O.A.No.1145 of 2015:-
Original Application praying that this Hon'ble Court be pleased to grant an order of interim injunction restraining the respondent by itself, its agents, servants or any one claiming through it from in any manner passing off its products as that of the applicant by using the offending trademark ''AROKYA'' or any other trademark which is similar or deceptively similar to that of the applicant's trademark ''AROKYA'' either by manufacturing or selling or offering for sale or in anyway advertising the same either as trademark or as trade name or in any manner whatsoever, pending disposal of the suit.
O.A.No.1146 of 2015:-
Original Application praying that this Hon'ble Court be pleased to grant an order of interim injunction restraining the respondent by itself, its agents, servants or any one claiming through it from in any manner infringing the applicant's registered trade mark ''AROKYA'' as described in the schedule hereunder by using the offending trademark ''AROKYA'' or any other mark, label or device which is identical or deceptively similar to or a colourable imitation of the applicant's trade mark ''AROKYA'', pending disposal of the suit.)
A.No.1554 of 2016:-
Application praying that this Hon'ble Court be pleased to vacate the order of injunction granted on 16/10/2015 in Original Application No.1145 of 2015 in C.S.No.854 of 2015 with costs.
A.No.1555 of 2016:-
Application praying that this Hon'ble Court be pleased to vacate the order of injunction granted on 16/10/2015 in Original Application No.1146 of 2015 in C.S.No.854 of 2015 with costs.
These Applications having been heard on 20/06/2016 in the presence of Mr.A.Prabakara Reddy, for M/s.APR Associates, Advocates for the applicant in O.A.Nos.1145 and 1146 of 2015 and for the respondent in A.Nos.1554 & 1555 of 2016 and Mr.Abdul Quaddhose Advocate for the respondent in O.A.Nos.1145 and 1146 of 2015 and for the applicant in A.Nos.1554 & 1555 of 2016 and upon reading the order dated 15.06.2016, made in O.A.Nos.1145 and 1146 of 2015 and having stood over for consideration till this date and coming on this day before this court for orders in the presence of the said advocates for the parties hereto, and this court observed as follows:
O.A.Nos.1145 and 1146 of 2015 are filed by the plaintiff in a suit for permanent injunction inter alia alleging infringement of the trade mark and passing off by the defendant, thus, seeking interim prohibitory orders from doing so. Seeking vacation of the orders passed in those applications in O.A.Nos.1145 and 1146 of 2015, A.Nos.1554 and 1555 of 2016 have been filed by the defendant.
2. For the sake of brevity, the applicant and respondents in O.A.Nos.1145 and 1146 of 2015 of 2016 are arrayed as such.
3. The Facts in Brief:-
3.1. A venture came into being under the name of 'Hatsun Dairy Pvt. Ltd.,' which was subsequently changed to 'Hatsun Milk Products' and thereafter as 'Hatsun Agro Products Ltd.,' in the years 1993, 1996 and 1998. It was further merged with 'Hatsun Agro Products Ltd.,' in 1998, now the applicant. The applicant is said to be producing substantial quantity of milk. It also ventured into milk products under the trade mark 'Hatsun'. A registration has been done under the trade mark 'Arokya' a fresh creamy milk under Class 30 of the Fourth Schedule under the Trade Mark Rules 2002 in the year 1995. Thereafter, in 2005 and 2006, registrations have been made under the trade mark 'Arokya' for milk products and their labels. It is the further case of the applicant that its market extends to various parts of the southern India. Except the first registration, others are done under Classes 29 and 32, as the case may be. However, it appears that even the first registration made must in all likelihood have been brought under Class 29.
3.2. The respondent is doing its business in Madurai using the unregistered mark 'Arokya'. However, the business of the respondent is in 'Dhall and Maida'. According to the respondent, it is restricted to Madurai alone and in any case not extended to Chennai. Suffice it is to state that the respondent does not venture into the business of the applicant, which is not in dispute.
3.3. Alleging that the registered mark is infringed and the respondent is passing off its goods as that of the applicant with the allegation that there are instances of sale within the territorial jurisdiction of the Court, the present suit is laid.
3.4. This Court has granted an interim injunction in favour of the applicant on 16.10.2015 in O.A.Nos.1145 and 1146 of 2015 in C.S.No.854 of 2015.
4. Heard the learned counsels appearing for the parties and perused the documents and typed set of papers.
5. Applicant's Case:-
The learned counsel appearing for the applicant submits that the applicant has earned its goodwill and reputation in the market, which is sought to be encroached upon. Such an intrusion would be hit by Section 29 of the Trade Marks Act, 1999. When once a mark is registered, which is sought to be infringed, a protection order will have to follow by necessary implication. The word 'Arokya' is neither generic nor descriptive. Even in such a case, any other party, which is said to be using the trade mark, will have to be injuncted. Such a word is to be seen in tune with the business of the applicant. The document No.20 filed along with the plaint in the form of cash memo would show that the respondent is selling its product at Chennai. The mere fact that the respondent has filed applications under class 30 seeking registration of the word 'Arokya' will not disentitle the applicant from getting the appropriate relief. Thus, a case of infringement and passing off is made out. Though a number of judgments have been filed in the typed set of papers, reliance is sought to be made on the decision of this Court in 'BLUE HILL LOGISTICS PRIVATE LTD., VS. ASHOK LEYLAND LIMITED AND ANOTHER (2011 (4) CTC 417) as confirmed in ASHOK LEYLAND LIMITED Vs. BLUE HILL LOGISTICS PRIVATE LTD., (2011 (4) CTC 397).
6. Case of the Respondent:-
The learned counsel for the respondent submits that the applicant has not complied with the order XXXIX Rule 3 C.P.C. There is no territorial jurisdiction for maintaining the suit. The respondent does not carry on business within the territorial jurisdictional of this Court. The cash memo filed is fabricated just to bring the lis before this Court. The respondent is carrying on business only in Madurai. The work 'Arokya' would mean 'good health'. It is both generic and descriptive. The onus is heavily on the applicant to substantiate his case when once he uses a generic and descriptive name. Admittedly, both the parties are dealing with different products. The respondents are not dealing with any diary products. There is no dilution involved. The customers are totally different. In support of his contention, the learned counsel has made reliance upon the following decisions.
'1. FOODWORLD V. FOODWORLD HOSPITALITY PVT. LTD., (2009 Supreme Court Cases Online Del 3862)
2. INDCHEMIE HEALTH SPECIALITIES PVT. LTD., V. INTAS PHARMACEUTICALS LTD., AND ANOTHER ((2015) 6 Mah LJ 324)'.
3. CATER PILLAR INC. V. MEHTAB AHMED AND OTHERS (99 (2002) DLT 678).
7. Before venturing into the merits of the case, let us understand the legal premise, upon which the reliefs are sought for.
8. Passing Off:-
8.1. Passing off is a concept in the domain of common law remedy. It offers protection to a party, when the other makes an attempt to pass off his goods through a misrepresentation, as that of the former. What is required in a passing off is the existence of a goodwill, damage or injury to it and through representation. This fundamental principles called as classical trinity has been enunciated in Jif Lemon's case (1991 All England Reporter 873), which deduced the larger requirement enunciated in the Advocate's case (ERVEN WARNINK V. TOWNEND & SONS LTD., ((1979) 2 ALL E.R. 927) (See S.SYED MOHIDEEN V. P.SULOCHANA BAI ((2016) 2 Supreme Court Cases 683).
8.2. A party, who comes to the Court, has to establish the three basic requirements as mentioned above, while seeking an order of protection. An actual injury is not a sine qua non and thus, likelihood of damage would suffice. A misrepresentation by the defendant to the public may or may not be intentional. What is sufficient is that an action qua a defendant, which leads or likely to lead a prospective customer to believe that the goods or services offered by it are that of the plaintiff. Such a deception can either be proved on evidence and if not by the decree of probability, of course, to the satisfaction of the Court.
When coming to infringement of a mark, a party having registered trade mark, has got a right to seek protection. Therefore, once a case of infringement is made out, then protection would follow suit. Such a protection is tune with the right conferred under the statute, namely, the Trade Marks Act, 1999. Section 29 of the Trade Marks Act, 1999, enables or confers such a right to a holder of a registered mark. The object is to protect the business by protecting the mark. Therefore, the emphasis is more on the business and the resultant injury by an infringement, than the mark itself. However, such a right is a qualified one. Such a qualification is prescribed under Section 30 of the Trade Marks Act, 1999. More often than not the courts are called upon to resolve the dispute when a mark is descriptive and generic. In such a situation, the approach of the Court becomes a little different placing a higher degree of onus on the applicant. In other words, in a case of an infringement under Section 29 of the Act, in which, the mark is neither generic nor descriptive, the examination by the Court becomes simple as against the other. In the other case, the requirement of the element of distinctiveness, onus of proof and the right to get a protective order would become different.
10. Generic and Descriptive:-
The words generic and descriptive are not inter-changeable. 'Generic' would mean general and it encompasses a whole group of things. To put it otherwise, it is not specific. Therefore, the generic name is genes, which has different species. The word 'bird' is a genes and the words 'eagle', 'crow' are species. Once a word becomes generic, it looses its exclusivity qua a registered trade mark. This is not a general principle though there are cases in which protection would still be available. When once a word becomes generic, the burden is much higher on the plaintiff to convince the Court for a prohibitory order on the strength of his registered mark. It is much more onerous when the defendant is in some other business. However, there is a difference between the usage of generic work, which are having direct connection with the product as against the other goods. For example, if the word 'Rose' is used involving in a trade dealing with the Roses, then there is a direct connection. In such a case, it may be difficult for the plaintiff being a registered mark holder to success on that score alone de horse other factors. The reason being, the plaintiff might prevent the whole world from using the said name by a sheer act of registration. When once we understand the general principle that a registration is to protect the trade, the protection given would lead to prohibit the others to use a generic word adopting the nature or quality of goods cannot generally be accepted. It is also contrary to the intention of the enactment. On the contrary, if the word 'rose' is used in a software business, then it would become a fanciful or arbitrary application. It is for the reason that though the word is generic, the protection comes for the particular business and it is the business that is identified with the name and not otherwise. Therefore, such fanciful or arbitrary words are entitled for protection as a general principle.
11. Dilution and Distinctive:-
11.1. The Doctrine of dilution would arise in a case where the usage causes a dilution of value of the trade mark of the plaintiff. In other words, the descriptive link between the mark and the goods would get corroded by the later's usage.
11.2. This doctrine has its origin from common law. It is evolved from the principle governing fairness in action on the part of one party impacting the others. There can also be a dilution when one's action with an intention to cause a civil injury to the business, trade or commerce, does so. It is called 'dilution by garnishment'. This might normally take place when the quality and reputation of one is sought to be attacked through the action of another.
11.3. The question as to whether a dilution exist or not is one of evidence to be substantiated by the affected party. The onus gets enlarged while dealing with a descriptive or generic names forming part of a mark.
11.4. The descriptive words may be direct or indirect. When these words are used as adjectives, then there would not be any difficulty. However, when a claim is made to its exclusivity, the principle governing generic words would govern them. Therefore, as in the case of generic words, the principle governing fancy or arbitrary words would govern the distinctive words also.
12. Common field activity:-In such a situation, the plaintiff takes a risk in having a descriptive or generic name. This is because, he is quite aware of the nature of the word. That is the reason why, the burden of proof becomes heavier on the plaintiff. There is always acceptable risk of confusion when making a decision to register a descriptive or generic word. The Court has to exercise its discretion on proper analysis keeping in mind the conduct of the parties, the nature of business, the likelihood of the injury and a possibility of unfair monopoly over words. These concepts are applicable for both the cases of passing off and infringement. In such a case, the common field activity would become relevant. However, a plaintiff in a suit for passing off has to prove likelihood of confusion among the common customers of the parties as against the existence of a common field of activity. See HARRODS LTD. V. HARRODIAN SCHOOL LTD ((1996) RPC 697). Thus what is relevant is the 'common customer'. Thus, while dealing with the generic or descriptive word and its protection as a mark, the question as to whether the defendant is doing the same business as that of the plaintiff would be a relevant factor though the confusion may be actual or likely.
13. Case on hand:-
13.1. Keeping all the above principles in mind, now let us see the facts of the case.
13.2. The applicant is admittedly doing the business in the different field than the respondent. There is no remote connection between them qua their respective businesses. The registration of the applicant is under Classes 29 and 32, though in one case under Class 30. However, a perusal of Class 30 would show that milk or diary products would not come under its purview. The word 'Arokya' is certainly descriptive in nature. It does not even refer to any particular thing. It only means 'Good Health'. Thus, this word is normally used as an adjective. The applicant has not proved its distinctiveness leading to infringement and passing off. The doctrine of dilution would not also get attracted. Except the document No.20, there is no other material to substantiate the case of the applicant on the allegation of sales being effected within the territorial jurisdiction of the Court. The applicant has not established any invasion of its goodwill or reputation especially when the respondent is dealing with the 'Dhall and Maida'.
13.3. The decision in 'BLUE HILL LOGISTICS PRIVATE LTD., VS. ASHOK LEY
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LAND LIMITED AND ANOTHER (2011 (4) CTC 417) as confirmed in ASHOK LEYLAND LIMITED Vs. BLUE HILL LOGISTICS PRIVATE LTD., (2011 (4) CTC 397) does not apply to the case on hand. The common usage is also not available in this case. The applicant has not passed the test when it comes to fanciful or arbitrary words. The word 'Arokya' can be used in any other field. If the case of the applicant is accepted, then the word 'Arokya' cannot be used in whatever trade or business it may be. It would become a right in rem acquired by a mere act of registration. The applicant has taken its own risk in choosing a descriptive word as its mark. It is not, as if, the respondent has committed the act of passing off or infringement of the mark of the applicant. In other words, there is no similarity with reference to the trade dress, package, logo and colour scheme. The reputation of the applicant does not travel beyond its products. Therefore, the submissions raised in this regard are accordingly rejected. 13.4. Coming to the other two contentions raised by the respondent, in view of the above conclusion arrived at, this Court is not going into them at this stage. The question of territorial jurisdiction on the basis of fabrication of the document is a matter for trial. The other submission on Order XXXIX Rule 3 C.P.C., is also not considered as orders are passed on merit. 14. Accordingly, both the applications in A.No.1554 & 1555 of 2016 in C.S.No.854 of 2015 are allowed and consequently, O.A.No.1145 & 1146 of 2015 in C.S.No.854 of 2015 are dismissed. After pronouncing judgment, learned counsel for the applicant submits that the trial may be expedited. 2. Considering the submission made, the respondents/defendants are directed to file written statement.