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Judgment
R. Mala, J.
O.S.A.No.183 of 2007
This appeal has been filed against the order dated 13.06.2007 made in O.A.No.310 of 2007 for granting an interim injunction restraining the
defendants, their servants and agents and others from using the words ""HEALTH & GLOW"" or ""HEALTH AND GLOW"" or any other mark,
name, logo, monogram or label.
O.S.A.No.184 of 2007
This appeal has been filed against the order dated 13.06.2007 made in O.A.No.311 of 2007 for granting an interim injunction restraining the
defendants, their servants, agents, dealers, stockists and others associated with them from reproducing using as sign age or otherwise, printing,
publishing or distributing any label, printed matter, stationery which is colourable imitation or substantial reproduction of Applicant''s ""HEALTH
AND GLOW"" (Device).
O.S.A.Nos.185 and 186 of 2007
These appeals have been filed against the order dated 13.06.2007 made in A.Nos.2941 & 2942 of 2007 to vacate the injunction granted in
O.A.Nos.311 & 310 of 2007 in C.S.No.236 of 2007.
O.S.A.No.187 of 2007
This appeal has been filed against the order dated 13.06.2007 made in A.No.2943 of 2007 in C.S.No.236 of 2007 to reject the plaint under
Order 7 Rule 11 of Civil Procedure Code.
Respondent as a Plaintiff filed a suit stating that he is a registered Proprietor of the Trade Mark as well as the Device ""Health and Glow"" and
also claiming to be the Proprietor of the Copyright in the style and manner in which the trade name and mark are artistically written and used by the
Plaintiff in Health and Glow Retailing Private Limited. Since Appellants/Defendants have filed applications for registering trade name as ""Health and
Glow"", Respondent/Plaintiff constrained to file a suit for the following reliefs viz.,:
a) A permanent injunction restraining the Defendants, their principal officers, servants, agents, their assignees in business, dealers, stockists and
others associated with them from using the words ""Health & Glow"" or any other mark, name, logo, monogram or label that is or may be identical
with or deceptively similar to the 4 registration 1) HEALTH & GLOW or 2) HEALTH AND GLOW (DEVICE) trademarks of the plaintiff, or to
market, sell, offer for sale, license, advertise, directly or indirectly deal in any goods and services online or offline amounting to infringement of the
plaintiff''s registered trademark Nos.802306, 1315016 and 1315017 in classes 3 and 3 & 5 respectively;
b) A permanent injunction restraining the Defendants from using as a domain name/website address, marketing, selling, offering for sale, licensing,
advertising, either directly or indirectly dealing in any goods using the words ""Health and Glow"" or any other mark identical with or similar to the
trade name, mark and device of the plaintiff, as may cause or be likely to cause confusion or deception amounting to passing off of the Defendants''
goods and services as those of the plaintiff;
c) A permanent injunction restraining the Defendants, from reproducing, using as signage or otherwise, printing, publishing or distributing any label,
printed matter, stationery or packaging which is a colourable imitation or substantial reproduction of the plaintiff''s ""Health & Glow"" label as
depicted in paragraph 13 of this plaint, amounting to infringement of plaintiff''s copyright thereto;
d) A decree for delivery upto the plaintiff for destruction of all packaging, labels, block, dyes, stickers, signage, advertising materials, all types of
stationary and brochures and all other infringing materials of the Defendants bearing the words ""Health & Glow"";
e) A preliminary decree in favour of the plaintiff directing the defendants to render account of profits made through use of the Health & Glow mark
and a final decree thereafter be passed in favour of the plaintiff for the amount of profits that have been found to be made by the defendants after it
had rendered accounts;
f) for a direction to the defendants to pay damages to the tune of Rs.25 lakhs.
Averments in the plaint are as follows:
(i) Respondent/Plaintiff is having registered Office at Chennai and carrying on business as Retail Service Provider in beauty and health care
merchandise, eversince 1997.
(ii) Respondent/Plaintiff has been using the trade mark and the trade device known as ''Health and Glow"", written in a stylised manner with the
image of a dancing girl inside the letter ''G'' eversince 1997. It was registered under the Trade Marks Act, in respect of goods under Classes 3 and
5 bearing Registration Nos.802306, 1315016 and 1315017 and filed two more applications for registration bearing Nos.1420632 and 804746 in
respect of services and goods under Classes 42 and 3 are pending before the Registrar of Trade Marks.
(iii) Respondent/Plaintiff has 43 retail outlets in Chennai, Bangalore, Mumbai and Hyderabad and has a good reputation and built up enormous
goodwill for the chain of retail stores run by them. They offer for sale, a wide range of Colour Cosmetics, Skin Care, Hair Care, Herbal Products,
Fragrances and Beauty Accessories, Aromatherapy Products, Men''s Cosmetics, Baby Care, Personal Care Items and Toiletries and
Pharmaceutical Products.
(iv) As a result of the enormous advertisement cost, over the year, the total annual turnover of the Respondent/Plaintiff rose from Rs.7.25 crores in
1998-99 to Rs.52.83 crores in 2005-2006. One of the shareholders of the Plaintiff''s Company maintains a website providing information about
the goods and services offered by the plaintiff. In May 2006, Respondent/Plaintiff came across an advertisement in the Trade Marks Journal dated
15.09.2005 showing that the first Appellant/first Defendant herein had filed an application for registration of a Trade Mark containing the words
Health and Glow"" in respect of goods and services under Class 5. Respondent/Plaintiff immediately filed a notice of opposition before the
Registrar, which was pending.
(v) In March 2007, Appellants/Defendants run a cosmetic Homoeopathy Health Clinic and they also have a website
www.healthandglowclinic.com. Therefore, Respondent/Plaintiff filed a suit for infringement of their registered trade mark, for passing off the
products and services of the Appellants/Defendants as those of the Respondent/Plaintiff and for infringement of the copyright.
(vi) Along with the suit, Respondent/Plaintiff filed an applications in O.A.Nos.310 and 311 of 2007 for an interim injunction. On 23.03.2007, an
interim injunction was granted.
The Appellants/Defendants herein have filed an application to vacate injunction (i.e.) A.Nos.2941 and 2942 of 2007 to vacate the injunction
granted in O.A.Nos.311 and 310 of 2007. Appellants/Defendants filed an another application in A.No.2943 of 2007 for rejection of plaint under
Order 7 Rule 11 C.P.C. The learned Single Judge after considering both sides, allowed the applications in O.A.Nos.310 and 311 of 2007 and
dismissed the applications to vacate injunction in A.Nos.2941 and 2942 of 2007 in O.A.Nos.311 and 310 of 2007 and also dismissed
A.No.2943 of 2007, against which, the present appeals have been preferred.
Learned senior counsel from Calcutta Mr.Pratap Chatterjee, appearing for the Appellants/Defendants would submit as follows:
(i) This Court has no territorial jurisdiction to entertain the suit for entertaining the cases on passing off. He fairly conceded that the suit can be filed
in respect of infringement of the trade before this Court.
(ii) Originally, Respondent/Plaintiff is ''RPG Guardian Private Limited''. They had changed the name of their company as ""Health & Glow"" Retailing
Private Limited, only on 02.03.2007 and filed a suit on 21.03.2007. But the Appellants/Defendants have filed an application on 30.04.2004 itself
for the trade mark of ''Health & Glow Clinic"", Complete Health With Homeopathy. So there is no infringement of registered trade mark of
Respondent herein.
(iii) Respondent/Plaintiff has not manufacturing any products in the name and style of ''Health and Glow"" and they are only retailing/marketing the
goods of reputed firms. Per contra, Appellants/Defendants are doing their medical services in the name and style of ''Health and Glow Clinic"" (i.e.)
Homeopathic medicines. They are not selling their products and they are giving only treatment to their patients.
(iv) Respondent/Plaintiff has no reputation of trade mark throughout India. But admittedly, they are having only retail shops at Chennai, Bangalore,
Secundrabad and Hyderabad. So ingredients of Section 29(4) of the Trade Marks Act was not made out.
(v) Order of the Learned Single Judge is suffered by perversity, since he never raised a plea for protection u/s 35 of the Trade Marks Act and the
learned senior counsel for the Appellants/Defendants has not advanced his argument in respect of Section 29(5) of the Trade Marks Act. Hence,
the learned Single Judge himself taken the plea suo motu and rendered findings against the Appellants/Defendants herein and so it suffers
perversity. Hence he prayed for setting aside the order passed by the learned Single Judge. To substantiate his arguments, he relied upon the
following judgments.
(i Vanita Dilip Chawla Vs. Fresh Meals India Private Ltd. and Others,
(ii) Raymond Limited Vs. Raymond Pharmaceuticals Pvt. Ltd.,
(iii) ITC Limited Vs. Philip Morris Products SA and Others,
(iv) Kamdhenu Ispat Limited Vs. Kamdhenu Pickles and Spices Ind. Pvt. Ltd. and Another,
(v) 2010 (42) PTC 514 (Nestle India Limited v. Mood Hospitality Pvt. Ltd.)
(vi) Blue Hill Logistics Private Ltd. Vs. Ashok Leyland Ltd. and Dilip Chhabria Design Private Ltd.,
(vii) Dhodha House Vs. S.K. Maingi,
(viii) Dabur India Ltd. Vs. K.R. Industries,
(ix) 2006 33 PTC 348 (Dabur India Limited v. K.R.Industries)
(x) 2006 33 PTC 107 (Dabur India Limited v. K.R.Industries)
(xi) ILR 2009 (1) Del 674 (P.M.Diesel v. Patel Field Marshall Industries)
(xii The Jay Engineering Works Ltd. Vs. Sh. Ramesh Aggarwal,
(xiii) 2001 (3) CTC 652 (Premier Distilleries Pvt. Ltd. Rep. by its Director K.S.Sekar v. Sushi Distilleries, rep. by its partner N.Ganesan,
Bangalore)
(xiv) K. Narayanan and Another Vs. S. Murali,
(xv) 2008 (1) CTC 601 (Duro Flex Pvt. Ltd. v. R.P.Home (P) Ltd.)
(xvi) 2007 (35 PTC) 774 (Austin Reed v. Suntex Garments and Others)
(xvii) Uniply Industries Ltd. Vs. Unicorn Plywood Pvt. Ltd. and Others,
(xviii) (1990) Supp (SCC) 721 (Wander Ltd. v. Antox India (P) Ltd. )
(xix) Colgate Palmolive (India) Ltd. Vs. Hindustan Lever Ltd.,
(xx) Dinesh Mathur Vs. O.P. Arora and Others,
(xxi) M/s. Gujarat Bottling Co. Ltd. and others Vs. Coca Cola Company and others,
(xxii) AIR 1992 (Del) 302 (Sri Gopal Engg. & Chemical Works Ltd.) v. M/S. Pomx Laboratory)
(xxiii) 1996 PTC 142 (Montari Overseas Ltd. v. Montari Industries Ltd.)
(xxiv) 1994(2) LW 510 (Modern Food Products v. Ushodaya Enterprises Limited)
(xxv) Corn Products Refining Co. Vs. Shangrila Food Products Ltd.,
(xxvi) 1996 PTC 512 (Vishnudas Trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd.)
We would refer to the above judgments at appropriate place.
Refuting the same, Mr.Arvind P.Data, learned senior counsel appearing for the Respondent/Plaintiff submits as follows:
(i) In respect of jurisdiction for passing off, this Court has no jurisdiction. But however, the main prayer sought for by the Respondent/Plaintiff is
only for infringement of trade mark and copyright. Hence, this Court has jurisdiction.
(ii) Once the Appellants/Defendants have withdrawn the application before the Registrar, Trade Mark, they have no locus standi to advance their
argument by challenging the order passed by the learned Single Judge.
(iii) Respondent/Plaintiff is having his business as retail shops. At the time of filing of the suit, they are having 43 retail shops. So they are having
reputation. Hence the learned Single Judge has considered this aspect and granted injunction, which does not suffer any perversity. Therefore, he
prayed for dismissal of the appeals. To substantiate his argument, he relied upon the following judgments:
(i) Cadbury India Limited and Others Vs. Neeraj Food Products,
(ii) 1996 (16 PTC) Del (Montari Industries Ltd. v. Montari Overseas Ltd.)
(iii) 1995 DLT 771 (Mars Incorporated v. Kumar Krishna Mukerjee and others)
(iv) Hindustan Pencils (P) Ltd. Vs. India Stationery Products Co. and Another,
(v) T.V. Venugopal Vs. Ushodaya Enterprises Ltd. and Another,
(vi) Power Control Appliances and Others Vs. Sumeet Machines Pvt. Ltd.,
(vii) Midas Hygiene Industries P. Ltd. and Another Vs. Sudhir Bhatia and Others,
(viii) Ruston and Hornsby Ltd. Vs. The Zamindara Engineering Co.,
(ix) Caterpillar Inc. Vs. Mehtab Ahmed and Others,
(x) Ford Motor Company and Another Vs. Mrs. C.R. Borman and Another,
(xi) 2011 (45) PTC 253 Del (Vardhman Properties Ltd., CA v. Vardhman Developers and Infrastructures)
(xii) Sasken Communication Technologies Ltd. Vs. Mr. Anupam Aggarwal and Others,
(xiii) Hardie Trading Ltd. and Another Vs. Addisons Paint and Chemicals Ltd.,
(xiv) 1997(17) PTC 523 Del, 2000 PTC 365 (SC) and Godfrey Philips India Ltd. Vs. Girnar Food and Beverages Pvt. Ltd.,
(xv) Judgment in the High Court of Delhi in Suit No.180 of 1984 (Globe Super Parts v. Blue Super Flame Industries)
(xvi) 1919-10-LW-137 (Venkatappier v. Ramaswami Aiyar and Another)
(xvii) State of Maharashtra Vs. Hindustan Construction Company Ltd.,
(xviii Dhariwal Industries Ltd. and Another Vs. M.S.S. Food Products,
(xix) Wander Ltd. and Another Vs. Antox India P. Ltd.,
(xx) Blue Hill Logistics Private Ltd. Vs. Ashok Leyland Ltd. and Dilip Chhabria Design Private Ltd.,
(xxi) Swaran Singh Vs. Usha Industries (India) and Another,
(xxii) Kirloskar Diesel Recon Pvt. Ltd. and another Vs. Kirloskar Proprietary Ltd. and others,
Now this Court has to decide whether this Court has jurisdiction to entertain the suit in respect of passing off? At this juncture, it is appropriate
to consider Section 134 of Trade Marks Act, which is pari materia with Section 62 of the Copyrights Act.
Section. 134. Suit for infringement, etc., to be instituted before District Court.
(1) No suit
(a) for the infringement of a registered trade mark; or
(b) relating to any right in registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiffs trade mark,
whether registered or unregistered;
shall be instituted in any Court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub-section (1), a ""District Court having jurisdiction"" shall, notwithstanding anything contained in the
Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose
jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than
one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain. Explanation:For the purposes of
sub-section(2), ""person"" includes the registered proprietor and the registered user.
It is true, as per the argument advanced by Mr.Pratap Chatterjee from Calcutta, learned senior Counsel appearing for the
Appellants/Defendants, Section 1(c) of Section 134 is consciously excluded in Section 134(2) of the Trade Marks Act. In such circumstances,
learned senior counsel for the Respondent/Plaintiff also fairly conceded that for relief of passing off, this Court has no jurisdiction.
At this juncture, it is appropriate to consider the decision relied upon by both sides counsel reported in Dhodha House Vs. S.K. Maingi, , in
which, it was held that even though the case has been filed under Copyrights Act, as per Section 62(2) of the Copyrights Act, the plaintiff has
invoked jurisdiction where he is residing and he must actually and voluntarily reside or carry on business or personally work for gain. In paragraph-
51, it is held as follows:
51.The plaintiff was not a resident of Delhi. It has not been able to establish that it carried on any business at Delhi. For our purpose, the question
as to whether the defendant had been selling its produce in Delhi or not is wholly irrelevant (sic). It is possible that the goods manufactured by the
plaintiff are available in the market of Delhi or they are sold in Delhi but that by itself would not mean that the plaintiff carried on any business in
Delhi.
In the above case, the plaintiff was not a resident of Delhi and he has not done his business at Delhi. In the case on hand, the Respondent/Plaintiff is
having business at Chennai. Hence, this Court has jurisdiction in respect of infringement of trade mark and copyright.
Mr.Pratap Chatterjee, learned senior counsel appearing for the Appellants/Defendants would submit that mere advertisement in the paper
published in the daily will not give a cause of action for filing the suit for passing off in Chennai. To substantiate the same, he relied upon the
decision reported in Ford Motor Company and Another Vs. Mrs. C.R. Borman and Another, in para-10, it is held as follows:
10..... The Division Bench of the High Court, as has been noted hereinbefore, did not advert to the issue as to whether the defendant had been
selling its product in Delhi on a commercial scale or not. It is, therefore, not necessary for us also to dilate further on the said question. We have
furthermore noticed hereinbefore that the advertisement appearing in a journal or newspapers by itself would not confer any jurisdiction on the
Court, if it otherwise did not have any.
At this juncture, it is appropriate to consider the decision reported in Dabur India Ltd. Vs. K.R. Industries, in para-34, it is held as follows:
34.What then would be meant by a composite suit? A composite suit would not entitle a court to entertain a suit in respect whereof it has no
jurisdiction, territorial or otherwise. Order 2 Rule 3 of the Code specifically states so and, thus, there is no reason as to why the same should be
ignored. A composite suit within the provisions of the 1957 Act as considered in Dhoda House (supra), therefore, would mean the suit which is
founded on infringement of a copyright and wherein the incidental power of the Court is required to be invoked. A plaintiff may seek a remedy
which can otherwise be granted by the court. It was that aspect of the matter which had not been considered in Dhoda House (supra) but it never
meant that two suits having different causes of actions can be clubbed together as a composite suit.
In the above decision, it was never mentioned that two suits having different causes of action can be clubbed together as a composite suit.
So we are of the view that this Court has no jurisdiction in respect of entertaining the suit for passing off.
Let us now consider prayer (b) sought for by the Respondent/Plaintiff:
(b) A permanent injunction restraining the Defendants from using as a domain name/website address, marketing, selling, offering for sale, licensing,
advertising, either directly or indirectly dealing in any goods using the words ""Health and Glow"" or any other mark identical with or similar to the
trade name, mark and device of the plaintiff, as may cause or be likely to cause confusion or deception amounting to passing off of the Defendants''
goods and services as those of the plaintiff;
Furthermore, in Judges summons in O.A.No.310 of 2007, in which, it is stated as follows:
(b) This Hon''ble Court should not be pleased to grant an order of ad interim injunction restraining the respondents/defendants, their principal
officers, servants, agents, their assigns in business, dealers, stockists and others associated with them from using the words ""HEALTH AND
GLOW"" or ""HEALTH AND GLOW"" or any other mark, name, logo, monogram or label that is or may be identical with or deceptively similar to
the registered 1) HEALTH & GLOW AND/OR 2) HEALTH AND GLOW (Device) trademarks of the Applicant or to market, sell, offer for
sale, license, advertise, directly or indirectly deal in any goods and/or services online or offline, which may amount to infringement of the
Applicant''s registered trademark Nos.802306, 1315016 and 1315017 in classes 3 and 3 & 5 respectively or passing off the respondents goods
and services as those of the Applicant''s, pending disposal of the above said suit and thus render justice?
So it is only a consequential relief. But the main relief is only in respect of infringement of trade mark and copyright. In such circumstances, we are
of the view that merely because one of the prayer is passing off, it is not a ground for rejecting the plaint for want of jurisdiction. So we are of the
considered opinion that it is not a ground for rejecting the plaint, since the relief of passing off only a consequential relief. Hence, we are of the view
that the findings of the learned Single Judge in respect of rejection of plaint does not warrant any interference and therefore, O.S.A.No.187 of
2007 is liable to be dismissed.
Now we have to decide whether there is any infringement of the registered trade mark of the Respondent/Plaintiff by the
Appellants/Defendants. As per the document No.1-Certificate of Incorporation, filed by the Respondent/Plaintiff, RPG Guardian Private Limited
has been established on 12.12.1996. Ministry of Company Affairs has issued a fresh Certificate of Incorporation Consequent upon change of
name only on 02.03.2007, in which, it was specifically mentioned that the name of the said Company has changed to ""Health & Glow Retailing
Private Limited"" and this certificate was issued pursuant to Section 23(1) of the Companies Act. The suit has been filed on 21.03.2007.
Respondent/Plaintiff has changed their Company''s name as ""Health & Glow"" only to file a suit. At this juncture, let us consider Section 28 of
Trade Marks Act, right conferred by registration. Admittedly, Respondent/Plaintiff is a registered trade mark holder in respect of ""Health & Glow
Retailing Private Limited and they filed an application on 13.10.2004 in Trade Mark No.1315016 and that was registered on 30.03.2006 without
symbol. It was found only in the word ""Health & Glow"". Class-3 and 5 of the above registration is extracted hereunder:
Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasiv preparations, soaps, perfumery, essential
oils.
Pharmaceutical, veterinary and sanitary preparations, dietetic substances adapted for medical use, food for babies, plasters, materials for
dressings, material for stopping teeth, dental was, disinfectants, preparations for destroying vermin fungicides, herbicides.
Subsequently, another application in trade mark No.1315017 dated 13.10.2004, which was registered on 15.06.2006 with the ''Dancing Girl'' in
the word ''G'' in respect of same goods for class-3 and 5. It is pertinent to note that the Appellants/Defendants herein have filed an application in
trade mark No.1281703 on 30.04.2004, which was published in the trade mark journal on 15.09.2005, wherein it was stated that ""User claimed
since 31.01.2004.
At this juncture, it is appropriate to consider page-338 of the typed set of documents filed by the Respondent/Plaintiff. In page-338, a journal
was published on February 14, 2005, which shows that in ""Trade Mark No.802306-May 15, 1998, User claimed since 17/02/1997."" But pages
3 to 6 as above referred to, filed by Respondent/Plaintiff are different from page-338 of the same typed set of documents. In such circumstances,
no reliance can be placed on the document filed in page-338 stating that Respondent/Plaintiff claiming user from 17.02.1997 onwards and that has
been published on 14.02.2005, but whereas the application was filed by Appellants/Defendants on 30.04.2004 itself. Per contra,
Respondent/Plaintiff filed their application much later (i.e.) on 13.10.2004, but they obtained registered trade mark on 30.03.2006 and
15.06.2006 respectively. In such circumstances, this Court is not inclined to accept the argument advanced by the learned senior counsel
appearing for the Respondent/Plaintiff that Appellants/Defendants herein are using the trade name as ""Health and Glow"" with same ''Dancing Girl''
in the word ''G'', dishonestly. We are unable to endorse the views of the learned Single Judge in paragraph-62 that there is no bonafide in adoption
of the mark by the defendants. The finding of the learned Single Judge in paragraph-62 that there is no bonafide in adoption of the mark by the
defendants is liable to be set aside.
Now this Court has to decide whether there is infringement of trade mark u/s 29, which is as follows:
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.
(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 with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the
distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of
his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particu1ar, he-
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under. the registered trade mark, or offers or
supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or
packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason
to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by an advertising of that trade mark if such advertising-
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of
those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
Learned senior counsel for Appellants/Defendants would take us to Section 29(4) to 29(6) of the Trade Marks Act and submit that even
though Respondent/Plaintiff has not advanced any argument in respect of sections 29(5) and 35 of the Trade Marks Act, the learned Single Judge
has suo motu taken the matter and held that the defendants are not entitled to the protection under the provision of Section 35 of the Act, in the
light of Section 29(5) of the said Act.
In view of the above submission, it is necessary for us to consider the counter filed by the Respondent. In their counter, they never mentioned
about the claiming of protection u/s 35 of the Trade Marks Act. But they stated in para-22 of their counter, they are providing treatments for
chronic patients in world wide including Nepal, Russia, Germany, Franch, Israel and Dubai etc. Now learned senior counsel appearing for the
Appellants/Defendants would submit that ""Health and Glow"" is only a generic word and their Homeopathic Clinic is providing treatments to their
patients for various ailments such as Arthritis, Children''s disease, Chronic backaches, Depression, Constipation, Hair Loss, Piles, Menopause
Syndrome, Acne, Allergies, Asthma, Hyperactivity, Migraines, Psoriasis etc. It is only to keep the health of the patients well. He further submitted
that they are also providing treatments to skin care, hair loss and weight loss, to give glow on the face. So it is only a generic word and it is not a
new word coined by Respondent/Plaintiff exclusively for their use. Before this, Respondent/Plaintiff filed an application before the Registrar of
Trade Mark for registering the trade mark of ""Health and Glow"". The Appellants/Defendants have filed an application for registering the trade
mark on 30.04.2004 itself. Furthermore, as per page-338 of the typed set of papers, a journal was published on February 14, 2005.
So we are of the opinion that the word ""Health and Glow"" is only a generic word and it is not a word coined exclusively by Respondent/Plaintiff.
To substantiate the case of the Appellants/Defendants, learned senior counsel relied upon the following decisions:
(i) Raymond Limited Vs. Raymond Pharmaceuticals Pvt. Ltd., in which, it is held as follows:
It was submitted that because a name is included in the definition of the term ""mark"" if the defendant uses a name which is identical or similar to
the registered trade mark, then it will amount to infringement within the meaning of infringement of the registered mark, within the meaning of sub-
section (4) of section 29 of the Act. If this submission on behalf of the plaintiff is accepted, then it can be seen that use of registered trade mark of
the plaintiff as part of the trade name when the goods marketed by the defendant are similar to the goods marketed by the plaintiff would be
covered by sub-section (1) of section 29 and may also be covered by Sub-Section (2) of Section 29.
(ii) Kamdhenu Ispat Limited Vs. Kamdhenu Pickles and Spices Ind. Pvt. Ltd. and Another, in paragraphs-22, 23 and 26, it is held as follows:
As far as the claim for dilution, a species of infringement u/s 29(4) is concerned, the trademark owner has to show four distinct elements.
Though trademarks are concerned with protection of marks which have acquired a degree of distinctiveness, in relation to particular goods and
services, courts have, over the years recognized that in relation to marks which have achieved notoriety as to have a reputation about the quality of
products which the manufacturer, or services the originator (of the mark) is associated with, then, even in relation to dissimilar goods -or unrelated
products, protection of such brand name, mark or acquired distinctiveness is essential. This measure of protection to marks in relation to similar
junior marks, but for dissimilar goods is, in substance the protection against dilution(or Blurring or tarnishment) or the mark. Prior to the1999 Act,
Indian law had developed through case law; the new Act changed that, and has enjoined protection against dilution, if certain essential elements are
established; they are:
(1) The impugned mark is identical or similar to the senior mark;
(2) The senior or injured mark has a reputation in India;
(3) The use of the impugned mark is without due cause;
(4) The use of the impugned mark (amounts to) taking unfair advantage of, or is detrimental to, the distinctive character or repute of the registered
trade mark.
Unlike in infringement of trademark in relation to similar goods or services, in the case of dilution (infringement of mark by use in respect of
dissimilar goods or services) there is no presumption of infringement of the mark. This means that each element has to be established.
The plaintiff''s reputation in its mark may at best be said to contain an association with steel, and allied goods, even in somewhat related fields
such as cement; however there is nothing suggestive that such association extends to pickles and such like packaged products manufactured and
sold by the defendants. This aspect is crucial, because the plaintiff does not deny that it is not selling competing goods. The class of users of the
plaintiff''s goods are not the kind who would associate the defendant''s mark as those of the plaintiff''s. Taking into consideration all these factors,
and the materials on record, the court is satisfied there is no linkage between the defendant''s mark and the plaintiffs'' products, so as to cause
detriment to the latter, and undue advantage to the former.
(iii) Blue Hill Logistics Private Ltd. Vs. Ashok Leyland Ltd. and Dilip Chhabria Design Private Ltd., in paragraphs 20 to 22 and 24, it is held as
follows:
The scheme and provisions of the Act clearly disclose the dichotomy between ""Goods"" on the one hand and ""Services"" on the other. Section
2(i)(j) defines ""Goods"" in an identical terms to the 1958 Act i.e. as meaning anything which is the subject of trade or manufacture. However,
Section 2(1)(z) added a definition of the term ""Services"" as follows: ""Section 2(1)(z) -""Services"" means service of any description which is made
available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as
banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of
electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising.
The distinction between ""Goods"" and ""Services"" is made clear by the provisions of the 2002 Rules. Under Rule 22(1) of the 2002 Rules,
Goods"" and ""Services"" are to be classified in the manner specified in the Fourth Schedule. The Fourth Schedule contains various classes of
''GOODS'' Classes 1 to 34. Thereafter, under a separate heading ''SERVICES'' follow Classes 35 to 42. Classes 35 to 42 are exclusively
services making it clear that Classes 1 to 34 are exclusively goods. Class 42 includes ""Providing of food and drink"" which would mean food items
listed in Class 29 to 34 do not include any services in respect of food items and drinks. Class 42 also contains a residuary class i.e. ""services that
cannot be classified in other classes"". This residuary class applies only to services and does not extend to goods. This also shows that ""Goods"" and
Services"" are treated separately.
The significant guide is found in Section 2(3) of the Act which reads as follows:
Section 2(3) for the purposes of this Act, goods and services are associated with each other if it is likely that those goods might be sold or
otherwise traded in and those services might be provided by the same business and so with descriptions of goods and descriptions of services.
Association of Trade Marks are defined u/s 2(1)(c) :
2(1) (c) ""Associated trade marks"" means trade marks deemed to be or required to be registered as associated trade marks under this Act.
24.The onus is on the registered proprietor who is invoking the provisions of Section 29 of the Act to establish that the Plaintiff''s mark is infringed
under sub-section (2) (a) or sub-section (2) (b) of Section 29 of Trade Marks Act. Where the rival marks are identical and the goods or services
are also identical, there is a statutory presumption of confusion and accordingly a prima facie case of infringement would exist. The onus then shifts
to the Defendant.
Considering the above decisions, we are of the view that ""Health & Glow"" is only a generic word. The onus is on the registered proprietor who is
invoking the provisions of Section 29 of the Act to establish that the Plaintiff''s mark is infringed under sub-section (2) (a) or sub-section (2) (b) of
Section 29 of Trade Marks Act. Where the rival marks are identical and the goods or services are also identical, there is a statutory presumption
of confusion and accordingly a prima facie case of infringement would exist. The onus then shifts to the Appellants/Defendants herein.
Admittedly, Respondent/Plaintiff is not manufacturing any products and they are marketing the products manufactured by various reputed
Companies like VLCC, Himalaya, Ponds, Johnson, Nivea, Himami, Pepsodent, Lakme, Dabur etc. Per contra, Appellants/Defendants herein
have Homeopathy Clinic in the name and style of ""Health and Glow Clinic"" and they are preparing and prescribing homeopathic medicines only to
their patients, who are taking treatment from them. So in such circumstances, burden is heavily upon the Respondent/Plaintiff to prove that there is
an infringement of registered trade mark.
It is appropriate to consider the subsections of Section 29 of the Trade Marks Act. We may usefully refer to the following passages from the
Book ""Law of Trade Marks & Geographical Indications, by K.C.Kailasam/Ramu Vedaraman, 2003 Edition, published by Wadhwa and
Company Nagpur, India, in page nos.390 to 396, which reads as follows:
Section 29 deals with infringement of trade marks and explicitly states as to the various acts which constitute infringement. When a registered trade
mark is used by a person who is not entitled to use such a trade mark under the law, it constitutes infringement. In pursuance of the relative
grounds for refusal of registration specified in clause 11, the scope of this clause has been enlarged to explicitly state that a registered trade mark is
infringed, if-
(a) the mark is identical and is used in respect of similar goods or services; or
(b) the mark is similar to the registered trade mark and there is an identity or similarity of the goods or services covered by the trade mark; or
(c) the trade mark is identical an is used in relation to identical goods or services;
Sub-clause (4) seeks to lay down that a registered trade mark is infringed by a person, if he uses a mark which is identical or similar to the trade
mark, but on goods or services which are not similar, provided the registered trade mark has a reputation in India and the use of the mark without
due cause would take unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark.
Sub-clause (5) seeks to prevent a person from adopting someone else''s trade mark as part of that person''s trade name or business name by
explicitly providing that such action shall also constitute an infringement under this act. This provision will bring this clause in harmony with the
proposed amendments to sections 20 and 22 of the Companies Act, 1956.
What constitutes infringement?
In this context, the ingredients of section 29(1) are as follows:
1.The plaintiff''s mark is registered.
The defendant''s mark is identical with, or deceptively similar to the plaintiff''s registered mark.
3.The defendant''s use of the mark is in the course of trade in respect of goods/services covered by the registered trade mark.
4.The use by the defendant is in such manner as to render the use of the mark likely to be taken as being use as a trade mark.
5.The defendant''s use of the mark is not by way of ""permitted user"" and accordingly unauthorized infringing use.
While the above is a general proposition of law, as per Section 29(1), the various circumstances in which the trade mark is infringed are
enumerated in sub-sections (2) to (9) of section 29.
Where the defendant''s use of the mark is identical with or deceptively similar to the registered mark and the use is not by way of permitted use
Where the defendant''s mark is identical with the plaintiff''s mark, the question is simple. The plaintiff has not to prove his use of the registered trade
mark, but merely to establish that the defendant is using a trade mark which is identical with to the plaintiff''s mark and in respect of goods/service
which are covered by the plaintiff''s registration. The plaintiff need not prove that the defendant''s use is likely to deceive or cause confusion.
In the Sphinx case, it was held by the court ""the registration shows his title to the mark, and if the infringer has absolutely copied the mark and
made a facsimile representation of it, you do not want any further evidence. The thing speaks for itself. You have copied. As I understand LORD
HALSBURY in the case in the house of Lords of the North Cheshire and Manchester Brewery V. Manchester Brewery Co., that is sufficient by
itself, without more
The test to be applied in determining whether two marks are identical with or too nearly resembles each other or is likely to deceive or cause
confusion or deceptively similar is in nutshell the test of an average person with imperfect recollection. The court has to visualize a customer or a
tradesman or a citizen who may happen to have dealings with the company complaining or who may happen to want to purchase the goods
manufactured by such company and decide whether such a customer or tradesman or citizen would get confused and whether an ordinary citizen
who may have occasion to deal with the company in the course of business dealings would mistake one for the other.
Under Section 2(d), the words ''deceptively similar'' are defined as follows: ""a mark shall be deemed to be deceptively similar to another mark if it
so nearly resembles that other mark as to be likely deceive or cause confusion.
Learned senior counsel for the Appellants/Defendants would submit that once sub-section (5) of Section 29 of the Trade Marks Act applies,
other subsections will not be applicable. To substantiate the same, he relied upon the decision reported in Raymond Limited Vs. Raymond
Pharmaceuticals Pvt. Ltd., in para-14, it is held as follows:
14..... A special provision has now been made to deal with that situation by incorporating sub-section 5 of Section 29 and therefore, so far as
subject of using of registered trade mark as a trade-name is concerned, provision is contained in sub-section 5 of Section 29 and therefore on that
subject no other provision would apply. Generalia Specialibus non derogant is a cardinal principle of interpretation. It means that the general
provision will always yield to a special provision. Construed in accordance with the fundamental principle, a special provision governing cases of a
defendant using a registered mark as a part of his trade-name is incorporated in Section 29(5) and therefore, that subject will be governed only by
that provision and therefore reliance on any other provision including Section 29(4) is ruled out. Thus, we have no doubt in our mind that the
Plaintiffs could not have relied on the provisions of Section 29(4) of the Trade-mark Act. In the present case, there is no dispute that the
Defendants do not deal in the goods in respect of which the trade-mark of the Plaintiffs is registered. What is to be noted here is that the phrase
used by sub-section 5 is ""dealing in goods or services in respect of which the trade-mark is registered "". The Legislature has not used the phrase
goods similar or goods identical to the goods in respect of which the trade mark is registered. Thus, in order to claim that use of a registered
trade-mark as part of trade-name by the Defendants amounts to infringement, the Plaintiffs have to establish that the Defendants are dealing in the
goods in respect of which the mark is registered. In other words, if the Defendants are not dealing in goods in respect of which the trade-mark is
registered, then the use of the registered trade-mark as a part of trade-name by the Defendant would not amount to infringement. In the present
case admittedly the Defendants are not dealing in the goods in respect of which the trade-mark of the Plaintiffs is registered and therefore, there is
no question of the Plaintiffs being entitled to any temporary injunction.
There is no quarrel over the proposition. Once a person uses the trade mark as part of their trade name u/s 29(5), the suit will be governed by that
provision and therefore reliance on any other provision including Section 29(4) is ruled out. So this Court has to consider each and every
provision.
It is true, trade mark has been registered as ""Health and Glow"" by the Respondent/Plaintiff. But the Appellants/Defendants firm is a
unregistered one using name as ""Health & Glow Clinic"". Section 29(4)(b) is used in relation to goods or services which are not similar to those for
which the trade mark is registered. Admittedly, Respondent/Plaintiff is having retail shops. Even though they have obtained trade mark in respect of
class 3 and 5 of the schedules, Respondent/Plaintiff has not manufactured any products or goods, but they are only marketing the products from
reputed firms like VLCC, Himalaya, Ponds, Johnson, Nivea, Himami, Pepsodent, Lakme, Dabur etc. On perusal of page-306 of the typed set of
papers, it was stated as follows: ""Free makeover by Revlon on Friday, Saturday and Sunday; Free Sampling of Phantom Energy Drink on Friday,
Saturday and Sunday, which shows that Respondent/Plaintiff is promoting the sale by giving samples of reputed firms and sold their products and
provide Free Mehandi and nail polishing and free samples to their customers. Whereas Appellants/Defendants are having clinic and practising
homeopathic medicines by rendering service in the name of ""Health and Glow"", but they are manufactured and prepared homeopathic medicines
and prescribed to their patients.
22.Clause (c) of Section 29(4) of Trade Marks Act requires several conditions to be satisfied. They are:-
The registered trade mark must have a reputation in India; and
The use of the mark in question is without due cause; and
Such use must take unfair advantage of or be detrimental to the distinctive character or repute of the registered trade mark. The language
employed is conjunctive. To fulfil clause (c) of Section 29(4), all above three conditions are to be satisfied.
The first question, which arises is, whether the mark ""Health and Glow"" has reputation in India. As pointed out earlier, respondent/plaintiff is
not manufacturing any products; but is only selling cosmetics/products of various concerns. That is the products of various other firms are marketed
by respondent/plaintiff with the name of ""Health and Glow"".
Now this Court has to consider whether the Respondent/Plaintiff is having reputation in India? Admittedly as per the documents filed by them
at the time of filing the suit, they are having 43 retail shops in various places at Chennai, Bangalore, Secundrabad and Hyderabad. But except this,
there is no prima facie evidence to show that their registered trade mark ""Health & Glow"" has reputation in India. But the learned Single Judge has
not considered this aspect. In para-54 of his order, it is held as follows:
Admittedly, the defendants are providing medical, hygiene and beauty care services. The plaintiff is selling cosmetics and items relating to hair
care and beauty care and the defendants are also providing treatment for hair care as seen from their advertisements. The advertisements published
by the defendants in various newspapers in West Bengal, filed as Document No.6 series and compiled from pages 22 to 112 of the typed set of
papers, show that they offer skin treatment, hair growth therapy and weight loss management. The plaintiff is also selling products relating to hair
care and treatment. Therefore, at least, prima facie, I am satisfied that the defendants are attempting to take unfair advantage of the reputation of
the registered trade mark of the plaintiff. Since the defendants seek to do it without any explanation as to how they also arrived at the combination
of the same two words and of the same device, I am convinced that the defendants have done this without due cause. Hence, it is clear, at least
prima facie, that the pre-requisites of Section 29(4) are satisfied and that therefore, the defendants cannot escape through the gate way of usage of
the trade mark on dissimilar products and services.
Admittedly, Respondent/Plaintiff is selling cosmetics and items relating to hair care and beauty care. But they are not providing any treatment or
service. Per contra, Appellants/Defendants are only providing homeopathy treatment to their patients for skin treatment, hair growth therapy and
weight loss management. In addition to that, they are providing ayurvedic medicines to other ailments viz., Arthritis, Children''s disease, Chronic
backaches, Depression, Constipation, Hair Loss, Piles, Menopause Syndrome, Acne, Allergies, Asthma, Hyperactivity, Migraines, Psoriasis etc.
In such circumstances, we are of the view that the learned Single Judge erroneously held that the Appellants/Defendants are attempted to take
unfair advantage of the reputation of the registered trade mark of the Respondent/Plaintiff. It is true, Appellants/Defendants have given explanation
as to how they arrived at the combination of the same two words and of the same device. In the counter, as already stated that in para-18 and 21,
Appellants/Defendants filed an application on 30.04.2004, prior to that of the Respondent/Plaintiff, who applied for registering the trade mark on
13.10.2004. In such circumstances, learned Single Judge has not considered this fact and erroneously held that the Appellants/ Defendants have
attempted to take unfair advantage of the reputation of the registered trade mark of the Respondent/Plaintiff. As already stated that except having
43 retail shops at Chennai, Bangalore, Secundrabad and Hyderabad, there is no evidence to show that Respondent/Plaintiff is manufacturing
cosmetics or items relating to health care, hair care and beauty care. Per contra, they are only marketing the reputed cosmetics and goods for
health care, hair care and beauty care. The products are marketed by ''Health and Glow''.
In the context of Section 29(4)(c) of Trade Marks Act, the next question to be considered is, whether appellants/defendants adopted the mark
without due cause"". Section 29(4)(c) enacts ""use of the mark without due cause and takes unfair advantage of or is detrimental to the distinctive
character or reputation of the registered trade mark."" The purpose of Section 29(4) is to protect the value and goodwill of the trade marks,
particularly in cases, where they are well known from being unfairly taken advantage of or detrimental to the distinctive character.
Since the Appellants/Defendants are having Homeopathy Clinic, they coined the word ""Health and Glow"", which is a common word. As per
the Oxford English Dictionary, Indian Edition,
Health"" means the state of being free from illness or injury; a person''s mental or physical condition.
Glow"" means a strong feeling of pleasure or well-being: a glow of pride.
Health and Glow"", generic word has been adopted by the appellants relating to medicine that too hair loss, weight loss and treatment for Arthritis,
Children''s disease, Chronic backaches, Depression, Constipation, Piles, Menopause Syndrome, Acne, Allergies, Asthma, Hyperactivity,
Migraines, Psoriasis etc. The name ""Health and Glow"" has been adopted by appellants/defendants only to indicate the medical services rendered
by appellants/defendants. It cannot be said that the appellants/defendants had adopted the name ""Health and Glow"" without undue cause. It cannot
be said that by using the name ""Health and Glow"" in their clinics in West Bengal, the appellants/defendants have taken unfair advantage or the
adoption of the mark is so detrimental to the mark of respondent/plaintiff. we are of the view that Respondent/Plaintiff has not prima facie proved
the pre-requisites of Section 29(4) of the Trade Marks Act. Hence, Respondent/Plaintiff is not entitled any injunction.
It is pertinent to note in 1998, that RPG Guardian Limited entered into a sale and purchase agreement with Spencer and Company Limited. In
Clause-(iii) of the said agreement, it was specifically mentioned that ""operating a chain of retail stores under the Trade name Health and Glow"". It is
true, in para-33 of his judgment, learned Single Judge considered various documents:
(i) Document Nos. 1 to 4 shows that Respondent/Plaintiff was adopted trade mark of ""Health and Glow"" from the year 1996 onwards and
Respondent/Plaintiff has obtained registration of both words in trade mark and device mark.
(ii) Considering document No.6 (i.e.) Agreement of sale and purchase dated 16.10.1998, in clause-(iii) Respondent/Plaintiff mentioned that they
were operating a chain of retail stores under the trade name ""Health and Glow"".
(iii) Document Nos.7 to 19, dated 14.07.2000, 27.06.2003, 25.07.2003, 12.03.2004, 14.06.2004, 11.10.2004, 19.09.2005, 15.10.2005,
01.04.2006, 07.06.2006, 23.08.2006, 19.09.2006 and 19.10.2006, are rental agreements in respect of the places at Chennai that the
Respondent/Plaintiff has retail shops. Except Document Nos.9,10 and 12, other documents are not mentioned about the name of ""Health and
Glow"", trade mark.
(iv) Document No.9-Agreement for Lease dated 25.07.2003, in clause-1, it was stated that ""the original Planning permit and sanctioned building
plan for Commercial usage as Health and Beauty Store, approved by competent authorities.
(v) Document No.10-Operating Cum Management Agreement, dated 12.03.2004, in which, it was stated that the First Party is a reputed retail
outlet having health and beauty outlets under the name and style ""Health & Glow"" in various major cities in India. But whereas in clause-9, it was
stated that the Second Party shall also indicate prominently in the bill to be provided to the customers, the name and logo of ""Health & Glow"".
(vi) Document No.12-Leave and Licence Agreement, dated 11.10.2004, in clause-2 and 3, it was stated as follows:
The Licensee is engaged in the business of operating retail outlets in beauty, cosmetics and pharmacy, under the name and style ""Health &
Glow"" in major cities across India, hereinafter referred as ''Business''.
The Licensee approached the Licensor for being permitted to occupy and use the shop being Shop No.1B in the Level 1 of Abirami Mega
Mall, a super built up area of 416 sq.ft. (including Common Area) or thereabouts for the purpose of carrying on their Business.
(vii) Document Nos.20 to 25 are related to the retail stores of Respondent/Plaintiff at Hyderabad, Secunderabad and Bangalore.
(viii) Document Nos.26 to 30 are the licenses issued by the local bodies at Hyderabad and Bangalore.
(ix) Document Nos.31 to 38 are Annual Reports of the Plaintiff''s Company.
(x) Document Nos.39 to 45 are the news items published in some of the English and Vernacular news papers about the opening of stores by the
Respondent/Plaintiff.
(xi) Document Nos.50 to 54 are the licenses issued by the local body at Chennai.
It is true, learned senior counsel for Respondent/Plaintiff would submit that since Appellants/Defendants have withdrawn their application
before the Registrar of trade Marks, to register the trade, they have no locus standi to advance argument in this appeal. But it is true in the order
dated 21.08.2007, it was specifically mentioned that an undertaking of the Appellants/Defendants ""Appellant Company does not wish to proceed
with the registration of the trade mark"" is recorded. But it will not take away the right of the Appellants/Defendants to advance their arguments to
set aside the order of the learned Single Judge. Furthermore, now Appellants/Defendants are running the Clinic in the name of ""H & G Clinic"".
To sum up,
Health and Glow"" is a generic word, which is related to ""Health"", which leads to ""glow"". Respondent/Plaintiff is doing only business in selling
cosmetics and health care products from reputed firms. Even though they had obtained trade mark registration in class-3 and 5 of the schedules,
they have not prepared any products or goods. But they are marketing the goods from well reputed firms like VLCC, Himalaya, Ponds, Johnson,
Nivea, Himami, Pepsodent, Lakme, Dabur etc. But whereas Appellants/Defendants are preparing homeopathic medicines and providing treatment
to their patients for ailments such as Arthritis, Children''s disease, Chronic backaches, Depression, Constipation, Piles, Menopause Syndrome,
Acne, Allergies, Asthma, Hyperactivity, Migraines, Psoriasis etc., including skin treatment, hair growth therapy and weight loss management. But
Respondent/Plaintiff is having their retail shops in various places only at Chennai, Bangalore, Secundrabad and Hyderabad, not entire India. There
is no prima facie evidence to show that Respondent/Plaintiff is having reputation of registered trade mark throughout India. Besides, since plaintiff
has not established the reputation, it cannot be said that the appellants/defendants had taken unfair advantage of reputation of registered trade mark
of Respondent/Plaintiff. Since the Appellants/Defendants are doing medical practising, they are doing the same with due cause. In such
circumstances, we are of the view that Respondent/Plaintiff has not proved that the Appellants/Defendants have infringed their registered trade
mark right. Furthermore, as already stated that Kamdhenu''s case is squarely applicable to the facts of the present case, because
Respondent/Plaintiff is marketing the products from well reputed firms, but whereas the Appellants/Defendants are doing medical services by
running Homeopathy Clinic and preparing medicines for their patients.
It is true as per the dictum of the Apex Court that the judgment of the learned Single Judge cannot be interfered, unless it is proved patently
illegal or perverse. At this juncture, it is appropriate to consider the arguments advanced by the learned senior counsel for Appellants/Defendants
contending that they have not claimed protection u/s 35 of the Trade Marks Act, because it is not their family name. But they coined the word in
respect of their service rendered by them, since they are doing medical practising. In such circumstances, learned Single Judge without pleadings
and arguments advanced by Appellants/Defendants suo motu considered the fact whether the Appellants/Defendants are entitled to protection u/s
35 of the Trade Marks Act. Hence, we are of the view that findings given by the learned Single Judge without pleadings are perverse. So we are
inclined to interfere with the findings of the learned Single Judge.
As stated supra, Respondent/Plaintiff has not prima facie proved the pre-requisites of Section 29(4) of the Trade Marks Act. Hence,
Respondent/Plaintiff is not entitled any injunction. Therefore, the order passed by the learned Single Judge is liable to be set aside.
Since the respondent is not entitled to injunction, the appellants are not entitled to proceed further in contempt application. So O.S.A.Nos.228
and 229 of 2007 are liable to be dismissed and hence they are hereby dismissed.
In fine,
� Setting aside the order dated 13.06.2007 made in O.A.Nos.310 & 311 of 2007 and A.Nos.2941 & 2942 of 2007, O.S.A.Nos.183 to 186
of 2007 are allowed.
� Confirming the order dated 13.06.2007 made in A.No.2943 of 2007 in C.S.No.236 of 2007, O.S.A.No.187 of 2007 is dismissed.
� O.S.A.Nos.228 and 229 of 2007 are dismissed.
� Both the parties are directed to bear their own costs.
� Consequently, connected Miscellaneous Petitions are closed.