Minda Spectrum Advisory Limited & Ors. vs. Minda Oils India Pvt Ltd & Ors.

2022:DHC:3804

$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
th
% Date of decision: 20 September, 2022
+ CS(COMM) 51/2022
MINDA SPECTRUM ADVISORY LIMITED & ORS.
..... Plaintiffs
Through: Mr. Chander M. Lall, Senior
Advocate with Ms. Bitika Sharma, Mr. Luv
Virmani, Ms. Aadya Chawla, Ms. Manmeet Kaur
Sareen and Ms. Ananya Chug, Advocates.

versus

MINDA OILS INDIA PVT LTD & ORS. ..... Defendants
Through: Mr. Shiv Charan Garg, Mr. Bharat
Bansal, Mr. Rohil Kumar, Mr. Imran Khan and
Ms. Pooja Bansal, Advocates.
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
JUDGEMENT
JYOTI SINGH, J.
I.A. 1134/2022 (under Order 39 Rules 1 and 2 CPC, by Plaintiffs) and
I.A. 6456/2022 (under Order 39 Rule 4 CPC, by Defendants)
1. This judgment shall dispose of an application filed on behalf of the
Plaintiffs under Order 39 Rules 1 and 2 CPC and an application preferred on
behalf of the Defendants, for vacation of ex parte ad-interim injunction
granted vide order dated 20.01.2022, under Order 39 Rule 4 CPC.
2. Present suit has been filed by the Plaintiffs seeking a decree of
permanent injunction restraining the Defendants and/or all others acting on
their behalf from infringing the trademarks of the Plaintiffs as well as the
copyright in the labels/artistic works and passing off, along with other reliefs
of damages, delivery up, etc.
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3. On 20.01.2022, this Court granted ex parte ad-interim injunction in
favour of the Plaintiffs and against the Defendants, as sought for.
Upon being served the Defendants challenged the said order before the
Division Bench in FAO(OS)(COMM) 68/2022. The appeal was disposed of
vide order dated 23.03.2022, giving liberty to the Defendants to file an
application for vacation/modification of the interim injunction order, leaving
the rights and contentions of all parties open and clarifying that the Court
had not commented on the merits of the controversy. Pursuant to the liberty
granted by the Division Bench, Defendants preferred the aforementioned
application, which is being disposed of by the present judgment.
4. Case of the Plaintiffs is that they are part of the well-known and
reputed ‘Minda Group of Companies’ which have wide-spread and enviable
presence in the automobile and spare parts sector. Plaintiffs are leading
manufacturers of automotive components including but not limited to
industrial oils, lubricants, engine oils, etc. and transact business under the
house mark/trade name MINDA and its variants and derivatives such as
/SPARK MINDA and
/
/UNO
MINDA. Plaintiffs group was founded in the year 1958 by Late Shri Shadi
Lal Minda under the flagship name MINDA as a proprietorship. With
passing years, business was organised by different companies under the
trademark MINDA and its formatives, adopted in the year 2011. Thus the
continuous, extensive and uninterrupted use of the mark MINDA as the
Group’s trade name dates back to the year 1958 and forms an inseparable
and essential part of its trade name.
5. It is pleaded that the word mark MINDA and its derivatives are
registered in various classes including device marks UNO MINDA and
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SPARK MINDA, which are the trademarks relevant to the present suit.
The registrations are valid and subsisting and Plaintiffs have diligently
protected their Intellectual Property Rights by initiating opposition
proceedings against any infringing mark. Plaintiff No. 1 has filed
applications for inclusion of trademarks MINDA and UNO MINDA in the
list of well-known trademarks while Plaintiff No. 3 has filed applications for
inclusion of mark SPARK MINDA and the applications are pending before
the Trade Marks Registry. Plaintiffs’ Group of Companies has also obtained
trademarks registrations in other countries such as Malaysia, Indonesia,
Philippines, etc. There are pending applications for registration of certain
MINDA formative marks in various classes.
6. It is further pleaded that Minda Group is one of the leading
manufacturers of automotive components such as alternate fuel systems,
air-brakes, fuel caps, wheel covers, air ducts and washer bottle, etc., which
are the products of UNO MINDA Group and Electronic and Mechanical
Security Systems, brake shoes, clutch plates, wiper blades, sensors,
industrial oils, lubricants, engine oils etc. which are the products
manufactured and sold by the SPARK MINDA Group, catering to major
vehicle manufactures in India and overseas, such as BMW, Honda, Ford,
Escorts, TATA, Mahindra, etc.
7. It is stated that as on 31.03.2021 the annual turnover of Plaintiffs’
Group of Companies was Rs.8,741 crores. The Group has more than 104
plants globally and 25 R&D centres across India. Plaintiffs’ Group
comprises 40 Group Companies and 15 global technology partners, with a
workforce of more than 26,000. Some of the invoices on record are in the
name of Minda Automotive Solutions Limited, which has amalgamated with
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Plaintiff No. 5 vide an order dated 19.07.2019, passed by the NCLT.
Plaintiffs have spent considerable amounts over the past 3 decades on
promotional expenditure and advertisements. Success of the products under
MINDA formative marks is borne out from the steadily increasing sales
figures. In the year 2009, the sales were to the tune of Rs.934.15 crores,
which have since increased to Rs.5989.44 crores in the year 2021. Plaintiffs
have several prestigious awards to their credit as detailed in the plaint.
8. It is averred that by virtue of such extensive use, recognition and vast
publicity, the trademarks MINDA, SPARK MINDA and UNO MINDA
have become distinctive of and are exclusively identified and associated
with the Plaintiffs. The said trademarks have been protected by this Court in
a number of proceedings filed earlier by the Plaintiffs.
9. Defendant No. 1 is stated to be a company incorporated under the
Companies Act, 2013 under the name Minda Oils India Private Limited and
claims to be in the business of manufacturing and distribution of automobile
lubricants and grease. Defendant No. 2 is also a Company claiming to be in
the same business under the impugned trademark MINDA UTO and
Defendant No. 3 is a proprietorship entity involved in the business of
distribution of lubricants and grease under the impugned mark MINDA
UTO and is in the process of entering into the business of lubricants under
impugned mark SPARK MINDA. Defendants also operate a website
www.sparkmindalube.com .
10. It is pleaded that the suit was filed after the Plaintiffs came across the
products of the Defendants bearing the impugned mark MINDA UTO, being
sold on www.indiamart.com . It was also found by the Plaintiffs that
Defendant No. 3 had applied for registration of the trademarks MINDAUTO
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and SPARKMINDA and other formatives of MINDA in various classes, in
order to ride on the goodwill and reputation of the Plaintiffs and barring
MINDAUTO, which is registered in class 04, other trademarks have been
opposed/objected to. Maliciously, Defendant No. 3 filed an application for
registration of the impugned mark MINDAUTO by removing the space
between the words ‘MINDA’ and ‘UTO’ so that the Registrar is unable to
locate a conflicting prior trademark while generating the examination search
reports. Opposition filed by Plaintiff No. 3 is pending.
11. It is further averred that since Plaintiffs No. 2 and 3 had filed
oppositions and could not find any proof of the usage of the impugned
marks in February 2020, it was assumed that Defendant No. 3 had not
commenced usage of the impugned marks until it was learnt that the
products are being sold under the impugned marks MINDAUTO.
12. It is pleaded that Defendants’ actions constitute infringement of the
trademarks and copyright in the artistic work as well as passing off and
unfair competition and therefore, the interim injunction order be confirmed.
13. Written statement has been filed on behalf of the Defendants and it
was submitted by learned counsel for the Defendants, during the course of
arguments that the written statement as well as the application under Order
39 Rule 4 be read in reply to the application under Order 39 Rules 1 and 2
CPC.
14. Learned counsel for the Defendants strenuously urged that
the injunction order passed by this Court be vacated on the following
grounds:-
a. Defendants No. 1 and 2 are in the business of manufacturing
and distribution of automobile lubricants and grease.
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Defendant No. 2 runs its business under the trademark
MINDAUTO. Defendant No. 3 is a proprietorship entity and is
in the business of distribution of lubricants and grease under the
mark MINDAUTO. Defendants No. 1 and 3 are sister concerns
of Defendant No. 2 and collectively operate the website
www.sparkmindalube.com .

b. Defendants have applied for registration of various trademarks
such as ‘UNOMINDA’, ‘SPARKMINDA’, ‘MINDAUTO
PLUS’,’MINDAUTO MAX’ and ‘MINDA UTO PRO’ in class
04 for lubricants, industrial oil, grease, engine and brake oil.
Defendant No. 3 has applied for registration of UNOMINDA
on 29.09.2019 in class 04 for lubricants, etc. and has obtained
registration for the mark MINDAUTO, applied for under
application dated 03.07.2018 in class 04 for lubricants,
industrial oil and grease, while applications for other
trademarks under classes 01 and 04 are pending registrations.
Defendant No. 3 has been continuously using the trademark
SPARKMINDA since 2019 and has gathered considerable
popularity in the market with considerable sales.
c. Since Defendants have registration for the trademark
MINDAUTO, Plaintiffs cannot seek relief of infringement with
respect to the goods for which the trademark is registered, in
view of the provisions of Section 28(3) of the Trade Marks Act,
1999 (hereinafter referred to as the ‘Act’).
d. Defendants are not using the word MINDA alone and have
used a suffix UTO with the said mark, while the Plaintiffs’
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trademark MINDA is with a prefix UNO. ‘UNO’ and ‘UTO’
are phonetically different and even from a visual perspective
the actual label/mark MINDAUTO is nowhere close to the
device mark of the Plaintiffs. The rival trademarks are
registered for goods falling in different classes and the nature of
goods is also different and thus, there can be no confusion or
association in the minds of the public and no case of
infringement is made out. Reliance was placed on the judgment
of the Supreme Court in Nandhini Deluxe v. Karnataka
Cooperative Milk Producers Federation Limited, (2018) 9
SCC 183 , more particularly, with respect to the observations
made by the Supreme Court that where not only the visual
appearance of the two marks is different but if they relate to
different products, it is difficult to imagine that an average man
of ordinary intelligence would associate the goods of the
Appellant with the Respondent. By way of an illustration, it
was contended that the trademark ‘Jaguar’ is a trademark of
two companies, where one deals in automobiles and the other in
sanitary fittings.
e. Even if the present suit is to be treated as a suit for passing off,
no case is made out against the Defendants, who are prior users
of the trademark MINDAUTO since the year 2018, in
class 04 for lubricants, industrial oils and grease. Plaintiffs
have, as per their own case, entered into the business of sale of
lubricants only in the year 2021 under the trademark SPARK
MINDA and no document has been placed on record by the
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Plaintiffs to show their sales in lubricants, industrial oil, etc.,
prior to the Defendants.
f. The total sales of Defendant No. 3 for financial years 2018-19
to 2021-22 have increased from Rs.3,49,56,195/- to
Rs.4,84,02,415/-, out of which the sales of products under the
trademark MINDAUTO have increased from Rs.24,46,933/- in
financial year 2018-19 to Rs.72,60,362/- in financial year
2021-22 and similarly the sales under the trademark
SPARKMINDA have nearly doubled in the financial year
2021-22. Defendants have spent considerable amount of money
in advertising their products.
g. Present suit is not maintainable as the trade name MINDA is a
common name and also the name of a village in District Nagaur
in Rajasthan and the forefathers of the Defendants belong to the
said village. Being a common name, no entity can be given a
monopoly or an exclusive right to use the same.
h. Nature of the businesses of the Plaintiffs and Defendants is
totally different inasmuch as Plaintiffs are in the business of
making and selling automobile spare parts while Defendants are
into sale of lubricants, industrial oils and grease.
i. Purpose of a trademark is to identify the source and avoid
confusion in the minds of the buyers. In the present case, since
both parties are manufacturing different products coupled with
the fact that Plaintiffs have not produced any material to show
that customers have been confused in the competing
trademarks, it is apparent that there is no likelihood of
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confusion in the minds of the purchasers. Reliance was placed
on the judgment in Sambhav Kapur v. British Indo German
Industrial Organics Private Ltd. and Ors., 2016 SCC OnLine
Del 6379 , wherein it was held that if it is found that the suit
does not disclose a cause for alleging passing off, on which the
relief is based, it can be dismissed at the threshold, merely by
looking at the pleadings and the documents filed by the
Plaintiff.
j. There are several other entities which have registrations in the
trade name MINDA, however, Plaintiffs have not raised any
objection against them. Illustratively, Trademarks such as
LUMINDA in class 35, MINDALUX, SIGNMINDA, GK
MINDA SOLAR and GK MINDA in class 11, and ABMINDA
in class 04 were cited by the Defendants. Even though
ABMINDA is registered in the same class as the Plaintiffs, no
objections have been raised.
15. Learned Senior Counsel appearing on behalf of the Plaintiffs raised
the following contentions and also refuted the submissions made on behalf
of the Defendants:-
a. Plaintiffs are registered proprietors, prior users and exclusive
owners of the brand name MINDA and its formative
trademarks. Use of any trademark which is identical or
deceptively similar to the said mark is in violation of the
coveted statutory and common law rights of the Plaintiffs.
The impugned marks/labels in the present case bear a high
degree of similarity with the Plaintiffs registered and prior used
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trademarks/labels MINDA,
/SPARK MINDA
and
/UNO MINDA. Apart from the identity with
the word MINDA, there is a high degree of visual and
conceptual similarity, owing to use of similar colour
combinations, font size, style of writing, etc. The colour
scheme in the competing marks is a combination of blue and
white with the words UNO and MINDA written in two separate
boxes and UNO in a white colour on a blue background in the
Plaintiffs’ mark, while UTO is in a white/blue colour on a
blue/white background. It is apparent that trademarks of the
Plaintiffs have been slavishly copied to show an association
with the Minda Group and encash on its goodwill. The
comparative table, as brought forth in the plaint, is as follows:-

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trademarks of the Plaintiffs that it is likely to deceive and cause
confusion in relation to the goods in respect of which Plaintiffs
trademarks are registered. The goods sold by the Defendants,
i.e., ‘lubricants, industrial oils and grease’ are identical to the
goods sold by the Plaintiffs’, i.e, engine oil. Further the goods
are also similar to the other goods sold by the Plaintiffs,
categorised as automobile parts, which specifically include fuel
systems, fuel hoses and canisters, being allied and cognate.
With the similarity in competing trademarks, identity/similarity
in goods and identical trade channels and consumer base, the
triple test stands satisfied and the likelihood of confusion
amongst a purchaser with average intelligence and imperfect
recollection, cannot be ruled out.
c. ‘MINDA’ is the surname of the founder of Minda Group of
Companies and Chairman of the UNO MINDA and SPARK
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MINDA Group of Companies and has been bonafidely adopted
by the Plaintiffs. In any case, no defence under Sections 12, 30
and 35 of the Act can be claimed by the Defendants, since the
trademarks of the Plaintiffs have acquired distinctiveness
through continuous, extensive and uninterrputed use over the
decades, giving rights to the Plaintiffs to restrain and enjoin any
third party from using identical or deceptively similar marks.
Per contra Defendants’, on the other hand, have given no
explanation to adopt the mark MINDA apart from a vague plea
that it is a name of a village where the forefathers lived. No
proof of association with the said village has been filed by the
Defendants and in any case it is not open to them to contend
that MINDA is a generic mark after they have themselves
applied for its registration in different forms. Reliance was
placed on the judgments in Automatic Electric Limited v. R.K.
Dhawan & Anr., 1999 SCC OnLine Del 27 and Anchor
Health and Beauty Care Pvt. Ltd. v. Procter & Gamble
Manufacturing (Tianjin) Co. Ltd. & Ors., 2014 SCC OnLine
Del 2968 .
d. Contention of the Defendants that their trademark MINDA
UTO is registered for goods in class 04 while Plaintiffs’
trademarks are not registered with respect to goods in class 04
and therefore, no infringement is made out, is misconceived. It
is a settled law that classification of goods and services adopted
by the Registry or the international classification is not the
determining factor for ascertaining the similarity of goods. Test
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of similarity has to be judged from a business and commercial
point of view and factors such as trade channels, nature of
goods and use of goods ought to be considered. Reliance was
placed on the judgments in Assam Roofing Ltd. & Anr. v. JSB
Cement LLP & Anr., 2015 SCC OnLine Cal 6581 and
Dharampal Premchand Ltd. v. M/S. Ganpati Wood Products,
2002 SCC OnLine Del 839 . The contention that rival goods are
disimilar and thus, the Plaintiffs have no case for alleging
infringement under Section 29 of the Act, is equally misplaced.
Section 29 (2)(b) of the Act clearly provides that a registered
trademark 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 its similarity to the
registered trademark and similarity of goods and services
covered by such registered trademark is likely to cause
confusion in the public or an association with the registered
trademark. It is settled that similarity of goods would include a
case where the impugned goods are cognate and allied to the
goods of a Plaintiff, for which the trademark is registered. In
the present case, there is no gainsaying that the lubricants,
industrial oils and grease sold by the Defendants are allied and
cognate to the goods of the Plaintiffs, which can be broadly
categorised as automobile spare parts.
e. Defendants by adopting a deceptively similar trademark for
identical/similar products in the course of trade are
misrepresenting to the public that their goods have an
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association with the Plaintiffs and are not only deceiving the
customers but are also causing irreparable damage and injury to
the immense reputation of the Plaintiffs and are thus guilty of
passing off.
f. Defendants are operating a website under the name and style
www.sparkmindalube.com and the use of the words
minda/spark minda indicates a fraudulent association with the
Plaintiffs. There is no credible justification for using the
domain name with the mark MINDA with such a close phonetic
and visual resemblance.
g. Plaintiffs’ marks consist of a collection of elements such as
colour, text, shape, colour combinations and constitute ‘artistic
work’ under Section 2(c) of the Copyright Act, 1957.
Plaintiffs have copyright registrations in the MINDA label as
well as the formative device marks and the blatant and
deliberate reproduction of the essential and prominent features
of the marks by the Defendants amounts to Copyright
infringement under Section 51(a)(i) of the said act.

16. I have heard learned Senior Counsel for the Plaintiffs and
learned counsel for the Defendants and examined their respective
contentions.
17. The controversy that needs examination in the present application
relates to the impugned trademarks/labels
and

and word marks MINDA UTO/SPARK MINDA. It is an admitted position
that Defendants do not have registration in the mark SPARK MINDA. A
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pictorial representation showing a comparison between the two competing
marks as brought forth in the plaint is as follows:-

18. Comparing the competing marks, leads to a prima facie conclusion
that the impugned mark is phonetically identical and structurally and
visually similar to the registered trademark of the Plaintiffs. Section 28 of
the Act gives to the registered proprietor of the trademark, if valid, subject to
other provisions of the Act, two valuable rights: (a) the exclusive right to the
use of the trademark in relation to the goods or services in respect of which
the trademark is registered and (b) to obtain relief in respect of
infringement of the trademark, in the manner provided by the Act.
Section 29 deals with infringement of registered trademarks and provides
that a registered trademark 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 on account of its identity with the registered
trademark and similarity of goods or services covered by such registered
trademark or its similarity to the registered trademark and identity or
similarity of the goods or its identity with the registered trademark and
identity of the goods, is likely to cause confusion on the part of the public or
have an association with the registered trademark. In Cadila Health Care
Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 , wherein the product
in question was medicine, sold under the brand name Falcitab and the
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competing mark was Falcigo, the Supreme Court formulated the following
tests:-
“16. Dealing once again with medicinal products, this Court
in F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner &
Co. (P) Ltd. [(1969) 2 SCC 716] had to consider whether the
word “Protovit” belonging to the appellant was similar to the
word “Dropovit” of the respondent. This Court, while
deciding the test to be applied, observed at pp. 720-21 as
follows: (SCC para 7)

“The test for comparison of the two word marks were
formulated by Lord Parker in Pianotist Co. Ltd.'s application
[(1906) 23 RPC 774] as follows:

‘You must take the two words. You must judge of 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. If, considering all those
circumstances, you come to the conclusion that there will
be a confusion, that is to say, not necessarily that one man
will be injured and the other will gain illicit benefit, but
that there will be a confusion in the mind of the public
which will lead to confusion in the goods — then you may
refuse the registration, or rather you must refuse the
registration in that case.’

It is necessary to apply both the visual and phonetic tests. In
Aristoc Ltd. v. Rysta Ltd. [62 RPC 65] the House of Lords was
considering the resemblance between the two words ‘Aristoc’
and ‘Rysta’. The view taken was that considering the way the
words were pronounced in English, the one was likely to be
mistaken for the other. Viscount Maugham cited the following
passage of Lord Justice Lukmoore in the Court of Appeal,
which passage, he said, he completely accepted as the correct
exposition of the law:

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‘The answer to the question whether the sound of one word
resembles too nearly the sound of another so as to bring
the former within the limits of Section 12 of the Trade
Marks Act, 1938, must nearly always depend on first
impression, for obviously a person who is familiar with
both words will neither be deceived nor confused. It is the
person who only knows the one word and has perhaps an
imperfect recollection of it who is likely to be deceived or
confused. Little assistance, therefore, is to be obtained
from a meticulous comparison of the two words, letter by
letter and syllable by syllable, pronounced with the clarity
to be expected from a teacher of elocution. The Court must
be careful to make allowance for imperfect recollection
and the effect of careless pronunciation and speech on the
part not only of the person seeking to buy under the trade
description, but also of the shop assistant ministering to
that person's wants.’

It is also important that the marks must be compared as
wholes. It is not right to take a portion of the word and say
that because that portion of the word differs from the
corresponding portion of the word in the other case there is no
sufficient similarity to cause confusion. The true test is
whether the totality of the proposed trade mark is such that it
is likely to cause deception or confusion or mistake in the
minds of persons accustomed to the existing trade mark. Thus
in Lavroma case [Tokalon Ltd. v. Davidson & Co., 32 RPC
133] Lord Johnston said:

‘… we are not bound to scan the words as we would in a
question of comparatio literarum. It is not a matter for
microscopic inspection, but to be taken from the general
and even casual point of view of a customer walking into a
shop.’

On the facts of that case this Court came to the conclusion that
taking into account all circumstances the words “Protovit”
and “Dropovit” were so dissimilar that there was no
reasonable probability of confusion between the words either
from visual or phonetic point of view.”

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19. In the aforesaid case, the Supreme Court also held that principle of
phonetic similarity cannot be jettisoned, even when the manner in which the
competing words are written, is different. In Amritdhara Pharmacy v. Satya
Deo Gupta, AIR 1963 SC 449 , the test of phonetic similarity was
applied by the Supreme Court in judging the two competing marks
‘AMRITDHARA’ and ‘LAKSHMANDHARA’. It would be useful to allude
to paras 6 and 7 of the judgment, which are extracted hereunder:-
“6. It will be noticed that the words used in the sections and
relevant for our purpose are ‘likely to deceive or cause
confusion’. The Act does not lay down any criteria for
determining what is likely to deceive or cause confusion.
Therefore, every case must depend on its own particular facts,
and the value of authorities lies not so much in the actual
decision as in the tests applied for determining what is likely to
deceive or cause confusion. On an application to register, the
Registrar or an opponent may object that the trade mark is not
registrable by reason of clause (a) of Section 8, or sub-section
(1) of Section 10, as in this case. In such a case the onus is on
the applicant to satisfy the Registrar that the trade mark
applied for is not likely to deceive or cause confusion. In cases
in which the tribunal considers that there is doubt as to
whether deception is likely, the application should be refused.
A trade mark is likely to deceive or cause confusion by its
resemblance to another already on the register if it is likely to
do so in the course of its legitimate use in a market where the
two marks are assumed to be in use by traders in that market.
In considering the matter, all the circumstances of the case
must be considered. As was observed by Parker, J. in Pianotist
Co.'s Application, Re [(1906) 23 RPC 774] which was also a
case of the comparison of two words—

‘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
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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.’ (p. 777)


For deceptive resemblance two important questions are: (1)
who are the persons whom the resemblance must be likely to
deceive or confuse, and (2) what rules of comparison are to be
adopted in judging whether such resemblance exists. As to
confusion, it is perhaps an appropriate description of the state
of mind of a customer who, on seeing a mark thinks that it
differs from the mark on goods which he has previously
bought, but is doubtful whether that impression is not due to
imperfect recollection.

7. Let us apply these tests to the facts of the case under our
consideration. It is not disputed before us that the two names
“Amritdhara” and “Lakshman-dhara” are in use in respect of
the same description of goods, namely a medicinal preparation
for the alleviation of various ailments. Such medicinal
preparation will be purchased mostly by people who instead of
going to a doctor wish to purchase a medicine for the quick
alleviation of their suffering, both villagers and townsfolk,
literate as well as illiterate. As we said in Corn Products
Refining Co. v. Skangrila Food Products Ltd. [(1960) (1) SCR
968] the question has to be approached from the point of view
of a man of average intelligence and imperfect recollection. To
such a man the overall structural and phonetic similarity-of
the two names “Amritdhara” and “Lakshmandhara” is, in our
opinion, likely to deceive or cause confusion. We must
consider the overall similarity of the two composite words
“Amritdhara” and “Lakshmandhara”. We do not think that
the learned Judges of the High Court were right in saying that
no Indian would mistake one for the other. An unwary
purchaser of average intelligence and imperfect recollection
would not, as the High Court supposed, split the name into its
component parts and consider the etymological meaning
thereof or even consider the meaning of the composite words
as “current of nectar” or “current of Lakshman”. He would
go more by the overall structural and phonetic similarity and
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Laboratories, AIR 1965 SC 980 , the Supreme Court held as under:-
“28. ……
……In an action for infringement, the plaintiff must, no doubt,
make out that the use of the defendant's mark is likely to
deceive, but where the similarity between the plaintiff's and the
defendant's mark is so close either visually, phonetically or
otherwise and the court reaches the conclusion that there is an
imitation, no further evidence is required to establish that the
plaintiff's rights are violated. Expressed in another way, if the
essential features of the trade mark of the plaintiff have been
adopted by the defendant, the fact that the get-up, packing and
other writing or marks on the goods or on the packets in which
he offers his goods for sale show marked differences, or
indicate clearly a trade origin different from that of the
registered proprietor of the mark would be immaterial;
whereas in the case of passing off, the defendant may escape
liability if he can show that the added matter is sufficient to
distinguish his goods from those of the plaintiff .

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21. It bears repetition to state that there is phonetic identity in the
trademark of the Plaintiffs, i.e.,
and that of the Defendants,
i.e.,
, which is an important index, apart from structural and
visual similarity. Plaintiffs have demonstrated the steady growth and rise in
their business and the immense reputation and goodwill they have acquired
over a decade from 2011, when the mark is stated to have been coined,
adopted and registered. The user date as reflected from the Registration
Certificate dates back to the year 2011 and since then there has been
continuous, extensive and uninterrputed use of the trademark, which has
acquired distinctiveness.
22. Examining the three eventualities contemplated under Section 29(2)
of the Act, the second question that needs examination at this stage is
whether the goods of the Plaintiffs and the Defendants have an identity/
similarity so as to cause a likelihood of confusion or association, thereby
infringing Plaintiffs’ Trademark MINDA under Section 29(2).
23. The SPARK MINDA Group under the device mark

are selling various automobile parts such as Brakeless Handle, Brake Shoes,
Clutch Plates, sensors, dashboards, Innovative Technology and IOT
Solutions, Electronic and Mechnical Security Systems, wiper blades, dye-
casting, starter motors etc. falling in classes 07, 09, 11 and 42, with respect
to which the device mark is registered. Defendants, on the other hand, are
engaged in the business of lubricants, industrial oils and grease, which fall in
class 04. The goods of the respective parties are not identical and hence, the
next question that arises is whether they are similar or allied and cognate.
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24. This Court in FDC Limited v. Docsuggest Healthcare Services Pvt.
Ltd. & Anr., 2017 SCC OnLine Del 6381 , delved into the issue of what are
allied and cognate goods and carved out parameters which are required to be
examined while determining whether the rival goods are allied and cognate,
viz. (a) respective uses of goods, (b) intended purpose, (c) respective users,
(d) physical nature of goods, (e) sector, (f) trade channels, and
(g) reputation. The defintions of allied/cognate goods or services, as noted
by the Court in para 51, are as follows:
“51…….
…… Allied/cognate goods or services, as understood from the
material referred to below, are those goods/services which are
not identical, but can be said to be related or similar in nature
(See McCarthy on Trademarks and Unfair Competition,
Fourth Edition, Vol 5). The Shorter Oxford English Dictionary
on Historical Principles Fifth Edition 2002, Vol. 1. defines the
term “Allied” as “connected by nature or qualities; having
affinity” and the term “Cognate” as “akin in origin, nature or
quality”. Reference may also be made to New Webster's
Dictionary and Thesaurus of the English Language, 1992
which defines “Allied” as “relating in subject or kind” and
“Cognate” as “1. adj. having a common ancestor or origin (of
languages or words) having a common source or root (of
subjects etc.) related, naturally grouped together.”. Cognate
goods/services can be described, inter alia, as goods or
services which have a trade connection - as in glucose and
biscuits (See Corn Products Refining Co. v. Shangrila Food
Products Ltd., AIR 1960 SC 142) or which are intended for the
same class of customers - as in television picture tubes (parts
thereof, video tapes and cassettes and television tuners etc.)
and televisions, tuners and T.V. Kits (See Prakash Industries
Ltd. v. Rajan Enterprises (1994) 14 PTC 31), or are
complementary to each other - as in toothbrushes and
toothpaste (See HM Sariya v. Ajanta India Ltd. (2006) 33
PTC 4).”

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25. Reliance was placed by the Court on the judgment in British Sugar
Plc. v. James Robertson & Sons Ltd., [1996] R.P.C. 281 at 294-297 , where
the Court laid down the tests for similarity of description of goods/services,
as follow:-

“(a) The uses of the respective goods or services;
(b) The users of the respective goods or services;
(c) The physical nature of the goods or acts of service;
(d) The trade channels through which the goods or services
reach the market;
(e) In the case of self-serve consumer items, where in
practice they are respectively found or likely to be
found in supermarkets and in particular whether they are, or
are likely to be, found on the same or different shelves; and
(f) The extent to which the respective goods and services are in
competition with each other : that inquiry may take into
account how those in trade classify goods, for instance
whether market research companies, who of course act for
industry, put goods or services in the same or different
sectors.”

26. In Assam Roofing Ltd. (supra) , the Calcutta High Court observed that
the test of similarity of goods is to be looked at from a business and
commercial point of view and the nature and composition of goods,
respective uses and the trade channels through which they are bought and
th
sold would go into consideration in this context. In Kerly 15 Ed.,
para 9-065, it is stated that the element of distinctive character of a
trademark and its reputation is also viewed when determining similarity
between the goods and services and whether such similarity is enough to
give rise to a likelihood of confusion.
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27. In Re Pianotist Co.’s Application, (1906) 23 RPC 774, Parker, J., in
the context of comparison of two words in the trademarks observed 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.”

28. Testing on the anvil of these parameters, in my prima facie view, the
goods of the Defendants, manufactured and sold under the impugned
trademark
are allied and cognate, as they relate to the same
sector i.e. automobiles. Lubricants, industrial oils and grease, which are the
goods of the Defendants and the automobile parts, which are the goods of
the Plaintiffs are used in vehicles and are invariable sold in the same shops.
Therefore, the consumer base is the same and the trade channels are
identical and there is likelihood of confusion and/or association that the
goods of the Defendants are those of the Plaintiffs’. This Court is thus of
prima facie opinion that the rival goods being similar in nature and the
competing trademark being identical/similar, a prima facie case of
infringement under Section 29(2)(b) of the Act is made out.
29. In this context, I may also refer to the judgment of this Court in
Ceat Tyres of India Ltd. v. Jai Industrial Services, 1990 SCC OnLine Del
360 , which comes closest to the facts of the present case and where the
Court held that fan belts and ‘V’ belts sold by the Defendants and the tyres
sold by the Plaintiff are cognate or allied inasmuch as both are used in
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vehicles. In Dharam Pal Satya Pal v. Janta Sales Corporation, 1990 SCC
OnLine Del 104, Plaintiff was manufacturing and selling chewing tobacco
under the trademark ‘RAJNI’, while the Defendant was marketing Pan
Masala under the same trademark. Relying on several judgments, the Court
found that both class of goods were sold from the same shops and held the
goods to be ‘cognate and allied’. An injunction was granted by the Court on
the basis of the nature of goods, identical trade channels and same consumer
base.
30. In Thomas Bear and Sons (India) v. Prayag Narain, AIR 1935 All 7,
the Court held as under:-

“The rule deducible from the foregoing cases appears to be
that the plaintiffs, whose goods have acquired a reputation in
the market through a trade mark or name with which their
goods have become associated, have a right to restrain the
defendant from using, a trade mark or name which is identical
with or similar to that of the plaintiffs, and such right extends
not only to the particular goods sold by the plaintiffs, but also
to cognate classes of goods, provided the cumulative effect of
the similarity of the mark, of the commercial connection
between the plaintiffs' goods and those of the defendant, and
surrounding circumstances is such as to lead the unwary
customers to mistake the defendant's goods for those of the
plaintiffs.……”

31. From the screenshots of the websites of the Defendants, it is evident
that the Defendants are using the domain name www.sparkmindalube.com
which includes the words ‘sparkminda’ and there is every likelihood of
confusion and/or association with the Plaintiffs and, therefore, the use of the
domain name also requires to be injuncted. Screenshots of the website are
as under:-
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32. Plaintiffs have also alleged that Defendants are passing off their goods
as that of the Plaintiffs in order to encash on their formidable and enormous
goodwill and reputation. In Kaviraj Pandit Durga Dutt Sharma (supra), it
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was held that an action for passing off is a common law remedy, being an
action for deceit. In Cadila Health Care Ltd. (supra ), the Supreme Court
albeit in the case of the passing off predicated on an un-registered
trademark, laid down factors for deciding the question of deceptive
similarity which are as follows:-
“35……..
(a) The nature of the marks i.e. whether the marks are word
marks or label marks or composite marks i.e. both words and
label works.
(b) The degree of resembleness between the marks,
phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used
as trade marks.
(d) The similarity in the nature, character and performance of
the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods
bearing the marks they require, on their education and
intelligence and a degree of care they are likely to exercise in
purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the
goods.
(g) Any other surrounding circumstances which may be
relevant in the extent of dissimilarity between the competing
marks.”

33. In Erven Warnink BV v. J. Townend & Sons, (1979) 2 All ER 927 ,
Lord Diplock laid down five elements/ingredients of the tort of passing off
viz. (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 trader (in the sense that this is a reasonably foreseeable
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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.
34. In FDC Limited vs. Faraway Foods Pvt. Ltd., 2021 SCC OnLine Del
1539 , culling out the principles that emerged from the various judicial
precedents on the common law rights in passing off, the Court observed that
in order to claim passing off, Plaintiff is required to establish
misrepresentation by the Defendant, likelihood of confusion in the minds of
the public that the goods of the Defendant are those of the Plaintiff, applying
the test of a person of average intelligence and imperfect recollection,
reputation and goodwill of the Plaintiff and likelihood of loss. While
examining the likelihood of confusion, the Court would take into
consideration factors such as nature of the market, class of customers, extent
of reputation of the Plaintiff, trade channels, trade connection, in
conjunction. It is indisputable that passing off is an action predicated on the
goodwill, unlike infringement, which is based on a proprietary right
conferred by registration of the trademark. It is an action of deceit by the
Defendant and gives the common law right to the Plaintiff to protect its
goodwill in business against misrepresentation caused in the trade by the
Defendant and is based on the principle that no person can be permitted to
carry on his or her business on the pretext that it is the business of another.
35. In the present case, defence of the Defendants is premised on the
nature of their goods, i.e., lubricants, industrial oils and grease which are
claimed to be dissimilar to the goods of the Plaintiffs and on this basis, it is
contended that no action for passing off lies. In my view, this contention is
completely misconceived and is in the teeth of several judgments of this
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Court, holding to the contrary. In Mahendra & Mahendra Paper Mills Ltd.
v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147 , the primordial
submission of the Appellant was that in the absence of any similarity of
goods manufactured or sold by the parties the question of deception or
confusion amongst the consumers did not arise. The Supreme Court,
rejecting the said contention held that the Plaintiff had acquired immense
reputation and the name had become distinctive of the Plaintiff and thus any
attempt by any other person to use the name in business and trade circles is
likely to create an impression or a connection with the Plaintiff’s Group of
Companies and would prejudicially effect the business and trading activities
of the Plaintiff. In Kamal Trading Co. Bombay and Ors. v. Gillettee U.K.
Limited, Middle Sex, England, 1987 SCC OnLine Bom 754 , a Division
Bench of the Bombay High Court held as follows:
“9. Relying on this observation; Mr. Desai submitted that the
plaintiffs have not established any of the conditions required
for grant of interim relief. It was submitted that the goods
manufactured by the plaintiffs and the defendants are different
nature; the plaintiffs manufacture blades, while the defendants
manufacture “tooth brushes”. The goods of the plaintiffs and
the defendants are available in the same shop and the
customers of these goods are different. The goods sold by the
plaintiffs are blades and fall in Class 8, while those of the
defendants are tooth brushes which fall in class 21. Relying on
these circumstances, it is contended that there was no
likelihood of any deception. We are unable to see any merit in
this submission. In the first instance, the assumption of the
learned counsel that the class of customers for purchase of
safety blades and tooth brushes are different and these goods
are not available in the same shops is wholly misconceived.
We take judicial notice of the fact that these goods are
available in every shop including a small shop and each and
every person is required to purchase these goods. The safety
blades and tooth brushes are items of daily requirement and
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are required by every person. It is impossible to accept the
submission that as the goods being different and as goods are
set out in different Classes in the Schedule to the Act, there is
not any likelihood of customer being deceived.”

36. In Bajaj Electricals Ltd. v. Metals and Allied Products, Bombay and
Anr., AIR 1988 Bom 167 , the primary contention of the Defendants was that
the goods manufactured by the Plaintiffs and the Defendants were totally
different and therefore the use of word ‘BAJAJ’ would not cause confusion.
Be it noted that the Plaintiffs were manufacturing electrical goods and
appliances under Class 11, whereas Defendants were manufacturing utensils
under Class 21. Holding that Defendants had intentionally and dishonestly
tried to pass off their goods by use of the name ‘BAJAJ’, the Court observed
as under:-
“ 8. Mr. Tulzapurkar submitted that it is not really necessary
to consider different judgments of the House of Lords because
Lord Denning had also observed that the defendants would
have no defence if the user of the name of the defendants is
likely to deceive irrespective of the fact whether the user was
honest and that conclusion of Lord Denning is also approved
by Lord Devlin who was in minority. Mr. Tulzapurkar
submitted that in the present case, there is a specific evidence
on record that the word “Bajaj” was used by the defendants
dishonestly and deliberately with a view to take advantage of
the reputation earned by the plaintiffs. The learned counsel
referred to us to a passage at p. 408 in Kerly's Law of Trade
Marks and Trade Names, Twelfth Edition, and submitted that
once intent to deceive is established, then the defendants could
not claim that they were entitled to use word “Bajaj” as a
trading sign. In support of the submission, the learned counsel
invited our attention to the brochure (Ex. ‘G’ annexed to the
plaint) wherein the defendants have claimed that Bajaj quality
is well accepted and appreciated internationally. Mr.
Tulzapurkar points out and it is not in dispute that the
defendants have never marketed their goods abroad, nor have
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they even claimed that their goods are sold all over the
country. Mr. Tulzapurkar is right and we agree with the
learned trial Judge that the brochure published in the year
1987 is issued with a view to cause deception or confusion in
the mind of the customers. The word ‘Bajaj’ has quite a great
reputation in the country and abroad and the publication of
the brochure in year 1987 clearly indicates that the defendants
were not honest in the use of the word “Bajaj” and an attempt
was made to pass off their goods with the mark “Bajaj” with
the intention to secure advantage of the reputation earned by
the plaintiffs.

The submission of Mr. Tulzapurkar was controverted by
Mr. Cooper by urging that the goods manufactured by the
plaintiffs and the defendants are totally different and,
therefore, there is no cause or apprehension that the use of the
word “Bajaj” is likely to cause deception or confusion in the
mind of the public. Mr. Cooper submitted that the articles
manufactured by the defendants are utensils and those
marketed by the plaintiffs are electrical goods or appliances
and, therefore, it is unlikely that the purchasers of utensils
would be confused by the use of the word “Bajaj” on the
articles of the defendants. The learned counsel submitted that
the plaintiffs' goods are sold under registered mark under
Class 11, while the goods manufactured by the defendants fall
under Class 21. Class 11 refers to installations for lighting,
heating, steam generating, cooking, refrigerating, drying,
ventilating, and other purposes, while Class 21 refers to small
domestic utensils and containers (not of precious metal nor
coated therewith). The submission of Mr. Cooper is that as the
articles manufactured by the plaintiffs and the defendants are
different, the question of deception would not arise. It is not
possible to accept the submission. The articles manufactured
by the plaintiffs and the defendants are kitchen wares and
are commonly used in almost every kitchen in this country.
The mere fact that the articles manufactured by the
contesting parties are different in nature is no answer to the
claim that the defendants are guilty of passing off. We
entirely agree with the conclusion recorded by the learned
trial Judge that there is identity of the goods, the mark and
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the consumer and the goods manufactures by both the
plaintiffs and the defendants are sold under one shop. Mr.
Cooper complained that the electric goods manufactured by
the plaintiffs and the stainless steel utensils manufactured by
the defendants are not sold in one shop. The submission is
not accurate because it is common experience that kitchen
ware or kitchen appliances like mixers, grinders, pressure
cookers, and stainless steel utensils are sold in the same
shop. At this interim stage, we are not prepared to accept the
submission of Mr. Cooper on this count and we see no
reason to take different view from that of the learned single
Judge on this aspect. In our judgment, prima facie, it is clear
that the defendants have intentionally and dishonestly tried
to pass off their goods by use of name “Bajaj” .”
(Emphasis supplied)

37. From a conspectus of the aforesaid judgments, it is clear that an action
for passing off can lie even with respect to dissimilar goods, the other
parameters being met. In any event, this defence is even otherwise not
available to the Defendants, as their goods are not dissimilar, but are allied
and cognate, i.e., similar and thus, the position adopted by the Defendants
that passing off action is not maintainable, cannot be accepted. In this
context, it would be useful to allude to a judgment of the Bombay High
Court in H.M. Saraiya and Ors. v. Ajanta India Ltd. and Ors., 2006 SCC
OnLine Bom 1394 , where the Court held as under:-
“ 72. Insofar as the question of totally distinct goods and
biscuits are concerned, it appears that there is a much
expansion of law so as to hold that there is no requirement of
common field of activity in a passing off action. The judgments
which have been relied upon by the learned counsel for the
plaintiffs being Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar
Proprietary Ltd., (supra) and Aktiebolaget Volvo v. Volvo
Steels Ltd. (supra) supports the aforesaid contention. In my
opinion, it is not doubt true that for the purposes of passing off
action in respect of totally dissimilar business or in respect of
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goods which are poles aparts only if it can establish that
plaintiffs have acquired such a reputation in a particular name
or a brand that the user by the other person even in respect of
distinct product would amount to passing off his business and
his good will as that of the other person. So as to be entitled to
such reliefs the reputation of the brand should have acquired a
Global status or super brand status and the business of the
plaintiffs must be trans border or trans products. However,
that does not mean that in relation of cognate or allied product
the plaintiff is not entitled to interim injunction as contended
by the learned counsel for the defendants. It is equally not a
correct proposition of law advanced by the learned counsel for
the defendants that in respect of the allied product or cognate
product or supplementary product the plaintiffs must actually
prove confusion and/or produce evidence that in market there
is an actual confusion and merely likelihood of confusion is
not counsel for the plaintiffs indicate that even if there is a
likelihood of a confusion by virtue of the fact that the goods
are so closely similar and/or are allied products or
supplementary that there is a likelihood of confusion in the
mind of the public that a person is using the similar brand
name merely to pass off his goods as that of the plaintiffs is
itself sufficient for the purpose of grant of interim order and
injunction in a passing off action.

73. Even in my judgment in the case of Indiacom
Limited v. Tata Teleservices Ltd. dated 28.10.2005 (Notice of
Motion No. 1837 of 2003 in Suit No. 1908 of 2003) I have held
that in light of series of judgments of this Court a proposition
of law is now well settled that the plaintiff is entitled to an
injunction on the basis of cognate product and/or allied
product and/or complemantary products if the goods are so
closely similar to that of the goods of the plaintiffs so as to
lead to a likelihood of confusion in market that the goods sold
by the defendants in fact belong to the plaintiffs. The learned
counsel for the plaintiffs has relied upon two judgments of the
Apex Court though arising out of Sales Tax Act in which it
is inter alia held that the word “toiletry” includes both tooth
paste and tooth brush. In my opinion, tooth paste and tooth
brush are undoubtedly complementary products and/or allied
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product the use of each other is together and in my opinion
dependent on each other. In such a situation it is easily likely
to create confusion in the minds of the public that the goods
belonging to one party in fact belongs to the other party. I am
inclined to accept the contention of the learned counsel for the
plaintiffs that they are selling tooth brushes in the market since
1950 would obviously make the people believe that ‘Ajanta’
tooth paste which has been introduced by the defendants is the
product belonging to the plaintiffs and thus there is a
likelihood of confusion in the market. I am, therefore, of the
opinion that the contention of the learned counsel for the
defendants that the said goods even if they are complementary
or cognate should not be itself be sufficient enough to grant
interim injunction in respect of passing off action on the
ground that the plaintiffs have not established actual confusion
in the market in respect of the said product is liable to be
rejected. I am also of the view that the judgment of the Apex
Court in the case of Corn Products (supra) supports the
aforesaid view I have taken that the goods being cognate or
allied products by virtue of trade connection or trade relation
would be sufficient enough to create a confusion in the mind of
the people in the market and, therefore, it is necessary that the
injunction should be granted to the plaintiffs insofar as the
said product of the defendants being tooth paste is concerned
under the brand name ‘Ajanta’. In my opinion, once the law is
well settled that in respect of the allied product or cognate
product the injunction can be granted and further in my
opinion that tooth paste and tooth brush being allied and/or
cognate products, it is not necessary to make any further
enquiry in the matter and the necessary interim order ought to
be granted to the plaintiffs herein. However, the learned
counsel for the defendants has contended that there is a
distinct get up of the box and has tried to bring a distinction in
the packet of two products which are sold in the market under
the same brand ‘Ajanta’ and has, therefore, contended that the
‘get up’ being different, there is no likelihood of any confusion
and, therefore, this Court should not grant any interim
injunction. I have also compared both the said packets and its
get ups. Firstly, ‘word mark’ is identical.

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Secondly phonetically also both the marks are the same. The
colour scheme of both the packets is almost identical. Merely
because on the defendants tooth paste there is an emblem
‘Dento Fresh’ and on the tooth brush packet of the plaintiffs
there is a photograph of mother and son would not be
sufficient enough to create a distinctiveness between the two
products so as to hold that there is no likelihood of any
confusion in the market. In my opinion, there is no much
distinction between ‘get up’ of the plaintiffs packets and that of
the defendants packet look is substantially identical, the word
characters are also identical and, therefore, in my opinion the
plaintiffs are entitled to injunction of ‘passing off’ on the
ground that the defendants are seeking to pass off their goods
as that belonging to the plaintiffs.”

38. Nonetheless, in order to succeed in an action for passing off at this
stage, Plaintiffs have to make out a prima facie case of goodwill and
reputation, which the Defendants are allegedly encashing and deceiving the
consumers into buying their goods believing the same to be originating from
the Plaintiffs. It is the case of the Plaintiffs, as averred and argued, that they
are a part of the MINDA Group of Companies which is a conglomerate
comprising several companies, manufacturing diverse auto components for
Indian and International Original Equipment Manufacturers. Founded in the
year 1958 by late Shri Shadi Lal Minda, Plaintiffs’ businesses under the
flagship name MINDA have grown multi-fold over the years and it has
emerged as one of the largest automotive components’ conglomerate. As
of 31.03.2021, the annual turnover of the Plaintiffs’ group of companies is
Rs. 8,741 crores with the goods and services spread over more than seven
countries apart from India. It has more than 104 plants globally and 25 R&D
centres across India with 40 group companies and 15 global technology
partners. It has expended huge sums of money on its promotional activities
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which is to the tune of Rs.12.27 crores in the year 2021 alone. The sales
turnover for the year 2021 as certified by the Chartered Accountant is
Rs.5989.44 crores. Plaintiffs have a number of honours and accolades to
th
their credit, the recent ones being ICSI’s prestigious 6 Annual National
CSR Award in 2021 and ‘Golden Peacock Award for Excellence in
Corporate Governance’ for the year 2020, besides 26 other awards and
honours, details of which are furnished in the plaint. MINDA Group of
Companies, is globally known for its quality of products and on account of
its formidable goodwill and reputation. Group has several reputed clients,
both in India as well as internationally, such as BMW, Ford, Honda, Toyota,
Ashok Leyland, Escorts, Bajaj, Hero, Mahindra, TATA etc. None of these
facts were traversed by the learned counsel for the Defendants during the
course of arguments and even in the written statement there is only a vague
and bold denial of the averments and nothing is pleaded to the contrary.
39. From the averments as aforementioned, which are duly supported by
documents filed along with the plaint, I am of the prima facie view that the
Plaintiffs enjoy immense reputation and goodwill in India and in fact, this
explains the reason why the Defendants chose to dishonestly adopt the
trademark
, which is phonetically identical and visually
deceptively similar to that of the Plaintiffs. It is clear that the Defendants
intended to encash upon the reputation and goodwill of the Plaintiffs by
misrepresenting to the members of the public that the goods of the
Defendants have an association with that of the Plaintiffs and/or emanate
from the house of the MINDA Group of Companies. Therefore, Plaintiffs
have made out a prima facie case of passing off against the Defendants in
respect of the goods sold under the impugned mark
and
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have been able to establish that the nature of marks, nature of goods and
class of purchasers are similar and that on account of the high degree of
resemblance between the marks there exists a likelihood of confusion.
40. I may now examine the claim of the Plaintiffs with respect to
infringement by the Defendants of their registered trademarks MINDA
(word/device) and
. Defendants have contested the claim on
the ground that Defendants are registered proprietors of the trademark
MINDA UTO which is registered since 03.07.2018 in class 04, for
lubricants, industrial oils and grease, with a user claim from 01.06.2018 and
therefore, no action can lie for infringement. The defence is predicated on
the provisions of Section 28(3) of the Act. It is also the contention of the
Defendants that the Plaintiffs are not registered for the said goods in class 04
and have a registration in separate classes for separate class of goods and
registration cannot travel across classes and in any case, in these
circumstances, there cannot be any association or confusion, which is one of
the pre-requisites for infringement under Section 29(2) of the Act.
41. It is indisputable that Plaintiffs and Defendants hold valid and
subsisting registrations in their respective trademarks, registered in different
Classes. The issue with regard to the rights of one registered proprietor of a
trademark against another registered proprietor of an identical with or nearly
resembling each other, is no longer res integra. Interpreting Section 28(3) of
the Act, the Supreme Court in S. Syed Mohideen v. P. Sulochana Bai,
(2016) 2 SCC 683 , held as under:-
“27. Sub-section (3) of Section 28 with which we are directly
concerned, contemplates a situation where two or more
persons are registered proprietors of the trade marks which
are identical with or nearly resemble each other. It, thus,
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postulates a situation where same or similar trade mark can
be registered in favour of more than one person. On a plain
stand-alone reading of this Section, it is clear that the
exclusive right to use of any of those trade marks shall not be
deemed to have been acquired by one registrant as against
other registered owner of the trade mark (though at the same
time they have the same rights as against third person). Thus,
between the two persons who are the registered owners of the
trade marks, there is no exclusive right to use the said trade
mark against each other, which means this provision gives
concurrent right to both the persons to use the registered trade
mark in their favour. Otherwise also, it is a matter of common
sense that the plaintiff cannot say that its registered trade
mark is infringed when the defendant is also enjoying
registration in the trade mark and such registration gives the
defendant as well right to use the same, as provided in Section
28(1) of the Act.”

42. The legal position that obtains with respect to the rights of a registered
proprietor as against another registered proprietor in respect of a claim for
infringement was elaborately dealt with and explained by this Court in
A. Kumar Milk Foods Pvt. Ltd. v. Vikas Tyagi & Anr., 2013 SCC OnLine
Del 3439, wherein Plaintiff’s trademark SHRIDHAR was registered under
class 29 in respect of ghee, oils, dairy products and allied and other related
goods while Defendants’ trademark SHREEDHAR was registered under
class 30 in respect of atta, maida and besan and thus apparently the
registrations were not in the same classes of goods. The Court held as
follows:-
“28. Section 28(3) of the TM Act cannot be interpreted in a
manner that would be contrary to the above scheme of the Act
and Rules. In other words Section 28(3) of the TM Act should
be understood as not permitting an infringement action being
brought by one registered proprietor against another only
where two conditions are satisfied : one, that the two
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registered marks “are identical with or nearly resemble each
other”; and two, they are in respect of the same class of goods
and services. This will be in conformity with the object of
Section 28(1) read with Section 29 of the TM Act which seeks
to grant protection to the registered proprietor of a mark from
infringement in respect of the goods for which registration is
granted.”

43. Reliance in the aforesaid case was placed by the Court on an earlier
judgment of this Court in Rana Steels v. Ran India Steels Pvt. Ltd.,
2008 SCC OnLine Del 399, which is evident from para 26. Relevant paras
of the judgment in A. Kumar Milk Foods Pvt. Ltd. (Supra) are extracted
hereunder for ready reference:-
“26. The facts of the present case are closer to the facts
in Rana Steels v. Ran India Steels Pvt. Ltd., 2008 (102) DRJ
503. The dispute there concerned the use of the Plaintiff's
trademark, RANA, registered under Class 6, by the Defendant
who had a registered trademark, RANA TOR, under Class 19.
While allowing the Plaintiff's prayer for confirmation of an
earlier ex parte injunction granted against the Defendant, the
Court explained the scope Section 28 of the Act, in para 23, as
follows:

“… Section 28 deals with the rights conferred by
registration. And, it has already been clarified that the use
of a registered mark must be in relation to the goods or
services in respect of which the trade mark is registered. It
follows that where the goods or services, in respect of
which two or more identical or similar (nearly resemble)
marks are registered, are different then Section 30(2)(e)
does not come into play. The question of infringement
would, itself, not arise as the registered marks would be
used in respect of different classes of goods or services by
their respective proprietors. A couple of examples would
further clarify the position:

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Example 1 : Assume that a trade mark “M” has been
registered in favor of Mr “X” as well as in favor of Mr
“Y” in relation to the same goods or services. In such a
situation, by virtue of Section 28(3), neither Mr “X” nor
Mr “Y” can claim exclusivity against each other for the
use of the said mark in relation to the goods or services for
which it was registered. If Mr “X” were to bring an action
for infringement against Mr “Y”, the latter would have a
complete defense under Section 30(2)(e).

Example 2 : Let us now assume that there are two different
goods “A” and “B” in respect of which the same
trademark “M” has been registered in favor of different
persons “X” and “Y”, respectively. Here, although the
same mark “M” is registered in favor of both Mr “X” and
Mr “Y”, Mr “X” has exclusive right to use the same in
respect of good “A” and Mr “Y” has exclusive right to use
the said mark in respect of good “B”. Therefore, Section
28(3) is not attracted. Moreover, if Mr “X” were to bring
an action of infringement against Mr “Y” alleging that Mr
“Y” was using the said mark “M” in relation to good “A”,
then, the defense of Section 30(2)(e) would not be
available to Mr “Y” as he does not have any right to use
the mark “M” in relation to good “A”, his registration
being in relation to good “B”.

27. The case on hand is covered on all fours by Example 2
above. Indeed the legislative intent was to extend the
protection of the registered mark against infringement in
respect of the goods for which the registration was granted. A
reading of Section 7 of the TM Act, which provides for
classification of goods and services, with Rule 22 of the Trade
Marks Rules, 2002 which provides that for the purposes of
registration of trademarks, goods and services shall be
classified in the manner specified in the Fourth Schedule,
shows that registration of trademarks is meant to be for goods
or services that have been specified in the Fourth Schedule
under different ‘Classes’. This explains the rationale behind
indicating the particular class of goods for which the
registration has been granted.”
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44. Having interpreted Section 28(3) of the Act, the Court observed that
the Plaintiff was seeking to protect its own trademark SHRIDHAR
registered in class 29 from infringement, by restraining Defendants from
using SHREEDHAR for goods in class 29 and not for goods for which
Defendants hold registration, i.e., class 30 goods. In Rana Steels (Supra)
Plaintiff had registration of the trademark RANA registered in respect of
goods falling under class 06, i.e., steel rolled products, angles, channels,
guarders, etc. and Defendant was a registered proprietor of the mark RANA
TOR in respect to building material (steels) falling under Class 19. On the
strength of Section 28(3) and 30(2)(e) of the Act, Defendant claimed that it
had not infringed Plaintiff’s registered trademark. The Court in this context
observed as under:-
“ 21. A reading of the relevant provisions of Sections 28 and
29 of the said Act, therefore, reveals that the registration of a
trade mark is linked to the goods or services in respect of
which the trade mark is registered. If a person uses a
registered trade mark in relation to goods and services which
are different and distinct from the goods or services in respect
of which the trade mark is registered, then he would not be
infringing the registered trade mark except in the case covered
by Sub-Section (4) of Section 29 which requires that the
registered trade mark must have a reputation in India and the
use of the mark without due cause would be amounting to
taking unfair advantage of or would be detrimental to the
distinctive character or repute of the registered trade mark.

xxx xxx xxx

24. At this point, it would be appropriate to refer to Section 7
of the said Act which provides for classification of goods and
services. Sub-Section (1) stipulates that the Registrar shall
classify the goods and services, as far as may be, in
accordance with the international classification of goods and
services for the purposes of registration of trade marks. Rule
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22 of the Trade Marks Rules, 2002 provides that for the
purposes of registration of trade marks, goods and services
shall be classified in the manner specified in the Fourth
Schedule. Clearly, registration of trademarks is in relation to
specified goods or services. Goods and services have been
classified. It is obvious that, prima facie, goods falling under
one class would be different from goods falling under another
class. Ordinarily, when registration of a trade mark is granted
under one class of goods, it does not cover goods of another
class.

25. The plaintiff is the registered proprietor of the mark
RANA w.e.f. 14.12.1994 in relation to “steel rolled products,
CTD bars, angles, flats, rounds, channels and girders” falling
under class 61 of the Fourth Schedule to the Trade Marks
Rules, 2002. The defendant does not have a registered trade
mark in respect of goods falling under class 6 of the said
schedule. However, as things stand today2, the defendant is
the registetred proprietor of the mark “RANATOR” w.e.f.
26.04.2001 in respect of “Buliding materials (steels)” falling
under class 193. Whether the registration is liable to be
cancelled, as alleged by the plaintiff, or not, as contended by
the defendant, is not a matter for consideration before this
court. For the present, in view of section 31 of the said Act, the
registration of the trade mark is prima facie evidence of its
validity. So, considering the defendant's registration to be
valid, for the time being, it must be kept in mind that the mark
RANATOR is registered in class 19 and not class 6. The
plaintiff has brought this suit claiming its exclusive right to the
use of the trade mark RANA in relation to “steel rolled
products, CTD bars, angles, flats, rounds, channels and
girders” falling under class 6 of the Fourth Schedule to the
Trade Marks Rules, 2002. The defendant, admittedly, does not
have any registration in class 6 (its registration being under
class 19). Therefore, the situation which presents itself in the
case at hand is similar to the situation explained in Example 2
above. Consequently, neither is section 28(3) attracted nor can
the defendant take refuge under section 30(2)(e).

xxx xxx xxx
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28. ....... The plaintiff has a valid registration in relation to
steel rolled products, CTD bars, angles, flats, rounds,
channels and girders falling under class 6. The defendant has
a registration under class 19 but not in relation to steel rolled
products, CTD bars, angles, flats, rounds, channels and
girders falling under class 6. It is obvious, that it is the
plaintiff's statutory right which requires protection and not the
defendant's improper use of the mark RANA TOR in relation to
steel rolled products, CTD bars, angles, flats, rounds,
channels and girders falling under class 6. The balance of
convenience is clearly in favour of the plaintiff and against the
defendant. Furthermore, in an infringement action, when the
plaintiff has demonstrated that it has a prima facie case and
also that the balance of convenience lies in its favour, not
granting an interim injunction restraining the defendant from
further infringing the plaintiff's registered trade mark would
result in causing irreparable injury to the plaintiff.”

45. Returning to the facts of the present case and examining them in the
light of the aforesaid judgments, this Court comes to a prima facie
conclusion that Plaintiffs cannot seek a restraint against the Defendants from
using their registered trademark MINDA UTO in respect of the goods for
which they are registered under class 04, i.e., lubricants, industrial oils and
grease, for the reason that Plaintiffs do not have registration for the said
goods under class 04, while Defendants are registered for these goods.
Whether the registration is liable to be cancelled or not is not a matter for
consideration before this Court and for the present, in view of Section 31 of
the Act, registration of the trademark is prima facie evidence of its validity
in favour of the Defendants. Plaintiffs have filed the present suit claiming
exclusive use over the registered trademark UNO MINDA, in respect of
goods registered in various classes including classes 07 and 12, but in the
absence of registration with respect to the impugned goods under
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class 04 an action of infringement, in my prima facie view will not lie and
the Defendants have a complete defence to infringement and the Plaintiffs
cannot take refuge under their registration.
46. Having so held with respect to the claim for infringement, the next
conundrum that needs to be resolved is with respect to the allegation of the
Plaintiffs that the Defendants are passing off their goods under the impugned
mark MINDA UTO. Before resolving the conundrum, it would be useful to
refer to the judgment in S. Syed Mohideen (Supra), a reading of which
shows the settled position of law that a suit for passing off would lie against
the Defendants, despite the registration of their trademark, the essential
ingredients of passing off being made out. Relevant paras are as follows:-

“28. However, what is stated above is the reflection of
Section 28 of the Act when that provision is seen and examined
without reference to the other provisions of the Act. It is stated
at the cost of repetition that as per this Section owner of
registered trade mark cannot sue for infringement of his
registered trade mark if the appellant also has the trade mark
which is registered. Having said so, a very important question
arises for consideration at this stage, namely, whether such a
respondent can bring an action against the appellant for
passing off invoking the provisions of Section 27(2) of the Act.
In other words, what would be the interplay of Section 27(2)
and Section 28(3) of the Act is the issue that arises for
consideration in the instant case. As already noticed above,
the trial court as well as the High Court have granted the
injunction in favour of the respondent on the basis of prior
user as well as on the ground that the trade mark of the
appellant, even if it is registered, would cause deception in the
mind of the public at large and the appellant is trying to
encash upon, exploit and ride upon on the goodwill of the
respondent herein. Therefore, the issue to be determined is as
to whether in such a scenario, the provisions of Section 27(2)
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would still be available even when the appellant is having
registration of the trade mark of which he is using.
xxx xxx xxx
30. Firstly, the answer to this proposition can be seen by
carefully looking at the provisions of the Trade Marks Act,
1999 (the Act). Collective reading of the provisions especially
Sections 27, 28, 29 and 34 of the Trade Marks Act, 1999
would show that the rights conferred by registration are
subject to the rights of the prior user of the trade mark.
We have already reproduced Section 27 and Section 29 of the
Act.
30.1. From the reading of Section 27(2) of the Act, it is clear
that the right of action of any person for passing off the
goods/services of another person and remedies thereof are not
affected by the provisions of the Act. Thus, the rights in
passing off are emanating from the common law and not from
the provisions of the Act and they are independent from the
rights conferred by the Act. This is evident from the reading of
the opening words of Section 27(2) which are “Nothing in this
Act shall be deemed to affect rights….”
30.2. Likewise, the registration of the mark shall give exclusive
rights to the use of the trade mark subject to the other
provisions of this Act. Thus, the rights granted by the
registration in the form of exclusivity are not absolute but are
subject to the provisions of the Act.
30.3. Section 28(3) of the Act provides that the rights of two
registered proprietors of identical or nearly resembling trade
marks shall not be enforced against each other. However, they
shall be same against the third parties. Section 28(3) merely
provides that there shall be no rights of one registered
proprietor vis-à-vis another but only for the purpose of
registration. The said provision 28(3) nowhere comments
about the rights of passing off which shall remain unaffected
due to overriding effect of Section 27(2) of the Act and thus the
rights emanating from the common law shall remain
undisturbed by the enactment of Section 28(3) which clearly
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states that the rights of one registered proprietor shall not be
enforced against the another person.”

47. The Supreme Court gave an additional reason as to why passing off
rights are superior to the registration rights and relevant would it be to refer
to the following paragraphs in this regard:-
“31. Secondly , there are other additional reasonings as to
why the passing off rights are considered to be superior than
that of registration rights.
31.1. Traditionally, passing off in common law is considered to
be a right for protection of goodwill in the business against
misrepresentation caused in 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. v. Borden Inc. [Reckitt & Colman
Products Ltd. v. Borden Inc., (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. [Erven Warnink Besloten
Vennootschap v. J. Townend & Sons (Hull) Ltd., 1979 AC 731
at p. 742 : (1979) 3 WLR 68 : (1979) 2 All ER 927 (HL)] (“the
Advocaat case”) 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 v. Chetanbhai
Shah [Laxmikant V. Patel v. Chetanbhai Shah, (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
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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 based 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 Edn.,
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
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occasion succeeded where the claim for infringement has
failed.””

48. The above legal position was reiterated by the Supreme Court in
Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Limited and
Others, (2018) 2 SCC 1 and is thus: an action for passing of could lie
despite Section 28(3) of the Act against use of a registered trademark, the
raison d'être being that the use of a mark confers rights in the person on
account of generation of goodwill in the market and a third party cannot
misrepresent its business and encash upon the said goodwill and reputation.
49. What remains to be examined is whether the Plaintiffs have made out
a prima facie case to demonstrate that the action of the Defendants
tantamounts to passing off. The ingredients of an action of passing off, as
held in various judgments, have been brought out in the earlier part of the
judgment and are not being repeated for the sake of brevity. Applying the
principles for determination whether passing off is made out, it is an
indisputable position that Plaintiffs are the prior user of the trademarks
MINDA and UNO MINDA, since the use of the trademark MINDA (word
per se ) commenced in the year 1962 and for the device mark from the year
2001. User date of the label UNO MINDA is 01.12.2011. Per contra, as per
the case set up by the Defendants, user of the impugned mark commenced
from the year 2018 for goods registered under class 04. As averred in the
plaint, the UNO MINDA Group is one of the India’s leading manufacturers
of automotive components and some of the products manufactured are
alternate fuel systems, air filtration systems, brake and fuel hoses, alloy
wheels, air brakes, fuel caps, air ducts and washer bottles, wheel covers,
sensors, horns, etc. The product range expands across all vehicles, i.e., 2, 3
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and 4 wheelers. The details with respect to the annual turnover of the
Plaintiff’s Group of Companies, the goods and services provided in over 7
countries, the manufacturing plants, promotional expenses, etc. have been
referred to above. Compared and contrasted with this is the admitted
position, going by the averments in the written statement that Defendants
have commenced use of their trademark only in 2018 and the total sales of
Defendant No. 3 has increased to Rs. 4,84,02,415/- in the year 2021-22 out
of which sale of products under the trademark MINDA UTO has increased
to Rs.72,60,362/- in the year 2021-22. From the said narrative, it is manifest
that Plaintiffs have made out a prima facie case of substantial goodwill and
reputation in the market and are prior users of the trademarks MINDA and
UNO MINDA.
50. Having prima facie established formidable reputation and goodwill,
Plaintiffs would require to show that the two competing marks are either
identical or deceptively similar. It cannot be disputed that Plaintiffs’
trademarks and the impugned mark of the Defendants are not identical. In
order to determine whether they are deceptively similar, this Court would
rely on the principles formulated by the Supreme Court in Cadila Health
Care Ltd. (Supra) , as aforementioned. In order to avoid prolixity and burden
this judgment with several judgments on the aspect of ‘deceptive similarity’,
I may only allude to judgment in FDC Limited v. Faraway Foods Pvt. Ltd.,
2021 SCC OnLine Del 1539 , where this Court has culled out the principles
premised on judicial precedents. The principles that emerged to the extend
relevant to this case are: (a) class of customers who would purchase the
product; (b) the look/appearance and sound of the trademarks as well as the
nature of goods including surrounding circumstances; (c) confusion refers to
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the state of mind of a customer who, on seeing the mark, thinks that it differs
from the mark on the goods which he had previously bought, but is doubtful
whether that impression is not due to imperfect recollection and the question
is thus one of first impression; (d) the test is from the point of a person of
average intelligence and imperfect recollection to see how a purchaser
would react to the trademark, the association which he would form and how
he would connect the trademarks with goods he is likely to purchase; (e) the
resemblance may be phonetic, visual or in idea; (f) the whole word/mark is
to be considered as an ordinary man would not split a word or name into its
components and would go by overall structural and phonetic similarity of
the mark; and (g) the Court is required to examine whether the essential
features of the Plaintiff’s mark are to be found in the Defendant’s mark.
Amritdhara Pharmacy (supra), Kaviraj Pandit Durga Dutt Sharma and
Cadila Health Care Ltd. (Supra) , [Ref.].
51. Tested on these principles it is to be seen whether the essential
features of Plaintiffs’ trademarks have been adopted by the Defendants.
In this regard it would be useful to refer to the case of Ruston & Hornsby
Ltd. v. The Zamindara Engineering Co., (1969) 2 SCC 727, where the
Court found that there was deceptive resemblance between the words
RUSTON and the mark RUSTAM and negated the contention that the word
INDIA added to Respondent’s trademark RUSTAM was of any
consequence, albeit in the context of infringement. In Laxmikant V. Patel v.
Chetanbhai Shah and Another, (2002) 3 SCC 65 the Supreme Court held
that it is the word ‘Muktajivan’ which makes distinctive the business name
of the Plaintiff, i.e., ‘Muktajivan Colour Lab’ and addition of the prefix QSS
as an adjective could not be a defence by the Defendant against passing off.
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52. Two cases which in my view are closest in facts to the present case
are Greaves Cotton Limited v. Mr. Mohammad Rafi & Ors., 2011 SCC
OnLine Del 2596 and Prem Ratan Rathi & Ors. v. Ashish Iron Trading
Co. & Anr., 2013 SCC OnLine Del 3649 . In Greaves Cotton (Supra) the
mark ‘GREAVES’ was the essential and prominent feature of Plaintiff’s
trade name, corporate name and business style and the trademark
GREAVES was the surname of the founder of Plaintiff’s predecessor. The
Supreme Court observed that by using the words ‘GREAVES INDIA’
Defendant No. 1 had lifted and adopted and whole of the registered
trademark of the Plaintiff and mere use of the word ‘INDIA’ would make no
difference, since the word GREAVES was the essential and main
component of the trademark ‘GREAVES INDIA’. Use of the word INDIA
as a suffix and not as a prefix is also strong indicator that the Defendant
wanted to encash upon the popularity, goodwill and reputation of the word
GREAVES though even if it was used as prefix, it would be infringing. It
was also observed that GREAVES is not a dictionary word and comes from
the surname of the founder of the Plaintiff and neither deletion of a part of a
registered trademark nor addition of a prefix or suffix to it would validate
the use by an unlicensed user. On this basis, not only infringement but the
issue of passing off was decided in favour of the Plaintiff. In Prem Ratan
Rathi (supra) , Plaintiff was using the trademark ‘RATHI’ and the
Defendants had adopted an identical trademark by adding a prefix
GOLDEN. Plaintiff succeeded in its action for infringement and passing off,
despite the Defendants’ defence that word RATHI is a common word
derived from the name of a village and that the mark is distinguishable by
the prefix ‘GOLDEN’. Reference may also be made to a judgment in B.K.
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Engineering v. U.B.H.I. Enterprises (Regd.) Ludhiana, AIR 1985 Del.
210, where this Court faced with rival trademarks B.K. and B.K.-81,
observed that the Defendants’ addition of ‘81’ to Plaintiff’s mark was a
mere garnishing, though even the altered name is likely to mislead. The
Defendants’ product will deceive people into thinking that their goods are
those of the Plaintiffs. Essence of the law of passing off is competition
between traders and if Defendants are not injuncted there will a real risk of
injury to the reputation of the Plaintiffs.
53. I may usefully allude to para 33 of the judgment in Prem Ratan Rathi
(supra), as the same analogy would apply to the present case. In the present
case Plaintiffs are selling their products under the trademark MINDA with
various prefixes such as SPARK MINDA and UNO MINDA. The word
MINDA forms an essential part of Plaintiffs’ trademarks and Defendants
prima facie cannot claim any right to use the said mark with or without
suffixes or prefixes, as that is likely to cause confusion amongst the
purchasers. Para 33 is as follows:-
“33. The defendant no. 2 in its written statement claims that
the word RATHI is a common word and that the name was
adopted by them because the great grandfather of the
promoter/director of the defendant no. 2 was a resident of
Rathi Vas village in Haryana. However no evidence has been
placed on record to prove the said contention. Further,
applying the ratio in the Greaves Cotton Case (supra), the
defendants' use of the word ‘GOLDEN’ before the mark of the
plaintiff ‘RATHI’ does not entitle them to use the impugned
mark. The plaintiff's mark ‘RATHI’ is the essential part of
their registered trademark and has been in use since the year
1980 as proved in Issues No. 1 and 2. Further, it is also seen
from the newspaper clippings of the advertisements of the
plaintiff's products placed on record, that they sell the
products under the trademark ‘RATHI’ along with suffixes like
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‘TOR’ and ‘THERMEX’, thus bearing the marks ‘RATHI
TOR’ and ‘RATHI THERMEX’. Furthermore, it is stated by
defendant no. 2 in its written statement that the plaintiffs are
also selling their products under the names ‘RATHI
EUROTEM’ and ‘RATHI PRAGATI’. Therefore it is clear to
me that the word ‘RATHI’ forms an essential part of the
plaintiff's trademark and thus, the defendants do not have the
right to use the said word with any suffixes or prefixes. Issue
No. 7 is decided in favour of the plaintiff.”

54. Another crucial question arises in the present case as to why the
Defendants chose the word MINDA as a part of their trademark albeit with a
suffix UTO. The subtle explanation rendered by the Defendants is that
MINDA is a common surname in the country and UNO and SPARK are
common English words and that MINDA is the name of a village in
Rajasthan, where the forefathers of the Defendants (not specified who)
lived. Suffice would it be to state that there is no material on record to
substantiate the said plea, contrasted to the stand of the Plaintiffs and prima
facie shown to be correct, as to the origin of their trademark. The
explanation of the Defendants, in my view, in choosing the impugned
trademark is implausible, farfetched and wholly unconvincing and is
designed to encash upon the pronounced and prominent reputation of the
Plaintiffs. In view of this, in my prima facie view there is deceptive
similarity in the rival trademarks as well as dishonest adoption by the
Defendants. It is interesting to note the contention of the Plaintiffs that while
the registration of the Defendants in class 04 with respect to the trademark
MINDA UTO is ‘MINDAUTO’, i.e., as a single word, Defendants have
been using the same as two words ‘MINDA UTO’. The intent behind
separating the two words is perhaps with a view to lay more emphasis on the
word MINDA, so as to encash on the formidable reputation and enormous
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goodwill of the Plaintiffs and is in my prima facie view malicious and
mischievous.
55. The next issue is whether the goods of the parties to the lis are
similar/identical. Defendants have defended the case predicated on
dissimilarity of goods, which in my prima facie view is not a sustainable
defence. The contention is negated by the observations of the Allahabad
High Court in Bata India Limited v. Pyare Lal & Co., 1985 SCC OnLine
All 79 , which are as follows:-

“ 21. Where a trader uses the name or the mark or sign
deceptively similar to that of the second trader in relation to
goods marketed by the former even though it may not be the
same goods or the same type of goods as produced by the
second trader, yet a question of passing off may arise. The
main consideration will be whether there is a
misrepresentation.
22. If there is a prima facie case of misrepresentation made
by the defendants in the course of trade to prospective
customers and which is likely to cause injury to the business
and the goodwill of the plaintiff-company, he would be entitled
to the protection by a Court when a suit of this nature may
take years to be decided. In the meantime, the defendants may
go on using deceptively similar mark in trade and marketing
their goods representing or giving an impression as if the said
goods are produced by the plaintiff-company. An injunction to
restrain the defendants in such a case would be justified. After
all a person long established in business, who has been using
a particular mark in this product or products for a long
number of years is entitled to protect the same against inroad
of another proprietor or producer. This is necessary not only
to give protection to the goods and the business of the original
producer but also to protect the public at large being duped by
such unfair trade practice.
xxx xxx xxx
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28. The respondents, however, urged that it was necessary
for a passing off action that there was some resemblance in
the nature of goods produced by the two traders. In other
words, the claim of the plaintiff did not give rise to a cause of
action, for the plaintiff did not produce foam. Foam was not
one of the products manufactured or marketed by the plaintiff-
company. Consequently, there was no question of any injury
being suffered by the plaintiff-company........
xxx xxx xxx
36. Great emphasis was laid by the learned counsel for the
respondents on the underlined portion to say that there should
be some similarity or correlationship between the two
products. This argument is supplemented by another argument
that the plaintiff was not producing any goods like foam or
analogous product. Consequently, there was no question of
any deception being practised on the purchaser of foam
materials in the market. This argument loses sight of an
important feature viz., how would a lay customer know in the
first place that the plaintiff was not producing foam or foam
material? How would the customers know that Bata were not
producing foam? It is well known that the name represented
makers of shoes and analogous products, but a question would
also arise in the mind of the lay customers whether Bata were
also producing foam. Who is going to answer this question?
Does an ordinary customer ask the seller as to whose product
it is? The answer generally is in the negative. He buys a thing
on the basis of his own impression.”

56. In Ellora Industries v. Banarsi Dass Goela & Others, AIR 1980
Delhi 254, this Court held as follows:-
“ 41. In the case of Ellora Industries v. Banarsi Dass, AIR
1980 Delhi 254, it was held by a learned single Judge (at p.
258):—

“Confusing customers as to source, as in this case, is an
invasion of another's property rights. The unfairness arises
from the fact that the purchasing public are likely to be
misled. The protection is afforded not for the deceived
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customer but the rival trader. It is to prevent “dishonest
trading”, to use a phrase of Danckwerts J. (J.
Bollinger v. Costa Brava Wine Co. Ltd., 1961 RPC 116).
The Australian Court in Henderson's case (1969 RPC 219)
recognised a form of wrongful appropriation of a “trade
value”. Evatt, C.J. and Myer, J. said:

“The wrongful appropriation of another's
professional or business reputation is an injury
in itself.””

57. In Reddaway v. Banham, 1896 AC 199, one of the question was
whether manufacturing the same product was essential for an injunction in a
passing off action and the answer was:- ‘ now it is not always necessary that
there must be in existence goods of that other man with which the Defendant
seeks to confuse his own ’. As Lord Greene M.R. said:- ‘ passing off may
occur in cases where the Plaintiff do not in fact deal in the offending goods ’.
Therefore, similarity in goods is not sine qua non in the action by the
Plaintiff for passing off. As the action is founded on misrepresentation and
deceit to give an impression to the purchaser that the offending goods are the
goods of the Plaintiff, where the latter has immense goodwill and reputation
in the market.
58. Be it noted that this contention cannot be accepted for an additional
reason that in the present case the offending goods are lubricants, industrial
oils and grease which are allied and cognate to the goods of the Plaintiffs
sold under the trademark UNO MINDA. It is a matter of common
knowledge that automobile spare parts, lubricants and grease are sold from
the same shops and therefore, the trade channels are identical and the
consumer base is the same. This Court draws strength from the judgment of
the Bombay High Court in H.M. Saraiya and Ors. (Supra) , where the
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alternate contention of the Plaintiffs was that even if it is held by the Court
that Plaintiffs have accrued no reputation in their brand ‘Ajanta’ in respect
of their goods, i.e., toothpaste still once the reputation is established in the
allied product, i.e., toothbrush, Plaintiffs are entitled to injunction on the
principle that Defendant cannot sell a cognate or allied product and should
be injuncted in a passing off action. Relying on the judgment of the Supreme
Court in Corn Products Refining Co. v. Shangrila Food Products Ltd.,
(1960) 1 SCR 968 the Bombay High Court observed as follows:-
“58. In the present case we are not concerned with the super
brand status or universal status of any brand because it is not
even the case of the plaintiffs that their brand has acquired
any such super status so as to entitle the plaintiffs to protect
their transborder and trans product reputation. The case of the
plaintiffs is that the goods relating to the same field and/or in
any event a cognate and allied products aforesaid are so
similar products that it is likely to result in confusion in the
minds of public. In my opinion, the principle of cognate and
allied product is very much in existence and has been well
recognised both by the learned author Kerly in the aforesaid
paras as well as various judgments which are cited before me
by the plaintiffs. In the case of Corn Products Refining Co.
(supra), the Apex Court was dealing with the brand name
'Glucovita' glucouse vita in respect of glucose powder mixed
with vitamin and other product being glucose biscuits. The
Apex Court as far back as in 1960 held that even though the
goods are different but by virtue of fact that glucose powder is
used in manufacture of biscuits and, therefore, the person is
entitled to injunction though the goods are not identical.”

59. In case of Prakash Industries Ltd. v. Rajan Enterprises, 1993 SCC
OnLine Del 522, this Court observed as under:-
“ 34. ............The plaintiff whose goods have acquired a
reputation in the market through a trade mark or name with
which the goods have become associated has a right to
restrain the defendant from using the trade mark br name
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which is identical with or similar to that of the plaintiff and
such right extends not only to the particular goods sold by the
plaintiff but also to cognate classes of goods provided the
cummulative effect of the similarity of the mark, the
commercial connection between the plaintiffs goods and those
of the defendant's goods and surrounding circumstances is
such as to lead the unwary customers to mistake the
defendant's goods for those of the plaintiff.”

60. Plaintiffs have thus made out a prima facie case of passing off against
the Defendants. The tests laid down in the judgments aforementioned are
met as the Plaintiffs have prima facie established that the nature of marks,
nature of goods, class of purchasers, high degree of resemblance between
the mark and misrepresentation coupled with likelihood of confusion.
61. For all the aforesaid reasons, the ex-parte order of injunction dated
20.01.2022 passed by this Court is hereby confirmed. Needless to state that
the observations in the present judgment are only tentative and prima facie
and shall not affect the final adjudication of the suit.
62. Accordingly, I.A. 1134/2022 (under Order 39 Rules 1 & 2 CPC) filed
by the Plaintiffs is allowed and I.A. 6456/2022 (under Order 39 Rule 4 CPC)
filed by the Defendants is dismissed, in the aforesaid terms.


JYOTI SINGH, J
SEPTEMBER 20 , 2022 /rk/shivam
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