Madras High Court
M/S.Freeelective Network ... vs M/S.Matrimony.Com. Limited on 17 November, 2021
C.S.(Comm. Div.)No.122 of 2021
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Judgment reserved on 29.04.2022
Judgment pronounced on 14.07.2022
CORAM
The Hon'ble Mr. Justice SENTHILKUMAR RAMAMOORTHY
Civil Suit(Comm.Div) No.122 of 2021
and
O.A.Nos.826 & 828 of 2021 and A.No.442 of 2022
M/s.FreeElective Network Private Limited,
2, Thomas Nagar, 2nd Floor,
Little Mount, Saidapet,
Chennai - 600 015.
Rep. by its Director S.Anilkumar ... Plaintiff
vs.
M/s.Matrimony.com. Limited
No.94, TVH Belicia Towers,
Tower 2, 10th Floor, MRC Nagar,
Mandaveli, Chennai – 600 028. ... Defendant
The suit is filed under Order VII Rule 1 CPC and Order IV Rule 1
of O.S. Rules R/W Sections 27, 28, 29,134, and 135 of the Trademarks
Act,1999 praying for a permanent injunction restraining the Defendant, by
itself, its directors, men, servants, agents, representatives or anyone claiming
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C.S.(Comm. Div.)No.122 of 2021
through or under them from in any manner infringing the Plaintiff's
registered trademark Jodi365 under No.1971072 in Class 99 and other
registered trademarks by using a deceptively similar trademark Jodii or any
other trademark deceptively similar to the Plaintiff's registered trademark or
in any other manner whatsoever; (b) a permanent injunction restraining the
Defendant, by itself, its directors, men, servants, agents, representatives or
anyone claiming through or under them from in any manner passing off
and/or enabling others to pass off the Defendant's services of
software/website/mobile applications or any other Internet-related services or
offline matchmaking services under the trademark Jodii as and for the
Plaintiff's services by using, offering for sale, displaying, printing,
advertising their services with a trademark Jodii or any other trademark
identical or deceptively similar with that of the Plaintiff's Jodi365 or in any
other manner whatsoever; (c) the Defendant be ordered to surrender to
Plaintiff for destruction of all materials, brochures, screen prints, packing
materials, advertising materials, and other materials, including on the
Internet, bearing the trademark Jodii or any mark deceptively similar to
Plaintiff's trademark Jodi365; (d) damages to the tune of Rs.1,00,00,000/-
and for costs of the suit.
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C.S.(Comm. Div.)No.122 of 2021
For Plaintiff : Mr.R.Sathish Kumar
For Defendant : Mr.P.S.Raman, Senior Advocate
for M/s.Arun C.Mohan
JUDGMENT
The suit was filed as a rolled-up action for injunctive relief in
respect of alleged trademark infringement and passing off. Ancillary and
consequential remedies of surrender of infringing materials for destruction
and damages of Rs.1,00,00,000/- were also claimed.
2. The Plaintiff stated the following. It was incorporated in March
2010, as a fully owned subsidiary of FreeElective LLC, to provide a range of
services such as matchmaking and matrimonial services. In course of
business, the Plaintiff adopted the trademarks “Jodi365” and “Peepul365” in
the year 2009 for its flagship matchmaking platform and complementary
wedding planning market network, respectively. Upon adopting the
trademark Jodi365, a single multi-class application under class 99 for
registration thereof under Classes 35, 38, 41 was submitted. Class 35
covers the services of advertising, computer databases, data search in
computer files, etc.; Class 38 covers telecommunications, communications
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by computer terminals, computer aided transmission of messages and
images, etc.; and Class 41 covers education, providing of training and
cultural activities, entertainment, education information, gaming, and
publication of texts, etc. The registration was granted with effect from
26.05.2010 and is valid and subsisting up to 26.05.2030 after having been
renewed for 10 years with effect from 26.05.2020. The device mark
“Jodi365” has been used from the year 2009 honestly, openly and
continuously. In the said device mark, the word “Jodi” is the distinguishing,
prominent and essential feature. The Plaintiff's total revenue for the year
ended March 2020 was Rs.31,28,190/-, as per the audited financial
statement, and Rs.16,07,231/- for the year ended 31.03.2021 as per the
provisional financial statement. It incurred advertising expenditure of about
Rs.30 lakhs since December 2019 for advertising on Facebook. It launched a
mobile application (app) version of “Jodi365”, which is available on the
Google Play Store since January 2020, and more than 50,000 users had
downloaded the said app. By relying upon press and media coverage in
relation thereto, the Plaintiff further stated that its trademark has acquired
considerable reputation and goodwill in the market.
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3. In or about October 2021, the Plaintiff stated that it came to
know that the Defendant had launched a mobile app under the name “Jodii”.
The Plaintiff alleged that the Defendant placed advertisements online
targeting the Plaintiff's registered trademark on its website. Therefore, the
Plaintiff asserted that the Defendant is fully aware of the Plaintiff's website
and mobile app. Consequently, it is further alleged that the Defendant's
actions are mala fide. Immediately upon discovering the Defendant's
dishonest adoption of the infringing mark “Jodii”, the Plaintiff issued a cease
and desist notice on 02.11.2021. By reply dated 17.11.2021, the Defendant
stated that the Plaintiff is not entitled to monopolize the word “Jodi”. On the
basis that both the Plaintiff and Defendant are engaged in the provision of
substantially similar services and that the Plaintiff is the prior user of the
registered trade mark “Jodi365”, the present suit was filed.
4. The Defendant refuted the above averments and allegations by
filing a written statement. The Defendant stated that it is the registered
proprietor of the mark ''BHARATMATRIMONY'' and other allied marks,
which have been used from the year 1999. According to the Defendant, the
mobile app “Jodii” was launched in October 2021 under the Defendant's
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house mark ''BHARATMATRIMONY''. The Defendant stated that the
application is in Tamil and that the word “Jodi” directly refers to the nature
and purpose of services offered. According to the Defendant, the Plaintiff
has a registration in respect of the device mark ''Jodi365'' and not in respect
of the word “Jodi”. Consequently, by virtue of such registration, the Plaintiff
is not entitled to a monopoly over the word “Jodi” or any variant thereof.
The Defendant asserted that the device marks of the Plaintiff and the
Defendant are not even remotely similar. The Defendant further stated that
several other entities use the word “Jodi” as part of applications in relation to
matchmaking or dating services. For such purpose, the Defendant has
included a table containing relevant particulars in paragraph 15 of the
written statement. Similarly, at paragraph 16 of the written statement, the
Defendant has provided details of several websites which use the word
“Jodi”.
5. Upon considering the pleadings and documents, the following
issues were framed:
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1)Whether the Plaintiff is the registered
proprietor of the trademark JODI365 label under
No.1971072 in Class 99?
2) Whether the Defendant's trademark JODII
is deceptively similar to the Plaintiff's trademark
JODI365?
3)Whether the Plaintiff can claim
infringement of its registered trademark JODI365 by the
Defendant's use of the trademark Jodii?
4) Whether the Plaintiff can claim passing off
against the Defendant by the use of the trademark Jodii?
5) Whether the Plaintiff is entitled to the relief
of damages against the Defendant?
6) Whether the parties are entitled to any
other relief?
6. By order dated 11.02.2022, it was recorded that the parties do
not propose to adduce oral evidence. The Plaintiff filed 14 documents.
Therefore, the Plaintiff's documents were marked as Exs.P1 to P14.
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Similarly, the Defendant filed 14 documents, which were marked as Exs.D1
to D14.
7. Oral arguments were advanced on behalf of the Plaintiff by
Mr.R.Sathish Kumar, learned counsel, and on behalf of the Defendant by
Mr.P.S.Raman, learned senior counsel, assisted by Mr.Arun C.Mohan,
learned counsel. Both parties also submitted written arguments.
8. Learned counsel for the Plaintiff contended that the Plaintiff
has used the mark “Jodi365” from the year 2009 onwards. The domain
name was registered through a domain name registrar as
jodi365.com(Ex.P1). Shortly after adopting the mark, the Plaintiff applied
for and obtained registration under Class 99 as a single, multi-class
application for Classes 35, 38 and 41(Ex.P2). The registration was duly
renewed for a further period of 10 years from 26.05.2020 up to
26.05.2030(Ex.P3). Ever since, the Plaintiff contended that the trademark
has been used honestly, openly and continuously. By pointing out that the
word “Jodi365”, including minor variations thereto, when keyed-in on
Google triggers the Defendant's advertisements, it was contended that the
Defendant not only has prior knowledge of the Plaintiff's trademark but is
dishonestly and consciously attempting to divert the Plaintiff's customers,
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both potential and actual, to its app or website. Learned counsel pointed out
that a cease and desist notice dated 02.11.2021(Ex.P12) was issued
immediately upon discovering the use of the infringing mark “Jodii” by the
Defendant. In spite of putting the Defendant on notice at the earliest point
of time, the Defendant, by reply dated 17.11.2021(Ex.P13), contended that
the Plaintiff is not entitled to protect the mark “Jodi365” and that the
Defendant's mark is visually and phonetically different from the Plaintiff.
With regard to the contention that the Plaintiff is not entitled to claim
protection as regards the word “Jodi”, learned counsel contended that the
Plaintiff is seeking protection for the device mark “Jodi365” of which the
word “Jodi” is a prominent and essential feature. By referring to the use of
the mark “Jodii” by the Defendant and the endeavour to register the same,
learned counsel contended that an estoppel operates against the Defendant
from contending the the element “Jodi” is not distinctive. Learned counsel
As regards the other users of the mark, it was submitted that Plaintiff is the
first user of the mark and that all the other users are subsequent. Besides,
the use of the infringing mark by others does not absolve the Defendant of
liability for infringement. By referring to precedent, he also contended that
the “big fish should not allowed to swallow the small fish”.
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9. As regards the defence that exclusivity cannot be claimed over
one of the elements of a composite mark, the Plaintiff contended that Section
17 of the Trade Marks Act, 1999 (the Trade Marks Act) would constitute a
defence only if exclusivity is claimed over the word “Jodi”, whereas the
Plaintiff claims exclusivity over the device mark “Jodi365” and that the use
of the word “Jodii” by the Defendant is infringing and amounts to passing
off because such mark is deceptively similar to the device mark “Jodi365”.
Learned counsel relied upon Section 38 of the Specific Relief Act, 1963 (the
Specific Relief Act) and pointed out that the requirements for the grant of
permanent injunction under Section 38 thereof are different from the
requirements under Order XXXIX, Rules 1 and 2 of the Code of Civil
Procedure, 1908 (the CPC). In specific, Section 38 enables an aggrieved
plaintiff to seek a permanent injunction subject to the requirements of
Chapter VIII of the Specific Relief Act. Such an injunction may be granted
where there exists no standard for ascertaining the actual damages caused or
likely to be caused by the invasion of the plaintiff's right or where the
invasion is such that compensation in money would not constitute adequate
relief. He contended that the suit satisfies all the requirements of Sections
38 and 40 of the Specific Relief Act and that none of the circumstances
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specified in Section 41 operate so as to deny the relief of injunction to the
Plaintiff. By referring to and relying upon Section 29(3) of the Trade Marks
Act, he also contended that the Plaintiff is entitled to the presumption of
confusion since both the Plaintiff and Defendant provide substantially
similar services and the marks are near-identical. As regards the claim for
damages, learned counsel contended that damages cannot be proved in
matters of this nature and, therefore, the Court should exercise judicial
discretion in awarding reasonable compensation.
10. In support of these contentions, learned counsel for the
Plaintiff referred to and relied upon the following judgments:
(i) B.K. Engineering Co. v. U.B.H.L. Enterprises (Regd) &
Another, 1985 Arb LR 269.
(ii) Automatic Electronic Limited v. R.K.Dhawan and Another,
1999 SCC Online Del 27.
(iii) Laxmikant V. Patel vs. Chetanbhai Shah and another, (2002)
3 SCC 65.
(iv) Satyam Infoway Ltd v. Sifynet Solutions Pvt Ltd, 2004 (28)
PTC 566 (SC) (Satyam Infoway)
(v) Central Park Estates Pvt Ltd and others v. Godrej Skyline
Developers Private Limited and Another(Central Park Estates), 2019 SCC
OnLine Del 11580
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(vi) Dhariwal Industries Ltd. and another v. M/s.M.S.S. Food
Products, AIR 2005 SC 1999.
(vii) Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd
(Cadila), AIR 2000 SC 1952.
(viii) Pidilite Industries Limitted v. Jubilant Agri & Consumer
Products Limited (Pidilite Industries), 2014 (57) PTC 617.
11. In response to the above contentions, learned senior counsel
for the Defendant contended that the Plaintiff's registration is in respect of a
device mark. The said device mark consists of the alpha-numeric element
“Jodi365” and a non-alpha numeric element. Both the alphabetic sub-
element element “Jodi” and the numeric sub-element “365” are descriptive.
In fact, the Defendant contended that these are conspicuously descriptive in
the context of a matrimonial website inasmuch as the word Jodi means pair
or match and the numeral 365 represents the number of days in a year.
Consequently, the Defendant contended that such a mark is entitled to the
lowest degree of protection. Even if there is a small variation in the
Defendant's mark, the Plaintiff is not entitled to relief.
12. Learned senior counsel further contended that there are
several marks which use the word “Jodi”, including in relation to
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matchmaking or matrimonial services. Therefore, the Plaintiff is not entitled
to relief since the mark is common to the trade and qualifies as publici juris.
It was pointed out that Google runs an AdWord programme in which various
words are auctioned. One of the words being auctioned is “Jodi”. Since the
word “Jodi” is descriptive of the nature of the services, no entity, including
the Plaintiff, is entitled to claim monopoly over such word. The Defendant is
an entity with tremendous reputation in the matrimonial services business
and there is no likelihood of confusion because the Defendant's registered
mark ''BHARATMATRIMONY''(Exs.D1 and D2) is mentioned in the
website. In support of these contentions, learned senior counsel for the
Defendant referred to and relied upon the following judgments:
(i) Ultratech Cement Limited v. Dalmia Cement Industries
Limited, 2016 (67) PTC 314.
(ii) S.N.R. Dhall Mill v. Kaleesuwari Refinary Private Limited,
2021 SCC Online Mad 1675.
(iii) People Interactive (India) Private Limited v. Vivek Pahwa
and others, MANU/MH/1661/2016.
(iv) Consim Info Ltd. v. Google India Pvt. Ltd(Consim Info),
2010 (6) CTC 813.
(v) Consim Info Pvt. Ltd. v. Google India Pvt Ltd, 2012 (5) LW 1.
(vi) Matrimony. Com Ltd v V.Kalyan Jewellers India Ltd and
others, MANU/TN/2685/2026.
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(vii) P.M.Palani Mudaliar & Co v. M/s.Jansons Exports and
another (Palani Mudaliar), 2017 SCC Online Mad 1090.
Issue Nos.1, 2 and 3:
13. Issue Nos.1 to 3 relate to whether the Plaintiff is the registered
proprietor of the trademark “Jodi365”, whether the Defendant's mark “Jodii”
is deceptively similar to the Plaintiff's trademark and whether the Plaintiff is
entitled to relief in respect of infringement by the Defendant. These issues
are closely inter-related and are dealt with jointly. The Plaintiff exhibited the
Trademark registration certificate as Ex.P2. The said registration is in
respect of the device mark. The registration is with effect from 26.05.2010.
The annexure thereto discloses that the registration is in Classes 35, 38 and
41. Class 35 covers the service of advertising, computer databases, data
search in computer files, etc. Class 38 covers telecommunications,
communications by computer terminals, computer aided transmission of
messages and images, etc. Class 41 covers education, providing of training
and cultural activities, entertainment, education information, gaming, and
publication of texts, etc. The Plaintiff has also produced the renewal
certificate, which was exhibited as Ex.P3. The said renewal certificate
evidences that the registration is valid for a period of 10 years from
26.05.2020. Thus, the undoubted position is that the Plaintiff is the
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registered proprietor of the device mark “Jodi365”. Till date, it appears that
there is no proceeding for rectification at the instance of the Defendant or
any other person. The Plaintiff has filed a Chartered Accountant's certificate
as Ex.P5 in respect of its annual revenue for the financial years ended
31.03.2014 to 31.03.2020.
14. Immediately upon discovering the Defendant's use of the
allegedly infringing mark “Jodii”, the Plaintiff issued a cease and desist
notice dated 02.11.2021, which was exhibited as Ex.P12. Thus, the factual
position is largely undisputed. What remains is the consideration of the legal
issue as to whether the Plaintiff is entitled to the reliefs claimed. To put it
differently, whether the mark “Jodi365” is distinctive and entitled to
protection and, if so, whether the use of the mark “Jodii” by the Defendant
constitutes infringement of the Plaintiff's trademark “Jodi365” or passing off
by the Defendant.
15. The principal defence of the Defendant is that the registration
is in respect of a device mark and that the element “Jodi” in the composite
mark is not entitled to protection. The Plaintiff cannot and does not dispute
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that its registration is in respect of the device mark “Jodi365”. Nonetheless,
the Plaintiff contended that the use of the mark “Jodii” by the Defendant
infringes the device mark “Jodi365”. In support of this contention, the
Plaintiff relied on Satyam Infoway for the proposition that a domain name is
also capable of protection as a trade mark. In addition, the Defendant relied
on Central Park Estates to contend that “Jodi” is the prominent and
essential feature of the device mark “Jodi365” and therefore the said device
mark is infringed by the use of the mark “Jodii” by the Defendant. In
Central Park Estates, the Delhi High Court concluded that “Central Park”
is the essential feature of the plaintiff's trademark and the said trademark is
infringed by the use of the mark “Godrej Central Park” by the defendant
therein. In order to refute this contention, the Defendant contended that the
Plaintiff is not entitled to claim monopoly over the word “Jodi” which is
descriptive of matchmaking, dating and matrimonial services. The
Defendant also relied on the use by various other entities of domain names
and apps (Exs.D8 and D9) containing the word “Jodi” and asserted that the
word “Jodi” is publici juris. It was also pointed out that, at paragraph 15 of
the written statement, the Defendant set out a list of apps that use the word
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“Jodi” in relation to matchmaking or dating services. In paragraph 16,
domain names containing the word or element “Jodi” were enumerated.
16. The question whether the sub-element “Jodi” in the device
mark “Jodi365” is the essential feature thereof and, more importantly,
whether it has acquired distinctiveness is examined first. It should be
noticed that the word “Jodi” is a common word in Tamil, Hindi and other
Indian languages and means a pair or couple and “365” is a numeral which
is equivalent to the number of days in a year. Trademarks are typically
classified into four categories, which are placed in a spectrum. At one end
are marks that are ineligible for protection, at the middle are marks that are
entitled to protection subject to satisfaction of conditions and marks entitled
to protection without conditions, and at the other end are marks entitled to
strong unconditional protection. The placement of a mark on this spectrum is
dependent on the product or service to which the mark is applied and,
therefore, the exercise cannot be carried out in a vacuum. In the landmark
judgment in Abercrombie & Fitch Company v. Hunting World
Incorporated, 537 F.2d 4 (2d Cir. 1976) (Abercrombie), the US Court of
Appeals for the Second Circuit held, in relevant part, as under:
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“The cases, and in some instances the Lanham Act,
identify four different categories of terms with respect to
trademark protection. Arrayed in an ascending order
which roughly reflects their eligibility to trademark status
and the degree of protection accorded, these classes are
(1) generic, (2) descriptive, (3) suggestive, (4) arbitrary or
fanciful. The lines of demarcation, however, are not always
bright...”
The definition of a generic term in Abercrombie is: “a generic term is one
that refers, or has come to be understood as referring, to the genus of which
the particular product is a species.” In Miller Brewing Company v. G.
Heileman Brewing Company, Inc. 561 F.2d 75 (7 th Cir. 1977), the US Court
of Appeals for the Seventh Circuit defined a “generic or common descriptive
term as one which is commonly used as the name or description of a kind of
goods.”
17. Since a generic term describes either the product/service
category or the product/service, no person is permitted to monopolize or
appropriate such term and claim exclusive use thereof. For example,
trademark protection and exclusivity cannot be claimed over the term “car”
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when used for a motor car or “radio” or “television” when used in relation to
the said products. In contrast to generic or common descriptive terms, a
descriptive term describes a characteristic or ingredient or quality or
intended purpose of a product or service. Such terms may be entitled to
protection provided they acquire distinctiveness and secondary meaning. In
Zatarains, Inc. v. Oak Grove Smokehouse 698 F.2d 786 (Zatarains), the US
Court of Appeals for the Fifth Circuit formulated four tests to discern if a
mark is descriptive: whether the mark has a dictionary meaning; whether
imagination is required to connect the product or service to the mark and, if
so, how much; whether competitors are likely to need the terms used in the
mark to describe their product or service; and the extent of use of the term
by others to market a similar product or service. If the above tests were to be
applied to the sub-element “Jodi” in its application to a website or app that
facilitates subscribers to find a long-term partner or spouse, the sub-element
“Jodi” in the mark is a dictionary word in the Tamil and Hindi languages
meaning a pair or couple. The term directly refers to the intended purpose of
the service and it is not necessary to exercise one's imagination to make the
connection. While the use of the term as a trademark by other providers of
similar services is not necessary, the term may be required to be used at least
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descriptively by other service providers in the same field. Finally, the
evidence on record discloses that a number of other service providers use the
element “Jodi” as part of their website or app. It should also be noticed that
“Jodi” is clearly indicative of the intended purpose of the service, but it does
not describe the service. Because it clearly refers to and does not merely
suggest the intended purpose, it falls within the descriptive and not the
suggestive category. As a descriptive mark, it certainly does not have
inherent distinctiveness. This leads to the question whether the mark has
acquired distinctiveness.
18. In support of the claim of acquired distinctiveness, the Plaintiff
asserted and adduced evidence of open, honest and continuous use from the
year 2009. The Plaintiff also provided evidence that more than 325,000
persons visited the website Jodi365.com from 2011 to date(Ex.P4), and also
placed evidence of its annual turnover for the years ended 31.03.2020 and
31.03.2021. The Plaintiff also placed evidence of significant coverage in the
press and media(Ex.P8). Section 9(1) of the Trade Marks Act deals with
absolute grounds to refuse registration and the proviso thereto, which carves
out an exception, is extracted below:
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“Provided that a trade mark shall not be
refused registration if before the date of application
for registration it has acquired a distinctive
character as a result of the use made of it or is a
well-known trade mark”
Section 32 deals with distinctiveness acquired post-registration and is as
under:
“Protection of registration on ground of
distinctiveness in certain cases. -- Where a trade
mark is registered in breach of sub-section (1) of
section 9, it shall not be declared invalid if, in
consequence of the use which has been made of it, it
has after registration and before commencement of
any legal proceedings challenging the validity of
such registration, acquired a distinctive character
in relation to the goods and services for which it is
registered.”
In this case, the registration of the mark was with effect from 26.05.2010
and the use thereof was from 2009. While there is no doubt that the use has
been for a considerable period and the Plaintiff has provided reasonable
evidence of reputation in this line of business, the question that follows is
whether this is sufficient to draw the inference that the mark has acquired
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secondary meaning. A more nuanced question would be whether such
secondary meaning extends protection to the sub-element “Jodi”, and these
aspects are considered next.
19. In People Interactive (India) Private Limited v. Vivek Pahwa
and others 2016 SCC Online Bom 7351 (People Interactive), the Bombay
High Court grappled with the meaning of acquisition of secondary meaning
in the context of Shaadi.com and secondshaadi.com. In paragraph 15 of the
SCC Online Report, it was held as under:
“That takes us generally to the question of
'secondary meaning' or 'secondary significance'.
When does an expression acquire a 'secondary
meaning' and how does it acquire it? Again, this is
a phrase much bandied about, and I do believe we
need to pause to consider what is meant by all this.
What do we mean when we say that an expression
has 'acquired a secondary meaning'? This must
necessarily mean that the primary meaning of the
expression, the one with which it began, has been
lost. It is left behind. The expression no longer
means what it once did. It has assumed a new
avatar. It has transcended its original connotation
and now references exclusively in the public mind
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the claimant's products, goods or services, i.e. that
there is an identification of the mark with the
claimant rather than with the goods or services in
and of themselves. The claim of a 'secondary
meaning' posits a priori that the expression once
had a more commonplace, ordinary meaning – this
is the meaning that is now lost. In its first iteration,
the expression found place lower on the
Indchemie/Miller Brewing scale. It has since moved
upward by acquiring a secondary meaning.”
As is evident from the above extract, the Bombay High Court held that the
primary meaning should be lost and the expression should have transcended
its original connotation to acquire secondary meaning. If this standard were
to be applied and tested against the well-known mark 'Apple', when used in
the context of computers, there is sufficient basis to take judicial notice and
conclude that the primary meaning of apple as referring to a type of fruit has
not been lost. But when the word 'Apple' is used or the device mark is seen
in the context of computers, it brings to mind a popular brand of computer
and its maker and not the fruit. While undertaking this exercise, it should be
noticed that the mark 'Apple', when used for computers, is far removed from
its primary meaning. As a rule, the further the distance between the goods or
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services to which the mark is applied and the primary meaning thereof, the
easier it is to acquire secondary meaning. The converse is equally true. For
instance, hypothetically, if 'Apple' were a mark used by a retailer of fruit, the
acquisition of secondary meaning would be a herculean task. Instead, if it
were used by a retailer of groceries, the difficulty would be moderate. Taking
another example from the universe of fruits, when the word 'blackberry' is
used in the context of mobile phones, it brings to mind the once immensely
popular mobile phone, whereas, when used in the context of fruits, jams and
the like, the word connotes the fruit. Indeed, even while recognising the
secondary meaning in context, one continues to be aware of the primary
meaning. Thus, I conclude that it is not necessary for the primary meaning to
be lost but it is necessary that the primary meaning should be overshadowed
in context by the secondary meaning. Whether this has happened to the
mark “Jodi365” is considered next.
20. It was held in People Interactive that evidence of use,
turnover and advertising expenditure are insufficient to establish secondary
meaning and that neutralised market surveys may be required. In principle, I
agree that strong evidence is required, be it survey-based or otherwise. In
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Zatarains, the Court of Appeals surveyed precedents and held that the major
inquiry in assessing a claim for secondary meaning is the consumer's attitude
towards the mark, and also held that “factors such as amount and manner of
advertising, volume of sales, and length and manner of use may serve as
circumstantial evidence relevant to the issue of secondary meaning”. By
quoting Aloe crème Laboratories 423 F.2d at 850, it was further held that
“the question is not the extent of the promotional efforts, but their
effectiveness in altering the meaning of the term to the consuming public”.
The nature of the product or service should also be borne in mind while
drawing conclusions on secondary meaning. For instance, general public
recall and recognition is higher for consumer staples or even consumer
durables, as a class of goods, or hotels, as a class of services, because a
significant proportion of the population procures such goods or avails of
such services, i.e. the addressable market is wider and larger. By contrast,
the segment of the population that intends to or subscribes to a website or
app that provides matrimonial or dating services is narrower. As noticed
earlier, the Plaintiff's mark has an alpha-numeric element and it is pertinent
to recognise that the numeric sub-element 365 does not expressly refer to the
days of the year and is merely suggestive that the service is provided on
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every day of the year. By making allowance for the nature of the service, if
one puts oneself in the shoes of a subscriber or potential subscriber of the
Plaintiff's services, there is sufficient basis to conclude on the basis of the
fairly long history of use of the device mark “Jodi365” especially as a top
level domain name, the business turnover and the like that the composite
mark has acquired distinctiveness.
21. The Plaintiff also contended that the Defendant should not be
permitted to contend that “Jodi” is not distinctive because it uses the mark
“Jodii” and applied for registration thereof as a trademark (Ex.P14). This
argument is attractive at first blush but cannot carry the Plaintiff far because
the Defendant has the statutory right to contend that the sub-element “Jodi”
is not distinctive and this cannot be defeated by an argument founded on
estoppel. Ultimately, the success or failure of the Plaintiff would still hinge
on whether the sub-element “Jodi” in the composite mark is distinctive. If it
were held to be distinctive, there is no doubt that the mark “Jodii” is
deceptively similar.
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22. The Plaintiff contended that the sub-element “Jodi” therein is
the essential, prominent and distinguishing feature by citing Pidilite
Industries and Central Park Estates. As is evident from paragraphs 12.7
and 12.8 of the PTC report, the Bombay High Court concluded in Pidilite
Industries that the mark 'Marine', when used for a water-resistant adhesive,
is not descriptive. Likewise, in Central Park Estates, at paragraph 32 of the
SCC Online Report, the Delhi High Court recorded the finding that the
mark 'Central Park', when used for a real estate developer, is not descriptive.
Protection was extended on that basis in both those decisions. Whether the
sub-element “Jodi” has acquired distinctiveness or remains descriptive is
addressed next. If one were to put the distinctiveness of “Jodi” to test, it is
safe to conclude that it is highly unlikely that “Jodi” on a standalone basis
would have been accepted for registration because it is inherently
descriptive. After registering the composite mark, can the proprietor be
permitted to claim exclusivity over the originally non-distinctive element?
Yes, if such originally non-distinctive element has acquired distinctiveness
and a secondary meaning but not otherwise. To answer this question as
regards “Jodi”, the question to be posed is: does the term “Jodi”, when used
in context, overshadow the primary meaning and bring to mind the service
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C.S.(Comm. Div.)No.122 of 2021
provider or source, i.e. the Plaintiff? While such conclusion may be reached
as regards the composite mark, I am unable to conclude on the basis of the
evidence on record that the primary meaning has been overpowered or that it
has receded sufficiently to the background as regards “Jodi”. Therefore, the
Plaintiff should not be permitted to achieve indirectly what it could not
directly merely by relying on the essential features concept. Just as the
failure to protect distinctive and essential elements of a composite mark
could result in a subversion of Section 17 of the Trade Marks Act, a fortiori,
extending protection to non-distinctive elements would render Section 17
otiose. The evidence on record discloses that several matrimonial and dating
websites and apps use the term “Jodi” as an element in their trade name. In
the absence of evidence of intentional and dishonest adoption, this is indirect
evidence that the term remains descriptive and has not acquired secondary
meaning. For reasons set out above, I conclude that the sub-element “Jodi”
in the composite mark is non-distinctive, like the individual elements
“Bharat” and “Matrimony” in “Bharatmatrimony” were held to be non-
distinctive in Consim Info.
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23. Although the expression publici juris is not used and such a
defence is not raised expressly in the written statement, the factual
foundation was laid therein and the defence was raised in course of oral
arguments. However, in order to constitute publici juris, as held in Palani
Mudaliar, the use of the relevant mark by third parties should be so
widespread that it exceeds use by the person claiming protection and relief.
In view of the conclusions on distinctiveness, it has become unnecessary to
record findings on the defence of publici juris. Issues 1-3 are disposed of
as above.
Issue No.4
24. Issue No.4 deals with whether the Plaintiff is entitled to relief
in respect of alleged passing off against the Defendant by the use of the
mark “Jodii”. The Plaintiff relied on Cadila to contend that the phonetic
similarity between “Jodi365” and “Jodii” cannot be jettisoned. In Durga
Dutt Sharma v. Navaratna Pharmaceuticals Laboratories, AIR 1965 SC
980, the Supreme Court discussed the distinction between an action for
infringement and passing off of a trademark. The relevant paragraph is
extracted below:
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“While an action for passing off is a common
law remedy being in substance an action for deceit,
that is, a passing off by a person of his own goods
as those of another, that is not the gist of an action
for infringement. 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 Section
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 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 defendant's mark is so close
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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.”
25. Therefore, a comparison of the two marks and trade dress
becomes essential for passing off purposes. The two marks are set out
below:
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C.S.(Comm. Div.)No.122 of 2021
Plaintiff's device mark Defendant's label mark
Similarly, the trade dress from the respective mobile application is set out
below:
Plaintiff's mobile app Defendant's mobile app
If such comparison is carried out, other than the term “Jodi”, which has been
held to be non-distinctive and, therefore, not entitled to protection, the
overall impression is such that an inference of likelihood of deception or
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confusion cannot be drawn. Therefore, Issue No.4 is also decided against the
Plaintiff.
Issue No.5
26. Since the claim for infringement and passing off failed, the
Plaintiff is not entitled to damages. Before concluding, I must confess that
the “big fish is swallowing the small fish” argument did tug at the heart
strings, but eventually the mind prevailed.
27. In the result, the suit is dismissed subject to the observations
on the acquired distinctiveness of the composite mark. Since the Plaintiff is
the prior user of the mark, the registered proprietor thereof and it was held
that the Plaintiff is entitled to protect the composite mark but not the element
“Jodi”, the parties shall bear their respective costs. Consequently, all
connected applications are closed.
14.07.2022
Index : Yes
Internet : Yes
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C.S.(Comm. Div.)No.122 of 2021
rrg
Plaintiff's witness: Nil
Defendant's witness: Nil
Documents exhibited by the Plaintiff:
Sl.No Exhibits Date Particulars of Documents
1. Ex.P1 2009 Plaintiff's domain name Jodi365.com order
receipt and WHOIS printout, showing date of
purchase and registration and documented
2009 version of Jodi365.com
2. Ex.P2 26.05.2010 Trademark Registration details of the Plaintiff
3. Ex.P3 26.05.2020 Trademark Registration Renewal details of the
Plaintiff for Jodi365 under No.1971072 in
Class 99
4. Ex.P4 2011-2021 Web analytics chart showing number of visitors
to the Plaintiff's website Jodi365.com
5. Ex.P5 2013- 2020 Statement of Annual Sales Turnover certified
by the Chartered Accountant for the Plaintiff's
company.
6. Ex.P6 2019-2021 Details of promotional expenses incurred by
Plaintiff's company on a single advertising
channel
7. Ex.P7 2020-2021 Google Play Store listing of Plaintiff's mobile
app Jodi365
8. Ex.P8 2014-2021 Relevant sample clippings of press and media
coverage of Plaintiff's company.
9. Ex.P9 Oct, 2021 Press report on Defendant's launch of Jodii
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C.S.(Comm. Div.)No.122 of 2021
Sl.No Exhibits Date Particulars of Documents
mobile application.
10. Ex.P10 January to Documents showing the Defendant's targeted
Dec, 2021 advertisement using the Plaintiff's trademark
Jodi365 on YouTube and the Google Play
Store.
11. Ex.P11 Jan, 2021 Prominent print ads of the Plaintiff's and the
Defendant's competing services on the same
page in multiple editions of a leading
newspaper.
12. Ex.P12 02.11.2021 Cease and desist notice sent from the Plaintiff
to the Defendant with acknowledgment.
13. Ex.P13 17.11.2021 Defendant's reply to the notice from the
Plaintiff.
14. Ex.P14 Nov, 2021 Defendant's use of Jodii in Television
commercials.
Documents exhibited by the Defendant:
Sl.No Exhibits Date Particulars of Documents
1. Ex.D1 02.02.2005 Certified copy of the legal use certificate for trademark
2. Ex.D2 12.04.2007 Certified copy of the legal use certificate for Trademark
BHARATMATRIMONY under No.1548863 in classes
35 & 42.
3. Ex.D3 03.05.2018 Board Resolution of the Defendant Company
4. Ex.D4 - Printout of Jodi365 from Google Play Store also
showing number of downloads.
5. Ex.D5 - Printout of Jodii from Google Play Store
6. Ex.D6 - Printout of the website Jodii.com
7. Ex.D7 20.10.2021 Article published in Times of India newspaper regarding
Jodii by the Defendant.
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C.S.(Comm. Div.)No.122 of 2021
Sl.No Exhibits Date Particulars of Documents
8. Ex.D8 20.12.2021 Screen shot of website using the name JODI by other
matrimonial service providers.
9. Ex.D9 - List of Apps using the name JODI by matrimonial
service providers.
10. Ex.D10 20.12.2021 Trademark Search conducted in Trademarks Registry
website for the mark JODI in classes 35,38 & 41 and
11. Ex.D11 04.01.2022 Website extracts of Google website showing English
meaning for the word ''jodi'' from the Google translate.
12. Ex.D12 06.01.2022 Chartered Accountant Certificate proving expenses
towards promoting the mark Jodii by the Defendant.
13. Ex.D13 25.01.2022 Letter of Authority
14. Ex.D14 - Screen shot of the pages of the apps using JODI
SKRJ
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SENTHILKUMAR RAMAMOORTHY, J.
rrg
Pre-Delivery Judgment
C.S.(Comm.Div)No.122 of 2021
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