M/S Gufic Ltd. & Another vs Clinique Laboratories, Llc & Anr
2010 Latest Caselaw 3168 Del

             THE HIGH COURT OF DELHI AT NEW DELHI

%                                      Judgment delivered on: 09.07.2010

+            FAO(OS) 222/2009

M/S GUFIC LTD. & ANOTHER                                        ..... Appellants

                                        versus

CLINIQUE LABORATORIES, LLC & ANR                                ..... Respondents

Advocates who appeared in this case:

For the Appellants : Mr Sudhir Chandra Aggarwal, Sr Advocate with Mr Abhinav Vasisht, Ms Harshita Priyanka, Mr Debojyoti Bhattacharya, Mr Sumit Singh Benipal and Ms Girija V. Verma For the Respondents : Mr Sandeep Sethi, Sr Advocate with Ms Anuradha Salhotra, Mr Rahul Chaudhry, Ms Reetika Walia, r Sindhu Sinha and Mr Sumit Wadhwa CORAM:-

HON'BLE MR JUSTICE BADAR DURREZ AHMED HON'BLE MS JUSTICE VEENA BIRBAL

1. Whether Reporters of local papers may be allowed to see the judgment ? YES

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

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

BADAR DURREZ AHMED, J

1. This appeal is directed against the order passed by a learned

single Judge of this court on 09.04.2009 in IA No.15425/2008 (Under Order

39 Rules 1 and 2, CPC), IA 217/2009, (Under Order 39 Rule 4, CPC) and IA

No.2769/2009 [Under Section 124(1) of the Trade Marks Act, 1999] in

CS(OS) 2607/2008.

2. The respondents / plaintiffs had filed IA No.15425/2008 seeking

interim relief. An ex parte order had been passed on that application on

16.12.2008 restraining the appellants / defendants from using the mark

„CLINIQ‟ or any other mark similar to the mark „CLINIQUE‟ of the

respondents / plaintiffs till the disposal of the application. The defendants

were further restrained from marketing any goods or allowing any goods to

be marketed under the impugned trademark through their distributors or

other agents or from advertising the same in any manner whatsoever.

3. The appellants / defendants had filed IA No.217/2009 (under

Order 39 Rule 4, CPC) for vacating the said ex parte order dated 16.12.2008.

The respondents / plaintiffs had subsequently filed IA No.2769/2009 (Under

Section 124(1) (ii) of the Trade Marks Act, 1999 (hereinafter referred to as

„the said Act‟) praying that the proceedings in the suit be stayed till the final

disposal of the rectification proceedings which the respondents / plaintiffs

had initiated before the trademark authorities for cancellation / rectification

of the registration of the trademark „SKINCLINIQ‟ in favour of the

appellants / defendants.

4. The learned single Judge, by virtue of the impugned order dated

09.04.2009, disposed of all the three said applications. The respondents‟ /

plaintiffs‟ application under Order 39 Rules 1 and 2, CPC (IA

No.15425/2008) was allowed and the ex parte order dated 16.12.2008 was

made absolute till the disposal of the suit. The appellants‟ / defendants‟

application (IA No.217/2009) under Order 39 Rule 4, CPC was dismissed.

The application filed under Section 124(1)(ii) of the said Act was allowed

and the proceedings in the suit were adjourned pending the final disposal of

the rectification proceedings which had already been instituted and also to

enable the respondents / plaintiffs to apply for rectification of the registration

of other marks. Of course, the learned single Judge also observed that

nothing in the order dated 09.04.2009 shall come in the way of the

proceedings, pending which, the suit has been stayed.

5. The learned single Judge had observed that the respondent No.1 /

plaintiff No.1 was the registered proprietor of the trademark „CLINIQUE‟

since 13.07.1981 in respect of cosmetics, creams, lotions and oils used in

cleansing etc, falling under class 3 of the goods and services specified in the

4th schedule to the Trade Marks Rules, 2002 (hereinafter referred to as „the

said Rules‟). The learned single Judge also noted that the respondents /

plaintiffs were also the proprietors of the registered trademark -

"CLINIQUE WATER THERAPY", CLINIQUE MOISTURE SURGE and

CLINIQUE SKIN SUPPLIES FOR MEN" in respect of cosmetic and toilet

preparations with effect from 1992. The respondents / plaintiffs were also

the registered proprietors in respect of the trademark "CLINIQUE & C

DEVICE" with effect from 04.05.1978 in respect of allergy tested cosmetics.

A host of other trademarks are also owned by the respondents / plaintiffs,

most of which include the word "CLINIQUE". According to the

respondents / plaintiffs, CLINIQUE is the most distinguishing feature of its

trademarks and the same has been in use worldwide since 1968 and has been

used by the respondents / plaintiffs in India since 2007. It has also been

noted by the learned single Judge, on the basis of the pleadings, that the

respondents / plaintiffs learnt about the registration of the appellants‟ /

defendants‟ mark "SKINCLINIQ" and use of the label „SKINCLINIQ

STRETCH NIL‟ on or about September, 2006.

6. The learned single Judge, while observing that the sales by the

appellants / defendants of their product "STRETCH NIL SKINCLINIQ"

since 1999 could not be doubted, held against them and in favour of the

respondents / plaintiffs. The learned single Judge was of the view that the

appellants / defendants were engaged in the same business and a

presumption cold be raised with regard to their knowledge of the

respondents‟ / plaintiff‟s registered trademark and consequently, he felt that

the action of the appellants / defendants in adopting the mark „CLINIQ‟ was

not above board. According to him, there was not much distinction between

the letter "Q" or "QUE" which appeared in the word „CLINIQ‟ used by the

appellants / defendants and the word „CLINIQUE‟ used by the respondents /

plaintiffs. The learned single Judge also observed that „CLINIQ‟ as used by

the appellants / defendants was spelt differently from the normal word

„CLINIC‟ and that the whole object behind this different spelling was to

somehow create an association with the respondents / plaintiffs trademark.

The learned single Judge also raised a doubt as regards the appellants /

defendants action in using the expression "Made in India by Gufic Bio

Science Ltd". According to the learned single Judge, this expression

suggested that the appellants / defendants were making „STRETCH NIL‟ in

India under a licence from the respondents / plaintiffs. The learned single

Judge also observed that the mark „SKINCLINIQ‟ is in a smaller font than

the word „STRETCH NIL‟ and the mark „SKINCLINIQ‟ is not even visible

from a distance. He also observed that all the advertisements were

essentially for „STRETCH NIL‟ and not using the mark „SKINCLINIQ‟.

From this, the learned single Judge concluded that even if the appellants /

defendants were injuncted from using the word „CLINIQ‟, no loss would be

caused to the appellants / defendants.

7. The learned single Judge came to the prima facie conclusion that

the test of infringement laid down in Section 29 had been satisfied. We

would also like to point out that the learned single Judge raised questions

with regard to the prima faice validity of the registration of the appellants‟ /

defendants‟ mark „SKINCLINIQ‟ in the context of the bar under Section

9(2)(a) of the said Act as also the provisions of Section 11(1) and (2) of the

said Act. The view taken by the learned single Judge was that the

appellants‟ / defendants‟ mark has, prima facie, been invalidly registered

and consequently, a case for infringement under Section 29 had been made

out. It is in these circumstances that the learned single Judge allowed the

respondents‟ applications under Order 39 Rules 1 and 2, CPC and under

Section 124(1)(ii) of the said Act and dismissed the appellants‟ / defendants‟

application under Order 39 Rule 4, CPC.

8. Before we examine the merits of the case, it would be appropriate

to set down the registered trademarks of the appellants / defendants as well

as of the respondents / plaintiffs. The appellant No.1 is the registered

proprietor of the trademark „SKINCLINIQ‟, SKINCLINIQ STRETCH NIL‟

and a series of other marks featuring the word „SKINCLINIQ‟ in India as

given below:

No.   Registrat     Date of           Trade Mark        Class    Goods
      ion           Registration
1.    832825        17-12-1998        SKINCLINIQ          3      Cosmetics & Toilet
                                                                 Preparation
2.    821801        05-10-1998        SKINCLINIQ          5      Pharmaceutical &
                                                                 Medical Preparation
3.    832826        17-12-1998        DERMACLINIQ         3      Cosmetics & Toilet
                                                                 Preparation
4.    821802        05-10-1998        DERMACLINIQ         5      Pharmaceutical &
                                                                 Medical Preparation
5.    878515        27-09-1999        SKINCLINIQ          3      Cosmetics & Toilet
                                      STRETCH NIL                Preparation
                                      (Label)
6.    878512        27-09-1999        SKINCLINIQ          5      Pharmaceutical &
                                      STRETCH NIL                Medical Preparation
                                      (Label)

9. The respondent No.1, on the other hand, is the registered

proprietor in India of the trademark „CLINIQUE‟, by itself, and a series of

marks featuring the word „CLINIQUE‟, the particulars of which are as

under:-

Registration      Date of          Trade Mark      Class Goods
                  Registration
378364            13.7.1981        CLINIQUE         3    Cosmetics creams, lotion &
                                                         oils in cleansing creams,
                                                         lotions    and      make-up,
                                                         astringent, face powder,
                                                         foundation, bases, rouges,
                                                         eye make-up preparation,
                                                         mascara, eye linen eye
                                                         shadow and pencil, eye
                                                         make-up remover, lipsticks
                                                         hair sprays, bath oils and
                                                         anti-perspirants in class 3
572656            6.5.1992         CLINIQUE         3    Cosmetics and toilet
                                   WATER                 preparations
                                   THERAPY
572657            6.5.1992         CLINIQUE         3    Cosmetics and toilet



                                MOISTURE            preparations
                               SURGE
  572658          6.5.1992     CLINIQUE       3    Cosmetics and toilet
                               SKIN                preparations
                               SUPPLIES FOR
                               MEN
  336229          4.5.1978     CLINIQUE & C   3    Allergy tested cosmetics &
                               DEVICE              toiletries, including anti-
                                                   perspirants
  598136          26.5.1993    CLINIQUE IN    9    Computer chip cards for
                               TOUCH               use in the selection of
                                                   cosmetics and skin care
                                                   products
  743399          10.12.1996   CLINIQUE       5    Medicated anti-itch skin
                               EXCEPTIONA          cream in class 5.
                               LLY
                               SOOTHING
                               CREAM FOR
                               UPS
  774195          31.10.1997   CLINIQUE       3    Cosmetics, toiletries and
                               HAPPY               perfumery
  902703          9.2.2000     CLINIQUE       3    Skin care preparations
                               ANTI-
                               GRAVITY
 1001157          3.4.2001     CLINIQUE       3    Cosmetics, toiletries and
                               GENTLE              perfumery in class 3
                               LIGHT

10. Initially, the entire order passed by the learned single Judge on

09.04.2009 was the subject matter of challenge, including his decision on the

application under Section 124(1)(ii) of the said Act. It had been contended

by Mr Sudhir Chandra, the learned senior counsel, appearing on behalf of

the appellants / defendants that Section 124 was not applicable inasmuch as

the appellants / defendants had not taken the defence available under Section

30(2)(e) of the said Act nor had the appellants / defendants considered the

respondents‟ / plaintiffs‟ registration and the only plea taken was that the

trademarks were completely different. This contention was repelled by

Mr Sandeep Sethi, the learned senior counsel appearing on behalf of the

respondents. However, in the course of the arguments, the said learned

counsel agreed that the Section 124 issue be not gone into in this appeal and

the same be considered only from the standpoint of injunction. It is,

therefore, to be seen as to whether the respondents have been able to make

out a prima facie case of injunction for an infringement action under Section

29 of the said Act or not. It is obvious that if we are to examine the question

of grant of injunction de hors the issue pertaining to Section 124 of the said

Act, it will have to be presumed that the appellants‟ / defendants‟ mark

„SKINCLINIQ‟ is unregistered. Because if we do not so presume,

considerations under Section 28(3) as also those arising under Section

30(2)(e) of the said Act would have to be gone into. But, that cannot be

done because Mr Sudhir Chandra himself pointed out that the appellants /

defendants had not taken the defence of Section 30(2)(e). In any event, the

arguments have been addressed only on the question of deceptive similarity

between the marks of the contesting parties in the context of section 29(1)

which reads as under:-

"29. Infringement of registered trade marks.- (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

xxxx xxxx xxxx xxxx"

11. The marks „CLINIQUE‟ and „SKINCLINIQ‟ are not identical.

Therefore, for infringement to be made out, it must be shown that the mark

„SKINCLINIQ‟ is deceptively similar to the respondents‟ / plaintiffs‟ mark

„CLINIQUE‟ and is used by the appellants / defendants in such a manner as

to render the use of the mark likely to be taken as being used as a trademark.

12. In this context, Mr Sudhir Chandra submitted that the marks

„SKINCLINIQ‟ and „CLINIQUE‟ are neither identical, nor deceptively

similar and that they are used in relation to different products. The

appellants / defendants use the said mark in respect of their Ayurvedic herbal

product known as „SKINCLINIQ STRECH NIL‟, which is used for

removing stretch marks acquired during pregnancy. „CLINIQUE‟ on the

other hand, is not an Ayurvedic herbal product, though it is used for cosmetic

creams, lotions etc. Furthermore, Mr Sudhir Chandra pointed out that the

price differential between the products of the appellants / defendants and

those of the respondents / plaintiffs is so vast as to remove any possibility of

confusion between the customers. 100 ml. of the appellants‟ / defendants‟

product sells for Rs 245/-, whereas 15 ml and 75 ml of the respondents‟ /

plaintiffs‟ products sell for Rs 1,200/- and Rs 1950 respectively. He

submitted that the price differential being so vast, there is absolutely no

possibility of the consumers confusing the appellants‟ / defendants‟ products

for those of the respondents‟ / plaintiffs‟. He further submitted that, in fact,

the class of people using the two products is also different. He further

submitted that the style, manner of writing and the colour combination of the

two trademarks are entirely different. The label marks, which are employed

by the appellants / defendants are also entirely different to those employed

by the respondents / plaintiffs. There is also no denying, as was observed by

the learned single Judge himself, that the appellant has been in the business

since 1999 and has been marketing its products „STRETCH NIL

SKINCLINIQ‟ since then as would be apparent from the numerous

advertisements which appeared in the magazines from time to time. Mr

Sudhir Chandra submitted that when the trademarks, which are to be

compared, are not identical, then the test of deceptive similarity that would

have to be employed in a case of infringement would be the same as that in a

case of passing off. He submitted that employing those tests, it cannot be

said that the appellants‟ / defendants‟ trademark „SKINCLINIQ‟ is

deceptively similar to the respondents‟ / plaintiffs‟ trademarks „CLINIQUE‟.

13. Mr Sandeep Sethi, the learned senior counsel, appearing on

behalf of the respondents / plaintiffs, submitted that when a comparison of

the marks is made from the standpoint of infringement, it is only the marks

which are to be compared and that the price, trade dress, colour scheme etc.,

are all irrelevant. He submitted that the marks have to be seen as a whole

and the overall structural and phonetic similarity has to be noticed. All this

has to be done from the standpoint of a consumer of average intelligence

with an imperfect recollection. He submitted that if a comparison is made

between the two marks following the above principles, it would be clearly

established that the appellants‟ / defendants‟ mark „SKINCLINIQ‟ is

deceptively similar to the respondents‟ / plaintiffs‟ mark „CLINIQUE‟.

14. The counsel for the parties had referred to a number of the

decisions of the Supreme Court as well as of this court. They were, inter

alia, the following:-

1) Ruston & Hornsby Ltd v. The Zamindara Engineering Co.:

1969 (2) SCC 727;

2) Amritdhara Pharmacy v. Satya Deo Gupta: AIR 1963 SC 449;

3) Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories: AIR 1965 SC 980;

4) Corn Products Refining Co. v. Shangrila Food Products Ltd:

1960(1) SCR 968 = AIR 1960 SC 142;

5) Amar Singh Chawal Wala v. Shree Vardhman Rice and Genl.

Mills: FAO (OS) 138/1996 decided on 29.05.2009 [(2009) 159 DLT 267];

6) Metropol India (P) Ltd v. Praveen Industries India (Regd):

1997 PTC (17) 779 (DB);

7) Parle Products (P) Ltd. v. J. P. & Company, Mysore: 1972 (1) SCC 618.

15. It would be necessary to briefly examine each of these decisions.

In Ruston Hornsby Ltd. (supra), the trademarks, which were compared were

„RUSTON‟ on the one hand and "RUSTAM‟ and „RUSTAM INDIA‟, on

the other. The plea was that the appellant‟s trademark „RUSTON‟ had been

infringed by the respondent‟s marks „RUSTAM‟ and „RUSTAM INDIA‟.

The Allahabad High Court, where the matter had originated, held that the

use of the word „RUSTAM‟ by the respondent constituted infringement of

the appellant‟s trademark „RUSTON‟. But, the use of the words „RUSTAM

INDIA‟ was not an infringement because the appellant‟s engines were

manufactured in England and the respondent‟s engines were manufactured

in India and that the use of the suffix „INDIA‟ would be a sufficient warning

that the engine sold was not a „RUSTON‟ engine manufactured in England.

However, the Supreme Court held that the mark „RUSTON‟ had been

infringed not only by the use of „RUSTAM‟, but also by the mark

„RUSTAM INDIA‟. The Supreme Court felt that the word „RUSTAM‟ was

deceptively similar to the word „RUSTON‟ and that the fact that the word

„INDIA‟ was added to the respondent‟s trademark was of no consequence

and the appellant was entitled to succeed in its action for infringement of the

trademark. While coming to this conclusion, the Supreme Court succinctly

brought out the distinction between an infringement action and a passing off

action. It observed that in a passing off action, the issue is whether the

defendant is selling goods so marked as to be designed or calculated to lead

the purchasers to believe that they are the plaintiff‟s goods. However, in an

infringement action, the question is whether the defendant is using a mark

which is the same as or which is a colourable imitation of the plaintiff‟s

registered trademark. The Supreme Court observed:-

"7. In an action for infringement where the defendant‟s trade mark is identical with the plaintiff‟s mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the register, but something similar to it, the test of infringement is the same as in an action for passing- off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing-off actions."

16. In Amritdhara Pharmacy (supra), the Supreme Court held that

the word "LAXMANDHARA" was likely to deceive and confuse persons

into believing that they were, in fact, purchasing the product under the mark

„AMRITDHARA‟. The Supreme Court observed that the question of

deceptive similarity must be approached from the point of view of a man of

average intelligence and imperfect recollection. The Supreme Court further

observed that: -

".. overall structural and phonetic similarity of the two names „AMRITDHARA‟ and „LAXMANDHARA‟ is, in our opinion, likely to deceive or cause confusion."

The Supreme Court also observed that:-

"The trademark is the whole thing - the whole word has to be considered."

In Kaviraj Pandit (supra), the Supreme Court, once again considered the

differences between an infringement action and a passing off action. The

Supreme Court observed that:-

"In an action for infringement, the plaintiff, must, no doubt, make out that the use of the defendant‟s mark is likely to deceive, but where the similarity between the plaintiff‟s and the defendant‟s mark is so close, either visually, phonetically or otherwise, the court reaches the conclusion that there is imitation, no further evidence is required to establish that the plaintiff‟s rights are violated."

17. The marks „GLUCOVITA‟ and „GLUVITA‟ came up for

consideration in an infringement action before the Supreme Court in Corn

Products (supra). The Supreme Court observed that 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 and that it is for the court to decide that

question. The Supreme Court observed that the only difference between the

marks „GLUCOVITA‟ and „GLUVITA‟ was the syllable „CO‟ in the

appellants mark. Apart from that, the two marks were identical. The

Supreme Court further observed that the said syllable "CO‟ was not, in their

opinion, such as would enable the buyers in our country to distinguish the

one mark from the other. The Supreme Court also held:-

"It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole."

18. Importantly, the Supreme Court also observed that:-

"... the idea of the two marks is the same. The marks convey the ideas of glucose and life giving properties of vitamins. The Aquamatic case (Harry Reynolds v. Laffeaty's Ld.: 1958 R.P.C. 387) is a recent case where the test of the commonness of the idea between two marks was applied in deciding the question of similarity between them. Again, in deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them."

19. In Amar Singh Chawal Wala (supra), the registered trademarks

were „LAL QUILLA‟, „GOLDEN QUILLA‟ and „NEEL QUILLA‟ and the

infringing mark was „HARA QUILLA‟. A Division Bench of this court held

that the essential feature of the registered trademark was the word

„QUILLA‟ and, therefore, the mark „HARA QUILLA‟ was found to be

deceptively similar to the registered trademark „LAL QUILLA‟. The court

observed that there is every possibility of there being a confusion created in

the minds of the purchasers of rice that the product being sold by the

defendant (in that case) was, in fact, a product that had emanated from or

had been manufactured by the plaintiff (in that case). The court also took

the view that the delay in approaching the court by itself would not be a

sufficient defence to an interim injunction in the event the court takes the

view that ultimately, a permanent injunction would be granted.

20. In Metropol (supra), a Division Bench of this court was required

to consider the marks „CLEANZO‟, which was the registered mark and

„CLEANJO‟, which was the alleged infringing mark. In the said decision,

the Division Bench held that the learned single Judge was not justified in

giving a clarification that the defendant was entitled to trade its product

under the trademark „PRAVEEN CLEANJO‟ and the Division Bench

observed that the use of the very word "CLEANJO" whether with the prefix

„PRAVEEN‟ or otherwise, was definitely likely to have an effect of creating

confusion in respect of the cleaning goods and was likely to deceive the

purchaser of the goods.

21. In Parle Products Pvt. Ltd (supra), the Supreme Court observed

as under:-

"9. It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of

the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can essily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word "Gluco Biscuits" in one and "Glucose Biscuits" on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs‟ goods, he might easily mistake the defendants‟ wrapper for the plaintiffs‟ if shown to him some time after he had seen the plaintiffs‟. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Homes. We have therefore no doubt that the defendants‟ wrapper is deceptively similar to the plaintiffs‟ which was registered. We do not think it necessary to refer to the decisions referred to at the bar as in our view each case will have to be judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it."

22. The following principles can be culled out from the aforesaid

decisions:-

1. The test of deceptive similarity in the case of infringement is the same as in a passing off action, where the marks are not identical;

2. The question has to be approached from the point of view of a man with average intelligence and imperfect recollection;

3. In comparing the marks, it is the overall structural and phonetic similarity of the two marks that is to be seen and not by splitting them into their component parts and to consider the etymological meaning thereof;

4. The trademark is the whole thing - the whole word has to be considered; and

5. In comparing the two marks, it is also to be seen whether they both convey the same idea - (test of commonness of the idea between the two marks).

23. It is in this backdrop that we have to compare the marks of the

appellants and those of the respondents. The respondents‟ registered

trademark is „CLINIQUE‟. It also has other registered trademarks which all

include the word „CLINIQUE‟. „CLINIQUE‟ is a French word for the

English word „Clinic‟. Both are pronounced differently. „CLINIC‟ is

pronounced as „KLINIK‟ and „CLINIQUE‟ is pronounced as "KLINECK".

"CLINIQUE" is the most important constituent of the respondents‟ family of

trademarks. The question is, whether the mark of the appellants -

"SKINCLINIQ" is deceptively similar to „CLINIQUE‟ or not? It is

apparent, as already pointed out above, that "CLINIQUE" and

"SKINCLINIQ" are not identical marks. The question, therefore, is to find

out as to whether they are deceptively similar or not and this question has to

be approached from the point of view of a man with an average intelligence

and an imperfect recollection. In comparing „CLINIQUE‟ with

„SKINCLINIQ‟, what has to be borne in mind is the overall structural and

phonetic similarity of the two marks and the marks cannot be separated into

their components. Consequently, we have to take the mark „SKINCLINIQ‟

as a whole in comparison with the respondents‟ registered mark

„CLINIQUE‟. When we do that, we do not find any overall structural or

phonetic similarity. We cannot separate the mark „SKINCLINIQ‟ into its

component parts „SKIN‟ and „CLINIQ‟ and then compare the component

„CLINIQ‟ with the respondents mark „CLINIQUE‟. If such a splitting up

cannot be done, then we do not see any phonetic, visual or overall structural

similarity in the two marks, „CLINIQUE‟ and „SKINCLINIQ‟, so as to

reach to the conclusion that „SKINCLINIQ‟ is deceptively similar to

„CLINIQUE‟. The word „clinic‟ by itself means a place where some kind of

treatment is provided. So, perhaps, it could be said that the word

„CLINIQUE‟ conveys the idea of some kind of treatment. To a certain

extent, it may be said that the mark „CLINIQUE‟ and the mark

„SKINCLINIQ‟ do convey a common idea of treatment. However, as

pointed out above, while comparing the marks, we have to examine not only

the commonness of the idea between the two marks, but also the overall

visual, structural and phonetic similarity of the marks. Taking an overall

view of the marks, we feel that a person of average intelligence and

imperfect recollection would not be deceived by the mark „SKINCLINIQ‟

into believing that it is, in fact, the mark „CLINIQUE‟. We feel that the

learned single judge fell into error in splitting the appellants‟ mark

"SKINCLINIQ‟ into „SKIN‟ and „CLINIQ‟ and in then comparing the latter

component (CLINIQ) with the respondents‟ mark „CLINIQUE‟. Had the

appellants‟ mark been only „CLINIQ‟ then, perhaps, it could be said that it is

deceptively similar to the respondents‟ mark „CLINIQUE‟. However, the

appellants‟ mark is not just „CLINIQ‟ but „SKINCLINIQ‟, which is one

word and not two separate words as in Rustam‟s case and Cleanzo‟s case.

24. Another important circumstance is that the price differential

between the two products is so vast that no consumer of products of either

the appellant or the respondent would confuse one for the other. We,

therefore, do not agree with the conclusion arrived at by the learned single

Judge that, prima facie, a case of infringement has been made out. We

would also like to point out that the conclusion arrived at by us has been on

the assumption that the appellants‟ trademarks are not registered or if

registered, such registrations were invalid. We have not gone into that

question of registration and its validity for the simple reason that the

rectification proceedings are pending and the suit has been adjourned in

view of Section 124(1) of the said Act and the counsel agreed that the issue

of Section 124 need not be gone into for deciding this appeal.

Consequently, we allow this appeal and set aside the order of the

learned single Judge to the extent that he allowed IA No.15425/2008 and

dismissed IA No.217/2009. The injunction granted by the learned single

Judge stands vacated. The parties are left to bear their own costs.

BADAR DURREZ AHMED, J

VEENA BIRBAL, J JULY 09, 2010 dutt