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Spaceage Multi Products Pvt. Ltd. v/s Deemark Health Care Pvt. Ltd. & Others

    G.A. No.1091 of 2009 & C.S. No. 113 of 2009

    Decided On, 06 October 2010

    At, High Court of Judicature at Calcutta


    For the Petitioner: -------. For the Respondents: -------.

Judgment Text

Sengupta, J.

The Court: The aforesaid application has been taken out on Notice of Motion for following interlocutory reliefs.

?(a) Injunction restraining the respondents either by himself or through his employees, servants, agents and/or otherwise from infringing the trade marks ?MORNING WALKER? and/or WALKER or any other trade mark containing the mark WALKER by using the trade mark HOME WALKER, being identical and/or deceptively similar with the petitioner?s said trade mark ?MORNING WALKER? and WALKER being annexure ?C?, ?D?, ?E?, ?F?, ?G?, ?H?, ?I? and ?J? in any manner whatsoever;

(b) Injunction restraining the respondents, either by himself or through their agents, servants and assigns from in any way selling and/or offering for sale, dealing distributing or marketing and / or advertising / publishing / telecasting the impugned marks of the respondents being HOME WALKER and/or WALKER which are deceptively similar to that of the petitioner?s Trademark ?MORNING WALKER? and WALKER in any manner whatsoever;

(c) Injunction restraining the respondent, his servants, agents, assigns from infringing any label bearing the artistic work with the marks HOME WALKER and WALKER and/or any label which is deceptively similar to the petitioner?s label being annexure ?C?, ?D?, ?E?, ?F?, ?G?, ?H?, ?I? and ?J? in any manner whatsoever;

(d) Injunction restraining the respondents, their servants, agents and assigns from passing off the goods of the respondent under the trademark ?WALK 10000 STEPS IN 15 MINUTES? as that of the petitioner,

(e) Injunction restraining the respondents from infringing the copyright existing in the literary and artistic work of ?WALK 10000 STEPS IN 15 MINUTES?;

(f) Injunction restraining the respondents from infringing the copyright existing on the literary and artistic work of the labels, pamphlets, brochures, booklets of the petitioner being annexure ?K? hereof;

(g) Injunction restraining the respondents, his servants, agents, assigns from passing off their goods under the Trade Mark WALKER and for ?MORNING WALKER? and/or any label by using and/or publishing any label bearing the artistic work which is deceptively similar to the petitioner?s label being annexure ?C?, ?D?, ?E?, ?F?, ?G?, ?H?, ?I? and ?J?;

(h)Receiver be appointed to take forthwith possession of the dyes, equipments, boards, stocks, materials, documents and all other products and goods from the possession of the respondents bearing the Trademark ?HOME WALKER? and/or ?WALKER? with any suffix and/or prefix and/or any other name phonetically and/or structurally deceptively similar to the petitioner'? said trademark ?WALKER" and/or ?MORNING WALKER? and the trade mark, artistic and literary work ?WALK 10000 STEPS IN 15 MINUTES? in any manner whatsoever;

(i) Ad-interim orders in terms of prayers above;

(j) Costs of and/or incidental to the said proceedings be borne by the respondents;

(k)Such further order and/or orders be passed and directions and/or direction be given as this Hon?ble Court may deem fit and proper.?

It appears from the prayer of the plaint the decree for perpetual injunction in the same terms as it is made in the aforesaid interlocutory reliefs has been prayed for. In addition thereto the mandatory order of injunction has also been prayed for directing the defendants, his agents, servants and men and/or assigns to dispose of all the products manufactured or produced by the defendant bearing the same Trade Mark ?Walker? and ?Home Walker? or any artistic work which is deceptively similar to the original artistic work of the plaintiff and upon such disclosure a direction for destruction of all replicas/formats in the possession and/or control of the defendant and all documents and papers bearing the mark ?Walker? and ?Home Walker? with any mark deceptively similar thereto.

On 24th April 2009 the learned Trial Judge Hon?ble Justice Patheria recording satisfaction of prima facie case, was pleased to pass order of injunction in terms of Prayer (g) of the Notice of Motion as stated above. The said order of injunction was directed to continue till 6th of May 2009 making the said application returnable on 4th May 2009. On that day having found non-appearance of the defendants, in spite of service, Justice Patheria extended the interim order till 21st May 2009 and Mr. Sanjoy Chakroborty learned Advocate was appointed Receiver to make inventory of the products of the respondent and take possession of the pamphlets, brochure, levels and documents of the respondent. It appears that Receiver went to carry out the said order, however, despite direction as above the defendants did not hand over the documents to the Receiver and as such on 15th March 2009 by an order Justice Patheria granted liberty to the plaintiff to publish the order dated 24th May 2009 by advertisement in the newspaper mentioning paragraph 34 of the petition. Then the matter came up for hearing on list of 28th July 2009 the interim order granted earlier was allowed to continue till 30th of October 2009. Thereafter the matter came up for hearing before this Court and the interim order from time to time was extended and till the date of final hearing of this application.

No attempt was made to pray for vacating of the interim order at any stage.

Now the question is whether interim order passed by this Court by earlier order will be confirmed or vacated or any further order is required to be passed.

Under those circumstances the matter was heard. From the petition the short fact can be deduced as narrated hereunder. The petitioner sells the equipment under Trade Mark ?Walker? and/or ?Morning Walker?. This mark was adopted by the plaintiff/petitioner in July 1995 and such mark has no association with the walking. No person can walk from the said machine. Use of the said machine is having great utility in curing ailments like neuro-arthritis for which walking is bad. Therefore, the mark with the words ?Walker? or ?Morning Walker? are not generic terms. The said mark has been registered under Clause 10 of the Trade Mark Rules, 2002 and registration of the said Mark is still valid and subsisting. Being the owner of the registered mark the petitioner has exclusive right over the same. The certificate of registration with the representations of the mark has also been annexed to the petition. Thus the petitioner is owner of copy right which is again duly registered under the Copy Right Act in respect of artistic work ?on person being exercised with machine?. Which is being used by the petitioner as it is also registered bearing Registration No. 75688/2006 dated 16th February 2006. The said original artistic work of the petitioner is unique, having distinct colour and scene and original artistic feature by reason thereof which is exclusively associated with petitioner?s products. The certificate of registration of the Copy Right is also annexed to the petition. The petitioner also claimed the proprietorship of the like device with the word ?morning walker?/ ?walker? and an artistic get up of the said goods of the word mark. Both the said artistic work Morning Walker and like devise specially reregistered under the Copy Right Act and Registration Certificate has been annexed. The petitioner has applied for registration of the said like device under the Trade Marks Act 1999 and such application has been advertised in the Trade Mark journal. The Trade Mark Registrar has also issued ?no-objection certificate? regarding the said Trade Mark, the no objection certificate is also annexed hereto.

In 2006 the petitioner came to know one Partnership firm viz. Dee Mark Health Care whose partner was the Respondent No. 2 was selling products under the Trade Mark ?Walker? and/or ?Home Walker?. The petitioner immediately gave notice asking to desist from using the mark. Despite desist notice the said concern did not pay any heed to the caution issued by the said notice. Hence the petitioner filed an application in the learned City Civil Court in Kolkata in Title Suit No. 50 of 2006 by which an order of injunction was passed. In order to bypass the order of injunction the first defendant has been brought about in existence by the Respondent No. 2 being erstwhile partner of the said firm who has now become promoter/ director of the respondent No. 1. The Respondent No. 2 sold products under the Trade Mark ?Walker? or Home Walker by changing his constitution of business by way of conversion into Private Ltd. Company from the partnership firm. Now the respondents/defendants and each of them have been selling and advertising their products under the trade mark Walker/Home Walker fraudulently till date and distributing the pamphlets and brochure containing same trade mark and the literary and artistic work as that of the petitioner by shifting their place of business and changing the constitution. The respondents have continued to sell their products infringing the trade mark of the petitioner and also the copy right existing in the literary and artistic work of the petitioner and artistic get up of the pamphlets and brochure and the copy right on literary work existing in the contents of the pamphlets and brochure of the petitioner. The said advertisement had been published by the respondents for their products under the trade mark and copy right residing in literary and artistic work of walking 10,000 steps in 15 minutes in electronic and print media and in various journals having large circulation in major cities in the country. Thus respondents have started representing the said similar and/or deceptively similar trade mark and artistic and literary works contained in the mark ?Morning Walker? and the words 10,000 steps per fifteen minutes, which has confused the public at large to believe the said advertisement of the respondents and that the respondents and petitioners are associated with each other.

In the affidavit in opposition following factual defense has been taken. The predecessor in interest of the respondent No. 1 DeeMark Helath Care has been using the Home Walker since 1995. The word ?walker? is a descriptive in nature and generic as it has given the idea that the use of the machine is substitute for walking and the word ?home? has been added by the respondent and the word ?walker? to show that walking can be done at home. The word walking is common to trade and as such the petitioner/plaintiff is not entitled to protection. The respondent No. 2 had filed an application for rectification of the registration of the Trade Mark ?Walker? on the ground as above and further applied for cancellation of the Copy Right Registration. The petitioner can claim no right of the words (person doing exercise with machine or walk 10,000 steps in 15 minutes), which is the net result of using of the product and cannot be considered as like Trade Mark and no monopoly can be claimed over any language. No document prior to 2nd February 2004 has been annexed to the petition to show user of the mark of the petitioner.

Mr. Goutam Chakraborty learned Senior Advocate appearing for the petitioner/plaintiffs submits that in the eye of law there has been no opposition to the statement and averment made in the petition as the affidavit filed herein intending to pass this application cannot be believed at all for the simple reason that Darshan Singh the Respondent No. 2 claiming to be a director has stated on oath that in or about 3rd February 1998 the respondents adopted the said Trade Mark from Deemark Home Walker. Actually the respondent No. 1 being the limited company was incorporated admittedly in the year 2007 as it will appear from the document issued by Registrar of Companies wherein it is mentioned that this company was incorporated on 20th February 2007. Thus it is clear that the respondent No. 2 in the affidavit in opposition has made a patently incorrect statement on oath and as such the affidavit shall be thrown out.

In his legal submission he submits that once the mark has been registered under the Trade Mark Act 1999 the same has to be taken to be prima facie valid and as such the petitioner has exclusive right over the same under the provision of Sections 28 (1) and 31 of the Trade Mark Act, 1999 (hereinafter referred to as the 1999 Act). Admittedly the respondents did not have any registration and they are not entitled to use the said mark ?Walker? and/ or ?Morning Walker? in any manner either using as a pretext or otherwise and the petitioner is entitled to get the statutory protection as provided in the Section 29(1) and (2) of the 1999 Act. The respondent No. 2 filed a suit to bypass the effect of order of injunction. Similar is the situation as far as the copy right of the petitioner is concerned above. Accordingly Mr. Chakraborty submits that the ?Home Walker? or ?Morning Walker? are neither generic nor descriptive terms as it has got nothing to do with the said machine. Hence the exception made out in Section 30 of 1999 Act is not applicable.

He submits on the facts and circumstances of this case when it is established the mark has been registered and so also the copy right and if the mark is not found to be generic word the order of injunction already granted must be confirmed. In support of his contention he has referred to following two decisions: 2002 (241) PTC 441 and 2005 PTC 272.

According to him until and unless the registration of the mark is cancelled no one can infringe the petitioner?s right of ownership of the said Mark and copy right as above.

Mr. Ranjan Bachawat learned Counsel appearing for the defendants pointing out the factual aspect stated in the affidavit in opposition, submits that the right mentioned in Sections 28 and 29 of the 1999 Act is subject to other provisions of the said Act namely Section 30.

He contends that while placing Section 30 of the Said Act if a mark which has direct reference to the character of the goods and/or services rendered by it even if it is registered, the use of such mark by any other person not being registered proprietor, will not be infringement of the said mark, and as such use is statutorily protected under the Trade Mark Act, 1999. In the same manner as the prior user of the trade mark and bonafide user one?s name are protected under Sections 34 and 35.

He submits that in this case Home Walker has a direct reference to the character of the goods and services rendered by it and is common to trade. As such the plaintiff is not entitled to any protection under the statute. In support of his submission he has drawn our attention to the following decisions of various High Courts and Supreme Court:

AIR 1998 Del. 126; AIR 1999 Pun & Har. 231; AIR 1998 Mad. 347; 2007(3) CHN 377; 1994 Suppl. 3 SCC 215; (2007) 10 SCC 632 and an unreported judgment of this Court in FMA 590 of 2006 (Gillette India Ltd.)

Thus he prays that interim order passed should be vacated and application should be dismissed.

I have heard the learned counsels and carefully gone through the pleadings. Only question is whether the defendant has been able to make out any case of vacating interim order subsisting or not. The statements and averment made in the affidavit affirmed by one Darshan Singh on 4th December, 2009 so far as it relates to factum of use of the defendants offending mark ?Deemark Home Walker? is in 1995 or in 1998 is concerned cannot be believed as correctly pointed out by Mr. Chakraborty that first defendant came into being in 2007 going by the certificate of incorporation of Registrar of companies. It appears that the erstwhile partnership firm namely Deemark Health Care in which the second defendant was a partner has been converted into private limited company in 2007. The law is well established that a company is a separate juristic entity and it has no connection nor any relation with its Promoter or Director except for running of the same. Hence such statement is patently incorrect and the same is not accepted by the Court. It appears from the records admittedly there has been an order of injunction restraining the second defendant when he was a partner of the erstwhile partnership firm, Deemark Health Care from using for mark ?Walker? and the ?Home Walker? and said order of injunction was valid and subsisting.

It is an admitted position that the plaintiff?s trade mark ?Morning Walker? and ?Walker? are registered similarly the artistic works of picture of a person doing exercise with machine is also registered under the Copyright Act.

The defendant in its trademark has been using the word ?Walker? as a suffix and also has been using the same Logo and the words with an artistic and literary expression which is similar to that of the plaintiff. There is no dispute that the mark of the defendant is not a registered one but they have applied for cancellation or rectification of the registration obtained by the plaintiff/petitioner and such application is still pending. In this context, defence has been taken to justify to retain their mark ?Deemark Home Walker? with the argument that word ?Walker? or ?Morning Walker? is a descriptive in nature and generic. Therefore the defendant is entitled to get protection under Section 30 of 1999 Act. It is settled law that if a mark or any part thereof is a generic term and with descriptive words, the same cannot be monopoly property of any one else. Section 30 read with sub-section 2(a) of the 1999 Act provides that a registered trademark is not infringed where the use in relation to goods and services, indicate kind, quality, quantity, intended purpose for other characteristics of the goods and services. The test is whether the mark has direct reference to the goods and services rendered by it. The dictionary meaning of the word ?Walker? is a person who walks or moves. The machine itself does not move and the character of the machine is to generate vibration. It is not a robot or artificial body which is moving around or walking around, it remains stationary. The walking whether in morning or at any point of time has got effect in the body system and it has got a good and bad results and it depends upon the nature of the health of a particular individual. The machine which is traded with the mark ?Walker? or ?Morning Walker? by the plaintiff once operated and used it gives-forth a vibration and this vibration also has got effect in the body system of the individuals. Thus in my view the character of the machine cannot be said to be a walking and it serves differently with an idea to achieve the same result as it could be done by walking. In my opinion this character of the machine cannot be termed to be a walking so as to describe it a generic term. It is true the word ?walker? or ?morning walker? in combination is common English word but common English words when it used for different purpose it assumes a distinctiveness and it does not remain in the realm of commonness. I thus find difficulty to accept the argument of Mr. Bachawat that mark ?walker? or ?morning walker? is a generic term in this case as such the exception in relation to infringement as mentioned in Section 30 cannot be applied.

When it is established that it is not a generic term and it has got distinctiveness then order of injunction as provided under Section 28 of the 1999 Act is a matter of course. It is settled law that no registered trademark or any portion thereof can be allowed to be infringed either by way of suffix or prefix. In almost identical two cases Court granted injunction reported in (2002) 24 PTC page 448 and 2002 PTC 272. In the text of Carlies Law Trade Mark in 13th Edition paragraph 16.38 it is illustrated as proposition of law which I accept, that when the question arises whether a mark so resembles another mark and is likely to deceive or cause confusion, he should be determined by considering what is the leading characteristics of it. Thus it is clear that a mark is infringed if the essential features or essential particulars of it are taken. Here both the products are same and features, particulars and characteristics are also same therefore the mark with the word ?Walker? with the trade mark of the defendant is certainly confusing and/or will likely to deceive the customer easily.

The decisions cited by Mr. Bachawat reported in 1994 (3) SCC 214 is not helpful as the Supreme Court in that case factually found the word micro is a generic

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and common words and nature and the character of the goods associated with the mark was having corelation. In that case factually Supreme Court found that there has been no similarity of the marks otherwise also. The decision of the learned Single Judge of this Court reported in 2007 (3) CHN 377 where it was found factually by learned Judge that the registration of the mark was a doubtful hence prima facie infringement was not established. In that case even the petitioner failed to prove that they were using the trademark ?City? on any motorbike. In this case the petitioner has been able to make out a case of use and factum of such use also appears in the petition when I look at sale figures from 1999-2000 to 2007-2008 which is progressively increasing. I look at also the expenses incurred on account of advertisement in each and every year which is a considerable amount. Thus factum of use has been amply proved. Unreported judgment in the case of Gillette India Limited is also not appropriate in this case as in that case plaintiff/respondent was found not to have used the trademark for a long time. The judgment of Punjab and Haryana reported in AIR 1999 Punjab & Haryana 231 in our view is absolutely misplaced as it was a case of passing off not of infringement therefore this does not help. The Delhi High Court judgment reported in AIR 1998 Delhi 126 was factually found the mark is a common word as it was associated with the product itself. The medicine ?Live 52? is used in a medicine as a mark and the ?Live 52? is an abbreviated term of liver thus it is descriptive of Liver and is also having co-relation with the product. In view of the aforesaid discussion I think that the defendant has not been able to make out a case of vacating order of injunction I therefore confirm the same and I also direct the Receiver to carry out the earlier direction passed by this Court and this order of injunction will continue so long registration of the mark of the petitioner is not cancelled on the application made by the petitioner. However I make it clear that observation of this matter in this case will not be influencing or binding factor to deal with the case of rectification and/or cancellation of the mark as applied by the defendant.