Rich Products Corporation & Anr. vs Indo???Nippon Foods Limited
2010 Latest Caselaw 4398 Del

*           IN THE HIGH COURT OF DELHI AT NEW DELHI


                                                        Reserved on : 13.09 2010
%                                                  Date of decision : 20.09.2010


+                          RFA (OS) No. 37 / 2010


RICH PRODUCTS CORPORATION & ANR.
     ...   ...    ...   ...    ...    ...    ...                               ...       ...APPELLANTS
                        Through : Mr. Peeyosh Kalra, Ms. V. Mohini &
                                  Mr. Vikram Grover, Advocates.

                                     -VERSUS-

INDO-NIPPON FOODS LIMITED
     ...    ...   ...    ...    ...                     ...       ...        ...     .RESPONDENT
                        Through : Mr. S.K. Bansal & Md. Sazid Rayeen,
                                  Advocates.

CORAM :

HON'BLE MR. JUSTICE SANJAY KISHAN KAUL
HON‟BLE MR. JUSTICE VALMIKI J. MEHTA

1.        Whether the Reporters of local papers
          may be allowed to see the judgment?                    No

2.        To be referred to Reporter or not?                     No

3.        Whether the judgment should be
          reported in the Digest?                                No


SANJAY KISHAN KAUL, J.

1. The claim of exclusive right to use the word mark „WHIP

TOPPING‟ resulted in filing of a suit by the appellants.

The appellants claimed that the said word mark is part of

its registered trademark „RICH‟S WHIP TOPPING‟ and the

use of the word mark „WHIP TOPPING‟ by the respondent _____________________________________________________________________________________________

as part of its trademark / label „BELLS Whip Topping‟ was

deceptively similar. The appellants also claim that the

respondent seeks to pass off its goods for that of the

appellants on account of the trade-dress, packaging and

instructions, which are alleged to be identical. The

appellants, thus, sought appropriate reliefs in the suit

both of perpetual injunction and consequential reliefs for

accounts, etc.

2. The appellants along with the suit filed an application for

interim relief under Order XXXIX Rules 1 and 2 of the

Code of Civil Procedure, 1908, but failed in that

endeavour in terms of an Order dated 03.07.2007 of the

learned Single Judge. In the appeal filed by the

appellants against the interlocutory order, the trial in the

suit was reduced by consent to filing of affidavits of

evidence by both the parties with the documents to be

read in evidence without the need of the cross-

examination and the suit to be decided accordingly.

Learned Single Judge, thus, framed the following issues

on 10.11.2008 :-

"(i) Whether the plaintiff is the proprietor of the Trademark "RICH‟S WHIP TOPPING" in relation to its goods as mentioned in the plaint both under the statutory as well as under the common law? OPP

(ii) Whether the plaintiff No. 1 has acquired distinctive goodwill and reputation and secondary meaning in respect of the trademark "RICH‟S WHIP

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TOPPING" by virtue of its prior, long and continuous user as alleged? OPP

(iii) Whether the trademark "RICH‟S WHIP TOPPING" is a trademark possessing trans-border reputation? OPP

(iv) Whether the registered trademark of the plaintiff "RICH‟S WHIP TOPPING" is deceptively similar to the trademark of the defendants, "BELLS WHIP TOPPING‟ and amounts to infringement and passing off the plaintiffs‟ impugned product? OPP

(v) Whether the defendant‟s packaging is confusingly similar to the trade-dressing of the plaintiffs‟ packaging? OPP

(vi) Whether the plaintiff is entitled to damages against the defendants and if so, in what sum?

OPP

(vii) Whether the trademark of the plaintiff is not a coined word? OPD

(viii) Whether the trademark of the plaintiff is a descriptive trademark? OPD

(ix) Whether the trademark of the plaintiff is a common dictionary word and that the same is common in use? OPD

(x) Whether the trademark of the plaintiff is generic in nature? OPD

(xi) Whether the plaintiff is guilty of concealment of the fact that its registered trademark is subject to a disclaimer and the effect thereof? OPD

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(xii) Whether the suit instituted by the plaintiff is barred on account of delay and laches and acquiescence on the part of the plaintiff? OPD

(xiii) Relief."

3. The parties filed their respective affidavits of evidence.

The suit was taken up for final disposal and in terms of

the impugned judgment and decree dated 19.02.2010,

the suit has been dismissed. Issue No. 1 was answered

in favour of the appellants insofar as the proprietary

rights in the trademark „RICH‟S WHIP TOPPING‟ were

concerned, but it was held that the same did not extend

to a part of the trademark „WHIP TOPPING‟. Issues No. 2,

3, 4 and 5 were answered against the appellants, while

Issues No. 7 to 10 were answered in favour of the

respondent and against the appellants. The sequittor

was that Issue No. 6 was also answered against the

appellants. Issues No. 11 and 12 were, however,

answered in favour of the appellants.

4. The sum and substance of the case of the appellants is

that „RICH‟S WHIP TOPPING‟ is a non-dairy topping and is

one of the various non-dairy products manufactured and

sold by the appellants. The object of all these products is

that the food products remain soft while frozen and can

be served straight from the freezer. The appellants claim

large sales running into billions of US $. The trademark is

originally of appellant No. 1 and appellant No. 2 was a

joint-venture initiated by appellant No. 1 for _____________________________________________________________________________________________

manufacturing the products under the concerned

trademark for which royalty was being paid by appellant

No. 2 to appellant No. 1. It is undisputed that in India

„„RICH‟S WHIP TOPPING‟ is a trademark, which was

registered w.e.f. 13.11.1991 in Class 30 for non-dairy

topping, icing, filling and generally for other goods in that

Class. The registration is subject to a disclaimer with

respect to the letter „S‟ and the word „„TOPPING‟. The

appellants claim that „RICH‟S WHIP TOPPING‟ and „WHIP

TOPPING‟ are registered in several countries across the

globe.

5. In order to support their case, the appellants filed the

affidavits of Mr. Jill K. Bond, PW - 1 in support of the

worldwide reputation and the deceptively similar mark

and packaging of the respondent. The international sales

figures are sought to be proved through Ms. Betty Fye,

PW - 2. The facts pertaining to appellant No. 2 have

been deposed by Mr. Priyakant Himatlal Shah, PW - 3. In

total, eight (8) witnesses have been examined by the

appellants.

6. The case is resisted by the respondent claiming the use

of the expression „BELLS Whip Topping‟ in the trade since

1995. The appellants‟ mark is stated to be generic in

nature with no trademark significance. It is the case of

the respondent that the appellants cannot segregate a

part of the trademark to claim exclusive right in that

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segregated part, especially as „WHIP TOPPING‟ is a

descriptive expression referring to the character and

quality of the product, which has not acquired any

secondary meaning. The expression „WHIP TOPPING‟ is

stated to be common to use in the trade world over. A

number of illustrations for the same are given, which

have been referred to in para 14.1 of the impugned

judgment as under :-

"14.1 In defence of its right to use the mark "BELLS WHIP TOPPING" the defendant has stated that the plaintiffs‟ mark is generic in nature and has no trademark significance. It is further averred that, in any event, the plaintiffs‟ trademark, which is registered as one composite whole, is "RICH‟S WHIP TOPPING" with a disclaimer in so far as letter „S‟ and the word „Topping‟ is concerned; therefore, there can be no infringement much less a commission of tort of passing off by the defendant in using the trademark "BELLS WHIP TOPPING". This, according to the defendant, is more so in view of the fact that "WHIP TOPPING‟ is a descriptive expression which alludes to the character and quality of the product itself and hence, cannot be protected till it can be demonstrated that it has acquired a "secondary meaning". The defendant has further averred that the product in issue is "WHIP TOPPING‟ and it cannot be described in any other manner except by using that expression and especially when it is a manufacturer of the said product. It is the defendant‟s stand that the said word/expression „WHIP TOPPING‟ is commonly used in the trade world over. According to the defendant "WHIP TOPPING‟ is an imitation dairy product which is commonly used in making desserts, baked and frozen products by various manufacturers all over the world, and hence is "publici juris". In this regard, example of other manufacturers, which have used the word mark "whip topping‟ in respect of their products, have been referred to in the written statement. For the sake of convenience they are extracted here-in-below:

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S.No. Name of the Product Company

1. Lego Foods Co. Lego non-dairy Whip Ltd. Topping

2. Kraft Foods Cool Whip Whipped Topping

3. Flavor Right Foods, Flavor Right Premium Columbus, Ohio ready to whip Topping 43216, USA

4. Elgin Dairy Foods, 1) Elgin NP Whip Inc., Chicago, Topping Illinois, USA 2) Elgin‟s Indenium Whip Topping

3) Elgin‟s ready-to-

                                                     whip D-lux Whip
                                                     Topping
                    5.       Morningstar Foods 1) Frozen         Whipped
                             Inc., USA               Toppings
                                                  2) Dairy Fresh Aerosol
                                                     Whipped Toppings
                    6.       Hanan       Products Hanan‟s Whip Topping
                             Co. Inc.

7. The analysis of the impugned judgment shows that the

learned Single Judge has rightly found that the

registration of the appellants‟ mark is for „RICH‟S WHIP

TOPPING‟ and not „WHIP TOPPING‟ and such a position is

present even in certain foreign jurisdictions such as USA

and New Zealand. This is apart from the disclaimer of

the letter „S‟ and the word „TOPPING‟. There is no

registration in favour of the appellants with respect to

the trade-dress, which is based on use of inter-play of

red, blue and white colours. The appellants can claim

right to the part of the trademark „WHIP TOPPING‟ only if

the appellants are able to establish that the said

expression has acquired a secondary meaning. We are in

agreement with the conclusion of the learned Single

Judge that on analysis of the evidence on record, there is

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no material to suggest that by mere use of the word

mark „WHIP TOPPING‟, the product of the appellants

comes to the mind of a consumer. The testimony of

PW - 8, which refers to the 'eye-catching' aspect of the

appellants‟ packaging, does not deal with the aspect of

distinctiveness of the word mark „WHIP TOPPING‟. The

respondent uses its trademark „BELLS Whip Topping‟ with

prominent use of the word „BELLS‟, leaving no manner of

doubt about the distinctiveness of the description of the

product of the respondent.

8. Learned Single Judge has considered the dictionary

meaning of the expression „WHIP TOPPING‟ - the word

„whip‟ in the context of its use in the present case imply

„a light fluffy dessert made with whipped cream or

beaten eggs‟, while the word „topping‟ would mean „a top

layer or garnish put on food‟. The conclusion drawn is

that „WHIP TOPPING‟ would be „representative of

toppings or garnish for food items, which have a cream-

like quality‟ and, thus, is both „generic‟ and „descriptive‟

of the product. The expression has acquired no

secondary distinctive meaning by its exclusive use and /

or publicity.

9. In order to appreciate the visual impact of the two

cartons, we consider it appropriate to reproduce

Exhibit P - 1 (of the respondent) and Exhibit P - 2 (of the

appellants) as under :-

_____________________________________________________________________________________________

Front Side of Exhibit P - 1 (of the respondent)

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Back Side of Exhibit P - 1 (of the respondent)

_____________________________________________________________________________________________

Front Side of Exhibit P - 2 (of the appellant)

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Back Side of Exhibit P - 2 (of the appellant)

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If the aforesaid two packagings are analysed, it would be

seen that there is no similarity in the colour scheme

except that both have different hues of combination of

blue, red and white colours. The packaging of the

appellants, in fact, uses more pinkish colour in half of its

packaging, while the packaging of the respondent uses

red colour throughout with a dark blue colour. The word

„BELLS‟ is very prominent as also the distinctive large

cake reproduced on the packaging.

10. We have also compared the instructions at the back on

which a lot of emphasis was laid by learned counsel for

the appellants. It cannot be lost sight of that there are a

limited nature of directions for use, which can be given in

respect of such non-dairy whip topping and, thus, the

directions cannot be different. They are certainly not

copied verbatim nor is the presentation identical. In fact,

if one examines the plea of learned counsel for the

appellants in the context that all these aspects should be

taken together to show the dishonest intention of the

respondent, the conclusion actually reached is quite the

contrary.

11. We are, thus, in complete agreement with the view of the

learned Single Judge contained in paras 39.1 and 40 that

there is not even the slightest attempt to deceive by the

respondent and that the appellants have, in fact, failed to

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show any copyright in the handling instructions /

directions for use.

12. Once a conclusion is reached that there is no exclusive

right of the appellants in the word mark „WHIP TOPPING‟,

but only in „RICH‟S WHIP TOPPING‟ and the use by the

respondent of „BELLS Whip Topping‟ is distinctive

enough, the natural corollary is that Issue No. 1 has to be

answered against the appellants. There is nothing to

show that the word mark „WHIP TOPPING‟ separately has

acquired any secondary distinctive meaning and has

trans-border reputation. In fact, the learned Single Judge

has rightly noticed that the appellants themselves have

accepted the limitation both in USA and New Zealand

with respect to the exclusive right to use the word

„TOPPING‟ and „WHIP TOPPING‟ which form a part of the

registered trademark „RICH‟S WHIP TOPPING‟. In India,

the appellants have even accepted the disclaimer in

respect of the letter „S‟ and the word „„TOPPING‟. There

is no deception arising from any similarity of the

packaging and / or trade-dress and instructions. The

word, „WHIP TOPPING‟ is both „generic‟ and „descriptive‟

and cannot be exclusively appropriated as a trademark.

13. We find that the judgment of the learned Single

Judge is well-reasoned and unexceptionable both on the

legal pleas discussed as well as the analysis of the

evidence.

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14. The appeal being meritless is dismissed with costs.

SANJAY KISHAN KAUL, J.

September 20, 2010                                       VALMIKI J. MEHTA, J.
madan

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