The Proctor & Gamble Co. & Anr. vs Shipra Laboratories (Through: Mr ...
2011 Latest Caselaw 5521 Del

         THE HIGH COURT OF DELHI AT NEW DELHI

%           Judgment Reserved on:   8th November, 2011
            Judgment Pronounced on: 17th November, 2011
+ CS(OS) 516/2004

THE PROCTOR & GAMBLE CO. & ANR.         ..... Plaintiffs
                Through: Mr. Pravin Anand, Adv.
                     versus


SHIPRA LABORATORIES:                              .... Defendants
(Through: Mr Trailesh Patel)
                        Through: None.
CORAM:-
HON'BLE MR JUSTICE V.K. JAIN

1.

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

2. To be referred to the Reporter or not? No

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

V.K. JAIN, J

1. Plaintiff No.1 is a Company registered in USA,

whereas plaintiff No.2 is a Company registered in India.

Plaintiff No.2 has been licensed by plaintiff No.1 to sell and

distribute its products in India. The plaintiff Companies are

engaged in manufacture and sale of various products

including perfumery, cosmetics, toilet preparations and

goods, essential oils, anti perspirants, dentifrices,

shampoos, toilet oils, toilet articles etc. and are selling their

products under various trademarks including the

trademark „SAFEGUARD‟ which is being used in respect of

toilet soaps. The trademark „SAFEGUARD‟ was registered in

USA on 19th May, 1964 and is stated to be registered in 90

other countries including India. In India, the trademark

„SAFEGUARD‟ is registered in favour of the plaintiff in class

3 vide registration No.867980, with effect from 26 th July,

1999. It is alleged that the plaintiff is advertising its

products being sold under the trademark „SAFEGUARD‟ in

magazines such as TIMES, NEWSWEEK, READER‟S

DIGEST, etc. which have wide circulation in India. It is also

alleged that Indians visiting neighbouring countries such as

Singapore, Philipines, Japan, Indonesia, Hong Kong,

Malaysia, Thailand, Korea, China and Taiwan, are quite

often purchasing the product being sold under the

trademark „SAFEGUARD‟ and distribute them in India. It is

also claimed that the plaintiff proposed to introduce

Safeguard soap in India on a large scale, through plaintiff

No.2 Company. It is also claimed that the soap, being sold

by the plaintiff, under the trademark „SAFEGUARD‟ is a

cleansing product, containing a sanitizer system which is

effective against skin germs and bacteria.

Trichlorocarbanilide (TCC) and Triclosan or Irgasan(TCS)

which are being used as ingredients while manufacturing

the soap being sold under the trademark have anti-bacterial

properties.

2. The defendant, which is a partnership firm, is

engaged in the manufacture and sale of cosmetics, toilet

preparations and goods including antiseptic cream which it

is selling under the brand name SAFE GUARD. The case of

the plaintiff is that use of the trademark SAFEGUARD by

the defendant amounts to infringement of its registered

trademark SAFEGUARD and passing off the product of the

defendant as that of the plaintiff. This is also the case of

the plaintiff that since it is not unusual for manufacturers

of cosmetics and toiletry products to market other products

falling under the same class, under a common brand, use of

the mark SAFEGUARD by the defendant, in relation to

antiseptic cream, amounts to a misrepresentation to the

purchasing public and is likely to create confusion in the

mind of the consumer with respect to the source of the

product. It is pointed out for example that soap as well as,

antiseptic lotions, shaving cream etc. are being sold under

the trademark DETTOL and OLD SPICE, antiseptic cream

and prickly heat power are being sold under the name

„BOROPLUS‟ and antiseptic cream, tooth paste and tooth

powder are being sold under the trademark „VICCO‟. The

plaintiff has sought an injunction restraining the defendant

from manufacturing, selling or advertising any cosmetic

product including antiseptic cream under the name mark

„SAFEGUARD‟ or any other mark identical with or

deceptively similar to the aforesaid mark. Initially, the

plaintiff had also sought damages, rendition of accounts

and delivery up of infringing material but these reliefs were

given up during the course of arguments.

3. The written statement of the defendant is not on

record. It, however, appears that copy of the written

statement of defendant Shipra Laboratories was supplied to

the plaintiffs who also filed a replication to that. A copy of

that written statement has been provided to the Court by

the learned counsel for the plaintiff on 08th November, 2011.

It appears from a perusal of the copy provided by the

plaintiffs that the plea taken by the defendant was that it

was a partnership firm engaged in the business of

manufacturing and marketing Ayurvedic Antiseptic creams

under the trademark SAFE GUARD since 1983. It was

claimed that the defendant has been advertising its product

through various media, including newspapers having

circulation in various part of the country and, therefore, the

plaintiffs knew, at least since 1985 about use of the

trademark SAFE GUARD by the defendant. It was alleged

that the words SAFE GUARD is a highly descriptive word

having direct reference to the character and quality of the

goods, conveying the meaning "to protect, to guard". It was

also stated that if at all, the plaintiffs can claim monopoly in

respect of use of the trademark SAFE GUARD only in

relation to their anti bacterial medicated soap and not in

relation to any other product. It is also alleged that toilet

soaps in respect of which the trademark SAFEGUARD is

being used by the plaintiffs are altogether different product

from ayurvedic antiseptic cream being manufactured and

sold by the defendant. It is also alleged that neither TCC

nor TCS is used as an ingredient in the Antiseptic cream

being manufactured and sold by the defendant, which is an

ayurvedic product.

4. The following issues were framed on the pleadings

of the parties, though the fact remains that no written

statement was on record at any point of time prior to 08th

November, 2011.

1. Whether the plaintiff No. 1 is the proprietor of trade mark SAFEGUARD in relation to goods mentioned in the plaint?

2. Whether the trade mark SAFEGUARD has lost its primary descriptive connotation and has acquired secondary meaning so as to distinguish goods and business of plaintiff in India?

3. Whether the trade mark SAFEGUARD of the plaintiff has got goodwill In India and if so, in relation to which goods?

4. Whether the defendant had knowledge about the plaintiff‟s trade mark SAFEGUARD prior to its adoption by the defendants in relation to antiseptic cream of its manufacture and sale?

5. Whether the use of trade mark SAFEGUARD by the defendants in relation to antiseptic cream is bound to cause confusion and deception amongst the public amounting to passing off?

6. Whether the trade mark SAFEGUARD has been used by the defendant No. 2 in relation to antiseptic cream since 1983? OPD

7. Whether the plaintiffs have committed misrepresentations and suppression of material facts?

8. Whether the plaintiffs have suffered any damages on account of use of trade mark SAFEGUARD by the defendants?

9. Whether the plaint has been signed and verified by an authorized and competent person in law?

10. Whether the suit suffers from acquiescence and latches?

11. Relief.

5. No evidence has been led by the defendant to prove

that the mark "SAFE GUARD" is being used by it since

1983, in relation to antiseptic cream. As noted earlier, even

the written statement of defendant is not on record. The

issue is decided against the defendant and in favour of the

plaintiffs.

6. Since neither any written statement nor any

evidence has been led by the defendant, the issue is decided

against the defendant and in favour of the plaintiff.

Issues No. 1,2,3,4,5,8,9,11

7. At the time, this suit was instituted on 28th April,

1995, the plaintiffs did not hold any registration in India in

respect of the trademark "SAFEGUARD" and, therefore, the

case of the plaintiffs was based on passing off. However,

during pendency of the suit, the plaintiff No. 1 has been

granted registration of the trademark "SAFEGUARD" vide

Registration No. 867980 in Class 3 for bleaching

preparations; soaps, perfumery, essential oils, cosmetics,

hair lotions, dentifrices. The Legal Proceedings Certificate

filed by the plaintiff in this regard is Ex.PW-1/10. It is not

in dispute that the defendant has been using the trademark

SAFE GUARD for sale of antiseptic creams. There is

practically no difference between the trademark

SAFEGUARD and SAFE GUARD since no person is likely to

notice the space between the words SAFE and GUARD. The

trademark being used by the defendant-company is,

therefore, absolutely identical, besides being deceptively

similar to the registered trademark of the plaintiff-company.

The case of the plaintiff is that it has been selling soaps in

India as well, under the trademark SAFEGUARD though

such sales do not appear to be substantial in terms of

numbers. In any case, the defendant has no legal right to

use the trademark SAFEGUARD or any other mark identical

or deceptively similar to this registered trademark of the

plaintiff in respect of any of the products for which

registration has been granted. Soap being one of such

products, the defendant-company has no legal right to sell

soaps in India under the trademark which it is presently

using to sell antiseptic ayurvedic cream. Though there is no

evidence of the defendant-company actually selling soaps in

India under the trademark SAFE GUARD, the apprehension

of the plaintiffs that unless an appropriate injunction is

granted in this regard, nothing prevents the defendant from

selling soaps under the impugned trademark, in order to

encash upon the goodwill and reputation which the

trademark SAFEGUARD enjoys in a large number of

countries, cannot be said to be totally unfounded. In this

regard, it has come in the deposition of Mr Amit Vyas,

attorney of plaintiff No.2-company that it is not uncommon

for the manufacturers selling products such as antiseptic

creams to start selling antiseptic bacterial soaps using the

same trademark which they have been using in respect of

antiseptic cream and/or related products. In this regard, it

has been pointed out that soap as well as antiseptic

germicidal are being sold under the brand name Dettol,

whereas antiseptic cream and prickly heat power are being

sold under the brand name BoroPlus. Toothpowder and

toothpaste are being sold under a common trademark Vicco,

whereas aftershave lotion, talc, hair cream and shaving

cream are being sold under a common brand name Old

Spice. Ex.PW-1/20 are the photographs showing soap and

antiseptic germicidal under the brand name Dettol. Ex.PW-

1/21 is the photograph showing antiseptic cream and

prickly heat powder being sold under the trademark

BoroPlus. Ex.PW-1/22 is the photograph showing

toothpowder and toothpaste being sold under the mark

Vicco and Ex.PW-1/23 is the photograph showing

aftershave lotion, talc, hair cream and shaving cream being

sold under the name Old Spice. In view of the practice

prevailing in the trade, as is indicted from various products

being sold under the above-referred common brand names,

there is a likelihood of the defendant-company starting sale

of antiseptic soap in India under the trademark SAFE

GUARD so as to encash not only upon the goodwill which

the defendant-company enjoys in respect of antiseptic

ayurvedic cream being sold by it, but also to take advantage

of the tremendous goodwill and reputation which the brand

name SAFEGUARD of the plaintiff enjoys. The plaintiffs,

therefore, are entitled to an appropriate injunction,

restraining the defendant from using the trademark SAFE

GUARD in respect of the product for which registration has

been granted to it by Registrar of Trademarks in India. The

issues are decided accordingly.

ORDER

During the course of arguments, the learned

counsel for the plaintiffs did not press for rendition of

accounts, delivery of infringing material and damages and

confined his prayer to grant of injunction against use of the

mark SAFE GUARD or any other mark identical or

deceptively similar to the trademark SAFEGUARD of the

plaintiff. A decree for perpetual injunction is, therefore,

passed, restraining the defendant from selling, offering for

sale or advertising soap or any other product in respect of

which registration has been granted to the plaintiff-

company vide Registration No. 867980, under the

trademark SAFE GUARD or any other mark which is

identical with or deceptively similar to the registered

trademark SAFEGUARD of the plaintiff-company.

There shall be no order as to costs. Decree sheet

be prepared accordingly.

(V.K. JAIN) JUDGE NOVEMBER 17, 2011/'sn'/bg