Full Judgment Text
sat 1/13 nms 10592015_Final.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION NO. 1059 OF 2015
IN
SUIT NO. 568 OF 2015
Sapat International Pvt.Ltd. …Plaintiff
vs.
Girnar Food and Beverages Pvt.Ltd. ....Defendant
Dr.Veerendra Tulzapurkar, Senior Counsel, Mr.Virag Tulzapurkar, Senior
Counsel, Mr.Venkatesh Dhond, Senior Counsel with Ashutosh Kane, Akshata
Kamath, Nikhil Sharma, and Janaki Bhide i/b. W.S. Kane & Co. for Plaintiff.
Mr.Feroze Andhyarujina, Senior Counsel with Manoj Menda with Darius Dalal
and Dipti Vora i/b. Jehangir Gulabbhai Billimoria & Daruwalla for Defendant.
CORAM : S.C. GUPTE, J.
6 JANUARY 2016
P.C. :
This is a trade mark infringement suit in respect of the Plaintiff's
registered trade mark 'chaitime' bearing registration no.1631080 in class 30 for
the goods, namely, confectionery, salt, vinegar, sauces (condiments), and tea,
coffee, artificial coffee, cocoa, sugar, pastry.
2 The Plaintiff claims to be one of the oldest and most reputed Indian
companies in the business of manufacturing, marketing and distributing tea and
like goods. The Plaintiff claims to an integral part of a group of companies, known
as Sapat Group of companies, founded in the year 1897. Sapat Group of
companies has been in the business of production of tea since the year 1905 and
claims to be amongst the top ten companies in the business of manufacturing,
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packaging and marketing tea and like goods. It is the Plaintiff's case that on or
about 1 November 2004, the Plaintiff invented the trade mark
being a
unique combination of the devnagri word ‘chai’ written in English script and the
English word ‘time’, both words written together and in lower case, for use upon
its tea and like goods. The Plaintiff claims to be using this mark since 1
November 2004. On the basis of adoption of this mark and its use since 1
November 2004, the Plaintiff applied for registration in class 30 for the goods
described above. The Plaintiff was granted registration of the mark under a
certificate dated 2 July 2012 with registration date of 14 December 2007. The
registration certificate mentions the trade mark type as device, whilst the word
mark is described as “chaitime (device of two colour letter)”. The trade mark
displayed on the certificate shows the word ‘chaitime’ written in a particular font
and in combination of two colours with upper half of the mark shown in green and
lower in brown colour. It is the Plaintiff’s case that the Plaintiff has been openly,
continuously and extensively using the said trade mark in respect of goods
covered by it for the past many years, and that the trade mark has accordingly
acquired distinctiveness and secondary meaning and has come to be associated
exclusively with the goods originating from the Plaintiff. The Plaintiff has produced
a certificate of its Chartered Accountant showing the extent of its user as well as
advertisement expenses in respect of the trade mark since the Financial Year
rd
2006-07. The grievance of the Plaintiff in the suit is that in or about 3 week of
December 2014, the Plaintiff learnt about the Defendant’s use of the trade mark
depicted as follows :
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION NO. 1059 OF 2015
IN
SUIT NO. 568 OF 2015
Sapat International Pvt.Ltd. …Plaintiff
vs.
Girnar Food and Beverages Pvt.Ltd. ....Defendant
Dr.Veerendra Tulzapurkar, Senior Counsel, Mr.Virag Tulzapurkar, Senior
Counsel, Mr.Venkatesh Dhond, Senior Counsel with Ashutosh Kane, Akshata
Kamath, Nikhil Sharma, and Janaki Bhide i/b. W.S. Kane & Co. for Plaintiff.
Mr.Feroze Andhyarujina, Senior Counsel with Manoj Menda with Darius Dalal
and Dipti Vora i/b. Jehangir Gulabbhai Billimoria & Daruwalla for Defendant.
CORAM : S.C. GUPTE, J.
6 JANUARY 2016
P.C. :
This is a trade mark infringement suit in respect of the Plaintiff's
registered trade mark 'chaitime' bearing registration no.1631080 in class 30 for
the goods, namely, confectionery, salt, vinegar, sauces (condiments), and tea,
coffee, artificial coffee, cocoa, sugar, pastry.
2 The Plaintiff claims to be one of the oldest and most reputed Indian
companies in the business of manufacturing, marketing and distributing tea and
like goods. The Plaintiff claims to an integral part of a group of companies, known
as Sapat Group of companies, founded in the year 1897. Sapat Group of
companies has been in the business of production of tea since the year 1905 and
claims to be amongst the top ten companies in the business of manufacturing,
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packaging and marketing tea and like goods. It is the Plaintiff's case that on or
about 1 November 2004, the Plaintiff invented the trade mark
being a
unique combination of the devnagri word ‘chai’ written in English script and the
English word ‘time’, both words written together and in lower case, for use upon
its tea and like goods. The Plaintiff claims to be using this mark since 1
November 2004. On the basis of adoption of this mark and its use since 1
November 2004, the Plaintiff applied for registration in class 30 for the goods
described above. The Plaintiff was granted registration of the mark under a
certificate dated 2 July 2012 with registration date of 14 December 2007. The
registration certificate mentions the trade mark type as device, whilst the word
mark is described as “chaitime (device of two colour letter)”. The trade mark
displayed on the certificate shows the word ‘chaitime’ written in a particular font
and in combination of two colours with upper half of the mark shown in green and
lower in brown colour. It is the Plaintiff’s case that the Plaintiff has been openly,
continuously and extensively using the said trade mark in respect of goods
covered by it for the past many years, and that the trade mark has accordingly
acquired distinctiveness and secondary meaning and has come to be associated
exclusively with the goods originating from the Plaintiff. The Plaintiff has produced
a certificate of its Chartered Accountant showing the extent of its user as well as
advertisement expenses in respect of the trade mark since the Financial Year
rd
2006-07. The grievance of the Plaintiff in the suit is that in or about 3 week of
December 2014, the Plaintiff learnt about the Defendant’s use of the trade mark
depicted as follows :
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| sat 3/13 nms 10592015_Final.doc<br>The Plaintiff has relied on copies of the Defendant’s newspaper advertisements<br>and publicity material as also photographs of the Defendant’s roadside<br>hoardings. Based on this user of the Defendant, the Plaintiff issued a cease and<br>desist notice. The Defendant, in its reply, indicated its refusal to desist from the<br>use of the mark objected to by the Plaintiff. In these facts, the Plaintiff has<br>approached this court for a permanent injunction restraining the Defendant from<br>infringing the Plaintiff’s trade mark 'chaitime' bearing registration no.1631080 in | ||
|---|---|---|
| class 30 by using the impugned trade mark or | ||
| and/or any other trade mark containing the words CHAI TIME or any other trade<br>mark deceptively similar to the Plaintiff’s trade mark 'chaitime'.<br>3 In its reply, the Defendant has broadly raised the following<br>objections to the Plaintiff’s application:<br>(i) Firstly, it is alleged that the Plaintiff had obtained the registration of its<br>trade mark ‘chaitime’ fraudulently.<br>(ii) Secondly, it is submitted that the trade mark ‘chaitime’ is a wholly<br>descriptive word in a combination of 'tea' or 'chai', as the word is known in<br>Hindi, and 'time' which, as a matter of fact, is equivalent to the use of the<br>words 'tea' and 'time' in a combination. Various instances have been referred<br>to by the Defendant to show that these words are extensively used by<br>various magazines and tea producers in a combination in respect of their<br>products or their sites. |
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(iii) Thirdly, it is submitted that the Plaintiff has, at a later point of time and
since the last many years, stopped using the trade mark 'chaitime'.
(iv) Fourthly, it is submitted that the Defendant has applied for rectification
of the Plaintiff’s trade mark 'chaitime' in class 30.
(v) Fifthly, it is also submitted that the Plaintiff has come to this court with
its infringement suit after much delay and that this delay dis-entitles the
Plaintiff from claiming any temporary injunction.
(vi) Lastly, it is submitted that the Defendant has adopted and has been
using the words 'MY CHAI MY TIME' honestly and bona fide and that the
words are distinct from the expression 'chaitime'.
4 Before I deal with the Plaintiff’s application on merits and in the light
of different objections of the Defendant, outlined above, I must make it clear that
though the Plaintiff has referred to in the plaint to registrations of other trade
marks such as 'SAPAT CHAI TIME' and 'CHAITIME.COM', the infringement suit
and the injunction application are merely on the basis of the Plaintiff’s trade mark
'chaitime' bearing registration No.1631080 in class 30 in respect of the goods
referred to above.
5 I must begin by noting that what stares the Defendant in the face in
the present case is the Plaintiff’’s registration of its trade mark 'chaitime' in class
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30 in respect of similar goods. Once the plaintiff is shown to be a registered
proprietor of a trade mark, whether the trade mark is descriptive and therefore,
not entitled, in the first place, to be registered or whether the Plaintiff has stopped
using the trade mark at any later point of time, is completely immaterial. These
are matters which bear on the validity of the Plaintiff's registration and may afford
grounds for striking off the Plaintiff's mark. But these are not matters of defence
to an infringement action at the instance of the Plaintiff. As explained by the Full
1
Bench of our court in the case of Lupin Ltd. Vs. Johnson Johnson , a
registered proprietor of a trade mark would ordinarily be entitled to a finding of a
civil court in its favour on the basis that the trade mark registered in its name is
prima facie valid. Though the court is not barred for considering the plea of the
defendant regarding invalidity of the plaintiff's registration at the interlocutory
stage, such plea can only be on the footing that the registration in the plaintiff's
favour is so fraudulent or is so apparently invalid that the court should not grant
an injunction in favour of the plaintiff. This would indeed be a very heavy burden.
In other words, though it is open to the court to consider the plea referred to
above in the context of the plaintiff’s application for injunction, a strong
presumption in law arises in favour of the plaintiff of the validity of his registration
at the interlocutory stage and a very heavy burden is cast on the defendant to
rebut this presumption by impugning its validity. Absent any case of fraud or ex
facie illegality of the registation which shocks the conscience of the Court, the
presumption cannot be rebutted by the defendant. This is indeed a small window,
through which alone the defendant's plea regarding invalidity of the plaintiff's
registration can come in at an interlocutory stage.
1 2015 (61) PTC 1 [Bom]{FB]
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6 In the light of this law, the allegations of the Defendant in support of
its case of fraud may firstly be considered. The basis of the plea of fraudulent
registration may be outlined as follows :
(i) The Defendant submits that the Plaintiff has indicated different dates in its
different applications for the commencement by it of the use of the word
‘chaitime’;
(ii)It is submitted that a particular application of the Plaintiff earlier in point of
time in respect of the mark 'chaitime' was refused, whilst in yet another
application earlier the Plaintiff was made give a disclaimer in respect of the
words 'chai time', and that these particular facts were not disclosed by the
Plaintiff in its application for the subject registration bearing No.16341080;
(iii) The Plaintiff has not produced any evidence in respect of adoption
or use of the trademark since 1 November 2004;
(iv) The Plaintiff has discontinued the use of the trade mark 'chaitime’
from the year 2008 or 2009;
(v) The particulars of annual turnover and advertisement expenses in
respect of the trade mark ‘chaitime’ submitted by the Plaintiff are doctored or
fabricated.
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7 If one has regard to the applications referred to by the Defendant in
connection with the alleged different dates claimed for user, it is to be seen that
all these applications relate to different trade marks and the alleged users from
different dates are claimed in respect of these different trade marks. The
application for registration under No.1417785 was in respect of the trade mark
'Sapat Chai Time' in class 30, whereas application in Registration No.1417789
was in respect of 'Sapat Chai Time' In class 42. Registration Nos.1662795,
1662797 and 1662796 are for 'CHAITIME.COM' respectively in classes 9, 35 and
42. As far as the registered trademark ‘chaitime’ under registration no.1631080 in
class 30 is concerned, there is a consistent case of the Plaintiff that it has used
this trademark since 1 November 2004. The Plaintiff has adequately explained in
its affidavit dated 24 September 2015 that the user claimed since 1991 in respect
of the trade mark ‘chaitime’ in the Plaintiff’s reply to the examination report for the
subject trade mark, was by way of a genuine and bona fide error on the part of
the Plaintiff’s erstwhile trademark attorney. The Plaintiff has reiterated that it has
used the trademark ‘chaitime’ since 1 November 2004. In the premises, there is
no substance in the allegation that by reason of having claimed different dates in
respect of user of the trade mark at different times, the Plaintiff has misled the
registry deliberately and has obtained its registration fraudulently. Even as
regards the alleged non-disclosure of the rejection of an earlier application and a
disclaimer in respect of yet another earlier application, it cannot be suggested
that merely because these facts were not disclosed by the Plaintiff to the registry,
the Plaintiff has practiced a fraud on the registry or has obtained registration
fraudulently. As far as user since 1 November 2004 is concerned, there is
adequate material on record to support the Plaintiff’s case of such user and it
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cannot possibly be suggested that at this interlocutory stage that this Court
already has adequate material before it to come to a conclusion that there is any
fraud practised by the Plaintiff by misleading the Registry or suppressing any
material fact. So also, the alleged discontinuation by the Plaintiff of the use of its
mark ‘chaitime’ is neither here nor there. As far as the plea of fraud is concerned,
we are concerned with the facts as they existed at the time of the application for
registration and before the application is allowed. Any discontinuation of user
after the registration is neither here or there. There is, of course, no prima facie
case on record to show that the Plaintiff has at any time actually discontinued the
user of its trade mark ‘chaitime’.
8 Learned Counsel for the Defendant has relied on several cases in
support of his contention that descriptive words are not capable of being
registered. He relied upon a case of Matthew Ashers Onyango vs. Kenya Oil
2
Company , a case from Kenya, where the High Court at Nairobi rejected a
registered proprietor's application for injunction against a rival trader using the
registered trade mark of the plaintiff “proudly Kenyan”. The Court held that what
the applicant was seeking to protect is neither trade or goodwill associated with
him but common words available to all Kenyans. The court observed that in
essence, the law cannot be used to pre-empt the use of a common word where
no imagination was crafted into it by a claimant. The plaintiff cannot have, ruled
the Court, a better right than all other Kenyans because he has chosen to employ
the word “proudly Kenyan” as his trademark. The Court graphically put the matter
thus : “Let me say that the use of descriptive expressions or slogans in general
2 Case ID : No.377 of 2007 decided on 31.10.2007
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use like “proudly Kenyan” cannot entitle the plaintiff to a relief of injunction simply
because he has in his possession a registration document issued by a sleeping
public officer who is not conscious of the legal consequences of allowing such
registration.” These words are indeed well said and reflect a correct legal
principle. But then the words 'proudly Kenyan' are obviously incapable of being
registered as a trademark. This is clearly a case of inherent incapability of
registration of the trademark. Such is not the case with the mark ‘chaitime’. It is
possible to argue at the time of registration of a trademark or in a rectification
application in respect of a trademark already registered that the word or words
being descriptive ought not be registered or ought to be struck off from the
register. One may indeed argue that in the case of a trademark such as
'chaitime'. But this is far from saying that word is so inherently incapable of being
registered that it, by its very nature, makes the invalidity of the registration
apparent. The other cases, relied upon by the of Defendant, namely, the cases of
3
Pidilite Industries Ltd. vs. Vilas Nemichand Jain and Asian Paints Ltd. vs.
4
Home Solutions Ratail (India) Ltd. , are cases of a passing off action, where
the plaintiffs were claiming words of common use such as 'Leakguard' and 'Home
Solutions' as distinctive of their goods or services. These words rather described
the nature of goods or services and were clearly inherently incapable of being
5
registered. The cases of Nestle's Products (India) Ltd. vs. P. Thankaraja , The
6
Anglo Thai Corporation Ltd. vs. Mahendra Kumar Maneklal Shah and
7
Hindustan Unilever Ltd. vs. Girnar Exports were in respect of trade marks, for
3 2015 (64) PTC 185 [Bom]
4
2007(35) PTC 697 (Bom.)
5 AIR 1978 Madras 336
6
Misc.Petition No.3951972
7 2012 (51) PTC 376 (IPAB)
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which registrations were applied. At the stage of registration, the registry is
bound to consider whether, having regard to the descriptive nature of the words
or expressions forming part of the trademarks or by reason of the words having
been publici juris , the registration ought not to be granted. This is different from
the argument of inherent incapability suggested by the Defendant. Besides, even
if the trade mark 'chaitime' is said to be registered in favour of the Plaintiff in
breach of sub-section (1) of Section 9 of the Trade Marks Act, 1999, it cannot be
declared invalid, if, in consequence of the use which the Plaintiff has made of it
since, it has after registration and before commencement of any legal
proceedings challenging the validity of such registration, acquired a distinctive
character in relation to the goods or services for which it is registered. That is the
plain effect of Section 32 of the Trade Marks Act, 1999. It is indeed the Plaintiff's
case in the present suit that the trade mark has been extensively used by the
Plaintiff after its registration and as a result, has acquired of a distinctive
character in relation to the goods or services for which it is registered. This
aspect not only bears consideration when the Defendant's application for
rectification is heard by the appeal court, but also assumes importance in the
context of the present application. As I have noted above, prima facie there is a
case of the mark having acquired a distinctive character in relation to the
Plaintiff's goods vis-a-vis those of others.
9 Now coming to the aspect of deceptive similarity, it is important to
note that the Defendant is not using its proposed trade mark or words forming it,
namely, MY CHAI MY TIME, written as a continuation of four words used therein.
The words so written or the trade mark so depicted may not appear to be
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| sat 11/13 nms 10592015_Final.doc<br>deceptively similar to the Plaintiff's registered trade mark ‘chaitime’. The words<br>‘chai' and 'time’ appearing in the trade mark ‘chaitime’ obviously cannot<br>separately be claimed monopoly in by the Plaintiff. For that matter, the Plaintiff<br>cannot per se object to the use of the words 'chai' and 'time' as part of someone<br>else's mark. But what is objectionable here is the Defendant's use of the words | ||
|---|---|---|
| 'chai' and 'time' in its impugned trade mark or | ||
| in its peculiar presentation. The words 'Chai' and 'Time' are so placed as to<br>invoke an association with the Plaintiff's mark 'chaitime'. We are not concerned<br>whether that was the intent. What is important is that such is its effect. In an<br>application for infringement where there is similarity of an offending mark or<br>similarity of goods or services covered by the registered trade mark, what we<br>have to see is whether there is any likelihood of confusion on the part of the<br>public or likelihood of an association with the registered trade mark. One has to<br>go by the test of similarity from different stand points, namely, phonetic, structural<br>or ocular. The offending marks, going by the way they have been structured, are<br>clearly likely to cause confusion on the part of the public as to the origin of the<br>goods. The offending marks are very much likely to invoke an association with<br>the Plaintiff's registered trade mark and make people believe that the goods in<br>connection therewith originate from the Plaintiff. The impugned trademarks<br>sought to be used by the Defendant, by reason of the structural element of the<br>words ‘chai' and 'time’ being placed thus in juxtaposition with each other, does<br>appear to offend the mandate of Section 29.<br>10 Accordingly, there is a case for grant of a temporary injunction.<br>Hence, the following order is passed : |
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| sat 12/13 nms 10592015_Final.doc<br>(i) Pending the hearing and final disposal of the suit, the<br>Defendant by itself, its directors, servants, agents, stockists,<br>distributors, dealers and all persons claiming<br>through it, are restrained by a temporary order and injunction<br>from infringing the Plaintiff’s registered trademark<br>‘chaitime’ bearing 1631080 in class 30 by using the impugned | ||
|---|---|---|
| marks o r | and/or any other | |
| trademark which contains the words ‘chaitime’ or ‘chai' and<br>'time’ following each other or in close juxtaposition;<br>(ii) The injunction order granted in the notice of motion<br>shall operate till the disposal of the rectification application of<br>the Defendant;<br>(iii) Pending the final disposal of rectification<br>proceedings filed by the Defendant in respect of the Plaintiff's<br>trade mark 'chaitime', further proceedings in the suit shall be<br>stayed;<br>(iv) The Plaintiff shall be entitled to renew its application<br>for temporary injunction if the rectification application is<br>decided in its favour;<br>(v) The notice of motion is disposed of accordingly; |
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(vi) The application for stay of this order is refused.
(S.C. Gupte, J.)
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