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TMI Blog2010 (2) TMI 1255X X X X Extracts X X X X X X X X Extracts X X X X ..... which according to the plaintiffs, are identical and/or similar to its own product. Consequential orders in the form of preliminary decree to render accounts, as also final decree for payment of money found due and payable, and of rendition of accounts is sought as well. Finally, a decree for delivering to the plaintiffs custody of all such products, packing material, boxes, cartons, labels, containers e.t.c, which bear the infringing mark 'WHIP TOPPING' or the impugned trade dress or get up, is also prayed for. 2. The plaintiffs' application being IA No. 1607/2004 under Order 39 Rule 1 2 of Code of Civil Procedure, 1908 (hereinafter referred to as 'CPC') was dismissed by a single Judge of this Court vide order dated 03.07.2007. Being aggrieved, the plaintiffs had carried the matter in appeal to the Division Bench. The Division Bench by an order dated 10.09.2008 passed in FAO(OS) No. 355/2007 disposed of the appeal with a direction, based on submissions of counsels for both parties, that the suit be put up for disposal by resorting to methodology of filing affidavit of evidence sans cross-examination. Accordingly, the court by its order dated 10.11.2008 fr ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... plaintiff No. 1, in a manner of speaking, responsible for the discovery of vegetable based whipped cream, made from soya bean. The research carried out under aegis of Robert E. Rich, led to the discovery that soya bean substance could be frozen, thawed and whipped. Thus came into existence, what the plaintiffs claim a miracle cream made from soya bean; a wholly non-dairy product. 4.2 The plaintiffs called the miracle cream RICH'S WHIP TOPPING. Being a non-dairy topping it spawned various non-dairy products including Rich's Bettercreme Icing and Filling, Rich's on Top non-dairy dessert, frozen eclairs and cream puffs, coffee Rich; which incidentally is claimed as the first frozen non-dairy creamer. 4.3 The plaintiffs it appears discovered another new product by the name of Freeze Flo . It is claimed that this is an all-natural process for soft foods, so that they remain soft while frozen, and hence can be served straight from the freezer. The plaintiffs claim that because of its expertise in manufacture and sale of frozen foods, non-dairy and baking products including frozen sea-foods specialties, soup bases, gravy mixes and powdered coffee, it has mustered an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... notice dated 23.04.2003 to the defendant. The defendant, however, refuted the plaintiffs contention vide their reply dated 13.05.2003. The defendant thereupon, filed a suit in the Distt. Court at Tis Hazari being suit No. 53/2003, which, I am informed, stands withdrawn in view of the fact that parties realized that the legal validity of their respective stands would really get determined in the present proceedings. 6. In the background of the aforesaid averments, as stated above, the plaintiffs have led evidence in support of the same by filing affidavits of eight witnesses. Briefly, each of the witnesses have stated as follows: 6.1 Mr Jill K. Bond (PW1) has adverted with respect to: the worldwide market reputation of its trademark RICH'S WHIP TOPPING ; which is an invention made under aegis of its founder Robert E. Rich in the year 1945; the trade mark WHIP TOPPING is registered in USA and Taiwan, in the form of proof exhibits PW1/5 and PW1/6 are cited; and lastly, the trademark RICH'S WHIP TOPPING is registered in USA, Pakistan, Thailand and Malaysia; reliance in this regard is placed on exhibits PW1/7 and PW1/12. 6.2 In particular, PW1 has deposed with resp ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... . In this regard invoices being Ex. PW2/3 to PW2/9 have been proved. PW2 has also deposed that plaintiffs maintain two websites being www.richs.com and www.whiptopping.com wherein it is claimed that information is available with regard to plaintiffs' product including product marketed under trademark whip topping / rich's whip topping . 8. Mr Priyakant Himatlal Shah (PW3), who is a consultant with plaintiff No. 2, has adverted to the effect that plaintiff No. 2 was incorporated on 16.08.1994 for manufacturing products, chiefly 'dairy-free topping' under the trademark of plaintiff No. 1 as per technical know-how supplied by plaintiff No. 1. For this purpose PW3 has stated that royalty is paid to plaintiff No. 1. PW3 has also alluded to the fact that plaintiff No. 2 is involved in production of non-dairy topping which is ultimately sold to bakers, confectioners, food service outlets, five-star hotels etc. PW3 has also deposed that defendant's trade mark BELLS WHIP TOPPING is similar to plaintiff No. 1 trademark WHIP TOPPING which forms part of the registered trademark of plaintiff No. 1 in India. PW3 has further stated that 'WHIP TOPPING' on its o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... eries, confectioneries, such as Oberoi Group, Taj Flight Kitchen, ITC Group, Surya Crowne Plaza, Nirula's etc. in Delhi. He has testified that the quality of the product under the brand of RICH'S WHIP TOPPING is very good and is in great demand. He has specifically adverted to the fact that selling the product under the brand name of BELLS WHIP TOPPFNG had created confusion, in as much as, he verily believed that plaintiff No. 2 had adopted another trademark by the name of BELLS WHIP TOPPFNG . 13. Mr Shikhil Nagpal (PW8), who is the Operational Manager of Everbake Bakers Pvt. Ltd, has deposed that they had been in the business since the year 2000. He has also testified that the plaintiffs trademark RICH'S WHIP TOPPING along with its trade dress comprising of red, blue and white packaging is easily recognizable and eye catching . He further stated that RICH'S WHIP TOPPFNG is used as a substitute to fresh dairy cream as it has greater shelf life and is easier to manage. 14. The defendant, on the other hand, has emphatically refuted the plaintiffs' claim of proprietary rights in trademark RICH'S WHIP TOPPFNG and WHIP TOPPFNG the trade dress ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... and hence, cannot be protected till it can be demonstrated that it has acquired a secondary meaning . The defendant has further averred that the product in issue is 'WHIP TOPPING' and it cannot be described in any other manner except by using that expression and especially when it is a manufacturer of the said product. It is the defendant's stand that the said word/expression 'WHIP TOPPING' is commonly used in the trade world over. According to the defendant 'WHIP TOPPING' is an imitation dairy product which is commonly used in making desserts, baked and frozen products by various manufacturers all over the world, and hence is publici juris . In this regard example of other manufacturers, which have used the word mark 'whip topping' in respect of their products, have been referred to in the written statement. For the sake of convenience they are extracted herein below: S.No. Name of the Company Product 1 Lego Foods Co. Ltd. Lego non-dairy Whip Topping 2 Kraft Foods Cool Whip Whipped Topping ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ) lastly, commission of tort of passing off by the defendant. 16. In support of his charge Mr Gupta made the following submissions: (i) Notwithstanding the fact that at the time of registration of the plaintiffs' trademark RICH'S WHIP TOPPING a disclaimer was entered with respect to the letter 'S' and the word 'Topping'; the defendant's mark BELLS WHIP TOPPING , (which is unregistered) is; deceptively similar to the plaintiffs registered trademark, (ii) plaintiff No. 1 as far back as on 1945 was responsible for inventing a non-dairy product which is capable of being whipped into foam for use in desserts, salads and confectionaries items e.t.c, which resulted in the product acquiring the name 'whip topping'. In short it is the invention in which plaintiff No. 1 has legal rights. (iii) In the country of its invention, i.e., U.S.A. 'Whip Topping' is registered with the plaintiffs' name. (iii) In India, the plaintiffs' registration of the mark RICH'S WHIP TOPPING dates back 13.11.1991, and thus carries with it a superior right qua the defendant by virtue of prior user. (iv) On discovering the defendant' ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ing' constituted a prima facie evidence of its validity, and since the plaintiff was the first one to obtains its registration it ought to be protected against the infringing mark adopted by the defendant. For this purpose reliance was placed on provisions of Section 31 of the Trade Marks Act and the judgment of Bombay High court in the case of Consolidated Foods Corporation v. Bradon Company Pvt. Ltd AIR 1965 Bom. 35. 19. It was further contended that the plaintiffs mark was a well-known mark in India and in accordance with the provisions of Section 11 of the Trade Marks Act there was every likelihood of defendant's mark being refused registration. 20. In particular, the learned Counsel submitted that the defence under Section 35 of the Trade Mark was not available to the defendant for the reason that it protects word marks which describe the character and quality of goods, that is, are used in adjectible sense. In the instant case, the learned Counsel submitted that the word mark 'whip topping' comprises of two words whip and topping, both of which are nouns. 21. It was contended that trademark WHIP TOPPING is not descriptive since it relate to a no ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Mr. S.K. Bansal, on the other hand, refuted the submissions made by the learned Counsel for the plaintiffs and supported the defendant's stand taken in the pleadings by taking recourse to the following arguments: The word or mark 'whip topping' is generic as it describes the product. For this purpose reliance is placed on the plaintiffs' own affidavit of evidence and documents where 'whip topping' has been described as a product. It was submitted by Mr Bansal that no trademark right can exist or can be acquired in relation to a product if it cannot be described in any other manner, even though, it has acquired secondary significance through use and publicity. In the alternative it was submitted that the mark 'whip topping' is descriptive as it is used to describe the product and does not, therefore, have any trademark significance. The mark 'whip topping' is publici juris as it is commonly used in the trade pertaining to non-dairy products. It was contended that the mark RICH'S WHIP TOPPING has been registered consciously subject to disclaimer, and that it can be protected only in its composite form, and not when 'whip toping' ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... istinction between the definition of a 'mark' provided in Section 2(1)(m) and 'trademark' contained in Section 2(1)(zb). He submitted that the word 'mark' is consciously defined in the Trade Marks Act in wide terms, and has innumerable possibilities on account of the inclusive nature of the definition. In contradistinction, he submitted, the definition of trademark is narrow being confined to those marks which are used in relation to goods for the purpose of indicating and identifying the source and the origin of goods. 27. According to Mr Bansal the remedy of infringement is a statutory remedy, which is controlled and limited by the provisions of the statute and based on the mark found in on the register of trademark authority. Reliance in this regard was placed on the provisions of Section 2(1)(w) of the Trade Marks Act. Mr Bansal went on to contend that infringement is subject to statutory conditions as contained in Section 27, 28(2), 30, 35 and 37 of the Trade Marks Act. Mr Bansal further contended that the rights conferred by registration of mark are subject to the conditions and limitations attached to the registered mark, in the present case the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... iginality in the trade dress or the art work; there is only a bald averment with respect to plaintiffs' claim of the copyright in the trade dress and the artistic work. The plaintiff has no right in the colours red, blue and white; the trade dress of the plaintiff is undoubtedly different from that of the defendant. Similar submissions were also made vis-a-vis the instructions on the labels used by the plaintiff. 30. Based on the aforesaid submissions Mr Bansal has submitted that there is no cause of action which one could say had arisen in favour of the plaintiff in order to enable it to maintain a suit either for infringement of its trademark or violation of copyright or even in respect of tort of passing off. 30.1 In support of his submissions the learned Counsel relied upon the following: Oxford English Referenc Dictionary, 2nd Edition, Revised; Mc Carthy on Trade Marks, Generic Terms; CES Publishing Corporation v. St. Regis Publication Inc. 531F2d 11,188 U.S.P.Q 612; Abercrombie and Fitch Co. v. Hunting World, Incorporated 1976 WL152702(CA.2(N.Y)), 189U.S.P.Q. 759; Bharat Enterprises (India) v. C. Lall Gopi Industrial Enterprises and Ors. 1999 PTC (19) 598; Canadian ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ilk and milk products; edible oils and fats, included in class 29; (vi) the United States Patent and Trade Mark Office has registered the word mark Whip Topping with a disclaimer entered by the owner, (i.e., the plaintiff No. 1) in respect of its exclusive right to use 'topping'; and (vii) lastly, the certificate issued by New Zealand company's office, w.e.f 12.11.1991 which is valid till 12.11.2010, in respect of mark and device and the descriptor RICH'S WHIP TOPPING is subject to the limitation that registration of the said mark shall not give plaintiff No. 1 the exclusive right to use the word 'Whip Topping'. (See document at page 14 of the defendant's compilation) 32. The position, therefore, in so far as India is concerned is that, the plaintiffs have disclaimed their rights on letter 'S' and word 'Topping' which, in sum and substance, denudes any practicable efficacy in the trademark Whip Topping (assuming it is one). 32.1 The plaintiffs, however, claim that the registration of its mark RICH'S WHIP TOPPING has resulted in conferment of statutory rights against the infringement of its mark as well as common la ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ct to other provisions of the Trade Marks Act the registration of the mark shall confer on the owner exclusive right of use of the trademark in relation to the goods or services in respect of which the mark is registered, and consequently enable a registered proprietor to obtain necessary relief in the event of infringement of his trademark, in the manner provided in the Act. This is subject to the mark being a valid. The validity of the mark in an action for infringement can be enquired into either by the court or the statutory authority depending on where and at which stage the action is pending. [See Lowenbrau AG and Anr. v. Jagpin Breweries Ltd and Anr. 157 (2009) DLT 791]. The right to exclusive use of a registered mark conferred upon the owner of such a mark is subject to conditions and limitations to which the registration is subjected to. In the context of the present case in my view Sub-section (2) of Section 28 of the Trade Marks Act would bring within its ambit any disclaimers which are set out at the time of registration of the mark. 32.7 Section 29 of Trade Marks Act sets out as to what would constitute an infringement of a trade mark. Sub-sections (2) and (4) of Se ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ion 31, however, makes it clear that the validity of a registered trade mark shall not be challenged on the ground that it was not registrable trade mark under Section 9 except on evidence of distinctiveness and that such evidence was not submitted to the Registrar before the registration. 32.10 Section 33 of the Trade Marks Act gives statutory recognition to the defence of acquiescence where an owner of a registered trade mark allowed continuous user of a rival mark for a period of five years. 32.11 Similarly, Section 34 of the Trade Marks Act saves the right of an owner of a trade mark which is identical with or nearly resembling the registered trade mark provided: the said person had continuously used the trade mark from a date prior to the use or to the date of registration of the first mentioned trade mark, whichever is earlier in relation to the goods and services in issue. 32.12 Section 35 of the Trade Marks Act gives statutory protection (against interference by a proprietor or a registered user of a trade mark) to persons who make bonafide use of a registered mark as its own name or place of his business or of the name or name of the place of business of his prede ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... k. (viii) If a mark is registered it matters little whether the infringing mark is relatable to the goods in issue once it is held to be identical or deceptively similar to the registered mark, as long as the registered mark has acquired a reputation in India and the use of the infringing mark is made by the infringer without due cause only to take unfair advantage and/or in a manner which results in detriment to the distinctive character or repute of the registered trade mark. (ix) The defendant, can resort to the defence of honest use in accordance with the practices of the industry or commercial trade as long as the use is not such which takes either unfair advantage or is detrimental to the distinctive character or repute of the registered mark. (x) A registered mark is not infringed where the use of the registered mark is only to indicate the kind, quality, quantity, value, intended purpose or geographical origin or even the time of production of goods and services. (xi) A defendant can also adopt the defence of a prior continuous user from a date prior to the use or registration of the registered mark. (xii) The defendant is also not prevented from using the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... distinctive character. 35.1 In my view, in order to come to a conclusion whether or not a given mark achieved distinctiveness the evidence placed on record will have to be appraised keeping the following in mind:- First, does the mark remind the consumer of the trade origin. In other words, does the trade origin get related to the propounder of the mark and none other. Second, has the mark acquired sufficiently distinctive character that the mark has become a trade mark . The use of a mark does not automatically translate into distinctiveness. [See Shredded Wheat Co. Ltd v. Kelloggs of Great Britain Ltd. (1940) 57 RPC137 British Sugar PLC v. James Robertson and Sons Ltd. 1996 RPC 281 ]. 35.2 Evidence on record placed by plaintiffs does not lead to such a conclusion. There is no evidence of consumers on record which would suggest that use of the words 'WHIP TOPPING' brings to mind the product manufactured by the plaintiffs. PW7 who is the distributor of plaintiff No. 2 has laconically stated that the infringing mark has created confusion. Being a distributor of plaintiff No. 2 his evidence cannot be given much weight. Similarly, PW8 has extolled the virtues of the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 39; 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 'generic' as well as 'descriptive' of the product. The submission of Mr Gupta that the words 'WHIP TOPPING' is distinctive because it relates to a non-dairy product is not substantiated by any evidence on record which would demonstrate that the words WHIP TOPPING are associated only with a cream which is not dairy based. 37. It is not disputed by the learned Counsel for the defendant, as it cannot be, that descriptive words and expression can be registered. Even if they are not registered they can be protected ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ark 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. 39. Consequently, this brings me to the submission of the plaintiffs that the defendant's use of the infringed mark constitutes passing off. In this connection, let me reiterate the well known parameters of what constitutes passing off. Passing off as is ubiquitously held in most jurisdictions subject to usual turn of phrase or change of phraseology, a tort of false representation, whether intentional or unintentional whereby, one person att ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ndling instructions/directions for use of the product. Though the instructions and the directions may have an element of similarity, unless the plaintiff is able to adduce evidence to support its claim, which, as stated above, it did not produce i.e., it is the originator of those instructions; it cannot seek any rights in respect of the same. 41. Let me also deal with some of the other submissions made on behalf of the plaintiffs. The argument of Mr Gupta that the sales shown by the defendant is only ₹ 1.7 crores, that too, in the year 2002-03 which is not supported by requisite evidence, cannot in my view enure to the benefit of the plaintiffs at the final stage because the onus of proof with respect to distinctiveness of the mark lay on the plaintiff, which in my opinion, it has not been able to discharge. 41.1 The other submission of Mr Gupta that the defendant shall not be able to obtain registration of its mark in view of the provisions of Section 11 of the Trade Marks Act is also predicated on a finding that the plaintiffs' mark is well-known in the trade. Priority of use alone shall not suffice for the purposes of Section 11 of the Trade Marks Act, given t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... WHIP TOPPING which forms a part of the plaintiffs mark are not a coined words but are both generic and descriptive of the product. The words have not acquired a secondary meaning. (v) In view of the observations above, the issue No. 6 is also answered against the plaintiff. The plaintiffs are hence not entitled to any damages as claimed or at all. (vi) In so far as issue No. 11 and 12 are concerned, I am of the view that both these issues have to be found in favour of the plaintiff. The plaintiff is not guilty of concealment in view of the fact that the document pertaining to disclaimer of letter 'S' and the word 'Topping' had been filed. Even though it is conceded, and I must say, quite fairly by the learned senior counsel for the plaintiff that the pleadings do not allude to the aspect of the disclaimer, this, in my view, may have been oversight, which cannot be termed as an act of concealment. In any event, as submitted by Mr Gupta, this cannot determine the outcome of the proceeding in the final analysis. Since, in any event, every issue has been determined on merits this issue has really been relegated to the background. Accordingly, I find the issue in fa ..... X X X X Extracts X X X X X X X X Extracts X X X X
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