inspite of delay and in other cases interim injunction has been

refused. (Refer, Warner Bros. Entertainment Inc. and Anr. Vs.

Harinder Kohli and Ors. reported in 155 (2008) DLT 56, Mr.

Sudhir Bhatia and Ors. Vs. M/s Midas Hygiene Industries (P)

Ltd. reported in 94 (2001) DLT 639)

27. In the case of Ansul Industries versus M/s Shiva Tabacco

Company FAO No. 228/2005 dated 16.01.2007 after examining the

case law on the subject observed that:

" 40. While examining question of convenience, delay in initiating action for infringement by itself is not fatal. Delay may be fatal for claiming damages. Difference has been made between mere delay and laches. Laches being prolonged delay with inaction. Laches alone is not normally considered to be a ground to reject an injunction application. There should be something in addition to and more than laches that will tilt the balance of convenience in favour of a third party viz a registered proprietor of a mark. Court will in these circumstances and in addition to laches examine whether the said delay has caused prejudice to the third party. When a proprietor allows his good will to be used by a third party and allows him to grow and expand and thereby makes the third party believe that he has no objection to use of the mark, then the third party who has built up his sales will suffer prejudice, if he is suddenly asked to stop. However, on the question of prejudice, the onus is on the defendant.

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.24

41. While examining the question of delay, courts go into the question whether delay is inordinate and whether there is any excuse or reason for the delay. If the delay is inordinate from the date of knowledge and no ground, reason or excuse for the delay is forthcoming, coupled with the prejudice which is likely, interim or permanent injunction can be refused. While examining the question of excuse, the Court will examine the conduct of the proprietor, when and how the third party adopted the mark subject matter of action and after the proprietor came to know about the said adoption, what steps and action he had taken. Failure to immediately file a suit for injunction can always be explained by the proprietor. Registration of a similar mark in favour of the second user or separate proceedings between the parties relating to the mark or it's registration can be basis or a ground and excuse for the delay.

XXXX

44. In view of the entire case law discussed above, the following principles of law emerge:-

i. Mere delay is not sufficient to defeat grant of injunction in cases of infringement of trade mark. Delay is not a bar to enforce and claim a legal right. ii. Consent in addition to other statutory defences is a complete defence to action for infringement.

iii. Consent may be expressed or implied but inaction in every case without anything more does not lead to an inference of implied consent. Implied consent means conduct inconsistent with claim of exclusive right over the trade mark, trade name etc. Implied consent implies standing by or allowing the defendant to invade rights and by conduct encouraging the defendant to expend money, expand business, alter their condition etc. in contravention of the rights of the proprietor. In the case of Power Control Appliances versus Sumeet Machines (P) Limited (supra), Supreme Court has I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.25 held that acquiescence implies positive act and not merely silence or inaction as is involved in laches.

iv. Defences under the common law are also available to the defendant. Prior user is a valid defense.

v. Balance of convenience between the parties should be taken into consideration by the Court, while deciding the question of grant of injunction. Unexplained laches accompanied by prejudice and/or other reasons can be a ground to deny injunction. However, prejudice in such cases does not mean mere simplicitor delay. Onus in this regard is on the defendant.

vi. Where initial adoption by the defendant itself is vitiated by fraud and/or is dishonest, delay is not a valid ground to allow misuse. If user is at the inception is tainted by fraud and dishonesty, continuous use does not bestow legality.

vii. Interest of general public who are the purchasers and buyers has to be protected. In case to protect general public/consumers, injunction order is required to be passed, delay by itself is not un-surpassable obstacle."

28. In the present case the plaintiff was certainly aware of

defendant‟s publication COSMO WOMAN in the year 2004. He kept

quiet and did not proceed for legal action for four years. The

defendant in the meanwhile continued the publication of the

magazine and created a market for their magazine. It is also noted

that the defendant‟s application for registration of the mark COSMO

WOMAN was advertised on 5th June, 2005 and opposition to the said

application was filed by the plaintiff only in July, 2007.

I.A. NO. 3073/2008 IN CS (OS) NO.458 OF 2008 Page No.26

29. In view of the aforesaid, the plaintiff‟s application for grant of

interim injunction is dismissed. No costs. Observations and findings in

this order are prima facie and for purpose of deciding the interim stay

application and the suit will be decided without being influenced by

this order.

                                           (SANJIV KHANNA)
                                                JUDGE
APRIL         27, 2009.
P




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