1998 (6) TMI 580 - HC - Indian Laws

Summary

Issues Involved:
1. Whether the word 'ENERJASE' is deceptively similar to the word 'ENERJEX'.
2. Whether the plaintiff is entitled to a permanent injunction against the defendant for trademark infringement.
3. Whether the plaintiff is entitled to a permanent injunction against the defendant for passing off.
4. The scope of the appellate court's power in reversing the discretionary order of the trial court.

Issue-wise Detailed Analysis:

1. Whether the word 'ENERJASE' is deceptively similar to the word 'ENERJEX':
The primary issue was whether 'ENERJASE' was phonetically similar to 'ENERJEX' and likely to cause confusion. The court examined the phonetic, visual, and overall structural similarities between the two trademarks. It was noted that 'ENERJEX' is an allopathic medicinal syrup, while 'ENERJASE' is an Ayurvedic capsule for stress relief. The court concluded that the products and their packaging were entirely different, and thus, there was no likelihood of confusion. The court also emphasized that 'ENERJ' is an abbreviation of 'energy,' a generic term common in the trade, and no one could claim exclusive rights to its use.

2. Whether the plaintiff is entitled to a permanent injunction against the defendant for trademark infringement:
The court referred to various sections of the Trade and Merchandise Marks Act, 1958, including Sections 2(v), 2(d), 2(k), 11, 28, and 29. It was established that for a trademark infringement action, the plaintiff must prove that the defendant's mark is identical or deceptively similar to the plaintiff's registered trademark. The court held that the plaintiff failed to establish a prima facie case of infringement as the suffixes 'JEX' and 'JASE' were phonetically dissimilar and the visual impressions of the products were different. The court also noted that the term 'ENERJ' is generic and common to the trade.

3. Whether the plaintiff is entitled to a permanent injunction against the defendant for passing off:
The court distinguished between infringement and passing off, noting that passing off involves selling goods in a manner that misleads the public into believing they are the plaintiff's goods. The court found no evidence that the defendant's product 'ENERJASE' was being passed off as the plaintiff's product 'ENERJEX'. The court emphasized that the products were different in form, packaging, and target consumers, and thus, there was no likelihood of deception or confusion.

4. The scope of the appellate court's power in reversing the discretionary order of the trial court:
The court cited precedents, including Beach Estates v. Likhami Holdings Limited and Wander Ltd. v. Antrox India (P) Ltd., to highlight the limited scope of appellate courts in interfering with discretionary orders of the trial court. The appellate court can only reverse such orders if the discretion was exercised arbitrarily, capriciously, or perversely. The court held that the trial court had exercised its discretion reasonably and judicially in refusing the interim relief sought by the plaintiff.

Conclusion:
The court concluded that there was no phonetic or visual resemblance between 'ENERJEX' and 'ENERJASE', and the term 'ENERJ' was generic and common to the trade. The plaintiff failed to establish a prima facie case of trademark infringement or passing off. The trial court's discretionary order vacating the interim injunction was upheld, and the appeals were dismissed. The balance of convenience favored the defendant, and there was no order as to costs.