M/S. Kamdhenu Ispat Limited vs M/S. Kamdhenu Pickles & Spices ...
2010 Latest Caselaw 4797 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI

                                                                   Date of decision: 18.10.2010

+                               CS(OS) 2301/2008, I.A. No. 13348/2008


       M/S. KAMDHENU ISPAT LIMITED                                       ..... Plaintiff
                       Through : Sh. Pankaj Kumar, Advocate.


                       versus


       M/S. KAMDHENU PICKLES & SPICES IND. PVT. LTD. & ANR ..... Defendants
                      Through : Sh. S.P. Vijayaragavan, Advocate.


       CORAM:
       HON'BLE 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, J

%

1. The plaintiffs seek a decree for permanent injunction, alleging infringement and passing- off, of their trademark "KAMADHENU"; they also seek other reliefs, such as damages, direction for delivery-up etc.

2. The plaintiff is a company incorporated under the Indian Companies Act. Its main business is to manufacture and market Steel Bars and other cognate products. It has also expanded into other businesses such as Cement, POP, construction, etc. It is submitted that the plaintiff has approximately 15,600 shareholders across the country. The plaintiff alleges to be owner of about seven registered trademarks containing KAMADHENU, in respect of steel and

CS(OS) No.2301/2008 Page 1 various classes or categories of steel; it has produced copies of such trademark certificates, with effect from different dates from 1996, 1999, 2004 and 2005. It also claims ownership of registered trademark in respect of KAMADHENU in other diverse classes, such as Chemicals and industry, cement and construction, paints and varnishes, bleaching preparations, Industrial oils, pharmaceuticals, paper and cardboard, leather Bakelite and laminated products, advertising and media, coffee, tea, beer, alcoholic and other beverages, food products, condiments, etc.

3. The plaintiff contends that KAMADHENU is a world-famous and globally respected trademark, trade name, service mark and brand name. To establish user of the mark KAMDHENU, the plaintiff has produced 24 bills and invoices towards sales of its products, commencing from 1998 till the date of filing the suit. The list of documents filed along with the suit also includes copies of advertisements. The plaintiff, in support of its claim for widespread usage of the mark, has produced copies of its annual reports for various years, including 1996-97 (when the gross sales was ` 27,91,69, 783/-) 1997-98 (when the gross sales was ` 31,64, 48, 836/-) 1999-2000 (when the gross sales was ` 40,01,38, 737/-) 2002-03 (when the gross sales was ` 53,15,74,750/-) 2003-04 (when the gross sales was ` 83,58,13, 250/-) 2004-05 (when the gross sales was ` 1,26, 29,10,373/-) 2005-06 (when the gross sales was ` 1,37,64,78,640/-) and for subsequent years, when it had increased considerably.

4. The plaintiffs allege that the defendant is engaged in the manufacture and export of bedsheets, quilts and pillow covers in various specifications; it is a proprietary concern. It is further claimed that the plaintiff became aware of the defendant's mark KAMADHENU, in respect of pickles and other such ready-made foods or preservatives upon enquiries. The plaintiff submits to being aggrieved by the defendant's unauthorized use of the word "KAMADHENU" in which they have excessive rights, which injures their reputation.

5. The plaintiff alleges that the defendant despite being aware of their (i.e the plaintiff's) fame and reputation in respect of the mark "KAMADHENU" and its use of such mark is in bad faith. The plaintiff claims being the registered proprietor of a well-known mark (falling within the definition under Section 2(1)(zg) of the Trademarks Act, 1999)(hereafter called "the Act"). Since the mark has been used extensively for over a considerable period of time, and is almost a household mark, in respect of steel bars (or sariyas), promoted and advertised, their products widely under the said mark through advertisement media. The claim for being well-known mark

CS(OS) No.2301/2008 Page 2 is also premised upon numerous registrations subsisting in the plaintiffs' favor in various classes under the Act. It is submitted that this Court has jurisdiction since the plaintiff office operates in Delhi and its goods are extensively sold here. It is also claimed that the defendant operates and promotes its business activity on a commercial scale, including in Delhi. In these circumstances, the plaintiffs seek injunction, restraining the defendant from manufacturing any articles or commercial-dealing with them under the trade-name KAMADHENU or any other deceptively similar mark.

6. The defendants contest the suit and, submits that it is motivated. It is contended that the defendant has no intention of deriving benefits from the plaintiffs' trade name and has been using KAMADHENU ever since 1969. It is alleged that the second defendant, M/s Kamadhenu Pickles and Spices was constituted as a partnership in March, 1969 and later a partnership deed was executed on 10-4-1986. It is submitted that the second defendant company was incorporated in 1986; its main objectives includes manufacturing and retailing pickles, spices, jellies, juices, sauces, and processing articles and condiments used for the preparation of those goods. The defendant submits It is submitted that the goods and products sold or marketed by them all these years has no remote connection with the plaintiff's main business, or the products sold or marketed by it under the KAMADHENU mark. The defendants rely upon a small scale industry registration certification issued by the Maharastra State Government on 3-2-1993 as also registration under the Bombay Shops and Establishments Act, dated 31-12-1999. Similarly, the second defendant secured registration from the Maharastra Government in respect of manufacture of pickles by a license dated 23-1-1993; it has received approval and certification under the Agricultural Produce (Grading and Marking) Act, 1937. The first defendant claims to be a sister concern of the second defendant, which is marketing the former's products.

7. The defendants have produced copies of the registration and approval certificates, mentioned by them. It is contended that whereas the plaintiff has been able to show use of KAMADHENU as trademark, since 1995, they (the defendants) have been using that term as trademark, and trading or corporate name, since 1986. The registration of the second defendant company, and its certificate of incorporation and other such documents are relied upon for this purpose.

CS(OS) No.2301/2008 Page 3

8. The second defendant's sales turnover for the period 1986-87 to 21-12-2008, have been produced, through chartered accountant's certificates. These show that for the year 1985-86, the turnover was ` 85,38,617/- whereas it was ` 11,14, 90, 919/- for the eight months of the year 2008. Similarly, the defendants' advertisement expenses, which originally stood at ` 68,314/- as of 1985-86, increased to ` 6, 59, 210/- for the eight months of 2008. The defendants submit that they are prior users of KAMADHENU in respect of pickles and other product groups, whereas the plaintiff has at best established user of the mark since 1995. The defendant states that it is not using the plaintiffs' logo, emblem or any other mark on its products capable of any confusion; on the contrary, it offers the logos for comparison, stating that there is no resemblance between the two. The partnership deed of 1986, as well as other supporting documents, to support the case of use of KAMDHENU before 1995, have been filed by the defendants.

9. The court proposes to consider these issues, as they concern the main aspects of the plaintiff's claim. Now, the documents produced and affirmed on behalf of the plaintiff are not seriously disputed. These clearly establish that the plaintiff's marks - both the device and the word mark are registered trademarks, and have been in existence for a substantially long point of time. The plaintiff's claim is that the mark is used and well known in respect several products, such as its main business in steel bars, and allied products, cement and construction. It also claims to be using the mark in other fields. The issue concerning the plaintiff's proprietorship, of registered trademarks were not disputed by the defendant, nor his counsel, during the hearing of the case. That the plaintiff has been using the mark, in respect of steel bars at least since 1995 and allied goods, therefore, are not disputed. The defendants' argument however, is that in respect of dissimilar goods, i.e pickles and such other processed packaged foods, it has been using the KAMADHENU mark since 1969, both as a corporate or trading name, as well as a trademark. Its further argument is that in respect of the goods it sells, ie pickles, jellies, etc, it is the prior user, entitled to legitimately use the mark. It also submits that the plaintiff cannot maintain a suit in respect of a trademark which it does not use, nor that its KAMADHENU mark is so distinctive as to sustain a dilution suit, on alleged infringement by dilution (of a registered trademark).

10. Before this court proceeds to examine the plaintiff's claim for temporary injunction, it would be worth noting the meaning of Kamadhenu. In Hindu mythology, it is a sacred cow, that

CS(OS) No.2301/2008 Page 4 grants all wishes and desires. She is associated with plenty, - even unending supply of goods, particularly food. Kamadhenu emerged from Samudramanthan (the churning of the ocean) and was taken by seven gods. She is also known as the mother of all cows. (Ref. http://www.webonautics.com/mythology/kamadhenu.html)

11. It is established that the purpose of using trademarks is to enable consumers to identify the source of the product. Marks - particularly word marks are descriptive, geographical, generic or arbitrary. A mark which has no co-relation to goods or services which it services is an "arbitrary" mark. The plaintiffs' contention is that KAMADHENU is not descriptive, but arbitrary, and by long usage, it has not only acquired secondary significance, but has become a well known mark in respect of its goods and products. It is submitted that though the mark is used in connection with steel bars, and cement, etc, its reputation in India has acquired such a degree of distinctiveness and fame, that use of KAMADHENU by any other trader, in respect of diverse goods, would tarnish its (the plaintiff's) reputation and injure its reputation. The plaintiff therefore argues that the word itself conjures association with its products. It is argued, in addition that the plaintiff is owner of registered trade trademarks; the defendant's unauthorized use of KAMADHENU is therefore, infringement of both corporate name trademark, as well as infringement by dilution, under Section 29 (4) and (5) of the Act.

12. The materials on record show that the plaintiff has been using the KAMADHENU mark for a considerably long period. In relation to steel bars, it can perhaps be argued that the mark has acquired a secondary significance, as to identify itself with the plaintiff. To that extent, the plaintiffs' claim is correct. The question however, is not whether such distinctiveness is sufficient to entitle the plaintiffs to the injunction sought for.

13. "KAMADHENU" is a common word, signifying plenty; perhaps perpetual supply, prosperity - all with some association with sacredness or goodness. It is a uniquely common Indian term with widespread usage amongst most communities and cultures in India. If one takes these into consideration, there is no doubt that KAMADHENU, is not a descriptive word, in respect of the goods or services offered by the plaintiff; it is a common word. The plaintiff, as stated earlier, is well known for products in the steel bars field. The trademark therefore shows no genericness in relation to petroleum products. At the same time, it is also undoubtedly a common dictionary word.

CS(OS) No.2301/2008 Page 5

14. The facts of this case show that the defendant's use of KAMADHENU, is in respect to its corporate name, and used as a brand for the pickles and other packaged foodstuffs prepared and sold by it. The defendants do not participate or engage themselves in manufacture or sale of steel products, or bars, or in cement, or construction, or allied business. They claim about using the KAMADHENU word in its corporate name, since 1993; and rely on certificates issued by government and trade bodies, evidencing use since at least 2000.

15. The suit and the documents of the plaintiff show that it owns a large number of trademark registrations, in various classes. These include. Yet, the plaintiff has not disclosed whether it is engaged in any textile goods manufacture or trade, or deals in bed and table covers, which is the only commercial activity of the defendant. The materials on record also suggest that the defendant has been using the mark since at least 2000 if not earlier. These, in the opinion of the court show that the defendant has been using the mark in relation to its corporate or trade name, much before the plaintiff, as regards the textile and bedcovers trade.

16. Section 29 (5) of the Trademarks Act has enacted the standard for a new species of infringement, i.e trade-name infringement. It reads as follows:

"(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his business concern dealing in goods or services in respect of which the trade- mark is registered."

In respect of trademark infringement in relation to similar goods, where the marks are similar or identical, where Parliament has mandated a presumption (of infringement); there is no such presumption in case of trade name similarity. In this case, no doubt the plaintiff has shown that it owns several registered trademarks, in diverse classes. However, it relies on evidence showing its business mainly in steel bars (known as sariyas) and later, in construction and cement. It has not placed on record anything showing that it is in the business of manufacturing or trading spices, pickles or condiments, which the defendants are engaged in. On the other hand, the defendants documents show that they have been using KAMADHENU as their corporate or trading name, since 1969; their documents also reveal a partnership deed of 1986. Clearly, the defendants are using the mark in respect of goods and services which the plaintiffs are not

CS(OS) No.2301/2008 Page 6 selling, offering for sale, or marketing. They are also prior users of the corporate and trading name.

17. In Sona Spices Pvt Ltd. v. Soongachi Tea Industries Pvt Ltd 2007 (34) PTC 91 (Del) the Plaintiff was prior registered owner of trademark Sona and was using it same for spices and was a recent entrant in tea business. The Defendant was using the same brand name for tea for around 30 years and was also a registered owner of the same brand name. The Court rejected the Plaintiff's injunction claim on the ground that the Defendant was a prior user of the mark, in respect of tea business and the Plaintiff failed to prove any established business in respect of tea. In Britannia Industries Ltd. v. Cremica Agro Food Ltd. 2008 (38) PTC 89 (Del) the Plaintiff was using the trademark GREETINGS in relation to biscuits, cakes and bakery products whereas the Defendant's products were a combination of assorted biscuits. This Court refused to grant interim injunction and did not find it to be a prima facie case of interim relief to the Plaintiff.

18. The decision in Harrods Ltd. v. Harrodian School Ltd [1996] RPC 697, is instructive on the issue whether the defendants' use of the name (Harrodian School) would lead to confusion among the public that they were misrepresenting themselves as being connected with the Plaintiff (Harrods Ltd). Injunction was refused for lack of evidence of actual deception and confusion. The court held that:

"If any confusion really did exist then, given the time which elapsed between the publication of the brochure, the opening of the school, and the trial, I would have expected the plaintiffs to be in a position to call evidence that some of their huge number of customers had asked for a brochure for the school or had enquired whether the store supplied uniforms for the school, or had otherwise manifested their impression that the school was connected with the store. No such evidence was called.."

19. The plaintiff has been unable to show from the record any evidence of its use of the KAMADHENU mark in relation to pickles or such packaged foods the kind, the defendant deals in. The suit has also not established the defendants use the mark, in relation to any products sold, or offered in the market by the plaintiff. All indications are that the trade-name is used only for few food items; the defendant does not use any mark for the products, in respect of which the plaintiff uses the mark KAMADHENU.

CS(OS) No.2301/2008 Page 7

20. The object of trademark law is to prevent conduct by a trader or producer, which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence). This is more so, where generic terms, or common words are used for trademark. Therefore, trademark law and the protections afforded by it would be rendered meaningless if courts were to mechanically grant injunctive relief, where no injury is shown, or shown to be a natural result of someone's use of a mark. The need to show some element of use or goodwill, in the mark, for the goods or services, cannot be lost sight of; in Perkins v. Shone 2004 EWHC 2249 (Ch D) this was emphasized as follows:

"Commercially goodwill is recognised as a form of property, and transactions in goodwill occur constantly in all areas of business. The law also recognises that goodwill exists, and affords it a measure of protection through the law of passing off. However, the degree of legal protection is not as extensive as the factual and commercial content of goodwill. To some extent that is necessarily so given the factors which make up the goodwill of a business or of a particular line of business. The essence of goodwill has been encapsulated judicially in Lord Macnaghten's expression 'the attractive force which brings in custom': IRC v. Muller [1901] AC 217 at 223. To a large measure it lies in the de facto expectation that an established line of business will continue: that the customers will carry on purchasing the goods or services and that the suppliers will carry on providing the supplies which enable the goods or services to be provided. But those are not matters which can be given legal protection as some species of property right. The goodwill value of a business can be reinforced by making long term contracts with customers or suppliers, but goodwill can exist and can have a significant value even in the absence of long term contracts. In such cases it exists as a commercial reality although major elements of it do not and cannot receive legal protection."

Recently, a Division Bench, in Rhizome Distilleries v Pernod Ricard SA France 166 (2010) DLT 12, stated the relevant principles, where rival marks are common or dictionary words or common to the trade, in the following manner:

"We are reminded of the decision of the Court of Appeal in McCain International Limited v. Country Fair Foods Limited 1982 PTC 156. The learned Single Judge had granted interlocutory relief in a passing off action. The Plaintiff avowedly was the first to launch 'chipped potatoes' in the market which rather than being fried could be baked in the oven or cooked in a grill. The competing brands were 'McCain Oven Chips' and 'Country Fair Oven Chips'. The Court of Appeal was of the opinion that the case was similar to the term 'Flaked Oatmeal" in Parsons v. Gillespie 1898 AC 239 which was seen as descriptive' Reference was also made to the use of the word "slip-on" which was also found to be descriptive; or Hedley's Malted Milk as against Horlicks Malted Milk.

We think it noteworthy that it was reiterated that it was essential for a trader to add a prefix or suffix, preferably showing origins in order to get any protection in respect of a

CS(OS) No.2301/2008 Page 8 word which is descriptive. Reference was also made to Office Cleaning Service Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39 where the rivals were using "Office Cleaning Services" and "Office Cleaning Association". The opinion was that where a fancy word has been chosen as a part of the name and if another trader adopts that fancy name that may be seen as inviting confusion. Keeping all these precedents in view, the Court of Appeal concluded that the use of the word 'Oven Chips' was descriptive and the prefix of 'McCain', 'Country Fair' or 'Birds Eye' were sufficient to distinguish the products. We are not faced with the employment of descriptive words but the underlying rationale is apposite, namely, that if words of common parlance are used, exclusivity cannot be claimed..."

21. This court is of opinion that the use of KAMADHENU as corporate name by the defendant, notwithstanding the plaintiff's registration of the word mark, cannot ipso facto confer exclusivity. The plaintiffs should use it in relation to specific goods, such as pickles and condiments, etc (by the defendants); then only would there be any justification for granting relief. Trademark law, does not imply formalistic or ritualistic application of abstract principles; its existence and rationale is to protect businesses built up to match certain standards. If a trader or manufacturer uses words that acquire some distinctiveness, he is undoubtedly entitled to protection, at least in respect of similar marks, in respect of the goods he deals in. However, merely because he acquires registration (of the mark) he does not become its exclusive owner. KAMADHENU conjures up images of plenty and even affluence, in the Hindu tradition. The plaintiffs do not deal in goods, which are sold by the defendants, or even allied goods nor are they shown as dealing in them. The defendants, on the other hand, have shown that they were using it for almost two decades.

22. As far as the claim for dilution, a species of infringement under Section 29 (4) is concerned, the trademark owner has to show four distinct elements. Though trademarks are concerned with protection of marks which have acquired a degree of distinctiveness, in relation to particular goods and services, courts have, over the years recognized that in relation to marks which have achieved notoriety as to have a reputation about the quality of products which the manufacturer, or services the originator (of the mark) is associated with, then, even in relation to dissimilar goods - or unrelated products, protection of such brand name, mark or acquired distinctiveness is essential. This measure of protection to marks in relation to similar junior marks, but for dissimilar goods is, in substance the protection against dilution (or Blurring or tarnishment) or the mark. Prior to the 1999 Act, Indian law had developed through case law; the

CS(OS) No.2301/2008 Page 9 new Act changed that, and has enjoined protection against dilution, if certain essential elements are established; they are:

(1)    The impugned mark is identical or similar to the senior mark;

(2)    The senior or injured mark has a reputation in India;
(3)    The use of the impugned mark is without due cause;
(4)    The use of the impugned mark (amounts to) taking unfair advantage of, or is detrimental

to, the distinctive character or repute of the registered trade mark.

23. Unlike in infringement of trademark in relation to similar goods or services, in the case of dilution (infringement of mark by use in respect of dissimilar goods or services) there is no presumption of infringement of the mark. This means that each element has to be established. (Refer Intel Corp Inc -vs- CPM United Kingdom Ltd 2009 ETMR 13; McCarthy on Trademarks and Unfair Competition, Vol. IV, 4th ed. 1996 (loose-leaf updated December 2005, release 36; Canada Toys -vs- Mattel Inc 518 F.3d 628, (2008) (2nd Circuit); General Motors Corp v Yplon SA [1999] All ER (EC) 865; and Adidas-Salomon AG v Fitnessworld Trading Ltd [2004] Ch

120)

24. The plaintiff relies on materials in the form of sales figures, advertisements, etc. It has placed on record trademark registration certificates in respect of the KAMADHENU word mark for different classes. These to an extent, are relevant in establishing that in the steel bars, cement and construction industry, in India, the KAMADHENU brand has acquired distinction. The issue which the court has to consider is whether the plaintiff's KAMADHENU mark used mainly for steel bars and allied goods, has been infringed by the defendant, thorough dilution.

25. The analogy of tests evolved in infringement actions where similar goods or services are in question appears to be inapposite, after the enactment of Section 29 (4). The plaintiff has to fulfill a more stringent test (than the deceptive similarity standard) of proving identity or similarity, where trademark dilution is complained. Applying the reasoning of the decisions cited previously, it is held that a "global" look, rather than a focus only on the common elements of the mark, is to be taken, while considering if the impugned or junior mark infringes, by dilution, an existing registered mark. Considering the overall marks or logos, without cataloging minutely the similarities or dissimilarities, this court discerns that there is identity or similarity in the

CS(OS) No.2301/2008 Page 10 overall presentation of the two marks, the plaintiff has been unable to establish that its mark has acquired such distinction in India, that the its use - by someone else, in respect of entirely different products or goods, which it is not remotely connected with, and which (i.e the defendants) have a distinct market, amounts to infringement by dilution, under Section 29 (4).

26. The plaintiff's reputation in its mark may at best be said to contain an association with steel, and allied goods, even in somewhat related fields such as cement; however there is nothing suggestive that such association extends to pickles and such like packaged products manufactured and sold by the defendants. This aspect is crucial, because the plaintiff does not deny that it is not selling competing goods. The class of users of the plaintiff's goods are not the kind who would associate the defendant's mark as those of the plaintiff's. Taking into consideration all these factors, and the materials on record, the court is satisfied there is no linkage between the defendant's mark and the plaintiffs' products, so as to cause detriment to the latter, and undue advantage to the former.

27. For the above reasons, the plaintiff has not been able establish the case for either infringement by dilution or of the corporate name, by the defendant; the suit itself does not disclose any cause of action, for any of the reliefs claimed. The suit and pending applications are therefore rejected; in the circumstances, there shall be no order on costs.

                                                                              S. RAVINDRA BHAT
                                                                                        (JUDGE)
OCTOBER 18, 2010




CS(OS) No.2301/2008                                                                         Page 11