(Prayer: Appeals filed under Order XXXVI Rule 1 of Original Side Rules read with Clause 15 of Letters Patent against the common order dated 13.06.2011 passed in Application Nos. 918 to 920 of 2010 in C.S. No. 750 of 2010 on the file of this Court.
Prayer: Cross Objections filed under Order 41 Rule 22 CPC read with Clause 15 of Letters Patent against the common order dated 13.06.2011 passed in Application Nos. 919 and 920 of 2010 in C.S. No. 750 of 2010 on the file of this Court)
B. RAJENDRAN, J
1. The defendants in C.S. No. 750 of 2010 are the appellants in these appeals. These appeals are directed against the common order dated 13.06.2011 passed in Application Nos. 919 and 920 of 2010 in C.S. No. 750 of 2010 by the learned Judge. Since the issue involved in all these appeals are inter-connected and identical, they are disposed of by this common judgment.
2. For the sake of convenience, the parties are referred to as per their litigative status in the suit, as plaintiff and defendants.
3. The Plaintiff Chandamama India Limited has filed the suit for the following relief:-
"(a)A Permanent injunction restraining the defendants, jointly and severally, their Directors, Editors, Sub/Assistant Editors, Publishers, Printers, Principal Officers, Staff, men, agents, servants, successors and assigns-in- business, representatives or any person claiming through or under them from in any manner using the mark 'CHANDRABALA' as a trademark or trade name or corporate name or trading style, domain name, or from using any other trade mark, trade/corporatename, that is identical with or deceptively similar to the registered trademark "CHANDAMAMA" of the plaintiff under tradmark registration number 887024 in Class 16 or to market, sell, offer for sale, license, advertise, display or indirectly to deal in any goods and/or services, amounting to infringeement of the plaintiff's said registered trademark.
(b)A Permanent injunction restraining the defendants, jointly and severally, their Directors, Editors, Sub/Assistant Editors, Publishers, Printers, Principal Officers, Staff, men, agents, servants, successors and assigns-in- business, representatives or any person claiming through or under them from in any manner from infringing the plaintiff's copyright in the artistic work of the rabbit mascot or other artistic works in the plaintiff's CHANDAMAMA magazines and from adopting the colour, font, back ground and get up of the plaintiff's artistic work in an identical/deceptively similar fashion amounting to an unlicensed/unauthorised adaptation of the plaintiff's separate copyright in the said artistic works.
(c) A Permanent injunction restraining the defendants, jointly and severally, their Directors, Editors, Sub/Assistant Editors, Publishers, Printers, Principal Officers, Staff, men, agents, servants, successors and assigns-in- business, representatives or any person claiming through or under them from using the mark "CHANDRABALA, the squirrel logo, the trade dress, get up, font or colour combination or any other identical or deceptively similar marks in relation to any goods or services amounting to passing off of the plaintiff's well known mark CHANDAMAMA, the rabbit logo and unique trade dress, get up and colour combination
(d)The defendants be ordered to pay to theplaintiff a sum of Rs.25,50,000/- by way of damages
(e)A preliminary decree be passed in favour of the plaintiff directing the defendants jointly and severally to render a true and faithful account of all profits made by them, using the tradmark "CHANDRABALA" and a final decree be passed in favour of thePlaintiff for the amount of profits thus found to have been made by the defendants, together with interest, after the Defendants have rendered accounts
(f) The defendants jointly and severally be directed to deliver-up to the plaintiff for destruction of all packaging, labels, blocks, dyes, all other printmaterials, stickers, signage, visiting cards, letter heads, catalogues, pamphlets, brochures, all other advertising and promotional material, all stationery, and such other material which are used in relation to the 'CHANDRABALA' trademark/trade name/ corporate name/trading style, and the plaintiff's copy right in the artistic work and for costs.
4. The case of the Plaintiff was that in the year 1947, they have started publishing a magazine with a unique and invented mark titled "CHANDAMAMA" which was started by their predecessors exclusively to entertain and educating the young children to impart them about the rich traditions and cultural values and customs prevailing in India. The Plaintiff launched their edition in Telugu and Tamil in the year 1947 followed by versions in Kannada, Hindi, Malayalam, English and other Indian Regional languages. The Plaintiff also adopted the Rabbit Mascot in their magazine in the year 1960 which had earned great reputation in their trade. According to the plaintiff, their magazine is the oldest and only children's magazine in India to be published in 13 regional languages. Further, right from the inception of the tradename "CHANDAMAMA", their magazines have created a profound and strong impact on the dissemination of knowledge pertaining to India tradition, heritage and culture. The Plaintiff's magazine has become one of the oldest and most respected magazines for children in India. The reputation and goodwill which the plaintiff earned by reason of publication of the magazine with the tradename CHANDAMAMA continued even today. The magazine of the Plaintiff contains many pictures/artworks/drawings/sketches and other artistic works, the copyright which vest solely with the plaintiff. According to the plaintiff, they have also obtained registration of their trademark CHANDAMAMA for their magazines in clause 16 under No. 887024 with effect from 17.11.1999 which is being renewed and the renewal is subsisting as on date. The Plaintiff would contend that they have copyright in the pictures, artworks, drawings and sketches drawn by famous artists for valuable consideration. According to the plaintiff, the first defendant was engaged by them to create artistic works for several years for a valuable consideration. But during August 2009, the first defendant started the magazine titled "CHANDRABALA" with identical title, get up, size, trade name and trading style of the plaintiff's trademark "CHANDAMAMA" which amounts to copyright infringement, passing off the tradename of the plaintiff and which causes confusion and deception amongst the public and trade. The defendants trade style "CHANDABALA" is almost identical with that of the Plaintiff's trade name "CHANDAMAMA". In view of the marks being deceptively similar, the test of confusion and deception for infringement and passing off are the same. Therefore, the Plaintiff has filed the suit for the reliefs mentioned above.
5. The defendants have filed counter affidavit denying the averments in the applications filed by the plaintiff for interloctuary injunction. According to the defendant, the names "CHANDAMAMA" and "CHANDRABALA" were not similar much less deceptively similar to each other. The first defendant was never an employee of the plaintiff but a freelance artist who has drawn/painted pictures and sketches for several children's magazines for over 40 years. The averment of the plaintiff that the first defendant was trained in arts and had worked mostly on children's magazine with the result the idea to start a children's magazine on his own was floated is unsustainable. The name "CHANDRABALA" was chosen as it denotes Bright and Young. The defendants have not copied even a single picture/sketch of the plaintiff in their magazine and therefore the quesiton of copyright infringement does not arise. The plea of trade dress was not sufficiently pleaded by the plaintiff and therefore, the plaintiff is not entitled to grant of interim injunction. Further, the size of the plaintiff's magazine and that of the defendants are different and hence no monopoly can be claimed by the plaintiff. The artistic works depicited in their magazine were all based on mythology, folklore and ancient Indian stories which are traditional. Therefore, the plaintiff cannot claim monopoly on such ideas and the first defendant, being an artist, cannot be refrained from exhibiting his artistic talents. Inasmuch as the plaintiff is unable to show that a particular picture/sketch/drawing has been copied by the defendants, there cannot be a copyright infringeement. The defendants have taken all precautions before adopting the name "CHANDRABALA". The defendants have also obtained approval from the Registrar of Companies and Registrar of Newspapers, who are both statutory authorities and who are bound to scrutinise the application of the defendants vis-a-vis registered and popular trademarks. Further, the Registrar of Trademarks has also given an examination report upon scrutinising the application for trademark in the tradename of "CHANDRABALA" wherein the Plaintiff's tradename "CHANDAMAMA" was not even cited. Therefore, none of the statutory authorities have found prima facie similarity between the two marks. Further, there are several magazines in the market with the trademark "CHANDA" or "CHANDRA" as prefix and that there is no confusion or deception in the minds of the purchasers. The products being magazines and not day to day consumption items, it can safely be held that the customers are able to read atleast the title and that the possibilities of confusion are remote. According to the defendants, even though the plaintiff issued notices to them in August 2009, they did not pursue the matter further. The plaintiff also issued notices during October 2009 and January 2010 without taking any further action. However, aggrieved by the constant threats at the instance of the plaintiff, the defendants have approached the District Court at Ranga Reddy District, Andhra Pradesh and filed O.S.No. 68 of 2010 under Section 142 of the Trademarks Act, 1999. As a counterblast, the plaintiff has filed the present suit and sought for interim injunction against the defendants pending suit.
6. The learned Judge, after notice to the defendants and after hearing both sides found that the plaintiff is the registered proprietor of the trade mark, which is in use for the past 60 years. Further, the plaintiff is also the owner of the copyright in the art work, pictures and sketches drawn in the cover pages and other pages of the magazine "CHANDAMAMA" by artists like the first defendant. Therefore, the learned Judge held that the plaintiff has made out a prima facie case for grant of injunction so as to protect their registered trade mark and the copy right. The learned Judge further held that the likelihood of confusion among the readers is sufficient to grant interim injunction in favour of the plaintiff. Accordingly, by a common order dated 13.06.2011, the learned Judge granted interim injunction as prayed for in Application Nos. 919 and 920 of 2010 in C.S. No. 750 of 2010. Aggrieved by the same, the present Original Side Appeals have been filed by the defendants. The Plaintiffs have also filed Cross Objection Nos. 121 and 122 of 2011 on the ground that there is a overall similarity between the trade dress of the plaintiff and the defendants, but the learned Judge did not grant interim injunction in respect of the relief of trade dress passing off.
7. We have heard the counsel for both sides. Before deciding the rival contentions of the parties, it has to be stated that in so far as O.S.A. No. 192 of 2011 and Cross Objection No. 121 of 2011 are concerned, it was mutually agreed by the parties that the defendants will not utilise the Squirrel Mascot on the left hand side top cover page of their magazine without prejudice to their rights in the suit. The first appellant has also filed an affidavit of undertaking to this effect. Therefore, recording the undertaking given by the first defendant/ first appellant by way of an affidavit, O.S.A. No. 192 of 2011 and Cross Objection No. 121 of 2011 are disposed of accordingly.
8. Before taking into consideration the rival contention of both sides, it is necessary to point out certain admitted facts. (i) Both parties are engaged in publication of magazines, which are exclusively meant for children especially depiciting the epics, culture, heritage and tradition of India as well as stories from all over the world (ii) the first defendant/first appellant herein, as a freelancer, was working for the plaintiff/respondent for drawing sketches and pictures and they have been closely associated for the past 30 years before the first defendant started his own magazine (iii) the first defendant/first appellant was not employed under the plaintiff, but he was only a freelancer. Even as admitted by the defendants/appellants, the first defendant was associated with the plaintiff publishing company as a freelancer for 30 years. The first defendant was not a person employed by the plaintiff company for the purpose of making drawings in the magazine published by the plaintiff's company. Thereafter, the first defendant disassociated with the plaintiff's firm and started publishing his own magazine.
9. With this background, we have to analyse the whole case. The contention of the defendants/appellants is that the magazine, which they have started under the tradename "CHANDRABALA" is not in any way similar to that of the trademark of the plaintiff "CHANDAMAMA" or it can be construed that the words appearing in the tradename of the plaintiff as well as defendants namely "BALA" is similar to that of "MAMA" so as to make the public at large to get confused with both the trade names. As far as similarity of trade marks are concerned, there is another distinctive feature in this case. The trade names "CHANDAMAMA" and 'CHANDRABALA" are totally different in sound and meaning. Furthermore, the use of the word "R" with a specific sound marking would totally make the trade name of the defendants' "CHANDRABALA' phonetically different with that of the trade name of the plaintiff "CHANDAMAMA".
10. The learned counsel for the defendants/appellants would mainly contend that the first defendant was a freelancer working with the plaintiff publishing company for the past more than 30 years and he was engaged in drawing for the books and the art pictures drawn by him were appreciated. But at the same time, it is clearly indicated in their publication under the tradename "CHANDABALA" that at no point of time the defendants utilised the books or arts used by him when he was associated with the plaintiff's company. Therefore, the plaintiff cannot claim that merely because the first defendant/first appellant was associated with them, the defendants/appellants have started the same business. Further, there is no deceptive similarity in the two tradenames at all or these two trade marks/names do not cause confusion in the minds of the purchasers. Even for the argument that there is likelihood of confusion is sufficient, the learned counsel for the defendants/appellants would plead that there is never, ever any confusion in the minds of the purchasers because the tradenames "CHANDAMAMA" and "CHANDRABALA" are totally different. The words "CHANDRA" is different from "CHAND" and the words "MAMA" is different from "BALA". The learned counsel for the defendants/appellants would mainly contend that the word "CHANDA" is utilised in many other magazines and it is not confined to any particular trade. Further, the defendants/appellants is presently publishing their journals only in Telugu and English version, whereas the plaintiff is publishing their magazine "CHANDAMAMA" in more than 12 languages. Further, the defendants/appellants have already registered their company with the tradename "CHANDRABALA' under the provisions of the Companies Act. According to the learned counsel for the defendants/ appellants, Section 20 (2) of the categorically verify the details of the company to be registered and when there is a similar company naturally their trade name would not have been registered. The defendants company with the trade name "CHANDRABALA" was registered with the Registrar of Companies will give more credence and it also prove that there is no confusion between the two trade names. Further, the appellant also obtained registration under the newspaper registration. Therefore, if there is any unique similarities in the trade name "CHANDAMAMA" and "CHANDRABALA" the authorities would not have registered the trade name of the defendants/appellants and the fact that the newspaper was registered would clearly indicate that there is no confusion in the minds of the purchasers or there is no similarity between the two trade names. In so far as trade mark registration is concerned, the learned counsel for the defendants/appellants would contend that the defendants/appellants have also applied for registeration of their tradename "CHANDRABALA" and initial verification has also been done by the registering authorities. So far, the authorities have not even mentioned that the Plaintiff is an potential objector to the defendants registering their trade name. So, the authorities under the Trade mark Registration does not seem to have any inclination to say there is any similarity between the two trade names. Even under the Companies Act, it is now being verified with the trade mark whether there is any similarity pursuant to the amendment in the Trade Mark Act. Therefore, the Trade Mark is also considered by the Authorities under the Companies Act.
11. According to the learned counsel for the defendants/appeollants, the trade name ""CHANDRABALA" denotes bright and young and therefore also it is different with the tradename of the plaintiff "CHANDAMAMA". Even the words "CHANDA" and "CHANDRA" and "MAMA" and "BALA" are totally different with each other. Further, the word "CHANDRABALA" is written in capital letters whereas the word "CHANDAMAMA" is written sometimes in capital letters and sometimes in small letters by the plaintiff/respondent.
12. When we take into consideration the fact whether the similarities or dissimilarities in these two tradenames by the understanding of purchasers of average intelligence and imperfect recollection, we can definitely come to the conclusion that the words "CHANDAMAMA" and "CHANDRABALA" are totally different and even an ordinary person of average intelligence could easily identify the difference between these two trade names. Even the phonetic difference is vast. Therefore, the conclusion arrived at by the learned Judge that there is deceptive similarity in both the trade names, in our considered view, cannot be accepted.
13. On perusal of the definition given to the word "deceptively similar" in Section 2 (h) of the Trade Marks Act, 1999, it is clear that a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. In this regard, the learned counsel for the defendants/appellant relied on the e-mail from blogs to show as to what is the impresson of the people regarding the similarities or dissimilarities between the two trade names "CHANDAMAMA" and "CHANDRABALA" and the resultant opinion is that these two tradenames are totally different. However, at this stage, we are not taking into consideration the same as an evidence and it can be considered only at the time of trial in the suit. But at the same time, when there are totally different phonetical sound with different expression between the two tradenames, definitely, it will not attract the definition given in Sec. 2 (h) of the Trade Marks Act as the tradenames are not deceptively similar to each other or it will cause confusion in the minds of the people.
14. Next, we have to take into account what is the effect of the defendants/ appellants registration in so far as it relates to their magazine. It is pertinent to point out that the defendants/appellants have started their magazine way back in the year 2009. No doubt, a 'cease and desist' notice dated 18.08.2009 was issued by the plaintiffs before instituting the present suit, for which the defendants have given their reply on 23.09.2009 denying the averments contained in the notice dated 08.08.2009 sent on behalf of the plaintiffs. Once again, the plaintiff issued another notice on 22.10.2009, which was also replied to by the defendants on 29.10.2009 which shows that the plaintiff had specifically sought the defendants from infringing their tradename pursuant to the registration of their trade name "CHANDRABALA". In the reply notice, the defendants/appellants have clearly stated that they have no intention to infringe the tradename or trademark of the plaintiff but they would only carry on their trade in the trade name of "CHANDRABALA" which commenced publishing the magazine during August 2009 itself. It is pertinent to point out here that as early as 02.01.2010, the defendants/appellants have filed O.S. No. 58 of 2010 before the Principal District Judge, Ranga Reddy District, Andhra Pradesh for a permanent injunction restraining the plaintiff herein from prohibiting them from carrying on their publication business in the tradename of 'CHANDRABALA". In that suit, the plaintiff was set exparte and an exparte decree was passed. Thereafter, the plaintiff has filed the present suit before this Court. When an exparte decree was passed against the plaintiff in O.S.No. 58 of 2010, without setting aside the same, the plaintiff has filed the present suit which shows the attitude of the plaintiff. In any view of the matter, the plaintiff has not taken any steps from August 2009, the date on which the defendants/appellants started publishing magazine in their tradename "CHANDRABALA" till filing the present suit namely C.S. No. 750 of 2009 on 23.07.2010. The Plaintiff has only now taken steps to set aside the exparte decree passed against them in O.S. No. 58 of 2010 on the file of the Principal District Judge, Ranga Reddy District, Andhra Pradesh and the same is pending till date. The respondent/plaintiff has also not explained why they have not filed the same suit before the District Court itself and has chosen to file the suit before this Court.
15. Now, when we analyse the effect of registration, first, the defendants/appellants have registered their trade name as "CHANDRABALA" publications private limited and the Company has been incorporated as early as on 14.10.2009. Thereafter, the defendants/appellants Company also registered itself with the Registrar of Newspapers in India and the title of the newspaper was given as "CHANDRABALA". That was on 25.11.2009. The defendants/appellants company is also registered under the Press and Registration of Books Act, 1867 on 19.04.2010. The authorities have also made a title search in the name of "CHANDRABALA" and from the annexure to the registration, it is evident that the authorities have found very many names namely "Chandraloka", "Chandramalar", "Chandramani", "Chandraprabha", "Chandrapradesh" and so on. Thereafter, the defendants/appellants also applied for registeration of their trade name with the Trade Mark Registry. In fact, there is a guideline for allotment of title even under the Companies Act. As per the guidelines, the authorities under the Companies Act also should verify under Clause 4 titles as to whether the titles having words same or similar to a Government organisation, foreign government organisation, institutions, prominent titles, trade marks or prominent brands shall not be verified as these may mislead public or exploit/misuse the name of the organisation/ institution and may also violate trademark and copy right Acts. Therefore, the Registrar of Companies also has to verify along with the trademark themselves in tune with the amendment in the Trade Mark Act, 1996. Further, the defendans/appellants have also applied under the tradename "CHANDRABALA" for registration on the basis of which the Registrar of Trade Mark has given a letter dated 10.12.2010 directing that under Section 20 (1) of the Trade Marks Act the trade name of the defendants/appellants shall be advertised in the Trade Mark Journal within thirty days from the receipt of the order, if it is not done, the application shall be deemed to have been abandoned without any further notice. Further, it was stated that the business of the defendants/appellants was classified under Class 16 "Printed matter, publication of children’s stories, periodicals and magazines." It is also evident that the trade mark registry also verified various other similar names to find out whether there are conflicting marks but nothing conflicting was found. A phonetical search report was also issued in which the names such as "Chandra label", "Chandari" "Century", "Chandralekha" etc., alone were mentioned and not the plaintiff's trade name "CHANDAMAMA". Therefore, the authorities under the Trade Mark Act also did not come to a primary conclusion that the trade name of the Plaintiff "Chandamama" is phonetically or deceptively similar with that of the defendants/appellants trade name "CHANDRABALA" and has received any potential objector through out the survey. Of course, it is always open to the plaintiff to make their objection within the stipulated time, but the fact remains that the tradename "CHANDAMAMA" and "CHANDRABALA" did not give a notion that these two names are similar. When the authorities under the Trade Mark Act as well as the Companies Act have made search for identical existing name and have given a clear finding that the trade name "CHANDRABALA" does not come into conflict with any of the similar trade names, much less the tradename of the plaintiff namely "CHANDAMAMA", the plaintiff is not entitled for grant of interim injunction against the defendants and this vital factor has to be taken note of by this Court. Moreover, the defendants/ appellants have been publishing their magazine under the trade name "CHANDRABALA" for more than one year prior to the institution of the present suit by the plaintiff.
16. On facts, in spite of existence of "CHANDAMAMA" as a trade mark, maxazine in the name of "CHANDAMAMA" and also the fact that it is existing all these years, all the three statutory authorities have considered the same under the respective statute and granted permission to the defendants/appellants for using the name "CHANDRABALA" as their trade name. This has to be necessarily taken into account to consider whether the grant of interim injunction in favour of the respondent/plaintiff is sustainable. The respondent/plaintiff has not produced any material to show that there is confusion in the minds of the purchasers of the magazine in the trade names "CHANDAMAMA" and "CHANDRABALA" or there is any likelihood of confusion.
17. Further, under Sec.20 of the Companies Act, the Registrar of Company has to statutorily decide whether the name of the company, which is sought to be incorporated, is similar to the existing companies. Section 20 also provides that the Registrar of Companies has to check whether the proposed company is similar to any registered trade mark/name. On this score also, there is no force in the argument of the learned counsel for the plaintiff/respondent that the Registration under the Companies Act will not have any bearing as they also deal with the trade mark. Similarly, in respect of Registration of Newspaper also, the authorities have to necessarily go into the question of conflict with prominent title magazines etc.,
18. At the stage of deciding the entitlement of the respondent/plaintiff for grant of interim injunction, the Courts should only see whether the plaintiff has made out a prima facie case, the balance of convenience is in their favour or the refusal to grant interim injunction would cause irreparable loss and hardship to the plaintiff. The defendants/appellants is a new company, which has come into existence in the year 2009 and started by the first defendant, who was previously associated with the plaintiff company. Since the first defendant was not an employee of the plaintiff firm and was only a freelancer, there is no embargo for the first defendant to start a company and run a business identical to that of the plaintiff. Merely because the first defendant has started the business of publication of children magazine, the plaintiff cannot complain about similar business started by the defendants/appellants, that too with a distinctively different trade name "CHANDRABALA". When it is clearly established by the defendants/appellants that they are not utilising any of the previous work of the plaintiff and it is also not the case of the plaintiff that the first defendant is utilising the very same picture or sketches, which he had drawn for the plaintiff during the course of his association with their business, prima facie, the plaintiff is not entitled for grant of injunction. When the defendant is carrying on a new business of publishing magazine, of course in a different name than that of the plaintiff, the defendants cannot be prevented from carrying on their business.
19. In considering the balance of convenience and prima facie case, we also take into consideration the delay aspects. The respondent/plaintiff issued the notice in August 2009 for which the defendants/appellants sent their reply in September 2009. Again in October 2009, the respondent/plaintiff issued a notice and thereafter, the defendants/appellants approached the District Court, Renga Reddy District and filed a suit for injunction to restrain the respondent/plaintiff from preventing them from carrying on their trade. Thereafter, the respondent/plaintiff without filing an application for infringement only issued another notice during January 2010. Thereafter, the present suit was filed in July 2010 after filing an application to set aside the exparte decree passed by the District Court, Renga Reddy District in June 2010. Therefore, in this case, the delay will play a vital role in considering the prima facie case in favour of the respondent/plaintiff. From the beginning, the defendants/appellants have been asserting that their trade name is not deceptively similar or in no way connected with the trade name of the respondent/plaintiff. Thereafter, the defendants/appellants have also started publishing the magazine in their trade name "CHANDRABALA" and only ten months thereafter, the respondent/plaintiff filed the present suit before this Court. In that process, the defendants/ appellants have already published their magazine and built up their mark even though the respondent/plaintiff threatened them with legal action but they failed to take any action immediately. Even in the plaint and in the affidavit filed in support of the application for interim injunction, the respondent/plaintiff has not even stated any reason for the inordinate delay in filing the suit. Therefore, definitely, the defendants/appellants have made out a prima facie that if injunction is granted and they are prohibited from carrying on their business, their business activities will come to an end. The balance of convenience lies only in favour of the defendants/appellants. Even if we take into consideration that the trade names are identical, the purchasers of the magazines who are reasonably educated to know as to the difference in the trade names, the test of unwary purchasers with imperfect recollection cannot directly be applied in this case especially when the purchasers, who buy the magazines are well versed with reading. In fact, in this context, the learned counsel for the defendants/ appellants relied on the decision of the Division Bench of this Court reported in (Kaalai Malar Publications Private Limited, rep. By its Director and others vs. Dinamalar, a Partnership Concern having office at No.161, Anna Salai, Chennai, rep. By its Partners R. Venkitapathy and others) 2000 2 MLJ 1 wherein it was held that newspapers are bought by persons of more intelligence not likely to be misled by the colour or imitation of name as purchasers of household articles etc., The purchasers of newspapers would be watchful and they cannot be equated with the persons of imperfect recollection or weak memory. In that decision, the Division Bench relied on the decision of the Honourable Supreme Court reported in Ruston Hornby Ltd., vs. Z. Engineering Co., Limited, AIR 1970 SC 1649 wherein in Para 5 it was held thus:
"5. There is distinction between the infringement action and passing off action. In Ruston Homby Ltd., vs. Z Engineering Co., Limited, AIR 1970 SC 1649, the Apex Court pointed out that in passing off action, the issue, is "is the defendant selling goods so marked as to be designed or or calculated to lead purchasers to believe they are the Plaintiff's goods." The Apex Court has also pointed out that inan infringement action the issue is, "is the defendant using amark which is the same as or which is a colourableimitation of the plaintiff's registered trade mark. When same mark is used the public is deceived in to purchasing the defendants goods in the belief that they are the plaintiff's goods. So a registered trade mark is a casuality. It is the duty of the Court to protect the trade mark. In such a case no further question would arise. In case of similar mark, a duty is cast upon the Court to compare both the marks to find out if the offending marks are deceptively similar to the appellant's mark and to ask the question whether there is likelihood of deception or confusion. In deciding the question, the Judge is the final authority. The Judge must approach the question from thepoint of view of a man of average intelligence and imperfect recollection."
20. Here is a case where the plaintiff and defendants are dealing with magazines published not only in regional language but also in English. But the learned counsel for the respondent/plaintiff would point out that this decision cannot be relied on in the given situation with that of adult buyers as the magazines are mainly purchased by children. This argument of the learned counsel for the respondent/plaintiff cannot be accepted because the magazines are not only purchased by the children but also by the parents for their children. In fact, children are more receptive and they could very easily identify the similarities in the products or goods they buy. Therefore, taking into consideration this aspect, definitely the defendants/appellants are entitled to continue their business in the trade name "CHANDABALA" and they should not be injuncted or restrained from carrying on their business.
21. As far as balance of convenience is concerned, even if the plaintiff is to succeed there, there is always a remedy of compensation in the event of the suit being decreed. Therefore also, the respondent/plaintiff cannot claim the benefit of injunction pending suit.
22. The learned counsel for the respondent/plaintiff relied on the decision of the learned Single Judge of the Delhi High Court reported in (Playboy Enterprises Inc., vs. Bharat Malik and another) 9 (2001) Delhi Law Times 321 for the proposition that registration of newspaper will not enure to the benefit of the defendants/appellants. In Para No.30, it was held thus.
"30. The TMM Act was enacted to provide for the registeration and better protection of trade marks and for the prevention of the use of fraudulent mark by the merchandise. The Fourth Schedule of the TMM Act has adopted the International classification of goods including the kinds of the goods in question. Magazines, periodicals are included in Class 16. Had the PRB Act which too is a special Act had precedence over the TMM Act, the inclusion of magazines, periodicals and other literature in Class 16 would have been omitted as the registration of the name of the periodicals and printed publication is compulsorily registrable under the PRB Act. Thus, the two Legislations should not be confounded and confused. So far as the variation or infringement of the trade mark ormark is concerned, this has to be regulated by the provisions of TMM Act and provisions of the PRB Act are of no relevance."
23. Even in that case, it was clearly stated that when the two legislations namely Trade and merchandise Act and The Press and Registration of Books Act should not be confounded and confused. So far as variation is concerned, it has to be regulated by the provisions of Trade and Merchandise Act. But in this case on hand, it is not only The Press and Registration of Books Act, but also under the provisions of Companies Act in which there is a specific reference as contemplated under Section 20 (1) of the Trade Mark Act is made and thereafter, the trade name of the defendants/appellants has been accepted by the authorities. Further, the defendnats/appellants have also sought to register their mark under the trade name "CHANDRABALA" and the authorities have not considered the respondent/plaintiff as a potential objector for the defendants/appellants to get their trade name registered. Therefore, this decision cited by the learned counsel for the respondent/plaintiff will not be applicable to the facts and circumstance of the case.
24. The learned counsel for the respondent/plaintiff also relied on the decision reported in (Cadila Health Care Limited vs. Cadila Pharmaceuticals Limited) 2001 5 SCC 573 in which para Nos. 35 and 36 cull out the details of the judgment. Relying on this judgment, the learned counsel for the respondent/plaintiff would only contend that the similarity in nature, character and purpose of the goods of the rival traders has to be taken note of and weightage has to be given to each of the above said factors depending upon the facts of each case. This decision relied on by the learned counsel for the respondent/plaintiff do not come to the rescue of the respondent/plaintiff, whereas it only come to the rescue of the defendants/appellants. In para 36 of the judgment, the Honourable Supreme Court held as follows:-
"35. Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered.
(a) The nature of the marks i.e., whether the marks are word marks or label marks or composite marks i.e., both words and label works
(b)The degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c)The nature of the goods in respect of which they are used as trade marks
(d)The similarity in the nature, character and performance of the goods of the rival traders
(e)The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f)The mode of purchasing the goods or placing orders for the goods
(g) Any other surrounding circumstances, which may be relevant in the extent of dissimilarity between the competing marks.
36. Weightage has to be given to each of the aforesaid factors depending upon facts of each case and the same weightage cannot be given to each factor in every case."
25. Therefore, applying the parameters laid down by the Honourable Supreme Court in the decision in Cadila case mentioned supra, definitely the weightage has to be given to the fact that the first defendant/first appellant who was associated as freelancer in the company of the respondent/plaintiff has later started a company in the trade name "CHANDRABALA" and the respondent/plaintiff allowed him to continue even for one year and in that period, the defendants/appellants had established their tradename. Therefore, due weightage has to be given to the defendants/appellant to that degree of resembleness between the marks which are phonetically similar, similar in trade, similarity in the nature, character and purpose of the goods of the rival trader, as held by the Honourable Supreme Court. Therefore, taking into consideration this aspect, definitely, the defendants/appellants are entited to continue their business in their trade name "CHANDRABALA" and they should not be injuncted or restrained from carrying on their business.
26. The learned counsel for the respondent/plaintiff relied on the decision of the Division Bench of the Delhi High Court reported in (B.K. Engineering Company, Delhi vs. U.B.H.I Enterprises (Regd), Ludhiana and another) AIR 1985 Delhi 210 for the proposition that even the actual deception need not be proved and even if it is proved, the respondent/plaintiff is entitled for injunction. That was a case arising out of the use of the name B.K.81 as against the plaintiff's trade name BK. In that case, it was held that the Plaintiff's mark BK was deceptively similar and adopted by the defendant with their mark B.K. 81 thereby they have infringed the trade mark and trade name of the plaintiff's Company which is being used in their trade. It was further held that a line must be drawn somewhere between honest and dishonest trading, between fair and unfair competition. In that case, there was no quarrel with regard to the fact that the trade mark adopted by the defendant as B.K.81 was phonetically and deceptively similar. Whereas, the facts of this case are entirely different and the trade names are totally different with each other and therefore, this decision will not be of any use to the respondent/plaintiff.
27. Lastly, the learned counsel for the respondent/plaintiff relied on the decision of the Supreme Court reported in (Lakshmikant V. Patel vs. Chetanbhai Shah and another) 2002 3 SCC 65 for the proposition that if the discretion has been exercised by the trial Court reasonably and in a judicial manner, the fact that the appellate Court would have taken a different view may not justify. In Para No., it was held as follows:-
"17. We are conscious of the law that this Court would not ordinarily interfere with the exercise of discretion in the matter of grant of temporary injunction by the High Court and the trial Court and substitute its own discretion therefor except where the discretion has beenshown to have been exercised arbitrarily or capriciously or perversely or where the order of the Courts under scrutiny ignores the settled principles of law regulating grant or refusal of interloctuary injunction. An appeal against exercise of discretion is said to be an appeal on principle. The appellate Court will not reassess the material and seek to reach a conclusion different from the one reached by the court below solely on the gro
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und that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial Court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify. Interference with the trial court's exercise of discretion (see Wander Ltd., vs. Antox India (P) Ltd., and N.R. Dongre vs. Whirlpool Corporation). However, the present one is a case falling within the well-accepted exceptions. Neither the trial court nor the High Court have kept in view and applied their mind to the relevant settled principles of law governing the grant or refusal of interloctuary injunction in trade mark and trade name disputes. A refusal to grant an injunction in spite of availability of facts, which are prima facie established by overwhelming evidence and material available on record satisfying the grant thereof, occasion a failure of justice and such injury to the plaintiff as would not be capable of being undone at a later stage. The discretion exercised by the trial court and the High Court against the plaintiff, is neither reasonable nor judicious. The grant of interloctuary injunction to the plaintiff could not have been refused, therefore, it becomes obligatory on the part of this Court to interfere." 28. In the above said Judgment, their Lordships have categorically held as to why there was a need or necessity to interfere at the appellate stage. It was held that neither the trial Court nor the High Court have taken into consideration the relevant facts, settled proposition of law governing the grant or refusal of interim order in trade mark and trade name disputes. It was further held that inspite of availability of evidence, which would prima facie establish by overwhelming evidence and material available on record for grant of injunction, the trial court as well as High Court failed to exercise their discretion in the proper perspective which occasioned failure of justice and such injury to the plaintiff as would not be capable of being undone at a later stage. Under those circumstances, the Honourable Supreme Court interfered and granted interim order. In this case, the plaintiff/respondent has made out no case at all or produced any material to prove the irreparable loss, injury or actual damage or how the trade name of the defendants/appellants had mislead the public at large as against their trade name. In fact, this judgment only helps the defendants/appellants. 29. In so far as cross objection is concerned, it relates to trade dress. It is pertinent to point out here that broad based injunction cannot be granted in respect of magazines in so far as it relates to colour scheme, lay out etc., or copied. As far as trade dress is concerned, there is no clear cut or specific pleadings or evidence at this stage. Further, the size and colour scheme are mostly common to all trade. In this case, there is a different in size as well as colour combination. As far as font is concerned, as rightly pointed out by the learned Judge, fonts are available in all software and there cannot be an injunction restraining a particular person from using a particular font to draw their trade name. Therefore also the argument of the learned counsel for the respondent/ appellant cannot be accepted. 30. The argument of the respondent/plaintiff that the colour scheme of the magazine, colour scheme of the mascot used by the defendants/ appellants in their magazine would definitely lead to confusion. In fact, we ourselves have seen the books. The size of the books differ, the colour combination is not exactly the same. The picture also is not exactly the same. In any event, taking into consideration that the first defendant, who drew the colours in publishing the magazine of the respondent/plaintiff is not using the same in his magazine namely "CHANDRABALA". In any event, we have no hesitation in holding that the learned Judge has correctly rejected the claim of the respondent/plaintiff in relation to trade dress and we do not find any reason to interfere with the same. 31. In the result, the Original Side Appeal Nos. 191 and 193 of 2011 are allowed setting aside the order dated 13.06.2011 passed in Application Nos. 918 and 920 of 2010 in C.S. No. 750 of 2010 and consequently, Cross Objection No.122 of 2011 is dismissed. O.S.A. No. 192 of 2011 and Cross Objection No. 121 of 2011 are disposed of recording the affidavit of undertaking filed by the defendants/appellant. It is made clear that findings or observations, if any, made in these appeals need not be taken into consideration by the learned Judge at the time of disposing the suit on merits. No costs. Consequently, connected miscellaneous petition is closed.