N Dinesh Kumar vs Shweta Khandelwal
2021 Latest Caselaw 1737 Kant

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  IN THE HIGH COURT OF KARNATAKA AT BENGALURU

       DATED THIS THE 15TH DAY OF MARCH, 2021

                        BEFORE

       THE HON'BLE MR. JUSTICE P. KRISHNA BHAT

       MISCELLANEOUS FIRST APPEAL No. 790/2021


BETWEEN :

N.DINESH KUMAR
S/O N RAM DINESH KUMAR
AGED ABOUT 40 YEARS
PROPRIETOR OF MATRUVEDA HERBALS
HAVING REGISTERED OFFICE
AT PNR COLONY
JANACHAITANYA LAYOUT
SY NO-33/1, 34, NEAR AMMENPUR
BAHADURPURA
HYDRABAD - 502032
TELANGANA.
                                        ...APPELLANT

(BY SRI RAMAKRISHNA.N, ADVOCATE.)

AND:

SHWETA KHANDELWAL
AGED ABOUT 50 YEARS
PROPRIETRIX OF MATRU HERBALS
HAVING REGISTERED OFFICE AT NO-109
ANSAL KRSNA-I, NO-23, HOSUR ROAD
ADUGODI, BENGALURU - 560030.
                                     ... RESPONDENT

(BY SRI NISCHAL DEV B. R)
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      THIS MISCELLEANEOUS FIRST APPEAL IS FILED UNDER
ORDER 43 RULE 1(r) OF CPC, AGAINST THE ORDER DATED
21.12.2020 PASSED ON I.A.NOS.2, 3 AND 4 ON
OS.NO.6811/2019 ON THE FILE OF THE XVIII ADDITIONAL
CITY CIVIL JUDGE, BENGALURU (CCH NO.10), ALLOWING
THE I.A.NO.2 TO 4 FILED UNDER ORDER 39 RULE 1 AND 2
R/W SECTION 151 OF CPC.

     THIS MISCELLEANEOUS FIRST APPEAL HAVING
BEEN HEARD ON ADMISSION AND RESERVED ON
08.03.2021, COMING ON FOR PRONOUNCEMENT OF
JUDGMENT, THIS DAY, THE COURT DAY DELIVERED
THE FOLLOWING:

                        JUDGMENT

This is a miscellaneous first appeal filed under Order XLIII

Rule 1(r) of the Code of Civil Procedure, 1908 ('CPC', for brevity)

calling in question the legality and correctness of the order dated

21.12.2020 on I.A.Nos.2 to 4 filed by the respondent herein in

O.S.No.6811/2019 passed by the learned XVIII Additional City

Civil Judge (CCH No.10) Bengaluru City.

2. The defendant is the appellant and the plaintiff is

the respondent herein. During the course of this judgment,

parties shall be referred to as per their ranks before the Court

below.

3. The plaintiff in the suit in O.S.No.6811/2019 has

contended that she is doing business under the name 'Matru

Ayurveda' and the defendant is doing business under the name

'Matruveda'. She further contended that the trademark of the

defendant is so deceptively similar to the trade mark of plaintiff

that in spite of she having established her business ever since

the year 2015 on the strength of her trademark 'Matru

Ayurveda', on account of the defendant starting his business

subsequently in the year 2018 with his trademark 'Matruveda',

her established customers got deceived and on account of same,

she has suffered huge losses in the business and therefore, she

prayed for a decree of permanent injunction to restrain the

defendant from infringing plaintiff's established registered

trademark 'Matru Ayurveda' by using the offending trademark

'Matruveda' in the preparation, sale and distribution of herbal

products or by using any other mark in respect of such products

that is deceptively similar to the plaintiff's well established and

registered trademark 'Matru Ayurveda'.

4. In the said suit, the plaintiff has filed applications

viz., I.A.Nos.2 to 4 under Order XXXIX Rule 1 and 2 of CPC and

upon the defendant filing his objections and after hearing, the

learned Court below has allowed the applications by order dated

21.12.2020 granting temporary injunction restraining the

defendant from infringing and passing off of the plaintiff's

registered trademark and trade name 'Matru Ayurveda' by using

the offending trademark 'Matruveda' in the preparation, sale and

distribution of herbal products or by using any other mark in

respect of such other products that is deceptively similar to the

trademark of the plaintiff's mark 'Matru Ayurveda' during the

pendency of the suit. Being aggrieved by the said order, the

defendant has filed the above appeal.

5. I have heard the learned counsel on both sides and I

have perused the appeal papers, documents produced along

with the same and list of authorities produced by both the sides.

6. The learned counsel for the defendant/appellant

contended that the learned Court below has fallen into an error

in coming to the conclusion that trade mark of the defendant is

deceptively similar to the trademark of the plaintiff. He further

submitted that the plaintiff had started her business under the

trade name and trademark 'Matru Ayurveda' which is laid inside

a logo and similarly, the defendant had started his business

under the trade name 'Matruveda' with a logo and there is no

such resemblance between the same as will lead any purchaser

of the products of either parties to confuse between the same.

The learned counsel for the defendant also contended that he

had no opportunity of producing documents in support of his

stand that the trademark of the defendant is not deceptively

similar to the trademark of the plaintiff and further that there

were several manufacturers who are using trademarks closely

similar to the trademark of the plaintiff and the defendant with

the prefixes 'Matru'. In support of his contentions, he has placed

reliance on the following decisions:

i. MERCK KGAA Vs. GALAXY HOMPRO - 2012(5) ILR (DELHI) 1.

ii. M/s. THIRU VALLUVAR MODERN RICE MILL (A PARTNERSHIP FIRM) Vs. R.B.CHIDAMBARASAMY - 2018 (73) PTC 149.

iii. SHREE BALAJI CHEMICALS SAFIDON AND OTHERS Vs. BALDEV RAJ GIRIDHAR AND OTHERS - 2016 (3) PLR 261.

7. Per contra, the learned counsel appearing for the

plaintiff contended that the trademark got registered by the

defendant is subsequent to the registration of the trademark of

the plaintiff. He submitted that plaintiff is a well established

business woman who has been marketing her products ever

since the year 2015 and the defendant had started his business

only in year 2018. He further contended that on account of the

close resemblance of the trademark of the defendant with that of

the plaintiff, business of the plaintiff has been affected

drastically and therefore, the defendant is liable to be injuncted

from carrying on his business under the trademark 'Matruveda'.

He submitted that the learned trial Court has considered the

entire aspect of the matter and since the order of the learned

Court below is a discretionary one, this Court should not

interfere with such an order only because another view can be

taken on the same material. In support of his contention, he has

placed reliance on several decisions which are as follows:

i. PARLE PRODUCTS Vs. J.P. AND CO., - (1972) 1 SCC

618.

ii. LAXMIKANT PATEL Vs. CHETANBHAI SHAH, - (2002) 3 SCC 65.

iii. S.SYED MOHIDEEN Vs. SULOCHANA BAI, - (2016) 2 SCC 683.

iv. WANDER LTD. Vs. ANTOX INDIA - (1990) SUPP SCC

727.

v. GUJARAT BOTTLING CO. Vs. COCA COLA CO., - (1995) 5 SCC 545.

vi. COLGATE PALMOLIVE INDIA LTD. Vs. HINDUSTAN LEVER LTD., - (1999) 7 SCC 1.

vii. MEX SWITCHGEARS PVT. LTD. Vs. MAX SWITHGEARS PVT. LTD., - 2014 SCC ONLINE DEL 854.

viii. MONTBLANC SIMPLO-GMBH Vs. NEW DELHI STATIONERY MART - 2008 (38) PTC 59 (DEL).

ix. MARVEL TEA ESTATE Vs. NUSUN GENETIC RESEARCH - 2012 SCC ONLINE DEL 3330.

8. Perusal of the documents produced prima facie

show that the defendant got his trademark registered on

05.10.2018 and he had been doing business on the said

trademark ever since 16.04.2018 in herbal supplements. His

trademark is 'Matruveda' with two leaves spread afar inside a

circle. The plaintiff got her trademark registered on 19.12.2018

with the trade name 'Matru Ayurveda' and she has been doing

business on the said trade mark since 2015. It has a logo within

a circle with 'Matru Ayurveda' written in a stylized manner below

the image of two intertwined leaves on a yellow background

encircled by a gold and red rings. The entire image was set on a

pale green background with images of leaves of a darker shade

of green.

9. The sole question which fell for consideration before

the Court below was 'Whether the trade mark of the defendant

was deceptively similar to the trade mark of the plaintiff ?'

10. Unfortunately, as is disclosed from the order of the

learned Court below, it has entirely misdirected itself on a

question of law by addressing itself on the alleged existence of

similarity between the trade name of the plaintiff and that of the

defendant. The relevant portion of the order reads as follows:

"10. ...... On perusal of the tradename of plaintiff and defendant, it appears that both the marks are phonetically and deceptively similar. ....."

11. Meaning and purpose of trade mark has been

explained by the Hon'ble Supreme Court:

"36. ......... A trade mark is meant to distinguish the goods made by one person from those made by another. A trade mark, therefore, cannot exist in vacuo. It can only exist in connection with the goods in relation to which it is used or intended to be used. Its object is to indicate a connection in the course of trade between the goods and some person having the right to use the mark either with or without any indication of the identity of that person. Clause (v)of Section 2(1) which defines the expression "trade mark" makes this abundantly clear. Trade marks became important after the industrial revolution as distinguishing goods made by one person from those made by another; and soon the need was felt to protect traders against those who were unauthorisedly using their marks and accordingly registration of trade marks was introduced in England by the Trade Marks Registration Act, 1875, which was soon replaced by more detailed and advanced legislation. When a person gets his trade mark registered, he acquires valuable rights by reason of such registration. Registration of his trade mark gives him the exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person using a mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain injunction, damages or an account of profits made by the other person. In such an action the registration of a trade mark is prima facie evidence on its validity. After the expiry of seven years from the date of the registration, a trade mark is to be valid in all respects except in the three cases set out in Section 32. ........."

See para 36 of American Home Products Corporation Vs. Mac Laboratories Pvt. Ltd. and another, (1986) 1 SCC 465.

12. As could be made out from Section 2(1)(zb) of the

Trade Marks Act, 1999, the 'trademark' is totally different from

the trade name. There could be cases where trade name is also

the trade mark but, in very many cases it may not be so.

Insofar as the present case is concerned, the 'trade name' is set

inside the 'trademark', in both the cases, inside a circle with the

trademark of the defendant being two leaves spread afar and in

the case of the plaintiff two leaves intertwined to each other. In

this case, there cannot be any dispute that trade names are only

a part of the composite whole of the trade mark. In a case of this

nature, the main question that arises for consideration is,

Whether there is likelihood of confusion arising between the two

trademarks, in the mind of a 'quintessential common man' who

looks at any one of them for a fleeting second and whether he is

likely to take it for the other trade mark ? This 'quintessential

common man' is neither blessed with the wisdom of Solomon

nor the trained eyes of Sherlock Holmes. There should be

present in the mind of the trial Court this important aspect that

where there is/are a common element/elements in the marks of

plaintiff and defendant which is also contained in a number of

other marks in use in the same market, whether such a

common occurrence in the market tends to cause purchasers to

pay more attention to the other features of the respective marks

and to distinguish between them by those features. Application

of this principle however depends on defendant successfully

showing before the Trial Court that the marks containing the

common element/elements are in fairly extensive use in the

market in which the marks of the plaintiff and defendant are

being used. (see In re: Harrods' Application case referred to in

paras 14 and 15 of Corn Products Refining Company Vs.

Shangrila Food Products Ltd. reported in AIR 1960 SC 142).

13. It is to be noticed that it is the contention of learned

counsel for the defendant that there are several other products

in the same market produced by various manufacturers who are

also adopting the trade name with suffixes and prefixes

including the terms 'Matru' and 'Veda' which according to him

are generic terms. Is not the 'trademark' all about artistic work,

design and get up ? And, how is the Court before whom a

dispute is raised by a plaintiff that the mark of the defendant is

deceptively similar to the one which is her established mark to

decide whether it is really so. Certainly not by a method which

involves placing the rival marks side by side. For, Court should

have in mind, not the proverbial Sherlock Holmes, but the

'quintessential common man' who goes to the neighbourhood

shop with the idea of purchasing a product of his liking - or,

rather the liking of his grand-daughter - which he had

purchased only a week ago, and because of the gift of his

humdrum existence has only an imperfect recollection of the

imprint of the package. Has not the Hon'ble Supreme Court

said "........ in order to come to the conclusion whether one mark

is deceptively similar to another, the broad and essential

features of the two are to be considered ....... " [Ref: para 9 of

Parle Products (P) Ltd. Vs. J.P. and Company, Mysore, reported

in (1972) 1 SCC 618]. The impugned order is totally bereft of

any discussion on the same. Absent such discussion, weight of

authorities dictate that the impugned order be characterized as

perverse and, resultantly, it is liable to be set aside. Hence, the

following :

ORDER

The impugned order dated 21.12.2020 on I.A.Nos. II to IV

in O.S.No.6811/2019 passed by the learned XVIII Additional

City Civil Judge (CCH No.10) Bengaluru City, is set aside with a

direction to the learned Court below to hear and dispose of the

applications afresh by giving opportunity to both the sides and

in accordance with law.

Sd/-

JUDGE

RB/mgn