TaxTMI 
TaxTMI 
2010 (2) TMI 1255
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....aging and instructions are concerned, which according to the plaintiffs, are identical and/or similar to its own product. Consequential orders in the form of preliminary decree to render accounts, as also final decree for payment of money found due and payable, and of rendition of accounts is sought as well. Finally, a decree for delivering to the plaintiffs custody of all such products, packing material, boxes, cartons, labels, containers e.t.c, which bear the infringing mark 'WHIP TOPPING' or the impugned trade dress or get up, is also prayed for. 2. The plaintiffs' application being IA No. 1607/2004 under Order 39 Rule 1 & 2 of Code of Civil Procedure, 1908 (hereinafter referred to as 'CPC') was dismissed by a single Judge of this Court vide order dated 03.07.2007. Being aggrieved, the plaintiffs had carried the matter in appeal to the Division Bench. The Division Bench by an order dated 10.09.2008 passed in FAO(OS) No. 355/2007 disposed of the appeal with a direction, based on submissions of counsels for both parties, that the suit be put up for disposal by resorting to methodology of filing affidavit of evidence sans cross-examination. Accordingly, the cou....
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....mily business which commenced in 1945. Mr Robert E. Rich who is the progenitor of plaintiff No. 1, in a manner of speaking, responsible for the discovery of vegetable based whipped cream, made from soya bean. The research carried out under aegis of Robert E. Rich, led to the discovery that soya bean substance could be frozen, thawed and whipped. Thus came into existence, what the plaintiffs claim a miracle cream made from soya bean; a wholly "non-dairy" product. 4.2 The plaintiffs called the miracle cream RICH'S WHIP TOPPING. Being a non-dairy topping it spawned various non-dairy products including Rich's Bettercreme Icing and Filling, Rich's on Top non-dairy dessert, frozen eclairs and cream puffs, coffee Rich; which incidentally is claimed as the first frozen non-dairy creamer. 4.3 The plaintiffs it appears discovered another new product by the name of "Freeze Flo". It is claimed that this is an all-natural process for soft foods, so that they remain soft while frozen, and hence can be served straight from the freezer. The plaintiffs claim that because of its expertise in manufacture and sale of frozen foods, non-dairy and baking products including frozen sea-foods ....
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.... 5.3 The plaintiffs being aggrieved issued a cease and desist notice dated 23.04.2003 to the defendant. The defendant, however, refuted the plaintiffs contention vide their reply dated 13.05.2003. The defendant thereupon, filed a suit in the Distt. Court at Tis Hazari being suit No. 53/2003, which, I am informed, stands withdrawn in view of the fact that parties realized that the legal validity of their respective stands would really get determined in the present proceedings. 6. In the background of the aforesaid averments, as stated above, the plaintiffs have led evidence in support of the same by filing affidavits of eight witnesses. Briefly, each of the witnesses have stated as follows: 6.1 Mr Jill K. Bond (PW1) has adverted with respect to: the worldwide market reputation of its trademark "RICH'S WHIP TOPPING"; which is an invention made under aegis of its founder Robert E. Rich in the year 1945; the trade mark "WHIP TOPPING" is registered in USA and Taiwan, in the form of proof exhibits PW1/5 and PW1/6 are cited; and lastly, the trademark "RICH'S WHIP TOPPING" is registered in USA, Pakistan, Thailand and Malaysia; reliance in this regard is placed on exhibits PW1/7 ....
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....es invoices of Whip Topping/Rich's Whip Topping. In this regard invoices being Ex. PW2/3 to PW2/9 have been proved. PW2 has also deposed that plaintiffs maintain two websites being www.richs.com and www.whiptopping.com wherein it is claimed that information is available with regard to plaintiffs' product including product marketed under trademark "whip topping"/ "rich's whip topping". 8. Mr Priyakant Himatlal Shah (PW3), who is a consultant with plaintiff No. 2, has adverted to the effect that plaintiff No. 2 was incorporated on 16.08.1994 for manufacturing products, chiefly 'dairy-free topping' under the trademark of plaintiff No. 1 as per technical know-how supplied by plaintiff No. 1. For this purpose PW3 has stated that royalty is paid to plaintiff No. 1. PW3 has also alluded to the fact that plaintiff No. 2 is involved in production of non-dairy topping which is ultimately sold to bakers, confectioners, food service outlets, five-star hotels etc. PW3 has also deposed that defendant's trade mark "BELLS WHIP TOPPING" is similar to plaintiff No. 1 trademark "WHIP TOPPING" which forms part of the registered trademark of plaintiff No. 1 in India. PW3 has fu....
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....upply them to hotels, bakeries, confectioneries, such as Oberoi Group, Taj Flight Kitchen, ITC Group, Surya Crowne Plaza, Nirula's etc. in Delhi. He has testified that the quality of the product under the brand of "RICH'S WHIP TOPPING" is very good and is in great demand. He has specifically adverted to the fact that selling the product under the brand name of "BELLS WHIP TOPPFNG" had created confusion, in as much as, he verily believed that plaintiff No. 2 had adopted another trademark by the name of "BELLS WHIP TOPPFNG". 13. Mr Shikhil Nagpal (PW8), who is the Operational Manager of Everbake Bakers Pvt. Ltd, has deposed that they had been in the business since the year 2000. He has also testified that the plaintiffs trademark "RICH'S WHIP TOPPING" along with its trade dress comprising of red, blue and white packaging is "easily recognizable and eye catching". He further stated that "RICH'S WHIP TOPPFNG" is used as a substitute to fresh dairy cream as it has greater shelf life and is easier to manage. 14. The defendant, on the other hand, has emphatically refuted the plaintiffs' claim of proprietary rights in trademark "RICH'S WHIP TOPPFNG" and "WHIP TOPP....
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.... product itself and hence, cannot be protected till it can be demonstrated that it has acquired a "secondary meaning". The defendant has further averred that the product in issue is 'WHIP TOPPING' and it cannot be described in any other manner except by using that expression and especially when it is a manufacturer of the said product. It is the defendant's stand that the said word/expression 'WHIP TOPPING' is commonly used in the trade world over. According to the defendant 'WHIP TOPPING' is an imitation dairy product which is commonly used in making desserts, baked and frozen products by various manufacturers all over the world, and hence is "publici juris". In this regard example of other manufacturers, which have used the word mark 'whip topping' in respect of their products, have been referred to in the written statement. For the sake of convenience they are extracted herein below: S.No. Name of the Company Product 1 Lego Foods Co. Ltd. Lego non-dairy Whip Topping 2 Kraft Foods Cool Whip Whipped Topping 3 Flavor Right Foods,Columbus, Ohio 43216, USA Flavor Right Premium ready to whip Topping 4 Elgin Dairy Foods, Inc. Ch....
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....pect to the letter 'S' and the word 'Topping'; the defendant's mark "BELLS WHIP TOPPING", (which is unregistered) is; deceptively similar to the plaintiffs registered trademark, (ii) plaintiff No. 1 as far back as on 1945 was responsible for inventing a "non-dairy" product which is capable of being whipped into foam for use in desserts, salads and confectionaries items e.t.c, which resulted in the product acquiring the name 'whip topping'. In short it is the invention in which plaintiff No. 1 has legal rights. (iii) In the country of its invention, i.e., U.S.A. 'Whip Topping' is registered with the plaintiffs' name. (iii) In India, the plaintiffs' registration of the mark "RICH'S WHIP TOPPING" dates back 13.11.1991, and thus carries with it a superior right qua the defendant by virtue of prior user. (iv) On discovering the defendant's use of the infringing mark in April, 2003, a notice was issued on 23.04.2003, which, as indicated above, was replied by the defendant vide its reply dated 13.05.2003. The defendant instituted a suit only thereafter in the Distt. Court being suit No. 53/2004 in March, 2004. This was followed b....
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.... judgment of Bombay High court in the case of Consolidated Foods Corporation v. Bradon & Company Pvt. Ltd AIR 1965 Bom. 35. 19. It was further contended that the plaintiffs mark was a "well-known" mark in India and in accordance with the provisions of Section 11 of the Trade Marks Act there was every likelihood of defendant's mark being refused registration. 20. In particular, the learned Counsel submitted that the defence under Section 35 of the Trade Mark was not available to the defendant for the reason that it protects word marks which describe the character and quality of goods, that is, are used in adjectible sense. In the instant case, the learned Counsel submitted that the word mark 'whip topping' comprises of two words whip and topping, both of which are nouns. 21. It was contended that trademark "WHIP TOPPING" is not descriptive since it relate to a non-dairy product. The learned Counsel went on to submit that the word 'whip' is essentially used and confined to cream (dairy based product) or egg (poultry product). It was submitted that for the first time, after the extensive research and development, plaintiff No. 1 had discovered the product in iss....
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....s placed on the plaintiffs' own affidavit of evidence and documents where 'whip topping' has been described as a product. It was submitted by Mr Bansal that no trademark right can exist or can be acquired in relation to a product if it cannot be described in any other manner, even though, it has acquired secondary significance through use and publicity. In the alternative it was submitted that the mark 'whip topping' is descriptive as it is used to describe the product and does not, therefore, have any trademark significance. The mark 'whip topping' is publici juris as it is commonly used in the trade pertaining to non-dairy products. It was contended that the mark "RICH'S WHIP TOPPING" has been registered consciously subject to disclaimer, and that it can be protected only in its composite form, and not when 'whip toping' is independently used in conjunction with a prefix or suffix. It was further submitted that a descriptive trademark could be protected only on proof of secondary significance. The standard of proof with regard to which is of a high order and/or nature, and in ascertaining similarity in respect of descriptive trademarks even....
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....n contradistinction, he submitted, the definition of "trademark" is narrow being confined to those marks which are used in relation to goods for the purpose of indicating and identifying the source and the origin of goods. 27. According to Mr Bansal the remedy of infringement is a statutory remedy, which is controlled and limited by the provisions of the statute and based on the mark found in on the register of trademark authority. Reliance in this regard was placed on the provisions of Section 2(1)(w) of the Trade Marks Act. Mr Bansal went on to contend that infringement is subject to statutory conditions as contained in Section 27, 28(2), 30, 35 and 37 of the Trade Marks Act. Mr Bansal further contended that the rights conferred by registration of mark are subject to the conditions and limitations attached to the registered mark, in the present case the disclaimers in respect of the letter 's' and the expression 'Topping'. Mr Bansal referred, in particular, to the provisions of Section 30, 35 and 37 of the Trade Marks Act to demonstrate the situation in which a charge of infringement cannot attach to the defendant. He submitted that Section 31 of the Trade Marks ....
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....ssions were also made vis-a-vis the instructions on the labels used by the plaintiff. 30. Based on the aforesaid submissions Mr Bansal has submitted that there is no cause of action which one could say had arisen in favour of the plaintiff in order to enable it to maintain a suit either for infringement of its trademark or violation of copyright or even in respect of tort of passing off. 30.1 In support of his submissions the learned Counsel relied upon the following: Oxford English Referenc Dictionary, 2nd Edition, Revised; Mc Carthy on Trade Marks, Generic Terms; CES Publishing Corporation v. St. Regis Publication Inc. 531F2d 11,188 U.S.P.Q 612; Abercrombie and Fitch Co. v. Hunting World, Incorporated 1976 WL152702(CA.2(N.Y)), 189U.S.P.Q. 759; Bharat Enterprises (India) v. C. Lall Gopi Industrial Enterprises and Ors. 1999 PTC (19) 598; Canadian Shredded Wheat Co. Ltd. v. Kellogg Co. of Canada Ltd and Anr. AIR 1938 PC 143; Mc Cain International Ltd. v. Country Fair Foods Ltd. and Anr. 1981 RPC 69; Beer Nuts, Inc. v. King Nut Company, Federal Reporter, 2nd Series; James v. Soulby 1886 Chancery Division 392; Halsbury's Laws of England, Vol.9, 4th Edition; J.R.Kapur v. Micronix....
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....any's office, w.e.f 12.11.1991 which is valid till 12.11.2010, in respect of mark and device and the descriptor "RICH'S WHIP TOPPING" is subject to the limitation that registration of the said mark shall not give plaintiff No. 1 the exclusive right to use the word 'Whip Topping'. (See document at page 14 of the defendant's compilation) 32. The position, therefore, in so far as India is concerned is that, the plaintiffs have disclaimed their rights on letter 'S' and word 'Topping' which, in sum and substance, denudes any practicable efficacy in the trademark "Whip Topping" (assuming it is one). 32.1 The plaintiffs, however, claim that the registration of its mark "RICH'S WHIP TOPPING" has resulted in conferment of statutory rights against the infringement of its mark as well as common law rights, de hors the registration, in each and every part of its registered mark. 32.2 To analyse this submission it may be relevant to refer to certain provisions of Trade Marks Act. The word 'mark' has been defined in Section 2(1)(m) of Trade Marks Act. The definition is inclusive. It brings within its ambit a device, brand, heading, label, ticket....
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....Act. This is subject to the mark being a valid. The validity of the mark in an action for infringement can be enquired into either by the court or the statutory authority depending on where and at which stage the action is pending. [See Lowenbrau AG and Anr. v. Jagpin Breweries Ltd and Anr. 157 (2009) DLT 791]. The right to exclusive use of a registered mark conferred upon the owner of such a mark is subject to conditions and limitations to which the registration is subjected to. In the context of the present case in my view Sub-section (2) of Section 28 of the Trade Marks Act would bring within its ambit any disclaimers which are set out at the time of registration of the mark. 32.7 Section 29 of Trade Marks Act sets out as to what would constitute an infringement of a trade mark. Sub-sections (2) and (4) of Section 29 of Trade Marks Act provide for various permutation and combinations which constitute an infringement. Between Clauses (a) to (c) of Sub-section 2 of Section 29 various situations are covered: First, where rival trade marks are identical and the goods and services are also similar. Second, where rivals trade marks are similar, and goods and services are identical or....
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....quiescence where an owner of a registered trade mark allowed continuous user of a rival mark for a period of five years. 32.11 Similarly, Section 34 of the Trade Marks Act saves the right of an owner of a trade mark which is identical with or nearly resembling the registered trade mark provided: the said person had continuously used the trade mark from a date prior to the use or to the date of registration of the first mentioned trade mark, whichever is earlier in relation to the goods and services in issue. 32.12 Section 35 of the Trade Marks Act gives statutory protection (against interference by a proprietor or a registered user of a trade mark) to persons who make bonafide use of a registered mark as its own name or place of his business or of the name or name of the place of business of his predecessor in business or is used in a bonafide manner to describe the character or quality of his goods or services. 32.13 Section 36 of the Trade Marks Act saves the use of a name or description of an article as a trade mark or as a part of a trade mark only till such time it is proved that after the date of registration there has been a 'well known' and 'established' ....
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....results in detriment to the distinctive character or repute of the registered trade mark. (ix) The defendant, can resort to the defence of honest use in accordance with the practices of the industry or commercial trade as long as the use is not such which takes either unfair advantage or is detrimental to the distinctive character or repute of the registered mark. (x) A registered mark is not infringed where the use of the registered mark is only to indicate the kind, quality, quantity, value, intended purpose or geographical origin or even the time of production of goods and services. (xi) A defendant can also adopt the defence of a prior continuous user from a date prior to the use or registration of the registered mark. (xii) The defendant is also not prevented from using the registered mark provided it is used in a bonafide manner by a person as his own name, place of business or as a name or place of business of his predecessors in business; or the registered mark is used genuinely to describe the character and quality of the goods. (xiii) Lastly, if a registered mark contains within it words, which is, a name or description of an article or substance or services the....
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....ciently distinctive character that the mark has become a trade mark". The use of a mark does not automatically translate into distinctiveness. [See Shredded Wheat Co. Ltd v. Kelloggs of Great Britain Ltd. (1940) 57 RPC137 & British Sugar PLC v. James Robertson and Sons Ltd. 1996 RPC 281 ]. 35.2 Evidence on record placed by plaintiffs does not lead to such a conclusion. There is no evidence of consumers on record which would suggest that use of the words 'WHIP TOPPING' brings to mind the product manufactured by the plaintiffs. PW7 who is the distributor of plaintiff No. 2 has laconically stated that the infringing mark has created confusion. Being a distributor of plaintiff No. 2 his evidence cannot be given much weight. Similarly, PW8 has extolled the virtues of the plaintiffs product as having a greater shelf life, and the fact that the trade dress of the plaintiffs' packaging is 'eye catching' and easily recognizable. There is no pointed evidence on the distinctiveness of word mark "WHIP TOPPING". There is no evidence say in the form of a consumer survey; I must add here that even the purity of such evidence will depend upon the kind of samples drawn and the ....
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....ford English Dictionary, Edition 1993 at page 543). The words "Whip Topping", when juxtaposed would, in my view, be representative of toppings or garnishes for food items which have cream like quality. Therefore, it is, in my opinion, both 'generic' as well as 'descriptive' of the product. The submission of Mr Gupta that the words 'WHIP TOPPING' is distinctive because it relates to a non-dairy product is not substantiated by any evidence on record which would demonstrate that the words "WHIP TOPPING" are associated only with a cream which is not dairy based. 37. It is not disputed by the learned Counsel for the defendant, as it cannot be, that descriptive words and expression can be registered. Even if they are not registered they can be protected, provided it has attained secondary distinctive meaning by its extensive use and publicity. In other words use is a question of degree. What one needs to ask oneself is whether the descriptive mark has become the trade mark. The defendant can ward off a challenge in respect of a mark in which the plaintiff claims proprietorship rights and seeks to enforce his rights whether on the basis of the registration or othe....
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....ectible sense, though I have doubts about the tenability of this argument. The example most commonly used, which comes to my mind, is that of a 'soap'. Can 'soap' be used by itself as a mark? The answer in my opinion is clearly in the negative since it describes the product; however, it nevertheless is a noun. 39. Consequently, this brings me to the submission of the plaintiffs that the defendant's use of the infringed mark constitutes passing off. In this connection, let me reiterate the well known parameters of what constitutes passing off. Passing off as is ubiquitously held in most jurisdictions subject to usual turn of phrase or change of phraseology, a tort of false representation, whether intentional or unintentional whereby, one person attempts to sell his goods or services as those manufactured or rendered by another which is "calculated" to damage the goodwill of that other person. Thus, the necessary ingredients which a plaintiff in an action of passing off is required to prove, is the: (i) employment of deception. Mere confusion will not suffice; (ii) intent is not a necessary as long as the unwary consumer is deceived; and (iii) the act of th....
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....iffs. The argument of Mr Gupta that the sales shown by the defendant is only Rs. 1.7 crores, that too, in the year 2002-03 which is not supported by requisite evidence, cannot in my view enure to the benefit of the plaintiffs at the final stage because the onus of proof with respect to distinctiveness of the mark lay on the plaintiff, which in my opinion, it has not been able to discharge. 41.1 The other submission of Mr Gupta that the defendant shall not be able to obtain registration of its mark in view of the provisions of Section 11 of the Trade Marks Act is also predicated on a finding that the plaintiffs' mark is "well-known" in the trade. Priority of use alone shall not suffice for the purposes of Section 11 of the Trade Marks Act, given the facts and circumstances of this case, and my observations made hereinabove on "distinctiveness" achieved by the plaintiffs' mark. 41.2 On the issue of validity of presumption arising under Section 31 of the Trade Marks Act in favour of the plaintiffs in view of its mark having been registered has already been answered by me while examining the scheme of the Trade Marks Act. This submission does not need any further elaboration.....
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....have to be found in favour of the plaintiff. The plaintiff is not guilty of concealment in view of the fact that the document pertaining to disclaimer of letter 'S' and the word 'Topping' had been filed. Even though it is conceded, and I must say, quite fairly by the learned senior counsel for the plaintiff that the pleadings do not allude to the aspect of the disclaimer, this, in my view, may have been oversight, which cannot be termed as an act of concealment. In any event, as submitted by Mr Gupta, this cannot determine the outcome of the proceeding in the final analysis. Since, in any event, every issue has been determined on merits this issue has really been relegated to the background. Accordingly, I find the issue in favour of the plaintiff and against the defendant. (vi) As regards whether the suit is barred on account of delay and latches and acquiescence, I am of the view that the said issue has to be once again found in favour of the plaintiff and against the defendant. The reason for the same being that there is nothing put on record by way of evidence by the defendant to suggest that the plaintiffs' assertion, that it came to know of the defendant....