9911796707
TMI Blog2001 (3) TMI 1062X X X X Extracts X X X X X X X X Extracts X X X X ..... ed to as 'Godfrey Phillips') case set out in the plaint is as under: M/s Godfrey Phillips carries on business of manufacturing and selling various brands of tea. Since 1988 a new adopted brand SUPER CUP was advertised and marketed by them and for the said purpose they incurred large expenditure. Their expenditure has progressively increased from ₹ 27 lacs in 1988-89 to ₹ 285 lacs in the year 1995-96. Similarly the sale figures also increased in this period from ₹ 13 lacs to ₹ 1,898 lacs and the total quantity sold from 23 tons to 2184 tons. M/s Godfrey Phillips came to know in December, 1995 that defendant/appellant-M/s Girnar Food & 'Girnar Food') was advertising and offering for sale by using packages bearing similar or deceptively looking trademark SUPER CUP TEA by wrongfully and dishonestly copying and adopting Godfrey Phillips's trademark. M/s Girnar' Food had attempted to derive unfair benefit from M/s Godfrey Phillips' goodwill and reputation gathered from the superior quality, goodwill and reputation pertaining to the trademark SUPER CUP. On January 11, 1996, M/s Godfrey Phillips issued a cease and desist notice to M/s G ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ntial feature of the plaintiff's trade mark TEA CITY LABEL. The defendant's trademark was GIRNAR and SUPER CUP TEA was their brand name which was used Along with their registered trade mark GIRNAR and it is the use of GIRNAR and other features which distinguishes their goods from those of the plaintiff's using SUPER CUP. 5.In the replication while reiterating the contents of the plaint and filling supporting affidavits and documents, the plaintiff did not deny the disclaimer issued by them for the words SUPER CUP but pleaded that in an action for passing off, the plea of disclaimer qua registration is of no relevance. 6. The learned Single Judge recorded the following findings:- (a) That the legal position is that when the trade mark consists of words or device descriptive or laudatory of the goods prima facie not distinctive in relation to the goods to which it are applied no right of property can be said to have been acquired in the trademark so as to entitle the holder to seek restraint on others from the use of it on similar goods. The words which are descriptive of goods are not prima facie considered distinctive. It is required to be established by evidence th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... name of Girnar when the work 'Super Cup Tea' and the device of cup and saucer was added alongside the trade mark Girnar; (i) That no plausible Explanation was given from the defendant's side for adopting SUPER CUP with the device of cup and saucer; (j) That the basic features of the two marks have deceptive similarities or likely to consumers/customers and the trade; (k) That the defendant cannot be said to have acted honestly in the absence of a plausible Explanation; (l) That it is a reasonable inference that the sole object of the defendants is either actually misleading the public or taking undue advantage of the goodwill in the trade of the plaintiff; (m) That the defendant's action are calculated me lead persons to believe that the goods of the defendant are the goods of the plaintiffs; (n) A strong prima facie case has been made out by the plaintiff and the balance of convenience is also in favor of the plaintiff. Simultaneous use by Godfrey Phillips & M/s Girnar Food of the mark SUPER CUP is bound to lead to confusion in the trade & cause irreparable loss to the business and goodwill of the plaintiff. plaintiff was using the trade mark since 1989 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... even though no monopoly in word SUPER or Cup is claimed. The word SUPER is laudatory of the Cup and not tea. SUPER CUP, Therefore, is an invented expression. Godfrey Phillips have admitted in appeal that the word SUPER CUP is laudatory of the cup and SUPER CUP is not an invented expression and if SUPER CUP was an invented expression, there is no Explanation why another application was filed for SUPER CUP on 19.4.1996. (ii) The learned Single Judge erred in holding that the plaintiffs' trade mark was SUPER CUP. That the trade mark of the plaintiff is Tea City Label with the descriptive words "SUPER CUP" and SUPER. (iii) The trade mark of the defendant is not SUPER CUP but GIRNAR with device of snow covered mountain and with the descriptive words SUPER CUP TEA. (iv) Neither the plaintiff nor defendant are thus entitled to claim proprietary rights in the use of the wholly descriptive and laudatory words "SUPER CUP TEA". The plaintiffs' tea in fact is sold as "Tea City Sup." or "Tea City Super Cup" and not as "Super Cup" per se and learned Single Judge erred in not considering this fact. (d) The findings of the learned S ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... extract to demonstrate why cup is a synonym for tea:- "It is perhaps best symbolized by the "early morning cuppa" sipped in bed on awakening, prior to washing and dressing." "She assumed me that Monsieur le Landgrave drank forty cups every morning." (i) It is thus submitted that the cup in English language is synonym with tea and consequently the word such as 'Cup' or 'Super Cup' refers to the tea and not to the cup. Word 'Super Cup' cannot acquire secondary meaning under any circumstances or for any amount of user and in any event the appellant is a prior user for the word 'Super' being used by it since 1979 and the device of Cup from 2.2.1979 for HILTOP RED CUP and device of Cup of GIRNAR green pouch from 23.21983. (j) The defendants/appellants used the word SUPER of the plaintiffs/respondents for tea many years prior to the date when the plaintiffs came on to the scene. Learned counsel for the appellant has relied upon the device of cup and the user of the word SUPER by it much prior to the user of the plaintiff/respondent. (k) The learned Single Judge erred in holding that no plausible Explanation was given b ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Find later /u> (1871 R. 146) 17 - EQUITY CASES 29. He has also relied on case "SUPER WOUND" reported in 1988 RPC 272 where the registration of "SUPER WOUND was refused. The word "Wound" was held to be descriptive of guitar strings and the word "Super" denoted excellence. The above judgment held that the mere joinder of the 2 descriptive words does not give the joint word the necessary element of distinctiveness to enable registration. (o) He has also relied upon McCarthy Vol.I. 1994 Edition where it is observed that SUPER BLEND and SUPER GEL were held to be descriptive marks. He has in particular relied upon at Page 11.10 of McCarthy wherein it has been held as follows:- "Use of the laudatory prefix "Super" often will be taken by customers merely as a description of the alleged superior quality or strength of the product. For example, the composite term SUPERHOSE ! for hydraulic hose was held merely descriptive as a whole, the Board noting that addition of an exclamation mark cannot elevate an otherwise descriptive term to the status of a distinctive trademark." (p) Learned counsel for the appellant further submitted tha ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... unsel for appellant relied on World Athletics & Sporting Publications Ltd. Vs A.C.M. Webb (Publishing) Co. Ltd. 1981 FSR 27 (Athletics) to contend that where the trade name chosen by the plaintiff is in common use for his trade some confusion is inevitable and even small differences in such a case will be sufficient to avert confusion. He has also relied upon Salaried Persons Postal Loans Ltd. Vs Postal & Salaried Loans of Glasgow 1966 RPC 24 to contend that if traders chose to name themselves or their business by purely descriptive name, the user by someone else in the same line could not be complained off unless it was shown that these were being used so as to injure the plaintiff. (q) Learned counsel for the appellant further submitted that the learned Single Judge has erred in holding that in an action for passing off. disclaimer in respect of a trade mark or a part of the trade mark is wholly irrelevant or is of no consequence. He has submitted that these observations of the learned Single Judge cannot be derived from the judgment of "Shree" case. Apart from the disclaimer which was not disclosed in the notice or the plaint, the plea of the acquisition of secondary ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... fendant finally submitted that if an interim injunction is decided virtually the whole suit would be decided and in particular has submitted the proprietors of Girnar have their own established reputation and do not need to trade on the reputation of the plaintiff. Furthermore no instance of passing off or confusion was given or proved nor a single trader had given evidence of deception or confusion. The defendants are not new entrants to the trade and when the marks circulated side by side in the same trade where deception is alleged it is very material to note that no one appears to have been misled. Relying on American Cyanamide Case 1975 RPC 513, the learned counsel for the appellant contended that in the present case damages would be an adequate remedy if the plaintiff succeeds. He also relied on affidavits from two traders of Poland seeking the balance supply of the order placed for Girnar Super Cup Tea. 9. The Learned Senior Counsel for the plaintiff/respondent-M/s Godfrey Phillips, Shri Ashok Desai submitted in reply as under: (a) Super Cup was adopted as a trade mark in the year 1988 Along with several other brands such as MADHUBAN, SYMPHONY, UTSAV, SAMOVAR, SWAN LAKE an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d that if the mental leap between the word and the product's attributes is not almost instantaneous, suggestiveness is strongly indicated and not direct descriptiveness. Super Cup could mean many things and does not mean a cup of tea unless the consumer imagines a connection showing the mark was suggestive and thereafter inherently distinctive. The two type of invoices produced by the plaintiff/respondent show that the mark has an independent identity. Some of the invoices show the user of the traders trading "Tea City Super Cup", "Tea City Utsav" or "Tea City Swan Lake". The term "Tea City" has a neutral meaning and Super Cup is the distinguishing element forming the basis of the orders and recognition in the market. Reliance has been placed upon The Legal and General Assurance Vs Daniel & Ors. 1968 RPC 253; Globe Super Parts Vs Blue Super Flame: AIR 1986 Delhi 245; Super Seals India Vs Mantri Brothers 1986 PTC 341; Charan Dass Vs Bombay Crockery Store 1984 PTC 102 & Computervision Corporation Vs Computer Vision Ltd. 1975 RPC 171. Reliance has also been placed upon the leading case of Reddaway Vs Banham (1896) 13 RPC 218 to contend that ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tion "which one?" Reliance has also been placed on sub-brands of Maruti such as "ZEN", "ESTEEM", "BALENO" etc. and then on Cadbury's sub-brands such as "5 STAR", "RED LABEL" etc. and Microsoft products such as "MS Office", "MS Windows 1995" etc., which though not registered cannot be copied. In so far as the appellant's plea of mis-statement of facts is concerned, it has been contended that only if relevant documents were kept back then an inference of suppression could be drawn. It was also submitted that reliance on McCain Oven Chips case by the appellant is not justified as the user in that case was for only 18 months so as to prevent the acquisition of a secondary meaning and it is further submitted that correspondence with Registrar of Trade Marks is not relevant in a suit for passing off. Learned counsel for the respondent has also contended that reliance on Cadbury's decision to seek comparison of labels by the appellant was not justified because in that case the rival products were totally different, i.e., potato wafers and chocolates and they were also different in packaging and pre ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ond their legitimate bound...." "Temptation has even led some proprietors to make an exaggerated claim tot he exclusive use of parts or matters contained in their trade marks in spite of the fact that they had expressly disclaimed the exclusive use of those parts or matters. The real purpose of requiring a disclaimer is to define the rights of the proprietor under the registration so as to minimise, even if it cannot wholly eliminate, the possibility of extravagant and unauthorised claims being made on the score of registration of the trade marks." (d) In so far as Charan Das Vs Bombay crockery Store 1984 PTC 102 case is concerned, it is submitted that the defendant was a stockist and selling agent of plaintiff's stove and could not have pleaded ignorance of the user of the trade mark of the plaintiff for 20 years. Colour scheme of both the cartons and get-up were also same. The design of Stove was registered as a Design and the get-up and colour scheme was registered under the Copyright Act and the plaintiffs were the Registered Proprietors of the trade marks. The aforesaid decision thus could not apply to the facts of the present case because the trademark ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... that the plaintiff was established for about 129 years and the suit was based on a corporate name and not a trademark. It was proved that the plaintiff were known as 'Legal and General' itself. There was evidence of confusion. The words "Enquiry Bureau" were not prominently rendered with a view to highlight the importance of "LEGAL & GENERAL" and a strong prima facie case was established. It is submitted that such are not the circumstances in the present case. (j) In so far as J.K. Jain & Others Vs Ziff-Davies Inc. 2000 PTC 244 (DB) Case is concerned, this was a case of an ex-licensee who was held estopped from challenging the ownership of the respondents or stating that the marks were descriptive. In fact no where did the Appellate Court hold that there was an acquisition of secondary meaning for the words P.C. MAGAZINES etc. Thus the aforesaid decision is clearly inapplicable to the facts of the present case. (k) In so far as the judgment in Munday Vs Carey 1905 22 10 RPC Case is concerned, it is stated that the judgment was passed after evidence was fully led and it was a rank case of dishonesty. (l) In so far as Tavener Rutledge Ld. Vs specter ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sition of a secondary meaning. Learned counsel has submitted that in the present case the period involved was more than 7 years and the McCain Oven Chips case could have no application to the facts of the present case. (c) In so far as the reliance by the appellant on Horlicks Milk Malted Vs Summerskill (1916) 32 RPC 1 is concerned, the reason for not granting the injunction was that the Court held that the term "Malted Milk" had never lost its original proper descriptive meaning and never became distinctive exclusively or otherwise of the preparation of the plaintiff. (d) In so far as S.P. Chengalvaraya Naidu (deceased) Vs Jagannath AIR1994SC853 regarding suppression of facts relied upon by the appellant is concerned, it is submitted by the learned counsel for the respondent that only if the relevant documents are kept back would the principle stated in the above case apply. In the present case, disclaimer was not a relevant factor in so far as a passing off action is concerned. The aforesaid decision, Therefore could have no application to the facts of the present case. 12. The two questions which are crucial to the determination of the appeal arising from the inte ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ry meaning is concerned, there is substance in the defendant's plea that the plaintiff's plea regarding acquisition of secondary meaning by the term 'Super Cup' was not averred either in the "Cease & Desist" Notice given to the defendant or in the plaint and no sufficient documentary evidence barring few invoices has been filed by the plaintiff/respondent. However, we have considered the case on the basis of the plaintiff's plea that Tea City is an umbrella brand of its various tea products and the mark of the plaintiff said to be violated is 'Super-Cup'. In fact the perusal of the various brands of tea marketed under the common name 'Tea City' by the plaintiff such as Symphony, Madhuban, Swan Lake and Samovar justifies the plea of the plaintiff that Tea City is the umbrella brand and the product whose trade mark has been said to be infringed bears the relevant mark 'Super Cup' which is required to be considered by us. 17. It is not disputed by the respondent/plaintiff, that the word 'Super in isolation cannot acquire a secondary meaning. Consequently the meaning assigned in common parlance to 'Cup' assumes signific ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... . The Court held it to be well settled that mere joinder of two descriptive words did not give the joined word the required air of distinctiveness to enable registration. Even though the above case arose from registration proceedings, nevertheless the general principles laid down relating to distinctiveness would apply to the facts of the present case. In view of our finding that 'cup' refers to 'tea' the joinder of 'Super' and 'Cup' cannot give the words 'Super Cup' the requisite distinctiveness affording protection by an injunction even against passing off. Similarly McCarthy Vol.1 (1994 Edition) at P.11 39 has listed the marks Super Blend for motor oil and Super Gel for shaving gel as descriptive marks. In our view the instance of Super Blend for motor oil held to be descriptive is relevant for the present case because while Super Blend cannot be held to be as direct a reference to the concerned product as Gel is for shaving, yet it was nevertheless held to be descriptive. By a similar analogy a cup qua tea is also clearly descriptive. The learned counsel for the respondent has strongly relied upon observations in Abercombie & Fitch Co. Vs ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... characteristics of the goods. Applying the above tests it is clear that it does not require any appreciable imagination, thought and perception to associate cup with tea and in fact the word 'Cup' conveys and immediate association with tea. In this connection the observations in Investacorp case 931 F.2d 1519 quoted in Para 11.67 of McCarthy which held that the word 'investacrop' is descriptive of investment brokerage services because the customer who observes the term can readily perceive the nature of the plaintiff's services without Having to exercise his imagination, are relevant and applicable, to the facts of the present case as a customer on seeing the word 'Super Cup' would immediately and readily perceive an excellent cup of tea. Learned counsel for the appellant has strongly relied upon the judgment in Reddaway & co. Vs Banham (1986) 13 RPC 218 to contend that where the trademark was descriptive, the Courts have looked into the evidence to see its adequacy for the acquisition of such a secondary meaning. In our view, the above judgment is not applicable to the facts of the present case because the judgment itself starts with the words "Myl ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... refore, cannot apply to the facts of the present case. In so far as Supra Seals India Pvt Ltd. Vs Mantri Brothers 1986 PTC 341 Case, relied upon by the plaintiff/respondent is concerned, the same cannot apply to the facts of the present case because the mark of the plaintiff was a registered trademark. In so far as Computervision Corporation Vs Computer Vision Ltd. 1975 RPC 171 Case, relied upon by the respondent is concerned, in the above case there was no pleas or finding that the COMPUTERVISION meant the vision to be laudatory of the computer or vice-versa. In the said case apart from the fact that the defendant's issued capital was just 100 pounds as compared to the sale of the plaintiffs which was at the level of 1,20,000/- pounds sterling, the defendants were not even in production when the suit was filed. Furthermore the words 'Computer' and 'Vision' were joined to create the joint word 'Computervision ' whereas in the present case the words 'Super' and 'Cup' are separate though used in a conjoint manner. The above decision accordingly cannot apply because in the present case, we have found the words 'Super Cup' to be descr ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... and the word 'demon' was not descriptive of a tennis racquet in any sense. Furthermore, defendant had used the word 'demotic' on the same spot on the product, i.e., tennis racquet as the word 'demon' used by the plaintiff. In the present appeal 'Super Cup' having been found descriptive and trade dresses of defendant and plaintiff having been found different, the above judgment cannot apply. The plaintiff/respondent has chosen to employ/describe the words especially the word 'Super' as a part of its mark. The burden in such a case of proving passing off is obviously heavy on the plaintiff when well-known adjectives such as 'Super' are chosen as per the law laid down in Classic Case 1915 R.P.C (C.A.) W.N. SHARPE LD Vs SOLOMON BROS LD. In the above case it was held that words such as "good' "best and "super fing" are Incapable of being adapted and cannot have a secondary matching which point only to the goods of the appellant. Applying the law laid down in the above case if the word ""super fing" was held to be descriptive and not capable of assuming a secondary meaning, then in our view 'Super ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 9; HOT-SIP ASSAM CTC TEA', 'SOCIETY Premium TEA', 'Sapat's PARIVAR PURE ASSAM TEA', 'Nestle's TASTER'S CHOICE PREMIUM TEA', LEONE Finest Indian Tea','Assam Golden CTC Dust GS CHAHA' have used only the visual depiction of a Cup of Tea to highlight their products. Thus it would be readily seen that the word' Super'; combination of the word 'Super' and a visual depiction of the 'Cup '; and the user as well as the mere visual depiction of a 'Cup'; are extremely common features for tea producers as a part of their trade dress/mark. In this view of the matter it is evident that the 'Cup' whether used visually or as a 'word' clearly denotes 'tea' in the marketplace. Thus in view of the fact that the plaintiff started marketing its 'Super' Cup' tea in 1988, the user of the word 'Super' for tea by the defendant since 1979 is significant, particularly when the combination of the word 'Super Cup' has been held not to have acquired a secondary meaning. 19. We are of the view that while the Trial Court did notice that the words 'Super Cup' were promine ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... super quality tea with bright re liquor, strong taste, delightful aroma ..." In this respect, the decision in World Athletics & Sporting Publications Vs A.C.M. Webb (Publishing) Co. Ltd. 1981 FSR 27 (Athletics) is relevant where the Court has held that when a trade name which is in common use is adapted. Some risk of confusion is inevitable and in such a situation the Court will accept comparatively small differences as sufficient to avert, confusion. In the present case, the colour scheme, the size of the word Girnar emblazoned on the carton and the other visual parameters of the competing products, are in our view sufficient prima facie to constitute differences which avert and avoid confusion between the plaintiff and the defendant's products. 20. In view of the above discussion, the finding of the learned Single Judge that the plaintiff's product displays the mark 'Super Cup' prominently and 'Tea City' does not occupy a prominent position is unassailable and is required to be sustained, Consequently we do affirm the view taken by the learned Single Judge that the plaintiff's mark in question is 'Super Cup'. However, the further and con ..... X X X X Extracts X X X X X X X X Extracts X X X X
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