Proctor & Gamble Manufacturing ... vs Anchor Health And Beauty Care Pvt ...
2016 Latest Caselaw 6642 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                  Judgment Reserved on: 03.10.2016
                                   Judgment delivered on: 25.10.2016
+      FAO (OS) 257/2016

       PROCTOR & GAMBLE MANUFACTURING
       (TIANJIN) CO LTD & ORS.     ..... Appellants

                          versus

       ANCHOR HEALTH AND BEAUTY
       CARE PVT LTD                                   ..... Respondent
Advocates who appeared in this case:
For the Appellant    : Mr Sudhir Chandra Agarwala and Mr Sanjeev
                       Sindhwani, Sr. Advs. with Mr Prashant Gupta, Ms Arzu
                       Chimmi and Mr Siddharth Sharma.
For the Respondent   : Mr Sandeep Sethi and Ms Pratibha M.Singh, Sr. Advs.
                       with Mr Sudeep Chatterjee, Ms Jaya Mandelia and Mr
                       Nikhil Lal.

CORAM:-
HON'BLE MR JUSTICE BADAR DURREZ AHMED
HON'BLE MR JUSTICE ASHUTOSH KUMAR
                             JUDGMENT

ASHUTOSH KUMAR, J

1. The appellants, Proctor and Gamble Manufacturing (Tianjin)

Co. Ltd. & Ors., have challenged the order dated 26.08.2016 passed in

CCP(O) No.47/2015 in CS (OS) No.1431/2013 whereby, while

dealing with the application seeking initiation of contempt by the

plaintiff/respondent as against the appellant/defendant for having

violated the order of injunction dated 09.05.2014, held that the order

dated 09.05.2014 interdicted the use of the marks „ALLROUNDER‟

and „ALL-AROUND PROTECTION‟ for oral care products which

included toothbrushes also and not only toothpaste, as is being

claimed by the appellant/defendant. The learned single Judge, though,

did not punish or initiate contempt proceedings against the appellants

by giving them benefit of doubt, but at the same time cautioned them

for obeying the injunction with respect to toothbrushes also alongwith

toothpaste.

2. The grounds of challenge are that (i) the learned single Judge

has travelled beyond jurisdiction and has extended the width and

scope of the order of injunction to include something which was not in

the contemplation of the parties and which was neither claimed in the

suit nor canvassed during the course of arguments and that (ii) the

order is arbitrary inasmuch as it does not take into account that if the

order of injunction is interpreted to be extended to toothbrushes also,

then, the appellants, perhaps, did not have sufficient opportunity to

contest such demand of injunction as against toothbrushes which is a

different class of product and which does not come within the

category of "dentrifice" for which the plaintiff/respondent had applied

for a specific trademark in class 3 of the goods and services.

3. The respondent/plaintiff had filed a suit for infringement and

passing off against the appellants for use of the expression "ALL-

AROUND PROTECTION" and "ALLROUNDER" in relation to

toothpaste. An application under Order 39 Rules 1 & 2 (IA

11461/2013) was also filed with the suit seeking interim relief in the

nature of injunction against the appellants for use of the aforesaid

marks and expressions for toothpaste, in which class of goods the

appellant/defendant had entered the market lately.

4. The brief summary of the suit filed by the plaintiff/respondent is

as hereunder:

"2. The present suit relates to the illegal adoption, public use of the mark ALL-AROUND by the Defendants and the infringing similarity to the Plaintiff's marks and goods manufactured by the Plaintiff for identical goods i.e. toothpaste under the well known and registered mark "ALLROUND". Further the Defendants have not only copied the registered mark of the Plaintiff but have also copied the entire expression "ALLROUND PROTECTION" of the Plaintiff that too for identical products i.e. toothpaste by using the expression "ALL- AROUND PROTECTION". The Plaintiff thus seeks an injunction against the use of the mark/expression ALL- AROUND PROTECTION by the Defendants."

5. In the plaint, it has been averred by the plaintiff/respondent that

"ALLROUND" has been in use by the plaintiff since 2005 for its

dental care products mainly toothpaste. The registration of the mark

"ALLROUND" was applied for in 2005 and which was granted in the

year 2008 and which mark became exclusively associated with the

toothpaste of the plaintiff.

6. While outlining the position of the appellant/defendant and

describing the illegal acts of the appellant/defendant, giving cause of

action for filing of the suit, paras 14,15 & 16 of the plaint have been

formulated as hereunder:-

"ABOUT THE DEFENDANTS

14. The Defendant No.1 is apparently engaged in manufacturing toothpaste which is located in China. The Defendant No.2 claims to be the owner of the mark Oral- B. The Defendant No.3 claims to be the importer of the products under the impugned mark. The exact constitutions of the Defendants' are not known until disclosure in the present action.

ILLEGAL ACTS BY THE DEFENDANTS

15. It is submitted that the Plaintiff sometime in the end of May 2013 came across news reports that the Defendants who were only into toothbrush manufacturing and marketing were planning to enter the toothpaste market. The news paper reports carried an interview of the Chief Financial Officer of the Defendant No.3 and gave an impression that the Defendants were planning to launch their product under the mark CREST. Internet printout

from the Economic Times is annexed with the present proceedings.

16. It is however submitted that the Plaintiff in the first week of July was shocked to know from newspaper reports that the Defendants on 2nd July 2013 launched its products under the mark ORAL-B "ALL-AROUND PROTECTION". Internet printouts from various news sites are annexed with the present proceedings."

7. Based on these facts, the plaintiff/respondent was of the view

that the appellants had imitated the plaintiff‟s mark "ALLROUND"

and "ALLROUND PROTECTION" and therefore had attempted to

infringe its registered trademark. The following prayers were sought

in the plaint:-

(i) A decree of declaration that the mark/expression "ALLROUND PROTECTION" of the Plaintiff is a well- known mark in relation to oral care especially for toothpaste.

(ii) A decree of permanent injunction restraining the Defendants 1 to 3, family members, partners/promoters as the case may be, directors, servants, agents, franchisees, dealers, distributors, importers or any one acting for and on their behalf in any manner using the mark/expression "ALL-AROUND PROTECTION"/"ALLROUNDER"

either as a trade mark, trading style or any other mark or name identical or deceptively similar to the Plaintiffs' mark ALLROUND and expression "ALLROUND PROTECTION" in relation to any oral care products or in any other form whatsoever especially in relation to toothpaste so as to result in violation of Plaintiffs' statutory and common law rights thereby resulting in infringement, passing off, dilution etc.

(iii)An order of delivery up of all the infringing material bearing the mark/expression ALL-AROUND PROTECTION/ ALLROUNDER including toothpaste, packaging, brochures, pamphlets, signboards, moulds, dyes, advertising materials, and any other material or printed matter bearing the impugned mark for the purposes of destruction and erasure.

(iv) An order directing the Defendants to render true and proper accounts be passed and on a perusal of the accounts a decree for the amount so due may be passed in favour of the Plaintiffs against the Defendants. The Plaintiff undertakes to deposit necessary additional court fee as may be directed by this Hon'ble Court on a later stage.

(v) Costs of the suit be awarded.

(vi) Any such other and further order(s) as this Hon'ble Court may deem fit and proper in the case."

8. The appellants entered appearance and filed their written

statement, the entire orientation of which was to defend the use of the

mark and expression "ALLROUNDER" and "ALL-AROUND

PROTECTION" over toothpastes only.

9. In the application preferred by the Plaintiff/respondent seeking

interim protection as against the appellants (IA No. 11461/2013), the

Court while passing an order of injunction stated in the opening

paragraph as follows:

"1. The present application is filed by the plaintiff seeking an interim injunction to restrain the defendants no. 1 to 3 in any manner using, the mark/expression "ALL- AROUND PROTECTION''/"ALLROUNDER" either as a

trade mark, trading /style or in any other manner especially in relation to toothpaste. Other reliefs are also sought."

(emphasis provided)

10. In the entire body of the order dated 09.05.2014, the violation

and breach of which was alleged by the respondent/plaintiff, the

reference is only of toothpaste and not toothbrushes. It was also

noticed by the learned single Judge that the respondent/plaintiff was

the prior adopter of the registered trademark "ALLROUND" and

expression "ALLROUND" along with the word "PROTECTION"

which was in continuous use since 2005, whereas the

appellant/defendant was a new player in the field having admittedly

launched its product in July 2013. This, therefore, had obvious

reference to toothpaste only as toothpaste with such mark was

launched by the appellant/defendant in July 2013 whereas its

toothbrushes came in the market in the year 2010 with

„ALLROUNDER‟ mark. The concluding portion of the order which is

alleged to have been violated is as hereunder:-

"31. In my view prima facie use of the mark "ALL- AROUND PROTECTION" and "ALLROUNDER" is an infringement of the registered trade mark of the plaintiff "ALLROUND". The broad and essential features of the three marks are identical. There are various similarities in the essential features of the said marks which, are likely to

deceive and confuse a consumer. The essential feature of the registered trade mark of the plaintiff is "ALLROUND". This feature, is also the essential feature of the impugned marks.

32. The balance of convenience is also in favour of the plaintiff; When the present suit was filed, the defendants had just started marketing of their toothpaste with the impugned trademarks. In case the, defendants are not restrained, irreparable injury is likely to be caused.

33. In view of the above the defendants are restrained by an interim injunction from using the impugned trademark "ALL-AROUND PROTECTION"/ "ALLROUNDER" or any other mark deceptively similar to the plaintiff's trademark; "ALLROUND", till disposal of the accompanying suit. The order shall operate after four weeks from today, to enable the defendants to take appropriate steps to comply with the same."

(emphasis provided)

11. The learned single Judge, while dealing with the contempt

application, though has taken note of these facts and has also observed

that the plaintiff/respondent has not mentioned toothbrushes in the

plaint but took the view that reading the plaint as a whole, the relief

sought appeared to have included an interdict on the use of the subject

trademark in relation to oral care products in general which included

toothbrushes as well. It may however be pointed out that the learned

single Judge rightly felt that the appellants cannot be hauled up for

contempt because of two possible interpretations of the order of

injunction. But, what is being animadverted is that the learned single

Judge, on his own, gave an interpretation/clarification of the order

dated 09.05.2014 which, possibly could have been given by the same

court which passed such order.

12. Mr. Sudhir Chandra, learned senior advocate appearing for the

appellant drew the attention of this court to the fact that subsequent to

the passing of the order of injunction dated 09.05.2014, the

respondents had filed another suit bearing No. CS(OS) No. 3900/2014

against the appellants alleging violation of its mark "MULTI

PROTECTION". In the aforesaid suit it was categorically stated by

the respondent that the earlier suit i.e the present suit, was with respect

to toothpaste. It was also brought to the notice of this court that a

trademark application was filed by appellant no.3 for the word

ALLROUNDER to which the respondent, in the notice of opposition,

intimated that the present suit was with respect to toothpaste.

13. It was thus argued that the learned single Judge expanded the

scope and width of an order, of which he was not the author, and

included something in the order which was neither in the

contemplation of the parties nor in the mind of the court passing the

order of injunction.

14. As against the aforesaid arguments, Mr Sandeep Sethi, learned

senior advocate appearing for the plaintiff/respondent submitted that a

plain and wholesome reading of the plaint would clearly indicate that

the suit was directed towards the illegal use of the trademark of the

plaintiff/respondent by the appellant/defendant for dental/oral care

products. It was further submitted that the prayer in the plaint included

a decree for declaration that the mark/expression ALLROUND

PROTECTION is a well known mark in relation to oral care and it

was only by way of emphasis that it was specified regarding

toothpaste. However, the injunction restraining the appellants and their

franchisees was sought against user of such mark or expression in

relation to any oral care product in any other form whatsoever,

especially in relation to toothpaste. It was next contended that if there

was any ambiguity in the order as perceived by the appellants,

necessary clarifications could have been sought for; but no attempts

were made by the appellants to have the order explained. In that event,

it was argued that it was not open for the appellants to claim or take

defence that injunction was only with respect to use of subject

trademark over toothpaste.

15. Mr Sethi, learned senior advocate further submitted that the

challenge to the order dated 09.05.2014 by the appellants/defendants

could not be sustained till the Supreme Court.

16. On a careful reading of the plaint of the suit filed by the

plaintiff/respondents, the written statement filed by the

appellants/defendants and the order of injunction passed by the court,

we are of the view that the suit was only for injuncting the use of the

plaintiff‟s trademark over toothpaste and not toothbrushes. The fact

that the plaintiff/respondent had applied for trademark ALLROUND

for class 3 product which includes dentrifices and the dictionary

meaning of which is powder, paste or other preparation for cleaning of

teeth, has weighed with us in holding that the suit was for seeking

injunction of user of trademark as against the toothpaste and not

toothbrushes which is a different class of products, falling in a

different category altogether.

17. We do not wish to upset the order impugned totally as the

appellants have not been punished for contempt and have been

allowed to let go. However we deem it appropriate, in the facts of this

case, to set aside such observations of the learned single Judge

whereby the order dated 09.05.2014 has been interpreted to mean

grant of injunction for oral care products including toothbrushes. The

injunction would operate only in respect of toothpaste. Consequently,

the caution sounded by the learned single Judge in the impugned order

is also set aside.

18. The appeal is disposed off in terms of the above.

CM 32436/2016

1. In view of the appeal having been disposed off, the application has become infructuous.

2. The application is disposed of accordingly.

ASHUTOSH KUMAR, J

BADAR DURREZ AHMED, J OCTOBER 25, 2016 k