Delhi High Court
Insecticides (India) Limited vs Parijat Industries (India) Pvt ... on 9 July, 2018
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 9th July, 2018
+ CS(COMM) 1279/2016 & IA No.11386/2016 (u/O XXXIX R-1&2
CPC)
INSECTICIDES (INDIA) LIMITED ..... Plaintiff
Through: Mr. N.K. Anand, Mr. Shivendra P.
Singh, Mr. Ashutosh Upadhyaya and
Mr. Siddhant Chamola, Advs.
Versus
PARIJAT INDUSTRIES (INDIA) PVT LTD. ..... Defendant
Through: Mr. Darpan Wadhwa, Sr. Adv. with
Mr. J.V. Abhay and Ms. Maidini Phul,
Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1.
The plaintiff has instituted this suit for (i) permanent injunction, to
restrain the defendant from passing off its insecticides and/or any kind of
agro chemical and/or other products as of the plaintiff, by adopting the mark
„VICTOR 80‟ which is similar/deceptively similar to the mark „VICTOR‟ of
the plaintiff; and, (ii) for ancillary reliefs of delivery, rendition of accounts,
damages etc.
2. The suit came up before this Court first on 16th September, 2016,
when though summons of the suit and notice of the application for interim
relief issued but the ex-parte relief sought, not granted finding that the
defendant, in reply to cease and desist notice preceding the suit has claimed
having commenced using the mark in the year 2010, while the plaintiff in its
application for registration of the mark „VICTOR‟ had claimed use since
2002 and further finding the defendant to have in the said reply also claimed
registration of the mark since the year 2010 and the same being cited in
opposition to the application dated 9th February, 2011 of the plaintiff for
registration of the mark „VICTOR GOLD‟ and the plaintiff having not
responded thereto.
3. The defendant appeared and filed written statement and to which
replication has been filed by the plaintiff. Attempts made of amicable
settlement could not succeed.
4. On 18th January, 2017, the counsels agreed that the claim of the
plaintiff for injunction against passing off, with both plaintiff and defendant
having registered marks, can be disposed of on the basis of the documents
filed by both the parties and no oral evidence is required to be led in the suit.
With consent, the following issues were framed in the suit:
"(I) Whether the use by the defendant of the mark „VICTOR
80‟ amounts to the defendant passing off its goods as that of the
plaintiff having the mark „VICTOR‟? OPP
(II) If the above issue is decided in favour of the plaintiff,
whether the plaintiff is not entitled to the relief for the reason of
delay and acquiescence and the stand taken by the plaintiff
before the Trademark Registry? OPD
(III) Relief."
and the suit listed for final hearing.
5. On application of the defendant, that it had been wrongly recorded in
the order dated 18th January, 2017 that the mark of the plaintiff was
registered, the counsel for the plaintiff on 22nd February, 2017 stated that the
plaintiff has four marks viz. „VICTOR‟, „VICTOR GOLD‟, „VICTOR
PLUS‟ and „VICTOR SUPER‟ and the mark „VICTOR GOLD‟ had been
registered during the pendency of the suit and the application of the
defendant was disposed of clarifying that any observation in the order dated
18th January, 2017 of the plaintiff‟s mark being registered would not
prejudice the defendant in any manner whatsoever.
6. The counsel for the plaintiff and the senior counsel for the defendant
were heard on 8th May, 2017, 18th May, 2017 and 31st May, 2017 and orders
reserved.
7. It is the case of the plaintiff in the plaint:
(i) that the plaintiff is one of the premier names in the crop
protection industry;
(ii) that one of the most popular trade marks of plaintiff is
„VICTOR‟;
(iii) that „VICTOR‟ range of products are sold and marketed by the
plaintiff under many variants of the mark „VICTOR‟ including
„VICTOR‟, „VICTOR GOLD‟, „VICTOR PLUS‟ and „VICTOR
SUPER‟;
(iv) that the mark „VICTOR‟ was first adopted by the plaintiff in the
year 2002 and has been continuously and uninterruptedly used by the
plaintiff;
(v) that the plaintiff, on 9th February, 2011, 27th February, 2012 and
7th May, 2015 applied for registration in Class 05 of „VICTOR
GOLD‟, „VICTOR‟, „VICTOR PLUS‟ and „VICTOR SUPER‟
respectively and which applications of the plaintiff are pending
consideration;
(vi) that Class 05 covers a very wide category of goods, as diverse
as pharmaceuticals, personal hygiene items, mosquito repellants,
dietary supplements, surgical items, pesticides and medicinal
lozenges;
(vii) that when the examiner of trade marks examined the applications
aforesaid of plaintiff for conflicting marks, few other applications
having „VICTOR‟ were found in Class 05; however majority of other
cited trade marks pertained to completely different set of goods like
pharmaceuticals, nutritional products, mosquito coils etc. but none
pertained to insecticides; therefore, in response to examiner‟s report,
the plaintiff submitted that the plaintiff‟s trade mark is confined to
insecticides which is different from the specification of goods of the
cited marks; copies of the examination report and their response
submitted by the plaintiff were being filed with the plaint;
(viii) that the defendant is engaged in the business of manufacture and
sale of insecticides and other agro based chemicals;
(ix) that the plaintiff, in November, 2015 came to know from their
market sources, about the insecticides being sold under the mark
„VICTOR 80‟;
(x) that the plaintiff issued a cease and desist notice dated 30 th
November, 2015 to the defendant and on not receiving any reply
issued a reminder dated 2nd January, 2016; in reply dated 7th January,
2016 thereto, the defendant, while refusing to comply with the
requisitions made in the plaintiff‟s notice claimed use and registration
of its mark „VICTOR 80‟ since the year 2010;
(xi) the defendant, in its reply also stated that the defendant‟s trade
mark was cited in the plaintiff‟s application for registration as a
conflicting mark;
(xii) that it was then discovered that the agent of the plaintiff who
was pursuing the matter for registration of the mark had overlooked
the classification of goods of the defendant‟s mark since it was cited
right in the bottom of the examination report;
(xiii) that the plaintiff cannot be made to suffer for the inadvertent
mistake of its agent/counsel; and,
(xiv) that the plaintiff, owing to prior user of the marks since the year
2002, is entitled to restrain the defendant from using the deceptively
similar mark „VICTOR 80‟.
8. The defendant has contested the suit, pleading:
(a) that the plaintiff is estopped from challenging the defendant‟s
right to use the trade mark „VICTOR 80‟ in respect of pesticides due
to its own admission in the registration proceedings with respect to the
marks „VICTOR GOLD‟ and „VICTOR‟; on the application dated 9 th
February, 2011 of the plaintiff for registration of „VICTOR GOLD‟ in
respect of insecticides, weedicides, herbicides, fungicides and
preparations for destroying vermin, the Trademark Registry raised
objection by issuing examination report wherein the plaintiff‟s mark
„VICTOR GOLD‟ was stated as conflicted mark with the defendant‟s
prior applied trade mark „VICTOR 80‟; in response to the said
objection in the examination report, the plaintiff specifically stated
that the specification of goods under the cited marks are entirely
different than the plaintiff‟s goods and that no confusion and/or
deception would arise among the trade as well as the consumers if the
marks exist even in the same market;
(b) that similarly on the plaintiff‟s application for registration of the
mark „VICTOR (label)‟, the Trademark Registry raised objection by
issuing examination report wherein plaintiff‟s mark „VICTOR (label)‟
was cited as conflicted with the defendant‟s prior registered trade
mark „VICTOR 80‟; in response to the objections in the said
examination report, the plaintiff filed a reply before the Trade Mark
Registry stating that the goods in relation to trade mark subject matter
of registration is altogether different from the goods in relation to the
trade marks cited in the examination search report;
(c) that the plaintiff now in the present suit is taking a diametrically
opposite stand than that taken before the Trademark Registry, as
aforesaid;
(d) „VICTOR‟ is not an invented word but it is a common
dictionary word and the plaintiff cannot claim exclusive right
thereover;
(e) that as many as six third parties are also registered proprietors
of the trade mark „VICTOR‟ in Class 05, since the years 2001-2004;
(f) that the defendant‟s pesticides exterminate the pests and emerge
as a victor, therefore the defendant under the said idea honestly and
bona fidely adopted the trade mark „VICTOR 80‟ in respect of
pesticides and applied for registration thereof in the year 2010 and
since then has been openly and extensively using the said mark;
(g) that the question of passing off even otherwise does not arise,
inasmuch as the products under the mark „VICTOR 80‟ of the
defendant are sold in packaging with the name of the defendant
company and the trade mark „PARIJAT‟ is written in bold and the
packaging is of entirely different get up, appearance, colour
combination etc.;
(h) that the defendant, under the registration of the year 2010, has
exclusive right to use of the mark „VICTOR 80‟ in respect of
pesticides; and,
(i) that the plaintiff is not entitled to any relief on account of delay,
laches and acquiescence; the plaintiff, through the examination report
dated 10th April, 2012 against the plaintiff‟s application for
registration of mark „VICTOR GOLD‟, knew of the trade mark
„VICTOR 80‟ of the defendant and the suit has been filed more than
four years thereafter.
9. The plaintiff, in its replication has inter alia pleaded:
(I) that the products of the plaintiff and the product of the
defendant are having common trade and common customers and are
used in rural areas by farmers who have a very little idea or knowledge
to distinguish the identical marks with the prefix and suffix;
(II) that the application of the year 2010 of the defendant for
registration of the mark „VICTOR 80‟ was on „proposed to be used‟
basis and the defendant had started using the trade mark „VICTOR 80‟
only in the month of October, 2015 as per invoices filed by the
defendant along with the written statement and the defendant has
falsely claimed use since 2010; the defendant has not placed on record
any document or invoice of the year 2010;
(III) that there is no delay in filing the suit inasmuch as immediately
after coming to know of the defendant having commenced use of the
mark „VICTOR 80‟ in October, 2015, cease and desist notice was
issued;
(IV) that due to inadvertent and innocent mistake of plaintiff‟s agent
in response to the examination report of the Trademark Registry, the
defendant cannot be permitted to defeat the common law rights of the
plaintiff; and,
(V) that there are several proprietors of the mark „VICTOR‟ but
only the plaintiff has been using the mark „VICTOR‟ in relation to
pesticides and insecticides since the year 2002.
10. The counsel for the plaintiff argued:
(A) That it has been held in L.D. Malhotra Industries Vs. Ropi
Industries ILR 1976 (I) Delhi 278 that a man is not to be deprived of
his legal rights unless he has acted in such a way as would make it
fraudulent for him to set up those rights. For the plea of estoppel to
arise, the plaintiff, the possessor of the legal right, must have
encouraged the defendant in his expenditure of money or in the other
acts which he has done, either directly or by abstaining from asserting
his legal rights. A mere inadvertent mistake of the agent of the
plaintiff in stating in the reply to the Trademark Registrar that the
product of the plaintiff and the defendant were different, does not
estop the plaintiff from asserting the legal right.
(B) Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd.
(2001) 5 SCC 73 holds that English Principle of giving more
importance to dissimilarity than similarity is not applicable to India
and that purchaser in India cannot be equated to the purchaser in
England. The consumers of the product of the plaintiff as well as the
defendant are from rural areas.
(C) The plea of estoppel, is even otherwise not available to the
defendant because the stand of the plaintiff before the Trademark
Registry, though mistaken, was of the product of the plaintiff and the
defendant being different and not of the marks „VICTOR‟ and
„VICTOR 80‟ being different.
(D) Midas Hygiene Industries P. Ltd. Vs. Sudhir Bhatia (2004) 3
SCC 90 holds that in cases of infringement, either of trade mark or of
copyright, normally an injunction must follow and mere delay in
bringing action is not sufficient to defeat the grant of interim
injunction.
(E) Century Traders Vs. Roshan Lal Duggar & Co. PTC (Suppl)
(1) 720 (Del) (DB) holds that there is a distinction between a mark
being "common on the register" and "common to the trade" and that
presence of the mark on the register does not prove its user at all,
inasmuch as, it is possible that the mark may have been registered but
not used and it is not permissible to draw any inference as to user from
the presence of mark in the register. The mark of the defendant was
not in use till October, 2015.
(F) Ramdev Food Products Pvt. Ltd. Vs. Arvindbhai Rambhai
Patel (2006) 8 SCC 726 holds that acquiescence is a facet of delay and
the principle of acquiescence would apply, where the person sits by or
allows another to invade the rights and spend money on it and that it is
a course of conduct inconsistent with the claim for exclusive rights for
trade mark, trade name etc. The defendant was not in use of the mark
till October, 2015. The plaintiff cannot be said to have acquiesced.
(G) The plaintiff, at page 83 of Part III file, has filed a Certificate of
its Chartered Accountant showing sales of the plaintiff of the
„VICTOR‟ product from the year 2002 to 2016, showing sales of the
value of Rs.71,97,485.50 paise in the year 2002-2003 and sales of the
value of Rs.22,09,62,238.94 paise for the year 2009-2010 and of the
value of Rs.23,73,90,532.41 paise for the year 2015-2016.
(H) Amar Singh Chawal Wala Vs. Vardhman Rice and Genl.
Mills ILR (2009) VI Delhi 399 holds that since the plaintiff had
developed a "family of marks", merely by changing the first word
from GOLDEN, LAL or NEELA to the word HARA, there is every
possibility of confusion being caused, both in trade and in the mind of
any person purchasing rice.
(I) N.R. Dongre Vs. Whirlpool Corporation (1996) 5 SCC 714
holds that concept and principle on which passing off action is
grounded is that a trader needs protection of his right of prior user of a
trade mark as the benefit of the name and reputation earned by him
cannot be taken advantage of by another trader by copying the mark.
11. Per contra, the senior counsel for the defendant:
(i) handed over the packaging of the product of the plaintiff and the
defendant to show, that while the product under the mark „VICTOR‟
of the plaintiff is sold in a plastic container placed in a carton the
product under the mark „VICTOR 80‟ of the defendant is sold in a
plastic pouch, in powder form, having an entirely different colour
scheme and layout than the colour scheme and layout of the carton and
the plastic container of the plaintiff‟s product and with „PARIJAT‟
written in bold in the margin of the plastic pouch;
(ii) handed over the following comparative chart between the
product of the plaintiff and the product of the defendant:
SL Particulars IIL Parijat Remarks
No.
1. Formulation type Soluble Liquid (SL) Wettable Granule Totally different
(WG) formulation
2. Product Imidacloprid 17.8% Imidacloprid 40% + Totally different
Composition SL (Stand alone) Fipronil 40% WG product composition
(Combo)
3. Packing HDPE Bottle Laminated Pouch + Totally different
Baby carton packing type
4. Pack size 50 ML; 100 ML; 40 gm; 100gm; 250
250 ML; 500 ML & gm & 500 gm
1 Lt.
5. Recommended 40 -50 ML per acre 175 - 200 gm per Different dosage
dosage acre
6. Crops Cotton & Paddy Only sugarcane Recommended for use
on totally different
crops
7. Target Pests Cotton-Aphids, White grub Recommended for use
Jassids, White Fly & on totally different
Thrips pests
Paddy-BPH, GLH
8. Application Foliar spray on Soil drenching at the Application
methodology standing crop time of planting of methodology totally
sets different
9. Application time Based on ETL- AT the time of Totally different time
approx. 60 DAS planting of sets. of application
10. Price -
MRP Rs.1400/- Per Lt Rs.11100/- Per Kg Parijat price is
times costlier
Wholesale Rs.850/- Per Lt (100 Rs.7350/- Per Kg
ML pack) (100 gm pack)
and the following photograph showing the packaging of the two
products:
(iii) that while the registration of „VICTOR 80‟, since 6th October,
2010, is as a word mark, the plaintiff applied for registration for label
marks as under:
(iv) that the claim of the plaintiff for injunction is merely on the
ground of prior use since the year 2002; else, the plaintiff has not
sought revocation of the registration in favour of the defendant;
(v) that the plaintiff, though knew of the mark of the defendant,
from the examination report since the year 2012 as aforesaid, but
falsely claimed knowledge in November, 2015 and is disentitled from
injunction on that ground alone;
(vi) that a large number of insecticides under the name „VICTOR‟
are available in the market and reference was made to (a) „VICTOR‟
Supplement of Mohit Agro Industries, (b) „VICTOR‟ Verticillium of
Peak Chemical Industries Limited, (c) „VICTOR‟ for White Fly and
jassids of Tulsi Agro Industries, (d) „VICTOR‟ Supplement for
ballworm Complexes of Nangil Organics, and (e) „VICTOR‟ Organic
Pesticides of Ram Shree Chemicals;
(vii) that the letters filed by the plaintiff at pages 230 to 236 of Part
III file of actual confusion are self-serving;
(viii) that what has been held by the Supreme Court in Cadila Health
Care Ltd. supra qua medicines does not apply to pesticides;
(ix) that while the product of the defendant is pest specific, the
product of the plaintiff is a general insecticide;
(x) that the source of the product of the defendant under mark
„VICTOR 80‟ is prominently displayed on the packaging;
(xi) that the defendant has applied for rectification of the registration
of the mark „VICTOR GOLD‟ in favour of the plaintiff; and,
(xii) that the plaintiff, if takes the stand that its response to the
examination report of the Registrar of Trademarks was mistaken,
ought to first have the registration obtained of the mark „VICTOR
GOLD‟ on the basis thereof cancelled.
12. The counsel for the plaintiff, in rejoinder argued:
(a) that all the tests of passing off are satisfied; both the products
are insecticides and both have „VICTOR‟ as part of their name;
(b) that the defendant is admittedly a junior user and started selling
only in October, 2015 and immediately whereafter grievance was
made by the plaintiff;
(c) that the first invoice filed by the defendant before this Court is
dated 31st October, 2015 and the cease and desist notice was issued on
30th November, 2015;
(d) that even though the product of the defendant is a pesticide but
will be identified as emanating from the plaintiff;
(e) that the argument, of third party use, does not disentitle the
plaintiff from injunction;
(f) that the other marks of „VICTOR‟ cited are with respect to
different products and the plaintiff has no grievance with respect
thereto; and,
(g) that it is rather the defendant who has indulged in falsity in
pleading user since the year 2010 when user is shown in documents
from 31st October, 2015.
13. The counsel for the defendant also handed over written submissions in
which reference is made to:
(I) Alkem Laboratories Ltd. Vs. Mega International (P) Ltd.
(2007) ILR 1 Delhi 811 and London Rubber Co. Ltd. Vs. Durex
Products AIR 1963 SC 1882 on the aspect of honest and concurrent
user.
(II) Seemax Construction (P) Ltd. Vs. State Bank of India AIR
1992 Delhi 197, Wheels India Vs. Nirmal Singh 2010 SCC OnLine
Del 2852, S.P. Chengalvaraya Naidu Vs. Jagannath (1994) 1 SCC 1
and Oswal Fats and Oils Limited Vs. Additional Commissioner
(Administration), Bareilly Division, Bareilly (2010) 4 SCC 728, on
the aspect of the plaintiff having approached the Court with unclean
hands by representing knowledge of the mark of the defendant in
October, 2015, when the plaintiff had knowledge in the year 2012
itself from the examiner‟s report.
(III) S.K. Sachdeva Vs. Shri Educare Limited (2016) 65 PTC 64
(Del), where injunction was vacated on the basis of statement made in
response to the examination report.
(IV) Living Media India Ltd. Vs. Alpha Dealcom Pvt. Ltd. 208
(2014) DLT 145, Shri Janu Laxman Kumbhar Vs. Shri Pandurang
Laxman Kumbhar 2001 (3) BOMLR 678, S. Malla Reddy Vs. Future
Builders Co-operative Housing Society (2013) 9 SCC 349 and Ram
Niranjan Kajaria Vs. Sheo Prakash Kajaria (2015) 10 SCC 203, on
the proposition that admissions once made cannot be withdrawn.
(V) Gulam Mohammed Vs. Hari Chand 1978 Cri LJ 299, to
contend that the letters of confusion of the distributors of the plaintiff
are doctored and cannot be relied upon.
(VI) Aviat Chemicals Pvt. Ltd. Vs. Intas Pharmaceuticals Ltd. 2001
(21) PTC 601 (Del), White Horse Distillers Limited Vs. Upper Doab
Sugar Mills Limited 23 PTC 238, East African (I) Remedies Pvt. Ltd.
Vs. Wallace Pharmaceuticals Ltd. 2003 (27) PTC 18 (Del) and
Kirorimal Kashiram Mkg. and Agencies Pvt. Ltd. Vs. Shree Sita
Chawal Udyog 2008 (37) PTC 466 (Del), on the aspect of deception
and confusion.
(VII) BDA Private Ltd. VS. Paul P. John (2008) 152 DLT 405,
Allied Blenders Distillers P. Ltd. Vs. Paul P. John 2008 (38) PTC
568 (Del) and Power Control Appliances Vs. Sumeet Machines Pvt.
Ltd. (1994) 2 SCC 448, on delay and acquiescence.
14. I have considered the rival contentions and answer both the Issues (I)
& (II) in favour of the plaintiff and against the defendant, for the following
reasons:
(A) The senior counsel for the defendant, in response to a pointed
query of this Court during the hearing, stated that the defendant was
not disputing the user by the plaintiff of the mark „VICTOR‟,
„VICTOR GOLD‟, „VICTOR PLUS‟ and „VICTOR SUPER‟ since
the year 2002.
(B) The defendant claims user since 2010 and as per its own
admission, is the junior user vis.-a-vis. the plaintiff.
(C) The plaintiff however controverts use by the defendant of the
mark „VICTOR 80‟ since the year 2010.
(D) The defendant, though had opportunity to produce documents to
show use since 2010, has filed documents only with effect from 31 st
October, 2015.
(E) Considering the nature of the product, it is inconceivable that
the defendant, if was manufacturing and selling goods under the mark
„VICTOR 80‟ since the year 2010, would not have documents of date
prior to 31st October, 2015.
(F) The written statement of the defendant was filed on 10 th
November, 2016 and the defendant, if had any documents of
manufacture and sale of goods under the mark „VICTOR 80‟ prior to
31st October, 2015, there is no reason for the defendant not producing
the same. Under various statutory laws, documents are required to be
preserved at least for 3 to 7 years and documents, if any from 2010
should have been available with the defendant.
(G) The only inference is that the plea of the defendant of use of the
mark „VICTOR 80‟ since 2010 is false and has been taken only to
defeat the claim of the plaintiff on the ground of delay, waiver and
acquiescence.
(H) Though I have in Sun Pharmaceuticals Industries Ltd. Vs.
Cipla Ltd. 2009 (39) PTC 347 (Del) observed that a trade mark, being
an intellectual property, there is no reason why, to seek protection with
respect thereto, use thereof must be shown but alas the law till date
remains that squatting on trade mark is not permissible. Thus, even a
registered trade mark, if not used, does not qualify as a trade mark.
(I) Once, it is concluded that the defendant has commenced use of
the mark only with effect from 31st October, 2015, the plea of the
defendant of the plaintiff being not entitled to the relief on account of
delay, waiver and acquiescence disappears.
(J) Mere knowledge, even if any of the plaintiff from the
examination report of the Registrar of Trade Marks, of registration of
the mark „VICTOR 80‟ of the defendant in the same class, without the
defendant using the said mark, did not require the plaintiff to rush to
this Court. The plaintiff is required to approach the Court, when has
cause of action or feels the hurt, by the customers being misled into
buying goods of defendant thinking them to be of plaintiff.
(K) Issue No.(II) thus is decided holding that since the defendant
has commenced use of the mark in October, 2015 only, there is no
delay on the part of the plaintiff in approaching this Court to restrain
the defendant from using the mark.
(L) That brings me to the crux of the defence of the defendant i.e. of
the plaintiff, by its stand before the Registrar of Trademarks, being
estopped from claiming the relief.
(M) A perusal of the documents filed by the plaintiff itself at pages
75 to 82 of Part III file shows:
(i) that the Trademark Registry, vide its letter dated 10th
April, 2012 to the advocates for the plaintiff in response to the
application of the plaintiff for registration of „VICTOR GOLD‟
label stated as under:
"The above mentioned application has been
examined under the provisions of Trade Marks Act,
1999 and Trade Mark Rules, 2002 and the trade
mark applied for is open to objection under the
following sections :
1. The Trade Mark application is open to
objection on relative grounds of refusal under
Section 11 of the Act because the same/similar
trade mark(s) is/are already on record of the
register for the same or similar goods/services.
The detail of same/similar trade marks is enclosed
herewith.
Save as provided in Sec. 12, a trade mark
shall not be registered if, because of-its identity
with an earlier trade mark and similarity of goods
or services covered by; the trade mark; or its
similarity to an earlier trade mark and the identity
or similarity of the goods or services covered by
the trade mark, A trade mark which-is identical
with or similar to an earlier trade mark.
Hence, the above application is liable to be
refused. Accordingly, you are requested to submit
your response/submissions, if any, along-with
supporting documents, with in One Month from the
date of receipt of this Examination Report or you
may apply for a hearing.
Please Note that if no reply is received or a
request for a hearing is applied for within the
above mentioned stipulated time, the said
application shall be treated to have been
abandoned for lack of prosecution under Section
132 of the Trade Marks Act, 1999 and there after
the status of application in the computer database
shall reflect the factual position";
(ii) the aforesaid letter was accompanied with a list of (a)
registered mark „VICTOR‟ for pharmaceutical, medicinal and
Ayurvedic preparations" of Vinodchandra Motilal Thakkar as
Karta of his H.U.F.; (b) registered mark „VICTOR‟ for
mosquito coils of B.B.F. Home Care Products Limited; (c)
registered mark „VICTOR‟ for pharmaceuticals formulations of
Tuljaram M. Chandak; (d) opposed mark „VICTOR (LABEL)‟
for Sat Isabgol of Priyanka Ramchandani; (e) objected mark
„VICTOR WITH LABEL‟ for nutritional products of Dr.
Shahnawaz; and, (f) advertised before acceptance mark
„VICTOR 80‟ of the defendant for pesticides;
(iii) the advocate for the plaintiff, in reply dated 30th July,
2012 to the letter dated 10th April, 2012 supra, stated as under:
"Re: Application for registration of the trademark
„VICTOR GOLD‟ under no. 2097478 in class 05 in
the name of Insecticides (India) Limited.
Dear Sir,
We are in receipt with the Examination report
sated 14th June, 2012 with an instruction to file
reply to the same at [email protected]
From a perusal of the examination report we have
observed that Ld. Examiner has raised certain
preliminary objections against the registration of
the captioned application.
Objections and our reply for overcoming the same
are as follows:
Objection 1: The trademark is deceptively similar
with the cited marks:
The specifications of the goods under the cited
marks are entirely different set of goods than the
present applicant goods and therefore no
confusion and/or deception would arise among
trade as well as consumers if the marks exist even
in same market. In support of our arguments we
rely on the judgment of Beck, Koller & company's
application 64 RPC 76, where following features
have been laid down to determine similarities of
goods & services:
a) The nature and characteristics
b) The origin of the product
c) The purpose of goods or services
d) Whether the goods or services are
usually provided from the same sources, in
the area or place during the same class or
classes of customers
e) Whether the goods or services are
usually provided by the same business or
purpose
f) Whether the goods or services are
regarded as the same by those who provide
them.
We conclude by saying, that the mark seeking
registration is inherently distinctive in the light of
the grounds stated above and fulfills all the
requisites of a full-fledged trademark. Hence, its
registration should be allowed.
In view of the above arguments you are requested
to kindly accept the instant mark and advertise the
same in the Trade Marks Journal and allow the
application to proceed for registration or else
grant us a hearing.
In any case the application should not go
abandoned as applicant has all desire to prosecute
the instant matter."
(iv) that similarly, the Trademark Registry vide its letter dated
23rd January, 2013 to the advocates for the plaintiff with
reference to the application of the plaintiff for registration of
„VICTOR‟ stated as under:
"Gentlemen/Madam,
"The above mentioned application has been
examined under the provisions of Trade Marks Act,
1999 and Trade Mark Rules, 2002 and the trade
mark applied for is open to objection under the
following sections :
1. The Trade Mark application is open to
objection on relative grounds of refusal under
Section 11 of the Act because the same/similar
trade mark(s) is/are already on record of the
register for the same or similar goods/services.
The detail of same/similar trade marks is enclosed
herewith.
Save as provided in Sec. 12, a trade mark
shall not be registered if, because of-its identity
with an earlier trade mark and similarity of goods
or services covered by; the trade mark; orits
similarity to an earlier trade mark and the identity
or similarity of the goods or services covered by
the trade mark,
Hence, the above application is liable to be
refused. Accordingly, you are requested to submit
your response/submissions, if any, along-with
supporting documents, with in One Month from the
date of receipt of this Examination Report or you
may apply for a hearing.
Please Note that if no reply is received or a
request for a hearing is applied for within the
above mentioned stipulated time, the said
application shall be treated to have been
abandoned for lack of prosecution under Section
132 of the Trade Marks Act, 1999 and there after
the status of application in the computer database
shall reflect the factual position"
(v) that the aforesaid letter dated 23rd January, 2013 was
accompanied with a list of (a) registered mark „VICTOR‟ for
mosquito coils of B.B.F. Home Care Products Limited; (b)
registered mark „VICTOR‟ for Mosquito Coils for sale in India
and for Exports of BBF Home Care Products Ltd.; (c) opposed
„VICTOR PERFUMED MOSQUITO COIL (DEVICE)‟ of
C.M. Umapathe; (d) registered mark „VICTOR 80‟ for
pesticides of the defendant; (e) objected mark „VICTOR
GOLD‟ for insecticides, weedicides, herbicides, fungicides and
preparations for destroying vermin of the plaintiff; and, (f)
marked for examination „VICTOR (DEVICE)‟ for insecticides,
weedicides, herbicides, fungicides and preparations for
destroying vermin of the plaintiff;
(vi) that the advocate for the plaintiff, in reply dated 3rd
March, 2015 to the aforesaid letter dated 23rd January, 2013,
stated as under:
"Re: Trademark VICTOR
under no.2289702 in Class 5
Dear Sir,
Please refer to the above and examination report
under no. 992360 dated 28th November, 2014,
which was received by us on 3rd January, 2015.
As regards objection raised under Para 1, we
submit that goods in relation the mark subject
matter for registration is altogether different from
the goods in relation to the trademark cited in the
examination search report. We further submit that
trademark cited under no.2097478 belonging to
the applicant thus mark subject matter for
registration comes in no conflict and suited for
registration.
In view of the above facts, since no further
compliance is required from our side, you are
requested to please allow the application to
proceed for registration and advertise the same in
trademark journal or else grant us hearing at New
Delhi Office."
(N) The question which arises is, whether on account of the
plaintiff, a) in the letter dated 30th July, 2012 having stated that "the
specifications of the goods under the cited marks are entirely different
set of goods than the present applicant goods and therefore no
confusion and/or deception would arise among trade as well as
consumers if the marks exist even in same market" and that "the mark
seeking registration is inherently distinctive in the light of the grounds
stated above"; and, b) in the letter dated 3rd March, 2015 having stated
that "goods in relation the mark subject matter for registration is
altogether different from the goods in relation to the trademark cited
in the examination search report" and "comes in no conflict and suited
for registration", is estopped from suing the defendant for injunction
against passing off;
(O) Merit is found in the contention of the counsel for the plaintiff,
that what the plaintiff has admitted in the aforesaid communications
is, that the goods of the plaintiff and the goods of the defendant are
different and not that the mark of the plaintiff and the marks cited by
the Trademark Registry were distinct. The question which arises is,
whether the Court, even if finds the goods of the plaintiff and the
defendant to be not different but same / similar, can bind the plaintiff
to its statement of the goods being not the same. I have wondered,
whether not same amounts to binding a party to the statement of it
being day time when it is undisputably night time.
(P) „Pesticides‟ is defined as a substance used for destroying insect
or other organism harmful to cultivate plants or to animals.
„Insecticides‟ is defined as chemical substance used for killing insects
specially those that breed. „Weedicides‟ is a chemical weedkiller. It
would thus be seen that the goods of the defendant under the mark
„VICTOR 80‟ are the same as the goods of the plaintiff under various
variants of the trade mark „VICTOR‟. The IVth Schedule to the Trade
Mark Rules, while classifying goods, also places the said goods in the
same Class 5.
(Q) It was thus clearly an error or an act of overlooking, by the
advocate for the plaintiff, in stating that the goods under the cited
mark of the defendant and the goods of the plaintiff under the mark of
which registration was sought, were different. Neither the marks of
which registration was sought nor the cited mark of the defendant
stated whether, it is with respect to liquid substance or powder form
substance. The said difference between the two is thus immaterial. It
cannot be lost sight of, that the Trade Mark Registry in its letters dated
10th April, 2012 and 23rd January, 2013 supra had cited 6/7 marks and
of which the mark of the defendant was one. The Advocate for the
plaintiff appears to have overlooked the mark of the defendant.
(R) In my opinion, the plaintiff cannot be so bound and estopped.
The applications of the plaintiff were in Class 05 "in respect of
insecticides, weedicides, herbicides, fungicides and preparations for
destroying vermin included in Class 05" and the cited mark „VICTOR
80‟ of the defendant was mentioned as for "pesticides included in
Class 05";
(S) Though the claim of the plaintiff for injunction in the present
suit is in exercise of common law right against passing off and not in
exercise of any statutory right but the representation of the plaintiff to
the Trade Mark Registry, on account of which the plaintiff is sought to
be estopped, was under the statutory scheme of the Trade Marks Act,
1999 and the Rules framed thereunder. What the Advocate for the
plaintiff stated in the letters dated 30th July, 2012 and 3rd March, 2015
supra, in view of the aforesaid, was clearly contrary to the statute i.e.
the classification of goods in Schedule IV to the Rules supra.
Supreme Court, in National Insurance Co. Ltd. Vs. Swaran Singh
(2004) 3 SCC 297, held that it is now a well settled principle of law
that Rules validly framed become part of the Statute. Once it is so, I
have wondered, whether not the representation of the Advocate for the
plaintiff, in the letters dated 30th July, 2012 and 3rd March, 2015 supra,
even if binds the plaintiff, is contrary to Statute and if so, whether the
plea of estoppel can arise therefrom. It is equally well settled (see
A.C. Jose Vs. Sivan Pillai (1984) 2 SCC 656) that there is no estoppel
against Statute. In Elson Machines Pvt. Ltd. Vs. Collector of Central
Excise 1989 Supp. (1) SCC 671 and Plasmac Machine
Manufacturing Co. Pvt. Ltd. Vs. Collector of Central Excise,
Bombay 1991 Supp. (1) SCC 57, the Department of Excise was held
to be not estopped on account of its representation of a particular class
of goods falling in one tariff entry when under the Statute it was
otherwise. Thus, the representation of the plaintiff, on the basis
whereof the plea of estoppel is raised by the defendant, being contrary
to Statute, does not give rise in law to the plea of estoppel.
(T) As far as the argument of the senior counsel for the defendant,
of the plaintiff being bound by its admission is concerned, admission,
per Section 17 of the Indian Evidence Act, 1872 is as to any fact in
issue or relevant fact. The question, whether the goods of the plaintiff
and the defendant are different, as pleaded by the Advocate for the
defendant or the same, as aforesaid, under the Statute and otherwise is
a question of law and with respect whereto admission cannot be made.
An incorrect admission of law does not bind anyone. A Single Judge
of this Court in Samsung Electronics Company Limited Vs. Kapil
Wadhwa 2012 SCC OnLine Delhi 1004 held that there can be no
admission on a question of law. Though the Division Bench on
appeal, in Kapil Wadhwa Vs. Samsung Electronics Co. Ltd. (2012)
194 DLT 23 set aside the said judgment but held the said finding to be
a correct exposition of law. As far back as in Juttendro Mohun
Tagore Vs. Ganendro Mohun Tagore (1872) LR Sup. IA 47, Privy
Council held that a plaintiff is not bound by an admission of a point of
law nor precluded from asserting the contrary in order to obtain the
relief to which, upon a true construction of law, he may appear to be
entitled. Mention may also be made of Societe Belge De Banque S.A.
Vs. Girdhari Lal Chaudhary 51 L.W. 713, where the Privy Council
held that an admission of the Advocate, of there being a concluded
agreement was an admission of law, which cannot be binding.
Supreme Court also, in Banarsi Das Vs. Kanshi Ram AIR 1963 SC
1165 held that dissolution of partnership was a matter of law and there
could be no binding admission of the same, and in Union of India Vs.
K.S. Subramanian 1989 Supp. (1) SCC 331 held that an admission of
applicability of the Rules which in law did not apply, could not bind a
person.
(U) Thus, neither the principle of admission nor the principle of
estoppel deprive the plaintiff from seeking the relief, if were to be
found to be entitled thereto.
(V) There is another aspect. The representation made in the letters
dated 30th July, 2012 and 3rd March, 2015 supra was for the purposes
of obtaining registration of the trade mark and can be invoked against
the plaintiff only vis.-a-vis. the said registration and not to deprive the
plaintiff from suing for passing off.
(W) Once, this Court finds the mark of the plaintiff and the mark of
the defendant to be in use with reference to the same goods/products
and/or with reference to competing goods/products, the next question
is, whether the test of passing off is satisfied or whether the
differences pointed out by the senior counsel for the defendant
distinguish the two so as to eliminate the injury to the plaintiff from
passing off.
(X) Though undoubtedly, there are substantial differences in the
packaging of the two products and the packaging of the defendant is
also found to show the defendant as the source of the goods with the
impugned mark, but the definition of trade mark in Section 2(zb) of
the Trade Marks Act and which defines a „trade mark‟ in an action of
passing off also, is, a mark capable of distinguishing the goods or
services of one person from those of others. The trade mark is thus
something different from the name of the person manufacturing or
selling the same. Section 2(1)(zb)(ii) of the Trade Mark Act inter alia
defines a „trade mark‟ as meaning a mark capable of distinguishing
the goods of one person from those of others for the purpose of
indicating or so to indicate a connection in the course of trade between
the goods and some person having the right to use the mark, whether
with or without any indication of the identity of that person. It is thus
clear that mere disclosure of the identity of the defendant along with
the use by the defendant of the impugned mark would be irrelevant.
Else, the Legislature in Section 2(1)(zb) of the Act would not have
used the words "...whether with or without any indication of the
identity of that person...". The argument of the senior counsel for the
defendant of no case of passing off being made out for the reason of
the word „PARIJAT‟ boldly written in the margin on the packaging of
the defendant is on the premise of the consumer of the goods of the
plaintiff under the mark „VICTOR‟ knowing the plaintiff as the
originator of the said goods. However, the same, as aforesaid, would
defeat the very purpose of a trade mark. A trade mark is a mark
which de hors the name of the manufacturer/seller, identifies the
goods. It is well-nigh possible that a consumer of the goods of the
plaintiff under the mark „VICTOR‟ is likely to identify the said goods
only by „VICTOR‟ and not the same to originate from the plaintiff
and else even if the word „PARIJAT‟ is boldly written, the said
consumer, on seeing the mark „VICTOR 80‟ is likely to purchase the
said goods knowing them to be originating from the same source,
even if it be „PARIJAT‟, from which the other goods under the mark
„VICTOR‟ which he has consumed in the past, have originated.
(Y) The plaintiff, as aforesaid, has established having used the mark
„VICTOR‟ as a suffix for selling different kinds of pesticides. Thus,
the consumers of the goods of the plaintiff, when come across
„VICTOR 80‟, are likely to associate the said goods also to be
originating from the same source from which „VICTOR‟, „VICTOR
GOLD‟, „VICTOR PLUS‟ and „VICTOR SUPER‟ are originating;
(Z) Considering the nature of the product, i.e. pesticides, which can
be in different strengths and in different forms viz. powder, granular,
liquid for spraying or for treating the soil etc., goods under the same
mark in different strength and for different specific requirements are
available in the market and for this reason also, „VICTOR 80‟ is likely
to be confused with „VICTOR‟, „VICTOR GOLD‟, „VICTOR PLUS‟
and „VICTOR SUPER‟.
(ZA) The Division Bench of this Court in Shree Nath Heritage
Liquor Pvt. Ltd. Vs. Allied Blender & Distillers Pvt. Ltd. 221 (2015)
DLT 359, finding the marks to be deceptively similar, held that the
impact of different trade dress was highly unlikely to rule out
consumer confusion between two products, specially if the consumers
expect the manufacturers, in that case of alcoholic beverages, to churn
out variants.
(ZB) I thus answer Issue No.(I) also in favour of the plaintiff and
against the defendant.
(ZC) As far as the argument of the senior counsel for the defendant,
of the adoption by the defendant of the mark „VICTOR‟ being honest
and bona fide is concerned, though the said question can normally be
not decided without examination and cross-examination of witnesses
and which the counsels have consented to be not subjected to, it can
safely be said that the defendant being in the same trade as the
plaintiff, is deemed to be aware of the admitted prior use by the
plaintiff of the mark „VICTOR‟ and for this reason the adoption
cannot be said to be honest or bona fide. Reference in this regard can
be made to Info Edge (India) Pvt. Ltd. Vs. Shailesh Gupta ILR
(2002) I Del 220 and Dr. Reddy's Laboratories Ltd. Vs. Reddy
Pharmaceuticals Limited (2004) 113 DLT 363.
(ZD) Even otherwise, it has been held in Laxmikant V. Patel Vs.
Chetanbhai Shah (2002) 3 SCC 65, S. Syed Mohindeen Vs. P.
Sulochana Bai (2016) 2 SCC 683 and Century Traders Vs. Roshan
Lal Duggal & Co. ILR (1997) II Delhi 710, that howsoever honest
and bona fide the adoption may be, once it is found that the two marks
are similar/deceptively similar and the plaintiff is the prior user,
protection to the plaintiff has to follow and the defendant, merely for
the reason of honest and bona fide adoption of the mark which is
similar/deceptively similar to the mark of the plaintiff, cannot be
permitted to continue using the same.
(ZE) As far as the argument of the senior counsel for the defendant
on the basis of other products under the mark „VICTOR‟ is concerned,
while some of the products are entirely different from that which the
plaintiff is selling under the subject mark, others indeed are found to
be in use for the same goods. However, the defendant has not pleaded
the volume of sales under the said mark or the extent of market of the
said mark. It has been held in Pankaj Goel Vs. Dabur India Ltd.
2009 (38) PTC 49 (Del) (DB), Dr. Reddy's Laboratories Ltd. supra,
Express Bottlers Services Private Ltd. Vs. Pepsico Inc. 1989 (7) PTC
14 (Cal) and H&M Hennes & Mauritz AB Vs. HM Megabrands Pvt.
Ltd. 2018 SCC OnLine Del 9369 that the plaintiff is not expected to,
instead of carrying on its business, carry on filing suits to restrain
others from using the marks howsoever insignificant the use may be
and that third party user does not disentitle the plaintiff, if otherwise
found entitled to the relief.
15. Resultantly, a decree is passed in favour of the plaintiff and against the
defendant, of permanent injunction restraining the defendant from using the
mark „VICTOR 80‟ or any other mark similar or deceptively similar to the
plaintiff‟s mark „VICTOR‟. However, the defendant is granted time till 30 th
September, 2018 to effect the change and the order of permanent injunction
will thus come into operation with effect from 1st October, 2018.
16. The counsel for the plaintiff having consented to disposal of the suit
on the basis of oral arguments, the question of the plaintiff being entitled to
any other relief does not arise.
17. In the facts and circumstances of the case, no costs.
18. Decree sheet be drawn up.
RAJIV SAHAI ENDLAW, J.
JULY 09, 2018
„bs‟
