1. This is an action for passing of which has been instituted by the Plaintiff on the basis of its trade mark “i-Term” (Aegon Life i-Term Plus) seeking an order of injunction against the Defendant restraining it from using the mark “i-Term” (Aviva i-Term Smart) in respect of its insurance policies.
2. According to the Plaintiff, it is engaged in the business of providing life insurance, pension and other related insurance products and services in the Indian market. In the year 2009, the Plaintiff was desirous of launching online insurance policies which could be purchased by customers on the Plaintiffs website or through online aggregators, in addition to selling policies through traditional means such as via insurance agents, brokers etc. That in order to differentiate and distinguish its ‘products offering from others, and after significant deliberations, the Plaintiff coined and adopted a new, unique, distinctive and innovative trade mark being “-i-Term”. The Plaintiff also conceived and adopted a stylized manner of representing the trade mark “i-Term” by using lowercase “i” and uppercase “T”. According to the Plaintiff, it was the first entity in India to offer and sell insurance policies online. On 17th August 2009, the Plaintiff made an application to the Insurance Regulatory and Development Authority of India (“IRDAI”) seeking its approval for introducing insurance products under the trade mark “i-Term” and offering them to prospective customers via online channels, which was approved by the IRDAI on 7th September 2009.
3. According to the Plaintiff, in or about October 2009, the Plaintiff launched and started offering for sale its online insurance products on its website www.aegonreligare.com, under the trade mark “i-Term”. According to the Plaintiff, the first set of its insurance policies under the trademark “i-Term” were issued on 27th October 2009. In 2017, the Plaintiff also launched two other products with variants of the trade mark “i-Term” viz. ‘i-Term’ Plus and ‘i-Term Forever. The Plaintiff has also registered the domain names, www.iterm.co.in, www.iterm100.com and www.itermplus.com. According to the Plaintiff, its trade mark ‘i-Term is inherently distinctive of its products and in any event by virtue of its open, continuous and extensive use, the said mark has acquired secondary significance thereby connoting and denoting to the members of the trade and public, the insurance policies of the Plaintiff and of no one else. On 18th May 2018, the Plaintiff fled trademark applications under Nos. 3837083, 3837084, 3837085 and 3837086 all in class 36 with the Registrar of Trademarks for registration of the trade marks i-Term (word mark), i-Term Plus (word mark), i-Term Forever (word mark) and i-Term Forever Plus (word mark), respectively. On 17th November 2018, i.e. after the present suit was filed, the Plaintiffs trade mark ‘i-Term Forever Plusf bearing No.3837086 in class 36 was registered, however, since the hearing of the present Notice of Motion on the basis of cause of action for passing of had already commenced, the Plaintiff has proceeded with the hearing without amending and claiming the cause of action for infringement of trade mark ‘i-Term Forever Plusf bearing No.3837086 in class 36.
4. The Plaintiffs products i.e. Insurance Policies which are sold over the internet include inter alia the following :
* Aegon Life i-Term Insurance Plan;
* AEGON RELIGARE’S Life i-Term Insurance Plan;
* Aegon i-Term Plan;
* Aegon Life i-Term Forever Plan;
* Aegon Life i-Term Plus.
The Defendants products include the following:
* AVIVA i-Term Smart Plan;
* AVIVA i-Life Plan.
The products involved in the present suit are the Plaintiffs Term Insurance Policy offered under the mark “Aegon Life i-Term Plus” on the one hand and the Defendants Term Insurance Policy under the mark “Aviva i-Term Smart” on the other hand. The Defendants product is offered through its website www.avivaindia.com and the Plaintiffs product is offered through its website www.aegonlife.com. Both, Plaintiffs and the Defendants products are also offered through IRDAI recognised online Policy Aggregators such as www.myinsuranceclub.com, www.policybazaar.com, www.bankbazaar.com and www.easypolicy.com.
5. According to the Plaintiff, in or around the third week of May 2018, the Plaintiff for the first time learnt that the Defendant had launched its online policy under the mark “Aviva i-Term Smart”. The Plaintiff issued a cease and desist notice dated 22nd May 2018 to the Defendant whereby the Plaintiff asserted its rights in the trade mark ‘i-Term and called upon the Defendant to cease and desist from using the mark ‘i-Term. The Plaintiff also initiated communication with the senior management of the Defendant to explain the rights of the Plaintiff in the trade mark ‘i-Term and the seriousness of harm and damage caused to the Plaintiffs business due to the unauthorized and illegal use of the mark ‘i-Term by the Defendant. The Plaintiff also addressed a letter to the IRDAI on 25th May 2018 and informed the IRDAI about the Plaintiffs rights in the trademark ‘i-Term. The Plaintiff further informed the IRDAI that the act of subsequent adoption of identical trademark by the Defendant amounts to violation of Plaintiffs rights in the trademark ‘i-Term and requested the IRDAI to look into the matter and take suitable steps to protect the interests of the Plaintiff. On 31st May 2018, senior representatives of the Plaintiff also met with concerned officials at the “Life” and the “Actuary” departments of IRDAI. The IRDAI replied on 6th July 2018 wherein the IRDAI stated that a dispute regarding usage of the term ‘i-Term” as a trade mark is not within the jurisdiction of IRDAI and therefore the Plaintiff may approach an appropriate forum.
6. According to the Plaintiff, the Defendant by its Advocates reply dated 30th May 2018 responded to the Plaintiffs cease and desist notice dated 22nd May 2018. In the said reply, the Defendant denied the claim of the Plaintiff and stated that no trade mark rights can exist in an expression which is common to the industry where “i” denotes the Internet and “Term” denotes the nature of the insurance policy. The Plaintiff vide its rejoinder letter dated 16th June 2018, denied the contentions raised by the Defendant in its Reply and once again called upon the Defendant to forthwith cease and desist the use of the impugned mark. Thereafter, the present suit was filed in June 2018.
7. From a perusal of the record and after hearing the submissions of the Ld. Senior Advocates for the parties, according to me, the moot question that requires consideration is whether the Plaintiffs trade mark “i-Term” is inherently distinctive of its products viz. term insurance policies which are sold over internet or that whether the Plaintiff has acquired immense goodwill and reputation in its mark “i-Term” that such use of the said expression albeit with additional features by the Defendant in respect of its term insurance policies sold over internet is likely to lead to confusion or deception or misrepresentation and consequently damages? The said question can be considered in three different parts:
Issue A: Whether the Plaintiffs mark “i-Term” is an inherently distinctive mark in respect of its insurance policies sold over the internet?
Issue B: Whether the Plaintiffs mark “i-Term” has acquired secondary meaning or such secondary significance that it connotes and denotes to the members of the trade and public, the insurance policies of the Plaintiff and no one else?
Issue C : Whether the Defendants use of its mark ‘Aviva i-Term Smart in respect of its insurance policies sold over the internet likely to cause misrepresentation or confusion or deception in the minds of consumers and consequently is there a likelihood of damage to the Plaintiff - Whether the Defendants activities constitute passing of?
Issue A : Whether the Plaintiffs mark “i-Term” is an inherently distinctive mark in respect of its insurance policies sold over the internet?
8. The Ld. Senior Advocate for the Plaintiff submitted, that the trade mark ‘i-Term is a coined and invented term and it is inherently distinctive; that it is capable of distinguishing the Plaintiffs product i.e. insurance policies sold over internet from those of the others; that the word ‘i-Term is not an ordinary English language word and there is no meaning assigned to the word ‘i-Term in the English language; that the word ‘i-Term is not found in any dictionary; that the individual meaning of ‘if is not internet or insurance and “term” is not term insurance, in any dictionary; that any person hearing the word “i-Term” would never be able to relate it to either ‘insurance or ‘term insurance or ‘insurance offered on internet since the word ‘i-Term is neither an ordinary English language word nor a descriptive term; that the Plaintiff has conceived and adopted a stylized manner of representing the trade mark by using lowercase “i” and uppercase “T”; that being an invented and coined mark, the same deserves the highest degree of protection; that the Plaintiff was the first one to adopt the trade mark “i-Term” in the year 2009 and no other company was using the said mark “i-Term” in respect of insurance policies.
8.1 The Ld. Senior Advocate for the Plaintiff relied upon a Google Trends report obtained from the website www.googletrends.com to fortify his submission that the Plaintiffs trade mark is a coined / invented word and also a distinctive trade mark. He submitted that a perusal of the Google Trends report shows that prior to 2009 people have not searched for word / term ‘i-Term as it is not a common English language word or a descriptive term. He submitted that a bare perusal of the graph of the period after the Plaintiffs adoption and use of the trade mark i-Term (post 2009) would show a huge spike in the volume of searches done for the word ‘i-Term. He submitted that the related topics refer to the Plaintiffs name, which also show that the general public associates the term ‘i-Term with the Plaintiff. He submitted that this is also a factor which shows the reputation which the Plaintiff has acquired in the trade mark ‘i-Term. He submitted that apart from the Plaintiff, no one else has used the expression ‘i-Term for insurance products till the Defendant adopted the trade mark ‘i-Term in May 2018. He further submitted that had the mark ‘i-Term been a descriptive mark or even perceived as a descriptive mark by the insurance industry, it would have been used by other persons in the industry.
8.2 The Ld. Senior Advocate for the Plaintiff submitted that the Defendant is estopped from contending that the mark “i-Term” is descriptive. In support of his submission, he referred to the Defendants trade mark “i-LIFE” bearing registration No.2095003 in Class 36. He submitted that apart from securing registration of the trade mark “i-LIFE”, the Defendant has also applied for registration of trade marks ‘i-Shield’ and ‘i-Secure. He submitted that in relation to the Plaintiffs trade mark “i-Term”, the Defendant has contended that the said trade mark is descriptive as “i” refers to “internet” or “insurance” and the “Term” stands for “term insurance”. He submitted that by adopting the same reasoning as propounded by the Defendant, it can be argued that the “i” in “i-LIFE” represents “insurance” or “internet” and “Life” represents “life insurance” thereby forming the descriptive term “Life Insurance”. He submitted that despite this, the Defendant chose to assert exclusive rights over its mark i-LIFE and is therefore estopped from now contending that the mark “i-Term” is descriptive. He submitted that even though the Defendants registration is for a device mark, the essential and prominent feature of its trade mark is “i-LIFE”. He submitted that when the Registrar of Trade Marks in his Preliminary Examination Report objected to the registration of the Defendants trade mark “i- LIFE”, the Defendant in its Reply stated that its mark when considered as a whole is not descriptive. Relying upon this Court judgment in the case of Ultra-Tech Cement Limited v. Alaknanda Cement Pvt. Ltd. (2011 SCC Online Bom 783)he submitted that Defendant cannot blow hot and cold at the same time to suit its convenience. He submitted that having applied for the registration of a mark such as “i-LIFE”, the Defendant is now estopped from contending that the Plaintiffs mark “i-Term” is descriptive.
8.3 The Ld. Senior Advocate for the Plaintif referred to the Defendant Affidavit in Sur-rejoinder which states that prior to adopting its mark, the Defendant had conducted a search in the Trade Marks Registry for similar trade marks but did not find any similar trade mark. He submitted that the fact that the Defendant conducted a search in the first place is a proof of the Defendants intention to adopt and use ‘i-Term as a trade mark and is an implicit admission that the Defendant believed that the mark ‘i-Term could have been applied for or granted registration.
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8.4 The Ld. Senior Advocate for the Plaintiff submitted that use of “i”, “e” and / or “term” is not descriptive of Term Insurance Plans available online and the same are not used in a descriptive sense. He submitted that various insurance companies are using “i” as the first letter in their respective trade marks; however, the suffix in each case is different and is used to distinguish the company products from the products offered by other insurance companies in the market. He submitted that the marks relied upon by the Defendant to show use of “i”, “e” and / or “term” in respect of policies offered for sale by various companies such as ‘i-Protect, ‘i-Secure, ‘i-Shield etc. are trade marks of their respective owners who are claiming exclusive rights and are using the respective trademarks in a distinctive manner, as a trade mark, and not in a descriptive sense.
Defendants Submissions :
9. The Ld. Senior Advocate for the Defendant submitted that the mark i-Term/ i-Term is descriptive of the nature and character of the product. He submitted that the expression ‘i-Term is derived from “i” for internet and/or insurance and “Term” for the nature of the Insurance Policy. He submitted that considering the Plaintiffs admission in paragraph 3(i) at page 359 of the Affidavit in Rejoinder, it cannot be claimed by the Plaintiff that the descriptive word “TERM” (denoting the characteristic of the policy) when combined with the generic letter “i” (not claimed as proprietary by the Plaintiff) constitutes a distinctive trade mark. He submitted that if both the terms are descriptive, then a combination thereof cannot make the combination distinctive at all. He relied upon this Courts decision in Faber-Castell Aktiengesellschaft & Anr. v. M/s Pikpen Private Limited (2003 (4) MhLJ 264). In this case, it was held that the trade mark ‘TEXTLINER was a combination of ‘TEXT and ‘LINER, which two words taken independently are purely descriptive and hence the result of the combination is also descriptive. He submitted that the mark TEXTLINER was held to be descriptive of the function which the article was intended to perform. He submitted that this principle is applicable to the present case as ‘i-Term’ is purely descriptive of the nature of the policy, its characteristic and its availability on the internet.
9.1 The Ld. Senior Advocate for the Defendant submitted that the test to ascertain whether a trade mark is descriptive has been set out in the following judgments:
* Rochem Separation Systems (I) Pvt. Ltd., Mumbai v. TAS Engineering Company Ltd. (2001 (2) MhLJ 146),
* M/s Bharat Enterprises (India) v. C. Lall Gopi Industrial Enterprises (AIR 1999 Punjab and Haryana 231)
9.2 The Ld. Senior Advocate for the Defendant submitted that the Plaintiffs contention that the Defendant took a search in the Trade Marks Registry before adopting the impugned mark shows that the Defendant admits that the word ‘i-Term can be used in a trade mark sense or is distinctive or adapted to distinguish, is untenable. He submitted that the search was taken only to ascertain if any mark similar to the Defendants mark, ‘AVIVA’ is registered or is pending registration.
9.3 The Ld. Senior Advocate for the Defendant also relied upon the case of J.R. Kapoor v. Micronix India 1994 (Supp (3) SCC 215) wherein it was held that anyone producing any product with the use of microchip technology would be justified in using the word “MICRO” as a prefix to its trade name / mark and an injunction could be granted to the Plaintiff against the use of the mark MICROTEL by the Defendant.
9.4 The Ld. Senior Advocate for the Defendant submitted that the Plaintiff having adopted a purely descriptive term as a part of its mark, cannot prevent others from using the same. Reliance was placed upon the judgments in Schering Corporation v. United Biotech (P) Ltd. (2011(1) BomCR 89), and Garware Polyster India Ltd, Mumbai v. 3M Company Kegal and Anr. (2016 (67) PTC 233 (Bom). Further, relying upon the English case of Keystone Knitting Mills Ltd. (XLV RPC 421) he submitted that that the question whether the word is descriptive or not is to be decided by applying the test as to what the word would represent to the public at large.
9.5 The Ld. Senior Advocate for the Defendant submitted that the Plaintiffs contention that the Defendant is estopped from contending that “i-Term” is descriptive is also unsustainable. He submitted that firstly, the Defendant has never made any Application for registration of “i-Term” as a trade mark; and secondly, the Defendant has never claimed any proprietary rights in the words “i-Term”. He submitted that the word “i-Term” in the Defendants trade mark “Aviva i-Term Smart” is used in a descriptive manner to describe the nature of the Policy, viz. that it is an online Insurance Policy for a particular term. He submitted that the Defendants registration for the mark “i-Life” cannot amount to any admission on the part of the Defendant that ‘if can acquire distinctiveness. He submitted that the said mark is a device mark. He submitted that the principle laid down in Ultra-Tech Cement Ltd. (supra) is not applicable to the facts of the present case. He submitted that the principle of estoppel laid down therein is restricted to the facts of that case. He submitted that the principle becomes applicable only when a defendant applies for registration of a trade mark which is identical with or similar to the plaintiffs trade mark and thereby claims proprietary rights therein. He submitted that in the present case, the Defendant has never claimed any proprietary rights in the expression “i-Term”. He submitted that in Ultra-Tech Cement Ltd. (supra), the Defendant had applied for registration of the mark ‘Ultra-Tuff thereby claiming proprietary rights therein. He submitted that in the present case, the facts are different and, therefore, the contention that the Defendant is estopped from contending that “i-Term” is not distinctive or adapted to distinguish is unsustainable.
9.6 The Ld. Senior Advocate for the Defendant further submitted that the website referred to and relied upon by the Plaintiff i.e. www.googletrends.com does not exist and that the alleged data produced by the Plaintiff is a permutation and combination of various parameters of google searches, including queries, adwords and metatags as entered in the google website, www.trends.google.com.
9.7 The Ld. Senior Advocate for the Defendant submitted that both, the Plaintiff and the Defendant, have placed sufficient and more substantial material before this Court to show various Term Insurance Plans foated by different insurance companies bearing names inter alia “i-growth”, “i-force”, “i-map”, “i-direct”, “i-plus”, “i-wealth”, “i-clear collect”, “i-swift collect”, “i-smart collect”, “i-anywhere collect”, “i- multi-pay”, “i-mint”, “i-LOAN”, “i-raksha supreme”, “i-secure”, “i-Cancer”, “i-life”, “i-protect”, “i-fex”, “e-shield”, “e-term”, “i-Maximise”, “i-Guarantee”, “i-SURANCE”, “i-care”, “i-shield” and “i-Invest”. He submitted that the expression “i-Term” or “e-Term” does not have any trade mark characteristic and is generic to the insurance trade and part of common practice.
9.8 The Ld. Senior Advocate for the Defendant submitted that the Plaintiff seeks to make out a case that it is only the letter “i” which is common to the insurance market. He submitted that, on the contrary, every word which is combined with the letter “i”, such as maximise, fex, care, shield, protect, guarantee, invest, wealth are generic words which are Publici Juris. He submitted that it is impossible for the Plaintiff to claim monopoly over a combination of such words, which is partly common to the trade and is factually partly Publici Juris.
Observations / Findings :
10. I have considered the above submissions advanced by the Ld. Senior Advocates for the parties and have also considered the case law relied upon by them. At the outset, I must express that the Plaintiffs contention that ‘i-Term is an invented mark and is therefore inherently distinctive is not tenable. Relying on google analytic report, the Plaintiff has claimed that for the period between 1st January 2005 and 31st August 2009 i.e. the period prior to the adoption and use of the trade mark ‘i-Term by the Plaintiff, the search volume for the key word ‘i-Term was very low, which according to the Plaintiff indicates that there was very little interest in this key word (paragraph 21 of the Written Submissions). This, according to me belies the case of the Plaintiff that ‘i-Term has been coined or invented by the Plaintiff. If the mark ‘i-Term was coined or invented by the Plaintiff meaning thereby that such mark did not exist prior to the Plaintiffs adoption, there would be no question of search volume for key word ‘i-Term being very low - it would have been absolutely nil. The fact that there was a usage or search of the expression ‘i-Term albeit on a very low scale as admitted by the Plaintiff itself, shows that the said expression ‘i-Term existed even prior to the Plaintiffs adoption and use. Hence, it is not possible to accept the contention of the Plaintiff that it has ‘coined or ‘invented the mark ‘i-Term.
10.1 Assuming that the mark ‘i-Term’ was coined or invented by the Plaintiff in respect of its insurance policies sold over the internet, it is clear that the said mark is completely descriptive. It is difficult to believe that the Plaintiffs “i-Term” which is used in respect of term insurance policies sold over the internet, is not derived from the commonly / descriptive terms “i” (internet / insurance) and “Term Insurance”. The test is whether the mark by itself, without reference to anything else, describes the nature or any characteristics of the product or services. A bare perusal of the mark “i-Term” with respect to the term insurance policies and without any reference to the Plaintiff or Defendant would suggest that it has something to do with ‘internet or ‘term insurance or ‘insurance. It is a mere combination of two general, common and known elements. Further, even the combination is not an unusual combination so as to derive any kind of inherent protection. I believe the mark ‘i-Term can surely be termed as descriptive of the goods and services for which it is being used by the Plaintiff and Defendant. In this day and age, it is common to use the letters “i” and “e” as prefixes in marks relating to goods and services denoting some kind of association or suggestion relating to internet or electronics.
10.2 In the case of J.R. Kapoor v. Micronix India (supra) the rival marks were Microtel and Micronix. It was held that the word ‘Micro’ was descriptive of micro technology and no one could claim monopoly over the use of the said word. Garware Polyster India Ltd (supra) was an action for infringement and passing of. Therein the Court held that the plaintiff itself having used the words ‘Sun Control in a descriptive manner, the plaintiff could not claim monopoly in the use of those words. Similarly, in the case of Schering Corporation (supra). it was held that a proprietor cannot claim exclusivity in his trade mark or in the name which is derived from a generic drug.
10.3 In Faber-Castell (supra) this Court observed that that the mark "TEXTLINER" was a result of combination of the words TEXT and LINER; that these two words taken independently are purely descriptive; that the result of the combination was also descriptive. Similarly, in the present case, the terms “i” and “Term Insurance” are descriptive and their conjunction is also descriptive. While the Plaintiff may have honestly adopted the mark “i-Term” to distinguish its goods from those of others, it does not change the fact that the mark is descriptive of the nature of the product and the mode of purchase / sale of the product.
10.4 The test for a ‘descriptive mark is set out in the Corpus Juris Secundum, Volume 87, Paragraphs 34 and 35 of which are reproduced in paragraph 8 of the decision in M/s Bharat Enterprises (India) (supra). The same is reproduced hereunder:
“The true test in determining whether a particular name or phrase is descriptive is whether, as it is commonly used, it is reasonably indicative and descriptive of the thing intended. In order to be descriptive within the condemnation of the rule, it is sufficient if information is afforded as to the general nature or character of the article and it is not necessary that the words or marks used shall comprise a clear, complete and accurate description. The meaning which should be given is the impression and significance which are conveyed to the public. Whether words or marks claimed as trade-marks are descriptive or whether they are suggestive or arbitrary and fanciful must be decided with respect to the articles to which they are applied and the mark must be considered as a whole.”
In my view, the Plaintiffs mark is highly descriptive of the goods and services in respect of which it is used i.e. online term insurances. I do not believe it requires much imagination on ones part to conclude that the mark “i-Term” is derived from the expression “TERM INSURANCE” / “INSURANCE TERM” when used in respect of insurance policies. In the circumstances the first impression of the mark upon the public who comes across the Plaintiffs mark is to signify a connection with the suit products i.e. term insurances. It cannot be said that the Plaintiffs “i-Term” trade mark is an arbitrary or fanciful trade mark.
10.5 Further, this Court in the case of Rochem Separation Systems (I) Pvt. Ltd., Mumbai v. TAS Engineering Company Ltd. (supra) has held as under :
“5. The law relating to passing of is now well settled. A Plaintiff to maintain an action has to first satisfy, in the case of a descriptive word, that it has acquired distinctive or secondary meaning in connection with the Plaintiff’s business, so that the use of those words in the trade name adopted by another is likely to deceive the public.”
10.6 Therefore, the Plaintiff who is attempting to seek exclusive rights in a descriptive trade mark must bear and consequently discharge the burden of proving that its trade mark has acquired such goodwill and reputation so as to acquire a secondary meaning / significance therein so that the public denotes and connotes the trade mark to emanate from the Plaintiff only and none else. Whether this test has been satisfied by the Plaintiff has been considered by me in the later part of this judgment.
10.7 Apropos the argument of estoppel raised by the Plaintiff against the Defendant in respect of its trade mark application for the mark ‘i-LIFE, I do not concur with the same and the Plaintiff’s reliance upon the case of Ultra-Tech Cement Ltd. (supra) in the facts of the present case is misplaced. The law of estoppel apropos trade marks is not that a Defendant who claims a proprietary right in one mark is estopped from raising a defence, in a suit fled by the Plaintiff on the basis of another mark, that the Plaintiffs mark is descriptive. For a Plaintiff to press the doctrine of estoppel, it ought to show that the Defendant on one hand claims a proprietary right in a particular trade mark which is admittedly identical with and / or deceptively similar to the Plaintiffs trade mark and on the other hand claims that the Plaintiffs trade mark is descriptive and no monopoly can be claimed in respect of the same. It is under such circumstances, that a Plaintiff can press the doctrine of estoppel to prevent the Defendant from arguing that the Plaintiffs mark is descriptive. In the Ultra-Tech matter (supra), the Defendant claimed statutory right in the mark ‘Ultra-Tuff in respect of cements by fling a trademark application. When the Plaintiff filed a suit for infringement and passing of against the use of the trade mark ‘Ultra-Tuff by the Defendant, the Defendant took a defence that the term ‘Ultra-Tech containing Ultra as one of the leading and essential feature is descriptive and therefore the Plaintiff cannot claim monopoly in the same. It was in this background that this Court held that the Defendant cannot blow hot and cold at the same time. The facts of the present case are completely different. Admittedly, the Plaintiff has not claimed any cause of action against the use of the Defendants trade marks ‘i-LIFE, ‘i-Shield ‘i-Secure since there is no similarity between the Plaintiffs trade mark ‘i-Term and Defendants trade marks ‘i-LIFE, ‘i-Shield ‘i-Secure. For the purpose of the present proceedings, the only relevant trade mark of the Defendant which has been impugned by the Plaintiff is ‘i-Term”, for which, admittedly, the Defendant has not fled any trade mark application. Hence, the doctrine of estoppel cannot be pressed against the Defendant on the basis of completely different marks. Further, according to me the fact that the Defendant has fled trade mark applications for its other marks ‘i-LIFE, ‘i-Shield ‘i-Secure and has chosen not to file any trade mark application in respect of the mark ‘i-Term in fact shows that the Defendant did not consider the same to be a trade mark.
10.8 In so far as the contention of the Plaintiff that since the Defendant had conducted a search in the Register of Trade Marks, it would imply that the Defendant considered i-Term to be a trade mark, I do not agree with the same. The Defendant had conducted a search in the Register of Trade Marks for the mark “AVIVA” and not i-Term per se. On the basis of such search, it cannot be said that the Defendant considered ‘i-Term to be a trade mark or wanted to register ‘i-Term as a trade mark. The proprietors of trade marks may generally conduct a search for the whole of their mark including the descriptive elements therein for eg. Sterling Stationery, Novelty Confectionary Store etc. If such kind of searches are conducted, it could not be said that it implies that the proprietors considered the word “Stationery” or
“Confectionary Store” to be trade marks.
10.9 I am therefore of the opinion that the mark ‘i-Term of the Plaintiff is not inherently distinctive of its insurance policies sold over the internet.
Issue B: Whether the Plaintiffs mark “i-Term” has acquired secondary meaning or such secondary significance that it connotes and denotes to the members of the trade and public, the insurance policies of the Plaintiff and no one else?
Plaintiffs Submissions :
11. The Ld. Senior Advocate for the Plaintiff submitted that even a descriptive mark can acquire reputation and become distinctive. He submitted that the Plaintiff who has coined the trade mark ‘i-Term has gathered substantial reputation and goodwill owing to the long, exclusive and continuous use and promotion made by the Plaintiff as well as a result of the excellent products and services offered by the Plaintiff under the trade mark ‘i-Term. He submitted that the Plaintiff was the first adopter of the trade mark ‘i-Term in the year 2009, and the Plaintiff alone continuously used it from 2009 till May 2018 when the Defendant adopted the mark ‘i-Term” in respect of its identical products / services.
11.1 To prove the reputation and goodwill acquired by the Plaintiff in its trade mark, the Plaintiff has inter alia annexed copies of newspaper and internet publications, reviews on insurance aggregator websites, print out of customers reviews posted on third party websites, and print outs of YouTube advertisements in respect of its trade mark. The Plaintiff has also annexed its Chartered Accountants Certificates certifying its annual sales and promotional expenses in respect of its trade mark “i-Term”. The Plaintiff also claims to have sold about 1,50,054 insurance policies from October 2009 till March 2018.
11.2 The Ld. Senior Advocate for the Plaintiff submitted that the proviso to section 9(1) of the Trade Marks Act, 1999 recognizes that a descriptive mark / word can acquire distinctiveness by use. He submitted that the material produced by the Plaintiff sufficiently establishes that on account of the excellent features and exceptional services provided by the Plaintiff and its long extensive use, the Plaintiffs products under the trade mark “i-Term” have acquired enormous reputation and goodwill amongst the Plaintiffs customers and the general public. He submitted that in view of the same, the trade mark “i-Term” has come to be associated exclusively with the Plaintiff in this field and has acquired great reputation and goodwill. He submitted that the mark ‘i-Term has acquired secondary meaning and secondary significance thereby connoting and denoting to the members of the trade and public, the insurance policy of the Plaintiff and no one else. He further submitted that the Defendant has not disputed authenticity / veracity of the material produced by the Plaintiff for proving reputation in the mark ‘i-Term”.
11.3 The Ld. Senior Advocate for the Plaintiff submitted that even a descriptive mark can acquire reputation and become distinctive. Reliance was placed upon the Supreme Courts decision in T.V. Venugopal v. Ushodaya Enterprises Limited and Anr. (2011) 4 SCC 85). Similarly, he relied upon the decision of this Court in Jagdish Gopal Kamath v. Lime & Chili Hospitality Services (2015) 3 Bom CR 496) in support of his submission that even a generic or descriptive word can, in some situations, acquire distinctiveness.
Defendants Submissions :
12. The Ld. Senior Advocate for the Defendant submitted that the word ‘i-Term has not acquired any secondary significance. He submitted that for a descriptive word to acquire secondary meaning, the test is whether the primary meaning of the word is forgotten and the descriptive word has acquired secondary significance. He submitted that in the present case, the primary meaning of ‘i' denoting internet and/or insurance and of ‘Term denoting period in respect of insurance policies cannot be and is not forgotten. The Ld. Senior Advocate for the Defendant submitted that there is a difference between a fancy word and a descriptive word. In support of his submissions, he relied upon the speeches of Lord Shand and Lord Davy in the English case of The Cellular Clothing Company Ltd. v. Maxtom & Murray (1899 Appeal Cases 326).
12.1 The Ld. Senior Advocate for the Defendant submitted that ‘i-Term’, ‘i-Term plus’ and ‘i-Term forever’ are not the Plaintiffs trade marks. He submitted that the marks, as shown on the Plaintiffs insurance policies are ‘Aegon Religare i-Term’ or ‘Aegon i-Term Life’. He submitted that since the purported launch in 2009 till just before fling of the above suit, the Plaintiff has never asserted proprietary rights in its mark ‘i-Term’ even by using the ‘TM’ or ‘SM’ symbol, let alone fling any trade mark applications. With respect to the Chartered Accountant’s certificates produced by the Plaintiff, he submitted that, had the Plaintiffs Chartered Accountants seen the Plaintiffs policies themselves, they would not have said that the said figures are in respect of Trade Marks ‘i-Term’, ‘i-Term plus’ and ‘i-Term forever’ per se. He submitted that none of the documents show use of the expression ‘i-Term in isolation and the same is always used as a part of the Plaintiffs whole mark ‘Aegon Religare’ i-Term’.
12.2 The Ld. Senior Advocate for the Defendant submitted that the total number of policies issued by the Plaintiff from 2009 to 2018 are allegedly only 1,50,054. He submitted that in the vast population of India, only 1,50,000 policies are claimed to be sold in 9 years and the alleged total collection of Premium of Rs. 506.73 crores cannot result in the word ‘i-Term’ acquiring secondary significance, particularly in view of the fact that the word ‘i-Term’ is purely descriptive.
12.3 The Ld. Senior Advocate for the Defendant submitted that in the case of Jagdish Gopal Kamath (supra), on the basis of the material produced, the Court was satisfied that the words “Caf Madras” were uniquely associated with the Plaintiff. He submitted that in the present case the Plaintiff has failed to discharge the burden of proving that the mark “i-Term” is associated with the Plaintiff only.
12.4 The Ld. Senior Advocate for the Defendant submitted that the Plaintiff has failed to prove (i) any distinctiveness in its mark, (ii) any reputation in its mark and (iii) any secondary meaning to its mark. He submitted that the Plaintiffs mark is incapable of acquiring distinctiveness and has failed to develop any reputation or secondary character or meaning. He submitted that the contention of the Plaintiff that the mark “i-Term” is capable of acquiring distinctiveness by reason of various registrations of trade marks containing the letter “i” is unsustainable in a passing of action. He submitted that in view of Section 27(2) of the Trade Marks Act, 1999, in a passing of action, the Plaintiff is required to establish that the trade mark claimed by him is capable of acquiring distinctiveness. He submitted that the material produced in this case clearly shows that “i-Term” is not capable of acquiring distinctiveness.
Observations / Findings :
13. I have considered the submissions advanced and the case law cited by the Ld. Senior Advocates for the parties on the above issue. I have already observed that the mark ‘i-Term’ is descriptive of the goods and services in respect of which it is used by the Plaintiff and the Defendant. There can be no dispute that even a descriptive word can be used as a trade mark provided it has become well-known and has acquired a secondary meaning. The principle that even a descriptive term can acquire distinctiveness and a proprietor can seek injunction on the basis of such mark is well settled. In T.V. Venugopal (supra), the Supreme Court has held as under :
“85.… Besides, even assuming that the said word is generic yet if it is found by the court that such a mark has attained distinctiveness and is associated with the business of the Plaintiff for considerable time and thereafter the Defendant adopts a similar word as one of his two marks to induce innocent internet users to come to the website of the Defendant, which establishes dishonest intention and bad faith, would the court still be not granting injunction to protect the business of the Plaintiff The answer to the said question has to be an emphatic 'No". User of similar word by a competitor coupled with dishonest intention and bad faith would empower a court to restrain such user/misuser to do equitable justice to the aggrieved party.
88. The test of common field of activity now accepted is that of "common class of consumers". The reason for this is the likelihood of such consumers identifying the Defendant's goods as originating from the same source as the Plaintiff. The question therefore would be, whether from the factual situation, an inference can be drawn that a purchaser of the Defendant's product could assume such product as originating from the Plaintiff.”
13.1 In Jagdish Gopal Kamath (supra), this Court has held as under:
“50. The answer from the Defendant is only that the two words, taken disjunctively, are commonplace and that, consequently, the Plaintiff’s can enjoy no monopoly in the two words taken together. For, according to Mr. Ajatshatru, the combination merely describes a restaurant or eatery serving a certain type of South Indian cuisine. The Plaintiff’s cannot, Mr. Ajatshatru says, monopolize a phrase that is descriptive and generic.
51. This is simply wrong. The reasons are many. As we have seen, the first defence that the phrase is 'common to the trade' is not established. Second, even a generic or descriptive word can, in some situations, acquire distinctiveness. Again, that law is well-settled. Saying that no generic or descriptive word can ever become distinctive in any circumstances is an overbroad generalization. In Info Edge (India) Pvt. Ltd. and another v. Shailesh Gupta & Anr., 2002(24) PTC 355 (Del) a learned single Judge of the Delhi High Court held, citing Halsbury's Laws of England, that it is entirely possible for a word or phrase wholly descriptive of goods and services to become so associated with those of a particular person that their use by another amounts to a representation by the second that his goods or services are those of the first. Although the phrase may be primarily descriptive, it may acquire a secondary meaning connoting exclusively the products or services of a particular person and none other. Lengthy linguistic lucubration’s do not always lend themselves to forensic accuracy: where a generic word or expression has acquired distinctiveness and uniquely attaches to the plaintiff and his business over considerable time and a defendant adopts a similar expression as his own, dishonesty and bad faith are self-evident. It is irrelevant whether the competing representation is intentional or otherwise. A combination of two commonplace individually descriptive words may indeed acquire, by dint of long, prior and continuous user in relation to specific goods or services, protective rights where the words in question come to be uniquely identified with a particular purveyor. The Supreme Court itself has held that the "part of speech" test does not accurately describe case law results. …”
13.2 So, the question before me is whether the Plaintiff has discharged the burden of proving that the mark ‘i-Term’ has acquired such secondary meaning and significance that on mentioning ‘i-Term’, only the Plaintiffs insurance policies would be thought of by the consumers? From a perusal of the material produced before this Court and the arguments advanced, the answer is in the negative.
13.3 It is a settled principle of law that words used in everyday language, are not to be allowed to be monopolized. The material annexed by the Plaintiff inter alia comprising of online and offline publications, promotional material etc. is, according to me, inadequate to hold that Plaintiffs mark ‘i-Term’ has acquired the requisite goodwill and reputation for ‘i-Term’ to lose its primary meaning and acquire a secondary meaning so as to denote the goods and services of the Plaintiff only. It is pertinent to note that the mark of the Plaintiff is a descriptive mark and the burden to be discharged by the Plaintiff to gain a secondary meaning is very high. It is a settled principle of law that in order to prove that a mark has acquired a secondary significance, the documents on record must show that the descriptive expression in question is now firmly established in the public mind with the Plaintiff and its goods and services. In the case of Stokely Van Camp, Inc & Anr. v Heinz India Pvt Ltd. (2010 (44) PTC 381 (Del) where the issue was whether ‘Rehydrate Replenish Refuel’ had acquired secondary significance, the Delhi High Court held:
"There is no evidence in the form of consumer survey or otherwise which would at least prima facie have me believe that the registered mark 'Rehydrate Replenish Refuel' has achieved trade mark significance in as much as the use of the expression brings to mind the trade origin of the product. Mere use of the mark alone does not necessarily translate in the mark obtaining 'secondary distinctive meaning'."
13.4 In the case of IHHR Hospitality Pvt. Ltd. Vs. Bestech India Pvt. Ltd. (MANU/DE/2157/2012), the Division Bench of the Delhi High Court while considering whether the word ‘Ananda’ in relation to abode had acquired any secondary meaning, had observed the following:
“Now, sales of Rs.200 crores spread over 10 years would prima facie be insufficient evidence to establish that the word 'Ananda', in relation to an abode, has acquired such secondary meaning that an ordinary consumer, without thinking any more, would automatically conclude every abode with the appellant.”
13.5 In the English case of Cellular Clothing (supra) the difference between a fancy word and a descriptive word has been elicited. It is stated therein that to claim monopoly in a descriptive word the burden of proof on the plaintiff is high. The relevant paragraphs from Cellular Clothing (supra) relied upon by the Defendant are reproduced below :
“There is no room whatever for what may be called a secondary meaning in regard to such words, as the Lord Advocate pointed out in the course of his argument. The word used, and attached to the manufacture, being an invented or fancy and not descriptive, it follows that, if any other person proceeds to use that name in the sale of his goods, it is almost if not altogether impossible to avoid the inference that he is seeking to pass his goods of as the goods of the other manufacturer. A person invents or applies the term ‘Eureka” as the name of a shirt in his sales. If you buy a “Eureka” shirt, that seems at once to mean that you are buying a shirt made by the particular maker who is selling shirts under that fancy name. The public come to adopt the word “Eureka” as applicable to the manufacture of the particular person who began to use it and as denoting the article he is selling, and if another person employs the word in the sale of the same or a similar article, it seems to follow that he is acting in direct violation of the law that no one in selling his goods shall make such representations as will enable to pass them of as the goods of another, so as to get the benefit of that other’s reputation.
A totally different principle must apply in the case of goods which are sold under a merely descriptive name. If a person employing a word or term of well-known signification and in ordinary use – though he is not able to obtain a patent for his manufacture, and although he has not got the protection of a registered trade-mark for the goods he is proposing to sell – is yet able to acquire the right to appropriate a word or term in ordinary use in the English language to describe his goods, and to shut others out from the use of this descriptive term, he would really acquire a right much more valuable than either a patent or a trade-mark; for he and his successors in business would gain the exclusive right, not for a limited time as in the case of a patent, but for all time coming, to use the word as applicable to goods which others may be desirous of manufacturing and are entitled to manufacture and sell as much as he is. That being so, it appears to me that the utmost difficulty should be put in the way of any one who seeks to adopt and use exclusively as his own a merely descriptive term.”
“But there are two observations which must be made: one is that a man who takes upon himself to prove that words, which are merely descriptive or expressive of the quality of the goods, have acquired the secondary sense to which I have referred, assumes a much greater burden – and, indeed, a burden which it is not impossible, but at the same time extremely difficult, to discharge – a much greater burden than that of a man who undertakes to prove the same thing of a word not significant and not descriptive, but what has been compendiously called a “fancy” word.”
13.6 The parameters which are required to be met for an otherwise descriptive mark to have acquired a secondary meaning or secondary significance have been laid down by this Court in the case of People Interactive (India) Private Limited vs. Vivek Pahwa and Ors. (MIPR 2017(1) 0161). In that case, while considering whether shaadi.com had acquired a secondary meaning, this Court has observed the following:
15. That takes us directly to the question of 'secondary meaning' or 'secondary significance'. When does an expression acquire a 'secondary meaning' and how does it acquire it? Again, this is a phrase much bandied about, and I do believe we need to pause to consider what is meant by all this. What do we mean when we say that an expression has 'acquired a secondary meaning'? This must necessarily mean that the primary meaning of the expression, the one with which it began, has been lost. It is left behind. The expression no longer means what it once did. It has assumed a new avatar. It has transcended its original connotation and now references exclusively in the public mind the claimant's products, goods or services, i.e., that there is an identification of the mark with the claimant rather than with the goods or services in and of themselves.22 The claim of a 'secondary meaning' posits a priori that the expression once had a more commonplace, ordinary meaning - this is the meaning that is now lost. In its first iteration, the expression found place lower on the Indchemie/Miller Brewing scale. It has since moved upward by acquiring a secondary meaning. That is the claim.
16. How is the acquisition of a secondary meaning to be shown or established? Does commercial success, even a high degree of success, always result in the acquisition of a 'secondary meaning'? I do not believe this can be so. There is no presumption of secondary meaning acquisition. That needs proof; and the proof must be of uninterrupted use of considerable longevity without a competitor attempting to use it.23 When a person uses a common phrase, he runs the risk that others might also use the same expression or another very like it. In British Vacuum Cleaner Company Limited v. New Vacuum Cleaner Company Limited 1907 (2) Ch. D. 312, 328., on which Dr. Tulzapurkar relies, Parker J held that there is a distinction between ordinary descriptive words and a 'fancy word', one that does not primarily relate to the article, but perhaps to the person manufacturing it. There can be no restraint against the use of general words. The decision in Ofce Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 R.P.C. 39, 43., too, supports Dr. Tulzapurkar's contention. The expression in dispute was 'office cleaning'. The appellants claimed the expression was identified with their business to such an extent that any other traders who wished to use the expression as part of their trade name would have to differentiate it. Simons J held that where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run, or else the first user would be allowed to unfairly monopolise the words. In matters of this nature, courts accept even the smallest differences sufficient to avert confusion.
18. Exclusivity claims based on secondary meaning acquisition must be established by cogent material. References to sales and promotional expenses may be used to establish the acquisition of reputation and goodwill, i.e., to show the popularity of a mark. Mere use and statements of sales and expenses do not, of their own, establish the acquisition of a secondary meaning. That proof is always required of goods or services in the second category, 'merely descriptive' expressions; for these are not ordinarily registrable without such proof. That proof must be directed to establishing that the 'merely descriptive' expression in question is now firmly established in the public imagination with the claimant and its goods and services. High sales and expenses will not do; the claimant must show from carefully neutralized market surveys, etc., that this is indeed how the public perceives the mark - not as a mere description, but a pointed reference to the origin, viz., the claimant. Use itself does not establish distinctiveness. The extent to which a mark has lost its primary meaning and the extent to which it has acquired a secondary one are conclusions to be drawn from evidence. That evidence, showing the displacement of the primary meaning by the secondary meaning, must be of the members of the public as well, not merely those specially placed to attest to its uniqueness.” In the above case, this Court has carefully considered what is meant by the expression that a mark has acquired secondary significance. I agree with the observation made in the above case that to arrive at a conclusion that a trade mark has acquired secondary significance mere commercial success of its proprietor shall not draw a presumption in its favour.
13.7 In the present case, the Plaintiff has a higher burden to discharge whereby it must establish that in the public mind, the meaning of ‘i-Term’ does not bear any reference but to the goods / services of the Plaintiff. Further, it must show that in the public mind the descriptive meaning of ‘i-Term’ is lost and the mark ‘i-Term’ has acquired a secondary meaning / significance which marks the origin of the goods / services in respect of which it is used, to the Plaintiff.
13.8 The Plaintiff has produced its sales figures, promotional expenses and promotional literature to demonstrate the goodwill and reputation acquired by it. However, I do not find any material that would indicate, much less prove, that when the Plaintiffs mark ‘i-Term’ is used in respect of its goods / services the public immediately gather the same as that of the Plaintiff. There are over 1 billion people in India and the Plaintiff has sold only about 0.15 million insurance policies from October 2009 till date. Further, the Plaintiffs promotional expenses, amounting to Rs.115 Crores, and sales, amounting to Rs.503.73 Crores, do not assist the Plaintiffs assertion of the mark ‘i-Term’ acquiring secondary meaning. The figures are not in respect of Plaintiffs product bearing the expression ‘i-Term’ per se. The Plaintiff when adopting a descriptive mark such as ‘i-Term’ in respect of its term insurance policies ought to have been aware that other parties might adopt deceptively similar or identical trade marks in respect of their term insurance policies.
13.9 In my opinion, a mere use of the mark albeit continuous does not necessarily translate into the mark obtaining secondary distinctive meaning. The extent to which a mark has lost its primary meaning and the extent to which it has acquired a secondary one are conclusions to be drawn from evidence. High sales and expenses cannot be the sole criteria and the Plaintiff must show market trends, market surveys etc. to show that this is indeed how the public now perceives the mark and not as a mere description. The principle behind not granting any protection to the descriptive marks is that everyone has a right to use such trademarks, and that it would embarrass the trade or industry if only one manufacturer was to monopolise the use of such descriptive mark. Furthermore, protection of such descriptive mark has the tendency to reduce the use of ordinary and commonly used expressions to describe a product. I see substance in the Defendant’s argument that until the fling of the present action, the Plaintiff has not asserted proprietary rights in its mark ‘i-Term’ whether it is by using the ‘TM’ symbol alongside its trade mark or seeking statutory rights / protection by registration of its trade mark (the Plaintiffs trade mark applications were fled shortly before fling of the present action). I believe that had the Plaintiffs Chartered Accountants actually seen the Plaintiffs insurance policies under its trade marks, they would not have been of the opinion that the figures stated in their certificates are in respect of the mark “i-Term” simplicitor.
13.10 There is one more important factor which weighs against the Plaintiff and its claim of monopolizing the expression ‘i-Term’. Admittedly, the suit products/insurance policies of the Plaintiff are offered/sold under the trade mark “Aegon Religare’s i-Term” or “Aegonfs i-Term Life”. The names of these products/insurance policies are not ‘i-Term’ per se. Hence, when the said products of the Plaintiff are advertised or offered for sale to the customers, the customers are not subjected to only the expression ‘i-Term’ but to the whole trade mark of the Plaintiff i.e. Aegon Religarefs i-Term or Aegonfs i-Term Life. This is completely different than a case where consumers are subjected to a specific term only, albeit of a descriptive nature, as a trade mark. I believe that when a party claims that a part of its trade mark, which is otherwise descriptive in nature, has achieved a secondary significance, like in the present case, there has to be cogent and specific evidence even at an interlocutory stage to show that such part is also being used by the Plaintiff independently or that such part is the leading and essential feature of the trade mark actually used by the Plaintiff or that such part is being used in such a manner by the Plaintiff that the consumers identify and associate such part with the Plaintiff and no one else. The Plaintiff has failed to show any of these requirements.
13.11 Therefore, I am of the view that the Plaintiff has been unable to discharge the burden to prove that the mark ‘i-Term’ has acquired secondary meaning or such secondary significance that it connotes and denotes to the members of the trade and public, the insurance policies of the Plaintiff and no one else.
Issue C: Whether the Defendant’s use of its mark ‘Aviva i-Term Smart’ in respect of its insurance policies sold over the internet likely to cause misrepresentation or confusion or deception in the minds of consumers and consequently is there a likelihood of damage to the Plaintiff - Whether the Defendant’s activities constitute passing of.
14. The Ld. Senior Advocate for the Plaintiff submitted that a passing of action exists in common law and is in a sense superior to an infringement action as it is not dependent on any statute. He submitted that the only difference between an infringement action and a passing of action is that once a mark is registered the registered proprietor is entitled to an additional remedy under the Trade Marks Act, 1999. He submitted that the law recognises the principle that priority in use is a superior right than priority in registration. He submitted that the registration of a trade mark merely recognizes the rights which are already pre-existing in common law and does not create any new rights. In support of his submissions, the Ld. Senior Advocate for the Plaintiff relied upon the following judgments:
Meghraj Biscuits Industries Ltd. v. Commissioner of Central Excise UP (2007) 3 SCC 780).
This was precisely the view which was expressed by Lord Justice Romer in (1905) I KB 592 to which I have already referred in the earlier part of the judgment. 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 Saying AIR 1939 Rang 343 (FB). 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 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.”
S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683).
“23. The above were the reasonings from the provisions arising from the plain reading of the Act which gives clear indication that the rights of prior user are superior than that of registration and are unaffected by the registration rights under the Act. Secondly, there are other additional reasonings as to why the passing of rights are considered to be superior than that of registration rights.
Thirdly, it is also recognized principle in common law jurisdiction that passing of right is broader remedy than that of infringement…
Fourthly, It is also well settled principle of law in the field of the trademarks that the registration merely recognizes the rights which are already pre-existing in common law and does not create any rights…
25. … When the Plaintiff has proved that the person who gets into the business at the first point of time acquired the right to use the trade mark, the priority in use of the trade mark by the Plaintiff will have to be recognized in law. Accordingly, when the Plaintiff has earned the reputation and goodwill in the business in the name and style of 'Iruttukadai Halwa', the Defendant cannot simply add the word 'Tirunelveli Iruttukadai Halwa', as the same has been used prior in point of time by the Plaintiff. Therefore, the Court is of the considered opinion that allowing the Defendant to use the trade mark ' Tirunelveli Iruttukadai Halwa' will amount to deceiving the public, hence, no one can be permitted to encroach upon the goodwill and reputation of other party, particularly when a specific mark, though may be a descriptive word, has acquired a subsidiary meaning and is fully admitted by the particular company and when a party who cannot be termed as a honest current user of the mark on the reputation and goodwill of the company, it will constitute invasion of the proprietary right, hence, the same cannot be permitted any longer. In a situation like this, it is the bounden duty and obligation of the Court not only to protect the goodwill and reputation of the prior user, but also to protect the interest of the consumers."
14.1 The Ld. Senior Advocate for the Plaintiff submitted that the rival marks are identical. He submitted that the mark ‘i-Term’ is being used by the Defendant in respect of life insurance policies over the internet and therefore it operates in the same field of activity as that of the Plaintiff. He submitted that the potential customers of the rival products are the same; the distribution channels through which the products are offered are the same and therefore, there is every likelihood of confusion and/or deception and/or association with the Plaintiffs ‘i-Term’ range of products. He submitted that the largest market for the rival products is the same viz. internet and any search carried out by an average customer who is familiar with the Plaintiffs ‘i-Term’ range of products for the keyword “i-Term”, would also return / display results pertaining to the impugned mark, including links to the website of the Defendant. He submitted that the consumers are therefore likely to be confused and misled, which could result in them obtaining policies of the Defendant instead of those of the Plaintiff.
14.2 In tandem, the Ld. Senior Advocate for the Plaintiff relied upon the Supreme Court’s decision in the matter of Heinz Italia and Another v. Dabur India Ltd. (2007) 6 SCC 1). The relevant excerpt relied upon by the Plaintiff is reproduced below:
“11. … In Cadila Healthcare case (supra), it has also been held that in the case of a passing of action the similarities rather than the dissimilarities have to be taken note of by the Court and the principle of phonetic "similarity" cannot be ignored and the test is as to whether a particular mark has obtained acceptability in the market so as to confuse a buyer as to the nature of product he was purchasing. …”
14.3 The Ld. Senior Advocate for the Plaintiff submitted that the Defendant has illegally and dishonestly adopted the same / identical term for its online insurance product to ride upon the immense reputation and goodwill accrued to the Plaintiff. He submitted that since the Plaintiff has already launched variants of the “i-Term” insurance products such as “i-Term plus” and “i-Term Forever”, there is a real possibility that innocent consumers will perceive the Defendant’s “i-Term” trade mark and its insurance product sold under that trade mark as a line-extension of the Plaintiffs ‘i-Term’ range of products and thereby associate the same with the Plaintiff. He submitted that in the present case, there is quadruple identity which makes confusion inevitable - identity of rival marks, identity of the products, identity of the trade channels and identity of the customers.
14.4 The Ld. Senior Advocate for the Plaintiff further submitted that the confusion amongst the consumers will lead to situations where a consumer will be directed to the Defendant’s website, only to later realize that it is not the website for the product he / she was looking for viz. the Plaintiffs product. He relied upon the principle of “initial interest confusion”, which, he submitted, is a sufficient factor for passing of. To substantiate his argument on the principle of initial interest confusion, the Ld. Senior Advocate for the Plaintiff relied upon a judgment of the United States Court of Appeals in the case of Brookfeld Communications Inc v. West Coast Entertainment Corporation (174 F.34 1036). The relevant excerpt of the judgment is reproduced below:
“  Nevertheless, West Coast's use of "moviebuf.com" in metatags will still result in what is known as initial interest confusion. Web surfers looking for Brookfield's "Movie-Buf" products who are taken by a search engine to "westcoastvideo.com" will find a database similar enough to "Movie-Buf" such that a sizeable number of consumers who were originally looking for Brookfield's product will simply decide to utilize West Coast's offerings instead. Although there is no source confusion in the sense that consumers know they are patronizing West Coast rather than Brookfield, there is nevertheless initial interest confusion in the sense that, by using "moviebuf.com" or "Movie-Buf" to divert people looking for "Movie-Buf" to its web site, West Coast improperly benefits from the goodwill that Brookfield developed in its mark. Recently in Dr. Seuss, we explicitly recognized that the use of another's trademark in a manner calculated "to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion, may be still an infringement." Dr. Seuss, 109 F.3d at 1405 (citing Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 257-58 (2d Cir. 1987)).[fn24]”
14.5 The Ld. Senior Advocate for the Plaintiff submitted that the principle of initial interest confusion from Brookfeld (supra) has also been applied by Courts in India. He relied upon the judgment of Delhi High Court in Baker Hughes Limited and Ors. vs. Hiroo Khushalani and Ors. (1998 (18) PTC 580 (Del) in support of his submission that initial interest confusion amounts to passing of.
14.6 The Ld. Senior Advocate for the Plaintiff submitted that confusion will arise even if the policies are sold only through the two modes i.e. (i) from the respective websites of the Plaintif and the Defendant and (ii) from the website of insurance aggregators. He submitted that the general public is often unaware of the exact domain name of any company’s website and largely use the search engine ‘Google’ for finding a particular product or a particular website. He submitted that due to the Plaintiffs prior, extensive, long, continuous and uninterrupted use of the trademark “i-Term”, it has become extremely popular with the general public. He submitted that a potential consumer who has heard of the Plaintiffs i-Term policy would enter the keyword “i-Term” or “i-Term insurance” in the search bar on Google and find the link to both the Plaintiffs website and the Defendant’s website instead of only the Plaintiffs website. He submitted that the said potential consumer of the Plaintiff may get confused and be driven to the Defendant’s website believing it to be the Plaintiffs website. He submitted that the moment any consumer looking for the Plaintiffs product is driven to the Defendant’s website from Google webpage, passing of occurs. He further submitted that even while purchasing the insurance policies from the insurance aggregators’ websites, on various occasions, the potential consumers take advice / suggestions from the representatives and sales representatives of the insurance aggregators. He submitted the said representatives cannot be said to be and are not immune to confusion or deception. He submitted that even after such advice / suggestions, when the potential customer actually goes online to effect the transaction, he will get confused between the Plaintiffs product and the Defendant’s product due to the similarity between the rival marks.
14.7 The Ld. Senior Advocate for the Plaintiff submitted that admittedly, the Plaintiff adopted its trade mark in 2009 and has used the same continuously and extensively since then, as opposed to the Defendant, who adopted its mark only in the second week of May 2018. He submitted that the Defendant has not produced any material on record to prove any sale effected by the Defendant under the mark ‘i- Term’. He submitted that the Plaintiff had come to the market first with the mark ‘i-Term’ and the Defendant has no right to usurp the Plaintiffs mark and the reputation therein. He submitted that it is settled law that there can be only one mark and one source and one proprietor. He submitted that in the present case by reason of first adoption and use, the Plaintiff alone, as the proprietor, is entitled to use the trade mark ‘i-Term’ to the exclusion of others. He further submitted that the ‘first in the market’ test has been adopted by various courts who have granted injunction in matters of infringement / passing of, including the Supreme Court in the case of Neon Laboratories Limited v. Medical Technologies Limited and Ors. (2016) 2 SCC 672). The relevant excerpt of the judgment is reproduced below:
“10. Since we are confronted with the legal propriety of a temporary injunction, we must abjure from going into minute details and refrain from discussing the case threadbare, in order to preclude rendering the suit itself an exercise in futility and the decision therein a foregone conclusion. All that we would say in the present Appeal is that since the Plaintiff-Respondents have alleged, and have prima facie supported with proof, that they had already been using their trademark well before the attempted user of an identical or closely similar trademark by the Defendant-Appellant, the former would be entitled to a temporary injunction, in light of the abovementioned 'first in the market' test’…”
14.8 The Ld. Senior Advocate for the Plaintif also relied upon the Supreme Court’s decision in the case of Laxmikant V. Patel v. Chetanbhat Shah & Anr. (2002 (24) PTC 1 (SC). The relevant excerpt of the judgment is reproduced below:
“13. In an action for passing of it is usual, rather essential, to seek an injunction temporary or ad-interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly (ibid, para 16.16) passing of cases are often cases of deliberate and intentional misrepresentation, but it is well-settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defense though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wad low in Law of Passing Of (1995 Edition, at p.3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing of. Likelihood of damage is sufficient. The same learned author states that the defendant's state of mind is wholly irrelevant to the existence of the cause of action for passing of (ibid, paras 4.20 and 7.15). As to how the injunction granted by the Court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiff's distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name, (Kerly, ibid, para 16.97).”
14.9 The Ld. Senior Advocate for the Plaintif submitted that the three ingredients of passing of viz. (i) goodwill, (ii) misrepresentation and (iii) damage or likelihood thereof have been completely established by the Plaintiff in the present case. He submitted that the manner in which the present Defendant has adopted an almost identical mark for an identical product would certainly lead to misrepresentation amongst public at large.
15. The Ld. Senior Advocate for the Defendant submitted that the case law cited by the Plaintiff relate to infringement actions and the principles laid down therein would apply to infringement actions. He submitted that the Plaintiff cannot rely upon those cases in the present case which are admittedly based solely on the cause of action for passing of.
15.1 The Ld. Senior Advocate for the Defendant submitted that the mark “i-Term” cannot be used solely on its own, independently, as a stand alone trade mark as this is not allowed by the IRDAI. He submitted that it is mandatory to set out the name of the insurance company in the name of the insurance plan made available by the insurer for the purpose of Life Insurance.
15.2 The Ld. Senior Advocate for the Defendant submitted that the rival marks in the present case are “Aegon Religarefs i-Term” / “Aegonfs i-Term Life” of the Plaintiff and “Aviva i-Term Smart” of the Defendant. He submitted that the Plaintiffs present claim is incorrectly made i.e. as if the Plaintiffs trade mark is “i-Term” per se and not Aegon Religarefs i-Term / Aegonfs i-Term Life. He submitted that as per the material produced on record the, Plaintiffs and the Defendant’s use is not of simpliciter “i-Term” / “i-Term”. He submitted that for the purpose of considering the Plaintiffs claim for injunction, a comparison is to be made between the marks as presented to the public which are “Aegon Religarefs i-Term” / “Aegonfs i-Term Life” and “Aviva i-Term Smart”. He submitted that the present suit is not for the infringement of trade mark, where tests for comparison are different than the tests applied in case of passing of. He submitted that the Plaintiffs claim to distinctiveness of the trade mark “i-Term” is because of the manner in which it is represented, i.e. by using lowercase “i” and uppercase “T”. He submitted that the Plaintiffs use of the mark “i-Term” is not consistent and record shows that the Plaintiff has also used “i-Term” with all letters of the word ‘TERM’ in uppercase. He submitted that such use of the mark by the Plaintiff supports the Defendant’s contention that the word “Term” or the letter “i” are purely descriptive of insurance policies and they denote insurance policies which are available on internet or online and for a particular duration.
15.3 The Ld. Senior Advocate for the Defendant submitted that the principle of Initial Interest Confusion does not apply to the present case. He submitted that the names of the term insurance plans of the Plaintiff and that of the Defendant are sufficiently different and cannot confuse any reasonable person. He submitted that persons who use the internet have become accustomed to the manner of use of the internet which has sufficiently changed and has been simplified. He submitted that the rapid expansion and commercialisation of the internet initially left Courts facing novel legal disputes without the common law precedents that typically guided them. He submitted that in the absence of statutory direction, the common law tradition dictates following of precedents. He submitted that in such circumstances, often offline precedents are applied to cases involving internet / online facts, without reevaluating them in light of the provisions of the trade mark law, technological developments and better understanding of the internet and in context of the facts of each case. He submitted that the application of the doctrine of Initial Interest Confusion in trade mark law in relation to the internet context was questionable at first and is certainly inappropriate today since this principle is derived from cases pertaining to purchases and transactions in ofine markets.
15.4 The Ld. Senior Advocate for the Defendant submitted that the doctrine of Initial Interest Confusion was considered to be one of the results of presale confusion which alone could give rise to trade mark infringement, even if the consumers knew which company they were dealing with at the time of a sale, and thereby stretched the traditional trade mark law principles. He submitted that the principle of Initial Interest Confusion is not only completely contrary to the parameters laid down under the law to establish trade mark infringement, but is completely inapplicable in an action for passing–of, such as the present case, since under the applicable laws, an action for infringement and that of passing–of are on totally different footings and employ absolutely different principles of law.
15.5 The Ld. Senior Advocate for the Defendant submitted that there can never be any confusion as to the source or the products considering the nature of the products, the class of customer and the manner in which the products are sold. He submitted that the Plaintiffs reliance upon the case of Brookfield Communications (supra) is misplaced. He submitted that the said judgment was pronounced in the year 1999; that thereafter, the said judgment was considered in the case of Network Automation v. Advance System Concepts (638 F.3d 113), where the Court held that the manner in which customers browse the internet has changed. He submitted that the Court had further observed modern internet users exercise a higher degree of care when they browse the internet and they expect to find websites that are not what seem at first impression from a reading of their domain name or search engine summary.
15.6 The Ld. Senior Advocate for the Defendant submitted that the names of the product plans are sufficient enough to denote to the potential customers the name of the insurer and the plan enabling them to differentiate and distinguish between the plans. He submitted that the nature of the subject product i.e. ‘online Term Insurance Policy Plan’ is not like ‘over the counter products’ such as soap and toothbrush or toothpaste which can be blindly purchased by illiterate or semi-literate persons. The Ld. Senior Advocate for the Defendant submitted that the customers are aware that insurance plans are long term financial commitments, in which they invest their hard-earned monies and they make themselves aware of the names of the various insurance companies and the various insurance products and insurance product plans, terms and conditions while doing their research and discussions prior to purchase of insurance policy. He submitted that there has never been and can never be an actual instance of confusion or misrepresentation and thus there is no passing–of as alleged by the Plaintiff.
15.7 The Ld. Senior Advocate for the Defendant submitted that the names used by the Defendant and the Plaintiff for their respective Term Insurance Policies are to be compared as a whole and not by picking up one word “i-Term” from the Defendant’s Insurance Product. He submitted that comparing the rival marks as whole, it can be seen that the Defendant’s mark is visually, structurally, graphically and phonetically different from that of the Plaintiff. The Ld. Senior Advocate for the Defendant relied upon the Supreme Court’s decision in Kaviraj Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories (1965 1 SCR 737).
15.8 Relying upon the case of Cadila Health Care Limited v. Cadila Pharmaceutical Limited (2001) 5 SCC 73) where the factors to be considered in an action for passing of are set out, the Ld. Senior Advocate for the Defendant submitted that the most important factor which outweighs the similarity in the trade marks, is the class of discerning public purchasing the insurance policies. He relied upon the Supreme Courtfs decision in Khoday Distilleries Limited v. Scotch Whiskey Association (37) PTC 413 SC). He submitted that in the instant case, the customers who purchase insurance policies are discerning and, after studying pros and cons of different Term Insurance Policies, they select a particular policy coming from a particular company and, as such, there is no question of anybody getting confused.
15.9 The Ld. Senior Advocate for the Defendant submitted that in the present case the rival products being insurance policies, by the very nature of the said goods, the same cannot be compared with ordinary goods available across the counter purchased by all. The Ld. Senior Advocate for the Defendant referred to the English judgment in the LANCER trade mark case (1987) RPC 303), and submitted that in this case, it was held that the two marks, ‘LANCIA’ and ‘LANCER’, were phonetically similar and yet no injunction was granted. The relevant excerpt of the judgment relied upon by the Ld. Senior Advocate for the Defendant is reproduced below:
“We are concerned here with the market in cars. A car is an expensive piece of equipment. Its purchase will usually be considered with some care, and will be assisted in a competitive market by an abundance of brochure literature. When considering risks of confusion, therefore, the purchase of a car is not to be equated with an everyday purchase over a shop counter. Nor is it likely to be purchased over the telephone. LANCIA is a very well-known name, and the practical risks of confusion seem to me slight in the extreme.”
16. The Ld. Senior Advocate for the Plaintiff submitted that the Defendant’s argument that the Plaintiffs mark ‘i-Term’ is always used by the media and the Plaintiff, along with the corporate name of the Plaintiff (i.e. ‘Aegonf) is factually incorrect and contrary to documents on record. Referring to the Defendant’s trade mark applications before the Trade Marks Registry, he submitted that the Defendant itself has registered its trade marks such as ‘i-Life’ and ‘i-Sheild’ without its corporate name (i.e. Aviva) which shows that the Defendant itself considers that the corporate name is not part of the trade mark.
16.1 The Ld. Senior Advocate for the Plaintiff submitted that customers refer to particular products by their product identification marks which are entitled to protection under law. He submitted that several companies, in almost all fields, manufacture products / offer services of different nature and offer them for sale under various trade marks along with the company’s house mark. However, consumers largely refer to / identify the said products / services by the individual product identification mark, de hors the house mark. To validate his point, he drew an example from motor vehicles companies such as Maruti Suzuki and Hyundai whose cars are known by their product identification marks being Swift, i10, i20, etc. The Ld. Senior Advocate for the Plaintiff also relied upon a table mentioning various policies offered by the Plaintiff and some of its competitors, along with their product identification marks. He submitted that when a consumer asks for a policy, he does not simply say he wants a LIC policy, but will refer to the identification mark of the policy. He relied upon this Court’s decision in Hem Corporation Pvt. Ltd. v. ITC Limited (2012 (52) PTC 600) in support of his submission that the alleged intention of the Defendant to use ‘i-Term’ in a descriptive sense is immaterial if the use is likely to be taken as use of a trade mark. He submitted that the test is not whether a person terms the use of a mark as a brand name or a sub-brand and if the use of a mark is to distinguish or is capable of distinguishing the goods or services of a person, it is a trademark amenable to the provisions of the Act.
16.2 The Ld. Senior Advocate for the Plaintif relied upon this Court’s decision in Pidilite Industries Limited v. Jubilant Agri & Consumer Products Limited (2014 (57) PTC 617 (Bom) wherein this Court held that product identification marks are also considered as trade marks and their use, albeit with the defendantfs house mark, would constitute infringement and passing of. The relevant excerpt of this judgment is reproduced below :
“22. … Secondly, even for passing of, there is a clear case of deception and/or confusion. The contention of the Defendant is not tenable since the Defendant itself states that 'Jivanjor' is the house mark of the Defendant. It is evident that the product identification mark used by the Defendant is 'Marine PLUS' and that the same is being used as a trademark. The consumers can never identify the product only by the house mark and it is inevitable that the products are referred to and called out only by their product identification marks. It is the settled position that the use of a mark as a sub-brand also amounts to infringement and an injunction ought to follow. As pointed out by the Plaintiff, the products bearing the house mark 'Fevicol' have achieved a turnover close to around Rs. 1000 crores, out of which the turnover of the products bearing the mark 'MARINE' (which is only one of the products of the many products bearing the house mark 'FEVICOL') has exceeded Rs. 100 crores. The mark 'MARINE' by itself has gained tremendous reputation and goodwill and further distinctiveness and secondary meaning which is associated by the consumers, trade and public at large with the Plaintiff alone. …”
16.3 The Ld. Senior Advocate for the Plaintif submitted that the requirement set out by IRDAI making it mandatory to state the name of the insurance company in the name of the insurance plan made available by the insurer for the purpose of life insurance would not diminish the likelihood of confusion. He submitted that to accept the Defendant’s submissions would cause havoc in the market as everyone will start using popular trademarks of policies along with their house mark. The Ld. Senior Advocate for the Plaintiff drew an analogy between IRDAI’s mandatory requirement to state the corporate name along with the policy, and mandatory requirements under acts such as the Legal Metrology Act, 2009 and the Drugs and Cosmetics Act, 1940 which require the manufacturer to specify certain information on the packaging of its products. He submitted that the compliance of such mandatory requirements does not and cannot defeat trade mark rights of any person, under statute and / or under common law. In support of his submissions, he relied upon a decision of the Supreme Court in Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel and Ors. (2006) 8 SCC 726) and this Court’s decision in Tilaknagar Industries Ltd. v. Somarasa Distilleries & Anr. (Notice of Motion No.1665 of 2007).
16.4 The Ld. Senior Advocate for the Plaintiff submitted that the Defendant’s reliance upon the case of Kaviraj Durga Dutt Sharma (supra) is misplaced. He submitted that the Defendant has not discharged the burden of proving that the added material to his use of mark ‘i-TERM’ is sufficient to distinguish his product from that of the Plaintiff. He submitted that the Plaintiff has already relied upon the decision of this Court in Hem Corporation (supra), wherein it is held that addition of corporate name to the trade mark shall not distinguish his trade mark from that of the Plaintif. The Ld. Senior Advocate for the Plaintiff submitted that in any case ‘i-Term’ is the leading and essential feature of its trade mark. He submitted that the Defendant’s adoption of the same expression i.e. the Plaintiffs mark, constitutes passing of. Reliance was placed upon James Chadwick & Bros., Ltd. v. The National Sewing Thread Co. Ltd. (ILR 1952 Bom 344):
“What is important is to find out what is the distinguishing or essential feature of the trade mark already registered and what is the main feature or the main idea underlying that trade mark, and if it is found that the trade mark whose registration is sought contains the same distinguishing or essential feature or conveys the same idea, then ordinarily the Registrar would be right if he came to the conclusion that the trade mark should not be registered. The real question is as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would re-act to a particular trade mark. What association he would form by looking at the trade mark, & in what respect he would connect the trade mark with the good which he would be purchasing, it is impossible to accept that a man looking at a trade mark would take in every single feature of the trade mark. The question would be, what would be normally retain in his mind after looking at the trade mark’ What would be the salient feature of the trade mark which in future would lead him to associate the particular goods with that trade mark’ In this case, fortunately, we have no difficulty in deciding what is the distinguishing or essential feature of the trade mark of the appellants…”
16.5 He further submitted that the Defendant has incorrectly relied upon the US Court of Appeals case Network Automation, Inc. (supra) to contend that the test laid down in Brookfield (supra) has been diluted. He submitted that the Plaintiff had mainly relied upon the judgment of Brookfield in the context of ‘initial interest confusion’, which position of law remains undiluted.
16.6 The Ld. Senior Advocate for the Plaintiff submitted that insurance policies are purchased by everyone - educated, uneducated, literate (in English) or not, villagers and urban people, young and old people, rich, middle class and poor. He submitted that for products like insurance policies there is ‘no class of consumers’. He submitted that merely because a person has access to the internet does not make him ‘conscious customer’ and such consumers cannot be equated to the loyal and discerning consumers of Scotch whiskey or luxury cars referred to in the cases of Khoday Distilleries (supra) and the LANCER Trade Mark case (supra). He submitted that customers on the internet are not particularly sophisticated / rich, especially when one of the unique selling points of online insurance is that it is cheap as one does not need to pay an agent commission. He submitted that in the case of Khoday Distilleries (supra), the products in question were scotch whiskeys which have a specific class of consumers and as the Court itself had recorded, the consumers of the product scotch whiskey are ‘educated and rich’. He submitted that the customers who buy insurance policies belong to all walks of life and cannot be equated with highly discerning consumers of scotch whiskey. He submitted that in Paragraphs 67 and 79 of the judgment the Supreme Court has reiterated the settled principle of law that if the product is to be purchased by both villagers and town people then the test of a prudent man should necessarily be applied. He submitted that this Court in Gorbatschow Vodka v. John Distilleries (2011 (4) Mh.L.J. 842) held that it is incorrect to suggest that those who are educated or affluent have the ability to discern, since they have higher disposable incomes, or that persons who do not belong to that category are more likely to be deceived.
16.7 The Ld. Senior Advocate for the Plaintif submitted that the factors which were considered by the Court in the case of likelihood of confusion between two luxury cars ‘LANCIA’ and ‘LANCER’ are not relevant while considering the identical mark ‘i-Term’ in relation to insurance policies. He submitted that the LANCER case was considered by this Court in the case of Goldgem Overseas v. Flawless Diamond (India) Ltd. (2009 (2) Bom CR 30 – Paras 18-19, 23 to 26) where it was held that the consideration in case of expensive luxury cars is diferent from the case of ‘diamonds’. In support of the above submission, the Ld. Senior Advocate for the Plaintif relied upon the judgment in South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. (2015 (61) PTC 231 (Del) Paras 41 and 42).
16.8 The Ld. Senior Advocate for the Plaintiff submitted that the effect of the Defendant’s argument that consumers are discerning consumers who will be able to differentiate between the rival products, is that it can usurp valuable trademarks and intellectual property of someone and then place the burden on the public to exercise vigilance, carry out due diligence etc. He further submitted that the Supreme Court in Paragraphs 26 and 27 of its judgment Cadila Health Care Limited (supra) has held that even doctors and trained chemists are not immune to confusion and deception when it comes to identical / similar marks. He submitted that, it cannot be said that merely because a person is capable of using internet, he cannot be confused or that he is immune to deception.
Observations / Findings
17. It is important to note here that the present action is only an action for passing of and not for infringement of the Plaintiffs trade mark.
17.1 The principles that (i) 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; (ii) registration merely facilitates a remedy which may be enforced and obtained throughout the country; (iii) registration itself does not create a trade mark and the trade mark exists independently of the registration which merely affords further protection under the statute; (iv) common law rights are left wholly unaffected; and (v) priority in adoption and use of a trade mark is superior to priority in registration are absolutely well settled. While there cannot be any quarrel with the above principles, the same does not and cannot mean that the prior user without first showing that it has acquired the requisite goodwill and reputation in its trade mark seek injunction against the subsequent user. The principles governing a case of passing of action are substantially different from an action for infringement. Unlike an action for infringement which is a statutory remedy provided under the Trade Marks Act, passing of is a remedy in common law and the principles governing it are found in judicial precedents. At this juncture it seems crucial to point out that the matter at hand is not an ordinary case of passing of since the rival products are not openly available in physical market but are available online. Further, the sale of these products is closely regulated by Government bodies such as the IRDAI. It would be fundamental to keep these facts in mind before applying the common principles of passing of.
17.2 Traditionally, passing of in common law is a right for protection of goodwill in the business against misrepresentation caused in the course of trade and for prevention of resultant damage on account of the said misrepresentation. It is a settled principle of law that in an action for passing of, to succeed, the Plaintif must satisfy three important ingredients:
a) Goodwill and reputation in the plaintiffs mark,
b) Actual or likelihood of deception and confusion caused amongst the public by the defendant’s use of the impugned trade mark, and
c) Actual or likelihood of injury to the plaintiff by such use of the impugned trade mark by the defendant.
The five guidelines as originally laid out by Lord Diplock in Erven Warnink v. Townend & Sons Ltd. (1979) AC 731, 742 (HL)(the "Advocate Case") were reduced to the above three by Lord Oliver in the case of Reckitt & Colman Products Ltd. v. Borden Inc (1990) 1 AllE.R. 873) which is popularly known as "Jif Lemon" case. The said three guidelines are referred to as the classic trinity test. Passing of action is essentially an action in deceit where no person is entitled to carry on his or her business on pretext that the said business is of that of another. The reasons why a prior user is considered to be superior than that of any other rights is simple – a proprietor who has acquired goodwill and reputation by the prior and continuous use of its trade mark is entitled to protect such goodwill and reputation against any subsequent user of the mark who misrepresents his business as that of business of the prior right holder. For the purpose of granting relief on the basis of passing of, it is necessary to examine whether the Plaintiff has generated the goodwill in the market and whether the Defendant’s user is causing misrepresentation in the course of trade and damaging the goodwill and reputation of the Plaintiff or there is a likelihood thereof.
17.3 In an action for infringement, the Court considers the identity or deceptive similarity between the registered trade mark of the plaintiff and the mark used by the defendant. Since the present action is one in passing of and not infringement, the Court must consider how the marks are actually used by the Plaintif and the Defendant. Now, it is a settled principle that to ascertain the likelihood of confusion or deception the rival trade marks must be compared as a whole. In the present case, admittedly, the IRDAI guideline mandatorily requires insurance companies such as the Plaintiff and the Defendant to use their corporate name in the name of their policies for life insurance. A perusal of the record shows that the trade marks used by the Plaintiff are “Aegon Religarefs i-Term” or “Aegonfs i-Term Life” and the trade mark used by the Defendant is “Aviva i-Term Smart”. The Ld. Senior Advocate for the Plaintiff sought to distinguish the Plaintiffs case by stating that “Aegon” is the Plaintiffs house mark, whereas “i-Term” is its product identification mark and similarly, “Aviva” is the Defendants house mark, and “i-Term” is the Defendants product identification mark and that the Plaintiffs product identification mark must be compared with the Defendants product identification mark. I may have concurred with the Plaintiff and compared simpliciter the rival product identification marks as propounded, if the present suit would have been a suit for infringement of Plaintiffs registered trade mark ‘i-Term’ per se. This is not a suit for infringement and the Plaintiff is not a registered proprietor of the trade mark ‘i-Term’ per se. The present suit being a suit for passing of, the law dictates that the overall impression of the rival trade marks including the added material in the Defendants trade mark must be considered. The following observations of the Supreme Court in the landmark case of Kaviraj Pandit Durgadatta Sharma (supra) are important:
“28. …In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant’s mark is likely to deceive, but where the similarity between the plaintiff’s and the defendant’s mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing of, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.”
While some features may be similar between the rival marks, the Defendant may not be liable for passing of, if it can prove that the remaining features in its mark are sufficient to distinguish its goods from those of the Plaintiff. In the present case, while comparing the rival marks, i.e. “Aegon Religarefs i-Term” or “Aegonfs i-Term Life” and “Aviva i-Term Smart”, as a whole the only similarity seems to be the word “i-Term” / “i-Term”. From the record, it is clear that neither the Plaintiff nor the Defendant use the expressions ‘i-Term’ or ‘i-Term” independently. Whenever a customer would wish to subscribe to the Plaintiffs insurance policies, he would never be subjected to the Plaintiffs insurance policy with the expression ‘i-Term’ alone, what he would be subjected to is the Plaintiffs insurance policy sold under the trade marks “Aegon Religarefs i-Term” or “Aegonfs i-Term Life”. Similarly, a customer wanting to subscribe to the Defendant’s insurance policy would be subjected to the insurance policy sold under the trade mark ‘Aviva i-Term Smart’ and not with the term ‘i-Term’ alone. When these rival trade marks are compared as a whole, I do not fnd them to be visually or phonetically similar at all. Further, it is a settled principle of law that if the Plaintiffs mark is descriptive (which I have held to be so) then even a minor addition to the Defendant’s mark is enough to hold the aspect of dissimilarity between the rival marks.
17.4 In so far as the argument of product identification marks of the Plaintiff on the basis of Hem Corporation (supra) and Pidilite Industries Ltd. (supra) is concerned, while I agree and am bound with the observations made therein, I do not believe that the observations in the said cases are applicable to the present case at all. In Hem Corporation Pvt. Ltd. (supra), reliefs only in respect of infringement of trade mark were granted and no relief for passing of was granted. Further, the argument of the defendant therein that ‘Madhur’, being descriptive, was inherently incapable of registration was not considered. The argument was not accepted as the Court held that it was not permissible for the Court to even consider the submission of the defendant therein to going behind the validity of the registration at an interlocutory stage on the basis of law as it stood i.e. prior to the Full Bench decision of this Court in the case of Lupin Limited v. Johnson & Johnson (2013 (53) PTC 90 (Bom). In view of the same, I do not see how this case assists the Plaintiff. In the case of Pidilite Industries Ltd. (supra), I had observed that the defendant therein, itself, had applied for registration of a label mark containing the same word (MARINE) and therefore the principle of estoppel was applied. Further, the plaintiff in that case had established that the word MARINE was distinctive of its products which is not so in the present case. Still further, I had held that the class of purchasers would not be aware of the meaning of the word ‘Marine’. The said case has no application to the present case considering the Plaintiffs mark “i-Term” is descriptive of the character of the subject goods. Further, the examples given by the Ld. Senior Advocate for the Plaintiff on the basis of motor vehicle companies such as Maruti Suzuki and Hyundai whose cars are known by their product identification marks being Swift, i10, i20, etc., I believe the said examples cannot be applied to the present case for a simple reason that Swift, i10, i20 are all expressions which are advertised and used independently by the respective companies in a sense of a trade mark. The respective companies can therefore claim that those marks have acquired distinctiveness. In the present case, admittedly, the expression ‘i-Term’ is not used independently at all and I have already held that the said expression is not distinctive of the Plaintiffs product. Further, the example of LIC policy given by the Plaintiff in case of insurance policies belies its own case. It is the Plaintiffs case that when a consumer asks for an insurance policy, he does not simply say he wants a LIC policy, but will refer to the identification mark of the policy such as Jeevan Anand, Jeevan Saral etc. (Paragraph 66 of the Plaintiffs Written Submissions) This according to me makes it clear that a customer wanting to purchase an insurance policy would always refer to or go by the name of the Company frst and then would refer to the name of the policy thereby eliminating any chance of confusion or deception merely on the basis of similarity in the names of the policy.
17.5 Admittedly, neither the Plaintiff nor the Defendant can sell its insurance policies without its respective corporate names. This is because of a specific statutory requirement imposed by IRDAI upon every insurance company that it must describe its products with the corporate name. The Insurance Regulatory and Development Authority of India (IRDAI) mandates under the Laws of Insurance and the various Regulations, including the Insurance Regulatory and Development Authority of India (Protection of Policy Holders’ Interests) Regulations, 2017, that amongst others the name and UIN allotted by the Authority for the product governing the policy, its terms and conditions; name, code number, contact details of the person involved in sales process are matters that should be mentioned in a Life Insurance Policy (Page 64 of the Plaint / Page 350 of Defendants Affidavit in Reply). If such is the case, I believe that this is one of the most important factor which reduces or in the facts of the present case eliminates any chance of confusion or deception between the rival trade marks.
17.6 At this point, let me immediately deal with the argument of the Plaintiff that the compliance of mandatory requirement of IRDAI does not and cannot defeat trade mark rights of any person, under statute and / or under common law. In the case of Ramdev Food (supra) the requirement to use the impugned company name was raised as a defence. Similarly, in Tilaknagar Industries (supra) the defendant therein claimed that it had a right to use the trade mark label since that label was approved by the Karnataka Excise Authority. In the present case, the Defendant is not claiming legitimacy in the use of the expression ‘i-Term’ on the basis of its approval by the IRDAI. In other words, the Defendant is not claiming that it is entitled to use the expression “i-Term” because it has got the mandatory approval from IDRDAI. The Defendant has relied on the mandatory requirement of IRDAI to only point out how the marks of the Plaintiff and Defendant are required to be represented in public and that due to such presentation there is no possibility of confusion or deception. I therefore reject the analogy given by the Ld. Senior Advocate for the Plaintiff regarding the statutory requirements laid down under the Legal Metrology Act, 2009 and the Drugs and Cosmetics Act, 1940 requiring manufacturers to specify certain information on the packaging of their products.
17.7 The principles for deciding the question of deceptive similarity between the rival trade marks in the case of passing of are laid down by the Hon’ble Supreme Court in the case of Cadila Healthcare (supra) as follows:
a. The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
b. The degree of resemblances between the marks, phonetically similar and hence similar in idea.
c. The nature of the goods in respect of which they are used as trade marks.
d. The similarity in the nature, character and performance of the goods of the rival traders.
e. The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and / or using the goods.
f. The mode of purchasing the goods or placing orders for the goods, and
g. Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
The Apex Court has observed that weightage is to be given to each of the aforesaid factors depending upon the facts of each case and the same weightage cannot be given to each factor in every case. In the present case, I have already observed that the Plaintiffs mark is descriptive in nature as it describes the characteristic of a term insurance policy available online. Therefore, the nature of the goods involved, the class of purchasers who buy the policies and the mode and manner of purchasing the policies or placing orders for the policies, outweigh any slight phonetic or visual similarity between the rival marks. In other words, the three factors which are more important and deserve a greater weightage being given to them are (c), (e) and (f).
17.8 I have already observed that the unique characteristic of the subject goods is that they can only be purchased online from the websites of the parties herein and the websites of policy aggregators. Obviously since the policies are only available online, the mode of purchase is through the internet. This gains importance especially because it is the Plaintiffs case that confusion and deception occurs when a prospective customer enters the keyword “i-Term” in his online search engine such as google, the Defendants website would be shown as a result along with the Plaintiffs website. The principle of initial interest confusion was cited by the Ld. Senior Advocate for the Plaintiff to argue that such customer may navigate to the Defendants website under the impression that the Defendants website is in fact the Plaintiffs or that the Defendant has some nexus / affiliation with the Plaintiff. After hearing the submissions on the law apropos the principle of initial interest confusion, I am inclined to disagree with the applicability of the said principle to the facts of the present case. The principle of initial interest confusion was first recognized by the United States Court of Appeals in the Brookfield (supra). This principle was later applied by the Delhi High Court in the case of Baker Hughes (supra). It was held that the principle of initial interest confusion applies in a situation where a customer who is looking for the plaintiffs product develops an “initial interest” in the defendants product believing the same to be emanating from the plaintiff or having some nexus with the plaintiff. Even though no purchase is made or the customer realises before purchasing from the defendant, the mere deception / confusion with respect to the origin of the defendants goods or services shall invoke the principle of initial interest confusion. However, the Plaintiffs contention that customers search for the Plaintiffs policies online by using the keyword “i-Term”, or that the “interest” of the prospective customer of the Plaintiff will be invoked upon finding an ‘i-Term’ product on the Defendants portfolio, is based on an assumption that the Plaintiff has acquired substantial goodwill and reputation in the expression “i-Term” and that the said expression is distinctive of the Plaintiffs goods and services. As observed hereinbefore, this is not a case where the Plaintiff has been able to show that it has acquired the requisite goodwill and reputation in the expression ‘i-Term' per se. In the absence of such goodwill and reputation it would be incorrect to infer that a prospective customer of the Plaintiff associates the expression ‘i-Term’ exclusively with the goods and services of the Plaintiff and that such customer’s interest will be piqued upon coming across the Defendant’s ‘i-Term’ product. In the case of Brookfield (supra), it was held that there may not be a confusion as to the source, but by using “moviebuf.com”, customers of the plaintiff therein were diverted to the defendant’s website and such diversion amounted to getting improper benefits from the goodwill that Brookfield developed in its ‘Movie-Buff mark. This theory is not applicable in the present case as the Plaintiff has failed to show any goodwill in its mark “i-Term”.
17.9 It is pertinent to note that the suits in Brookfield (supra) were fled nearly two decades prior to the present suit. In the interregnum the use of electronic devices to access the internet has increased overwhelmingly. The average person is much more adept to conduct online searches and is less likely to be confused as compared to a customer browsing online 18 years ago. In the case of Network Automation (supra) relied upon by the Defendant, the US Court recognized this development in the class of customers who access the internet for their demands. The Court recognized that users in 2011 were more educated and the test in Brookfield cannot be blindly applied to the matter in 2011. The said case clearly establishes that (i) the initial interest confusion arises even if the customer goes to the defendant’s site knowing that it is not the site of the plaintiff and, as such, is not a strict test, more so in view of the fact that in the present times, an educated searcher on internet, by merely going to the defendant’s site or seeing defendant’s product, does not in any manner allow the defendant to take benefit of the reputation of the plaintiff, (ii) what is required to be considered is how the search is made and the effect of such search, (iii) the factor that the customer, though knowing that the product mentioned therein is not of the plaintiff, but results in the defendant getting monetary benefit, is not a determinant factor to conclude that there is confusion. In comparison, the present suit is of 2018. In my view it is unlikely that a person who accesses the internet in this day and age would be confused or deceived by the Defendant’s use of the expression ‘i-Term’ in the name of its insurance policies. As I have already observed, the Plaintiff has been unable to establish that its i-Term mark has acquired such secondary significance that any person who sees the expression ‘i-Term’ would immediately associate the same with the Plaintiff and the Plaintiff only. Since the sale of the subject insurance policies is online, I am not inclined to assume that a prospective customer searching for policies online would use the keyword “i-Term” alone to look for the Plaintiffs policies. I see merit in the Defendant’s submission that such customer even after coming across the Defendant’s insurance policy would go back and also review the policy being offered by the Plaintiff.
17.10 It is further pertinent to note that insurance policies are long term financial commitments through which customers seek to secure important aspects of their lives. More often than not, a decision is preceded by a search and discussion into the various options available for them. A customer who sees the Defendant’s policy is likely to see other policies including the Plaintiffs before deciding on one. The customers who purchase online Term Insurance Policy Plans have to read and understand various terms since the Policy Holder cannot plead ignorance about these terms after the Policy is purchased. Some of the general terms required to be read and understood before purchasing online term insurance policy are as follows [Defendant’s Affidavit in Reply – Exhibit 4 (Pages 64 to 73) and Exhibit 5(Page 74)]:
a) the name and UIN allotted by the Authority for the product governing the policy, its terms and conditions; name, code number, contact details of the person involved in sales process;
b) whether it is participating in profits or not, whether it is linked or non - linked;
c) the manner of vesting or payment of profits such as cash bonus, deferred bonus, simple or compound reversionary bonus;
d) the benefits payable and the contingencies upon which these are payable and the other terms and conditions of the insurance contract;
e) the name of Nominee (s), age of nominee(s) and their relationship and name of guardian in case of minor nominees;
f) the details of the riders being attached to the main policy;
g) the date of commencement of risk, the date of maturity and the date(s) on which survival benefits, if any, are payable;
h) the premiums payable, periodicity of payment, grace period allowed for payment of the premium, the date of last instalment of premium, the implication of discontinuing the payment of an instalment(s) of premium and also the provisions of guaranteed surrender value;
i) the details of revival schemes provided for reviving a lapsed policy and requirements to be submitted for revival thereunder;
j) Name, address, date of birth and age of the insured as at the date of commencement of the policy;
k) the policy conditions for:
i. conversion of the policy into paid up policy,
v. discontinuance provisions in case of Linked Policies
l) contingencies excluded from the scope of the cover, both in respect of the main policy and the riders;
m) the provisions for nomination, assignment, loans on security of the policy and a statement that the rate of interest payable on such loan shall be as prescribed by the insurer at the time of taking the loan;
n) any special clauses, exclusions or conditions imposed on the policy;
o) the address, email id of the insurer to which all communications in respect of the policy shall be sent;
p) the notes to policyholder highlighting the significance of notifying timely the change of his/her address;
q) details of insurer’s Internal Grievance Redressal Mechanism along with address and contact details of Insurance Ombudsman within whose territorial jurisdiction the branch or office of the insurer or the residential address or place of residence of the policyholder is located;
r) the list of documents that are normally required to be submitted by a claimant in case of a claim under the policy.
17.11 Insurance policies are purchased after studying the material, particularly the credibility, reliability and financial standing of the company which is issuing the policy, its record as to entertainment of claim or rejection of claims, various features of the insurance policy etc. and, after giving careful thought to the aforesaid, a decision is made in selecting a particular insurance policy. These policies are not purchased on the spur of the moment. The Supreme Court in Khoday Distilleries (supra) held that the class of purchasers who are likely to buy the goods by their education and intelligence and the degree of care which they are likely to exercise in purchasing or using the goods must be considered. While persons from all walks of life are free to purchase insurance policies online, customers who purchase policies online are usually literate persons since they are required to read and understand inter alia the terms and conditions applicable to the policy being purchased by them. The LANCER trade mark case (supra) is also a helpful illustration of a similar market where the buyer makes his purchase with care and after deliberation. Rival marks in this case were LANCIA’ and ‘LANCER’, used in respect of cars. The Court therein has considered the nature of the goods and the manner in which purchase was made to arrive at the conclusion that notwithstanding the degree of phonetic similarity between the two marks, there was no real tangible danger of confusion.
17.12 Due to the nature of insurance policies as a product and the manner in which they are sold, they cannot be compared with ordinary goods which are available across the counter such as sweets or even pharmaceutical products. The purchasers of insurance policies take an informed decision which makes it unlikely that in the process of such decision the purchasers are confused by a slight phonetic or visual similarity of the names in respect of such products. I must clarify that this Court is not assuming that the discerning capacity of customers is based on their education or wealth. The logic underlying this Court’s rationale is that the class of customers who are purchasing insurance policies online are likely to have conducted a fair research into their options and the benefits offered to them under each policy; that a slight similarity in the rival names would not be enough to cause confusion or deception when a conscious and relatively informed decision is being taken. In view thereof, the principle set out in Gorbatschow Vodka (supra) is not helpful to the Plaintiffs case. Further, the goods involved in the case of Goldgem case (supra) were diamonds. The principle set out in Goldgem case (supra) would not be applicable to the present case since due to the nature of goods i.e. diamonds, the class of consumers who purchase diamonds and the mode of purchasing them is distinct from the present case involving insurance policies. Unlike purchasers of diamonds who are dependent on the guidance of gemmologists and are dependent almost entirely on the brand name, purchasers of insurance policies have the ability to discern the best policy available to them depending upon the terms and more particularly the Company which is ofering the same. Thus, the ratio in of Goldgem (supra) is also inapplicable to the present case.
17.13 I therefore hold that considering the nature of the rival marks, rival products, the class of purchasers who are likely to buy these products and the mode of purchasing these products, there is no question of any confusion or deception between the rival trade marks. Particularly, considering the nature of the goods and the manner in which insurance policies are purchased, there is no possibility of persons who are buying insurance policies online after analysis and considering the pros and cons, getting confused.
17.14 In so far as the Plaintiffs argument of being first in the market and hence being entitled to an injunction against the Defendant is concerned, I am not accepting the same. While the Plaintiff may have been the first in the market, to adopt the expression ‘i-Term’, would that mere fact be enough to create exclusive proprietary rights in the said expression in favour of the Plaintiff? I think not. The “first in the market” test may have been applicable if the mark “i-Term” was distinctive of the Plaintiffs goods and services. I have held it is not. The case of Laxmikant V. Patel (supra) was decided on the basis that long prior user conferred rights on the party and is required to be protected, which is not the position in the present case. In the absence of the Plaintiff having acquired the requisite goodwill or reputation in the expression ‘i-Term’, it cannot be said that the Defendant indulged in unfair competition as the Defendant has not used any false or misleading devices to get any benefit of the alleged reputation allegedly acquired by the Plaintiff. Thus, the said case shall not assist the Plaintiff.
17.15 In the absence of the Plaintiff having established that its trade mark “i-Term” is in fact a trade mark or is distinctive of its products, there is no likelihood of confusion or deception. Thus, the principles of Neon Laboratories (supra) relied upon by the Plaintiff are inapplicable to the present case. The observations in Meghraj Biscuits (supra) and S. Syed Mohideen (supra) were in the case of a distinctive mark. The Plaintiffs mark “i-Term” is not distinctive and is not capable of adapting to distinguish the Plaintiffs goods considering the nature of the goods, the class of customers and the manner of purchase of online insurance policies. In South India Beverages (supra) the Court had come to the conclusion that the defendant therein had slavishly copied the mark of the plaintiff therein and therefore cannot be permitted to continue to use the deceptively similar trade mark. Thus the said judgment is not applicable to the facts of the present case. In the case of Heinz (supra) though the argument that the mark is descriptive was raised, it was not considered. As I have observed, mere prior user will not entitle the Plaintiff to get an injunction without consideration of material regarding what are the marks, how they are presented to the public, the quality of the Plaintiffs mark “i-Term”, and whether taking into consideration all factors, confusion can arise. Mere prior user is not a determinant factor to reach that conclusion.
17.16 I, therefore hold that the Defendant’s use of its mark ‘Aviva i-Term Smart’ in respect of its insurance policies sold over the internet is not likely to cause misrepresentation or confusion or deception in the minds of consumers and consequently there is no likelihood of damage to the Plaintiff. In short, the Defendant’s activities do not constitute passing of.
18. There is one more factor which according to me is important in deciding the present application of the Plaintiff which is ‘the adoption of the trade mark by the Defendant. The Ld. Senior Advocate for the Plaintiff submitted that due to the Plaintiffs extensive use of its trade mark and the reputation and goodwill acquired by it therein, the Defendant, who operates in the same industry and targets the same market / customers, ought to have knowledge about the use of the trade mark ‘i-Term’ by the Plaintiff and in any case, cannot feign ignorance of the same. He submitted that from 2009 till May 2018, no other person / entity used the mark ‘i-Term’ in relation to insurance products falling in Class 36. He submitted that the Defendant has deliberately adopted the impugned mark “i-Term Smart” in order to come as close as possible to and to ride upon the goodwill and reputation generated by the ‘i-Term’ trade mark range of products; and therefore the Defendant’s adoption of its trade mark is dishonest. Relying upon this Court’s decision in Anglo-French Drug & Industries Ltd. v. Eisen Pharmaceutical Company Pvt. Ltd (1998) 1 Arb LR 61), the Ld. Senior Advocate for the Plaintiff submitted that if this Court is even prima facie satisfied that the rival marks are deceptively similar and the adoption of the impugned mark is dishonest, not granting an injunction would amount to encouraging dishonest parties.
18.1 Now, admittedly, the Plaintiff fled an application for the registration of its trade mark “i-Term” per se only ten days before fling of the above suit against the Defendant. This, according to me prima facie shows that the Plaintiff was itself aware of the descriptive nature of its trade mark and hence did not make any application earlier. From a perusal of the material produced by the parties herein, it does not appear that the Plaintiff has asserted any proprietary rights in its mark ‘i-Term’ at any point prior to the Defendant’s adoption of its mark. I have observed hereinabove that the Plaintiff has been unable to discharge the burden of proving that it has acquired such goodwill and reputation in the descriptive mark i-Term that the said mark has lost its primary meaning and acquired a secondary meaning to be exclusively associated with the Plaintiff. Since the Plaintiff does not have proprietary rights in the mark i-Term, the Defendant’s adoption of the same cannot be termed as dishonest. The judgment in Anglo-French Drug (supra) is not applicable to the present case since the Court therein had granted injunction as the conduct of the Defendant was found to be dishonest, which is not the case here.
19. In so far as the balance of convenience is concerned, the Ld. Senior Advocate for the Plaintiff submitted that the documents produced by the Plaintiff, including the Chartered Accountant’s Certificate certifying the sales of ‘i-Term’ marked policies, clearly establish that the Plaintiff has been using the mark i-Term continuously and extensively from 2009 till date whereas the Defendant has started using the mark only in May 2018. He submitted that despite the Plaintiff specifically denying the Defendant’s user of the impugned trade mark, the Defendant has not produced even a single instance of sale of its policy under the mark ‘i-Term’. He submitted that therefore it is clear that the Defendant has not done any business under the mark ‘i-Term’ and therefore will not be harmed if this Court grants an injunction restraining the Defendant from using the trademark ‘i-Term’. He submitted that such injunction will not lead to stoppage of the Defendants business since the Defendant has not commenced business under the impugned trade mark and the Defendant is also doing business under various other marks. He further submitted that if an injunction is denied to the Plaintiff, the Plaintiff will suffer irreparable harm. He submitted that the balance of convenience is therefore completely in favour of the Plaintiff and against the Defendant.
19.1 The Ld. Senior Advocate for the Defendant submitted that any order of interim injunction will result in the Defendant having to cease its business of selling term policies under the name “Aviva i-Term Smart” and also to notify IRDAI and to file a fresh Application. He submitted that this will in turn affect the Defendant as well as several customers as the legal status of such already purchased policies will be in jeopardy.
19.2 In my view, any order of injunction against the Defendant now will result in severe pecuniary injury and financial damage to the large number of customers who have purchased the Defendants Insurance Policy. The Defendant has advertised and sold its product as allowed by the IRDAI. The Plaintiff has not been able to show misrepresentation or damage to its reputation. The Plaintiff has not acquired proprietary rights, statutory or otherwise in the expression ‘i-Term’. Before fling the above suit the Plaintiff has never asserted any proprietary rights within its mark i-Term at any point prior to the Defendant’s adoption of its mark. The Plaintiffs trade mark applications for ‘i-Term’ per se were made only few days prior to fling of the present action. The Plaintiffs mark being descriptive of the goods and services provided by the Plaintiff and Defendant, injuncting the Defendant in the absence of the Plaintiff’s exclusive rights therein would be unfair. The Plaintiff has failed to make out any prima facie case in its favour. The balance of convenience is also in favour of the Defendant.
20. For all the above reasons, the Notice of Motion is dismissed. However, there shall be no order as to costs