9911796707
TMI Blog2010 (2) TMI 1254X X X X Extracts X X X X X X X X Extracts X X X X ..... colourable imitation thereof, whether by using the expression by itself 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, cakes, pastry and confectionery, ice, honey, treacle, yeast, baking powder, salt, mustard, pepper, vinegar, sauces, spices, ice. 13.08.2005 YO!China (Label) 1194647 32 Beer, ale and port, mineral and aerated waters an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nt 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 flavours i.e., "Masala Yo!" and "Chilly Chow Yo!". The packing of the appellant's product also displays the words "Open, Fill, Go!", which, according to the responde ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ppellant 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... oceedings seeking cancellation of the respondent's registration before the Intellectual Property Appellate Board on 19.07.2008 and the same are pending. It was also contended that "Yo" and "Yo!" were commonly used in the trade for the purposes of brand imaging so as to target 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 t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e dispute was between the names of two websites, namely, "Yahooindia.com" and "Yahoo.com". The learned Single Judge also found, prima facie, that there was no merit in the appellant's submissions that the use of "Yo!" by it was not likely to lead to any confusion as it was used in conjunction with the words "Masala" and "Chilly Chow" and the trademark "Maggi". The learned Single Judge observed that "Yo!" was distinctive of the goods and services of 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 fo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e us by the learned Counsel for the appellant that the learned Single Judge erred in holding that the provisions of Section 29(4) and (5) applied inasmuch as this was not even a case pleaded in the plaint. The suit is based on the pleadings that the goods of the appellant and the respondent are the same/similar. A reference was made to paragraph No. 24 of the plaint: 24. It is well settled principle of law that if the essential features of a registered Trade Mark are adopted by the Defendant, then the fact that other writings or marks on the goods or packaging in which the Defendant sells his goods 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 t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... me, the learned Counsel submitted that, as there is no similarity whatsoever between the competing trademarks and the packaging, the question of passing off also would not arise. The appellant's packaged noodles are well distinguished by the well known trade mark MAGGI and its distinctive packaging. Furthermore, the appellant has a 91% market share and ₹ 493 crores annual turnover as compared to respondent's total turnover of ₹ 21 crores. Thus, the question of piggybacking or trading upon the goodwill of the respondent by the appellant defies all logic. Reliance was placed on Durga Dutt Sharma v. N.P. Laboratories AIR 1965 SC 980 (para 28). 19. Lastly, it was contended on behalf of the appellant 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 submitt ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... marks on the goods or on the packets in which he offers his goods for sale show marked differences or indicate a trade origin different from that of the registered proprietor of the mark, would be immaterial. 22. Thirdly, it was submitted on behalf of the respondent that the appellant, by using the mark "Yo!" in the course of its trade is causing serious injury by diluting the trademark of the respondent. Reliance was placed on Catterpillar Inc. v. Mehtab Ahmed and Ors. 2002 VI AD (Delhi) 181 to submit that a trademark is like a property and no unauthorized person can be permitted to commit trespass. 23. Fourthly, it was contended that the appellant has failed to show as to how "Yo!" could be regarded as a flavour descriptor when used in conjunction with "masala" and "chilly chow" so 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... to be determined: 1. Whether the appellant uses the expression "Yo" (with or without the exclamation mark "!") on its Maggi Cuppa Mania products as a trade mark? 2. If the answer to point 1 is in the negative, would the present case fall under Section 29(4) or (5) of the said Act as held by the learned Single Judge? 3. Whether the expressions "Masala Yo!" and "Chilly Chow Yo!" can be said to be flavour descriptors and hence eligible for protection under Section 30(2)(a) of the said Act against an infringement action? Point 1: 29. The appellant has used the expression "Yo" in conjunction with "Masala" and "Chilly Chow" which describe the two flavours of the appellant's product Maggi Cuppa Mania. It has not used the said expression "Yo!" independently or as part of its trade mark which remains 'Maggi'. Nor is the expression used as a part of its product name "Cuppa Mania". Section 2(1)(m) of the said Act defines "mark" as follows: (m) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packagi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... photographs of the two variants of the Cuppa Mania products: From the manner in which "Yo" is used in the expressions "Masala Yo!" and "Chilly Chow Yo!" in the appellant's products displayed above it does not appear that it has been used for the purpose of indicating a connection between the appellant's products and the respondent. Consequently, the third ingredient mentioned above is not satisfied. 32. At this juncture, it would be appropriate to also deal with the learned Single Judge's observation that there was no explanation forthcoming from the appellant as to why it had used the exclamation mark (!) along with the word "Yo". First of all, the appellant did not use the word "Yo" independently. It was used in conjunction with "Masala" and "Chilly Chow". Secondly, since the expressions used by the appellant are "Masala Yo!" and "Chilly Chow Yo!", it cannot be said that the appellant used the mark "Yo!" (i.e., "Yo" with the exclamation mark "!") or that the exclamation mark "!" simply ended the whole expressions "Masala Yo" and ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... de mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. (emphasis supplied) 36. We may recall that the learned Single Judge held that the use of the mark "Yo!" by the appellant "appears" to fall within Section 29(4)(b) of the said Act. And, in so concluding, the learned Single Judge, in our view, fell into error. All the Clauses (a) to (c) of Sub-section (4) of Section 29 are to be cumulatively satisfied before a case of infringement can be established. It is not as if the said clauses are disjunctive or are to be read independently. It is not sufficient for making out a case of infringement under Section 29(4) of the said Act to say that the case falls under Clause (a) or Clause (b) or Clause (c). The conditions specified in all the three clauses have to be satisfied. This is obvious from the word "and" used in each of the said three clauses. 37. We need to co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e distinctive character or repute of the registered trade mark. 40. The first question which arises is this - does "Yo!" have a reputation in India? While the respondent has placed material on record to prima facie establish that it has continuously, and openly used the trade mark "Yo! China" for over six years in respect of its chain of restaurants, there is little, if at all, to suggest that it has used so used the mark "Yo!". We must emphasize that we are not, for the purposes of Clause (c), concerned with the registered trade mark "Yo! China" because that mark "failed" the test of Clause (a). This distinction between the two separate marks "Yo! China" and "Yo!", in the context of their separate and independent reputations in India, escaped the attention of the learned Single Judge. So, while the mark "Yo" as used by the appellant may be regarded to be similar if not identical to the respondent's registered trade mark "Yo!", there is nothing on record to establish, even prima facie, that the latter trade mark has been so continuously or extensively used that it has developed a "re ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s registered trade mark as his trade name or part of his trade name or name of his business concern or part of the name of his business concern, dealing in the goods or services in respect of which the trade mark is registered. The appellant has not used "Yo!" as its trade name (or part of its trade name). Nor has the appellant used the said marks as the name of its business concern (or part of such name of its business concern). Thus, infringement of the kind referred to in Section 29(5) is also not made out. 45. The answer to Point No. 2 is that a case of infringement is not made out against the appellant under Section 29(4) or (5) of the said Act. Point 3: 46. The question is whether the expressions "Masala Yo!" and "Chilly Chow Yo!" can be said to be flavour descriptors and hence eligible for protection under Section 30(2)(a) of the said Act against an infringement action? Section 30(2)(a) is as follows: (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 service ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... eral changes through time. The first change came as a result of the English decision (House of Lords) in the case of American Cyanamid Co. v. Ethicon Ltd. (1975) 1 All ER 504 (HL) wherein it was held (at page 510): "Your Lordships should in my view take this opportunity of declaring that there is no such rule. The use of such expressions as 'a probability', 'a prima facie case', or 'a strong prima facie case' in the context of the exercise of a discretionary power to grant an interlocutory injunction leads to confusion as to the object sought to be achieved by this form of temporary relief. The court no doubt must be satisfied that the claim is not frivolous or vexatious; in other words, that there is a serious question to be tried." This meant that the stricter regime of establishing a 'strong' prima facie case was replaced by the more liberal requirement of the plaintiff showing that his claim was not frivolous or vexatious in the sense that there was a serious question to be tried or a triable issue to be decided. The principle of sufficiency of a "triable issue" as a condition for grant of an interlocutory injunction was recognised i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... as it not only describes what amounts to infringement (see: Section 29) but it also makes provision for what does not amount to infringement (see: Section 30). 52. Thus, apart from examining the case in the context of Section 29 of the said Act only from the standpoint of the respondent/plaintiff, it was also incumbent upon the learned Single Judge to consider the relative or comparative strength of the appellant's/defendant's case both under Section 29 and Section 30(2)(a) of the said Act. The contention raised by the appellant that "Yo" was not used independent of the expressions "Masala" and "Chilly Chow", which clearly indicate flavours, but, as part of the complete expressions "Masala Yo!" and "Chilly Chow Yo!" and was, therefore, entitled to the protection under Section 30(2)(a), was 'strong' enough in the balance of comparative strengths to deny the respondent an interlocutory injunction. This vital consideration of the comparative strengths of the rival cases is missing in the impugned decision. 53. We are also of the view that the reliance placed by the learned Single Judge on Indian Shaving Products (supr ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 06). On the basis of the material on record it cannot be said that the dictionary and popular meaning of the word "Yo" as an exclamation or as an expression calling attention is lost and whenever the word "Yo" (with or without the exclamation mark) appears on a product or in relation to a service (even if used as a trade mark) the minds of the public are straightaway directed to the source of the product or service. At this interlocutory stage, there is nothing to suggest that the word "Yo" in "Masala Yo!" and "Chilly Chow Yo!" would create a connection in the minds of the customers with the respondent as being the source of the product. On the contrary, the use of the mark "Yo", retains its primary meaning of inviting attention or as an exclamation. This is all the more so because the appellant's distinctive trade mark "MAGGI" is prominently displayed on the appellant's "Cuppa Mania" products. 55. In view of the foregoing discussion, the impugned order cannot be sustained. We are mindful of the principle that, normally, an appellate court ought to be slow in interfering with the discretionary ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
