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TMI Blog2018 (10) TMI 665X X X X Extracts X X X X X X X X Extracts X X X X ..... egistration Nos.1399085, 1399087 and 1399088 dated 16.11.2005 in Class-30 for the mark “GOLD WINNER SREE GOLD”. This Court is of the considered view that the respondent/plaintiff is not entitled for an order of ad-interim injunction in respect of infringement for the reason that the registration of the appellant/defendant for the mark “GOLD WINNER SREE GOLD” dated 16.11.2005 is also in respect of Class-30. Both the appellant/defendant and the respondent/plaintiff is having registration in respect of dhall varieties etc., in Class-30 and that the registration of the respondent/plaintiffis dated 05.09.2003. A contention was also put forward that the mark of the appellant/defendant is not a “well-known trademark” as per the definition under Section 2(zg) of the Trade Marks Act, 1999 and the learned Judge in paragraph 33 of the impugned order observed that it was open to the appellant/defendant to establish his claim in that regard during in trial. This Court is also of the considered that it also requires appreciation of evidence, which can be let in during the course of trial and hence, not inclined to give any finding as to whether the trademark of the appellant/defendant has ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... g disposal of the Suit, filed O.A.No.224 of 2017, praying for ad-interim injunction restraining the defendant from infringing the trademark GOLD WINNER and passing off its products as that of the plaintiff under the trade mark GOLD WINNER . 3. Learned Single Judge of this Court, vide interim order dated 10.03.2017, has granted ad-interim injunction and the said interim order came to be modified, vide order dated 17.08.2017 by permitting the respondent therein/appellant herein to market the dhall currently held in stock with the existing packing within a period of four weeks for the purpose of ensuring that ready stocks shall not deteriorate as that would constitute a national waste and in the interregnum, parties were granted liberty to negotiate a settlement, if they are so inclined. The said order of ad-interim injunction came to be made absolute, vide impugned order dated 20.03.2018 and challenging the said order, the present appeal is filed. 4. Facts leading to the filing of the present appeal have been narrated in detail in the impugned order, which is the subject matter of challenge in this appeal and for the sake of brevity, it is unnecessary to restate the facts ex ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... GOLD WINNER and subsequently, the said application was dismissed as withdrawn on 30.01.2013 by the Registrar of Trademark. It is the specific case of the plaintiff that selling of dhall varieties by using the plaintiff's trademark GOLD WINNER creates confusion and deception and also violating the plaintiff's prior adopted and registered trademark GOLD WINNER , despite knowing that the plaintiff is the registered proprietor of the trademark GOLD WINNER and it is in usage from the year 1999 and thus, the conduct of the defendant/appellant was deliberate and unlawful and in that process, had also infringed their trademark and passed off their goods by using an identical and deceptively similar trademark to that of the plaintiff and therefore, came forward to file O.A.No.224 of 2017 praying for interim orders. 4.4. As already stated, initially, interim order was granted and subsequently, it was modified so as to enable the appellant/defendant/respondent in the application to dispose of their stocks. 4.5. The appellant/respondent, has filed a counter affidavit denying the averments made in the plaint as well as in the application for ad-interim injunction and took a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... additional counter affidavit stating that it is using the mark GOLD WINNER for dhalls packed in 500 gms, 1 Kg., and lesser quantity packs for selling in retail market and the investigation reports confirm that the plaintiff is selling dhalls under different brand name and the trade mark GOLD WINNER was not mentioned in any of the packets and therefore, prayed for vacating the interim orders. 5. The learned Single Judge, after dealing with the factual aspects, relevant provisions as well as the decisions relied on by the respective learned counsel appearing for the parties, found that the respondent/plaintiff is the prior user in dhall and the defendant is the prior use in oil and both products fall in different classes i.e., Class-30 and Class-29 and also dealt with the issue relating to disclaimer and rendered a finding that the disclaimer is only with regard to Device of Man (athlete) and the words Toor Dhall , which is descriptive of the product. The learned Judge, in paragraph 48 of the impugned order, observed that the plaintiff/respondent is the prior user of the trademark GOLD WINNER in dhall and having taken note of the fact that the interim order is in subsist ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of time, the respondent/plaintiff is not entitled to any interim orders. (v) The learned Judge has failed to take into consideration of the fact that the respondent/plaintiff is merely having registration for the label consisting of several parts including GOLD WINNER , Device of a Man , Toor Dhall etc., it does not have a separate registration for the word mark GOLD WINNER and as such, it does not have exclusive right over the word GOLD WINNER in terms of Section 17 of the Trade Marks Act, 1999 and even otherwise, the appellant/defendant, by producing ample evidence/material has substantiated it's case that it is the prior user of the word mark GOLD WINNER . (vi) Anti-Dissection principle operates solely in favour of the appellant/defendant for the reason that the label mark of the respondent/plaintiff should be viewed as a whole and it cannot be dissected into various parts and the learned Judge has failed to apply the test of likelihood of confusion and has erroneously applied Anti-Dissection principle and the same is impermissible in law. (vii) The appellant/defendant's packages consists of GOLD WINNER in the same style with respect to font and appeara ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... td. [AIR 1955 SC 558] (ii) M/s.Nakoda Diary (P) Ltd. v. M/s.Kewal Chand Vinod Kumar and Others [MANU/TN/4324/2011] (iii) South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. [2015 (61) PTC 231 (Del)]. 7. Per contra , Mr.Ramesh Ganapathy, learned counsel appearing for the respondent/plaintiff made the following submissions: (i) The trademark of the respondent/plaintiff was registered in the name of Rathinaswamy Gomathy, Surendran, Amsadevi, Ravindran, Vijayalakshmi trading as S.N.R Dhall Mill , 2/4, Vaidyanathamudali Street, Tondiorpet, Chennai-600081, bearing trademark No.1232740 registered on 05.09.2003, under Class-30 and valid upto 05.09.2013 and subsequently renewed for a period of ten years upto 05.09.2023 and as such, it is the prior user of the trademark GOLD WINNER . (ii) The appellant/defendant took out an application under Section 57 of the Trade Marks Act, 1999 to rectify the registration of the trademark by removal of the registered trade mark GOLD WINNER (Label) and subsequently, it was dismissed as withdrawn on 30.01.2013 and in the light of the said voluntary act on the part of the appellant/defendant, there cannot be any imped ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... GOLD WINNER . 9. This Court has carefully considered the rival submissions and also perused the entire materials placed before it. 10. It is the specific case of the respondent/plaintiff that it is a partnership firm registered under the provisions of the Indian Partnership Act and also a registered dealer under the Tamil Nadu Value Added Tax Act, 2006 with TIN No.33843220597 and also got registered with the Tamil Nadu Food Safety and Drug Administration Department under Licence No.12414002003140. The respondent/plaintiff with an intention to create a brand identity for quality products manufactured and sold by them, had conceived, conceptualized, adopted and used the trademark GOLD WINNER ever since 01.06.1999 and has been continuously, uninterruptedly and extensively using the same in relation to their products. The respondent/plaintiff, in order to safeguard the rights acquired over the said trademark, has applied and obtained registration for the mark GOLD WINNER (Label) under Application No.1232740 in Class-30, wherein the word GOLD WINNER is prominent along with Device of Man and during the registration of the said trademark, the exclusive right towards the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... iggy backing on the respondent's popularity and reputation, had illegally filed and registered the said deceptively similar trademark in Class-30 and though an application for rectification was filed before the Trademark Registry and since they could not find an iota of evidence regarding the use of the alleged trademark by the respondent/plaintiff, especially with regard to wholesale trade, was advised to withdraw the application and accordingly, it was dismissed as withdrawn. 13. It is the specific case of the appellant/defendant that mere existence of mark in the register cannot be a proof of use of the mark and they never use the mark GOLD WINNER in the trademark sense and it is also one of the top 100 FMCG consumer brands in India and ranked 63rd in the India's top 100 FMCG brands as per Brand Equity ET AC Nielsen Survey and since the appellant/defendant is the registered proprietor of the trademark GOLD WINNER SREE GOLD since 2005, the respondent/plaintiff is barred from taking action under Sections 29 and 33 of the Trade Marks Act, 1999 and in the light of the fact that it is the prior user and adoptor of the mark GOLD WINNER since 1993 and it has been usi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ndant's use of the mark GOLD WINNER from the year 1993 for the product oil in Class-29 will give any right to the defendant to object to the use of the mark for another product i.e., dhall in Class-30 will ultimately depend on defendant being able to establish the reputation of its mark in the trial. 17. The learned Judge has also gone through the issue of disclaimer and found in paragraph 43 of the impugned order that the interpretation of the disclaimer clearly shows that the disclaimer is only with regard to running man (athlete) device and words Toor Dhall which is descriptive of the product and there is no disclaimer with regard to GOLD WINNER . The learned Judge has also considered the claim of the appellant/defendant that the respondent/plaintiff is not in retail market and whereas they are in retail market and observed that it is based upon investigation reports, which have to be tested during the course of trial. In paragraph 48 of the impugned order, the learned Judge concluded that the respondent/plaintiff is the prior user of the mark GOLD WINNER in dhall and therefore, deem it appropriate to hold that the interim order already granted by this Court on ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... for the appellant/defendant that the respondent/plaintiff is having registration for the label consisting of several parts, which includes GOLD WINNER , Device of Man , Toor Dhall and does not have separate registration of the mark GOLD WINNER and as such, it does not have exclusive right for the trademark GOLD WINNER under Section 79 of the Trade Marks Act, 1999. It was also pointed out that the appellant/defendant is the prior user of the mark GOLD WINNER atleast from the year 1993 in respect of oil in Class-29 and in respect of alleged infringement of the mark GOLD WINNER SREE GOLD (Label), it is having three registration Nos.1399085, 1399087 and 1399088 in Class-30 dated 16.11.2005 and in the light of the fact that both parties are having registration in Class-30, there cannot be a restraint order against each other in using the same and the said legal aspect has been completely overlooked by the learned Judge in extending the interim orders. 21. Per contra , it is the stand of the respondent/plaintiff that admittedly, there are having prior registration and though the appellant/defendant has got the registration GOLD WINNER SREE GOLD and marketed their produ ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Peter Scot manufactured by the appellant therein viz., Khoday Distilleries Limited came up for consideration and one of the points urged was delay in approaching the Court and acquiescence and it is relevant to extract paragraph 31 of the said judgment: 31. It would appear to me that where there is an honest concurrent user by the defendant then inordinate delay or laches may defeat the claim of damages or rendition of accounts but the relief of injunction should not be refused. This so because it is the interest of the general public, which is the third party for such cases, which has to be kept in mind. In the case of inordinate delay or laches, as distinguished from the case of an acquiescence, the main prejudice which may be caused to the defendant is that by reasons of the plaintiff not acting at an earlier point of time the defendant has been able to establish his business by using the infringing mark. Inordinate delay or laches may be there because the plaintiff may not be aware of the infringement by the defendant or the plaintiff may consider such infringement by the defendant as not being serious enough to hurt the plaintiff's business. Nevertheless, if the court ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... relevant to extract paragraphs 27 and 28 of the said judgment: 27. The plaintiff has certainly established a prima facie case in its favor. Because of registration and by virtue of Section 28(1) of the said Act, an exclusive right of using the trade mark RANA has been conferred upon the plaintiff in relation to steel rolled products, CTD bars, angles, flats, rounds, channels and girders falling under class 6. And, such right is absolute [see: Ramdev Food Products (supra)(para 83)]. As observed in Ramdev Food Products (supra)(para 82), what is needed by way of cause of action for filing a suit of infringement of trade mark is use of a deceptively similar mark which may not be identical. It was contended on behalf of the plaintiff that the marks RANA and RANAtor are identical inasmuch as turn is merely descriptive of a kind of high strength steel. While this may be debatable, there cannot be any escape from the fact that RANAtor is deceptively similar to RANA. It is interesting to note that though the defendant's registration under class 19 is in respect of the trade mark RANAtor used as one word, the defendant has been using it in the form of two words RANA tor. This clearly ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rounds, channels and girders falling under class 6. The balance of convenience is clearly in favor of the plaintiff and against the defendant. Furthermore, in an infringement action, when the plaintiff has demonstrated that it has a prima facie case and also that the balance of convenience lies in its favor, not granting an interim injunction restraining the defendant from further infringing the plaintiff's registered trade mark would result in causing irreparable injury to the plaintiff. 26. In M/s.Nakoda Dairy (P) Ltd. v. M/s.Kewal Chand Vinod Kumar and Others [MANU/TN/4324/2011] , injunction in respect of infringement of a trademark came up for consideration and a Division Bench of this Court has considered the scope of Sections 28 and 34 of the Trade Marks Act, 1999 and with regard to continuous usage of the mark, volume of sales and promotional expenses etc., and it is relevant to extract paragraph 23 of the said judgment: 23. It is fairly well settled that infringement of rights in the trade mark can never be sufficiently compensated. In cases of infringement, if injunction is not granted, there is a possibility of great injury being done to the registered Pro ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e Defendant as against each other but both the Plaintiff as well as the Defendant have otherwise the same rights as against other persons as they would have if they were the sole proprietors. While they would not be entitled to sue each other, because both of them were the registered proprietors of an identical trade mark, though in respect of different types of goods, they would, however, be entitled to take actions against any one if that trade mark is infringed. ......... 28. Section 28 (3) of the TM Act cannot be interpreted in a manner that would be contrary to the above scheme of the Act and Rules. In other words Section 28 (3) of the TM Act should be understood as not permitting an infringement action being brought by one registered proprietor against another only where two conditions are satisfied: one, that the two registered marks are identical with or nearly resemble each other ; and two, they are in respect of the same class of goods and services. This will be in conformity with the object of Section 28 (1) read with Section 29 of the TM Act which seeks to grant protection to the registered proprietor of a mark from infringement in respect of the goods f ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... and such registration gives the defendant as well right to use the same, as provided in Section 28(1) of the Act. 23. However, what is stated above is the reflection of Section 28 of the Act when that provision is seen and examined without reference to the other provisions of the Act. It is stated at the cost of repetition that as per this Section owner of registered trade mark cannot sue for infringement of his registered trade mark if the appellant also has the trade mark which is registered. Having said so, a very important question arises for consideration at this stage, namely, whether such a respondent can bring an action against the appellant for passing off invoking the provisions of Section 27(2) of the Act. In other words, what would be the interplay of Section 27(2) and Section 28(3) of the Act is the issue that arises for consideration in the instant case. As already noticed above, the trial court as well as the High Court have granted the injunction in favour of the respondent on the basis of prior user as well as on the ground that the trade mark of the appellant, even if it is registered, would cause deception in the mind of the public at large and the appellant ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... . [(2004) Ch 120] , observed as follows: 37. The test of similarity or confusion had been indicated, in Sabel BV v. Puma AG, [1998] RPC 199 as follows:- The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case .That global appreciation of the visual, aural or conceptual similarity or the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. It was held, in Adidas-Salomon AG v. Fitnessworld Trading Ltd., 0041 Ch 120, that it is not necessary to establish confusion or the likelihood of confusion in order to establish infringement under this head. The plaintiff has to show that there is sufficient degree of similarity between the mark with a reputation and the sign (ie. the impugned mark) to have the effect that the relevant section of the public establishes a link between the sign and the mark. The court also cautioned that all tests have to be cumulatively satisfied, or e ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 017 is for an order of ad-interim injunction restraining the appellant/defendant from in any manner infringing the registered trademark and passing off its products as that of the respondent/plaintiff's trademark GOLD WINNER . As already pointed out, initially the order of ad-interim injunction was granted on 10.03.2017 and it was modified on 17.08.2017 and by virtue of the impugned order, the interim order already granted has been extended for one year. 31. The materials placed before this Court would prima facie indicate that the respondent/plaintiff were marketing dhall products in 1Kg. packages by using the mark SREE GOLD on the front side of the packet and on the rear side and in small font, put the word GOLD WINNER and sometime thereafter, started marketing range of dhalls in packages titled as GOLD WINNER and omitted the word SREE GOLD . According to the respondent/plaintiff, the said act of the appellant/defendant would amount to infringement and also passing off under an identical and deceptively similar trademark to that of their trademark. It was also pointed out that the appellant/defendant did file an application for removal of the trademark registr ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... remedy than that of infringement. The registration is no defense to a passing off action and nor the Trade Marks Act, 1999 affords any bar to a passing off action. Therefore, passing off action is to be considered independent the provisions of the Trade Marks Act, 1999 . 36. This Court, keeping in mind the principles culled out from the above cited decision, is of the considered view that the respondent/plaintiff is not entitled for an order of ad-interim injunction in respect of infringement for the reason that the registration of the appellant/defendant for the mark GOLD WINNER SREE GOLD dated 16.11.2005 is also in respect of Class-30. 37. Section 28(3) of the Trade Marks Act, 1999 provides that where two or more persons are registered proprietors of trademarks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwis ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y descriptive of the character of the goods, no protection can be claimed for use of such word, but if the word is known for its distinctiveness secondary meaning, such word is entitled to get protection. 42. It is also the claim of the respondent/plaintiff that their annual sales turnover was on the rise ever since 1999 and for the financial year 2015-2016, their total sales turnover was ₹ 1,14,26,39,357/- and the certificate given by the Chartered Accountant dated 20.02.2017 would also prima facie indicate the same. 43. It is also the submission of the learned counsel appearing for the respondent/plaintiff that the appellant/defendant wants to become the sole leader in dhall varieties and it would amount to monopolizing the trade and also a restrictive trade practice. The materials placed in the typed set of documents filed by the appellant/defendant would also prima facie indicate that they are the market leaders in respect of oil products under the mark GOLD WINNER and they want to catch on their reputation by venturing into dhall products and in that process, had stopped using the wrapper/packets SREE GOLD and started exclusively using the word GOLD WINNER ..... 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