Delhi High Court

Consitex S.A. vs Ms. Kamini Jain & Ors. on 18 July, 2011

Author: Manmohan Singh

*                HIGH COURT OF DELHI : NEW DELHI

+              IA Nos. 4119/2011 and 5677/2011 in CS (OS) No. 629/2011

     Consitex S.A.                                 ... Plaintiff
                          Through: Mr Pravin Anand, Adv. with
                                   Ms Tusha Malhotra and Mr Aditya,
                                   Advs.

                          Versus

     Ms. Kamini Jain & Ors.                   ... Defendants
                     Through: Mr Darpan Wadhwa, Adv. with
                              Ms Sheena Iype and Mr M.R.
                              Shamshad, Advs.

Decided on : July 18, 2011

Coram:
HON'BLE MR. JUSTICE MANMOHAN SINGH

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

2. To be referred to Reporter or not?                       Yes

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

MANMOHAN SINGH, J.

1. This order shall dispose of the following applications filed by

the parties:

a) IA No.4119/2011 under Order XXXIX Rules 1 & 2 of the

Code of Civil Procedure, 1908 (hereinafter referred to as the

CPC) filed by the plaintiff.

b) IA No.5677/2011 under Order XXXIX Rule 4 CPC filed

by defendant.

2. The plaintiff has filed the suit for permanent injunction

restraining infringement of trade mark, passing off, dilution and

tarnishment of trade mark, unfair competition, rendition of accountts,

damages and delivery up against the defendants, namely, Ms Kamini

Jain, Mr Ashwani Jain and Kamini Creations (Exports).

3. The suit as well as the interim application were listed before

the Court on 15.03.2011 and after hearing the learned counsel for the

plaintiff, the summons were issued to the defendants in the suit and ad-

interim injunction was passed against the defendants thereby restraining

the defendants from manufacturing, fabricating, selling, distributing,

storing men clothing by the brand name ZEGNA though with different

spellings JENYA and MENYA. The Local Commissioner was appointed

to make the inventory of the impugned goods.

4. As per the facts mentioned in the plaint, it is contended that

the plaintiff is a company having its principal place of business in Italy.

The plaintiff together with Lanificio Ermenegildo ZEGNA and Figli,

Ermenegildo Zegna Corporation and all other remaining affiliated

companies is a part of the Ermenegildo Zegna Group and are

manufacturing luxury clothing for men. It is stated that on account of the

business activity, the plaintiff along with the other ZEGNA Group of

companies obtained registration in the trade name ZEGNA in 150

countries all over the world. The details of the registration by the plaintiff

group are given in para 11 of the plaint.

5. The trade mark ZEGNA is derived from the name of

Ermenegildo Zegna, the founder of the said Group Company. It is

pronounced as ZEN-YAH in Italian language throughout the world

including India.

6. The details of the Sales Turnover under the plaintiff‟s trade

mark ZEGNA are as follows:

     YEAR          WORLDWIDE SALES                  SALES IN INDIA
                           (in Euros)                    (in Euros)
     2005      571 million                         0.5 million
     2006      642 million                         0.2 million
     2007      703 million                         0.9 million
     2008      724 million                         2 million
     2009      690 million                         3 million

7. It is alleged that the aforesaid figures of turnover/sales have

shown ascendency of 690 million Euros and the sales 3 million Euros in

the year 2009, which clearly shows that its overall turnover has been

increasing.

8. It is averred that over a period of time, the plaintiff has

acquired certain reputation of manufacturing, selling and exporting the

branded readymade garments under the trade name ZEGNA which is also

registered in India. The learned counsel has drawn the attention of the

Court to the certificates of registration granted by Indian authorities.

9. The case of the plaintiff pleaded against the defendants is that

some time in September, 2010, the plaintiff came to know that the

defendant No. 3 is manufacturing, selling, exporting readymade garments

such as shirts and trousers under the brand name JENYA and MENYA

which is the proprietorship concern of defendant No.2 and the defendant

No.1 is stated to be running the business in question on behalf of the

defendant No.3. The main thrust of the plaintiff‟s arguments against the

defendants is that they are selling men clothing like shirt, kurta etc. under

the deceptively similar trade mark of the plaintiff and are giving an

impression to the public at large that these are the goods manufactured by

the plaintiff which in fact is untrue. The said act of the defendants

amounts to infringement of the plaintiff‟s statutory rights and the

defendants are violating the same with impunity and are causing harm to

the goodwill and reputation of the plaintiff without any justification.

10. The defendants‟ defence is that there is no visual, phonetic

and structural similarity whatsoever. Two names, i.e., ZEGNA and

JENYA are completely different. There cannot be any confusion and

deception per se in view thereof. It is contended that if a customer

already knows that ZEGNA is not pronounced as „ZEGNA‟ but as

„ZEN-YAH‟ in the fancy Italian pronunciation, then that customer would

never be confused or even be likely to confuse it with Jenya. It is

submitted that the essence of purchase of high-end branded goods is their

label and look and in this case the emphasis is on the mark ZEGNA, with

the special emphasis on the first letter „Z‟. Thus, the customers who buy

ZEGNA would never purchase in reality any label which starts with the

letter J and confuse it with ZEGNA.

It is stated that the customers who purchase the high-end

Italian brand ZEGNA are the "elite upper strata and educated" class who

would clearly see the obvious difference in the two marks. If there is

such a clear difference in the customers, there can be no confusion.

11. Mr Darpan Wadhwa, learned counsel appearing on behalf of

the defendants, has argued that there are various decisions which have

clearly laid down the test and deal with the issue of lack of phonetic and

visual similarity and wherein it is held that the first syllable of a word

mark is generally the most important, especially in cases of short marks

and there is a general tendency to slur the termination of words. As in

the present case, the first syllable is different in look and sound, there is

no question of slurring the termination of words.

12. From the pleading and documents adduced by the plaintiff, it

is the admitted position that the plaintiff is the registered proprietor of the

mark ZEGNA in classes 24 and 25 under registration Nos. 277992 and

643530. The plaintiff has also obtained the registrations for

transliteration of the mark जेनिया (in Hind) in classes 24 and 25 under

registration Nos.817785 and 817786. The details of Indian registration

obtained by the plaintiff are tabulated hereinbelow :

Regn. No.                Trademark            Date of application    Class







              ERMENEGILDO ZEGNA


              TRAVELLER
790256        ERMENEGILDO   ZEGNA             05/02/1998            L24
              CASHMERE COMFORT

              TRAVELLER










1290303       ZERMENEGILDO ZEGNA              15/06/2004            18        &


              MICRONSPHERE
1327278       MARIO ZEGNA                     21/12/2004            24 & 25
1336003       Z ZEGNA                         02/02/2005            03L09





              COUTURE XXX

              THINK ALIKE


              CASHTWEED


              ERMENEGILDO ZEGNA

13. Mr Pravin Anand, the learned counsel for the plaintiff,

submits that the plaintiff has produced the evidence on record to show

that the plaintiff‟s well known trade mark ZEGNA is pronounced as

ZEN-YAH throughout the world, including in India. Therefore, the use

of the trade mark JENYA by the defendants would create confusion and

deception and the case of infringement of the trade mark is made out by

the plaintiff. In addition to the mark जेनिया in Hindi which is

deceptively similar with the mark JENYA used by the defendants, two

competing marks "ZEGNA" and "JENYA‟ are even otherwise, visually

and phonetically identical as it is quite common for the letter Z to be

pronounced as J and vice-versa. Further, he says that as far as mark

MENYA is concerned, the plaintiff has no objection if the defendants are

permitted to use the same in a different style.

14. In view of the facts mentioned above, the question before this

court is whether the mark JENYA used by defendants in relation to the

same goods amounts to infringement of plaintiffs‟ registered trade marks

and/or any case of passing off is made out by the plaintiff. The two sets

of the marks used and claimed by the parties have to be compared in

view of the pleadings and documents are placed on record. The

following points are to be considered:

       a)     whether the two marks ZEGNA                and JENYA are
              deceptively similar;

       b)     whether the mark ZEGNA is pronounced as ZEN-YAH in

the trade as claimed by the plaintiff and if the answer is positive then is it similar with the defendants‟ mark JENYA; and lastly

c) whether the plaintiff‟s mark जेनिया registered in Hindi is protectable in the absence of user of the mark in India.

15. The concept of aural confusion is statutorily embodied in

Section 29 (9) of the Trademarks Act, 1999 in so far as it states that

"Where the distinctive elements of a registered trademark consist of or

include words, the trade mark may be infringed by spoken use of the

words as well as their visual representation and the reference in this

section to the use of the mark shall be construed accordingly." In view of

the fact that the Legislature has included the spoken use of the words as

an infringing activity, it is clearly evident that the pronunciation of the

trade mark is clearly a determining criteria in ascertaining infringement.

16. Section 29(2) of the Trademarks Act, 1999 recognizes the

concept of likelihood of association, wherein the consumer is likely to

believe that the Defendants‟ mark has an association/affiliation/

connection with the Plaintiff or that the Defendants have the approval of

the plaintiff to use the said trade mark.

17. The plaintiff has produced certain documents which includes

internet downloads in order to show that the plaintiff‟s trade mark is

pronounced as ZEN-YAH.

A CD containing sound clips downloaded from the internet is

also filed and placed in court which is prima facie evidencing that the

plaintiff‟s trade mark is pronounced as ZEN-YAH. The affidavit of the

investigator who visited the plaintiff‟s store at DLF Emporio Mall in

Vasant Kunj, New Delhi and conducted the investigation has been filed

alongwith annexures. It is stated in the affidavit that during the course of

the investigation, the staff at the said store consistently pronounced the

said trade mark as ZEN - YAH.

18. The Division Bench of the Bombay High Court in the case of

Encore Electronics Ltd. v Anchor Electronics and Electricals Pvt. Ltd.

2007 (35) PTC 714 has dealt with a similar point about the phonetically

similarity between two trade marks "Encore" and "Anchor". The same

reads as under:-

"The phonetic similarity between "Anchor" on the one hand and "Encore" on the other, is striking. The two marks are phonetically, visually and Page 0646 structurally similar. The overall impression conveyed by a mark as a whole, has to be assessed in evaluating whether the mark of

the defendant is deceptively similar to the mark of the plaintiff. Phonetic similarity constitutes an important index of whether a mark bears a deceptive or misleading similarity to another. The phonetic structure indicates how the rival marks ring in the ears. Courts in a country such as ours whose culture is enriched by a diversity of languages and scripts have to consider how the rival marks are spelt and pronounced in languages in which they are commonly used. Counsel for the Defendant submits before the Court that whiel "Encore" is a word of Frensh origin, „Anchor‟ is a word of English usage and the pronounciation of the two words must differ. The submission misses the point. The case before the Court is not about how an Englishman would pronounce „Anchor‟ or a Frenchman would pronounce "Encore". The Court must consider the usage of words in India, the manner in which a word would be written in Indian languages and last but not least, the similarity of pronunciation if the rival marks are used. The manner in which the „a‟, as in „anchor‟ is pronounced by an Englishman or Notting Hill may well appear to be discerning traveller to be distinct from a Frenchman‟s pronunciation of the „e‟ in „encore‟ on a fashionable by lane near Champs Elysees. That is no defence to an action in our Courts for passing off. For the ordinary consumer in Ahmedabad and her counterpart in Mumbai‟s shopping streets, the „a‟ in „anchor‟ and the „e‟ in „encore‟ are perilously and deceptively similar. The Court must assess the make up of an Indian consumer and, associated with that, the cultural traits that underlie the spelling and pronunciation of words. The case of the Plaintiff is that in Gujarti as well as in Hindi, there is no even a subtle distinction between the manner in which „Anchor‟ and "Encore" would be pronounced and we find merit in the submission. The overall impact in terms of phonetical usage is one of striking similarity. The test is not whether a customer who wishes to buy the product of the plaintiff is likely to end up buying the product of the Defendant. The test is whether the ordinary customer is likely to be led to believe that „Encore‟ is associated with the mark and the trading style of the plaintiff. The phonetical, visual and structural get up of the two words is so strikingly similar as to lead to a likelihood of deception. The question of deception is a matter for the Court to determine, particularly at the interlocutory stage. (para 9).

19. Thus, in Section 29 (2) is read with Section 29 (9) the

legislature has included the spoken use of the words also, therefore, it is

evident that the pronunciation of the trade mark is clearly a determining

criteria in ascertaining infringement.

20. In the case of Laxmikant V.Patel vs Chetanbhat Shah &

Anr.; (2002) 3 SCC 65, the Supreme Court observed:

"The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."

The Apex Court further observed:

"Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently."

21. In the case of Aristoc Ld.v. Rysta Ld.;62 RPC 65 wherein the

trade mark „RYSTA‟ was held to be deceptively similar to „ARISTOC‟

the House of Lords came to the conclusion that both sounds are very

similar. Similarly in the case of M/s Pidilite Industries Pvt. Ltd v M/s

Mittes Corporation and another; 1989 PTC 151 this Court held that

the trade mark "Trevical" is similar to "Fevicol". Further in the case of

The Bombay Oil Industries v Ballrapur Industries Ltd.; AIR 1989 Del

77 decided by this Court, it was held that the two trade marks "Shapola"

and "Saffola" are similar. In the case of Bulova Accutron Trade Mark

Application; [1969] RPC 102, the trade mark „Bulova Accutron was

held to be similar to „Accurist‟. Similarly, in Amritdhara Pharmacy v.

Satya Deo Gupta, AIR 1963 SC 449, the Apex Court held that the trade

mark „Amritdhara‟ is similar to „Lakshmandhara‟. In yet another case of

Tata Iron & Steel Co. Ltd. v Mahavir Steels & others; 47(1992) DLT

412 this court came to the conclusion that the trade mark „Tisco‟ and

„Fisco‟ are deceptively similar and issued the interim injunction against

the defendant. Similar view was taken by the Division Bench of this

court in the case of Castrol Ltd. and Another Vs. A.K. Mehta and Anr.

reported in 2003(27)PTC600(Del) wherein two marks CASTROL and

BESTROL were held to be similar. In the case of Oil Mill Co. vs. Wipro

Ltd.; AIR 1986 Delhi 345, it has been held by this Court that the two

trade marks Dubble and Bubble are deceptively similar with each other.

22. In the case of K.R. Chinna Krishna Chettiar v. Sri Ambal &

Co. and Anr.; AIR 1970 SC 146, wherein the rival trade marks of the

parties were Ambal and Andal, the Supreme Court held that there is

striking similarity and affinity of sound between the two trade marks.

The Supreme Court in paras 10 and 12 of the judgment considered the

ocular comparison test which read as under:

"10. There is no evidence of actual confusion, but that might be due to the fact that the appellant‟s trade is not of long standing. There is no visual resemblance between the two marks, but ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. There is a close affinity of sound between Ambal and Andal.

12. The name Andal does not cease to be deceptively similar because it is used in conjunction with a pictorial device. The case of Decordova v. Vick Chemical Coy., 1951-68 RPC 103 is instructive. From the Appendix printed at page 270 of the same volume it appears that Vick Chemical Coy. were the proprietors of the registered trade mark consisting of the work "Vaporub" and another registered trade mark consisting of a design of which the words "Vicks Vaporub Salve" formed a part. The appendix at page 226 shows that the defendants advertised their ointment as "Karsote vapour Rub". It was held that the defendants had infringed the registered marks. Lord Radcliffe said: "...... a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features."

23. Learned counsel for the plaintiff has also argued on the

question of dilution. He argued that the defendant‟s use of the impugned

marks in the course of the same trade and for the same products is bound

to cause serious prejudice to the ability of the trade mark ZEGNA to

exclusively identify the plaintiff and its group companies and their

products leading to grave dilution of the trade mark ZEGNA.

Additionally, the Defendant‟s use of the impugned marks is bound to lead

to tarnishment, diminution, weakening and eventual erosion of the

goodwill, reputation and the positive associations linked to the plaintiff‟s

trade mark ZEGNA.

24. In the most recent case referred as T.V. Venugopal v

Ushodaya Enterprises Ltd. and Anr.; (2011) 4 SCC 85 it has been held

by the Hon‟ble Supreme Court that permitting the appellant to carry on

his business in the name of "Eenadu" in the State of Andhra Pradash

would lead to eroding extraordinary reputation and goodwill acquired by

the respondent company over a passage of time. It is further submitted by

him that that the sophistication of the consumer cannot be a determining

factor in ascertaining the likelihood of confusion, especially since a

consumer who is sophisticated with respect to one particular field may

not necessarily be sophisticated with respect to all fields.

25. The other aspect of the matter is that the plaintiff is also

holding the registration of mark जेनिया in Hindi. The plaintiff also

sought protection on that registration. Learned counsel for the defendants

however argued that the said mark is registered in favour of the plaintiff

but the same has not been used as of today and is liable to be rectified

under Section 47 of the Trademarks and Merchandise Marks Act. Let

me now deal with the said aspect of the matter.

26. In the present case, it is the admitted position that the

defendants have not challenged the registration of the mark जेनिया (in

Hind). Therefore, the registration granted in favour of the plaintiff at this

stage is a valid registration.

27. The legal effect of Registration

Registration of a mark gives the registered proprietor the

exclusive right to use the registered mark (Section 28 of the Trademark

Act, 1999) and the use of an "identical" or "deceptively similar" mark by

another without any permission/authority amounts to infringement of the

registered mark (Section 29 of the Act).

A. In the case of Kaviraj Pandit Durga Dutt Sharma v.

Navaratna Pharmaceutical Laboratories; AIR 1965 SC 980, it was

held:

"The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods"

"If the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial."

B. In the case of American Home Products v. Mac

Laboratories; AIR 1986 137 it was held as follows :

"When a person gets his trade mark registered, he acquires valuable rights by reason of such registration. Registration of his trade mark give him the exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person using a mark which is the same or deceptively similar to his trade mark, he can project his trade mark by an action for infringement in which he can obtain injunction...."

C. In the case of National Bell Co. v. Metal Goods Mfg.

Co.; 1971 AIR SC 898, it was held as under:

"On registration of a trade mark the registered proprietor gets under section 28 the exclusive right to the use of such trade marks in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of any infringement of such trade mark."

D. In the case of Avis International v. Avi Footwear; AIR

1992 Delhi 22 it was observed as follows :

"In my view violation of the exclusive statutory rights is illegal activity, to hold otherwise will negate the statutory provisions of the Trade and Merchandise Marks Act."

28. It is settled law that in interlocutory proceedings, the Court is

entitled to proceed upon the footing that a mark which is registered is

prima facie valid. (See Chelton v. Goldston; (1957) RPC 416)

29. On a motion for interlocutory injunction it is not the practice

to consider the validity of registration of plaintiffs‟ mark. (see

Hindustan Embroidery v. Ravindra; 76 Bombay LR 146 and

Automatic Electric Limited v. R.K. Dhawan & Anr.; 1999 PTC (19)

81)

30. In the case of Midas Hygiene v. Sudhir Bhatia and Ors.;

2004 (28) PTC 121 (SC), it was observed as follow :

"The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest."

31. The learned counsel appearing on behalf of the defendants has

referred to the following cases in support of his submissions:

a. Johann A Wulfing v. C.I. & P Labs: AIR 1984 Bom 281. b. American Home Products v. Mac Laboratories: AIR 1986 SC 137.

c. F. Hoffimann-La Roche and co. Ltd. v. Geoffrey Manners and Co. Private Ltd: AIR 1970 SC 2062. d. Gufic Limited & Anr. v. Clinique Laboratories, Llc & Anr.: (2010) 43 PTC 788 (Del) (DB).

e. Cadila Labs v. Dabur India Ltd.: (1997) Arb LR 704. f. Biofarma & Anr. v. Sanjay Medical Store & Anr., 1998 PTC (18) 671.

g. Kewal Krishan Kumar v. Rudi Roller Flour Mills: (2007) 35 PTC 848 (Del) (DB).

h. Lowenbrau AG v. Jagpin Breweries Ltd: (157) 2009 DLT 791.

32. After having considered the judgments (a) and (b) referred to

by the learned counsel for the defendants, it appears that most of the

judgments filed are pertaining to the pharmaceutical preparation where

the drugs are schedule drugs and are sold under the Doctors prescription,

and as per settled law totally a different test of comparison has been

applied. Therefore, it is not necessary that the said decisions are

applicable in the present case.

33. The other decision referred to by the defendant Kewal

Kishore Kumar v. Rudi Roller Flour Mills (supra) is also not applicable

to the facts of the present case as in the said para it was clearly stated

that the trademark of the appellant was descriptive. The relevant para of

the judgment reads as under:

"The mark applied for by the respondent No.1 consists of the device „Trishul‟ and „Damru‟ and the phrase „Shiv Shakti‟ is descriptive of the goods of the respondent No.1. The aforesaid words „Shiv Shakti‟ when read as a whole would be a descriptive word and is having a distinct prefix of Shiv, a God of Hindu mythology. There also cannot be a monopoly with regard to the word „Shakti‟ which is descriptive word. Trade mark of the appellant is „Shakti Bhog Atta‟ to which the appellant can claim exclusive use but not to the word „Shakti‟, more so when „Shakti‟ is used with „Shiv‟ would depict the power and strength of a religious God."

34. Under these circumstances, considering the entire facts and

law applicable to the present, I am of the considered view that the

defendants‟ use of the impugned trade mark „JENYA‟ in the course of

the same trade and for the same product is likely to cause confusion and

deception and it is deceptively similar with the registered trade mark of

the plaintiff i.e. ZEGNA which is also pronounced as ZEN-YAH and

जेनिया registered in Hindi. Therefore, the defendants are restrained from

using the trade mark „JENYA‟ in respect of readymade garments, shirts,

trousers and any other similar goods as that of the plaintiff and the ex-

parte ad-interim order granted on 15.03.2011 is confirmed. However, the

defendants shall be entitled to use the trade mark "MENYA" in relation

to these goods as no objection has been raised by the plaintiff with regard