Full Judgment Text
2012:BHC-OS:4131-DB
1 APPEAL NO.57-2012
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
APPEAL NO.57 OF 2012
IN
NOTICE OF MOTION NO.2665 OF 2011
IN
SUIT NO.2249 OF 2011
PARKSONS Cartamundi Pvt. Ltd.
41/B, Lalbauag Industrial Estate,
Dr. Ambedkar Road, Lalbaug,
Mumbai-400 012. … Appellant
versus
Suresh Kumar Jasraj Burad,
Sole Priprietor, trading in the business
name and style of M/s.J.K.Sons,
having his office at “J K House” No.80,
Shreeji Industrial Estate, Raipur Mill Compound,
Saraspur, Ahmedabad-380018. … Respondent
Mr.V.R.Dhond, Senior Advocate with Mr.R.S.Khandekar, Ms.Bhagwati
Trivedi and Ms.Bijal Trivedi i/by M/s.Bhagwati & Co. for the appellant.
Mr.Rahul Chitnis with Ms.Deepa Hate i/by Gajaria & Co. for the
respondent.
CORAM : MOHIT S. SHAH, C.J. AND
RANJIT MORE, J.
DATE : March 21, 2012
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ORAL JUDGMENT Per Chief Justice) ( :
This appeal is directed against order dated 28 November 2012
of the learned Single Judge declining to grant ad-interim injunction in the
appellant's Notice of Motion in the suit for infringement of the registered
mark of the plaintiff and copyright and for passing off.
2. The products in question are playing cards. The plaintiff is the
registered proprietor of the word mark "MERELANE" and a label mark of
which "MERELANE NO.7" is a prominent feature. The defendant's mark
is “MARICELL No.7”. The learned Single Judge on perusal of the two
marks came to the conclusion that there was no prima facie similarity
between the words "MARELANE" and "MARICELL".
3. The appeal was admitted on 31 January 2012 and in view of
history of past litigation, respondent-defendant was permitted to file
affidavit-in-reply to raise all available contentions for arguing the Notice
of Motion in the suit. The appeal has been taken up for final hearing and
learned counsel for the parties have been heard at length on the Notice of
Motion in the suit.
4. Before enumerating rival contentions, it is necessary to refer
to relevant facts and also the history of litigation between these two very
parties in suits filed by either the appellant-plaintiff or its sister concerns
against the defendant herein, in actions for infringement of plaintiff's
registered marks and for passing off.
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5. The trade name "MERELANE" was registered on 17 May
1971 with Trademark No.272074 in favour of Badriprasad Gulraj
Kejriwal and thereafter upon death of Badriprasad Kejriwal in 1975, the
mark was registered in favour of partnership firm of his family members
on 6 February 1976. Thereafter the registration was renewed in favour of
successive partnership firms including M/s. Kejriwal & Sons. The last
registration is in favour of Parksons Games & Sports by virtue of Deed of
Assignment dated 14 September 2004 executed by M/s.Kejriwal & Sons.
By order dated 29 September 2009 the said assignment was taken on
record and the status of M/s. Parksons Games and Sports was reorganised
and recorded by the Registrar of Trade Marks. Subsequently, as stated in
the plaint, the partnership firm was incorporated as a private limited
company- “Parksons Games & Sports Pvt.Ltd.” on 15 September 2010
and a Deed of Assignment was executed by the partnership firm in favour
of the private limited company. The said Deed of Assignment was
submitted to the Registrar of Trade Marks alongwith an application for
change of registration on 29 October 2010. Thereafter, the name of
plaintiff-company was changed to PARKSONS Cartamundi Pvt.Ltd. on
22 January 2011. A copy of certificate of change of name is produced at
Exhibit-A to the plaint.
There is also registered label mark at Exhibit-J being
Trademark No.1664801 which was registered in the name of M/s.Parksons
Games & Sports Pvt.Ltd. on 14 March 2008 with the packet bearing the
following words:
"MERELANE NO.7
PLAYING CARDS"
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6. The plaintiff has also pointed out history of the litigation
instituted by the plaintiff or its sister concerns against the respondent-
all the orders
defendant, which is summarized as follows, , except the order
appeal, having been passed against the respondent-defendant in respect of the
under
same class being playing cards:-
Sr.
No.
Plaintiff's Trade
Defendant's Trade
Date of Ad-Interim/
Mark
Marks
Interim Order
1 555 MERELANE
PREMIUM,
555 MARILYN DX 24 September 2010
Appeal Order dated 18
March 2011
555 MERELANE
DELUX,
Order of Apex Court
dated 10 May 2011
MEREDIAN 555
2 MERELANE No.7 No.7 MARILYAN Decree dated 14 January
2011
3. BRIDGE 575 BRIDGE 576 Ad-interim order dated 7
October 2011
4. Nylon No.7 Nilon no.7 Decree dated 12 January
2011
5. Nylon no.7 NAIKAN NO.7 Interim order dated 6
February 2012
6. MERELANE 555 MARICELL 555 Ad-interim order dated
22 September 2011
7. MERELANE No.7 MARICELL NO.7 Ad-interim order dated
28 November 2011
(Order under appeal)
7. A Division Bench of this Court in Hiralal Prabhudas v. Ganesh
3
Trading Company and others laid down the following propositions for
judging deceptive similarity of products of rival trademark :-
3 A.I.R. 1984 BOM. 218 =1984- PTC 155
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“What emerged from these authorities is
(a) what is the main idea or salient features,
(b) marks are remembered by general impressions or by
some significant detail rather than by a photographic
recollection of the whole,
(c) overall similarity is the touchstone,
(d) marks must be looked at from the view and first
impression of a person of average intelligence and
imperfect recollection,
(e) overall structure, phonetic similarity and similarity of
idea are important and both visual and phonetic tests
must be applied,
(f) the purchaser must not be put in a state of wonderment,
(g) marks must be compared as a whole, microscopic
examination being impermissible,
(h) the broad and salient features must be considered for
which the marks must not be placed side by side to
find out differences in design and
(i) overall similarity is sufficient.
In addition, indisputably must also be taken into
consideration the nature of the commodity, the class of
purchasers, the mode of purchase and other
surrounding circumstances”.
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8. Applying the above principles and considering the colour
schemes of the playing cards having two Ducks and the label marks on the
packets and the cartons and their colour scheme and also the material
printed on those packets, it is clear that the defendants’ products are
deceptively similar to those of the plaintiff. The plaintiff’s playing cards
has the picture of two Ducks; the defendants’ playing cards also have two
Ducks, though in the opposite direction. But as held time and again and as
4
laid down by the Supreme Court in Parle Products v. J. P. & Co., what
must be considered are the broad and essential features of the two marks
which should not be placed side by side in order to find out the differences
in design. It is enough, if the impugned mark bears an overall similarity to
the registered mark as would be likely to mislead a person usually dealing
with one to accept the other, if offered to him. Each case must be judged
on its own features and it would be of no use to note on how many points
there was similarity and in how many others there was absence of it. In
fact, with the addition of the words ”NEW ARRIVAL” on the packet with
the colour combination scheme of green and red and also the words “No.
7” prominently mentioned near the words MARICELL, it is clear that a
man of average intelligence and imperfect recollection would be likely to
be confused. In our view, the appellant has succeeded in showing
deceptive similarity between the defendant's playing cards and the
plaintiff’s playing cards and the packets and the cartons.
9. We have also gone through all the orders referred to in the
above chart. It is clear from the said orders that the defendant was earlier
using the trademark "555 MARILYAN" and this Court held that defendant
had violated the plaintiff's registered trademarks "555 MERELANE
4 AIR 1972 SC 1359
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PREMIUM", "555 MERELANE DELUX" and "MEREDIAN 555" and
passed off its packets and playing cards as those of the plaintiff. By
interim order dated 24 September 2010, the learned Single Judge of this
Court granted injunction in favour of the plaintiff and against the
defendant. That order came to be confirmed by this Court in appeal on 18
March 2011 and Special Leave Petition filed by the defendant came to be
dismissed by the Apex Court vide order dated 10 May 2011.
Similarly, the defendant had used the trademark "NO.7
MARILYAN” infringing the plaintiff's trademark "MERELANE No.7".
By a consent order dated 14 January 2011, the learned Single Judge of this
Court decreed the suit filed by the plaintiff against defendants.
Another attempt made by the defendant was to use the
trademark "MARICELL 555" infringing the plaintiff's trademark
"MERELANE 555" and by order dated 22 September 2011, the learned
Single Judge of this Court granted interim injunction against the defendant.
10. There were also other orders passed by this Court restraining
the defendant from using the trademark "NILON NO.7" infringing the
trademark "NYLON NO.7". Further this Court passed another order
against the defendant from using the trademark "NAIKAN NO.7"
infringing the trademark "NYLON NO.7". Those orders were passed on
12 January 2011 and 6 February 2012 respectively.
11. In the background of the above facts, we have heard learned
counsel for the parties on the question whether use of mark "MERICELL
NO.7" printed on bigger cartons as well as small packets containing
playing cards infringes plaintiff's registered trademark "MERELANE" and
"MERELANE NO.7". Having examined both the trademarks and also
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having seen the designs and colour schemes of the playing cards, the
packets and bigger cartons, and also having gone through the orders dated
22 September 2011 in Notice of Motion No.1948 of 2011 where
"MARICELL 555" has been considered to be deceptively similar to
"MARELANE 555" and the order dated 6 February 2012, where
“NAIKAN No.7” has been considered to be deceptively similar to “Nylon
No.7” we have no manner of doubt that the defendant's playing cards as
well as the packets and cartons are deceptively similar to the plaintiff's
playing cards, packets and cartons. The reasoning of the learned Single
Judge based on microscopic examination that there is no similarity
between the words "MARICELL" and "MARELANE" cannot be accepted.
12. Learned counsel for the respondent-defendant has made the
following submissions :-
(a) Since the learned Single Judge has passed discretionary
order at the ad-interim stage, the same may not be interfered
with. In support of this contention, reliance is placed on
decision of Apex Court in Wander Limited and another Vs.
1
Antox India (P) Limited
(b) The plaintiff does not have registered trademark of the
words "MERELANE" because as per the entries in the
Trademark Registry, the trademark is assigned to M/s.Parksons
Games & Sports and not to the plaintiff herein-Parksons
Cartamundi Private Limited. In support of this contention
reliance is placed on the decision of a learned Single Judge of
this Court in Cott Beverage Inc, A Georgia Corporation Vs.
2
Silvassa Bottling Company
1 1991-PTC-1
2 2004(29)PTC-679 (Bom)
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(c) Relying on provisions of Section 17(2) of the
Trademarks Act, it is submitted that the words "No.7" is not
something on which the plaintiff can claim any exclusive right
as it is common to the trade of playing cards.
(d) In view of the matter printed on the bigger cartons and
the packets, the defendant's goods are distinguishable from the
plaintiff's goods.
13. It is true that the learned Single Judge has passed the
impugned order in favour of the respondent-defendant. The question is
whether the same can be considered as a discretionary order. In M/s.
3
Hiralal Prabhudas v. Ganesh Trading Company and others , where a
similar contention was raised that the appellate court should not disturb the
discretionary order of the learned Single Judge, a Division Bench of this
Court speaking through Justice Lentin held as under:
“It was finally urged by Mr. Kale that the discretion exercised
by the Deputy Register under Section 56 of the Act in the
respondents' favour should not be lightly disturbed and the
appellate Court should therefore not disturb the judgment and
order of the learned single Judge. We ask ourselves; Pray
where at all arises the Deputy Registrar did not exercise any
discretion under Section 56 in rejecting the appellants
application for rectification. It must be remembered that the
concept of discretion is distinct from that of adjudication.
When the Deputy Registrar rejected the appellants application
for rectification on the ground that the two marks are not
deceptively similar, she did not use any discretion but
adjudicated upon the rival contentions of the parties. It would
be trite to say that exercise of discretion can arise in favour of a
party when adjudication by the Registrar is against that party.
In the present case, the Deputy Registrar's adjudication was in
fact in favour of the respondents, with the result that there was
3 A.I.R. 1984 BOM. 218 =1984- PTC 155
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no occasion for the Deputy Registrar to exercise any discretion.
If the Deputy Registrar had held that the two marks were
deceptively similar (which she did not ) but that in exercise of
her discretion she did not consider it necessary to pass an order
for rectification , it could be said that the Deputy Registrar
having exercised the discretion in favour of the respondents ,
interference with such discretion was not called for. Nothing of
the kind can be said in the present case where in fact the
Deputy Registrar has held that the two marks are not
deceptively similar. In any event, this court having come to the
conclusion that the two marks are deceptively similar, this
cannot be a case for the exercise of discretion in favour of the
respondents as their case is not founded on truth and also in
view of the uncontroverted evidence of actual deception
perpetrated and confusion caused.
(emphasis supplied)
14. It is thus clear that the concept of discretion is distinct from
that of adjudication. What the learned Single Judge has done in the instant
case is making prima facie adjudication that the defendants’ trademark is
not deceptively similar to that of the plaintiff. Therefore, there is no
question of any discretion exercised by the learned Single Judge. We have
already held that the defendant has been infringing the plaintiff’s
trademarks and has been attempting to pass off its playing cards as those of
the plaintiff. This has happened in respect of the very trademark
“MERELANE, which is registered since the year 1971 and also the label
mark on the packets containing the playing cards prominently bearing the
words “MERELANE No. 7”. Hence, there is no question of applying the
principle enunciated in the case of Wander Limited and another Vs. Antox
1
India (P) Limited .
1 1991-PTC-1
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15. As regards the contention that the trademark registered in the
year 1971 was last registered in favour of Parksons Games & Sports and
not in favour of the plaintiff PARKSONS Cartamundi Pvt.Ltd., the plaintiff
has pointed out that the plaintiff has already made an application to the
Registrar of Trademarks on 29 October 2010 for making the necessary
changes in the trademark register, pursuant to Deed of Assignment dated
29 September 2010 upon incorporation of the partnership firm Parksons
Games & Sports into Parksons Games & Sports Pvt. Ltd. on 29 September
2010, which will enure for the benefit of PARKSONS Cartamundi
Pvt.Ltd., as indicated in the fresh certificate of incorporation consequent
upon change of name issued by the Registrar of Companies, Maharashtra,
Mumbai, as per the approval of the Central Government under Section 21
of the Companies Act, 1956 on 22 January, 2011. The plaintiff has also
made statement to that effect in the plaint.
16. Learned counsel for the respondent-defendants has, however,
vehemently submitted that there is still no registration in favour of either
Parksons Games & Sports Pvt. Ltd. Or PARKSONS Cartamundi Private
Limited. Strong reliance has been placed on the provisions of Section 45
of the Trade Marks Act, 1999 and on the decision of this Court in Cott
2
Beverage Inc, A Georgia Corporation Vs. Silvassa Bottling Company . In that case a
learned Single Judge of this Court (Coram : V.M. Kanade, J.) held that the
procedure of registration of assignment is not a mere formality. The
legislature has though it fit that application for assignment and
transmission be scrutinized keeping in view various other Acts including
the import restrictions, foreign exchange, etc. as also any inter se disputes
between the assignor and assignee and only thereafter, if the Registrar is
satisfied the application for assignment would be registered.
2004 (29) PTC-679 (Bom)
2
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17. However, after making those observations, the learned Single
Judge further observed that though the plaintiff in that case was a non-
registered assignee it cannot be said that he is prevented from filing a suit
during pendency of the registration, Sub-section (2) of Section 45 clearly
vests discretion with the Court either to admit the deed of assignment in
evidence or to reject the admissibility of the same in evidence as a proof of
title to the trademark. Section 45 has been incorporated as a safeguard by
the Legislature in order to avoid the multiplicity of proceedings and also
in order to ensure that the various other laws prevailing in the country are
safeguarded while registering the assignment, as contemplated in Rules 73
to 75 of the Trade Mark Rules, 2002. In the facts of that case, the Court
found that the assignor in a foreign country had assigned the trademark in
India to the assignee without goodwill and that the application for
registration was made to the Registrar after more than one year from the
date of assignment. The Court in the facts of that case held that the
assignment itself had not taken effect.
18. In the facts of the present case, however, the plaintiff has shown that
after the Deed of Assignment was executed in favour of the Parksons
Games & Sports Pvt. Ltd.on 29 September 2010, the plaintiff had applied
to the Registrar of Trademarks on 29 October 2010 to make the necessary
entries in the trademark register in respect of the trademark registered in
the year 1971. Since both the assignor and assignee are Indian entities, in
the facts of the present case there is no question of any impediment on
account of any import restrictions, foreign exchange violations etc. nor is
there any case of any inter se dispute between the assignor and the
assignee.
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19. Our attention is also invited to the much broader view taken
by another learned Single Judge of this Court (Coram : S.J. Vazifdar, J.) in
SKOL Breweries Ltd. v. Som Distilleries and Breweries Ltd. and another,
(Petition No.159 of 2007 in Suit No.603 of 2007, decided on 28 August
2009). The principles enunciated by the learned Single Judge in the
SKOL Breweries case (supra) commend to us as the correct exposition of
law on the subject of rights of the assignee of a registered trade mark
pending an application made to the Registrar of Trade Marks for
registration of his title to the trade mark.
20. We may hasten to add that the observation of the learned
Single Judge in para 10 of the judgment, that registration of assignment
under Section 45 is a mere formality was not borne out by the language of
Section 45(1) as it then stood, but by virtue of substitution of Section 45 by
Amending Act 40 of 2010, Section 45 has undergone a sea change and
amply supports the plaintiff's contention that the registration of assignment
of a registered trademark would now ordinarily be a formality because of
deletion of the words “and on proof of title to his satisfaction” in
sub-section (1), the tenor of newly added sub-section (2) and insertion of
the underlined words in sub-section (3). Moreover, sub-section (2) of
Section 45, as it stood prior to amendment, directing that an assignment of
trademark before its registration with the Registrar of Trademarks, shall
not be admitted in evidence by the Registrar/Appellate Board/Court, unless
the said forum otherwise directs, has been completely deleted.
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21. Section 45 prior to amendment and as it stands now after the
amendment by Act 40 of 2010 need to be set out in juxtaposition:-
Before Amendment After Amendment
45. Registration of assignments and
transmissions.- (1) Where a person becomes
entitled by assignment or transmission to a
registered trade mark, he shall apply in the
prescribed manner to the Registrar to register his
title, and the Registrar shall, on receipt of the
application and on proof of title to his satisfaction,
register him as the proprietor of the trade mark in
respect of the goods or services in respect of which
the assignment or transmission has effect, and shall
cause particulars of the assignment or transmission
to be entered on the register.
45. Registration of assignments and
transmissions.- (1) Where a person becomes
entitled by assignment or transmission to a registered
trade mark, he shall apply in the prescribed manner
to the Registrar to register his title, and the Registrar
shall, on receipt of the application, register him as
the proprietor of the trade mark in respect of the
goods or services in respect of which the assignment
or transmission has effect, and shall cause particulars
of such assignment or transmission to be entered on
the register.
(2) The Registrar may require the applicant to
furnish evidence or further evidence in proof of title
only where there is a reasonable doubt about the
veracity of any statement or any document
furnished.
Provided that where the validity of an assignment or
transmission is in dispute between the parties, the
Registrar may refuse to register the assignment or
transmission until the rights of the parties have been
determined by a competent court.
(3) Where the validity of an assignment or
transmission is in dispute between the parties, the
Registrar may refuse to register the assignment or
transmission until the rights of the parties have been
determined by a competent court and in all other
cases the Registrar shall dispose of the application
within the prescribed period.
(2) Except for the purpose of an application before
the Registrar under sub-section (1) or an appeal
from an order thereon, or an application under
section 57 or an appeal from an order thereon, a
document or instrument in respect of which no entry
has been made in the register in accordance with
sub-section (1), shall not be admitted in evidence by
the Registrar or the Appellate Board or any court in
proof of title to the trade mark by assignment or
transmission unless the Registrar or the Appellate
Board or the court, as the case may be, otherwise
directs.
(4) Until an application under sub-section (1) has
been filed, the assignment or transmission shall be
ineffective against a person acquiring a conflicting
interest in or under the registered trade mark without
the knowledge of assignment or or transmission.
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22. We will now set out the relevant paragraphs from the above
judgment which lay down the correct principles:-
“14. Section 45 does not confer title to the trade marks
assigned or acquired by transmission. The registration
granted by the Registrar under section 45 is proof of title to
the trade mark of the assignee or the person who acquires
the same by transmission. Thus a person who has acquired
title to a trade mark by assignment or transmission cannot
be non-suited for want of title per se on the ground that the
assignment or transmission is not entered on the register.
This is clear from the plain language of section 45 (1). The
opening words: "Where a person becomes entitled by
assignment or transmission to a registered trade mark ..."
posit the acquisition of title thereto by assignment or
transmission. …........................…... Thus the acquisition of
title to a trade mark by assignment or transmission
precedes and is essential to an application under section 45.
18. Where the court is satisfied at the interlocutory stage
prima-facie of the validity of the assignment or the
transmission and the intention of the parties acquiring title
to the trade mark thereby bringing themselves on the
register it must decide the application on merits. Where the
court is of the view that despite a strong prima-facie case in
this regard it would require to be established at the trial
then, at the highest, pending the decision of the application
under section 45 the decree may not be passed. Such a
situation can arise for instance where the assignment is
denied or opposed on any ground by the assignor. It may
also arise where others challenge the plaintiffs acquisition
of the trade mark by transmission. In such cases it may be
necessary to implead the assignor or such other persons
and also seek reliefs against them to establish the
assignment. The grant of interlocutory relief would
naturally also depend upon whether the plaintiff has made
out a strong prima facie case even in respect of the
acquisition of the trade mark by assignment or
transmission.”
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The learned Single Judge also repelled the contention that
Section 53 read with Section 2(1)(r)(ii) debars a suit by assignee of a
registered trademark prior to registration of the assignment:-
“24. Section 2 (1) (r) (ii) recognizes the use of a
registered trade mark by persons other than the registered
proprietor and registered user in certain circumstances and
situations. Section 2 (1) (r) (ii) does not deal with persons
who have acquired a proprietary right in the trade mark by
assignment or transmission. In the present case the second
defendant has assigned all its rights in the said trade mark
in favour of the plaintiff and the same now stands vested in
the plaintiff. The fact that the plaintiff has not as yet been
shown in the register as the proprietor thereof does not lead
to the conclusion that the rights in respect of the trade mark
are not vested in the plaintiff. In any event the bar
contained in section 53 does not apply to a person not
covered by section 2 (1) (r) (ii).
25. A view to the contrary would not only cause
enormous prejudice to bonafide assignees of trade marks
but would also create havoc in the entire field of
assignments of trade marks. Indeed this would be so even
in respect of persons who acquire trade marks by
transmission.
26. The rights of a bona-fide assignee could be set at
naught not merely by a dishonest assignor but even by an
honest assignor who not surprisingly may lose all interest
in defending the trade mark against infringement upon
assigning the trade mark and receiving the consideration
for the same thereby leaving the field wide open for
infringement of the trade mark pending the assignee being
brought on the register as the proprietor of the mark
assigned to him. Upon the registered proprietor entering
into an agreement of assignment of a trade mark the
assignor may well not be interested in doing anything
further including involving himself in any litigation in
respect of the trade mark. In other words if Mr.
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Bookwalla’s submission is accepted it would mean that
even where a trade mark is validly assigned and the
assignor being no longer interested in the trade mark
having assigned it, may do nothing to protect the same the
assignee can do nothing to protect the trade mark which he
has validly acquired, during the pendency of an application
under section 45. In any event the process in an application
under section 45 is bound to take some time. The
submission if accepted would entitle the world at large in
the meantime to infringe the trade mark at will. There
would be nothing to prevent them from doing so although
their act would be in violation of law. I find nothing in the
act which supports Mr. Bookwalla's submission.
27. A person who acquires a trade mark by transmission
would suffer a similar fate if Mr. Bookwalla’s submission
is accepted. It would take considerable time between the
acquisition of a trade mark by transmission and the person
being shown as the registered proprietor thereof pursuant to
an application under section 45.”
23. The learned counsel for the appellant-plaintiff has also invited
our attention to the decisions of the Delhi High Court in M/s. Modi
5
Threads Limited v. M/s. Som Soot Gola Factory and another , Sun
6
Pharmaceuticals Industries Ltd. v. Cipla and M/s.Grandlay Electricals
7
(India) Ltd. and others v. Mrs. Vidya Batra and others , taking the view that
even though the application of the plaintiff for getting transferred the
registered trade mark in its name in the office of the Registrar was still
pending for consideration by the Registrar of the Trade Marks, it would not
debar him to protect the violation of its trade mark at the hands of
unscrupulous persons by filing an action in Court of law for injunction and,
therefore, the defendants could not be allowed to make use of the said
5 AIR 1992 DELHI 4
6 2009(39) PTC 347
7 AIR 1999 DELHI 1
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trade mark in order to get themselves illegally enriched earning upon the
reputation built up qua that trade mark by the predecessor-in-interest of the
plaintiff. A dispute as to assignment can be raised by the assignor or by
some person claiming prior assignment and not by strangers or by persons
claiming adversely to the Assignor.
24. Having considered all the decisions discussed above, in our view, it
must now be taken as the settled law that the provisions of Trade Marks
Act, 1999 do not preclude a Court from granting interlocutory reliefs in
favour of a person who becomes entitled by assignment or transmission to
a registered trade mark, pending application under Section 45(1) to
register his title to the trade mark.
25. In view of the above settled legal position and also having
regard to the history of past litigation between the parties, the fact that the
plaintiff's application submitted to the Registrar of Trade Marks on 29
October 2010 has remained pending and the plaintiff already has registered
label mark on the packet “MERELANE No.7 PLAYING CARDS”, we are
inclined to exercise the discretion in favour of the plaintiff to take into
consideration the Deed of Assignment dated 29 September 2010 assigning
the trademark “MERELANE” in favour of the plaintiff.
26. The next contention of the respondent-plaintiff is that the
words “No. 7” merely indicate a figure and it is not something on which
the plaintiff can claim any exclusive right as it is common to the trade of
playing cards.
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27. The plaintiff's trademark “MERELANE No. 7” is to be seen in
its totality and not in parts. A learned Single Judge of this Court
(S. J. Vazifdar, J.) in his order dated 6 February 2012 in Notice of Motion
No. 719 of 2011 (M/s. Parvati Packers v. Narayan Shetty and others) has
repelled this very contention raised by this very defendant when the
defendant was defending the use of its mark “NAIKAN No.7” as
infringing the registered trade mark “NYLON No.7”.
“8. I will presume that the similarity between the words
“ NYLON ” and “ NAIKAN ” by themselves is not adequate to
maintain this action. The insufficiency in the degree of
phonetic similarity between the words “ NYLON ” and
“ NAIKAN ” is adequately compensated by the defendants
adopting in their mark, the suffix “ NO.7 ”. The question of
similarity, phonetic as well as visual, cannot be considered
merely by comparing the words “ NYLON ” and “ NAIKAN” . The
marks “ NYLON NO.7” and “ NAIKAN NO.7 ” must be compared
as a whole. Both the marks have the suffix “ NO.7 ”. Any
hesitation in accepting the plaintiffs contention only on the
basis of the words “ NYLON ” and “ NAIKAN ” must disappear
when the two marks are read as whole, as indeed they must be.
9. The defendants perhaps realising their difficulty upon the
marks being read as a whole, contended that `No.7’ is popular
and a common practice in the playing cards industry and that,
therefore, no one can claim an exclusive right in respect of the
numeral `7’. Apart from a bald assertion to this effect, there is
nothing to establish this contention. Even during the hearing,
the defendants did not indicate anything to establish that the use
of the numeral `7’ is a common practice in the field of playing
cards.
10. It is obvious, therefore, that the defendant No.5 adopted
the mark and specially “No.7” therein to bring it deceptively
close to the plaintiffs mark with a view to trading on the
reputation developed by the plaintiffs in respect of the products
sold under their mark”.
It is thus clear that the above observations were made by the learned Single
Judge while making the notice of motion absolute for granting injunction
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20 APPEAL NO.57-2012
against the present defendant in respect of the infringement of the
trademark “NYLON No. 7” belonging to the plaintiff’s sister concern M/s.
Parvati Packers.
28. Similar contention was raised when the defendant's trademark
“555 MARILYN DX” was considered as violating the plaintiff’s trademark
“555 MERELANE DELUX” and two other similar trademarks of the
plaintiff. A Division Bench of this Court to which one of us (Chief Justice
Shah) was a party rejected a similar contention about the use of the figure
`555'.
29. Moreover, in the present case we are not passing any order on
the basis of infringement of the plaintiff’s copy right in the words
“MERELANE No. 7” but on the basis that the plaintiff has acquired
goodwill in the trademark “MERELANE No. 7” which is apparent from
the figures of advertisement expenses and sales of the plaintiff’s playing
cards including “MERELANE No. 7” brand for the period from 1999-2000
to 2009-10, which figures are to be found in the certificate dated 29
October, 2010 of the plaintiff’s chartered accountants at Exhibit-M
particularly the annual turnover for the last two years being Rs.52.43 lakhs
and Rs.61.93 lakhs respectively.
30. As regards the contention that the additional material on the
cartons and packets make the defendant's case distinguishable from the
plaintiff’s case, we have seen the colour scheme and the words
“MERELELANE No. 7” on the plaintiff’s packet as well as on the
defendant's packet bearing the label mark “MERICELL No. 7”. There is
some difference in the shade of green colour, but there is no difference in
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21 APPEAL NO.57-2012
the red area having the words “MERELANE” or “MERICELL”. As per
the settled legal position, the matter must be examined from the point of
view “a person of average intelligence and imperfect recollection”. Marks
are not to be compared microscopically and the marks have to be applied
as a whole and broad and salient features must be considered without
placing them side by side to find out differences in design. Applying the
said well settled test, we are of the view that the additional material of two
horses on and the two small ducks on the packet do not make any
difference to the deceptive similarity. On the contrary, the words “New
Arrival” on the packet, which are prominent, make it appear as if
defendants have come out with a new product and therefore, the words
“New Arrival” are added. The defendant not having earlier produced any
playing cards with the trade name or trade label “ MARICELL No.7”, the
words “New Arrival” on the packet appear to be added with a dishonest
intention to pass off the defendant's playing cards as new playing cards of
the plaintiff. Similarly adding the words “premium quality” on the
defendant's carton in light blue colour as compared to the plaintiff's carton
in navy blue colour appears to be done with similar dishonest intent.
31. In Midas Hygiene Industries (P) Ltd. and another v. Sudhir
8
Bhatia and Others , the Supreme Court has held that in cases of
infringement either of trade mark or of copyright, injunction must be
issued if it prima facie appears that the adoption of the mark was itself
dishonest. The facts of this case in the background of the history of
litigation leave no other option but to accept the plaintiff's case that the
defendant has been infringing the plaintiff's trademark and label mark and
has been dishonestly attempting to pass off the defendant's playing cards as
8 (2004) 3 SCC 90
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those of the plaintiff in order to get himself illegally enriched caring upon
the reputation built up qua that trade mark and label mark.
32. Having heard learned counsel for the parties at length, we are
of the view that plaintiff has made out a strong prima facie case, both on
the questions of prima facie case as well as balance of convenience, and,
therefore, the interim injunction deserves to be granted during pendency of
the Suit.
33. The appeal is accordingly allowed. The impugned order dated
28 November 2011 of the learned Single Judge is set aside and Notice of
Motion is made absolute in terms of prayer clauses (b) and (d) during
pendency of the Suit. As regards the remaining prayers in the Notice of
Motion, the plaintiff will be at liberty to take out a fresh Notice of Motion
at an appropriate stage, if required.
(CHIEF JUSTICE)
(RANJIT MORE, J.)
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