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TMI Blog2013 (10) TMI 501X X X X Extracts X X X X X X X X Extracts X X X X ..... fringement cannot be extended beyond the parameters of the statute, by incorporating therein factors of pricing, trade channels etc. which are not laid down as tests of infringement in the statute. While comparing only the broad and essential features are to be considered and it would be enough if the impugned mark/label bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him - Following decision of Parle Products (P) Ltd. Vs. J.P. & Co., Mysore (1972 (1) TMI 98 - SUPREME COURT). Plaintiff has been successful in making out a case of infringement by the defendant of its registered trademark “OLD MONK” and “OLD MONK Label” by use of the mark “TOLD MOM” and “TOLD MOM Label” in relation to rum, even though falling in the Excise category of country liquor - permanent injunction is accordingly passed in favour of the plaintiff and against the defendant, restraining the defendant its directors, wholesalers, distributors, officers and agents from manufacturing, selling, offering for sale, distributing, advertising or directly or indirectly dealing in alcoholic beverages bearing the t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e of the said arguments filed an affidavit which was taken on record and considered. 4. The case of the plaintiff in the plaint is: (i) that the plaintiff is engaged in manufacturing and selling of vatted rum under the trademark OLD MONK since the year 1959; (ii) that the plaintiff s rum under the trademark OLD MONK is the largest selling rum in India; (iii) that apart from the common law rights accruing in favour of the plaintiff s trademark OLD MONK by virtue of long and continuous use, the plaintiff also holds proprietary rights over the trademark OLD MONK by virtue of as many as fifteen registrations, first of which is of 5th July, 1971 and all of which are subsisting; (iv) that the plaintiff also holds registration of the trademark OLD MONK in various other countries; (v) that the plaintiff has been using the trademark OLD MONK in unique distinctive design, colour scheme, lay out, get up and the said trademark and device/logo have become exclusively associated with the plaintiff s product; the colour combination, lay out, get up and the lettering style used on the label/logo also constitute an original artistic work within the meaning of Section 2(c) of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nd has a vast distribution network in North India owning more than 3000 retail outlets in the States of Punjab, Uttarakhand, Uttar Pradesh and Haryana and having a IMFL bottling capacity of 1,50,000 cases per month and country liquor production of over 2,00,000 cases per month; (c) that in the year 2009, the defendant thoughtfully coined and adopted the mark TOLD MOM for its business activity of selling country liquor; the defendant s Trademark TOLD MOM is a coined mark and is a highly arbitrary, fanciful and artistic mark which is inherently distinctive of the goods for which it has been adopted and the mark TOLD MOM in a short span of time has had an exceptional success; (d) that the product to which the Trademark TOLD MOM has been applied is sold in bottles bearing a highly distinctive label having a unique colour scheme, distinctive design, layout and get up along with an arbitrary device of a mother which bears a connection with the Trademark TOLD MOM ; (e) that the defendant s Trademark TOLD MOM and TOLD MOM Label are inherently dissimilar to the plaintiff s Trademark OLD MONK and the OLD MONK Label ; (f) that comparing the defendant s and the plaintif ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d spectacles) etc.; (n) that there are dissimilarities also in the products sold under the plaintiff s and the defendant s mark; while the defendant uses the mark TOLD MOM and the TOLD MOM Label to sell country liquor, the plaintiff s mark OLD MONK and OLD MONK Label is applied for manufacturing and selling IMFL and there cannot be any probability of confusion amongst the consumers or general public; and (o) that the trademark / house mark A.B. Sugars also is prominently displayed on the packaging / label of the products bearing the mark TOLD MOM and which also distinguishes the two products. 6. Prima facie finding the mark TOLD MOM adopted by the defendant in relation to alcoholic beverages to be identical with or deceptively similar to the trademark OLD MONK of the plaintiff, being used by the plaintiff for nearly four decades prior to the adoption by the defendant, and further in the light of the ad-interim order already in force for nearly two years in favour of the plaintiff, the senior counsel for the defendant was heard first in detail. 7. The senior counsel for the defendant on 08.01.2013 inter alia argued that the product of the defendant though des ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y the defendant is visually, phonetically or otherwise so close to the registered trademark of the plaintiff that it is found to be an imitation of the registered trademark, the statutory right of the owner of the registered trademark is infringed; it is contended that there is a difference between identical and similar; that Navaratna Pharmaceutical Laboratories supra was a case of identical and not similar; that thus the trademark has to be seen in its entirety. Reference in this regard was invited to paras No.7 and 8, 26 to 29 of Navaratna Pharmaceutical Laboratories with emphasis being placed on that being a case of imitation and close resemblance and which is not a case here. (iii) On enquiry, it was told that the Trademarks Act does not distinguish between IMFL and country liquor, with both being placed in the same class; (iv) Attention was however invited to Law of Trade Marks Geographical Indications by Mr. K.C. Kailasam, Second Edition 2005 on page 490 whereof in the commentary under Section 29, it has been opined by the learned author that the classification of goods and services adopted by the Registry is not the determining or guiding factor for ascertaining simil ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... identity of the goods and it was contended that the presumption under Section 29(3) of likely confusion on the part of the public is available only to cases falling under Sub-clause (c) and not to cases falling under Sub-clause (b); (ix) that the judgments relied upon by the counsel for the plaintiff in his written note of arguments on record are of identity of trademark and where the case is not of identity but of similarity, the test as in case of passing off will apply. Attention in this regard was invited to K.R. Chinna Krishna Chettiar Vs. Shri Ambal Co., Madras PTC (Suppl.) (1) 258 (SC) relied upon by the counsel for the plaintiff; (x) Oxford English Reference Dictionary, Second Edition was cited to contend that Monk is pronounced as Mank ; (xi) Kalindi Medicure Pvt. Ltd. Vs. Intas Pharmaceuticals Ltd. 2006 (33) PTC 477 (Del.) where ex parte injunction granted in favour of the registered proprietor of LOPRIN brand in respect of pharmaceutical products against the use of the word / mark LOPARIN also in relation to pharmaceutical products was vacated inter alia for the reason, of the plaintiff s product being a non schedule product; while the defendant s product ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rum instead as country liquor amounts to a false trade description within the meaning of Section 2(1)(i) of the Trademarks Act; (v) That Section 2(1)(za) of the Trademarks Act describes trade description as a description, statement or other indication as to the standard of quality of goods according to a classification commonly used in the trade; (vi) that the use by the defendant of the trademark TOLD MOM and TOLD MOM Label similar / deceptively similar to the mark and label OLD MONK of the plaintiff will affect the goodwill and will hurt the image of the plaintiff; (vii) that the products of the plaintiff and the defendant are of the same nature; (viii) that the plaintiff s trademark is a well known trademark within the meaning of Section 2(1)(zg) of the Trademarks Act; (ix) that the Division Bench of this Court in United Biotech Pvt. Ltd. Vs. Orchid Chemicals Pharmaceuticals Ltd. 2012 (50) PTC 433 (Del.) (DB) after considering most of the judgments cited hereby on behalf of the defendant, held that the test to be applied is of deceptive similarity and it is to be seen whether the two marks are structurally and phonetically similar and would cause deception i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... asing to be deceptively similar to the name AMBAL because it was used in conjunction with a pictorial device. 10. I have considered the rival submissions. As would be evident from the narration above, though the defendant has also challenged the similarity / of its mark and label to that of the plaintiff s registered mark and label, but the star argument of the defendant is on the principles as invoked in Kalindi Medicure Pvt. Ltd. supra. 11. Before I turn to Kalindi Medicure Pvt. Ltd. I may mention that as laid down in the judgments aforesaid also, the test of similarity / dissimilarity is to be applied in the light of the product / goods or services in consideration and may be different for different category of products, goods or services, depending not only upon the nature and character of the product, its use by consumers but also the trade channels. The products of both the plaintiff and the defendant in the present case are alcoholic beverages. Though the Supreme Court in Khoday Distilleries Limited supra was concerned with the same product but the alcoholic beverages with which this judgment is concerned, as distinct from the high end alcoholic beverages with which th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ac Care Units under special medical supervision; (ix) that the defence of the defendant of having bona fide coined LOPARIN adopting LO from the category of the drug, being Low Molecular Weight Haparin and PARIN from the name of the molecule Enoxaparin could not be ignored; (x) the price difference between the two was over 52 times; and, (xi) the defendant had already built a good market for its product and thus the balance of convenience was also in favour of the defendant. 13. As would be apparent from the above, the reasons which prevailed with this Court in refusing interim injunction restraining infringement of the trademark LOPRIN by use of the mark LOPARIN , cannot be said to apply to the products in the present case. 14. Though the senior counsel for the defendant has laid considerable emphasis on the trade channels for the product of the plaintiff and the product of the defendant in the present case being different for the reason of the plaintiff s product being an IMFL and the defendant s product being a country liquor but I have been unable to find any prohibition in the Excise Policy for the year 2012-13 or in the Punjab Excise Act, 1914 or The Punjab Liquor L ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ut also when such consumer by consuming the goods of the latter, under the impression that they are of the former forms an impression/opinion of the quality of the said goods and which impression/opinion guides the further purchases by the customer of the said goods and the reputation which the customs propagates of the goods. 15. In the present case, since the product of both, the plaintiff and the defendant bears the description rum and both are alcoholic beverages, considering the nature and class of the consumers thereof, the factum of the product of the defendant being country liquor in contradistinction to the product of the plaintiff being IMFL is unlikely to distinguish the two qua the consumers thereof. Such consumers are not educated and technical persons like medical practitioners or chemists dealing with the pharmaceutical product in LOPRIN -- LOPARIN case above. If the possibility of confusion between the two products exists, it would matter not even if the shops/vends in which the two are sold are different. 16. Notice in this regard may be taken of the fact that even the counsels for the defendant though well prepared with their arguments, upon being quizzed ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... its are twice as price sensitive as wine and beer. A study titled Evidence for the Effectiveness and Cost-Effectiveness of Interventions to Reduce Alcohol-Related Harm conducted in or about the year 2009 by World Health Organization, Regional Office for Europe has shown that if prices are raised, consumers reduce their overall consumption and tend to shift to cheaper beverages with heavier drinkers tending to buy the cheaper products within their preferred beverage category. A difference of a hundred odd rupees is not found to be such which will distinguish the two products. Moreover, in alcoholic beverages, different products in different price range under the same trademark are not unknown. Ready example of Johnnie Walker ranging from the Red to the Blue including Black and Double Black Label, though a high end product, and of beers of varying strength and quality and different prices can be given. 20. That brings me to the crucial aspect of similarity. Spoken repeatedly in the Court rooms and analyzed TOLD MOM and OLD MONK may not appear to be similar at all. However it is not the test of microscopic examination in the Court room but the test of environment in which the t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ame two marks may be described as similar if the consumers thereof are highly discernable and identical if they are not. The same is the position with respect to identity and similarity of the goods. A highly priced cosmetic item consumed generally by the so-called creamy layer of the society may not be held to be identical but only similar to another cosmetic item. However here as aforesaid, inspite of the distinction created by the Excise Laws between the product of the plaintiff and the defendant, with the former product falling in the category of IMFL and latter in the category of country liquor, by description of both as rum, the distinction under the Excise Laws dissipates. I thus find not only identity of the mark of the defendant with the mark of the plaintiff but also identity of the goods covered by both the marks and the case to be falling in Section 29(2)(c) and in which cases as per Section 29(3), the likelihood of confusion on the part of public has to be presumed. 24. For the reasons aforesaid, the test laid down by the Bombay High Court in Carew Phipson Limited supra, of the customers buying alcoholic beverages subject matter of that case being normally educated a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... . Though paragraph 4 of Ruston Hornsby Ltd. supra appears to suggest so but an uncertainty has arisen owing to the language used in paragraph 91 of Ramdev Food Products (P) Ltd supra also. The Act, in Section 29 lays down the test of identity, similarity or deceptive similarity with the registered trademark only and not of confusion as in the case of passing-off, on the anvil of not only similarity of marks but also of prices, trade channels etc. The Act, in Section 2(h) defines deceptive similarity also on the touchstone of resemblance likely to deceive or cause confusion and not extending to pricing, trade channels etc. In my view, since the infringement action is statutory, the test of infringement cannot be extended beyond the parameters of the statute, by incorporating therein factors of pricing, trade channels etc. which are not laid down as tests of infringement in the statute. 28. I am therefore of the view that the plaintiff has been successful in making out a case of infringement by the defendant of its registered trademark OLD MONK and OLD MONK Label by use of the mark TOLD MOM and TOLD MOM Label in relation to rum, even though falling in the Excise category ..... X X X X Extracts X X X X X X X X Extracts X X X X
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