2010 (2) TMI 1255 - HC - Indian Laws

Summary

Issues Involved:
1. Proprietorship of the Trademark "RICH'S WHIP TOPPING"
2. Acquisition of distinctive goodwill and reputation by the plaintiff
3. Transborder reputation of the trademark "RICH'S WHIP TOPPING"
4. Deceptive similarity and infringement between "RICH'S WHIP TOPPING" and "BELLS WHIP TOPPING"
5. Confusing similarity in packaging/trade dress
6. Entitlement to damages
7. Whether the trademark is a coined word
8. Whether the trademark is descriptive
9. Whether the trademark is a common dictionary word and common in use
10. Whether the trademark is generic
11. Concealment of disclaimer and its effect
12. Bar of suit due to delay, laches, and acquiescence
13. Relief

Detailed Analysis:

Issue 1: Proprietorship of the Trademark "RICH'S WHIP TOPPING"
The court acknowledged that the plaintiff has proprietary rights in the trademark "RICH'S WHIP TOPPING" for the goods mentioned in the plaint under statutory and common law. However, these rights do not extend to a part of the trademark, i.e., "WHIP TOPPING." The rights in the entire or "whole" trademark do not necessarily translate into rights in a "part" of the trademark.

Issue 2: Acquisition of Distinctive Goodwill and Reputation
The plaintiff failed to discharge the onus of proving that the trademark "RICH'S WHIP TOPPING" with emphasis on "WHIP TOPPING" has acquired secondary distinctive meaning and transborder reputation. The plaintiff's own acceptance of limitations in the USA and New Zealand regarding the exclusive right to use "TOPPING" and "WHIP TOPPING" was noted.

Issue 3: Transborder Reputation
Similar to Issue 2, the plaintiff could not establish that "RICH'S WHIP TOPPING" has acquired transborder reputation. The evidence presented did not demonstrate that "WHIP TOPPING" has attained secondary distinctive meaning.

Issue 4: Deceptive Similarity and Infringement
The court found that the defendant's mark "BELLS WHIP TOPPING" is neither deceptively nor confusingly similar to the plaintiff's trademark "RICH'S WHIP TOPPING." The suffix "BELLS" and the overall presentation of the defendant's mark did not create any likelihood of confusion.

Issue 5: Confusing Similarity in Packaging/Trade Dress
The defendant's packaging and trade dress were not found to be deceptively or confusingly similar to the plaintiff's. The use of similar colors (red, blue, and white) alone was insufficient to establish similarity in trade dress.

Issue 6: Entitlement to Damages
The plaintiff was not entitled to any damages as claimed or at all. The court found that the plaintiff failed to prove the distinctiveness of the mark "WHIP TOPPING."

Issue 7: Whether the Trademark is a Coined Word
The words "WHIP TOPPING" were determined to be neither coined nor distinctive. They were found to be generic and descriptive of the product.

Issue 8: Whether the Trademark is Descriptive
The court held that "WHIP TOPPING" is descriptive of the product. The plaintiff's argument that the term is distinctive because it relates to a non-dairy product was not substantiated by evidence.

Issue 9: Whether the Trademark is a Common Dictionary Word and Common in Use
The trademark "WHIP TOPPING" was found to be a common dictionary word and commonly used in the trade. The court noted examples of other manufacturers using the term "whip topping."

Issue 10: Whether the Trademark is Generic
The court concluded that "WHIP TOPPING" is generic in nature, describing a class of products and their qualities.

Issue 11: Concealment of Disclaimer and Its Effect
The plaintiff was not guilty of concealment. The document pertaining to the disclaimer of the letter 'S' and the word 'Topping' had been filed, and any oversight in pleadings was not deemed an act of concealment.

Issue 12: Bar of Suit Due to Delay, Laches, and Acquiescence
The suit was not barred by delay, laches, or acquiescence. The plaintiff acted promptly upon discovering the defendant's use of the mark in April 2003, issuing a cease and desist notice and filing the suit in March 2004.

Issue 13: Relief
Based on the findings, the court dismissed the suit and rejected the prayers sought by the plaintiff. The plaintiff failed to establish infringement, passing off, or entitlement to damages.

Conclusion:
The court dismissed the suit, finding that the plaintiff did not prove the distinctiveness or secondary meaning of "WHIP TOPPING." The defendant's use of "BELLS WHIP TOPPING" was not found to infringe the plaintiff's rights or constitute passing off. The plaintiff's claims for damages and other reliefs were rejected.