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TMI Blog2000 (5) TMI 1060X X X X Extracts X X X X X X X X Extracts X X X X ..... iod along with the word `Cadbury' and that a question of transborder reputation protects the defendant. For the above reasons, we hold that on the question of the relative strength, the decision must go in favour of the defendant that there is no infringement and the High Court was right in refusing temporary injunction. For Passing off and infringement - differences - Here the point is in relation to relative strength of the parties on the question of `passing off'. As discussed under Point 5, the proof of resemblance or similarity in cases of passing off and infringement are different. In a passing off action additions, get up or trade-dress might be relevant to enable the defendant to escape. In infringement cases, such facts do not assume relevance.The fact that the defendant's wrapper contains the word `Cadbury' above the words PICNIC is therefore a factor which is to be taken into account. Buyer's ignorance and chances of being deceived.In the result, on the question of passing off, the relative strength of the case again appears to us to be more in defendant's favour. Here, the trial Court gave importance to phonetic similarity and did not refer to the differences in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... flour. In January 1989 it started using the trade mark PIKNIK. It applied for registration on 17.2.1989 of the said word in class 29 ( for preserved dried and cooked fruit vegetables etc. including all goods included in class 29) under application No. 505531B. Plaintiff also applied for registration of same trade mark in class 30 ( for tea, coffee, corns, jaggery etc. including confectionery chocolates, honey etc.) under application 505532. A third application under same name was ( for beverages, beers, mineral and irrigated water) under application No. 505533. Registration was granted on 29.7.1994 after advertisement on 1.9.93. The appellant renewed the trade mark last for 7 years from 17.2.1996. Respondent-defendant was found using the mark 'PICNIC' for chocolates. Appellant gave notice on 16.3.1998. Respondent replied on 7.4.98. Thereafter, the appellant filed the suit on 18.2.1999 based on alleged infringement of trade mark 505532 and passing off. Pending the suit, appellant applied for temporary injunction. (The respondent filed an application on 19.3.1999 in the Bombay High Court for rectification and the same is pending). The respondent-defendant contended in this i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 39;essential features' of the trade marks were similar. Section 2(1)(f) referred to `mark' as including a device brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof. Even if the 'essential features' of the words 'PIKNIK' were taken into consideration, the defendant's mark 'PICNIC' was deceptively and phonetically similar. The defendant had cleverly designed the word 'PICNIC' by change of spelling and the word was so designed on its label in large letters. The plaintiff's trade mark was registered under class 30 which included 'chocolates'. Section 9(1)(d) or (e) would not help the defendant inasmuch as the plea that this was a common dictionary word was not correct. In fact the defendant had himself registered the word PICNIC in 1977 in India and the same word was registered in other countries. Defendant had again applied in India in 1998-1999 for registration of the same word. Section 28 of the Act conferred a statutory right on plaintiff on account of registration. The said mark was registered without opposition under section 21. On the above reasoning, the trial Court granted tem ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... a defence that the registration of the plaintiff's trade mark was invalid on the ground that the word PIKNIK was not distinctive and that it was akin to a dictionary word or that the trade mark did not satisfy various clauses of section 9(1). Section 31 raised a presumption of validity of plaintiff's registered mark. It was sufficient if the plaintiff's mark had became distinct even by the actual date of registration. For purposes of section 31, the deeming clause in section 23(1) did not apply. Under section 32 of the Act, if seven years had elapsed from the date of registration ( i.e. date of application for registration as deemed by section 23), then the plea of invalidity of registration, namely, that plaintiff's registration of trade mark was not 'distinctive', could not be raised in this suit nor in defence to this application nor even in the rectification proceedings. Seven years had elapsed by 17.2.96, long before the defence in the suit was raised as also by the date of filing of the rectification application on 19.3.1999. Date of the registration in section 32 [unlike the position under section 31(2)] was to be deemed as date of application fo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... urther, the defendant's mark PICNIC had cross-border reputation in 110 countries over a long period and the use of the said word in India would not infringe the plaintiff's trade mark nor would such use amount to 'passing off' defendant's goods as the plaintiff's goods. In view of Colgate Palmolive (India) Ltd. Vs. Hindustan Lever Ltd. ( 1999(7) SCC 1), the relative strength of the case above need be considered. On these contentions, the following points arise for consideration: (1) Whether the defendant could, in the present interlocutory proceedings, based on infringement and passing off, raise any defence that the registration of plaintiff's mark was itself invalid because the plaintiff's mark did not satisfy the ingredients of clauses (a) to (e) of section 9(1) and was, in particular, not distinctive as required by section 9(1)(e)? (2) Whether, on the other hand, plaintiff could rely on the presumption in section 31 and also contend that under Section 32 the validity of the registration of the plaintiff's mark had become conclusive on the expiry of 7 years long before defence was raised in the suit (such time reckoned from date of appli ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... not filed for rectification, it shall be deemed that the plea is abandoned by defendant. Under section 111(5), even if the suit is to be stayed pending rectification proceedings, the plaintiff can file and have interlocutory applications for temporary injunction etc. to be disposed of. The point raised by the learned senior counsel for the appellant Sri P. Chidambaram is that the policy of the Act is not to allow the defendant to raise any issue relating to the invalidity of the plaintiff's trade mark as a defence in a Civil Suit for infringement at any time at the pleasure of the defendant and that a question as to validity can be decided only in rectification proceedings, provided, on facts, such proceedings are in time ( as prescribed in section 32) and are otherwise maintainable. If such issues cannot be raised in the main suit itself, they cannot be raised even in interlocutory proceedings. It is pointed out that even where no rectification proceedings are pending, if a question relating to the invalidity of registration of plaintiff's mark is raised in defence, the Court has to direct the defendant to move for rectification and is to adjourn the suit. Learned seni ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t of which a trade mark is proposed to be registered means adapted to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration. For the present, we are not referring to the other sub- clauses of section 9. If a trade mark does not satisfy section 9, it is well settled that it is to be treated as 'invalid'. The defence of the defendant-respondent based on section 9(c),(d) and (e) is that the word 'PIKNIK' is akin to a dictionary word and is not an inventive word nor a word having no direct relation to the character or quality of goods nor a distinctive word and hence sub- clauses (c), (d) (e) of section 9(1) do not apply and the registration of the plaintiff's trade mark is in itself invalid. This brings us to sections 31 and 32 for deciding whether the plea can be raised in defence in these interlocutory proceedings. Section 31 states that registration is to be prima facie evidence of validity. Section ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f the plaintiff's trade mark nor into the applicability of National Bell Co. Case ( 1970(3) SCC 665) as those issues are to be decided in the rectification proceedings. We are of the view that the case before us can be disposed of by considering whether there is prima facie any deception and hence infringement and whether there is any 'passing off'. Points 1, 2 and 3 are therefore not decided. POINT 4: This point deals with the principles applicable for grant of temporary injunction in trade mark cases. Before American Cyanamid Co,. vs. Ethicon Ltd. ( 1975(1) ALL E.R. 504(HL), it was customary for the Courts to go into prima facie case in trade mark cases for grant or refusal of temporary injunction. But in American Cyanamid, it was observed that it was sufficient if a triable issue was presented by the plaintiff and the merits need not be gone into. The said judgment was referred to by this Court in Wander Ltd. Vs. Antox India (P) Ltd. ( 1990 Supple. SCC 727). The judgment in Wander Ltd. was followed in Power Control Appliances Vs. Sumeet Machines (P)Ltd. ( 1994(2) SCC 448). But in Gujarat Bottling Co. Ltd. Vs. Coca Cola Co. ( 1995(5) SCC 545), this Court again adver ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... er as to render the use of the mark likely to be mistaken as the registered trade mark . Under section 2(d), the words deceptively similar are defined as follows: 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 . We shall now refer to the broad principles applicable to infringement actions and in particular to devices, labels and composite marks. Essential Features if copied: It is well-settled that the plaintiff must prove that essential features of his registered mark have been copied. The onus to prove 'deception' is on the part of the plaintiff who alleges infringement. A mark is said to be infringed by another trader if, even without using the whole of it, the latter uses one or more of its essential features . The identification of an essential feature depends partly on the courts' own judgment and partly on the burden of the evidence that is placed before it. Ascertainment of an essential feature is not to be by ocular test alone; it is impossible to exclude consideration of the sound of words forming part or the whole of the mark. (Kerly, Law of Trade Mar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... is to be compared with a word mark. ( Kerly para 17.07). After referring to the factors mentioned by Parker, J. in the above case, it is stated in Halsbury's Laws of England, (Vol.38, 3rd Ed., para 986) as follows: These considerations differ to some extent when device marks are being compared or when a device mark is compared with a word mark. Dissimilarity in essential features in devices and composite marks more important than some similarity: It has been stressed for the appellant that since the word PICNIC is used by defendant while plaintiff is using its misspelling PIKNIK, this is an essential feature which is similar phonetically or visually, and there is therefore infringement. It is argued that presence of even one essential feature in defendant's mark is sufficient. In our opinion, in the case of devices and composite marks, the above principle has not been strictly applied. The English Courts have laid emphasis more on dissimilarities in essential features rather than on similarity. The whole thing principle is based on first impression as seen by the Court. We shall now refer to these principles laid down in the English cases. When the question arises whet ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tion [( 1950) 67 RPC 209 at 215] which was a case relating to opposition to registration. The Master of Rolls followed the observations of Lord Russell in Coca Cola Co. of Canada Vs. Pepsi Cola Co. of Canada ( which was an infringement action )[(1942) 59 RPC 127) and observed as follows: Where you get a common denominator, you must in looking at the competing formulas, pay much more regard to the parts of the formulas which are not common - although it does not flow from that that you must treat the words as though the common part was not there at all . Where common marks are included in the rival trade marks, more regard is to be paid to the parts not common and the proper course is to look at the marks as whole, but at the same time not to disregard the parts which are common. Halsbury ( 3rd Ed. para 992) also says: where there are common elements to two or more marks, more regard must be paid to the parts that are not common but the common parts cannot be disregarded. (Coca Cola Co. of Canada Ltd. vs. Pepsi Cola Co. of Canada Ltd. (1942 (1) All.E.R. 615(PC). The above principles have been laid down in English law. Decisions of this Court -infringement, essential features and th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... those facts, that in an infringement action, it was sufficient if there was 'overall similarity' as would mislead a person usually dealing with one to accept the other if offered to him. Here the packets were of the same size and the colour scheme and design were having close resemblance. The marks should not be kept side by side and compared. The essential features of both marking were a girl with one arm raised and carrying something in the other while the cows or hens were near her, in the background of a house. The decision of this Court in Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories ( AIR 1965 SC 980), was a case where the respondent-registered holder of the trade mark opposed the appellant's registration. The question of deception arose in that context. Both were using the word 'Navratna Pharmaceutical laboratories' in connection with sale of Ayurvedic medicines. It was held that for judging whether the later mark was deceptive, it was sufficient if the similarity was so close visually, phonetically or otherwise. If the essential features had been proved to be adopted by the opposite party, that was sufficient. The fact that the get-up, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... at occurring between the words K and N on the plaintiff's mark. On the other hand, the defendant's mark contains the words PICNIC in a straightline, the script is normal and the words `Cadbury' are written above the words PICNIC. Neither the peculiar script nor the curve nor the boy with a hat are found in the defendant's mark. It is true that there is phonetic similarity and use of the word PICNIC. But what is the effect of the dissimilarities? This is the crucial part of the case. It is here that sufficient care is to be taken in applying the principles. In our opinion, in the present case, three tests to which reference has been made above, have to be applied. The first one is this: Is there any special aspect of the common feature which has been copied? The second test will be with reference to the `mode in which the parts are put together differently? That is to say whether the dissimilarity of the part or parts is enough to mark the whole thing dissimilar (Kerly para 17.17 referred to above). The third test is whether When there are common elements, should one not pay more regard to the parts which are not common, while at the same time not disregarding the co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ' and section 2(1)(d) defines `deceptively similar' as situations where one is `deceiving' others or `confusing' others. We have to keep in view the distinction between the words `deceive' and `confuse' used in section 2(1)(d). These words which occur in the various trade mark statutes have been explained in Parker-Knoll vs. Knoll International [(1962) RPC 265(HL) (pp.273-274)] by Lord Denning as follows: Looking to the natural meaning of the words, I would make two observations: first, the offending mark must `so nearly resemble' the registered mark as to be `likely' to deceive or cause confusion. It is not necessary that it should be intended to deceive or intended to cause confusion. You do not have to look into the mind of the user to see what he intended. It is its probable effect on ordinary people which you have to consider. No doubt, if you find that he did not intend to deceive or cause confusion, you will give him credit for success in his intentions. You will not hesitate to hold that his use of it is likely to deceive or cause confusion. But if he had no such intention, and was completely honest, then you will look careful ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... igh Court was right in refusing temporary injunction. Point 5 is decided accordingly. Point 6: Passing off and infringement- differences: Here the point is in relation to relative strength of the parties on the question of `passing off'. As discussed under Point 5, the proof of resemblance or similarity in cases of passing off and infringement are different. In a passing off action additions, get up or trade-dress might be relevant to enable the defendant to escape. In infringement cases, such facts do not assume relevance. [ See Durga Dutt Sharma Vs. Navaratna Phamaceutical Laboratories Ltd. (AIR 1965 SC 980); Ruston Hornsby Ltd. Vs. The Zamindara Engineering Co. ( AIR 1970 SC 1649) and Wander Ltd. Vs. Antox India Pvt. Ltd. ( 1990 Supple. SCC 727)]. It is possible that, on the same facts, a suit for passing off may fail but a suit for infringement may succeed because the additions, the get up and trade dress may enable a defendant to escape in a passing off action. A somewhat similar but interesting situation arose in a dispute between two companies. In N.S.Thread Co. vs. James Chadwick Bros. [AIR 1948 Mad. 481], the passing off action failed. But thereafter James Chadwi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... action, the following principles have to be borne in mind. Lord Romer, LJ has said in Payton Co. vs. Snelling Lampard Co. (1900) 17 RPC 48 that it is a misconception to refer to the confusion that can be created upon an ignorant customer. The kind of customer that the Courts ought to think of in these cases is the customer who knows the distinguishing characteristics of the plaintiff's goods, those characteristics which distinguish his goods from other goods in the market so far as relates to general characteristics. If he does not know that, he is not a customer whose views can properly be regarded by the Court. [See the cases quoted in N.S.Thread Co. vs. Chadwick Bros. (AIR 1948 Mad. 481), which was a passing off action]. In Schweppes' case, Lord Halsbury said, if a person is so careless that he does not look and does not treat the label fairly but takes the bottle without sufficient consideration and without reading what is written very plainly indeed up the face of the label, you cannot say he is deceived. In our view, the trial Court in the present case went wrong in principle in holding that there was scope for a purchaser being misled. The conclusion was arr ..... 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