Delhi High Court
Jain Riceland Pvt Ltd vs Sagar Overseas on 30 October, 2017
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Reserved on: 11th October, 2017
Decided on: 30th October, 2017
+ CS(COMM) 796/2016
JAIN RICELAND PVT LTD ..... Plaintiff
Represented by: Mr. Mohan Vidhani and Mr.
Ashish Singh, Advocates.
versus
SAGAR OVERSEAS ..... Defendant
Represented by: Mr. Hitender Kapur and Mr.
Sagar Chawla, Advocates.
CORAM:
HON'BLE MS. JUSTICE MUKTA GUPTA
I.A. Nos. 7978/2016 (under Order XXXIX Rule 1 and 2 CPC) and
573/2017 (under Order XXXIX Rule 4 CPC) in CS (COMM) 796/2016
1. Plaintiff in the present suit inter alia seeks permanent injunction
against the defendant, its servants, agents, distributors etc. from
manufacturing, using, marketing, selling, soliciting, displaying, advertising
or in any other mode or manner dealing with in or using/representing,
displaying the impugned trademark/word 'SWAD' which was deceptively
similar to the plaintiff's trademark in respect of rice of all kinds and from
infringement of its trademark 'SWADI' and 'SWADISHT' registered under
Nos. 1143786 and 1143787 respectively in Class-30 besides claiming
passing off in respect of its trademark 'SWAD'. Plaintiff claims that its
predecessor and family concern namely Paras Trading Company, Naya
Bazar, Delhi in January, 1991 conceived and adopted the trademark
'SWAD' in relation to rice of all kinds. M/s Paras Trading Company
through its partner vide the Deed of Assignment executed on 2nd April, 2012
CS(COMM) 796/2016 Page 1 of 23
assigned its several trademarks, used/registered and/or pending registration
to the plaintiff. The plaintiff also claims that the artistic work bearing the
title 'SWAD' is also registered under No.A-54277 dated 27th October, 1997
under the Copyright Act, 1957 in the name of plaintiff's predecessor and the
plaintiff has filed an application for amendment of the said registration in its
name. Having successfully used the trademark 'SWAD', plaintiff got
registration of the trademarks 'SWADI' and 'SWADISHT' as noted above.
By virtue of the long, continuous and established user coupled with the
reputation, the purchasing public and the trade identifies and recognizes the
trademark 'SWAD' indicating the exclusive and quality product of the
plaintiff and none else. Plaintiff has placed on record figures of the sales
since the year 2005 for its rice under the brand 'SWAD'. Plaintiff also
claims to be extremely vigilant in safeguarding its interest and rights in the
trademark 'SWAD' and claims that from time to time it has initiated
proceedings/ taken legal actions against third parties misusing the same and
reference in this regard is made to one civil suit being CS (OS) No.
1692/2002 wherein on the parties settling the matter the same was decreed
in favour of the plaintiff. Thus the plaintiff claims rights both statutory and
under common law in the trademark 'SWAD', 'SWADI' and
'SWADISHT'.
2. In the plaint, the plaintiff further claims that the defendant has
recently started representing the word 'SWAAD' in respect of its goods, that
is, rice manufactured, packed and marketed by it which is
identically/deceptively and closely similar to the plaintiff's prior adopted
and reputed trademark 'SWAD' and also deceptively and closely similar to
plaintiff's registered trademark 'SWADI' and 'SWADISHT'.
CS(COMM) 796/2016 Page 2 of 23
3. When the suit came up for the first time before this Court on 13th July,
2016 this Court passed an ad-interim ex-parte order in favour of the plaintiff
and against the defendant restraining the defendant, its officers,
representatives, distributors, agents, assigns, etc. from using the impugned
trademark 'SWAAD' or any other mark which is deceptively similar to the
plaintiff's trademark 'SWAD'/'SWADI'/'SWADISHT' in respect of rice of
all kinds under Class-30 which interim order is continuing.
4. On service of summons defendant filed the written statement and an
application under Order XXXIX Rule 4 CPC. Thus both these applications
have been heard together.
5. In the written statement filed defendant has taken number of
objections including that the word 'SWAD' is a common word and could
not have been registered as a trademark besides the word being descriptive
about the taste of the product which is commonly used by number of
companies in different classes as well as in Class-30. It is claimed that the
word 'SWAAD' has not been used as a trademark by the defendant but only
in a descriptive sense in order to describe the taste of the product. It is
claimed that the defendant is selling its rice under the trademark "ALL
SEASONS" and has used the word SWAD in the tagline as "SWAAD
EVERYDAY RICE" on its packaging and the same has to be read as a
whole and not in piecemeal manner. Thus in totality there is no deception
by the defendant and it is using the word 'SWAAD' only to give an
impression of the taste. It is further contended that 'SWAD' is not a coined
word and it is a common trade practice in this trade to use the word 'SWAD'
in the packaging. The packaging of the defendant is in no way similar to
that of plaintiff and hence there is no deception. Further till date admittedly
CS(COMM) 796/2016 Page 3 of 23
the trademark of the plaintiff 'SWAD' is an unregistered trademark and the
plaintiff has failed to place on record any document to establish the
deceptive similarity in the defendant's product. The defendant has also
placed on record documents to show that many companies dealing with rice
are using the word 'SWAD' as descriptive of the product. In the written
statement the defendant has also challenged the validity of the registration of
the trademarks 'SWADI' and 'SWADISHT' of the plaintiff.
6. In support of its contentions as noted above, learned counsel for the
plaintiff relies upon the decisions reported as 1992 PTC (Suppl) (1) 470
(Del) Coolways India vs. Princo Air Conditioning and Refrigeration and
1993 PTC 75 M/s F.M. Diesels Ltd. vs. M/s S.M. Diesels, whereas learned
counsel for defendant relies upon the decision of the Division Bench of this
Court reported as 186 (2012) DLT 234 Bhole Baba Milk Food Industries vs.
Parul Food Specialties Pvt. Ltd. and 174 (2010) DLT 279 Marico Limited
vs. Agro Tech Foods Ltd.
7. The word 'SWAD'/'SWAAD' is indubitably not a coined word but a
common word in Hindi meaning 'TASTE' and is thus a descriptive word.
Whether a descriptive word or use of a descriptive word can amount to
infringement or passing off for a product was considered by the Division
Bench of this Court in Marico Limited (supra) wherein it was held:
4. Two basic issues arise for decision in the present appeal
along with incidental and related issues. The first issue is on
the aspect of infringement i.e. whether the appellant's
registration gives it exclusive right to use the subject
trademarks "LOSORB" and "LO-SORB" and consequently
whether an action for infringement is maintainable if a person
such as the respondent uses a trademark which is deceptively
similar or nearly identical or identical to the registered
trademarks. Included in this first issue is the aspect of whether
registration only confers prima facie validity and thereby does
not prevent the court from denying the injunction in spite of
registration. Further, assuming that registration is final would
the appellant be entitled to the reliefs of injunction with regard
to its claims of infringement once the respondent lays out a
valid defence under the applicable provisions of the
Trademarks Act, 1999 (hereinafter referred to as the "Act")
which inter alia, include Section 30(2)(a) and Section 35
thereof i.e. the use of the words by the respondent, which
words are claimed by the appellant as its trademarks are
statutorily permissible as the use is only in a descriptive
manner. The second issue is the issue with regard to claim of
the appellant pertaining to passing off and the issue is whether
the respondent's user of the expression "LOW ABOSORB
TECHNOLOGY" in relation to its edible oil product amounts
to passing off the goods of the appellant which uses the
unregistered trademark "LOW ABSORB". We also would like
to state that on quite a few aspects of "passing of" and
"infringement" there will be commonality of the ratios and
thus dovetailing on these common aspects.
PASSING OF ACTION
5. Since, the second issue is now almost entirely covered by a
decision of a Division Bench of this Court reported as Cadila
Healthcare Ltd. v. Gujrat Co-operative Milk Marketing
Federation Ltd and Ors. 2009 (41) PTC 336: 2009 (8) AD
(Delhi) 350 we shall therefore deal with it first. We are
consciously using "almost entirely" because there is one major
difference in the case of Cadila Healthcare Ltd. (supra) and
the present case on the issue of passing off being that the
products in the case of Cadila Healthcare Ltd. of the two
parties were different, but in the present case the products are
identical. The Division Bench in the judgment of Cadila
Healthcare Ltd. (supra) was concerned with a passing off an
action with respect to the trademark "Sugar Free" which was
used by the plaintiff therein with respect to an artificial
sweetener acting as a substitute for natural sugar and the
defendant was selling a frozen desert with the Trademark
"Amul" and describing its product as "Sugar Free". The
Division Bench has held that expression "Sugar Free" is
basically a descriptive and generic expression. The Division
Bench has further held that it cannot be said to be a coined
word. The Division Bench in effect has held that there cannot
an exclusive ownership granted to a person with respect to
expression "Sugar Free", i.e., there cannot be claim of
exclusive user of the expression "Sugar Free" as a trademark
with respect to all other products which were not artificial
sweeteners assuming that the plaintiff may have distinctiveness
with respect to its trademark for artificial sweeteners. The
relevant paras of the judgment Cadila Healthcare Ltd. (supra)
which contain the ratio are para Nos. 8 to 11 and 14 which
read as under:
8. In our view, at this juncture i.e. at the interim stage,
even assuming distinctiveness claimed by the appellant in
its favor qua its artificial sweetener, the appellant has
rightly been declined an injunction by the learned Single
Judge since it is evident and has indeed been found by the
learned Single Judge that the use of the term "Sugar
Free" by the respondent is not in the trademark sense but
as a common descriptive adjective. The learned Single
Judge has found and in our view rightly that the
respondent has not used the expression in a trademark
sense but only in a descriptive sense in the following
passage: -
54. It is important to be borne in mind that use of a
descriptive expression as a trademark by a trader,
irrespective of the said trademark having acquired
a secondary meaning and distinctiveness in
relation to the trader's products, does not entitle
such trader from precluding other traders from
using the said expression for the purposes of
describing the characteristic features of their
products. I have no hesitation in stating, albeit
without prejudice to the rights and interests of the
plaintiff in the present suit, that by adopting such a
purely descriptive and laudatory expression
"Sugar Free" as its trademark, the plaintiff must be
prepared to tolerate some degree of confusion
which is inevitable owing to the wide spread use of
such trademark by fellow competitors. Simply
because the plaintiff claims to be using the
expression "Sugar Free" as a trademark much
prior to the launch of the defendant's product Pro
Biotic Frozen Dessert in the market does not give
this Court a good ground for imposing a blanket
injunction on the defendant from using the
expression "Sugar Free", especially when the
defendant intends to use this expression only in its
descriptive sense and not as a trademark, and even
otherwise, when the use of this expression is
widespread in relation to foods and beverages
We fully agree with and reaffirm the said finding.
9. We are unable to hold that the appellant's trademark
"Sugar Free" is a coined word; at best it is a combination
of two popular English words. The mere fact that the
appellant's product cannot be directly consumed or eaten
and merely is an additive does not detract from the
descriptive nature of the trademark. Once a common
phrase in the English language which directly describes
the product is adopted by a business enterprise, such
adoption naturally entails the risk that others in the field
would also be entitled to use such phrases provided no
attempt is made to ride on the band wagon of the
appellant's indubitably market leading product "Sugar
Free". In this connection, merely because the attributes
of "Sugar Free" can be described by other phrases
cannot detract from the common usage of the phrase
"Sugar Free" as denoting products which do not contain
sugar and any trader which adopts such mark in the
market place, does so with the clear knowledge of the
possibility of other traders also using the said mark. That
is precisely the reason for the denial of protection to such
marks by refusing registration as envisaged by Sections
9, 30(2)(a) and 35 of the Act. The said Sections read as
follows:
9. Absolute grounds for refusal of registration.-
(1) The trademarks-
(a) which are devoid of any distinctive character,
that is to say, not capable of distinguishing the
goods or services of one person from those of
another person;
(b) which consist exclusively of marks or indications
which may serve in trade to designate the kind,
quality, quantity, intended purpose, values,
geographical origin or the time of production of the
goods or rendering of the service or other
characteristics of the goods or service;
(c) which consist exclusively of marks or indications
which have become customary in the current
language or in the bona fide and established
practices of the trade, shall not be registered:
Provided that a trademark shall not be refused
registration if before the date of application for
registration it has acquired a distinctive character
as a result of the use made of it or is a well-known
trademark.
30. Limits on effect of registered trademark.-(1) Nothing
in Section 29 shall be construed as preventing the use of
a registered trademark by any person for the purposes of
identifying goods or services as those of the proprietor
provided the use-
(a) is in accordance with honest practices in
industrial or commercial matters, and
(b) is not such as to take unfair advantage of or be
detrimental to the distinctive character or repute of
the trademark.
(2) A registered trademark is not infringed where-
(a) the use in relation to goods or services
indicates the kind, quality, quantity, intended
purpose, value, geographical origin, the time of
production of goods or of rendering of services or
other characteristics of goods or services;
35. Saving for use of name, address or description of
goods or services.-Nothing in this Act shall entitle the
proprietor or a registered user of a registered trademark
to interfere with any bona fide use by a person of his own
name or that of his place of business, or of the name, or
of the name of the place of business, of any of his
predecessors in business, or the use by any person of any
bona fide description of the character or quality of his
goods or services.!
(emphasis supplied)
Thus, it is clear that the mark or indication which serves
to designate the quality of the goods of the appellant,
which indeed the phrase "Sugar Free" does, would be an
absolute ground for refusal of registration of a mark
unless it has acquired a distinctive character. The
expression can at best be said distinctive qua the
artificial sweetener of the appellant and mere starting of
the marketing of the drink "sugar free D'lite" cannot give
the appellant the right to claim distinctiveness in the
expression "Sugar Free" in relation to all the food
products.
10. The learned Senior Counsel for the appellant has
relied upon a plethora of judgments including the
decision of the European Court of Justice in Baby Dry
(supra) to claim that the expression "Sugar Free" is a
coined word and is distinctive in nature. Apart from the
fact that the law laid down in the case of Baby Dry is not
binding on us, it is also relevant to notice that in the said
case the court permitted the registration on the basis of
the categorical findings that the expression "Baby Dry"
was a syntactically unusual juxtaposition of two
independent English words and was not a familiar
expression in the English language. In our view, the
expression "Sugar Free" is neither a coined word nor an
unusual juxtaposition of two English words especially
when such expressions are commonly used, both in
written, as well as spoken English, for example, - "hands-
free" (for mobile phones) and "fat free" (for food articles)
and thus cannot be permitted exclusive use for only the
appellant's product.
11. The appellant has relied upon the case of Godfrey
Philips India Ltd. (supra) wherein it was held that a
descriptive trademark may be entitled to protection if it
has assumed a secondary meaning which identifies it
with a particular product or has been from a particular
source. It is also relevant to mention here the judgment of
Home Solutions (supra) was also relied upon by the
respondents, wherein it was held that "the expression
"HOMESOLUTIONS" is inherently incapable of
becoming distinctive of any single person with respect of
any single product or service. It is generic and publici
juris. It describes the nature of services offered." Thus, in
our view, the mark "Sugar Free" is inherently incapable
of becoming distinctive of the product of the appellant
and hence the ratio of Godfrey Philips would thus not be
applicable. Even if it is assumed that the mark of the
appellant has become distinctive qua the artificial
sweetener, however, the protection to the mark qua the
product artificial sweetener cannot be extended to all the
food products of any competitor in the market. We also
affirm and reiterate the view taken by the learned Single
Judge that the appellant's product is a sweetener/sugar
substitute, and sweeteners are generally understood in
their functional sense, that is, in terms of utility when
added to foods and beverages. To an average consumer,
a sweetener is known to exist only when added to food
and beverages, and its own identity gets merged in the
food and beverages to which it is added. Thus, the
expression "Sugar Free" when used in relation to a
sweetener may really describe a sweetener in the sense of
its generic meaning, and what it connotes is the specific
nature and characteristics of the product.
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14. In consonance with the above view we are also not in
a position to agree with the appellant that the word
"Sugar Free" has become so distinctive of the sugar
substitute and has acquired such a secondary meaning in
the sugar substitute market that it cannot refer to any
other food product except the appellant's sugar
substituted product labelled "Sugar Free". There cannot
be any doubt that the word "Sugar Free" is not inherently
distinctive and is clearly descriptive in nature. In fact, the
word "Sugar Free" in essence clearly only describes the
characteristics of the appellant's product and therefore,
cannot afford it the protection sought in the plaint by
restraining the respondent from using the phrase "Sugar
Free". "Sugar Free", prima facie has not attained any
distinctiveness, as alleged by the appellant outside the
field of sugar substitute artificial sweeteners and the
appellant would not be entitled to exclusively claim the
user of the expression "Sugar Free" in respect of any
product beyond its range of products and the respondent
cannot be restrained from absolutely using the expression
"Sugar Free", particularly in the descriptive sense. A
mere descriptive usage of the expression "Sugar Free" by
the respondent may thus blunt the edge of claim of
distinctiveness by the appellant. However, we make it
clear that if any party enters into the domain of artificial
sweeteners with the trademark "Sugar Free" the
appellant may have a just cause in seeking restraint.
(Emphasis has been added by us)
6. In view of the judgment of the Division Bench in the Cadila
Healthcare Ltd. (supra), and with which we respectfully agree,
the appellant in the facts of the present case can have no
exclusive ownership rights on the trademark "LOW ABSORB".
The expression "LOW ABSORB" is quite clearly a common
descriptive expression/adjective. The expression "LOW
ABSORB " is not a coined word and at best it is a combination
of two popular English words which are descriptive of the
nature of the product as held by the Division Bench in Cadila
Healthcare Ltd. (supra) case that such adoption naturally
entails the risk that others in the field would also be entitled to
use such phrases. Low Absorb is not an unusual syntax and the
same can almost be said to be a meaningful part sentence or
phrase in itself. The expression "LOW ABSORB" surely and
immediately conveys the meaning of the expression that
something which absorbs less, and when used with respect to
edible oil, it is descriptive in that it refers to less oil being
absorbed or low oil being absorbed. Similar to the expression
"Sugar Free" being not an unusual juxtaposition of two
English words the expression "LOW ABSORB" equally is not
an unusual juxtaposition of words in that the same can take
away the descriptive nature of the expression. The expression
"LOW ABSORB" is used in the functional sense for the
character of the product viz edible oil. With respect to the
unregistered trademark "LOW ABSORB" we are of the firm
opinion that in essence the expression "LOW ABSORB" only
describes the characteristic of the product edible oil and
ordinarily/ normally incapable of being distinctive.
We are also of the view that it is high time that those persons
who are first of the blocks in using a trade mark which is a
purely descriptive expression pertaining to the subject product
ought to be discouraged from appropriating a descriptive
expression or an expression which is more or less a
descriptive expression as found in the English language for
claiming the same to be an exclusive trademark and which
descriptive word mark bears an indication to the product's
kind, quality, use or characteristic etc. This in our view is in
accordance with the spirit of various Sub-sections of Section 9
and Section 30 besides also Section 35 of the Act. The very fact
that in terms of Section 9 of the Act, in cases falling therein,
there is an absolute ground for refusal of registration of the
trademark, the same clearly is an indication of ordinarily a
disentitlement from claiming exclusive ownership of a
descriptive expression as a trademark. We are in this entire
judgment for the sake of convenience only using the expression
"descriptive expression" or "descriptive word" or "descriptive
trademark" "descriptive" etc. but these expressions are
intended to cover cases with respect not only to a descriptive
word mark used as a trademark but to all word marks used as
trademarks which refer to kind, quality, intended use or other
characteristics etc of the goods, and also other ingredients of
Section 9(1)(b) and Section 30(2)(a).
The aforesaid observations are made by us mindful of the
proviso of Section 9 as per which on account of
distinctiveness, the absolute bar against registration is
removed, but, we are for the present stressing on the
intendment of the main part of the Section and which is to
basically prevent descriptive terms from being registered as
trademarks. The proviso no doubt does state that such marks
can be registered as a trademarks, however, the Act itself also
contains provisions for cancellation of registered trademarks
including Section 57 whereby registration obtained is
cancelled being violative of the applicable provisions of the
Act. Our belief is further confirmed by the provision of Section
31(1) which clearly states that registration is only prima facie
evidence of the validity of registration. It is only when
cancellation proceedings achieve finality of the same being
finally dismissed can it be said that a mark for which
ordinarily there is an absolute ground for refusal of
registration that it has acquired a distinctive character i.e. a
secondary meaning or is a well known trademark. Section 124
of the Act is also relevant in this regard. Sub-Section 5 of
Section 124 clearly provides that in spite of registration, the
Court before which an action is filed seeking protection of the
trademark is not precluded from making any interlocutory
order it thinks fit in spite of the registration and also the fact
that the suit may have to be stayed till decision of the
rectification/cancellation proceedings before the
Registrar/Appellate Board filed in terms of Section 57 of the
Act. This aspect of Section 124(5) and related aspects are
dealt in details in the following portions of this judgment. The
facts of the present case are not such that a cancellation
proceeding has been dismissed and that which dismissal has
obtained finality and it cannot be said that the validity of
registration has been finally tested.
7. An important aspect with respect to the issue of passing of is
that the respondent is selling its product with a prominent
trademark "Sundrop" and which appears on the packaging of
the respondent in a very prominent size, much larger than the
size of the expression "LOW ABSORB TECHNOLOGY'. The
colour scheme of the respective packaging is also wholly
different. Appellant's colour scheme is orange and the
respondent's blue. Merely because, the consumers are same
and the trade channel same, it cannot be said that in the facts
and circumstances of the case, there is a possibility of
confusion, because there are more than enough differentiating
features on the packaging so as to avoid any issue of the
respondent passing of its goods as that of the appellant. For
the sake of convenience the three packages in colour are
reproduced below:
Thus the conclusion of the above is that, even though the two
respective products of the parties are identical viz edible oil, it
cannot be said that the respondent is passing of its goods as
that of the appellant-plaintiff.
8. The question now remains is whether in spite of the
Trademark of the appellant "LOW ABSORB" being a
descriptive Trademark, has the appellant established its case
at this interlocutory stage of its Trademark becoming so
distinctive that it can claim exclusive right and monopoly in
the same by virtue of the proviso to Section 9. There are two
important parts of this aspect/issue. The first part is what is
the meaning to be ascribed to the expression "distinctive" as
found in the proviso to Section 9 and the second aspect is
whether the Trademark of the appellant has in fact become
distinctive.
The word "distinctive" is not directly defined in the Act.
However meaning of distinctive is indicated in the definitions
of "trade-mark" (Section 2(zb)) & "well known trade mark"
(Section 2(zg). The word has been explained in a plethora of
judgments. Distinctive has been explained to mean such use of
the trademark with respect to the goods of a person that the
public will immediately and unmistakably co-relate the mark
with the source or a particular manufacturer/owner thereof.
The real issue which however arises is what should be the
meaning of the expression "distinctiveness" in the situation
when the trademark is a word mark of descriptive nature.
When a trademark, which is a word mark, is arbitrarily
adapted and is such having no co-relation to the goods in
question, then in such a case distinctiveness is achieved by
normal and ordinary use of the trademark with respect to the
goods and it has been repeatedly held that such trademark is
entitled to the highest degree of protection. However this is not
and cannot /should not be so for a trademark which is a
descriptive word mark. Some colour has to be taken for the
word "distinctive" as found in the proviso to Section 9 from the
expression "well known trademark" which follows the
distinctiveness aspect as found in the said proviso. Courts
should ordinarily lean against holding distinctiveness of a
descriptive trademark unless the user of such trademark is
over such a long period of time of many many years that even
a descriptive word mark is unmistakably and only and only
relatable to one and only source i.e. the same has acquired a
secondary meaning. A case in point is the use of "Glucon-D"
for 60 years in the recent judgment in the case of Heinz Italia
and Anr. v. Dabur India Ltd. (2007) 6 SCC 1. A period of 60
years is indeed a long period of time and thus distinctiveness
of the descriptive word mark used as a trademark was
accepted, albeit in a tweaked form of the normal descriptive
word "Glucose'. Therefore, when the descriptive trademark is
used only by one person undisturbed for a very long period of
time, without anyone else attempting to use the trademark
during this long period time, a case can be established of a
descriptive word having achieved distinctiveness and a
secondary meaning.
We must hasten to add that merely because the person first of
the blocks in adapting a descriptive trademark files legal
actions and temporarily prevents or seeks to prevent others
from using the descriptive trademark cannot mean that there is
undisturbed user of the trademark. Once others claim a right
to the descriptive trademark before the end of the long period
essential for a descriptive trademark to become distinctive
then the original user of a descriptive trademark cannot
ordinarily establish "distinctiveness".
Ultimately everything will turn on the facts of each individual
case and in some cases the facts may be wholly clear even at
the interim stage of deciding an interlocutory application, in
other cases (which are bound to be in a majority) a decision
on distinctiveness can only be made after evidence is led by the
parties. This is also so held by the Supreme Court in the
"Super Cup" case reported as Godfrey Philips India Ltd. v.
Girnar Food and Beverages (P) Ltd. MANU/SC/0541/2004 :
(2004) 5 SCC 257 that distinctiveness is an issue to be
established or examined in the facts of each particular case
i.e. the evidence has to be evaluated in the facts of each
individual case.
When we turn to the facts of the present case, we find that user
is only of about seven years since 2001 and which user even as
per the stated sales cannot be said to be such user qua a
descriptive expression "LOW ABSORB" that it can be said that
the appellant has got such distinctiveness to claim exclusive
monopoly of the same as a trademark keeping in mind the
observations made above of discouraging appropriation of
descriptive words and expressions. Also, the extent of sales i.e.
value of sales can sometimes be deceptive in cases such as the
present where the appellant also uses other trademarks such
as "Sweekar" & "Saffola'. It would be a moot point, to be
decided after trial, that what is the extent of sales relatable to
"LOW ABSORB" only (and even for the registered marks
"LOSORB" and "LOSORB") and not because of the trade
marks "Sweekar" and "Saffola'. We, therefore, at this stage of
interim injunction reject the case of the appellant that it has
achieved such distinctiveness that it can claim the benefit of
the proviso to Section 9 with respect to the subject word mark
which is a descriptive trademark.
9. The result of the aforesaid is that the learned Single Judge
was justified in declining the relief of injunction on the ground
of passing off. Additionally as stated by us above, in the facts
of the present case there is no question of claiming any
exclusive ownership right in the expression "LOW ABSORB"
and therefore, consequently, their arises no question of
successfully maintaining a passing of action on that basis.
There are also other added factors and circumstances, as
narrated above, to hold that there is no question of passing of
in the present case.
8. As noted the word 'SWAD' is a descriptive word and in the present
case the word 'SWAD' is not even the registered trademark of the plaintiff
as the two registered trademarks are 'SWADI' and 'SWADISHT'. Further
defendant has not used the word/mark 'SWAAD' as its trademark but as a
common descriptive adjective. The trademark of the defendant is 'ALL
SEASONS' with a tagline 'SWAAD EVERYDAY RICE' on its packaging.
The tagline is not more prominent than the trademark. The Division Bench
in Cadila (supra) upheld the observation of the learned Single Judge wherein
it was held that even if the trademark has acquired a secondary meaning and
distinctiveness in relation to the traders' product the same does entitle a
trader from precluding other traders from using the said expression for the
purposes of describing the characteristic features of their product. In the
present case the tagline "SWAAD EVERYDAY RICE" is describing the
feature of the product, that is, its taste. Further the word SWAD is not a
coined word but is a commonly used word for tasty edible product. Thus the
plaintiff cannot claim any exclusivity to use the said mark/word.
9. In respect of relief of interim injunction qua infringement, the
Division Bench in Marico Limited (supra) held as under:
10. That takes us to the main issue which was argued in the
present case being the first issue of whether the appellant by
virtue of the registrations has got an exclusive right to use the
expressions "LOSORB" and "LO-SORB" and is thereby
entitled to prevent anyone else from using any trade mark
which is identical or deceptively similar to the registered
trademarks.
11. ....
12. ....
13. A reading of the aforesaid sections taken together show
that:
A trademark is ordinarily used in relation to goods of a
manufacturer. A trademark can be registered but ordinarily
registration is not granted if the mark falls under Sub-Sections
1(a) to 1(c) of Section 9. The proviso however, provides for
entitlement to registration although ordinarily not permissible
under Sections 9(1)(a) to (c), provided that the mark has
acquired a distinctive character as a result of its use prior to
registration or is otherwise a well known trademark.
Registration is only prima facie evidence of its validity and the
presumption of prima facie validity of registration is only a
rebuttable presumption, see para 31 of N.R. Dongre v.
Whirlpool Corp. 1995 (34) DRJ 109 (DB). The right conferred
by registration for exclusive use of the trademark in relation to
goods is if the registration is valid and which flows from the
expression "if valid" occurring in Section 28. The expression
"if valid" has been inserted for the purpose that post
registration an aggrieved person is entitled to apply for
cancellation under Section 57 of the Act even if no suit is filed
alleging infringement of the registered trademark. In case a
suit is instituted, the court, once there is already a pending
action seeking cancellation of the trademark, will stay the suit
till the final disposal of the cancellation/rectification
proceedings. The court however is still entitled to, in spite of
registration, pass any interlocutory order as it deems fit,
including but not limited to, granting the injunction or
dismissing the prayer for injunction. If no cancellation
proceedings are pending as on the date of filing of a suit for
infringement if the court is satisfied with regard to the plea of
invalidity of registration (this language of Section 124(1)(a)(i)
co-relates to the expression "if valid" as occurring in Section
28) then the court may raise an issue in the suit and adjourn
the case for three months after framing the issues in order to
enable the defendant to apply to the Appellate Board for
rectification of the register. Even in the circumstances where
the court stays the suit for three months and permits a party to
apply for cancellation/rectification, the court can pass any
interlocutory order as it thinks fit under Sub-Section 5 of
Section 124.
In view of the co-relation between Section 28 and different
Sub-sections of Section 124, it becomes clear that the
entitlement to claim invalidity of registration on the ground of
the expression "if valid" as found under Section 28 only arises
if the defendant in his written statement in a suit alleging
infringement of a registered trademark takes up the plea with
respect to registration of trademark being "invalid" or has
already applied for cancellation of the registered trademark
before the suit alleging infringement is filed.
Section 29 entitles an action being filed for infringement of a
registered trademark against an identical, nearly identical or
deceptively similar trademark used in relation to the same
goods in respect of which the trademark is registered or to
similar goods. In case, the trademark is not identical and the
goods are also not the same for which the trademark is
registered, an infringement action will only lie if the
conditions of Sub-Section 4 of Section 29 are satisfied being of
the registered trademark having a reputation in India and the
use of the registered trademark without due cause takes unfair
advantage or is detrimental to the distinctive character or
repute of the registered trademark. Sections 30 and 35 entitle
a person to use the registered trademark if the conditions
mentioned in those sections are satisfied, meaning thereby, in
spite of registration, and in spite of the statutory rights
conferred by Sections 28 and 29, an owner of a registered
trademark cannot sue for infringement if the use by the
defendant of the trademark falls within the exceptions as
carved out under various Sub-sections of Section 30 and
Section 35. That this is so becomes absolutely clear from the
expressions "nothing in Section 29 shall be construed as
preventing the use of the registered trademark.." as appearing
in Section 30, and "nothing in this Act shall entitle the
proprietor or a registered user of a registered trademark ..."
as appearing in Section 35. Included in Section 30, is
disentitlement to an infringement action in spite of registration
of the trademark where the use of the registered trademark is
in relation to the goods to indicate the kind, quality, intended
purpose etc, or other characteristics of the goods. Therefore
there are two stages/tiers of defence in an infringement action.
The first is for cancellation of registration in terms of Section
57. If the registration is cancelled obviously nothing will
survive in the infringement action. The second tier is that even
if the registration is valid there are still valid defences as
enunciated in Sections 30 - 35 of the Act which will disentitle
the plaintiff to relief in an action brought for infringement of a
registered trade mark.
14. In view of the aforesaid legal position, the first issue which
arises is whether the learned Single Judge was justified in
holding that he was entitled to look into the validity of
registration of the trademark. Of course, we must hasten to
add we are doing so and so has the learned Single Judge done,
only for the purpose of deciding the interlocutory application
for grant or refusal of injunction and as envisaged in Section
124(5).
In the facts of the present case, we find that the injunction
application was disposed of at a stage when the defendant
filed an application for vacation of the injunction and no
written statement of the defendant was on record. As already
discussed hereinabove, the stage of challenging the validity of
registration by the defendant arises only when the written
statement is filed, because it is only in the written statement
that the plea of the registration being invalid would be taken
up in furtherance of the expression "if valid" as found in
Section 28 and also similar language as found in Section
124(1)(a). This also flows from the fact that under Section
31(1) registration is only a prima facie evidence of validity
and not conclusive evidence. Registration would only be a
conclusive evidence of validity if the rectification/cancellation
proceedings filed for cancellation of the registered trademark
do not finally succeed. We are, therefore of the view that in the
facts of the present case since the issue of invalidity of
registration is to be taken up only in a written statement for an
issue to be framed with respect thereto in terms of Section
124(1)(a)(ii) and the written statement was yet to be filed when
the impugned order was passed, where such an issue
would/could be raised, the learned Single Judge was justified
in looking into the aspect of prima facie validity of the
registration of the trademark and it cannot be the stand of the
appellant that the plea of invalidity of registration cannot be
looked into because there is no such plea in the written
statement inasmuch as the written statement was yet to be filed
in the suit.
The learned Single Judge was fully entitled to look into the
aspect of validity of registration in the facts of the present case
by reference to the expression "if valid" as occurring in
Section 28 and the related provisions of Section 31 and the
different Sub-sections of Section 124. The learned Single
Judge applied his mind and considered this issue of prima
facie validity of registration of trademark for deciding the
interlocutory application and which is very much permissible
and in fact so provided under Section 124(5).
10. The Division Bench further examined the prima facie validity of the
registration in the said case and held that the registration of the trademark
"LOSORB" and "LO-SORB" was prima facie invalid because the said
trademarks basically are minor variations of a descriptive expression "LOW
ABSORB" which is not an unusual juxtaposition of the words in the English
language.
11. In Coolways India (supra) relied upon by learned counsel for the
plaintiff this Court held that in a passing off action it is to be examined
whether the plaintiff has acquired reputation, goodwill in the mark which he
is using in trading his goods uninterruptedly for quite some time and
somebody else is attempting to pass off under that mark. However, in the
said case this Court was dealing with the trademark 'Prince' which is not a
descriptive word but a common noun. Hence the said decision cannot have
application to the facts of the present case. Even in M/s FM Diesel (supra)
this Court was not dealing with a mark which was descriptive in nature and
described the qualities of the product.
12. The Division Bench in Marico Ltd. (supra) further noted with
caution that it was possible that a descriptive word/mark on account of its
extensive user over a great length of time, when no other person have been
shown to use the same, becomes a well known trademark or a trademark
which has achieved a distinction by user that it can be registered however,
the same would depend on the facts of each case including but not limited to
the trade mark, goods in question, customers, use and all other factors and
their intense co-relation in each case. The defendant along with the written
statement has filed documents to show that a number of entities in the trade
of rice are using the name/mark 'SWAD'/'SWAAD'. Thus, it cannot be held
that by extensive user over a length of time and there being no other person
using the mark, plaintiff's trademark 'SWAD'/'SWADI'/'SWADISHT' has
achieved a distinction.
13. In view of the discussion aforesaid interim order dated 13th July, 2016
is vacated. Application being I.A. No. 7978/2016 (under Order XXXIX Rule
1 and 2 CPC) is dismissed and I.A. No. 573/2017 (under Order XXXIX
Rule 4 CPC) is disposed of.
(MUKTA GUPTA)
JUDGE
OCTOBER 30, 2017/'vn'
