9911796707
TMI Blog2006 (8) TMI 528X X X X Extracts X X X X X X X X Extracts X X X X ..... name of M/s. Ram Dev Masala only from the seven outlets. The modification made by the High Court has already been noticed by us. Thus we direct the respondents be restrained from using the trade mark including the trade name 'Ramdev Masala' in any of their products. They may, however, carry on their business in any other name insofar as manufacturing of spices is concerned. The appellant shall, as and when demands are made, supply spices produced by it for retail sale thereof to seven outlets belonging to respondents on usual terms, and in respect of such articles on the labels/pouches, on the reverse thereof, the following shall be mentioned in the minimum permissible size in terms of the provisions of Weights and Measures Act and Prevention of Food Adulteration Act. The appellant shall deposit a sum of Rs. 50 lakhs before the Trial Court or furnish a bank guarantee for the said sum by way of security. Despite pending applications for rectification before the Registrar of Trade Marks, the final hearing of Civil Suit No. 828 of 2000 shall be expedited and the learned Trial Judge is hereby directed to complete the hearing as expeditiously as possible preferably within a period o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Ahmedabad except the area of Naroda City of Ahmedabad and district Mehsana, Gujarat State (India) registered proprietors aforesaid registered Trade Mark (hereinafter referred to as "the said Trade Mark") in respect of the said goods."User restricted to the cities of Ahmedabad and Mehsana; 4(C) That the User will continue to use the said mark only so long as he manufactures his goods in accordance with the terms and specifications devised by the Registered Proprietor. 4(E) That within the terms of this agreement and thereafter the User will not acquire any right to the said mark by any means whatsoever except in accordance with law. 4(G) That the User covenants not to use the said Trade Mark in the advertisement, journal label and/ or other documents in such a manner that the said Trade Mark may in any way be diluted in respect of distinctiveness of validity if necessary and indication either usually, phonetically may be given to the purchasing public to the extent that the User uses the said mark by way of permitted use only." Indisputably, the firm 'Ramdev Masala Stores' was dissolved on 04.11.1991. Yet again a new partnership firm came into being under the name and style of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... r label, packing materials, advertising materials, business materials etc., in respect of goods which are covered under registration of the plaintiff's mark and/or any mark which may be identical and/or deceptively similar to the plaintiff's registered trade mark and thereby restrain them from infringing the plaintiff's registered trade mark bearing No. 447700 and other marks bearing No.531084, 531085, 545253, 545253, 545255, 545257 and 545258." An application for injunction was also filed wherein the following interim prayers were made : "(A) The defendants by themselves, their servants, agents, partners and all persons claiming through or under them be restrained by an order of temporary injunction of this Hon'ble Court from, in any manner, using the trademark 'RAMDEV' in their label, packing materials, advertising materials, business materials etc. in respect of goods which are covered under registration of the plaintiff's mark and/or any mark which may be identical and/or deceptively similar to the plaintiff's registered trade mark and thereby restrain them from infringing the plaintiff's registered trade mark bearing No.447700 and other marks bearing No.531084, 531085, 545 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tween the parties, it should be taken as it is. It should be read as it is. No additional terms and conditions or agreement can be presumed. Therefore, in absence of any specific condition that the defendants should sell spices by using trade-mark "Ramdev" in 7 outlets by purchasing the goods from the plaintiff is not believable. 13. This condition also does not seem to be possible 14. The defendants have arranged for the packing material bearing regd. trade-mark "Ramdev" and used the same for the purpose of retail business. These facts clearly suggest that there was no restriction on the defendants to purchase spices from the plaintiff for the purpose of retail business in 7 outlets. On the contrary, the defendant was at liberty to manufacture in their factory and sell the same in 7 outlets for the purpose of retail business. 15. Relevant portion of MOU is reproduced earlier. Accordingly, the defendants are permitted to use the trade-mark or logo "Ramdev" for the purpose of retail-sale in 7 outlets. The words used suggest that the defendants were entitled to use the trade-mark "Ramdev" without any restriction for the purpose of retail sale of spices. It was not compulsory ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lihood of passing off the goods of the defendants as if it is manufactured by the plaintiff." It was opined : "As stated earlier, it is proved that the plaintiff is the regd. proprietor of trade-mark "Ramdev" bearing registration No.44770. The plaintiff has acquired goodwill and reputation of the trade mark "Ramdev Masala" in the market. Packing and label adopted by the defendants for their products "Swad" containing the word "Ramdev Masala" on the front page of the label in larger size, in first alphabet definitely creates deception and confusion. It is deceptively similar with the trade-mark of the plaintiff. Therefore, the plaintiff has proved prima facie case on this point. As regards the balance of convenience and irreparable injury, it is settled legal position that in case of deception public at large is affected. Unvaried customers are likely to be deceived. When prima facie case is proved, it is necessary in the interest of justice to maintain status quo. Considering above all facts and circumstances, injunction should be granted against the defendants." The learned Judge summarised his findings as under : "Para 41 (i) The defendant No.1 and consequently ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... framed under Prevention of Food Adulteration Act and Standards of Weights and Measures Act, the manufacturer is duty bound to display its name and address in the manner, size and placement as prescribed, on the packets. Thus, once a statute prescribes an obligation on manufacturer and stipulates the minimum standards of measurement, the manufacturer is bound to act in accordance with law and cannot be restrained from complying with specific statutory provisions. It, while upholding the findings of the learned trial Judge contained in paragraphs 41(i) and 41(ii); in respect of the directions contained in Para 41(iii), opined: "42.3 However, finding in paragraph 41(iii) of the impugned judgment requires to be modified. The trial court was in error for the afore stated reasons when it held that printing and publication of the principal display panel was creating infringement of trade mark as it was deceptively similar. The defendants cannot be prevented from using the words "Ramdev" and "Masala" on their label and packing in light of the statutory requirements as stated hereinbefore. However, the defendants shall print the name of the manufacturer using only the minim ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... appellant could exercise their right only for the purpose of implementing the MOU which must be read with the deed of retirement dated 1st June, 1998, the remedies under the Trade Marks Act are not available against the respondents who were members of the family. (ii) The Company, although was not a party to the MOU, but having been represented by the Directors therein must be held to be bound thereby and the parties to the MOU having not filed any special leave petition in their individual capacities, these appeals are liable to be dismissed. (iii) As a distinction exists between a lis based on infringement of a registered trade mark and passing off, the principles which are applicable for grant of injunction in an action for passing off are applicable in the instant case. (iv) The claim of the appellant to obtain an order of injunction is clearly barred by Sections 15(1) and 15(2) of the 1958 Act insofar as a distinctive label having been registered as a whole, no order can be passed restraining the defendants from using a part thereof, as has been held in The Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. [(1955) 2 SCR 252] and Re Cadbury Brothers' Application [1915 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... supplemented Mr. Nariman urging that a document upon reading contextually may be found to be a family settlement although the said expression was not used therein. It was, therefore, urged that the courts would lean strongly in favour of the family settlement and the MOU, so read, would operate as estoppel against the other family members who have taken advantage thereof from denying or disputing implementation thereof. STATUTORY PROVISIONS It is not in dispute that the lis between the parties would be governed by the 1958 Act. "Deceptively similar" has been defined in Section 2(d) of the 1958 Act to mean as under: "A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion." Section 2(j) defines "Mark" to include "a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof". The expression "registered proprietor" has been defined in Section 2(q) to mean a person for the time being entered in the register as proprietor of the trade mark in relation to a trade mark. Chapter II provides for appointment of the Controller-General of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lication (Section 18), advertisement thereof (Section 20), opposition thereto (Section 21) and correction and amendment thereof (Section 22). Registration of a trade mark is envisaged in Section 23 of the 1958 Act, the effect whereof is stated in Section 27 thereof. The rights which are conferred by registration are stated in Section 28 of the 1958 Act in the following terms: "28. Rights conferred by registration. (1) Subject to the other provisions of this Act, the registration of a trade mark in Part A or Part B of the register shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. (2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject. (3) Where two or more persons are registered proprietors of trademarks, which are identical with or nearly resemble each other, the exclusive right to the use of any ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... son, Q.C. as under: "1.03 For the purpose of the construction of contracts, the intention of the parties is the meaning of the words they have used. There is no intention independent of that meaning. 6.09 Where the words of a contract are capable of two meanings, one of which is lawful and the other unlawful, the former construction should be preferred. Sir Edward Coke [Co. Litt. 42a] expressed the proposition thus: 'It is a general rule, that whensoever the words of a deed, or of one of the parties without deed, may have a double intendment and the one standeth with law and right, and the other is wrongful and against law, the intendment that standeth with law shall be taken.'" It is further stated: are sought to be relied upon from The Interpretation of Contracts by Kim Lewison, Q.C.: "My first duty is to construe the contract, and for the purpose of arriving at the true construction of the contract, I must disregard what would be the legal consequences of construing it one way or the other way."" Moreover, the document is to be read as a whole. It is equally well settled that the deed has to be construed keeping in view the existing l ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... interpretation of the said MOU, the learned Trial Judge would be at liberty to do so. We may furthermore place on record that we are construing the said MOU only for the purpose of disposal of an interlocutory matter which would not, thus, be binding on the courts below at the final hearing of the suit. The broad propositions which are evident from a perusal of the said MOU appear to be as under: Among all the three brothers, Arvindbhai who was the eldest among them is on one side and Hasmukhbhai and Pravinbhai are on the other. The division of the assets is broadly arrived at in that proportion. The Counsel appearing before us proceeded on the basis that MOU for all intent and purport was a family settlement. Disputes and differences having arisen between the parties, the said MOU was entered into with a view to resolve the same as regards the business and property held by them so as to enable them to be in peace, harmony and understanding in the family. The said settlement was arrived at through the mechanism of mediation of the well- wishers of the family. MOU was, thus, entered into for the purpose of distribution of the properties and business and the same was given effec ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... U came into force with effect from 1.4.1998. By reason of the said MOU prima facie Arvindbhai had not been given any manufacturing right through the user agreement. The trade mark Ramdev, thus, belonged exclusively to the Company. Although several trade marks were registered and belonged to the Company, we are primarily concerned with the trade mark bearing No. 447700 having the aforementioned description. Both the learned Trial Judge as also the High Court proceeded on the basis that in terms of the said MOU, the Company acquired an exclusive right to use the same. It is not in dispute that the respondents have been manufacturing spices under and name and style of 'Swad'. The said mark is a registered one. The Courts below proceeded on the basis that the mark used by the respondents are deceptively similar to the trade mark registered in favour of the appellant. There is no dispute in regard to the said findings. We would hereinafter consider the effect thereof. TRADE MARK-CONCEPT The concept of trade mark dates back to ancient times. Even in the Harappan Civilization marks of trade with foreign countries such as Mesopotamia and Babylonia were found embossed on artic ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury." PURPOSE OF TRADE MARK A trade mark is the property of the manufacturer. The purpose of a trade mark is to establish a connection between the goods and the source thereof which would suggest the quality of goods. If the trade mark is registered, indisputably the user thereof b ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... terms: "40. That view is also confirmed by the judgment of the court in SABEL, in which it held that the "likelihood of confusion mustbe appreciated globally, taking into account all factors relevant to the circumstances of the case" (at paragraph 22). It is true that that statement was made in a different context: the court was there considering the question whether conceptual similarity of the marks alone could give rise to confusion within the meaning of Article 4(1)(b), in a situation in which the goods in question were clearly the same. However, the statement is one of general application." In Baker Hughes Limited v. Hiroo Khushalani [1998 PTC (18) 580], the question as regards likelihood of confusion even by the enlightened public was noticed in the following words : "Again in Grotrian, Helfferich, Schulz, Th. Steinweg Nachf, a Corporation Vs. Steinway Sons, a corporation, 365 F.Supp. 707 (1973), striking a similar note the Court held as under: "Plaintiff argues that purchaser will not be confused because of the degree of their sophistication and the price (B L Sales Associates Vs. H. Daroff Sons, Inc., supra, 421 F.2d ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t opined: "Whilst considering the possibility of likelihood of deception or confusion, in present times and particularly in the field of medicine, the courts must also keep in mind the fact that nowadays the field of medicine is of an international character. The court has to keep in mind the possibility that with the passage of time, some conflict may occur between the use of the mark by the applicant in India and the user by the overseas company. The court must ensure that public interest is in no way imperilled" We may in this connection notice a recent judgment of the European Court of Justice in Canon Kabushiki Kaisha (supra) wherein it was opined: "28. That case concerned the interpretation of Article 4(1)(b) of the Directive in so far as it refers to "a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark". The court explained that it had been submitted that "the likelihood of association may arise in three sets of circumstances: (1) where the public confuses the sign and the mark in question (likelihood of direct confusion); (2) where the public makes a connection between the pr ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... oth the parties was phonetically and visibly similar to the registered mark. The packing material and label used by the respondents were deceptively similar to that of the appellant and the same creates deception as well as confusion in the minds of customers who are literate, illiterate, male or female, who used to purchase in retail market from small shops as well as big departmental stores. The learned Trial Court as also the High Court proceeded on the basis that the respondents are entitled to use the said trade mark by reason of the stipulations contained in the said MOU as a result whereof they became entitled to use the trade mark Ramdev for their retail business of spices in seven outlets, which used to be belonging to the company. The said outlets were meant to be used for retail sale of the products of the appellant alone. The learned Trial Judge as also the High Court, however, failed to notice two significant and important provisions in the said MOU, viz., (i) the defendants could not carry on business in wholesale of the said products; (ii) it was meant to be sold directly to the consumers and on the productions "not for resale" was required to be printed on each ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rade from seven outlets. In that view of the matter, they had a limited right under the MOU and by reason thereof they could not have been permitted to start manufacturing of spices under the name and style of 'Ramdev Masala'. Even under the common law, licence has to be interpreted to subsume the law and prevent the mischief which is deceptive having regard to the fact that trafficking in trade mark is not permitted. It is true that the respondents have been permitted in terms of the MOU to continue their business in the name of the partnership firm and to use the label mark, logo, etc. but the said MOU must be construed in the light of the law operating in the field. For the said purpose, prima facie, the deeds of retirement are not required to be looked into. When a right to use a trade mark is given, such a right can be exercised only in the manner laid down therein. If in absence of any express licence or agreement to use its label the respondents use the self-same trade mark, the same would not only lead to confusion but may also cause deception. Even a common law licence, it is well-settled, cannot result in the dilution of the trade mark. In that view of the matter, we ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... la, the question of grant of a right to sell only in retail and that also printing the words 'not for resale' would not have arisen. A manufacturer is not only entitled to sell his own products in retail but also in wholesale. It can use any outlet for the said purpose whether belonging to it or any other. It would lead to an anomaly if it be held that the first respondent would be permitted not only to sell the products of the appellant but also its own products under the same trade name albeit only from the seven outlets. By reason of the said MOU, the respondents are not bound to buy any product from the appellant but there is an obligation on the part of the appellant to supply the same as otherwise it would lead to closure of business of Arvindbhai which would have been the intention of the parties. When the parties had settled their disputes, it was expected that the outlets would be utilised for the purposes for which they were meant to be utilised. What were the mutual obligations of the parties is a matter which can be considered only at the trial or in any other appropriate proceeding, but prima facie it goes without saying that the first respondent, in any event, was e ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ither express or implied from conductA person who is entitled to rely on a stipulation, existing for his benefit alone, in a contract or of a statutory provision may waive it, and allow the contract or transaction to proceed as though the stipulation or provision did not exist. Waiver of this kind depends upon consent, and the fact that the other party has acted upon it is sufficient consideration It seems that, in general, where one party has, by his words or conduct, made to the other a promise or assurance which was intended to affect the legal relations between them and to be acted on accordingly, then, once the other party has taken him at his word and acted on it, so as to alter his position, the party who gave the promise or assurance cannot afterwards be allowed to revert to the previous legal relationship as if no such promise or assurance had been made by him, but he must accept their legal relations subject to the qualification which he has himself so introduced, even though it is not supported in point of law by any consideration. [See 16 Halsbury's Laws (4th edn) para 1471] Waiver may sometimes resemble a form of election, and sometimes be based on ordinary princip ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... actual backdrop opined: "This, as we have already stated, is not quite correct, for apart from the practice the Registrar did advert to the other important consideration, namely, that on the evidence before him and the statement of counsel it was quite clear that the reason for resisting the disclaimer in this particular case was that the Company thought, erroneously no doubt but quite seriously, that the registration of the trade mark as a whole would, in the circumstances of this case, give it a right to the exclusive use of the word "Shree" as if separately and by itself it was also its registered trade mark and that it would be easier for it to be successful in an infringement action than in a passing off action. It was precisely the possibility of such an extravagant and untenable claim that called for a disclaimer for the purpose of defining the rights of the respondent company under the registration" (Emphasis supplied) The said decision has no application to the fact of this case. Mr. Nariman is also not correct in contending that only a label has been registered and not the name 'Ramdev'. Definition of 'mark' as contained in Section 2(j) of the 1958 Ac ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... reof. It is also not a case where non-registration of MOU as was the case in Amteshwar Anand v. Virender Mohan Singh and Others [(2006) 1 SCC 148] was taken as a shield to defeat the purpose of the agreements entered into by and between the parties. In that case, however, what was contended was that the agreement required registration in terms of Section 17(1) of the Registration Act whereas the High Court had found that the user agreement was not registered in terms of Section 49 of the Act holding: "The Composition Deed in this case was a transaction between the members of the same family for the mutual benefit of such members. It is not the appellants' case that the agreements required registration under any other Act. Apart from this, there is the principle that Courts lean in favour of upholding a family arrangement instead of disturbing the same on technical or trivial grounds particularly when the parties' have mutually received benefits under the arrangement. Both the courts below had concurrently found that the parties had enjoyed material benefits under the agreements. We have ourselves also re-scrutinized the evidence on record on this aspect and have foun ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e the goods or services of the plaintiff. Thirdly, he must demonstrate that he suffers or, in a quick time action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or service is the same as the source of those offered by the plaintiff..." PASSING OFF - INFRINGEMENT Although, the defendant may not be using the actual trade mark of the plaintiff, the get up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off could be proved. It is also possible that the defendant may be using the plaintiff's mark, the get up of the defendant's goods may be so different from the get up of the plaintiff's goods and the prices also may be so different that there would be no probability of deception of the public. However, in an infringement action, an injunction would be issued if it is proved that the defendant is improperly using the plaintiff's mark. In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause c ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 In Poddar Tyres Ltd. v. Bedrock Sales Corporation Ltd. and another [AIR 1993 Bombay 237], Srikrishna, J., as His Lordship then was, repelled the contention that any trader who exclusively sells the goods bearing a registered trade mark, has a right to adopt a trade name which could include the said trade mark and that such adoption would not amount to infringement or passing off stating: "Mr. Rahimtoola was not able to cite any authority for the proposition propounded, which I find somewhat startling. The consequences of accepting this proposition would mean that the registered proprietor would be at the mercy of anyone who sells ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ent's customers are not confined to Hindus alone. Many of their customers are Christians, Parsees, Muslims and persons of other religious denominations. Moreover, their business is not confined to south of India. The customers who are not Hindus or who do not belong to the south of India may not know the difference between the words Andal and Ambal. The words have no direct reference to the character and quality of snuff. The customers who use the respondent's goods will have a recollection that they are known by the word Ambal. They may also have a vague recollection of the portrait of a benign goddess used in connection with the mark. They are not likely to remember the fine distinctions between a Vaishnavite goddess and a Shivaite deity" We may not lose sight of the fact that the mark was assigned in favour of the Company as far back in the year 1992. The mark did not come to the company through MOU or otherwise. LACHES AND ACQUIESCENCE The plea of acquiescence on the part of the appellant herein has been raised on two counts: (i) The plaintiffs- appellant permitted the respondents to carry on business in the trade name of 'Ramdev Masala". (ii) It is, thus, also not ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in this behalf was that not only in terms of the MOU the appellant had been allowed to carry on business under the name and style of 'Ramdev Masala', no immediate step having been taken after issuance of the public notice dated 15.12.1998 for long time, they were not entitled to obtain an order of injunction. Delay in some cases may defeat equity but the chronology of events noticed hereinbefore do not suggest that the appellant's consciously allowed the respondents to use the trade mark. Acquiescence is a facet of delay. The principle of acquiescence would apply where: (i) sitting by or allow another to invade the rights and spending money on it; (ii) it is a course of conduct inconsistent with the claim for exclusive rights for trade mark, trade name, etc. In M/s. Power Control Appliances and Others v. Sumeet Machines Pvt. Ltd. [(1994) 2 SCC 448], this Court stated: "Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches" In an in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ow where it is established that the defendant had infringed the trade mark and had not been able to discharge its burden as regard the defence taken by it. In Pioneer Electronic Corporation and Another v. Registrar of Trade Marks [(1978) RPC 716], an Australian Court referring to a large number of decisions observed: "These cases demonstrate that the essential requirement for the maintenance of the validity of a trade mark is that it must indicate a connection in the course of trade with the registered proprietor, even though the connection may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary. Use by either the registered proprietor or a licensee (whether registered or otherwise) will protect the mark from attack on the ground of non- user, but it is essential both that the user maintains the connection of the registered proprietor with the goods and that the use of the mark does not become otherwise deceptive. Conversely, registration of a registered user will not save the mark if there ceases to be the relevant connection in the course of trade with the proprietor or the mark other ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... gards the matter relating to grant of injunction has been dealt in S.M. Dyechem Ltd. v. Cadbury (India) Ltd. [(2000) 5 SCC 573] wherein upon noticing a large number of decisions including Colgate Palmolive (India) Ltd. v. Hindustan Lever Ltd. [(1999) 7 SCC 1] as also the subsequent distinction made in respect of the decision of the House of Lords in American Cyanamid v. Ethicon Ltd. [(1975) 1 All ER 853], it was stated : "Therefore, in trademark matters, it is now necessary to go into the question of "comparable strength" of the cases of either party, apart from balance of convenience. In M/s. Transmission Corporation of A.P., Ltd. v. M/s. Lanco Kondapalli Power Pvt. Ltd. [JT 2005 (10) SC 542], it was held : "The interim direction ordinarily would precede finding of a prima facie case. When existence of a prima facie case is established, the court shall consider the other relevant factors, namely, balance of convenience and irreparable injuries. The High Court in its impugned judgment although not directly but indirectly has considered this aspect of the matter when on merit it noticed that the Appellant has raised a dispute as regard payment of an exc ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sily shown, since infringement may easily destroy the value of a mark or at least nullify expensive advertising in a way that is hard to quantify for the purposes of an inquiry into damages. This has more recently come to be referred to, in cases where the defendant's conduct is not directly damaging but merely reduces the distinctive character of the claimant's mark, as "dilution". In particular, although it is usually neither necessary nor appropriate to assess the degree of probability of success which the claimant's action has (provided that it is arguable, and subject to the principle of American Cyanamid that the merits may be resorted to as a 'tie-breaker' if the balance of convenience is very even,) in trade mark and passing off cases, it is very hard to avoid doing so, since the better the claimant's case on the likelihood of deception (frequently the major issue) the greater the harm which he is likely to suffer. Accordingly, in appropriate cases, where the state of the evidence permits it, the court may seek to weigh up the merits in deciding whether to grant interim relief." Thus, when a prima facie case is made out and balance of convenience is in favour of the app ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... likelihood of confusion or deception of the public and consequent damage to the plaintiff. The focus is shifted from the external objective test of making comparison of activities of parties to the state of mind of public in deciding whether it will be confused. With the passage of time and reputation acquired, the trade mark 'Kirloskar' has acquired the secondary meaning and has become almost a household word. The judgments relied upon by Mr Kane pertain to the cases of one type of business and not where variety of businesses have been carried by the plaintiff and the defendant as in the instant case. The business activities of the respondents vary from pin to piano as borne out from the object clauses of the memorandums of association of the respondents. The appellants have still to commence their business activities but as mentioned in the memorandums of association of the 1st appellant in each appeal, some of the object clauses therein overlap with the activities of respondents and more particularly of Respondents 6 and 7." APPELLATE COURT'S JURISDICTION TO INTERFERE WITH ORDERS OF THE TRIAL JUDGE We are not oblivious that normally the appellate court would be slow to in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ion granted by the Trial Judge that the respondents were entitled to sell their products in the name of M/s. Ram Dev Masala only from the seven outlets. The modification made by the High Court has already been noticed by us. We, in view of our findings aforementioned, direct: (i) The respondents be restrained from using the trade mark including the trade name 'Ramdev Masala' in any of their products. (ii) They may, however, carry on their business in any other name insofar as manufacturing of spices is concerned. (iii) The appellant shall, as and when demands are made, supply spices produced by it for retail sale thereof to seven outlets belonging to respondents on usual terms, and in respect of such articles on the labels/pouches, on the reverse thereof, the following shall be mentioned in the minimum permissible size in terms of the provisions of Weights and Measures Act and Prevention of Food Adulteration Act: "This product is manufactured and marketed by M/s. Ramdev Masala (Arvindbhai Group) (Or M/s. Ramdev Exports Arvindbhai Group) having no relationship whatsoever with Ramdev Food Products Pvt. Ltd." (iv) The appellant shall deposit a sum of Rs. 50 lakhs before th ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
