Smt.Kanta Arora And Ors. vs M/S Koninklijke Philips ...
2011 Latest Caselaw 5003 Del

*          IN THE HIGH COURT OF DELHI AT NEW DELHI




%                                               Date of decision : 12.10.2011



                       FAO(OS) No. 259-262/2005



SMT.KANTA ARORA AND ORS. ...                      ...       ...         APPELLANTS


                        Through : Mr..M.Dutta, Advocate.


                                   -VERSUS-


M/S KONINKLIJKE PHILIPS ELECTRONICS NV, & ANR.

                                                                ... RESPONDENTS

                        Through : Mr.N.Mahavir and Dr.Sheetal Vohra,
                                  Advocates.


CORAM :

HON'BLE MR. JUSTICE SANJAY KISHAN KAUL
HON'BLE MR. JUSTICE RAJIV SHAKDHER

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

2.      To be referred to Reporter or not?                              NO

3.      Whether the judgment should be                                  NO
        reported in the Digest?
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FAO(OS) No.259-262/2005                                                      Page 1 of 11
 SANJAY KISHAN KAUL, J. (ORAL)

1. The respondents filed a suit for permanent injunction,

passing off, damages, rendition of accounts and delivery

up etc in respect of their trade mark 'PHILIPS'. Along

with the plaint, an application for interim relief under

Order 39 Rules 1 & 2 of Code of Civil Procedure, 1908

('the said Code' for short) was also filed. The appellants

as defendants apparently expressed their willingness to

give up the trade mark 'PHILIPS' provided a reasonable

time was granted to them to change over to a new trade

mark and this proposal was accepted and the appellants

were given time up to 31.03.2002 to adopt a

distinctively dis-similar trade mark. The appellants,

however, soon thereafter repudiated this arrangement

on 04.04.2002.

2. The attempt by the appellants to change their stance

was viewed by the learned single Judge as an attempt to

over-reach the process of law and a notice was issued to

appellants nos.1 & 3 to show cause as to why

appropriate action under the Contempt of Courts Act, _________________________________________________________________________________________

1971 be not initiated against them. Learned single

Judge also found a prima facie view that a case for grant

of ad interim injunction was made out restraining the

appellants from manufacturing, selling or offering for

sale their goods under the trade mark 'PHILIPS' and from

passing off the goods manufactured by them as that of

the respondents. The appellants filed IA No.6363/2002

seeking vacation of the said interim order.

3. The learned single Judge (as he then was), however,

rejected the application for vacation of stay and made

the injunction absolute in terms of the impugned order

dated 23.05.2005.

4. A perusal of the impugned order shows that the trade

mark 'PHILIPS' inside shield device was adopted by the

respondents in or about 1911. It adopted the trademark

'PHILIPS SHIELD EMBLEM' in 1938. Both these marks

are the house marks of the parent company and

represent the trading style of respondent no.1, being

used over more than 60 countries. The trade mark

'PHILIPS' was claimed by the respondents to be a

distinctive and dominant part of the corporate name of

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the respondent/company and the respondents held

registrations in various classes in various countries of

the world. The sales figures of the respondents were

claimed to be running into millions of US Dollars. R-2

has been manufacturing and selling large variety of

household (kitchen) appliances apart from electric and

electronic goods like sandwich toasters, toasters, grill

baking ovens, hand mixers, coffee makers, electric, etc.

all of which are treated as kitchen appliances in the

trade. In June, 1992, the respondents came to know

that the trade mark 'PHILIPS' had been advertised

before acceptance in the Trade Mark Journal in the name

of M/s Kumar Enterprises. This trade mark application

was opposed by the respondents. The Assistant

Registrar of Trade Marks, however, dismissed the

objections raised by the respondents and their

predecessor companies against which order the

respondents preferred an appeal before the High Court.

The Registrar of Trade Marks, despite the pendency of

the said appeal, granted registration certificates in

favour of appellant no.1. It is during the pendency of

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the appeal, the respondents came to know that the

appellants were advertising on cable television channels

their products i.e. pressure cookers for sale under the

trade mark 'PHILIPS'. It is in view thereof that the cause

is stated to have arisen to file CS(OS) No.207/2002.

The suit was contested by the appellants who placed

reliance upon registration of the mark 'PHILIPS' in their

name and thus they claimed to have statutory

protection of registration under Section 28 of the Trade

and Merchandise Act, 1958 ('the said Act' for short).

5. The learned single Judge found that even though the

appellants had secured registration of the trade mark

'PHILIPS' in respect of pressure cookers included in Class

21 of the fourth schedule to the rules framed under the

said Act, despite the opposition of the respondents, the

registration of the said trade mark could not effect the

right of respondents to bring an action for passing off

against the appellants having regard to the provisions of

Section 27(2) of the said Act.

6. The learned single Judge also took note of the fact that

the order passed by the Assistant Registrar granting

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registration of the trade mark 'PHILIPS' in favour of the

appellants, which was challenged by the respondents in

appeal before this Court, was eventually transferred to

the Intellectual Property Appellate Board ('the Board' for

short), for disposal. The Board came to the conclusion

that the trade mark of the respondents being a globally

renowned and reputed mark, use of an identical mark by

anybody else even in respect of the goods which were

not manufactured by the respondents would create

confusion in the minds of the purchasers. The order of

the Assistant Registrar of Trade Marks was reversed and

thus the registration secured by the appellants in their

favour stood withdrawn by the appellate authority. The

learned single Judge also found that the consumer with

his ordinary knowledge, perception and memory was

likely to believe that the respondents had extended their

manufacturing activities to non-electric pressure cookers

as it was a world-known trade mark being used on such

products.

7. The developments which have taken place during the

pendency of the appeal and after the impugned order

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was passed, is that WP(C) No.8973/2008 came to be

filed by appellant no.4 against respondent no.1. The writ

petition was predicated on the grant of registration of

the mark 'PHILIPS' for non-electric pressure cookers

under Class 21 of the said Act by the Registrar of Trade

Marks vide order dated 09.12.1996 and the order dated

14.08.2008 passed by the Board which allowed the

appeal and cancelled the registration of the mark in

Class 21 for pressure cookers granted to the appellant

no.4. This writ petition was dismissed with costs on

25.09.2009. The matter was thereafter carried in appeal,

but LPA No.613/2009 was dismissed on 30.11.2009 in

limine. The matter was carried forward before the

Supreme Court by filing a Special Leave Petition which

found the order in appeal to be too cryptic.

8. At the stage when the matter was still pending before

the Supreme Court and judgment was reserved, it was

stated by learned counsel for the appellants before this

Court on 23.12.2010 that in case the appellants succeed

before the Supreme Court, then only the arguments

would have to be advanced before this Court. This was

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naturally so as the fulcrum of the arguments was the

registration of the mark 'PHILIPS' in the name of

appellant no.4. On 30.08.2011, we were informed that

the Supreme Court had delivered the judgment and

remanded the matter back to be heard by the Division

Bench and that LPA No.613/2009 stands dismissed on

01.08.2011. Learned counsel for the respondents, thus,

submitted that the appellants have no case in the

present appeals, but learned counsel for the appellants

stated that the appellants may be exploring the

possibility of filing a Special Leave Petition against the

order passed by the Division Bench on 01.08.2011. We

made it clear while recording the order on that date that

if there was no stay of the operation of the judgment of

the Division Bench dated 01.08.2011 by the next date of

hearing, we would take the said judgment into account

for disposal of the present appeals.

9. We are informed today that the appellants are still in the

process of filing a Special Leave Petition. Thus, though

almost three months have elapsed, no Special Leave

Petition has been filed against the order of the Division

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Bench dated 01.08.2011. We see no reason to defer the

matter further and thus consider it appropriate to take

into account the findings recorded by the Division Bench

in LPA No.613/2009.

10. A perusal of the said judgment shows that the Registrar

of the Trade Marks had found that the word 'PHILIPS' not

being an invented word and the appellants using the

mark since 1982, it was a case of honest concurrent

user. This finding was not accepted by the Board. The

fact that the trade mark 'PHILIPS' is being used by the

respondents in India since 1950 and has acquired

extensive goodwill with respect to electrical goods such

as transistors, electric bulbs and electric toasters and

thus having attained distinctiveness, has been

examined. These goods are sold through the same

trading channel i.e. shops in small towns and villages

and the consumer of the goods is the same. The mark

'PHILIPS' notwithstanding it not being an invented word

was thus held not capable of appropriation by the

appellants for the reason that when in the year 1982 the

appellants started selling pressure cookers with the

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mark 'PHILIPS', the same had acquired reputation for the

goods of the respondents. There was, in fact, no earthy

reason for adoption of the mark 'PHILIPS' when the

share holders and directors of the appellants were

professing Hindu religion and there was no explanation

why they should adopt a foreign name normally

associated with those who profess Christianity. It has

thus not been found to be a case of honest concurrent

user.

11. The factum of pressure cookers not having electrical

component would not affect the result as the trade

source was the same and the mark 'PHILIPS' was being

used for products as varied as electrical bulbs, electric

toaster and the like and had attained distinctiveness.

12. The result of the aforesaid is that there exists no

registration in the name of any of the appellants qua the

mark 'PHILIPS' and that the decision of the Board has

been upheld right till the Division Bench of this Court as

per the order dated 01.08.2011. The said finding being a

finding recorded by a coordinate bench of this Court, we

see no reason to differ from the same. In fact, we are in

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complete agreement with the finding that the use of the

mark 'PHILIPS' by the appellants cannot be said to be a

honest concurrent user, but the intent obviously is to

ride on the goodwill and the established mark of the

respondents. A common consumer who purchases the

goods with the mark 'PHILIPS' including bulbs etc., in all

likelihood, would assume that the pressure cooker is

also emanating from the same source. It is a mark

picked up by the appellants for which they have failed to

establish any good reason.

13. We thus find no infirmity in the impugned order dated

23.05.2005 and thus the appeals are accordingly

dismissed leaving the parties to bear their own costs.

SANJAY KISHAN KAUL, J.

OCTOBER 12, 2011                                        RAJIV SHAKDHER, J.
dm

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