Telemart Shopping Network Pvt Ltd vs Tvc Life Sciences Ltd & Anr
2018 Latest Caselaw 394 Del

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*    IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                     Date of decision: January16, 2018

+     CS(COMM) 115/2016


      TELEMART SHOPPING NETWORK PVT LTD ..... Plaintiff
                  Through  Mr.N.Mahabir and P.C. Arya, Advs.

                         versus

      TVC LIFE SCIENCES LTD & ANR               ..... Defendants
                    Through   Mr.Dattatray Vyas, Adv.

      CORAM:
      HON'BLE MR. JUSTICE JAYANT NATH

JAYANT NATH, J. (ORAL)

IA Nos. 24172/2014 (u/O 39 Rules 1 & 2 CPC) and 5241/2015 (u/O 39 R 4 CPC)

1. IA No. 24172/2014 is filed by the plaintiff seeking an ex parte injunction to restrain the defendants from selling or offering for sale goods or products with the trade mark SANDHEE SUDDHAM or any trade mark which is similar to the trade mark of the plaintiff SANDHI SUDHA.

2. This court on 03.12.2014 noting that the two trademarks, namely, the trademark of the plaintiff and defendants are deceptively similar and the plaintiff is the prior user of the trademark passed an interim injunction restraining the defendants from selling, offering for sale any goods, advertising or promoting any product etc. under the trademark SANDHEE

SUDDHAM or any mark which is deceptively similar to the trademark of the plaintiff SANDHI SUDHA.

3. Hence, the defendants have now filed the application being IA No. 5241/2015 seeking vacation of the interim order.

4. The plaintiff has filed the suit stating that it adopted the trade mark SANDHI SUDHA in 2008 and commenced commercial use in January 2009. The product of the plaintiffs is said to be an Ayurvedic joint pain relief oil. Plaintiff's product, it is urged, is sold under the mark SANDHI SUDHA. In 2011, the plaintiff is said to have made minor changes in the composition of the oil and has commenced use of the trade mark SANDHI SUDHA PLUS as a relatively premium oil. Both the products, namely, SANDHI SUDHA and SANDHI SUDHA PLUS are being used by the plaintiff. The plaintiff has placed on record the annual sale figures showing sale of Rs.45.35 cores in the year 2010-11. In 2013-14, sale of Rs.27,17,092 + Rs. 19.35 crores has been stated for the two products. It is also claimed that the plaintiff regularly advertises its products on television and also publishes and promotes them through its website. The plaintiff also claims to have spent substantial sum in carrying out advertisements.

5. It is the case of the plaintiff that on 19.11.2014, it verified the site of defendant No.1 and found that the product with the mark SANDHEE SUDDHAM is being sold through the website of defendant No.2. It is pleaded that as per the website, the said product SANDHEE SUDDHAM is being offered for sale all over India. It is pleaded that the said trade mark of the defendants' SANDHEE SUDDHAM is visually, phonetically and structurally similar to the plaintiff's trade mark SANDHI SUDHA. The nature of goods, trading channels, use, consumers of the products etc. are

identical. It is pleaded that the plaintiff is a much prior user of the trade mark and that defendants were fully aware and conscious of the exclusive rights of the plaintiff. The plaintiff is said to have thereafter made search of the records of the Registrar of Trade Marks and found that defendant No. 1 has filed a trade mark application for the mark SANDHEE SUDDHAM and the present status of the application is "Refused". The plaintiff has also applied for registration of the mark SANDHI SUDHA in Class V on 01.10.2010. The said application was published by the Registrar of Trade Marks in Trade Marks Journal on 31.10.2011. The application of the plaintiff has been opposed by a third party and is said to be pending.

6. The defendants have filed their written statement and have opposed the present case of the plaintiff.

7. I have heard learned counsel for the parties.

8. Learned counsel for the defendants accepts that the defendants have started using its mark SANDHEE SUDDHAM in June 2011. He however submits that despite the fact that the plaintiff has prior user, no injunction can be granted to the plaintiff for the following reasons:-

(i) He pleads that there is concealment by the plaintiff. No sale figures and advertising figures have been given for the year 2009 whereas actually the user is claimed w.e.f. 01.01.2009. It is also pleaded that in August 2011, there was a Phonetic Search Report loaded on the website of the Trade Mark Registry wherein it was mentioned that there is a phonetic similarity in the two trademarks, namely, of the plaintiff and of the defendants. Reliance is placed on the said Search Report to plead that despite knowledge of this fact, the plaintiff has failed to place these facts on record.

(ii) It is further pleaded that despite knowledge about the product of the defendant in 2011 the suit has been filed in 2014 and hence there was acquiescence on the part of the plaintiff.

(iii) It is thirdly pleaded that the word "SANDHI" has a common use and is publici juris inasmuch as "SANDHI" is being used by several manufactures as a common trade name much prior to the plaintiff. It is pleaded that the word "SANDHI" in Sanskrit means "joint". Reliance is placed on various trade marks on the records of the Trade Mark Registry to show that there are various products on sale using the said phrase "SANDHI" including the products which are registered trademarks.

(iv) He also pleads that the defendants had a turnover of about Rs.22-24 crores till prior to the passing of injunction order. Hence, it is pleaded that the balance of convenience would be against granting an injunction against the defendants.

(v) Learned counsel for the defendants has relied upon the judgments of this court in the case of KRBL Ltd. vs. Lal Mahal Ltd. and Anr., 2015 III AD (DELHI) 314 and Aviat Chemicals Pvt. Ltd. & Anr. vs. Intas Pharmaceuticals Ltd., 93(2001) DLT 247 to support his contention that no stay can be granted.

9. Learned counsel appearing for the plaintiff has vehemently opposed the contentions of the defendants. He points out that there is no suppression by the plaintiff. He pleads that reliance of the defendants on a report which was uploaded on the website is misplaced as the report was not known to the plaintiff. No copy of the report was sent to the plaintiff by the Trademark Registry. In any case, he pleads that it is not possible to argue that the

plaintiff had knowledge about the user of the said trade mark by the defendants in August 2011.

10. Reference may be had to the judgment of the Supreme Court in Satyam Infoway Ltd.vs.Siffynet Solutions (P) Ltd, (2004) 6 SCC 145 where the Supreme Court noted the test for a passing off action as follows:-

"13. The next question is would the principles of trade mark law and in particular those relating to passing off apply? An action for passing off, as the phrase "passing off" itself suggests, is to restrain the defendant from passing off its goods or services to the public as that of the plaintiff's. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its services in a manner which has deceived or would be likely to deceive the public into thinking that the defendant's goods or services are the plaintiff's. The action is normally available to the owner of a distinctive trademark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The question is, as has been aptly put, who gets these first? It is not essential for the plaintiff to prove long user to establish reputation in a passing off action. It would depend upon the volume of sales and extent of advertisement.

14. The second element that must be established by a plaintiff in a passing off action is misrepresentation by the defendant to the public. The word misrepresentation does not mean that the plaintiff has to prove any malafide intention on the part of the defendant. Of course, if the misrepresentation is intentional, it might lead to an inference that the reputation of the plaintiff is such that it is worth the defendant's while to cash in on it. An innocent misrepresentation would be relevant only on the question of the ultimate relief which would be granted to plaintiff. What has to be established is the likelihood of confusion in the minds of the public, (the word "public" being understood to mean actual or potential customers or users) that

the goods or services offered by the defendant are the goods or the services of the plaintiff. In assessing the likelihood of such confusion the courts must allow for the "imperfect recollection of a person of ordinary memory."

11. The admitted position is that the present suit is filed on the ground of passing off. The plaintiff is a much prior user having commenced use of the product from 01.01.2009. Merely because the sale figures of 2009 are not placed on record cannot mean that this contention of the plaintiff can be discarded. In any case, the plaintiff has placed the turnover from 2010 onwards and has also placed on record invoices for the year 2010. Hence, the plaintiff is admittedly the prior user of the trade mark. The plaintiff also had a turnover in 2010 of Rs.200 crores and implicitly had established his own reputation and being a prior user has rights in the said trademarks.

12. Further, a perusal of the two trademarks would show that there is clearly a phonetic similarity in the trademarks being used by the plaintiff i.e. SANDHI SUDHA and the trade mark which was used by the defendants, namely, SANDHEE SUDDHAM. In fact, that apart, the two boxes of the products have similar covering with the same colour. Further, in Hindi, the print SANDHEE SUDDHAM appears to read as SANDHI SUDHA. Both the products deal with the same problem i.e. pain relieving oil and hence, have common consumers and common usage. Further, the defendants themselves have relied upon the Phonetic Search Report of the Trade Mark Registry. The Trade Mark Registry also did find a phonetic resemblance in the two trademarks.

13. I will now deal with the contentions of the defendants. As far as the concealment aspect is concerned, in my opinion, at this stage is not possible to categorically state whether the plaintiff had knowledge of the said

Phonetic Search Report which is relied upon by the defendants to claim that in August 2011 the plaintiff had knowledge of the trade mark being used by the defendants. Admittedly, no such copy was dispatched by the Trade Mark Registry. Hence, I am unable to agree that there is concealment of facts or that there was acquiescence on the part of the plaintiff.

14. As far as the contention of the word SANDHI being "Publici Juris" is concerned, a perusal of the search report which is relied upon by the defendants would show that there are various variations of the mark/ word "SAND" in the document relied upon by the defendant. Even assuming that SANDHI has been used in common that would not be a ground to hold that full phrase used by the plaintiff SANDHI SUDHA would not have a distinct entity. Merely because there is some general use of a common prefix would not be a ground to permit the defendants to start using a deceptively similar trade mark as that of the plaintiff. Even otherwise, the defendant himself has applied for registration of the trade mark SANDHEE SUDDHAM and hence, cannot claim that SANDHI is a generic mark.

15. In this context reference may also be had to the judgment of this court in Pfizer Ireland Pharmaceuticals vs. Intas Pharmaceuticals and Anr., 2004 (74) DRJ 407 where the court held as follows:-

"16. It is by now a settled law that when similarity, whether visually or phonetically is judged and considered, the entire word has to be taken as a whole. The word cannot be disected for considering as to whether or not the said word is visually and phonetically similar. It is true that the word LIPI is a generic term but what is to be considered in this case is whether two words, which are the trademarks, namely, "LIPITOR" and "LIPICOR" could be said to be visually or phonetically similar. The same is also to be considered in the context of Indian conditions and also in the context of unwary and illiterate customers of India...."

16. As far as the judgment relied upon by the learned counsel for the defendants are concerned, in the case of KRBL Ltd. vs. Lal Mahal Ltd. and Anr.(supra), I may note that the defendant was a prior user of the trade mark. This court has noted that the plaintiff is not permitted to defeat the rights of the defendant if he establishes that the defendant had concurrent use or that the defendant been using the mark for a considerable length of time with the knowledge of the plaintiff. None of these facts are applicable to the present case.

17. As far as the judgment in the case of Aviat Chemicals Pvt. Ltd. & Anr. vs. Intas Pharmaceuticals Ltd., (supra) is concerned, that was case in which the plaintiff was manufacturing a drug LIPICARD. The defendant was using the mark LIPICOR. The parties launched their respective products around the same time, namely, June 2000. Hence, the plaintiff could not claim prior user in respect of the product. This court noted the facts to be considered while dealing with an action for passing off on the basis of the unregistered trade mark as follows:-

"4. It may be pointed out that Counsel for both sides heavily relied upon the recent judgment of the Apex Court in the case of JT 2001 (4) SC 243.. Reliance was placed on different observations of this judgment by both the Counsel in support of their respective submissions. This judgment deals with the law relating to passing off that too in the context of medicinal preparation or drugs. Therefore, needless to mention principles laid down by the Apex Court exhaustively dealing with the same subject matter would be far more relevant than in other case. The Hon'ble Court broadly stated the following factors which are to be considered while dealing with an action for passing off on the basis of unregistered trade mark:

(1) The nature of the marks i.e. whether the marks are word marks of label marks or composite marks, i.e. both words and label works.

(2) The degree or resemblances between the marks, phonetically similar and hence similar in idea.

(3) The nature of the goods in respect of which they are used as trade marks.

(4) The similarity in the nature, character and performance of the goods of the rival traders.

(5) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.

(6) The mode of purchasing the goods or placing order for the goods and.

(7) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks."

18. No doubt this court had noted that anybody cannot claim exclusive right to any word, abbreviation which has become publici juris. Names of organs, ailments or ingredients being publici juris cannot be owned by anyone for use as trade mark. Accordingly in those facts and circumstances that the court took the view that the word LIPI is a generic word, common to the trade and stands adopted by more than 20 companies for the last several years and noting the factual background and specifically noting that the two parties had launched their respective products almost around the same time, this court had declined injunction to the plaintiff. The judgment would not apply to facts of the case.

19. Facts of the present case clearly show that the defendant is selling goods with a trade mark which appeared to be calculated to lead purchasers to believe that they are plaintiff's goods. The trade mark of the defendants is clearly deceptive. The plaintiff has made out a prima facie case. Balance of convenience is also in favour of the plaintiff.

20. Keeping in view the above facts, I confirm the interim order passed by this court on 03.12.2014.

21. These applications stands disposed of.

CS(COMM) 115/2016 The matter is now fixed on 28.02.2018 for admission/denial of documents.

List in court on 19.03.2018 for framing of issues.

(JAYANT NATH) JUDGE

JANUARY 16, 2018/rb