TaxTMI 
TaxTMI 
2010 (7) TMI 1146
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....her mark similar to the mark 'CLINIQUE' of the respondents/plaintiffs till the disposal of the application. The defendants were further restrained from marketing any goods or allowing any goods to be marketed under the impugned trademark through their distributors or other agents or from advertising the same in any manner whatsoever. 3. The appellants/defendants had filed IA No. 217/2009 (under Order 39 Rule 4, CPC) for vacating the said ex parte order dated 16.12.2008. The respondents/plaintiffs had subsequently filed IA No. 2769/2009 (Under Section 124(1)(ii) of the Trade Marks Act, 1999 (hereinafter referred to as 'the said Act') praying that the proceedings in the suit be stayed till the final disposal of the rectification proceedings which the respondents/plaintiffs had initiated before the trademark authorities for cancellation/rectification of the registration of the trademark 'SKINCLINIQ' in favour of the appellants/defendants. 4. The learned single Judge, by virtue of the impugned order dated 09.04.2009, disposed of all the three said applications. The respondents'/plaintiffs' application under Order 39 Rules 1 and 2, CPC (IA No. 15425....
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....favour of the respondents/plaintiffs. The learned single Judge was of the view that the appellants/defendants were engaged in the same business and a presumption cold be raised with regard to their knowledge of the respondents'/plaintiffs registered trademark and consequently, he felt that the action of the appellants/defendants in adopting the mark 'CLINIQ' was not above board. According to him, there was not much distinction between the letter "Q" or "QUE" which appeared in the word 'CLINIQ' used by the appellants/defendants and the word 'CLINIQUE' used by the respondents/plaintiffs. The learned single Judge also observed that 'CLINIQ' as used by the appellants/defendants was spelt differently from the normal word 'CLINIC' and that the whole object behind this different spelling was to somehow create an association with the respondents/plaintiffs trademark. The learned single Judge also raised a doubt as regards the appellants/defendants action in using the expression "Made in India by Gufic Bio Science Ltd.". According to the learned single Judge, this expression suggested that the appellants/defendants were making 'STRETCH NIL'....
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....-09-1999 SKINCLINIQ STRETCH NIL (Label) 3 Cosmetics & Toilet Preparation 6. 878512 27-09-1999 SKINCLINIQ STRETCH NIL (Label) 5 Pharmaceutical & Medical Preparation 9. The respondent No. 1, on the other hand, is the registered proprietor in India of the trademark 'CLINIQUE', by itself, and a series of marks featuring the word 'CLINIQUE', the particulars of which are as under: Registration Date of Registration Trade Mark Class Goods 378364 13.7.1981 CLINIQUE 3 Cosmetics creams, lotion & oils in cleansing creams, lotions and make-up, astringent, face powder, foundation, bases, rouges, eye make-up preparation, mascara, eye linen eye shadow and pencil, eye make-up remover, lipsticks hair sprays, bath oils and anti-perspirants in class 3 572656 6.5.1992 CLINIQUE WATER THERAPY 3 Cosmetics and toilet preparations 572657 6.5.1992 CLINIQUE 3 Cosmetics and toilet MOISTURE SURGE preparations 572658 6.5.1992 CLINIQUE SKIN SUPPLIES FOR MEN 3 Cosmetics and toilet preparations 336229 4.5.1978 CL....
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....ents have been addressed only on the question of deceptive similarity between the marks of the contesting parties in the context of Section 29(1) which reads as under: 29. Infringement of registered trade marks.- (1) 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. xxxx xxxx xxxx xxxx 11. The marks 'CLINIQUE' and 'SKINCLINIQ' are not identical. Therefore, for infringement to be made out, it must be shown that the mark 'SKINCLINIQ' is deceptively similar to the respondents'/plaintiffs' mark 'CLINIQUE' and is used by the appellants/defendants in such a manner as to render the use of the mark likely to be taken as being used as a trademark. 12. In this context, Mr. Sudhir Chandra submitted that the marks 'SKINCLINIQ' and 'CLINIQU....
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....ade from the standpoint of infringement, it is only the marks which are to be compared and that the price, trade dress, colour scheme etc., are all irrelevant. He submitted that the marks have to be seen as a whole and the overall structural and phonetic similarity has to be noticed. All this has to be done from the standpoint of a consumer of average intelligence with an imperfect recollection. He submitted that if a comparison is made between the two marks following the above principles, it would be clearly established that the appellants'/defendants' mark 'SKINCLINIQ' is deceptively similar to the respondents'/plaintiffs' mark 'CLINIQUE'. 14. The Counsel for the parties had referred to a number of the decisions of the Supreme Court as well as of this Court. They were, inter alia, the following: 1) Ruston & Hornsby Ltd. v. The Zamindara Engineering Co. 1969 (2) SCC 727; 2) Amritdhara Pharmacy v. Satya Deo Gupta AIR 1963 SC 449; 3) Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980; 4) Corn Products Refining Co. v. Shangrila Food Products Ltd. 1960(1) SCR 968 : AIR 1960 SC....
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....ical with the plaintiffs mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the register, but something similar to it, the test of infringement is the same as in an action for passing-off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing-off actions. 16. In Amritdhara Pharmacy (supra), the Supreme Court held that the word "LAXMANDHARA" was likely to deceive and confuse persons into believing that they were, in fact, purchasing the product under the mark 'AMRITDHARA'. The Supreme Court observed that the question of deceptive similarity must be approached from the point of view of a man of average intelligence and imperfect recollection. The Supreme Court further observed that: ...overall structural and phonetic similarity of the two names 'AMRITDHARA' and 'LAXMANDHARA' is, in our opinion, likely to deceive or cause confusion. The Supreme Court also observed that: The trademark is the whole thing - the whole w....
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....ere 'LAL QUILLA', 'GOLDEN QUILLA' and 'NEEL QUILLA' and the infringing mark was 'HARA QUILLA'. A Division Bench of this Court held that the essential feature of the registered trademark was the word 'QUILLA' and, therefore, the mark 'HARA QUILLA' was found to be deceptively similar to the registered trademark 'LAL QUILLA'. The Court observed that there is every possibility of there being a confusion created in the minds of the purchasers of rice that the product being sold by the defendant (in that case) was, in fact, a product that had emanated from or had been manufactured by the plaintiff (in that case). The Court also took the view that the delay in approaching the Court by itself would not be a sufficient defence to an interim injunction in the event the Court takes the view that ultimately, a permanent injunction would be granted. 20. In Metropol (supra), a Division Bench of this Court was required to consider the marks 'CLEANZO', which was the registered mark and 'CLEANJO', which was the alleged infringing mark. In the said decision, the Division Bench held that the learned single Judge was not justif....
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....efer to the decisions referred to at the bar as in our view each case will have to be judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it. 22. The following principles can be culled out from the aforesaid decisions: 1. The test of deceptive similarity in the case of infringement is the same as in a passing off action, where the marks are not identical; 2. The question has to be approached from the point of view of a man with average intelligence and imperfect recollection; 3. In comparing the marks, it is the overall structural and phonetic similarity of the two marks that is to be seen and not by splitting them into their component parts and to consider the etymological meaning thereof; 4. The trademark is the whole thing - the whole word has to be considered; and 5. In comparing the two marks, it is also to be seen whether they both convey the same idea - (test of commonness of the idea between the two marks). 23. It is in this backdrop that we have to compare the marks of the appellants and those of the respondents. The respondents....