TaxTMI 
TaxTMI 
2018 (10) TMI 665
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....om in any manner infringing the registered trademark and passing off its products as that of the plaintiff's trademark "GOLD WINNER" and also for a direction to pay to plaintiff a sum of Rs. 10,00,000/- by way of damages and also for a preliminary decree to render accounts and for delivery to the plaintiff for destruction, all labels, all other print materials etc and such other materials used for infringing and passing off. 2. The respondent/plaintiff, pending 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 ....
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....respondent/plaintiff, the appellant/defendant has been doing the business of selling sunflower oil & vanaspathi under the trademark "GOLD WINNER", which came to be registered in Class-29 and also started selling dhall varieties under the trademark "SREE GOLD" from 2005 and the same is registered in Class-30. The defendant has filed a rectification petition before the Trademark Registry on 27.02.2006, challenging the registration of the plaintiff's trademark "GOLD WINNER" and subsequently, the said application was dismissed as withdrawn on 30.01.2013 by the Registrar of Trademark.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 o....
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....dant, has copied the respondent's trademark and in the light of registration of the trademark "GOLD WINNER" including "SREE GOLD" in Class-30 under 3 registration numbers dated 16.11.2005 and that the mark "GOLD WINNER" registered under Class-29 came to be registered as early as on 27.08.1993 and took a stand that the respondent is not entitled to any interim orders and prayed for vacating the same. 4.7. The respondent/defendant/appellant has also filed an 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 clas....
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....tantly, the trademark of the appellant/defendant was also registered and the "GOLD WINNER" font alone has been increased and however, style of writing of the font remains the same and hence, it cannot be considered as infringement of the respondent's/plaintiff's label mark. (iv) In the light of the fact that the appellant/defendant is the prior user of the mark "GOLD WINNER" and admittedly, device mark of the respondent/plaintiff came to be registered at a later point 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....
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....word mark, namely "GOLD WINNER", which has been honestly conceived and adopted by it. Therefore, learned Senior Counsel appearing for the appellant/defendant, prays for allowing of this appeal with a consequential order to vacate the interim order granted by the learned Judge in dismissing the application. The learned Senior counsel appearing for the appellant/defendant, in support of his submissions, placed reliance upon the following judgments: (i) The Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. [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 vali....
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....LT 398] 8. During the course of arguments in this appeal, it was also brought to the knowledge of this Court by the learned Senior Counsel appearing for the appellant that though the appellant/defendant had used the wrapper "SREE GOLD" with the word "GOLD WINNER", had given up totally and started using the word "GOLD WINNER" with the word "SREE GOLD" and it was also suggested that why the wrapper/package is being used by the appellant/defendant and the word "SREE GOLD" should be prominently displayed with the reduction in size of the label font "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,....
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....0 dated 16.11.2005 and therefore, they own exclusive right, proprietorship and copyright for the artistic feature of the mark "GOLD WINNER" by virtue of their registration and their trademark "GOLD WINNER" had gained high level of distinctiveness and goodwill on account of maintaining excellent quality of their products and marketing them at reasonable price and for the reason that they have spent crores of rupees towards advertisement etc. It is further contended by the appellant/defendant that the respondent/plaintiff with an intention to piggy 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 mar....
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.... filed in support of the application, counter and reply statements and after considering the case laws cited by the respective learned counsel appearing for the parties, observed that infringement of a registered trademark occurs only when a mark is identical or deceptively similar to a registered trademark and with regard to the claim of the appellant that it is a well known trademark and also taken note of the fact that the registration of the trademark "GOLD WINNER" is in Class-29, has formulated a question as to whether the appellant/defendant'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....
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....nti-Dissection principle and also failed to take note of the fact that the respondent/plaintiff is dealing in wholesale market and whereas the appellant/defendant is dealing in retail market and if the respondent/plaintiff label mark and the appellant/defendant label mark are placed side by side and examined as a whole for trademark infringement, both of them are completely different and no mark of confusion might be caused in the minds of the consumers. It is the further submission of the learned Senior Counsel appearing 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 13....
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....ose disclaimer is that the trade mark contains parts which are not separately registered. It is, therefore, clear that the section itself contemplates that there may be a disclaimer in respect of parts contained in a trade mark registered as a whole although the registration of the mark as a whole does not confer any statutory right with respect to that part." 24. In Khoday Distilleries Limited v. The Scotch Whisky Association and Others [2008 (37) PTC 413 (SC) : (2008) 10 SCC 723], the mark of whisky under the mark "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 dist....
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.... be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.'" 25. In Rana Steels v. Ran India Steels Pvt. Ltd. [2008 (102) DRJ 503 : 2008 PTC (37) 24], infringement of the trademark "RANA" dhall and the scope of Section 28(3) of the Trade Marks Act, 1999 came up for consideration and it is 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 ....
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.... The plaintiff has a valid registration in relation to steel rolled products, CTD bars, angles, flats, rounds, channels and girders falling under class 6. The defendant has a registration under class 19 but not in relation to steel rolled products, CTD bars, angles, flats, rounds, channels and girders falling under class 6. It is obvious, that it is the plaintiff's statutory right which requires protection and not the defendant's improper use of the mark RANA turn in relation to steel rolled products, CTD bars, angles, flats, 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 f....
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....k with respect to centrifugal pumps for which the registration was in favour of the Defendant. The Plaintiff tried to restrain the Defendants from using the said mark in respect of centrifugal pumps on the basis of prior use, and not on the basis of proprietorship arising out of registration of the mark. In that context, it was explained by the Court that by virtue of Section 28(3) of the TMM Act, the exclusive right to use the trade mark 'Field Marshal' shall not be deemed to have been acquired either by the Plaintiff or by the 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 Secti....
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....r of the trade mark (though at the same time they have the same rights as against third person). Thus, between the two persons who are the registered owners of the trade marks, there is no exclusive right to use the said trade mark against each other, which means this provision gives concurrent right to both the persons to use the registered trade mark in their favour. Otherwise also, it is a matter of common sense that the plaintiff cannot say that its registered trade mark is infringed when the defendant is also enjoying registration in the trade mark 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 br....
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....em. One of the essential conditions for protection is that the mark should have acquired some distinctiveness, and the claim for that is not founded on mere continued use. The unfair use of a mark which is identical, or similar to the trademark in question leads the courts, in infringement actions, to examine the rival marks, as a whole, to determine the scope or potentiality or likelihood of confusion. In paragraph 37, the High Court of Delhi, after referring to the decisions in Sabel BV v. Puma AG [(1998) RPC 199] and Adidas-Saloman AG v. Fitnessworld Trading Ltd. [(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....
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....s the conjunctive "and" is used, in Section 29(4)." In paragraph 49 of the judgment, it was observed that in infringement actions, the plaintiff has to fulfill a more stringent test (than the deceptive similarity standard) of proving identity or similarity, where trademark dilution is complained. On the facts of the case, the Delhi High Court concluded that prima facie the two trademarks are neither identical nor similar to each other and therefore, the appellant therein is not entitled to temporary injunction. 30. The prayer of the respondent/plaintiff in O.A.No.224 of 2017 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....
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....ures of the plaintiff's trademark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade.". 35. In S.Syed Mohideen v. P.Sulochana Bai [2015 (7) Scale 136], it was observed that "the action for passing off which is premised on the rights of prior user generating a goodwill shall be unaffected by any registration provided under the Act and passing off right is broader 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 r....
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....o him and started packing dhall varieties in the package/wrapper titled as "GOLD WINNER- Range of dals". The explanation offered is that they are having registration of the artistic work "GOLD WINNER SREE Gold" and those Registration Certificates are in respect of Orid Dhall, Moong Dhall and Toor Dhall bearing Nos.A-78000/2006, 78004/2006 and 78063/2007 dated 29.12.2006 and 09.01.2007 respectively and whereas the respondent/plaintiff's trademark registration certificates are dated 05.09.2003. 41. It is a settled position of law that when the word is only 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 Rs. 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 a....