Delhi High Court
Dhani Aggarwal vs Mahesh Yadav & Ors on 22 August, 2022
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 03.08.2022
Date of decision: 22.08.2022
+ FAO-IPD 23/2021 & CM 2/2022, 4/2022, 47678-79/2019
DHANI AGGARWAL ..... Appellant
Through: Mr.S.K. Bansal, Mr.Somnath De
& Mr.Ajay Amitabh Suman, Advs.
versus
MAHESH YADAV & ORS ..... Respondents
Through: Mr.Chander Lall, Sr. Adv.with
Mr.Lalit Gupta, Mr.Ankit
Jain,Mr.Siddharth Arora,
Mr.Priyansh Jain, Ms.Ananya
Chugh, Advs.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
NAVIN CHAWLA, J.
1. This appeal has been filed by the appellant (the plaintiff in the suit)
challenging the order dated 31.08.2019 passed by the learned Additional
District Judge (Central)-10, Tis Hazari Courts, Delhi (in short, 'the ADJ')
in Suit bearing TM No. 97 of 2019 (157 of 2019) titled Ms. Dhani
Aggarwal v. Mahesh Yadav & Ors., whereby the learned ADJ has been
pleased to dispose of the application of the appellant filed under Order
XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil
Procedure, 1908 (in short, the 'CPC') as also the application of the
respondents under Order XXXIX Rule 4 read with Section 151 of the
CPC, holding that prima facie the word per se, that is, 'RAMU' (of the
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appellant) and 'RAMAA', 'RAMAA MUNAKKA' label (of the
respondents) may not have phonetic similarity but the overall get
up/label/packaging of the appellant has been copied by the respondents
and the respondents have tried to come close to the appellant; the
appellant being the prior user of the mark/label and an established brand,
was entitled to the protection of its label. The learned ADJ has held that
the defendants in the suit/respondents herein would be entitled to use the
trade mark 'RTC RAMAA', but with a label and colour combination
which they have adopted for their inner packaging. The respondents have
been restrained from use of the outer trade dress/label/colour combination
as is being used by the appellant on its products.
2. The appellant is aggrieved of the vacation of the temporary
injunction on the respondents from using its mark 'RAMMA' and
'RAMMA MUNAKKA'.
3. On the other hand, the respondents have filed cross-objections,
C.M. NO. 3-2022, praying that even the limited temporary injunction has
been wrongly granted and should be vacated by this Court.
SUBMISSIONS ON BEHALF OF THE APPELLANT
4. The learned counsel for the appellant urges that the two marks, that
is 'RAMU' (of the appellant) and 'RAMAA' (of the respondents), are
phonetically similar. He submits that the appellant is admittedly the
proprietor and the prior user of the mark, having adopted the same
honestly and in a bona fide manner in the year 1995, through her
predecessor, the Late Shri Ramavtar Aggarwal. The appellant is also the
registered proprietor of the said mark in various forms and for various
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goods under Class 29. The appellant also has registrations in copyright
for artistic works involved in the said trade mark/label/trade-dress, under
the provisions of the Copyright Act, 1957. Referring to the plaint filed
before the learned ADJ, he submits that the appellant had sales of
Rs.33,22,23,091/- (Rupees Thirty-Three Crore Twenty-Two Lakh
Twenty-Three Thousand Ninety-One only) in the financial year 2017-18
alone. He submits that the respondents have given no explanation for
adopting a deceptively-similar mark for identical goods as that of the
appellant.
5. The learned counsel for the appellant further submits that the
appellant became aware of the existence of the respondents/defendants in
the suit only in the second week of February 2019. On further inquiry, it
came to the knowledge of the appellant that the respondents have
obtained registration of its mark on a 'proposed to be used' basis vide
application no. 3772367 under Class 29, filed on 07.03.2018. The
appellant has also filed an application seeking rectification of the said
mark and the said proceedings are pending. He submits that therefore, not
only did the appellant have a good prima facie case in its favour but also
had the balance of convenience in its favour and against the respondents,
as the respondents have adopted the deceptively-similar mark just prior to
the filing of the suit.
6. He submits that the learned ADJ has made an artificial distinction
between the outer packaging and the inner packaging adopted by the
respondents. He submits that the trade marks 'RAMU' and 'RAMAA',
which form a pre-dominant part of the packaging, being deceptively
similar, the other parts of the packaging cannot be sufficient to
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distinguish the two, or to hold that there will be no case of deception
being caused.
7. Placing reliance on the judgment of the Supreme Court in
Laxmikant V Patel v. Chetanbhat Shah & Anr., (2002) 3 SCC 65, he
submits that where there is case of deliberate and intentional
misrepresentation, it would amount to a fraud and the plaintiff does not
have to prove actual damage in order to succeed in an action of passing
off- as the likelihood of such damage caused is sufficient.
8. He submits that where the registration is obtained in a label mark,
even the word mark contained therein is entitled to an equal protection.
In support, he places reliance on the judgment dated 12.05.2022 passed
by the Co-ordinate Bench of this Court in V Guard Industries Ltd. v.
Crompton Greaves Consumer Electricals Ltd., CS(COMM) 92 of 2022.
9. He further submits that the test to be adopted is that of both,-
phonetic and visual similarity, both being equally important. In support,
he places reliance on the judgment of Division Bench of this Court in
Hitachi Ltd. v. Ajay Kr. Agarwal & Ors. MANU/DE/0698/1995. He
submits that the test to be adopted is of comparison of the marks as a
whole and the same cannot be dissected.
10. Placing reliance on the judgment of this Court in Century Traders
v. Roshan Lal Duggar & Co., AIR 1978 Del 250, he submits that the
prior user trumps the registration of the trade mark. In the present case,
even though the respondents obtained the registration of its mark, by the
appellant being prior user, the appellant would have a better right and be
entitled to protection of the said mark. He submits that, in fact, in such a
case, infringement proceedings can be maintained even against a
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registered proprietor of the mark in this regard. In support, he places
reliance on the judgments of a Co-ordinate Bench of this Court in
Clinique Laboratories LLC and Another v. Gufic Limited and Another,
2009 (41) PTC 41 (Del) as also of the Division Bench of this Court in
Raj Kumar Prasad and Anr v. Abbott Healthcare (P) Ltd., 2014 SCC
OnLine Del 7708.
SUBMISSIONS ON BEHALF OF THE RESPONDENTS
11. On the other hand, the learned senior counsel for the respondents
submits that this Court, while exercising the power of an Appellate Court
against an ad-interim order, cannot substitute its view for that of the
learned Trial Court; interference will be warranted only where the view
expressed by the learned ADJ is found to be perverse or unsustainable in
law. In support of this assertion, he places reliance on the judgment of
the Supreme Court in Wander Ltd. & Anr. v. Antox India P. Ltd., 1990
Supp SCC 727.
12. He submits that in the present case, the two marks are different and
the same has been observed prima facie by the learned ADJ as well. The
packaging of the products is also different and therefore, there is
absolutely no likelihood of confusion or deception being caused by the
adoption of the mark 'RAMAA' or of the packaging by the respondents.
He submits that the source of the goods is clearly mentioned and
distinguished in the packaging adopted by the respondents. In support of
this claim, he places reliance on the judgment of the Supreme Court in
Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical
Laboratories, (1965) 1 SCR 737.
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13. The learned senior counsel for the respondents further submits that
the appellant is not using the label for which she had obtained
registration. In this regard, he submits that while the registration has
been obtained by the appellant in the following label, the label used by
the appellant is different:
Registered Label Actual Label
14. He submits that therefore, the claim of infringement of trade mark
is liable to be dismissed.
15. He submits that by the non-use of the registered mark for more
than five years, the said mark is also liable to be cancelled under Section
47 of the Trade Marks Act, 1999 (in short, 'the Act') and for the said
purpose, the respondents have also filed an application seeking
permission of the learned Trial Court to file a cancellation petition under
Section 124 of the Act. He submits that this Court, while considering the
interim relief to the appellant, can take into consideration whether the
registration of the mark in favour of the appellant itself is prima facie
liable to be cancelled. In support, he places reliance on the judgment of
the Division Bench of this Court in Marico Limited. v. Agro Tech Foods
Limited, (2010) 174 DLT 279 (DB).
16. The learned senior counsel for the respondents further submits that
the respondents, being the registered proprietor of the mark, can use the
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defence that a suit for trade mark infringement does not lie against the
said registered proprietor. In this regard, he places reliance on the
judgment of S.Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683.
17. He further submits that the word 'RAMU' is a common name in
India and therefore, no monopoly can be claimed over the same. This
itself, in his submission, is sufficient to cancel the registration of the trade
mark granted in favour of the appellant.
18. The learned senior counsel for the respondents further submits that
the appellant is primarily dealing only in almonds and therefore, cannot
claim monopoly over the mark for other goods-dry fruits.
19. He submits that the goods in question being dry fruits, the
consumers can easily distinguish the two marks and there is no likelihood
of confusion being caused.
20. The learned senior counsel for the respondents further submits that
the adoption of the mark by the respondents is also bona fide inasmuch as
the name of the grandmother of the respondents is 'Rama Devi'.
21. The learned senior counsel for the respondents finally submits that
even the impugned order insofar as it directs the respondents to use only
the inner packaging is liable to be set aside. He submits that the learned
ADJ cannot issue such a mandatory direction; at best the power of the
learned ADJ would be to restrain the use of a particular packaging.
ANALYSIS AND FINDINGS OF THE COURT
22. I have considered the submissions made by the learned counsels
for the parties.
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23. The appellant in the plaint has contended that she adopted the trade
mark/label 'RAMU' in relation to the processing and marketing of dry
fruits and other allied and related goods in January 1995, through her
predecessor, the Late Sh. Ramavtar Aggarwal (trading as M/s Sabar
International). After the death of the Late Sh. Ramavtar Aggarwal on
09.11.2013, the appellant became the sole proprietor of M/s Sabar
International. The appellant/plaintiff in the suit also gives details of the
registration of her trade marks in paragraph 5 of the plaint as under:
"5. That in order to secure the statutory right in
the said Trade Mark/label, the Plaintiff has also
applied for and obtained various Trade Marks
registration pertaining to its said Trade
Marks/Label. It is pertinent that all the Trade
Marks are valid. The details of the Plaintiff‟s
registered Trade Marks are mentioned below"
SR. NO. Trade Mark Application Class MARK Status
No. DEVICE
1. RAMU 1409501 29 Label Registered
2. RAMU MAMRA 1965879 29 Label Registered
GIRI
3. RAMU DHAANI 1980842 29 Label Registered
MAMRA GIRI
4. RAMU MAMRA 2576049 29 Label Registered
GIRI
5. RAMU 2393184 29 Label Registered
SITARBAI
6. RAMU 2604618 29 Label Registered
CALIFORNIA
ALMOND
7. RAMU MAMRA 2853180 29 Label Registered
GIRI GOLD
COIN
In order to acquire statutory rights under the
Trade Marks Act, 1999, the Plaintiff has also filed
various other trademark applications for the said
Trade marks/Labels to obtain registrations and
are likely to be registered soon."
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24. The appellant/plaintiff in the suit also has been granted copyright
registrations for the artistic work in the labels, the details whereof have
been given by the appellant/plaintiff in paragraph 9 of the plaint.
25. The appellant/plaintiff in paragraph 10 of the plaint, has also given
the sales figures from the years 2001-02 to 2017-18, with the sales in the
financial year 2017-18 being Rs.33,22,23,091/-.
26. From the above, at least prima facie, the appellant has been able to
show goodwill and reputation of her mark/label in which the word
'RAMU' is clearly the most predominant part. In V Guard Industries
Ltd. (supra), this Court has held that the word mark in a label is also
equally worth of protection.
27. On the other hand, the respondents applied for registration of its
device mark ' ' on 07.03.2018 on a 'proposed to be
used' basis. The appellant/plaintiff in the suit has asserted that she
gained knowledge of the use of the impugned mark by the respondents in
the second week of February 2019. The appellant filed the suit from
which the present appeal arises on or about 30.04.2019 and an ad-interim
ex-parte order of injunction was granted in her favour on 10.07.2019,
which has been vacated vide the impugned order.
28. From the above narration, it is apparent that while the
appellant/plaintiff in the suit is an established dealer and has a goodwill
and reputation of her mark 'RAMU' by long user, the
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respondents/defendants in the suit are relatively new entrant in the market
as on the date of filing of the suit.
29. Though the learned senior counsel for the respondents sought to
urge that the appellant is primarily dealing in almonds whereas the
respondents do not deal in almonds, at least prima facie, the same does
not appear to be correct, inasmuch as the respondents itself has produced
packaging of the appellant's goods, which are khurmani and munakka. In
any case, the goods of the appellant and the respondents are related/allied
goods sold over the time counters and through the same trade channels.
It is imperative to look at the matter from a commercial point of view,
and trade channels are an important consideration in the event competing
goods are used in the same sector.
30. This Court, in FDC Limited v. Docusuggest Healthcare, 2017
SCC OnLine Del 6381 has considered in detail the concept of
'allied/cognate goods or services', and has held as follows:
"51. ...... Allied/cognate goods or services, as
understood from the material referred to below,
are those goods/services which are not identical,
but can be said to be related or similar in nature
(See McCarthy on Trademarks and Unfair
Competition, Fourth Edition, Vol 5). The Shorter
Oxford English Dictionary on Historical
Principles Fifth Edition 2002, Vol. 1. defines the
term "Allied" as "connected by nature or
qualities; having affinity" and the term
"Cognate" as "akin in origin, nature or quality".
Reference may also be made to New Webster's
Dictionary and Thesaurus of the English
Language, 1992 which defines "Allied" as
"relating in subject or kind" and "Cognate" as
"1. adj. having a common ancestor or origin (of
languages or words) having a common source or
root (of subjects etc.) related, naturally grouped
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together.". Cognate goods/services can be
described, inter alia, as goods or services which
have a trade connection - as in glucose and
biscuits (See Corn Products Refining Co. v.
Shangrila Food Products Ltd., AIR 1960 SC 142)
or which are intended for the same class of
customers - as in television picture tubes (parts
thereof, video tapes and cassettes and television
tuners etc.) and televisions, tuners and T.V. Kits
(See Prakash Industries Ltd. v. Rajan Enterprises
(1994) 14 PTC 31), or are complementary to each
other - as in toothbrushes and toothpaste (See HM
Sariya v. Ajanta India Ltd. (2006) 33 PTC 4).
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53. Now, to determine whether the defendants'
services are allied and cognate to plaintiff's
goods, it is essential to first discuss the law on
similarity in goods/services in trademarks and its
development so far. While the Act is silent on the
factors to be considered for similarity in
goods/services, the Courts in India - relying upon
international cases and literature, have
consolidated the guiding principles and factors
found relevant in ascertaining the similarity
between goods/services. They are as follows:
1. In Assam Roofing Ltd. v. JSB Cement
LLP 2015 SCC OnLine Cal 6581, the
learned Single Judge in Para 80 observes-
"The test of similarity of goods is looked at
from a business and commercial point of
view. The nature and composition of the
goods, the respective uses of the articles
and the trade channels through which they
are brought and sold all go into
consideration in this context". (emphasis
supplied)
2. In Kerly's Law of Trade Marks and Trade
Names, 15 Edition 2011, the learned Author
in Para 9-073 has stated as under : -
"As para.23 of the decision in Canon v.
MQM (1999) R.P.C. 117 makes clear, all
factors relating to the goods or services
themselves must be taken into account.
These include, inter alia, their nature,
their intended purpose, their method of use
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and whether they are in competition with
each other or are complementary. It is
clear that goods in different classes may
nevertheless be considered similar, and
likewise that goods or services within the
same class may be found to not be similar."
(emphasis supplied)
3. In Para 9-075, the Learned Author has
mentioned some illustrations on similar
goods or services including under Para 9-
078 ""Services offered by beauty salons;
solarium services" similar to "business
assistance with beauty preparations, sales"
and "beauty preparations, perfumery,
cosmetics dietetic substances"". The said
illustration sources from the case of Beauty
Shop Application v. Opposition of Evora BV
[1999] E.T.M.R. 20, wherein the Office for
Harmonization in the Internal Market
(Trade Marks and Designs) also known as
the Opposition Division held the
defendant's services to be similar to the
plaintiff's services and goods by observing
that "the goods and services of the
conflicting marks could be offered together
and be intended for the same public."
4. In British Sugar Plc. v. James Robertson
& Sons Ltd. [1996] R.P.C. 281 at 294-297,
relied upon in Balkrishna Hatcheries v.
Nandos International Ltd. 2007 SCC
OnLine Bom 449 and Advance Magazine
Publishers, Inc. v. Just Lifestyle Pvt. Ltd.
2016 SCC OnLine Bom 8417, the court laid
down the objective test for similarity of
description of goods/services as follows:
(a) "The uses of the respective goods or
services;
(b) The users of the respective goods or
services;
(c) The physical nature of the goods or
acts of service;
(d) The trade channels through which the
goods or services reach the market;
(e) In the case of self-serve consumer
items, where in practice they are
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respectively found or likely to be found in
supermarkets and in particular whether
they are, or are likely to be, found on the
same or different shelves; and
(f) The extent to which the respective
goods and services are in competition with
each other : that inquiry may take into
account how those in trade classify goods,
for instance whether market research
companies, who of course act for industry,
put goods or services in the same or
different sectors."
5. Kerly 15 ed. while relying upon Canon
(supra), further observes in Para 9-065 that
the element of distinctive character of a
trademark and its reputation is also viewed
when determining similarity between the
goods and services and whether such
similarity is sufficient to give rise to the
likelihood of confusion."
(Emphasis supplied)
31. As held by the Supreme Court in Corn Products Refining Co. v.
Shangrila Food Products Ltd., (1960) 1 SCR 968, the test to be applied
is also of 'trade connection'. In the present case, it cannot be said that
the products of the appellant and the respondents are so distinct that they
cannot create any confusion in the mind of the common
purchasers/consumers. The common purchasers/consumers who are
aware of the mark of the appellant can easily be misguided into believing
that the appellant has now expanded its business to other dry fruits, which
may be considered as a natural trade progression for the plaintiff.
32. In this regard, reference can also be made to the judgment of this
Court in Ceat Tyres of India Ltd. v. Jai Industrial Services, 1990 SCC
OnLine Del 360 and of the High Court of Bombay in Sunder
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Parmanand Lalwani v. Caltex (India) Ltd., 1965 SCC OnLine Bom
33. Having considered the above, it now brings me to the two labels to
find out if the same can be said to be identical or deceptively-similar.
The test to determine the above is now too well-settled. In Corn
Products Refining (supra) and Parle Products (P) Ltd. v. J.P. & Co.
Mysore, AIR 1972 SC 1359, the Supreme Court held that the question
has to be approached from the point of view of a man of average
intelligence and imperfect recollection. The test is of an unwary
purchaser of average intelligence and imperfect recollection who would
go by the overall structural and phonetic similarity. Reference may also
be made to Mondelez India Foods Pvt. Ltd. and Anr. v. Neeraj Food
Products, 2022 SCC OnLine Del 2199.
34. In Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001)
5 SCC 73, the Supreme Court laid down the test for deciding the question
of marks being 'deceptively similar' as under:
"35. Broadly stated in an action for passing-off
on the basis of unregistered trade mark generally
for deciding the question of deceptive similarity
the following factors are to be considered:
a) The nature of the marks i.e. whether the
marks are word marks or label marks or
composite marks i.e. both words and label works.
b) The degree of resembleness between the
marks, phonetically similar and hence similar in
idea.
c) The nature of the goods in respect of
which they are used as trade marks.
d) The similarity in the nature, character
and performance of the goods of the rival traders.
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e) The class of purchasers who are likely to
buy the goods bearing the marks they require, on
their education and intelligence and a degree of
care they are likely to exercise in purchasing
and/or using the goods.
f) The mode of purchasing the goods or
placing orders for the goods.
g) Any other surrounding circumstances
which may be relevant in the extent of
dissimilarity between the competing marks.
36. Weightage to be given to each of the
aforesaid factors depends upon facts of each case
and the same weightage cannot be given to each
factor in every case."
35. In the matter of an application by Rysta Ld. to register a
Trade Mark, (1943) 60 RPC 87, it has been held that "the answer to the
question whether the sound of one work resembles too nearly the sound
of another so as to bring the former within the limits of section 12 of the
Trade Marks Act, 1938, must nearly always depend on first impression,
for obviously a person who is familiar with both words will neither be
deceived nor confused. It is the person who only knows the one word, and
has perhaps an imperfect recollection of it, who is likely to be deceived
or confused. Little assistance, therefore, is to be obtained from a
meticulous comparison of the two words, letter by letter and syllable by
syllable, pronounced with the clarity to be expected from a teacher of
elocution."
36. In M/s South India Beverages Pvt. Ltd. v. General Mills
Marketing Inc., (2015) 61 PTC 231 (Del.), a Division Bench of this
Court held as under:
"19. Though it bears no reiteration that while a
mark is to be considered in entirety, yet it is
permissible to accord more or less importance or
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„dominance‟ to a particular portion or element of
a mark in case of composite mark. Thus, a
particular element of a composite mark which
enjoys greater prominence vis-a-vis other
constituent elements, may be termed as a
„dominant mark‟.
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21. The view of the author makes it scintillatingly
clear, beyond pale of doubt, that the principle of
„anti dissection‟ does not impose an absolute
embargo upon the consideration of the constituent
elements of a composite mark. The said elements
may be viewed as a preliminary step on the way to
an ultimate determination of probable customer
reaction to the conflicting composites as a whole.
Thus, the principle of „anti dissection‟ and
identification of „dominant mark‟ are not
antithetical to one another and if viewed in a
holistic perspective, the said principles rather
compliment each other."
37. In Walter Bushnell Pvt. Ltd. & Ors. v. Miracle Life Sciences &
Anr., 2014 (59) PTC 339 (Del), a learned Single Judge of this Court has
held that "in order to prove the case for infringement of trade mark, the
plaintiff has to show that the essential features of the registered trade
mark which has been adopted by the defendant has been taken out from
the plaintiff‟s registration. Only the marks are to be compared by the
Court and in case the registration is granted in favour of the plaintiff, he
acquires valuable right by reason of the said registration." It was further
held that "the test of comparison of the marks side by side is not a sound
one since a purchaser will seldom have the two marks actually before
him when he makes his purchase. The eye is not an accurate recorder of
visual detail and that marks are remembered by general impression or by
some significant detail rather than by any photographic recollection of
the whole. While judging the question as to whether the defendant has
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infringed the trade mark by colourable imitation of the mark or not, the
Court has to consider the overall impression of the mark in the minds of
general public and not by merely comparing the dissimilarities in the two
marks."
38. Applying the above test to the facts of the present appeal, it must
be held that the words 'RAMU' and 'RAMAA', are the predominant
part of the two label marks; the same closely resemble each other - both
structurally as also phonetically; the class of purchasers are those who
would not pay much attention to the dissimilarities in the two labels but
go by their imperfect recollection of the marks; the goods are sold over-
the-counter and through e-commerce websites, therefore, having the
same selling point; the use of the prefix 'RTC' is also not sufficient to
distinguish the two marks or the source of the goods. The two marks,
therefore, are deceptively similar to each other.
39. The learned ADJ in his impugned order has held that there is no
visual and phonetic similarity between the trade marks 'RAMU' and
'RAMAA'. In my opinion, the learned ADJ has erred in law in reaching
the above conclusion. It has not only failed to apply the test culled out
hereinabove, but also seems to have adopted the test of comparison of the
marks side-by-side, which as observed herein above, is not the correct
test. Phonetically the two marks, that is, 'RAMU' and 'RAMAA' are
similar and would cause confusion in the mind of an unwary consumer
wanting to purchase goods like dry fruits off-the-shelf. It appears that the
test applied by the learned ADJ in the present case is not of an unwary
consumer with imperfect recollection but of a person who has an ideal
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memory and therefore, who can easily distinguish between the two
marks.
40. The learned ADJ has further been guided by the fact that the
appellant did not file any opposition against the trade mark 'RAMAA'
when it was advertised for registration in the Journal of Trade Marks.
This, in my view, cannot be of much significance as the suit has been
filed by the appellant/plaintiff in the suit immediately on coming to know
of the use of the mark by the respondents/defendants in the suit. The
advertisement of a mark of an opponent can escape one's attention and
therefore, such mark can proceed to registration. However, on coming to
know of the use of the mark, if the proprietor has taken immediate action,
it cannot be said that the proprietor has acquiesced the use of such
deceptively-similar mark by their opponent. [Ref: Midas Hygiene
Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90]. It is also well-
settled that an injunction can be granted even against a registered
proprietor of a mark. Reference in this regard may be made to the
judgment of this Court in Clinique Laboratories LLC and Another
(supra).
41. In S. Syed Mohideen (supra), which has been relied upon by the
learned senior counsel for the respondents, it has been held that the rights
of prior user are superior to that of registration and are unaffected by the
registration rights under the Act. Registration merely recognises the
rights which are pre-existing in common law and does not create any
rights and in case of conflict between the two registered proprietors, the
evaluation of the better rights in common law is essential as the common
law rights would enable the court to determine whose rights between the
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two registered proprietors are better and superior in common law which
have been recognised in the form of the registration by the Act. Applying
the said principle, the appellant being the prior adopter of the mark,
certainly has a superior right over the respondents in the said mark and is
entitled to protection of the same notwithstanding the registration
obtained by the respondents.
42. The learned ADJ has also come to the conclusion that the
respondents have used the packaging which is similar to that of the
appellant; the kind of packaging material used by the respondent is
absolute similar; the colour combination of packaging at serial nos.3,4,6
and 9 are deceptively-similar; the adoption of different label for inner and
outer packaging shows the dishonesty on the part of the respondents; and
that the overall get up/label/packaging has been copied by the
respondents, and they have attempted to come close to the appellant,
which has been in the market prior to the respondents' mark and was an
established brand. In spite of having reached the above conclusion, the
learned ADJ in the impugned order, has allowed the respondents to use
the trade mark 'RTC RAMAA' with the label and colour combination,
which they have for their inner packaging.
43. The above direction is also incorrect. The learned ADJ has also
failed to appreciate that once it is held that the adoption and user of a
mark by the respondent was not bona fide but was, in fact, intended to
deceive, injunction must follow. Reliance in this regard is placed on a
judgment of the Supreme Court in Renaissance Hotel Holdings Inc. v.
B. Vijaya Sai and Others, (2022) 5 SCC 1.
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44. In Laxmikant Patel (supra), it has been held that where a
defendant has imitated or adopted the plaintiff's distinctive trade mark or
business name, the order may be of an absolute injunction that he would
not use or carry out business under that name.
45. In the present case, the packaging, both outer and inner adopted by
the respondents, appears to be intending to merely come as close to the
appellant as possible. As held in Baker v. Master Printers Union of
New Jersey, 47 USPQ 69 at 72 (D.N.J. 1940) and quoted by the learned
Single Judge of this Court in Marico Limited v. Mr.Mukesh Kumar &
Ors., 2018 SCC OnLine Del 10823), "The most successful form of
copying is to employ enough points of similarity to confuse the public
with enough points of different to confuse the courts. Few would be
stupid enough to make exact copies of another‟s mark or symbol."
46. The packaging adopted by both the parties are reproduced
hereinbelow:
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47. Compared as a whole, the packaging of the products of the
appellant and the respondents appears deceptively-similar to each other
and the adoption thereof on part of the respondents has rightly been held
by the learned ADJ to be dishonest.
48. The submission of the learned senior counsel for the respondents
that dissimilarity of packaging by reason of variation in colours and other
features of their general get-up negates the appellant's claim of passing
off cannot be accepted. It is the overall impression of the mark and the
label which is the guiding principle and not the minute dissimilarity, as
are being pointed out by the learned senior counsel for the respondents.
The judgment in Kaviraj Pandit Durga Dutt Sharma (supra), therefore,
is not applicable to the facts of the present case.
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49. The submission of the learned senior counsel for the defendant
that no injunction can be granted in favour of the appellant as it is using a
label/mark which is different from the one that is registered and that such
registration itself is liable to be cancelled on this ground, also cannot be
accepted at this stage. When enquired as to whether the plea of non-user
was taken by the respondents in the written statement filed in the suit
which is pending before the learned ADJ, the learned senior counsel for
the respondents drew my attention to paragraph 6 of the preliminary
submissions/objections in the written statement in the suit, which reads as
under:
"6. That the Defendant Nos. 1 & 2 further
submit that the Plaintiff‟s registered trademark
with No. 1409501 is also liable to be cancelled in
as much as while the Plaintiff claims the date of
first use in respect of the same to be 01.01.1995,
however, the Plaintiff has failed to produce a
single document in support of its such plea of use
prior to the year of 2006."
50. The above averment in the written statement in the suit is very
different to the one that is being argued before this Court. As presently
there is neither an averment in the written statement in the suit by the
defendants/respondents that the registration granted in favour of the
plaintiff/appellant is liable to be cancelled for its non-user, nor does this
submission appear to have been made before the learned ADJ, the said
plea cannot be considered in the present appeal.
51. Apart from the fact that a plea of non-user of the mark has not been
taken by the respondents before the learned ADJ, the fact remains that the
appellant is not seeking a right on the stylised version of its mark
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'RAMU' but on the word per se. It is the words 'RAMU' and
'RAMAA' which are found to be phonetically similar and likely to
deceive and not their stylised versions. The claim of the appellant is not
only of infringement but also of the respondents/defendants passing off.
Therefore, an injunction cannot be refused to the appellant if a case of
passing off is made good.
52. In Veerumal Praveen Kumar v. Needle Industries (India) Ltd. &
Anr., 2001 SCC OnLine Del 892, relied upon by the learned senior
counsel for the respondents, there was no evidence of use of the mark and
the question before the court was whether injunction can be granted only
because of registration of the said mark. This was answered in the
negative. However, in the present case, the misuser alleged is at best of
the registered stylised version and not of the mark 'RAMU'. The said
judgment therefore, cannot have any application to the facts of the
present case. For the same reason, the judgment of the Division Bench of
this Court in Fedders Llyod Corporation Ltd. & Anr. v. Fedders
Corporation & Anr., 2005 (30) PTC 353 (Del), also cannot come to the
rescue of the respondents.
53. The submissions of the learned senior counsel for the respondents
that no monopoly can be claimed by the appellant in a common name like
'RAMU' and that no injunction can be granted against the use of the
word 'RAMAA', which is the name of a Hindu God, is liable to be
rejected. The word 'RAMU' has no association with the goods in
question, that is, dry fruits. It is, therefore, arbitrary as far as the goods in
question are concerned. Further, the respondents themselves having
obtained registration in the mark 'RAMAA', are estopped from
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contending that the said mark is publici juris. By seeking registration
thereof, it is the respondents who have sought to obtain monopoly over
the said mark.
54. Though the learned senior counsel for the respondents has rightly
submitted that the Appellate Court should not interfere with the exercise
of discretion of the Court of the first instance and substitute its own
discretion, however, in the facts of the present case, in my opinion, the
discretion has been wrongly exercised by the learned ADJ by ignoring
the settled principles of law. As held by the Supreme Court in
Laxmikant Patel (supra), a refusal to grant an injunction in spite of the
availability of facts, which are prima facie established by overwhelming
evidence and material available on record justifying the grant thereof,
occasions a failure of justice and such injury to the plaintiff as would not
be capable of being undone at a later stage; it, therefore, becomes
obligatory on the part of the Appellate Court to interfere.
55. In view of the above, the impugned order is set aside. The
respondents are restrained by way of an ad-interim injunction from using,
selling, soliciting, exporting, displaying, advertising or marketing their
product under the mark 'RAMAA', 'RAMAA MUNAKKA' label or
any other mark, which is deceptively-similar to the appellant's trade mark
'RAMU', during the pendency of the suit.
56. The appeal is allowed in the above terms. There shall be no order
as to costs.
57. It is made clear that any and all observations made herein above
are prima facie in nature and shall not in any manner be held to be
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binding on the learned Trial Court or influence the learned Trial Court at
the trial of the suit.
NAVIN CHAWLA, J
AUGUST 22, 2022/Arya/RN/AB/Ais.
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