Full Judgment Text
IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on: 05.08.2024
+ FAO (COMM) 54/2022, CM APPL. 18087/2022 & CM
APPL.43572/2022
M/S. GANESH GOURI INDUSTRIES
AND ORS .....Appellants
versus
R. C. PLASTO TANKS AND PIPES
PVT. LTD. ..... Respondent
Advocates who appeared in this case:
For the Appellants : Mr. Salim A. Inamdar, Mr. Modassir
Husain Khan & Ms. Shruti Kapur,
Advocates.
For the Respondent : Mr. J. Sai Deepak, Mr. Ajay Amitabh
Suman & Mr. Shravan Kumar Bansal,
Advocates.
CORAM
HON’BLE MR. JUSTICE VIBHU BAKHRU
HON’BLE MR. JUSTICE AMIT MAHAJAN
JUDGMENT
Signature Not Verified
Digitally Signed
By:HARMINDER KAUR
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AMIT MAHAJAN, J
1. The appellants have filed the present appeal – FAO(COMM)
54/2022, impugning an order dated 18.02.2022 (hereafter ‘the
impugned order’ ), passed by the learned Commercial Court, whereby
the application filed by the respondent (hereafter ‘ Plasto ’) under
Order 39 Rule 1 and 2 of Code of Civil Procedure, 1908 (‘ CPC ’) was
allowed and the appellants application under Order 39 Rule 4 of the
CPC was dismissed, thereby restraining the appellants from selling,
soliciting, exporting, displaying, advertising, directly or indirectly or
dealing in any manner in the impugned label/ trade dress colour
scheme of the impugned marks.
2. Appellant no. 1 (hereafter ‘ Ganesh Gouri ’) is a partnership
firm engaged in the business of manufacturing an array of goods
including plastic tanks, water tanks, pipes and fittings and other allied
and cognate goods. The appellants claim to have adopted the
trademark/label “AQUA PLAST”, “GAURI AQUA PLAST” in
respect of the said goods including plastic tanks, water tanks, pipes
and fittings etc.
3. Plasto is part of the Plasto Group and claims to have adopted
the trademark “PLASTO” for its business in the year 1981.
4. Plasto had filed a suit before the learned Commercial Court
[being CS (COMM) 545/2021], inter alia, seeking permanent
injunction, restraining infringement, passing off, delivery up and
rendition of accounts etc., against Ganesh Gouri from using in any
manner impugned label/ device/ colour scheme and
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in relation to their impugned goods and business of
water storage tanks or any other trademark/label/artistic feature which
is or which may be identical or deceptively similar to Plasto’s
trademark / label / colour scheme being .
5. The learned Commercial Court by order dated 12.01.2022,
passed an ex-parte injunction and appointed a Local Commissioner to
seize goods and hand over the same to Plasto on superdari.
6. There is a pre-existing history to the dispute. Plasto had on an
earlier occasion instituted a suit being Trade Mark Suit No. 3/2018,
before the Court of the Ad Hoc District Judge of the District Court,
Nagpur for declaration, permanent and mandatory injunction, delivery
up, damages etc., under the provisions of the Trademarks Act, 1999
(hereafter ‘TM Act’ ) claiming that Ganesh Gouri’s Trademark / label
being is deceptively similar to their Trademark / label
being . The said suit was settled and a compromise
decree was passed in terms of the settlement on 30.11.2018.
7. In terms of the settlement, one of the agreed terms was that
Ganesh Gouri will not use the mark ‘PLASTO’ or Plasto’s tagline
/slogan ‘PLASTO HAI TOH GUARANTEE HAI’ or any other similar
mark on any of their products, which are similar to Plasto’s goods.
8. In the present case the ex-parte ad-interim injunction was
confirmed by the impugned order.
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9. Ganesh Gouri claims to have started using the label
“AQUA PLAST” upon receipt of Search Certificate/No
Objection of Copyright issued by the Trades Mark Registry on
26.07.2021.
10. Plasto filed a petition C.O.(COMM.IPD-CR) 868/2022, under
Section 50 of the Copyrights Act, 1957 seeking cancellation of Ganesh
Gouri’s copyright registration – A-142047/2022, on the ground that
the said registration was in conflict with the terms of the settlement
dated 30.11.2018, entered into between the parties in the Nagpur Suit.
The said petition was dismissed by the learned Single Judge of this
Court by order dated 20.02.2023.
11. The competing marks/ labels are reproduced as under:
The Impugned Order
12. The learned Commercial Court held that the earlier suit of the
plaintiff in Nagpur was separate and had no bearing on the subject
suit. The learned judge emphasized that the prayer clauses in both the
suits were entirely different, and that the present suit arises on the
basis of a fresh cause of action.
13. Consequently, the learned Commercial Court held that it was
not incumbent on the plaintiff to file an execution petition or contempt
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petition in the same Court which had disposed of the first case. The
Court held that it is not binding upon the parties to file all subsequent
cases in the same Court, which had earlier disposed of the first case.
14. The learned Commercial Court rejected the contention raised by
Ganesh Gouri on the ground of forum shopping and held that there is a
fresh cause of action for filing the present case and thus, it cannot be
said that present suit is continuity to the earlier suit. It also held that it
cannot be said that Plasto / plaintiff has suppressed the fact that it did
not get any ad-interim injunction during the pendency of Nagpur suit
since the said suit was a separate suit and has no bearing on the
present case.
15. The learned Commercial Court held that since Plasto / plaintiff
had not explicitly pleaded that the impugned mark was registered, it
could not be stated that Plasto / plaintiff had falsely claimed
registration of the mark in the plaint by using the symbol ‘R’ with the
impugned mark to mislead the Court.
16. The learned Commercial Court held that there was no doubt
with respect to the its jurisdiction in the relation suit, since there was
sufficient material on record to show the activities of Plasto/plaintiff
within its jurisdiction and also the sale of Ganesh Gouri/defendant’s
goods through the e-commerce website, Indiamart.
17. The learned Commercial Court took note of the discrepancy in
the dates from which the defendant claimed the usage of the mark in
question in their affidavits filed in compliance of an earlier order dated
13.01.2021, their application under Order 39 Rule 4 of the CPC and
their counter affidavit.
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Submissions
18. The learned Counsel for Ganesh Gouri submitted that it had
sought No Objection Certificate from the Trademark’s Registry qua
their artistic work in the labels and had received the same on
26.07.2021, whereas Plasto only received their No objection
Certificate on 30.07.2021 qua their marks , which was after the receipt
of No objection Certificate by Ganesh Gouri.
19. He submitted that the learned Commercial Court has erred in
dismissing its application under Order 39 Rule 4 of the CPC and has
failed to appreciate the facts while passing the impugned order.
20. He submitted that the present suit is nothing but an attempt of
Forum shopping since the present Suit is inextricably linked to the
prior Nagpur suit. It is submitted that present suit is the second suit
between the parties in relation to the alleged trademark infringement.
The first suit was filed in April 2018, by Plasto before the Nagpur
District Court alleging infringement of its trademark ‘PLASTO’ and
its tagline ‘PLASTO HAIN TOH GUARANTEE HAIN’ against
Ganesh Gouri on account of their use of the mark ‘AQUA PLAST’,
along with the tagline ‘NAAM HI GUARANTEE MAIN’.
21. He submitted that the first Suit was settled vide settlement
agreement dated 30.11.2018 wherein it was specifically recorded that
Plasto will not object to the use of the mark ‘AQUA PLAST’ or any
other mark consisting of the word ‘PLAST’ by Ganesh Gouri.
However, Ganesh Gouri was to only refrain from using the mark
‘PLASTO’ or the taglines similar to that of ‘PLASTO HAIN TOH
GUARANTEE HAIN’ or ‘NAAM HI GUARANTEE MAIN’.
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22. He submitted that having obtained a compromise decree from
the Court in Nagpur, both parties being registered and carrying on
business in Nagpur, Plasto’s choice of Delhi for filing its suit is ex
facie an instance of forum shopping.
23. He submitted that Plasto chose to file the present suit in Delhi
and not in Nagpur, since it had failed to get any ad-interim or interim
injunction from the said court. The reliance is placed on the
judgements – Black Diamond Track Parts Private Limited and
Others v. Black Diamond Motors Private Limited : 2021 SCC
OnLine Del 2630 and Cipla v. Union of India : (2017) 5 SCC 262 .
24. He submitted that Plasto invoked the jurisdiction of the learned
Commercial Court under Section 62(2) of the Copyrights Act, 1958
and Section 134(2) of the TM Act on the ground that it is carrying its
business within the territorial limits of the concerned Commercial
Court on account of its sales through e-commerce websites and
through three authorised dealers based within the jurisdiction of the
learned Commercial Court.
25. He submitted that the total amount of e-commerce sales within
the territorial jurisdiction of the learned Commercial Court is only
shown as ₹1500/- and the two invoices issued by the dealers have no
stamp / signatures and name of the buyers. He submitted that there is
no averment in the plaint with respect to the physical sales within the
local limits of the learned Commercial Court.
26. He submitted that the learned Commercial Court did not
appreciate the judgement of the Hon’ble Apex Court in the case of
Union of India and Ors. v. Cipla Ltd. & Anr., (2017) 5 SCC 262 , on
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the issue of forum shopping, for filing a suit with a similar cause of
action, with some minor changes.
27. He submitted that despite apparent forum shopping and the
contravened jurisdictional facts pleaded for invoking the jurisdiction
of the learned Commercial Court, the learned Commercial Court
upheld its jurisdiction to entertain the suit and has also granted interim
injunction in favour of Plasto/ plaintiff.
28. He submitted that Ganesh Gouri has suffered a lot since the
learned Commercial Court while passing the ex parte ad-interim
injunction appointed a local commissioner to seize the goods at the
factory in Nagpur and directed that the goods be handed over to Plasto
on Superdari . He submitted that given the volume of goods involved,
the local commissioner simply sealed the entire factory of Ganesh
Gouri bringing the production of all goods, irrespective of whether
they were infringing Plasto's alleged rights, to a complete halt for 10
days and the same was only released after the intervention of this
Hon’ble Court by order dated 28.01.2022 passed in FAO (COMM)
18/2022.
29. He submitted that the impugned order was passed reiterating
and confirming the ad-interim injunction granted on 12.01.2022
suggesting pre-determination. He submitted that the learned
Commercial Court while passing the impugned order has completely
ignored the dicta laid down in Indian Performing Rights Society Ltd.
v. Sanjay Dalia & Anr : 2014 SCC Online Del 2031 . He submitted
that the alleged sales of Plasto even if taken on the demurrer, are
quantitively inadequate to support conclusion that Plasto carries on its
business within the territorial jurisdiction of the learned Commercial
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Court. He submitted that the same also fails the test laid down in the
Dhodha House v. S.K. Maingi : (2006) 9 SCC 41 .
30. He submitted that the learned Commercial Court has
mechanically relied upon the judgement of WWE Inc. v. M/s Reshma
Collection 2014 SCC OnLine Del 2031 , since in the facts of the
present case Plasto has its registered Office in India, which is very
unlike the facts of judgement of WWE Inc. v. M/s Reshma Collection
( supra ). He submitted that Plasto / plaintiff in the present case has no
subordinate/ branch office within the territorial limits of the learned
Commercial Court and therefore the reliance placed on the judgement
of WWE Inc. v. M/s Reshma Collection ( supra ) is misplaced in view
of the subsequent judgements passed in cases of Indian Performing
Rights Society Ltd. v. Sanjay Dalia & Anr ( supra ), Ultra Home
Construction Pvt. Ltd. v. Purushottam Kumar Chaubey & Ors.
(2016) 227 DLT 320 and Bigtree Entertainment Pvt Ltd. v. Saturday
Sunday Media Internet & Ors. (2015) SCC OnLine Del 142(17) .
31. He submitted that a bare comparison of the competing labels,
would show that the labels / marks are distinctive in nature. It is
submitted that Plasto had supressed the fact that Ganesh Gouri had
already obtained a No objection Certificate (‘ NOC ’) from the
copyright board at the time of the filing of the suit and since Ganesh
Gouri had a valid registration, there cannot be a prima facie case of
any infringement.
32. The learned Counsel for Plasto submitted that Ganesh Gouri’s
contention with respect to the forum shopping is baseless since Plasto
had disclosed the factum of the suit filed in Nagpur in the plaint filed
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before the learned Commercial Court and that, the said suit was
decreed in favour of Plasto.
33. He submitted that the present suit was filed before the learned
Commercial Court based on a fresh cause of action, since the mark/
label in question is different from the mark/label which was subject
matter of challenge before the Nagpur Court.
34. He submitted that the jurisdiction of the learned Commercial
Court was rightly invoked since Ganesh Gouri had been making sales
and supplying its goods with the impugned mark/ label to the dealers
and distributors in the market located within the jurisdiction of the
learned Commercial Court.
35. He submitted that while deciding the issue of jurisdiction, the
Court has to see only the averments made in the plaint and, in the
present case, there is a specific averment made in the plaint conferring
the territorial jurisdiction on the learned Commercial Court. He
submitted that, in the plaint, it was also claimed that the authorized
dealers of Plasto are carrying their business within the jurisdiction of
the learned Commercial Court.
36. He submitted that Plasto is also carrying its business through
various e-commerce websites/ online platforms like amazon.com,
trade India, India Mart, and through its own interactive website.
37. He submitted that Ganesh Gouri itself had applied for the
registration of the impugned mark ‘GOURI AQUAPLAST’ in
identical label/ traderess bearing no. 4833690 in Class I and 4833691
in Class XI of the TM Act and, therefore, the argument that the
traderess/ label being used by Ganesh Gouri is common to trade is
baseless.
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38. He submitted that Plasto is the prior adopter, prior user and
prior registered proprietor of the label / copyright. He submitted that
Plasto has placed on record various documents in order to show its
prior adoption, use and its registrations. He submitted that as per the
own admission of Ganesh Gouri, they are the subsequent adopter of
the impugned Trade Dress / Colour Combination.
39. He submitted that Ganesh Gouri itself has made contradictory
claim of adoption and user of the impugned Label/Colour
Combination. He submitted that in the Affidavit dated 15.01.2021,
Ganesh Gouri, claimed that it had adopted the impugned Label/Colour
Combination in July/August 2021, whereas in earlier Appeal FAO
(Comm) No.18 of 2022, Ganesh Gouri had contended that it had
adopted the impugned label in August 2019. He submitted that in the
suit proceedings, Ganesh Gouri had appeared, and willingly gave an
undertaking that it would not use the impugned label/trade
dress/colour combination.
Conclusion
Maintainability of suit in Delhi
40. Ganesh Gouri contended that since Plasto had earlier filed a suit
in Nagpur therefore the present suit in not maintainable in Delhi and
the learned Trial Court has erred in entertaining the suit.
41. It is submitted that since both Ganesh Gouri and Plasto have
their registered offices in Nagpur and Plasto has shown sales only
through its dealers and online through its website.
42. It is the submission of Ganesh Gouri that the present suit is
inextricably linked to the earlier suit filed before the Court at Nagpur
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and thus the present suit by Plasto is only an act of forum shopping in
order to obtain a favourable relief.
43. We are unable to agree with the contention of the Appellants.
44. It is trite that whenever there is a fresh cause of action, a fresh
suit would lie. In the case of Allied Blenders and Distillers Pvt. Ltd. v.
Amit Dahanukar : (2019) 261 DLT 692 , wherein there were two suits
– one before the Bombay High Court and a subsequent suit before the
Delhi High Court – while the issue of infringement of a registered
trademark was not raised before the Bombay High Court in the first
suit, therefore, the second suit was maintainable before the Delhi High
Court, yet the Delhi High Court showed deference to the orders in the
first suit and rejected the injunction application.
45. However, it is pertinent to mention that in Allied Blenders and
Distillers Pvt. Ltd. v. Amit Dahanukar ( supra ) case, the appeal
against the interim injunction was pending before the Bombay High
Court. The Delhi High Court, thus, in deference to the orders of the
Bombay High Court, rejected the injunction application.
46. In the present case, however, not only does the earlier suit
before the Court at Nagpur pertain to a different cause of action but
the same has also been settled. A compromise decree was passed in
terms of the settlement on 30.11.2018. As per the settlement, it was
agreed that Ganesh Gouri will not use the mark ‘PLASTO’ or Plasto’s
tagline /slogan ‘PLASTO HAI TOH GUARANTEE HAI’ or any other
mark similar to Plasto on any of their products which are similar to
that of Plasto’s. By way of the present suit before the Commercial
Court, Plasto is seeking permanent injunction, restraining
infringement, passing off, delivery up, and rendition of accounts etc.,
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against Ganesh Gouri’s from using in any manner in impugned label/
device/ colour scheme and in
relation to their impugned goods and business of water storage tanks
or any other trademark/label/artistic feature which is or which may be
identical or deceptively similar to Plasto’s mark. The present suit,
therefore, is based on a fresh cause of action.
47. The competing marks for which the suit in Nagpur was filed are
reproduced as under :
48. The competing marks for which the present suit is filed are
reproduced as under:
49. It is the contention of Ganesh Gouri that Plasto should have
filed the present suit before the Courts at Nagpur, where the earlier
suit was instituted. However, we are of the opinion that merely
because a Court has considered and decided the earlier suit does not
mean that all subsequent cases too would necessarily have to be filed
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before the same court. A fresh cause of action entitles a party to
institute proceedings and both the parties are free to proceed against
each other in any Court of law that has jurisdiction to hear such
dispute. It is also pertinent to note that Plasto had disclosed the fact of
filing earlier suit before the Court at Nagpur in the present suit before
the learned Commercial Court and had also placed the settlement deed
on record.
50. It is true that in a given case, the test of Safe Distance Rule may
be applicable if after being interdicted from using a mark, the
defendant makes only insubstantial changes to technically comply
with the order. In such case, the party in whose favour the injunction is
granted can institute proceedings for violation of the order. However,
the Safe Distance Rule does not bar the plaintiff from filing a fresh
suit.
51. In view of the same, this Court is of the opinion that the present
proceedings cannot be held to be barred. In that light, we are in
agreement with the view of the learned Commercial Court and do not
find any ground to interfere with the same.
52. The other question to be decided is whether the Commercial
Court at Delhi has the territorial jurisdiction to hear the suit.
53. A Division Bench of this Court in Kamdhenu Dreamz and
Another v. Dina Iron and Steel Ltd : 2024 SCC OnLine Del 670
while placing reliance on Allied Blenders and Distillers Pvt. Ltd. v.
Amit Dahanukar ( supra ) – reiterated that the considerations regarding
territorial jurisdiction in the context of Order VII Rule 10 of the CPC
are different from those under Order XXXIX Rules 1 & 2 of the CPC
as under:
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“23. We must make it clear that the considerations with
regard to territorial jurisdiction in the context of Order VII
Rule 10, CPC are entirely different from those in the context
of an application under Order XXXIX Rules 1 & 2, CPC or in
the context of an issue framed in the suit with regard to
territorial jurisdiction. While in the backdrop of Order VII
Rule 10, it is only the averments contained in the plaint that
have to be seen in the case of an application for the grant of
interim relief under Order XXXIX Rules 1&2, the contentions
of the defendant in the reply to this application as also those
contained in the written statement are required to be
examined to arrive at a prima facie view. So, while in the case
of an Order VII Rule 10 CPC application, the issue of
jurisdiction is decided on the basis of what is stated in the
plaint and, that too, after assuming the statements to be
correct, an application under Order XXXIX Rules 1&2, CPC
requires the examination of the contentions of the defendants
that may be contained in the written statement and/or the
reply to the application as also the other material which may
be placed by the defendant before the court. Here, there is no
question of considering the pleas of the plaintiff by way of a
demurrer. Furthermore, the standards would be higher when
an issue with regard to territorial jurisdiction is to be finally
decided in the course of trial of the suit. Thus, while for the
purposes of an examination under Order VII Rule 10, CPC,
the court may come to the conclusion that it has territorial
jurisdiction, this would not come in the way of the defendant
in raising a question as to territorial jurisdiction, both when
the issue of temporary injunction under Order XXXIX Rules 1
& 2, CPC is being considered and when an issue as to
territorial jurisdiction is being decided in the course of trial
of the suit.”
54. Further, a Division Bench of this Court in WWE Inc. v. M/s
Reshma Collection ( supra ) observed as under:
21. “……Because of the advancements in technology and the
rapid growth of new models of conducting business over the
internet, it is possible for an entity to have a virtual presence
in a place which is located at a distance from the place where
it has a physical presence. The availability of transactions
through the website at a particular place is virtually the same
thing as a seller having shops in that place in the physical
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world. Let us assume for the sake of argument that the
appellant/plaintiff had a shop in Delhi from where it sold its
various goods and services. In that case, it could not be
denied that the plaintiff carried on business in Delhi. This is
apart from the fact that the appellant/plaintiff may also have
been regarded as having voluntarily resided in Delhi. When
the shop in the ‘physical sense’ is replaced by the ‘virtual’
shop because of the advancement of technology, in our view,
it cannot be said that the appellant/plaintiff would not carry
on business in Delhi.”
55. Further, in V. Guard Industries Ltd. v. Sukan Raj Jain and
Another : 2021 SCC OnLine Del 3625 , the learned Single Judge of
this Court while dealing with the question of jurisdiction with respect
to Section 20 of the CPC and Section 134 of the TM Act observed as
under:
“36. If under Section 20 CPC, jurisdiction of the Court is
attracted by virtue of location of the defendant's place of
business or from where the defendant is carrying on its
business or working for gain, under Section 134 of the Trade
Marks Act, it is the plaintiff's office location or from where he
is carrying on business, is a material factor. However, in IPRS
(SC) (Supra), the occurrence of cause of action has been read
into Section 134 of the Trade Marks Act, as a determining
factor, even though not spelt out in the language, on the lines
of Section 20 CPC. Therefore, if some part of cause of action
has arisen at a place where the plaintiff has its
branch/subordinate office, Courts at that place will have
jurisdiction to entertain a suit against infringement and
passing off. In other words, the occurrence of cause of action
or any part thereof, at a place, is held to be a determining
factor, both under Section 20 CPC, and Section 134 of the
Trade Marks Act, to attract jurisdiction of the court at such
place.”
56. It is well settled that while deciding the issue of jurisdiction in
an application under Order XXXIX Rules 1 & 2 of the CPC, the
standard would be higher in as much as an examination of contentions
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of defendants in the written statement and/or reply to the application
as well as other material placed before the Court would also be
required.
57. Further, given the advancement in technology, having a virtual
business presence in a jurisdiction would be akin to having a physical
presence, as was also observed by a Division Bench of this Court in
WWE Inc. v. M/s Reshma Collection (supra). Plasto / Plaintiff has
specifically pleaded that its goods are manufactured in India and are
sold, marketed, distributed all across the country, and are also
exported world-wide through its interactive website and other e-
commerce platforms. Further, in the plaint, it is also stated that Plasto /
Plaintiff is selling its goods, within the territorial jurisdiction of the
learned Commercial Court, through its various dealers / distributors
namely, M/s Sunita Sanitary, A. Narula Sanitary Traders, and M/s
Bajaj Traders. Given the specific averment that Plasto has physical
and virtual business presence in the jurisdiction of the Commercial
Court through e-commerce websites online platforms like
amazon.com, trade India, India Mart, and through its own interactive
website coupled with the averments made in the plaint regarding
jurisdiction, we do not find any reason to interfere with the impugned
order of the learned Commercial Court in this regard.
Deceptive Similarity
58. The learned Commercial Court in the impugned order has noted
that all though Plasto has not been able to make a case for passing off,
but had made out a case for grant of interim injunction in respect of
infringement of its copyrights in artistic work involved in its registered
trademark/ device/ label /trade dress / colour scheme.
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59. The infringement action is governed by Section 29 of the TM
Act. In terms thereof, the plaintiff alleging infringement has to
establish that the mark used by the defendant is identical or similar to
its registered trademark and is being used on goods or services which
are also identical or similar. It is presumed that if the identical or
similar mark is used on identical or similar goods, the same is likely to
cause confusion on the part of consumer public.
60. Section 29 of the TM Act reads as under:
“ 29. 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
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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 particular, 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 any 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. ”
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61. It is clear that to establish a case of infringement of a registered
trademark under Section 29(2) of the TM Act, it is to be established
that the mark used by the defendant is not only identical or similar to
the registered trademark but also that the goods and services, on which
the defendant is using its mark, are also identical or similar, which is
likely to cause confusion on the part of the general public or is likely
to have an association with the registered trademark.
62. In the present case, it is not in dispute that the competing marks
are used on the similar products, that are, water tanks and other
plumbing allied goods. The very fact that the impugned marks are
being used on similar types of goods is not sufficient to presume that
there is likelihood of confusion unless the marks are identical or
similar.
63. It is settled that in any action for the infringement of the
trademarks, the question of similarity of the two marks is to be
addressed first. The Hon’ble Apex Court, in the case of Amritdhara
Pharmacy v. Satya Deo Gupta : AIR 1963 SC 449 , has held as under:
“You must take the two words. You must judge them, both by
their look and by their sound. You must consider the goods to
which they are to be applied. You must consider the nature
and kind of customer who would be likely to buy those goods.
In fact you must consider all the surrounding circumstances;
and you must further consider what is likely to happen if each
of those trade-marks is used in a normal way as a trade mark
for the goods of the respective owners of the marks.”
64. In relation to the infringement actions where the competing
marks are composite logos, it has been held that the mark has to be
seen as a whole. The overall mark without minutely comparing the
similarities or dissimilarities has to be considered. The test, therefore,
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when the competing marks are words, is to some extent different when
the marks are logos. In the case of logos, the test is that the rival mark
should bear a very close resemblance when seen as a whole.
Therefore, the test is not that one feature of the logo is similar or
identical to one feature of the competing mark but the mark as a whole
should be similar or identical. The Court has to consider the overall
presentation of the two marks.
65. It has also been held in several decisions that it is not right to
take a portion of the mark and compare it with the corresponding
portion of the competing mark. The appropriate test is whether the
totality of the alleged infringing trademark is such, that it is likely to
cause deception or confusion in the minds of the persons accustomed
to the existing trademark.
66. It is also settled that the question whether there is any deceptive
similarity between the two marks is to be determined by examining
the marks as a whole. The conflicting marks are to be compared by
looking at them in its entirety, rather than breaking the marks into
parts for a comparison. It is though permissible, to give importance to
the dominant feature of the composite mark. The examination of the
dominant part of the trademark for the purpose comparing it with the
conflicting mark is for determining whether the marks are deceptively
similar when viewed as a whole. Therefore, it is not permissible to
hold a mark as deceptively similar by examining a portion of the mark
and comparing it with the portion of another mark when the composite
marks, when viewed as a whole, are dissimilar.
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67. This Court in a recent decision in the case of Vasundhra
Jewellers Pvt. Ltd. v. Kirat Vinodbhai Jadvani & Anr. : 2022:Delhi
High Court:4255-DB , has held as under:
“31. In Pinto v. Badman: (8) RPC (181), Lord Esher had
observed that “the truth is that the label does not consist of
each particular part of it, but consists of the combination of
them all”. In Registrar of Trade Marks v. Ashok Chandra
Rakhit Ltd: AIR 1955 SC 558 , the Supreme Court had
referred to the aforesaid observation and held as under:-
“14. It is true that where a distinctive label is registered as a
whole, such registration cannot possibly give any exclusive
statutory right to the proprietor of the trade mark to the use of
any particular word or name contained therein apart from the
mark as a whole…..”
32. It is well settled that a composite trademark or label
trademark is not required to be dissected to determine
whether there is any deceptive similarity with another
trademark. The question whether there is any deceptive
similarity between two trademarks has to be ascertained by
examining the marks in question as a whole. In South India
Beverages India Private Limited v. General Mills Marketing
Inc: 2014 SCC OnLine Del 1953 , the Division Bench of this
Court had explained the ‘anti-dissection rule’ in some detail.
The Court reiterated that “conflicting composite marks are to
be compared by looking at them as a whole, rather than
breaking the marks up into their components parts for
comparison”. However, the Court had also observed that
“while a mark is to be considered in entirety, yet it is
impermissible to accord more or less importance or
‘dominance’ to a particular portion or element of a mark in
cases of composite marks”.
33. Having stated the above, it is also necessary to bear in
mind that examining the dominant part of the trademark for
comparing it with the conflicting mark is solely for the
purpose of determining whether competing marks are
deceptively similar when viewed as a whole. It is, thus, not
permissible to hold that two competing marks are deceptively
similar by examining a portion of one mark and comparing it
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with the portion of another mark, if the composite marks
viewed as a whole are dissimilar. It is relevant to refer to the
text from McCarthy on Trademarks and Unfair Competition ,
which explains the said principle as under:-
“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 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 conflicting 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 from it as a whole, not from its elements separated
and considered in detail. For this reason it should be
considered in its 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 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
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are more important that minor points of difference. A court
should not engage in “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. 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 its totality. It has been held
to be a violation of the antidissection rule to 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.”
( emphasis supplied )
68. The question is to be approached from the point of view of a
man of average intelligence and imperfect recollection for whom the
overall structural and phonetic similarity of the two marks is likely to
cause confusion.
69. There is no dispute that the question as to whether there is any
deceptive similarity between the competing marks, which are not
identical, is to be determined by comparing the competing marks as a
whole to discern that any similarity in the mark(s) in question is likely
to cause confusion or deceive a reasonable man [Ref: Kaviraj Pandit
Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories :
(1965) 1 SCR 737 ].
70. At the same time, it is permissible to determine a prominent
essential feature of the mark to see whether the same is deceptively
similar to the prominent essential feature of the competing mark. It is
though not clear from the impugned order, but as argued by the
learned counsel for Plasto, the word ‘PLAST’ appearing in both the
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marks is considered as an essential and significant feature of the mark
of Plasto / plaintiff. However, the learned Commercial Court, in our
opinion, erred in holding that the impugned mark/ label of Ganesh
Gouri / defendant as a whole is deceptively similar to the essential
feature of the plaintiff’s / Plasto’s mark.
71. In the present case, the injunction passed by the learned
Commercial Court against use of the labels of Ganesh Gouri, being –
and , for being similar to that of
the label of Plasto, being – , is completely
misplaced.
72. In the present case, as discussed above, the learned Commercial
Court fell into error by granting an injunction in favour of Plasto
merely on the basis of certain common factors even though the labels
of the parties are clearly distinctive in nature when seen as a whole.
73. On a bare perusal of the labels, it can be said that there is no
commonality in the labels apart from the background colour being
blue and the font colour being white and the appearance of the word
“PLAST” and “PLASTO” in the labels.
74. The labels, when compared as whole, can be said to be
distinctive of each other as the mark of Ganesh Gouri bears the mark
of ‘G’ with a hand symbol as its prominent mark whereas the label of
Plasto has the word – ‘PLASTO’ in a particular font as its prominent
feature.
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75. As noted above, the only common feature in both the works is
the word “PLAST” which is admittedly a derivative of the word
Plastic. Ganesh Gouri uses a prefix “AQUA” with “PLAST”. The
mark also contains a graphical representation or alphabet ‘G’ which is
styled as “Okay” in a hand gesture enclosed with three wavering lines
indicating liquid. It also shows the word “Gouri” and a Tagline
“NAAM HI KAAFI HAI” in Hindi with additional words being
“Tanks, Pipe and Fitting”. The same cannot be called as a colourable
imitation or substantial reproduction of the mark. .
76. The appellant is not using the word ‘PLAST’ as a sole mark but
the same is accompanied with other essential features. It is also not
denied that pursuant to the settlement arrived between the parties in
the earlier suit filed before the Nagpur Court, Plasto /plaintiff had
undertaken not to take any objection for the registration of any mark,
logo or word by the appellant consisting of the word ‘PLAST’ or the
use of the mark ‘AQUA PLAST’. The relevant terms of the settlement
dated 21.02.2019 are set out below:
“d. The Plaintiffs agrees that it would have no issue if the
Defendant wishes to use the mark "AQUA PLAST"
device/logo and/or wither word per se or in any other
representation which is neither identical nor deceptively
similar to the said trademark/label of the plaintiff in the
course of its business.
e. That the plaintiff undertakes not to take any objection for
Registration of any mark logo/ word by defendant consisting
of the word "PLAST" if the same is not infringing the logo/
word/ mark of the plaintiff in any whatsoever, and if any such
objection is already raised than the same shall be withdrawn
by the plaintiff forthwith.”
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77. Thus, when admittedly Plasto / Respondent had no objection on
the appellant / Ganesh Gouri using the word ‘PLAST’ or ‘AQUA
PLAST’ in its logo / mark, no interim injunction can be sought
alleging infringement when the said words are used in conjunction
with other features.
78. The other ground on which the objection in regard to use of the
impugned label by the appellant is taken – is the background colour
being used in both the competing marks, that is, Sky Blue and font
colour being White. A person cannot claim monopoly on use of a
colour unless, the same used in a particular configuration with
attended features has acquired secondary meaning and serves as a
source identifier for the purpose of protection and registration. The
marks with ‘Blue’ colour background are used in relation to water
tanks. It is a common knowledge that ‘Blue’ is a colour often
associated with water.
79. The test in the present case would be to see the mark as a whole
and as noted above, the only common feature in both the marks is the
appearance of the word ‘PLAST’ which admittedly, is a derivative of
‘plastic’ – of which the products of both the parties are made of. The
mark, therefore, when seen as a whole even with the common
background colour, cannot be considered as similar so as to cause
confusion in the mind of the consumer. Moreover, no evidence has
been placed on record to prima facie indicate that the consumer public
has been confused in any manner by the use of the impugned label by
the appellant. The same would be tested after evidence is led.
80. The pictorial device used by Ganesh Gouri, therefore, prima
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facie , cannot be held to be similar to Plasto’s pictorial device. Thus,
prima facie , Plasto’s trademark is not infringed under the provisions
of Section 29 of the TM Act.
81. There is no cavil as to the principles laid down by the Hon’ble
Courts in the judgments relied upon by the learned Counsel for the
respondent. The same, however, in our opinion, are not applicable to
the facts of the present case. The judgements are passed in relation to
the marks which are in dispute in the said cases, however, it is well
settled that the trademark is to be looked at its entirety.
82. It is well settled that an Appellate Court would normally not
interfere with the prima facie view of the learned Trial Court unless it
finds that the Trial Court has exercised the jurisdiction arbitrarily,
capriciously or in ignorance of the settled principle of law. In this
case, we find that the learned Commercial Court has erred in finding
that the competing marks / labels are similar and Plasto’s trademarks
are infringed merely on the on the basis of appearance of parts of
those marks, without considering the overall commercial impression
of the competing marks.
83. It is true that the Court, while hearing an appeal against an
interim order ought not to disturb the prima facie findings, however,
the Appellate Court can substitute its own discretion when it is found
that the Trial Court has exercised the jurisdiction arbitrarily,
capriciously or in ignorance of settled principles of law relating to
grant of injunction. In the present case, the learned Commercial
Court, in our opinion, has not followed the settled principles of law
relating to the grant of injunction and the law in relation to
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infringement when it relates to a mark / label containing a pictorial
device.
84. In view of the above, we are of the opinion that the learned
Commercial Court erred in holding that Ganesh Gouri’s mark / label is
deceptively similar to that of Plasto’s mark / label, by comparing
features of a part of a device mark without reviewing the overall
commercial impression of the impugned mark(s) / label(s).
85. In view of the above, the impugned judgment is set aside.
86. We make it clear that the observations made in the present order
are only, prima facie , for the purpose of deciding the present appeal
against the impugned order passed in the application under Order
XXXIX Rule 39 (1) & (2) of the CPC.
AMIT MAHAJAN, J
VIBHU BAKHRU, J
AUGUST 05, 2024
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