Delhi High Court

Five Star Health Care P. Ltd. vs Tara Chand Jadwani on 3 June, 2011

Author: Manmohan Singh

         THE HIGH COURT OF DELHI AT NEW DELHI

        I.A No. 16928/2009 in C.S.(OS) No. 2513/2009

                       Judgment pronounced on : 03.06.2011

Five Star Health Care P. Ltd.                      ......Plaintiff
                      Through: Mr. Neeraj Grover, Adv.

                       Versus
Tara Chand Jadwani                                ....Defendant
                       Through: Mr. Satish Kumar, Adv.

CORAM:-
HON'BLE MR JUSTICE MANMOHAN SINGH

1.

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

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

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

MANMOHAN SINGH, J

1. By this order, I shall dispose of the I.A No. 16928 filed by the

plaintiff in the present suit for permanent injunction, passing off,

restraining infringement of trade mark, unfair competition, delivery up,

and recovery of damages.

2. Plaintiff is a private limited company incorporated under the

Companies Act, 1956 having its registered office at A-70, Naraina

Industrial Area, Phase -I, New Delhi. The plaintiff is engaged in the

business of manufacturing and marketing/sale of cosmetics and personal

care products.

3. It is averred in the plaint, that the plaintiff has established

sales network throughout the country as the goods of the plaintiff are sold

in all parts of the country. Plaintiff has continuously been using the trade

name FIVE STAR as an essential part of its corporate name since 2005

and the plaintiff has also been using trade mark 5 STAR as its inherently

distinctive trade mark in relation to the sale of its goods i.e. shaving

creams, soaps, lotions, face creams and shampoos etc. since the year

2006. It is also averred in the plaint that prior to the plaintiff, its

predecessor in interest and title M/s Vinkam Products, (sole

proprietorship concern of Mr. Vinod Kumar Manchanda), the father Mr.

Sumit Manchanda and Mr. Sachin Manchanda, directors of the plaintiff

company was using the same trade mark since the year 1976.

4. In the year 2001, the plaintiff‟s predecessor also started using

STAR NATURALS which is duly registered under the Trade Marks

Act, 1999 and by virtue of registration, the plaintiff acquired statutory

rights for it under the provisions of Trade & Merchandise Marks Act,

1958, the details of registrations are given as under :

 Trade Mark Registration                   Class      In      respect       of
            No./dated                                 (goods)
 5 STAR     415314/ 30.12.1983             3           shaving       creams,
                                                      soaps & lotions
                                                      included in class 3
 5 STAR          495778/10.08.1988         3          shaving        creams,
                                                      soaps & lotions,
                                                      tooth            paste,
                                                      shampoos and face
                                                      creams included in
                                                      class 3
 STAR     1291773/22.06.2004               3          Cleaning        agents,
 NATURALS                                             soaps,     detergents,
                                                      shaving creams, face
                                                      creams, face powder,
                                                      hair     dyes,      hair
                                                      lotions, hair oil, after
                                                      shave          lotions,
                                                      toothpaste and other
                                                      cosmetic      products
                                                      included in class 3

5. It is mentioned in the plaint that the plaintiff‟s request on the

form TM-23 for recording of the name of the plaintiff company as the

subsequent proprietor of the aforesaid registrations on the basis of the

assignment deed dated 06.02.2006 is pending with the Registrar of Trade

Marks.

6. The defendant who is engaged in the same business and is

also marketing and selling similar goods had been the distributor of the

plaintiff and M/s Vikram Products between the period 1980-2008 and

selling the products of the plaintiff and its predecessor-in-interest.

7. In November, 2009 the plaintiff came to know that a shaving

cream is being sold in the whole sale market like Sadar Bazar and

Paharganj, Delhi bearing mark 6 STAR. The said product shows the

name of the proprietorship concern of the defendant as the manufacturer.

According to the plaintiff, the mark used by the defendant is deceptively

similar to the plaintiff‟s mark 5 STAR. The impugned product of the

defendant is even packed in similar packaging as that of the plaintiff with

colour combination of BLUE, RED & WHITE.

8. As per the plaintiff, the adoption of the trade mark 6 STAR

was not the first or the only attempt of the defendant to infringe the trade

mark of the plaintiff but even in the year 2006 the defendant had filed an

application for the registration of the mark identical to the trade mark

VINKAM of M/s Vinkam Products, the sister concern of the plaintiff in

relation to the closely related goods. Thereafter, in 2008, the defendant

again started manufacturing its goods under the mark VILCOM, which

was phonetically similar to VINKAM, thus, M/s Vinkam Products

immediately filed a suit to restrain the defendant from using the mark

VILCOM and the defendant in appeal filed by the plaintiff offered to

change the mark VILCOM to VELCOME. The time sought by the

defendant of four weeks was granted to exhaust its pending stocks.

9. The defendant submits that it has conceived and adopted the

trade mark 6 STAR having distinguished colour scheme, pattern and

artistic work which is different from the trade mark, colour scheme,

pattern and artistic work of the plaintiff and there is no likelihood of any

confusion among the consumers with respect to the trade marks „5

STAR' and '6 STAR'.

10. Further, it is stated, that the trade mark '6 STAR' is being

used by the defendant for the last four to five years and it is the prior user

of the said trade mark. The source of the product is clearly written on the

packaging material and the writing style of '6 STAR' is entirely different

from the trade mark of the plaintiff.

11. The digit 6 used by the defendant is apparently different from

that digit 5 of the plaintiff, therefore, there is no scope of any confusion

either visually or phonetically or by pronunciation. The colour

combination, getup of the packets, the packaging material, even the font

of the trade mark of the defendant is easily distinguishable from that of

the plaintiff. The question of infringement of trade mark under these

circumstances does not arise.

12. It is submitted by the defendant, that the court has to compare

the marks as well as get up of the product as a whole to see whether the

totality of the impression given both orally as well as visually is such that

it is likely to cause confusion and in the present case it can be said that

there is no likelihood of any mistake or confusion in the trade marks of

the plaintiff and the defendant. The word STAR and the number 5 are

common and generic and as such the plaintiff cannot have any exclusive

right over them.

13. I have heard the counsel of both the parties. In order to

establish the case of infringement, the plaintiff in such an action has to

show :-

" (a) that his mark has been registered and he is the registered proprietor thereof, and (b) that an identical mark or a mark which is deceptively similar to the registered mark has been used by the defendant.

The expression "deceptively similar" has been defined in Section 2(h) of the Trade Marks Act, 1999, as follows:-

"A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles the other mark as to be likely to deceive or cause confusion."

Therefore, in case the aforesaid requirement made out by the

plaintiff by showing that the defendant's mark is identical with or so

nearly resembles the plaintiff's mark either visually, phonetically or

otherwise that it is likely to deceive or cause confusion in relation to the

goods in respect of which the plaintiff got his mark registered. Further, if

the essential features of the trade mark of the plaintiff have been adopted

by the defendant, the fact that there are additional features in the

defendant's mark, the same is immaterial in case the essential features

have been copied. Then action for infringement is made out as by virtue

of registration, the party gets exclusive and statutory rights under Section

28 of the Act and the registration granted is to be taken as prima facie

evidence of validity.

14. For answering the defence raised by the defendant in the

present case as to whether the mark used by the defendant is deceptively

similar. The Division Bench of this court in the case of M/s. Atlas Cycle

Industries Ltd. Vs. Hind Cycles Limited, ILR 1973 Delhi 393 has

examined the similar question very thoroughly while dealing with the two

rival trade marks Royal Star and Eastern Star of the parties and has

come to the conclusion that the trade mark adopted and used by the

defendant Royal Star is similar to plaintiff‟s trade mark Eastern Star.

15. Hon‟ble Division Bench has discussed a catena of decisions

in this regard. Some of them are as follows :

In Messrs Modi Sugar Mills Limited v. Tata Oil Mills Ltd;

Co. A.I.R. 1943 Lahore 196, Tek Chand and Sale JJ pointed out at page

202 that "what has to be seen is not that there is a possibility of

confusion, but that the resemblance is such that there is a reasonable

probability of deception". The learned Judges, relying on the observation

of the Privy Council in Thomas Bear and Sons (India) Ltd. v. Pravag

Narain, Air 1940 Privy Council 86, approving the test laid down by

Niamat Ullah J. in Thomas Bear and Sons (India) Ltd. v. Pravag Narain,

Air 1935 Allahabad 7, observed that "in the judging of the probability of

deception, the test is not whether the ignorant, the thoughtless, or the

incautious purchaser is likely to be misled, but we have to consider the

average purchaser buying with ordinary caution.

In AIR 1951 Bombay James Chadwick & Bros. Ltd. v. The

National Sewing Thread Co. Ltd; Chagla CJ and Bhagwati; referring to

the words "likely to deceive or cause confusion" in section 10 of the

Trade Marks Act, 1940, observed at page 152 as follows :-

"Now in deciding whether a particular trade mark is likely to deceive or cause confusion, it is not sufficient merely to compare it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the former trade mark. What is important is to find out what is the distinguishing or essential feature of the trade mark already registered and what is the main feature or the main idea underlying that trade mark, and if it is found that the trade mark whose registration is sought contains the same distinguishing or essential feature or conveys the same idea, then ordinarily the Registrar would be right if he came to the conclusion that the trade mark should not be registered. The real question is as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing. It is impossible to accept that a man looking at a trade mark would take in every single feature of the trade mark. The question would be, what would he normally retain in his mind after looking at the trade mark? What would be the salient feature of the trade mark which in future would lead him to associate the particular goods with that trade mark?"

In Amritdhara Pharmacy v. Satya Deo Gupta, reported in

AIR 1963 SC 449 the question was whether the trade name

"Lakshmandhara" was likely to deceive the public or cause confusion to

trade in view of the trade name "Amritdhara" which had already been

registered, as a trade name. The Supreme Court referring to the earlier

decision in Corn Products Refining Co. v. Shangrila Food Products Ltd;

A.I.R. 1960 Supreme Court142(8), held that the overall similarity of the

two composite words must be considered, that the question has to be

approached from the point of view of a man of average intelligence and

imperfect recollection, and that to such a man the overall structural and

phonetic similarity of the two names "Amritdhara" and

"Lakshmandhara" was likely to deceive or cause confusion.

16. Further in the case of Atlas Cyle Industries (supra) it was held

as under :

"The principles which emerge from the above decisions may be stated as follows:

In an action for an alleged infringement of a registered trade mark, it has first to be seen whether the impugned mark of the defendant is identical with the registered mark of the plaintiff. If the mark is found to be identical, no further question arises, and it has to be held that there was infringement. If the mark of the defendant is not identical, it has to be seen whether the mark of the defendant is deceptively similar in the sense that it is likely to deceive or cause confusion in relation to goods in respect of which the plaintiff got his mark registered. For that purpose, the two marks have to be compared, "not by placing them side by side, but by asking itself whether having due regard to relevant surrounding circumstances, the defendant's mark as used is similar to the plaintiff's mark as it would be remembered by persons possessed of an average memory with its usual imperfections", and it has then to be determined whether the defendant's mark is likely to deceive or cause confusion. For such determination, the distinguishing or essential features (and not every detail) of the two marks and the main idea, if any, underlying the two marks which a purchaser of average intelligence and imperfect memory would retain in his mind after seeing the marks, have to be noticed. It has then to be seen whether they are broadly the same or there is an overall similarity or resemblence, and whether the resemblence or similarity is such that

there is a reasonable probability of deception or confusion. In doing so, the approach has to be from the point of view of purchaser of average intelligence and imperfect memory or recollection, and not an ignorant, thoughtless and incautious purchaser. In an action for passing off, the test for deceptive similarity, i.e. as to the likelihood of confusion or deception arising from similarity of the marks or the get up, packing, etc. is practically the same as in an action for infringement (vide Edwards v. Dennis, (1885)30 Ch.D.454 471 Lambert and Butler Ltd. v. Goodbody, (1902) 19 R.P.C 377, 383 Addley Bourne v. Swan & Edgar Ltd; (1903)20 R.P.C 105, 117 and Tavener Rut ledge Ltd. v. Specters Ltd. (1959) R.P.C 355,360), except that it has also to be seen whether the defendant's mark or the get up, packing, etc. of his goods has basides the essential features of the plaintiff's mark or goods, any additional features which distinguish it from the plaintiff mark or goods, and whether it is likely of reasonably probable that the defendant can pass off his goods as those of the plaintiff to a purchaser of average intelligence and imperfect memory or recollection.

In the present case the appellant (plaintiff) alleged that the trade mark "ROYAL STAR" of respondent 1 (defendant 1) was an infringement of his registered trade mark "EASTERN STAR", and in the alternative that respondent 1 (defendant 1) has been using its trade mark "ROYAL STAR" for the purpose of passing off and enabling others to pass off their cycles as the cycles of the appellant (plaintiff). We shall first consider the case of infringement. The registered trade marks of the appellant (plaintiff) are a device (monogram) registered as No-12052 and (2) the words "EASTERN STAR" registered as No. 11426.

So far as the word mark "EASTERN STAR" is concerned, the question for determination is whether the use of the words "ROYAL STAR" for the cycles of respondent 1 (defendant 1) constitutes an infringement of the appellant's (plaintiff's) trade mark "EASTERN STAR". The learned District Judge took the view that though the word "STAR" is common to both the names, the names, taken as a whole i.e. "EASTERN STAR" and "ROYAL STAR" are substantially different and there is no likelihood of deception or confusion. The learned District Judge referred to certain observations in the decisions in Pinto v. Badman, 8 R.P.C.181,(13) and The Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd.(1955) 2, Supreme Court Reports 252,(14) to the effect that a label "does not consist of each particular part of it, but consists of the combination of them all," and "where a distinctive label is

registered as a whole, such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole." He next referred to the observations on page 657 of Kerlay on Trade Marks, 7th Edition, which go to show that it was held in a case that "Night Cap" was not too near "Red Cap" or "Mother Red Cap" as to cause confusion; the decision in Messrs Modi Sugar Mills Ltd. (supra) that the word mark "Kotogem" did not constitute an infringement of the word mark "Coccogem"; the observation in Schweppes Ltd. v. Gibbons, 22 R.P.C.607 that a label has to be taken as a whole and too much stress cannot be laid on slight similarity in one small part of it; and the decision of the Privy Council in Coca-Cola Company of Canada Ltd. (supra) that the use of the name of "Pepsi Cola" was not an infringement of the trade mark "Coca Cola"; and then merely observed that he was of the view the use of the name "ROYAL STAR" by respondent 1 (defendant 1) for its cycles did not infringe the appellant's (plaintiff's) trade mark "EASTERN STAR". We find it difficult to agree with the said view. It is true that the words "EASTERN STAR" and "ROYAL STAR" have to be taken as a whole. But, the learned District Judge, in our opinion, failed to note that the view taken by a Court on the facts in any particular case cannot afford any proper guidance. As observed by the Supreme Court in Amritdhara Pharmacy (supra), "every case must depend on its own particular facts, and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion".

17. In applying the said principles in the present case, it has to be

noted that the meaning of the word "STAR" has no relation with goods

in question/digit 5. Similarly, the word "STAR" has, in their meaning, no

relation to the goods digit 6. They are thus not descriptive of goods to

which they are applied. The essential feature of two sets of the trade

mark is STAR which gives the same sound when pronounced. Thus, a

person of average intelligence and imperfect memory is very likely to

remember mark "STAR", and is thus likely to be deceived or confused

between the two marks, therefore, in my view both marks have phonetic

similarity, and consequently their use in respect of the same kind of goods

is likely to cause deception or confusion.

18. As per the settled law, it appears that the use of the mark