Gujarat High Court
Simero Vitrified Private Limited vs Simora Tiles Llp on 22 December, 2022
Bench: A. P. Thaker
C/AO/83/2022 ORDER DATED: 22/12/2022
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/APPEAL FROM ORDER NO. 83 of 2022
With
CIVIL APPLICATION (FOR STAY) NO. 1 of 2022
In
R/APPEAL FROM ORDER NO. 83 of 2022
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SIMERO VITRIFIED PRIVATE LIMITED
Versus
SIMORA TILES LLP
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Appearance:
MS RUSHVI N SHAH(5881) for the Appellant(s) No. 1
MR AKSHAY A VAKIL(5473) for the Respondent(s) No. 1
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CORAM:HONOURABLE DR. JUSTICE A. P. THAKER
Date : 22/12/2022
ORAL ORDER
1. Being aggrieved and dissatisfied with order dated
3.1.2022, passed below Exh.5 in Trade Mark Suit No.1 of 2017
by the learned 2nd Additional District Judge at Morbi, the
original plaintiff has preferred the present A from Order under
Order 43, Rule 1 of Code of Civil Procedure, 1908. The
appellant is the original plaintiff and respondent is the original
defendant (for the brevity the parties are referred to in this
order as per the character assigned to them before learned
trial Court).
C/AO/83/2022 ORDER DATED: 22/12/2022
2. The short facts giving rise to the present Appeal from
Order are that the plaintiff is a private limited company
engaged in the business of manufacturing, marketing and
selling varieties of ceramic items under the Trademark and
Trade name "Simero" since 2014 continuously, extensively,
exclusively, openly and uninterruptedly throughout the country
as well as abroad.
2.1 That the plaintiff applied for trademark registration of its
trade name "Simero" along with other application in class-19
bearing application no.2936647 and application no.2963106.
Same came to be granted by the Trademark registry in the
name of the plaintiff and necessary certificate was issued.
2.2 The plaintiff is very well known for its various products.
That the plaintiff has acquired reputation and goodwill in
respect of the trademark.
2.3 That the defendant has adopted mark "Simora" under the
ceramic product. That the plaintiff came to know about the
advertisement published in local newspaper Sandesh dated
23.2.2017 having circulation in Morbi about the purchase of
C/AO/83/2022 ORDER DATED: 22/12/2022
the property in the trade name Simora. That the defendant has
filed Trade mark application being application no.3436770 in
respect of trademark "Simora", whereby defendant has
specifically stated that user date is 21.1.2017.
2.4 That the plaintiff is registered proprietor of trademark
"Simero". That by virtue of registration, the plaintiff has
exclusive and statutory right under Section 28 of the Trade
mark Act 1991 and under Section 31 thereof, the registration is
prima facie evidence of its validity. That the plaintiff has
established the case of passing of action on the basis of prior
user to secure an injunction. According to the plaintiff, he is
prior user and registered proprietor of trademark Simero and
both the parties are using same ceramic products. That both
are carrying on business in city Morbi and both the products
are available on the same counter/shop. That the defendant
has not challenged the validity of the plaintiff's registered
trade mark "Simero". That the defendant has adopted the
identical and deceptively similar trade mark, which cause
confusion and deception amongst the public at large.
C/AO/83/2022 ORDER DATED: 22/12/2022
2.5 The plaintiff has filed the suit, inter alia, seeking decree
for permanent and perpetual injunction restraining the
defendant from infringement of plaintiff's trade mark "Simero"
and passing of defendants goods as those of plaintiffs. Along
with the plaint, the plaintiff has filed the application Exh.5 for
interim injunction.
2.6 The defendant has filed its reply at Exh.25, inter alia,
denying the contentions of the plaintiff. It is the contention of
the defendant that plaint does not disclose cause of action for
infringement registered trademark as well as passing of the
trade mark "Simero". It is also contended that defendant has
not commenced the use of trade mark "Simero" and the
plaintiff has filed the suit by suppressing material facts and by
making false and frivolous statement. According to the
defendant, it has yet not commenced business and, therefore,
it cannot be said that the defendant is using the trade mark of
the plaintiff. It is also contended that plaintiff is not the true
proprietor and owner of the trade mark "Simero" as there is
already business entities in the name of "Simero" and,
therefore, plaintiff cannot be said to be lawful proprietor of the
trade mark Simero. It is also contended that it is absolutely in
C/AO/83/2022 ORDER DATED: 22/12/2022
the business of building material, tiles and ceramic industries
using the trade mark with prefix "sim" and the large number of
persons of business of building materials, tiles and ceramic
industries are using the trade mark with prefix "sim" and,
therefore, plaintiffs trade mark cannot be said to be a
distinctive trade mark. It is also contended that the plaintiff
cannot claim monopoly over a trade mark containing prefix
"sim". It is also contended that the trade of the plaintiff and
defendant are entirely different. That suffix of the defendant is
Ora, while suffix of the plaintiff is Ero and uncommon suffix
creates natural distinction of plaintiff and defendant's trade
mark.
2.7 That the defendant has not infringed the trade mark or
passing of his goods as alleged in the plaint. It is also
contended that plaintiff is not entitled to any equitable relief as
no irreparable loss or injury has been caused to the plaintiff by
the act of the defendant. That the trade mark of the plaintiff
and defendant are virtually different. On all these grounds, it is
prayed to dismiss the suit as well as injunction application.
C/AO/83/2022 ORDER DATED: 22/12/2022
2.8 The learned trial Court, after hearing both the sides, and
considering the material placed on record rejected the
application for interim injunction filed by the plaintiff.
2.9 Being aggrieved by the said order of the learned trial
Court, the plaintiff has preferred this Appeal from Order
contending that the trial Court has materially erred in passing
the impugned order and has not considered the material
placed on record. It is also contended that the impugned order
of the trial Court is not sustainable in the eyes of law. The
plaintiff has also referred to various judgments in the memo of
appeal and has prayed to allow the present Appeal from Order
by setting aside the impugned order of the trial Court and to
pass necessary order restraining the defendant from using the
trade mark, which is deceptively similar to the trade mark of
the plaintiff.
3. Heard learned advocate, Mr.R.N.Shah for the appellant-
plaintiff and learned advocate Mr.Akshay Vakil for the
respondent-defendant at length, perused the material placed
on record and the decisions cited at bar.
C/AO/83/2022 ORDER DATED: 22/12/2022
4. Learned advocate, Mr.Shah for the appellant-plaintiff has
vehemently submitted that there is no dispute to the fact that
it is the registered proprietor of the trademark "Simero" as
well as prior user of the trademark. According to him, there is
no dispute that both the parties are from the same industry i.e.
ceramic industry. According to him, both the parties are
carrying on business in the same locality i.e. Morbi and, the
class of customer of both the parties is also same. According to
him, the only issue is whether the trademark of both the
parties are similar or not. He has submitted that the trial Court
has passed the impugned order ignoring the provisions of the
Trademark Act as well as the settled principles of law prevalent
with regard to grant or refusal of interim injunction application
in the suit for trademark. He has also submitted that according
to the settled principles of trademark law, the trademark
should be compared as a whole and to compare to similarity
between the two and not the dissimilarity. It is his submission
that learned trial Court has not followed this very basic
principle of law, while passing the impugned order, whereby it
has rejected the interim injunction application of the plaintiff.
C/AO/83/2022 ORDER DATED: 22/12/2022
4.1 Learned advocate for the plaintiff has submitted that the
trademark of the plaintiff is spelled as "Simero" whereas the
defendant's trademark "Simora" and according to him, "sim"
word prefix has been used by both the parties and it is similar
in nature, and there is confusion amongst the public at large.
He has also submitted that this is a ceramic articles. Even
common man is using the same for their necessity. According
to him, this very fact is not properly considered by the trial
Court.
4.2 He has also referred to the application of both the parties
filed before registry, which has been kept in paper book and
tried to show that the "S" is identical and by using the word
"sim"as a prefix, created great confusion in the minds of the
people at large. He has also submitted that the plaintiff has
also produced invoices and advertisements, whereby that the
plaintiff has acquired reputation and goodwill over the
trademark. He has submitted that the trial Court has not
considered all these aspects and mechanically passed the
impugned order, which deserves to be set aside by this Court.
C/AO/83/2022 ORDER DATED: 22/12/2022
4.3 He has also submitted that the finding of the trial Court is
misconceived, perverse and without application of mind. He
has also submitted that the trial Court has observed that "sim"
is generic term on the basis of trademark act as well as
ceramic industry directory. But the word "Sim" is not a generic
term in the ceramic industry. He has also submitted that a
mere report of the trademark is not sufficient to prove third
party claim and, therefore, such report is not evidence to
establish the mark as generic. According to him, the
respondent itself has applied with the word "sim" and claimed
monopoly over the word "sim" then the respondent cannot
claim that mark is a generic word. He has also submitted that
by virtue of long use of the trademark "Simero" and the
plaintiff successfully obtained the registration show that the
trademark is still valid and the validity is neither challenged by
the respondent at any point of time and, therefore, the mark is
still valid on the register. According to him, once the mark is
registered, the plaintiff is entitled to protection under Section
28, 29 and 31 of the Trademarks Act, 1999. He has submitted
that the trial Court has lost sight of the provisions of the
Trademarks Act and has passed the impugned order, which is
perverse and arbitrary, which requires interference by this
C/AO/83/2022 ORDER DATED: 22/12/2022
Court. He has prayed to allow present Appeal from Order by
setting aside impugned order by granting interim injunction, as
prayed by the plaintiff, in Exh.5 application. He has relied upon
following decisions in support of his submissions.
(a) Amritdhara Pharmacy v. Satyadeo Gupta reported in
AIR 1963 SC 449, wherein it is observed as under:-
"13. We agree that the use of the word 'dhara' which
literally means 'Current or stream' is not by itself
decisive of the matter. What we have to consider here is
the overall similarity of the composite words, having
regard to the circumstance that the goods bearing the
two names are medicina l preparations of the same
description. We are aware that the admission of a mar is
not to be refused, because unusually stupid people,
"fools or idiots", may be deceived. A critical comparison
of the two names may disclose some points of difference.
but an unwary purchaser of average intelligence and
imperfect recollection would be deceived by the overall
similarity of the two names having regard to the nature
of the medicine he is looking for with a somewhat vague
recollection that he had purchased a similar medicine on
a previous occasion with. a similar name. The trade mark
is the whole thing the whole word has to be considered a
the case of the application to register 'Erectiks' (opposed
by the proprietors of the trade mark 'Erector') Farwell, J.
C/AO/83/2022 ORDER DATED: 22/12/2022
said in William Bailey (Birmingham) Ltd.(1935) 52 RPC
137 :
"I do not think it is right to take a part of the word
and compare it with a part of the other Word; one
word must 'be considered as a whole and compared
with the other word as a whole................ I think it is
a dangerous method to adopt to divide the word up,
and seek to distinguish a portion of it from a portion
of the other word".
(b) Kaviraj Pandit Durga Dutt Sharma v. Navratna
Pharmaceutical Laboratories reported in AIR 1965 SC
980, wherein it is observed as under:-
"28. ......................The action for infringement is a
statutory remedy conferred on the registered proprietor
of a registered trade mark for the vindication of the
exclusive right to the use of the trade mark in relation to
those goods (Vide s. 21 of the Act). The use by the
defendant of the trade mark of the plaintiff is not
essential in an action for passing off, but is the sine qua
non in the case of an action for infringement. No doubt,
where the evidence in respect of passing off consists
merely of the colourable use of a registered. trade mark,
the essential features of both the actions might coincide
in the sense that what would be a colourable imitation of
a trade mark in a passing off action would also be such in
an action for infringement of the same trade mark. But
C/AO/83/2022 ORDER DATED: 22/12/2022
there the correspondence between the two ceases. In an
action for infringement, the plaintiff must, no doubt,
make out that the use of the defendant's mark is likely to
deceive, but where the similarity between the plaintiff's
and the defendants mark is so close either visually,
phonetically or otherwise and the court reaches
the .conclusion that there is an imitation, no further
evidence is required to establish that the plaintiff's rights
are violated. Expressed in another way, if the essential
features of the trade mark of the plaintiff have been
adopted by the defendant, the fact that the get- up,
packing and other writing or marks on the goods or on
the packets in which he offers his goods for sale show
marked differences, or indicate clearly a trade origin
different from that of the registered proprietor of the
mark would be immaterial; whereas in the case of
passing off, the defendant may escape liability if he can
show that the added matter is sufficient to distinguish his
goods from those of the plaintiff."
(c) K.R.Chinna Krishna Chettiar v. Shri Ambal and Co.
and Others reported in AIR 1970 SC 146, wherein it is
observed as under:-
"7. There is no evidence of actual confusion, but that
might be due to the fact that the appellant's trade is not
of long standing. There is no visual resemblance between
the two marks, but ocular comparison is not always the
decisive test. The resemblance between the two marks
C/AO/83/2022 ORDER DATED: 22/12/2022
must be considered with reference to the ear as well as
the eye. There is a close affinity of sound between Ambal
and Andal.
8. In the case of Coca-Cola Co. of Canada v. Pepsi Cola
Co. of Canada Ltd.(2), it was found that cola was in
common use in Canada for naming the beverages. The
distinguishing feature of the mark Coca Cola was coca
and not cola. For the same reason the distinguishing
feature of the mark Pepsi Cola was Pepsi and not cola. It
was not likely that any one would confuse the word Pepsi
with coca. In the present case the word "Sri" may be
regarded as in common use. The distinguishing feature
of the respondent's mark is Ambal while that of the
appellant's mark is Andal. The two words are deceptively
similar in sound."
(d) Ruston & Hornsby Ltd. v. The Zamindara
Engineering Co. reported in (1969) 2 SCC 727, wherein it is
observed as under:-
"6. The two actions, however, are closely similar in
some respects, As was observed by the Master of the
Rolls in Saville Perfumery Ltd. v. June Perfect Ltd.(2).
"The Statute- law relating to infringement of trade
marks is. based on the same fundamental idea as the
law relating to passing-off. But it differs from that law
C/AO/83/2022 ORDER DATED: 22/12/2022
in two particulars, namely (I ) it is concerned' only
with one method of passing-off, namely, the use of a
trade mark, and (2) the statutory protection is
absolute in the sense that once a mark is shown to
offend, the user of it cannot escape by showing that
by something outside the actual mark itself he has
distinguished his goods from those of the registered
proprietor. Accordingly, in considering the question of
infringement the Courts have held, and it is now
expressly provided by the Trade Marks Act,
1938, section 4, that infringement takes place not
merely by exact imitation but by the use of a mark so
nearly resembling the registered mark as to be likely
to deceive."
In an action for infringement where the defendant's trade
mark is identical with the plaintiff's mark, the Court will
not enquire whether the infringement is such as is likely
to deceive or cause" confusion. But where the alleged
infringement consists of using not the exact mark on the
Register, but something similar to. it, the test of
infringement is the same as in an action for passing off in
other words, the test as to likelihood of confusion or
deception arising from similarity of .marks is the same
both in infringement and passing off actions.
.................
8. We are accordingly of the opinion that this appeal
should be allowed and the appellant should be granted a
decree restraining the respondents by a permanent
C/AO/83/2022 ORDER DATED: 22/12/2022
injunction from infringing the plaintiff's trade mark
"RUSTON" and from using it in connection with the
engines machinery and accessories manufactured and
sold by it under the trade mark of "RUSTAM INDIA". The
appellant is also entitled to an injunction restraining the
respondent and its agents from selling or advertising for
sale of engines, machinery or accessories under the-
name of "RUSTAM" or "'RUSTAM INDIA". The appellant 'is
also. granted a decree for nominal damages to the extent
of Rs. 100/-. The appellant is further entitled to an order
calling 'upon the respondent to deliver the appellant
price-lists, bills, invoices and other advertising material
bearing the mark "'RUSTAM" or "RUSTAM INDIA". "The
appeal is allowed with costs to the above extent."
(e) Rupa and Company Limited and Others v. Dawn
Mills Company Limited and Others reported in 1999 (19)
PTC 334, (Gujarat), wherein it is observed as under:-
"71. From the above discussion, in the light of decided
cases, it can be broadly stated that in an action for
infringement of passing off, that crux of enquiry is
whether mark used by defendant on comparison is
deceptively similar to that of plaintiff which is likely to
deceive or cause confusion amongst its buyers. The
similarity which can cause infringement may be ocular as
well as phonetic similarity on comparison of two marks,
C/AO/83/2022 ORDER DATED: 22/12/2022
depending upon the essential feature of the marks in
question. Comparison has to be concerning essential
feature of the marks and not with each and every detail
of each mark to find exact or near exact reproduction.
The essential feature of a mark is one by which an
average person with imperfect recorrection remembers it
rather by general impression or by some significant
detail than by any photogenic recollection of the while in
visual detail. Test of such enquiry being in the state of
mind of an average buyer of the goods, it is equally
important to consider the class of persons who are likely
to buy the goods bearing the mark, back ground from
which they come, leval of their education and degree of
care they are likely to exercise in purchasing goods.
What degree of resemblance is necessary and in which
field, visual or sound, is from the very nature of things a
matter incapable of a definition a priori. Each case must
depend on its own facts and on the satisfaction of Court
on totality of evidence where words or group of words
are considered essential feature of the mark, than
instead of its visual detail, resemblance in sound or
phonetic similarity will be of prime relevance.
...............
77. It is also noticed from the sample of offending hosiery
products and cartons in which the same are offered to
buyers by the defendants shown to the Court, that on
labels attached to it word 'DON' is shown in prominence
rather than its registered trade mark 'RUPA'. So also, on
the carton slogan "xZsxjoBxNuU" the word "xNuU" in
C/AO/83/2022 ORDER DATED: 22/12/2022
vernacular script is shown prominently within inverted
comas. The advertisement of this particular class of
goods also gives prominence to word "xNuU" in
vernacular script. Thus, the manner in which defendant is
projecting its product in the market leaves little room of
doubt in the mind of buyers that the goods offered to
him are of 'DON' or "DAWN" mark. Notwithstanding that
there is quite dissimilarity in the visual background of the
packing carton, one cannot say with confidence that a
buyer of average intelligence with imperfect recollection
is not likely to be confused by the manner in which the
mark of defendant is projected to treat it as the trade
mark under which the goods are being sold and
confusion between the two marks is likely to prevail in
his mind. Particularly, keeping in mind that goods in
question are hosiery products like banyans and
underwear of daily use used by thousands of persons
from common milieu scattered all over the country in far
flung areas, with level of common education and
acquaintance with English language, the likelihood of
average buyer discerning differences is spelling of 'DON'
and 'DAWN' and difference between their etymological
meaning is little, as was the case in an English Court in
the application. Thomas A Smithy Ltd. (supra). He is
more likely to relate the goods by name "DAWN" than by
pictorial presentation on the package. The very fact that
both the plaintiff and defendant have registered words
'DAWN' and 'RUPA' respectively as their trade marks in
connection with conveying on their trade of hosiery
C/AO/83/2022 ORDER DATED: 22/12/2022
further strengthen the view that goods are identified by
name of the brand and not by pictorial background of
package or label or the device on which the brand mark
is projected. With all these material on record, the
conclusion of trial court that the use of word 'DON' by
defendant prima facie infringes plaintiff's registered
mark in question, is a reasonable conclusion."
(f) Torrent Pharmaceuticals Limited v. The Wellcome
Foundation Limited reported in 2002 (24) PTC 580,
wherein it is observed as under:-
"8. In my view the finding of the Registrar of Trade Marks
that both the marks have the highest degree of
resemblance visually as well as phonetically and the
word Trovirex' is deceptively similar to the opponent's
registered trade marks 'Zovirax' and 'Zovirex' is correct.
The word 'Trovirex' is so nearly resembling to opponent's
registered trade mark 'Zovirex' so as to cause confusion
amongst general public i.e. an average man with
imperfect recollection. In my view both the conditions
specified under Sections 11 and 12(1) of the Act are
satisfied and therefore the objection raised by the
opponent in his opposition should be considered as well
founded and the application of the applicant for
registering the trade mark 'Trovirex' should be rejected.
This court therefore confirms the order and finding of the
C/AO/83/2022 ORDER DATED: 22/12/2022
Registrar in this behalf. In my view the opinion of the
Registrar should not be lightly disturbed because he has
an expert knowledge in the matter."
(g) Pankaj Goel v. Dabur India Limited reported in 2008
(38) PTC 49 (Del), wherein it is observed as under:-
"19. The Supreme Court in the case of AMRITDHARA
PHARMACY referred to hereinabove, held the mark
AMRITDHARA to be deceptively similar to the mark
LAXMANDHARA. The Apex Court in the said Judgment
further stipulated that the issue was to be examined by
applying the test of an unwary purchaser having average
intelligence and imperfect recollection. The Supreme
Court in the said case held that even though a critical
comparison of the two names may disclose some points
of differences, yet an unwary purchaser of average
intelligence and imperfect recollection would be deceived
by the overall similarity of the two products.
20. We find in the present case the Appellant's and
Respondent/ Plaintiff's mark are not only similar but their
products are identical and are purchased by the same
class of customers and the said goods are sold through
the same trading channel. In our view the trinity of
factors makes for a case for confusion and consequently
for passing off. Appellant's subsequent adoption of a
similar mark seems prima facie dishonest and no amount
C/AO/83/2022 ORDER DATED: 22/12/2022
of user can cure it. In case the injunction as granted by
this Court is not continued, the use of the same mark by
the Appellant is likely to deceive the public at large."
(h) Navyug Commercial v. Maheshwari Tea Company
Pvt. Ltd. reported in 2013 (56) PTC 596 (Raj), Head Note of
which reads as under:-
"Case Note:
Intellectual Property Rights Infringement of trade mark -
Section 29 of Trademark Act, 1999 Trial Court had
allowed Application of Respondent- Plaintiff to restraining
Appellant from using word "Mangaleshwari" for his
business and also from using packing material similar to
registered trademark of Respondent-Plaintiff - Hence,
this Appeal - Whether order of trial court was justified -
Held, it clearly transpires that Respondent-Plaintiff had
established prima facie before trial court that their
trademark "Maheshari" as shown in image registered in
registration certificate was being used since 2003 and
that said certificate was valid up to May 2013 - From
original labels produced by Respondent, it transpires that
not only word "Mangaleshwari" used by Appellant was
phonetically and visually similar to word "Maheshari", but
entire label including colour scheme, get up and design
used by Appellant was also deceptively similar to
registered image of label used by Appellant - Thus for
purpose of proving infringement, main ingredients to be
C/AO/83/2022 ORDER DATED: 22/12/2022
established under Section 29 of Act were that Plaintiff's
mark was registered, Appellant's mark was identical with
or deceptively similar to registered trademark of Plaintiff
- Therefore in such circumstance, it did not find any
illegality or infirmity in order passed by trial Court -
Appeal dismissed.
Ratio Decidendi:
"Registered trade mark is infringed by person if he uses
such mark as his trade name of his business concern in
respect of which trade mark is registered."
(i) Charak Pharma Pvt. Ltd. v. Glenmark
Pharmaceuticals Ltd. reported in 2014 (57) PTC 538
(Bom), Head Note of which reads as under:-
"Intellectual Property Rights Temporary injunction - Grant
of Present application filed for seeking temporary
injunction against Respondent from manufacturing and
marketing any medicinal preparations/products by using
mark deceptively similar to Applicant's registered
trademark - Whether Applicant was entitled for injunction
against use of its registered trademark - Held, mark
begin with same words and also end with similarly strong
words, then likelihood of confusion was extremely high -
Materials on record that Respondent's marks was
strongly likelihood and thus resulting in confusion with
C/AO/83/2022 ORDER DATED: 22/12/2022
Applicant's trademark - Further, Marks were not derived
from basic drug, moreover marks were for different
ailments which could result in disastrous consequences
in case of any confusion between two marks - Therefore,
Applicant was entitled for injunction against use of its
registered trademark - Application allowed."
(j) Chanel Limited v. Sunder Chemical Agarbati Works
(P) Limited and Other reported in 2003 (26) PTC 52
(Delhi), wherein it is observed as under:-
"12. Accordingly an order of interim injunction is granted
in favor of the plaintiff restraining the defendants, their
partners, stockists, agents and dealers from
manufacturing, selling, offering for sale, advertising,
directly or indirectly dealing in perfumes under the
impugned trade mark "SHANELLE" or any other
trademark identical to, or deceptively similar to the
plaintiff's trademark "CHANEL" or which amounts to
infringement of trademark Registration Nos. 13385,
266305, 336035, 517221, 517222 and 517223 and/or
passing off of the goods and/or business of the
defendants as and/or for those of the plaintiff."
(k) Grandlay Electricals (India) Limited and Others v.
Vidhyar Batra and Others reported in 1998 (18) PTC 646
(Del), wherein it is observed as under:-
C/AO/83/2022 ORDER DATED: 22/12/2022
"37. The trade mark of the defendants "HENLAY" is, to
my mind, phonetically and deceptively similar to the
trade mark "GRANDLAY" inasmuch as the last three
letters in the two trade marks are same. Furthermore,
there is a striking similarity of the sound in the two trade
marks. While deciding the question as to whether the two
trade marks are phonetically and deceptively similar, we
have to keep in mind that the human memory is very
short and fleeting. People with imperfect recollection and
weak memory cannot be expected to remember
distinctive features of one trade mark distinguishing it
from the other. Thus there is every possibility and
likelihood that the goods belonging to the defendants
may be treated as the goods of the plaintiffs."
(l) Lupin Limited v. Eris Lifesciences Pvt. Ltd. And
others reported in 2016 (67) PTC 144 (Bom), wherein it is
observed as under:-
"23. The contention of the first Defendant that there are
80 trade marks in the market having NEBI as prefix and
around 40 of them are registered, and therefore NEBI is
common to trade and there is no likelihood of confusion
or deception also cannot be accepted. Firstly, the
Plaintiff's trademark is registered. All that the Court is
required to consider is whether Defendant No. 1's mark is
C/AO/83/2022 ORDER DATED: 22/12/2022
deceptively similar to the Plaintiff's registered trademark.
Secondly, the registration of the marks containing the
letters 'NEBI' is irrelevant for deciding the instant case.
What is required to be considered is whether the mark of
Defendant No. 1 is deceptively similar to the Plaintiff's
registered trademark. Under Section 28 of the Trade
Marks Act 1999, the Plaintiff gets an exclusive right to
use its registered trademark and to obtain relief in
respect of infringement of the trademark in the manner
provided by this Act. Further, Defendant No. 1 is not
entitled to contend that there are several trademarks
with the word 'NEBI' and that the letters 'NEBI' are
common to the trade. Defendant No. 1 itself having
applied for registration of the mark NEBISTOL which
contains the letters 'NEBI' is estopped from raising the
said contention. In the case of UltraTech Cement Ltd. Vs.
Alaknanda Cement Pvt. Ltd. (supra) this Court observed,
"Thus, Defendants who have admittedly applied for
registration of the impugned mark containing the word
"Ultratuff" are therefore estopped from contending that
the Plaintiff's mark containing the word "UltraTech" is
deceptive or common to the trade and therefore cannot
be registered". Also, in the case of Neon Laboratories V
Themis Medicare Ltd. (supra) this Court has held as
under:
"The issue of whether a defendant can take such a plea
of a mark or a prominent feature of a mark being
common to the trade when the defendant has himself
C/AO/83/2022 ORDER DATED: 22/12/2022
applied for registration is no longer res integra. the
second action defeats the first argument. This seems to
me logical. A man may well say, "I choose to use this
particular mark because it is my belief that it is common
to our trade and therefore none may claim exclusivity
over it." It is quite another for him to say "I will contend
in opposition to a claim of exclusivity that the mark I have
adopted is so common to our trade that none may claim
exclusivity, but I will myself nonetheless apply for
registration and thereby mount precisely such a claim to
monopoly, and it matters not that implicit in my
registration application is a self-annihilating contradiction
of my own stand of the mark being commonplace." There
is a form of estoppel by conduct that applies to such a
defendant. A man may not 'approbate and reprobate'. He
may take inconsistent stands, but not ones that are
mutually destructive."
Further, Defendant No. 1 has not produced any evidence
of the parties using the marks containing the word 'NEBI'.
As held in the case of Corn Products Refining Co. Vs.
Shangrila Food Products (supra), and Pidilite Industries
Ltd. Vs. S.M. Associates (supra) in the absence of any
such evidence, the said contention cannot be
entertained.
........
25. According to the first Defendant, the mark NEBISTOL
used by the Defendants is dissimilar to the mark
C/AO/83/2022 ORDER DATED: 22/12/2022
NEBISTAR of the Plaintiff. In my view the marks are
phonetically almost identical. There is phonetic, visual
and structural similarity between the mark NEBISTOL and
NEBISTAR. It is a settled principle of law that the question
of deceptive similarity is to be answered, inter alia, by
considering the two marks as a whole. Splitting of marks
is not permissible. The Defendants' contention is that the
syllable STAR in the Plaintiff's mark, and the same is
different from the syllable 'STOL' in the Defendant's mark
and therefore the marks are not similar. As submitted on
behalf of the Plaintiff such splitting of marks is not
permissible. In the case of Amritdhara Pharmacy Vs.
Satya Deo Gupta (supra) although the said case related
to the opposition proceedings, the principles of
comparison laid down therein are applicable to all cases
where the question of deceptive similarity is to be
considered. In paragraph 9 of its Judgment, the Hon'ble
Supreme Court held that the critical comparison of the
two marks may disclose some points of difference, but an
unwary purchaser of average intelligence and imperfect
recollection would be deceived by the over all similarity
of two marks. The Hon'ble Supreme Court further
observed that a trademark is the whole thing i.e. the
whole word has to be considered. In that case, the two
marks were AMRIT DHARA and LAXMAN DHARA. The
Supreme Court came to the conclusion that the overall
similarity between the two names was likely to cause
deception or confusion.
..........
C/AO/83/2022 ORDER DATED: 22/12/2022
32. The contention of Defendant No. 1 that there are
dissimilarities inter alia qua packing, size of strips, labels,
cartons, etc, is also not sustainable. In this case, the two
marks involved are word-marks NEBISTAR and NEBISTOL.
This is not a case to prevent Defendant No. 1 from using
the packing material or the label. This is a simple case
involving two word-marks and all that is required to be
considered is whether the two marks are deceptively
similar. Once the two marks are held to be deceptively
similar, the differences in packing or price etc. are totally
irrelevant. In any event, such considerations as to the
carton, price, label being different are irrelevant as far as
the claim for infringement is concerned. The Hon'ble
Supreme Court has in the case of Durga Dutta Sharma
Vs. Navaratna Pharma (supra) held as follows:
"28. . ...In an action for infringement, the plaintiff
must, no doubt, make out that the use of the
defendant's mark is likely to deceive, but where the
similarity between the plaintiff's and the defendant's
mark is so close either visually, phonetically or
otherwise and the Court reaches the conclusion that
there is an imitation, no further evidence is required
to establish that the plaintiff's rights are violated.
Expressed in another way, if the essential features of
the trade mark of the plaintiff have been adopted by
the defendant, the fact that the get-up, packing and
other writing or marks on the goods or on the packets
in which he offers his goods for sale show marked
C/AO/83/2022 ORDER DATED: 22/12/2022
differences, or indicate clearly a trade original
different from that of the registered proprietor of the
mark would be immaterial."
The Hon'ble Supreme Court has in the case of Ruston &
Hornsby Ltd. v. Zamindara Engineering CO., AIR 1970 SC
1649 (supra) held that once the impugned mark
containing the word RUSTOM was deceptively similar to
the Plaintiff's registered trademark RUSTON, a case for
infringement was made out. Therefore, the chart of
alleged dissimilarities mentioned in para 10 of the written
submission of the Defendant is meaningless and a futile
exercise made by the Defendants to allege
dissimilarities. The Plaintiff has also correctly dealt
with/distinguished the decisions relied upon by the
Defendant No.1.
33. I am therefore of the view that the Plaintiff has
made out a prima facie case of infringement and passing
off against the Defendants."
(m) Devi Pesticides Private Limited v. Shiv Agro
Chemical Industries reported in 2006 (32) PTC 434
(Madras), wherein it is observed as under:-
"16. A perusal of the order of the learned Judge shows
that both the applications, viz., O.A. Nos. 904 and 905 of
2004 filed for interim injunction have been dismissed,
solely on the ground that the petitioner's trademark are
not usually similarly to that of respondents trademark.
C/AO/83/2022 ORDER DATED: 22/12/2022
We have already pointed out that it is settled principle of
law that phonetic similarity would constitute
infringement of trademark. In this regard, it is also useful
to refer Section 29(5) of the Trademarks Act.
A registered Trade Mark is infringed by a person if he
uses such registered T4ade Mark as his Trade name, or
part of his Trade name or name of his business concern
or part of the name of his business concern dealing in
goods or services in respect of which the mark is
registered.
The above provision makes it clear that even part of the
registered Trademark is used, it would amount to
infringement.
17. We are satisfied that the applicant has made out that
it is a clear case of infringement of their Trademark
BOOM PLUS by the respondent by using their Trade mark
SUPER BOOM. We are also satisfied that the respondent
has committed an act of passing off their goods as that
of applicant by using their Trademark SUPER BOOM,
which is deceptively similar and identical to the plaintiff's
trademark BOOM PLUS. In Laxmikant V. Patel v.
Chetanbhai Shah , the Hon' ble Supreme Court makes it
clear that a refusal of grant of injunction in spite of
availability of facts which are prima facie established by
acceptable evidence and material available on record
justifying the grant thereof, occasion a failure of justice
and such injury to the plaintiff Page 1443 would not be
capable of being undone at a later stage. As pointed out,
C/AO/83/2022 ORDER DATED: 22/12/2022
since the grant of interlocutory injunction to the plaintiff
could not have been refused, it becomes obligatory on
the part of this Court to interfere.
18. We have already held that the respondent has not
produced any evidence before this Court of their usage
except last few months. On the other hand, the applicant
being the owner of the registered trademark since 1987,
have to practice their property and they cannot allow
others to infringe their registered trademark by using
deceptively similar marking. By using phonetically similar
mark and marking the unwary of consumers to believe
that the product of the respondent originates from that
of the applicant and thus committed an act of passing off
infringement of trademark."
(n) P.M.Diesels v. S.M. Diesels reported in 1994 (14) PTC 75
(Del), wherein it is observed as under:-
"(8) Next contention raised by learned counsel for the
defendant is that the word Marshal has become common
to the trade of diesel engines in Rajkot and various other
persons are using the trade mark in one form or other as
inasmuch as some are using Airmarshal, Perfect Marshal,
Powermarshal etc. and the defendant is not the only
person who is using the trade mark Sonamarshal only.
The plaintiff, therefore, cannot claim its trade mark to be
distinctive of its goods or business and no customer is
likely to be confused or deceived on account of this trade
C/AO/83/2022 ORDER DATED: 22/12/2022
mark. This contention of the learned counsel for the
defendant is also without force. In this connection it is
sufficient to say that under the law it is the right of two
parties before the court which has to be determined and
the court has not to examine the right of other parties. If
some other manufacturers are using or suffixing the
word Marshal on their diesel engines, it is of no
consequence. Furthermore, if the plaintiff has not taken
any action against several other infringements, this does
not mean that the plaintiff has abandoned its trade mark
and cannot challenge the action of the defendant."
(o) Teleecare Network India Pvt. Limited v. Asus
Technology Pvt. Ltd. And Others reported in 2019 (79)
PTC, 99 (Del), wherein it is observed as under:-
"36. Consequently, the adoption of the mark ZEN by the
plaintiff with respect to mobile phones and tablets, with
which it has no correlation, is arbitrary and is entitled to
protection without proof of it having acquired secondary
significance.
MERE FILING OF A SEARCH REPORT FROM THE TRADE
MARK OFFICE DOES NOT PROVE THAT THE MARK
MENTIONED IN THE SEARCH REPORT IS ACTUALLY BEING
USED BY THIRD PARTIES. FURTHER, THE DEFENDANTS
HAVING THEMSELVES APPLIED FOR REGISTRATION OF
THE MARK ZENFONE ON 12thMARCH, 2014, ON A
PROPOSED TO BE USED BASIS, CANNOT NOW BE
PERMITTED TO APPROBATE AND REPORBATE
C/AO/83/2022 ORDER DATED: 22/12/2022
37. This Court is further of the view that mere filing of a
search report from the Trade Mark Office does not prove
that the mark mentioned in the search report is actually
being used by third parties. To prove the defence of
common to trade, it is imperative on the part of the party
who relies upon the mark of third parties to produce
cogent and clear evidence of use of the said mark. In
Novartis AG. V. Crest Pharma Pvt. Ltd., 2009 (41) PTC 57
(Del.) it has been held as under:-
"32. The next contention of the defendant is that
there are number of other companies who are using
the similar trade mark as that of the plaintiff, those
are CEFF, SIMCEF, CEF, BECEF, SYCEF, CEACEF,
SYCEF, SICEF and C-CEF. The contention of the
defendant has no force as the defendants have
failed to produce any evidence of the actual user of
the said marks referred by the defendants. In order
to take the said defence, the party has to give
cogent evidence before this court as to since when
these trade marks are being used and what is the
goodwill and reputation of the said trade marks. The
defendant in the present case has not produced the
samples of the third parties in order to show as to
whether the said marks are being used and goods
are available in the market or not. The similar
defence raised in various cases has been dealt by
the courts from time to time in the cases of Century
Traders (supra), Corn Products refining Co. Vs.
Shangrila Food Products Ltd., AIR 1960 SUPREME
C/AO/83/2022 ORDER DATED: 22/12/2022
COURT 142 and Pankaj Goel vs. Dabur India Ltd.,
2008(38) PTC 49 (Del). Relevant part of the decision
of Corn product(supra) is reproduced hereinbelow:-
"17. The series of marks containing the common
element or elements therefore only assist the
applicant when those marks are in extensive use in
the market. The onus of proving such user is of course
on the applicant, who wants to rely on those marks.
Now in the present case the applicant, the respondent
before us, led no evidence as to the user of marks with
the common element. What had happened was that
Deputy Registrar looked into his register and found
there a large number of marks which had either
'Gluco' or 'Vita' as prefix or suffix in it. Now of course
the presence of a mark in the register does not prove
its user all. It is possible that the mark may have been
registered but not used. It is not permissible to draw
any inference as to their user from the presence of the
marks on the register."
(emphasis supplied)
38. Though the present suit is a commercial suit, yet the
defendants have not placed on record any instance of use
of the mark ZEN by third parties."
(p) Novartis AG v. Crest Pharma Pvt. Ltd. And Others
reported in 2009 (41) PTC 57 (Delhi), wherein it is
observed as under:-
C/AO/83/2022 ORDER DATED: 22/12/2022
"32. The next contention of the defendant is that there
are number of other companies who are using the similar
trade mark as that of the plaintiff, those are CEFF,
SIMCEF, CEF, BECEF, SYCEF, CEACEF, SYCEF, SICEF and
C-CEF. The contention of the defendant has no force as
the defendants have failed to produce any evidence of
the actual user of the said marks referred by the
defendants. In order to take the said defence, the party
has to give cogent evidence before this court as to since
when these trade marks are being used and what is the
goodwill and reputation of the said trade marks. The
defendant in the present case has not produced the
samples of the third parties in order to show as to
whether the said marks are being used and goods are
available in the market or not. The similar defence raised
in various cases has been dealt by the courts from time
to time in the cases of Century Traders (supra), Corn
Products refining Co. Vs. Shangrila Food Products Ltd.,
AIR 1960 SUPREME COURT 142 and Pankaj Goel vs.
Dabur India Ltd., 2008(38) PTC 49 (Del). Relevant part of
the decision of Corn product(supra) is reproduced
hereinbelow:-
"17. The series of marks containing the common
element or elements therefore only assist the
applicant when those marks are in extensive use in
the market. The onus of proving such user is of
course on the applicant, who wants to rely on those
C/AO/83/2022 ORDER DATED: 22/12/2022
marks. Now in the present case the applicant, the
respondent before us, led no evidence as to the user
of marks with the common element. What had
happened was that Deputy Registrar looked into his
register and found there a large number of marks
which had either 'Gluco' or 'Vita' as prefix or suffix in
it. Now of course the presence of a mark in the
register does not prove its user all. It is possible that
the mark may have been registered but not used. It is
not permissible to draw any inference as to their user
from the presence of the marks on the register.
33. A mere filing of the search report from the
trademarks office does not prove as to whether the
marks mentioned in search report was actually been used
or not. It is imperative on the part of the party who relies
upon the marks of third party to produce cogent and
clear evidence of user in order to prove the defence of
common marks to the trademark on the basis of the third
party user. Hence, in the absence of valid and cogent
evidence, the submission of the defendant cannot be
accepted."
(q) Ozone Spa Pvt. Limited v. Ozone Club reported in
2010 (42) PTC 469 (Delhi), wherein it is observed as under:-
"28. The other objection raised by the defendant is that
„Ozone‟ is a generic name and no one can have exclusive
C/AO/83/2022 ORDER DATED: 22/12/2022
rights over the same and the plaintiff is also not the
proprietor of the mark „Ozone‟. The said argument is a
self defeating argument. Firstly, the mark „Ozone‟ is a
registered trade mark in favour of the plaintiff and
secondly the defendant himself has applied for
registration of the trade mark „Ozone‟ in class 41 in
relation to the services as that of the plaintiff. It does not
lie in the mouth of the defendant to contend now that the
mark is a generic mark, in fact the defendant is debarred
from raising such a plea in view of his own conduct. The
said contention is totally misconceived. In the case
of Automatic Electric Limited v. R.K. Dhawan & Anr., 1999
PTC (19) 81 in para 16, the learned Single Judge of this
Court has observed that the defendant had got their trade
mark "DIMMER DOT" registered in Australia. The fact that
the defendant itself has sought to claim trade proprietary
right and monopoly in "DIMMER DOT", it does not lie in
their mouth to say that the word "DIMMER" is a generic
expression. User of the word "DIMMER" by others cannot
be a defence available to the defendants, if it could be
shown that the same is being used in violation of the
statutory right of the plaintiff.
29. The next objection of the defendant is that there are
various other companies, traders, societies and
associations which are using the word „Ozone‟. The said
submission is also without any substance as the
defendant has failed to produce any cogent evidence
before this court to show that any third party is using the
C/AO/83/2022 ORDER DATED: 22/12/2022
name/mark „Ozone‟ in relation to health related services.
The said submission is also rejected."
(r) Decision of this Court in the case of Red Fox Securities
Pvt. Ltd. v. Red Fox Protection Services Pvt. Ltd. Dated
30.1.2018 passed in Appeal from Order No.11 of 2018, wherein
it is observed as under:-
"4. Though the learned advocates have addressed the
Court at substantial length on the merits of the matter,
any finding of this Court on merits may prejudice the case
of either party in the suit and therefore the reasoning in
this order is restricted only to the limited extent of the
sustainability or otherwise of the impugned order passed
by the Trial Court, granting injunction. Keeping this
aspect in view and having heard learned advocates for
the respective parties and having considered the material
on record, this Court finds as under.
4.1 Firstly it is noted that the presence of the plaintiff or
the defendant in the field, the quantum of business, the
period for which they have been in the field, are such
factors, which would not change the complexion of the
matter, for the purpose of grant of injunction. The factors
C/AO/83/2022 ORDER DATED: 22/12/2022
which ought to have been taken into consideration by the
Trial Court, and which are part of the record, are as
under.
4.2 The certificate issued by the Competent Authority of
the Government of India (Trade Mark Registry) makes the
following aspects clear (details are at page 124). The
authorities have registered Trade Mark No. 2110435 in
Class-45 in the name of the original plaintiff, with the
registration date of 05.03.2011, mentioning therein its
usage since 22.12.2009.
4.3 As against the above, it is not in dispute that the
defendant had also applied for registration of Trade Mark
in that very class (Class-45), however the same is
abandoned by him. During the course of hearing, learned
advocate for the plaintiff has tendered on-line status in
that regard, the details of which are as under.
.............
GOODS/SERVICES : SECURITY SERVICES FOR THE
PROTECTION OF PROPERTY AND INDIVIDUALS; PERSONAL
AND SOCIAL SERVICES RENDERED BY OTHERS TO MEET
C/AO/83/2022 ORDER DATED: 22/12/2022
THE NEEDS OF INDIVIDUALS Vienna Code(s) : 270517,
260116
4.4 Thus, on one hand there is claim of the plaintiff, the
details of which are pleaded in the plaint and which are
fortified by the certificate issued by the Competent
Authority vis-a-vis an abandoned claim by the original
defendant - present appellant. For this reason Section 31
of the Trade Mark Act, 1999 would come in play, which
reads as under.
"Sec.31 Registration to be prima facie evidence of
validity -
(1) In all legal proceedings relating to a trade mark
registered under this Act (including applications under
section 57), the original registration of the trade mark
and of all subsequent assignments and transmissions of
the trade mark shall be prima facie evidence of the
validity thereof.
(2) In all legal proceedings as aforesaid a registered trade
mark shall not be held to be invalid on the ground that it
was not a registerable trade mark under section 9 except
upon evidence of distinctiveness and that such evidence
C/AO/83/2022 ORDER DATED: 22/12/2022
was not submitted to be Registrar before registration, if it
is proved that the trade mark had been so used by the
registered proprietor or his predecessor in title as to have
become distinctive at the date of registration."
4.5 As noted above, the original defendant has
abandoned the application. Even if it was not so, the
mere fact that the original plaintiff is having the
registration in his favour, is the sufficient ground to press
into service the provisions of Section 31 of the Act by the
plaintiff. On the reading of Section 31 of the Act and the
registration certificate in favour of the plaintiff, this Court
finds that, the grant of injunction in the facts of the
present case was required and the Court below has
rightly granted it. No interference would be required in
the impugned order. Any interference would
consequently negate Section 31 of the Act. For these
reasons, this Appeal needs to be dismissed.
4.6 Though serious grievance is made by the appellant
(original defendant) that the plaintiff could not have been
granted the registration, that aspect can not be gone into
by this Court.
C/AO/83/2022 ORDER DATED: 22/12/2022
5. At this stage, learned senior advocate for the appellant
has submitted that the impugned order is not
implemented so far, since the effect thereof was
suspended by the Trial Court itself and the said
suspension may be continued for some reasonable time
to enable the appellant to approach the higher forum.
With a view to see that the challenge if any to this order
remains meaningful, under normal circumstances,
extension as prayed for could have been granted by this
Court, however, in the present case, for the reasons
noted above this Appeal from Order is not entertained by
this Court at all and therefore, it would be improper to
accept the request of the appellant. For this reason, this
request is rejected."
(r) T.V.Venugopal v. Ushodaya Enterprises Ltd. And
Others reported in 2011 (45) PTC 433 (SC), wherein it is
held as under:-
"96. Mr. Sundaram, counsel for the respondent company
also submitted that use of a similar mark(s) by third
parties is not a defense to an illegal act of passing-off. He
relied on a judgment of Delhi High Court in Ford Motor
Company of Canada Limited and another v. Ford Service
C/AO/83/2022 ORDER DATED: 22/12/2022
Centre 2009 (39) PTC 149, wherein the Court observed
that:
"... do not find any merit in the plea of defendant of
two others, outside India using FORD in relation to
other business. Their case is not before this Court for
adjudication and even if the plea of dilution was to be
available in an infringement action, no case of
dilution in India is made out. Recently the Division
Bench of this Court in Pankaj Goel v. Dabur India
Limited 2008 (38) PTC 49 (Delhi) held that merely
because others are carrying on business under similar
or deceptively similar trademark or have been
permitted to do so by the plaintiff, cannot offer a
licence to the world at large to infringe the trademark
of the plaintiff. It was further held that even
otherwise, the use of similar marks by a third party
cannot be a defence to an illegal act of passing off. In
Castrol Limited v. A.K. Mehta 1997 (17) PTC 408 DB it
was held that a concession given in one case does
not mean that other parties are entitled to use the
same. Also, in Prakash Roadline v. Prakash Parcel
Service 1992 (2) Arbitration Law Reporter 174 it has
been held that use of a similar mark by a third party
in violation of plaintiff's right is no defence."
97. Learned counsel for the respondent company also
placed reliance on Prakash Roadline Limited v. Prakash
Parcel Service (P) Ltd. 48 (1992) Delhi Law Times 390 the
Delhi High Court held that:
C/AO/83/2022 ORDER DATED: 22/12/2022
"... ... ... Merely because no action is taken against
certain other parties, it does not mean that the
plaintiff is not entitled to take action against the
defendant. The other parties may not be affecting the
business of the plaintiff. They may be small-time
operators who really do not matter to the plaintiff.
Therefore, the plaintiff may not chose to take any
action against them. On the contrary the plaintiff
feels danger from defendant in view of the fact that
the defendant's promoters are the ex
Directors/employees of the plaintiff who are fully in
the know of the business secrets of the plaintiff.
Therefore, the mere fact that the plaintiff has not
chosen to take any action against such other parties
cannot disentitle the plaintiff from taking the present
action. This contention is, therefore, prima-facie
without any merit and is rejected."
.............
"102. On consideration of the totality of facts and
circumstances of the case, we clearly arrive at the
following findings and conclusions :
a) The respondent company's mark `Eenadu' has
acquired extraordinary reputation and goodwill in the
State of Andhra Pradesh. The respondent company's
products and services are correlated, identified and
associated with the word `Eenadu' in the entire State of
Andhra Pradesh. `Eenadu' means literally the products or
C/AO/83/2022 ORDER DATED: 22/12/2022
services provided by the respondent company in the
State of Andhra Pradesh. In this background the appellant
cannot be referred or termed as an honest concurrent
user of the mark `Eenadu';
b) The adoption of the words `Eenadu' is ex facie
fraudulent and mala fide from the very inception. By
adopting the mark `Eenadu' in the State of Andhra
Pradesh, the appellant clearly wanted to ride on the
reputation and goodwill of the respondent company;
c) Permitting the appellant to carry on his business would
in fact be putting a seal of approval of the court on the
dishonest, illegal and clandestine conduct of the
appellant;
d) Permitting the appellant to sell his product with the
mark `Eenadu' in the State of Andhra Pradesh would
definitely create confusion in the minds of the consumers
because the appellant is selling Agarbathies marked
`Eenadu' as to be designed or calculated to lead
purchasers to believe that its product Agarbathies are in
fact the products of the respondent company. In other
words, the appellant wants to ride on the reputation and
goodwill of the respondent company. In such a situation,
it is the bounden duty and obligation of the court not only
to protect the goodwill and reputation of the respondent
company but also to protect the interest of the
consumers;
C/AO/83/2022 ORDER DATED: 22/12/2022
e) Permitting the appellant to sell its product in the State
of Andhra Pradesh would amount to encouraging the
appellant to practise fraud on the consumers;
f) Permitting the appellant to carry on his business in the
name of `Eenadu' in the State of Andhra Pradesh would
lead to eroding extra-ordinary reputation and goodwill
acquired by the respondent company over a passage of
time;
g) Appellant's deliberate misrepresentation has the
potentiality of creating serious confusion and deception
for the public at large and the consumers have to be
saved from such fraudulent and deceitful conduct of the
appellant.
h) Permitting the appellant to sell his product with the
mark `Eenadu' would be encroaching on the reputation
and goodwill of the respondent company and this would
constitute invasion of proprietary rights vested with the
respondent company.
i) Honesty and fair play ought to be the basis of the
policies in the world of trade and business."
(s) Laxmikant V. Patel v. Chetanbhai Shah and Others
reported in 2002 (24) PTC 1 (SC), wherein it is observed as
under:-
"8. It is common in the trade and business for a trader
or a businessman to adopt a name and/or mark under
C/AO/83/2022 ORDER DATED: 22/12/2022
which he would carry on his trade or business. According
to Kerly (Law of Trade Marks and Trade Names, Twelfth
Edition, para 16.49), the name under which a business
trades will almost always be a trade mark (or if the
business provides services, a service mark, or both).
Independently of questions of trade or service mark,
however, the name of a business (a trading business or
any other) will normally have attached to it a goodwill
that the courts will protect. An action for passing-off will
then lie wherever the defendant companys name, or its
intended name, is calculated to deceive, and so to divert
business from the plaintiff, or to occasion a confusion
between the two businesses. If this is not made out there
is no case. The ground is not to be limited to the date of
the proceedings; the court will have regard to the way in
which the business may be carried on in the future, and to
its not being carried on precisely as carried on at the date
of the proceedings. Where there is probability of
confusion in business, an injunction will be granted even
though the defendants adopted the name innocently.
9. It will be useful to have a general view of certain
statutory definitions as incorporated in the Trade Marks
Act, 1999. The definition of trade mark is very wide and
means, inter alia, a mark capable of being represented
graphically and which is capable of distinguishing the
goods or services of one person from those of others.
Mark includes amongst other things name or word also.
Name includes any abbreviation of a name.
C/AO/83/2022 ORDER DATED: 22/12/2022
10. A person may sell his goods or deliver his services
such as in case of a profession under a trading name or
style. With the lapse of time such business or services
associated with a person acquire a reputation or goodwill
which becomes a property which is protected by courts. A
competitor initiating sale of goods or services in the same
name or by imitating that name results in injury to the
business of one who has the property in that name. The
law does not permit any one to carry on his business in
such a way as would persuade the customers or clients in
believing that the goods or services belonging to
someone else are his or are associated therewith. It does
not matter whether the latter person does so fraudulently
or otherwise. The reasons are two. Firstly, honesty and
fair play are, and ought to be, the basic policies in the
world of business. Secondly, when a person adopts or
intends to adopt a name in connection with his business
or services which already belongs to someone else it
results in confusion and has propensity of diverting the
customers and clients of someone else to himself and
thereby resulting in injury.
11. Salmond & Heuston in Law of Torts (Twentieth
Edition, at p.395) call this form of injury as injurious
falsehood and observe the same having been awkwardly
termed as passing off and state:-
"The legal and economic basis of this tort is to provide
protection for the right of property which exists not in a
particular name, mark or style but in an established
C/AO/83/2022 ORDER DATED: 22/12/2022
business, commercial or professional reputation or
goodwill. So to sell merchandise or carry on business
under such a name, mark, description, or otherwise in
such a manner as to mislead the public into believing that
the merchandise or business is that of another person is a
wrong actionable at the suit of that other person. This
form of injury is commonly, though awkwardly, termed
that of passing off ones goods or business as the goods or
business of another and is the most important example of
the wrong of injurious falsehood. The gist of the
conception of passing off is that the goods are in effect
telling a falsehood about themselves, are saying
something about themselves which is calculated to
mislead. The law on this matter is designed to protect
traders against that form of unfair competition which
consists in acquiring for oneself, by means of false or
misleading devices, the benefit of the reputation already
achieved by rival traders."
12. In Oertli Vs. Bowman (1957) RPC 388, (at page 397)
the gist of passing off action was defined by stating that it
was essential to the success of any claim to passing off
based on the use of given mark or get-up that the plaintiff
should be able to show that the disputed mark or get-up
has become by user in the country distinctive of the
plaintiffs goods so that the use in relation to any goods of
the kind dealt in by the plaintiff of that mark or get up will
be understood by the trade and the public in that country
as meaning that the goods are the plaintiffs goods. It is in
the nature of acquisition of a quasi-proprietary right to the
C/AO/83/2022 ORDER DATED: 22/12/2022
exclusive use of the mark or get-up in relation to goods of
that kind because of the plaintiff having used or made it
known that the mark or get-up has relation to his goods.
Such right is invaded by anyone using the same or some
deceptively similar mark, get-up or name in relation to
goods not of plaintiff. The three elements of passing off
action are the reputation of goods, possibility of deception
and likelihood of damages to the plaintiff. In our opinion,
the same principle, which applies to trade mark, is
applicable to trade name.
13. In an action for passing off it is usual, rather
essential, to seek an injunction temporary or ad-interim.
The principles for the grant of such injunction are the
same as in the case of any other action against injury
complained of. The plaintiff must prove a prima facie
case, availability of balance of convenience in his favour
and his suffering an irreparable injury in the absence of
grant of injunction. According to Kerly (ibid, para 16.16)
passing off cases are often cases of deliberate and
intentional misrepresentation, but it is well-settled that
fraud is not a necessary element of the right of action,
and the absence of an intention to deceive is not a
defence though proof of fraudulent intention may
materially assist a plaintiff in establishing probability of
deception. Christopher Wadlow in Law of Passing Off
(1995 Edition, at p.3.06) states that the plaintiff does not
have to prove actual damage in order to succeed in an
action for passing off. Likelihood of damage is sufficient.
The same learned author states that the defendants state
C/AO/83/2022 ORDER DATED: 22/12/2022
of mind is wholly irrelevant to the existence of the cause
of action for passing off (ibid, paras 4.20 and 7.15). As to
how the injunction granted by the Court would shape
depends on the facts and circumstances of each case.
Where a defendant has imitated or adopted the plaintiffs
distinctive trade mark or business name, the order may
be an absolute injunction that he would not use or carry
on business under that name. (Kerly, ibid, para 16.97)."
(t) Satyam Infoway Limited v. Sifynet Solutions Pvt.
Ltd. reported in AIR 2004 SC 3540, wherein it is observed as
under:-
"13. The next question is would the principles of trade
mark law and in particular those relating to passing off
apply? An action for passing off. as the phrase "passing
off itself suggests, is to restrain the defendant from
passing off its goods or services to the public as that of
the plaintiff's. It is an action not only to preserve the
reputation of the plaintiff but also to safeguard the public.
The defendant must have sold its goods or offered its
service in a manner which has deceived or would be
likely to deceive the public into thinking that the
defendant's goods or services are the plaintiff's. The
action is normally available to the owner of a distinctive
trademark and the person who, if the word or name is an
invented one. invents and uses it. If two trade rivals claim
to have individually invented the same mark, then the
C/AO/83/2022 ORDER DATED: 22/12/2022
trader who is able to establish prior user will succeed. The
question is, as has been aptly put, who gets these first? It
is not essential for the plaintiff to prove long user to
establish reputation in a passing off action. It would
depend upon the volume of sales and extent of
advertisement.
14. The second element that must be established by a
plaintiff in a passing off action is misrepresentation by the
defendant to the public. The word misrepresentation does
not mean that the plaintiff has to prove any malafide
intention on the part of the defendant. Of course, if the
misrepresentation is intentional, it might lead to an
inference that the reputation of the plaintiff is such that it
is worth the defendant's while to cash in on it. An
innocent misrepresentation would be relevant only on the
question of the ultimate relief which would be granted to
plaintiff. What has to be established is the likelihood of
confusion in the minds of the public, (the word "public"
being understood to mean actual or potential customers
or users) that the goods or services offered by the
defendant are the goods or the services of the plaintiff. In
assessing the likelihood of such confusion the courts must
allow for the "imperfect recollection of a person of
ordinary memory".
15. The third element of a passing off action is loss or
the likelihood of it."
C/AO/83/2022 ORDER DATED: 22/12/2022
(u) Win Plast Limited v. Symphony Limited reported in
2016 (2) CCC 119, wherein it is observed as under:-
"25. It is required to be mentioned at this stage that in
the provisions of different laws for the intellectual
property rights like Copyright Act or Trade Marks Act,
there may be slight difference in the provisions. However,
as it is well accepted that a design on a wrapper or design
of a product may be registered under the Designs Act
with corresponding registration under the Copyright Act
also. Therefore, there may be an overlapping between the
remedies under different statutes and therefore when the
same category of product with piracy or imitation
suggesting infringement of the design or copyright or
trade mark, as the case may be, is apprehended, quai-
timet action could be brought in and it will be with
reference to the cause of action like sale of the goods or
launching of the product within the territorial jurisdiction
of a particular court. A useful reference can also be made
as to when a party can be said to have "carrying on
business" at a certain place. Therefore, considering the
provisions of CPC the suit would be maintainable in the
C/AO/83/2022 ORDER DATED: 22/12/2022
court and the observations and finding given by the
learned Single Judge could not be said to be erroneous."
(v) Lakme Limited v. Subhash Trading and Others
reported in 1996 (16) PTC 567 (Delhi), wherein it is
observed as under:-
"13. The two words with which we are concerned in the
present case although may convey a different meaning
and also not contain the same letters yet in my opinion,
both the words bear a close resemblance to the ears.
When both the words are articulated, it would be difficult
for an ordinary prudent man to distinguish between the
two sounds produced by the two words. Applying the test
of phonetic resemblance as laid down by the Supreme
Court I am of the view that there is a striking
resemblance between the two words and there is a real
danger of deception and confusion, being caused by the
marks in view of the similarity and affinity of sounds
between the words "LIKE ME" and "LAKME".
C/AO/83/2022 ORDER DATED: 22/12/2022
(w) Renaissance Hotel Holdings Inc. v. B.vijaya Sai and
Others reported in MANU/SC/0066/2022.
(x) The Gillete Company LLC v. Tigaksha Metallics
Private Limited reported in 2018 (75) PTC 314 (Delhi).
5. Per contra, learned advocate for the respondent has
vehemently submitted that the two trademarks are not
identical one. He has submitted that the Phonetic similarity is
lacking in this matter and, the trademark of the defendant is
not deceptively similar. He has referred to the definition of
trademark and has submitted that the near similarity is to be
considered and not the distant similarity. He has submitted
that there is no phonetic similarity between two marks of the
parties. He has submitted that if the pronunciation of the two
words is similar in that case only it could be considered that
two marks are phonetically similar. According to him, in the
present case, the trademark of the plaintiff would be different
in pronunciation from that of the defendant and, thus, there is
no phonetic similarity between two words. He has also
submitted that the word "Sim" is used generally as per the
search report, page 383, and it is used by industry for every
C/AO/83/2022 ORDER DATED: 22/12/2022
product and, therefore, the word "Sim" cannot be said to be
different and it can only be said to be a generic word. He has
submitted that when the word itself is used by everybody, it
would be generic and, therefore, by prefixing the only word
"sim" does not make a trademark separate and distinct from
the other word. He has submitted that when the two words are
not phonetically similar or there is no deceptive similarity
between two words, there is no need to refer to Section 28, 29
and 30 of the Trademarks Act, as the owner of respective
trademark would get similar protection under the Act. He has
also submitted that the page 51, and 52 of the paper book
depicts that these are the only labels and therefore, the
graphic of alphabet "S" is different and would not be seen by
the public at large in a minute manner. He has submitted that
simply because alphabet "S" is used, on the label, it does not
mean that two trademarks are deceptively similar. He has
submitted that considering the facts of the present case,
Section 17 of the Trademarks Act would apply.
5.1 He has also submitted that the defendant has not applied
for "sim" as a trademark and only made application for
trademark label. He has also submitted that "S" used in the
C/AO/83/2022 ORDER DATED: 22/12/2022
trademark of the defendant is different from that of the
plaintiff. He has also submitted that the alternative remedy
available to the plaintiff is to opposed the registration of the
defendant by applying to the trademark registry and that right
is available to the plaintiff. He has submitted that the learned
trial Court has properly considered all these aspects and has
not committed any error of law in rejecting the application of
interim injunction of the plaintiff. He has submitted that the
impugned order of the trial Court is not arbitrary or capricious,
this Court may not interfere with the impugned order only on
the basis that second view of the matter is possible. He has
submitted that considering the facts and circumstances of
present case, the impugned order is sustainable in the eyes of
law and present Appeal from Order be rejected. He has relied
upon the following decisions. Regarding the decisions cited by
the plaintiff, he has submitted that there are different factual
aspects in all those matter then the present case, and,
therefore, though the principles may be applicable generally
but considering the facts of present case, where both the
trademarks are not deceptively similar, the principles and
observations made in all those decisions are not applicable to
the facts of present case.
C/AO/83/2022 ORDER DATED: 22/12/2022
(i) Wander Limited and Others v. Antox India P.
Limited reported in 1990 (Supp) SCC 727, wherein it is
observed as under:-
"9. The appeals before the Division Bench were against
the exercise of discretion by the Single Judge. In such
appeals, the Appellate Court will not interfere with the
exercise of discretion of the court of first instance and
substitute its own discretion except where the discretion
has been shown to have been exercised arbitrarily, or
capriciously or perversely or where the court had ignored
the settled principles of law regulating grant or refusal of
interlocutory injunctions. An appeal against exercise of
discretion is said to be an appeal on principle. Appellate
Court will not reassess the material and seek to reach a
conclusion different from the one reached by the court
below if the one reached by the court was reasonably
possible on the material. The appellate court would
normally not be justified in interfering with the exercise
of discretion under appeal solely on the ground that if it
had considered the matter at the trial stage it would
have come to a contrary conclusion. If the discretion has
been exercised by the Trial Court reasonably and in a
judicial manner the fact that the appellate court would
have taken a different view may not justify interference
with the trial court's exercise of discretion. After referring
C/AO/83/2022 ORDER DATED: 22/12/2022
to these principles Gajendragadkar, J. in Printers (Mysore)
Private Ltd. v. Pothan Joseph:
... These principles are well established, but as has been
observed by Viscount Simon in Charles Osention & Co. v.
Johnston the law as to the reversal by a court of appeal
of an order made by a judge below in the exercise of his
discretion is well established, and any difficulty that
arises is due only to the application of well settled
principles in an individual case.
The appellate judgment does not seem to defer to this
principle."
(ii) Skyline Education Institute Pvt. Limited v.
S.L.Vaswani and Another reported in AIR 2010 SC 3221,
wherein it is observed as under:-
"16. The ratio of the above noted judgments is that once
the court of first instance exercises its discretion to grant
or refuse to grant relief of temporary injunction and the
said exercise of discretion is based upon objective
consideration of the material placed before the court and
is supported by cogent reasons, the appellate court will
be loath to interfere simply because on a de novo
consideration of the matter it is possible for the appellate
court to form a different opinion on the issues of prima
facie case, balance of convenience, irreparable injury
and equity."
C/AO/83/2022 ORDER DATED: 22/12/2022
(iii) Astrazeneca UK Limited and Another v. Orchid
Chemicals & Pharmaceuticals Limited reported in
2007 (34) PTC 469 (DB) (Delhi).
(iv) Cadila Healthcare Limited v. Swiss Pharma Pvt.
Ltd. and others reported in 2002 (24) PTC 708 (Guj)-
(2002) 2 GLR 1734.
(v) Burroughs Wellcome (I) Limited v. American Home
Products and Others reported in 2002 (25) PTC 747
(Bombay).
(vi) Cadila Healthcare Limited v. Speciality Meditech
Pvt. Ltd. And Others reported in (2010) 5 GLR 3742.
(vii) Indo-Pharma Pharmaceutical Works Limited V.
Citadel Fine Pharmaceuticals Limited reported in
AIR 1998 Mad. 347.
(viii) J.R.Kapoor v. Micronix India reported in 1994
Suppl. (3) SCC 215.
(ix) Johann A. Wulfing v. Chemical Industrial and
Pharmaceutical Laboratories Limited reported in
1984 (4) PTC 81 (Bom).
C/AO/83/2022 ORDER DATED: 22/12/2022
6. In rejoinder, learned advocate for the plaintiff has
submitted that according to the provisions of the trademark
Act, while considering the similarity of the two trademarks,
"likely to cause similarity" is also to be looked into. He has also
submitted that, therefore, the Court has to compare both the
trademarks as to whether there is any likelihood to cause
similarity to use of the similar words or not. He has also
submitted that the defence raised by the defendant regarding
applicability of Section 17 of the Trademarks Act is raised for
the first time in this appeal and it was not raised before the
trial Court and, therefore, it cannot be looked into at this stage.
He has also submitted that the judgments relied upon by other
side are all pertaining to the pharmaceutical products only,
whereas the parties in the present suit are dealing with
ceramic products and, therefore, those judgments are not
applicable to the facts of the present case.
6.1 He has also submitted that considering the facts of the
case, the provisions of Section 29 (5) of the Trademark Act
would be applicable. He has also submitted that the word
"Simero" is not similar in ceramic industries and, therefore, it
has distinct mark. He has submitted that considering the facts
C/AO/83/2022 ORDER DATED: 22/12/2022
and circumstances of the case, the present appeal from Order
be allowed by setting aside the impugned order of trial Court
and injunction against the defendant be granted.
7. At the outset, it needs to be observed that during the
course of arguments, learned advocates appearing for the
parties have relied upon number of authorities, which are
pertaining to well-known principles regarding infringement and
passing of under the Trademarks Act. This Court is guided by
the time bound principles laid down therein and the same are
considered while deciding this Appeal from Order. All the
authorities are not discussed in detail in this order.
8. It is well settled principle of law that in an appeal against
exercise of "discretion" by the Court of first instance, the
power of appellate Court to interfere with the exercise of
discretion is restrictive. Merely because on facts, the appellate
Court would have concluded differently from that of the Court
below, that would not, by itself, provide justification for
appellate Court to interfere. To justify interference, the
appellate Court would have to demonstrate that the discretion
has been shown to have been exercised arbitrarily or
C/AO/83/2022 ORDER DATED: 22/12/2022
capriciously or perversely or where the Court had ignored the
settled principles of law regulating grant or refusal of
interlocutory injunction. In appeal against the exercise of
discretion is an appeal in principles. In the case of Wardopn v.
Antrox India (supra) wherein it has been enumerated that the
appellate Court ought not to re-assess the material and seek to
reach a conclusion different from the one reached by the Court
below, if the one reached by that Court was reasonably
possible on the material. The appellate Court would normally
not be justified in interfering with the exercise of discretion
under appeal solely on the ground that if it had considered the
matter at the trial Court, it would have come to a contrary
conclusion. If the discretion has been exercised by the trial
Court reasonably and in judicial manner, the fact that the
appellate Court would have taken a different view, may not
justify interference with the trial Court's exercise of discretion.
9. In view of above settled principles of law, power of this
Court, as an appellate Court, to interfere with the order passed
by the trial Court is very limited and only in exceptional
circumstances, the appellate Court can interfere with the
discretionary order passed by the trial Court. The appellate
C/AO/83/2022 ORDER DATED: 22/12/2022
Court cannot re-evulate the entire evidence and arrive at a
conclusion contrary to the conclusion arrived at by the trial
Court. However, in case where the order passed by the trial
Court is found to be invalid, illegal, arbitrary, perverse or
contrary to the settled principles of law, the appellate court
has all powers to interfere with same. Considering the above
principles of law, this Court has only to see whether the trial
Court has committed any error in passing the impugned order.
It has also to see whether the main basic principle of law viz.
prima facie case, balance of convenience and irreparable loss
are satisfied or not in passing the order.
10. Keeping in mind the aforesaid principles of law, along
with the submissions made on behalf of both the sides,
coupled with the pleading of the parties and the materials
placed on record and the decisions cited at bar, it appears that
there is no dispute regarding the fact that both the parties are
dealing with the same product i.e. ceramic and they are also
operating in Morbi and both are having same class of
consumers and the market of the goods. Now, it emerges from
record that the trademark used by the plaintiff is "Simero",
whereas the trademark of the defendant is "Simora". Thus,
C/AO/83/2022 ORDER DATED: 22/12/2022
similarity of the two marks is prefix "sim", whereas words
"ero" and "ora" are following the word "sim". Except the prefix
"sim", there is phonetically no similarity between the "ero" and
"ora". Now, it is well settled principle of law that while
comparing two trademarks whole word has to be seen for
comparison and similarity of them needs to be considered
while deciding as to whether there is a similarity, which may
cause confusion in the minds of the public at large. It is also
well settled that similar or similarity or likelihood of similarity
can also be taken into consideration. Now, considering the two
words "Simero" and "Simora", it appears that except the
prefix, there is no similarity. Even phonetically both the words
are different from each other and there is difference in
pronunciation. That phonetically it is not similar. At this
juncture, definition of "Trademark" contained in Section 2 as
well as Section 17, 28, 29, 30 of the Trade Marks Act, 1999 are
required to be considered, which reads as under:-
"(zb) "trade mark" means a mark capable of being
represented graphically and which is capable of
distinguishing the goods or services of one person from
those of others and may include shape of goods, their
packaging and combination of colours; and--
C/AO/83/2022 ORDER DATED: 22/12/2022
(i) in relation to Chapter XII (other than section 107), a
registered trade mark or a mark used in relation to goods
or services for the purpose of indicating or so as to
indicate a connection in the course of trade between the
goods or services, as the case may be, and some person
having the right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used
or proposed to be used in relation to goods or services
for the purpose of indicating or so as to indicate a
connection in the course of trade between the goods or
services, as the case may be, and some person having
the right, either as proprietor or by way of permitted
user, to use the mark whether with or without any
indication of the identity of that person, and includes a
certification trade mark or collective mark;
.............
17. Effect of registration of parts of a mark.
(1) When a trade mark consists of several matters, its
registration shall confer on the proprietor exclusive right
to the use of the trade mark taken as a whole.
(2) Notwithstanding anything contained in sub-
section (1), when a trade mark--
(a) contains any part--
(i) which is not the subject of a separate application by
the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as
a trade mark; or
(b) contains any matter which is common to the trade or
is otherwise of a non-distinctive character,
the registration thereof shall not confer any exclusive
right in the matter forming only a part of the whole of the
trade mark so registered.
C/AO/83/2022 ORDER DATED: 22/12/2022
..............
28. Rights conferred by registration.
(1) Subject to the other provisions of this Act, the
registration of a trade mark shall, if valid, give to the
registered proprietor of the trade mark the exclusive
right to the use of the trade mark in relation to the goods
or services in respect of which the trade mark is
registered and to obtain relief in respect of infringement
of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given
under sub-section (1) shall be subject to any conditions
and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors
of trade marks, which are identical with or nearly
resemble each other, the exclusive right to the use of
any of those trade marks shall not (except so far as their
respective rights are subject to any conditions or
limitations entered on the register) be deemed to have
been acquired by any one of those persons as against
any other of those persons merely by registration of the
trade marks but each of those persons has otherwise the
same rights as against other persons (not being
registered users using by way of permitted use) as he
would have if he were the sole registered proprietor.
29. Infringement of registered trade marks.
(1) A registered trade mark is infringed by a person who,
not being a registered proprietor or a person using by
way of permitted use, uses in the course of trade, a mark
which is identical with, or deceptively similar to, the
trade mark in relation to goods or services in respect of
which the trade mark is registered and in such manner
C/AO/83/2022 ORDER DATED: 22/12/2022
as to render the use of the mark likely to be taken as
being used as a trade mark.
(2) A registered trade mark is infringed by a person who,
not being a registered proprietor or a person using by
way of permitted use, uses in the course of trade, a mark
which because of--
(a) its identity with the registered trade mark and the
similarity of the goods or services covered by such
registered trade mark; or
(b) its similarity to the registered trade mark and the
identity or similarity of the goods or services covered by
such registered trade mark; or
(c) its identity with the registered trade mark and the
identity of the goods or services covered by such
registered trade mark, is likely to cause confusion on the
part of the public, or which is likely to have an
association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2),
the court shall presume that it is likely to cause
confusion on the part of the public.
(4) A registered trade mark is infringed by a person who,
not being a registered proprietor or a person using by
way of permitted use, uses in the course of trade, a mark
which--
(a) is identical with or similar to the registered trade
mark; and
(b) is used in relation to goods or services which are not
similar to those for which the trade mark is registered;
and
C/AO/83/2022 ORDER DATED: 22/12/2022
(c) the registered trade mark has a reputation in India
and the use of the mark without due cause takes unfair
advantage of or is detrimental to, the distinctive
character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he
uses such registered trade mark, as his trade name or
part of his trade name, or name of his business concern
or part of the name, of his business concern dealing in
goods or services in respect of which the trade mark is
registered.
(6) For the purposes of this section, a person uses a
registered mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the
market, or stocks them for those purposes under the
registered trade mark, or offers or supplies services
under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or
in advertising.
(7) A registered trade mark is infringed by a person who
applies such registered trade mark to a material
intended to be used for labeling or packaging goods, as a
business paper, or for advertising goods or services,
provided such person, when he applied the mark, knew
or had reason to believe that the application of the mark
was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any
advertising of that trade mark if such advertising--
C/AO/83/2022 ORDER DATED: 22/12/2022
(a) takes unfair advantage of and is contrary to honest
practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade
mark consist of or include words, the trade mark may be
infringed by the spoken use of those words as well as by
their visual representation and reference in this section
to the use of a mark shall be construed accordingly.
Limits on effect of registered trade mark.
30. (1) Nothing in section 29 shall be construed as
preventing the use of a registered trade mark by any
person for the purposes of identifying goods or services
as those of the proprietor provided the use--
(a) is in accordance with honest practices in industrial or
commercial matters, and
(b) is not such as to take unfair advantage of or be
detrimental to the distinctive character or repute of the
trade mark.
(2) A registered trade mark is not infringed where--
(a) the use in relation to goods or services indicates the
kind, quality, quantity, intended purpose, value,
geographical origin, the time of production of goods or of
rendering of services or other characteristics of goods or
services;
(b) a trade mark is registered subject to any conditions or
limitations, the use of the trade mark in any manner in
relation to goods to be sold or otherwise traded in, in any
C/AO/83/2022 ORDER DATED: 22/12/2022
place, or in relation to goods to be exported to any
market or in relation to services for use or available for
acceptance in any place or country outside India or in
any other circumstances, to which, having regard to
those conditions or limitations, the registration does not
extend;
(c) the use by a person of a trade mark--
(i) in relation to goods connected in the course of trade
with the proprietor or a registered user of the trade mark
if, as to those goods or a bulk of which they form part,
the registered proprietor or the registered user
conforming to the permitted use has applied the trade
mark and has not subsequently removed or obliterated
it, or has at any time expressly or impliedly consented to
the use of the trade mark; or
(ii) in relation to services to which the proprietor of such
mark or of a registered user conforming to the permitted
use has applied the mark, where the purpose and effect
of the use of the mark is to indicate, in accordance with
the fact, that those services have been performed by the
proprietor or a registered user of the mark;
(d) the use of a trade mark by a person in relation to
goods adapted to form part of, or to be accessory to,
other goods or services in relation to which the trade
mark has been used without infringement of the right
given by registration under this Act or might for the time
being be so used, if the use of the trade mark is
reasonably necessary in order to indicate that the goods
or services are so adapted, and neither the purpose nor
the effect of the use of the trade mark is to indicate,
otherwise than in accordance with the fact, a connection
in the course of trade between any person and the goods
or services, as the case may be;
C/AO/83/2022 ORDER DATED: 22/12/2022
(e) the use of a registered trade mark, being one of two
or more trade marks registered under this Act which are
identical or nearly resemble each other, in exercise of
the right to the use of that trade mark given by
registration under this Act.
(3) Where the goods bearing a registered trade mark are
lawfully acquired by a person, the sale of the goods in
the market or otherwise dealing in those goods by that
person or by a person claiming under or through him is
not infringement of a trade mark by reason only of--
(a) the registered trade mark having been assigned by
the registered proprietor to some other person, after the
acquisition of those goods; or
(b) the goods having been put on the market under the
registered trade mark by the proprietor or with his
consent.
(4) Sub-section (3) shall not apply where there exists
legitimate reasons for the proprietor to oppose further
dealings in the goods in particular, where the condition of
the goods, has been changed or impaired after they have
been put on the market."
11. Now, considering the aforesaid provisions, it is crystal
clear that by virtue of registration of trademark, the registered
owner has every right to oppose the use of the same or similar
or deceptively similar trademark being used by other side.
However, when there are two different trademarks and are
registered then each owner of such registered trademarks has
C/AO/83/2022 ORDER DATED: 22/12/2022
equal right of using the same and it would be concurrent use of
that trademark. Therefore, the provisions of Section 28, 29 and
30 would be applicable to both the sides. However, in the
present case, the defendant has raised defence under Section
17 of the Trademarks Act. Of course, it was not raised before
the trial Court but this being a continuous proceeding from the
suit and it is an appellate forum, a legal point can be raised at
any point time. Therefore, submissions made on behalf of the
plaintiff that the defendant has first time raised this point of
defence of under Section 17 need not be taken into
consideration at this appellate stage is devoid of merits.
12. Now, considering the provisions of Section 17, it clearly
provides that when the trademark consists of several matters,
its registration was conferred on the proprietor, exclusive right
to use of the trademark be taken as a whole. However, as per
Sub-section (2) thereof, proviso has been carved out to the
effect that when a trademark contains any part, (i) which is not
subject of a separate application by the proprietor for
registration as a trademark; or (ii) which is not separately
registered by the proprietor as a trademark; or (b) contains
any matter which is common to the trade or is otherwise of a
C/AO/83/2022 ORDER DATED: 22/12/2022
non-distinctive character, the registration thereof shall not
confer any exclusive right in the matter forming only a part of
the whole of the trademark so registered. Therefore, by
registration of the trademark by the plaintiff, containing "sim"
does not ipso facto give any right to the plaintiff regarding this
alphabets. In the same manner, the defendant also does not
have any right for the use of these alphabets.
13. Considering the material placed on record, it clearly
appears that the alphabets "sim" are used for many other
products and it appears that the alphabets "sim" is generic
and used at large. Therefore, merely there is prefix of
alphabets/words "sim" in the trademark of the plaintiff as well
as the defendant. That it has not given any exclusive right to
both the parties. On comparison of the trademarks of both the
parties, it clearly appears that it is not phonetically same nor it
is similar or deceptively similar. On perusal of the impugned
order of the trial Court, it appears that the trial Court has
considered this aspect while rejecting the application of the
plaintiff. The view taken by learned trial Court is plausible one.
Therefore, considering limited jurisdiction of this Court in
interfering with order of the trial Court and considering the
C/AO/83/2022 ORDER DATED: 22/12/2022
material placed on record, this Court is of the considered
opinion that the order of the trial Court is sustainable in the
eyes of law and no interference is required at the hands of this
Court.
14. In view of above, present Appeal from Order is liable to
be dismissed. Accordingly, this Appeal from Order is dismissed.
Impugned order dated dated 3.1.2022, passed below Exh.5 in
Trade Mark Suit No.1 of 2017 by the learned 2 nd Additional
District Judge at Morbi, is hereby confirmed. In view of
dismissal of Appeal from Order, Civil Application for stay is
disposed of. No order as to costs.
(DR. A. P. THAKER, J)
R.S. MALEK
