1987 (12) TMI 328 - HC - Companies Law

Issues Involved:
1. Passing off action regarding the use of the trademark "STAYFREE".
2. Likelihood of deception or confusion caused by the use of the mark "STAYFREE".
3. The descriptive versus distinctive nature of the trademark "STAYFREE".
4. Preliminary objections raised by the defendants regarding the maintainability of the suit and ownership of the trademark.

Detailed Analysis:

1. Passing Off Action:
The plaintiffs, a corporation organized under the laws of New Jersey, USA, and a company incorporated under the Companies Act, 1956, brought a passing off action claiming that their trademark "STAYFREE" had acquired a wide reputation and goodwill in India. They alleged that the defendants used the mark "STAYFREE" in respect of sanitary napkins and copied their packaging, which included the legend "No Belts, No Pins, No Strings". The plaintiffs sought a temporary injunction to restrain the defendants from using the mark "STAYFREE".

2. Likelihood of Deception or Confusion:
The defendants opposed the application for a temporary injunction on four points:
1. Their trademark is "Comfit Always" and not "STAYFREE".
2. The word "STAYFREE" is a common descriptive word for the product.
3. The word "STAYFREE" is a common dictionary word existing before the plaintiffs.
4. There is no likelihood of confusion or deception.

The learned single Judge dismissed the application for a temporary injunction, concluding that there was no likelihood of deception or confusion. The Judge noted that both packings were quite distinctive and that the word "STAYFREE" gives a message to the user. The plaintiffs did not object to the color scheme or the legend "No Belts, No Pins, No Strings" used by the defendants but only to the use of the word "STAYFREE".

The court emphasized that the marks must be compared as a whole and that the totality of the proposed trademark should be considered to determine if it is likely to cause deception or confusion. The court also noted that the ultimate customers were literate and semi-literate ladies and that the defendants' trademark "COMFIT ALWAYS" was prominent on their packings. The court found that the plaintiffs' and defendants' packings were different in terms of getup, color scheme, and essential features.

3. Descriptive vs. Distinctive Nature:
The defendants argued that the word "STAYFREE" is descriptive and not distinctive, claiming that it is a common English word and cannot be exclusively appropriated by the plaintiffs. The plaintiffs, on the other hand, argued that "STAYFREE" is not an ordinary English word and claimed exclusive rights to its use. The court noted that whether "STAYFREE" is a coined word or a dictionary word would be considered during the trial of the suit.

4. Preliminary Objections:
The defendants raised several preliminary objections, including the maintainability of the suit, the plaintiffs not being the owners of the trademark "STAYFREE", and the absence of a valid license in favor of plaintiff No. 2. They also argued that the plaintiffs' trademark is "Johnsons and Johnsons" and not "STAYFREE". The court did not express an opinion on these preliminary objections, as the main issue was the likelihood of confusion or deception.

Conclusion:
The court confirmed the order of the learned single Judge and dismissed the appeal, leaving the parties to bear their own costs. The court found no likelihood of confusion or deception and noted that the balance tilted in favor of the defendants. The court did not decide on the descriptive versus distinctive nature of the trademark "STAYFREE" or the preliminary objections raised by the defendants, leaving these issues to be decided during the trial of the suit.

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