w w w . L a w y e r S e r v i c e s . i n



Anchor Health And Beauty Care Pvt. Ltd. v/s Procter & Gamble Manufacturing (Tianjin) Co Ltd & Others


Company & Directors' Information:- ANCHOR HEALTH AND BEAUTY CARE PVT LTD [Active] CIN = U24249MH1992PTC068971

Company & Directors' Information:- PROCTER & GAMBLE HEALTH LIMITED [Active] CIN = L99999MH1967PLC013726

Company & Directors' Information:- R K MANUFACTURING CO LTD [Active] CIN = L27209WB1984PLC037758

Company & Directors' Information:- R K MANUFACTURING CO LTD [Active] CIN = L27209GJ1984PLC098951

Company & Directors' Information:- M R HEALTH CARE PRIVATE LIMITED [Active] CIN = U24232UR2006PTC031319

Company & Directors' Information:- ANCHOR CORPORATION LIMITED [Active] CIN = U74900MH2011PLC222777

Company & Directors' Information:- INDIA MANUFACTURING CORPORATION PRIVATE LIMITED [Active] CIN = U24100DL2010PTC198947

Company & Directors' Information:- HEALTH CARE (INDIA) LIMITED [Active] CIN = U24231TN1988PLC016493

Company & Directors' Information:- S I A MANUFACTURING PRIVATE LIMITED [Active] CIN = U74120UP2013PTC057004

Company & Directors' Information:- S K M MANUFACTURING PRIVATE LIMITED [Active] CIN = U17200DL2011PTC223768

Company & Directors' Information:- J D HEALTH CARE PRIVATE LIMITED [Active] CIN = U15497WB2004PTC097974

Company & Directors' Information:- S T S MANUFACTURING PRIVATE LIMITED [Active] CIN = U28112TZ2006PTC012940

Company & Directors' Information:- T. C. HEALTH CARE PRIVATE LIMITED [Active] CIN = U74899UP1985PTC037371

Company & Directors' Information:- Y K M HEALTH CARE PRIVATE LIMITED [Active] CIN = U85100AP2007PTC056256

Company & Directors' Information:- S V S HEALTH CARE PRIVATE LIMITED [Active] CIN = U85110UR1991PTC013184

Company & Directors' Information:- A R K HEALTH CARE PVT LTD [Active] CIN = U24299CH1997PTC020705

Company & Directors' Information:- R S K HEALTH CARE PRIVATE LIMITED [Strike Off] CIN = U85100DL1992PTC050311

Company & Directors' Information:- A S P MANUFACTURING COMPANY PVT LTD [Active] CIN = U27109WB1991PTC051461

Company & Directors' Information:- A. J. BEAUTY AND HEALTH PRIVATE LIMITED [Strike Off] CIN = U74900MH2010PTC209161

Company & Directors' Information:- R. N. K. HEALTH CARE PRIVATE LIMITED [Active] CIN = U74900WB2013PTC195733

Company & Directors' Information:- A K MANUFACTURING PVT LTD [Active] CIN = U51909MN1988PTC003110

Company & Directors' Information:- HEALTH AND BEAUTY CARE PRIVATE LIMITED [Active] CIN = U24246DD2003PTC003234

Company & Directors' Information:- I T A C (INDIA) MANUFACTURING CO LTD [Dissolved] CIN = L51109WB1982PLC034689

Company & Directors' Information:- N E HEALTH CARE PRIVATE LIMITED [Strike Off] CIN = U85120AS2003PTC007118

Company & Directors' Information:- K R HEALTH CARE PRIVATE LIMITED [Active] CIN = U85110TZ2000PTC009327

Company & Directors' Information:- S S HEALTH CARE PRIVATE LIMITED [Active] CIN = U74899DL1987PTC030080

Company & Directors' Information:- S P HEALTH CARE PRIVATE LIMITED [Active] CIN = U24232WB2003PTC097319

Company & Directors' Information:- J D MANUFACTURING CO PVT LTD [Active] CIN = U51909WB1996PTC079825

Company & Directors' Information:- A S P MANUFACTURING COMPANY PVT LTD [Not available for efiling] CIN = U36900WB1991PTC005146

Company & Directors' Information:- A AND A HEALTH CARE PRIVATE LIMITED [Active] CIN = U33112DL2002PTC114051

Company & Directors' Information:- B R D MANUFACTURING PRIVATE LIMITED [Active] CIN = U51109WB1997PTC085188

Company & Directors' Information:- R J S MANUFACTURING PRIVATE LIMITED [Active] CIN = U27104DL1997PTC090521

Company & Directors' Information:- K & K HEALTH CARE PRIVATE LIMITED [Active] CIN = U74899DL1994PTC059782

Company & Directors' Information:- B U MANUFACTURING PVT LTD [Active] CIN = U51109WB1982PTC035271

Company & Directors' Information:- M M MANUFACTURING PVT LTD [Active] CIN = U26922WB1993PTC059837

Company & Directors' Information:- J. C. MANUFACTURING INDIA PRIVATE LIMITED [Active] CIN = U21099WB2020PTC236821

Company & Directors' Information:- S B MANUFACTURING PRIVATE LIMITED [Strike Off] CIN = U31506WB1999PTC088567

Company & Directors' Information:- N R P HEALTH CARE PRIVATE LIMITED [Active] CIN = U85300BR2021PTC052209

Company & Directors' Information:- K. V. J. MANUFACTURING INDIA PRIVATE LIMITED [Active] CIN = U29308DL2017PTC320213

Company & Directors' Information:- A T E MANUFACTURING CO PRIVATE LIMITED [Amalgamated] CIN = U28999GJ1973PTC002296

Company & Directors' Information:- J P MANUFACTURING AND CO PVT LTD [Strike Off] CIN = U51226WB1982PTC034927

Company & Directors' Information:- D. K. MANUFACTURING (INDIA) LIMITED [Strike Off] CIN = U37200WB2011PLC170403

Company & Directors' Information:- S M MANUFACTURING COMPANY PRIVATE LIMITED [Active] CIN = U34300HR1997PTC057824

Company & Directors' Information:- G K MANUFACTURING PRIVATE LIMITED [Strike Off] CIN = U34300PB2012PTC036073

Company & Directors' Information:- P & B MANUFACTURING PRIVATE LIMITED [Active] CIN = U29254TN2010PTC076696

Company & Directors' Information:- A M C HEALTH CARE INDIA PRIVATE LIMITED [Active] CIN = U85110TN2008PTC066650

Company & Directors' Information:- O. L. HEALTH CARE PRIVATE LIMITED [Active] CIN = U85300WB2017PTC220471

Company & Directors' Information:- D K BEAUTY CARE PRIVATE LIMITED [Strike Off] CIN = U24246DL2011PTC213608

Company & Directors' Information:- S V HEALTH CARE PRIVATE LIMITED [Active] CIN = U85110DL2006PTC145004

Company & Directors' Information:- B. V. H. MANUFACTURING INDIA PRIVATE LIMITED [Active] CIN = U74999GJ2018FTC100633

Company & Directors' Information:- N & N HEALTH CARE PRIVATE LIMITED [Active] CIN = U85110OR2021PTC036397

Company & Directors' Information:- R A MANUFACTURING COMPANY PRIVATE LIMITED [Strike Off] CIN = U36900HR2012PTC047669

Company & Directors' Information:- ANCHOR COMPANY PVT LTD [Strike Off] CIN = U36900WB1945PTC013019

Company & Directors' Information:- ANCHOR (INDIA) PRIVATE LIMITED [Active] CIN = U74999MH2011PTC218768

Company & Directors' Information:- J. S. HEALTH CARE PRIVATE LIMITED [Strike Off] CIN = U51397HR2008PTC037595

Company & Directors' Information:- BEAUTY HEALTH INDIA PRIVATE LIMITED [Strike Off] CIN = U24246GJ2010PTC060547

Company & Directors' Information:- B M R HEALTH CARE PRIVATE LIMITED [Strike Off] CIN = U74999DL2009PTC192000

Company & Directors' Information:- T D HEALTH CARE PRIVATE LIMITED [Active] CIN = U85195WB2009PTC135107

Company & Directors' Information:- D P HEALTH CARE PRIVATE LIMITED [Strike Off] CIN = U24231DL2003PTC120730

Company & Directors' Information:- A K R MANUFACTURING PRIVATE LIMITED [Active] CIN = U19200RJ2012PTC041177

Company & Directors' Information:- M G HEALTH CARE PRIVATE LIMITED [Active] CIN = U85195MH2001PTC130460

Company & Directors' Information:- N V HEALTH CARE PRIVATE LIMITED [Active] CIN = U74999MH2016PTC280079

Company & Directors' Information:- R P M HEALTH CARE PRIVATE LIMITED [Under Process of Striking Off] CIN = U24233UP2007PTC034056

Company & Directors' Information:- H V HEALTH CARE PRIVATE LIMITED [Strike Off] CIN = U24239DL2003PTC121596

Company & Directors' Information:- K & K HEALTH AND BEAUTY PRIVATE LIMITED [Active] CIN = U24246DL2011PTC214001

Company & Directors' Information:- R M HEALTH CARE PRIVATE LIMITED [Strike Off] CIN = U74899DL1992PTC050925

Company & Directors' Information:- C N C MANUFACTURING PRIVATE LIMITED [Strike Off] CIN = U64204DL2015PTC281449

Company & Directors' Information:- S & G HEALTH CARE PRIVATE LIMITED [Strike Off] CIN = U51397MP2008PTC020393

Company & Directors' Information:- R AND G HEALTH CARE PRIVATE LIMITED [Active] CIN = U85199KL2003PTC016352

Company & Directors' Information:- P U R V HEALTH CARE PRIVATE LIMITED [Active] CIN = U85100UP2020PTC138218

Company & Directors' Information:- V A HEALTH CARE PRIVATE LIMITED [Strike Off] CIN = U85195DL2006PTC153744

Company & Directors' Information:- BEAUTY LIMITED [Dissolved] CIN = U99999MH1946PTC005018

    IA No. 11461 of 2013 in CS(OS) No. 1431 of 2013

    Decided On, 09 May 2014

    At, High Court of Delhi

    By, THE HONOURABLE MR. JUSTICE JAYANT NATH

    For the Plaintiff: Sandeep Sethi, Senior Advocate with Prathiba M. Singh, Karan Bajaj, Advocates. For the Defendants: A.M. Singhvi, Sanjay Jain, Senior Advocates with Prashant Gupta, Bhardwaj Jaishankar, Advocates.



Judgment Text

Jayant Nath, J.

1. The present application is filed by the plaintiff seeking an interim injunction to restrain the defendants no. 1 to 3 in any manner using the mark/expression 'ALL-AROUND PROTECTION'/'ALLROUNDER' either as a trade mark, trading style or in any other manner especially in relation to toothpaste. Other reliefs are also sought.

2. The accompanying plaint is filed by the plaintiff seeking a relief of permanent injunction and other connected reliefs in relation to its registered trademark 'ALLROUND' or the mark/expression 'ALLROUND PROTECTION'. As per the averments in the plaint for the trademark 'ALLROUND' the plaintiff applied for registration on 2nd September 2005 and the registration was granted on 26th August 2008. It is urged that the said trademark has been used by the plaintiff extensively thereafter. The said mark is a well known mark and extensively associated with the plaintiff and its activities. The plaintiff avers to have used the mark 'Anchor ALL ROUND PROTECTION' extensively with huge publicity in international print and electronic media. The annual sales turn-over of the plaintiff for the years 2006-12 is said to be above `300 crores. It is further urged that the plaintiff has been extremely vigilant and zealously protecting its intellectual property rights for its registered mark 'ALLROUND' and the expression „ALLROUND PROTECTION'. Reference is made to Suit no. 1579/2007 filed by the plaintiff titled Anchor Health and Beauty Care Pvt. Ltd. vs. V.Kaushik & Ors. which is related to use of the registered mark of the plaintiff by another toothpaste company being Colgate Palmolive India Limited who was using the expression 'ALL-AROUND DECAY PROTECTION'. The defendant in that suit during pendency of the hearing of the injunction application had changed the mark and expression and accordingly this Court on 25.04.2013 disposed of the injunction application.

3. It is urged that sometimes in the end of May 2013 the plaintiff came across news reports that the defendants were planning to enter into the toothpaste market. In the first week of July the plaintiff is learnt to have been shocked to know that defendants have on July 02, 2013 launched its product under the mark ORAL-B 'ALL-AROUND PROTECTION'. It is urged that the said mark 'ALL-AROUND PROTECTION' is a complete imitation of the plaintiff’s registered mark 'ALL ROUND' and the use of the same with respect to identical products constitutes infringement of the registered trademark of the plaintiff and passing off. It is urged that the entire purpose is to ride piggyback upon the enormous reputation which the trade mark 'ALLROUND' and mark 'ALLROUND PROTECTION' of the plaintiff has earned due to extensive advertising. On July 14, 2013 the plaintiff further learnt from an advertisement that the defendants have launched another product by the name of 'ORAL-B ALL ROUNDER'. It is urged that the use of the mark 'ALL ROUNDER' is also in complete violation of the plaintiff’s rights of its registered trademark 'ALLROUND'. Reference is made to certain orders passed by the United States Food & Drug Administration Department (FDA), the Department which due to death of 51 people in 2007 had banned import of toothpastes manufactured in China. It is urged that this restriction still continues and that the toothpaste of the defendant is imported from China.

4. The defendants have filed their written statement. It is urged by the defendants that the present Suit is liable to be dismissed as it is structured on an inherently invalid trademark, being a completely descriptive expression incapable of having characteristics of a trademark. The expression 'ALLROUND' has invariably been used by the plaintiff in conjunction with the word ‘PROTECTION’in relation to toothpaste and is thus devoid of any distinctive character. Being descriptive, it is not capable of distinguishing the goods of one person from those of another person. Further, it is submitted that the expression 'ALLROUND' denotes characteristics, ingredients, features and quality of the product in question and could not have been registered as a trademark in view of the embargo contained in Section 9 of the Trade Marks Act, 1999. It is next urged that even otherwise the plaintiff is not using the expression 'ALLROUND' as a trademark. It is contended that in all the documents filed by the plaintiff including advertisements, packaging etc the prominently featured trademark is 'ANCHOR' and 'ANCHOR' alone. The plaintiff has always promoted and projected ANCHOR as its primary mark. It is submitted that the defendants have been advised to file a rectification petition. It is further submitted that a rectification petition has already been filed on such or similar grounds by Colgate Palmolive Company which is pending. Reliance is placed on Section 17 of the Trademarks Act. It is urged that the words used by the plaintiff are common to the trade apart from being non-distinctive in character. It is also stated that words similar to 'ALL ROUND PROTECTION' are being used in most of the toothpaste brands in different variants.

5. It is further stated that the defendants are a subsidiary of The Procter & Gamble Company. The said (P & G) Company markets oral care products under the multi-billion brands of Crest and Oral-B. It is further claimed that Oral-B was the first toothbrush to go to the moon as it was on board Apollo 11 mission for the first moon landing. It is averred that Crest and Oral-B are one billion dollar brands each being recognized globally for their quality and innovation. It is further averred that defendants first launched ORAL-B product in India in 1996. Ever since the said launch in 1996 the mark ORAL-B has been used extensively and continuously by the defendants. The defendants have launched their ORAL-B toothpaste in June/July 2013 and that the defendant No.3 has incurred substantial promotional and advertising expenditure in respect of ORAL-B products. It is further urged that the defendant has made false submissions inasmuch as the ban of import of toothpaste in USA, relating to toothpaste containing Diethylene Glycol (DEG), which did not cover the product of the defendant. Based on the above, it is urged that the present application is liable to be dismissed.

6. I have heard learned counsel for the parties extensively on hearings spread over several dates. Parties have filed their submissions.

7. Learned senior counsel appearing for the defendant has strongly opposed the present injunction application. He submits that the plaintiff is the registered proprietor of the mark 'ALLROUND'. He submits that the mark 'ALLROUNDER' as used by the defendant is a secondary mark used in conjunction with the primary mark ORAL-B. Further their mark 'ALL - AROUND PROTECTION' is also used in relation to their product ORAL-B Pro Health. Hence, it is urged that there is no infringement of the trademark of the plaintiff. It is further urged that though the registered mark of the plaintiff is 'ALLROUND', the plaintiff has never used the standalone mark 'ALLROUND' but has instead always used the expression 'ALLROUND PROTECTION'. Hence, it is urged that the plaintiff is disentitled to claim exclusive rights or any equitable relief in respect of the standalone mark 'ALLROUND'. Reliance is placed on Veerumal Praveen Kumar v. Needle Industries (India) Limited & Anr., 93(2001) DLT 600; Fedders Llyod Corp. Vs.Fedders Corp.2005(30) PTC 353 (Del) and Cluett Peabody & Co. Inc. vs. Arrow Apparals, 1998 (18) PTC 156 to support the present proposition. It is further urged that as the plaintiff is using the mark 'ALL ROUND PROTECTION' and the said expression is not a registered mark, hence no action for infringement of the said mark would be maintainable. It is further urged relying on the judgment of this Court in the case of Marico Limited vs. Agro Tech Foods Limited, 2010 X AD (Del) 214 that if a defendant is using his own word/mark as a trademark prominently in addition to the descriptive word/mark, nothing further is required to show the bona fides of the defendant that there is no infringement of trademark as alleged.

8. It is urged that no relief can be granted to the plaintiff inasmuch as the expression 'ALLROUND PROTECTION' is inherently descriptive inasmuch as the same is used in a descriptive manner to describe the quality and characteristics of its goods, namely, the tooth paste. Reliance is placed on Section 30(2) (a) of the Trade Marks Act which states that registered trademark is not infringed where it is used in relation to goods and services to indicate kind, quality and other characteristics of the goods. It is strongly urged that use of descriptive words in whatsoever manner does not amount to infringement. A common descriptive mark can only be protected if it has acquired secondary meaning by virtue of substantial use, which in the present case the plaintiff has failed to establish.

9. Learned counsel has also relied upon judgment of the Division Bench of this High Court in the case of Nestle India Limited v. Mood Hospitality Private Limited 2010 (42) PTC 514 (Del.) (DB) and also the case of Marico Limited v. Agro Tech Foods Limited (supra), to contend that where a mark is used in a descriptive manner to describe the quality of the product and not as a trade mark, there is no infringement of the registered trade mark and no injunction can be granted.

10. It is further stated that no case of passing off is made out as the defendant’s mark 'ALL ROUNDER' andthe expression 'ALL-AROUND PROTECTION' are not deceptively similar to the plaintiff’s registered mark 'ALLROUND'. Reliance is placed on judgment of the Hon’ble Supreme Court in the case of Ruston & Hornsby Ltd. vs. The Zamindara Engineering Co. (1969) 2 SCC 727.

Learned senior counsel appearing for the plaintiff has strongly refuted the submissions of the learned counsel for the defendant. It is submitted that a mark is descriptive if it describes the intended purpose, function or use of the goods. It is urged that the mark 'ALLROUND' and 'ALLROUND PROTECTION' are not descriptive and even though they are common in linguistic use they do not describe the intended purpose, quality and nature of goods. The mere fact that the word is a dictionary word does not mean that the mark is descriptive. It is further urged that defendants have themselves applied for and got their mark registered in the United States. The mark 'ALL-AROUND PROTECTION' has been registered by the defendant in the United States. They have also applied for registration in India of the mark 'ALLROUNDER'. It is urged that when the defendants have themselves applied and got registration of the trademark 'ALLAROUND', they cannot now claim and it does not lie in their mouth to claim that the mark is a generic expression or descriptive. Reliance is placed on Automatic Electric Ltd. vs. R.K.Dhawan & Anr., 1999 (19) PTC 81.

It is also denied that use of the mark 'PROTECTION' alongwith the plaintiff’s registered trademark 'ALLROUND', namely, as 'ALLROUND PROTECTION' amounts to non-use of the trademark 'ALLROUND'. Reliance is placed on the judgment of the Hon’ble Supreme Court in the case of Hardie Trading Ltd. and Anr. vs. Addisons Paint and Chemicals Ltd., (2003) 11 SCC 92 to contend that the use as done by the plaintiff tantamount to user of the trademark. Reliance is also placed on Laxmikant V. Patel vs. Chetanbhat Shah & Anr., (2002) 3 SCC 65. It is further alleged that even a prominent part of the mark deserves protection. Reliance is placed on judgment of this Court in the case of Himalaya Drug Company vs. S.B.L. Ltd., 2013 (53) PTC 1 (Del) and United Biotech Pvt. Ltd. vs. Orchid Chemicals and Pharmaceuticals Ltd & Ors., 2012 (50) PTC 433 (Del). It is further urged that in order to seek protection for a mark it is not necessary that the mark has to be the main mark.

It is further urged that the plaintiff is the prior adopter of the registered mark 'ALLROUND' and the mark 'ALLROUND' alongwith the word 'PROTECTION' is in continuous use since 2005 whereas defendant is a new player having allegedly launched its product in July 2013. It is urged that in fact when the present suit was filed, the product had yet to be actually launched or had just been launched.

11. I will first deal with the submission of the defendant, namely, that the mark of the plaintiff is descriptive. Reliance is placed on Section 30(2) (a) read with Section 35 of the Trade Marks Act to claim that a registered trademark is not infringed with the use of the mark in relation to goods which indicate the kind and quality or other characteristics of the goods. It has been urged that the plaintiff has procured the registration on false information and that the defendants have already been advised to seek rectification of the alleged trademark. The defendants have not denied that they have moved an application for registration of their mark 'ALLROUNDER'. They have also not denied that they have obtained registration of the mark 'ALL-AROUND PROTECTION' in the United States. They have, however, urged that the term 'ALLROUNDER' is a product neutral expression. Further regarding registration of the mark in United States it is urged that the said registration in United States is inconsequential to the present proceedings as the Trade Marks Act applies only to the jurisdiction of India. It is further urged that a descriptive word will not change its character merely by an act of the defendant.

12. What is the effect of these background facts i.e. that the defendants have themselves applied for registration of the mark 'ALLROUNDER' and have also obtained registration of the mark 'ALL-AROUND PROTECTION' in USA. In my view it is not permissible for the defendant to approbate and reprobate. Reference in this context may be had to the judgment of the Full Bench of this Court in Rajneesh Kumar Singhal vs. The State (National Capital Territory of Delhi), 89 (2001) DLT 511. In paragraph 6 the Court held as follows:-

6. The submission of the learned senior counsel overlooks the fact that a party cannot normally be allowed to approbate and reprobate. If a party has taken up a specific stand at a particular stage of the court proceedings it should not be open for him to take a contrary position at a subsequent stage of litigation or in different proceedings. The principle serves well as it does not allow a litigant to blow hot and cold at successive stages of the same litigation, or another litigation. The doctrine is well illustrated in Dwijendra Narain v. Joges Chandra 39 C.L.J. 40 where it was held as follows:-

'It is an elementary rule that a party litigant cannot be permitted to assume inconsistent positions in Court, to play fast and loose, to blow hot and cold, to approbate and reprobate, to the detriment of his opponent. This wholesome doctrine applies not only to the successive stages of the same suit, but also to another suit than the one in which the position was taken up, provided that the second suit grows out of the judgment in the first.'

13. Reference may also be had to the judgment of this Court in the case of Automatic Electric vs. R.K.Dhawan, (supra). That was a case which pertained to a suit for injunction filed by the plaintiff for its registered trademark DIMMERSTAT. The defendant in that case is said to have adopted the trademark DIMMER DOT. The defendants in that case took the stand in the said matter that the word DIMMER being a generic word is incapable of serving a trademark function. It was urged that the said word signifies an auto variable transformer and no trader could monopolize its use. The defendants in that case had got their trademark DIMMER DOT registered in Australia. In those facts this Court did not accept the contention of the defendant in that case that DIMMER is a generic expression. In paragraph 16 this Court held as follows:-

'16. The defendants got their trade mark 'DIMMER DOT' registered in Australia. The fact that the defendant itself has sought to claim trade proprietary right and monopoly in 'DIMMER DOT', it does not lie in their mouth to say that the word 'DIMMER' is a generic expression.'

14. In view of the said legal position I do not wish to go into the submission of the defendant as to whether the word 'ALLROUND' or 'ALLROUND PROTECTION' is a generic word. It clearly does not lie for the defendant to raise the said submission in the given facts. Their submission about the mark being generic has to be rejected.

15. I may now deal with the connected argument of the defendants namely that the defendants are using the mark to describe the quality of the product and not as a trade mark. In this context, reliance has been placed by the learned senior counsel for the defendants on the judgment of the Division Bench of this High Court in the case of Nestle India Limited v. Mood Hospitality Private Limited (supra). In that case the respondent had registration of trade mark 'YO!' and 'YO! China'. The appellant was manufacturing and marketing noodles under the name and style of Maggi Cuppa Mania in two flavours Masala Yo! and Chilly Chow Yo!. It was argued by the appellant in that case that no infringement is made out by the use of Yo! by the appellant in connection with Masala Yo! and Chilly Chow Yo! in as much as the appellant claimed that it was using the distinguishing trade mark 'Maggi' along with it. The Court held that as the manner in which the mark Yo! was used i.e. Masala Yo! and Chilly Chow Yo!, it was not used to indicate connection between the appellant’s product. The mark Yo! was not used as a trade mark. The said expression described the characteristics of the goods in the sense that they referred to the flavor of the noodles. It was on those grounds that the Court vacated the injunction in favour of the respondent in that case.

16. However, in the present case a perusal of the impugned trade mark and the packaging of the defendants would show that the mark 'ALLAROUND PROTECTION' is being used as a standalone mark and not to describe any quality of the product. The qualities of the product are described separately on the packaging. The facts of the present case are different from the facts as contained in the judgment of Nestle India Limited v. Mood Hospitality Private Limited (supra). It cannot be said that the mark 'ALLROUND PROTECTION' as used by the defendant is not being used as trade mark but as descriptive of the qualities of the product.

17. Similarly, in Marico Limited vs. Agro Tech Foods Limited (supra), the registered trade mark was 'LOSORB' and 'LO-SORB'. The appellant therein was also using the word 'LOW ABSORB' though it was not a registered trade mark. Defendant therein was using the trade mark 'Sundrop' with the expression 'WITH LOW ABSORB TECHNOLOGY'. Hence, the issue was as to whether an action of passing off would be maintainable against the defendant for use of the mark LOW ABSORB and for infringement of the mark LOSORB and LO-SORB. The Court came to the conclusion that the mark LOW ABSORB only describes the characteristics of the product i.e. edible oil and ordinarily and normally incapable of being distinctive. Hence, interim injunction as prayed for on the ground of passing off was rejected. Injunction for infringement action for LOSORB and LO-SORB was also rejected as prima facie the registration of the plaintiff’s mark in that case was invalid and no action for infringement would lie.

18. However, in the facts of the present case, I have already held that on account of the fact that the defendants themselves have applied for registration of the trade mark 'ALLROUNDER' and have also got registration of the trade mark 'ALL-AROUND PROTECTION', it would not lie for them to claim the said mark to be descriptive. The said judgment of Marico Limited vs. Agro Tech Foods Limited (supra) would not apply to the facts of the present case.

19. The next contention of the defendant is that the plaintiff has not used the registered mark 'ALLROUND' but has been using the mark 'ALLROUND PROTECTION' and hence the plaintiff is not entitled to equitable relief of injunction. It was argued that on account of disuse of the mark 'ALLROUND' plaintiff cannot seek injunction.

20. The said contention is without merits. Plaintiff has as per the defendants been using the mark 'ALLROUND PROTECTION'. To claim that because of this there is non-use of the registered trade mark 'ALLROUND' in this background is an argument only playing with words. The contentions cannot be accepted.

21. The reliance of the learned senior counsel for the defendant on the judgments in the case of Veerumal Praveen Kumar v. Needle Industries India Limited (supra) and Fedders Llyod Corp. vs. Fedders Corp. (supra) to support this contention is misplaced. In the case of Veerumal Praveen Kumar v. Needle Industries India Limited (supra) on the facts of the case the Court recorded a finding that there has been no sale of the respondent after 1981. The only sale perhaps was stated to be of the period 1977 to 1979. Hence, there was non-user of the trademark and this Court held that where there is non-user for a long period of time then mere registration of the mark would not entitle the plaintiff to an injunction. The same is the view taken by judgment of this Court in the case of Fedders Llyod Corp. vs. Fedders Corp. (supra).

22. Reference may also be had to the judgment of the Supreme Court in the case of Hardie Trading Ltd. and Anr. vs. Addisons Paint and Chemicals Ltd. (supra) relied upon by learned senior counsel for the plaintiff where in paras 41, 42, 45 and 49 the Hon’ble Supreme Court held as follows:-

'41. The question therefore is - is the word "use" in Section 46(1) so limited? The phrase used in Section 46 is "bonafide use thereof in relation to those goods". The phrase has been defined in Section 2(2)(b) of the Act as: "2.(2)(b) to the use of a mark in relation to goods shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods"; (emphasis supplied)

42. This shows that the use may be other than physical. It may be in any other relation to the goods. Given this statutory meaning, we see no reason to limit the user to use on the goods or to sale of goods bearing the trademark. ….

45. In Section 2(2)(b) of the Act, we have the additional words "any" and "whatsoever" qualifying the words 'other relation' giving the words a much wider meaning. Reading this definition into Section 46(1) it is clear that the word 'use' in Section 46(1) may encompass actions other than actual sale. ….

49. The law has since been changed so that at present as 'intent not to resume' use of the mark is to be proved [See McCarthy on Trade Marks and Unfair Competition (3rd Edn.). Vol.2, para 17.03]. Nevertheless, "since abandonment results in a forfeiture of rights, the courts are reluctant to find an abandonment".

Under the majority rule, evidence of abandonment must be clear and convincing. The New York Court of Appeals stated that "Abandonment being in the nature of a forfeiture, must be strictly proved."

23. Reference may also be had to the judgment of Supreme Court in the case of Ruston & Hornsby Ltd v. The Zamindara Engineering Co. (supra). In that case the appellant had a registered trade mark 'RUSTON'. The respondent therein started using trade mark 'RUSTAM INDIA'. The High Court in that case, found there to be deceptive resemblance between the words RUSTON and the mark RUSTAM and hence the use of the bare word RUSTAM constituted infringement of the appellant’s trade mark RUSTON. However as the respondent was using the mark RUSTAM INDIA, the High Court held that mark was ceased to be deceptively similar to the appellant’s trade mark. The Supreme Court negated the contention stating that the fact that the word INDIA is added to the respondent’s trade mark RUSTAM is of no consequence and the appellant is entitled to succeed in its action for infringement of its trade mark.

24. Similarly, in the case of Laxmikant V. Patel v. Chetanbhai Shah and Another (supra), the plaintiff was using the trade name 'Muktajivan Colour Lab'. Defendant also started using the same name and style. Hence the plaintiff initiated an action for passing off. The trial court made observations that in the business name the plaintiff sometimes used QSS as prefix to 'Muktajivan Colour Lab'. The prefix QSS was a short form of Quick Service Station and was merely an adjective prefixed to the name. The Supreme Court held that it is the word 'Muktajivan' which makes distinctive the business name of the plaintiff. Hence the Court was of the view that a clear case for grant of ad interim injunction as prayed for by the plaintiff, was made out.

25. Hence, there is no merit in the submission of the defendant. Merely because plaintiff has used the mark 'ALLROUND PROTECTION' the mark 'ALLROUND' cannot be said to have fallen in disuse. 26. Even otherwise the plaintiff has contended that it has used the mark 'ALL ROUND' per se also. It will be for the plaintiff to prove this at the trial.

27. Now I come to the issue as to whether the use of the mark 'ALL-AROUND' or 'ALLROUNDER' by the defendant is an infringement of the registered trademark of the plaintiff 'ALLROUND'. What is to be seen is as to whether the trademark 'ALL-AROUND PROTECTION' or 'ALLROUNDER' can be said to be identical with or deceptively similar to the trademark of the plaintiff. Both the plaintiff and defendant are using the said mark on the same good i.e. tooth paste.

28. The plaintiff has relied upon the judgment of the Division Bench of this Court in the case of Himalaya Drug Company vs. S.B.L. (supra). Relevant portion of paragraphs 19 and 20 read as follows:-

'19. It is settled law that where the defendant’s mark contains the essential feature of the plaintiff’s mark combined withother matter, the correct approach for the court is to identify an essential feature depending particularly 'on the court’s own judgment and burden of the evidence that is placed before the Court'. In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are differences, rather overall similarity has to be judged. While judging the question as to whether the defendant has infringed the trade mark or not, the court has to consider the overall impression of the mark in the minds of general public and not by merely comparing the dissimilarities in the two marks.

20. The ascertainment of an essential feature is not to be by ocular test alone but if a word forming part of the mark has come in trade to be used to identify the goods of the owner of the trade mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader for which confusion is likely to result. The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole'…..'

29. Similarly, the plaintiff has also relied upon the judgment of a Division Bench of this Court in United Biotech vs. Orchid Chemicals (supra) where in paragraphs 21 and 24 this Court held as follows:-

'21. The argument was that as per sub-Section (1) of Section 17 of the Act, the exclusive right of the registered proprietor is to use the trademark "taken as a whole" and not "in part" which the respondent was trying to claim. It was argued that from the reading of the latter part of sub-Section(2) of the aforesaid provision. It was made abundantly clear that the registration would not confer any right in the matter forming only art (sic) of the whole of the trade mark was registered and the IPAB had ignored the words "not" and "in" occurring in this petition thereby committing a grave error. ..

…….

24. The entire arguments are on the wrong premise and it proceeds on the basis of common feature of the two marks suffix "ZID" and since the respondent has registration and trade mark "ORZID", it cannot bar

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e a part of it, i.e., "ZID". What has been seen in a case like this is as to whether the mark "FORZID" is deceptively similar to "ORZID". That is the test which is to be applied and in a process, it is to be seen as to whether the two marks are structurally and phonetically similar and would cause deception in the minds of consumers. When we judge the matter from this angle, we find ourselves in agreement with the view taken by IPAB as well as the learned Single Judge. Although the mark "ORZID" is a label mark, the word mark "ORZID" is an essential feature which has been covered by the registration.' 30. Reference may be had to the judgment of the Hon’ble Supreme Court in the case of Ramdev Food Products Pvt. Ltd. vs. Arvindbhai Rambhai Patel & Ors., AIR 2006 SC 3304 where in paragraph 88 this Court held as follows:- 88. 'Although, the defendant may not be using the actual trade mark of the plaintiff, the get up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off could be proved. It is also possible that the defendant may be using the plaintiff's mark, the get up of the defendant's goods may be so different from the get up of the plaintiff's goods and the prices also may be so different that there would be no probability of deception of the public. However, in an infringement action, an injunction would be issued if it is proved that the defendant is improperly using the plaintiff's mark. In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. The test, therefore, is as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off actions.' 31. In my view prima facie use of the mark 'ALL-AROUND PROTECTION' and 'ALLROUNDER' is an infringement of the registered trade mark of the plaintiff 'ALLROUND'. The broad and essential features of the three marks are identical. There are various similarities in the essential features of the said marks which are likely to deceive and confuse a consumer. The essential feature of the registered trade mark of the plaintiff is 'ALLROUND'. This feature is also the essential feature of the impugned marks. 32. The balance of convenience is also in favour of the plaintiff. When the present suit was filed, the defendants had just started marketing of their toothpaste with the impugned trademarks. In case the defendants are not restrained, irreparable injury is likely to be caused. 33. In view of the above the defendants are restrained by an interim injunction from using the impugned trademark 'ALL-AROUND PROTECTION'/ 'ALLROUNDER' or any other mark deceptively similar to the plaintiff’s trademark 'ALLROUND', till disposal of the accompanying suit. The order shall operate after four weeks from today, to enable the defendants to take appropriate steps to comply with the same. I.A. no. 11461/2013 is allowed. No costs. CS(OS) 1431/2013 List before the Joint Registrar on 07.07.2014, for further proceedings.
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