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TMI Blog2014 (2) TMI 284X X X X Extracts X X X X X X X X Extracts X X X X ..... strial products. The Plaintiff's products include automotive lubricants, transmission fluids, gear oil, hydraulic lubricants, automotive filters, specialty products, greases and cooling system products. The Plaintiff's products are available in more than 15,000 retail counters across India. The products of the Plaintiff are imported under various famous trademarks one of which is '4T PREMIUM' which has been used extensively, continuously and uninterruptedly by the Plaintiff since the year 2003 in India. The Plaintiff has been manufacturing and selling multi-grade engine oils under the trade name '4T PREMIUM' under the strict quality control and supervision. The products of the Plaintiff under the trademark '4T PREMIUM' improve engine life and provide maximum power, besides giving special protection to air cooled engines of four stroke motorcycles and are thus recommended for use in four stroke model Hero Honda, Bajaj, TVS, Yamaha, Suzuki, Honda, Kinetic Engineering, LML and all other makes. The Plaintiff is the proprietor of the trademark '4T PREMIUM' in Class-4 for engine oils vide registration No. 1261544 dated 16th January, 2004. 3. Learned counsel for the Plaintiff states that ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... PTC 660 (Delhi) and Marico Limited vs. Agro Tech Foods Limited, 174 (2010) DLT 279. 5. I have heard learned counsel for the parties. 6. The present suit was filed on 18th October, 2011 when summons in the suit and notice in the present application was issued. The present application is pending since then and no ad-interim ex-parte injunction was granted to the Plaintiff till date. In the meantime pleadings and admission/denial of the suit are complete and thus issues have been framed however, since the Defendant has already filed an application before the Intellectual Property Appellate Board for cancellation of the Plaintiffs trademark the present suit is directed to be stayed under Section 124 of the Trademark Act. Since the stay of the proceedings in the suit is not a bar in deciding the application under Order XXXIX Rule 1 and 2 CPC this Court has proceeded to hear the application. 7. The case of the Plaintiff is that the Plaintiff is using the trademark '4T PREMIUM' exclusively, continuously and uninterruptedly since the year 2003 in India. The advertising, publicity and sales promotion expenses of the Plaintiff for the period from 1996-2010 are approximately Rs. 11,92,645, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d the Defendant's products are entirely different. The colour prints of the same are also totally different. There is no resemblance between the VALVOLINE 4T PREMIUM of the Plaintiff and AGIP 4T PREMIUM of the Defendant. The Defendant has also given his consolidated sales figure. According to the Defendant it launched its product AGIP 4T PREMIUM in the year 2007 as AGIP 4T RED and AGIP SUPER 4T. In August, 2008 the Defendant marketed and upgraded its products by introducing AGIP 4T RED, AGIP 4T PLUS, AGIP 4T PREMIUM and AGIP 4T ECO. It further upgraded its products in the year 2011. The use of words RED, PLUS, PREMIUM, ECO and FURY are totally descriptive, common to trade and have no trademark significance. 9. A perusal of the product of the Plaintiff shows that it uses the name of its company before 4T PREMIUM, that is, VALVOLINE 4T PREMIUM and not simplicitor '4T PREMIUM'. Similarly the Defendant has though used the word 4T PREMIUM however, the container also depicts its logo and the company name AGIP. Packaging and colouring etc. of the two products are totally different. 10 In Marico Ltd. (Supra) while dealing with the trademark 'LOW ABSORB' the Division bench of this Court h ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... th is dependent on the facts and circumstances arising in a particular case. It is quite possible that a word or expression which is 'generic', i.e., which refers to a genus or a class is also descriptive as the word by itself characterize the qualities of the product. The line dividing the two in certain cases may get blurred. The word 'whip' by itself means, in the context of the present case, a light fluffy desert made with whipped cream or beaten eggs (see New Shorter Oxford English Dictionary, Edition 1993at page 3670), while the word 'topping' means a top layer or garnish put on food (see New Shorter Oxford English Dictionary, Edition 1993 at page 3342). Similarly, the word 'cream' means part of liquid that gathers at the top; froth etc. or a liquid rich in droplets or particles of the dispersed phase that forms a separate (especially upper) layer in an emulsion or suspension when it is allowed to stand or is centrifuged (see New Shorter Oxford English Dictionary, Edition 1993 at page 543). The words "Whip Topping", when juxtaposed would, in my view, be representative of toppings or garnishes for food items which have cream like quality. Therefore, it is, in my opinion, both ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s use of the word 'Topping'; the New Zealand company office has excluded the use of the words "WHIP TOPPING". Even in India the plaintiffs have of their own accord disclaimed their right to the letter 'S' and the word 'Topping'. In these circumstances, I am not persuaded to hold that the use of the words "WHIP TOPPING" by the defendant in its trade mark "BELLS WHIP TOPPING" would infringe either the statutory rights vested in the plaintiffs' registered trade mark "RICH'S WHIP TOPPING", or even constitute violation of any common law rights that the plaintiffs would have in its mark "RICH'S WHIP TOPPING" for the reasons given herein below. In the context of what is said by me above, there is therefore also no necessity for me to deal with the submission that the defence of "character" and "quality" referred to in Section 35 of the Trade Marks Act are used in the adjectible sense, though I have doubts about the tenability of this argument. The example most commonly used, which comes to my mind, is that of a 'soap'. Can 'soap' be used by itself as a mark? The answer in my opinion is clearly in the negative since it describes the product; however, it nevertheless is a noun. 11. In Kavi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hesitation in stating, albeit without prejudice to the rights and interests of the plaintiff in the present suit, that by adopting such a purely descriptive and laudatory expression 'Sugar Free' as its trade mark, the plaintiff must be prepared to tolerate some degree of confusion which is inevitable owing to the wide spread use of such trade mark by fellow competitors. Simply because the plaintiff claims to be using the expression 'Sugar Free' as a trade mark much prior to the launch of the defendant's product Pro Biotic Frozen Dessert in the market does not give this Court a good ground for imposing a blanket injunction on the defendant from using the expression 'Sugar Free', especially when the defendant intends to use this expression only in its descriptive sense and not as a trade mark, and even otherwise, when the use of this expression is widespread in relation to foods and beverages. We fully agree with and reaffirm the said finding. 9. We are unable to hold that the appellant's trademark 'Sugar Free' is a coined word; at best it is a combination of two popular English words. The mere fact that the appellant's product cannot be directly consumed or eaten and merely is an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sts exclusively of- (a) the shape of goods which results from the nature of the goods themselves; or (b) the shape of goods which is necessary to obtain a technical result; or (c) the shape which gives substantial value to the goods. 30. Limits on effect of registered trade mark.-(1) Nothing in Section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use- (a) is in accordance with honest practices in industrial or commercial matters, and (b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark. (2) A registered trade mark is not infringed where- (a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services; (b) a trade mark is registered subject to any conditions or limitations, the use of the trade mark in any manner in relation to goods to be sold or otherwise traded in, in any place, or in relation to goods to b ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the registered trade mark by the proprietor or with his consent. (4) Sub-section (3) shall not apply where there exists a legitimate reason for the proprietor to oppose further dealings in the goods in particular, where the condition of the goods, has been changed or impaired after they have been put on the market. 35. Saving for use of name, address or description of goods or services.-Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services. Thus, it is clear that the mark or indication which serves to designate the quality of the goods of the appellant, which indeed the phrase 'Sugar Free' does, would be an absolute ground for refusal of registration of a mark unless it has acquired a distinctive character. The expression can at best be said distinctive qua the artificial sweetener of the appellant and mere starting of the marketing of the ..... X X X X Extracts X X X X X X X X Extracts X X X X
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