M/s AZ Tech (India) & Anr. vs. M/s Intex Technologies (India) Ltd. & Anr.

$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS (OS) 2060/2013
st
% Judgment Reserved on: 1 December, 2016
th
Judgment Pronounced on: 24 December, 2016

M/s AZ Tech (India) & Anr. ..... Plaintiffs
Through : Ms. Pratibha M. Singh, Sr. Advocate
with Mr. Sagar Chandra, Mr. Ankit
Rastogi and Ms. Ishani Chandra,
Advocates.

versus

M/s Intex Technologies (India) Ltd. & Anr.
..... Defendants
Through : Mr. Pravin Anand, Mr. Aditya Gupta
and Mr. Utkarsh Srivastava, Advocates

CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI

G.S.SISTANI, J.
I.A. No. 17138/2013 (under Order XXXIX Rule 1 & 2)
1. This is an application under Order XXXIX Rule 1 and 2 of the Code of
Civil Procedure filed by the plaintiffs seeking an ad interim injunction
against the defendants from using the trademark „AQUA‟. The present
suit has been filed by the plaintiffs seeking permanent injunction,
delivery up, production of accounts, damages etc.
2. The trademark involved in the present suit is the word mark „Aqua‟
pertaining to mobile phones ( hereinafter the „ suit mark ‟). The pictoral
representation of the mark/logo adopted by the parties is different, but
is being used by the parties in respect of the same goods, i.e. mobile
phones. During the pendency of the present suit, the defendants alleged
CS (OS) 2060/2013 Page 1 of 44



that the plaintiffs had themselves imitated the logo of the defendants
mark, i.e. „
‟. This led to filing of another suit, being Intex
Technologies (India) Limited & Anr. v. Northern Lights Solution
LLP & Ors. , CS (OS) 2668/2015 , by the defendants herein. On
05.12.2016, the said suit was disposed of pursuant to a settlement
between the parties whereby the defendants therein/plaintiffs herein had
given an undertaking not to use the logo of the defendants herein.
Needless to state that the undertaking was given without prejudice to
the rights and contentions sought to be urged by the plaintiffs herein in
the present suit.
3. The case of the plaintiffs is that the plaintiff no. 1, a sole proprietorship
firm of one Mr. Arvind Kumar Adukia, and the plaintiff no. 2/ Peace
Zone (HK) Ltd. are engaged in the business of manufacturing and
marketing mobile phones in the name and style of „Aqua‟ mobiles. Mr.
Adukia now claims to be engaged in the said business as a partner of
M/s Northern Lights Solutions LLP. Simply put, the plaintiff no. 2 is
the manufacturer of mobile phones, while the plaintiff no. 1 is engaged
in the importation and sale of the phones in India pursuant to a Mutual
Trade Agreement dated 22.03.2009.
4. The plaintiffs claim to have been marketing and selling phones under
the trademark „Aqua‟ in India since 2009 and have also expanded into
the market of phone accessories such as earphones, mobile chargers,
USB cables and mobile batteries. The plaintiffs claim that the mark
„Aqua‟ was randomly coined and is an arbitrary mark in application to
mobile phones and merits trademark protection.
5. As per the plaint, the product of the plaintiffs was launched in the year
2009 in India and was an instant hit amongst the general public. The
plaintiffs claim its products have an edge over those of its competitors
CS (OS) 2060/2013 Page 2 of 44



being of a superior quality and economically priced. The success of the
launch of its phones in India has further motivated the plaintiffs to
venture into foreign markets including Hong Kong, China, Nigeria,
Nepal, Bangladesh and United Arab Emirates. As on the date of
institution of the present suit, the plaintiffs were offering 12 different
models of mobile phones under the mark „Aqua‟; all ranging from the
price of Rs. 999/- to Rs. 3999/-.
6. The plaintiffs further claim that their goods have acquired
goodwill/reputation in India owing to their products being of superior
quality, reliability, durability, high performance, etc. Further the
plaintiff no. 1 has continuously made efforts to make the presence of
their products felt in India. It is also averred that the mark of the
plaintiffs have, due to years of investment and active marketing
strategies not only through print media, but also through social media,
interactive live advertisements, demonstrations, fairs and events,
become a well reputed brand amongst the masses carrying vast
goodwill and reputation. Accordingly, the mark „Aqua‟ has amassed
goodwill and reputation in India owing to continuous hard labour and
investment put in by the plaintiff no. 1 over the period of 5 years from
2009.
7. The plaintiffs claim that in order to secure statutory protection of the
mark, the plaintiff no. 2 has obtained registration of the mark in Hong
Kong in the year 2012. Further the plaintiff no. 1 has applied for
registration of the mark „Aqua‟ in India on 23.12.2009, which is
pending.
8. As per the plaint, the plaintiff no. 1 has also invested heavily in
International Mobile Equipment Identity („IMEI‟) numbers. The
plaintiff no. 1 has purchased IMEI numbers from time to time in line
CS (OS) 2060/2013 Page 3 of 44



with its commitment to provide genuine and high quality products
meeting and surpassing the standards of the industry.
9. It is the case of the plaintiffs that the defendants have been
manufacturing and marketing mobile phones and accessories in the
name and style of „Intex‟. The defendants in the year 2012, adopted an
identical mark „Aqua‟ and launched a range of mobile phones in the
name „Intex Aqua‟. It is contended that the step was taken by the
defendants keeping in view the huge success, brand value and with
intent to exploit the goodwill of the mark of the plaintiffs. This act of
the defendants creates an impression upon the general public that the
plaintiffs have a connection or collaboration with the defendants or that
the range of mobile phones under „Intex Aqua‟ originate from the
plaintiffs. The plaintiffs have also listed the mobile phones being sold
under the mark by the defendants in paragraph 17 of the plaint. As per
the list the defendants have launched or are intending to launch 13
models between the price range of Rs. 3,590/- to 21,900/-.
10. As per the plaint, the defendants have further marketed mobile phones
under the mark „Intex Aqua‟ which are deceptively similar not only in
looks but also in features. To this end, the plaintiffs have made a
comparative analysis between its mobile phone „Aqua G200 Jazz‟ and
„Intex Aqua Marvel+‟ of the defendants.
11. It is contended by the plaintiffs that the defendants have wrongfully and
fraudulently adopted the mark „Aqua‟ in late 2012 in order to pass off
their goods as those of the plaintiffs by confusing the unsuspecting
general public. It is alleged that the defendants never marketed their
phones under the mark „Aqua‟ prior to the launch of the phones and
have since the launch aggressively advertised the mark „Intex Aqua‟
causing a confusion amongst the public causing wrongful loss and
CS (OS) 2060/2013 Page 4 of 44



diluting the goodwill of the plaintiffs.
12. The defendants, in their written statement, have raised the following
objections:
a. None of the plaintiffs can claim exclusive rights over the trade mark
„Aqua‟ as the plaintiff no. 1 has represented before the Trade Marks
Registry in India. This is in violation of Section 24 of the Trade
Marks Act, 1999 and suppression of the Agreement dated
22.03.2009 from the Registry.
b. Similar deception has been played upon the Registrar of Trade
Marks, Hong Kong where plaintiff no. 2 has professed exclusive
rights.
c. The plaintiff no. 1 has made an incorrect representation before the
Trade Marks Registry as it has never used the mark for the goods as
described in the application.
d. The plaintiff has suppressed the fact that the Trade Marks Registry
has objected to the mark of the plaintiff contending that the same is
“ devoid of any distinctive character ” and is not capable of
distinguishing the goods of the plaintiffs. The word „Aqua‟ simply
means „water‟ and had been adopted/used by numerous persons.
e. The plaintiffs have failed to establish the user of the mark since
2009 by filing unimpeachable documentary evidence.
f. The plaintiffs have failed to detail its turnover and even otherwise
the revenue generated by the defendants from their mark „Intex
Aqua‟ is substantially more than that of the plaintiffs.
g. The suit is not maintainable owing to added features including get-
up, placement, colour combination and writing style in the mark of
the defendants which make the goods of the parties completely
distinguishable negating any possibility of confusion between the
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marks of the parties.
h. The unlawful adoption of the pictoral representation of the
mark/logo of the defendants, i.e. „
‟, by the plaintiffs
establishes their dishonest and illegal conduct. The same also
amounts to an admission that even the plaintiffs know that the mark
„Aqua‟ is associated with the defendants only and not to the
plaintiffs. Plaintiffs have admitted that their mark does not carry
any reputation.
i. The plaintiffs have acquiesced to the use of the mark by the
defendants as the present suit was filed after a delay of 14 months.
The defendants had adopted the mark and launched products under
the mark in the month of August, 2012 and have since then
established tremendous sales. The plaintiffs waited for 14 months
prior to instituting the present suit and therefore, have acquiesced to
the use of the mark by the defendants.
13. As per the written statement, the defendants have submitted that the
defendant company has been selling mobile phones under the name
„Intex‟ since a long period of time and have had tremendous success.
The turnover of the defendant company has increased from Rs. 32
crores in 2001-02 to Rs. 1071 crores in the financial year 2012-13. The
defendant has also been rated as one fastest growing information
technology companies. Dataquest, which has been rating 200 fastest
growing IT companies in India has also regularly included the
defendants in its list. Further, the ranking of the defendants has
improved from 108 to 84 in the last seven years. Additionally, the
defendants have a network of 25,000 retailers, 45 exclusive stores in
India with a portfolio of about 29 product groups and a range of 250
product items. The defendants also have 700 service centres.
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14. The defendants have further averred that as their business picked up, as
a natural expansion the defendants added several new products to its
range and for the reason of easy identification introduced sub-names to
their house mark „Intex‟ including „Cloud‟, „Turbo‟, „Victory‟, „Neo‟,
„Pride‟, „Hero‟, „Nova‟, „Aura‟, „Brave‟, etc. and the sub-name „Aqua‟
in the year 2012. The choice of the word „Aqua‟ was inspired from the
fact that due to advanced technological inputs in its mobile phones, the
graphics and the picture quality of the phones are so crystal clear that it
gives an impression that the screen is as clear as pure water.
15. As per the written statement, the defendants have, since the adoption of
the mark „Aqua‟ in August 2012, have been continuously and
aggressively using the trademark „Intex Aqua‟. The defendants have
already spent Rs. 27 crores in the advertisement of the brand and have
also hired cine actor Mr. Farhan Akhtar for promoting the phones. The
defendants have also sold phones under the mark „Intex Aqua‟ for a
value of more than Rs. 200 crores till the date of filing of the written
statement.
16. The plaintiffs in their replication have repeated the averments made in
the plaint. The plaintiffs have further substantiated their sales figures
and advertisement expenditures. As per the replication, the plaintiff no.
1 has made sales of over Rs. 10 crores by selling the mobile phones
under the brand „Aqua‟ while plaintiff no. 2 has made sales of over US
$ 5 million. The plaintiff no. 1 has also paid an amount of Rs.
1,41,98,931/- of VAT to the Delhi Government till the financial year
2013 for all mobile phones sold by it. It is submitted that both the
plaintiffs have continuously marketed the phones under the mark
„Aqua‟ in India and abroad. The plaintiff no. 2 has advertised „Aqua‟
mobiles in the magazine published by CIC Media and its website from
CS (OS) 2060/2013 Page 7 of 44



the year 2010 and continues to do so till date. The expenses incurred
on the same alone are over Hong Kong $ 1,80,000/-. The plaintiff no. 1
has also continuously advertised in Indian magazines such as the
„Mobile Post‟ and „Mobile Plaza‟. The plaintiff no. 1 has also put up
posters/standees, placed hoardings in popular market hubs, distributed
brochures and other marketing merchandise in the distribution chain.
The products of the plaintiffs have also gained coverage from various
third party websites including „Amar Ujala‟ and „MobileDekho.com‟.
Further the products have also been continuously sold through online
portals such as “naptol.com”, “Ebay.in”, “janglee.com”, etc. Further,
the defendants have relied upon a Google analytic report to show that
the plaintiffs‟ website, i.e. www.aqua-mobiles.com, has been visited by
users from 85 countries and from 25 states in India.
17. As per the replication, the plaintiffs have also sought to clearly show
that the defendants had knowledge of the mark of the plaintiffs. To this
end, the plaintiffs have stated that both the parties have sourced their
CDMA+GSM Handsets from the same source, namely Jinshuo
International Telecom Limited. The plaintiffs had launched the sourced
phones under the model name „R22‟ and „R21‟; while the defendants
have also sourced similar products and marketed under the Model name
„Intex 5030‟.
18. The submissions of Ms. Pratibha Singh, learned senior counsel for the
plaintiffs/applicants, are on the following lines:
18.1. Learned senior counsel submits that the plaintiffs had adopted the mark
„Aqua‟ in respect of mobile phones in the year 2009 and have been
continuously using the mark ever since. The mark of the plaintiffs
have amassed tremendous goodwill amongst the general public, which
has come to exclusively associate the mark with the products of the
CS (OS) 2060/2013 Page 8 of 44



plaintiffs. The defendants have adopted the identical mark as a sub-
brand in the year 2012 in order to pass off the reputation of the
plaintiffs, which has led to the filing of the present suit. Learned
senior counsel submits that being the prior user of the mark, the
plaintiffs are entitled to an interim injunction.
18.2. In order to fortify her submission that the mark has been continuously
used by the plaintiffs, learned senior counsel has drawn the attention of
this court to invoices placed on record. Invoices from 01.11.2009
onwards have been placed on record showing continuous sale of the
products of the plaintiffs under the mark „Aqua‟. Learned senior
counsel has further drawn our attention to the trademark application
(bearing No. 1900562) filed by the plaintiff no. 1 with the Trade
Marks Registry on 22.12.2009. Even in the said application, the user
of the mark has been claimed since 01.04.2009. She submits that the
mark has not been registered owing to it being opposed by the
defendants herein. The plaintiff no. 2 has already secured registration
in Hong Kong.
18.3. Learned counsel submits that there are no reasons for the defendants to
adopt an identical mark as that of the plaintiffs. She also submits that
the defendants cannot claim any goodwill in the mark after the filing
of the present suit. She has relied upon the decision of a Division
Bench of this Court in Century Traders v. Roshan Lal Duggar & Co. ,
1977 PTC (Suppl.) (1) 720 (Del) (DB) (paragraph 12 and 14) to
submit that it is not necessary for the mark to be used for a
considerable length of time, even a single use with intention to
continue using the mark would suffice; and the judgment of the
Supreme Court in Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. ,
2004 (28) PTC 566 (SC) (paragraphs 12 and 29) to show that even if
CS (OS) 2060/2013 Page 9 of 44



the parties independently adopted the mark, prior use remains the
ultimate test to ascertain which party is entitled debar the other from
eating into its goodwill. She also relied upon Power Control
Appliances and others v. Sumeet Machines Pvt. Ltd. and others ,
1995 PTC 165 (SC) (paragraph 44) to fortify her submissions that
there cannot be two origins of the same mark.
18.4. In addition to the aforementioned sales invoices and trademarks
applications, the plaintiffs have also relied upon import documents
pertaining to the years 2010 to 2012; Facebook page of the plaintiffs
created in 2010; domain name „aqua-mobiles.com‟ having been
created on 31.12.2010; receipt for development of mobile application;
Mutual Trade Agreement dated 22.03.2009; video of „Aqua M3510‟
uploaded on YouTube.com in 2011; and contracts
entered/correspondences exchanged with third parties for supplying
the products of the plaintiffs. Learned counsel submits that as of
February, 2014, the plaintiff no. 1 has made sales of over Rs. 10 crores
by selling the mobile phones under the brand „Aqua‟ while plaintiff
no. 2 has made sales of over US $ 5 million.
18.5. Learned senior counsel further submits that the plaintiffs have
continuously advertised their products under the mark „Aqua‟ as
averred in its replication and mentioned in paragraph 16 aforegoing. It
is also submitted that the mobile phones of the plaintiffs have also
gained media coverage as with the launch of „Aqua M3510‟, X6 and
J07 by www.mobiledekho.com in 2011; article about the launch of
„Aqua W598‟ by Phone RPT India; coverage of the phones by
amarujala.com in their article dated 27.01.2014; and coverage of the
launch of „Aqua 3G 512‟ by gadgets.ndtv.com.
18.6. Learned senior counsel concludes by saying that being the prior user
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and having goodwill in the mark, the plaintiffs are entitled to an
interim injunction against defendants.
19. Per contra, Mr. Anand, learned counsel for the defendants, submits that
the plaintiffs are not entitled to any interim protection. He has made
the following submissions:
19.1. Learned counsel submits that the plaintiffs have made contradictory
and irreconcilable averments in their pleadings in this suit and CS (OS)
2668/2015. He has drawn the attention of this court to paragraph 26 of
the plaint in this suit and juxtaposed it to paragraph 10 of the written
statement of the plaintiff herein in CS (OS) 2668/2015. He submits
that while the plaintiffs herein have averred that the defendants are
passing off their goods as that of the plaintiffs in this suit, on the
contrary, the plaintiffs have claimed reverse passing off in their written
statement in CS (OS) 2668/2015. Counsel submits this alone
disentitles the plaintiffs from injunctive relief.
19.2. The second submission of the learned counsel is that the plaintiffs have
failed to establish goodwill in the mark as all the documents sought to
be relied upon are false and fabricated documents. Mr. Anand submits
that there is no averment in the pleadings claiming trans-border
reputation. He has drawn the attention of this Court to discrepancies in
the documents of the plaintiffs. It is submitted that the invoices placed
on record cite only one address in Karol Bagh, Delhi and all are
computer generated invoices. Further, out of 72 invoices placed on
record, 65 invoices depict cash transactions which make no reference to
the buyer. Even in respect of the buyers mentioned in the remaining 7
invoices, an independent investigator has deposed, by way of affidavit
dated 16.04.2015, that none of the persons sell the goods of the
plaintiffs. Learned counsel submits that the short retail invoices filed
CS (OS) 2060/2013 Page 11 of 44



by the plaintiffs are also of a dubious nature as an examination of the
date and time of these invoices reveals an unusual pattern that all
invoices pertain to alleged sales made within a short „time slot‟, while
the date of the invoices reveal that they are spread over several months.
19.3. Mr. Anand submits that the plaintiffs have made bald and
unsubstantiated averments in their replication about sales of Rs. 10
crores of the plaintiff no. 1 and about US $ 5 million of the plaintiff no.
2. There is not even a single document to substantiate the sales figures,
further there is not even a single invoice/bill to show generation of
revenue by the plaintiff no. 2. On the contrary, the defendants have
achieved sales of Rs. 1540 crores between April-July, 2015. He
submits that expenditure by the plaintiff no. 2 on advertising in the
magazine published by CIC Media has no bearing on the present suit as
it has no circulation in India.
19.4. In respect of the remaining documents relied upon by the plaintiffs to
show prior use, learned counsel submits that the import documents do
not carry any reference to the mark „Aqua‟; mere creation of the
domain name „aqua-mobiles.com‟ does not confer any reputation or
goodwill and it till date does not allow for purchase of the products of
the plaintiffs and the plaintiffs have not given the number of visitors to
the said domain; Mutual Trade Agreement dated 22.03.2009 does not
establish any goodwill as the same is an agreement inter se the plaintiff
no. 1 and 2; mere maintenance of a Facebook page does not establish
sufficient goodwill for maintaining an action of passing off; the
YouTube video sought to be relied upon has only 58 views, while the
videos regarding Intex Aqua have more than 22,000 views; and the
advertisements in amarujala.com and gadgets.ndtv.com have no bearing
as the same are from the years 2014 and 2015, i.e. after the launch of
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the goods of the defendants in 2012; the Google analytics report is not
authentic. In respect of the trademark application filed in India, Mr.
Anand submits that the same has no bearing on the present suit as mere
filing of an application confers no rights in the mark.
19.5. In order to fortify his second submission, Mr. Anand has relied upon
the judgments of the Supreme Court in Satyam Infoway (Supra)
(paragraph 13) and Uniply Industries Ltd. v. Unicorn Plywood Pvt.
Ltd. , (2001) 5 SCC 95 (paragraph 8) to show that the volume of sales,
extent of advertisement and familiarity amongst the public are relevant
considerations in an action of passing off. Learned counsel has also
relied upon Indian Hotels Company Ltd. & Anr. v. Jiva Institute of
Vedic Science & Culture , 2008 (37) PTC 468 (Del) (DB) (paragraph
33) in support of his submission that the plaintiffs must establish
goodwill and reputation in the mark in addition to prior user.
19.6. Learned counsel also submits that the Registry has in its Examination
Report questioned the capacity of the mark to distinguish the marks of
the plaintiffs as being non-distinctive and further cited several marks
prior to the mark of the plaintiffs which contain the word „Aqua‟. In
respect of the registered mark with Hong Kong Registry, learned
counsel submits that the plaintiffs have not claimed any trans-border
reputation and even otherwise, the mark pertains to a logo with colour
which has been abandoned by the plaintiffs themselves.
19.7. As an alternate submission, learned counsel submits that there is no
possibility of any confusion between the products of the plaintiffs and
the defendants. The defendants use the mark „Intex‟, its house mark
carrying immense reputation and goodwill as being used since 1996,
along with the mark „Aqua‟ on their products. This coupled with other
added matter leaves no possibility of confusion between the goods of
CS (OS) 2060/2013 Page 13 of 44



the parties. Mr. Anand has relied upon the judgments in Kaviraj Pandit
Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories , AIR
1965 SC 980 (paragraph 28) and Star Bazaar Pvt. Ltd. v. Trent Ltd. &
Anr. , 2010 (43) PTC 154 (Del) (DB) (paragraph 21).
19.8. Learned counsel next submits that the dishonest conduct of the
plaintiffs disentitles them from the equitable relief of an injunction.
Mr. Anand submits that the dishonest conduct of the plaintiffs can be
established from the fact that they adopted a slavish copy of the logo of
the defendants, i.e. „
‟, which was the subject matter of the
subsequent suit [CS (OS) 2668/2015] as mentioned in paragraph 2
aforegoing. The plaintiffs have also failed to inform as to any designer
of the logo, which vindicates the stand of the defendants. Learned
counsel submits that the plaintiffs have also made a wrong claim as to
their service centres. The plaintiffs have provided a list of 104 service
centres; out of which an investigation was carried out by the defendants
in 31 service centres, none of which service the products of the
plaintiffs. The plaintiffs have further failed to explain such conduct on
their part. Mr. Anand has also drawn the attention of this Court to the
packaging of the products of the plaintiffs, where they are wrongly
using the ® symbol with the „Aqua‟ trademark and logo. The plaintiffs
have also stated that “ Aqua is a registered trademark ” upon the
packaging of their products in violation of Section 107 of the Trade
Marks Act, 1999. In support of his submission that any party acting
dishonestly or misrepresenting to consumers is not entitled to the
equitable relief of injunction, learned counsel has relied upon the
decisions in Prina Chemical Works and others v. Sukhdayal and
others , ILR (1974) I Del 545 ; Bile Bean Manufacturing Company v.
Davidson , (1906) 23 (31) RPC 725 ; and Cropper Minerva Machines
CS (OS) 2060/2013 Page 14 of 44



Company Ld. v. Cropper, Charlton and Co. Ld. , (1906) 23 (18) RPC
388 and also upon William Williamson Kerr, A Treatise on the Law
th
and Practice of Injunctions , 6 Ed. (ed. John Melvin Paterson),
Universal law Publishing.
19.9. Mr. Anand next submits that the balance of convenience is also in
favour of the defendants owing to higher volume of sales and
expenditure on advertisements. In this regard, counsel has submitted
that if the defendants are restrained at this juncture and later succeed in
the suit, the plaintiffs would not be in a position to compensate the
defendants for the loss. At the time of filing of the suit, the defendants
had sales of more than Rupees 200 crores, which has increased
manifold and for the period April-July, 2015, the sales of the
defendants are around Rupees 1540 crores while the advertising
expenditure is 84 crores.
19.10.Learned counsel submits that the reliance on CA Certificate for
deposition of VAT is misconceived as it merely provides the VAT
deposited by the plaintiffs and does not pertain to „Aqua‟ phones, but
pertains to all the goods of the plaintiffs. It is further submitted that the
explanation offered in respect of the invoices is not plausible and
consequently, the invoices cannot be relied upon until the same are
tested at trial. Mr. Anand submits that the allegation that defendants
knew of plaintiffs‟ applications is misplaced as the said application was
published on 04.05.2015 and opposed by the defendants on 10.08.2015.
Learned counsel has also submitted that the Bill of Entry dated
18.01.2010 cannot be relied upon as the same mentions „Aqya‟, and not
„Aqua‟, as a model number rather than the brand.
19.11.Learned counsel has submitted that the reliance placed upon M.
Thomas McCarthy, McCarthy on Trademarks and Unfair Competition ,
CS (OS) 2060/2013 Page 15 of 44



th
4 Ed., Thomson West is misplaced as reputation is required in order to
establish secondary meaning. He further submits that the law is well
settled by Satyam Infoway (Supra) and Uniply Industries Ltd.
(Supra) , both of which pertain to arbitrary marks.
20. In her rejoinder arguments, Ms. Pratibha Singh, learned senior counsel,
has sought to rebut the contentions by submitting on the following
lines:
20.1. Ms. Singh has reiterated her submissions that being the prior user of the
mark „Aqua‟ and having established goodwill and reputation therein,
the plaintiffs are entitled to an interim injunction against the
defendants. She submits that the plaintiffs have been using the mark
since 2009, while admittedly the defendants had adopted the identical
mark in respect of identical goods in 2012 only.
20.2. Learned senior counsel has relied upon McCarthy (Supra) to show that
words of common usage in language, but arbitrarily applied to goods
and services in question in such a way that it is not descriptive or
suggestive are distinctive and capable of trade mark protection. Ms.
Singh further submits that the defendants having themselves applied for
registration of the mark in Class 9 cannot dispute that the mark is
common to trade or descriptive. In support of her submissions, learned
senior counsel has relied upon the decisions in Jiva Institute of Vedic
Science & Culture (Supra) (paragraph 40) and Procter & Gamble
Manufacturing (Tianjin) Co. Ltd. & Ors. v. Anchor Health & Beauty
Care Pvt. Ltd. , 2014 (59) PTC 421 (Del) (DB) [paragraph 10 (xix)].
Further in respect of the mark having been adopted by numerous
persons, as evidenced by the Search Report of the Trade Marks
Registry, Ms. Singh has submitted that none of the marks specifically
pertain to mobile phones and only few mention all goods contained in
CS (OS) 2060/2013 Page 16 of 44



Class 9. In this regard, she has relied upon the judgment of this Court
in Sohan Lal Nem Chand Jain v. Trident Group , 2012 (49) PTC 105
(Del) (paragraph 72).
20.3. In reply to the argument of the learned counsel for the defendants
pertaining to the veracity of the documents showing goodwill, Ms.
Singh submits that the documents on record clearly establish a prima
facie case of passing off. In respect of the time borne on the Invoices,
learned senior counsel submits that this is owing to a feature in the
software „Tally‟, wherein the time of the computer when the invoices
are printed comes on the invoice and when the invoices were printed to
be filed in this suit, that time is being represented upon the invoices. It
is also submitted that the import documents clearly establish the use of
the mark in India, further the Bill of Entries dated 18.01.2010 and
28.06.2012 clearly bear the name „Aqua‟. Further the Facebook page,
domain names, YouTube video, VAT Certificate of CA, advertisements
and media coverage establish goodwill and use of the mark in India.
Learned senior counsel has also drawn the attention of this Court to an
Invoice dated 09.06.2011 of one Hazel Media for development of
mobile applications for „Aqua phones M3510 and V5‟. She submits
that the advertisements in amarujala.com and gadgets.ndtv.com were
relied upon to show continuous use of the mark till 2015. In respect of
the affidavit of the investigator dated 16.04.2015, she submits that the
said investigation is sham and even otherwise, the same is a matter of
trial and cannot be taken into consideration at this stage.
20.4. Learned senior counsel has next submitted that the added material is
not sufficient to distinguish the goods of the parties to remove any
likelihood of confusion. She submits that owing to triple identity, i.e.
the marks of the parties are identical marks in respect of identical goods
CS (OS) 2060/2013 Page 17 of 44



which move through the identical trade channels, there is a clear
likelihood of confusion. Learned counsel also submits that the
presumption contained in Section 29 (3) of the Trade Marks Act, 1999
would also be applicable in favour of the plaintiffs herein.
20.5. The next argument of Ms. Singh is that the balance of convenience is
also in favour of the plaintiffs. Learned senior counsel has again relied
upon the judgment of this Court in Century Traders (Supra) to submit
that the balance of convenience is also in favour of the plaintiffs as the
continuous use of the mark by the defendants will cause irreparable
harm and injury to the plaintiffs. In respect of the sales figures
highlighted by the defendants, learned senior counsel submits that the
law is well settled that only because the defendant is bigger, the same
will not disentitle to a relief of injunction. To fortify her submissions,
she relies upon paragraph 73 of Sohan Lal Nem Chand Jain (Supra) .
20.6. Last submission of Ms. Singh pertains to the use of the ® symbol by
the plaintiffs without being the registered proprietor of the same.
Learned senior counsel submits that the use does not disentitle the
plaintiffs to an injunction in a passing off matter and further that the
same is a bona fide mistake. In support of her submissions, Ms. Singh
has relied upon the judgment in Indian Dental Works and Anr. v. K.
Dhanakoti Naidu and Anr. , AIR 1962 Mad 127 (paragraph 23), which
has been followed in Gulfan Exporters v. Azad Bharat Tobacco
Factory , 1989 All. L.J. 652 (paragraph 10).
21. I have heard the counsel for the parties and perused the pleadings,
application and various documents on record. The arguments of the
counsel for the plaintiffs/ applicants can be summarized as under:
a. The plaintiffs have adopted the mark „Aqua‟ in the year 2009 in
respect of mobile phones and its accessories and have through
CS (OS) 2060/2013 Page 18 of 44



extensive sales and marketing amassed goodwill in the mark.
b. Plaintiffs have also sought registration of the mark „Aqua‟ in India
and Hong Kong. They have secured registration in Hong Kong in
the year 2012; while their application with the Indian Trade Marks
Registry remains pending.
c. It is the case of the plaintiffs, that the defendants had adopted an
identical mark in respect of identical goods in the year 2012 in
order to free ride upon the goodwill of the plaintiffs.
d. The defendants have by aggressive advertisement and marketing
overwhelmed the market and attained much greater sales than the
plaintiffs.
e. Passing off is established by triple identity, i.e. the defendants have
adopted an identical mark, in respect of identical goods involving
identical trade channels.
f. Being the prior user and having established goodwill in the mark,
the plaintiffs are entitled to an interim injunction, otherwise they
shall be put to irreparable loss.
22. The argument of the non-applicants/defendants is on the following
lines:
a. The defendants have been marketing mobile phones under the mark
„Intex‟ and as the business expanded, they introduced multiple sub-
brands including „Aqua‟ in the year 2012.
b. Adoption of the mark „Aqua‟ was bona fide as the same represented
the quality of the screen of the products of the defendants.
c. Plaintiffs have made contradictory and irreconcilable averments in
pleadings which disentitles them from injunctive relief.
d. The mark of the plaintiffs „Aqua‟ is incapable of distinguishing the
goods of the plaintiffs and therefore not entitled to trademark
CS (OS) 2060/2013 Page 19 of 44



protection. Even otherwise, the same cannot be protected as being
a descriptive mark, the plaintiffs must show that the same has
acquired a secondary meaning which they have failed to establish.
e. Documents filed on record by the plaintiffs are of a dubious nature
and cannot be relied upon without being tested at trial to establish
goodwill or prior use of the mark. Consequently, the plaintiffs have
failed to establish a prima facie case of passing off.
f. The use of the mark by the defendants is along with added material
which does not leave any likelihood of confusion.
g. The dishonest conduct of the plaintiffs disentitles them from
seeking an injunction which is a relief in equity.
h. Owing to greater sales volume and substantially higher
advertisement expenditure, the balance of convenience is also in
favour of the defendants.
23. Since the submissions of the parties are multiple and diverse, I deem it
appropriate to deal with them under separate heads.

WORD ‘AQUA’ AS A TRADEMARK
24. The first contention which requires consideration of this Court is as to
whether the mark „Aqua‟ is entitled to trademark protection when
applied to mobile phones and their accessories?
25. Learned senior counsel for the plaintiffs has argued that the mark is
arbitrary in its application to mobile phones and accordingly, is
inherently distinctive being entitled to the highest degree of trademark
protection. Further Ms. Singh has stated that the defendants having
claimed proprietary right in the mark themselves, cannot question the
same at this stage. On the contrary, learned counsel for the defendants
has contended that the word being a common English word is not
CS (OS) 2060/2013 Page 20 of 44



capable of distinguishing the goods of the plaintiffs. He additionally
contended that the mark being a descriptive mark, the plaintiffs must
show that it has acquired a secondary meaning for seeking protection
before this Court.
26. Marks are generally classified into five categories of increasing
distinctiveness, these are (1) generic; (2) descriptive; (3) suggestive; (4)
arbitrary; or (5) fanciful. This classification was initially set out by the
nd
2 Circuit Court in United States in Abercrombie & Fitch Co. v.
nd
Hunting World, Inc. , 537 F. 2d 4, 9 (2 Cir. 1976) with only 4
categories as arbitrary and fanciful regarded as one class. Later Justice
White in Two Pesos, Inc. v. Taco Cabana, Inc. , 505 US 763 explained
the categories as under:
“ A trademark is defined in 15 U. S. C. §1127 as including "any
word, name, symbol, or device or any combination thereof"
used by any person "to identify and distinguish his or her
goods, including a unique product, from those manufactured
or sold by others and to indicate the source of the goods, even
if that source is unknown." In order to be registered, a mark
must be capable of distinguishing the applicant's goods from
those of others. § 1052. Marks are often classified in
categories of generally increasing distinctiveness; following
the classic formulation set out by Judge Friendly, they may be
(1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or
(5)fanciful. …The latter three categories of marks, because
their intrinsic nature serves to identify a particular source of a
product, are deemed inherently distinctive and are entitled to
protection. In contrast, generic marks-those that "refe[r] to the
genus of which the particular product is a species," Park 'N
Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S.189, 194 (1985),
citing Abercrombie & Fitch, supra, at 9-are not registrable as
trademarks. Park 'N Fly, supra, at 194.

Marks which are merely descriptive of a product are not
inherently distinctive. When used to describe a product, they
do not inherently identify a particular source, and hence
cannot be protected. However, descriptive marks may acquire
CS (OS) 2060/2013 Page 21 of 44



the distinctiveness which will allow them to be protected under
the Act. Section 2 of the Lanham Act provides that a
descriptive mark that otherwise could not be registered under
the Act may be registered if it "has become distinctive of the
applicant's goods in commerce.". … This acquired
distinctiveness is generally called "secondary meaning." See
ibid.; Inwood Laboratories, supra, at 851, n. 11; Kellogg Co.
v. National Biscuit Co., 305 U. S. 111, 118 (1938). The
concept of secondary meaning has been applied to actions
under §43(a). See, e. g., University of Georgia Athletic Assn. v.
Laite,756 F. 2d 1535 (CAll 1985); Thompson Medical Co. v.
Pfizer Inc., supra.

The general rule regarding distinctiveness is clear: An
identifying mark is distinctive and capable of being protected
if it either (1) is inherently distinctive or (2) has acquired
distinctiveness through secondary meaning. … ”
(Emphasis Supplied)

27. The aforegoing categorisation has been accepted by a coordinate bench
of this court in Evergreen Sweet House v. Ever Green and Ors. , 2008
(38) PTC 325 (Del) (paragraph 14) wherein it was held that the mark
„Evergreen‟ in its application to sweets and confections is an arbitrary
one and accordingly is entitled to protection. Similar classification has
been given in McCarthy (Supra) and sought to be relied upon by the
counsel for the plaintiffs.
28. Now what remains to be seen is as to which category the mark „Aqua‟
falls? The word „Aqua‟ has Latin origins and means water [See Black‟s
th
Law Dictionary , 9 Ed. (ed. Bryan A. Garner), West]. Water does not
readily conjure up the image of mobile phones or describe its features
and is as such an arbitrary mark in its application to mobile phones.
Therefore, it is inherently distinctive, i.e. capable of distinguishing the
goods of the plaintiffs and there is no need to show an acquired
secondary meaning.
CS (OS) 2060/2013 Page 22 of 44



29. The reliance placed by the Mr. Anand on Satyam Infoway (Supra) and
Uniply Industries Ltd. (Supra) is misplaced as in Satyam Infoway
(Supra) , the mark in question was „sify‟ which was held to be a coined
word/ fanciful mark; while in Uniply Industries Ltd. (Supra) there is
no discussion of secondary meaning or inherently distinctive marks.
30. The learned counsel for the defendants has also relied upon the Search
Report of the Trade Mark Registry mentioning numerous persons using
the mark „Aqua‟ in respect of goods in Class 9, to show that the mark is
common to trade and consequentially not capable of protection.
Rebutting the same, Ms. Singh had argued that none of the marks
pertain to mobile phones specifically and there are only a few which
refer to all goods under class 9.
31. Similar arguments were made in Sohan Lal Nem Chand Jain (Supra) ,
where this very Court had come to the following conclusion:
“ 52. [sic: 72.] A mere filing of the search report from the
trademarks office does not prove as to whether the marks
mentioned in the search report have actually been used or not.
It is necessary for the party who relies upon the marks of third
party to produce cogent and clear evidence of user in order to
prove the defence of "common marks to the trade" on the basis
of the third party user. Hence, in the absence of valid and
cogent evidence, the submission of the defendants cannot be
accepted. ”
(Emphasis Supplied)

32. The same view has been held by this Court in Novartis AG v. Crest
Pharma Pvt. Ltd. and Anr. , 2009 (41) PTC 57 (Del) (paragraph 33);
Pearl Retail Solutions Pvt. Ltd. v. Pearl Education Society , 2014 (58)
PTC 26 (Del) (paragraph 19) and Sanofi India Ltd. v. Universal
Neutraceuticals Pvt. Ltd. 2014 (60) PTC 593 (Del) (paragraph 38).
Accordingly, this argument of the defendants must be rejected.
33. It may also be noticed that the defendants have also claimed proprietary
CS (OS) 2060/2013 Page 23 of 44



rights in the mark themselves, thus, they cannot be allowed to turn
around and claim that the mark is not capable of distinguishing the
goods of the plaintiffs.
34. The defendants have themselves applied for registration of the word
mark „Aqua‟ in class 9 and 16 with the Indian Trade Marks Registry,
being applications bearing nos. 2429526 and 2429525 respectively.
35. It has been repeatedly held that any person who himself claims
proprietorship over a mark cannot later change his mind to say that the
same is not distinctive and not entitled to trademark protection. In
Automatic Electric Limited v. R.K. Dhawan , (1999) 77 DLT 292:
(1999) 19 PTC 81 , Dr. M.K. Sharma, J. had held as under:
“ 16. The defendants got their trade mark “DIMMER DOT”
registered in Australia. The fact that the defendant itself has
sought to claim trade proprietary right and monopoly in
“DIMMER DOT”, it does not lie in their mouth to say that the
word “DIMMER” is a generic expression. …”
(Emphasis Supplied)

36. This principle has also been accepted by a division bench of this Court
in Jiva Institute of Vedic Science & Culture (Supra) , wherein it was
held that the appellants therein had “ itself applied for registration of the
Jiva as a trade mark and cannot, therefore, argue that the mark is
descriptive ” (paragraph 40) . Both Automatic Electric Limited (Supra)
and Jiva Institute of Vedic Science & Culture (Supra) have been
accepted and followed in Procter & Gamble Manufacturing (Tianjin)
Co. Ltd. (Supra) . Therefore, the defendants themselves having applied
for registration of the mark cannot today contend that the mark is
descriptive.
37. Accordingly, the first contention of the defendants must be rejected for
three reasons; first, „Aqua‟ being a arbitrary mark in its application to
CS (OS) 2060/2013 Page 24 of 44



mobile phones requires no proof of secondary meaning; second, mere
filing of a search report without cogent and clear evidence of user
cannot establish that the mark is common to trade; and third, as the
defendants have themselves applied for registration of „Aqua‟, they
cannot be permitted to argue that the same is descriptive or not capable
of distinguishing the goods of the plaintiffs at this juncture.

CONTRADICTORY PLEADINGS
38. Mr. Anand has contended that the plaintiffs have made contradictory
and irreconcilable pleadings in their plaint in the present suit and their
written statement in CS (OS) 2668/2015. I deem it appropriate to
reproduce the two paragraphs sought to be relied upon by the learned
counsel for the defendants.
39. Paragraph 26 of the plaint of the plaintiffs in the present suit reads as
under:
“ 26. That the Defendants has [sic: have] not only adopted the
mark of the Plaintiffs with respect to some goods being sold by
the Plaintiffs and the same mark is being used as a tool to pass
off its goods as that originating from the Plaintiffs or having a
connection/collaboration with the Plaintiffs thereby creating
confusion in the market by passing off their goods as if they
were sold/marketed/manufactured under Plaintiff firm or by
the Plaintiffs firm leading to causing wrongfull [sic] loss and
injury to the Plaintiffs. ”

40. Paragraph 10 of the written statement of the plaintiffs herein in CS
(OS) 2668/2015 reads as under:
“ 10. Assuming without admitting that the Plaintiffs have
acquired any reputation in the „
‟ logo on account of
their alleged large sales and advertisements, it is most
respectfully submitted that the Plaintiffs are still not entitled to
use the mark „AQUA‟ or the „
‟ logo. It is stated that
large sales and advertisements do not entitle a subsequent user
CS (OS) 2060/2013 Page 25 of 44



to restrict a prior user. This is on account of the fact that the
act of using the said marks by the Plaintiffs amounts to reverse
passing off /reverse confusion which is also not permitted
under law. It is submitted that „
‟ logo is nothing but a
representation of the word „AQUA‟, of which the Defendants
are the prior users. It is thus submitted that any alleged
goodwill or reputation that the Plaintiffs might have acquired
in the said representation of the word „AQUA‟, does not entitle
them to use the „
‟ logo. This is due to the reason that
on account of the Plaintiffs‟ use of the word „AQUA‟ and
„
‟ logo the Defendants are suffering as they are
losing the value of their trade mark, its product identity, it‟s
source identifying function and control over it‟s goodwill and
reputation. It is stated that the use of the mark „AQUA‟ and
„
‟ logo by the Plaintiffs leads the consumers to
believe that the Defendants‟ goods are those of the Plaintiffs
as the Plaintiffs have allegedly with overwhelming advertising
and promotion have overwhelmed the market place. As a
consequence, the consumers might also believe that
Defendants‟ goods are being passed off as the Plaintiffs‟
goods and thus the goodwill and reputation of the Defendants‟
in their mark „AQUA‟ will be impaired. ”
(Emphasis Supplied)
Note: „Plaintiffs‟ in the aforegoing paragraph refers to the
defendants herein/Intex and „Defendants‟ refers to the
plaintiffs herein/AZ Tech.

41. The contention of the learned counsel for the defendants/ non-
applicants is that the plaintiffs‟ averments in the aforequoted
paragraphs are contrary and irreconcilable.
42. It has not been elaborated before this Court as to how the aforegoing
paragraphs can be said to be contrary. Even otherwise, I am of the
view that there is no contradiction in the pleadings of the plaintiffs
herein. In paragraph 26 of the plaint in the present case, the plaintiffs
have averred that the use of the mark „Aqua‟ by the defendants causes
confusion in the minds of the public as if the goods of the defendants
CS (OS) 2060/2013 Page 26 of 44



originate from the plaintiffs or are manufactured/marketed in
association with the plaintiffs. In paragraph 10 of the written statement
of the plaintiffs herein in CS (OS) 2668/2015, they have averred that
the use of the mark by the defendants is itself unlawful and now they
cannot claim any goodwill in the mark, as the original mark „Aqua‟
remains that of the plaintiffs. It is in this background the plaintiffs
herein have averred that the consumers might have an impression that
they are passing off the goods of the defendants to show that loss is
being caused to the plaintiffs. Accordingly, I am of the view that there
is no contradiction in the pleadings of the plaintiffs in this suit and CS
(OS) 2668/2015. Another reason, I cannot accept the argument of the
learned counsel for the defendants is that paragraph 10 of the written
statement of the plaintiffs herein in CS (OS) 2668/2015 begins with
“ Assuming without admitting that the Plaintiffs have acquired any
reputation in the „
‟ logo on account of their alleged large
sales and advertisements. ” Therefore, it cannot be said that the
plaintiffs herein have accepted the goodwill of the defendants in the
mark „Aqua‟.

PRIOR USE AND GOODWILL

43. It is settled law that in order to succeed in a case of passing off, the
plaintiff must establish priority right over the defendants.

44. Learned senior counsel for the plaintiffs has argued that there are
documents on record to prima facie establish goodwill and prior use of
the mark to sustain a case of passing off. Mr. Anand has rebutted the
said contention by stating that all the documents on record are false and
fabricated and must be put to trial before they can be relied upon;
additionally, he has submitted that small volume of sales and
CS (OS) 2060/2013 Page 27 of 44



advertisement are not capable of sustaining a case of passing off.
45. Learned counsel for the defendants had argued that all the invoices on
record are computer generate invoices; out of the 72 invoices 65 are
cash transactions and do not depict the names of the buyer; and the
remaining 7 invoices mention names of sellers, who do not deal with
the goods of the plaintiffs as is proved from the affidavit of the
investigator dated 16.04.2015.
46. The said contentions cannot be accepted as merely by being cash sales
or computer generated invoices has no bearing upon their veracity. In
respect of the 7 sellers, the same cannot be looked into at this point as
the same is a matter of trial.
47. Mr. Anand had also submitted the retail invoices are false and
fabricated by drawing the attention of this Court to an anomaly in the
date and time of the invoices. Learned senior counsel has clarified that
the same was owing to a feature of the software „Tally‟ which punched
the time of printing of the invoice rather than the time of actual
generation, thus, when duplicate copies were printed to be filed in the
present suit, that time was recorded upon the invoices. In view of the
clarification given by the learned senior counsel, I am of the view the
invoices can be relied upon by the Court at this stage.
48. In addition to the invoices, the plaintiffs have relied upon import
documents, Facebook page, registration of domain name „www.aqua-
mobiles.com‟ on 31.12.2010, invoice dated 09.06.2011 of one Hazel
Media for development of mobile applications, mutual trade agreement
dated 22.03.2009, YouTube video, trademark applications in India and
Hong Kong, Google Analytics Report, advertisements, certificate of
chartered accountant for payment of VAT and contracts entered and
correspondences with third parties to establish prior use and goodwill in
CS (OS) 2060/2013 Page 28 of 44



the mark „Aqua‟.
49. Except the trademark applications and the mutual trade agreement
dated 22.03.2009, I am of the opinion that the remaining documents
prima facie establish the plaintiffs having been using the mark since
2009. It remains an admitted position that the defendants have started
using the mark „Aqua‟ as a sub-brand in the year 2012. Accordingly,
the plaintiffs are a prior user of the mark.
50. Learned counsel for the defendants has also contended that the
documents filed by the plaintiffs fail to establish sufficient volume of
sales and advertisements in India to establish priority and familiarity in
the minds of the public.
51. It is settled law that some amount of sales have to be shown in order to
establish priority rights in a mark and at the same time mere casual,
intermittent or experimental use may not be sufficient to gain rights in a
mark. The High Court of Bombay in Consolidated Foods Corporation
v. Brandon and Company Private Ltd. , AIR 1965 Bom 35: 1964 (66)
BomLR 612 after considering national and international decisions, at
the time, held that:
“… To summarise, therefore, a trader acquires a right of
property in a distinctive mark merely by using it upon or in
connection with his goods irrespective of the length of such
user and the extent of his trade. The trader who adopts such a
mark is entitled to protection directly the article having
assumed a vendible character is launched upon the market. As
between two competitors who are each desirous of adopting
such a mark, "it is, to use familiar language, entirely a
question of who gets there first." Gaw Kan Lye v. Saw Kyone
Saing AIR 1939 Ran 343. Registration under the statute does
not confer any new right to the mark claimed or any greater
right than what already existed at common law and at equity
without registration. It does, however, facilitate a remedy
which may be enforced and obtained throughout the State and
it established the record of facts affecting the right to the
CS (OS) 2060/2013 Page 29 of 44



mark. Registration itself does not create a trade mark. The
trade mark exists independently of the registration which
merely affords further protection under the statute. Common
law rights are left wholly unaffected. Priority in adoption and
use of a trade mark is superior to priority in registration.
…
…For the purpose of claiming such proprietorship, it is not
necessary, as already stated, that the mark should have been
used for considerable any length of time. As a matter of fact, a
single actual use with intent to continue such use eo instanti
confers a right to such mark as a trade mark. It is sufficient if
the article with the mark upon it has actually become a
vendible article in the market with intent on the part of the
proprietor to continue its production and sales. It is not
necessary that the goods should have acquired a reputation for
quality under that mark. Actual use of the mark under such
circumstances as showing an intention to adopt and use it as a
trademark is the test rather than the extent or duration of the
use. A mere casual, intermittent or experimental use may be
insufficient to show an intention to adopt the mark as a trade
mark for specific article or goods. ”
(Emphasis Supplied)

52. The judgment of the High Court of Bombay has been followed by the
Division Bench of this Court in Century Traders (Supra) (paragraphs
11 and 12). Further in Satyam Infoway (Supra) the Supreme Court,
while dealing with the question whether domain names could be subject
to the normal legal norms of trademarks, had held as under:
“ 12. The next question is would the principles of trade mark
law and in particular those relating to passing off apply? An
action for passing off, as the phrase "passing off" itself
suggests, is to restrain the defendant from passing off its goods
or services to the public as that of the plaintiff's. It is an action
not only to preserve the reputation of the plaintiff but also to
safeguard the public. The defendant must have sold its goods
or offered its services in a manner which has deceived or
would be likely to deceive the public into thinking that the
defendant's goods or services are the plaintiff's. The action is
normally available to the owner of a distinctive trademark and
CS (OS) 2060/2013 Page 30 of 44



the person who, if the word or name is an invented one,
invents and uses it. If two trade rivals claim to have
individually invented the same mark, then the trader who is
able to establish prior user will succeed. The question is, as
has been aptly put, who gets these first? It is not essential for
the plaintiff to prove long user to establish reputation in a
passing off action. It would depend upon the volume of sales
and extent of advertisement.
29. What is also important is that the respondent admittedly
adopted the mark after the appellant. The appellant is the
prior user and has the right to debar the respondent from
eating into the goodwill it may have built up in connection
with the name. ”
(Emphasis Supplied)

53. Further the learned counsel for the defendants has relied upon the
judgment of the Supreme Court in Uniply Industries Ltd. (Supra) ,
more particularly paragraph 8, which reads as under:
“ 8. Some courts indicate that even prior small sales of goods
with the mark are sufficient to establish priority, the test being
to determine continuous prior user and the volume of sale or
the degree of familiarity of the public with the mark. Bona fide
test of marketing, promotional gifts and experimental sales in
small volume may be sufficient to establish a continuous prior
use of the mark. But on some other occasions courts have
classified small sales volume as so small and inconsequential
for priority purposes. Therefore, these facts will have to be
thrashed out at the trial and at the stage of grant of temporary
injunction a strong prima facie case will have to be
established. It has also to be borne in mind whether the
appellant had also honestly and concurrently used the trade
marks or there are other special circumstances arising in the
matter. The courts below have merely looked at what the
prima facie case is and tried to decide the matter without
considering the various other aspects arising in the matter.
Therefore, we think, the appropriate order to be made is that
injunction either in the favour of the appellant or against them
or vice versa is not appropriate and the proceedings in the suit
shall be conducted as expeditiously as possible or the
Registrar under the Trade and Merchandise Marks Act, 1958
CS (OS) 2060/2013 Page 31 of 44



may decide the matter which may govern the rights of the
parties. ”
(Emphasis Supplied)

54. From the aforegoing judgments, it is clear that in an action of passing
off, prior user remains the ultimate test. This is subject to one
exception being that a mere casual, intermittent or experimental use
may be insufficient to sustain an action of passing off. This is so as the
intention to adopt the mark as a trade mark may not be established to
sustain a priority claim. This is what led to the Supreme Court in
Uniply Industries Ltd. (Supra) observing that “ on some other
occasions courts have classified small sales volume as so small and
inconsequential for priority purposes. ” Accordingly, for establishing
priority at an interim stage it may not be necessary to show substantial
sales or advertisements but, at the same time, sufficient enough for the
courts to come to a strong prima facie opinion that there was a clear
intention to adopt the mark for the particular goods.
55. Applying the aforegoing principles in the present case, after
considering the contentions of the counsel for the defendants
questioning the veracity of the documents, I am of the view that the
following documents clearly establish the priority rights of the
plaintiffs to adopt the mark in respect of mobile phones:
a. Invoices showing the sales of the mobile phones of the plaintiffs
from 01.11.2009 onwards till the filing of the suit;

b. Bills of Entries (import documents) for the year 2012, which clearly
mention the mark „Aqua‟ of the plaintiffs;
c. Facebook page and the images featuring the phones of the plaintiffs
of the year 2010;
d. Invoice dated 09.06.2011 of one Hazel Media for development of
CS (OS) 2060/2013 Page 32 of 44



mobile applications for „Aqua phones M3510 and V5‟;
e. YouTube video uploaded on 12.06.2011 of the mobile phones of
the plaintiffs, specifically „Aqua M3510‟
f. Supplier contracts with third parties for the products sold under the
„Aqua‟ mark;
g. Sponsorship of Milton Kotler Marketing Workshop held in
Kathmandu, Nepal on 25.06.2011;
h. Coverage of the launch of mobile phones „Aqua M3510, X6 and
J07 Plus‟ on MobileDekho.com in 2011;
i. Article about „Aqua Mobile W598‟ dated 12.05.2011 featured on
Phone RPT India (india.phonerpt.com).
56. From the aforegoing documents, the intention of the plaintiffs to adopt
the mark „Aqua‟ in respect of mobile phones clearly stands established.
The aforegoing documents cannot be said to denote inconsequential
sales or advertising for a priority claim. Accordingly, I am of the view
that they establish a strong prima facie case that the plaintiffs have been
using the mark since the year 2009 and have established goodwill
therein.

ADDED MATERIAL
57. The next contention to be seen is whether the added material in the
mark can be said to be sufficient to dispel the likelihood of the
confusion in the minds of the public?

58. In this regard, Mr. Anand has submitted that the mark „Aqua‟ is used in
conjunction with the house mark of the defendants, i.e. „Intex‟, which
holds tremendous reputation with the public. This along with other
added matter dispels the likelihood of confusion.
59. The law is well-settled that in cases of passing off, unlike an action
CS (OS) 2060/2013 Page 33 of 44



based upon infringement of a registered trademark, the defendant can
show that the added matter is sufficient to distinguish his goods. In
Kaviraj Pandit Durga Dutt Sharma (Supra) , while highlighting the
difference between an action of passing off and injunction, the Supreme
Court had held as under:
28. The other ground of objection that the findings are
inconsistent really proceeds on an error in appreciating the
basic differences between the causes of action and right to
relief in suits for passing off and for infringement of a
registered trade mark and in equating the essentials of a
passing off action with those in respect of an action
complaining of an infringement of a registered trade mark. …
The finding in favour of the appellant to which the learned
Counsel drew our attention was based upon dissimilarity of
the packing in which the goods of the two parties were vended,
the difference in the physical appearance of the two packets by
reason of the variation in their colour and other features and
their general get-up together with the circumstance that the
name and address of the manufactory of the appellant was
prominently displayed on his packets and these features were
all set out for negativing the respondent's claim that the
appellant had passed off his goods as those of the respondent.
These matters which are of the essence of the cause of action
for relief on the ground of passing off play but a limited role in
an action for infringement of a registered trade mark by the
registered proprietor who has a statutory right to that mark
and who has a statutory remedy in the event of the use by
another of that mark or a colourable limitation thereof. While
an action for passing off is a Common Law remedy being in
substance an action for deceit, that is, a passing off by a
person of his own goods as those of another, that is not the gist
of an action for infringement. The action for infringement is a
statutory remedy conferred on the registered proprietor of a
registered trade mark for the vindication of the exclusive right
to the use of the trade mark in relation to those goods (Vide
s. 21 of the Act). The use by the defendant of the trade mark of
the plaintiff is not essential in an action for passing off, but is
the sine qua non in the case of an action for infringement. No
doubt, where the evidence in respect of passing off consists
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merely of the colourable use of a registered trade mark, the
essential features of both the actions might coincide in the
sense that what would be a colourable limitation of a trade
mark in a passing off action would also be such in an action
for infringement of the same trade mark. But there the
correspondence between the two ceases. In an action for
infringement, the plaintiff must, no doubt, make out that use of
the defendant's mark is likely to deceive, but were 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 make 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. ”
(Emphasis Supplied)

60. Further in Star Bazaar Pvt. Ltd. (Supra) , a Division Bench of this
Court while dealing with the passing off of the mark „Star Bazaar‟, of
which the appellant was the prior user of the mark, had come to the
conclusion that the use of the word „A Tata Enterprise‟ over „Star
Bazaar‟ by the respondents therein was sufficient to distinguish the
stores of the parties.
61. In the present case, learned counsel for the defendants has primarily
submitted that the use of the words „Intex‟ in conjunction with „Aqua‟
dispels the likelihood of confusion and consequently, no interim
injunction should be granted.
62. I am of the view that the usage of the word „Intex‟ may not be
sufficient to dispel the likelihood of confusion especially when „Aqua‟
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is being marketed as a separate sub-brand. This may even create an
impression upon the public that the plaintiffs‟ business has been
acquired by the defendants and consequently, is not sufficient to
disentitle the defendants from an interim injunction. Learned counsel
had also submitted that there is other added material, but has failed to
substantiate on the same.
63. Another reason, I am unable to accept the contention of the learned
counsel for the defendant is that the defendants have applied for the
registration of the mark „Aqua‟ unaccompanied by the word „Intex‟ in
Class 9 and 16 with the Trade Marks Registry which shows the clear
intention of the defendants to use the mark in an isolated manner.

DISHONEST CONDUCT
64. The next submission of Mr. Anand is that the plaintiffs are not entitled
to an injunction owing to their dishonest conduct. The argument is
threefold: first, the adoption of the logo of the defendants, i.e.
„
‟; second, false claim regarding service centres; and third,
wrong usage of the symbol ® on their packaging.
65. In William Williamson Kerr (Supra), it has been stated that any trader
using a deceptive trade mark or using the mark for the purposes of
fraudulent trade disentitles himself to the equitable relief of injunction.
While observing so, reliance was placed upon the judgment of the
British Courts in Bile Bean Manufacturing Company (Supra) and
Cropper Minerva Machines Company Ld. (Supra) .
66. In Bile Bean Manufacturing Company (Supra) , the Court of Session
in Scotland had refused to interdict/injunct the respondents from using
the mark „Bile Beans‟ holding that the facts of the case revealed a
“ gigantic and too successful fraud. ” The drug manufacturer had
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marketed medicines for biliousness as being originated from a
discovery of a native Australian herb by one, Mr. Charles Forde, an
eminent scientist; while the truth was that the complainers were
marketing a medicine obtained from drug manufacturers in America.
In this background, the court came to the conclusion that since the
whole business of the complainers was based upon “ undiluted
falsehood ” perpetrating a “ gigantic and too successful fraud ” upon the
public, they were not entitled to protection of the courts.
67. In Cropper Minerva Machines Company Ld. (Supra) , the High Court
of Justice (Chancery Division) was dealing with a case where the
plaintiff was trying to advertise its platen printing machines as under a
patent which had expired, even though they were the successors-in-
interest of the firm which held the original patent. Yet the plaintiff
were mentioning “ The old and original firm ” in their advertisements in
order to mislead the public; this led to Justice Farwell to state that “ I
think the Plaintiffs will do well to alter that advertisement before they
come into this Court and attempt to obtain an Injunction against
anybody else. ” The Court had gone on to appreciate the evidence in the
suit and ultimately dismissed the action of passing off with costs,
holding that the same was based on the “ flimsiest evidence .”
68. Learned counsel for the defendants has also relied upon the following
paragraph of Prina Chemical Works (Supra) :
“ It is well established that he who comes into equity must come
with clean hands. This applies strongly to parties seeking
relief against the infringement of trade marks or in passing off
action and against unfair competition. One seeking relief
against the fraud of others must be free from fraud. An
exclusive privilege for deceiving the public is assuredly act
one that a Court of Equity can be required to sanction.
Accordingly, it is essential that the plaintiff should not be in
his trade mark or in his advertisements and business himself
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guilty of any false or misleading misrepresentation; that if the
plaintiff makes any material false statement in connection with
the property, which he seeks to protect, he loses his right to the
assistance of a Court of Equity; Thus, where any sample or
liable claimed as a trade mark is so constructed or worded as
to make or contain a distinct assertion which is false, no
property can be claimed on it, or in other words the right to
the exclusive use of it cannot be maintained.
The interference of the Court by injunction was founded purely
on equitable principles. The plaintiff who in other respects
would be entitled to obtain remedy against an infringer, may
yet be deprived of his right by a reason of fraudulent statement
contained in his own trade mark. ”
(Emphasis Supplied)

69. In the said case, the Division Bench of this Court was dealing with an
appeal from an order of the Additional District Judge wherein this
Court had come to the conclusion that the plaintiffs/respondents therein
had themselves pirated the mark of their previous partner, who had
remained so only for 16 days. This had led to the Court observing that
“ there is no commercial proprietary right in the plaintiffs as they
themselves appear to have been guilty of commercial piracy. ”
70. In Leather Cloth Company, Limited v. The American Leather Cloth
Company, Limited , 33 L. J. Ch. 199 (1863) , Lord Westbury, while
dealing with an appeal observed that the plaintiff‟s trademark and label
contained numerous untrue representations or statement and held that
the Courts may not grant injunction if the mark itself so worded to play
a fraud upon the public. The decision has been upheld by the House of
Lords [See 11 Eng. Rep. 1435 (1865)]. The relevant paragraphs of the
judgment read as under:
“ The same things are necessary to constitute a title to relief in
equity in the case of the infringement of the right to a trade
mark, as in the case of the violation of any other right of
property. But when the owner of a trade mark applies for an
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injunction to restrain the Defendant from injuring his property
by making false representations to the public, it is essential
that the Plaintiff should not in his trade mark, or in the
business connected with it, be himself guilty of any false or
misleading representation; for, if, the Plaintiff makes any
material false statement in connection with the property he
seeks to protect, he loses, and very justly, his right to claim the
assistance of a Court of Equity.
…
It is true that a name or the style of a firm may by long usage
become a mere trade mark, and cease to convey any
representation as to the fact of the person who makes, or the
place of manufacture; but where any symbol or label claimed
as a trade mark is so constructed or worded as to make or
contain a distinct assertion, which is false, I think no property
can be claimed on it, or, in other words, the right to the
exclusive use of it cannot be maintained.
To sell an article stamped with a false statement is, pro tanto,
an imposition on the public, and therefore, in the case
supposed, the Plaintiff and Defendant would be both in pari
delicto. This is consistent with many decided cases. ”
(Emphasis Supplied)

71. From the aforegoing judgments, it is clear that injunction being a relief
in equity can be denied to a party who is himself misrepresents to the
public. This misrepresentation should be in the mark itself or by some
other statement upon the packaging upon the goods by which the public
is likely to get misled. This was the case in Bile Bean Manufacturing
Company (Supra) , wherein the imaginary Charles Forde was the
inventor of the said beans/ medicines; in Cropper Minerva Machines
Company Ld. (Supra) , the representation was of an expired patent by
referring to the term „Cropper‟; in Prina Chemical Works (Supra) , the
plaintiffs were misrepresenting that they were the successors-in-interest
of one, Haji Ehsan Elahi, while the Court had come to a conclusion that
there was no assignment. Even in Leather Cloth Company, Limited
(Supra) , the plaintiffs had themselves tried to impose upon their goods
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as that they were of Crockett International Leather Cloth Company, that
they were tanned when actually they were untanned and included in a
patent which was subsisting. Accordingly, the Courts may deny the
equitable relief of injunction if the person approaching the Court
himself is guilty of misrepresenting to the public. Such
misrepresentation must be such as to be contained in the mark itself,
sought to be protected, or in the business connected with it.
72. Applying the aforegoing principles in the present matter, I am of the
view that there is no misrepresentation which would disentitle the
plaintiffs from the equitable relief of injunction. I must reject the
submissions of the learned counsel for the defendants as firstly;
copying „
‟ cannot be said to be a fraud perpetrated upon the
general public, especially when the stand of the plaintiffs remains that
they are the lawful proprietors of the mark „Aqua‟; and secondly, the
alleged mis-statement of service centres is a matter of trial and cannot
be looked into at this point. Even otherwise, the same cannot be said to
be of such nature to disentitle the plaintiffs of the equitable relief.
73. In respect of the unlawful use of the symbol ®, even the same cannot
disentitle the plaintiffs from the equitable relief of injunction as the
same would not amount to a misrepresentation in the mark itself or the
business associated with it.
74. Even otherwise, the act of the plaintiffs is not of such a nature that
would disentitle the plaintiffs for grant of interim relief on this ground
alone. Similar question had arisen before the High Court of Madras in
Indian Dental Works (Supra) , wherein the Court held as under:
(21) The question of wrongful user of the expression
'registered' in a trade mark when the mark had not been
actually registered has come up for decision before English
Courts. In In the matter of an application by William Bailey
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(Birmingham) Ltd., to register a trade mark and an opposition
thereto by A. C. Gilbert Co., (1935) 52 R. P. C. 136, the
question arose whether the fraudulent user of the expression
"registered" disentitled a party who applied for registration of
his trade mark to the relief of registration. It was laid down
that decision that if the user was deliberately fraudulent it
might have the effect of disentitling the party to registration.
Where it is merely a blunder due to misapprehension that
result would not follow.

(22) In re : Arthur Fairest Ltd's application, (1951) 68 RPC
197 to register a trade mark, the same question arose for
consideration. Reference was made to three prior decisions on
the subject, viz, Altman's application, (1904) 21 R. P. C. 753.
Lyle and Kihahah's application. (1907) 24 RPC 261 and
(1935) RPC 136. The observations of Farwell, J., in the last
mentioned case to the following effect is also extracted.
"I have no doubt that it might be a very good ground
for refusing an application of this kind if it turned out
that the applicants had deliberately and with the
intention of getting some advantage to themselves
made use of the term 'registered' to which they were
not entitled."
After considering the evidence in that case the conclusion
come to was that the user of the work "registered" was the
result of an honest and stupid blunder and that no improper
advantage was gained by such user.

(23) In George Key Ltd's trade mark 287, 597, (1954) 71 RPC
106, the following observations occur at page 113,
"I think, it is right that I should view the applicants'
conduct as being the result of an honest mistake, which
might easily be made by any person unfamiliar with
trade mark law, and that the applicants should
accordingly not be prejudiced either in the prosecution
of their own application for registration or of their
application to rectify the register."
This observation was made with reference to improper use of
the work "registered" in the trade mark of the applicants
before the mark was actually registered. In Kerly on Trade
Marks, 7th Edn. Page 714 and in the Law and Practice under
the Trade Marks Act, 1940 by Venkateswaran at page 698, the
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same opinion is expressed. There can be no doubt on the
materials placed before me that the user of the word
"registered" by the plaintiff's in their trade mark before 1948
was the result of an honest mistake and therefore the plaintiffs
should not be visited with any penalty for such user of the
word "registered" in their trade mark as the rule laid down in
the English cases cited above should in my opinion apply to
this country also. ”
(Emphasis Supplied)

75. The aforegoing judgment has been followed by the Allahabad High
Court in Gulfan Exporters (Supra) wherein the Court had reversed the
order of the Additional District Judge and granted interim injunction to
the plaintiff therein. The Court held that the same does not amount to
misrepresentation if the same is an honest mistake. Similarly in the
present case, I am unable to hold this a ground to reject the application
for the plaintiffs for interim injunction as it is open for them to show
that the same was an honest mistake during trial.

BALANCE OF CONVENIENCE
76. The last aspect to be considered is in respect of balance of convenience.
The argument of the learned counsel for the applicants is that being the
prior user and having established goodwill in the mark, the balance of
convenience shall be in their favour. On the other hand, the
submissions of the defendants are premised upon having substantially
higher sales and advertisement expenditure.
77. In Century Traders (Supra) , the Division Bench of this Court has held
that the balance of convenience “ would obviously be in favour of the
appellant who was admittedly the first user of the mark .” (paragraph
21)
78. A similar issue had cropped before the same Court in Sohan Lal Nem
Chand Jain (Supra) where the defendants had resisted an injunction
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by showing their overwhelming sales and advertisement expenditure,
this Court had come to the following conclusion:
“ 73. Mr. Mishra has also labored very hard to convince this
Court that the quality of defendants‟ product, its marketing
and sale figures would show that they do not need to ride over
the goodwill and reputation of the plaintiff. In comparison to
the long, continuous and uninterrupted user of the plaintiff
since the year 1965, the sale figures of the defendants
howsoever impressive they may be cannot be a ground to
refuse the injunction to the plaintiff. The big fish cannot be
allowed to eat the small fish. The defendants cannot be
permitted to dilute the trade mark of the plaintiff merely
because it is stated that defendants has a large network and
has obtained various export orders. ”
(Emphasis Supplied)

79. Similarly in the present case, the sales and advertisement expenditure
of the defendants, however impressive, cannot entitle them to seize the
property of another. Accordingly, in light of Century Traders (Supra)
and Sohan Lal Nem Chand Jain (Supra) , I am of the view that the
balance of convenience is also in favour of the plaintiffs/applicants.
80. The other contentions raised in the pleadings have not been pressed.
81. The plaintiffs/applicants, having established a strong prima facie case
for priority showing prior use and goodwill in the mark „Aqua‟, are
entitled to an interim injunction against the defendants.
82. Accordingly, defendants, their directors, officers, franchisees, agents,
employees, servants, and/or any other person acting for and on their
behalf are restrained from using the infringing trademark „Aqua‟ or any
other deceptively similar trademark in respect of mobile phones/cellular
phones and their accessories, till the disposal of the suit. The order will
come into force after a period of two weeks to enable the defendants to
dispose off their current stocks.
83. I further clarify that all observations made in this order are in the
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context of a prima facie view and nothing stated herein should be
construed as a final expression of opinion on the merits of the dispute
or the veracity of the documents in the present suit. Nothing stated
herein should be read to prejudice the claims/contentions of the parties
in the trial of the suit.
84. The application is disposed off.




G.S.SISTANI, J.
th
DECEMBER 24 , 2016
//









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