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TMI Blog2010 (2) TMI 1254X X X X Extracts X X X X X X X X Extracts X X X X ..... tself or as part of any other mark/name in respect of goods covered by the registration obtained by the respondent. The appellant has also been restrained from, in any manner, using the mark Yo! per se or in conjunction with any other logo/mark/letters or any other mark deceptively similar thereto, so as to pass-off or enable or assist others to pass-off their business and products as those of the respondent. 2. The respondent claims to have the following registered trademarks: Trademark Trademark No. Class Description of Goods/ Services Registration Date YO! 1345481 25 Readymade garments, T-Shirts included in class 25 02.06.2007 YO! (device of exclamation mark) 1345478 42 Restaurant included in class 42 30.05.2007 YO! China (Label) 1194649 30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes, flour and preparations made from cereals bread biscuits, ca ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... siness, trade identity and products/services from those of others. It is contended by the respondent that today Yo! China has become a brand name associated with quality Chinese Food at Chinese Prices and that the target market for the Respondent has been the market segment which comprises primarily of the youth, for reasons of affordability. It is further contended that in the last financial year (2008-09) the sales of the respondent were around ₹ 30 crores. It is submitted on behalf of the respondent that the word 'Yo' (without the exclamation mark) is primarily American Slang used for calling attention and the trademark Yo! (Yo with an exclamation mark) is coined and arbitrarily applied (not being descriptive in nature) by the respondent to its goods and services making it inherently distinctive. 5. The respondent is aggrieved by the fact that the appellant is manufacturing and marketing, inter alia, noodles (chowmein) under the name and style of Maggi Cuppa Mania in two flavours Masala Yo! and Chilly Chow Yo! . It is alleged that around April 2008, the appellant launched a product under the name and style of Maggi Cuppa Mania Instant Noodles in two ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... usage of Yo! , the appellant has placed on record printouts from various websites of businesses all over the world, which use the said expression Yo with or without an exclamation mark. They are--? Yo! Youth Outlook which has two further products/services Yo! Radio and Yo! Blogs . The said websites essentially cater to the youth and provide news etc. concerning the youth. Then, there is the website www.yofun.net, which has a product Yo! Fun . Similarly, there are products and services carrying the names--? Yo Mart , Yo la , Yo Gabba Gabba etc. There is also a site of software developers called Yo! Creations . Another voice solution and software development site does business under the name of Yo! . Interestingly, there is a chain of restaurants in the U.K, Ireland, Middle East and Malaysia, which carries on business under the name and style--? Yo! Sushi. Its takeaway service is called Yo! To Go . It was suggested by the learned Counsel appearing for the appellant that Yo! China and Yo! On the Go , which are allegedly used by the respondent have, in fact, been more than inspired by Yo! Sushi and Yo! To Go . 9. Before the learned Single Judge, the appel ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... arget the youth. The general use of the expression Yo! , both in day-to-day conversation and in the trade, clearly established that there was no question of the said expression having lost his primary meaning and having acquired a secondary meaning and, therefore, the respondent could not have any exclusive claim for its use. 10. It was also contended that Yo! had been registered in favour of the respondent in respect of 'restaurants' falling under Class 42, which was essentially a service and did not relate to any goods. On the other hand, the appellant's products were goods falling under Class 30 and were not services falling under Class 42. It was also submitted that Section 17 of the said Act clearly stipulated that when a trademark consists of several matters, its registration would confer on the proprietor exclusive right to the use of the trademark taken as a whole. Thus, it was submitted that while the respondent had registrations under Class 30 in respect of the mark Yo! China , the said registrations were in respect of the whole mark Yo! China and not just the mark--? Yo! . The registered mark--? Yo! China would, therefore, have to be taken as a wh ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the respondents and as such there was likelihood of confusion that the appellant's products were connected with those of the respondents. Referring to the decision in Midas Hygiene Industries Pvt. Ltd. and Anr. v. Sudhir Bhatia and Ors. 2004 PTC (28) 121 (SC), the learned Single Judge, observing that clearly an injunction must follow when the adoption of the mark was dishonest, allowed the application of ad interim injunction of the respondent. 12. The impugned order is assailed before us by the appellant on all the grounds urged before the learned Single Judge but, principally, on the ground that the learned Single Judge failed to appreciate that an action for infringement under Section 29(1) of the said Act could only be brought where the defendant uses a mark as a trade mark . According to the learned Counsel for the appellant, it is a condition precedent under Section 29(1) that, in order to constitute infringement, the mark complained of must be used as a trade mark i.e., in a manner indicative of trade origin as per the definition of trade mark under Section 2(1)(zb). Reliance was placed on Mothercare U.K. Ltd. v. Penguin Books Ltd. 1988 R.P.C. 113. It was submi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s are different are immaterial and the plaintiff has a statutory right to seek protection of his exclusive right to use his Trade Mark. A Trade Mark has only one source and no one other that the registered proprietor has the right to use the same. Yo! is the most essential feature of the plaintiff's Trade Mark. The use by the defendant of a mark which is identical to the plaintiff's trade mark amounts to infringement and the plaintiff has a statutory remedy to protect his mark. Further, the fact that the goods/services in question are almost identical, both catering to the same consumer base and both dealing with noodles (chowmein), enhances the chances of confusion. 15. It was further submitted that even otherwise, Section 29(4) did not apply as there was no trade mark usage of Yo! and that any other interpretation would render Section 29(1) redundant, which, in turn, would be against the permitted rules of interpretation. Reliance was placed on Illachi Devi v. Jain Society (2003) 8 SCC 413 . It was contended that what would not amount to infringement for identical goods , cannot amount to infringement for different goods and that the test of infringement applic ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... llant that the reliance placed by the learned Single Judge on Indian Shaving Products Ltd. (supra) and Yahoo Inc. (supra) was wholly misplaced inasmuch as both these were cases of trade mark usage , which is not the case here. It was therefore submitted that the impugned order be set aside. 20. On the other hand, the learned Counsel for the respondent fully supported the impugned order and contended that no interference was called for. First of all, it was submitted that the plea of the appellant with regard to Yo! not being used by it as a trade mark was not tenable. According to the learned Counsel, Section 29 of the said Act has various independent subsections under which cases of infringement may fall. Each sub-section provides for a different situation and each is independent of the other. It was submitted that, by virtue of Section 29(4), protection is provided to a registered trade mark even if the impugned mark is used for goods and services which are not similar to the goods and services in respect of which the trade mark is registered. It was further submitted that Section 29(4) does not require that the impugned mark has to be used as a trademark. In this context, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... as to enable the appellant to seek protection under Section 30(2)(a) of the said Act. It was submitted that the appellant has been using Masala as a flavour descriptor on its regular packaging of Maggi 2 minutes noodles for many years. As such, there is no justification for the appellant to use Yo! . According to the learned Counsel for the respondent, from the above, it is abundantly clear that the appellant was aware of the success of respondent's Yo! On the Go product and the whole idea of adding the suffix Yo! to its aforesaid two flavours Masala and Chilly Chow was to give an impression of commercial connection between the two and thereby capitalize on the goodwill of the respondent's product when targeting a new market segment. 24. Fifthly, it was submitted that the trademark law does not make any distinction between a larger market share holder and a smaller market shareholder, thus, the plea of the appellant with regard to it having a 91% market share is of no consequence. Further, whether Yo! is used in small or big letters is immaterial as the use itself constitutes infringement. 25. Sixthly, with regard to the appellant's contention that ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he said Act defines mark as follows: (m) mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof; Clearly, Yo (with or without the exclamation mark), being a word, would fall within this definition of mark . Section 2(1)(zb) defines trade mark in the following manner: (zb) trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and-- (i) in relation to Chapter XII (other than Section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ssions Masala Yo and Chilly Chow . The word Yo is an interjection and is used especially to call attention, to indicate attentiveness, or to express affirmation (see: Merriam-Webster Online Dictionary). The words Masala (spice or spicy) and Chilly Chow denote flavours. The word Yo following these words only calls attention of the customers to the flavours and expresses affirmation of the flavour of the product. The exclamation mark ! ends the expressions with a further emphasis. 33. Coming back to point No. 1, we find that there is clear prima facie indication that the mark Yo (with or without the exclamation mark ! ) was not used by the appellant as a trade mark. The consequence of this is that infringement under Section 29(1) is not made out. Let us explain how. Section 29(1) stipulates that: a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark li ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s. 37. We need to consider each clause. Clause (a) of Section 29(4) requires that the mark in question be identical with or similar to the registered trade mark. The mark used by the appellant is Yo (with or without the exclamation mark). The respondent's trade mark Yo! is registered for T-shirts etc., under class 25 and for restaurants under class 42. The respondent's trade mark Yo! China is registered under classes 29 (meat, fish, poultry etc.), 30 (which includes noodles) and 32 (Beer, ale, port etc.). While the appellant's mark Yo (with or without the exclamation mark) could be regarded to be identical with or, at least, similar to the respondent's registered trade mark Yo! , the same cannot be said in respect of the respondent's trade mark Yo! China . We agree with the submission made on behalf of the appellant that the trade mark as a whole is to be seen in view of the provisions of Section 17 of the said Act. Considered in this light, the mark Yo and the registered trade mark Yo! China , taken as a whole, are neither identical nor similar. So, it is only when Yo is compared with the registered trade mark Yo! that the condition specifie ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... there a tenable explanation for the use of the mark Yo by the appellant? It must be remembered that we have already concluded, prima facie, that the mark Yo has not been used by the appellant as a trade mark. In fact, the word Yo has been used as part of the expressions Masala Yo! and Chilly Chow Yo! . The appellant has explained that the word Yo has been used in both expressions to invite the attention of the customers (and, particularly the younger customers who are prone to use the word Yo in their day-to-day conversations) to the flavours masala and chilly chow . This, to us, is a plausible explanation. Consequently, it cannot be said that the mark Yo was used without due cause. Mere use of the mark Yo would not bring it within the mischief of Clause (c) of Section 29(4). Because if that was the intention of parliament then the expression without due cause would not have been used. 42. The third and last question which could have arisen in the context of Clause (c) is - does the use of the mark Yo by the appellants take unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark? But such a question does ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... expression, there might have been merit in what was contended on behalf of the respondent. Here, Yo is used as an integral part of the expressions Masala Yo! and Chilly Chow Yo! . The said expressions do describe the characteristics of the goods in the sense that they refer to the flavours of the noodles. It was argued on behalf of the respondent that Yo by itself does not describe any flavour and that it has been added 'mischievously'. But, it may be argued with equal vigour that the use of the word Yo is not mere surplusage or mischievous as it has been used to provide emphasis to the flavours Masala and Chilly Chow in a manner which appeals to the customers and, especially, to the younger customers. If the latter argument were to be accepted then the defence under Section 30(2)(a) of the said Act would be available to the appellant. That, of course, would have to await a final determination in the suit. But, at this interlocutory stage the least that can be said is that the appellant's submission that the mark Yo has been used as a part of a flavour descriptor is at least an arguable one and cannot be shut out at the threshold. 48. In this context i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... preme Court clarified that the decision in American Cyanamid (supra) was looked at from a fresh perspective in Series 5 Software Ltd. v. Clarke (1996) 1 All ER 853 (ChD) inasmuch as it was observed in the latter case that American Cyanamid (supra) could not be understood as having laid down anything inconsistent with the old practice and that it did not lay down that the relative strengths of the case of each party need not be gone into. The Supreme Court also noted that 'now' the courts in England go into the question of comparative strength of the cases of rival parties, apart from the other requirements of balance of convenience and irreparable injury which cannot be compensated in money. The Supreme Court, after noting the said development in the law, held: 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. 50. This was re-affirmed by the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 (at page 87): One of the questions which this Court considered was that for grant of temporary injunction, should t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ina had acquired distinctiveness through usage since 2002. He also observed that, prima facie, it appeared that these marks had acquired a 'secondary' meaning insofar as chowmein (noodles) were concerned. We shall briefly dwell on these prima facie conclusions of the learned Single Judge. We have already indicated that though there is material to show continuous use of the mark Yo! China by the respondent in respect of its restaurant business, there was no material before the learned Single Judge with regard to the use, by the respondent, of the mark Yo! It must also be remembered that the dispute here is with the use of the mark Yo (with or without the exclamation mark) and, therefore, the comparison has to be made with the respondents registered trade mark Yo! and not Yo! China which, taken as a whole, cannot be confused with Yo . There was no material before the learned Single Judge to conclude, prima facie of course, that Yo! had acquired distinctiveness through usage since 2002. A trade mark acquires distinctiveness when, in the eyes of the public, it distinguishes the goods or services connected with the proprietor of the mark from those connected with o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of Greater Mumbai (2006) 5 SCC 282] 127. The appellate court may not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. 128. However, in this case the courts below proceeded on a prima facie misconstruction of documents. They adopted and applied wrong standards. We, therefore, are of the opinion that a case for interference has been made out. 56. We have not merely reassessed material and arrived at a conclusion different from that of the trial court when, the view of the trial court was also a reasonable view. We find that on the material available at this interlocutory stage, the view taken by the learned Single Judge was not at all reasonably possible on a proper application of settled principles of law and express statutory provisions. It is because of this reason that the impugned order cannot be ..... X X X X Extracts X X X X X X X X Extracts X X X X
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