AI Structured Summary
Not yet generated for this judgment
Judgment
Financial Year,Sales Value (Lacs Rs),,
2010-11,5774.52,,
2011-12,21006.01,,
2012-13,33239.27,,
2013-14,45528.88,,
2014-15,69048.63,,
2015-16,90667.12,,
2016-17,126600.69,,
2017-18,179409.10,,
2018-19,241011.36,,
PRODUCT,IMAGE,,
FREEDOM,,,
PRODUCT,IMAGE,,
FREEDOM - REFINED
SUNFLOWER OIL
Year of Introduction:2010",,,
FREEDOM â€" REFINED
RICE BRAN OIL
Year of Introduction:2015",,,
FREEDOM - MUSTARD OIL
Year of Introduction:2013",,,
FREEDOM -
GROUNDNUT OIL
Year of Introduction:2018",,,
competitors. The launch plan was to be built on such a review.,,,
The Applicant submitted that sometime in the year 2019 it came to know about the impugned mark ‘FREEDAY’ along with the offending,,,
trade dress, when it came across the product of the Respondent No.1 in the market with the offending trade dress. To the Applicant’s surprise, in",,,
addition to infringing the Applicant’s registered trademark ‘FREEDOM’ the impugned products are also being sold in a packaging that is,,,
almost identical and/or deceptively similar to the packaging of that of the Applicant’s ‘FREEDOM’ refined edible oil. A detailed comparison,,,
of the Applicant product and the Respondent No.1’s product is made herein below.,,,
POINTS OF SIMILARITIES:,,,
The trade dress/packaging is identical and/or deceptively and confusingly similar.,,,
The word ‘FREEDAY’ is written in a green font on a white background, is identical to the manner in which the Applicant writes ‘FREEDOM’ in the colour green on a white",,,
background.,,,
Use and placement of sunflower device is identical/deceptively and confusingly similar to the placement of the same on the Applicant’s product packaging.,,,
The red and yellow triangular device on the left-hand top corner of the product packaging with the information that the product is fortified with Vitamins ‘A’ and ‘D’ and,,,
‘E’ is identical to that of the Applicant.,,,
The red and yellow triangular device on the right-hand bottom corner of the product packaging is identical to that of the Applicant.,,,
The placement of the product description being ‘refined sunflower oil’ below the offending trade mark ‘FREEDAY’ is identical to the Applicant’s use and placement of its,,,
trade mark ‘FREEDOM’.,,,
The placement of the tag line ‘BE HEALTHY BE HAPPY’ below,,,
The product description is identical to the placement of the Applicant’s tag line below the product description.,,,
POINTS OF SIMILARITY:,,,
The trade dress/packaging is identical and/or deceptively and confusingly similar.,,,
The word ‘FREEDAY’ is written in a green font on a white background, is identical to the manner in which the Applicant writes ‘FREEDOM’ in the colour green on a white",,,
background.,,,
Use and placement of sunflower device is identical/deceptively and confusingly similar to the placement of the same on the Applicant’s product packaging.,,,
The red and yellow triangular device on the left hand top corner of the product packaging with the information that the product is fortified with Vitamins ‘A’, ‘D’ and",,,
‘E’ is identical to that of the Applicant.,,,
The placement of the product description being ‘refined sunflower oil’ below the offending trade mark ‘FREEDAY’ is identical to the Applicant’s use and placement of,,,
the same.,,,
The placement of the tag line ‘BE HEALTHY BE HAPPY’ below The product description is identical to the placement of the Applicant’s tag line below the product,,,
description.,,,
The Applicant submitted that the Applicant and Respondent No.1’s products cater to the same market and are sold through the same trade,,,
channels. In fact, when the products are kept at the shops, it is extremely likely that a consumer of average intelligence and imperfect recollection on",,,
account of the similarity in the trade dress and the trade mark of both products, is likely to mistake the product of the Respondent No.1 to be",,,
originating from the Applicant and purchase the substandard product of the Respondent No.1 under that mistaken belief. A photograph of the products,,,
taken at a shop is reproduced herein below.,,,
DESCRIPTION,FREEDOM,FREEDAY,
IDENTICAL/
DECEPTIVELY SIMILAR TRA
MARK","ü
DE",ü,
REGISTERED IN THE
SAME CLASS",ü,ü,
SAME PRODUCT FOR SAME
PURPOSE",ü,ü,
SAME MARKET,ü,ü,
IDENTICAL/DECEPTIVELY
SIMILAR PACKAGING",ü,ü,
ENTRY IN MARKET,ü,ü,
DIFFERENTIATED ONLY
BY A VOWEL& SOF
CONSONANT","FreedOM
T",FreedAY,
The Applicant submitted that it is further pertinent to mention that the Respondent’s product with the offending trade mark and/or trade dress,,,
does not even meet the FSSAI Standards, and therefore, asides from damaging the Applicant’s brand and goodwill, which is causing a direct",,,
monetary and reputational loss to the Applicant which is irreparable, also poses a health and safety hazard to the general public, the indirect effects",,,
which will be on the Applicant’s brand ‘FREEDOM’. It is also in public interest that the wrongful entry of the Respondent’s,,,
registration be removed from the Register. The presence of the offending trade mark on the register is not only against public interest and also limits,,,
the legal rights of the Applicant who is an honest and law abiding business entity. If the aforesaid wrongful entry is not expunged from the register, the",,,
Respondent on the basis of the same would continue to deceive the general public and the authorities, thereby causing grave prejudice to the public",,,
interest and the Applicant herein.,,,
The Applicant also rebutted to the grounds taken by the Respondent in its counter statement and stated the Applicant’s trade mark and/or,,,
trade dress is distinctive and has been especially created for it by an agency as has been detailed hereinabove. The Applicant’s packaging cannot,,,
by any stretch of imagination be held to be common to trade or generic. The Applicant submitted that the trade mark ‘FREEDOM’ is distinctive,,,
and coined with respect to edible oil. It has no reference to the character and quality of the goods. Even if use of the sunflower device may be,,,
common with respect to the sunflower refined oil, the image of the sunflower is identical, the colour combination, font, style and packaging of the",,,
Respondent is so similar that it could have been conceptualized without the Applicant’s product being there before it. Be that as it may, the",,,
Respondent has not indicated the extent and presence of the third party products in order to establish its defense of the Applicant’s mark being,,,
‘common to trade and/or generic’. The Respondent’s Annexures B & C which show the various other products in the market, do not in any",,,
manner establish that the Applicant’s trade mark and trade dress are common to trade. Be that as it may, it is settled law that a party is not",,,
expected to sue every infringer, which may not be effecting its business.",,,
The Applicant further submitted on the grounds taken by the Respondent on Applicant’s trade mark applications that have been opposed and,,,
an application for the cancellation of its registration for the trade mark ‘FREEDOM’ has been filed, that the oppositions and cancellations have",,,
(i) been filed by a competitor as a counter blast and the Petitioner is contesting the same (ii) it is settled law that unless the mark is rectified, no person",,,
is entitled to infringe the same.,,,
The Applicant submitted on the ground taken by the Respondent that its mark has not been opposed, that the very purpose of Section 57 is to",,,
ensure that if inadvertently a mark is registered, and such mark contravenes the registered right of another registered owner, then it empowers the",,,
Hon’ble Board to correct the same and cancel the entry of the contravening mark. The argument of the Respondent is fallacious because if,,,
accepted, it would defeat the whole purpose of Section 57 being on the statute books.",,,
The Applicant also relied on the following case law: -,,,
i. Precious Jewels & Anr. v. M/s Varun Gems, FAO(OS) No. 609/2012 Delhi High Court, Hon’ble Mr. Justice Pradeep Nandrajog &",,,
Hon’ble Mr. Justice Manmohan Singh - Paragraph 37 that reads as follows - “37. With regard to rectification filed by the defendants to the,,,
registration granted in favour of the plaintiff is concerned, it is settled law that unless the mark is rectified, no person is entitled to infringe the same.",,,
Therefore, in case the defendants have any merit in the rectification, the same will be decided as per its own merit. The said argument of defendants",,,
is also rejected.â€,,,
ii. Premier Tissues India Ltd. v. Rolia Tissues Industries & Ors., Delhi High Court, MANU/DE/0589/2012, Hon’ble Mr. Justice Manmohan Singh",,,
Paragraph 43 that reads as follows: - “43. In view of the above, it appears from the record that two set of packaging are almost similar. Both",,,
marks, PREMIER and PREMIUM are deceptively similar. The defendants could not have designed their packaging without placing the packaging of",,,
the plaintiff. Prime facie, it is clear that it is case of violation of vested rights of the plaintiff and pirator thereof cannot become rightful owner in any",,,
manner. Thus, the plaintiff has made out a strong case of injunction.â€",,,
iii. Sun Pharma Laboratories Limited & Ors. v. Agila Specialties Pvt. Ltd. & Ors., MANU/IC/0014/2020, Hon’ble Mr. Justice Manmohan",,,
Singh(Chairman), Dr. Onkar Nath Singh - Paragraphs 36 â€" 44 which read as follows: “36. Two rival marks to be compared as a whole. (see",,,
MANU/SC/0115/1959 : AIR 1960 SC 142, MANU/SC/0256/1962 : AIR 1963 SC 449 and MANU/SC/0197/1964 AIR 1965 SC 980) in the case",,,
reported in MANU/SC 0256/1962 : AIR 1963 SC 449 PTC Suppl) (2) 1 (SC), Amritdhhara Pharmacy v. Satya Deo Gupta the Apex Court on page",,,
458 and Para 9 has Observed as under: “We agree that the use of the word “dhara†which literally means ‘current or stream’ is not by,,,
itself decisive of the matter. What we have to consider is the overall similarity of the composite word, having regard to the circumstance that the",,,
goods bearing the two names are medicinal preparations of the same description….. A critical comparison of the two names may disclose some,,,
points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two,,,
names…..†(page 458 Para 9) 37. In the case of MANU/SC/0197/1964 : AIR 1965 SC 980, Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna",,,
Pharmaceutical Laboratories, it is held that in infringing cases only the rival marks are to be compared by the court if the Defendant’s mark is",,,
closely, visually and phonetically similar then no further evidence is required, even if get up packaging on the packing of two products in which they",,,
are offering their products are different in an actin of infringement, same is immaterial. 38. In many cases anti- dissection rule has been discussed and",,,
decided various cases and same is also to be applied in India is really based upon nature of customer. It has been rightly set out in McCarthy on Trade,,,
marks and Unfair Competition about the said rule particularly in Para 23. 156 which is reproduced hereunder: “23.15 Comparing Marks:,,,
Differences v. Similarities [1] The Anti-Dissection Rule [a] Compare Composites as a Whole Conflicting composite marks are to be compared by,,,
looking at them as a whole, rather than breaking the marks up into their component parts for comparison. This is the “anti-dissection†Rule. The",,,
rationale for the rule is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the mark as a,,,
trademark on an ordinary prospective buyer is created by the mark as a whole, not by its component parts. However, it is not a violation of the anti-",,,
dissection rule to view the component parts of conflicting composite marks as a preliminary step on the way to an ultimate determination of probable,,,
customer reaction to the confliction composites as a whole. Thus, conflicting marks must be compared in their entireties. A mark should not be",,,
dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood,,,
of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is",,,
important. As the Supreme Court observed: “The Commercial impression of a trademark is derived form it as a whole, not from its elements",,,
separated and considered in detail. For this reason it should be considered in tis entirety.†The anti-dissection rule is based upon a common sense,,,
observation of customer behavior: the typical shopper does not retain all of the individual details of a composite mark in his or her mind, but retains",,,
only an overall, general impression created by the composite as a whole. It is the overall impression created by the mark form the ordinary",,,
shopper’s cursory observation in the marketplace that will or will not lead to a likelihood of confusion, not the impression created from a",,,
meticulous comparison as expressed in carefully weighed analysis in legal briefs. In litigation over the alleged similarity of marks the owner will,,,
emphasize the similarities and the alleged infringer will emphasize the differences. The point is that the two marks should not be examined with a,,,
microscope to find the differences, for this is not the way the average purchaser views the marks. To the average buyer, the points of to find some",,,
minor differences between conflicting marks. However, where there are both similarities and differences in the marks there must be weighed against",,,
one another to see which predominate. The rationale of the anti-dissection rule is based upon this assumption: “An average purchaser does not,,,
retain all the details of a mark, but rather the mental impression of the mark creates in tis totality. It has been held to be a violation of the anti-",,,
dissection rule of focus upon the “prominent†feature of a mark and decide likely confusion solely upon that feature, ignoring all other elements of",,,
the mark. Similarly, it is improper to find that one portion of a composite mark has no trademark significance, leading to a direct comparison between",,,
only that which remains.†39. It is rightly held in the recent judgment given by the Division Bench of this Court comprising A.K. Sikri, hon’ble",,,
Acting Chief Justice and Rajiv Sahai Endlaw, J. in the case of United Biotech (P) Ltd. (supra) in which law pertaining to anti-dissection rule as well as",,,
the test of deceptively similarity have been dealt with in great detail. The Division Bench has also laid down the rules of comparison in Para 32 of the,,,
judgement. Two rival trademarks in the matter decided by the division bench were ORZID and FORZID and it was held that two trademarks are,,,
visually and phonetically similar and would cause deception in the minds of the consumer in relation to medicine. The said judgment has also been,,,
discussed in Stiefel Laboratories (Supra). The relevant paras of the said judgment read as under: “30. The law on this aspect, where the Courts are",,,
called upon to consider the deceptive similarity between the two marks is firmly engraved in a series of judgements pronounced by the Courts in the,,,
last half century or more. Many are cited by the learned counsel for the appellant, note whereof is taken above. Judgment of Supreme Court in the",,,
case of Cadila Health Care Limited (Supra), which deals with pharmaceutical preparations, is a milestone on law relating to drugs. Application of the",,,
principles laid down in this judgment can be found in scores of subsequent judgments of this Court and other High Courts. The position which emerges,,,
from the reading of all these judgments can be summarized in the following manner: In such case, the central issue is as to whether the Defendant's",,,
activities or proposed activities amount to a misrepresentation which is likely to injure the business or goodwill of the Plaintiff and cause damage to his,,,
business or goodwill. To extend this use to answer this, focus has to be on the aspect as to whether the Defendant is making some representation in",,,
course of trade to prospective customers which is calculated to injure the business or goodwill of the Plaintiff thereby causing damage to him. In the,,,
process, difference between the confusion and deception is to be understood. This difference was explained by Lord Denning in ""Difference:",,,
Confusion & Deception"" in the following words: ""Looking to the natural meaning of the words, I would make two observations: first, the offending",,,
mark must 'so nearly resemble' the registered mark as to be 'likely' to deceive or cause confusion. It is not necessary that it should be intended to,,,
deceive or intended to cause confusion. You do not have to look into the mind of the user to see what he intended. It is its probable effect on ordinary,,,
people which you have to consider. No doubt if you find that he did intend to deceive or cause confusion, you will give him credit for success in his",,,
intentions. You will not hesitate to hold that his use of it is likely to deceive or cause confusion. But if he had no such intention, and was completely",,,
honest, then you will look carefully to see whether it is likely to deceive or cause confusion before you find him guilty of infringement.†40.Hon'ble",,,
Division Bench of this Court in the case of United Biotech (P) Ltd. (supra) after referring to various decisions including the decision referred by the,,,
Defendant's counsel has followed the anti-dissection rule' as set out in McCarthy on Trademarks and Unfair Competition which was not applied in the,,,
cases referred by the Defendant. In fact the said law had been applied in India for the last five decisions by Hon'ble Supreme Court in three,,,
judgments delivered by the Supreme Court in the cases reported in Corn Products Refining (supra), Amritdhara Pharmacy (supra) and Kaviraj Pandit",,,
Durga Dutt Sharma (supra). 41.McCarthy on Trademarks and Unfair Competition [J Thomas McCarthy, IV Ed., Clark Boardman Callaghan 2007]",,,
under the sub-heading ""Comparing Marks: Differences and Similarities'. The treatise further states: ""23.15 The typical shopper does not retain all of",,,
the individual details of a composite mark in his or her mind, but retains only an overall, general impression created by the composite as a whole. It is",,,
the overall impression created by the mark from the ordinary shopper's cursory observation in the marketplace that will or will not lead to a likelihood,,,
of confusion, not the impression created from a meticulous comparison as expressed in carefully weighed analysis in legal briefs."" ""In litigation over",,,
the alleged similarity of marks, the owner will emphasize the similarities and the alleged infringer will emphasize the differences. The point is that the",,,
two marks should not be examined with a microscope to find the differences, for this is not the way the average purchaser views the marks. To the",,,
average buyer, the points of similarity are the more important that minor points of difference. A court should not engage ""technical gymnastics"" in an",,,
attempt to find some minor differences between conflicting marks. However, where there are both similarities and differences in the marks, there",,,
must be weighed against one another to see which predominate.†41. As discussed above, and after having gone through the material placed on",,,
record and the decisions referred, it is clear that none of decisions relied upon on behalf of Mylan is applicable to the facts and circumstances of the",,,
present case. The reasons are given as under: a). In the cases of Biofarma (supra) Indo Pharma (supra) Apex Laboratory (supra) Panacea,,,
Biotec(supra) Schering(supra) and F Heffmann, it is evident that all the above mentioned judgments are delivered prior to the judgment of Cadila case",,,
(supra) in the Cadila case all guidelines in pharmaceutical cases, comparisons rules and purchased of drugs through the medical prescription haven",,,
changed, After the Cadila case, the trend of pharmaceutical cases is revisited. Two more landmarks decisions were rendered accepting the principles",,,
and guidelines of Cadila. No prominence is given to the concept of doctor prescription in view of grounds situation in the market. Even otherwise the,,,
concept of comparison of two rival marks and adoption of the same from name of the salt or from ailments is entirely revisited. The trademark of two,,,
parties in similar position ORZID and FORZID are held to be similar in the case of United Biotec(supra) where the salt in question was Ceftazidime,,,
was involved couple with the defense of third parties that words ZID was the part of generic name. The said judgment was given by the Division,,,
Bench of Hon'ble High Court of Delhi on 18.5.2012, disagreeing with the decision of Astrazeneca (supra) and Indo Pharma (supra) The facts in the",,,
present case are almost identical. The Hon'ble Division Bench has confirmed the orders of IPAB. b). As regards the other decision referred by the,,,
counsel for Mylan in the case of Schering (supra) apart of giving the distinguishing the features in earlier para a) it is matter of fact SMDyechem,,,
Limited vs Cadbury India Ltd. reported in MANU/SC/0407/2000 : 2000 PTC (20) (SC) 297, the said decision of the Supreme Court was already",,,
overruled by the Supreme Court in Cadila matter on the reason that law already settled for the last 50 years was overlooked. However it is surprise to,,,
note the overruled judgment was referred and the decision was rendered. Further the case referred in the said decision of SBL vs Himalaya Drug,,,
Company reported in MANU/DE/0311/1997 : 1997(17) PTC 540 (DB) it is matter of fact that the SBL appeal was filed against the order of interim,,,
injunction granted against the SBL and the appeal was allowed mainly on the reasons that the product LIVE 52 was general words. Even after trial,,,
the suit was dismissed assigning the same reasons. However in appeal before the Division Bench in RFA(OS) the appeal filed by Himalaya (supra),,,
was allowed. The judgment passed by the single bench dismissing the suit was set aside. The Suit filed by Himalaya was decree and permanent,,,
injunction was passed against SBL. The rest of many judgments referred by counsel for the Mylan mentioned in this judgment of Schering were not,,,
accepted by the recent judgment of the Division Bench of Delhi High Court in the case of United Biotech (supra). Therefore all the decisions referred,,,
on behalf of Mylan are distinguishable as per its on facts and the valent decisions rendered by the Supreme Court and High Court post Cadila case.,,,
According none of the decisions will help the case of Mylan. Apart from above Mylan has miserable failed to make out any case on merit in its,,,
favour. 42. As regards ORA 1 of 2016 are concerned, it is false and frivolous petition. It appears that it is filled as counter blast to the suit and",,,
rectification filed by Sun Pharma. There is no merit at all in view of reasons mentioned above. The same is dismissed. 43. With regards to ORA 55 of,,,
2015, Sun Pharma has been able to make a strong case in its favour. IPAB holds that the mark OXPLAT is coin word and was registrable. The trade",,,
mark of the Mylan SOXCLAT is deceptively similar. “If rival trademark of both parties are compared as a whole, it is similar. Sun Pharma is the",,,
prior in adoption and user of the Trademark than Mylan and other third parties registration referred by Mylan. Trademark no. 1550804 in class 5 was,,,
wrongly registered and wrongly remaining on the Register. The entry of the said trademark offends under Section 11, 18, 32 and 57 of the Act.†44.",,,
In order to maintain purity of the register, it is removed from the Register forthwith. The respondent no 2 shall remove the entry immediately. from the",,,
recordâ€.,,,
iv. The Applicant has also relied on Heinz Italia & Ors. v. Dabur India Ltd., (2007) 6 SCC 1, Supreme Court, Hon’ble JJ B.P. Singh and H.S.",,,
Bedi Paragraphs 10 & 11- “10. We have also considered the arguments with regard to the prior user of the trademark ""Glucon-D"" and the specific",,,
packaging. It is the admitted case that theterm ""Glucose-D"" has been used by the respondent from the year 1989 and that the packaging which is the",,,
subject matter of dispute in the present suit has been in use from the year 2000. In the case of Century Traders (supra) it has been held that in an,,,
action for passing off, the plaintiff has to establish prior user to secure an injunction and that the registration of the mark or similar mark in point of",,,
time, is irrelevant. This Court in Cadila Health Care case (supra) also laid down the tests in the case of passing off and observed as under: “In",,,
other words in the case of unregistered trade marks, a passing off action is maintainable. The passing off action depends upon the principle that",,,
nobody has a right to represent his goods as the goods of some body. In other words a man is not to sell his goods or services under the pretence that,,,
they are those of another person. As per Lord Diplock in Erwin Warnink BVv. J. Townend & Sons 1979 (2) AER 927, the modern tort of passing off",,,
has five elements i.e. (1) a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of",,,
goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trade (in the sense that this is a reasonably",,,
foreseeable consequence), and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia",,,
timet action) will probably do so.†11. Likewise, it has been repeatedly held that before the use of a particular mark can be appropriated it is for the",,,
plaintiff to prove that the product that he is representing had earned a reputation in the market and that this reputation had been sought to be violated,,,
by the opposite party. In Corn Products case (supra) it was observed that the principle of similarity could not to be very rigidly applied and that if it,,,
could be prima facie shown that there was a dishonest intention on the part of the defendant in passing off goods, an injunction should ordinarily follow",,,
and the mere delay in bringing the matter to Court was not a ground to defeat the case of the plaintiff. Itbears reiteration that the word ""Glucon-D""",,,
and its packaging had been used by Glaxo since 1940 whereas the word ""Glucose-D"" had been used for the first time in the year 1989. In Cadila",,,
Healthcare case (supra), it has also been held that in the case of a passing off action the similarities rather than the dissimilarities have to be taken",,,
note of by the Court and the principle of phonetic ""similarity"" cannot be ignored and the test is as to whether a particular mark has obtained",,,
acceptability in the market so as to confuse a buyer as to the nature of product he was purchasing. We observe that the both Glucon-D and Glucose-,,,
D are items containing glucose and to us it appears that there is remarkable phonetic similarity in these two words. We have also examined the,,,
packaging of the product and specifically Annexure P.6 (colly). Item D of Annexure P-6 is the packaging in dispute. It will be seen that the colour,,,
scheme of Glucose-D and Glucon-D is almost identical with a happy family superimposed on both. Mr. Chandra has however pointed out that in,,,
Glucose-D the happy family consisted of four whereas in the case of Glucon-D the family was of three and as such the two were dissimilar. We are,,,
of the opinion however that the colour scheme and the overall effect of the packaging has to be seen. We have also examined Item D individually,,,
which is the exclusive packaging for Glucose-D; the one on the extreme left being the packaging in the year 1989, the one in the middle being the one",,,
for the year 2000 (which is impugned in the present suit) and the third on the extreme right which is the subject matter of the suit in Calcutta which,,,
has been stayed on the application made by respondent. We are of the opinion that the packaging of Glucose-D is Glucon-D is so similar that it can,,,
easily confuse a purchaser. We also feel that mere fact that the respondents have time and again made small changes in their packaging is an attempt,,,
to continue to mislead the purchaser and to make it more difficult for the appellants to protect their mark, which the record shows has acquired an",,,
enviable reputation in the market which is sought to be exploited by the respondentâ€.,,,
v. The Applicant relied on Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories, Supreme Court, MANU/SC/0197/1964 -",,,
Paragraphs 30 & 31 which reads as follows: “30. The mark of the respondent which he claims has been infringed by the appellant is the mark,,,
'Navaratna Pharmaceutical Laboratories', and the mark of the appellant which the respondent claimed was a colourable limitation of that mark is",,,
'Navaratna Pharmacy'. Mr. Agarwala here again stressed the fact that the 'Navaratna' which constituted an essential part of feature of the,,,
Registered Trade Mark was a descriptive word in common use and that if the use of this word in the appellant's mark were disregarded, there would",,,
not be enough material left for holding that the appellant had used a trade mark which was deceptively similar to that of the respondent. But this,,,
proceeds, in our opinion, on ignoring that the appellant is not, as we have explained earlier, entitled to insist on a disclaimer in regard to that word by",,,
the respondent. In these circumstances, the trade mark to be compared with that used by the appellant is the entire registered mark including the word",,,
'Navaratna'. Even otherwise, as stated in a slightly different context : (Kerly on Trade Marks 8th Edn. 407) ""Where common marks are included in",,,
the trade marks to be compared or in one or in one of them, the proper course is to look at the marks as wholes and not to disregard the parts which",,,
are common"".",,,
It appears to us that the conclusion reached by the Courts below that the appellant's mark is deceptively similar to that of the respondents cannot,,,
be stated to be erroneous. Besides, this question of deceptive similarity is a question of fact, unless the test employed for determining it suffers from",,,
error. In the present case, it was not suggested that the Courts below had committed any error in laying down the principles on which the comparison",,,
has to be made and deceptive similarity ascertained. (See per Lord Watson in Attorney-General for the Dominion of Canada v. Attorney-General for,,,
Ontario etc.) [1897] A.C. 199. As there are concurrent findings of fact on this matter, we do not propose to enter into a discussion of this question de",,,
novo, since we are satisfied that the conclusion reached is not unreasonable. “",,,
vi. The Applicant riled on ITC Limited v. Whole Leaf Tobacco Venture Pvt. Ltd. & Ors., Calcutta High Court, MANU/WB/0367/2019, Ho’nable",,,
Soumen Sen Paragraphs 37 â€" 45 which reads as follows: “37. In view of the above, it appears from the record that two set of packaging are",,,
almost similar. Both marks, ""FLAKE"" and ""FLANE"" are deceptively similar. 38. Even if the defendants might have adopted the mark innocently,",,,
which however is not the case here, an injunction will be granted against such use if there is probability of confusion. 39. An action for passing off lies",,,
whenever the use of mark so familiar and associated with the plaintiff, is calculated to deceive, so as to divert business from the plaintiff or to",,,
occasion a confusion between the two products. 40. In Laxmikant V. Patel vs. Chetanbhat Shah reported at MANU/SC/0763/2001 : AIR 2002 SC,,,
Paragraphs 12 and 13 the law on this issue has been summarized. The said Paragraphs read:- ""12. In Oertil vs. Bowman (1957) RPC 388 (at",,,
page 397), the gist of passing-off action was defined by stating that it was essential for the success of any claim to passing-off based on the use of",,,
given mark or get-up has become by user in the country distinctive of the plaintiff's goods, so that the use in relation to any goods of the kind dealt in",,,
by the plaintiff on that mark or get- up will be understood by the trade and the public in the country as meaning that the goods are the plaintiff's good.,,,
It is in the nature of acquisition of a quasi-proprietary right to the exclusive use of the mark or get-up in relation to goods of that kind because of the,,,
plaintiff having used or made it known that using the same or somewhat deceptively similar mark, get-up or name in relation to goods not of plaintiff.",,,
The three elements of ""passing-off"" action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff. In our opinion,",,,
the same principle, which applies to trade mark, is applicable to trade name. 13. In an action for passing off it is usual, rather essential, to seek an",,,
injunction temporary or ad-interim. The principles for the grant of such injunction are the same as in the case of any other action against injury,,,
complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in",,,
the absence of grant of injunction. According to Kerly (Ibid, para 16.16)passing off cases are often cases of deliberate and intentional",,,
misrepresentation, but it is well-settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a",,,
defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of,,,
Passing Off (1995 Edition, at p. 3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing off.",,,
Likelihood of damage is sufficient. The same learned author states that the defendant's state of mind is wholly irrelevant to the existence of the cause,,,
of action for passing off (ibid, paras 4.20 and 7.15). As to how the injunctions granted by the Court would shape depends on the facts and",,,
circumstances of each case. Where a defendant has imitated or adopted that plaintiff's distinctive trade mark or business name, the order may be an",,,
absolute injunction that he would not use or carry on business under that name.(Kerly, ibid, para 16.97)"".",,,
In another decision of the Supreme Court in the case of Ramdev Food Products Ltd. vs. Arvindhbhai Rambhai Patel & Ors., reported at",,,
MANU/SC/3725/2006 : 2006 (8) SCC 726, the Supreme Court has observed that the test for determining deceptive similarity in an infringement action",,,
would be the same as in the case of a passing off action. The Court observed that although the defendants might not be using the actual trademark of,,,
the plaintiff, the get up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off could be proved. It was held:- ""The",,,
law does not permit any only to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services,,,
belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The,,,
reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or",,,
intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of,,,
diverting the customers and clients of someone else to himself and thereby resulting in injury."" 42. The function of a trade mark is to distinguish the",,,
goods of one person from others. As was said by UPJOHN, J., ""A man infringes the mark of another if he seizes upon some essential feature of the",,,
plaintiff's mark. That essential feature may be ascertained by the eye or by the ear in this sense, that goods bearing that mark may be likely to become",,,
known by a certain name: (See de Cordova & Others v. Vick Chemical Co. (1951), 68 R.P.C. 103 at p. 105). Furthermore evidence is admissible to",,,
establish what is or has become an essential feature, but evidence is not essential if the Court feels satisfied on inspection in coming to the conclusion",,,
that some particular feature is a distinguishing feature of the Mark allegedly infringed"". (Cluett Peabody & Co. Inc. Vs. McIntyre Hogg Marsh & Co.",,,
Ld.; 1958 RPC at 3510) 43. A trade mark is undoubtedly a visual device; but it well-established law that the ascertainment of an essential feature is,,,
not to be by ocular test alone. Since words can form part, or indeed the whole, of a mark, it is impossible to exclude consideration of the sound or",,,
significance of those words. Thus it has long been accepted that, if a word forming part of a mark has come in trade to use to identify the goods of the",,,
owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader, for confusion is likely to",,,
result. It is sufficient to refer to the words of Lord Cranworth L.C., in Seixo v. Provezende (1866 LR 1 Ch. 192) 'If the goods of a manufacturer have,",,,
from the mark or device he has used, become known in the market by a particular name, I think that the adoption by a rival trader of any mark which",,,
will cause his goods to bear the same name in the market, may be as much a violation of the rights of that rival as the actual copy of his device'. The",,,
likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of,,,
error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under",,,
such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered",,,
rather by general impressions or by some significant detail than by any photographic recollection of the whole"". 44. The function of the trade marks is",,,
to identify the source of manufacture of goods. It is an indicia of origin. In the market the chief value of the trade mark is its power to stimulate sales.,,,
In law, the fundamental theory upon which the interest in the trade mark is protected is that a trade mark identifies the goods coming from a particular",,,
source, and that an infringing designation tends to divert customer from that source by falsely representing that other goods come from it. (See Ellora",,,
Industries v. Banarasi Dass gupta; MANU/DE/0174/1979 : AIR 1980 Del 254). 45. The passing off rights are superior to the rights conferred by,,,
registration. In this regard reference may be made to S. Syed Mohidden vs. P. Solochana Bai reported at MANU/SC/0576/2015 : (2016) 2 SCC 683,,,
in which it is stated: ""31.1. Traditionally, passing off in common law is for protection of goodwill in the business against misrepresentation caused in",,,
considered to be a right the course of trade and for prevention of resultant damage on account of the said misrepresentation. The three ingredients of,,,
passing off are goodwill, misrepresentation and damage. These ingredients are considered to be classical trinity under the law of passing off as per the",,,
speech of Lord Oliver laid down in Reckitt & Colman Products Ltd. vs. Borden Inc., MANU/UKHL/0012/1990 : (1990) 1 WLR 491: (1990) 1 All ER",,,
873 (HL) Which is more popularly known as 'Jif Lemon' case wherein Lord Oliver reduced the five guidelines laid out by Lord Diplock in Erven,,,
Warnink Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd., MANU/UKHL/0030/1979 : 1979 AC 731 at p. 742: (1979) 3 WLR 68: (1979) Z2",,,
All ER 927 (HL) to three elements (1) goodwill owned by a trader (2) misrepresentation, and (3) damage to goodwill. Thus the passing off action is",,,
essentially an action in deceit where the common law rule is that no person is entitled to carry on his or her business on pretext that the said business,,,
is of that of another. This Court has given its imprimatur to the above principle in Laxmikant V. Patel vs. Chetanbhai Shah, MANU/SC/0763/2001 :",,,
(2002) 3 SCC 65. 31.2 . The applicability of the said principle can be seen as to which proprietor has generated the goodwill by way of use of the,,,
mark/name in the business. The use of the mark/carrying on business under the name confers the rights in favour of the person and generates,,,
goodwill in the market. Accordingly, the latter user of the mark/name or in the business cannot misrepresent his business as that of business of the",,,
prior right holder. That is the reason why essentially the prior user is considered to be superior than that of any other rights. Consequently the,,,
examination of rights in common law which are bases on goodwill, misrepresentation and damage are independent to that of registered rights. The",,,
mere fact that both prior user and subsequent user are registered proprietors are irrelevant for the purposes of examining who generated the goodwill,,,
first in the market and whether the latter user is causing misrepresentation in the course of trade and damaging the goodwill and reputation of the prior,,,
right holder/former user. That is the additional reasoning that the statutory rights must pave the way for common law rights of passing off. 32. Thirdly,",,,
it is also recognised principle in common law jurisdiction that passing off right is broader remedy than that of infringement. This is due to the reason,,,
that the passing off doctrine operates on the general principle that no person is entitled to represent his or her business as business of other person.,,,
The said action in deceit is maintainable for diverse reasons other than that of registered rights which are allocated rights under the Act. The,,,
authorities of other common law jurisdictions like England more specifically Kerly's Law of Trade Marks and Trade Names, 14th Edition Thomson,",,,
Sweet & Maxwell South Asian Edition recognises the principle that where trade mark action fails, passing off action may still succeed on the same",,,
evidence. This has been explained by the learned author by observing the following: ""15-033. A claimant may fail to make out a case of infringement",,,
of a trade mark for various reasons and may yet show that by imitating the mark claimed as a trade mark, or otherwise, the defendant has done what",,,
is calculated to pass off his goods as those of the claimant. A claim in passing off has generally been added as a second string to actions for,,,
infringement, and has on occasion succeeded where the claim for infringement has failed.""",,,
vii. The Applicant relied on Marico Limited Vs. Mr. Mukesh Kumar Kedia, CS(COMM) 1569/2016, Delhi High Court, Hon’ble Mr. Justice",,,
Manmohan - Paragraphs 52 â€" 55 which reads as follows - “52. With regard to the issue of infringement and passing off in colour combination,",,,
this Court is of the view that the plaintiff is not claiming monopoly over a single colour inasmuch as the plaintiff’s bottle is not only blue in colour,,,
but it also contains amongst others a coconut tree, a broken coconut device, a flag which has a dark blue background and certain descriptions written",,,
in white font. Consequently, the plaintiff is not claiming exclusivity in blue colour as a stand alone factor, but in a combination of factors, which",,,
includes the blue colour. 53. In the present case, the get-up is not only novel, but distinctive and acts as a source identifier, even though it consists of a",,,
combination of commonly used parts. From the huge turnover certified by the Chartered Accountant in Annual Accounts as well as due to continuous,,,
use over a long period of time, it seems prima facie that plaintiff’s packaging is exclusively associated with the plaintiff and the products bearing",,,
the plaintiff’s trade dress are recognized by the public as being sourced from the plaintiff and from no one else. 54. As far as the defendant’s,,,
argument that the colour blue is common to the trade and/or the plaintiff has not taken legal action against such similar infringers, this Court is of the",,,
view that the defendants have not been able to prima facie prove that the said „infringers‟ had significant business turnover or they posed a threat,,,
to plaintiff’s distinctiveness. No sale figures of third parties using the blue colour bottles have been placed on record by the defendant.,,,
Consequently, this Court at this stage cannot presume extensive use of the blue colour by third parties. 55. This Court is of the view that the plaintiff is",,,
not expected to sue all small type infringers who may not be affecting the plaintiff’s business. The Supreme Court in National Bell Vs. Metal,,,
Goods reported in AIR 1971 SC 898 has held that a proprietor of a trademark need not take action against an infringer who does not cause prejudice,,,
to its distinctiveness. In Express Bottlers Services Pvt. Ltd. Vs. Pepsi Inc. & Others reported in 1989 (7) PTC 14 it has been held as under: ....To,,,
establish the plea of common use, the use by other persons should be shown to be substantial. In the present case, there is no evidence regarding the",,,
extent of the trade carried on by the alleged infringers or their respective position in the trade. If the proprietor of the mark is expected to pursue each,,,
and every insignificant infringer to save his mark, the business will come to a standstill. Because there may be occasion when the malicious persons,",,,
just to harass the proprietor may use his mark by way of pinpricks....,,,
The mere use of the name is irrelevant because a registered proprietor is not expected to go on filing suits or proceedings against infringers who are of,,,
no consequence.... Mere delay in taking action against the infringers is not sufficient to hold that the registered proprietor has lost the mark,,,
intentionally unless it is positively proved that delay was due to intentional abandonment of the right over the registered mark. This Court is inclined to,,,
accept the submissions of the respondent No. 1 on this point....The respondent No. 1 did not lose its mark by not proceeding against insignificant,,,
infringers â€,,,
viii. The Applicant has relied upon Metropol India Pvt. Ltd. v. Praveen Industries India, MANU/DE/0832/1997, Delhi High Court, Ho’nable",,,
Devinder Gupta & Ho’nable Kripa Shankar Acharya, Paragraphs 26 â€" 29 which read as follows “26. The appeal Courtin Slazenger & Sons",,,
v. Feltham & Co., 6 Rpc 531 observed: ""ONE must exercise one's common sense, and, if you are driven to the conclusion that what is intended to be",,,
done is to deceive if possible, I do not think it is stretching the imagination very much to credit the man with occasional success or possible success.",,,
Why should we be astute to say that think it is stretching the imagination very much to credit the man with occasional success or possible success.,,,
Why should we be astute to say that?. 27. In another decision Munday v. Carey, 22 Rpc 273 it was held that ""...where you see dishonesty, then even",,,
though the similarity were less than it is here, you ought, I think, to pay great attention to the items of similarity, and less to the items of dissimilarity.""",,,
In Harrods Limited v. Harrodian School Limited, 1996 Rpc 697 it was held that the deception is the gist of the tort of passing off and it is not",,,
necessary for a plaintiff to establish that the defendant consciously intended to deceive the public if that is the probable result of his conduct,",,,
nevertheless, the question why the defendant chose to adopt a particular name or get up is always highly relevant. It is a question which calls for an",,,
answer. 29. Learned Single Judge, thus, in the impugned order rightly remarked that it was for the defendant to have shown as to how and in what",,,
manner it had shown the said photographs on the label of the product and how the word Cleanzo had been coined, since the word Cleanzo is not",,,
available in the dictionary. Prima facie the plaintiff was the prior user of the mark. The defendant started using the same much later. There being no,,,
answer to the question, the clarification ought not to have been issued. In these circumstances, the plaintiff's appeal deserves to be allowed and that of",,,
the defendant's deserves rejection.â€,,,
The Applicant thus prayed for the removal of the impugned mark from the Registry.,,,
RESPONDENT NO.1’S REPLY:,,,
The Respondent No.1 appeared and filed its Counter Statement and denied all the allegations, contentions, statements, averments and claims of the",,,
Applicant and further stated that a great hurry is being exhibited by Applicant to see the disposal of this Rectification Application for reasons best,,,
known to them. The Applicant has taken upon itself to mulct the business of this Respondent No.1 even in spite of a huge difference between both the,,,
labels either phonetically or visually and for the purpose is completely misusing the provisions of the Trade Marks Act 1999.,,,
The Respondent No.1 submitted that the contentions raised by the Applicant more particularly on the ground of Infringement of Trademark, Trade",,,
Dress or any other allegation is completely false, and the entire rectification is being filed to hurt the business of this Respondent. While such",,,
contentions can be raised only before the Hon’ble Civil Court.,,,
The Respondent No.1 submitted that he is a leading wholesale and retails oil trading merchant distributing his products being refined sunflower oil,,,
under various brands being GOODDAY, FREEDAY, HAPPYDAY and FUNDAY and had honestly coined and adopted a composite mark which is",,,
unique and distinguishable being . The Respondent No.1 submitted that the mark is capable of being distinguished and adopted to be distinguished,,,
among such similar products available in the market.,,,
The Respondent No.1 had been in the business for past 2 years and has garnered great reputation for his Marks, especially FREEDAY, amongst",,,
the purchasing public as well as the sphere of business and Respondent’s product is sold in and around Vijayawada. The Respondent stated that,,,
he had been using this mark Freeday for the products being refined Sun flower oil since 2018; subsequently in order to secure statutory rights for his,,,
brand Freeday applied for Registration and aftersuccessfully prosecuting the same was successfully granted a Registration under Application 3830617,,,
under class 29.,,,
The Respondent No.1 stated that the Applicant herein has suppressed a very important material fact that his Application Registered under,,,
1885635 for the relevant mark is not the exact mark that is being used by him on the product packaging. The said Registered mark is“,,,
 â€and the actual mark used is,,,
“ â€.,,,
The Respondent No.1 submitted as being very pertinent to note that the Logo registered by the Applicant is in Black and White with the word,,,
Freedom at the bottom and a Sunflower at the top. While this is so they compare this Respondent’s Mark with their existing Applications which,,,
are not registered as yet in their name, since the Prior User and Validity has been questioned by other Manufactures. This Respondent also disputes",,,
the fact that the labels mentioned in the Applications are being used since the day the Application under 1885635 has been used. It is further submitted,,,
that at Para 1 in their own Rectification Application they have stated “the petitioner in or above the year 2010 made certain changes in the,,,
distinctive freedom Trade Dress. The Applications that has been filed and Registered under the Prior User from 10-11-2009 is an Application filed for,,,
a Trademark and not for a Trade Dress and hence not using of the said Mark in the subsequent labels amounts to abandonment of the Mark. This,,,
Abandonment for more than Five Years, which squarely falls under Section 47 of the Trade Marks Act 1999 and this Respondent is being advised to",,,
challenge the Registration by filing a Rectification. To this extent the Applicant has approached this Hon’ble Board with unclean hands.,,,
The Respondent No.1 submitted that the Applicant cannot rely on a mark that is not in use and even the subsequent labels have been opposed by,,,
the Third parties on various grounds and till such opposition is squarely settled the Applicant cannot rely upon the labels even as a common law Right.,,,
It is submitted with great respect that this Hon’ble Board does not have Jurisdiction to deal with a Rectification which is filed under the colour of,,,
Infringement or Passing off, and by raising such plea this Applicant is misusing the provisions of the Act as well as misleading this Hon’ble Board.",,,
The Respondent No.1 submitted that while things stand in the position they are for the Applicant with Regard to the subsequent labels that is all of,,,
them being Opposed, any comparison can only be between the Applicant’s Registered mark under Trademark No. 1885635 as against the mark",,,
under Application 3830617 of this Respondent No.1. When this is done there cannot be an argument of confusion or deceptive similarity raised by the,,,
Applicant.,,,
The Respondent No.1 submitted that when the usage of the Applicant Marks and the usage of this Respondent No.1 Mark is spoken of, it can",,,
only be spoken of within the parameters of Infringement and / or Passing which squarely falls before the Civil Court and definitely not before this,,,
Hon’ble Board. Thus, the entire Rectification Application is mis-conceived and hence no Prima Facie case has been established by the Applicant",,,
S. No,Case,"Page
Number of
the
Citations.",Remarks
1,"M/s Lakme Ltd vs
Subash Trading [(1996)
64 DLT 251]",8-13,"In this case, the plaintiff was selling cosmetic
products under the trademark name ""Lakme
and the defendant was also selling similar
products under the name ""LikeMe"". A case of
trademark infringement was thus filed by the
plaintiff. The High Court held that the names
were not deceptively similar and are two
separate marks with difference in their
spelling and appearance
2.,"SM Dyechem Ltd. v.
Cadbury (India) Ltd
[(2000) 5 SCC 573]","14-27
.","In this case, plaintiff started a business of
chips and wafers under t h e trademark
PIKNIK"". Later, defendant started business
of chocolates under the name ""PICNIC"". A
suit alleging trademark infringement was filed
thereafter. The Court held the marks not to be
deceptively similar as they are different in
appearance and composition of words.
3.,"Cadila Health Care Ltd.
v. Cadila
Pharmaceutical Ltd
[(2001) 5 SCC 73]",28-42,"In this case Supreme Court laid down certain
guidelines for adjudication of matters
concerning deceptive similarity of trademarks.
In this case, the parties to the case were the
successors of the Cadila group. The dispute
arose on the issue of selling of a medicine by
the defendant under the name ""Falcitab"" which
was similar to the name of a medicine which
was being manufactured by the plaintiff under
the name ""Falcigo"". Both the drugs were used
to cure the same disease and hence, the
contention was that the defendant's brand name
is creating confusion between the consumers.
Injunction was demanded by the plaintiff. As a
defense, the defendant claimed that the prefix
Falci"" has been derived from the name of the
disease, i.e., Falcipharam
malaria.
,,,"The court observed that because of the
diversified population o f the country and
varying infrastructure of the medical profession
due to language, urban-rural divides, etc. and
with the probabilities of medical negligence, it is
important that confusion of marks should be
strictly prevented in pharmaceuticals and drugs.
The Court, thereby, held that being medical
products more precaution and care must be
taken and the names of the brand, therefore,
being phonetically similar shall amount to
being deceptively similar.
4.,"M/S Allied Blenders
and Distillers Pvt. Ltd.
v. Govind Yadav & Anr
[CS (COMM)
819/2018]",43-47,"In this case, plaintiff claimed that the
defendant's trademark ""Fauji"" is defectively
similar with that of the plaintiff's, that is,
Officer's Choice"". The claim was made on
the ground of similarity of idea in making of the
trademarks as the word ""Fauji"" is a Hindi
translation of a military officer. Adding to it,
both the parties are in the business of alcoholic
beverages. Further, packaging of both the
bottles are also alike.
Though, trade dress plays a significant role in
deciding the cases of trademark infringement,
in this case, the court held that there is no
deceptive similarity between the trademarks
Officer's Choice"" and ""Fauji"" and whilst the
expression “officer†referred to “a
person in powerâ€, the term “Fauji†meant
a simple soldier. Hence, dismissed the
trademark
infringement suit.
5.,"A. HabeeburRaliman
Sons v. Rajender
Trading [2010 (43)
PTC 578 (Mad)]",48-67,"The Plaintiff's trade mark is ""S.
BEEDIES/S. MARK JADI BEEDIES"",
whereas the Defendant's trade mark is ""SRI
RAGHAVENDERAÂ Â SWAMY
BEEDIES/R.S. JADI BEEDIES"". The
trademarks of the Plaintiff and the Defendant
are phonetically different and there is no
similarity while pronouncing the trade marks. In
such circumstances, the Plaintiff is not entitled
to get an order of interim injunction.
6.,"Schering Corporation
v. Alkem Laboratories
Ltd. [FAO (OS) 313 of
2008]",68-98,"It was held that there was no similarity
between ‘Temodal‘ and ‘Temodar‘
since the prefix derived from the name of the
chemical compound Temozolomide to arrive
‘Temodal‘ and ‘Temodar‘ on the
one hand
and ‘Temoget‘ and ‘Temokem‘ on
the other.
7.,"P.M. Diesels Ltd. vs
Daimler Chrysler Ag
[2005 (31) PTC 275
Reg]",99-107,"The registration of the trademark BANZO
was allowed for diesel engines, electrical
motors, centrifugal pumps and parts which was
opposed by the owners of trademark BENZ,
MERCEDES BENZ because
BANZO was in use since 1988 and was not
deceptively similar to opponent’s mark.
8.,"E.l. Du Pont De
Nemours & Co. of
U S A v. Gemini
Distilleries Ltd. [2004
PTC (28) 663 (IPAB)]",108-112,"DU PONT was allowed for whiskey even
though it was similar to that of DU PONT
because the opponents failed to establish trans-
border reputation for the evidence to show the
use of mark
9.,"M/s Nandhini Delux v.
M/s Karnataka Co-
operative Milk
Producers Federation
Ltd. [CIVIL APPEAL
NOS. 2937-2942 OF
2018]",113-135,"where due to difference in the variety of
products traded and difference in visuals of
both companies the Court opined trademarks
‘NANDINIa nd NANDHINI’t o be
non- infringing.
10,"Schering corporation
and Ors. V. Getwell life
sciences India Pvt.",136-149,"Supreme Court  held   Â
that     the      mark
―Temodal /Temodar and Temoget are not
phonetically and in idea similar. These marks
,"Ltd.[2008 (37) PTC
487 (Del.)]",,"are Portmanteaus and can be used for the
trademark. The price range of both the
products are different; also the product is only
given to the practitioner who are highly
qualified and well known about the product in
present era. Hence there is no chance of the
confusion
11.,"Swagath Motels Pvt
Ltd v. Hotel Swagath(
CMA 1246/2018)",150-167,"In the opinion of the Hon’ble Telangana
High
Court, on a comparison of the device containing
letters 'H' and 'S' in a circle with the words
'Hotel Swagath' below it (registered by the
respondent) with the trade name ""Hotel
Swagath Grand"" (adopted by the appellant for
its business), there is no deceptive similarity
between the two prima facie; and consequently,
the respondent is not entitled to any interim
injunction against the
appellant.
2.,"Micronix India v. Mr.
J. R. Kapoor [2003 (26)
PTC 593 De]",21-26,"The short controversy involved in this suit is
whether the trademark ‘MICROTEL’
used by the defendant is deceptively similar to the
trade mark ‘MICRONIX’o f which the
plaintiff is the registered proprietor. As regards
the labels they are visually different. In other
words there is not even remotest possibility of
confusion much less by unwary and illiterate
customers as the plaintiff mark MICRONIXis
written in black and red in slimmer letters which
elongated below and above t h e name
MICRONIXw hile on t h e other hand
MICROTELi s written in bold letters in red
colour without any design. So, no infringement.
3.,"Marico Ltd. v. Agro
Tech Foods Ltd. [CS (OS) No
1590/2009 ]","27-56
.","Plaintiff claimed to have coined the mark ‘Low
Absorb’, in relation to products having the
quality of absorbing ‘less’ oil, and obtained
registration of trademarks ‘Losorb’ and
‘Lo- sorb’. Defendant objected to the
same
contending that the expression ‘Low Absorb
,,,"Technology’ was being used by it as
descriptive of the character and quality of its
product. Further, plaintiff had withdrawn the
registration application for the mark ‘Low
Absorb’, since it was only descriptive. Held,
‘Low Absorb’ in its various forms,
including the mark registered by the plaintiff or
otherwise as used by the defendant, was in reality
only descriptive of the characteristic of the
product,
i.e. absorbing ‘less oil’. Held, on facts,
whether by removing the letter ‘W’ from
the expression ‘Low Absorb’ amounted to
coining of mark ‘Losorb’, was open to
grave doubt. Thus, the defendant was entitled to
challenge plaintiff's use of such descriptive mark
as trademark at the interlocutory stage
4.,"Rupee   Â
Gains    Tele-
Times  Pvt     Â
Ltd          Â
v.
Rupeea Times [1995 (35) DRJ
30]",57-60,"Dr. Vinod Kumar, owner, publisher, editor and
proprietor of “RUPEE TIMEâS€ from using
the trademark “RUPEE TIMES†in respect
of journal, newspaper or any other trademark
which is identical with and/or deceptively similar
to the trademark “RUPEE GAIN†allegedly
belonging to the plaintiff. RUPEEi s not a
distinctive word. Everything connected with trade
and business is described by money, finances and
rupees. Injunction against use of such word in the
title of a financial paper cannot be granted.
5.,"BHOLE BABA Milk
Food   IndustriesL imited
Vs. Parul Food Specialities (P)
Limited [ILR (2011) Delhi 317]",61-64,"Suit for Infringement of Trademarks & Passing
Off in respect of the mark “KRISHNA†for
Ghee and Other Dairy products. Infringement of
the plaintiffs registered trademark
“KRISHNA†by defendant by using
“PARUL's LORD KRISHNA†as its trade
mark. Held, that the word “KRISHNA†is a
common name, name of a god/diety that is Lord
KRISHNA and is being used by many across the
dairy industry. The said mark KRISHNA is
descriptive of the Hindu and his association with
milk products, hence cannot be an exclusive
proprietary right of any one person. Plaintiff has
f a ile d t o establish its secondary
meaning/distinctiveness for the said mark
“KRISHNAâ€
6.,"IHHR Hospitality
Private Limited Vs Bestec
India Private Limited [2012
SCC Online Del 2713/ AI
2013 Del 32]","65-71
h
R","The appellant is the registered proprietor of the
service mark ‘ANANDA’a s also is the
registered proprietor of the same word as a
trademark pertaining t o ayurvedic and herbal
preparations, toiletries, bread, biscuits and
cakes.The grievance pertains to the respondent
marketing apartments in a Group Housing Gated
Complex under the name: ‘Bestech Park View
Ananda’. The appellant has chosen to obtain
registration of a word, as its trademark, which is
not only public juris but is a word which is
strongly associated by the large number of people
in India as indicative of, in relation to an abode: a
place of peace. Being the registered proprietor of
the trademark ‘Ananda’, the appellant
would have to show, prima facie evidence that so
strong in the public mind is the mark linked, with
reference t o it having achieved secondary
distinctiveness, that upon seeing mark
‘Ananda’ in relation to an abode, it
immediately brings to mind the appellant. Now,
sales of Rs. 200 crores spread over 10 years
would prima facie be insufficient evidence to
establish that the word ‘Ananda’, in
relation to an abode, has acquired such secondary
meaning that an ordinary consumer
2.,DHARA (1988),,
3.,"ACTIVE FUTUR
(1990)",E,
4.,"MADHURI ACTIPR
(1995)",O,
5.,FORTUNE (2000),,
6.,"NATURE FRES
(2012)",H,
S.
No.",BRAND,IMAGE OF THE PRODUCT,
1.,SUNDROP (1989),,
,,NATURE FRESH (2012),
,,SUNRICH (2014),
,,ACTIVE FUTURE (1990),
,,DALDA (1937),
,,"MADHURI ACTIPR
(1995)",
,,FORTUNE (2000),
,,Taste Drops,
,,ACTIVE FUTURE (1990),
,,SUNRICH (2014),
,,SHALIMAR (1945),
,,DALDA (1937),
,,NARURE FRES (2012),
S.No.,Label,,
Choice
1",,,
Choice
2",,,
Choice
3",,,
Choice
4",,,
Applicant’s Registered Mark,Respondent No.1’s Registered Mark,,
,,,
There shall be no orders as to the Costs.,,,