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TMI Blog2008 (8) TMI 977X X X X Extracts X X X X X X X X Extracts X X X X ..... iff's label registrations and its proprietary right to the word Ayu , the plaintiff seeks to stop the defendant's use of any trademark carrying any part of either word over which the plaintiff claims exclusivity. Both parties are substantial. The plaintiff's impressive sales figures and advertisement expenses are matched by the defendant's substantial reputation and noticeable presence in the market. The plaintiff complains of the defendant's use of the marks Ayucare , Ayurcare , Himani Ayurdhara and Himani Ayucare . The plaintiff's marks are registered for divers goods in Australia, Nepal, New Zealand, South Africa, the United Arab Emirates and the United Kingdom. The plaintiff's complaint comes upon the defendant's application for registration of its said marks in classes 3, 5 and 42 being published in the trademarks journals covering medicinal preparations, sanitary, cosmetic and beauty-care products. The plaintiff's case is of infringement with an alternative case of passing off in the defendant's use of its said marks. The petition begins with an assertion that the plaintiff carries on business of manufacture and sale of c ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... petitioner under the trade mark AYUR or AYU by prefixing or suffixing any other word. The defendant has used an opposition to the plaintiff's interlocutory petition being GA No. 2951 of 2007 and has also filed a vacating application by way of GA No. 3976 of 2007 seeking recalling of the ex parte ad interim order that the plaintiff obtained on September 19, 2007. The injunction that was granted in the plaintiff's favour on September 19, 2007 was in terms of prayer (b) of the plaintiff's petition which reads as follows: b) Injunction restraining the respondent whether by themselves or their servants, agents and assigns or each of them or otherwise howsoever from using the mark 'Ayucare', 'Ayurcare', 'Himani Ayurdhara' and 'Himani Ayucare' or infringing the registered trademark of the petitioner or any other trade mark deceptively similar to the petitioner's registered trademark 'Ayur'; The order dated September 19, 2007 was modified upon receipt of the defendant's vacating application on September 28, 2007, by restricting the operation of the order in terms of prayer (b) of the plaintiff's petition withi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he strength of the word or device marks predominantly containing the word Ayur having been registered in various countries which are parties to the Paris Convention. The plaintiff has handed over a copy of Notification No. S.O. 1041(E) of December 3, 1998 issued by the Ministry of Industry, Department of Industrial Development, entitled Ratification of Paris Convention where, under Section 131(1) of the Trade and Merchandise Marks Act, 1958, the Central Government declared various countries as convention countries and ratified the convention. Australia, New Zealand, the United Arab Emirates and the United Kingdom figure in the list appended to the notification and the plaintiff says that its registrations in the convention countries afford it exclusivity over the word mark Ayur in this country. The plaintiff has relied on Rule 33 of the Trade Marks Rules, 2002 to show that it is possible for a word mark registration to be obtained in Hindi in this country for such word mark to be entitled to all protection in respect of its registration under the 1999 Act. Rule 33 records as follows: 33. Transliteration and translation. -- Where a trade mark contains a word or words in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e maintained by the plaintiff. The judgment of a Single Judge of this Court in Three-N-Products Private Ltd. v. Karnataka Soaps Detergents Limited anr. proceeded on the basis of the plaintiff having a registration in the word mark. That would be evident from the opening paragraph of the report and from paragraphs 3, 4, 5, 8 and 14 thereof. The reasoning is found at paragraph 16 of the report: 16. Now, in this context, from the facts and statement and also from the evidence produced before me the Court is looking into the aspect as to who is the senior user of the mark 'Ayur'. It is stated in the petition that the mark 'Ayur' has been used since 1984 by the petitioner and as a matter of fact the same had been used by the predecessor-in-interest of the petitioner, which was then a partnership firm. The sale figures from the year, 1984 till September, 2003 have been given. Similarly, the amounts of the advertisement expenses of the same period have also been given. It is stated that the said mark had been in use in relation to the products of the cosmetic goods particularly the soap. Therefore, in the petition, apart from the statement I do not find any evi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... and defendant's trademark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is limitation, no further evidence is required to establish that the plaintiff's rights are violated. This is clear from the above decision. 19. From the materials placed, we are satisfied that the applicants have prima facie case in their favour, the needy users are illiterate farmers and common man, who eats the fruits and vegetables and whose interest has to be taken care of by this Court. The applicant being a prior user of the trademark since 1987, we are satisfied that if respondent is injuncted from use of applicant's mark, no prejudice would be caused to them. On the other hand, if they are not so injuncted, irreparable loss and injury will be caused to the applicant. We are also satisfied that balance of convenience is in favour of the applicant. The learned Judge failed to consider the similarities in the marks and the resemblance in the phonetic, visual and the basic idea represented in the registered mark and the infringed mark. Further, the learned Judge failed to note that the design, appearance, label, etc. of the products ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nt if the defendant's mark is so close to the plaintiff's - whether visually, phonetically or otherwise - and the court reaches the conclusion that there is imitation, no further evidence is required to establish that the plaintiff's rights are violated. The Supreme Court dismissed the defendant's appeal. A judgment reported at (2002) 2 PTC 355 (Info Edge (India) Pvt. Ltd. anr. v. Shailesh Gupta anr.) is placed by the plaintiff for the discussion at paragraphs 28 and 30 of the report: 28. The defendant has employed minor mis-spelling of the plaintiff's mark, although it has another such mark available to it, which is also a registered domain name. Therefore, the said action indicates and establishes dishonest intention on the part of the defendant. That appears to have been done with bad faith in order to gain advantage of spelling error made by the internet user while attempting to enter into the plaintiff's internet address on their web-browser. The very purpose of having two registered domain names by the defendant only establishes the dishonest intention and bad faith on the part of the defendant. The real intention behind registering two doma ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... splayed the mark SUPER CUP prominently and TEA CITY did not occupy a prominent position and rejected the respondent's submission that the trade mark of the appellant was a composite one of Tea City SUPER CUP . The Division Bench also upheld the Single Judge's opinion that the appellant's trade mark was SUPER CUP . However, the Division Bench held that the words SUPER referred to the character or quality of the tea and was merely a laudatory word and the count cup referred to the cup of tea. Accordingly, the conclusion of the Division Bench was that the phrase 'SUPER CUP was descriptive and laudatory of the goods of the appellant and, therefore, the appellant was not entitled to any order of injunction. 4. Without going into the question whether the conclusion arrived at by the Division Bench that the trade mark is descriptive is correct or not, it appears to us, and as is conceded by both parties before us, that the enunciation of the principle of law with regard to the protection available even in respect of the descriptive trade mark was wrong. A descriptive trade mark may be entitled to protection if it has assumed a secondary meaning which identif ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 39;s order and the Registrar carried an appeal therefrom. The plaintiff here relies on paragraph 14 of the report and the observation there that in view of the statutory provision that when a registered mark contains several parts it would not confer exclusivity of the various parts on the proprietor, it would not imply that a disclaimer of a part would always be unnecessary. AIR 1941 Bombay 3 (J.C. Eno, Ltd. v. Vishnu Chemical Co.) is placed by the plaintiff to suggest that merely because a mark may describe the associated product it would not rob the word written in English of its exclusivity. The Bombay High Court held in a passing off action that the mark Fruit Salt was so well-known in the trade to belong exclusively to the plaintiff's saline that they were not merely descriptive of the product but had assumed distinctiveness. The plaintiff got the injunction against the defendant's mark Falaxar upon the court's appreciation that the defendant's mark was made up of Fala meaning fruit and Kshar meaning salt in Marathi. The defendant has relied on a judgment reported at (1938) 55 RPC 125 = (1938) 1 All ER 618 (The Canadian Shredded Wheat Co., Ltd. v ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the public as being such, and is taken by them as being a fancy name, e.g., where a chemical description not generally known to the public has been adopted, or where an unusual substance unknown to the public is being used in the manufacture. Where the words are purely descriptive and in common use it is even more difficult to conceive a case in which they could acquire a secondary meaning. (Page 142) ... It must be remembered that shredded wheat was not only the name given by the inventor to a new product which could be baked into a biscuit, but was also descriptive of the product both as to its composition and its appearance. It must also be remembered that for a lengthy period the Plaintiff enjoyed a legal monopoly of making and selling in Canada the product shredded wheat baked into biscuits, and that, with the negligible exception of some shredded wheat biscuits called muffets, the Plaintiff continued to be the sole maker of the product, baked or otherwise. In these circumstances it was inevitable that the words shredded wheat and shredded wheat biscuits should become associated in Canada with the goods of the Plaintiff, since many members of the public would get to kno ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he parties have relied on three principal provisions of the 1999 Act. The plaintiff has referred to Sections 28 and 29 of the 1999 Act repeatedly in asserting its exclusivity over the words Ayur and Ayu . The defendant has stressed on Section 17 of the 1999 Act to contest the plaintiff's claim of exclusivity over the word Ayur and points to Ayu being lost in its Ayucare and Himani Ayucare brands. The three major sections provide as follows: 17. Effect of registration of parts of a mark.--(1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole. (2) Notwithstanding anything contained in sub-section (1), when a trade mark-- (a) contains any part-- (i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the tra ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rt of the public, or which is likely to have an association with the registered trade mark. (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public. (4) 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-- (a) is identical with or similar to the registered trade 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. (5) A registered trade mark is infringed by a person if he uses such 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 goods or services in respect of which the trade mark is registered. (6) For the purposes of this section, a person uses a registered ma ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... an association with the plaintiff's registered mark. The identity or similarity of the marks has to be assessed on the basis of the entirety of the mark as registered. The identity or similarity of the defendant's mark with the plaintiff's as referred to in clauses (a) and (b) of sub-section (2) of Section 29 of the 1999 Act has to be read in the context of Section 17(1) of the Act. Even if Section 29 of the 1999 Act is seen to be tempered by Section 17 thereof, if a device mark is pitted against another device mark or a word mark is pitted against another word mark, the tests would be simpler than in the present case. It is not as inconceivable, however, as comparing apples and oranges in putting up a device mark to stop a word mark or vice versa but there are inherent complexities. The right that the owner of a device or label mark obtains is, loosely speaking, somewhat similar to copyright. It is as much the writing or etching in a device or label, and the design and colour combination thereof, over which the registered proprietor gains rights as the manner of depiction thereof. It is possible that a registered mark is made up of several components which are d ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rk is capable of being broken in parts, the registered owner may not sue for infringement upon a part being copied by another. Section 17(2)(a) of the Act does not leave any gap. But clause (b) disclaims only such matters as are common to the trade or are otherwise not distinctive and leaves room for a registered owner to cite some unique, distinctive matter being an element of the registered mark to claim exclusivity and pursue an action for infringement. It is more than likely that clause (a) is more apposite for word marks and clause (b) the more appropriate for device or label marks. It is an entirely different matter, however, that the word Ayur does not appear to be strong enough to slip through the window that clause (b) provides. In the Delhi case involving this plaintiff (Yashwant ors.) it was held that the Hindi word Ayur in the way it is spelt does not find place in the Hindi dictionary. The Delhi High Court held that the Hindi word Ayur spelt with a long A at the beginning has a connection with Ayurveda as the Ayur part of the Hindi word Ayurveda is spelt with a long A and Ya with a short U . The defendant in the Delhi action sold footwear under the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of Industrial Property (which is the full form of the Paris Convention), convention countries form a union for protection of industrial property. The basis of the union is equal treatment of nationals and residents of the convention countries. The general principle of the Paris Convention is that if a mark is well known in a convention country as being the mark of a person who is either a national of another convention country or is domicile in or has a real and effective industrial or commercial establishment in another convention country, the mark would be protected in the first-named convention country whether or not the owner carries on business or has any goodwill in the first-named country. The plaintiff has understandably not proceeded to aver or establish the facts which would entitle the plaintiff to protection of its overseas marks in India under the Paris Convention. For a start, it does not appear that a national of a convention country can cite the registration of a mark in another convention country to establish his right in his home country. If the Paris Convention entitled a domicile in a country (as the plaintiff undoubtedly is a domicile of India by virtue of i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ade mark.--(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark. (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof. As observed in the Pub Squash case (Cadbury Schweppes Pty Ltd. ors. v. Pub Squash Co. Pty Ltd. (1981) RPC 429), the tort of passing off is no longer anchored in its early 19th century formulation, to the name or trademark or a product or a business. It is now recognised that the tort can encompass other descriptive material, such as slogans or visual images or advertisement campaigns that imply an association with the plaintiff's product, provided always that such descriptive material has become part of the goodwill of the product. The classical trinity, as the Parma ham case (Consorzio del Prosciutto di Parma v. Marks Spencer plc [1991] RPC 351 at 368-369) tests in an action for passing off have now come to be known, are: (1) that the claimant's goods or services have acqu ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... een brought by the plaintiff. There is no case made out by the plaintiff to prevent the defendant's use of either Himani Ayurdhara or Ayurcare in connection with its products on the basis of the plaintiff's rights in the word Ayur . Himani Ayucare is sufficiently different from the Ayu mark that the plaintiff asserts. Since it has been found that a case of infringement has been made out by the plaintiff in respect of the defendant's use of the Ayucare mark on the strength of the registered Ayu in favour of the plaintiff, such mark is not considered as part of the passing off case put forth by the plaintiff. The parties have produced the packets in which their rival products are packaged and it does not appear that the defendant has, deliberately or unwittingly, designed any of its products in the getup or packaging to be deceptively similar to or a colourable imitation of the plaintiff's. The considerations are different for brand Ayucare manufactured by the defendant as a prima facie case of infringement has been made out. Notwithstanding the tentative finding that the plaintiff has not acquired any exclusivity over the word mark Ayur , a c ..... X X X X Extracts X X X X X X X X Extracts X X X X
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