Delhi High Court
The Singer Company & Anr vs Mohammed Fayaz on 27 October, 2016
$~6.
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 747/2016
% Judgment dated 27th October, 2016
THE SINGER COMPANY & ANR ..... Plaintiffs
Through : Ms. Anuradha Salhotra and Mr.
Zeeshan Khan, Advocates.
versus
MOHAMMED FAYAZ ..... Defendant
Through: None
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J (ORAL)
1. The plaintiffs have filed the present suit for permanent injunction
restraining infringement of trademark, passing off,dilution, delivery up
etc. against the defendant.
2. While issuing summons in the suit on 29.04.2013, this Court had
grantedan ex parte ad interim injunction in favour of the plaintiff and
against the defendant. Defendant had entered appearance and also filed
their written statement. Thereafter, the plaintiffs have filed amended
plaint and this court had granted time to the defendant to file its written
statement to the amended plaint but defendant failed to file the same.
On 15.05.2015, none was present on behalf of the defendant
andaccordingly,the defendant was proceeded ex parte. The plaintiffs
have also filed the ex parte evidence of one, Ms. Veena P.(PW-1) and
Mr. Richen Sangwan(PW-2).
3. As per the plaint, the plaintiffs are world leaders in the sewing machine
CS (C OMM) 747/2016 Page 1 of 15
industry. The plaintiffs started their business in the year 1851 when
I.M. Singer formed „Singer Company Ltd.‟, to manufacture and sell a
revolutionary product, i.e. a machine to automate and assist in making
clothing.The plaintiffs have worldwide operations and claim to be one
of the largest sellers of sewing machines globally.
4. In India, the plaintiff markets its products under the mark "MERRITT".
A wide range of sewing machines are manufactured under their
trademark "MERRITT". The plaintiff‟s trademark "MERRITT" was
registered in India in the year 1962 and has been used extensively in
connection with sewing machines ever since. Owing to extensive use,
the word "MERRITT" in relation to sewing machines exclusively
identifies the plaintiffs or their products.The plaintiffs further enjoy
protection of their trade mark in other jurisdiction owing to numerous
registrations; including in Bangladesh, Benelux, China, France, United
States, Japan, Indonesia.
5. As per the plaint, the plaintiffs have numerous registrations of the mark
"Meritt", the details of few registrations are as under:
S. No. Mark Regn No. Class
1 MERRITT 718379 4
2 MERRITT 210529 7
3 MERRITT 344428 7
4 MERRITT 411830 7
5 798749 7
MERRITT MAJESTIC
DEVICE
6 MERRITT TAILOR 798751 7
CS (C OMM) 747/2016 Page 2 of 15
7 798753 07
MERRITT JAILOR
DEVICE
8 MERRITT TAILOR 798754 7
MASTER
9 MERRITT 285073 8
10 718381 9
11 MERRITT 247085 11
12 MERRITT (LOGO) 718383 21
6. As per the plaint, the plaintiffs have been making extensive publicity
and advertisement at huge expenditure to promote the mark. The sales
turnover of the plaintiffs products in Indiawhich includes "MERRITT"
products for the period 2008-2012 are as under:
Year Sales figures (in INR
Thousands)(approx)
2008 4,95,525
2009 7,06,057
2010 11,17,923
2011 11,89,081
2012 15,59,316
7. As per the plaint, the principal trademark of the plaintiffs is
"MERRITT".The plaintiffs are maintaining standards and they are
known for their excellent quality and reliability. The trademark
CS (C OMM) 747/2016 Page 3 of 15
"MERRITT" in connection with sewing machines has acquired
considerable goodwill and reputation in India and due to uninterrupted
usage of trademark, the plaintiffs have acquired common law rights and
are also vested with the statutory rights and as such, the plaintiffs have
an exclusive right to use the same.
8. It is the case of the plaintiff thatthe defendant is engaged in the business
of manufacturing and marketing sewing machines under the brand
name "MERRITT STAR" wherein the mark of the plaintiff "MERITT"
appears prominently.
9. In the first week of March, 2013, the plaintiffs learnt that sewing
machines are being sold in the market under the marks MERRITT
STAR.Thereafter, upon making inquiries,it was revealed that sewing
machines are being sourced from Delhi by the defendant. Accordingly,
the plaintiff purchasedone sewing machine fromthe defendant, plaintiff
learnt that the defendant has also filed an application for registration of
its mark.
10. The counsel for the plaintiff has submitted that owing to extensive
marketing and strict standards of quality, its products marketed under
the mark „Merritt‟ have created an unparalleled position in the eyes of
the public. The goodwill of the plaintiffs‟ business is clearly reflected
from the sales turnover for „SIGNER‟ and „MERRITT‟ products as
detailed in paragraph 6 aforegoing.
11. Counsel for the plaintiff further submits that defendant has mala fidely
adopted a nearly identical mark by merely adding a suffix to the mark
of the plaintiff in order to free-ride upon the tremendous goodwill of
the plaintiff.
12. Counsel for the plaintiff further submits that since the two marks are
identical, it is not necessary for the plaintiff to prove further that the use
CS (C OMM) 747/2016 Page 4 of 15
of defendant‟s mark is likely to deceive or cause confusion.In support
of this contention, counsel has relied upon decisionof the apex court
rendered in the case ofKaviraj Pandit Durga Dutt Sharma v.
Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980. Counsel
for the plaintiff further submits that in order to show passing off, the
plaintiff has to establish prior user of the mark than the defendant.In
support of this contention, counsel has also relied upon decisionof this
court in Century Traders v. Roshan Lal Duggar & Co., AIR 1978 Del
250.
13. I have heard learned counsel for the plaintiff and also examined the
affidavits by way of evidence of PW-1 and PW-2, who have deposed
on the lines of the plaint. The plaintiff has filed the affidavit by way of
evidence of PW-1 and PW-2, who have deposed on the lines of the
plaint. Despite service, the defendant has decided not to contest the
suit and has been accordingly proceeded ex parte. The documents
exhibited are as follows:
Copy of the power of Attorney executed in favour of Ms.Veena P,
by the plaintiff No.1 has been exhibited as Exhibit PW-1/1;
Copy of the letter issued by the plaintiff No.1 stating that plaintiff
No.2 is the licensee of the plaintiff No.1has been exhibited as
Exhibit PW-1/2;
Photographs of the plaintiff‟s product under the mark Merritt has
been exhibited as Exhibit PW-1/3;
Certified copy of the trademark registration number 718379 has
been exhibited as Exhibit PW-1/4;
Certified copy of the trademark registration number 210529 has
been exhibited as Exhibit PW-1/5;
Certified copy of the trademark registration number 798749hasbeen
CS (C OMM) 747/2016 Page 5 of 15
exhibited as Exhibit PW-1/6;
Certified copy of the trademark registration number 798751 has
been exhibited as Exhibit PW-1/7;
Certified copy of the trademark registration number 798753 has
been exhibited as Exhibit PW-1/8;
Certified copy of the trademark registration number 798754has
been exhibited as Exhibit PW-1/9;
Certified copy of the trademark registration number 285073 has
been exhibited as Exhibit PW-1/10;
Certified copy of the trademark registration number 718381 has
been exhibited as Exhibit PW-1/11;
Certified copy of the trademark registration number 718383 has
been exhibited as Exhibit PW-1/12;
Certified copy of TM-24 for bringing the plaintiff No.1 as
registered proprietor of the mark for the Trade Mark Registration
No.285073 along with the certified copy of deed of assignment
dated 11.04.2013 between the Singer Company Limited and the
plaintiff has been exhibited as Exhibit PW-1/13;
Certified copy of TM-24 for bringing the plaintiff No.1 as
registered proprietor of the mark for the Trade Mark Registration
No.718379, 798749, 798751, 798753, 798754, 718381 and 718383
along with the certified copy of deed of assignment dated
11.04.2013 between the Singer Company Limited and the plaintiff
has been exhibited as Exhibit PW-1/14;
Certified copy of TM-24 for bringing the plaintiff No.1 as
registered proprietor of the mark for the Trade Mark Registration
No.210529 has been exhibited as Exhibit PW-1/15;
Copies of the international registrations has been exhibited as
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Exhibit PW-1/16(colly);
Print out of the status of defendant‟s trade mark application
no.2315929 has been exhibited as Exhibit PW-1/17;
Power of attorney dated 15.02.2012 wherein it is authorized Mr.
Rajeev Baja to sign and institute the present suit on behalf of the
plaintiff No.2 has been exhibited as Exhibit PW-2/1;
Copy of the power of attorney executed in favour of Mr. Richin
Sangwan by the plaintiff No.2 has been exhibited as Exhibit PW-
2/2;
Copies of the photographs of the defendant‟s products have been
exhibited as Exhibit PW-2/3;
The original invoice of the defendant for sale of the impugned
sewing machine has been exhibited as Exhibit PW-2/4;
Copies of the annual report of the year 2008 to 2012 of the plaintiff
No.2 has been exhibited as Exhibit PW-2/5;
Copies of the invoices of February 2013 issued by the plaintiff
No.2 against the sale of its products under the mark MERRITT has
been exhibited as Exhibit PW-2/6; and
Copies of the pamphlets, brochures and promotional materials of
the plaintiff No.2 has been exhibited as Exhibit PW-2/7.
14. I have also gone through the written statement filed on behalf the
defendant. No substantial defence has been raised by the defendant; the
defendant has merely denied all the allegations and denied infringement
on two grounds. First, that the word „Merritt‟ is not associated with the
plaintiffs and they are not using their primary mark, i.e. „Singer‟.
Secondly, that there is no similarity between the marks of the parties,
„Merritt‟ and „Merritt Star‟ are not similar to constitute infringement.
CS (C OMM) 747/2016 Page 7 of 15
INFRINGEMENT OF TRADEMARK
15. Based on the documents placed on record, there is no doubt that the
plaintiff is the registered proprietor of the trade marks mentioned in
paragraph 4 aforegoing. Section 29 (2) of the Trade Marks Act
stipulates the conditions when usage by a person amounts to
infringement of a registered trademark. Section 29 (2) reads as
follows:
"(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."
(Emphasis Supplied)
16. In respect of the test of adjudicating infringement, a coordinate bench
of this Court in The Royal Bank of Scotland Group PLCv.Sharekhan
Limited, 216 (2015) DLT 197, after taking into consideration
numerous judicial pronouncements, held as under:
"35. The test of comparison of the marks side by side is not a
sound one since a purchaser will seldom have the two marks
actually before him when he makes his purchase. The eye is
not an accurate recorder of visual detail and marks are
remembered by general impression or by some significant
detail rather than by any photographic recollection of the
CS (C OMM) 747/2016 Page 8 of 15
whole. While judging the question as to whether the
defendants have infringed the trade mark by colourable
imitation of the mark or not, the Court has to consider the
overall impression of the mark in the minds of general public
and not by merely comparing the dissimilarities in the two
marks.
36. In order to establish infringement, the main ingredients of
Section 29 of the Act are that the plaintiff's mark must be
registered under the Act; the defendant's mark is identical with
or deceptively similar to the registered trade mark; and the
defendant's use of the mark is in the course of trade in respect
of the goods covered by the registered trade mark. The rival
marks are to be compared as a whole. Where two rival marks
are identical, it is not necessary for the plaintiff to prove
further that the use of defendant's trademark is likely to
deceive and cause confusion as the registration shows the title
of the registered proprietor and the things speak for
themselves. In an infringement action, once a mark is used as
indicating commercial origin by the defendant, no amount of
added matter intended to show the true origin of the goods can
effect the question. If Court finds that the defendant's mark is
closely, visually and phonetically similar, even then no further
proof is necessary.
Test of comparison of rival marks
37. (i) In Pianotist Co. Ltd.'s application, 1906 (23) R.P.C.
774, it was observed as follows :
"You must take the two words. You must judge of them,
both by their look and by their sound. You must
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. If, considering all those circumstances, you
come to the conclusion that there will be a confusion-
that is to say, not necessarily that one man will be
injured and the other will gain illicit benefit, but that
there will be a confusion in the mind of the public
CS (C OMM) 747/2016 Page 9 of 15
which will lead to confusion in the goods-then you may
refuse the registration, or rather you must refuse the
registration in that case."
...
(iii) In the case of Sandow Ltd.'s Application, 31 R.P.C. 205 it
was clarified that among the surrounding circumstances to be
taken into account, one of considerable importance is the
imperfect recollection a person is likely to have of a mark with
which he is only vaguely acquainted. While approving the
above tests for comparison of the two word-marks, the
Supreme Court held in F. Hoffmann-La Roche & Co. Ltd. Vs.
Geoffrey Manner & Co. Pvt. Ltd. (1969) 2 SCC 716 that:
"It is also important that the marks must be compared
as whole. It is not right to take a portion of the word
and say that because that portion of the word differs
from the corresponding portion of the word in the
other case there is no sufficient similarity to cause
confusion. The true test is whether the totality of the
proposed trade mark is such that it is likely to cause
deception or confusion or mistake in the minds of
persons accustomed to the existing trade mark."
(iv) In the case of Tokalon Ltd. v. Devidson and Co. 32 R.P.C.
133, it was observed that:
"...We are not bound to scan the words as we would in
a question of compatriotic literarum. It is not a matter
for microscopic inspection, but to be taken from the
general and even casual point of view of a customer
walking into a shop."
...
(vii) In the decision reported in AIR 1951 Bom 147, James
Chadwick & Bros. Ltd. v. The National Sewing Thread Co.
Ltd. Chagla C.J. and Bhagwati, J.; referring to the words
"likely to deceive or cause confusion" in section 10 of the Act
observed as follows:-
"Now in deciding whether a particular trade mark is
likely to deceive or cause confusion, it is not sufficient
merely to compare it with the trade mark which is
already registered and whose proprietor is offering
opposition to the registration of the former trade mark.
What is important is to find out what is the
distinguishing or essential feature of the trade mark
already registered and what is the main feature or the
main idea underlying that trade mark, and if it is found
that the trade mark whose registration is sought
contains the same distinguishing or essential feature
or conveys the same idea, then ordinarily the Registrar
would be right if he came to the conclusion that the
trade mark should not be registered. The real question
is as to how a purchaser, who must be looked upon as
an average man of ordinary intelligence, would react
to a particular trade mark, what association he would
form by looking at the trade mark, and in what respect
he would connect the trade mark with the goods which
he would be purchasing. It is impossible to accept that
a man looking at a trade mark would take in every
single feature of the trade mark. The question would
be, what would he normally retain in his mind after
looking at the trade mark? What would be the salient
feature of the trade mark which in future would lead
him to associate the particular goods with that trade
mark?"
..."
(Emphasis Supplied)
17. Further in the case of Kaviraj Pandit Durga Dutt Sharma (Supra) it
has been held that once it is established that the essential features of the
registered mark have been imitated, it becomes immaterial whether
there are any distinguishing features in the packaging, get-up etc. The
relevant paragraph reads as under:
"28. ...In an action for infringement, the plaintiff must, no
doubt, make out that use of the defendant's mark is likely to
deceive, but were the similarity between the plaintiff's and the
defendant's mark is so close either visually, phonetically or
otherwise and the court reaches the conclusion that there is an
imitation, no further evidence is required to establish that the
plaintiff's rights are violated. Expressed in another way, 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;
whereas in the case of passing off, the defendant may escape
liability if he can show that the added matter is sufficient to
distinguish his goods from those of the plaintiff."
(Emphasis Supplied)
18. Applying the aforegoing principles in the present case, I am of the view
that the defendant has infringed the mark of the plaintiffs. I hold so as
the defendant cannot merely add the word „STAR‟ after the registered
trade mark of the plaintiffs and claim that there is no longer any
similarity in the marks. The first word of the marks of both the parties
is identical. Even the suffix chosen, i.e. Star, has been cleverly chosen
as the same may create an impression upon the minds of the public that
it is a superior line of the products of the plaintiffs. Further, in view of
the dicta of Kaviraj Pandit Durga Dutt Sharma (Supra), the stand
taken by the defendant in its written statement cannot be accepted.
19. In view of the aforegoing, I am of the view that the defendants are
infringing the registered trademarks of the plaintiff under Section 29
(2) (b).
PASSING OFF
20. Passing Off action arises out of common law and is not pre-conditioned
on registration. The term „passing off‟ was explained by James, L.J. in
Singer Manufacturing Co. v. Loog, (1880) 18 ChD 395 as under:
"...I have often endeavoured to express what I am going to
express now (and probably I have said it in the same words,
because it is very difficult to find other words in which to
express it) -- that is, that no man is entitled to represent his
goods as being the goods of another man; and no man is
permitted to use any mark, sign or symbol, device or other
means, whereby, without making a direct false representation
himself to a purchaser who purchases from him, he enables
such purchaser to tell a lie or to make a false representation to
somebody else who is the ultimate customer."
(Emphasis Supplied)
21. Lord Diplock in Erven Warnink Besloten Vennootschap v. J.
Townend & Sons (Hull) Ltd.,[1979] A.C 731 had identified five
essentials to establish an action of passing off. The relevant excerpt is
as under:
"My Lords, A.G Spalding and Brothers v. A. W. Gamage Ltd.,
84 L.J.Ch 449, and the later cases make it possible to identify
five characteristics which must be present in order to create a
valid cause of action for passing off: (1) a misrepresentation,
(2) made by a trader in the course of trade, (3) to propsective
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 foreseeable 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."
(Emphasis Supplied)
22. The aforegoing essentials have been accepted by the Supreme Court in
Cadila Health Care Ltd.v.Cadila Pharmaceuticals Ltd., (2001) 5 SCC
73 and Heinz Italiav. Dabur India Ltd., (2007) 6 SCC 1. In Cadila
Health Care Ltd. (Supra), the Supreme Court had further laid down
the following decisive tests for checking deceptive similarity:
"35. Broadly stated, in an action for passing-off on the basis of
unregistered trade mark generally for deciding the question of
deceptive similarity the following factors are to be considered:
(a) The nature of the marks i.e. whether the marks are
word marks or label marks or composite marks i.e.
both words and label works.
(b) The degree of resembleness between the marks,
phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they
are used as trade marks.
(d) The similarity in the nature, character and
performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the
goods bearing the marks they require, on their
education and intelligence and a degree of care they
are likely to exercise in purchasing and/or using the
goods.
(f) The mode of purchasing the goods or placing
orders for the goods.
(g) Any other surrounding circumstances which may
be relevant in the extent of dissimilarity between the
competing marks.
36. Weightage to be given to each of the aforesaid factors
depending upon facts of each case and the same weightage
cannot be given to each factor in every case."
(Emphasis Supplied)
23. In the present case, applying the aforegoing test I am of the view that
the defendants have tried to dupe the general public by portraying their
products in a manner that they originate from the plaintiff. Such usage
would inevitably lead to loss of revenue as also that of goodwill.
Accordingly, the defendants have indulged into the offence of passing
off.
24. Having held that the defendant have infringed the registered trademarks
of the plaintiff as well as committed the tort of passing off, it is a fit
case for granting injunction in favour of the plaintiffs and against the
defendant. The plaintiffs have not prayed for damages in the present
suit.
25. Accordingly, the present suit is decreed in favour of the plaintiffs and
against the defendant in terms of paragraph 27 a) i. and ii., b) and c) of
the plaint.
26. Let a decree sheet be drawn accordingly.
I.A. 6878/2013 (under Order XXXIX Rules 1 & 2 CPC)
27. Interim order dated 29.04.2013 is made confirmed.
28. Application stands disposed of.
G.S.SISTANI, J
OCTOBER 27, 2016
//
