TaxTMI 
TaxTMI 
2000 (5) TMI 1060
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....t allowed the appeal preferred by the respondent-defendant and set aside the temporary injunction which was initially granted on 25.2.99 and which was confirmed on 23.3.99. The injunction was sought by the appellant to restrain the respondent from using the word PICNIC as it allegedly amounted to infringement of the appellants' registered trade mark for the use of the word PIKNIK. The suit was on the basis of infringement of trade mark and also on the basis of passing off. The brief facts of the case are as follows: The appellant company(plaintiff) claimed that it started business in 1988 in four products like potato, chips, potato wafers, corn-pops and preparations made of rice and rice flour. In January 1989 it started using the trade mark PIKNIK. It applied for registration on 17.2.1989 of the said word in class 29 ( for preserved dried and cooked fruit vegetables etc. including all goods included in class 29) under application No. 505531B. Plaintiff also applied for registration of same trade mark in class 30 ( for tea, coffee, corns, jaggery etc. including confectionery chocolates, honey etc.) under application 505532. A third application under same name was ( for beverage....
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....egistration by plaintiff, that there was no unreasonable delay in filing the suit, that injunction in these circumstances could not be refused even if there was some delay, plaintiff had a prima facie case and balance of convenience was in plaintiff's favour. It held that the defendants' mark was 'deceptively similar' within section 2(1)(d) of the Trade and Merchandise Marks Act, 1958, that confusion could be created in the minds of purchasers either because the marks were similar visually or ocularly or phonetically. Here there was clear phonetic resemblance. The contention that what was registered was the label and not the word 'PIKNIK' could not be accepted. The 'essential features' of the trade marks were similar. Section 2(1)(f) referred to `mark' as including a device brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof. Even if the 'essential features' of the words 'PIKNIK' were taken into consideration, the defendant's mark 'PICNIC' was deceptively and phonetically similar. The defendant had cleverly designed the word 'PICNIC' by change of spelling and the wor....
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....Star' etc. The same was true with 'Cadbury Picnic'. There was absolutely no scope for deception. There was neither infringement nor passing off. Based on this reasoning the High Court allowed the appeal of the respondent-defendant and set aside the order of temporary injunction. In this appeal, learned senior counsel for the appellant-plaintiff Sri P. Chidambaram contended that the defendants, by merely filing a rectification application on 19.3.99, after the appellants filed the suit on 18.2.99 for injunction based on infringement, could not scuttle the suit or this application for temporary injunction. In the present suit or in the application, the respondent could not raise a defence that the registration of the plaintiff's trade mark was "invalid" on the ground that the word PIKNIK was not "distinctive" and that it was akin to a dictionary word or that the trade mark did not satisfy various clauses of section 9(1). Section 31 raised a presumption of validity of plaintiff's registered mark. It was sufficient if the plaintiff's mark had became distinct even by the actual date of registration. For purposes of section 31, the deeming clause in section 23(1)....
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....eing akin to a dictionary word, it was not "distinctive" within section 9(1)(e). The presumption under section 31(2) did not apply and the bar in section 32 also did not apply since seven years had not elapsed from "the date of registration", by the time the defence was raised in this suit that plaintiff's mark was not distinctive. In any event, the case fell within the exceptions mentioned in section 32 and in particular the one in section 32(e). Counsel also contended that there was no deception within section 29 read with section 2(d). The plaintiff's mark was the entire label and not the word 'PIKNIK' alone. The conditions specified in section 29 were not satisfied. Further, the defendant's mark PICNIC had cross-border reputation in 110 countries over a long period and the use of the said word in India would not infringe the plaintiff's trade mark nor would such use amount to 'passing off' defendant's goods as the plaintiff's goods. In view of Colgate Palmolive (India) Ltd. Vs. Hindustan Lever Ltd. ( 1999(7) SCC 1), the relative strength of the case above need be considered. On these contentions, the following points arise for considerati....
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....Court cannot preclude the plaintiff from seeking interim relief in view of section 111(5). Under section 111(1)(a), if in any suit the defendant pleads invalidity under section 9 of the plaintiff's trade mark, then, (i) the Civil Court trying the infringement suit shall stay the suit if rectification proceedings are pending. (ii) if no such rectification proceedings are pending, the Civil Court has to raise an issue as to validity of plaintiff's trade mark and refer the parties to the High Court to seek rectification. Under clause (2) if a rectification application is filed as directed, the suit is to be stayed till rectification proceedings are over. If such an application is not filed for rectification, it shall be deemed that the plea is abandoned by defendant. Under section 111(5), even if the suit is to be stayed pending rectification proceedings, the plaintiff can file and have interlocutory applications for temporary injunction etc. to be disposed of. The point raised by the learned senior counsel for the appellant Sri P. Chidambaram is that the policy of the Act is not to allow the defendant to raise any issue relating to the "invalidity" of the plaintiff's trad....
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....articulars, namely: - (a) the name of a company, individual or firm represented in a special or particular manner; (b) the signature of the applicant for registration or some predecessor in his business; (c) one or more invented words; (d) one or more words having no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect caste or tribe in India; (e) any other distinctive mark. (2) .................................... (3) For the purposes of this Act, the expression 'distinctive' in relation to the goods in respect of which a trade mark is proposed to be registered means adapted to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration." For the present, we are not referring to the other sub- clauses of section 9. If a trade mark does not satisfy sec....
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....k was not at the commencement of the proceedings, distinctive of the goods of the registered proprietor." While section 31 raises a presumption as to validity of registration, section 32 bars any such question being raised after seven years, subject of course to some exceptions. In our view, any decision on the question of `validity' of the appellant's trade raised as a defence in the present application filed under Order 39 Rule 1 CPC will seriously jeopardise a decision on the same issue now pending in the rectification proceedings filed by the respondent in the Bombay High Court. We would therefore not go into the question of 'validity' or 'distinctiveness' of the plaintiff's trade mark nor into the applicability of National Bell Co. Case ( 1970(3) SCC 665) as those issues are to be decided in the rectification proceedings. We are of the view that the case before us can be disposed of by considering whether there is prima facie any deception and hence infringement and whether there is any 'passing off'. Points 1, 2 and 3 are therefore not decided. POINT 4: This point deals with the principles applicable for grant of temporary injunction in tra....
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....arable strength' of the cases of either party, apart from balance of convenience. Point 4 is decided accordingly. POINT 5: Under this point, we propose to trace the legal principles applicable to cases of infringement with particular reference to dissimilarities in essential features of a devise or mark. Under section 29 of the Act, a plaintiff in a suit on basis of infringement has to prove not only that his trade mark is infringed by a person who is not a registered proprietor of the mark or a registered user thereof but that the said person is using a mark in the course of his trade, "which is identical with or deceptively similar to the trade mark of the plaintiff, in such manner as to render the use of the mark likely to be mistaken as the registered trade mark". Under section 2(d), the words "deceptively similar" are defined as follows: "a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion". We shall now refer to the broad principles applicable to infringement actions and in particular to devices, labels and composite marks. Essential Features if copied: It is well-settled ....
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....es, you come to the conclusion that there will be confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but there will be confusion in the mind of the public which will lead to confusion in the goods - then you may refuse registration, or rather you must refuse registration in that case". This dictum has been quoted with approval by this Court in Amritdhara Pharmacy Vs. Satya Deo Gupta ( AIR 1963 SC 449) and Roche Vs. Geoffrey Manners and Co.Pvt. Ltd. ( AIR 1970 SC 2062). Devices and Composite Marks: But the considerations relating to words, however, differ appreciably when device marks are to be compared or when a device mark is to be compared with a word mark. ( Kerly para 17.07). After referring to the factors mentioned by Parker, J. in the above case, it is stated in Halsbury's Laws of England, (Vol.38, 3rd Ed., para 986) as follows: "These considerations differ to some extent when device marks are being compared or when a device mark is compared with a word mark." Dissimilarity in essential features in devices and composite marks more important than some similarity: It has been stressed for the appellant that sinc....
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....ks shown to be in use (Kerly para 17.17). Therefore, the question is whether the defendant has, - so far as the common feature is concerned, - copied any distinctive arrangement of the common elements? Or has copied any unusual feature of the common element ( Crispin's Appln.(1917) 34 RPC 249) ( see Kerly para 17.19, fn.77). The marks, names or get-up concerned must always be considered as the whole thing, as the true test is whether the totality of the impression given both orally and visually is such that it is likely to cause mistake, deception or confusion (Halsbury Vol.38, 3rd Ed. para 987). We next come to the crucial test laid down by Evershed M.R. in Broadhead's Application [( 1950) 67 RPC 209 at 215] which was a case relating to opposition to registration. The Master of Rolls followed the observations of Lord Russell in Coca Cola Co. of Canada Vs. Pepsi Cola Co. of Canada ( which was an infringement action )[(1942) 59 RPC 127) and observed as follows: "Where you get a common denominator, you must in looking at the competing formulas, pay much more regard to the parts of the formulas which are not common - although it does not flow from that that you must treat the ....
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....P) Ltd. Vs. J.P. and Co., Mysore ( AIR 1972 SC 1359), the question was in relation to a wrapper with the words 'Gluco biscuit' and the particular colour scheme, the general get up used for sale of Parle's Gluco Biscuit' so printed on the wrapper. There was a farmyard with a girl in the centre carrying a pail of water and cows and hens around her in the background of a farm-house. The defendant was selling biscuits with the name 'Glucose Biscuits'. The wrapper contained picture of a girl supporting with one hand a bundle of hay on her head and carrying a sickle and a bundle of food, with cows and hens around, in the background of a building. This Court held, on those facts, that in an infringement action, it was sufficient if there was 'overall similarity' as would mislead a person usually dealing with one to accept the other if offered to him. Here the packets were of the same size and the colour scheme and design were having close resemblance. The marks should not be kept side by side and compared. The essential features of both marking were a girl with one arm raised and carrying something in the other while the cows or hens were near her, in the b....
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.... the present case and that is why we have referred to the principles of English Law relating to differences in essential features which principles, in our opinion, are equally applicable in our country. Application of Principles to facts of this case: If differences in essential features are relevant, the next question is as to what is the position on facts. The first question therefore is as to what, on the facts, are the essential features of the plaintiff's mark? It is clear that apart from the word PIKNIK, the essential features are also the special script of these words in block letters and the curve in which these words are inscribed and the caricature of the boy with a hat occurring between the words K and N on the plaintiff's mark. On the other hand, the defendant's mark contains the words PICNIC in a straightline, the script is normal and the words `Cadbury' are written above the words PICNIC. Neither the peculiar script nor the curve nor the boy with a hat are found in the defendant's mark. It is true that there is phonetic similarity and use of the word PICNIC. But what is the effect of the dissimilarities? This is the crucial part of the case. It is ....
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.... contained in the label should be disclaimed. In the result, we hold on the question of infringement that on an examination of the relative strength of the pleas, as stated in Palmolive, it is shown that the chances, on facts, are more in favour of the defendant rather than in favour of the plaintiff and that the plaintiff is not entitled to temporary injunction. This finding on facts is confined to these interlocutory proceedings only. Deceive or confuse: Our discussion under this head is again in the context of the relevant strength of the case of the parties and for the purposes of the temporary injunction as laid down in Palmolive. Section 29 uses the words `deceptively similar' and section 2(1)(d) defines `deceptively similar' as situations where one is `deceiving' others or `confusing' others. We have to keep in view the distinction between the words `deceive' and `confuse' used in section 2(1)(d). These words which occur in the various trade mark statutes have been explained in Parker-Knoll vs. Knoll International [(1962) RPC 265(HL) (pp.273-274)] by Lord Denning as follows: "Looking ....
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....s in mind and we shall be presently dealing with this aspect also. It is not necessary for us to go into the contention of the respondent that the defendant was using the word PICNIC in other countries over a long period along with the word `Cadbury' and that a question of transborder reputation protects the defendant. Reliance is placed for the respondent on N.R.Dongre vs. Whirlpool Corporation and Anr. [1996 (5) SCC 714] for this purpose. We do not think it necessary to go into this aspect. Such a question, if raised in the suit, can be gone into on its own merits. For the above reasons, we hold that on the question of the relative strength, the decision must go in favour of the defendant that there is no infringement and the High Court was right in refusing temporary injunction. Point 5 is decided accordingly. Point 6: Passing off and infringement- differences: Here the point is in relation to relative strength of the parties on the question of `passing off'. As discussed under Point 5, the proof of resemblance or similarity in cases of passing off and infringement are different. In a passing off action additions, get up or trade-dress might be relevant to enable the def....
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....isons Ltd. vs. E.J.Godwin [(1976) RPC 653], the occurrence of the name `Cadbury' on the defendant's wrapper is a factor to be considered while deciding the question of passing off. Similarly in King & Co. Ltd. vs. Gillard and Co. Ltd. [22 RPC 327] and Cadbury-Schweppes pty Ltd. vs. The Pub. Squash Ltd. (1981) RPC 429, it was held that the presence of defendant's name on his goods was an indication that there was no passing off, even if the trade dress was similar. The fact that the defendant's wrapper contains the word `Cadbury' above the words PICNIC is therefore a factor which is to be taken into account. Buyer's ignorance and chances of being deceived: As to scope of a buyer being deceived, in a passing off action, the following principles have to be borne in mind. Lord Romer, LJ has said in Payton & Co. vs. Snelling Lampard & Co. (1900) 17 RPC 48 that it is a misconception to refer to the confusion that can be created upon an ignorant customer. The kind of customer that the Courts ought to think of in these cases is the customer who knows the distinguishing characteristics of the plaintiff's goods, those characteristics which distinguish his goods fr....