Fmi Limited vs Mr. Ashok Jain & Ors
2013 Latest Caselaw 1339 Del

*          THE HIGH COURT OF DELHI AT NEW DELHI
+                        CS (OS) 189/2005
                                           Date of Decision: 19.03.2013

FMI LIMITED                                          .......Plaintiff
                           Through:     Mr. Sushant Singh, Mr. Tejinder
                                        Singh, Mr. P.C. Arya & Mr.
                                        V.K. Shukla, Advs.

                                  Versus
MR. ASHOK JAIN & ORS                                 ......Defendants
                           Through:     Mr. Nitesh Kumar Singh, Adv.

CORAM:
HON'BLE MR. JUSTICE M.L. MEHTA


M.L. MEHTA, J. (Oral)

1. This is a suit seeking permanent injunction against infringement of trademark and passing off. The plaintiff has also prayed for damages and delivery up of all infringing articles qua the plaintiff‟s trademark "FREEMANS", adopted for measuring tapes and part components thereof. The brief facts of the case are as under.

2. The plaintiff is a company registered under the Companies Act, 1956 and carries on the business of manufacturing and/or marketing and exporting measuring tapes and part components thereof. The trademark FREEMANS was registered under No. 215880 on 06.12.1963, in respect of tape measures under class 9 and the same

trademark were registered under No. 44095 on 26.06.1985 with respect to measuring tapes and allied goods under the same class. It is contended that the plaintiff company has been in the said business for the past five decades, during which period, the trademark FREEMANS was adopted by National Tape Co., a partnership firm. This firm had a sister concern namely Freemans Sales Pvt. Ltd. Vide a family settlement, the trademark FREEMANS and the sister concern Freemans Sales Pvt. Ltd was allotted to one Mr. Madan Mohan Nayar, who was a partner in the firm National Tape Co. The plaintiff company i.e. Freemans Sales Pvt. Ltd then subsequently changed its name to Festo Measuring Industries Ltd. This name was again changed on 08.12.1999 to the existing name FMI Limited.

3. The plaintiff submits that its predecessors initiated the manufacture of Metal Wired Tape (under the trademark FREEMANS) for the first time in India, way back in the year 1950. The plaintiff contends that due to the long use of this trademark over the past five decades, the said trademark has become a leading brand in the country with a substantial market share. The plaintiff also submits that their products have been recognized on a global level with the plaintiff exporting the said products to over sixty countries and has increased its distribution by promoting its brand through the media.

4. The plaintiff alleges that they came to know of the activities of the defendants through advertisements in Economic Times dated 09.01.2004 and the Times of India dated 08.01.2004, regarding the

defendant‟s intention to use the trademark FREEDOM for measuring tapes by FREEDOM MEASURES(defendant no.2 company), which was being promoted by defendant no.1, Mr. Ashok Jain. It is alleged that defendant no.1 was previously a distributor of the plaintiff‟s products for over 25 years under the name and style of Sudesh Hardware Pvt. Ltd. (defendant no.3). The plaintiff contends that the use of the trademark FREEDOM by the defendants is not coincidental, but is done with an intention to confuse prospective customers with regards to the plaintiff‟s trademark FREEMANS. The plaintiff submits that this act of the defendants constitute infringement of the trademark FREEMANS and that by advertising the trademark FREEDOM and by filing an application for its registration and by using the said mark as a trading style, the defendants are trying to give the public an impression that they are associated with the plaintiff‟s product.

5. The defendants in their written statements denied that their trademark was visually similar to that of the plaintiff‟s. It was submitted that on a mere look at the two trademarks, it would be established that the manner and style in which the two marks are written, are completely different. In the plaintiff‟s mark, the word FREEMANS is written prominently whereas in the defendant‟s mark, the alphabet „F‟ is written within a circle and the word FREEDOM is written on the circumference. It is also denied that both the trademarks sound phonetically similar. In addition all the averments made in the plaint have been denied by the defendants.

6. It is pertinent to note that an interim injunction was granted in favour of the plaintiff under Order XXXIX Rules 1 and 2, whereby the defendants were restrained from launching, using, advertising the trademark FREEDOM in respect of measuring tapes and parts/components.

7. Evidence by way of affidavit of Sh. Mohan Nayyar, the Joint Managing Director of the plaintiff, was lead on behalf of the plaintiff. In his evidence, he deposed with regard to all the averments of the plaint, including the fact that defendant no.2, Mr. Ashok Jain, was previously a distributor of the plaintiff for over 25 years under the name M/s Sudesh Hardware Pvt. Ltd and he was known as FREEMANS FITEWALLA in the market, i.e. he was known as a representative of the plaintiff. Sh. Mohan Nayyar was partly cross- examined. He reaffirmed the fact that the services of Mr. Ashok Jain as a distributor were terminated. The defendants‟ right to lead evidence was subsequently closed on 01.03.2012 and they have been proceeded ex parte vide order dated 23.04.2012.

8. The main issue that arises in the present suit is whether the defendant‟s trademark is deceptively similar to that of the plaintiff‟s and whether the act of the defendants constitute infringement and passing off.

9. The Ld. Counsel for the plaintiff submits that their trademark FREEMANS, which was adopted for measuring tapes, had an

inherently distinct connotation. He argued that this trademark had no relation with the product it represented. Referring to the defendants‟ trademark FREEDOM, he submitted that it was deceptively similar to that of the plaintiff‟s with regard to the fact that both these trademarks were used for the same class of good, i.e. measuring tapes and both had an inherently distinct connotation and that they were phonetically similar.

10. The Ld. Counsel for the plaintiff relied on a few examples wherein the High Courts and the Supreme Court has held certain trademarks to be deceptively similar. In the case of Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449, the two trademarks "Amritdhara" and "Laxmandhara" were held to be deceptively similar. In Pidilite Industries Pvt. Ltd v. Mittess Corporation, 1989 PTC 151, this Court found the trademarks "Fevicol" and "Trevicol" to be deceptively similar. Similarly, in the case of Atlas Cycle Industries Ltd. v. Hind Cycle Ltd., 1973 ILR Delhi Series Vol. 1 Page 393, the Division Bench of this Court held that the trademarks "Eastern Star" and "Royal Star" were deceptively similar.

11. The Ld. Counsel for the plaintiff also placed his reliance on the judgment of the Apex Court in Laxmikant Patel v. Chetanbhai Shah, (2002) 3 SCC 65 in which the principle of law of passing off was laid down as under:

"12. In Oertli v. Bowman [ 1957 RPC 388 (CA)] (at p.

397) the gist of passing-off action was defined by stating

that it was essential to the success of any claim to passing-off based on the use of given mark or get-up that the plaintiff should be able to show that the disputed mark or get-up has become by user in the country distinctive of the plaintiff's goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get-up will be understood by the trade and the public in that country as meaning that the goods are the plaintiff's goods. It is in the nature of acquisition of a quasi-proprietary right to the exclusive use of the mark or get-up in relation to goods of that kind because of the plaintiff having used or made it known that the mark or get-up has relation to his goods. Such right is invaded by anyone using the same or some deceptively similar mark, get-up or name in relation to goods not of plaintiff. The three elements of passing-off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff. In our opinion, the same principle, which applies to trade mark, is applicable to trade name."

12. In the case of Amritdhara Pharmacy v. Satya Deo Gupta (supra), the Supreme Court laid down a test for determining deceptive similarity. It held that:

"6. A trade mark is likely to deceive or cause confusion by its 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 Application [ (1906) 23 RPC 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 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." (p. 777)

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 onTrade Marks, 8th Edition, p.

400.)"

13. Applying the above mentioned test to the facts of the present suit, I find that the defendant‟s trademark FREEDOM is deceptively similar to that of the plaintiff‟s trademark FREEMANS. Both the competing trademarks represent the same class of goods i.e. measuring tapes. Both the trademarks also have an inherently distinct connotation i.e., the trademark has no relation with the product being sold. In addition, it should be kept in mind that while deciding cases such as the present suit, the Court should view the two trademarks from the eyes of a person with imperfect recollection.

14. Further, the fact that the plaintiff‟s trademark has been in the market for over five decades and is now known globally is evidence to the fact that the plaintiff has built up a reputation in the market and its products have acquired enormous goodwill. To take advantage of this, the defendants seem to have the intention of passing off their product as that of the plaintiff by adopting a name which is similar to the plaintiff‟s trademark. In addition, the fact that the defendant no.1 was the earlier distributor of the plaintiff‟s products shows that adoption of the said trademark was not merely a coincidence and that he had the intention of passing off his products as that of the plaintiff‟s.

15. In light of the above observations, I decree the suit in part with respect to the prayer clause (i) and (ii) and pass a permanent injunction restraining the defendants from launching, using, advertising the trademark FREEDOM with respect to measuring tapes/ components thereof. I however find no reason to decree the suit with regard to delivery up as the defendants have not yet launched their product in the market due to a temporary injunction operating against them. Further, since the plaintiff has not suffered any loss the prayer for damages also stand dismissed. The suit stands disposed. Decree be drawn accordingly.

M.L. MEHTA, J.

MARCH 19, 2013/rmm