Delhi High Court
Gtz India Pvt. Ltd. vs Artek Surfins Chemicals Ltd. & Anr. on 31 May, 2024
Author: Vibhu Bakhru
Bench: Vibhu Bakhru
IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on: 31.05.2024
+ FAO (COMM) 60/2024
GTZ INDIA PVT. LTD. ..... Appellant
versus
ARTEK SURFINS CHEMICALS LTD.
& ANR. ..... Respondents
Advocates who appeared in this case:
For the Appellant : Mr Samrat Nigam, Dr Sheetal Vohra,
Mr Ram Kumar and Ms Simran Dhingra,
Advocates.
For the Respondents : Ms Muskan Arora and Mr Vishal
Shrivastava, Advocates.
CORAM
HON'BLE MR JUSTICE VIBHU BAKHRU
HON'BLE MS JUSTICE TARA VITASTA GANJU
JUDGMENT
VIBHU BAKHRU, J
1. The appellant (hereafter GTZ) has filed the present appeal
impugning an order dated 23.02.2024 (hereafter the impugned order)
passed by the learned Commercial Court allowing the application filed
by the respondents (plaintiffs in the suit) under Order XXXIX Rules 1
and 2 of the Code of Civil Procedure, 1908 (hereafter the CPC) in CS
(COMM) 153/2023 captioned Artek Surfin Chemicals Ltd. & Anr. v.
GTZ India Private Limited.
2. The respondents had filed the above-captioned suit, inter alia,
seeking a permanent injunction, restraining GTZ from selling,
distributing, manufacturing, advertising, directly or indirectly dealing
in any kind of products bearing the unique combination of a particular
numeral along with particular alphabet being "786", "2048M",
"2048R", "1085M", "1085R", "511A", "511B", "511C", "511
Conditioner", "511A", "511B", "511C", "1048M" & "1048R"
(hereafter impugned alpha numerals).
3. The respondents claim that GTZ was passing off its goods by
using the impugned alpha numerals, which are unique to the products
manufactured and dealt with by the respondents. They also claim
damages quantified at ₹25,00,000/- as well as a decree for rendition of
accounts and delivery of the offending goods.
4. The respondents claim that the impugned alpha numerals were
adopted by them along with the trademarks, in respect of their various
products. And, the impugned alpha numerals are viewed by the
customers as a source identifier for their products. They claim that GTZ
has adopted the impugned alpha numerals in respect of its goods in
order to trade on their goodwill and pass off its goods as that of the
respondents. Additionally, they claim that the use of the impugned
alpha numerals infringes their registered trademarks.
5. GTZ contests the aforesaid claims. GTZ contends that the
impugned alpha numerals are used by it, in conjunction with its
trademarks and therefore, there could be no cause to apprehend any
confusion. GTZ also contends that the impugned alpha numerals are
only a part of the trademarks used by the respondents, and therefore the
respondents do not have any exclusive right to use the impugned alpha
numerals. GTZ claims that the trademarks used by the respondents are
required to be considered as a whole and respondent no.1, which is the
registered proprietor of the trademarks, has no separate right in respect
of the impugned alpha numerals, which are incorporated as a part of the
trademarks.
6. GTZ relies on the anti-dissection rule to contest the action
instituted by the respondents. Additionally, GTZ contends that no
person has a right to use any specific number and therefore, it is not
open for the respondents to appropriate exclusive use of any numerals.
THE CONTEXT
7. GTZ is a company incorporated in India. It claims that it is an
Indian arm of the US based business house GETZ Bros & Co Inc, which
started trading chemicals in the year 1936. GTZ claims that it is engaged
in the production of world class finishing solutions and sells its products
under different brands including 'ULTRABRITE' and other formative
marks.
8. GTZ also claims that it offers its products on its website
<www.gtz.com>. It claims that it has collaborated with companies like
WITCO Corporation USA, which is a world leader in speciality
chemicals, and its trademarks are well known.
9. Respondent no.1 is a company incorporated under the provisions
of the Companies Act, 1956. Respondent no.2 is a limited liability
partnership firm registered under the Limited Liability Partnership Act,
2008 and is an affiliate of respondent no.1. The respondents claim to be
a part of the Artek Group of Companies, which is engaged in the
business of manufacturing, sale and supply of various chemicals used
in the electroplating industry.
10. Respondent no.1 (Artek Surfins Chemicals Ltd.) claims to be the
proprietor of various registered trademarks. The details of said
trademarks are set out below:
"Trademark Class Registration / Date of Status
Application Application
Number
TEKNOBRITE AZ 1 5158982 04/10/2021 Registered
1085 R
1 3839690 22/05/2018 Registered
ARTEK MAGNUM
786 BRIGHTNER
(DEVICE)
TEKNOBRITE AZ 1 5158978 04/10/2021 Registered
2048 M
TEKNOBRITE AZ 1 5158980 04/10/2021 Registered
1085 M
TEKNOBRITE AZ 1 515979 4/10/2021 Registered
2048 R
TEKNOBRITE NCZ 1 5258227 13/12/2021 Registered
511 A
TEKNOBRITE NCZ 1 5258228 23/12/2021 Registered
511B
TEKNOBRITE NCZ 1 5258229 23/12/2021 Registered
511 C
TEKNOBRITE NCZ 1 5258230 23/12/2021 Registered
511 Conditioner
Millennium NCZ 511 1 5158981 04/10/2021 Pending
A
Millennium NCZ 511 1 5158983 04/10/2021 Pending
B
Millennium NCZ 511 1 5158984 04/10/2021 Pending
C
Millennium NCZ 511 1 5158985 04/10/2021 Pending
Conditioner
Teknobrite AZ 1048 - - - Prior Use
M
Teknobrite AZ 1048 - - - Prior Use"
R
11. The said trademarks are used by the respondents and other
affiliated concerns in respect of their products (chemicals used in the
electroplating industry).
12. According to the respondents, the alpha numeric portion of its
trademark (impugned alpha numerals) is used to identify the particular
product/chemical. They claim that the said portion has acquired a
secondary meaning and is recognised by its customers as identifying the
particular chemical/product of the respondents.
13. A comparative tabular statement setting out the trademarks of
both the parties, as mentioned in the suit (Artek and GTZ) is set out
below:
Plaintiff no.1's Marks Defendant's Marks Usage
MAGNUM 786 Ultrabrite 786 Nickel-
BRIGHTNER Plating
(Trademark Registered) Brightener
TEKNOBRITE AZ 2048 M ULTRABRITE 2048M Zinc Plating
(Trademark Registered) Brightener
TEKNOBRITE AZ 2048 R ULTRABRITE 2048R Zinc Plating
(Trademark Registered) Brightener
TEKNOBRITE AZ 1085 M ULTRABRITE 1085R Zinc Plating
(Trademark Registered) Brightener
TEKNOBRITE AZ 1085 R ULTRABRITE 1085M Zinc Plating
(Trademark Registered) Brightener
TEKNOBRITE AZ 1048 M ULTRABRITE 1048 M Zinc Plating
Brightener
TEKNOBRITE AZ 1048 R ULTRABRITE 1048 R Zinc Plating
Brightener
TEKNOBRITE NCZ 511 A ULTRABRITE 511 A Non Cyanide
(Trademark Registered) Alkaline Zinc
TEKNOBRITE NCZ 511 B ULTRABRITE 511 B Non Cyanide
(Trademark Registered) Alkaline Zinc
TEKNOBRITE NCZ 511 C ULTRABRITE 511 C Non Cyanide
(Trademark Registered) Alkaline Zinc
TEKNOBRITE NCZ 511 ULTRABRITE 511 Non Cyanide
CONDITIONER Conditioner Alkaline Zinc
(Trademark Registered)
Millennium NCZ 511 A ULTRABRITE 511 A Non Cyanide
(Trademark Pending) Alkaline Zinc
Millennium NCZ 511 B ULTRABRITE 511 B Non Cyanide
(Trademark Pending)
Alkaline Zinc
Millennium NCZ 511 C ULTRABRITE 511 C Non Cyanide
(Trademark Pending) Alkaline Zinc
Millennium NCZ 511 ULTRABRITE 511 Non Cyanide
Conditioner Conditioner Alkaline Zinc
(Trademark Pending)
14. In their plaint, the respondents stated that the applications filed
by respondent no.1 for registration of their trademarks - other than the
trademark 'ARTEK MAGNUM 786 BRIGHTNER (Device)', which
reflects its use from the date 01.04.1991 - inadvertently reflects that the
applications were on a "proposed to be used" basis. However, the
respondents have been using their trademarks since several years.
15. The respondents issued a cease-and-desist notice dated
02.01.2023 to GTZ claiming that the use of impugned alpha numerals
by GTZ infringes respondent no.1's trademarks.
16. GTZ responded to the said notice by a letter dated 27.01.2023. It
claimed that it had conceived and adopted the mark "GTZ
ULTRABRITE" in respect of chemicals used in industries in the year
1985. The said trade mark is also registered in Class I (Trade Mark
No.1387146). GTZ claimed that it added some numeric and alphabets
to its mark "GTZ ULTRABRITE" to identify the category and variety
of wide range of products. The said marks are the additional feature of
the prior registered mark "GTZ ULTRABRITE".
17. Since, GTZ did not desist using the impugned alpha numerals,
alongwith its trade mark, the respondents instituted the present action
[CS(COMM) No.153/2023] and also sought interim reliefs.
GTZ'S DEFENCE
18. GTZ is contesting the said action. It also contested the
respondents' application for interim relief under Order XXXIX Rules 1
and 2 of the CPC. Its defence is mainly fourfold. First, it claimed that
the impugned alpha numerals are common to trade and therefore, the
respondents cannot acquire any exclusive right in respect of the
impugned alpha numerals. GTZ relied on Section 17(2)(b) of the Trade
Marks Act, 1999 (hereafter TM Act) and on the strength of the said
section contended that where a trade mark contains any matter, which
is common to trade, the registration of the trademark would not confer
any exclusive right on the matter forming only a part of the trade mark
so registered. Second, GTZ claimed that the parties were dealing in
business to business (B2B) model and not servicing retail customers.
Therefore, there was no likelihood of customers being confused by the
use of the impugned alpha numerals. Third, GTZ submitted that the
suit was not maintainable as the respondents had clubbed multiple
causes of action by filing the single suit for fifteen different trademarks.
Fourth, GTZ claimed that the respondents were aware of its use of the
trade mark since 2018 and had approached the Court at a belated stage.
The cease-and-desist notice was issued on 02.01.2023 but GTZ had
adopted the impugned alpha numerals, in the year 2018.
19. At the initial stage, the learned Commercial Court dismissed the
respondents' application by an order dated 08.06.2023 principally on
the ground that the respondents could be compensated for their
monetary loss. The learned Commercial Court also observed that the
impugned alpha numerals appeared to be used for identification of the
product rather than as a trade mark of the respondents and thus they
might not be accepted as unique identification of their product.
20. The respondents successfully appealed the order dated
08.06.2023 before this Court [FAO(COMM) No.162/2023]. This Court
set aside the order dated 08.06.2023 by an order dated 04.08.2023 and
remanded the matter to the concerned Commercial Court for a decision
on the interim application, afresh.
21. The learned Commercial Court heard the rival contentions and,
prima facie, did not accept the defence raised by GTZ. The learned
Commercial Court rejected the defence that the respondents had
acquiesced in GTZ's use of the impugned alpha numerals or had waived
any of their rights. It was their case that they had found out about the
use of the impugned alpha numerals in the last week of December, 2022
and had taken immediate steps, thereafter. The learned Commercial
Court also did not accept that the impugned alpha numerals were
common to trade. GTZ had cited use of only one numeral (that is, 511)
used by a third party but was unable to cite any other instance of use of
any of the impugned alpha numerals by other entities involved or
associated with the trade (chemicals used by electroplating industry).
The learned Commercial Court also noted that merely because the
respondents had not initiated any action against the use of the numeral
511, it did not preclude the respondents from maintaining the action
against GTZ.
22. The learned Commercial Court accepted the contention that the
respondents were prior users of the impugned alpha numerals as part of
their trade mark notwithstanding that they had applied for registration
on a proposed to use basis. The said conclusion was based on the
invoices and other materials produced by the respondents.
23. The learned Commercial Court did not accept that the impugned
alpha numerals could not be used as trademarks. The learned
Commercial Court referred to Section 2(1)(m) of the TM Act, which
specifically provides that a mark includes numerals.
SUBMISSIONS
24. Mr. Samrat Nigam, learned counsel appearing for GTZ assailed
the impugned order on essentially two grounds. First, he claimed that
the respondents could not claim any exclusive right in respect of a part
of the trade mark, since, the impugned alpha numerals were not used as
separate trade marks but as a part of the trade mark in conjunction with
the coined word 'TECHNOBRITE". The respondents did not acquire
any exclusive right in respect of the impugned alpha numerals. He relied
on the anti-dissection rule.
25. Second, he stated that the respondents' claim that they have been
using the mark since several years is contrary to their application for
registration of their trade marks, which indicates that the applications
were made on a "proposed to use" basis and thus, the respondents claim
of use prior to 2018 was required to be rejected on this ground alone.
REASONS & CONCLUSION
26. At the outset, it is important to note that the respondents' action
is not founded on infringement of their trade mark alone, they also
allege passing off. It is the respondents' case that the impugned alpha
numerals are used to identify separate products and are used as a part of
their trade mark. The respondents claim that the customers identify
their separate products by use of the impugned alpha numerals. There
is no serious dispute that a particular alpha numeral is used to identify
a particular chemical/product. GTZ also acknowledged in its reply to
the cease and desist notice that the impugned alpha numerals are used
for identifying the products. It claimed that it had conceived and
adopted the trade mark "GTZ ULTRABRITE" in respect of chemicals
used in the electroplating industries in the year 1985. However, it had
added alpha numerals to identify the category and variety of wide range
of products. The relevant extract of the said reply is set out below:
"4. In order to acquire statutory rights as well as
common law rights, my Client applied for the
registration of the Mark "GTZ ULTRABRITE" under
Trade Mark No. 1387146 in Class-01 before the Trade
Marks Registry. The said Trade Mark is registered in
status and valid till 23/09/2025.
xxx xxx xxx
6. After getting the phenomenal success in the trade,
my Client, added some numeric and alphabets to the
Mark "GTZ ULTRABRITE" just to identify the
category and variety of its wide range of products. My
Client, has been using said Marks, like GTZ
ULTRABRITE 786, GTZ ULTRABRITE 2048M,
GTZ ULTRABRITE 2048R, GTZ ULTRABRITE
1085R, GTZ ULTRABRITE 1085M, GTZ
ULTRABRITE 511A, GTZ ULTRABRITE 511B,
GTZ ULTRABRITE 511C, GTZ ULTRABRITE
511 Conditioner, GTZ ULTRABRITE 511A, GTZ
ULTRABRITE 511B, GTZ ULTRABRITE 511C
and GTZ ULTRABRITE 511 Conditioner
continuously and extensively in course of trade since
2018. The said Marks of my Client are only the
additional feature of the prior registered Mark "GTZ
ULTRABRITE" under Trade Mark No.1387146 in
Class-01. "
27. It is apparent from the above that there is no dispute that the
impugned alpha numerals are used to identify the specific product and
its category. The alpha numerals are used to identify a particular
chemical. As an illustration, a particular alpha numeral could be used
in connection with products used for surface conditioning and another
alpha numeral is used in connection with products for acid pickling and
brightening.
28. GTZ also claimed (in its response to the cease-and-desist notice)
that the alpha numerals are distinctive to its products, as is apparent
from the following passage from its reply to the cease and desist notice:
"7. The Marks GTZ ULTRABRITE 786, GTZ
ULTRABRITE 2048M, GTZ ULTRABRITE 2048R,
GTZ ULTRABRITE 1085R, GTZ ULTRABRITE
1085M, GTZ ULTRABRITE 511A, GTZ
ULTRABRITE 511B, GTZ ULTRABRITE 511C,
GTZ ULTRABRITE 511 Conditioner, GTZ
ULTRABRITE 511A, GTZ ULTRABRITE 511B,
GTZ ULTRABRITE 511C and GTZ ULTRABRITE
511 Conditioner are solely associated with my Client
only. My Client has also incurred a considerable amount
towards sales promotions of the said Mark. Due to
continuous use and extensive sales promotions since
2018, the said Mark "GTZ ULTRABRITE" of my
Client has become distinctive."
29. It is apparent from the above, that it is common ground that the
impugned alpha numerals are source identifiers of the particular
products. Whilst, GTZ claims that its trade mark along with the relevant
alpha numerals are solely associated with its products, the respondents
claim that the relevant alpha numerals (which form a part of their trade
marks) are exclusively associated with their products.
30. It is important to note that according to GTZ, it had added alpha
numerals to its trade mark in the year 2018. However, the respondents
claim that their use of the alpha numerals precede the use by GTZ. The
respondents have produced invoices, which indicate that they have been
using the respective marks much prior to 2018. A tabular statement,
which prima facie establishes the respondents' use of their trade mark
is set out below:
"Plaintiffs Marks Defendant's Usage Since Earliest Product
Mark (Plaintiffs Invoice Dated Usage
Marks) (Plaintiffs
Marks)
MAGNUM 786 ULTRABRITE Year 2010 14-04-2010 (at Nickel-
BRIGHTNER 786 (as per the page 110 of Plating
(Trademark earliest Plaintiffs Brightener
Registered) invoice) documents)
TEKNOBRITE AZ ULTRABRITE Year 2006 04-02-2006 Zinc
2048 M (Trademark 2048 M (at page 156 of Plating
Registered) Plaintiffs Brightener
documents)
TEKNOBRITE AZ ULTRABRITE Year 2006 04-02-2006 Zinc
2048 R (Trademark 2048 R (at page 156 of Plating
Registered) Plaintiffs Brightener
documents)
TEKNOBRITE AZ ULTRABRITE Year 2000 10-12-2000 Zinc
1085 M (Trademark 1085 M (at page 224 of Plating
Registered) Plaintiffs Brightener
documents)
TEKNOBRITE AZ ULTRABRITE Year 2000 10-12-2000 Zinc
1085 R (Trademark 1085 R (at page 224 of Plating
Registered) Plaintiffs Brightener
documents)
TEKNOBRITE AZ ULTRABRITE Year 1999 11-11-1999 Zinc
1048 M 1048 M (at page 221 of Plating
Plaintiffs Brightener
documents)
TEKNOBRITE AZ ULTRABRITE Year 1999 11-11-1999 Zinc
1048 R 1048 R (at page 221 of Plating
Plaintiffs Brightener
documents)
TEKNOBRITE NCZ ULTRABRITE Non
511 A (Trademark 511 A Cyanide
Registered) Alkaline
Zinc
TEKNOBRITE NCZ ULTRABRITE Non
511 B (Trademark 511 B Cyanide
Registered) Alkaline
Zinc
TEKNOBRITE NCZ ULTRABRITE Non
511 C (Trademark 511 C Cyanide
Registered) Alkaline
Zinc
TEKNOBRITE NCZ ULTRABRITE Non
511 511 Conditioner Cyanide
CONDITIONER Alkaline
(Trademark Zinc
Registered)
Millennium NCZ ULTRABRITE Year 2009 15-09-2009 (at Non
511 A (Trademark 511 A page 324 of Cyanide
Pending) Plaintiffs Alkaline
documents) Zinc
Millennium NCZ ULTRABRITE Year 2009 15-09-2009 (at Non
511 B (Trademark 511 B page 324 of Cyanide
Pending) Plaintiffs Alkaline
documents) Zinc
Millennium NCZ ULTRABRITE Year 2009 15-09-2009 (at Non
511 C (Trademark 511 C page 324 of Cyanide
Pending) Plaintiffs Alkaline
documents) Zinc
Millennium NCZ ULTRABRITE Year 2009 17-09-2009 (at Non
511 Conditioner 511 Conditioner page 420 of Cyanide
(Trademark Plaintiffs Alkaline
Pending) documents) Zinc"
31. In view of the material produced by the respondents, prima facie,
we accept the contention that the respondents have been using the
impugned alpha numerals as part of their trade mark to identify their
products. As noted above, it is their case that their customers identify
their products by the alpha numerals and therefore, the same have
acquired a secondary meaning by the exclusive use in connection of
their products. The said contention is merited as it is also GTZ's case
that the impugned alpha numerals identify the products. Prima facie,
the respondents are prior users of the impugned alpha numerals as a part
of their trade marks.
32. It follows that the impugned alpha numerals were used in
connection with their products, prior to GTZ adopting the same for
similar goods. GTZ must set out a reasonable explanation as to why it
has adopted the very same alpha numerals in respect of similar products.
However, we find that there is no explanation as to why GTZ has done
so. Thus, prima facie, we find merit in the contention that GTZ has
adopted the impugned alpha numerals to pass off its goods as those of
the respondents as the impugned alpha numerals have been used by the
respondents continuously in respect of their products.
33. GTZ's contention that the impugned alpha numerals are common
to trade is not supported by sufficient material. GTZ has been unable
to point out any other instance where the impugned alpha numerals are
used by any other dealer, in respect of similar products.
34. It is also material to note that it is the respondents' case that it is
a common practice in the industry for manufacturers / dealers to adopt
different alpha numerals in respect of their products. Thus, a particular
alpha numeral is thus used only in respect of a particular
chemical/product of a particular brand.
35. GTZ's contention that the respondents cannot acquire any right
in respect of a particular alpha numeral is also unpersuasive. Although,
it is correct that a trade mark must be seen as a whole, however, where
it is established that a prominent part of the mark is itself a source
identifier, the same would present an exception to the anti-dissection
rule. In the present case, if the respondents are correct that a particular
alpha numeral, used as a part of its trade mark, is unique to its products
and has become a source identifier of its products, the respondents
would be entitled to protection in respect of the said alpha numerals
notwithstanding that it is not registered as a separate trade mark.
36. In the given facts where it is established that a part of the trade
mark is unique and serves as a source identifier, the anti-dissection rule
would not preclude the proprietor of the trade mark to maintain an
action. The anti-dissection rule is essentially a principle for ascertaining
whether the competing marks are deceptively similar. The rationale
being that consumers look at a mark as a whole and thus, it is not
apposite to dissect marks and compare portions of the same. McCarthy
on Trademarks and Unfair Competition explains the anti-dissection
rule as under:
"23.15 Comparing Marks : Differences v.
Similarities
[1] The Anti-Dissection Rule
[a] Compare composites as a Whole : Conflicting
composite marks are to be compared by looking at
them as a whole, rather than breaking the marks up
into their component parts for comparison. This is
the "anti dissection" rule. The rationale for the rule
is that the commercial impression of a composite
trademark on an ordinary prospective buyer is
created by the mark as a whole, not by its component
parts. However, it is not a violation of the anti-
dissection rule to view the component parts of
conflicting composite marks as a preliminary step on
the way to an ultimate determination of probable
customer reaction to the conflicting composites as a
whole. Thus, conflicting marks must be compared in
their entireties. A mark should not be dissected or
split up into its component parts and each part then
compared with corresponding parts of the
conflicting mark to determine the likelihood of
confusion. It is the impression that the mark as a
whole creates on the average reasonably prudent
buyer and not the parts thereof, that is important. As
the Supreme Court observed: "The commercial
impression of a trademark is derived from it as a
whole, not from its elements separated and
considered in detail. For this reason it should be
considered in its entirety." The anti-dissection rule
is based upon a common sense observation of
customer behavior : the typical shopper does not
retain all of the individual details of a composite
mark in his or her mind, but retains only an overall,
general impression created by the composite as a
whole. It is the overall impression created by the
mark from the ordinary shopper's cursory
observation in the marketplace that will or will not
lead to a likelihood of confusion, not the impression
created from a meticulous comparison as expressed
in carefully weighed analysis in legal briefs. In
litigation over the alleged similarity of marks, the
owner will emphasize the similarities and the
alleged infringer will emphasize the differences. The
point is that the two marks should not be examined
with a microscope to find the differences, for this is
not the way the average purchaser views the marks.
To the average buyer, the points of similarity are
more important that minor points of difference. A
court should not engage in "technical gymnastics" in
an attempt to find some minor differences between
conflicting marks.
However, where there are both similarities and
differences in the marks, there must be weighed
against one another to see which predominate.
The rationale of the anti-dissection rule is based
upon this assumption: "An average purchaser does
not retain all the details of a mark, but rather the
mental impression of the mark creates in its totality.
It has been held to be a violation of the anti-
dissection rule to focus upon the "prominent"
feature of a mark and decide likely confusion solely
upon that feature, ignoring all other elements of the
mark. Similarly, it is improper to find that one
portion of a composite mark has no trademark
significance, leading to a direct comparison between
only that which remains."
[Underlined for Emphasis]
37. The anti-dissection rule does not proscribe examining a dominant
part of the trade mark as a preliminary step for determining whether the
competing marks as a whole would be deceptively similar. In South
India Beverages India Private Limited v. General Mills Marketing
Inc: 2014 SCC OnLine Del 1953, the Division Bench of this Court had
also observed 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 'dominance' to a
particular portion or element of a mark in cases of
composite marks. Thus, a particular element of a
composite mark which enjoys greater prominence
vis-à-vis other constituent elements, may be termed
as a 'dominant mark'."
38. The Court referred to a passage from McCarthy on Trademarks
and Unfair Competition explaining the anti-dissection rule and
observed as under:
"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
compliant each other."
39. It is apparent that the said anti-dissection rule would not disentitle
a proprietor of a trade mark from maintaining an action of infringement
and passing off, if it is established that a prominent part of the trade
mark has acquired a secondary meaning and the customers identify the
product of the proprietor by association with the said dominant part of
a trade mark and the said dominant part is used by a competitor. It is
important to note that in the present case, it is the respondents' case that
its customers identify a particular product of its brand by the impugned
alpha numerals. The impugned alpha numerals not only represent a
particular variety or category of chemicals but are also unique to the
brand. The relevant alpha numeral is a source identifier for the
respondents' product. In the given circumstances, the respondents
would be entitled to restrain other persons from using the same alpha
numerals in respect of the similar goods. The competing trade marks
'ULTRABRITE' and 'TECHNOBRITE' bear a similarity to the limited
extent that the trade marks also use the word 'BRITE' with less similar
phonetic ring to both the trade marks. The same coupled with the added
use of the impugned alpha numerals which are unique to the
respondents' product would be sufficient to, prima facie, establish a
case of infringement.
40. As noted hereinbefore, the respondents' case is also one of
passing off. It is founded on the assertion that the use of the impugned
alpha numerals misleads the customers into believing that the products
of GTZ are that of the respondents. Whilst, GTZ uses the impugned
alpha numerals in conjunction with its trade mark 'ULTRABRITE' yet
the same may not be sufficient to avoid confusion in the minds of the
customers who identify the product by alpha numerals.
41. In Wander Ltd. & Anr. v. Antox India (P) Ltd.:1990 Supp
Supreme Court Cases 727, the Supreme Court had explained as under:
"An infringement action is available where there is
violation of specific property right acquired under and
recognised by the statute. In a passing-off action,
however, the plaintiff's right is independent of such a
statutory right to a trade mark and is against the conduct
of the defendant which leads to or is intended or
calculated to lead to deception. Passing-off is said to be
a species of unfair trade competition or of actionable
unfair trading by which one person, through deception,
attempts to obtain an economic benefit of the reputation
which another has established for himself in a particular
trade or business. The action is regarded as an action
for deceit. The tort of passing-off involves a
misrepresentation made by a trader to his prospective
customers calculated to injure, as a reasonably
foreseeable consequence, the business or goodwill of
another which actually or probably, causes damages to
the business or goods of the other trader"
(Emphasis Supplied)
42. As noticed above, the question as to why GTZ had adopted the
impugned alpha numerals remains unanswered. It is, prima facie,
established that GTZ had copied the same alpha numerals as used by
the respondents in its products. Out of millions of combinations of
alpha numerals, the fact that GTZ had chosen to copy those that are used
by the respondents, in our view the same is sufficient, at the prima facie,
stage, to establish that the use of the impugned alpha numerals requires
to be protected.
43. In the given circumstances, we find no ground to interfere with
the impugned judgment. We are unable to accept that the learned
Commercial Court has not exercised its discretion in a reasonable and
judicial manner or in disregard of settled principles. The appeal is
unmerited and, accordingly, dismissed.
VIBHU BAKHRU, J
TARA VITASTA GANJU, J
MAY 31, 2024
RK/GSR
