TaxTMI 
TaxTMI 
2010 (2) TMI 1254
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....r mark thereto or colourable imitation thereof, whether by using the expression by itself or as part of any other mark/name in respect of goods covered by the registration obtained by the respondent. The appellant has also been restrained from, in any manner, using the mark "Yo!" per se or in conjunction with any other logo/mark/letters or any other mark deceptively similar thereto, so as to pass-off or enable or assist others to pass-off their business and products as those of the respondent. 2. The respondent claims to have the following registered trademarks: Trademark Trademark No. Class Description of Goods/ Services Registration Date YO! 1345481 25 Readymade garments, T-Shirts included in class 25 02.06.2007 YO! (device of exclamation mark) 1345478 42 Restaurant included in class 42 30.05.2007 YO! China (Label) 1194649 30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes, flour and preparations made from cereals bread biscuits, cakes, pastry and confectionery, ice, honey, treacle, yeast, baking powder, salt, mustard, pepper, vinegar, sauces, spices, ice. 13.08.2005 YO!China (Label) 1194647 ....
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.... of affordability. It is further contended that in the last financial year (2008-09) the sales of the respondent were around Rs. 30 crores. It is submitted on behalf of the respondent that the word 'Yo' (without the exclamation mark) is primarily American Slang used for calling attention and the trademark "Yo!" (Yo with an exclamation mark) is coined and arbitrarily applied (not being descriptive in nature) by the respondent to its goods and services making it inherently distinctive. 5. The respondent is aggrieved by the fact that the appellant is manufacturing and marketing, inter alia, noodles (chowmein) under the name and style of "Maggi Cuppa Mania" in two flavours "Masala Yo!" and "Chilly Chow Yo!". It is alleged that around April 2008, the appellant launched a product under the name and style of "Maggi Cuppa Mania Instant Noodles" in two flavours i.e., "Masala Yo!" and "Chilly Chow Yo!". The packing of the appellant's product also displays the words "Open, Fill, Go!", which, according to the respondent, makes the appellant's product a direct take-off on the respondent's product "Yo! On the Go". It is alleged that the concept of selling noodles in a take....
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.... and provide news etc. concerning the youth. Then, there is the website www.yofun.net, which has a product "Yo! Fun". Similarly, there are products and services carrying the names--? "Yo Mart", "Yo la", "Yo Gabba Gabba" etc. There is also a site of software developers called "Yo! Creations". Another voice solution and software development site does business under the name of "Yo!". Interestingly, there is a chain of restaurants in the U.K, Ireland, Middle East and Malaysia, which carries on business under the name and style--? "Yo! Sushi." Its takeaway service is called "Yo! To Go". It was suggested by the learned Counsel appearing for the appellant that "Yo! China" and "Yo! On the Go", which are allegedly used by the respondent have, in fact, been "more than inspired" by "Yo! Sushi" and "Yo! To Go". 9. Before the learned Single Judge, the appellant sought to defend its use of the expression "Yo!" in respect of its 'Maggi Cuppa Mania' products, primarily on the ground that there can be no infringement of the respondent's registered trademarks because the appellant was not using "Yo!" as a trademark at all, which is a condition precedent for Constituting i....
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.... 10. It was also contended that "Yo!" had been registered in favour of the respondent in respect of 'restaurants' falling under Class 42, which was essentially a service and did not relate to any goods. On the other hand, the appellant's products were goods falling under Class 30 and were not services falling under Class 42. It was also submitted that Section 17 of the said Act clearly stipulated that when a trademark consists of several matters, its registration would confer on the proprietor exclusive right to the use of the trademark taken as a whole. Thus, it was submitted that while the respondent had registrations under Class 30 in respect of the mark "Yo! China", the said registrations were in respect of the whole mark "Yo! China" and not just the mark--? "Yo!". The registered mark--? "Yo! China" would, therefore, have to be taken as a whole and "Yo!" cannot be considered to be a registered trademark insofar as products falling under Class 30, which include the subject noodles, are concerned. For all these reasons, it was urged before the learned Single Judge that the application for ad interim injunction be rejected. 11. However, the learned Single Judge r....
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.... follow when the adoption of the mark was dishonest, allowed the application of ad interim injunction of the respondent. 12. The impugned order is assailed before us by the appellant on all the grounds urged before the learned Single Judge but, principally, on the ground that the learned Single Judge failed to appreciate that an action for infringement under Section 29(1) of the said Act could only be brought where the defendant uses a mark "as a trade mark". According to the learned Counsel for the appellant, it is a condition precedent under Section 29(1) that, in order to constitute infringement, the mark complained of must be "used as a trade mark" i.e., in a manner "indicative of trade origin" as per the definition of trade mark under Section 2(1)(zb). Reliance was placed on Mothercare U.K. Ltd. v. Penguin Books Ltd. 1988 R.P.C. 113. It was submitted that the whole law of Trade Marks--whether 'statutory law' relating to infringement or 'common law' relating to passing off--is concerned with deception and confusion with regard to trade origin and the use of marks indicating the same. The trade origin of the appellant's packaged noodles is MAGGI which is b....
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....the defendant of a mark which is identical to the plaintiff's trade mark amounts to infringement and the plaintiff has a statutory remedy to protect his mark. Further, the fact that the goods/services in question are almost identical, both catering to the same consumer base and both dealing with noodles (chowmein), enhances the chances of confusion. 15. It was further submitted that even otherwise, Section 29(4) did not apply as there was no trade mark usage of "Yo!" and that any other interpretation would render Section 29(1) redundant, which, in turn, would be against the permitted rules of interpretation. Reliance was placed on Illachi Devi v. Jain Society (2003) 8 SCC 413. It was contended that what would not amount to infringement for "identical goods", cannot amount to infringement for "different goods" and that the test of infringement applicable to "different goods" cannot be wider than the test of infringement for "identical/similar goods". 16. It was also reiterated that "Yo!" is a popular exclamation commonly used by the trade and is a generic expression. Consequently, it cannot be considered as a distinctive or a well known trade mark, which is a condition pre....
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....he respondent fully supported the impugned order and contended that no interference was called for. First of all, it was submitted that the plea of the appellant with regard to "Yo!" not being used by it as a trade mark was not tenable. According to the learned Counsel, Section 29 of the said Act has various independent subsections under which cases of infringement may fall. Each sub-section provides for a different situation and each is independent of the other. It was submitted that, by virtue of Section 29(4), protection is provided to a registered trade mark even if the impugned mark is used for goods and services which are not similar to the goods and services in respect of which the trade mark is registered. It was further submitted that Section 29(4) does not require that the impugned mark has to be used as a trademark. In this context, the learned Counsel took the plea that the respondent's mark "Yo!" is registered in Class 42 (Restaurant) and the appellant, by using the identical mark "Yo!" in the course of its trade, has made itself liable for an action of infringement under Section 29(4) of the said Act, independent of the other provisions of Section 29. 21. Secon....
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....respondent, from the above, it is abundantly clear that the appellant was aware of the success of respondent's "Yo! On the Go" product and the whole idea of adding the suffix "Yo!" to its aforesaid two flavours "Masala" and "Chilly Chow" was to give an impression of commercial connection between the two and thereby capitalize on the goodwill of the respondent's product when targeting a new market segment. 24. Fifthly, it was submitted that the trademark law does not make any distinction between a larger market share holder and a smaller market shareholder, thus, the plea of the appellant with regard to it having a 91% market share is of no consequence. Further, whether "Yo!" is used in small or big letters is immaterial as the use itself constitutes infringement. 25. Sixthly, with regard to the appellant's contention that "Yo!" is a generic expression, it was submitted by the learned Counsel for the respondent that even generic, common and descriptive words can be protected if they acquire a secondary meaning. In this context, it was submitted that the expressions "Yo!" and "Yo! China" due to continuous, extensive, substantial and open use for over six years, comb....
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....lamation mark), being a word, would fall within this definition of "mark". Section 2(1)(zb) defines "trade mark" in the following manner: (zb) "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and-- (i) in relation to Chapter XII (other than Section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, a....
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....ntiveness, or to express affirmation" (see: Merriam-Webster Online Dictionary). The words "Masala" (spice or spicy) and "Chilly Chow" denote flavours. The word "Yo" following these words only calls attention of the customers to the flavours and expresses affirmation of the flavour of the product. The exclamation mark "!" ends the expressions with a further emphasis. 33. Coming back to point No. 1, we find that there is clear prima facie indication that the mark "Yo" (with or without the exclamation mark "!") was not used by the appellant as a trade mark. The consequence of this is that infringement under Section 29(1) is not made out. Let us explain how. Section 29(1) stipulates that: 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 is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. 34. The key words are--"and in such manner as to render the use of the ma....
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....n (4) of Section 29 are to be cumulatively satisfied before a case of infringement can be established. It is not as if the said clauses are disjunctive or are to be read independently. It is not sufficient for making out a case of infringement under Section 29(4) of the said Act to say that the case falls under Clause (a) or Clause (b) or Clause (c). The conditions specified in all the three clauses have to be satisfied. This is obvious from the word "and" used in each of the said three clauses. 37. We need to consider each clause. Clause (a) of Section 29(4) requires that the mark in question be identical with or similar to the registered trade mark. The mark used by the appellant is "Yo" (with or without the exclamation mark). The respondent's trade mark "Yo!" is registered for T-shirts etc., under class 25 and for restaurants under class 42. The respondent's trade mark "Yo! China" is registered under classes 29 (meat, fish, poultry etc.), 30 (which includes noodles) and 32 (Beer, ale, port etc.). While the appellant's mark "Yo" (with or without the exclamation mark) could be regarded to be identical with or, at least, similar to the respondent's registered tra....
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....s in India, escaped the attention of the learned Single Judge. So, while the mark "Yo" as used by the appellant may be regarded to be similar if not identical to the respondent's registered trade mark "Yo!", there is nothing on record to establish, even prima facie, that the latter trade mark has been so continuously or extensively used that it has developed a "reputation" in India. 41. The next question which requires to be considered in the context of Clause (c) is this - has the appellant used the mark "Yo" without due cause? In other words, is there a tenable explanation for the use of the mark "Yo" by the appellant? It must be remembered that we have already concluded, prima facie, that the mark "Yo" has not been used by the appellant as a trade mark. In fact, the word "Yo" has been used as part of the expressions "Masala Yo!" and Chilly Chow "Yo!". The appellant has explained that the word "Yo" has been used in both expressions to invite the attention of the customers (and, particularly the younger customers who are prone to use the word "Yo" in their day-to-day conversations) to the flavours "masala" and "chilly chow". This, to us, is a plausible explanation. Conseque....
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....mark is not infringed where-- (a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services; 47. The argument of the learned Counsel for the respondent is that "Yo" cannot be regarded as a flavour descriptor as sought to be alleged by the appellant. But, it must be kept in mind that the word "Yo" has not been used in isolation. Had it been used alone, independent of any other word, phrase or expression, there might have been merit in what was contended on behalf of the respondent. Here, "Yo" is used as an integral part of the expressions "Masala Yo!" and "Chilly Chow Yo!". The said expressions do describe the characteristics of the goods in the sense that they refer to the flavours of the noodles. It was argued on behalf of the respondent that "Yo" by itself does not describe any flavour and that it has been added 'mischievously'. But, it may be argued with equal vigour that the use of the word "Yo" is not mere surplusage....
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....e plaintiff showing that his claim was not frivolous or vexatious in the sense that there was a serious question to be tried or a triable issue to be decided. The principle of sufficiency of a "triable issue" as a condition for grant of an interlocutory injunction was recognised in India as well (see: Wander Ltd. v. Antox India (P) Ltd. (1990) Supp SCC 727; Power Control Appliances v. Sumeet Machines (P) Ltd. (1994) 2 SCC 448). However, as pointed out in S.M. Dyechem Ltd. v. Cadbury (India) Ltd. (2000) 5 SCC 573 (at page 590), the Supreme Court, through its decision in Gujarat Bottling (supra), "again adverted to the prima facie principle while granting temporary injunction". In Dyechem (supra), the Supreme Court clarified that the decision in American Cyanamid (supra) was looked at from a fresh perspective in Series 5 Software Ltd. v. Clarke (1996) 1 All ER 853 (ChD) inasmuch as it was observed in the latter case that American Cyanamid (supra) could not be understood as having laid down anything inconsistent with the old practice and that it did not lay down that the relative strengths of the case of each party need not be gone into. The Supreme Court also noted that 'now'....
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....an interlocutory injunction. This vital consideration of the comparative strengths of the rival cases is missing in the impugned decision. 53. We are also of the view that the reliance placed by the learned Single Judge on Indian Shaving Products (supra), where the two marks in question were "Duracell Ultra" and "BPL Ultra" and on Yahoo Inc (supra), where the dispute was between the names of two websites, namely, "Yahooindia.com" and "Yahoo.com", was misplaced. This is so because in both the said decisions the rival marks were used as trade marks, whereas in the present case the appellant's use of the mark "Yo" is not as a trade mark. 54. The learned Single Judge, as mentioned above, found, prima facie, that "Yo!" and "Yo! China" had acquired distinctiveness through usage since 2002. He also observed that, prima facie, it appeared that these marks had acquired a 'secondary' meaning insofar as chowmein (noodles) were concerned. We shall briefly dwell on these prima facie conclusions of the learned Single Judge. We have already indicated that though there is material to show continuous use of the mark "Yo! China" by the respondent in respect of its restaurant busine....