Ashok Kumar Gupta Proprietor of Jai Durga Plaster Industries & Anr. vs Arif Khan

I.A. 16669/2023 (under Order XXXIX Rules 1 and 2 of the CPC)

In order to comply with the principle of natural justice and keeping in mind the observations contained in para 8 of the order dated 21 August 2023 passed by the Division Bench of this Court in Dabur India Ltd. v. Emami Ltd.^{11.Order dated 21 August 2023 in FAO(OS) (COMM) 171/2023}, I had, while issuing summons in the present suit on 1 September 2023, issued notice in the present application, to enable the defendant, if he so chose, to file a reply to the present application.

Service of the notice was directed to be effected by all modes and the Registry was also directed to telephonically intimate the defendant of the order passed on 1 September 2023. The Registry reports that, in terms of the said direction, the defendant was informed of the order passed on 6 September 2023 at 03:10 PM on the Mobile No. 8047547102.

This matter was listed yesterday. As I was not sitting physically yesterday, it was renotified for today. There is no appearance on behalf of the defendant either yesterday or today.

In the circumstances, Mr. Umesh Mishra, learned Counsel for the plaintiff presses for orders in the present application.

I have heard Mr. Umesh Mishra and gone through the material on record.

The plaintiffs manufacture and trade in Plaster of Paris (POP). Subsequently, it also expanded its business to selling of doors and windows, flush doors, doors and window frames, panels, timber veneers, wall boards, wood works etc.

Among the products which are manufactured by plaintiffs is Wall Putty. Plaintiff 1 manufactures and Plaintiff 2 deals in Wall Putty under the brand name “SAKARNI WALL GUARD”, under which brand name they also deal in white cement, emulsion, primer and other similar goods.

Plaintiff 1 claim to have adopted the trade mark in 2004 and to have been using the said marks since then w.e.f. 9 June 2006, the said label stands registered as device mark in favour of the Plaintiff 1 in class 19. Plaintiff 1 is also the proprietor of the following registered trade mark:

Additionally, Plaintiff 1 holds copyright Registrations No. A-79993/2007, L-31536/2008, L-31535/2008 and L-31537/2008, since 2000, in respect of the artistic work in the afore-noted label.

Plaintiff 1 assigned its registration in respect of the label in favour of Plaintiff 2, subsequent to which the register of trade marks was amended to record Plaintiff 2 as the registered proprietor of the said trade mark, claiming user since 19 July 2007.

The plaint also contains assertions to vouchsafe the reputation and reach of the plaintiffs in the market. It is averred that, on the website https://businessesranker.com, the plaintiff has been recognized as the second most prominent brand for POP in India. The plaintiff claims to have over 10000 dealers countrywide and to be supplying POP to over 100 offices in India. Plaintiff 2 is an ISO 9001: 2015 and 14001:2015 certified company. It is further asserted that the plaintiffs are active in more than a dozen States.

The plaint also provides annual sales figures of Plaintiffs 1 and 2, using the impugned asserted mark from the years 2013-2014 to 2022-2023.

In the year 2022-2023, the returns from sale of goods bearing the mark by Plainitff 1 were to the tune of ₹ 3,29,02,546/-and by Plaintiff 2 were to the tune of ₹ 4,75,95,70,576/-.

The plaintiffs also claim to have incurred considerable expenses towards advertisement and promotion of the afore-noted mark. In the year 2022-2023 itself, the Plaintiff 2 claims to have incurred advertisement expenses of ₹ 14,84,25,752/- for promotion of the said mark.

The plaint also makes reference to various cases through which the plaintiffs’ were protected from perceived infringement/passing off of its trade mark. Orders passed by this Court to the said effect have also been annexed to the plaint.

The plaintiffs claim to have come to learn, in the first week of 2023, of the defendant dealing in Wall Putty under the mark / . It is further asserted that the defendant has applied for registration of the aforesaid mark in class 19 on 31 March 2022 on proposed to be used basis.

Mr. Umesh Mishra, to a query from the Court, submits that the defendant is yet to obtain registration.

On 23 February 2023, the plaintiffs issued a notice to the defendant to cease and desist from using the impugned mark. The defendant, in its response to the notice, contended that the plaintiffs’ and the defendant’s marks were not similar and that, therefore, the notice was misconceived.

Mr. Umesh Mishra submits that, given the reach and reputation of the plaintiffs’ mark and the obvious similarity between the marks of the plaintiffs and the defendant, in conjunction with the fact that the both marks are used for identical products which cater to the same customer base, a clear prima facie case of infringement, by the defendant, of the plaintiffs’ registered trade mark is made out. He, therefore, prays that, pending disposal of the suit, the defendant be restrained from using the impugned mark in respect of Wall Putty or any other allied or cognate goods. As already noted, despite issuance of notice and service thereof, the defendant has neither filed any response to the present application, nor appeared for hearing either yesterday or today.

In the circumstances, having heard Mr. Umesh Mishra and having studied the material placed on record, I proceed to dispose of the present application.

The main plea of Mr. Umesh Mishra, on the aspect of similarity between the plaintiff’s and defendant’s marks, is that of phonetic similarity. On the aspect of phonetic similarity, it is well-settled that the test that applies is that which was enunciated in re. Pianotist Co.’s Application^{22.[1906] 23 RPC 774} which reads thus:

Applying the aforesaid test, it is seen, when comparing the plaintiffs’ and the defendant’s mark, that defendant’s mark is essentially SIKARNI ( ) with a miscroscopic “No 1” between “ ” and “ ”. Though, therefore, the application for registration reflects the mark as “C SINOIKARNI”, in actual fact, the mark is “SIKARNI”. It is obvious that “SAKARNI” and “SIKARNI” phonetically similar. Besides, “SAKARNI” is a word with no etymological significance either in English or in Hindi and is ex facie a coined and devised expression fo Wall Putty.

It is, therefore, entitled to additional protection even on that score. Given the unique nature of the word “SAKARNI”, a customer of average intelligence and imperfect recollection, who comes across the defendant’s trade mark, when the same concluding “KARNI” suffix, is likely to , at the very least, infer an association between the two, especially as both marks are used for identical products.

As the marks are phonetically similar, used for identical products and there is likelihood of confusion as a result of the similarity of the marks and identity of goods for which the marks are used, a prima facie case of infringement within the meaning of Section 29(2)(b) of the Trade Marks Act 1999 exists.

As has correctly been contended by Mr. Umesh Mishra, the triple identity of test of similarity of marks, identity of the products, in respect of which the marks are used, availability of the products through the same retail channels and commonality of the customer segment to which the products cater is also satisfied in the present case.

Inasmuch as, despite having been made aware of the listing of the case today, the defendant has not chosen either to file a reply to the present application or enter appearance in the matter, it is presumed for the sake of the present application that the defendant has no worthwhile submission to offer.

In view thereof, given the aforesaid facts, the plaintiffs are entitled to interlocutory relief. As such, pending disposal of the suit, the defendants as well as its agents, representatives, servants, dealers, distributors and all others acting on its behalf shall stand restrained from using the impugned mark whether in Hindi or in English, or any other mark which is deceptively similar to the plaintiffs’ registered mark in repsect of Wall Putty or any other goods which are allied or cognate thereto.

The defendant shall also place on record, on affidavit, the figures relating to the returns earned by the defendant by sale of the goods bearing the impugned mark from the time the mark was used by it.

IA 16669/2023 stands allowed accordingly.