Delhi High Court
M/S Sohan Lal Nem Chand Jain vs Triden Group And Others on 3 October, 2011
Author: G. S. Sistani
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 796/2010 & I.A. No. 8984/2011
% Judgment dated 03.10.2011
M/S SOHAN LAL NEM CHAND JAIN ..... Plaintiff
Through: Mr.Vijay Pal Dalmia, and Mr.Vikas Mishra,
Advocates
versus
TRIDENT GROUP & ORS ..... Defendant
Through: Mr.Pinaki Mishra, Sr. Advocate with
Ms.Anushree Tripathi, Advs.
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
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 in the Digest? YES
G.S.SISTANI, J. (ORAL)
I.A.Nos.5388/2010 (O 39 R 1 & 2), 6365/2010 (O 39 R4) and
13435/2010 (O 39 R4).
1. Plaintiff has filed the present suit for permanent injunction to restrain
infringement, passing off, dilution, unfair trade competition, damages and
mandatory injunction.
2. While issuing summons in the suit and notice in the application, this
Court had restrained the defendants from manufacturing, selling,
distributing the photocopier or stationery items under the brand
name „LOTUS‟ or any other deceptively similar trademark separately
or in any other form.
3. Subsequently the defendant filed an application under Order XXXIX
Rule 4 CPC for vacation of the interim order. The interim order was
modified by a Division Bench of this Court by permitting the
defendant to sell the existing stock. The Division Bench directed
this court to hear and dispose of the application under Order 39
Rules 1 & 2 CPC filed by the plaintiff and the application under Order
39 Rule 4 CPC filed by the defendant.
4. Both the applications have been heard together and are being
disposed of by a common order.
5. The case of the plaintiff as set out in the plaint is that the plaintiff is
a partnership firm registered under the Partnership Act, 1932. The
plaintiff was incorporated in the year 1947 and since then is actively
involved in manufacturing, processing and packaging all kinds of
paper, stationery for school, office as well as paper for computer
printers under the trade mark/name/brand name "LOTUS". The
plaintiff, thus, claims to have established itself as India‟s best loved
brand. The portfolio of the plaintiff includes high quality paper,
stationery like note books, long books and drawing books amongst
others. Plaintiff further claims that it has played a pivotal role in
popularizing the mark LOTUS in relation to various types of paper
products. On account of its long, continuous, extensive and
uninterrupted user, plaintiff has acquired an enviable goodwill and
reputation with respect to its products under the trade mark LOTUS.
6. Counsel for the plaintiff submits that over the years the plaintiff has
earned an enviable reputation in the aforesaid business and has
been supplying goods to its customers at competitive prices. The
plaintiff is trading all around the country and the plaintiff‟s
customers are not limited to stationery and general shops but they
directly cater to schools and corporate organizations by undertaking
manufacturing of stationery as per their requirements. It is
contended that the products of the plaintiff are available at all the
leading organized retail chains under the trade mark "LOTUS" which
is one of the highest selling brands of paper stationery in the
country, solely for the reason of its superior quality, fine grade
paper. It is contended that the plaintiff manufactures wide range of
papers stationery products used by customers in schools,
educational institutes as well as business organizations and offices.
Products of the plaintiff include:
School Stationery
Copies
Registers/ Long Book
Drawing & Sketch Book
Drawing Sheets & File
Office Stationery
Long Books
Writings Pads
Spiral Pads
Paper for Computer printer
Bill books, challan books, duplicate books etc.
Flip charts
Fax rolls
7. The above mentioned paper products are manufactured and sold
under the trade mark of the plaintiff "LOTUS". It is further
submitted that the name "LOTUS" with the passage of time has
become synonymous for quality, superiority and the latest designs.
8. Mr.Dalmia, learned counsel for the plaintiff submits that the
products of the plaintiff are sold through its dealers and agents
throughout India including Delhi as the plaintiff has developed a
large and efficient distribution system covering 15 States of India,
including Delhi, Haryana, Uttar Pradesh, Uttaranchal, Punjab,
Rajasthan, H.P. & J&K and all major cities of Bihar, Assam,
Chatisgarh. Plaintiff also has tie-ups with organized retail chains
such as Pantaloon‟s Fair Price, BILT‟s P3 stores, Office 1 Super
Stores and 99 General Stores. Leaned counsel also contends that
the unmatchable reputation of the plaintiff is evident from the sale
figures of the plaintiff, which are given as under:
YEAR SALES IN RUPEES
1990-91 2250898
1991-92 2619085
1992-93 3403059
1993-94 4910877
1994-95 6421409
1995-96 11142642
1996-97 15492110
1997-98 16426011
1998-99 23084237
1999-00 23808311
2000-01 26047036
2001-02 34632978
2002-03 44364273
2003-04 54314970
2004-05 56540862
2005-06 62603162
2006-07 67553521
2007-08 78341790
2008-09 101234044
9. Mr.Dalmia, next submits that plaintiff has spent a considerable sum
of money on advertisement of its products under the trademark
"LOTUS". The advertisement expenses of the plaintiff ranging from
the year 2001 to 2009 are given below:
YEAR AMOUNT
2000-01 401,844.20
2001-02 547,014.00
2002-03 281,072.00
2003-04 543,863.85
2004-05 235,787.00
2005-06 586,453.43
2006-07 225,529.00
2007-08 422,980.00
2008-09 808,405.00
TOTAL 4,052,948.48
10. It has been strongly urged before this court that the plaintiff is the
prior user and lawful proprietor of the trademark "LOTUS" and
owing to the extensive and uninterrupted user and dealer network
throughout India since the year 1947 the mark "LOTUS" with
respect to goods manufactured by the plaintiff has come to be
associated with the plaintiff and none else. Plaintiff has not only
registered its mark "LOTUS" which is prominent and distinctive of its
products, the plaintiff has also been very vigilant with respect to its
brand value which the plaintiff has created due to its long and
uninterrupted user of over 62 years in the market.
11. Mr.Dalmia, also contends that the plaintiff adopted the trademark
"LOTUS" for its goods at a time when no such similar mark was
being used in relation to the goods under their mark and thus by its
prior adoption, the plaintiff has acquired "proprietary rights" in the
same. The plaintiff applied for the trademarks as detailed below,
which stand duly registered:
S.No. TRADEMARK REGISTRATION CLASS STATUS
NO.
1. LOTUS 226903 16 Registered
2. LOTUS 1193412 16 Registered
12. Copies of certificates of registration dated 30.4.1965 and 21.4.2003
have been filed on record.
13. Counsel for the plaintiff also submits that the registration of the
trademark of the plaintiff is valid and subsisting. Counsel next
submits that in order to reach every nook and corner of the globe in
relation to its product under the trademark "LOTUS" the plaintiff has
obtained registration of its domain name www.lotusstationery.com
in the year 2001 which is similar to its registered trademark
"LOTUS". The plaintiff has, since the registration of its domain
name, been actively advertising and marketing its products through
its website.
14. The grievance of the plaintiff is that sometime in the month of April,
2010, during the course of its business, the plaintiff received a flyer
announcing the introduction and launch of paper under the brand
„LOTUS‟. On acquiring the knowledge of launch of its product under
a similar / deceptively similar trademark „LOTUS‟ and infringement
of intellectual property rights, the plaintiff started enquiring about
the details of the defendants. On further enquiries the plaintiff
learnt that by a letter dated 19.03.2010 the defendants informed
the National Stock Exchange of India that they have launched their
new copier paper under the brand „LOTUS‟. Plaintiff also found
information regarding the launch of the defendants‟ copier paper
from a website. Copy of which has been relied upon by the plaintiff
and filed on record. Plaintiff also purchased a packet of A-4 size
paper under the brand „LOTUS‟ from the open market which had
been produced by the defendant under the trademark „LOTUS‟
which is similar/ deceptively similar to the trademark "LOTUS" of the
plaintiff. It is submitted that defendants No.1 and 2 have with
malafide intention and keeping in mind the potential of the
plaintiff‟s trademark which is 62 years old and also knowing the
enviable goodwill and reputation of the plaintiff in the market with
regard to its products and knowing the acceptability and the respect
commanded for their quality, have decided to make quick money by
passing off stationery products under the same /deceptively similar
trademark.
15. Mr.Dalmia strongly contends before this court that the defendants
no.1 and 2 are misleading customers and general public by using
the impugned trademark "LOTUS" which is not only resulting in
infringement of the registered trademark of the plaintiff, but also
passing off and an impression is being created in the mind of the
trade and public that the copier paper of the defendants has some
connection with the plaintiff whose products have a ready market.
Learned counsel submits that the defendants have adopted the
impugned trademark "LOTUS" dishonestly out of greed and with a
view to take advantage and trade upon the established goodwill,
reputation, statutory, proprietary and common law rights of the
plaintiff in the trade mark/ label "LOTUS". Leaned counsel also
submits that the defendants impugned adoption and use have
resulted in deception and confusion in the market and among the
purchasing public who belong to all segments of society besides
resulting in heavy financial losses to the plaintiff which are
incapable of being assessed in monetary terms and the damage to
goodwill of the plaintiff‟s brand which is more than 62 years old.
16. It is strongly urged that the plaintiff is the prior user, lawful
proprietor and the legal owner of the trademark "LOTUS", besides
that the plaintiff‟s mark LOTUS has by virtue of long, continuous and
extensive use since the year 1947 acquired distinctiveness and the
same is associated with the plaintiff alone. Counsel also submits
that on account of prior, long, continuous and extensive use, the
trademark of the plaintiff has acquired distinctiveness and the
defendant cannot be permitted to pass off its goods/ products, as
those of the plaintiff and dilute the distinctiveness of the said mark.
17. Mr.Dalmia next submits that misrepresentation of the defendant is
apparent and is sufficient enough to deceive or confuse the public at
large and the adoption of the trademark "LOTUS" by the defendant
is a clear mala fide attempt to ride on the popularity of the plaintiff‟s
trademark "LOTUS" with a view to gain more business and unjustly
enrich themselves. In these circumstances the plaintiff submits that
the defendants are jointly and severally liable for infringement of
trademark, passing off, acts of unfair competition and dilution.
Leaned counsel also submits that the acts of unfair competition are
evident from the fact that the defendants are using the said
trademark in order to unfairly compete with the plaintiff by using a
trademark which is similar/ deceptively similar to the plaintiff‟s
trademark for the same products and amongst the same trade
channels and members of the public. Mr.Dalmia submits that by
using the plaintiff‟s trademark defendants are making false
representations to the members of the public that goods and
products of the defendants have some affiliation or nexus with the
plaintiff. Learned counsel submits that even in public interest the
defendants should not be allowed to use the mark "LOTUS" or any
other similar or deceptively similar mark so that there is no
deception amongst public on account of misrepresentation. The
acts of the defendants are also resulting in dilution, blurring and
tarnishing the plaintiff‟s goodwill and reputation which has been
established over a long period of time and by use of the mark
„LOTUS‟ by the defendant would result in erosion of the
distinctiveness of the plaintiff‟s mark "LOTUS".
18. Mr.Dalmia also submits that the stand taken by the defendants that
application for registration filed by them would show that along with
the artistic figure the defendants have sought registration of the
word LOTUS along with the word TRIDENT can be of no benefit to
the defendants as in deciding a question with regard to similarity
between the two marks, the marks have to be considered as a
whole and that the addition of a descriptive word or a pre-fix or
suffix will not change the nature and name of the substantial
trademark which is "LOTUS" in the present case. Counsel has relied
upon Amritdhara Pharmacy v. Satya Deo Gupta AIR 1963 SC
449 and more particularly paragraphs 7 to 13, which are reproduced
below:
"7. It will be noticed that the words used in the sections and
relevant for our purpose are "likely to deceive or cause
confusion." The Act does not lay down any criteria for
determining what is likely to deceive or cause confusion.
Therefore, 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. On an application to
register, the Registrar or an opponent may object that the
trade mark is not registerable by reason of clause (a) of s. 8,
or sub-s. (1) of s. 10, as in this case. In such a case the onus
is on the applicant to satisfy the Registrar that the trade
mark applied for is not likely to deceive or cause confusion.
In cases in which the tribunal considers that there is doubt as
to whether deception in likely, the application should be
refused. A trade mark is likely to deceive or cause confusion
by the resemblance to another already on the Register if it is
likely to do so in the course of its legitimate use in a market
where the two marks are assumed to be in use by traders in
that market. In considering the matter, all the circumstances
of the case must be considered. As was observed by Parker,
J. in Pianotist Co.'s Application (1906) 23 R.P.C. 774 which
was also a case of the comparison of two words -
"You must take the two words. You must Judge them,
both by their look and by their sound. You must consider
the goods to which they are to be applied. You must
consider the nature and kind of customer who would be
likely to buy those goods. In fact you must consider all
the surrounding circumstances and you must further
consider what is likely to happen if each of those trade
marks is used in a normal way as a trade mark for the
goods of the respective owners of the marks.
For deceptive resemblance two important questions are : (1)
who are the persons whom the resemblance must be likely
to deceive or confuse, and (2) what rules of comparison are
to be adopted in judging whether such resemblance exists.
As to confusion, it is perhaps an appropriate description of
the state of mind of a customer who, on seeing a mark thinks
that it differs from the mark on goods which he has
previously bought, but is doubtful whether that impression is
not due to imperfect recollection. (See Kerly on Trade Marks,
8th edition, p. 400.)
8. Let us apply these tests to the facts of the case under
our consideration. It is not disputed before us that the two
names 'Amritdhara' and 'Lakshmandhara' are in use in
respect of the same description of goods, namely, a
medicinal preparation for the alleviation of various ailments.
Such medicinal preparation will be purchased mostly by
people who instead of going to a doctor wish to purchase a
medicine for the quick alleviation of their suffering, both
villagers and townsfolk, literate as well as illiterate. As we
said in Corn Products Refining v. Shangrila Food Products
Ltd. [1960]1SCR968 , the question has to be approached
from the point of view of a man of average intelligence and
imperfect recollection. To such a man the overall structural
and phonetic similarity of the two names 'Amritdhara' and
'Lakshmandhara' is, in our opinion, likely to deceive or cause
confusion. We must consider the overall similarity of the two
composite words 'Amritdhara' and 'Lakshmandhara'. We do
not think that the learned Judges of the High Court were right
in saying that no Indian would mistake one for the other. An
unwary purchaser of average intelligence and imperfect
recollection would not, as the High Court supposed, split the
name into its component parts and consider the etymological
meaning thereof or even consider meanings of the
composite words as 'current of nectar' or 'current of
Lakshman'. He would go more by the overall structural and
phonetic similarity and the nature of the medicine he has
previously purchased, or has been told about, or about which
has otherwise learnt and which he wants to purchase. Where
the trade relates to goods largely sold to illiterate or badly
educated persons, it is no answer to say that a persons
educated in the Hindi language would go by the etymological
or ideological meaning and, see the difference between
'current of nectar' and 'current of Lakshman'. Current of
Lakshman in a literal sense has no meaning to give it
meaning one must further make the inference that the
'current or stream' is as pure and strong as Lakshman of the
Ramayana. An ordinary Indian villager or townsmen will
perhaps know Lakshman, the story of the Ramayana being
familiar to him, but we doubt if he would etymologine to the
extent of seeing the so called ideological difference between
'Amritdhara' and 'Lakshmandhara'. He would go more by the
similarity of the two names in the context of the widely
known medicinal preparation which he wants for his
ailments.
9. We agree that the use of the word 'dhara' which
literally means 'current or stream' is not by itself decisive of
the matter. What we have to consider here is the overall
similarity of the composite words, having regard to the
circumstance that the goods bearing the two names are
medicinal preparations of the same description. We are
aware that the admission of a mark is not to be refused,
because unusually stupid people, "fools or idiots", may be
deceived. A critical comparison of the two names may
disclose some points of difference, but an unwary purchaser
of average intelligence and imperfect recollection would be
deceived by the overall similarity of the two names having
regard to the nature of the medicine he is looking for with a
somewhat vague recollection that he had purchased a
similar medicine on a previous occasion with a similar name.
The trade mark is the whole thing - the whole word has to be
considered. In the case of the application to register
'Erectiks' (opposed by the proprietors of the trade mark
'Erector') Farwell, J. said in William Bailey (Birmingham) Ltd.'s
Application (1935) 52 R.P.C. 137 :
"I do not think it is right to take a part of the word and
compare it with a part of the other word; one word must
be considered as a whole and compared with the other
word as a whole,....... I think it is a dangerous method to
adopt to divide the word up and seek to distinguish a
portion of it from a portion of the other work".
10. Nor do we think that the High Court was right in thinking
that the appellant was claiming a monoploy in the common
Hindi word 'dhara'. We do not think that is quite the position
here. What the appellant is claiming is its right under s. 21 of
the Act, the exclusive right to the use of its trade mark, and
to oppose the registration of a trade mark which so nearly
resembles its trade mark that it is likely to deceive or cause
confusion.
11. A large number of decisions relating to the use of
composite words, such as Night Cap and Red Cap, Limit and
Summit, Rito and Lito, Notrate and Filtrate, etc. were, cited
in the High Court. Some more have been cited before us.
Such decisions, examples of deceptive resemblance arising
out of contrasted words, have been summarised at page 429
to 434 in Karly on Trade Marks, 8th Edition. No useful
purpose will be served by referring to them all. As we have
said earlier, each case must be decided or its own fact. What
degree of resemblance is necessary to deceive or cause
confusion must the nature of things be incapable of
definition a priori.
12. As to the decisions in annexure 'A', it has been argued
before us that they were not at all admissible by reason of
Sections 40 to 43 of the Indian Evidence Act, 1872. On behalf
of the appellant it has been contended that they were
admissible under s. 13 of the Evidence Act as showing the
particular instances in which the appellant claimed its right
under s. 21 of the Act. We consider it unnecessary to decide
this question for the purposes of this case because those
decisions even if they are admissible under s. 13 do not
throw any light on the question whether 'Amritdhara' and
'Lakshmandhara' so nearly resemble each other as to cause
deception or confusion. That is a question which we must
determine as a case of first impression and irrespective of
the earlier decisions.
13. On a consideration of all the circumstances, we have
come to the conclusion that the overall similarity between
the two names in respect of the same description of goods
was likely to cause deception or confusion within the
meaning of s. 10(1) of the Act and Registrar was right in the
view he expressed. The High Court was in error taking a
contrary view."
19. It is also submitted that the question whether the mark is similar
and/ or deceptively similar has to be considered from the point of
view of a common man of average intelligence and imperfect
recollection, and therefore, to such a man the average structural
and phonetic similarities of the two names "LOTUS" as used by the
plaintiff and the LOTUS premium copier paper and the artistic figure
of LOTUS by trident and artistic figure as used by the defendant is
likely to deceive and cause confusion. It is thus contended that an
unvary purchaser of average intelligence would not split the name
into its component parts and would go more by the overall
structural and phonetic similarity and the nature of product he has
previously purchased or has been told about or about which he has
otherwise learnt and which he wants to purchase. Counsel contends
that the words cannot be dissected for considering as to whether or
not the said word is visually and phonetically similar. It is submitted
that it is more likely to create confusion in the mind of the
customers as in the present case, the plaintiff and the defendants
cater to same type of customers from same trade channels and
counter of sale and deal in the same type of goods.
20. Learned counsel for the plaintiff has also relied upon H.M. Saraiya
& Ors. Vs. Ajanta India Ltd. & Anr. 2006 (33) PTC volume 4
(BOMBAY) and more particularly paragraph 37 which reads as
under:
37. Thereafter he has relied upon the judgment of the learned
Single Judge of this Court in the case of Eagle Potteries Private
Ltd. v. Eagle Flask Industries Pvt. Ltd. AIR 1993 Bom 185,
particularly paras, 40 and 43 of the said judgment read as
under:
"40. Mr. Daruwalla also relied upon the passage from
Kerry's Law of Trade Marks and Trade Names, 12th
Edition, paras 10-12 which is as under:
The test to be applied:
The test whether or not goods or services are "of
the same description" would seem to be supplied
by the question -- Are the two sets so commonly
dealt in by the same trader that his customers,
knowing his mark in connection with one set and
seeing it used in relation to the other, would be
likely to suppose that it was so used also to
indicate that they were his? The matter should be
looked at from a business and commercial point of
view. As Viscount Dunedin said in the "Nuvol."
"The material consideration arising in connection
with the registration of trade marks are practical."
To the cases on this subject, the off-quoted
proposition that each was decided on its own facts
is peculiarly applicable and the observations
below should be read with this in mind.
It would seem clear that, before goods or services
can be of the same description, there must be a
description that covers both, although this is not a
sufficient test for a description may be too wide to
be usable.
In "Panda" Romer, J. cl-assified the various
matters to be taken into account in deciding
whether goods are goods of the same description
into three cl-asses-
(a) the nature and composition of the goods;
(b) the respective uses of the articles;
(c) the trade channels through which the
commodities respectively are bought and
sold.
Mustard and semolina were not goods of the same
description; although they were sold side by side in the
same shops and both could be properly treated as
articles of food, both being used in cooking, their real
nature was different, "one falling under the description
of a condiment and the other under the description of a
cereal":
As between goods on the one hand and services on the
other, the question is whether or not they are
"associated"; and by statutory definition this is so if
(and, it would seem, only if);
it is likely that those goods might be sold or otherwise
traded in and those services might be provided" by the
same business, and so with descriptions of goods and
descriptions of services.
The first part of this definition is clear, the reference to
"descriptions" of goods and services less so.
Fortunately, the need to compare a description of goods
with a description of services, as distinct from
comparing particular items within those descriptions,
should rarely if ever arise.
43. From the above authorities and the commentary,
the following proposition emerges, i.e. each case has to
be decided on its own particular facts. In all cases of this
kind, nature and composition of goods, their respective
uses and functions and trade channel through which
they have been marketed and sold have to be
considered. Depending on the goods in question, one or
two of these characteristics may have greater
significances or emphasis on the other. The matter must
be considered in a business sense. Also it must be
remembered that the said Act has been enacted to
ensure that the registered proprietor of mark has a
monopoly right to that mark. Sections 46 and 56 are
part of the Legislation and are thus subject to the
incident of this legislation. The question, therefore,
whether or not goods are of the same description must
necessarily be answered in the context of that purpose
and the goods of the same description must not be
given a restrictive construction. In any event the goods
of the same description cannot be restricted to goods
which are substantially analogous and must include
goods which are commonly used as substitute or
alternate for one another.
21. Counsel for the plaintiff also relied on Parle Products (P) Ltd. Vs.
J.P & Co. AIR 1972 SC 1359, wherein the Supreme Court has
observed as under:
"8. According to Karly‟s Law of Trade Marks and Trade (9 th
edition paragraph 838):
Two marks, when placed side by side, may exhibit many and
various differences yet the main idea left on the mind by both
may be the same. A person acquainted with one mark, and
not having the two side by side for comparison, might well be
deceived, if the goods were allowed to be impressed with the
second mark, into a belief that he was dealing with goods
which bore the same mark as that with which he was
acquainted. Thus, for example, a mark may represent a game
of football; another mark may show players in a different
dress, and in very different positions, and yet the idea
conveyed by each might be simply a game of football. It
would be too much to expect that persons dealing with
trademarked goods, and relying, as they frequently do, upon
marks, should be able to remember the exact details of the
marks upon the goods with which they are in the habit of
dealing. Marks are remembered rather by general
impressions or by some significant detail than by any
photographic recollection of the whole. Moreover, variations
in detail might well be supposed by customers to have been
made by the owners of the trade mark they are already
acquainted with for reasons of their own.
9. It is therefore clear that in order to come to the
conclusion whether one mark is deceptively similar to another,
the broad and essential features of the two are to be
considered. They should not be placed side by side to find out
if there are any differences in the design and if so, whether
they are of such character as to prevent one design from
being mistaken for the other. It would be enough if the
impugned mark bears such an overall similarity to the
registered mark as would be likely to mislead a person usually
dealing with one, to accept the other if offered to him.............
................... After all, an ordinary purchaser is not
gifted with the powers of observation of a Sherlock
Homes.
................ It is further submitted that the persons who would
be deceived in the present case are, of course, the purchasers
of the goods and it is the likelihood of their being deceived.
The resemblance may be phonetic, visual or in the basic idea
represented by the plaintiff‟s mark. It is pertinent to note that
the purpose of the comparison is for determining whether the
essential features of the plaintiff‟s trade mark are to be found
in that used by the defendants."
22. Counsel for the plaintiff has also relied upon Cadila Health Care
Ltd. Vs. Cadila Pharmaceuticals Ltd. (2001) 5 SCC page 73, to
draw the attention of the court to various factors which are to be
considered in an action of passing off, and more particularly
paragraph 42 in support of his submission, which is reproduced
below:
"42. Broadly stated, in an action for passing-off on the basis of
unregistered trade mark generally for deciding the question of
deceptive similarity the following factors are to be considered:
(a) The nature of the marks i.e. whether the marks are word
marks or label marks or composite marks i.e. both words and
label works.
(b) The degree of resembleness between the marks,
phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used
as trade marks.
(d) The similarity in the nature, character and performance of
the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods
bearing the marks they require, on their education and
intelligence and a degree of care they are likely to exercise in
purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the
goods.
(g) Any other surrounding circumstances which may be
relevant in the extent of dissimilarity between the competing
marks."
23. Mr.Dalmia, learned counsel for the plaintiff relying on the
submissions made and law laid down prays that the interim order
dated 27.04.2010 be confirmed and the application filed by the
defendant under Order 39 Rule 4 CPC be dismissed.
24. Mr.Pinaki Mishra, learned senior counsel for the defendants, submits
that claim of the plaintiff is entirely frivolous, misconceived and
deserves to be dismissed. Senior counsel further submits that the
present suit has been filed by the plaintiff only to pressurize the
defendants and in fact the interim injunction granted by this Court
in favour of the plaintiff is liable to be dismissed on the following
grounds:
"a. The defendants have been using the mark LOTUS prior
to the year 2006: the defendants thus have been using
the mark for more than 5 years now;
b. The plaintiff‟s annual sales figures even by the plaintiffs
own estimates as evident from the plaint is
approximately Rs.10 crores, while the defendants
annual sales figures is Rs.2500 crores; and the product
under mark "LOTUS" has made business of
Rs.1,07,41618.09 (Rupees One Crore, Seven Lakhs and
Forty One Thousand) within a single month of its launch;
it is thus clear that the defendants do not need to ride
piggy-back on the alleged goodwill of the plaintiff;
c. The annual turnover of the defendants is more than
Rs.2500 crores;
d. There are several other entities who have registration of
the mark "LOTUS" in their favour in the same relevant
class i.e. Class 16 of Schedule IV of the Trade Marks Act,
1999 ("the Act"); there is no exclusivity or monopoly
over the mark "LOTUS" in favour of the plaintiff;
e. There are several other users of the mark "LOTUS" for
products including stationery as well as for papers;
there is no exclusivity or monopoly over the mark
"LOTUS" in favour of the plaintiff;
f. The products of the plaintiff are entirely different as
compared to the defendants‟ products and the plaintiff
admittedly does not even manufacture copier papers
and deals only in exercise books and notebooks;
g. The target customer segment is totally distinct. While
the plaintiff seems to be targeting students, the
defendants‟ targets are photocopiers and cyclostyling
shops and corporate houses; additionally the defendants
products are premium products i.e. they are priced
higher compared to similar products by other
manufacturers in the relevant segment;
h. The packaging of the defendants distinctly and
prominently displays and carries the defendant groups
logo and mark TRIDENT thus there cannot be any
confusion about the source;
i. There is absolutely no similarity between the plaintiff‟s
packaging and the defendants‟ packaging.
j. No monopoly can be claimed over the word "LOTUS",
since it is a "common descriptive word" used in the
industry. The reliance in this regard is placed on a
computer generated public search report which has
already been placed on record before this Hon‟ble Court
by the defendants."
25. Learned senior counsel for the defendants has strongly urged before
this Court that defendants are a Rs.2500/- crores industrial Group
known as the Trident Group and carrying on business and have
integrated manufacturing facilities for paper, yarn, textiles,
chemicals, power generation, etc. Defendants have diversified and
expanded manifold and have businesses spanning across 65
countries and have employed more than 10,000 persons and is one
of the fastest growing companies in India. Senior counsel further
submits that defendant no.2 is the flagship company of defendant
no.1 Group, which is a global enterprise with an annual turnover of
Rs.1800 crores, and is among the top five global terry towel giants
of the world. Senior counsel next submits that defendant no.2 was
incorporated in the year 1990 and is carrying on the business and
has integrated manufacturing facilities for yarn, textiles, chemicals,
power generation, etc. Defendant no.2 is one of the world‟s largest
agro-based paper manufacturers and also largest yarn producers in
India. Defendant no.2 has manufacturing facilities in India and also
abroad. Defendants have been lauded continuously and are proud
recipients of Best Supplier Quality Award for the years 2008-2009 by
IKEA, Highest Global Exports- Bronze trophy by TEXPROCIL, ICSI
National Award for Excellence in Corporate Governance in 2006;
„International Supplier of the Year‟ award for 2001, 2003, 2005 and
2006 by Wal-Mart, USA; „Supplier of the Year Award‟ for 2006 by JC
Penney Corporation and IKEA TASA; „Best Supplier of the year‟
Quality Award, and many more.
26. Learned senior counsel for the defendants has drawn the attention
of the Court to the annual turnover of the defendants and the
amounts spent towards business promotion, advertisement and
endorsement of its goods and services since the year 1995, which
have been reproduced in the written statement
27. Learned senior counsel for the defendants submits that defendants
have an extensive business, which supplies and manufactures
various products and the trade mark LOTUS has been adopted and
used by defendant no.2 as a brand name for its textile products like
Terry Towels (bath towel, hand towel, etc.). These products were
launched in the beginning of the year 2008 and the total sales till
the year ending 2009 were almost Rs.2.00 crores. Senior counsel
further submits that defendants have been using the mark LOTUS
for their various sister entities like M/s Lotus Infrabuild Limited, M/s
Lotus Integrated Tex Park Limited and M/s Lotus Processors Private
Limited and thus the defendants have been using the trade mark
LOTUS well before the year 2006. Senior Counsel next contends that
in continuation of the trade mark LOTUS that was already in use by
the defendants, the defendants decided to launch a brand of copier
paper product with the trade mark LOTUS well before the year 2008
and one of the group companies, M/s Madhuraj Foundation Limited,
applied for trade mark registration of the mark LOTUS on 11.9.2008
under Class 16. Defendants launched their copier paper products
formally on 18.3.2010 with the trade mark LOTUS. It is, thus,
contended that defendants have been using the trade mark
continuously and extensive and thus the adoption of the mark
LOTUS for copier was completely bona fide and honest and in
furtherance of the mark being used for other products with regard
to towels, textile goods, rugs, retails in home textile goods
constructions and development of projects in textile sector, business
management and copier paper.
28. Learned senior counsel for the defendants submits that by
launching the LOTUS copier paper defendant no.2 has joined the
league of companies offering products in the high-end and eco-
friendly copier paper segment. Senior counsel further submits that
defendant no.2 has set itself a target of achieving an incremental
turnover of Rs.100/- crores in the current copier paper business in
the next one year. Senior counsel also submits that the defendant
has already taken aggressive measures to promote the impugned
product and more than Rs.19,57,601.00 was incurred on the launch
of the product on 18.3.2010 when there was wide coverage by the
electronic and print media.
29. Learned senior counsel for the defendant contends that along with
the impugned mark the group‟s other mark and logo i.e. Trident is
also prominently displayed with the impugned mark. Learned senior
counsel further contends that the impugned product has made a
business of Rs.1,07,41,618.09 within one and a half months of sale.
30. Mr.Pinaki Mishra, learned senior counsel for the defendants, submits
that the impugned product of defendant no.2 after its launch in
2010 immediately received public acclaim, which is evident from the
sales figures. Learned senior counsel for the defendants has drawn
the attention of the Court to the fact that defendant no.2 along with
its group companies have also applied to the Trade Mark Registry
for registration of the trade mark LOTUS for the impugned product
in its name and under Class 16 on 11.9.2008 and on subsequent
dates. Eleven applications for registration of the trade mark LOTUS
and ARTISTIC FIGUIRE in various Classes for different goods and
services including copier paper in various Classes of Schedule 4 of
the Act have been filed. Learned senior counsel for the defendants
submits that the applications would show that along with the artistic
figure the plaintiff has sought registration of the word LOTUS along
with the word TRIDENT. Learned senior counsel further submits that
plaintiff was well aware of the wide range of activities of the
defendants as the plaintiff has been associated with the defendants
for a long time and has been purchasing paper from the defendants
for manufacturing of its exercise books and other paper based
stationery.
31. Learned senior counsel for the defendants has laid stress on the fact
that the plaintiff does not manufacture paper, however, it buys
paper from defendant no.2 and thereafter makes its notebooks and
other stationery items and, thus, the plaintiff having been
associated with defendants is bound to have known about the usage
of the mark LOTUS by the defendants for its various products and
group companies. Plaintiff has clearly acquiesced the usage of the
mark LOTUS by the defendants and, thus, at this stage plaintiff
cannot claim that defendants cannot use the mark LOTUS.
32. It is contended by learned senior counsel for the defendants that
defendants have been using the impugned mark since the year
2006 and have applied for registration of the same under various
Classes of Schedule 4 of the Act and have also applied for
registration under Class 16 of Schedule 4 in the year 2008. Senior
counsel further contends that since the plaintiff has been dealing
with the defendants, it ought to have known about the use of the
impugned mark by the defendants. Senior counsel, thus, contends
that acquiescence i.e. sitting by, when another is allegedly invading
the rights and spending money on it, is a course of conduct
inconsistent with the claim for exclusive rights in a trade mark.
Elaborating his arguments further senior counsel contends that if
the plaintiff stood by knowingly and let the defendants build up an
important trade until it had become necessary to crush it, then the
plaintiff would be stopped by their acquiescence. In support of this
proposition, learned senior counsel for the defendants has relied
upon Khoday Distilleries Ltd. v. Scotch Whisky Association,
reported at (2008) 10 SCC 723, more particularly paragraphs 46 and
47, which are reproduced below:
"46. This Court also in M/s. Power Control Appliances and
others v. Sumeet Research and Holdings, [ (1994) 2 SCC 448
] held :-
26. Acquiescence is sitting by, when another is
invading the rights and spending money on it. It is a
course of conduct inconsistent with the claim for
exclusive rights in a trade mark, trade name etc. It
implies positive acts; not merely silence or inaction such
as is involved in laches. In Harcourt v. White Sr. John
Romilly said: „It is important to distinguish mere
negligence and acquiescence. Therefore, acquiescence
is one facet of delay. If the plaintiff stood by knowingly
and let the defendants build up an important trade until
it had become necessary to crush it, then the plaintiffs
would be stopped by their acquiescence. If the
acquiescence in the infringement amounts to consent, it
will be a complete defence as was laid down in Mouson
(J.G.) & Co. v. Boehm. The acquiescence must be such
as to lead to the inference of a licence sufficient to
create a new right in the defendant as was laid down in
Rodgers v. Nowill."
47. The question again came up for consideration before this
Court in Ramdev Food Products (P) Ltd. v. Arvindbhai
Rambhai Patel and others, [(2006) 8 SCC 726] wherein it was
held :-
"103. Acquiescence is a facet of delay. The principle of
acquiescence would apply where: (i) sitting by or
allowing another to invade the rights and spending
money on it; (ii) it is a course of conduct inconsistent
with the claim for exclusive rights for trade mark, trade
name, etc."
The delay by itself, however, may not be necessarily a ground
for refusing to issue injunction. It was opined :
"106. The defence of acquiescence, thus, would be
satisfied when the plaintiff assents to or lays by in
relation to the acts of another person and in view of that
assent or laying by and consequent acts it would be
unjust in all the circumstances to grant the specific
relief."
It was furthermore observed :-
"108. Specific knowledge on the part of the plaintiff and
prejudice suffered by the defendant is also a relevant
factor."
33. Learned senior counsel for the defendants submits that since the
plaintiff was all along aware that defendants were using the
impugned mark LOTUS with respect to other products, there is an
inordinate delay in bringing an action for infringement of trade mark
and, thus, the discretionary relief for injunction may be denied. In
support of his submission, learned senior counsel for the defendants
has relied upon Allied Blenders and Distillers v. Paul John,
reported at 2008 (38) PTC 568 (Del), more particularly paras 1, 6 &
18, which are reproduced below:
"1. By a common order dated 11.7.2008, five applications, three
applications filed in CS(OS) No.383/2007 and two applications filed in
CS(OS) No.1058/2002 have been disposed of resulting in the appellant
who was the plaintiff in both suits not being held entitled to any
interim injunction against the respondents who were the defendants in
the two suits. The result is that the respondents have been permitted
to sell whisky under the trade-mark/trade-name „ORIGINAL CHOICE‟.
However, the respondents have been directed to maintain accounts in
respect of the sales and make the sale available to the Court as and
when so directed.
6. The learned Trial Judge has declined the interim injunction as prayed
for by the appellant holding that the appellant was aware since 1995
that the defendant was marketing whisky under the trade-mark/trade-
name "ORIGINAL CHOICE" and that delay and acquiescence being
major considerations in an action for passing off, the case of the
appellant was seriously dented. With respect to the quantum of sale of
whisky effected by the respondents since 1996 it has been held that
the same show that the respondents grew substantially and the
appellant sat by watching the respondent grow in the market and
hence was not entitled to the discretionary relief of injunction. The
second reason given by the learned Trial Judge is that the labels used
by the appellant and the respondents for sale of their product do not
give the impression that the bottles and the labels of the respondents
could be passed off as the bottle and label of the appellant.
18. We need not note the plethora of authorities on the issue
whether acquiescence or an inordinate delay in bringing an action for
injunction can non-suit the plaintiff. We note the latest the
pronouncement on the issue by the Hon'ble Supreme Court being the
decision reported as 2008 AIR SCW 4560 Khoday India Ltd. Vs. Scotch
Whisky Asson. & Ors. It has been categorically held that where
acquiescence is established or there is an inordinate delay in bringing
an action for infringement of a trade-mark or passing off, the
discretionary relief of injunction may be denied."
34. Adding another aspect to his argument, Mr. Pinaki Mishra, learned
senior counsel for the defendants, submits that the above facts
would show that use of the impugned mark by the defendants is
bona fide and honest. Defendants adopted the mark prior to 2006
and have been continuously using it as all the companies of the
defendants with a trade mark LOTUS have been in business. The
business of manufacturing terry towels alone brings a turnover of
more than Rs.840 crores to defendant no.2 while it is not in dispute
that copier paper was launched only in the year 2010.
35. Another argument, which has been raised by learned senior counsel
for the defendants, is that defendants have been able to carve out
special circumstances under Section 12 of the Act i.e. the
defendants are using its trade mark LOTUS; the impugned product
is not similar to the goods registered by the plaintiff in Clause 16 as
the stationery used in schools and offices are different and distinct
than the copier paper, which is the defendants‟ goods and are
meant for cyclostyling and photocopying at shops and printers used
in corporate houses. It, is, thus, contended that copier paper
nowhere figures in the list of products sold by the plaintiffs and,
thus, a registered trade mark holder cannot in law claim exclusive
monopoly rights for its trade mark as extended to goods of all
descriptions, falling within the same class in which its sole and
solitary product falls. The defendants has relied on Vishnudas
Trading Vs. Vazir Sultan Tobacco Co. Ltd. 1997 (4) SCC 201
and more particularly paragraphs 44, 46 & 47, which are
reproduced below:
"44. The respondent Company got registration of its brand
name "Charminar" under the broad classification
'manufactured tobacco.' So long such registration remains
operative, the respondent Company is entitled to claim
exclusive use of the said brand name in respect of articles
made of tobacco coming under the said broad classification
manufactured tobacco. Precisely for the said reason, when the
appellant made application for registration of quiwam and
zarda under the same brand name "Charminar", such prayer
for registration was not allowed. The appellant, therefore,
made application for rectification of the registration made in
favour of the respondent Company so that the said
registration is limited only in respect of the articles being
manufactured and marketed by the respondent Company,
namely, cigarettes. In our view, if a trader or manufacturer
actually trades in or manufactures only one or some of the
articles coming under a broad classification and such trader or
manufacturer has no bonafide intention to trade in or
manufacture other goods or articles which also fall under the
said broad classification, such trader or manufacturer should
not be permitted to enjoy monopoly in respect of all the
articles which may come under such broad classification and
by that process preclude the other traders or manufacturers
to get registration of separate and distinct goods which may
also be ground under the broad classification. If registration
has been given generally in respect of all the articles coming
under the broad classification and if it is established that the
trader or manufacturer who get such registration had not
intended to use any other article except the articles being
used by such trader or manufacturer, the registration of such
trader is liable to be rectified by limiting the ambit of
registration and confining such registration to the specific
article or articles which really concern the trader or
manufacturer enjoying the registration made in his favour. In
our view, if rectification in such circumstances is not allowed,
the trader or manufacturer by virtue of earlier registration will
be permitted to enjoy the mischief of trafficking in trade mark.
Looking to the Scheme of the registration of trade mark as
envisaged in the Trade Marks Act and the Rules framed there
under, it appears to us that registration of a trade mark
cannot be held to be absolute, perpetual and invariable under
all circumstances. Section 12 of the Trade Marks Act prohibits
registration of identical or deceptively similar trade marks in
respect of goods and description of goods which is identical or
deceptively similar to the trade mark already registered. For
prohibiting registration under Section 12(1), goods in respect
of which subsequent registration is sought for, must be (i) in
respect of goods or description of goods being same or similar
and covered by earlier registration and (ii) trade mark claimed
for such goods must be same or deceptively claimed for such
goods must be same or deceptively similar to the trade mark
already registered. It may be noted here that under Sub-
section (3) of Section 12 of Trade Marks Act, in an appropriate
case of honest concurrent use and/or of other special
circumstances, same and deceptively similar trade marks may
be permitted to another by the Registrar, subject to such
conditions as may deem just and proper to the Registrar. It is
also to be noted that the expression "goods" and "description
of the goods" appearing in Section 12(1) of Trade Marks Act
indicate that registration may be made in respect of one or
more goods or of all goods conforming a general description.
The Trade Marks Act has noted distinction between
description of goods forming a genus and separate and
distinctly identifiable goods under the genus in various other
Sections e.g. goods of same description in Section 46, Section
12 and 34 and class of goods in Section 18. Rules 12 and 26
read with 4th Schedule to the Rules framed under the Act.
46. Since such registration initially had not been done, the
rectification of the registration by limiting or confining the
registration of trade mark of the Respondent Company to
particular goods, namely, cigarettes, in the facts and
circumstances of the case, cannot be held as illegal or
justified.
47. It has already been indicated that the controversy in the
instant appeals, is only confined to the propriety and validity
of the order of rectification of the registration of trade mark
made in favour of Respondent Company and it is not
necessary to address on the questions of infringement of
trade marks, passing off, defensive registration etc. In that
view of the matter, various decisions cited at the bar dealing
with the likely prejudice to be suffered by a trader or
manufacturer enjoying registration of trade mark in the event,
similar or deceptively similar trade mark is allowed to other
trader or manufacturer in respect of similar goods or goods
marketed through common trade channel need not be taken
into consideration for the disposal of these appeals. As in the
facts and circumstances of the case, the rectification of the
trade marks registered in favour of the respondent Company
since allowed by the Assistant Registrar of Trade Marks was
valid and also justified, such order in our view, should not
have been interfered with in appeal. We, therefore, allow
these appeals, set aside the impugned judgments of the High
Court and restore the order of rectification passed by the
Assistant Registrar of Trade Marks, Madras. By way of
abundant caution, it is expressly made clear that we have not
expressed any opinion on the claim of registration of the trade
mark "Charminar" in favour of the appellant for quiwam and
zarda being manufactured and traded by the appellant. In the
facts of the case, there will however be no order as to costs."
36. Learned senior counsel for the defendants has relied upon Osram
Gesellschaft Mit Beschrankter Haftung v. Shyam Sunder and
Ors., reported at 2002 (25) PTC 198 (Del), more particularly paras
11 and 13, which are reproduced below:
"11. As a matter of fact a registered trade mark holder cannot
in law claim exclusive monopoly rights for its trade mark as
extended to goods of all descriptions falling within the same
class in which its sole and solitary product falls. If that is
permitted then it would tantamount to preventing the other
traders and manufacturers to get registered their distinctive
articles which also fall under the same class of general
classification. Appellant's trade mark in class 11 no doubt has
been used on a large scale but for electric lamps only. But as
already pointed out above the electric lamps by no stretch of
imagination can be equated with room heaters, hot air
circulators, domestic baking ovens, fans etc. nor these can fall
in the same category of goods. Moreover, respondent's goods
in class 11 are not marketed through a common trade
channel. Those goods which the respondent wants to get
registered in class 11 are marketed as distinct articles of use
in different manner. In common trade channels such articles
are not only held different and distinct articles but are
marketed separately.
13. There is no quarrel with the proposition as urged by Mr.
Navin Chawla that under Sub-rule (3) of Rule 26 an application
for registration of the 'same' trade-mark in different classes
shall be treated as separate and distinct application and the
registration in respect of the goods included in each separate
class shall be deemed to be a separate registration for all the
purposes of the Act. No doubt each application. has to be
dealt with and considered separately on its own merits. It is
not to be influenced by the fact of registration of the trade
mark in another class of goods. From the record we find that
registration of respondent's application in class 11 was not
solely on the ground that respondent was registered for his
goods in class 9 and 7. This may have been one of the factor
but not the sole ground. If respondent's trade mark in class 9
& 7 could be registered, it is difficult to apprehend why it
could not be registered in respect of its goods in class 11
particularly when respondents goods are not deceptively
similar or same. Hence on this count also we find no infirmity
in the impugned orders."
37. Counsel for the defendants further submits that while in para 26 of
the written statement it is not disputed by the defendants that
plaintiff‟s trade mark in Clause 16 no doubt has been used on a
large scale but for school and office stationery only, however, the
stationery items are different groups and, thus, it cannot be
equated with copier paper. It has also been faintly argued by
learned senior counsel for the defendants that plaintiff has not
approached this Court with clean hands and has given an
impression to the Court while seeking interim injunction that
defendants have tried to piggy back on the plaintiff‟s reputation as
an established player in the market of stationery whereas plaintiff
has been purchasing paper reels and paper rims from the
defendants from the beginning of 2009.
38. Another submission made by learned senior counsel for the
defendants is that there is no similarity between the products of the
plaintiff and the defendants including the packaging. Senior counsel
further submits that a test of deceptive similarity has to be
considered with reference to over all get up and to determine
whether one mark is deceptively similar to other mark the broad
and essential features of the two are to be considered. In support of
his argument, learned senior counsel for the defendants has relied
upon J.K. Oil Industries v. Adani Wilmar Limited,
CS(OS)No.13/2010.
39. To show that there is no similarity between the overall get up,
learned senior counsel for the defendants submits that defendants‟
mark LOTUS and ARTISTIC FIGUIRES are composite mark, consisting
of combination of different features like multiple words, distinctive
shape, colour scheme, arrangement of artistic and literal elements
in the mark and, thus, they are distinctive from the plaintiff‟s mark.
It is strongly urged by learned senior counsel for the defendants
that there is a prominent difference in the overall impression of the
marks, besides defendants have taken sufficient care to mention
the words „Premium Copier Paper‟ and „TRIDENT‟, making it clear
that they are the goods of the defendant‟s industrial group to avoid
any confusion about the source of product. It is also submitted by
learned senior counsel that packaging of the defendants‟ copier
paper has a different colour scheme, the word LOTUS is written in a
different way, above the mark there is a multi coloured LOTUS and
the logo of defendant no.1 „TRIDENT paper‟ is prominently and
clearly displayed. Learned senior counsel for the defendants has
relied upon Marico Ltd. v. Agro Tech. Ltd., FAO(OS) 352/2010,
more particularly para 7, which is reproduced below:
"7. Merely because, the consumers and the trade channels
are the same, it cannot be said that in the facts and
circumstances of the case, there is a possibility of confusion,
because there are more than enough differentiating features
on the packaging so as to avoid any issue of the Respondent
passing off its goods as that of the appellant..... Even thought
the two respective products of the parties are identical i.e.
edible oil, it cannot be said to be that the Respondents are
passing off their goods as that of the appellants."
40. Learned senior counsel for the defendants next submits that the
impugned marks concentrated upon by the defendants with regard
to the sale of LOTUS is cyclostyling and photocopying shops and
machines used in corporate houses, while plaintiff‟s market is day-
to-day customers like students and small businessmen. Senior
counsel next submits that plaintiff has described itself as one, who
cater to customers not only limited to stationery and general shops
but to schools also. Differentiation of two products is also sought on
the ground that defendants‟ product is a premium product in its
category i.e. 70-75 GSM, in the Delhi market and is priced at Rs.108
(at the wholesale rate, an addition of 5% to 7% may be made for
retail prices) which is higher than other Copier paper products in the
market and only third to the defendants‟ biggest competitors i.e.
BILT Copy power (Rs.115) and JK Red (Rs.114). Counsel relies upon
Schering Corporation and Ors. v. Getwell Life Sciences India
Pvt. Ltd., reported at 2008 (37) PTC 487 (Del) and more
particularly paras 5, 8 and 9, wherein this Court while vacating the
injunction order held that defendant‟s mark was not deceptively
similar to the mark of the plaintiff as the price ranges of the
products are so distinct that no reasonable person would confuse
with the product of the defendant as that of the plaintiffs and,
therefore, there is no question of there being any possibility of
deception and the defendant is not a fly-by-night operator and is an
established concern. It is, thus, clear that defendants do not need to
ride piggy-back on the alleged goodwill of the plaintiff.
41. Learned senior counsel for the defendants submits that there are
various other players in the market using LOTUS and a search
report obtained from the Registrar of Trade Marks has given a list of
owners/manufacturers of the mark LOTUS for stationery. According
to the defendants, the plaintiff has got its mark registered only on
21.4.2003 and prior to the plaintiff there were other players, who
have got their mark registered. The plaintiff has also not raised any
objection to the other users. The goods manufactured under the
mark LOTUS and ARTISTIC FIGUIRE by the defendants are different
from the goods in which the plaintiff deals. The law states that a
registered trade mark holder cannot in law claim exclusive
monopoly rights for its trade mark as extended to goods of all
descriptions falling within the same class in which its sole and
solitary product falls. Senior counsel further submits that this court
has held that if that is permitted then it would tantamount to
preventing the other traders and manufacturers to get registered
their distinctive articles which also fall under the same class of
general classification. In support of this submission learned senior
counsel relies upon Osram Gesellschaft Mit Beschrankter
Haftung (supra).
42. Learned senior counsel for the defendants submits that there can be
no monopoly over the use of the word LOTUS, which is not an
invented word by the plaintiff and the word cannot be monopolized
by any one person. Senior counsel in these circumstances prays
that application of the defendants be allowed and interim injunction
granted to the plaintiff be vacated.
43. I have heard counsel for the parties and perused the application and
various documents placed on record. Arguments of the plaintiff can
be summarized as under:
(i) Plaintiff was incorporated in the year 1947 and since
then has been actively involved in manufacturing,
processing and packaging all kinds of paper products;
(ii) Trade mark of the plaintiff‟s LOTUS is registered under
Class 16 on 30.4.1965 and 21.4.2003 and, thus, plaintiff
is entitled to exclusive trade use of the trade mark by
virtue of statutory provisions mentioned in Section 28(i)
of the Trade Marks Act;
(iii) Copier paper, stationery for schools, office, commercial
use as well as paper used in computer printers under
the trade mark LOTUS;
(iv) On account of its long continuous, extensive,
uninterrupted user since the year 1947, plaintiff has
acquired enviable goodwill and reputation with respect
to its products under the trade mark LOTUS;
(v) Plaintiff manufactures a wide range of stationery
products and sold under the trade mark LOTUS;
(vi) Plaintiff has a large efficient distribution system;
(vii) In order to reach every corner of the globe in relation to
its products under the trade mark LOTUS plaintiff has
got registered a domain name www.lotusstationery.com
in the year 2001;
(viii) Plaintiff is the first in the market, however, defendants
launched its product only on 18.3.2010;
(ix) While deciding the question of similarity between the
two marks, the marks have to be considered as a whole;
(x) Defendants have failed two tests of comparison
between the two marks i.e phonetic and ocular
comparison;
(xi) Goods are identical, sale counter is same and there is
every likelihood of confusion; and
(xii) Adopting trade mark LOTUS by the defendants is
malafide as defendants are well aware of the plaintiff‟s
trade mark LOTUS and the turnover of the defendants is
immaterial as under the Indian Constitution the plaintiff
has every right to be treated with equality before the
law.
44. The submissions of learned senior counsel for the defendants can
be summarized as under:
(i) Defendants are Rs.2500/- crores Industrial Group known as a
Trident Group and it is amongst the top five global territorial
giants of the world having business across 65 countries and
have a very large turnover;
(ii) Defendants have been using the mark LOTUS since the year
2006 for various sister entities and are also engaged in
activities other than manufacture of copier paper with a trade
mark LOTUS.
(iii) Trade mark LOTUS has been adopted and used by defendant
no.2 as a brand name for its textile products like terry towels,
bath towels, hand towels under the brand name LOTUS from
the year 2008;
(iv) No similarity between the products of the plaintiff and the
defendant including the packaging;
(v) Plaintiff does not manufacture or sell copier paper;
(vi) Plaintiff has been purchasing paper from defendant no.2 and
was well aware of the use of the mark LOTUS for other
products;
(vii) Impugned marks concentrated upon by the defendants
with regard to the sale of LOTUS is cyclostyling and
photocopying shops and machines used in corporate
houses, while plaintiff‟s market is day-to-day customers
like students and small businessmen;
(viii) Quality of product is different;
(ix) Test of deceptive similarity has to be considered with
reference to over all get up and to determine whether
one mark is deceptively similar to other mark the broad
and essential features of the two are to be considered;
(x) Other players in the market using LOTUS;
(xi) Defendants are entitled to sell different products with
the same trade mark under the same class;
(xii) Association with the defendants, this led to
acquiescence on the part of the plaintiff; and
(xiii) Defendants have been using the trade mark
continuously and extensive and thus the adoption of the
mark LOTUS for copier was completely bona fide and
honest.
45. The short question, which arises for consideration before this Court
is that whether defendants are entitled to use the registered trade
mark of the plaintiff LOTUS (Registered in Class 16) with respect to
stationery items pertaining to photocopier paper and whether the
same constitutes infringement of plaintiff‟s trade mark with respect
to its paper products. It would be useful to reproduce Sections 28
and 29 of the Trade Marks Act:
28. Rights conferred by registration
1) Subject to the other provisions of this Act, the registration
of a trade mark shall, if valid, give to the registered proprietor
of the trade mark the exclusive right to the use of the trade
mark in relation to the goods or services in respect of which
the trade mark is registered and to obtain relief in respect of
infringement of the trade mark in the manner provided by
this Act.
(2) The exclusive right to the use of a trade mark given under
sub-section (1) shall be subject to any conditions and
limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of
trade marks, which are identical with or nearly resemble each
other, the exclusive right to the use of any of those trade
marks shall not (except so far as their respective rights are
subject to any conditions or limitations entered on the
register) be deemed to have been acquired by any one of
those persons as against any other of those persons merely
by registration of the trade marks but each of those persons
has otherwise the same rights as against other persons (not
being registered users using by way of permitted use) as he
would have if he were the sole registered proprietor.
29. Infringement of registered trade marks
(1) A registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way of
permitted use, uses in the course of trade, a mark which is
identical with, or deceptively similar to, the trade mark in
relation to goods or services in respect of which the trade
mark is registered and in such manner as to render the use of
the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way of
permitted use, uses in the course of trade, a mark which
because of--
(a) its identity with the registered trade mark and the
similarity of the goods or services covered by such
registered trade mark; or
(b) its similarity to the registered trade mark and the
identity or similarity of the goods or services covered
by such registered trade mark; or
(c) its identity with the registered trade mark and the
identity of the goods or services covered by such
registered trade mark,
is likely to cause confusion on the part of the public, or which
is likely to have an association with the registered trade
mark.
(3) In any case falling under clause (c) of sub-section (2), the
court shall presume that it is likely to cause confusion on the
part of the public.
(4) A registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way of
permitted use, uses in the course of trade, a mark which--
(a) is identical with or similar to the registered trade
mark; and
(b) is used in relation to goods or services which are
not similar to those for which the trade mark is
registered; and
(c) the registered trade mark has a reputation in India
and the use of the mark without due cause takes unfair
advantage of or is detrimental to, the distinctive
character or repute of the registered trade mark.
(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
trade name, or name of his business concern or part of the
name, of his business concern dealing in goods or services in
respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a
registered mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the
market, or stocks them for those purposes under the
registered trade mark, or offers or supplies services
under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers
or in advertising.
(7) A registered trade mark is infringed by a person who
applies such registered trade mark to a material intended to
be used for labelling or packaging goods, as a business
paper, or for advertising goods or services, provided such
person, when he applied the mark, knew or had reason to
believe that the application of the mark was not duly
authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of
that trade mark if such advertising--
(a) takes unfair advantage of and is contrary to honest
practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark
consist of or include words, the trade mark may be infringed
by the spoken use of those words as well as by their visual
representation and reference in this section to the use of a
mark shall be construed accordingly.
46. The plaintiff has placed copies of certificates of registration of
its trade mark LOTUS dated 21.4.2003 and 30.4.1965 in Class 16.
Plaintiff has also claimed user of its trade mark LOTUS since
1.1.1965. While registration dated 30.4.1965 pertains to exercise
books, registration dated 21.4.2003 in Class 16 pertains to printing
material, books, magazines, trade journals, ledgers, writing
material, stationery, pens, carbon paper, file, envelopes, visiting
cards, teaching material, blotters, booklets, bookmarkers maps,
drawing boards, drawing instruments, drawing materials, folders,
forms, glue, gums, hand books, indexes, inking pads, labels, loose-
leaf binders, note book, writing pads, paper, paper weights, pen
cases, pen clips, pencil holders, tracing cloth, writing cases being
goods included in Class 16.
47. Random bills including bills pertaining to sale of LOTUS Computer
paper and photocopier paper pertaining to the year 2004 have been
placed on record showing sales of various products of the plaintiff
with the trade mark LOTUS. Having regard to the aforesaid
documents it leaves no room for doubt that plaintiff is the registered
proprietor of the trade mark LOTUS in relation to goods mentioned
in Class 16, which are stationery products.
48. The certificate of registration dated 30.1.1965 as also copy of the
trade mark journal show that the user has been claimed by the
plaintiff since 1.1.1965. Copies of the bills placed on record pertain
to the year 2004 onwards. The plaintiff has extracted its sales
figures from the year 1990 onwards and also the expenses incurred
for advertisements of its goods from the year 2000 onwards. As per
the plaint, in the month of April, 2010, the plaintiff learnt that
defendants had introduced and launched a product, being Premium
Copier Paper, and by a letter dated 19.3.2010 defendants informed
National Stock Exchange of India that they had launched their new
computer paper under the brand LOTUS. As per the defendants,
they have been manufacturing various products and have adopted
and used LOTUS as their brand name for its textile products like
Terry Towels (bath towel, hand towel, etc.), which was launched in
the beginning of the year 2008. Defendants claim that they have
also been using the mark LOTUS since the year 2006 for various
sister entitles like M/s Lotus Infrabuild Ltd. (incorporated in the year
2007), M/s Lotus Integrated Tex Park Ltd. (incorporated in the year
2006 engaged in developing infrastructure for textile activities) and
M/s Lotus Processors Private Limited (incorporated on 8.12.2008)
and engaged in textile manufacturing. The stand taken in the
written statement by the defendants is that they decided to launch
copier paper with the trade mark LOTUS in the year 2008 when they
applied for registration of trade mark LOTUS on 11.9.2008 under
Class 16 and they formally launched their copier paper on
18.3.2010 with the trade mark LOTUS.
49. Taking into consideration the documents placed on record by the
plaintiffs and the stand taken by the defendants in the written
statement it is clear that although the word LOTUS has been
adopted and used by them as a brand name for textile products the
word LOTUS has been used by their sister entitles from the year
2006 onwards. The defendants admittedly launched its copier
paper, subject matter of the present suit only in the year 2010.
Having regard to the stand taken by the defendants itself, it can
safely be said that plaintiff is decidedly a prior user of the trade
mark LOTUS with respect to stationery items mentioned in Class 16
much prior in time than the defendants.
50. The highlight of the argument of learned counsel for the
defendants is that defendants are Rs.2500 crores industrial
group known as „TRIDENT Group‟ carrying on the business of
textile, chemicals, power generation, etc. In the year 2010,
the business was diversified into manufacturing of paper under
the name LOTUS. Defendants have been recipient of various
awards. Large amounts have been spent on business
promotion, advertisement, endorsement and, thus, they are
large player and carrying on their businesses under the name
LOTUS. Companies were incorporated in the year 2006, 2007
and 2008 and, thus, by adopting the name LOTUS for its copier
paper is deemed to be an honest and bona fide use and
plaintiff has clearly acquiesced usage of the mark LOTUS by
the defendants. I find no force in the submission made by
learned counsel for the defendants in view of the fact that
prior to 2010 the nature of business of the defendants was
completely different and defendants were manufacturing and
dealing with towels, textile goods, rugs, retails and home
textile goods construction and development of products in
textile sector. The nature of business of the defendants prior to
2010 was not even remotely connected with the goods
mentioned in Class 16 nor the plaintiff has claimed any relief
against the defendants with regard to use of the word LOTUS
pertaining to other businesses of the defendants.
51. The case of Khoday Distilleries Ltd. (supra) and Allied
Blenders and Distillers (supra) relied upon by learned counsel for
the defendants are not applicable to the facts of this case in view of
the fact that in the years 2006, 2007 and 2008 defendants were not
dealing with stationery items and since no relief has been claimed
by the plaintiff against the defendants for use of the word LOTUS
with regard to other businesses of the defendants it cannot be said
that plaintiff was sitting by when defendants were invading the
rights and spending money on it. Admittedly, the defendants
launched its copier paper in the year 2010 and without any loss of
time plaintiff instituted the present suit to safeguard its interests.
52. Mr. Pinaki Mishra has labored hard to convince this Court that
photocopier paper and computer paper is a different and
distinct product than the products being sold by the plaintiff
and the forte of the plaintiff are note books and exercise
books. It is thus contended that the plaintiff cannot in law
claim monopoly rights over his trade mark LOTUS. In support
of his submission learned senior counsel for the defendants
has relied upon Osram Gessellschaft (supra) and Shell
Brands International v. Pradeep Jain, CS(OS) 639/2008
decided on 1.2.2010.
53. Facts in the case of Osram Gessellschaft (supra) and Shell
Brands International (supra) are not applicable to the facts
of the present case. In the case of Osram Gessellschaft
(supra) the Supreme Court has observed that "as a matter of
fact a registered trade mark holder cannot in law claim
exclusive monopoly rights for its trade mark as extended to
goods of all descriptions falling within the same class in which
its sole and solitary products falls." This observation was made
in the light of the fact that applicant was using the mark only
for electric lamps, while the respondent was using the same
mark for room heaters, hot air circulators, domestic baking
ovens, fans, etc. The Supreme Court has also observed that
the goods do not fall in the same category of goods. Similarly
the facts of Shell Brands International (supra) would not be
applicable to the facts of the present case as the plaintiff in the said
case claimed monopoly over the word Shell with regard to
petroleum products whereas the defendant was dealing in textile
products. In the present case the defendants are trying to draw out
a fine distinction between the paper product itself which the
defendants cannot be permitted to do so as firstly the plaintiff is
also dealing with copier paper and secondly the mark being
identical. Another important aspect which cannot be ignored is that
the goods are common, sold over a common counter, sale
challans are likely to be the same as they would be sold by the
shops, it is common knowledge that copier paper is not only
used for photocopies but also used in offices for computer print
outs.
54. Mr. Pinaki Mishra has also submitted that initially in the year
1965 registration was sought by the plaintiff. for exercise
books alone and subsequently in the year 2003 registration
was sought for other stationery products, which does not
include copier paper and, thus, no case is made out by the
plaintiff against the defendants for infringement of trade mark.
This submission of learned senior counsel for the defendants is
liable to be rejected as learned senior counsel has been unable
to show that copier paper does not fall in Class 16 or that
copier paper cannot be considered as an allied or cognate
goods. The argument is also not convincing that the paper
manufactured by the defendants is not sold at the same
counter where the goods of the plaintiff are sold.
55. Learned senior counsel for the defendants has also submitted that
trade dress of the packaging of the two products is completely
different and also the defendants have described its product as
LOTUS Premium Copier Paper and TRIDENT, the artistic figures, the
multiple words, distinctive shape, colour scheme, arrangement of
artistic and literal elements in the mark are thus distinctive from the
plaintiff‟s mark. This submission of learned senior counsel for the
defendants is to be rejected as in deciding the question with regard
to similarity between the two marks, the marks have to be
considered as a whole as the addition of descriptive word or a prefix
or suffix will not change the nature or the name of substantial trade
mark, which is LOTUS. It was observed by Parker, J. in Pianotist Co.'s
Application (1906) 23 R.P.C. 774 which was also a case of the
comparison of two words -
"You must take the two words. You must Judge them, both by
their look and by their sound. You must consider the goods to
which they are to be applied. You must consider the nature
and kind of customer who would be likely to buy those goods.
In fact you must consider all the surrounding circumstances
and you must further consider what is likely to happen if each
of those trade marks is used in a normal way as a trade mark
for the goods of the respective owners of the marks.
56. The observations made by the Supreme Court of India in the
case of Amritdhara Pharmacy (supra) are fully applicable to the
facts of this case. It may be recalled that in the case of Amritdhara
Pharmacy the trade marks, being Amritdhara and Lakshmandhara,
were not identical. In the said case, it was held that the names
nearly resemble each other and is likely to cause deception or
confusion in the minds of unwary purchaser of average intelligence
or imperfect recollection.
57. In the case of Amritdhara Pharmacy (supra) the Supreme
Court while relying upon Corn Products Refining v. Shangrila Food
Products Ltd., reported at [1960] 1 SCR 968 held that "the question
has to be approached from the point of view of a man of average
intelligence and imperfect recollection".
58. In the case of Cadila Health Care Ltd. (supra) the Court had
culled out broad principles while deciding the question of deceptive
similarity. It has been observed that the court must consider the
nature of mark, degree of resemblance between the marks,
phonetical similarity, nature of goods, class of purchasers, mode of
purchase, all of which are fully applicable to the facts of this case as
the mark in the present case is identical, nature of goods are
identical, the goods would be sold at a common counter, the class
of purchasers would be such who would be easily misled by the
identical trade mark irrespective of difference of price between the
products of the plaintiff and the product of the defendants.
59. In view of afore mentioned facts and circumstances it is
abundantly clear that trade mark of the plaintiff LOTUS has
acquired unique goodwill and reputation and it has become a
well known trade mark within the meaning of Section 2(zg) of
the Trade Marks Act, 1999, and even assuming that copier
paper is in any way different from other stationery products
the plaintiff is entitled to protection in relation to dissimilar
goods under Section 29(4) of the Trade Marks Act as far as
infringement of trade marks is concerned. Thus, prima facie,
the plaintiff has been able to make out a strong case of
infringement of trade mark.
60. Once the Court comes to the conclusion that it is a fit case of
infringement of trade mark by the defendant then the question
of some delay is immaterial on account of statutory rights
granted under Section 28 of Trade Marks Act in favour of the
plaintiff.
61. In the case of Swaran Singh Trading v. Usha Industries
(India), New Delhi and another, reported at AIR 1986 Delhi
343, in para 7 it has been held by a Division Bench of this
Court as under:
"(7) There is then the question of delay. Learned counsel for
the respondents had urged that the delay is fatal to the grant
of an injunction. We are not so satisfied. A delay in the matter
of seeking an injunction may be a ground for refusing an
injunction in certain circumstances. In the present case, we
are dealing with a statutory right based on the provisions of
the trade and Merchandise Marks Act, 1958. An exclusive right
is granted by the registration to the holder of a registered
trade mark. We do not think statutory rights can be lost by
delay. The effect of a registered mark is so clearly defined in
the statute as to be not capable of being misunderstood. Even
if there is some delay, the exclusive right cannot be lost. The
registered mark cannot be reduced to a nullity. The principles
governing other types of injunctions are not to be readily
applied to a case like the present. Of course, if it was a case of
a similar mark as opposed to the same mark, the concurrent
user coupled with delay might be a ground for refusing an
injunction. However, when the same mark is being used, in a
sense, the public is deceived into purchasing the defendant's
goods on the belief that they are the plaintiff's goods, so a
registered trade mark is a casualty, it is the duty of the Court
to protect the registered mark. That is the whole concept of
registration. So, we cannot refuse an injunction even if there is
some delay especially when the mark is the same. To refuse
the injunction would tantamount to permit a fraud being
practiced on unwary customers. This is a matter of principle
on which the Court cannot refuse the injunction."
62. Similar question has also been dealt with by this Court in the
case of M/s Hindustan Pencils Pvt. Ltd. v. M/s India
Stationery Products Co. and Another, reported at AIR 1990
Delhi 19 in para 31, which reads as under:
31. Even though there may be some doubt as to whether
laces or acquiescence can deny the relief of a permanent
injunction, judicial opinion has been consistent in holding that
if the defendant acts fraudulently with the knowledge that he
is violating the plaintiff‟s rights then in that case, even if there
is an inordinate delay on the part of the plaintiff in taking
action against the defendant, the relief of injunction is not
denied. The defense of laces or inordinate delay is a defense
in equity. Inequity both the parties mud's come to the Court
with clean hands. An equitable defense can be put up by a
party who has acted fairly and honestly. A person who is guilty
of violating the law or infringing or usurping somebody else's
right cannot clarify the continued misuse of the usurped right.
It was observed by Romer, J. in the matter of an application
brought be J. R. Parkington and Co. Ld., (1946) 63 RPC 171 at
page 181 that "in my judgment, the circumstances which
attend the adoption of a trade mark in the first instance are of
considerable importance when one comes to consider whether
the use of that mark has or has not been a honest user. If the
user in its inception was tainted it would be difficult in most
cases to purify it subsequently". It was further noted by the
learned Judge in that case that he could not regard the
discreditable origin of the user as cleansed by the subsequent
history. In other words, the equitable relief will be afforded
only to that party who is not guilty of a fraud and whose
conduct shows that, there had been, on his part, an honest
concurrent user of the mark in question. If a party, for no
apparent or a valid reason, adopts, with or without
modifications, a mark belonging to another, whether
registered or not, it will be difficult for that party to avoid an
order of injunction because the Court may rightly assume that
such adoption of the mark by the party was not an honest
one. The Court would be justified in concluding that the
defendant, in such an action, wanted to cash in on the
plaintiff‟s name and reputation and that was the sole, primary
or the real motive of the defendant adopting such a mark.
Even if, in such a case, there may be an inordinate delay on
the part of the plaintiff in bringing a suit for injunction, the
application of the plaintiff for an interim injunction cannot be
dismissed on the ground that the defendant has been using
the mark for a number of years. Dealing with this aspect Harry
D. Nims in his "The Law of Unfair Competition and Trade
Marks", Fourth Edition, Volume Two at page 1282 noted as
follows:
"Where infringement is deliberate and willful and the
defendant acts fraudulently with knowledge that he is
violating plaintiff‟s rights, essential elements of
estoppels are lacking and in such a case the protection
of plaintiff‟s rights by injunctive relief never is properly
denied. "The doctrine of estoppels can only be invoked
to promote fair dealings"."
63. For the aforestated reasons and settled position of law there is
no force in the submission of learned counsel for the defendant
that there is any delay.
64. By the present order the Court is merely restraining the
defendants from infringing the trade mark of the plaintiff by
taking a prima facie view of the matter, however, defendants
are entitled to carry on their business under different trade
marks. The decisions referred to by the defendants are entirely
on their own facts, which are materially different to the
present case, thus, the same are not applicable.
65. In the case at hand this Court cannot lose track of the fact that the
nature of goods are such and the trade channel through which they
would be sold and marketed would be identical.
66. Another argument has been raised by learned senior counsel for the
defendants that the word LOTUS is a dictionary word and a word
used in common parlance in English language. This argument raised
by learned senior counsel for the defendants would be self-
defeating in view of the fact that even the defendants had applied
for registration of the trade mark LOTUS and even otherwise taking
into consideration the long and interrupted user of the mark LOTUS
by the plaintiff since the year 1965 and the plaintiff having
successfully protected its mark would lead to the conclusion that it
is a well known trade mark within the meaning of Section 2(1) (zg)
of the Trade Marks Act and the present case would be fully covered
under Section 29 of the Act.
67. Another submission has been made by learned senior counsel for
the defendants that there are many trade marks containing the
word LOTUS for which the plaintiff is claiming monopoly rights. This
submission of learned senior counsel for the defendants is without
any merit as the defendants have failed to produce any evidence on
actual user of the said trade mark by the alleged users, nature of
products and what is the goodwill and reputation of the said mark.
Similar defence was raised and rejected in the case Century
Traders (supra), Corn Products Refining (supra) and Pankaj
Goel v. Dabur India Ltd., reported at 2008 (38) PTC 49 (Del.).
68. Counsel for the plaintiff has relied upon Tata Iron & Steel Co. Ltd.
Vs. Mahavir Steel & Ors. 47 (1992) DLT 412 and more
particularly relevant portion of para 15, which is reproduced below:
"15..........Their pleadings say nothing except citing the
example of few others who are also similarly using trade
names having suffix 'ISCO' in conjunction with one letter prefix
in connection with their goods. An imitation remains an
imitation whether it is done by one or hy many. It acquires no
legitimacy. A wrong is not righted by the following it
musters.Infringement of trade mark by a trader cannot be
justified on the ground that there are others like him who are
doing the same. There is a growing tendency to copy the
trade marks to cash upon some one else's business reputation
. The piralors of trade marks are like parasites clinging to
others for their growth. Imitators of trade-marks have the sole
object of diverting the business of others. This tendency mast
be curbed in the interest of the trade and the consumers."
69. Counsel for the plaintiff has also relied upon Ozone Spa Pvt. Ltd.
Vs. Ozone Club 2010 (42) TPC 469 (Delhi) and more particularly
para 28, which is reproduced below:
"28. The other objection raised by the defendant is that
"Ozone" is a generic name and no one can have exclusive
rights over the same and the plaintiff is also not the proprietor
of the mark Ozone?. The said argument is a self defeating
argument. Firstly, the mark "Ozone" is a registered trade mark
in favour of the plaintiff and secondly the defendant himself
has applied for registration of the trade mark "Ozone" in class
41 in relation to the services as that of the plaintiff. It does not
lie in the mouth of the defendant to contend now that the
mark is a generic mark, in fact the defendant is debarred from
raising such a plea in view of his own conduct. The said
contention is totally misconceived. In the case of Automatic
Electric Limited v. R.K. Dhawan and Anr. 1999 (19) PTC 81 in
para 16, the learned Single Judge of this Court has observed
that the defendant had got their trade mark "DIMMER DOT"
registered in Australia. The fact that the defendant itself has
sought to claim trade proprietary right and monopoly in
"DIMMER DOT", it does not lie in their mouth to say that the
word "DIMMER" is a generic expression. User of the word
"DIMMER" by others cannot be a defence available to the
defendants, if it could be shown that the same is being used in
violation of the statutory right of the plaintiff."
70. Counsel for the plaintiff has also relied upon Century Traders Vs.
Roshan Lal Duggar & Co. AIR 1978 DELHI 250 and more
particularly paragraphs 13 & 14, which are reproduced below:
"13. The Supreme Court in Corn Products Refining Co. v.
Shangrila Food Products Ltd., [1960]1SCR968 laid down the
rule vis-a-vis user of a mark as opposed to registration of
mark. It observed that the onus of proving user is on the
person who claims it. It did not approve of looking into the
register of trade marks where a mark may be entered to be
any proof of user. To quote from the speech of A.K. Sarkar, J. :
"Now, of course, the presence of a mark in the register does
not prove its user at all. It is possible that the mark may have
been registered but not used. It is not permissible to draw any
inference as to their user from the presence of marks in the
register.
14. Thus, the law is pretty well-settled that in order to
succeed at this stage the appellant had to establish user of
the aforesaid mark prior in point of time than the impugned
user by the respondents. The registration of the said mark or
similar mark prior in point of time to user by the appellant is
irrelevant in an action passing off and the merepresence of
the mark in the register maintaned by the trade mark registry
did not prove its user by the persons in whose names the
mark was registered and was irrelevant for the purposes of
deciding the application for interim injunction unless evidence
had been led or was available of user of the registered trade
marks. In our opinion, these clear rules of law were not kept in
view by the learned Single Judge and led him to commit an
error."
71. In the case of Express Bottlers Services Pvt. Ltd. v. Pepsi Inc.
and Ors., reported at 1989 (7) PTC 14, the Supreme Court has held
under:
... To establish the plea of common use, the use by other persons
should be shown to be substantial. In the present case, there is no
evidence regarding the extent of the trade carried on by the alleged
infringers or their respective position in the trade. If the proprietor
of the mark is expected to pursue each and every insignificant
infringer to save his mark, the business will come to a standstill.
Because there may be occasion when the malicious persons, just to
harass the proprietor may use his mark by way of pinpricks. The
mere use of the name is irrelevant because a registered proprietor
is not expected to go on filing suits or proceedings against
infringers who are of no consequence. Mere delay in taking action
against the infringers is not sufficient to hold that the registered
proprietor has lost the mark intentionally unless it is positively
proved that delay was due to intentional abandonment of the right
over the registered mark. This court is inclined to accept the
submissions of the respondent No. 1 on this point The respondent
No. 1 did not lose its mark by not proceeding against insignificant
infringers...
52. A mere filing of the search report from the trademarks office
does not prove as to whether the marks mentioned in the search
report have actually been used or not. It is necessary for the party
who relies upon the marks of third party to produce cogent and
clear evidence of user in order to prove the defence of "common
marks to the trade" on the basis of the third party user. Hence, in
the absence of valid and cogent evidence, the submission of the
defendants cannot be accepted.
72. In the light of the settled position, the submission of learned counsel
for the defendants has no force.
73. Mr. Mishra has also labored very hard to convince this Court that the
quality of defendants‟ product, its marketing and sale figures would
show that they do not need to ride over the goodwill and reputation
of the plaintiff. In comparison to the long, continuous and
uninterrupted user of the plaintiff since the year 1965, the sale
figures of the defendants howsoever impressive they may be cannot
be a ground to refuse the injunction to the plaintiff. The big fish
cannot be allowed to eat the small fish. The defendants cannot be
permitted to dilute the trade mark of the plaintiff merely because it
is stated that defendants has a large network and has obtained
various export orders. As per the own showing of defendants, the
plaintiff has been buying paper from the defendants. The
defendants were well aware that plaintiff is the registered proprietor
of the trade mark LOTUS. It cannot be said that the user of the word
LOTUS by the defendants for copier paper is bona fide and honest.
On registration of a trade mark the proprietor gets the exclusive
right to use such trade mark in relation to the goods in respect of
which the trade mark is registered under Section 28 of the Act and
the applicant is entitled to obtain relief in respect of any
infringement of such trade mark (National Bell Co. and Anr. v.
Metal Goods MFG CO.(P) Ltd. & Anr., reported at AIR 1971
Supreme Court 898).
74. Accordingly, the right of the plaintiff is to be protected and the
plaintiff is entitled to injunction. In view of this I.A.No.5388/2010 is
allowed. Interim order dated 27.4.2010 is confirmed.
I.A.Nos.6365/2010 and 13435/2010 are dismissed.
75. Needless to say that any observations made in this order are only for the
purpose of deciding this application and the same would have no bearing
on the merits of the matter.
CS(OS) 796/2010 & 8984/2011
76. As prayed, list the matter before Joint Registrar for admission/denial
of documents on 21.12.2011.
77. List the matter before Court for framing of issues on 17.1.2012.
G.S. SISTANI, J.
OCTOBER 03, 2011
msr/ssn
