Delhi High Court
M/S Marvel Tea Estate India Ltd vs M/S Nusun Genetic Research Ltd on 2 July, 2012
Author: Manmohan Singh
* HIGH COURT OF DELHI: NEW DELHI
% Order decided on: 02.07.2012
+ I.A. No. 5464/2010 in CS (OS) No. 803/2010
M/S MARVEL TEA ESTATE INDIA LTD ..... Plaintiff
Through: Ms. Pratibha M. Singh, Adv.
Versus
M/S NUSUN GENETIC RESEARCH LTD ..... Defendant
Through: Ms. Sunita K. Sreedharan, Adv.
CORAM:
HON'BLE MR. JUSTICE MANMOHAN SINGH
MANMOHAN SINGH, J.
1. By this order, I propose to dispose of the pending application
under Order XXXIX, Rules 1 and 2 read with Section 151 CPC, being
I.A. No.5464/2010, filed by the plaintiff seeking interim injunction
restraining the infringement of trade mark, rendition of account against
the defendant from in any way using the word "Marvel" from marketing,
selling, offering for sale, advertising directly dealing in goods Hybrid
Rice or use the same with any prefix amount to infringement of
plaintiffs‟ trade mark.
2. The case of the plaintiff is that:-
(a) The plaintiff is part of Marvel Group of Companies engaged
in the business of manufacturing and marketing of goods like tea, soaps,
detergent, bleaching preparation, bearing the trade mark Marvel.
(b) The trademark was adopted and conceived the said trade mark
Marvel in the year 1994. In the application it is averred that the plaintiff
had come to know the illegal trade of the defendant‟s goods. Defendant
was using the trade mark "Nusun Marvel" in their goods and the same
were being sold and no formal billing was made.
(c) It is further averred in the application that the plaintiff
conducted a public search on the web site of the Trade Marks Registry
and thereafter it was revealed that defendant had applied for registration
of trade mark Nusun Marvel on 2nd June, 2009 vide application No.
1824521 wherein the defendant has claimed to be an user since 1st June,
2005. The plaintiff further alleges that the defendant had been
selling/manufacturing goods under Class 30, 31 in a clandestine manner.
(d) The plaintiff further states that the defendant by adopting
plaintiff‟s trademark is causing a loss to the good will of the plaintiff‟s
reputation. It is also causing a deception in the minds of the general
public and thereby creating confusion amongst them. It is also alleged by
the plaintiff that plaintiff‟s goods and defendant‟s goods are so
deceptively similar and thus it is creating a confusion amongst the
general consumers. The plaintiff‟s business and defendant‟s business are
similar. Therefore, an order of injunction is sought by the plaintiff to
restrain the defendant from using the impugned trademark "NUSUN
MARVEL".
3. The defendant-company is an INR 700 crore seed company
engaged in research and development of hybrid seeds for commercial
use. The defendant has 190 products in field crops and vegetables with
sales in 19 states.
4. The defendant obtained seed licence under the Seed (Control)
Order, 1983 from the Department of Agriculture.
5. In June, 2009, the defendant filed a trademark applications for
"NUSUN MARVEL" in classes 30 and 31 which are now pending for
registration.
6. The defendant‟s mark "NUSUN MARVEL" is a composite
mark which was adopted by the defendant with honest and bonafide
intentions. The mark MARVEL, an ordinary English word, used along
with the dominant mark NUSUN which is essential feature of the name
of the defendant‟s company to lend further distinctiveness to the mark as
well as providing a source indicator of the goods.
7. It is alleged by the defendant that the plaintiff and the
defendant are not engaged in the same line of business. They conduct
their respective businesses through different trade channels. The
business of the plaintiff is in the sourcing and marketing of tea which is a
fast moving consumer goods (FMCG), whereas the defendant‟s seeds are
sold to farmers through seed distributors periodically in every sowing
season. The goods produced by defendant are meant to be used for
paddy and the same do not come under the category of FMGC. Rather
there is caution statement mentioned on the product of the defendant
"CAUTION: TREATED WITH POISON (THIRAM +
DELTAMETHRIN) DO NOT USE FOR FOOD, FEED OR OIL
PURPOSE". Hence, the question of confusion between plaintiff‟s goods
and defendant‟s goods does not arise. Both sets of goods are
distinguishable easily and even illiterate persons will be able to
understand the difference between the two products.
8. The defendant states that no damage would be caused to the
reputation of the plaintiff, if the defendant is allowed to use the goods for
paddy seeds under the mark "NUSUN MARVEL" as it is not adversely
affecting any rights of the plaintiff. The plaintiff‟s reputation, if any, is
limited i.e., in relation to "tea" as admitted by them that they have been
using the mark MARVEL in relation to tea since 1994.
9. The defendant alleges that they are selling the products all
over India (especially Northern India) legally with proper receipts and
bills. Hence, no question of infringement and passing off arises as the
defendant has been using the said trademark 1999. The defendant has
obtained a Centralized Seed License granted on 12th May, 1999 to sell
seeds including paddy. The license has been granted under the Seeds Act
of 1996 and Seed (Control) Order 1983. The defendant also submits that
the whole process takes at least 6 to 8 months and involves a lot of paper
works and approval. Hence, the defendant has been a bonafide user of
the said trademark.
10. The defendant also submits that the plaintiff‟s goods is tea
and the same falls under Class 30 and the goods of defendant‟s falls
under Class 31. Both are completely different and there can be no
confusion. Moreover defendant‟s goods are purchased exclusively by
farmers, whereas plaintiff‟s products are consumed by general public and
used every day.
11. I have heard learned counsel appearing on behalf of both
parties. It is pertinent to mention here that earlier the same plaintiff filed
the suit being CS(OS) No.2482/2009 along with the interim application
being I.A. No.16747/2009 against the third party i.e. P.M. Batra (Prop)
M/s Gurukripa Traders who was using the trade mark "MARVEL
TOUCH" in respect of spices and wheat flour etc., the goods falling
under Class-30. The interim application in the said matter was heard by
this Court and after hearing, the defendant was restrained from
manufacturing, selling, offering for sale and dealing in the goods like
Dhania, Mirthi, Haldi, Atta, Maida etc. The defendant in the said matter
filed the appeal before the Division Bench against the order passed on
31st October, 2011. I have been informed by the learned counsels for
both the parties that the said appeal was disposed of as defendant agreed
not to use the mark Marvel. On the basis of giving an undertaking, the
appeal was disposed of.
12. Ms. Prathiba M. Singh, learned counsel for the plaintiff has
relied upon the said judgment passed by this Court which is now
reported in 2012 (49) PTC 82 (Del.). She submits that the present case
is covered by the said judgment, as the defendant in the present case is
also using the essential feature of the mark "MARVEL" in respect of
hybrid rice, the goods which fall in class 30 in which the plaintiff has got
the registered trademark "MARVEL" in relation to various goods
including rice. One such registration has been granted in favour of the
plaintiff bearing No.439740 as of 22.04.2004 in respect of many goods
including rice. The learned counsel has not denied that at present, the
plaintiff is using the mark MARVEL in respect of rice, but the plaintiff
has very much intention to use the same in due course. Therefore, the
said item has been reserved by the plaintiff for future purposes. She
further submits that even for initiating the action for infringement on the
basis of a registered trademark, the user is not required. As far as the
case of passing off is concerned, the learned counsel for the plaintiff
submits that the good „tea‟ used by the plaintiff extensively and the mark
used by the defendant in respect of hybrid rice, are allied and cognate
goods. As per settled law actual confusion and deception is not required
in an action for infringement of trademark and passing off. As the
plaintiff has unique goodwill and reputation of the trademark Marvel in
all parts of India, therefore, the plaintiff has been able to establish its
case for infringement of trademark as well as for passing off, the interim
order already passed be confirmed. The counsel has also denied the user
of 1999 as claimed by the defendant.
13. Pleadings of the parties and documents filed by the parties
have been examined by this Court. Some material facts are necessary to
be referred here which read as under:-
(i) The relevant registered trademarks of the plaintiff:
(a) Trade Mark : MARVEL
Registration No.625297 as of 15.04.1994 in Class-30 in
respect of "Tea"
(b) Trade Mark : MARVAL
Registration No.1280137 as of 22.04.2004 in Class-30 in
respect of "Tea, Coffee, Cocoa, Rice, Sugar, Salt, Pulses,
Spices, Sauces, Noodles, Maida, Suji, Besan, Honey,
Ices, Bread, Biscuit, Confectionery, Cake, Namkeen,
Pastry, Treacle, Yeast, Baking Powder, Vinegar and
Mustard"
(ii) The year-wise sale and publicity expenses of the goods of the
plaintiff:
Year Sales (Rs.) Publicity Expenses
1994-95 9431 9431
1995-96 88504 88504
1996-97 36225303 196033
1997-98 88966345 849429
1998-99 200111762 7692091
1999-2000 282242688 7719160
2000-01 292161864 12681548
2001-02 393051349 30179775
2002-03 386528147 46231752
2003-04 441041928 69714184
2004-05 451242200 47680348
2005-06 54,95,89,547 63,43,597
2007-08 867264705 - Not given -
2008-09 1159531705 - Do -
2009-10 1077152419 - Do -
(iii) It is submitted by the plaintiff that on account of superior
quality of goods of the plaintiff and due to continuous use of
the trade mark "MARVEL" and its copyright in the pouches,
boxes/carton, the goods of the plaintiff have acquired
tremendous reputation and goodwill in the public and trade
and the goods of the plaintiff are demanded and recognized by
the purchasing public at large. The aforesaid trade mark and
copyright in the packing, pouches, tin and goods is exclusively
associated with the plaintiff in the minds of purchasing public
and they purchased the goods of plaintiff bearing the trade
mark "MARVEL" as a guarantee of excellence plaintiff‟s
manufacture and none-else. It has no obvious meaning and
cannot be identically copied.
14. The scanned copy of one of the brochure of the plaintiff‟s
products is as under:
15. The learned counsel for the defendant has relied upon the two
sides of colour brochures used by the defendants. It appears from the
bottom of back side of the brochures supplied by the counsel for the
defendant that the defendant‟s main trademarks in relation to seeds are
"Vibha Seeds, Nusun Seeds, and Sinnova", the scanned copy of which is
as under:-
Front side brochure/pouch supplied by the counsel shows that in fact, the
defendant is using the mark "NUSUN" in respect of the seeds in the
following manner, the scanned copy of the same is reproduced here as
under:-
A perusal of the bottom part of this brochure shows that the
mark "NUSUN" is written in a very small font than the mark
"MARVEL" which is used in respect of hybrid rice.
16. Now, coming to the documents filed by the defendant. It is
alleged that the defendant has been using the mark MARVEL/NUSUN
MARVEL in respect of a variety of paddy/rice seeds since 1999.
Annexure-4 filed along with the list of documents filed by the defendant
which is a brief profile of the defendant taken from its website shows
that the trademarks of the defendant are "Vibha, Nusun and Sinnova".
The mark MARVEL in respect of the seeds is not mentioned in the said
print. Most of the documents show that the defendant‟s main trademark
is "Vibha Seeds" and appears from the documents that the defendant is
known in the market as "Vibha Seeds". At one place, it is mentioned the
mark MARVEL as one of the variety mark. The said document is
available at page-88 of the list of documents. In nut-shell, most of
documents show the defendant‟s profile. The defendant‟s main
trademarks are "Vibha Seeds" and "Nusun Seeds" and various
variety/quality marks are mentioned in the category of Nusun Seeds, the
same are mentioned as Sigma, Legend, Fame & Reyflo, Glow, Marvel
Crown & Giant, Sarpanch and Pushti. In Annexure-5 which is licence
granted to the defendant in 1999 under the Seeds Act, 1966, the various
varieties/hybrids marks are mentioned, like Sunflower: Max, Reyflo;
Maize: Amaze, Prince, Legend, Bliss etc. In Annexure-6, the defendant
has given a consolidated statement of sale figures for three years i.e.
from 2007 to 2009. The defendant has also filed the list of purchase
orders for advertisement banner and other promotional material bearing
the trademark NUSUN MARVEL. The said orders are from the date of
April, 2010 where the trademark MARVEL is mentioned in the said
purchase orders for promotional material with regard to posters. The
defendant has also filed few invoices from the year 2007 bearing the
trademark MARVEL which have been issued by the defendant to various
parties throughout India in respect of goods in question.
17. No doubt, as per record some evidence from the year 2007 is
available about the use of mark MARVEL. But, after having gone
through the documents, there is no clear and cogent evidence about the
use of mark Marvel to show that it has been using the trademark
MARVEL in relation to their goods since the year 1999 as claimed by
the defendant. Even the defendant has not filed even a single piece of
document about its advertisement on record to claim the user of the mark
MARVEL. The present suit has been filed the year 2010. The
defendant‟s counsel has not denied the fact that the plaintiff is holding
the registration of the trademark MARVEL in respect of rice, except it is
argued by the learned counsel for the defendant that the plaintiff is not
dealing in rice at present. The similar arguments were dealt by this
Court in the earlier case and the matter was decided between the parties.
18. Learned counsel, appearing on behalf of the plaintiff, states
that the mark MARVEL has no meaning in the dictionary. It has been
adopted by the plaintiff in 1994. The plaintiff has no objection if the
defendant may use the word „Marvelous‟ in relation to its product.
19. In view of the above said facts and circumstances, the
following four issues are involved in the matter:-
(i) Whether the defendant is guilty of infringement of the
registered trademark of the plaintiff‟s trademark
MARVEL?
(ii) Whether the two trademarks MARVEL and NUSUN
MARVEL are deceptively similar?
(iii) Whether the defendant is passing off its goods as that
of the plaintiff?
(iv) Whether the defendant is entitled to any benefit of the
user since 2007 as produced in the Court?
20. The law relating to infringement of a registered trademark has
been envisaged u/S 29 of the Trade Marks Act, 1999 and exclusive
rights granted by virtue of registration under Section 28 which reads as
under:-
"29. Infringement of registered trade marks -
"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. ......"
"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 person 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."
By mere reading of these provisions, it is clear that a
registered trademark is infringed by a person who not being a registered
proprietor, uses in the course of trade a mark which is identical or
deceptively similar in relation to the goods or services which are
identical or similar to that in respect of which the trademark is registered
without the permission of the trademark owner.
21. So far as infringement qua different goods is concerned,
separate enactment of Section 29(4) makes it clear that the strict rigors
are prescribed as against the ordinary case of similar goods wherein a
registered proprietor has to establish that the registered trademark has
reputation in India and is of such a nature wherein the use of the mark by
the other side without due cause would tantamount to taking unfair
advantage or detrimental to the distinctive character or repute of a
trademark.
22. A reading of Section 29(4) of the Act would reveal that the
said protection qua different goods is earmarked by the Legislature for
the trademarks which are either highly reputed or well known or famous
trademarks and enjoy either high level of distinctiveness or the marks
which are inherently distinctive in nature or has become distinctive due
to their repute; the use of which will cause detrimental to the distinctive
character and repute of the trademark only when the ingredients of
Section 29(4) are satisfied conjunctively which is sub sections (a), (b)
and (c) the infringement qua Section 29(4) in relation to different goods
is attracted.
23. It is settled law that in order to prove the case for
infringement of trade mark, the plaintiff has to show that the essential
features of the registered trade mark which has been adopted by the
defendant has been taken out from the plaintiff‟s registration. Only the
marks are to be compared by the Court and in case the registration is
granted in favour of the plaintiff, he acquires valuable right by reason of
the said registration. The following are the judgments which are relevant
to be referred for the purpose of infringement of the trade mark:
i. Kaviraj Pandit Durga Dutt Sharma v. Navaratna
Pharmaceutical Laboratories AIR1965SC980 - at 989-
990 page wherein it was held that:
"The action for infringement is a statutory remedy conferred
on the registered proprietor of a registered trade mark for
the vindication of the exclusive right to the use of the trade
mark in relation to those goods"
"if the essential features of the trade mark of the plaintiff
have been adopted by the defendant, the fact that the get-up,
packing and other writing or marks on the goods or on the
packets in which he offers his goods for sale show marked
differences, or indicate clearly a trade origin different from
that of the registered proprietor of the make would be
immaterial"
ii. In the case of American Home Products v. Mac
Laboratories AIR 1986 SC 137 in Para 36 it was held as
under:
"When a person gets his trade mark registered, he acquires
valuable rights by reason of such registration. Registration
of his trade mark give him the exclusive right to the use of
the trade mark in connection with the goods in respect of
which it is registered and if there is any invasion of this
right by any other person using a mark which is the same or
deceptively similar to his trade mark, he can protect his
trade mark by an action for infringement in which he can
obtain injunction...."
iii. In the case of National Bell Co. v. Metal Goods Mfg. Co.
AIR 1971 SC 898 at page 903 it was held as under:
"On registration of a trade mark the registered proprietor
gets under Section 28 the exclusive right to the use of such
trade marks in relation to the goods in respect of which the
trade mark is registered and to obtain relief in respect of any
infringement of such trade mark."
iv. M/s Avis International Ltd. vs. M/s Avi Footwear
Industries and another, reported in AIR 1991 Delhi 22,the
relevant paras of which read as under:
"14. At this stage of the case, we have no affidavit
against another affidavit, and in view of the statutory
provisions of Ss. 28 and 31 of the Trade and Merchandise
Marks Act, it would be appropriate to rely upon contentions
of the plaintiffs.
17. In my view, the statutory monopoly which has
been conferred upon the plaintiffs in connection with use of
the mark AVIS for any other consideration in relation to
grant or non-grant of an injunction, especially when the
matter is at an interlocutory stage...
24. So in the present case, it is not disputed by defendant that the
plaintiff is holding the registration of the mark Marvel in respect of rice.
The defendant has not challenged the trademark of the plaintiff by filing
of rectification application. Thus, in view of settled law, prima facie,
case of infringement of trademark is made out.
25. The judgment passed in the case of Midas Hygiene vs.
Sudhir Bhatia and Ors., reported in 2004 (28) PTC 121 (SC) Para-5, it
was held as under:
"The grant of injunction also becomes necessary if it prima
facie appears that the adoption of the Mark was itself
dishonest."
26. As regards issue No.2 as to whether the trademark used by the
defendant is deceptively similar or not, it appears that the defendant is
using the essential feature of the mark MARVEL is admittedly in respect
of the goods, i.e. hybrid rice used by the defendant. Even, most of the
invoices filed by the defendant show that the trademark MARVEL is
used exclusively. The law pertaining to the essential feature of the mark
is quite and clear. The Division Bench of this Court in the case of M/s.
Atlas Cycle Industries Lid. vs. Hind Cycle Ltd., reported in ILR 1973
Delhi 393 has dealt with some issues in great details. The findings given
by the Bench are reproduced as follows:
"In an action for an alleged infringement of a registered
trade mark, it has first to be seen whether the impugned
mark of the defendant is identical with the registered mark
of the plaintiff. If the mark is found to be identical, no
further question arises, and it has to be held that there was
infringement. If the mark of the defendant is not identical, it
has to be seen whether the mark of the defendant is
receptively similar in the sense that it is likely to deceive or
cause confusion in relation to goods in respect of which the
plaintiff got his mark registered. For that purpose, the two
marks have to be compared, 'not by placing them side by
side. but by asking itself whether having due regard to
relevant surrounding circumstances, the defendant's mark as
used is similar to the plaintiff's mark as it would be
remembered by persons possessed of an average memory
with its usual imperfections', and it has then to be
determined whether the defendant's mark is likely to deceive
or cause confusion".
27. In Taw Manufacturing Coy. Lid. v. Notek Engineering
Coy. Ltd. and another, reported in (1951) 68 RPC 271(2), the
monopoly right claimed under the registered trade mark related to Motor
Lamps and consisted of a pictorial device and the word "Taw". The
device comprised of a representation of the full-faced view of a cat's
head, wherein the eyes were drawn in. the form of a motor ear headlamps
and the whole was superimposed upon an open body motor ear viewed
from the front in a manner as to substitute the cat's head for She bonnet
and radiator as normally seen. The device that was the subject matter of
challenge consisted of a square panel with informative particulars printed
below. The panel depicted a full-faced view of a cat's head with the eyes
drawn as motor car headlamps, beneath which was the caption ''Let
Notek be your eyes in fog and darkness". The disposition and lettering
was such as to lead the render to lake particular notice of the device with
the word "Notek" beneath it. The question for decision was whether
there was infringement by the latter device of the former registered trade
mark. The Court held:
"A trade mark is infringed if a person other than the
registered proprietor or authorised user uses, in relation to
goods covered by the registration, one or more of the trade
mark's essential particulars. The identification of an
essential feature depends partly upon the Court's own
judgment and partly upon the burden of the evidence that is
placed before the Court".
28. In the case of Kedar Nath vs. Monga Perfumery & Flour
Mills, Delhi-6, reported in AIR 1974 Delhi 12, under the similar
circumstances, the Court held that the case of infringement of the
trademark is made out. The two rival trademarks in the said case were
SUDERSHAN and VIJAY SUDERSHAN. The relevant paras-13, 14 &
15 of the said judgment read as under:-
"13. The certificate of registration of the trademark is
Prima facie evidence of the validity thereof under Section 31
of the Act. The registration of the trade mark, if valid, elves to
the registered proprietor of the trade mark under Section 28 of
the Act the exclusive right to its use in relation to the goods in
respect of which it is registered and further to obtain relief in
respect of its infringement in the manner provided by the Act.
Under Section 29(1) of the Act:
"29. (1) A registered trade mark is infringed by a
person who not being the registered proprietor of the
trade mark or a registered user thereof 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 any goods 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."
14. xxxxxxxxxxxxx
On an ocular examination it appears that there is close
similarity and identity in the essential features of the two
cartons. In my opinion the carton, mark and the label etc. of
the defendant constitute a clear infringement of the plaintiff's
registered trademark and of his statutory right to its exclusive
use. The infringement of the registered trademark of the
plaintiff committed by the defendant, being contrary to the
provisions of Section 28, is illegal and defendant cannot be
allowed to continue in its illegal activity. The balance of
convenience is in favor of the plaintiff. The defendant has
several other brands of dhoop and he can carry on his
business of selling dhoop-batti in the other brands. As the
defendant has failed to place material facts before the Court
from which it can be inferred that the defendant has been
using his trade mark since 1952, 1 have not considered it
necessary to put the plaintiff on terms. The plaintiff ' has a
statutory right to the exclusive use of the trademark. He
complains of infringement. To protect his right in the
property, far trademark is a property; an injunction should be
issued in his favor.
15. I would, therefore, accept the application, I. A.
1032 of 1972 and grant a temporary injunction to the,
Petitioner restraining the respondent, its servants, agents,
representatives from manufacturing, selling or offering for
sale or otherwise dealing in dhoop bearing the trade mark
Sudershan with or without any prefix or suffix and from
printing reproducing, using wrappers and cartons as are
identical or deceptively similar to the wrappers and cartons of
the petitioner."
29. In the case of James Chadwick & Bros. Lid. vs. The
National Sewin Thread Co. Ltd.; AIR 1951 Bom 147 the Court ruled
that in an action for infringement what is important is to find out what
was the distinguishing or essential feature of the trade mark already
registered and what is the main feature or the main idea underlying the
trade mark. In Parle Products (f) Ltd. v. J.P. & Co. Mysore.: [1972] 3
SCR 289 the Supreme Court took the same view.
In view of the settled law as referred above, it is clear that two
marks are deceptively similar to each other. Thus, issue No.2 is decided
in favour of the plaintiff.
30. Now, coming to the third issue pertaining to the passing off,
the following are the essential characteristics of an action of passing off:-
(A) In Erven Warnink B.V. v. J. Townend & Sons
(Hull) Ltd., 1980 RPC 31, Lord Diplock stated the essential
characteristics of a passing off action as under:
"(1) misrepresentation, (2) made by a person in the
course of trade, (3) to prospective customers of his or
ultimate consumers of goods or services supplied by
him (4) which is calculated to injure the business or
goodwill of another trader (in the sense that this is a
reasonably forseable consequence and (5) which
causes actual damage to a business or goodwill of the
trader by whom the action is brought or (in a quia
timet action) will probably do so."
(B) The essentials of passing off action in Halsbury's
Laws of England Vol. 38 (3rd Edition) para 998 as given
below are worth noting:
"998. Essentials of the cause of action
The plaintiff must prove that the disputed
name, mark, sign or get up has become distinctive of
his goods in the sense that by the use of his name or
mark, etc in relation to goods they are regarded, by a
substantial number of members of the public or in the
trade, as coming from a particular source, known or
unknown; it is not necessary that the name of the
plaintiff's firm should be known.....The plaintiff must
further prove that the defendant's use of name or mark
was likely or calculated to deceive, and thus cause
confusion and injury, actual or probable, to the
goodwill and the plaintiff's business, as for example,
by depriving him of the profit that he might have had
by selling the goods which ex hypothesi, the
purchaser intended to buy. Thus, the cause of action
involves a combination of distinctiveness of the
plaintiff's name or mark and an injurious use by the
defendant of the name or mark or a similar name or
mark, sign, picture or get-up does or does not amount
to passing off is in substance a question of evidence;
the question whether the matter complained of is
likely to deceive is a question for the Court."
31. The judgment passed in the case of Laxmikant Patel vs.
Chetanbhai Shah, reported in (2002) 3 SCC 65, the relevant para 10 of
which reads as under:-
"The law does not permit any one to carry on his business in
such a way as would persuade the customers or clients in
believing that his goods or services belonging to someone
else are his or are associated therewith. It does not matter
whether the latter person does so fraudulently or otherwise.
The reasons are two. Firstly, honesty and fair play are, and
ought to be, the basic policies in the world of business.
Secondly, when a person adopts or intends to adopt a name
in connection with his business or services which already
belongs to someone else it results in confusion and has
propensity of diverting the customers and clients of
someone else to himself and thereby resulting in injury."
In this case, the Apex Court further observed that:
"Where there is probability of confusion in business, an
injunction will be granted even though the defendants
adopted the name innocently."
32. The judgment passed in the case of B.K.Engineering Co. vs.
Ubhi Enterprises and Anr., reported in 1985 PTC 1, Para-57, it was
held as under:-
"Trading must not only be honest but must not even
unintentionally be unfair."
33. In passing off action, it is held in various cases include in the
case of Century Traders Vs. Roshan Lal Duggar, reported in AIR
1978 Delhi 250 (DB) referred by counsel for the defendants that actual
deception is not necessary in order to establish the case of passing off.
34. As regards the goods, i.e. tea and hybrid rice, it is not
disputed by the learned counsel for the defendant that the plaintiff is
holding the registration in respect of rice. The counsel has also not
disputed the fact that the plaintiff has been using the mark Marvel in
extensive way and it has acquired goodwill and reputation in respect of
tea business. In passing off action, the mark can be protected in relation
to dis-similar goods in case of chance of likelihood of confusion and
deception and a case with that regard is made out. The following
decisions are referred in this regard:-
(a) L.R.C. International Limited and another v. Lilla
Edets Sales Company Limited, reported in 1983 RPC
560, wherein an action of passing off held to a
maintainable by a manufacturer of household gloves and
plastic pants for babies, employing the trade mark
"Marigold" against a party that had adopted the said trade
mark for toilet tissues and prayer for interlocutory
injunction to restrain this passing off was allowed
upholding the contention that the goods were sold through
the same shops on the same counter and bought by house-
wives and also taking into consideration the plea that the
plaintiffs planned to extend the area of their operations by
going in future in to manufacture of toilet tissues also and
they were thus entitled to protection. In this case, the plea
that when placed side by side, the respective trademarks
could be observed to be not exactly similar was also
rejected, on the view that where there is general similarity
in details, particularly when the marks are not seen side by
side, and when those similarities are striking then the party
adopting the trade mark or trading style at a later point of
time has to be restrained, and that it was not possible to
imagine that confusion would not in fact result.
(b) Lego System Aktieselskab and Another v. Lego M.
Lemeistrich Ltd., Fleet Street Reports (1983) page 154, in
which it was held that once it is shown that the plaintiff
had acquired high reputation in the trade mark (Lego in the
case) which were trading in toys and construction kits,
there could be no limitation in respect of parties' field, and
activities so far as passing off action was concerned and in
case there was likelihood of a person being misled that the
goods marketed by the defendant were products of the
plaintiff or connected with them, injunction should issue.
The contention as to actual damages being proved as an
essential ingredient for getting relief was also rejected,
although defendant's activity consisted of manufacturing
of irrigation equipment including garden sprinklers for the
reason that both sets of goods were made of coloured
plastic material and it was held on the basis of judgment in
the case of Advocate that as a necessary ingredient to
found a cause of action in passing off, there was no
limitation as to the relation of field of activity of the
defendant to that of the plaintiff.
(c) In the case of Banga Watch Company vs. N.V. Philiphs,
reported in AIR 1983 P&H 418, the plaintiff M/s. N.V.
Philliphs was using the trade mark PHILLIPHS, which had
become a household mark and acquired enviable
reputation in India and throughout the world dealing in
electrical and electronics goods. The defendant was using
the trade mark PHILLIPHS in request of watches and
clocks.
(d) In the case of Bata India Ltd. vs. Pyare Lal & Co.,
reported in AIR 1985 All. 242, the plaintiff was using the
trade mark in respect of canvas, rubber, leather shoes,
rubber footwear, etc., whereas the defendant started using
the trade mark Bata and Batafoam in relation to mattresses.
The Court after discussing in detail the law on passing off
action granted injunction in favor of the plaintiff despite
the fact that the same trade mark was being used for
different goods.
35. After having considered the abovementioned decisions and
facts and circumstances in the matter, it appears to me that the plaintiff
has been able to make out a prima facie case of passing off also.
36. One more aspect of the matter is that when the suit was listed
first time before court along with interim application. An ex-parte ad-
interim injunction was granted on 28.04.2010 whereby the defendant
was restrained from manufacturing or trading any goods in the class 30
of the Trade Marks Act under the impugned trade mark MARVEL. The
said order has not been vacated so far but counsel for the defendant has
informed the Court that since the interim order was not extended after
the order passed on 28th April, 2010, therefore, the defendant has been
using the same as it was passed till the next date. As no arguments were
addressed by the learned counsel for the plaintiff in this aspect, hence no
order is passed accordingly.
37. Lastly the learned counsel for the defendant has argued that
there is a delay on the part of the plaintiff in bringing the action before
this court. Let me mention here that no clear and cogent evidence has
been produced by the defendant regarding user claimed except few
invoices from the period 2007, 2008 and 2009 have been filed. No
separate sale and advertisement figures have been filed bearing the mark
Marvel so as advertisement material. Thus, it is very difficult to give the
benefit of user as claimed by the defendant. Few decisions on the aspect
of delay are referred as under:
a) In the case of Midas Hygiene Industries Pvt. Ltd. vs.
Sudhir Bhatia and others, 2004 (Vol.28) PTC 121,
relevant para-5 of the said judgment is as under:
"5. The law on the subject is well settled. In cases of
infringement either of Trade Mark or of Copyright normally
an injunction must follow. Mere delay in bringing action is
not sufficient to defeat grant of injunction in such cases. The
grant of injunction also becomes necessary if it prima facie
appears that the adoption of the Mark was itself dishonest."
b) In the case of Swarn Singh vs. Usha Industries (India)
and Anr., AIR 1986 Delhi Page No.343 (DB) it was held
as under :
"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 aground 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....."
c) In the case of Hindustan Pencils Pvt. Ltd. Vs. M/s India
Stationery Products Co., AIR 1990 DELHI 19 it was
held as under :
"................. It was observed by Romer, J. in the matter
of an application brought by J.R. Parkingnon and Co. Ltd.,
(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."
d) In the case of M/s. Bengal Waterproof Lim. Vs. M/s.
Bombay Waterproof Manufacturing Co. AIR 1997 SC
1398 it was held as under :
"20.........It is now well settled that an action for passing off
is a common law remedy being an action in substance of
deceit under the Law of Torts. Wherever and whenever
fresh deceitful act is committed the person deceived would
naturally have a fresh cause of action in his favour. Thus
every time when a person passes off his goods as those of
another he commits the act of such deceit. Similarly
whenever and wherever a person commits breach of a
registered trade mark of another he commits a recurring act
of breach or infringement of such trade mark giving a
recurring and fresh cause of action at each time of such
infringement to the party aggrieved. It is difficult to agree
how in such a case when in historical past earlier suit was
disposed of as technically not maintainable in absence of
proper relief, for all times to come in future defendant of
such a suit should be armed with a license to go on
committing fresh acts of infringement and passing off with
impunity without being subjected to any legal action
against such future acts."
38. From the material produced by the defendant, it appears from
the documents that the defendant has merely filed few invoices for the
years 2007, 2008 and 2009 for use of the trademark MARVEL. There is
no continuous evidence available on record or advertisement in the
newspaper to establish that the plaintiff was aware about the user of the
defendant, if any, from the year of user as claimed by the defendant. In
any case, in an action for infringement the delay is not fatal.
39. Considering the overall facts and circumstances of the case,
the plaintiff has been able to make out a strong prima-facie case for
affirmation of the interim order earlier passed on 28th April, 2010. The
balance of convenience also lies in favour of the plaintiff and against the
defendant. In case the interim order is not passed, the plaintiff will
suffer irreparable loss and injury because the defendant is using the same
trademark MARVEL in respect of hybrid rice in which the plaintiff has
got the registration and is already having a unique goodwill and
reputation in relation to the trademark MARVEL in respect of tea
business.
40. Having regard to all these circumstances, the present
application is allowed. Thus, till the disposal of the present suit, the
defendant is hereby restrained from manufacturing, selling, offering for
sale, advertising, directly or indirectly dealing in all the goods falling in
class 30 and 31 bearing the mark MARVEL as and/or any other trade
mark, as may be identical with and/or deceptively and confusingly
similar to the plaintiff‟s registered trade mark "MARVEL" which results
in infringement of trade mark of the plaintiff so as to pass off or enable
others to pass off the defendant‟s goods/product and/or business and/or
services as and for the goods/products/business and service of the
plaintiff and/or some way connected with the plaintiff. The application
is accordingly disposed of.
41. However, the defendant is granted six months‟ time to
dispose of the existing material, if any, bearing the trademark NUSUN
MARVEL.
42. The findings given herein are tentative which shall not have
bearing in any manner when the matter would be considered by the Court
after the trial.
CS(OS) No.803/2010
The issues in this matter have already been framed. Both the
parties have already filed their respective affidavits as evidence. The
matter is at the stage of trial which is expedited. Accordingly, Sh. S.K.
Tandon (retired Additional and Sessions Judge, Delhi) (Mob.
9811719888), is appointed as a Court Commissioner to record the
evidence of the parties. He shall make endeavour to complete the
evidence of the parties within a period of 6-9 months. Let the matter be
listed before the Court Commissioner on 2nd August, 2012 at 4:00 pm for
directions regarding the recording of evidence of the parties in the High
Court premises. His fee is fixed at Rs.60,000/- which shall be paid by
the plaintiff. The remaining fee would be fixed, if necessary, depending
upon the evidence and time consumed in the matter. The Dealing
Assistant of the matter will produce the record of the case before the
Court Commissioner on all the dates fixed by him for the purpose of
recording the evidence of the parties. He be paid diet money as per
rules, by the parties concerned. The parties are also granted liberty to
take the assistance of the Registry for the purpose of summoning the
witness(s). A copy of this order be sent to the Court Commissioner.
MANMOHAN SINGH, J.
JULY 02, 2012
