Dow International Technology ... vs Elixir Trading Pvt Ltd
2014 Latest Caselaw 5807 Del

*     IN THE HIGH COURT OF DELHI AT NEW DELHI

%                             Order delivered on: 14th November, 2014

+                    I.A. No.16142/2013 in CS(OS) No.612/2013

      DOW INTERNATIONAL TECHNOLOGY CORPORATION &
      ORS                                      ..... Plaintiffs
                  Through Mr.Rajiv Nayar, Sr.Adv. with
                           Ms.Shiraz Patodia & Ms.Shikha
                           Tandon, Advs.

                          versus

      ELIXIR TRADING PVT LTD                   ..... Defendant
                    Through Mr.Gaurav Mitra, Adv. with
                             Mr.Rishabh Maheshwari &
                             Ms.Samreen, Advs.

      CORAM:
      HON'BLE MR. JUSTICE MANMOHAN SINGH

MANMOHAN SINGH, J. (ORAL)

1. The suit for permanent injunction restraining infringement of trademarks and passing off etc. was filed by the plaintiffs on the basis that the plaintiffs are the owners of the trademark DOW and several variants thereof. The interim order was passed against the defendants restraining them from using the trademarks "DOW", "DOW FLOW" and "FilmTec". The said interim order was also confirmed by order dated 29th October, 2013. The defendant made the request before the Court to dispose of the material seized by the Local Commissioner under a different brand name. In compliance with the order dated 29th October, 2013, the defendant filed an affidavit dated 24th January, 2014 seeking permission to dispose of

the goods under the trademark DEWFLOW. Learned Senior counsel appearing on behalf of the plaintiffs has got the strong objection to the use of the trademark DEWFLOW. His submission is that once the use of trademark DOWFLOW has been restrained by the Court, the defendant has no justification to dispose of the goods seized by the Local Commissioner by using the trademark DEWFLOW, as the said mark DEW is deceptively similar to the trademark DOW for which the interim order was passed by the Court.

2. Mr.Mitra, learned counsel for the defendant, on the other hand, states that the above said two trademarks are not deceptively similar.

3. I do not agree with Mr. Mitra, learned counsel, as it appears to the Court that the two marks DOW/DOWFLOW and DEW/DEWFLOW are closely similar. Even otherwise once the interim order is confirmed with regard to the mark DOW, the adoption of mark DEW is tainted and dishonest. The following decisions which go in favour of the plaintiff are as under:-

i. In Essco Sanitations Vs. Mascot Industries (India) AIR 1982 Delhi 308, a decree was been passed prohibiting the defendants from infringing the decree-holders' trade mark 'ESSCO' by adopting and/or using the mark "ESSO' and/or any other deceptively or confusingly similar mark in relation to the Brass cocks (sanitary and bathroom fittings). After the decree was passed, the judgment-debtors were still using the trade mark 'OSSO' in respect of the same goods. The Court observed as under:

"The trade mark 'OSSO' adopted by the judgment- debtors is deceptively similar to the registered trade

mark 'ESSCO' of the decrees -holders and thus the judgment-debtors had disobeyed the decree for permanent injunction granted in favor of the decree- holders by this Court on July 30, 1980"

ii. In K. R. Chinna Krishna Chettiar v. Sri Ambal & Co. and another AIR 1970 SC 146, it was observed as under:

"The resemblance between the two marks must be considered with reference to the ear as well as the eye and ocular comparison is not always the decisive test. Therefore, even if there be no visual resemblance between the two marks, that does not matter when there is a close affinity of sound between the words which are distinctive features of the two marks."

The Court came to the conclusion that:

"There is no evidence of actual confusion, but that might be due to the fact that the appellant's trade is not of long standing. There is no visual resemblance between the two marks, but ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. There is a close affinity of sound between 'Ambal' and 'Andal'.......... The distinguishing feature of the respondents mark is Ambal while that of the appellant's mark is Andal. The two words are deceptively similar in sound. The name Andal does not cease to deceptively similar because it is used in conjunction with a pictorial device."

iii. In the decision reported in K.R. Chinnakrishna Chetty's V.K.

Venkatesa Mudaliar & another AIR 1974 Mad 7, a Division Bench of the Madras High Court held that "Sri Andhal" is deceptively similar to that of "Sri Ambal" and addition of the

word "Radha" to it will not make slightest difference. After considering the decision reported in Cordova v. Vick Chemical Co. (1951) 68 R.P.C. 103 and Ruston and Hornby Ltd. v. Zamindar Engineering Co. A.I.R. 1970 S.C. 1649, the Madras High Court held as follows:

"Though at one stage we considered that the addition of the word 'Radha' to the legend 'Sri Andal' makes all the difference, after our attention was drawn to the three cases referred to above, viz., (1) relating to the Vicks Vaporub, where the objection to the registration of the respondents' Vaporub which infringed the appellants' registered mark was sought to be got over by adding a word 'karcsote' to the respondents' legend, and (2) where the objection to the registration of the respondents' trade mark 'Rustam' was sought to be met by the addition of the word 'India' to the objected legend and (3) where the word 'Bulova' was sought to be added to the legend 'Accutron' which legend was held to infringe the respondents' trade mark 'Accurist', we are persuaded to come to the opposite conclusion that the addition of the word 'Radha' to the legend 'Sri Andal' will not make the slightest difference and that the view of the learned Judge is correct. The appellants' snuff sold under the trade name 'Sri Andal' the registration of which was objected to by the respondents, has been in the market for some years and the objection to its registration has now been finally upheld. The question for consideration now will be whether by the addition of the word 'Radha' to the objected legend makes a vital difference. When the two marks are compared side by side the question will be whether the addition of the word will make any vital difference. As observed by Stamp, J. in 1969 R.P.C. 103 at p. 109. "Where imperfect recollection is relevant what has to be considered is how far the additional word is

significant to prevent imperfect recollection and the resultant confusion". We are of opinion that the combination of the two words "Radha's Sri Andal" is likely to be taken by snuff users as the snuff manufactured and marketed by the appellant originally as "sri Andal". The appellants' learned counsel sought to distinguish the above three cases, on the ground that in the aforesaid decision the new word sought to be added was only the name of the country of manufacture while in the present case, the addition of the word 'Radha' to the legend 'Sri Andal' is a combination which has nothing in common with the respondents' legend 'Sri Ambal'. We are unable to accept the ground of distinction made by the learned counsel. We are of opinion that there is a tangible danger that a substantial number of persons will confuse the appellants' 'Radha's Sri Andal' mark applied for with the respondents' legend 'Sri Ambal snuff."

iv. In the decision reported as (1945) 65 RPC 62, Aristoc v. Rysta decided by the House of Lords, it was held that the comparison of trademarks was a matter of first impression, but the mark "Rysta" too closely resembled mark "Aristoc" phonetically and it would be liable to lead to deception and confusion. v. In the decision reported as (1951) 68 RPC 103, 105, De Cordova v. Vick Chemical Co., the plaintiffs were the proprietors of a label containing the words "Vick's VapoRub" as the essential feature, registered in Jamaica, and the defendants used a similar label with the words "Karsote Vapour Rub" as the essential feature, and it was shown that the expression "VapoRub" had become distinctive of the plaintiff's goods in Jamaica, an action for infringement was successful.

vi. In the decision reported as AIR 1963 SC 449, Amritdhara Pharmacy vs. Satyadeo Gupta, has laid down principles of comparison of marks. The relevant paras are as under:

"....It is not disputed before us that the two names 'Amritdhara' and 'Lakshmandhara' are in use in respect of the same description of goods, namely, a medicinal preparation for the alleviation of various ailments. Such medicinal preparation will be purchased mostly by people who instead of going to a doctor wish to purchase a medicine for the quick alleviation of their suffering, both villagers and townsfolk, literate as well as illiterate. As we said in Corn Products Refining v. Shangrila Food Products Ltd. [1960]1SCR968, the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the two names 'Amritdhara' and 'Lakshmandhara' is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of the two composite words 'Amritdhara' and 'Lakshmandhara'. We do not think that the learned Judges of the High Court were right in saying that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or even consider meanings of the composite words as 'current of nectar' or 'current of Lakshman'. He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a persons educated in the Hindi language would go by the etymological or

ideological meaning and, see the difference between 'current of nectar' and 'current of Lakshman'. Current of Lakshman in a literal sense has no meaning to give it meaning one must further make the inference that the 'current or stream' is as pure and strong as Lakshman of the Ramayana. An ordinary Indian villager or townsmen will perhaps know Lakshman, the story of the Ramayana being familiar to him, but we doubt if he would etymologine to the extent of seeing the so called ideological difference between 'Amritdhara' and 'Lakshmandhara'. He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailments.

13. We agree that the use of the word 'dhara' which literally means 'current or stream' is not by itself decisive of the matter. What we have to consider here is the overall similarity of the composite words, having regard to the circumstance that the goods bearing the two names are medicinal preparations of the same description. We are aware that the admission of a mark is not to be refused, because unusually stupid people, "fools or idiots", may be deceived. A critical comparison of the two names may disclose some points of difference, but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. The trade mark is the whole thing-the whole word has to be considered. In the case of the application to register 'Erectiks' (opposed by the proprietors of the trade mark 'Erector') Farwell, J. said in William Bailey (Birmingham) Ltd.'s Application (1935) 52 R.P.C. 137:

"I do not think it is right to take a part of the word and compare it with a part of the other word; one word must be considered as a whole and compared with the other word as a whole. I think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other work.""

vii. In National Sewing Thread Co. Ltd. Vs. James Chadwick & Bros. Ltd. (J. & P. Coats Ltd., Assignee) AND Registrar of Trade Marks, AIR 1953 SC 357, it was observed as under:

"34. So far as the present case is concerned the goods sold under the respondents' trade mark are well-known and are commonly asked for as "Eagley" or "Eagle", and the particular feature of the trade mark of the respondents by which the goods are identified and which is associated in the mind of the purchaser is the representation of an Eagle appearing in the trade mark. If the trade mark conveys the idea of an Eagle and if an unwary purchaser is likely to accept the goods of the appellants as answering the requisition for Eagle goods, then undoubtedly the appellants' trade mark is one which would be likely to deceive or cause confusion. It is clear to us that the bird in the appellants' trade mark is likely to be mistaken by an average man of ordinary intelligence as an Eagle and if he asked for Eagle goods and he got goods bearing this trade mark of the appellants it is not likely that he would reject them by saying that this cannot be an Eagle. Two years prior to be the application for registration, the respondents described this particular bird an Eagle and called their brand Eagle Brand, The same bird was later on described by them a vulture and the explanation offered was that they so described owing to an honest and bona fide mistake. We have no hesitation in holding that the appellants'

camouflaging an Eagle into a vulture by calling it such is likely to cause confusion. Whatever else may be said about the bird in the appellants' trade mark, it certainly does not represent a vulture or look like a vulture of any form or shape. What has been named by the plaintiffs as a vulture is really an eagle seated in a different posture. That being so, the High Court was perfectly right in the view that Mr. Justice Shah was in error in interfering with the discretion possessed and exercised by the Registrar, and that the appellants had failed to discharge the onus that rested heavily on them to prove that the trade mark which they wanted the Registrar to register was not likely to deceive or cause confusion."

4. In view of the settled law, I am of the considered view that the proposed trademark DEWFLOW is deceptively similar to the trademark DOWFLOW. At this juncture, the learned counsel for the defendant seeks some time to take the instructions from his client to dispose of the material seized by the Local Commissioner under a different trademark. In case the defendant is agreeable to use a different brand name, the plaintiffs have no objection and the Court will pass an appropriate order.

5. List on 3rd December, 2014. Dasti.

(MANMOHAN SINGH) JUDGE NOVEMBER 14, 2014