(Prayer IN O.A.No. 873/2019: This application filed under Order XIV Rule 8 of O.S Rules read with Order XXXIX Rules 1 & 2 of CPC, to grant interim injunction restraining the respondent/defendant by themselves, their servants, agents representatives or men or anyone claiming through them from in any manner infringing the applicant/plaintiff's Trade Mark 'LUVIT DAIRY RICH' bearing Registration No. 288380 and its distinctive element/part thereof 'DAIRY RICH' in respect of goods under Class 30 of the NICE Classification, Trade Marks Act, 1999, including Toffee, chocolates, confectionery products, by using any identical, similar or deceptively similar or any resembling mark and label on their product, advertisement, packaging wrapper together with any other representation or words which are in any manner identical to and deceptively similar with the registered mark of the applicant/plaintiff and its essential element/parts, including colour scheme, packaging, get up, trade dress, label, write up and wrapper on any of the respondent/defendant product or advertisement under the mark 'APPEAL DAIRY RICH' for Toffee, Chocolates, confectionery products and chewing gum (non-medicated) in any manner whatsoever pending disposal of the suit.
IN O.A.No. 874/2019: This application filed under Order XIV Rule 8 of O.S Rules read with Order XXXIX Rules 1 & 2 of CPC, to grant interim injunction restraining the respondent/defendant by themselves, their servants, agents representatives or men or anyone claiming through them from in any manner passing off the applicant/plaintiff's Trade Mark 'LUVIT DAIRY RICH' bearing Registration No. 288380 and its distinctive element/part thereof 'DAIRY RICH' in respect of goods under Class 30 of the NICE Classification, Trade Marks Act, 1999, including Toffee, chocolates, confectionery products, by using any identical, similar or deceptively similar or any resembling mark and label on their product, advertisement, packaging wrapper together with any other representation or words which are in any manner identical to and deceptively similar with the registered mark of the applicant/plaintiff and its essential element/parts, including colour scheme, packaging, get up, trade dress, label, write up and wrapper on any of the respondent/defendant product or advertisement under the mark for Toffee, Chocolates, confectionery products and chewing gum (non-medicated) in any manner whatsoever pending disposal of the suit.)
1. O.A.No. 873 of 2019 had been filed by the plaintiff seeking an order of interim injunction restraining the defendant from infringing the plaintiff's Trademark 'LUVIT DAIRY RICH' in respect of goods under class 30 of the NICE Classification, Trade Marks Act, 1999, including Toffee, chocolates, confectionery products.
2. O.A.No. 874 of 2019 had been filed by the plaintiff seeking an order of interim injunction restraining the defendant from passing off their products as if they are the product of the plaintiff by using an identical mark 'APPEAL DAIRY RICH'.
3. These applications had come up for consideration before a learned Single Judge on 24.09.2019 and an order of exparte interim injunction was granted in both the applications. The said order was extended by further order dated 13.12.2019 and again reiterated by order dated 11.11.2020. On notice being served, the defendant filed A.No. 2265 of 2020 to vacate the order of exparte interim injunction granted in O.A.No. 873 of 2019 and A.No. 2266 of 2020 to vacate the order of exparte interim injunction granted in O.A.No. 874 of 2019.
4. The plaintiff, M/s. Global Consumer Products Private Limited, a Company incorporated under the Companies Act 2013 had instituted the suit taking advantage of Sections 27, 28, 29, 134 & 135 of the Trade Marks Act, 1999 and the relevant provisions of the Code of Civil Procedure and the Original Side Rules of the Madras High Court and the Commercial Courts Act 2015 against the defendant Golden Chocolates Private Limited, also a company incorporated under the Companies Act and having registered office at New Delhi, seeking a Judgment and Decree against the defendant in the nature of permanent injunction restraining the defendant from infringing the plaintiff's Trade Mark 'LUVIT DAIRY RICH' bearing Registration No. 288380 and its distinctive element 'DAIRY RICH' in respect of goods under class 30 of the NICE Classification, Trade Marks Act 1999, including Toffee, Chocolates, Confectionery products and also for a permanent injunction restraining the defendant from passing off their products under the offending Trade Mark 'APPEAL DAIRY RICH' with respect to similar products of Toffee, Chocolates and Confectionery products and chewing gum (non-medicated) as if they were the products of the plaintiff and also for consequential reliefs and for costs of the suit.
5. In the plaint, it had been stated that the plaintiff is an Indian FMCG Company incorporated in December 2013 engaged in the business of manufacturing and marketing various fast moving consumer groups including food and beverages and household and personal care products under various brands. The plaintiff has a large network on distribution throughout India. They are also in the business of marketing confectionaries. They operate under the brand name 'LUVIT' in respect of confectionery products, 'CHERIO' in respect of beverages and fruit juices and 'SAMURIDE' in respect of energy drinks, 'VED RASA' in respect of ayurvedic personal care products and 'DND' in respect of household insecticides and mosquito repellents. The plaintiff claimed that the Trademark 'LUVIT' in respect of Chocolate and Confectionery was adopted by the plaintiff in the year 2014. They have launched different brand extensions of the distinctive house mark 'LUVIT' for their confectionery products and chocolates. They have sub-brands like 'CRAZY POPS', 'CHOCSTAR', 'CHOCBAR', 'CHOCWICH'. The plaintiff claimed that one of the popular brand extension was the distinct name and mark 'DAIRY RICH'. This was conceived in 2014 and had been used since early 2015. Prior to the usage, there was none in the market or trade using the same mark particularly in chocolates and confectionery. There was also no mark identical or similar to the plaintiff's trademark 'LUVIT DAIRY RICH' in the records of the Trade Marks Registry. The plaintiff obtained registration for the Trade Mark 'LUVIT DAIRY RICH' under class 30 by registration No. 2883870 in respect of confectionery and all other allied items. They also obtained registration for the mark 'LUVIT DAIRY RICH' under class 31 in Registration No. 2883871 and under class 32 in Registration No. 2883872. The plaintiff has also registered the mark 'GLOBAL DAIRY RICH' written in a distinct manner together with colour scheme, get up and artistic work and the product is identifiable with the plaintiff. It is also stated that the general public traders have identified the mark with its distinctive artistic work and colour scheme as products manufactured by the plaintiff. The plaintiff further stated that the annual sales turn over of the 'DAIRY RICH' products was Rs.2,64,42,604/- till June 2019 in the Financial Year 2019-2020. They had also expended substantial amounts towards promoting the product and had incurred an expense of Rs.69,80,000/- in the financial year 2019-2020 till June 2019. The plaintiff claimed that the mark 'DAIRY RICH' had acquired a distinctive character over the period of time and have been identified only with the plaintiff.
6. The plaintiff stated that they came across an application of the defendant in Trade Mark Application No. 3916637 in respect of a label mark 'APPEAL DAIRY RICH' with the words 'DAIRY RICH' appearing with prominence for goods under class 30, namely, Toffee, Chocolates, Confectionery products and Chewing gum (non-medicated). The Registrar of Trade Marks by an Examination Report dated 12.09.2018 had indicated that 'DAIRY RICH' was a mark of the plaintiff and was a conflicting marks and raised objection under Section 11(1) of the Trade Marks Act, 1999.
7. The plaintiff claimed that the defendant had encroached on their distinctive mark in Registration No. 2883870, by usurping a part of the distinct element namely 'DAIRY RICH' and since the products are the same and since the distribution channels are also the same and since the customers are also the same, there was every likelihood of deception and confusion being caused owing to the products of the defendant being marketed under the name 'APPEAL DAIRY RICH'. The plaintiff also claimed to be a prior user. The plaintiff also issued a legal notice on 03.12.2018 calling upon the defendant to cease and desist from using the impugned mark. The defendant issued a reply on 20.12.2018 denying the contents. The plaintiff claimed that the defendant had used the offending mark 'APPEAL DAIRY RICH' only to encroach on the reputation built by the plaintiff and with intention to pass off their products as if they are the products of the plaintiff. The plaintiff claimed that extraction of the words 'DAIRY RICH' by the defendant was not bona fide and was a direct infringement of the statutory right provided to the plaintiff in view of their registration of the mark 'LUVIT DAIRY RICH'. The plaintiff also stated that in their application, the defendant had stated that they propose to use their mark. That application was filed on 14.08.2018 nearly 4 years after the plaintiff had conceived and commenced usage of the mark 'LUVIT DAIRY RICH'. It is under these circumstances, seeking protection of their mark 'LUVIT DAIRY RICH' which had been registered in Registration No. 2883870 under class 30 that the suit had been filed seeking the reliefs as stated above.
8. The plaintiff filed O.A.Nos. 873 & 874 of 2019 seeking an order of interim injunction restraining the defendant from infringing their Trade Mark 'LUVIT DAIRY RICH' and from passing off their products as if they are the products of the plaintiff by using offending Trade Mark on 'DAIRY RICH'.
9. In the affidavits filed in support of the said applications, the plaintiff again reiterated the same facts as stated in the plaint.
10. The defendant, as stated filed A.Nos. 2265 & 2266 of 2020 to vacate the order of exparte interim injunctions which had been originally granted on 24.09.2019 and subsequently extended until further orders by order dated 13.12.2019 and further reiterated by order dated 11.11.2020.
11. In the affidavit filed in support of two applications, the defendant claimed that the registration of the mark of the plaintiff was with a disclaimer, namely that the words 'DAIRY RICH' cannot be used to the exclusion of others. It had also been stated that the words 'DAIRY RICH' is purely descriptive and generic and common to the trade. The details of the applications made by the plaintiff for the Trade Mark 'LUVIT DAIRY RICH', had been given in the affidavit and it had been stated that with respect to the registrations for the marks 'GLOBAL DAIRY RICH' in Registration No. 2883865 in class 29, Registration No.2883866 in class 30, Registration No.2883867 in class 31 and Registration No.2883868 in class 32 and for the registration of the mark 'LUVIT DAIRY RICH' in Registration No. 2883872 in class 32, a disclaimer had been issued that the plaintiff has no exclusive right over the words 'DAIRY RICH' and it had been further stated with respect to the mark 'GLOBAL DAIRY RICH' that the mark shall be used as a whole. It had been pointed out that the plaintiff had laid the suit on the basis of the Trade Mark registered in Registration No. 2883870 alone for the mark 'LUVIT DAIRY RICH' which alone had been issued without disclaimer. It had been stated that the plaintiff had suppressed these facts before the Court. It had been stated that the words 'DAIRY RICH' would indicate that the products are rich in milk and are milk based products. It had been stated that the suit is not maintainable in view of Section 17 of the Trade Marks Act 1999.
12. It had been further claimed that the defendant was using a composite label mark 'APPLE DAIRY RICH' in contrast to the mark 'LUVIT DAIRY RICH' of the plaintiff. It had been stated that the Trade mark 'APPEAL' the placement of the words, the get up, the lay out, the colour scheme and the colour combination would indicate that there are no similarities between the marks of the plaintiff and the defendant. It had been stated that there was no likelihood of confusion and deception. They had adopted the composite label mark 'APPEAL DAIRY RICH' in the year 2018. It had been claimed that the usage of the composite label mark 'APPEAL DAIRY RICH' was honest and bona fide. The mark had also acquired tremendous goodwill and reputation in the market. It had therefore been stated that the ex-parte order of injunction order dated 29.09.2019 should be vacated.
13. The defendant also filed counter affidavits to O.A.Nos. 873 & 874 of 2019 raising practically the same contentions as stated in the affidavits filed in support of A.Nos. 2265 & 2266 of 2020.
14. The plaintiff also filed a rejoinder to the said counter affidavits.
15. The plaintiff also filed a counter affidavit to A.Nos. 2265 7 2266 of 2020 again raising the same contentions as stated in the affidavit filed in support of O.A.Nos. 873 7 874 of 2019.
16. The defendant filed their rejoinder to this counter affidavit.
17. Heard arguments advanced by Mr. Perumbulavil Radhakrishnan, learned counsel for the plaintiff/applicant in O.A.Nos. 873 & 874 of 2019 and Mr.ARL. Sundaresan, learned Senior Counsel for Ms. N.Devi, learned counsel for the Defendant/ applicant in A.Nos. 2265 & 2266 of 2020.
18. As stated the plaintiff had filed O.A.Nos. 873 & 874 of 2019 and the defendant had filed A.Nos. 2265 & 2266 of 2020.
19. For the sake of convenience, the parties would be referred as plaintiff and the defendant.
20. The plaintiff, a Company incorporated under the Companies Act 2013 had instituted the instant suit under Sections 27, 28, 29, 134 and 135 of the Trade Marks Act 1999 read with the relevant provisions of the Code of Civil Procedure, Original Side Rules of the Madras High Court and the Commercial Courts Act, 2015 seeking a permanent injunction against the defendant to protect their Trade Mark 'LUVIT DAIRY RICH' registered in Registration No. 288380 from being infringed and to restrain the defendant from passing off their product 'APPEAL DAIRY RICH' as if they are the products of the plaintiff and for consequential reliefs and for costs.
21. The plaintiff had the benefit of an exparte interim injunction granted on 24.09.2019 in O.A.Nos. 873 & 874 of 2019. The defendant filed A.Nos. 2265 & 2266 of 2020 to vacate the said order of exparte interim injunction.
22. The following facts emerge from the discussions:-
(1) The plaintiff is in the business of manufacturing and marketing confectionery products and chocolates;
(2) The defendant is also in the business of manufacturing and marketing confectionery and chocolates;
(3) The plaintiff was incorporated on 26.12.2013 and claimed to have adopted the Trade Mark 'LUVIT DAIRY RICH' in the year 2014 and had conceived the expression 'DAIRY RICH' in 2014 and has been using it from the year 2015;
(4) The defendant had adopted a composite label mark 'APPEAL DAIRY RICH' in the year 2018 also in respect of confectionery and chocolates and had applied for registration in A.No. 3916637 in Class 30 on 14.08.2018 and the registration is pending with the Registrar of Trade Marks.
23. It is the contention of Mr.Perumbulavil Radhakrishnan, learned counsel for the plaintiff that the plaintiff had been the prior user of the mark 'LUVIT DAIRY RICH' and even in the application of the defendant filed in August 2018 for the mark 'APPEAL DAIRY RICH', they had stated that they only propose to use the said mark. The learned counsel therefore stated that it is therefore evident that the defendant had not entered into the market even as on August 2018 and therefore claimed that the plaintiff, who had entered the market earlier and had also obtained registration of the mark 'LUVIT DAIRY RICH' was certainly entitled for protection of the mark. The learned counsel also pointed out the turn over and the invoices filed to show that the plaintiff has a significant presence in the market. The learned counsel also stressed upon the advertisements effected for sales promotion issued and stated that the plaintiff had made every effort to ensure that the products reached every corner and also to ensure the popularity of the product. The learned counsel therefore stated that the plaintiff had established substantial reputation and goodwill in the market.
24. The learned counsel contrasted the registration of the plaintiff in class 30 to the mark of the defendant wherein they have also used the word 'R' within a circle to give an impression that the mark of the defendant is registered whereas the mark was actually not registered. The learned counsel stated that the plaintiff had issued a legal notice on 03.02.2018 calling upon the defendant to cease and desist from marketing their products under the offending name 'APPEAL DAIRY RICH'. A reply had been issued by the defendant on 22.02.2018. The plaintiff had thereafter approached this Court seeking the reliefs as stated above.
25. Mr.ARL. Sundaresan, learned Senior Counsel on the other hand disputed the contentions put forward by Mr. Perumbulavil Radhakrishnan. The learned Senior Counsel stated that the plaintiff had the benefit of registration of the mark 'LUVIT DAIRY RICH' not just in Class 30 but also in Classes 31 & 32. However, those registrations were granted with a disclaimer as against exclusive usage of the words 'DAIRY RICH'. The learned Senior Counsel stated that the plaintiff had instituted the suit only with respect to the Trade Mark registration No. 2883870 which had been registered in Class 30 without any disclaimer. The lack of bona fide on the part of the plaintiff was stressed by the learned Senior Counsel.
26. The learned Senior Counsel also stated that there were several other registered proprietors using the words 'DAIRY RICH' and therefore stated that the plaintiff cannot claim that the words 'DAIRY RICH' are unique, requiring protection. As a matter of fact, according to the learned Senior Counsel the words have become generic in nature. The learned Senior Counsel also stated that the brand of the plaintiff is 'LUVIT' and the plaintiff had added the words 'DAIRY RICH' only in the years 2014-2015.
27. It is the grievance of the learned Senior Counsel that the plaintiff had suppressed the fact that the other registrations of the plaintiff for the name 'DAIRY RICH' had been granted only with a disclaimer. This fact had not been stated in the plaint. The learned Senior Counsel stated that the plaintiff cannot claim exclusive right to the words 'DAIRY RICH' and the mark of the plaintiff must be viewed as a composite mark with all the three words namely, 'LUVIT DAIRY RICH' and the words cannot be segregated and reliefs sought only for the words 'DAIRY RICH'.
28. Dealing with the scope of Section 13 of the Trademark Act, 1940, which is paramateria with Section 17 of the Trade and Merchandise Marks Act, 1958, the Hon’ble Supreme Court in Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd (1955) 2 SCR 252: AIR 1955 SC 558, observed as under in paragraph 6 as follows:- "
“6. .. At the outset it will be noticed that the power of the tribunal to require a disclaimer is conditioned and made dependent upon the existence of one of two things which are set out in clauses (a) and (b) and which have been called the jurisdictional facts. It is only on the establishment of one of the two jurisdictional facts that the Registrar's jurisdiction regarding imposition of a disclaimer arises. Before, however, he may exercise his discretion he must find and hold that there are parts or matters included in the trade mark to the exclusive use of which the proprietor is not entitled and it is only after this finding is arrived at that the Registrar becomes entitled to exercise his discretion. In course of the argument it was at one time contended that upon the establishment of the requisite jurisdictional fact and upon the finding that the proprietor was not entitled to the exclusive use of any particular part or matter contained in the trade mark the Registrar became entitled, without anything more, to require a disclaimer of that part or matter. This extreme position, however, was not maintained in the end and it was conceded, as indeed it had to be, that the exercise of the power conferred on the Registrar by this section always remained a matter of discretion to be exercised, not capriciously or arbitrarily but, according to sound principles laid down for the exercise of all judicial discretion. (See the observations of Lord Halsbury, L.C., in Sharp v. Wakefield [LR 1891 AC 173 at p 179] ). As the law of Trade Marks adopted in our Act merely reproduces the English Law with only slight modifications, a reference to the judicial decisions on the corresponding section of the English Act is apposite and must be helpful. Section 15 of the English Act of 1905 which later on was reproduced in Section 14 of the English Act of 1938 and which corresponds to our Section 13, was considered by the High Court in England in In re Albert Baker Co.'s Application and In re Aerated Bread Company's Application [LR (1908) 2 Ch 86 : 25 RPC 513] which is commonly called the A.B.C. case. In that case Eve, J. found on the evidence that Albert Baker Company were widely known as “A.B.C.” or “A.B. & Co.” but that the letters “A.B.C.” did not exclusively indicate their goods and that those letters being common to the trade they were not entitled to the exclusive use of those letters. Nevertheless the learned Judge did not hold that that finding alone concluded the matter. Said the learned Judge:
“The first observation which it occurs to me to make is that the object of the legislature was to relieve traders from the necessity of disclaiming, and I think it follows from this that the condition is one for the imposition of which some good reason ought to be established rather than one which ought to be imposed, unless some good reason to the contrary is made out. This conclusion is, I think, fortified by the frame of the section, which is in an enabling form empowering the tribunal to impose the condition — power which, I conclude, the Tribunal would only exercise for good cause shown.” It follows from what has been stated above that the existence of one of the two jurisdictional facts referred to in clauses (a) and (b) of Section 13 and the finding that the trade mark contains parts or matters to the exclusive use of which the proprietor is not entitled does not conclude the matter and it must further be established that some good reason exists for the imposition of a disclaimer and the Tribunal will only exercise the discretionary power for good cause shown.”
29. The Supreme Court in the above decision, explained the functions of the disclaimer as follows:-
“ In short, the disclaimed parts or matters are not within the protection of the statute. That circumstance, however, does not mean that the proprietor's rights, if any, with respect to those parts or matters would not be protected otherwise than under the Act.”
30. The Supreme Court in the above decision, ultimately held that the distinct label registered as a whole cannot possibly give any exclusive statutory right to the proprietor of the trade mark in close any particular word the name contained therein apart from the mark as a whole. In the said decision, the Supreme Court referred to the observations of Lord Esher in Pinto Vs. Badman (8 RPC 181 at p.191), In re Apollinaris Company’s Trade Marks (LR (1891) 2 Ch. 186), In re Smokeless Powder Co.. (LR (1892) 1 Ch 590 : 9 RPC 109), In re Clement and Cie (LR (1900) 1 CH 114) and In re Albert Baker & Company (LR (1908) 2 Ch. 86 : 25 RPC 513). Ultimately, the Supreme Court referred that the truth is that the label does not consist of each particular part of it, but consists of the combination of them all.
31. It was further observed by the Supreme Court in the above decision that, merely because the labels were registered subject to the following disclaimer:-
“(g) Registration of the Trade Mark shall give no right to the exclusive use of the word "Shree"'.
32. It is in the context of the above dispute, the Supreme Court, in the above decision, after considering the various decisions held that the Registrar while granting registration has not gone wrong and thus the High Court found it necessary to interfere with the discretion under Section 13 of the Trade Mark Act, 1940. It noted that "The device which, its essential features, was, on the application of the respondent company, registered as its trade mark No. 3815. That mark was and is a device consisting of the word "Shree" written on the top in bold Bengali character, having below it an ornamental figure with the word "Shree" written in the center in small Deva Nagri character."
33. In the said case, the mark in question consisted of a device along with the word “Shree” written on the top in bold Bengali character, having below it an ornamental figure with the word “Shree” written in the centre in small Deva Nagri character. The Registrar had imposed a disclaimer for the word “Shree” . Answering the question, the Hon’ble Supreme Court observed as under:-
"Considering all the circumstances discussed above, we are not of opinion that the Registrar had gone so wrong as to have made it necessary for the High Court to interfere with his discretion. If it were to be regarded as a matter of exercise of discretion by the High Court as to whether a disclaimer should be imposed or not, it is quite clear that the attention of the High Court was not drawn to an important consideration, namely, the strong possibility of the respondent company claiming a statutory right to the word "Shree" by virtue of the registration of its trade mark and subject others to infringement actions only on the strength of the registration and without proof of facts which it would have otherwise to establish in order to succeed in a passing off action or a prosecution under the Indian Penal Code and, therefore, the High Court cannot be said to have properly exercised its discretion. The result, therefore, is that this appeal must be allowed and the respondent company must pay the appellant's costs in this Court and in the High Court.”
34. In F.Hoffmann-La Roche &Co.Ltd v. Geoffrey Manner & Co. (P) Ltd., (1969) 2 SCC 716 at page 720 it was held as follows:-.
“It is also important that the marks must be compared as wholes. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. Thus in Layromacase(1). Lord Johnston said': ".' ..... we are not bound to scan the words as we would in a question of comparatioliterarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop."
35. In Amritdhara Pharmacy Vs. Satya Deo Gupta, (1963) 2 SCR 484 : AIR 1963 SC 449, it was held as follows:-.
“We agree that the use of the word 'dhara' which literally means 'Current or stream' is not by itself decisive of the matter. What we have to consider here is the overall similarity of the composite words, having regard to the circumstance that the goods bearing the two names are medicinal preparations of the same description. We are aware that the admission of a mark is not to be refused, because unusually stupid people, "fools or idiots", may be deceived. A critical comparison of the two names may disclose some points of difference. but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with. a similar name. The trade mark is the whole thing the whole word has to be considered. In the case of the application to register 'Erectiks' (opposed by the proprietors of the trade mark 'Erector') Farwell, J. said in William Bailey (Bir- mingham) Ltd. Application [(1935) 52 RPC 137]: "I do not think it is right to take a part of the word and compare it with a part of the- other Word; one word must 'be considered as a whole and compared with the other word as a whole................ I think it is a dangerous method to adopt to divide the word up, and seek to distinguish a portion of it from a portion of the other word".
36. In Kaviraj Pandit Durga Dutt Sharma V. Navaratha Pharmaceuticals Laboratories, (1965) 1 SCR 737 : AIR 1965 SC 980 it was held as follows:-
“The mark of the respondent which he claims has been in- fringed by the appellant is the mark 'Navaratna Pharmaceutical Laboratories', and the mark of the appellant which the respondent claimed was a colourable imitation of that mark is 'Navaratna Pharmacy. Mr. Agarwala here again stressed the fact that the 'Navaratna' which constituted an essential part or feature of the Registered Trade Mark was a descriptive word in common use and that if the use of this word in the appellant's mark were disregarded, there would not be enough material left for holding that the appellant had used a trade mark which was deceptively similar to that of the respondent. But this proceeds, in our opinion, on ignoring that the appellant is not, as we have explained earlier, entitled to insist on a disclaimer, in regard to that word by the respondent. In these circumstances, the trade mark to be compared with that used by the appellant is the entire registered mark including the word 'Navaratna'. Even otherwise, as stated in a slightly different context:(1) "Where common marks are included in the trade marks to be compared or in one of them, the proper course is to look at the marks as wholes and not to disregard the parts which are common".
The above precedents had also been relied on by a Division Bench of this Court in O.S.A.No. 169 of 2020, M/s. Pathanjali Ayurved limited and another Vs. Arudra Engineers Pvt. Ltd., in Judgment dated 02.02.2021 when they examined the mark “CORONIL-213 SPL' and 'Coronil-92B' with the mark 'Coronil' and refused to grant injunction.
37. The learned Senior Counsel further stated that the defendant had established an independent market and had certainly not encroached on the goodwill allegedly built by the plaintiff. The colour combination of the two wrappers are totally different and the artistic work on the wrappers are also different. It was urged that the Court should examine the mark as a whole.
38. Before proceeding further, the pictorial representation of the plaintiff's mark and the defendant's mark will have to be examined.
39. The plaintiff's marks are as follows:
40. The defendant's mark is as follows:-
41. As is obvious to the naked eye, the colour combination are different. However, both the plaintiff and the defendant have laid stress with much emphasis on the words 'DAIRY RICH' in their respective packets. It will have to be examined whether the plaintiff should be extended the benefit of protection of the words 'DAIRY RICH' which is part of a registered mark 'LUVIT DAIRY RICH'. It must be kept in mind that both the plaintiff and the defendant are in the same line of business.
42. Section 17(2) of the Trademarks Act is as follows:-
“section 17(2) in The Trade Marks Act, 1999 ”
(2) Notwithstanding anything contained in sub-section (1), when a trade mark—
(a) contains any part—
(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.”
43. The crucial words are 'common to the trade' and 'non distinctive character'. Both the plaintiff and the defendant are in the same nature of trade dealing with confectioneries and chocolates. The primary ingredients of their products is of course milk. The usage of the word 'DAIRY RICH' would only indicate that the chocolates or confectioneries marketed by both the plaintiff and the defendant have, as an ingredient, a product, which emanates from a Dairy. The most common product which emanates from a Dairy is milk. If this is to form a significant part of the confectioneries or chocolates then, the word 'RICH' can be added. The two words 'DAIRY RICH' would naturally then indicate that the chocolates or confectioneries which are sold either by the plaintiff or by the defendant are rich in milk.
44. The issue is whether therefore the words 'DAIRY RICH' has become common to the trade or had attained a non distinctive character. A further glance at the product shown in the pictorial representations above, indicate that the plaintiff's product 'milk chocolates' and 'fruit and nuts' and the defendant's product 'chocolates / milk chocolates bar' have milk as a significant ingredient. The ingredients even in 'fruits and nuts' contain 'milk solids' of 16.3%. The question then one has to be ponder over is whether the words 'DAIRY RICH' have become 'non distinctive'
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in character. Independently, both the words signify nothing. They have not been chosen arbitrarily. They have a meaning. The word 'DAIRY' is indicative of milk or milk products being an ingredient in the confectioneries / chocolates and the word 'RICH' is indicative of the fact that milk or milk products is a significant ingredient. 45. It is also significant to point out that the defendant has stated that several other marks exist with the name 'DAIRY RICH'. The learned counsel for the plaintiff however questioned that fact and pointed out each one of the said registrations and stated that they can be ignored by the Court. 46. The core issue to be decided is whether the words 'DAIRY RICH', being registered, should be protected or whether the words are generic in nature. It has to be further examined whether the words have acquired secondary meaning associated exclusively with the plaintiff or whether they have attained a non-distinctive character. These are issues which can be examined only on appreciation of evidence. This would require the contesting parties to the lis to also establish their reputation and goodwill. 47. It is to be noted that very often suits particularly seeking protection from infringement of rights granted under the Trademarks Act have either fallen or survived on the basis of orders passed on application seeking interim injunction. However, the object of the Commercial Court Act, 2015 is different. The Act provides for resolution of the issues raised in the suit by way of trial. Specific time lines have been given for filing written statement and to adduce evidence. This would in the long run, be the most effective way in resolving the issues at hand. Revolving around grant or denial of interim injunction and depending on the interim orders passed either pressing with further progress of the suit or abandoning the suit have become the norm of the day. 48. I would therefore relegate the parties to trial to establish their respective cases. Evidence has to be adduced that the words 'DAIRY RICH' are unique or that they are not descriptive in nature. Therefore, it would only be in the interest of the plaintiff and the defendant that their witnesses graze the witness box and adduce evidence touching upon the respective stands and contention. 49. It is seen that the products of the defendant are also available in the market. The plaintiff has also sought the relief to render accounts in the suit. Therefore, rather than grant an order of interim injunction, I would direct the defendant to provide an account of the turn over of their products from the time when they had released it in the market in the year 2018. The defendant is a Private Limited Company and naturally would not only have an internal audit but also an audited Profit and Loss Account and Balance Sheet and deciphering the profits made by marketing the products 'APPEAL DAIRY RICH' would be possible. 50. I would therefore direct the defendant to maintain an accounts of their product 'APPEAL DAIRY RICH' and submit the accounts once every three months into Court. The plaintiff can bestow their attention in adducing evidence and in fact endeavour to complete the trial within three months. I would put the parties to a time schedule in accordance with the provisions of the Commercial Courts Act, 2015. 51. In view of the said reasoning, the interim order granted is vacated however, with a direction to the defendant to file accounts with specific reference to its products 'APPEAL DAIRY RICH' once every three months into Court. Failure to submit accounts would be a ground to revisit this order. 52. O.A.Nos. 873 & 874 of 2019 are dismissed. A.Nos. 2265 & 2266 of 2020 are allowed with the said directions. No order as to costs.