Delhi High Court
Fdc Limited vs Docsuggest Healthcare Services ... on 3 January, 2017
$~.
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Judgment reserved on: 22.12.2016
% Judgment delivered on: 03.01.2017
+ I.A. No.6690/2015 & I.A. No.3733/2016 in C.S. (OS) No.893/2015
FDC LIMITED ....
Plaintiff
Through: Shwetasree Majumder,
Advocate
Versus
DOCSUGGEST HEALTHCARE SERVICES PVT. LTD. & ANR.
.... Defendants
Through: Anil Sapra, Sr. Adv. with
Mohit Chadha, Pankhuri
Bhardwaj, Ishwer Upneja and
Trisha Raichandani, Advocates
CORAM:
HON'BLE MR. JUSTICE VIPIN SANGHI
JUDGMENT
VIPIN SANGHI, J.
1. On 21.03.2016, I.A. No. 3733/2016 filed by the defendant No. 1
under Order 39 Rule 4 Code of Civil Procedure (hereinafter "CPC") was
listed. Notice was accepted by learned counsel for the plaintiff and the
parties addressed their submissions on the aforesaid two applications - the
first being I.A. No.6690/2015 preferred by the plaintiff under Order 39 Rule
1 & 2 CPC to seek interim injunction, and the latter i.e. I.A. No. 3733/2016
preferred by the defendant No. 1 - being an application under Order 39 Rule
4 CPC to seek the vacation of the ex-parte ad-interim order of injunction
dated 06.04.2015 passed by this court in the plaintiffs aforesaid application.
Thereafter, orders were reserved. Since the same could not be pronounced
earlier, the matter was listed for recapitulation of the submissions on
22.12.2016. The learned senior counsels were heard and orders reserved on
the same day.
2. In I.A. No. 6690/2015, this Court passed an ex parte order of
injunction on 06.04.2015 in favour of the plaintiff, thereby directing that
"till further orders the defendants by themselves, their partners,
proprietors, directors, agents, servants, licensees, franchisees,
representatives and employees or any one claiming under them
are restrained from in any manner directly or indirectly using
the mark ZIFFI/ZIFFI.COM or any other
confusingly/deceptively similar mark in respect of their
business/services".
3. The ex-parte ad-interim order of injunction was stayed by the
Division Bench in the appeal preferred by the defendants, being FAO (OS)
No.225/2015 on 24.04.2015. The said appeal was disposed of by the
Division Bench on 01.03.2016, directing the appellants/defendants to file an
application under Order 39 Rule 4 CPC seeking vacation of the interim
injunction granted on 06.04.2015. The Division Bench directed that the
status quo, namely, the stay of the operation of the order dated 06.04.2015
shall continue till the first hearing before this court. The Division Bench
observed:
"The matter shall be listed before the learned Single Judge on
21.03.2016. On the first date of hearing of the said application,
it would be open to the learned Single Judge to pass an
appropriate order either continuing the interim injunction or
vacating it. This order may be passed for the purposes of
further consideration of the application under Order XXXIX
Rules 1&2 alongwith the application under Order XXXIX Rule
4 or finally deciding the applications on that very date".
4. The aforesaid application under Order 39 Rule 4 has been filed in
pursuance of the direction of the Division Bench, as aforesaid, made on
01.03.2016.
Plaintiff's submissions:
5. The case of the plaintiff, insofar as it is relevant, is as follows. The
plaintiff is a large pharmaceutical company which has introduced several
medical formulations and drugs in the market under its brands. In July
2001, the plaintiff launched its medical products and formulations under an
invented brand ZIFI containing Cefixime as an active drug - an antibiotic
used to treat several diseases. Over 15 years since its launch, the plaintiff's
mark ZIFI has been used in relation to several adult medicinal drugs/
products, such as:
ZIFI 200 TABLET
ZIFI - CV 200 TABLET
ZIFI LBX 200 TABLET
ZIFI-O TABLET
ZIFI-AZ TABLET
ZIFI TURBO TABLET
ZIFI - OZ TABLET
Apart from the adult range, ZIFI is also used in children's medicinal
products. It is available as dispersible tablet, oral powder for
suspension, oral drops and readymix suspension. The pediatric
products under the ZIFI brand are as under:
ZIFI-AZ KID DT
ZIFI 50/100 DT/DS/RMX/25 MG DROPS
ZIFI-CV 50/100 DT/DS
ZIFI CV 100 DRY SYRUP
ZIFI DROPS
ZIFI-O 100 DT
ZIFI-AZ 100 DT
6. The plaintiff has further launched new medicines under the ZIFI
brand such as - ZIFI-CV, ZIFI-LBX, ZIFI-O, ZIFI-OZ, ZIFI-AZ and ZIFI
TURBO. The plaintiff has also spread its product line to various medicines
for treatment of typhoid, bronchitis, dental products and medicines, fever
and infection management, anti-infective range for adults and pediatrics and
also fever and infection management.
7. The plaintiff claims to be the proprietor of a family of ZIFI prefixed
trademarks and it owns and uses its ZIFI family of trademarks in several
countries, including in India.
8. The plaintiffs mark ZIFI by itself, as well as a prominent component
of other marks, have been got registered with the Registrar of Trademarks.
The details of the registrations disclosed in the plaint are as follows:
S. Registration Trademark Application Class & Goods
No. No. Date
1 995613 ZIFI March 09, Class 5: medicinal,
2001 pharmaceutical and
veterinary
preparations.
2 1041490 ZIFI 200 September 03, Class 5: medicinal,
2001 pharmaceutical and
veterinary
preparations.
3 1041491 ZIFI 100 DT September 03, Class 5: medicinal,
2001 pharmaceutical and
veterinary
preparations.
4 1105943 ZIFI 50 DT May 21, 2002 Class 5: medicinal,
pharmaceutical and
veterinary
preparations.
5 1300579 ZIFIPOX August 05, Class 5: medicinal,
2004 pharmaceutical and
veterinary
preparations.
6 159813 ZIFILAC September 06, Class 5: medicinal,
2007 pharmaceutical and
veterinary
preparation being
the goods falling in
Class 05.
The aforesaid registrations have been duly renewed, are valid, and are
subsisting.
9. The plaintiff has disclosed that it has made an application for
registration of ZIFI BITES and ZIFI.CO.IN, which are pending registration,
and details thereof as under:
Application Trademark Application Class & Goods Status
No. date
2661913 ZIFI BITES January 20, Class 5: Pending
2014 medicinal,
pharmaceutical
and veterinary
preparations
being the
goods falling
in Class 5
2921493 ZIFI.CO.IN March 13, Class 35 : Pending
2015 Advertisement
and promotion
of drug product
related
information for
doctors and
patients
10. The mark ZIFI is registered by the plaintiff in Malaysia and
Philippines as well. The plaintiff states that the trademark ZIFI and ZIFI
family of trademarks-being used for over 14 years by the plaintiff, is the
principal identifier of its ZIFI range of antibiotic products and medicines.
11. The plaintiff has detailed in the plaint itself the year wise sales of its
products under the trademark ZIFI and ZIFI family of trademarks, product
wise, between 2001 and 2014. The total year wise sales have been disclosed
by the plaintiff on the basis of the plaintiffs audited accounts under the
trademark ZIFI and ZIFI family of trademark to be as follows:
YEAR SALES IN INR
2001-02 94,521,038.00
2002-03 257,822,549.00
2003-04 453,068,792.00
2004-05 503,643,622.00
2005-06 685,343,016.00
2006-07 1,091,632,474.00
2007-08 1,200,491,491.00
2008-09 1,190,522,984.00
2009-2010 1,443,700,868.00
2010-2011 1,575,751,247.00
2011-2012 1,663,388,347.00
2012-2013 1,858,436,630.00
2013-2014 2,142,563,295.00
TOTAL 14,160,886,353.00
12. The year wise promotional expenses incurred by the plaintiff in
relation to the mark ZIFI and ZIFI family of trademarks from 2001 to 2013-
14 are disclosed as follows:
YEAR PROMOTIONAL EXPENSES IN INR
2001-02 4,198,110.00
2002-03 9,163,171.00
2003-04 11,604,250.00
2004-05 23,199,716.00
2005-06 35,306,620.00
2006-07 42,426,818.00
2007-08 49,056,663.00
2008-09 49,425,363.00
2009-2010 49,292,002.00
2010-2011 94,473,970.00
2011-2012 90,443,618.00
2012-2013 125,622,981.00
2013-2014 112,222,769.00
TOTAL 696,436,051.00
The Original Certificate of the Chartered Accountant of the Plaintiff's
company showing sales and promotion figures of the Plaintiff's products
under the mark ZIFI have been placed on record.
13. The plaintiff's trademark ZIFI and ZIFI family of trademark have
gained popularity and featured in popular magazines and journals
concerning the trade in India, such as:
http://www.drugsupdate.com http://www.drugs.com
http://businesstoday.intoday.in http://www.medschat.com
http://www.medindia.net http://www.indiamart.com
14. The plaintiff owns and maintains the websites www.fdcindia.com.
On its aforesaid website, the plaintiff had also initially provided a link to
"http:zifi.co.in" in respect of its medical formulations being sold under the
trademark ZIFI and ZIFI family of trademarks. The said websites of the
plaintiff can be accessed from anywhere in the world. The websites contains
all information about the drugs manufactured and sold under the trademark
ZIFI and ZIFI family of trademarks both for adults and children. They also
contain the literature with regard to the use of the medicines of the plaintiff
under the said trademarks. The plaintiff also discloses that it has vigilantly
protected its mark against infringement by filing oppositions against other
applicants successfully.
15. The plaintiff has disclosed-in relation to the defendants, that
defendant No. 1 is engaged in the business of providing online services for
appointment of doctors, diagnostic centres, spas and salons and other
healthcare services under the trading style ZIFFI and ZIFFI.com. Defendant
No. 2 is a director of defendant No. 1 company. The plaintiff further states
that defendants were offering their online services under the trade mark
DocSuggest/DocSuggest.com through their website www.docsuggest.com
between February 2010 till end of September 2014. Post the said period, the
defendants started using the domain ziffi.com and also re-directed their
earlier website www.docsuggest.com to the website www.ziffi.com.
16. The case of the plaintiff is that in September 2014 it discovered from
a news article published in the Hindu-Business Line on 29.09.2014, about
the user of the mark ZIFFI by the defendants through its website
www.ziffi.com. The plaintiff issued a cease and desist notice on 20.10.2014
calling upon the defendant to stop using the trademark/ name ziffi.com in
connection with their services, or for any other purpose whatsoever. The
defendants sent a reply on 18.11.2014, inter alia, claiming that the
defendants mark ZIFFI and its domain name ZIFFI is structurally and
visually different and distinct from the plaintiff's trademarks.
17. The defendant also applied for registration of ZIFFI with the Registrar
of Trademarks on 17.12.2014 claiming user since 30.09.2014 under the
various classes, namely, Class 35 and 42. Consequently, the plaintiff has
filed the present suit.
18. In para 36 of the plaint, the plaintiff avers as follows:
"36. It is submitted that the plaintiff is the rightful registered
proprietor and owner of ZIFI and ZIFI FAMILY OF TRADE
MARKS and has a reputation and goodwill not only in India but
in other countries as well. The trade mark ZIFI is a unique,
coined mark, invented by the plaintiff and is being used
extensively, continuously since the year 2001, which makes is
distinctive and is capable of distinguishing the plaintiff's goods
and business from that of others. Unauthorized adoption and
use of a deceptively similar mark ZIFFI and domain name
www.ziffi.com by the defendants in relation to their services
and business is without permission, dishonest, illegal, unfair,
unjustified, without due cause and in bad faith. Such
unauthorized use of the plaintiff's registered trade mark by the
defendant, even if for dissimilar goods/services is undoubtedly
to take unfair advantage of the reputation of the plaintiff's
registered trade marks and is detrimental to its distinctive
character. The malafide intentions of the defendants can also
be seen from the very fact that they have directed their earlier
website www.docsuggest.com to the impugned domain
www.ziffi.com. There is no bona fide reason or explanation
given by the defendants for adoption of the trade mark and
domain name ZIFFI and www.ziffi.com, which are visually,
phonetically and deceptively similar and/or identical to the
plaintiff's ZIFI and ZIFI FAMILY of registered trade marks and
domain name www.zifi.co.in respectively. The defendants have
adopted the mark ZIFFI/ZIFFI.COM to trade upon the
immense goodwill and transnational reputation enjoyed by the
plaintiff. Adoption and use of a similar trade mark and domain
name by the defendants is with the sole intention to take unfair
advantage of the repute of the plaintiff's registered trade
marks/domain name and is bound to cause confusion and
deception in the minds of the public as well as the trade into
believing that the services offered by the defendants under the
mark ZIFFI/ZIFFI.COM have some association or connection
with the goods and business of the plaintiff, when in fact, there
is no such connection or association whatsoever. Such
unsolicited use of the trade mark ZIFFI and domain name
www.ziffi.com by the defendants takes unfair advantage of and
is detrimental to the distinctive character, goodwill and
reputation of the plaintiff's registered trade mark ZIFI and ZIFI
FAMILY OF TRADE MARKS, as well as its domain name
www.zifi.co.in. The pharmaceutical goods manufactured by the
plaintiff under the trade mark ZIFI and its variations, for
purchase and use by patients, and the online services offered by
the defendants under the name ZIFFI through its website
www.ziffi.com, which allows users to book appointments with
doctors, diagnostic centres, salons and other healthcare
services, are in respect of similar target customer
base/clientele. Hence, in these circumstances, confusion and
deception is bound to take place, which is diluting the
uniqueness and distinctiveness of the plaintiff's registered trade
mark ZIFI as well as domain name www.zifi.co.in. The
defendants have no legitimate rights or interest to use the
impugned trade mark and domain name ZIFFI/ZIFFI.COM or
any other trade mark visually, phonetically, structurally,
confusingly and deceptively similar to the plaintiff's registered
trade mark, therefore, will not suffer any loss, if they are
restrained from using the trade mark impugned trade mark
ZIFFI/ZIFFI.COM in relation to their services and business".
19. Thus, the plaintiff claims infringement of its registered trademark
ZIFI and ZIFI family of trademarks and its domain name zifi.co.in. In the
plaintiffs aforesaid application, the plaintiff has sought an injunction
restraining the defendants by themselves, their partners, proprietors,
directors, agents, servants, licensees, franchisees, representatives and
employees or any one claiming under them or authorized from, in any
manner, directly or indirectly using the mark ZIFFI/ ZIFFI.COM or any
other confusingly/ deceptively similar mark in respect of their business/
services so as to infringe the plaintiff's registered trademark ZIFI and ZIFI
family of trademarks. The plaintiff is also claiming an action of passing off
against the defendants for passing off the defendants' services, website and
business as that of the plaintiffs.
20. Learned counsel for the plaintiff, Ms. Shwetasree Majumder submits
that the domain name "Ziffi.com" was neither coined, nor created by the
defendants, as alleged. In fact, the said domain name was created by a third
party called Fabulous Domains on November 30, 2004 and it remained in
their name until June, 2014. According to the plaintiff, the same was put up
for sale for $949 by Fabulous Domains, and the defendant No. 2 appears to
have purchased it on or about June 20, 2014. It is submitted that the
defendants started their business operation with the offending domain name
only from September 30, 2014.
21. As regards adoption of the mark 'Ziffi' by the defendants, Ms.
Majumder submits that the defendants have provided no acceptable or
plausible reason for the change in their trade name/domain name from
DocSuggest/docsuggest.com to Ziffi.com. The defendants had the option of
choosing any mark/domain name, however, they deliberately chose 'Ziffi'.
The defendants claim to have adopted "Ziffi" from the term "Jiffy"-to
signify their "quick" and "speedy" service, but they could have, very well,
chosen another name connoting the same meaning or essence. Ms.
Majumder also submits that retaining of the letter "i" also casts a shadow of
doubt on the defendants as their alleged mark reads as "Ziffi" with an "i"
instead of "Ziffy" with a "y". She states that in trademark law, a subsequent
user has a higher onus to prove the honest adoption of the mark impugned,
more specifically in cases of a coined/ arbitrary mark. She places reliance
upon the following decisions, wherein the Courts were not convinced with
the explanations for adoption of the respective marks by the defendants:
(i) Simatul Chemical Industries Pvt. Ltd. v. Cibatul Ltd. AIR
1978 Gujarat 216
(ii) Rolex SA v. Alex Jewellery Pvt. Ltd. & Ors. 2009 (41)PTC 284
(Del.)
(iii) M/s. Satyam Infoway v. M/s Sifynet Solutions Pvt. Ltd. AIR
2004 Supreme Court 3540
(iv) Honda Motors Co. Ltd. v. Charanjit Singh & Ors. 2003(26)
PTC 1 (Del).
22. Ms. Majumder submits that the present case is essentially falling
under clause (2) (b) of Section 29 of the Trade Marks Act, 1999 (hereinafter
"the Act") as the goods of the plaintiff and the services of the defendants are
allied and cognate. She further submits that comparison of two marks, in
light of the goods/services for which they are used, cannot be restricted to a
goods vs. goods spectrum or a services vs. services spectrum. She states that
modern trademark law has transgressed from the above, and similarity in
goods and services is now being viewed from an overall perspective. To
substantiate the same, she placed reliance on different instances of
infringement under Section 29 of the Act. She submitted infringement, post
the repealing of the Trade and Merchandise Act, 1958 has extended to using
of a registered trademark on business papers and advertising [See Section
29(6)(d)] and to the use of spoken words, forming a part of a trademark and
visual representation of such words [See Section 29(9)].
23. She submits that the defendants' services are in respect of the
common target customer base and clientele i.e. Doctors and
consumers/patients availing services of Doctors, diagnostic clinics and
healthcare services. It is submitted that the promotional activities of the
plaintiff extends to doctors', physicians' and diagnostic clinics by way of
posters, labels, stationary etc., and the defendants are also engaged in the
booking of doctors' appointments and diagnostic clinics etc. Thus, as per the
plaintiff, business of the plaintiff and the defendants are allied, cognate and
related. Reliance is placed on the discussion on related goods in McCarthy
on "Trademarks and Unfair Competition". The learned author states as
follows:
"Goods and Services Can be "Related" Without Being
Competitive. To be "related" in the parlance of trademark law,
the conflicting good or services do not have to be in
competition with each others. That the goods or services are
noncompetitive does not answer the question of whether the
goods are so "related" that a reasonable buyer is likely to think
that defendant's goods or services are somehow connected
with, or sponsored by, the plaintiff, due to similar marks. There
is no simple, one-question test for determining whether
noncompetitive products are "related" such that confusion is
likely as to source, affiliation, connection or sponsorship.
What Does "Related" Mean? Goods are "related", not
because of any inherent common quality of the respective
goods, but "related" in the sense that buyers are likely to
believe that such goods, similarly marked, come from the
same source, or are somehow connected with or sponsored by
a common company. As the Federal Circuit observed,
"related" means related in the minds of potential buyers:
[G]oods that are neither used together nor related to
one another in kind may still "be related in the mind of the
consuming public as to the origin of the goods. It is this sense
of relatedness that matters in the likelihood of confusion
analysis."
"Related" does not mean that there is necessarily any physical
relationship between the goods or services identified by the
conflicting marks. Rather, it means that the marks as used are
"related" in the mind of the consuming public. Goods are
"related" if customers are likely to mistakenly think that the
infringer's goods come from the same source as the senior
user's goods or are sponsored by, affiliated with or connected
with the senior user. As the Ninth Circuit stated: "The
[defendant's] use need not be the same as, nor one in
competition with the original use. The question is, are the uses
so related that they are likely to be connected in the mind of a
prospective purchaser?........." [Emphasis supplied]
24. Ms. Majumder submits that healthcare industry, these days, is not
only concerned with dispensation of medicines alone, but has outreached
other areas as well. She cites some real life examples, namely of, - "MAX'
India" - which cover areas of not just dispensation/pharmacy, but surgery,
health insurance, and online appointment of doctors; 'Jindal Group' - which
covers, inter alia, areas of steel, petroleum, cement and institute of
naturopathy; 'Mylan' - which covers manufacture and marketing of
pharmaceutical products and philanthropic services as well. She submits that
pharmaceutical industry has graduated to being called life sciences, and now
it's referred to as the healthcare industry. Thus, defendants' services of
online booking of doctors, diagnostics, spas, salons etc. fall under the
"healthcare industry" which is inclusive of the dispensation of
medicines/pharmaceutical products of the plaintiff.
25. In support of the submission on allied and cognate goods/services,
Ms. Majumder relies upon the following cases:
(i) Bajaj Electricals Limited v. Metal & Allied Products and
another AIR 1988 BOMBAY 167:
(ii) Essel Packaging Limited and others v. Essel Tea Exports Ltd.
1999 PTC (19) 521.
(iii) T.V. Venugopal v. Ushodaya Enterprises Ltd. & Another 2011
(45) PTC 433 (SC).
(iv) Honda Motors (supra)
26. Ms. Majumder submits that the defendants are using the mark 'Ziffi'
very prominently at the time of booking appointments, and are soliciting
feedback using domain name ziffi.com. They are also using e-mail ids such
as [email protected], [email protected] and [email protected] while
communicating with their patients/users/customers. Further, the website
listings/classifieds on third party search engines have the name 'Ziffi'
appearing. She submits that the only difference between the trademark
'Zifi' of the plaintiff, and impugned mark 'Ziffi' of the defendants, is the
extra letter 'f' in the defendants mark, and an unwary customer with average
recall capacity-who purchases ZIFI range of medicinal and healthcare
products, and also books appointments for a doctors clinic, or spa, or for
diagnostic services, through the defendants' website, is likely to get
confused and get misled into drawing a business association between the
plaintiff and the defendants. She submits that the marks 'Zifi' and 'Ziffi'
are structurally and visually similar, and phonetically identical. She points
out that the standard of awareness expected of an average customer, in such
matters, is not that of a well informed and aware consumer-who is well
aware of various products in the market, but of a consumer who is unwary,
having average intelligence and recollection. An unwary consumer of
average intelligence would, in all likelihood, get confused and/or deceived
with regard to the two marks 'ZIFI' and 'ZIFFI'-the only difference being
one extra letter 'f' in the defendants mark, and take one for the other. She
also submits that a junior/ subsequent user has a higher degree of onus to
prove that no confusion would be caused, or is likely to be caused, by its
entry in the market. Ms. Majumder submits that the defendants have failed
to prove the same.
27. Ms. Majumder submits that the association between DocSuggest and
'Ziffi' is discernible only from the website of the defendants. Thus, if a
consumer were to look for the plaintiff's product on the internet, he is likely
to log into the defendants' website, believing it to be that of the plaintiff.
Learned counsel for the plaintiff relies upon McCarthy on 'Trademarks and
Unfair Competition, Vol. 4 to submit that the defendant is guilty of 'initial
interest confusion'. The learned author in the said work states as follows:
"Initial Interest Confusion Defined. Infringement can be based upon
confusion that creates initial customer interest, even though no actual
sale is finally completed as a result of confusion. Most courts now
recognize the initial interest confusion theory as a form of
likelihood of confusion.
.
.
.
Initial Interest Confusion on the Internet: Domain Names. Courts
have applied the initial interest test of infringement to domain names
that conflict with a prior trademark. Some courts held that a
disclaimer on an otherwise infringing Web site does not remedy the
initial interest confusion which is caused by a confusingly similar
domain name. If the web user is using the trademark because she is
looking for the site of the company that owns the mark, initial
interest confusion caused by the domain name may deceive and lure
the web user to the defendant's Web site. Even though when the
user accesses the defendant's site, she finds that it is not the
plaintiff's site, the defendant has succeeded in luring users to his
site, which often is the defendant's main purpose.
.
.
.
An Analogy. The analogy to trademark initial interest confusion is a
job-seeker who misrepresents educational background on a resume,
obtains an interview and at the interview explains that the inflated
resume claim is a mistake or a "typo". The misrepresentation has
enabled the job-seeker to obtain a coveted interview, a clear
advantage over others with the same background who honestly stated
their educational achievements on their resume. In such a situation, it
is not possible to say that the misrepresentation caused no competitive
damage." [Emphasis supplied]
She also relies upon the following cases in this regard:
(i) Brookfield Communications Inc. v. West Coast Entertainment
Corporation 174 F.3d 1036;
(ii) Playboy Enterprises Inc. v. Netscape Communications
Corporation 354 F.3d 1020.
28. Ms. Majumder submits that even if the goods/ services are considered
dissimilar, the plaintiff's case is covered under clause (4) of Section 29 of
the Act. She submits that plaintiff's mark "ZIFI" has reputation in the
country, and defendants' use of the impugned mark 'ZIFFI' tantamounts to
the defendant taking unfair advantage of the plaintiff's mark (as it causes
source identification confusion/ initial interest confusion) and the same is
detrimental to the distinctive character and/ or repute of the plaintiffs
registered trade mark. The same is detrimental to the distinctive character as
it leads to dilution of the plaintiff's trade mark and would adversely impact
the plaintiff's reputation on account of the substandard services of the
defendant and the obvious source identification confusion diluting the
reputation and goodwill of the plaintiff's trademark. She relies upon the
following cases wherein injunctions were granted for dis-similar goods:
(i) Dharampal Satyapal Limited v. Suneel Kumar Rajput & Anr
2013 (56) PTC 116 [Del].
(ii) Industria De Diseno Textile SA v. Orinetal Cuisines Pvt. Ltd.
MIPR 2015(2) 125
(iii) Bloomberg Finance LLP v. Prafull Saklecha & Ors. - 2013
(56) PTC 243 (Del.)
(iv) Brahmos Aerospace Pvt. Ltd. v. FIIT JEE Ltd. 2014 (58) PTC
90 (Del.)
Defendants' submissions:
29. The defendants submit that they are in the business of providing an
online platform that allows its users to book appointments with salons, spas,
doctors, diagnostic centers and other wellness related facilities. They are
currently operating in the cities of Mumbai, Delhi, Bangalore, Hyderabad
and Pune using the website "www.Ziffi.com". It is the submission of the
Defendants that presently, they are providing services to book appointments
only with salons and spas in these aforementioned cities. Thus, the
submission is that there is no similarity or overlap in the business of the
plaintiff and that of the defendant.
30. The defendants submit that they commenced their business of online
booking services for appointments with doctors and diagnostic tests from
about February, 2010 under the name of "docsuggest.com/docsuggest" in
the city of Hyderabad, and gradually expanded to Mumbai, Delhi, Bangalore
and Pune. The defendants expanded the sphere of their business from
booking doctor appointments to salons, spas and general wellness related
facilities. As a result of this, they changed their trade name from
"docsuggest.com/docsuggest" to 'Ziffi.com/Ziffi' to avoid their target users
from getting an impression that their services are only limited to fixing
doctor's appointments. The defendants submit that though the said domain
name was created in the year 2004, it was not used until the defendant No.1
decided to adopt the name and mark 'Ziffi.com' around June, 2014.
31. The defendants submit that they coined the word 'Ziffi' keeping in
mind the nature and the manner in which the defendant No. 1 provides
business of online appointment booking services in a quick, speedy and
efficient manner to the customer intending to avail its services through the
website. The term "Ziffi", according to the defendants, has been derived
from the word "Jiffy" which means "very quick" or "in a fraction of a
second".
32. The defendants state that their network has over 5500 salons & spas,
and over 4000 stylists in its network as of February 2016. They enjoy
registrations of over 3,60,000 users in a span of just one year for the
business of spas and salons, and have received over 1,200,000 appointment
requests only through its mobile app. The defendants claim to have spent
over INR 26 Crores in promotion, advertisement, operations of
www.ziffi.com since its rebranding to "Ziffi/Ziffi.com".
33. The defendants submit that pursuant to receiving the cease and desist
notice sent by the plaintiff, they filed caveats in November 2014 before this
Court and Courts at Bombay, Bangalore and Hyderabad which all expired in
the month of February, 2015. It is the submission of the defendants that the
plaintiff waited for the caveats to expire to file the present suit in March
2015, and obtained an ex-parte interim order on 06.04.2015.
34. It is the case of the defendants that the plaintiff is engaged only in the
business of 'manufacturing and marketing medicinal and pharmaceutical
formulations in India and abroad' and, consequently, the line of business
and target customers of both parties are entirely different from each other.
They are not related, cognate, or allied businesses in any manner. The trade
channels through which the plaintiff and the defendants sell their respective
products/services are entirely different. Further, the classes of customers of
the plaintiff and the defendants are entirely different, and even the mode of
purchase of goods/availing services is different. In support of this
submission, learned Senior counsel for the defendants, Mr. Anil Sapra
places reliance upon Kamdhenu Ispat Limited 2011 (46) PTC 152 (Delhi),
Raymond Ltd. v. Raymond Pharmaceuticals Pvt. Ltd. MIPR 2007 (2) 67;
Marc Enterprises Pvt. Ltd. v. Five Star Electricals (India) & Anr. (2008)
ILR 2 Delhi 771; Intel Corporation v. Anil Hada (2006) 33 PTC 553; First
Computers (Formerly) known as 'Brilliant's' Computer Centre v. A.
Guruprasad 1995-2-LW 486; Aravind Laboratories v. Infotek Software &
Systems Pvt. Ltd. O.A. No. 77 of 2011 in C.S. No. 57 of 2011 decided on
15.06.2012; Nestle Products v. Milkmaid Corporation AIR 1974 Del 40;
Roshan Lal Oil Mills v. Assam Company Ltd. 64(1999) DLT 52; Sony
Kabushiki Kaisha v. Shamroa Maskar and Ors. AIR 1985 Bom 327;
Rustom Ali Molla and Ors. v. Bata Shoe Co. Ltd. AIR 1957 Cal 120; and
ITC Ltd. v. Philip Morris Products SA (2010) DLT 177 wherein injunction
was refused on the ground that the goods/services were not allied/cognate.
Mr. Sapra also relies upon Sona Spice Pvt. Ltd. v. Soongachi Tea
Industries Pvt. Ltd. 2007(34) PTC 91 (Delhi), wherein the Court rejected
the prayer for injunction of trademark, 'Sona'-which was being used for
spices by the plaintiff, and for tea by the defendants. Mr. Sapra submits that
allied and cognate goods must fall within the same class, and since the
goods of the plaintiff and the services of the defendants are falling in
different classes, no question of them being allied and cognate arises and, as
a consequence, Section 29(2) of the Act is not attracted.
35. The defendants assert that use of the word "Ziffi/Ziffi.com" by the
defendants would not create any confusion, as there is no reason for the
customers/users who book appointments through the online platform of the
defendant to associate or connect such online booking services for
appointment of spas, doctors, diagnostic centres etc. to plaintiffs trademark
'ZIFI' in respect of its medicinal products.
36. It is submitted that the targeted customers of the services of the
defendant are educated, and are capable of making informed choices, and in
support of the same reliance is placed on Intel Corporation Inc v. CPM
United Kingdom Ltd [2006] EWHC 1878 (Ch), wherein the customers of
the defendants' telemarketing services were corporate clients who were able
to make informed choices and did not assume any link between the plaintiffs
products marketed under the mark INTEL, and defendants' telemarketing
services offered under the mark INTELMARK. Reliance is also placed on
Khoday Distilleries Ltd. v. Scotch Whiskey Association (2008) 10 SCC 723
in this regard. Learned counsel further submits that the consumer base of the
plaintiffs and the defendants is entirely different, and places reliance upon
Skol Breweries vs. Unisafe Technologies 2010(44)PTC209(Del) wherein
the plaintiff was using the mark KNOCK OUT for beer, and the defendant
was using the same mark for pepper spray. This court in Para 19 observed:
"The Court is conscious that though the competing marks are
similar, the consumer base is entirely different, as is the
product. There is nothing to show that trade channels are
common, or that the Plaintiff's marks have acquired such
degree of secondary distinctiveness that the term KNOCK OUT
certainly, or almost invariably implies it or its product."
37. The defendants submit that their services are available only for the
masses in four cities viz. Mumbai, Delhi, Bangalore and Hyderabad. Mr.
Sapar submits that the medicinal products sold under the plaintiff's trade
mark 'ZIFI' are all prescription drugs, which cannot be sold over the counter
to the general public without a Doctor's prescription. He submits that the
medicine "ZIFI" of the plaintiff is one out of 300 medicines that they
manufacture and is used by only limited customers having diseases which
are cured by the antibiotic Cefixime.
38. Mr. Sapra submits that since the defendants communicate with
doctors, diagnostic centres, other services providers, and its users by using
the name, "DocSuggest Healthcare Services Private Limited", there cannot
be any confusion in the mind of doctors, diagnostic centres, or even average
customers/users with an average intelligence-who avail services of the
defendants under the trade name "Ziffi/Ziffi.com", that the defendants are in
any manner associated or connected with the plaintiff.
39. He submits that 'ZIFI' and 'Ziffi.com/Ziffi' are structurally, visually
and conceptually different and distinct. The font, size, and manner in which
the word "Ziffi/Ziffi.com" is used by the defendant is entirely different from
that of the plaintiff's trademark ZIFI and its family of trademarks. Further,
the plaintiff itself has acknowledged the structural dissimilarity by filing and
obtaining registrations for marks ZIFI, ZIFI 200, ZIFI 100 DT and ZIFI 50
under registration nos. 995613, 1041491, 1041490 and 1105943.
40. Mr. Sapra submits that the present case falls under Section 29 (4) of
the Act, which defines as to when a registered trade mark is infringed in the
case of dissimilar goods and services. He submits that the ingredients of
Section 29(4) are not met in the present case. Learned counsel submits that
the plaintiff has failed to disclose any reputation in India. Further, the
plaintiff has failed to establish that the adoption by the defendants of the
mark in question is without due cause, and how the defendants are taking
unfair advantage, or how the adoption of the mark ZIFFI/ZIFFI.COM by the
defendants is detrimental to the reputation of the plaintiffs. Reliance is
placed on Blue Hills Logistics Pvt. Ltd. v. Ashok Leyland 2011 (48) PTC
564 Madras in this regard. He relies on the decision of Nestle India vs.
Mood Hospitality Private Limited 2010 (42) PTC 514 (Del) and Kamdhenu
Ispat Limited vs. Kamdhenu Pickels & Spices Ind. Pvt. Ltd. (supra) to
submit that all conditions of Section 29(4) must be satisfied before an
injunction is granted, and there is no presumption of infringement in a case
to which Section 29(4) is applicable.
41. Mr. Sapra further submits that use of the mark "ZIFFI" is not without
due cause, because the defendants have from the very beginning indicated
the change of its mark from DocSuggest to Ziffi. There has been no hiding
in this regard. The corporate name "DocSuggest" appears on all forms of the
defendants. They have made conscious effort to promote the change of its
trade name from 'DocSuggest' to 'Ziffi'. The word was spread by publishing
a blogpost titled "DocSuggest is transforming in a Ziffi" on their website, by
making a declaration-reading "Your favorite Docsuggest is now Ziffi!"
which appears on top of every page on the defendants' website. All
communications with salons, spas, doctors, diagnostic centres, and other
wellness related service providers are done in the name of DocSuggest
Healthcare Private Limited. Further, all forms and applications for
registration of the services provided by the defendant has "DocSuggest
Healthcare Private Limited" printed on top. The defendants, therefore, are
not taking any unfair advantage of the plaintiff's mark. Further, the plaintiff
has failed to produce any document/ material on record to show that there
has been any actual confusion or unfair advantage to the defendant. He
states that the only document containing around five negative
comments/review about the defendants' services is not sufficient to establish
erosion of reputation of plaintiff's mark. Reliance in this regard is placed on
Aravind Laboratories (supra).
42. The defendants further submit that they are prior users of the mark for
services covered under Class 35 and 42 of the Schedule to the Act, and by
virtue of Section 34 of the Act, the defendants cannot be held liable for
infringement. The defendants submit that the user of the plaintiff has been
claimed since 2001 in respect of goods mentioned in Class 5 of the Schedule
to the Act i.e. medicinal, pharma and veterinary preparations only, whereas
the domain name ZIFFI.COM was created and registered by the predecessor
of the defendants in November, 2004. Reliance is placed on Rikhab Chand
Jain v. T.T. Enterprises 2013(54)PTC489 (Del); S. Narendra Kumar v.
Everest Beverages 2008(37) PTC 497 Del; and Sona Spice(supra).
43. Learned counsel for the defendant further submits that no case of
passing off has been made out by the Plaintiff. He relies on the test laid
down in the case of Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.
(2001) 5 SCC 73 in support of his submissions.
44. In her rejoinder, Ms. Majumder submits that defendant's website and
mobile application have certain negative reviews. Further, hits on the site of
the defendants pertain to Docsuggest, and not Ziffi. She further submits that
a defence premised on equity by the infringer is not a relevant consideration
for grant or non-grant of injunction and relies upon the following cases to
support her submission:
(i) Apple Computer Inc. v/s Apple Leasing & Industries
(1950-2000) Supp (2) PTC 45 (Del);
(ii) Satyam Infoway (supra).
45. Ms. Majumder submits that there is no delay in filing the suit, as the
plaintiff issued a cease and desist notice to the defendants on 20.10.2014
soon after learning of the defendants use of the mark, 'Ziffi' on or about
September 29, 2014. The plaintiff waited for the defendant to make amends.
Since the use of the infringing mark did not stop, the plaintiff filed the
present suit on 26.03.2015. Learned counsel submits that, in any event,
delay in initiation of action is not a defence, and would not be a reason to
permit continued infringement by the defendants. In this regard, the
Plaintiff relies upon the following case laws:
(i) M/s Hindustan Pencils Pvt. Ltd. v. M/s India Stationary
Products Co. and another AIR 1990 DELHI 19;
(ii) Dr. Reddy's Laboratories Ltd. v. Reddy
Pharmaceuticals Limited 2004(29) PTC 435 (Del);
(iii) Beiersdorf A.G. vs. Ajay Sukhwani 2009(39) PTC 38
(Del).
Discussion and Decision
46. Having heard the counsels for both parties and considered their
respective submissions and documents, I am of the prima facie view that the
plaintiff has made out a case for grant of ad interim injunction as prayed for.
47. There can be no doubt, and it needs no discussion to say that the mark
"Zifi" of the plaintiff and "Ziffi" of the defendant are phonetically,
structurally and visually similar. In any event, this aspect is also discussed a
little later. The prime issue in this case, therefore, is whether the goods of
the plaintiff and the services of the defendants are allied/ cognate or not.
Allied/cognate goods or services, as understood from the material referred to
below, are those goods/services which are not identical, but can be said to be
related or similar in nature (See McCarthy on Trademarks and Unfair
Competition, Fourth Edition, Vol 5). The Shorter Oxford English
Dictionary on Historical Principles Fifth Edition 2002, Vol. 1. defines the
term "Allied" as "connected by nature or qualities; having affinity" and the
term "Cognate" as "akin in origin, nature or quality". Reference may also
be made to New Webster's Dictionary and Thesaurus of the English
Language, 1992 which defines "Allied" as "relating in subject or kind" and
"Cognate" as "1. adj. having a common ancestor or origin|| (of languages or
words) having a common source or root|| (of subjects etc.) related, naturally
grouped together.". Cognate goods/ services can be described, inter alia, as
goods or services which have a trade connection - as in glucose and biscuits
(See Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR
1960 SC 142) or which are intended for the same class of customers - as in
television picture tubes (parts thereof, video tapes and cassettes and
television tuners etc.) and televisions, tuners and T.V. Kits (See Prakash
Industries Ltd. v. Rajan Enterprises (1994) 14 PTC 31), or are
complementary to each other - as in toothbrushes and toothpaste (See HM
Sariya v. Ajanta India Ltd. (2006) 33 PTC 4).
48. In the present case, the plaintiff is using the registered mark 'Zifi' for
goods falling under Class 05 of the Schedule of the Act i.e. pertaining to
pharmaceutical preparations. On the other hand, the defendants are using the
mark 'Ziffi' for booking of appointments for doctors, diagnostics, spas and
salons, and have applied for registration under Class 35 and 42 of the
Schedule of the Act. It is the submission of the defendant that goods and
services falling under different classes cannot be allied and cognate. I do not
find merit in this submission. The classification of goods and services under
Section 7 of the Act is not the criterion for deciding the question of
similarity in goods/services. Reliance may be placed on K.C.
Kailasam/Ramu Vedaraman's Law on Trade Marks & Geographical
Indications 1st Edition, 2003 wherein, the learned author on Page 180 has
stated as under -
"Classification of goods given in the rules not the criterion
Whether or not two sets of goods or services are of the same
description is not be decided on the basis of the classification of
goods and services given in the 4th schedule to the Trade
Marks Rules, 2002. The description of goods may be narrower
or wider than any of the classes according to the circumstances
of the case. As was observed by LINDLEY J., in the Australian
Wine Importers Trade Mark case [(1889) 6 RPC 311]. "If you
come to look at that classification, you will find goods of the
same description, in one sense, in different classes; and you
will find goods of different description in the same class". "
Similarity between goods and services
49. Now, to determine whether the defendants' services are allied and
cognate to plaintiff's goods, it is essential to first discuss the law on
similarity in goods/services in trademarks and its development so far. While
the Act is silent on the factors to be considered for similarity in
goods/services, the Courts in India - relying upon international cases and
literature, have consolidated the guiding principles and factors found
relevant in ascertaining the similarity between goods/services. They are as
follows:
1. In Assam Roofing Ltd. & Ors. Vs. JSB Cement LLP and Ors. 2015
SCC Online Cal 6581, the learned Single Judge in Para 80 observes-
"The test of similarity of goods is looked at from a business and
commercial point of view. The nature and composition of the goods,
the respective uses of the articles and the trade channels through
which they are brought and sold all go into consideration in this
context." (emphasis supplied)
2. In Kerly's Law of Trade Marks and Trade Names, 15th Edition 2011,
the learned Author in Para 9-073 has stated as under:-
"As para.23 of the decision in Canon v. MQM (1999) R.P.C. 117
makes clear, all factors relating to the goods or services themselves
must be taken into account. These include, inter alia, their nature,
their intended purpose, their method of use and whether they are in
competition with each other or are complementary. It is clear that
goods in different classes may nevertheless be considered similar, and
likewise that goods or services within the same class may be found to
not be similar." (emphasis supplied)
3. In Para 9-075, the Learned Author has mentioned some illustrations
on similar goods or services including under Para 9-078 " "Services
offered by beauty salons; solarium services" similar to "business
assistance with beauty preparations, sales" and "beauty
preparations, perfumery, cosmetics dietetic substances" ". The said
illustration sources from the case of Beauty Shop Application v.
Opposition of Evora BV [1999] E.T.M.R. 20, wherein the Office for
Harmonization in the Internal Market (Trade Marks and Designs) also
known as the Opposition Division held the defendant's services to be
similar to the plaintiff's services and goods by observing that "the
goods and services of the conflicting marks could be offered together
and be intended for the same public."
4. In British Sugar Plc. v. James Robertson & Sons Ltd. [1996] R.P.C.
281 at 294-297, relied upon in Balkrishna Hatcheries vs. Nandos
International Ltd. and Anr. 2007 SCC OnLine Bom 449 and
Advance Magazine Publishers, Inc. and Ors. v. Just Lifestyle Pvt.
Ltd. 2016 SCC Online Bom 8417 , the court laid down the objective
test for similarity of description of goods/services as follows:
(a) "The uses of the respective goods or services;
(b) The users of the respective goods or services;
(c) The physical nature of the goods or acts of service;
(d) The trade channels through which the goods or
services reach the market;
(e) In the case of self-serve consumer items, where in
practice they are respectively found or likely to be found in
supermarkets and in particular whether they are, or are likely
to be, found on the same or different shelves; and
(f) The extent to which the respective goods and services
are in competition with each other: that inquiry may take into
account how those in trade classify goods, for instance
whether market research companies, who of course act for
industry, put goods or services in the same or different
sectors."
5. Kerly 15th ed. while relying upon Canon (supra), further observes in
Para 9-065 that the element of distinctive character of a trademark
and its reputation is also viewed when determining similarity
between the goods and services and whether such similarity is
sufficient to give rise to the likelihood of confusion.
50. On the application of aforesaid principles, I am of the view that the
plaintiff's goods are similar to and associated with the defendants' services.
The reasons for the same are:
(i) Respective uses of goods/services: Plaintiff's products are a
wide range of medicines used to treat several diseases including
typhoid, bronchitis, fever & infection, etc. Defendants'
services, inter alia, includes the fixing of appointment of
doctors/diagnostics for medical check-ups to be treated for
several diseases, including the ones treated by plaintiff's
medicinal range, with the mark in question;
(ii) Intended Purpose: Plaintiff's products intend to achieve the
cure/ prevention of several diseases. Defendants' services are
meant for booking of appointment of, inter alia,
doctors/diagnostic for curing and possibly further prevention of
several diseases, including the ones treated by the plaintiff's
medicines under the mark in question;
(iii) Respective Users of goods/services: Users of plaintiff's
products are patients. Users of defendants' services are also,
inter alia, patients. They are health care seekers. The target
customer base and clientele of the two marks is likely to have
an overlap, especially amongst doctors, and consumers/patients
availing services of doctors, diagnostic clinics and healthcare
services. A consumer of the plaintiffs products (though they are
prescription drugs) may visit the defendants' website and is
likely to get confused and mislead into thinking that the
services offered by the defendants are coming from the same
source as the goods/medicines of the plaintiff.;
(iv) Physical Nature of goods/services: Plaintiff's products are
medicines which are prescribed by doctors. Defendants'
services are online booking services for obtaining
appointments, inter alia, with doctors/diagnostic centres, which
requires the user of the services to visit the clinic/hospital to get
him/her treated and get prescribed medicines by the doctor, if
required;
(v) Sector: Both the goods viz. medicines with the mark in
question, and services of the defendants under the impugned
mark pertain to the healthcare and medicinal sector;
(vi) Trade Channels: The plaintiff's products are medicines which
are available at dispensaries; at the chemists, or; at the doctor's
clinic. Defendants' services are to provide online appointment
of doctors, who may prescribe the user of such service with any
of the plaintiff's product. Moreover, since both fall under the
same sector of healthcare, it is difficult to negate that there
cannot be any overlap in the two. It is also a fact - of which the
Court can take notice that organizations who have established
themselves in a particular field have the tendency to diversify
into related fields. Thus, an unwary customer of the plaintiff is
likely to draw an association with the service offered by the
defendant - also in the healthcare sector, which included fixing
of Doctors appointments;
(vii) Reputation: The sales figures; promotional expenses; the
advancement of the Zifi products for adult and pediatric range
of medicines; trademark registrations; the spread of the Zifi
products and Zifi family of trademarks in India, and to
countries outside India, as well as the international and national
accreditations and awards received by the plaintiff, prima facie,
establish that the plaintiff has built a strong reputation with its
distinctive mark "Zifi" within the medicinal and pharmaceutical
sector in the past 17 years in India. The mark, by virtue of its
prolonged use and arbitrary adoption, has maintained an
inherently distinctive character, such that a user is likely to get
confused if he were to see the identical/ similar mark being
used for related services in the healthcare space, like that of the
defendants.
It is, thus, apparent that there is similarity and association between the
plaintiff's products and the defendants' services.
51. Section 29 of the Act sets out as to what constitutes infringement of a
registered trade mark. Similarity between the two marks is also defined as an
infringement. Infringement involving allied/cognate goods and services is
covered by Section 29(2)(b), which reads as follows:
29. Infringement of registered trade marks.--
(1) ..............
(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) .............................
(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) ....................................
is likely to cause confusion on the part of the public, or which is likely
to have an association with the registered trade mark.
Pertinently, this provision was introduced for the first time in the Act of
1999, which replaced the erstwhile Trade and Merchandise Act, 1958. The
earlier Act only provided for one instance of infringement, which today,
forms part of clause (1) of Section 29. Prior to the Act of 1999, in cases of
similarity in goods and services, an action of passing off would lie. Such a
right had been recognized as early as in the 1930s in Thomas Bear and
Sons (India) v. Prayag Narain AIR1935 All 7. On a difference of opinion
between two learned judges, the learned Single Judge observed as follows:-
"The rule deducible from the foregoing cases appears to be that the
plaintiffs, whose goods have acquired a reputation in the market through a
trade mark or name with which their goods have become associated, have a
right to restrain the defendant from using, a trade mark or name which is
identical with or similar to that of the plaintiffs, and such right extends not
only to the particular goods sold by the plaintiffs, but also to cognate
classes of goods, provided the cumulative effect of the similarity of the
mark, of the commercial connection between the plaintiffs' goods and
those of the defendant, and surrounding circumstances is such as to lead
the unwary customers to mistake the defendant's goods for those of the
plaintiffs." (emphasis supplied)
52. The Bombay High Court has further ruled in Essel Packaging
Limited and others v. Essel Tea Exports Ltd. 1999 PTC (19) 521 while
relying upon Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietary Ltd.
AIR 1996 Bom 146, that "With the passage of time the law on requirement
of common field of activity in a passing off action has radically undergone a
change and, according to the learned Single Judge, there is no requirement
for a common field of activity to found a claim in passing off because the
real question in each of such cases is whether there is, as a result of mis-
representation, a real likelihood of confusion or deception of the public and
consequent damage to the plaintiffs is likely to be caused and if that is the
test then the focus is shifted from the external objective test of making
comparison of activities of parties to the state of mind of public in deciding
whether it will be confused."
Similarity of the two marks:
53. The degree of similarity between the marks concerned can be assessed
from their visual, structural and phonetic similarity. Apart from the visual
and phonetic similarity, factors like class of users, distinctive character of
the registered trademark, imperfect recollection of the average consumer,
and overall impression of the mark are considered in ascertaining similarity
between two marks. The Supreme Court in Kaviraj Pandit Durga Dutt
Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 Supreme
Court 980(1), in para 28 observed as follows:
"In an action for infringement, the plaintiff must, no doubt,
make out that use of the defendant's mark is likely to deceive,
but where 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 mark would be
immaterial;...." [emphasis supplied ]
54. There can be hardly any doubt that the defendants' mark 'Ziffi' is
visually, phonetically, and otherwise similar to the Plaintiff's mark 'Zifi'.
The essential feature of the plaintiff's mark is the coined/ arbitrary word
mark 'Zifi'. The only minor difference between the two marks in question is
that the defendants have added an extra letter 'f' after the first use of the said
letter. When read and pronounced, the two marks are nearly identical. The
use of the second letter 'f' merely emphasizes the use of the sound that the
said letter produces, when pronounced/spoken. In the normal course, the
users would not even take notice when the word "Zifi" or "Ziffi" is spoken,
whether there is one, or two letters 'f' in the mark. A consumer who comes
across the plaintiffs mark at one point of time, and with the defendants mark
at another point of time, is not likely to remember the minor and
insignificant difference in the two marks, and it is highly likely that he may
recall the mark he may have come across earlier, and associate the services
of the defendant as coming from the organization of the plaintiff, or vice
versa.
Confusion on part of the public
55. The Supreme Court in Corn Products (supra), observed that "it is well
known that the question whether two marks are likely to give rise to
confusion or not is a question of first impression. It is for the Court to decide
that question.". Kerly's (15th ed.) states in Para 9-047 that "The likelihood of
confusion is to be assessed globally, taking into account all factors relevant
to the marks and goods and services in issue, and this will include any
reputation attaching to the earlier trade mark." The general principles as
stated by Kerly's in assessing the likelihood of confusion include a global
assessment; the relevant public; degree of similarity between the marks;
overall impression of the marks; distinctive character of the earlier mark;
imperfect recollection; similarity of goods and services. I am of the view
that there exists a likelihood of confusion or deception of the public on the
defendants' using the mark 'Ziffi'. The marks 'Ziffi' and 'Zifi' are
phonetically identical. As discussed, the difference of an extra letter 'f' is so
minuscule, that an average consumer with imperfect recollection is unlikely
to remember the same and, prima facie, would likely get deceived, and
confuse one in place of the other. Only a person with an extraordinary or
photographic memory would possibly pay attention to such detail, but as
held in a catena of judgments, the test to be applied is of a consumer with an
average and imperfect memory and recollection.
56. As discussed above, goods and services in question, prima facie,
appear to be overlapping. A purchaser of plaintiff's product may also end up
booking an appointment with a doctor/ spa/ salon on the defendants'
platform, and may see plaintiff's promotional material or find plaintiff's
medicinal products at the same, or another doctor's clinic or dispensary, or
get prescribed plaintiff's product under the trademark 'ZIFI' by the same or
some other doctor. This is enough to, prima facie, establish that there is an
overlap and linkage in goods and services, as well as the customers of the
plaintiff's product and defendants' services.
57. In Bajaj Electricals Limited(supra) it was alleged by the defendant
that goods manufactured by the plaintiffs and the defendants are totally
different and, therefore, the use of the word 'Bajaj' causes no confusion in
minds of public. The plaintiffs were manufacturing electrical goods and
appliances under Class 11 of the Schedule to the Act, whereas the
defendants were manufacturing utensils under Class 21 of the Schedule to
the Act. The court held in Para 8 that: "The articles manufactured by the
plaintiffs and the defendants are kitchen wares and are commonly used in
almost every kitchen in this country. The mere fact that the articles
manufactured by the contesting parties are different in nature is no answer
to the claim that the defendants are guilty of passing off. We entirely agree
with the conclusion recorded by the learned trial Judge that there is identity
of the goods, the mark and the consumer and the goods manufactured by
both the plaintiffs and the defendants are sold under one shop. Mr. Cooper
complained that the electric goods manufactured by the plaintiffs and the
stainless steels utensils manufactured by the defendants are not sold in one
shop. The submission is not accurate because it is common experience that
kitchen ware or kitchen appliances like mixers, grinders, pressure cookers,
and stainless steel utensils are sold in the same shop. At this interim stage,
we are not prepared to accept the submission of Mr. Cooper on this count
and we see no reason to take different view from that of the learned single
Judge on this aspect. In our judgment, prima facie, it is clear that the
defendants have intentionally and dishonestly tried to pass off their goods by
use of name "Bajaj"." The court upheld the grant of injunction on account
of a similar consumer base.
58. As submitted by Ms. Majumder, there also exists possibility of initial
interest confusion in the present matter. An unwary purchaser who is
looking for plaintiff's products on the internet is likely to land up on the
website of the defendants' because of the similarity in the domain names of
the plaintiff and the defendants. A customer will not make a conscious
effort of adding an extra 'f', or removing the extra 'f' while looking for the
plaintiff's product. Thus, confusion would arise the moment the customer
clicks on the website of the defendant, thinking and believing it to be of the
plaintiff, and vice versa. It is immaterial, in a case of initial interest
confusion, if the confusion is later removed, once the consumer visits the
defendants' website.
59. Further, the plaintiff has been using the trademark "Zifi" since 2001,
whereas the defendants started using the domain name and its mobile
application under the mark 'Ziffi/Ziffi.com' in November 2014. The
plaintiff has demonstrated the growth of its business with its trademark
"Zifi", and how its users have been expanded over the years. By virtue of
this prolonged, continuous, growing and uninterrupted use, the plaintiff's
trademark has achieved goodwill and reputation amongst its users.
Moreover, the trademark 'ZIFI' adopted by the plaintiff is an arbitrary and
coined word, making it an inherently distinctive trademark, the character of
which has been strengthened by continuous and uninterrupted use.
60. The defendants contend that the goods of the plaintiff are not allied
and cognate, but dissimilar to services of the defendants. It is submitted that
the case, at best, would be covered by sub section (4) of Section 29 of the
Act, the ingredients of which have not been satisfied by the plaintiff. This
court is of the opinion that both - the goods of the plaintiff and services of
the defendants, stem from the same healthcare sector, and are similar in
nature. It, therefore, appears that a case of infringement under Section 29(2)
of the Act is made out in the present case.
61. But, even if the court were to presume that the goods/services in
question are not allied or cognate, the defendants are still, prima facie, guilty
of infringement under Section 29(4). Section 29(4) reads as under:
"29. Infringement of registered trademarks.-
(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." (emphasis supplied)
62. To establish a case under Section 29(4), the following ingredients
must be present:
a) The trademark, the use of which is claimed to amount to infringement
(referred to as the mark under challenge) is identical or similar with a
registered trademark;
b) The mark under challenge is used in the course of trade;
c) The mark under challenge is used in relation to dissimilar goods or
services, other than the goods or services for which the registered
trademark is used;
d) The registered trademark has a reputation in India;
e) Use of the mark under challenge, without due cause, takes unfair
advantage to, or is detrimental to the distinctive character or repute of
the registered trade mark.
63. The defendants rely upon Kamdhenu Ispat Limited (supra) in support
of their submission that Section 29(4) is not attracted, wherein the court
declined the relief of injunction for the same mark in relation to dissimilar
goods. In my view the said case is distinguishable from the present one,
since the trade mark involved therein was "KAMADHENU", which the
Court considered to be a common Indian term with widespread usage within
the country, unlike the present case which involves an arbitrary and coined
term 'Zifi'. Moreover, the defendants in the case were prior users than the
plaintiff.
64. In Dharampal Satyapal (supra), the court observed, in respect of
Section 29 (4) as follows:
"13. Section 29(4) is also distinct from Section 29(1) to (3) of
the TM Act in another important aspect. The element of having
to demonstrate the likelihood of confusion is absent. Perhaps to
balance out this element, the legislature has mandated the
necessity of showing that (a) the mark has a reputation in India
(b) that the mark has a distinctive character (c) the use by the
infringer is without due cause. In other words, the legislative
intent is to afford a stronger protection to a mark that has a
reputation without the registered proprietor of such mark
having to demonstrate the likelihood of confusion arising from
the use of a similar mark in relation to dissimilar goods and
services. The words 'unfair advantage' and 'detriment' in the
context of the 'distinctive character' and 'reputation' of the mark
bring in the concept of 'dilution'. In the context of 'repute' they
are also relateable to the concept of 'tarnishment'. The
disjunctive 'or' between the words 'distinctive character' and
'repute' is designedly inserted to cater to a situation where a
mark may not have a distinctive character and yet may have a
reputation. It may not always be necessary for the proprietor of
a registered mark to show that it is a 'well-known trademark' as
defined in Section 2(zg) although if in fact it is, it makes it
easier to satisfy the 'reputation' requirement of Section 29(4) of
the TM Act. The presumption of distinctiveness attached to a
registered mark is a rebuttable one. At the interim stage, either
of these elements showed be shown prima facie to exist.
Whether in fact these elements are satisfied would depend on
the evidence led by the parties at trial."
65. As already observed there is similarity in the two marks, which I have
already dealt with above. The marks are undoubtedly similar - visually,
phonetically as well as structurally. The mark 'ZIFFI' of the defendants is
being used as a trademark in the course of trade.
66. The plaintiffs mark 'ZIFI' is being used for medicinal and
pharmaceutical products, where as the defendants' mark 'ZIFFI' is being
used to offer services for online booking for spas, salons, doctors, diagnostic
etc through a website and mobile application. The goods and services if
taken to be dissimilar, can still be said to be related. Related goods as per
McCarthy on Trademarks and Unfair Competition Vol. 5, need not be the
same, or in competition with each other, but should satisfy the test of
likelihood of confusion as to source, affiliation, connection or sponsorship
as amongst the prospective purchasers. As stated above, the marks in
question are so similar that a consumer with an imperfect memory and
recollection is likely to associate and connect the defendants' mark with that
of the plaintiffs, and vice versa.
67. The next ingredient to consider in a case under Section 29 (4) of the
Act is the reputation of the registered trademark. At a prima facie stage, I
don't find it necessary to deal with the question as to whether the plaintiff's
mark is a well known trademark under the Act to establish reputation as
mentioned in Section 29(4). Reliance is placed on Bloomberg Finance
(supra) in this regard. The Ld. Single Judge in Para 39, analyzed 'reputation'
under Section 29 (4) of the Act as follows:
"39. It may not be necessary for the proprietor of a registered
trademark to show that it is a 'well-known trademark' as
defined in Section 2 (zg) although if in fact it is, it makes it
easier to satisfy 'reputation' requirement of Section 29(4) of the
TM Act. The presumption of distinctiveness attached to a
registered mark is a rebuttable one. At the interim stage, either
of these elements should be shown prima facie to exist. Whether
in fact these elements are satisfied would depend on the
evidence led by the parties at trial."
68. As aforementioned, the sales figures; promotional expenses; the
advancement of the 'Zifi' products for adult and pediatric range of
medicines; Zifi's reach to more than 300 million patients; the trademark
registrations; the spread of the Zifi products and Zifi family of trademarks to
countries outside India, as well as the international and national
accreditations and awards received by the plaintiff, prima facie, establish
that the plaintiff has built a strong reputation within the medicinal and
pharmaceutical sector acquired over the past 17 years. In Dharampal Satyal
(supra) the Court, inter alia, took note of the sales figures, board hoardings,
television shows sponsored by the plaintiff to determine if, prima facie, the
plaintiff's registered mark had a reputation in India.
69. The trademark 'ZIFI' by virtue of its arbitrary and coined adoption and
use for the past 17 years by the Plaintiffs has become distinctive of its
products. In Honda Motors (supra) the plaintiffs were using the mark
'HONDA' for automobiles and power equipments, and defendants use of the
mark 'Honda' was restricted to pressure cookers. The learned Single Judge
relied upon the following cases to grant an injunction against the defendants:
a) Daimler Benz Aktiegesellschaft & Anr v. Hybo
Hindustan AIR 1994 Del 239 : Mercedes Benz for
vehicles and Benz for undergarments;
b) Sunder Parmanand Lalwani & Ors. v. Caltex
(India) Ltd., AIR 1969 Bombay 24 (V 56 C5): CALTEX
for watches and Caltex India Ltd. for products like
lubricants, grease, oils, etc.;
c) Lego System Aktieselskab & Anr. v. Lego M.
Lemelstrich Ltd., Fleet Street Reports (1983): LEGO for
toys and LEGO for irrigation equipment;
d) The Dunlop Pneumatic Tyre Co. Ltd. v. The
Dunlop Lubricant Co. 1899 (16) RPC 12: DUNLOP for
tyres and DUNLOP for oil and lubricants;
e) Surjit Singh v. M/s Alembic Glass Industries Ltd.,
AIR 1987 Delhi 319: YERA for glassware and YERA for
perfumery and cosmetics;
f) M/s Banga Watch Co. v. M/s N.V. Philips & Anr.,
AIR 1983 Punjab & Haryana 418: Philips for electrical
and electronic goods and Philips for watches and clocks;
g) Bata India Ltd. v. M/s Pyare Lal & Co. & Ors.,
AIR 1985 Allahabad 242: Bata for canvas, and other
footwear and Batafoam for mattresses.
The learned single Judge observed in Para 42:
"The plaintiff's business or products under the trade mark
HONDA has acquired such goodwill and reputation that it has
become distinctive of its products and the defendants' user of
this mark for their product "Pressure Cooker" tends to mislead
the public to believe that the defendants business and goods are
that of the plaintiff. Such user by the defendants has also
diluted and debased the goodwill and reputation of the
plaintiff".
70. The Supreme Court in T.V. Venugopal (supra) upheld the grant of
injunction against the Defendants (appellants) from using the trademark
"Eenadu" for agarbathies. The trademark "Eenadu" - which means "the
land" in Tamil, Kannada and Malayalam and "today" in Telegu was being
used by the Plaintiffs (respondents) for newspaper and T.V. channels. The
Supreme Court observed as follows:
a) "The respondent company's mark 'Eenadu' has acquired
extraordinary reputation and goodwill in the State of Andhra
Pradesh. The respondent company's products and services are
correlated, identified and associated with the word 'Eenadu' in
the entire State of Andhra Pradesh. 'Eenadu' means literally
the products or services provided by the respondent company in
the State of Andhra Pradesh. In this background the appellant
cannot be referred or termed as an honest concurrent user of
the mark 'Eenadu';
b) ...................
c) ....................
d) Permitting the appellant to sell his product with the
mark 'Eenadu' in the State of Andhra Pradesh would
definitely create confusion in the minds of the consumers
because the appellant is selling Agarbathies marked 'Eenadu'
as to be designed or calculated to lead purchasers to believe
that its product Agarbathies are in fact the products of the
respondent company. In other words, the appellant wants to
ride on the reputation and goodwill of the respondent
company. In such a situation, it is the bounden duty and
obligation of the court not only to protect the goodwill and
reputation of the respondent company but also to protect the
interest of the consumers;
e) ..............
f) ...............
(g) Appellant's deliberate misrepresentation has the
potentiality of creating serious confusion and deception for the
public at large and the consumers have to be saved from such
fraudulent and deceitful conduct of the appellant.
(h) Permitting the appellant to sell his product with the mark
'Eenadu' would be encroaching on the reputation and
goodwill of the respondent company and this would constitute
invasion of proprietary rights vested with the respondent
company.
(i) Honesty and fair play ought to be the basis of the policies in
the world of trade and business.
The law is consistent that no one can be permitted to
encroach upon the reputation and goodwill of other parties.
This approach is in consonance with protecting proprietary
rights of the respondent company." (emphasis supplied)
71. The defendants have, without due cause, taken unfair advantage of the
plaintiff's registered trademark. The defendants were using the trademark
'DocSuggest' up until September 2014 for its services of online booking.
They, in order to expand their services to spas and salons, switched to using
the mark 'ZIFFI'. This explanation does not, prima facie, seem convincing
to me. The defendants have failed to furnish any cogent reasoning for
adoption of an arbitrary term such as 'ZIFFI'. The justification of the
defendants that term - being a misspelling and derived from the word 'Jiffy'
meaning 'quick' and 'fast', is not convincing either. There is no explanation
as to why "JIFFY" was not adopted by the defendant, much less the
defendant has explained as to why it did not adopt "ZIFFY" instead of
"ZIFFI". In Simatul Chemical Industries (supra) the Court upheld the
injunction granted as against the defendants from using the mark "Simatul"
or any other word resembling the word "Cibatul" as comprised in the
plaintiff's name and style. The defendants explained the adoption of the
mark "Simatul" as being derived from the co-promotors daughters name
'Sima' and sons name 'Atul' and also from the first two letters of the
Managing Directors grandfather 'Shivdas'. The Court rejected this
explanation as follows:
"To us it appears that it is a very laboured and naïve
attempt to explain why the name 'Simatul' has been
invented. At first an attempt was made to explain
merely the word 'Sima' and then when it was realized
that an explanation was also necessary for the last
four letters which contained identical name 'Atul'
used by the plaintiff-Company a fresh explanation
was invented we are not prepared to accept this facile
explanation too readily. It appears that it has been
done deliberately and purposefully with a view to
invent a name similar to the name of the plaintiff-
Company. We are not prepared to accept the innocent
and innocuous-looking facial make-up which is too
naïve to carry conviction.........."
72. In Rolex SA v. Alex Jewellery Pvt. Ltd. & Ors. (supra) the defendant
claimed to have adopted the mark ROLEX for jewellery after the name of
his son Alex and for the reason of his business of rolled gold jewellery. The
Court rejected this explanation, and observed that :
"Though the defendant No. 1 has furnished an
explanation for adopting the name/mark ROLEX in
relation to its artificial jewellery but the same is not
found convincing by me. The defendant No. 1 being a
manufacturer in Bombay, having sales of jewellery in
Delhi as well and stated to be enjoying a huge
reputation, as argued on the basis of the three
affidavits filed by the defendant No. 1 is bound to
have known in 1993 and/or 1995 when it claims to
have adopted the mark ROLEX, of the plaintiff. The
defendant No. 1 admits it is not a dictionary word. I
am not convinced even prima facie that owing to the
name of the son of the Director of the defendant No. 1
being Alex and further owing to the business of being
rolled gold, the name ROLEX was coined by the
defendant."
73. As regards the explanation furnished by the defendants to the
adoption of their mark, I may also refer to the judgment of the Supreme
Court case of M/s. Satyam Infoway v. M/s Sifynet Solutions Pvt.
Ltd.(supra), wherein the defendants (respondents) were using
www.siffynet.net, whereas the plaintiffs had registered the domain names
www.sifynet.com, www.sifymall.com, etc. The defendants stated that the
term 'Siffy' was invented by them from the first five letters of promoters of
the company. The Court rejected this argument in Para 30, and observed as
follows:
".....the list of the names provided by the respondent
to support its case that 'Siffy' as an original acronym
was based on the initial letters of the respondent-
company's promoters seems unsupported by any
evidence whatsoever. No document apart from a bare
assertion that the five named individuals had any
special collective role in the organization or
promotion of the business has been filed. The
appellant's internet based business was, from 1999,
high profile. The evident media prominence to 'SIFY'
and large subscriber base could have left the
respondent in no doubt as to its successful existence
prior to the adoption of Siffy as part of its corporate
name and registration of Siffynet and Siffy.com as its
domain names. It would therefore appear that the
justification followed the choice and that the
respondent's choice of the word "Siffy" was not
original but inspired by the appellant's business name
and that the respondent's explanation for its choice of
the word "Siffy" as a corporate and domain name is
an invented post-rationalisation."
Similarly, in the present case, adoption of the word 'ZIFFI' as a derivative of
the word 'Jiffy' by the defendants to signify the quick and speedy nature of
their service appears to be devised. There is no justification for change in
spelling from "Jiffy" to "ZIFFI". It is also pertinent to mention that the
plaintiff's adoption of the term 'ZIFI' was much prior to that of the
defendants, and a change in the services/goods will not make a difference in
establishing honest adoption of the mark by the defendant.
74. The defendants are maintaining a website and a mobile application
under the impugned mark and generating revenue out of the same and
thereby taking unfair advantage of the registered mark of the plaintiff. The
defendants have exploited the mark commercially. Such conduct of the
defendants, and the high degree of similarity in both the marks is likely to
dilute the distinctive character and reputation of the plaintiffs' trademark. In
light of the above, I am of the view that the essential ingredients of Section
29(4) have also been squarely met and, prima facie, satisfied in the present
case.
75. I shall now deal with defendants' submission premised on Section 34
of the Act. Section 34 serves as an exception to Section 29, if the offending
mark is in continuous use prior to the first use of the registered trademark or
from its date of registration. The section reads as under:
"34. Saving for vested rights.--
Nothing in this Act shall entitle the proprietor or a registered
user of registered trade mark to interfere with or restrain the
use by any person of a trade mark identical with or nearly
resembling it in relation to goods or services in relation to
which that person or a predecessor in title of his has
continuously used that trade mark from a date prior--
(a) to the use of the first-mentioned trade mark in relation to those
goods or services be the proprietor or a predecessor in title of his; or
(b) to the date of registration of the first-mentioned trade mark in
respect of those goods or services in the name of the proprietor of a
predecessor in title of his;
whichever is the earlier, and the Registrar shall not refuse (on such use
being proved), to register the second mentioned trade mark by reason only
of the registration of the first mentioned trade mark."
(emphasis supplied)
The defendants allege that they are prior users of the mark 'ZIFFI' for
booking of appointments of doctors, diagnostics, spas etc and that Section
34 has to be interpreted in relation to the goods or services of the
defendants. If it were so, it would permit a person to dishonestly adopt a
mark which is identical with or deceptively similar to a prior registered
trademark (well known or not) but being used for goods or services which
are different to that of the prior trademark. Such an interpretation would be
in the teeth of Section 29 of the Act. Priority has to be viewed in relation to
the use of the mark, and not the goods or services for which the mark is
used. I, therefore, find no merit in the defendants' interpretation of Section
34 of the Act.
76. To address the submission of the defendants on delay in filing of the
suit by the plaintiff after the expiry of the caveats filed by the defendants, I
refer to the decision in the following cases:
M/s Hindustan Pencils Pvt. Ltd. v. M/s India Stationary
Products Co. and another AIR 1990 DELHI 19: The learned
Single Judge in para 39 ruled that "Any growth after notice is
at the risk and peril of the defendant. The defendant certainly
had notice of application of the plaintiff having been filed
against it in the year 1985 for cancellation of registration of the
copyright. The defendant should have been warned, at that
stage, that the plaintiff is not likely to accept the user of its
mark by the defendant. If the defendant continued to do
business by using the impugned mark, it did so at its own peril.
The continued user cannot be set up as a defence under these
circumstances."
Dr. Reddy's Laboratories Ltd. v. Reddy Pharmaceuticals
Limited: the Court held that "...the owners of trade marks or
copyrights are not expected to run after every infringer and
thereby remain involved in litigation at the cost of their
business time. If the impugned infringement is too trivial or
insignificant and is not capable of harming their business
interests, they may overlook and ignore petty violations till they
assume alarming proportions."
Thus, the defendants were already aware of plaintiff's business when
they received a cease and desist notice from it in October, 2014. Filing of an
infringement suit after six months by the plaintiff does not amount to any
significant delay, and cannot be said to be an approach to the court with
unclean hands since the defendants were already put on notice of plaintiff's
grievance.
77. The plaintiff has also made out a prima facie case of passing-off as
against the defendants. The test as laid down on deciding the question of
deceptive similarity in a passing off action as provided in Cadila Healthcare
Ltd. v. Cadila Pharmaceuticals Ltd. (supra) have been squarely met. As
aforementioned and discussed, plaintiff has, prima facie, inter alia been able
to establish that the nature of marks, nature of goods and services, class of
purchasers/ consumers are similar; there is a high degree of resemblance
between the marks, and also that there exists a likelihood of confusion and
association because of the similarity between the marks and goods/services.
78. Thus, I am of the prima facie view that the use of the mark "ZIFFI"
by the defendants in respect of their services is infringing the trademark of
the plaintiff "ZIFI" used in respect of its pharmaceuticals preparations and it
also tantamounts to passing off its business, website and services as that of
the plaintiff. I am also convinced that the balance of convenience lies in
favour of the plaintiff and not the defendants owing to their goodwill,
reputation and growing business. Further, irreparable loss and injury would
be suffered by the plaintiff, if the ad-interim injunction is not granted.
79. For the aforesaid reasons, I allow I.A. No.6690/2015 and dismiss I.A.
No.3733/2016. The ex-parte ad-interim order of injunction passed by the
learned Single Judge on 06.04.2015 is restored and shall continue to operate
till the disposal of the suit. The defendant is also directed to place on record
its sales and profit figures for the period that it has used the mark "ZIFFI" in
respect of its business till date. The same - duly certified by its Chartered
Accountant, be filed within two months. The plaintiff shall be entitled to
costs in these applications quantified at Rs.1 lakh.
80. Any observations made in this order are only tentative and not final
and shall not affect the final determination of the suit.
(VIPIN SANGHI)
JUDGE
JANUARY 03, 2017
