Klas Tape Company vs Vinod Hardware Store & Others
2010 Latest Caselaw 2381 Del

*               IN THE HIGH COURT OF DELHI AT NEW DELHI

                                                                        Pronounced on: 04.05.2010

+                             I.A. Nos. 5840/2007& 1827/2007
                                      in CS(OS) No. 900/2007

       KLAS TAPE COMPANY                                                ..... Plaintiff

                              Through: Mr. H.P. Singh, Advocate.

                                             versus

       VINOD HARDWARE STORE & OTHERS                                ..... Defendants

                              Through: Mr. Manav Kumar with
                                       Mr. Sushant Singh, Advocates.

       CORAM:
       MR. JUSTICE S. RAVINDRA BHAT

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

2.     To be referred to Reporter or not?                    Yes.

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

MR. JUSTICE S.RAVINDRA BHAT

*

1. This order will dispose of an application for ad-interim injunction moved by the plaintiff (IA 5840/2007) and the other related application (IA 1827/2007), both filed by the plaintiff, for interim stay.

2. The plaintiff, by this suit, seeks a decree for permanent injunction to restrain the defendants, their licencees as the case may be, their servants and agents, distributors, stockists and the like (or anyone acting on their behalf) from manufacturing, marketing, selling, offering for sale, advertising, directly or indirectly or dealing with, or passing off in any manner, the measuring tapes having shape, configuration, label identical to or resembling the plaintiff‟s

IA Nos. 5840/2007 & 1827/2007 in CS (OS) No.900/2007 Page 1 registered trade mark BILLI and/or CAT, and from infringement of Copyright as well as Design thereof.

3. The plaintiff is a partnership firm, established in the year 1986 under the trading name/style "BLOOMING BUDS", carrying on its business at, 41, Sarang Street, Mumbai-400 003, entered into the business of manufacturing and marketing measuring tapes of wide variety under the trademark/trade-name „CAT, KLAS BILLI and/or DEVICE OF A CAT/BILLI‟. The said partnership firm changed its name from "BLOOMING BUDS" to "KLAS TAPE CO." with effect from 1st of April, 1995 with the same partners continuing.

4. The plaintiff in respect, of each of its trademark, viz. BILLI, DEVICE OF A CAT, KLAS BILLI, and CAT claims to be the creator and originator of the artistically designed labels and outer packing boxes/cartons, which bear an original work of art. Furthermore, says the plaintiff, the word BILLI, CAT and/or DEVICE OF A CAT/ BILLI forms a prominent feature of the trading style/trade name and these words are identified with the plaintiff alone. It is submitted that the plaintiff‟s said labels/cartons in respect of the product, consists of original artistic work and is registered under the Copyright Act, 1957 under No. A-57712/99. The usage of the mark in respect of the measuring tape as also the registered proprietor of the mark KLAS MASTER in Class 09 under the number 547192-B is with effect from 15th March 1991.

5. The plaintiff contends that its product viz. measuring tape is unique and distinctive and has a new and original shape, configuration, ornamentation and design as regards its outer shape. The proprietor has also registered the proprietary design in relation to measuring tapes, in India, under the provisions of the Designs Act, 2000; the design was registered as No. 188336 in Class10.7. It is argued by the plaintiff that the said marks are etched in the minds of the purchasing public, who are mainly, an illiterate class of workers and labourers who recognize demand for the product as „BILLI‟ product, without identifying/ associating anything else, and in the trade, to be exclusively associated with that of the plaintiff. The plaintiff states that after registration of the said design and subsequent launch has witnessed a phenomenal and ever increasing sale of the said product.

6. The plaintiff claims to have spent lakhs of Rupees towards publicity and advertising, in various media, owing to which the trademarks BILLI, CAT and/or DEVICE OF A CAT/BILLI

IA Nos. 5840/2007 & 1827/2007 in CS (OS) No.900/2007 Page 2 are exclusively associated in the minds of the general public and in the trade circles as belonging to it (the plaintiff) and none else.

7. The plaintiff claims to be aggrieved by the illegal and unlawful acts of the defendants who are selling measuring tape with identical designs (as the plaintiff‟s registered design) and also an identical trademark, which are obvious and fraudulent imitations of the registered designs of the plaintiff‟s measuring tape. It is also submitted that the defendants are infringing the plaintiff‟s copyrights in the artistic works in the label "KLAS, DEVICE OF A CAT/BILLI and 3M", under Section 55 of the Copyright Act and in the artistic works namely product drawings and moulds pertaining to the measuring tape under Section 22 of the Designs Act, 2000, by reproducing and/ or making adaptation of the product drawings of the measuring tape of the plaintiff to produce the infringing or duplicate moulds for manufacturing the infringing product.

8. The plaintiff has relied on Indian Shaving Products Ltd. & Anr. v. Gift Pack & Anr., 1998 PTC (18), where it was held that :

"it is a well recognized principle of law that a trader or a businessman can acquire exclusive rights to use a particular word with a dictionary meaning as a trademark if it is shown to the satisfaction of the Court that it has acquired a secondary meaning or a distinctive character with the constant user for a considerable period of time. The user of the impugned word must be to such an extent that it has lost its primary meaning and has acquired a distinctive character. The moment the same is used it must remind the consumer of the goods of the plaintiffs. It has become so popular with public by way of goodwill or a reputation that the moment it is used and referred to a picture emerges in the mind of the consumer of the article in question which is being sold under the said trademark. Thus the only qualification attached to the use of a descriptive word as a trademark is that it must have been associated and used in connection with the goods for such a considerable period that it has come to acquire an altogether different meaning other than the one which it conveys in the language."

9. It is argued that around March 2007, the plaintiff came to know through its marketing personnel that the defendants were selling the infringing products identical to its (the plaintiff‟s) products in Delhi as well as in other parts of. On 23.03.2007, the plaintiff through its advocate addressed a „cease and desist‟ legal notice to all the defendants. It is alleged that the third defendant, instead of replying to the said notice, filed a false and frivolous suit for declaration against the plaintiff in conjunction with the first defendant, before the District Court; the said suit

IA Nos. 5840/2007 & 1827/2007 in CS (OS) No.900/2007 Page 3 is numbered as Suit No 72/07. The second defendant is the manufacturer of the infringing products; and the third defendant is a sister concern.

10. The defendants contend that the suit is not maintainable and is liable to be rejected, at its threshold, as the plaintiff is guilty of suppressio veri, suggestio falsi. It is argued that the plaintiff has concealed from the Court that the cat device was introduced for the first time by M/s Freeman Tape Co., Ludhiana in 1991-92. It is also contended that the Cat Device is actually the trademark of a foreign company. The defendants argue that the plaintiff has copied the said cat device, of M/s Freeman Measure Ltd, and, therefore, cannot claim any rights over it. The defendants rely on the judgment, ,Shri Prem Singh V M/s Ceeam Auto Industries,(1990 PTC

149), where it was held that;

" when plaintiff's own conduct is tainted and he himself is prima facie an imitator of another person's design, then the court should not normally at the pre-trial stage, offer him protection, on the mere assertions and averments in the plaint which the defendant has succeeded in showing to be prima facie unfounded or even false."

11. It was urged that the second and third defendants have been using BILLYMAC trademark since 1999, whereas the plaintiff has not filed any proof of use of the mark or Billi Device before 30.09.06.

12. The plaintiff claims to be registered proprietor of the KLAS Cat/ "Billi" device, the distinctive feature of which is the CAT/BILLI representation, which is essentially the likeness of a cat, or at least one of its sub-species. In support of the claim for long usage, the plaintiff has filed on the record, 160 invoices for the period 1993-2007 (pages 25 to 185 of the list of documents filed with the suit) that contain prima facie evidence of sales and orders placed for printing of the label. Besides, copies of calenders, for various years, with the cat or "Billi" device, for different years, are also filed. A copy of the trademark registration certificate, dated 29th February, 2000, in respect of the KLAS Cat device, with the cat representation, has also been filed, as part of the record. The second and third defendants, on the other hand, have filed a common written statement, denying the plaintiff‟s case, and contending that the plaintiff‟s mark is not distinctive; they deny any novelty in the design, and also deny the copyright claim. It is submitted that the plaintiff is indulging in trademark infringement, having copied the BILLI or

IA Nos. 5840/2007 & 1827/2007 in CS (OS) No.900/2007 Page 4 Cat device, from someone else. The defendants assert to have been using the BILL/Cat device or mark, since 1999; however, they have not substantiated this allegation with any documentary evidence.

13. The above analysis would disclose that the plaintiff‟s claim for use of the BILLI or CAT device/mark has been substantiated at least from 1993, prima facie, through the documentary evidence on the record. The plaintiff has placed on the record a copy of the trademark registration, issued in 2000 with a claimed user of the mark, since 1991. Now, the mark here comprises of the cat representation, and the word BILLI or Cat, with KLAS. It is now established that trademarks are of four categories. They may be 'generic' which means that the mark may refer to the genus or root (of which) the particular product may be a species. It may be 'descriptive', i.e. it may describe the nature or type of goods for which they are used. It may be 'suggestive' which means use of imagination, thought and perception to reach a conclusion to the nature of the goods. The last category are 'arbitrary' or fanciful marks which do not have any connection to the nature or type of goods. In this case, the CAT or BILLI representation or device, or even the word mark (all of which are part of a composite mark) have no connection or co-relation to the goods or products, i.e. measuring tapes.

14. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, the Supreme Court held that:

"in an action for infringement of a trade mark, the onus of proof would be on the plaintiff when it was found that his trade mark was deceptively being used by the defendant - So, where the similarity between the trade mark of the plaintiff and defendant was found then, no further evidence would be required to established that the rights of the plaintiff were violated .Also, the ground of passing off of goods would play a limited role in an action for infringement of a registered trade mark."

A similar view was taken by Supreme Court, in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90;

"In cases of infringement either of Trade Mark or of Copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest. Prima

IA Nos. 5840/2007 & 1827/2007 in CS (OS) No.900/2007 Page 5 facie indication of dishonest intention is sufficient to bring an action of passing off goods."

15. As far as the plaintiff‟s claim for injunction based on the defendants'use of the KAT/BILLI/ DEVICE OF A CAT is concerned, the Court is mindful of the fact that the injunction sought for restraining the use of a mark, in a corporate name, is a species of infringement, under the Trademarks Act, 1999, under Section 29 (5), in respect of goods and services of the same or identical kind.

16. In the present case, the defendants do not deny using such CAT or BILLI marks in respect of the same or identical products, i.e. measuring tapes, as in the case of the plaintiff‟s business. The plaintiff is the registered trademark proprietor, who has established a distinct identity, and continuous use, at least since 1993, prima facie, from that time, by placing documentary evidence on record. Other allegations and contentions as to passing off, copyright infringement or registered design infringement apart, the Court is bound by the principles indicated in the two judgments of Supreme Court, quoted previously. The defendants‟ contention is that the plaintiff has copied the BILLI or Cat device from someone else. No attempt to substantiate this has been shown; besides the defendants have not argued as to how such alleged plagiarism of the mark, or device or label, is a defence in a trademark infringement action. The Court is satisfied that the ruling cited by the defendants, i.e. Shri Prem Singh's case (supra), has no application to the facts of this case.

17. The BILLI or CAT mark is arbitrary, as it has no association with the goods, products or services offered, nor is it a suggestive one. The likeness of a cat, or any other animal in the cat family, does not naturally conjure an association with measuring tapes. Though the defendants faintly argued that the two Cat marks are visually different, this Court is mindful that it cannot focus on dissimilarities, but has to take into consideration the possibility of consumer confusion, having regard to the overall visual get up, and the imperfect recollection of an unwary purchaser. The standard to be applied, as an American judgment graphically put is that of the unwary consumer, not a "moron in a hurry". The object of affording protection to a mark, which has acquired a degree of distinctiveness is to protect the goodwill of the trader, and at the same time

IA Nos. 5840/2007 & 1827/2007 in CS (OS) No.900/2007 Page 6 assure the public and customers about the constancy of the nature of services or products they seek.

18. Here, the two marks - the prominent parts of which are the CAT likeness representation, with the word CAT or BILLI, are closely similar. The users here are not ordinary consumers but carpenters, and other such workmen, who are likely to associate the defendants‟ labels and mark, with the plaintiff‟s product. If the object of trademark is to act as source identifiers, and the object of trademark law is to provide protection to such acquired distinctiveness, the plaintiff, in this Court‟s view, has prima facie established that it is registered proprietor of the mark; the defendant‟s mark is similar enough to constitute infringement, and the products traded by both the parties, under the mark are identical products.

19. In view of the above reasoning, the application for temporary injunction has to succeed; the defendants, their agents, employees or anyone acting on their behalf are hereby restrained from using CAT, KLAS BILLI and/or DEVICE OF A CAT/BILLI mark, or any other deceptively or confusingly similar mark, on the measuring tapes sold by them or offered for sale, containing the CAT or BILLI likeness or device, or the word mark, so as to confuse consumers into believing that such mark pertains to the measuring tapes sold by the plaintiff. The two applications, i.e. IA 5840/2007 and IA 1827/2007, are consequently allowed, in the above terms.

20. In the circumstances of this case, and having regard to the nature of the defendants‟ contentions, the Court is of opinion that the latter must bear the costs in respect of the application for ad-interim injunction. The defendants are accordingly directed to pay to the plaintiff, the sum of Rs. 50,000/- within four weeks.

CS (OS) 900/2007

List for further directions on 13th August, 2010.

4th May, 2010                                                         (S. RAVINDRA BHAT)

                                                                              JUDGE




IA Nos. 5840/2007 & 1827/2007 in CS (OS) No.900/2007                                           Page 7