TaxTMI 
TaxTMI 
2006 (3) TMI 817
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....l. 2. Some of the material facts of the present case are as under : 3. The plaintiffs are a company inter-alia carrying on business in telecommunication services. The plaintiffs are also providing mobile services to various people in India and is a well known company in the name of 'Airtel'. The plaintiffs are carrying on business in various states of India and are having a large turnover and are owner of well known popular brand name 'Airtel'. Sometime in or about 1994 the plaintiffs conceived and invented the word mark 'Airtel'. The plaintiff have also simultaneously adopted a distinctive label mark consisting the word 'Airtel' written in a particular manner with a particular colour combination. Plaintiffs are also contending that they are a group of companies who are using the said mark 'Airtel' essentially in relation to business of telecommunication services. The plaintiffs have also contended that they have acquired a super reputation in their mark 'Airtel' thus the said brand should be either treated as super brand or a universal brand. They have further contended that by virtue of such a status of super brand they are en....
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....he purpose of mobile sales services and recently the plaintiffs have also entered into land-line telephone services. Plaintiffs have also claimed to have diversified their business and services such as in the field of V-SAT services, submarine cable projects manufacturing of telecommunication equipment and health care. 4. It is the case of the plaintiffs that sometime in or about 2.9.2003 the plaintiffs came to know that the defendants are using the said mark 'Airtel' which is identical and deceptively similar to the mark of the plaintiff. Apart from using the said word mark 'Airtel' the defendants are also using the label alongwith words 'Airtel' with the identical colour scheme and almost similar writing on their products which is alcoholic beverages. Thus the plaintiffs contend that the defendants by dishonestly copying the label as well as the word mark and are trying to pass off their business as that of the business of the plaintiff and thus the plaintiffs goodwill, business and reputation has been seriously suffered and affected. It is on the aforesaid contention the plaintiffs have filed the present suit for passing off action in the trade mark as....
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....the user thereof. It has been contended that the defendant no. 2 has submitted an application for registration of the said mark 'Airtel' and thus the use of the mark by the defendant is bonafide and cannot be considered as dishonest user of the mark. It has been further contended that in view of the fact that the goods being totally different the question of passing off of the defendants business as that of the plaintiff cannot and does not arise. No consumer would believe that the goods of the alcoholic beverages are manufactured by the plaintiff who are solely and essentially in the business of telecommunication services. It has been thus contended in reply that the defendant is not entitled to relief of any nature whatsoever. 8. Learned counsel Mr. Tulzapurkar for the plaintiffs has contended that since 1994 the plaintiffs are using the word mark 'Airtel' and that the label is also created by them in 2002 and therefore they are the owners of a design and entitled to the copyrights in the said label mark as well in the word mark 'Airtel'. He has further contended that by virtue of the sale and advertisement expenses incurred by the plaintiffs and the ex....
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....ary, dramatic or musical work, not being a computer programme,- (i) to reproduce the work in any material from including the storing of it in any medium by electronic means ; (ii) to issue copies of the work to the public not being copies already in circulation. (iii) to perform the work in public, or communication it to the public; (iv) to make any cinematograph film or sound recording inrespect of the work; (v) to make any translation of the work; (vi) to make any adaptation of the work (vii) to do, in relation to a translation or an adaptation of the work any of the acts specified in relation to the work in sub-clauses (i) to (vi) (b) in the case of a computer programme,- (i) to do any of the acts specified in clause (a); (ii) to sell or give on hire, or offer for sale or hire, any copy of the computer programme, regardless of whether such copy has been sold or given on hire on earlier occasions; (c) in the case of an artistic work i) to reproduce the work in any material form including depiction in three dimensions of a two dimensional work or in two dimensional of a thre....
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.... trade exhibits in public, or (iv) imports into India, any infringing copies of the work : [Provided that nothing in sub-clause (iv) shall apply to the import of one copy of any work for the private and domestic use of the importer.] Explanation-for the purposes of this section, the reproduction of a literary, dramatic, musical or artistic work in the form of a cinematograph film shall be deemed to be an "infringing copy". 55. CIVIL REMEDIES FOR INFRINGEMENT OF COPYRIGHT- (1) Where copyright in any work has been infringed, the owner of the copyright shall, except as otherwise provided by this Act, be entitled to all such remedies by way of injunction, damages, accounts and otherwise as are or may be conferred by law for the infringement of a right : Provided that if the defendant proves that at the date of the infringement he was not aware and had no reasonable ground for believing that copyright subsisted in the work, the plaintiff shall not be entitled to any remedy other than an injunction inrespect of the infringement and a decree for the whole part of the profits made by the defendant by the sale of the infringing copies as....
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....elief. With the passage of time, law on requirement of common field of activity in a passing off action has radically changed. There is no requirement for a common field of activity to found a claim in passing off. In Marage Studies v. Counter Feat Clothing Co. Ltd. reported in (1991) FSR 145, Browne Wilkison V-C said that the so-called requirement of the law that there should be a common field of activity is discredited. The real question in each case whether there is as a result of misrepresentation a real likelihood of confusion or deception of the public and consequent damage to the plaintiff. The focus is shifted from the external objective test of making comparison of activities of parties to the state confused. With the passage of time and reputation acquired, the trade mark 'Kiroloskar' has acquired the secondary meaning and has become almost a household word. The judgments relied upon by Mr. Kane pertain to the cases of one type of business and not where variety of businesses have been carried by the plaintiff and defendant as in the instant case. The business activities of the Respondents vary from pin to piano as borne out from the object clauses of the Memorandu....
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...." Benz" as applied to a car, has a unique place in the world. there is hardly one who is conscious of existence of the car/automobiles who would not recognize the name "Benz" used in connection with cars. Thus the boxes in which the defendant sells its undergarments for men, and the representation thereof is of a man with his legs separated and hands joined together above his shoulder all within a circle indicate the strong suggestion of the link between the three pointed' star of "Mercedes Benz" car and the undergarments sold by the defendant. This cannot be considered to be a "honest concurrent user" by the defendant of the above said symbol. therefore the defendant could be restrained from using the word "Benz" with reference to any underwear which is manufactured by them and injunction could be issued restraining the defendants to cease and desist from carrying on trade in undergarments in the name of "Benz" and "Three Pointed Human Being in a Ring" forthwith. The trade mark law is not intended to protect a person who deliberately set out to take the benefit of somebody else's reputation with reference to goods especially so when the reputation extends world wide. By no....
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....ate attempt by the defendants to "cash in" on the plaintiffs reputation and there being in the evidence adduced no credible dispute on the primary facts, the court was entitled within the principles laid down by the House of Lords in American Cyanamid v. Ethicon to consider the merits of the plaintiffs case and should not hesitate to stop by injunction a blatant fraud. They further argued that damages would be an inadequate remedy to the plaintiffs if any injunction were refused. Upon further evidence which was admitted in the court of appeal the plaintiffs argued the harm which an injunction would cause to the defendants would be much less than the harm which the plaintiffs should suffer if the defendants activities were allowed to continue pending the trial. allowing the appeal it was held as under : (1) That there were in the evidence substantial disputes on the facts, in particular as to allegation of fraud and the extend of the plaintiffs reputation and in the circumstances this was not a case which could be decided by considering the respective merits of the parties' cases even if (which the court did not decide) it would be proper to do so in a case where there ....
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....However, as the crux of passing off action lies in possible deception, the existence of common field of activity is always a relevant consideration. If there is a common filed of activity, possible of deception is very high and if there is no common field of activity possibility may be less, but it cannot be laid down as a rule of laws that there can be no possibility at all. Thirdly and more importantly, all these issues ultimately will depend on the facts and circumstances and the material on record of each particular case, as to whether the plaintiff has established the goodwill or reputation, whether the plaintiff has established the trans-border reputation, whether the defendant has caused misrepresentation innocently or deliberately and whether the plaintiff has suffered damage or is likely to suffer damage in quia time action will be questions of fact to be determined by the court. It is also clear that if it is shown that the defendant intended to deceive, the burden would be much lighter on the part of the plaintiff. The existence of unexpected and unexplained similarities between the goods of the defendant and the plaintiff or lack of explanation or false explanation for ....
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.... tower possibly Fifet Tower is printed on the pouch to suggest that the goods are manufactured in Paris. The defendants also used the words as Hollywood-London-Paris" to suggest that the goods are of the foreign made. This conduct on the part of the defendants clearly indicate that the anxiety was to trade upon the reputation of the mark "7'O CLOCK" and not to leave any chance for customer to detect the misuse of the mark further effort was made to give an impression that the mark is registered mark and the goods are manufactured in foreign country. It is hardly required to be stated that when the defendants are guilty of total dishonesty then it is futile to claim that when the aggrieved party goes to the court, the defendants should be permitted to use the mark by making some alteration,. When confronted with the conduct of the defendants, the only excuse Mr. Desalt can think of is that the defendants are illiterate and the commencement of the marks was without taking legal advice. In our judgment, the conduct reveals the mind of the defendants and the conduct by no stretch of imagination can be said to be either bonafide or innocent. We also cannot overlook the fact that'....
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....o there is very possibility for deception and confusion in the minds of the public. Apart from that, although the products manufactured by the respondents are a different one from the products manufactured by the applicant, the trade public will be misled and the product of the respondents would be misunderstood as the product of the applicant. The applicant company is a big one when compared to the company of the respondents. It is not difficult for the respondents company to change the name and market their products since it is not a recognised once in the business circle and by this, no prejudice or loss would be occasioned to the respondents. The applicant company has got prima facie case and the balance of convenience is also in their favour;. If the order of interim injunction is not granted in favour of the applicant, they would be put to much loss and hardship and as such, the interim injunction already granted has to be made absolute. 14. He has thereafter relied upon the judgment of the Delhi High Court in the case of Daimler Benz Aktiegesellschaft and Anr. v. Hybo Hindustan reported in AIR 1994 Delhi 239 particularly para 18 of the said judgment. 18. In....
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....tement necessarily implies that the whole issue must be determined solely under the provisions of Section 11 as I will now endeavour to explain. When an application for registration is before the Registrar it frequently happens that the for conflicting marks reveals several marks having some characteristic feature in common with the mark of the application, which marks may stand on the Registrar in the name of one proprietor only or in the name of several different proprietors. At this stage, when the matter is one between the applicant and the Registrar, the latter generally has before him no evidence as to whether the registered marks are in actual use or not, but in forming an opinion under Section 12 as to whether or not confusion or deception is likely to arise, he is bound, I think, in the absence of evidence to presume that, prima facie, some atleast of the registration have been effected bonafide by persons who at the date of their respective applications were using or proposed in the near future to use their marks. If, therefore, all the marks were owned by one proprietor, the Registrar would presume that the latter was using a "series" of marks and judge the conflict betw....
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....ts or similar products or complimentary products or not. It has been further contended that a principle of common field of activity is no more a valid principles and a person acquiring a super-brand status in trade mark is entitled to protect their business and brand from being used by other persons so as to pass off the defendants business as that of the plaintiff herein. 16. It has been alternatively submitted that even if this court is of the view that goods being different and thus the plaintiff is not entitled to the said protection still by virtue of the provisions of the Copyright Act the plaintiff is entitled to the protection of their getup and label with the word used 'Airtel' thereon and therefore this court should grant an interim order in terms of prayer clause (b) of the said Notice of Motion. 17. On the other hand learned counsel for the defendants have contended that there can be no dispute that the goods which are sold by the defendant is nowhere concerned or connected or even close to the goods, product, services or business of the plaintiffs herein. It has been submitted by the defendants that the channel of sale of their products and the class of c....
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....e question of applicability of the definition "Deceptively Similar", "False Trade Description" and "Well Known Trademark" are not attracted. Additionally, when there is total silence for years together after adoption till application for interim injunction is made after a long passage of time on adoption. This adjudication would become necessary if competitions not to be stifled and monopolies are not to be encouraged. In this context reference can usefully be made to a decision reported in AIR 1996 SC. 18. He has thereafter relied upon the judgment of another learned single judge in the case of Soni Kabushiki Kaisha v. Shamrao Maskar and Ors. reported in AIR 1985 Bom 327 particularly para 5 and 6 of the judgment which reads as under : 5. Section 11(a) of the Act provides that a mark, the use of which would be likely to deceive or cause confusion, shall not be registered as a trade mark. The contention urged on behalf of the petitioners is that the mark "SONY" has acquired world wide reputation and any product bearing the identical mark is likely to cause deception or confusion in the mind of the customers that the product has association with the manufacture of e....
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....es apart, looking to the nature and purpose of their user. The nail polish is an item of cosmetics and the price being within the reach of common man, is sold on a large scale. The item is sold all over the town, in shops small and large. On the other hand, electronic goods manufactured by the petitioners are not easily available due to import restrictions. It is claimed that two-band transistors under the mark "SONY" are easily available in Bombay and even assuming it to be so, it cannot be overlooked that the trade channel for sale of the two items are entirely different. The electronic goods and nail polish are not sold under one roof and there will not be any confusion in the mind of the customer that both the items come from the petitioners house in Japan. There is also no common field of activity in course of trade of the two items, and the classes of customers who would purchase the two items are distinct and different. The petitioners had led no evidence whatsoever before the Assistant Registrar in the shape of affidavit of any dealer or consumer to indicate that the use of the mark by the respondents is likely to cause deception or confusion. Again the respondents are not ....
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....nning shoe" was used for shoes, it would clearly be descriptive of the goods even if the word "running shoes" were joint. I think the case is similar to the case of "SAFEMIX" reported in 1978 R.P.C. 397, wherein an application for registration was refused on the ground that the mark consisted of the words "SAFE" and "MIX" conjoined. Reliance has rightly placed on the decision in Rochem separation Systems (1) P. Ltd. v. Tas Engineering Co. P. Ltd. AIR 2001 Bom 210 wherein the words "Disc Tube" were held to be descriptive by this Court. It is also true that as held by this Court in 1999 P.T.C. 449 that where descriptive words are concerned, small differences are enough to distinguish and a mere similarity is not enough for passing off. the similarity must be accompanied by a misrepresentation. Applying the aforesaid decisions I am of the view that the plaintiffs have not, prima facie, established an exclusive right to the use of the word "TEXTLINER" which is descriptive in nature. It has not acquired any secondary significance taken by itself. It is important o recall the well known passage from Cellular Clothing Co. Ltd. v. Maxton and Murray which is quoted in the decision of the Ke....
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....nction. The learned Single Judge in the aforesaid judgment has relied upon a judgment of the Apex Court in the case of Corn Products v. Shangrila Food Products reported in [1960] 1 SCR 968 and gave a finding that the defendant must establish a substantial evidence to show that the said goods are sold extensively in the market and the sale figures of such third parties are such that such a party has acquired reputation by user of the said goods in the market. It has been held by the learned Single Judge that the defendant must establish exclusive use in the market. Even at the interim proceedings according to the learned Single Judge it is not sufficient merely for the defendant to show prima facie that there is user of the mark by various parties in the market. He must produce a prima facie evidence to show substantial use and at the final hearing of the suit the level of the proof is higher and the defendant must prove a substantial use by such third parties. On the basis of the aforesaid judgment the plaintiffs have urged that the defendant has failed to show the substantial sale of the said various products which are sold in the market under mark "CEF" and thus even though produ....
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....laintiff herein. He has relied upon para 7 of the said judgment which reads as under : 7. In order to decide whether the word "AZIWIN" is deceptively similar to the word "AZIWOK", each of the two words must, therefore, be taken as a whole word. Each of them consists of six letters, the first three letters "AZI" being common in both the words. The affidavit of the appellants indicate that various brands of Azithromycin tablets and syrup are marketed by different pharmaceutical companies using the common prefix AZI, which is derived from the generic name of drug and in fact the appellants have given a list of as many as 13 different names of the companies including the parties to the suit who are using the prefix AZI. It is thus apparent that the drug Azithromycin being the base of these products the word AZI has been commonly used in describing the product and no one can claim monopoly over the use of the said word. In fact any company producing Azithromycin tablets would be justified in using the said word as prefix to its trade name. The word AZI being both descriptive and common to the trade the users of such product are not likely to be misguided or confused by the said....
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....the defendant is whisky and not in any manner connected or in any way concerned with the business of the plaintiffs herein. The products which are sold by the plaintiffs and the products which are sold by the defendants are polls apart and cannot be described as cogent goods or goods from the common field of activity nor can the same be described as allied products or complimentary to each other. The goods are totally different. However the learned counsel for the plaintiffs has contended that irrespective of the dissimilarity of the products of the plaintiffs and the defendants and irrespective of the fact that their products are not even close complimentary, cognate and ancillary goods still plaintiffs are entitled to claim the injunction of passing because the defendants are passing off his business as if the same belonging to the plaintiffs. He has further contended that the brand of the plaintiffs have acquired a super status and super brand and thus entitled to injunction of passing off inrespect of different goods. I have considered the aforesaid submissions and I am not inclined to accept the same. Firstly it is not in dispute that the business of the plaintiff has commence....
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....pful and are given below. 25. In my opinion the court is empowered to grant injunction on the ground of passing off even if the defendants do not operate in the same field of activity but while doing so the court must see whether the plaintiffs are able to establish implacable reputation of such a huge nature that the business carried out by any person under the said trade name would tantamount to suggest that it is the business of the plaintiffs. In my opinion in the present case such principle has not been satisfied by the plaintiffs. The plaintiffs reputation undoubtedly is only inrespect of the business of telecommunication and it is not extended to any other business or products. The reputation of the business of the plaintiff is only in India. It has not travelled to other nations. Further more it is not possible to accept the contention of the plaintiff that a person buying a whisky, liquor would assume that it is the plaintiffs who are selling the whisky in the market in place of the defendants herein. Strong reliance placed by the learned counsel for the plaintiffs on the judgment of the Delhi High court in the case of Mercedes Benz (supra) and in the case of Volvo(supr....
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....me or a trade mark as if the same are exclusively innovated by the plaintiff herein. It is thus submitted the words 'Air' and 'Tel' being simple dictionary words this court should not grant any injunction inrespect of passing off as claimed by the plaintiff. In so far as the aforesaid contention is concerned I am not inclined to accept the same because not doubt it is true that the word 'Air' and 'Tel' are the English words and the plaintiffs have by user thereof in a particular combination of the word 'Air' and 'Tel' jointly has created an innovative one word 'Airtel' which is not a common English word and thus acquired an exclusive reputation inrespect of the said brand and the said trade name in their favour. 28. Learned counsel for the defendant has thereafter contended that the plaintiff has not been able to show actual confusion in the market between the goods belonging to the plaintiffs namely telecommunication and tele services and on the other hand the goods of the defendants namely whisky and liquor sold by the defendants. In my opinion the submission made has no merits. It is not necessary to establish actual con....