TaxTMI 
TaxTMI 
2014 (10) TMI 1065
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....e mark WORLD BOOK or any other mark that is deceptively similar to the plaintiffs' trade mark WORLD BOOK or any other mark that is deceptively similar to the plaintiffs' registered trade mark WORLD BOOK in respect of printing/publishing of books and other reference materials and educational products, either in print or in software versions as also on their website. 3. Upon service of interim order, the defendant filed its written statement and contested the prayer of interim order passed on 27th May, 2013. The defendant also filed an application under Order 39 Rule 4 for vacation of an ex-parte interim order being I.A. No.11342/2013. Another application bearing I.A. No.12459/2014 was also filed by defendant under Order 3 Rule 4 CPC seeking certain directions against the counsel of the plaintiffs. By this order, I propose to decide the three pending applications. The case of the plaintiffs 4. The plaintiff No.1, a corporation organized and existing under the laws of Delaware, USA, is a publisher of encyclopaedias and other reference materials that markets hundreds of reference and educational products in over thirty countries worldwide in more than twelve languages. The pla....
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....istered a company in the name of World Book Company Private Limited that contains the dominant and distinctive element of the plaintiffs' trademark/trade name WORLD BOOK. On 12th September, 2012, the plaintiffs sent a cease and desist notice to the defendant calling upon it not to use its registered trademark/trade name WORLD BOOK as part of their corporate name. However, it is stated that the said notice was not replied to by the defendant and subsequently, it was also discovered that the defendant had registered the domain name www.worldbookcompany.in also website, which is stated to be deceptively and/or confusingly similar to plaintiffs' trademark/trade name WORLD BOOK, including its domain name worldbook.com. 5.1. By using the plaintiffs' proprietary trademark/trade name WORLD BOOK and by adopting the trademark WORLD BOOK as part of its corporate name, the defendant has committed an infringement of the registered trademark of the plaintiffs. The act of the defendant has resulted in deceiving the members of the trade and public at large into believing that the offending products/services soldand offered for sale by the defendant have some connection with the plaintiffs, wher....
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....the defendant. 7. As there is no connection whatsoever between two types of business activities, the question of infringement does not arise. Due to the ex parte ad interim injunction passed against the defendant had to suffer extreme loss of reputation, goodwill and financial loss which the plaintiffs are liable to compensate. The directors of the company were subjected to humiliation before the investors and were subjected to debt whereas the defendants were merely publishing books with their own effort, creativity and hard work and were progressing extremely well. The plaintiffs undoubtedly have ill motive to extort money from the defendant company and have illegally claimed exclusive rights over the words "WORLD BOOK" is a grossabuse of the process of law. 8. It has also been stated that the plaintiffs first attempt to register the words "WORLD BOOK" as per Application No 574917, failed as Status- Abandoned, as per records and subsequent attempt to register the words WORLD BOOK was later registered as unopposed with a condition and limitation, i.e. disclaimer imposed to the effect that the registered proprietor shall have no exclusive rights over the word BOOK separately.....
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....RLD TRAVELLER, WORLD CUP etc. Some of the trade marks registered around the world with the word "WORLD" are WORLD HEALTH ORGANIZATION, WORLD CUP FOOTBALL etc. These words are in public domain for decades. It is also argued that the WORLD BOOK in combination is used worldwide by different owners: • WORLD BOOK FAIR- INDIA- Held at Pragati Maidan for last 40 years. • WORLD BOOK DAY- IRELAND. • WORLD BOOK NIGHT- UK. • WORLD BOOK CENTER. • BETTER WORLD BOOKS. • SMALLER WORLD BOOKS. • WORLDOFBOOKS.COM. • WORLDBOOKMART.COM- INDIA. • WORLDOFBOOKS.COM. • UKBOOKWORLD.COM. • WORLDBOOKS.COM. • BOOK WORLD INC- AMERICA. • WORLD BOOK CAPITAL. 11. It is alleged by him that the words WORLD BOOK when written in reverse i.e. BOOK WORLD is also owned by innumerable different owners worldwide. The words "WORLD SCHOOL" similarly are two generic words combined together to form a meaning and directly referring to what they do therefore open to the world for use and are being used. An example of WORLD SCHOOL is given below: â€....
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.... of the mark likely to be taken as being used as a trade mark. (2) 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 because of- (a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public. (4) 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- (a) is identical wi....
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.... to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. (2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject. (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those person as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor." 14. By mere reading of these provisions, it is clear that a registered trade....
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....rk registered, he acquires valuable rights by reason of such registration. Registration of his trade mark give him the exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person using a mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain injunction...." iii. In the case of National Bell Co. v. Metal Goods Mfg. Co. AIR 1971 SC 898 at page 903 it was held as under: "On registration of a trade mark the registered proprietor gets under Section 28 the exclusive right to the use of such trade marks in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of any infringement of such trade mark." iv. In the case of M/s Avis International Ltd. vs. M/s Avi Footwear Industries and another, reported in AIR 1991 Delhi 22,the relevant paras of which read as under: "14. At this stage of the case, we have no affidavit against another affidavit, and in view of the statutory provisions of Ss. 28 and 31 of the....
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....s; computer software; interactive cd-rom encyclopedias and reference works 2 1578791 09, 16 & 42 Proposed to be used 13.07.2007 Goods/Services: Class 09: Audio and video tapes, cassettes, cds, cd-roms and dvds; computer software; interactive cd-rom encyclopedias and reference works. Class 16: Books, encyclopedias, dictionaries, atlases, and printed reference works. Class 42: Online encyclopedias, dictionaries, atlases, and online reference works. 3 1497208 WORLD BOOK 16 31.12.1962 16.10.2006 Goods/Services: Books, encyclopedias, dictionaries, atlases, and printed reference works. 4 1497214 16 31.12.1972 16.10.2006 Goods/Services: Books, Encyclopedias, Dictionaries, Atlases, And Printed Reference Works 18. The plaintiffs have obtained registrations of the trade mark WORLD BOOK in a number of countries worldwide, including in Australia, Brazil, Canada, Chile, Denmark, Egypt, European Union (covering 27 countries), India, Ireland, Indonesia, Italy, New Zealand, Singa....
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....t was observed as under: "24. After having considered the above mentioned decisions, it is clear to us that it is not the right test of a meticulous comparison of two marks, letter by letter and syllable by syllable. It is the person who only knows the one mark and has perhaps an impression, or imperfect recollection of it, who is likely to be deceived or confused. In fact it depends on first impression of a person. In case he is aware or familiar with both rival marks of the parties he will neither be deceived or confused. The degree of similarity between the two rival marks and which depends upon the first impression whether visual or phonetic and in case court finds that there is a risk of confusion which is the public interest should not be authorised. The question is merely the dispute of inter se between the parties but it is matter of right by the registered proprietor who got the exclusive rights to protect the same, otherwise, many competing marks would be available in the market in due course and uncertainty might happen in case the infringer is allowed to use similar mark." x x x x x "Actually, whether a particular mark is a generic mark or por....
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....eparate goodwill attaches to it in each. So when the business is carried abandoned in one country in which it is acquired a goodwill the goodwill in that country perishes with it although the business may continue to be carried on in other countries. Once the Hong Kong Company had abandoned that part of its former business that consisted in manufacturing toothbrushes for export to and sale in Singapore it ceased to have any proprietary rights in Singapore which was entitled to protection in any action for passing-off brought in the courts of that country." 24. From the reading of the said observation of Lord Diplock's speech, it is clear that the gist of passing action is goodwill and reputation which is sought to be protected and thereby misrepresentation is prevented in the course of trade. It is altogether different matter that misrepresentation may include the use of mark in the course of trade and ultimate effect of passing off action in most of the cases is protection of the trademark anyway, but the heart and soul of the passing off action has always been protection of goodwill and reputation aimed at to prevent misrepresentation. 25. One of the essential ingredients i....
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....which connect one countries business with that of another. This has been aptly explained by the Division Bench of Delhi High Court in the case of N.R.Dongre v. Whirlpool Corporation, AIR 1995 Delhi 300 wherein the S. Jagannath Rao, J. speaking for the Bench has approved the concept of trans-border reputation in the following words:- "(25) Thus a product and its trade name transcend the physical boundaries of a geographical region and acquire a trans border or overseas or extraterritorial reputation not only though import of goods but also by its advertisement. The knowledge and the awareness of the goods of a foreign trade and its trade mark can be available at a place where goods are not being marketed and consequently not being used. The manner in which or the source from which the knowledge has been acquired is immaterial". 27. The said judgment of Whirlpool [supra] has been approved by the Hon'ble Supreme Court of India in the case of N.R. Dongre and Ors. vs Whirlpool Corpn. and Anr., 1996 (2) ARB.LR 488 SC wherein J.S. Verma, J. speaking for the Bench again reiterated the exposition of law laid down by the Division Bench of Delhi High Court. This exposition of 1996....
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...., Conagra Inc. v. McCain Foods (Aust) P. Ltd., 1993 (23) IPR 193 231]. It is an asset of a business assessable in terms of money and transferable (See IRC v. Muller, (1901) AC 217, Trego v. Hunt (1896) AC 7; ITC v. B.C. Srinivas Shetty. In my opinion reputation framing the basis of a passing off action need not be so localised. Whatever the compulsion for the Courts taking the first or second view in other countries, as far as this country is concerned, Courts in India prescribe to the third view and have held that a plaintiff with a reputation which is established internationally can sue to protect it in this country even if it does not have any business activity here. In other words reputation of a product may precede its introduction and may exist without trade in such product in the country. See N.R. Dongre v. Whirlpool Corporation, (DB); J. N. Nichols (Vimto) Ltd. v. Rose & Thistle, 1994 PTC 83 (DB); Calvin Klein Inc. v. International Apparels, (1995) FSR 515 : 1995 IPLR 83; Conagra Inc. v. McCain Foods (Supra) at p. 133." 28. The said judgment passed in the case of Milment (supra) passed by Division Bench of Kolkata High Court has been further approved by Hon'ble Supreme C....
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.... to prove trans-border reputation. The decision in the case of Milment was also rendered in the year 2004 when the impact of internet, e-commerce, social media was yet to be seen and realized. 30. Recently, this Court has rendered a decision in the case of Cadbury UK Limited & Anr vs. Lotted India Corporation Ltd., reported in 2014 (57) PTC 422 (Delhi) wherein the decision of law relating to trans-border reputation has been further strengthened and has been taken to another level wherein the court has not merely relied upon the decision of Milment (Supra) and Whirlpool (Supra) but has also extended the principle of trans-border reputation by observing that the existence of a merchant on web pages which are of foreign origin and social media are sufficient to show the trans-border nature of reputation without having any activity in India at the relevant time. Though it is very broad extension of the concept of trans-border reputation, but it is a question of fact in each case as to how the internet documents are sufficient to show the global character of the trademark and the reputation attached to the same. The impact of the said decision which has been given very recently is ye....
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....an to adopt a name and/or mark under which he would carry on his trade or business. According to Kerly (Law of Trade Marks and Trade Names, 12th Edn., para 16.49), the name under which a business trades will almost always be a trade mark (or if the business provides services, a service mark, or both). Independently of questions of trade or service mark, however, the name of a business (a trading business or any other) will normally have attached to it a goodwill that the courts will protect. An action for passing-off will then lie wherever the defendant company's name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two businesses. If this is not made out there is no case. The ground is not to be limited to the date of the proceedings; the court will have regard to the way in which the business may be carried on in the future, and to its not being carried on precisely as carried on at the date of the proceedings. Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently." 34. Salmond & Heuston in Law of Torts (20....
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.... reaping without sowing. The Court held in para 22 that it takes year sometimes generations of patience toil and investment to develop and gain the advantage of goodwill when this goodwill is sought to be attacked, the law fill prevent it. In para 30, the court held that there is a misrepresentation for business purposes as to the origin of goods are the Defendants manufacture in the course of their business. This is passing off. The defendants have no right to represent their business as the business of the Plaintiff. In para 37, the Court held that the use of the word Elora by the Defendants is indicative of a warm intimacy with the Plaintiffs and the word 'Elora' lurks and lingers in the amount of the customers. In the present case, the casual of unwary customer will be bound to be misled by the Defendants adoption and use of the mark WORLD BOOK. 36. In B.K. Engineering Company Vs. U.B.H.I Enterprises, AIR 1985 DEL 2010, this Court held, while deciding the question of passing-off between Plaintiffs Trade Mark B.K. against Defendants Trade Mark B.K.81 for similar products namely cycle bells. Competition must remain free. This is the life blood of free enterprise system y....
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.... and consequent damage to the plaintiff is likely to be caused and if that is taken to be the test then the focus is shifted from the external objective test of making comparison of activities of the parties, to the state of mind of public, in deciding whether it will be confused. Protection of Coined Words by the Courts 38. In the case of Reddaway v. Banham (1896) 13 RPC 218 which was referred in the case of Globe Super Parts vs. Blue Super Flame Industries AIR 1986 Delhi 245, the judgment given by the Single Judge of this Court speaking through Shri Mahinder Narain, J. who discussed the case of Reddaway (supra) at great length by referring the facts of the matter. The said narration of facts are as under: ".......The words of common language which were held to be exclusively appropriated by Reddaway, in that case were 'Camel Hair". What was asserted in the Reddaway's case was that beltings were manufactured and sold by various persons; that the beltings used to be sold under the name of various animals like Yak, Llama, Buffalo, Crocodile etc. What Plaintiff Reddaway asserted was that Banham was their one time employee and that he had started selling the bel....
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.... appealed to the House of Lords. 50. The House of Lords examined the case, and held that even "descriptive words" like 'Camel Hair Belting' were capable of exclusively appropriation, that the words 'Camel Hair Belting' have acquired a secondary signification with respect to the beltings in the sense that the words 'Camel Hair' with respect to the trade in beltings had lost their primary meaning, to indicate belting made of camel hair, but has acquired a secondary significance or meaning in the trade, and came to connote the products of the plaintiffs. The House of Lords found that there was ample evidence to justify the finding that amongst those who were the purchasers of such goods, the words "Camel Hair" were not applied to beltings made of that material in general; that in short, it did not mean in the market belting made of a particular material, but belting made by a particular manufacturer. The House of Lords thus came to the conclusion that common words of a language can be exclusively appropriated to a particular manufacturer as they had acquired a special meaning as denoting the goods of a particular manufacturer/ trader. 51. Lord....
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....that the word DIMMER was generic. There too, the plaintiff's mark was with a disclaimer. In view of these circumstances, it is held that the defendant cannot say that the HOMELITE mark or HOME, or LITE, separately are descriptive; they are in any case, arbitrary in relation to electrical torches and flashlights. HOMELITE does not conjure the vision only of a portable electrical light; it is associated with a range of home lighting. Prior user 40. It is argued by the defendant that the plaintiff No.2 is fraudulently acquired company and is a result of a false declaration given to the Registrar of Companies with regards to whether an identical company is already registered prior to the Plaintiffs application. The same reflects on the various forms filled by the Plaintiffs that the defendant has placed on record and the defendant is a company by the name World Book Company Pvt. Ltd. incorporated on 23rd May, 2012, while plaintiffs are a company by the name World Book India Pvt. Ltd. incorporated on 24th August, 2012. The plaintiffs have incorporated an identical Company by giving a false declaration to ROC which are evident on pages of the Reply to RTI Application. The same ....
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....also not specifically denied by the Defendant. The registrations relied upon by the plaintiffs in paragraph No.5 of the plaint are also not specifically disputed or denied. 44. The defendant's claim that they incorporated the company with the name WORLD BOOK prior to the incorporation of plaintiff No.2 has no merit in it. The plaintiffs have filed documentary evidence on record consisting of copies of Sales Invoices in order to establish use, goodwill and reputation of the trade mark WORLD BOOK from the dates much prior to the date of incorporation of the defendant company. The plaintiffs have also filed on record copies of Distribution Agreement dated 1st July, 1993, whereby, the Distribution rights for the Plaintiffs publication were given on non-exclusive basis to WBI Foreign Sales Limited for the territory of India including Jammu & Kashmir. The Plaintiffs have also placed on record copy of the Agreement dated 25th February, 2004 executed between the Plaintiff No.1 and Indigo Direct Marketing Limited, Mumbai for resale of the WORLD BOOK Encyclopedia and other educational productions in India. Copies of the invoices evidencing the sale of Plaintiffs' publications in India und....
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....re-requisite that the misrepresentation has deceived or likely to deceive and somehow the plaintiff in due course of its business is likely to suffer damages by such deception. In nut-shell, fraudulent intention is not necessary to establish against the trader who has infringed the rights to obtain relief. With regard to fancy word, the Courts normally to infer both an intentions to mislead and the likelihood of deception occurring. If the plaintiff, who is seeking injunction against a trader, is able to show that a particular word or phrase has come to connote or associate in the mind of the public in the nature of its services and business offered by it, he may succeed in an action. 47. In Milment Oftho Industries & Ors vs. Allergan Inc 2004 (28) PTC 585 (SC), it was observed by the Supreme Court that whilst considering the possibility of likelihood of deception or confusion, in present times and particularly in the field of medicines, the Courts must also keep in mind the fact that nowadays the field of medicine is of an international character. The Court has to keep in mind the possibility that with the passage of time, some conflict may occur between the use of the mark ....
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....he defendant has adopted the Trade Mark/trade name WORLD BOOK in the same business with dishonest intention in a calculated attempt to ride upon the goodwill and reputation of the plaintiffs in the Trade Mark/trade name WORLD BOOK. The plaintiffs have been able to prove the case of infringement of trademark WORLD BOOK. In view of the documentary evidence available on record, it is also established by the plaintiffs that the said name/mark is a well-known trade mark which cannot be by the defendant as part of its corporate name and the same violates the provisions of sub-rule 4 and 5 of section of 2 of Section 29 of the Trade Marks Act. The defendant under these circumstances is guilty for infringement of trade marks and passing off of its business and services as that of the plaintiffs who have made a classic case of passing off. There is no justification on the part of defendant to use the impugned name on its corporate company. The defendant must be aware about the name of plaintiffs on the date of its adoption and user. Thus, the use of said name is tainted and dishonest which cannot be purified in any manner. The stolen property cannot become rightful property in any many in tr....
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....lly useless to the dealer. It was held in that decision that the name MARKS & SPENCER could not have been chosen for any other reasons than that it was associated with the well known retailing group. The decision further goes on to say that when the value of the name consists solely in its resemblance to the name or trade mark of another enterprise, the court will normally assume that the public is likely to be deceived, for why else would the defendants choose it ? It was also stated that someone seeking or coming upon a website called http://marksandspencer.co.uk would naturally assume that it was that of the plaintiffs. (ii) In Acqua Minerals Ltd. vs. Pramod Borsey and another, 2001 PTC 619, while considering an injunction sought to restrain the defendants from using the mark BISLERI or BISLERI.COM the court observed that so far as the Registering Authority of the domain name is concerned it agrees for registration of domain only to one person. That is on first come first serve basis. If any person gets the domain name registered with the Registering Authority which appears to be the trade name of some other person, the Registering Authority has no mechanism to inquire ....
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.... 6 SCC 145, where the domain names www.sifynet, www.sifymall.com, www.sifyrealestate.com of the appellant; and www. siffynet net and www.siffynet.com of the respondent were in question, it was observed by the Supreme Court as under: "16. The use of the same or similar domain name may lead to a diversion of users which could result from such users mistakenly accessing one domain name instead of another. This may occur in e- commerce with its rapid progress and instant (and theoretically limitless) accessibility to users and potential customers and particularly so in areas of specific overlap. Ordinary consumers/users seeking to locate the functions available under one domain name may be confused if they accidentally arrived at a different but similar web site which offers no such services. Such users could well conclude that the first domain name owner had mis-represented its goods or services through its promotional activities and the first domain owner would thereby lose their custom. It is apparent therefore that a domain name may have all the characteristics of a trademark and could found an action for passing off." "29. Apart from the close visual similarity b....
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.... service, a particular Internet site could be reached by anyone anywhere in the world who proposes to visit the said Internet site. With the advancement and progress in technology, services rendered in the Internet has also come to be recognised and accepted and are being given protection so as to protect such provider of service from passing off the services rendered by others as that of the Plaintiff. As a matter of fact in a matter where services rendered through the domain name in the Internet, a very alert vigil is necessary and a strict view is to be taken for its easy access and reach by anyone from any corner of the globe. There can be no two opinions that the two marks/domain names 'Yahoo!' of the plaintiff and 'Yahooindia' of the defendant are almost similar except for use of the suffix 'India' in the latter. The degree of the similarity of the marks usually is vitally important and significant in an action for passing off for in such a case there is every possibility and likelihood of confusion and deception being caused. When both the domain names are considered, it is crystal clear that the two names being almost identical or similar in nature, ....
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....observed as under: "27. The defendant has employed minor mis-spelling of the plaintiff's mark, although it has another such mark available to it, which is also a registered domain name. Therefore, the said action indicates and establishes dishonest intention on the part of the defendant. That appears to have been done with bad faith in order to gain advantage of spelling error made by the internet user while attempting to enter into the plaintiff's internet address on their web-browser. The very purpose of having two registered domain names by the defendant only establishes the dishonest intention and bad faith on the part of the defendant. The real intention behind registering the domain names for the same purpose, of which one is deceptively similar to the domain name of the plaintiff, is to attract or induce the internet user to come to the website of the defendant first by mis-spelling the plaintiff's mark and domain name and, thereafter, taking the said internet user to the domain name of the defendant, which is jobsourceindia.com. The defendant's choice of slightly mis-spelt version of the plaintiff's domain name was deliberate in order to suit th....