Lalit Kumar Arya & Anr. vs M/S Apsana Global Sugandhy (P) Ltd
2011 Latest Caselaw 4382 Del

         THE HIGH COURT OF DELHI AT NEW DELHI

%                       Judgment Reserved on: 05.09.2011
                        Judgment Pronounced on: 08.09.2011

+ CS(OS) 2094/2006

LALIT KUMAR ARYA & ANR.                  ..... Plaintiffs
                 Through: Mr. Sushant Singh, Advocate
                 Mr. P.C.Arya, Advocate

                                versus


M/S APSANA GLOBAL SUGANDHY (P) LTD ..... Defendants
                Through: Mr. Himanshu, Advocate

CORAM:-
HON'BLE MR JUSTICE V.K. JAIN

1.

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

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

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

V.K. JAIN, J

IA No. 12422/2006 (u/O 39 R.1&2 CPC)

1. Plaintiff No.1 claims to have adopted the

trademarks RATNA and RATNA CHHAP, including artistic

representations of his father late Sh. Chaurbhuj, plant on

palm device and the numeral "300" in the year 1966.

Subsequently, he obtained registration of the aforesaid

trademark as well copyright in it. Plaintiff No.2 is stated to

be the licensee of plaintiff No.1 in respect of the aforesaid

trademark and is using it on the containers of Zafrani Patti

(flavoured tobacco) and Zarda (chewing tobacco) being sold

by it in India as well as abroad. The label device with word

RATNA, bust portrait of late Chaturbhuj Ram, plant on

palm and numeral "300" was registered vide registration

No.293460 in respect of Zarda (chewing tobacco) and

quiwam (chewing tobacco in paste form). Later, device with

word RATNA portrait of late Chaturbhuj Ram and plant on

palm device was registered in respect of Zarda (chewing

tobacco) and quiwam (chewing tobacco in paste form vide

registration No.296164 on 19th May 1974 whereas

composite mark RATNA CHHAP ZAFRANI PATTI No.300 was

registered in Class 34 in respect of chewing tobacco vide

registration No.314719 as of 10th May 1976. The plaintiffs

also claim copyright registration in the label RATNA CHHAP

ZAFRANI PATTI No.300. The plaintiffs allege sale of

Rs.98,01,73,829/-, Rs.93,14,78,961/- and 110,78,74,158/-

respectively in the years 2003-04, 2004-05 and 2005-06,

respectively. The plaintiffs claim to have incurred

advertisement and promotional expenditure of

Rs.62,48,366/-, Rs.14,53,928/-, Rs.21,21,013/-,

respectively during this period. According to them, the

defendant has adopted trade dress similar to its trade dress

in respect of RATNA CHHAP ZAFRANI PATTI No.300 and it

is also using a similar trademark RAFIYA CHAP ZAFRANI

PATTI. It is also alleged that all the essential features of the

trademark of the plaintiffs have been copied by the

defendant and the mark being used by it is visually and

phonetically similar to that of the plaintiffs. The plaintiffs

have vide IA No. 12422/2006 sought injunction against use

of the trademark RAFIA and RAFIQUA as also the packing

material shown as annexure X-1 and X-2 to the plaint.

2. Defendant No.1 has contested the suit. It is

alleged in the written statement that the mark RAFIYA and

RAFIQUA were chosen as trade names as the defendant has

mostly been trading overseas with countries like

Afghanistan, UAE and Saudi Arabia. It is further alleged

that RAFIQUA is an Arabic word which means „friend‟ and

RAFIYA is also an Arabic word which means „special‟. It is

also alleged that since January 2006 the plaintiff was aware

of the trademark being used by the defendant and that the

marks of the parties are phonetically, structurally and

visually dissimilar. It is also claimed that the packaging,

style, fonts, type phase, letters, composition, presentation,

etc. of the defendant‟s products is altogether different from

that of the plaintiff and so is the getup of the

casings/containers/packings. It is also alleged that the

words „Chhap‟, „Zafrani‟ and „Patti‟ are generic words, being

used on a number of products. It is further claimed that

the golden colour background as well as the pictures of

man, woman, petals are common features in Zarda trade.

3. It is a settled proposition of law, reiterated by

Supreme Court in Kaviraj Pandit Durga Dutt Sharma v.

Navaratna Pharmaceutical Laboratories, PTC (Suppl) (2)

680 (SC), that if the defendant resorts to colourable use of a

registered trade mark, such an act of the defendant would

give rise to an action for passing off as well as for

infringement. In an action based upon infringement of a

registered trade mark if the mark used by the defendant is

visually, phonetically or otherwise so close to the registered

trade mark of the plaintiff that it is found to be an imitation

of the registered trade mark, the statutory right of the owner

of the registered trade mark is taken as infringed. In such a

case, if it is found that the defendant has adopted the

essential features of the registered trade mark of the

plaintiff, he would be liable even if he is able to establish

that on account of packaging, get up and other writings on

his goods or on the container in which the goods are sold by

him, it is possible to clearly distinguish his goods from the

goods of the plaintiff. On the other hand in a case of

passing off, if it is shown that on account of these factors it

is very much possible for the purchaser to identify the origin

of the goods and thereby distinguish the goods of the

defendant from the goods of the plaintiff, the defendant may

not be held liable.

In Corn Products Refining Co. vs. Shangrila

Food Products Ltd. 1960 (1) SCR 968, the Supreme Court

observed that the question whether two competing marks

are so similar as to be likely to deceive or cause confusion is

one of first impression and it is for the court to decide it.

The question has to be approached from the point of view of

a man of average intelligence and imperfect recollection.

In Parle Products (P) Ltd. v. J.P. & Co., Mysore,

AIR 1972 SC 1359, Supreme Court inter alia observed as

under:-

According to Karly‟s Law of Trade

Marks and Trade Names (9th 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 the 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.

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.

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.

4. Thus, in order to constitute infringement the

impugned trademark need not necessarily be absolutely

identical to the registered trademark of the plaintiff and it

would be sufficient if the plaintiff is able to show that the

mark being used by the defendant resembles his mark to

such an extent that it is likely to deceive or cause confusion

and that the user of the impugned trademark is in relation

to the goods in respect of which the plaintiff has obtained

registration in his favour. It will be sufficient if the plaintiff

is able to show that the trademark adopted by the

defendant resembles its trademark in a substantial degree,

on account of extensive use of the main features found in

his trademark. In fact, any intelligent person, seeking to

encash upon the goodwill and reputation of a well-

established trademark, would make some minor changes

here and there so as to claim in the event of a suit or other

proceeding, being initiated against him that the trademark

being used by him, does not constitute infringement of the

trademark, ownership of which vests in some other person.

But, such rather minor variations or distinguishing features

would not deprive the plaintiff of injunction in case

resemblance in the two trademarks is found to be

substantial, to the extent that the impugned trademark is

found to be similar to the registered trademark of the

plaintiff.

5. It is also a settled proposition of law that in order

to ascertain whether the impugned trademark constitutes

infringement mark of the plaintiff or not, the two marks are

not to be placed side by side. The person coming across the

product of the defendant, bearing the impugned trademark

may not necessarily be having the product of the plaintiff

bearing his registered trademark with him when he comes

across the product of the defendant. This is more so in the

case of a product like a chewing tobacco which primarily is

consumed by persons coming from rural background or

those who come from lower strata of the society and

therefore are not likely to be well-educated. Such persons

may not care to notice the features which distinguish one

trademark from the other. Therefore, if on coming across

the product of the defendant bearing the impugned

trademark the purchaser forms an impression that this

could be the product of the plaintiff, it may induce, on

account of overall similarity of the two trademarks, him to

believe that the product which he has come across was, in

fact, the product of the plaintiff or had some kind of an

association or connection with the plaintiff.

6. A comparison of the container being used by the

defendant with the container being used by the plaintiff

would show the following prominent similarities:-

a) There is a bust portrait of a man on the

registered trademark of the plaintiff which is

alleged to be the portrait of late Chaturbhuj,

father of plaintiff No.1. Almost identical portrait

forms part of the trademark RAFIQUA CHAP

being used by the defendant No.1. A portrait,

though of a woman, forms part of the trademark

RAFIYA BRAND ROYAL ZAFRANI PATTI being

used by the defendant No.1, as would be seen

from Exh. P-1. The man shown in the portrait

on the container of the plaintiff as well as the

man shown on the container of the defendant

No.1 is wearing identical coat/jacket of

brownish colour. Both of them are wearing caps

of brown colour which are of identical design.

b) The plaintiff has used "No. 300" in a rectangle

on its container. Though the defendant has

used "No. 306", it has been written in a similar

rectangle, and in the same colour. Moreover,

digit "6" on the container of the defendant has

been written in such a manner that it may also

be mistaken as "0", if one looks at the container

from some distance.

c) The colour scheme used by the defendant No.1

is identical to the colour scheme used by the

plaintiff. The containers of both the parties use

beige/grey colour on the top as well as bottom of

the label printed on the container and the

golden colour has been used in the middle

portion of the label. Red colour has been used

for printing RATNA CHAP ZAFRANI PATTI on the

label of the plaintiff and RAFIQUA CHAP ROYAL

ZAFRANI PATTI and RAFIYA BRAND ROYAL

ZAFRANI PATTI on the labels of defendant No.1.

The ingredients on the containers of both the

parties have been printed in black colour and so

is the statutory warning.

d) There is a monogram of palm tree in hand on

the label of the plaintiff. The label of the

defendant uses folded palms in the midst of

leaves. A layman, who at the time he comes

across the product of the defendant does not

have the benefit of having the product of the

plaintiff with him, may easily mistake this

monogram as that of the plaintiff.

e) Registration number has been printed on the

label of the plaintiff though the label of the

defendant is not registered under the

Trademarks Act, the inscription on the label

says that it is a registered trademark. This,

obviously, is not a correct statement of fact and

presumably is intended to misguide the

purchaser.

f) The shape of the container being used by the

defendant is similar to the shape of the

container being used by the plaintiff. The word

„CHAP‟ has been used on the label of the

plaintiff, as also on the label of the defendant.

In my view, the above referred prominent

similarities between the label of the plaintiffs and labels of

the defendant are sufficient to confuse an unwary

purchaser, who particularly if he comes from a rural

background or is not educated enough, as regards the

source of the product and when he comes across the

product of the defendant No.1 in the market, he may easily

mistake that product as the product of the plaintiff. This is

more so, when the product of the plaintiff is not kept side by

side with the product of the defendant No.1 and therefore

the customer does not have the benefit of comparing the two

products. In any case, for the purpose of deciding whether

the one trademark is deceptively similar to another or not

only the broad and essential features of the two marks are

to be seen and the marks have not to be placed side by side

to identify the dissimilarities between them. The test is of

overall similarities which are likely to mislead the unwary

customer, who shall purchase the products being sold

under the impugned trademark. No doubt there are some

dissimilarities between label of the plaintiff and the labels of

defendant No.1. But, the overall impression one gets is that

the labels of the defendants are deceptively similar to that of

the plaintiff. As noted earlier, any intelligent person seeking

to copy the trademark of another person is likely to keep

some dissimilarities in the two marks instead of copying the

whole of the mark, so that he may justify the infringement

by highlighting the dissimilarities. Therefore,

notwithstanding such minor dissimilarities, the Court has

to see the overall impression created in its mind, to

ascertain whether one mark is likely to be mistaken as

another mark or not and applying this test, I am of the view

that the labels being used by the defendant No.1 can

reasonably be mistaken as those of the plaintiffs.

7. During the course of arguments, the learned

Counsel for defendant No.1 submitted that since no

injunction has been granted to the plaintiff during last

about 05 years there is no justification to grant injunction

at this stage. In support of his contention he has relied

upon the decisions of Supreme Court dated 7th September,

2009 in M/s Shree Vardhman Rice & Gen. Mills v. M/s

Amr Singh Chawalwala SLP (C) No. 21594/09 and in Bajaj

Auto Limited v. TVS Motor Company Limited (2009) 9

SCC 797. In the case of Shree Vardhman Rice (supra), a

Division Bench of this Court had restrained the appellant

from using the word "HARA QILLA" and device "QILLA‟ on

their bags/packets of price as a trademark. While disposing

of SLP filed by the defendant Supreme Court inter alia

observed as under:

Without going into the merits of the controversy, we are of the opinion that the matters relating to trademarks, copyrights and patents should be finally decided very expeditiously by the trial Court instead of merely granting or refusing to grant injunction. Experience shows that in the matters of trademarks, copyrights and patents, litigation is mainly fought between the parties about the temporary injunction and that goes on for years and years and the result is that the suit is hardly decided finally. This is not proper.

Proviso (a) to Order XVII Rule 1(2) CPC states that when the hearing of the suit has commenced, it shall be continued from day-to-day until all the witnesses in attendance have been examined, unless the Court finds that, for the exceptional reasons to be recorded by it, the

adjournment of the hearing beyond the following day is necessary. The Court should also observe clauses (b) to (e) of the said proviso.

In our opinion, in matters relating to trademarks, copyright and patents the proviso to Order XVII Rule 1(2) CPC should be strictly complied with by all the Courts, and the hearing of the suit in such matters should proceed on day to day basis and the final judgment should be given normally within four months from the date of the filing of the suit.

However, the injunction granted by the Court was

not vacated by the Supreme Court.

8. In Bajaj Auto Limited (supra), Supreme Court

referred to its decisions in Shree Vardhman Rice (supra)

and directed that instead of deciding the case at

interlocutory stage, the suit itself should be decided at a

very early date. The Court appointed a Receiver to whom

record of sale and export were to be submitted by the

defendant/respondent every fortnight and those

records/accounts were to be signed and authenticated by a

responsible Officer of the defendant/respondent. The

Receiver was required to verify the said sale

records/accounts and submit his report to the Bench of

Madras High Court where the suit was pending.

In neither of these judgments, Supreme Court has

said that in no case of infringement of a trademark interim

injunction should be given by the Court. The emphasis of

the Supreme Court has been on day-to-day trial of such

cases in terms of proviso (a) to Order XVII Rule 1(2) CPC

which provides for day-to-day hearing of the suit until all

the witnesses in attendance have been examined. This

object can conveniently be achieved by appointing a Local

Commissioner to record evidence of the parties in a time

bound manner at the cost of the plaintiff and directing that

the fees of the Local Commissioner shall not form part of the

costs of the suit.

9. It would be pertinent to note here that when the

suit was filed, the Court at the very first hearing observed

that the possibility of a consumer being confused in relation

of colour scheme adopted by the defendant, confusion being

that goods are those of the plaintiff, could be ruled out.

However, since the Court had given a short notice in the

suit, it decided to defer consideration of interim injunction

hoping that the defendant would agree to an amicable

solution which may be offered to him. It would also be

pertinent to note here that during the pendency of the suit

some labels other than the impugned labels were suggested

by the defendant but those labels were not acceptable to the

plaintiff. This would show that the defendant is not very

particular about using the impugned labels and is open to

suitably modify them.

For the reasons given in the preceding paragraphs

the defendant is restrained from using the impugned labels

during pendency of the suit. The defendant would however,

be at liberty to come out with some other label and seek

approval of the Court to use that label during pendency of

the suit. The application stands disposed of in terms of this

order.

It is made clear that the observations made in this

order being prima facie and tentative made only with a view

to decide the application and will not affect the decision of the

suit on merits.

CS(OS) No. 2094/2006

Issues in this case have already been framed on

13th February, 2009 and even two affidavits by way of

evidence have already been filed on behalf of the plaintiffs.

Shri S.L.Khanna, Ex DHJS R/o 1164, Sector A, Pocket A

Vasant Kunj, New Delhi-110070 is appointed as Local

Commissioner to record the cross examination of the

witnesses of the plaintiffs as well to record the evidence of

the defendant. The fees of the Local Commissioner is fixed

at Rs.50,000/- (composite, inclusive of secretarial

assistance), which shall be paid by the plaintiffs and shall

not form part of the costs of the suit. The Local

Commissioner will conclude the recording of evidence within

three months of the parties appearing before him. The

parties are directed to appear before the Local

Commissioner at 5.00 pm on 12th September, 2011 for

fixing dates for recording cross examination of the witnesses

of the plaintiffs. If any witness is sought to be summoned

by the plaintiffs they will take dasti summons of that

witness and shall get him served at their own responsibility,

failing which they will have no further opportunity for that

purpose. The parties shall render full cooperation to the

Local Commissioner in concluding the assignment within

the time fixed by the Court for this purpose. The matter be

listed before the Court on 17th January, 2012 awaiting the

report of the Local Commissioner. If the recording of the

evidence is delayed and the delay is attributable to the

plaintiffs, the defendant shall be at liberty to apply to the

Court for vacation of the interim injunction.

(V.K. JAIN) JUDGE SEPTEMBER 08, 2011 Ag/vn