2014VIAD(Delhi)135,
208(2014)DLT84, MIPR2014(1)336, 2014(58)PTC630(Del)
IN THE HIGH COURT OF DELHI
Decided On: 05.02.2014
Appellants: M/s.
S. Oliver Bernd Freier Gmbh & Co. Kg.
Vs.
Respondent: M/s. Rasul Exports & Anr.
Judges/Coram:
Counsels:
For Appellant/Petitioner/Plaintiff: Mr. S.K. Bansal , Mr.
Ajay Amitabh Suman , Mr. Vikas Khera
and Mr. Santosh Kumar , Advs.
For Respondents/Defendant: Mr. S.
Nanda Kumar and Mr. P. Dhayanand , Advs.
JUDGMENT
1. The present suit has been filed by
the plaintiffs for permanent injunction, restraining infringement, passing off,
rendition of accounts etc. against the defendants. The plaintiff, a company
incorporated in Germany, is engaged in the business of manufacture and trade of
a wide range of fashion and lifestyle products which principally include
clothing and ready-made garments of all kinds and fashion accessory products
like belts, shoes, bags, watches, eyewear products and fragrances and skincare
products (hereinafter referred to as "the said goods and business").
2. It is the case of the plaintiff that
since the year 1975, the plaintiff has been continuously, commercially, openly,
in course of trade, has been using the trademark "s.Oliver", word per
se and labels, which with the passage of time made minor changes in its
artistic features, in respect of clothing and ready-made garments. It is stated
that the word/mark "s.Oliver" forms an essential key and material
part of the plaintiff's trade name and that the plaintiff has built up a
globally valuable trade, business, goodwill and reputation.
3. The plaintiff's trademark
"s.Oliver" (word per se) is registered in India under Trade Mark
Registration No. 522064 in class 25 in relation to articles of clothing included
in class 25 as of 29th December, 1989 and the user claimed is that of 1st
September, 1975. The said trademark has been renewed from time to time.
4. The plaintiff's said trademark is
registered in major countries all over the globe in relation to a wide variety
of goods forming part of the said goods and business and is also pending
registrations in many countries. The plaintiff has adopted the trademark
"s.Oliver" as an essential and material part of its email Id i.e.
info@s.oliver.de and domain name www.s.oliver.de. The plaintiff is the
proprietor of the said trade mark, trade name and domain name under the
statutory law as well as under the common law and claims the said trade mark,
trade name and domain name to be "well known" within the meaning of Section
2(1)(zg) of the Trade Marks Act, 1999 (hereinafter referred to as "the
Act").
5. The said goods and business of the
plaintiff under the said trade mark, trade name and domain name are stated to
have gained global trade and reputation and earned huge sales turnovers. The
plaintiff is also stated to have been regularly and continuously promoting his
said goods and business under his said trade mark and trade name throughout the
world through various means and modes besides also sponsoring various sports
events and tournaments of international repute. It is stated that the plaintiff
has been an active partner and equipper in the National Games of the Special
Olympics of Germany. It is also stated that the plaintiff has been spending
millions of Euros on the publicity and promotion of the said trade mark and
trade name and the goods and business there under.
6. The plaintiff's annual
reports/catalogues demonstrate that the overall turnover volume of the
plaintiff in the year 2001 has more than doubled since 1995 and stood at 615
million Euros. It is stated that there has been a sustained continuous increase
in the sales and business of the plaintiff and that the plaintiff throughout
the world on its own operates more than 35 mega shops, 200 franchise-partner
stores and more than 700 shop-in-shops. Plaintiffs said trade mark, trade name,
domain name enjoys reputation and goodwill world over which extends to India
through various means and modes like print, electronic and internet media.
7. On the other hand, the defendant No.
1 is a sole proprietary concern of defendant No. 2 and the defendants are
engaged in the business of manufacture and trade of clothing, ready-made
garments including shirts and related goods (hereinafter referred to as the
"impugned goods and business"). The defendants are said to have
adopted and using in the course of trade the trade mark "OLIVE" in
relation to the impugned goods and business.
8. It is the case of the plaintiff that
the impugned trade mark "OLIVE" is identical with and/or deceptively
similar to "s.Oliver" trade mark, trade name and domain name of the
plaintiff in each and every aspect. The impugned goods and business of the
defendants are also of same/similar/allied/cognate nature to that of the
plaintiff.
9. It is stated that the defendants by
its impugned adoption and user of the impugned trade mark is violating the
plaintiff's trademark, trade name and domain name and thereby passing off and
enabling others to pass off his goods and business as that of the plaintiff as well
as diluting the plaintiffs' proprietary rights therein. It is stated that
resemblance between the two trade marks is so close that it can occur hardly
except by deliberate imitation. It is averred that the defendants adopted the
impugned trade mark with a view to take advantage and to trade upon the global
goodwill and reputation of the plaintiff's trademark, trade name and domain
name and further with a view to calculate deception and confusion in the
markets and to pass off the impugned goods and business as that of the
plaintiff's. The impugned trade mark is bound to cause confusion and deception
in the normal course of business activities of the plaintiff and defendants.
Both marks are as under:
10. About mid-April 2006, the plaintiff
learnt about the defendant no. 1 and impugned adoption of the impugned trade
mark for the first time from a search obtained from the Trade Mark Office which
revealed that the defendant No. 1 had made an application for registration
thereof in class 25. The plaintiff immediately issued a cease and desist notice
dated 29th April, 2006 to the defendants calling upon them to cease their
impugned adoption and use, however, in the reply dated 27th May 2006, the
defendants refused to do so. Since the defendants are persisting with their
impugned activities despite the cease and desist notice, the plaintiff filed
the present suit.
11. The defendants in their written
statement averred that the Plaintiff has no presence in India either at the
time of applying for registration of the trade mark "s.Oliver" or
now, i.e. at the time of filing the suit. It is stated that the documents filed
by the plaintiff list out list of stores and licensees in various countries,
but none has been listed in India.
12. It has been stated that prima facie,
there is no deceptive or phonetic similarity and therefore, there is no
possibility of confusion between the two Trademarks, since while the
plaintiff's mark "s.Oliver" is a personal name characterized by an
initial, the defendants' mark "OLIVE" is the name of a common fruit
tree. Even the Trade Mark Registry did not consider these marks identical as
the Examination Report from the Registry did not cite the Plaintiffs' mark as a
bar to registration of the defendants mark. The defendants stated that they had
no knowledge of the use of the plaintiff mark in India and mere
advertisement/registration in the Trade Mark Journal is not sufficient to
protect the mark in India, but the actual user is necessary. It is averred that
the user claimed by the plaintiff for use in India is completely false.
13. It has been stated that the
plaintiff has not even filed the Certificate of Registration of their trade
mark on record, which would to some extent establish their title. It has been
also stated that the plaintiff has not been using the mark in India since the application
for registration of their trade mark in India filed by the plaintiff in
December, 1989 was filed in the name of the plaintiff in Germany and the name
of their Trade Mark Agent in India was furnished as the address for
correspondence at the Trade Mark Registry which shows that plaintiff did not
indicate the place of its business in India. Otherwise also, though the user
claimed by the plaintiff in India is since 1975, the application for
registration in India was filed in 1989, a full thirteen years after the
plaintiff was purportedly using the mark in India.
14. It is the case of the defendants
that both the marks are different and since the plaintiff has a website, there
can be no confusion or deception as only the educated people access the Internet
and that the educated people clearly know the difference between the personal
name and the name of a fruit bearing tree and further more the letter
"s" which occurs prior to the mark "Oliver" is clearly the
distinguishing factor to rule out the deception/confusion between the two
marks.
15. The defendants have denied the fact
that the plaintiff's mark is a well known trade mark and also averred that the
sale figures furnished by the plaintiff is for the turnover globally and is
restricted to period between 1999 and 2002 and no figures have been mentioned
for the period prior to 1999, furthermore, these figures do not reflect any
sale in India. It is stated that when the plaintiff claims that they are a huge
multinational company with sales figures running into millions of Euros, then
it is surprising that the plaintiff does not have separate audited reports for
sale in India. Further, neither any export to India is listed in the list of
countries to which goods are exported which is furnished by the plaintiff nor
is India mentioned in the list of show rooms and licenses all over the world
furnished by the plaintiff.
16. It has been stated that no sales
turnover in India, no advertisement costs in India, no place of business in
India have been furnished by the plaintiff. This goes to prove that the
Plaintiff does not have a presence in India nor are they selling their goods in
India, contrary to their claim. It has also been stated that the plaintiff has
obtained the registration by misleading the Trade Mark Registry and have not
furnished any proof of use of the mark in India since registration and the
defendants are planning to move for Rectification of the Register for removing
the registered trade mark of the plaintiff from the Trade Marks Register.
17. It has been stated that the
defendants have been openly and freely using their mark "OLIVE" since
inception and that there has not been a single instance of confusion or
deception. The defendants further stated that the mark of the plaintiff is neither
invented, nor coined, nor unique nor rare, but the mark is the personal name
and is nowhere even remotely similar to the mark of the defendants. It was
averred that the plaintiffs have not established any of the claims made by them
with regard to their reputation, sales or the fact that the two marks are
deceptively or confusingly similar. Rather also, while the defendants have been
using their mark, the plaintiff has not.
Well Known Trade Mark.
18. It is the case of the plaintiff
before this court that the trade mark "s.Oliver" is a well-known
trade mark within the meaning of Section 2(1)(zg) of the Act. The plaintiff has
filed the copies of the registration certificate, invoices and recognition of
the trade mark in many countries of the world.
19. The aspect of determination of
well-known trade mark has been considered by this Court in some recent cases.
20. In the case of Bloomberg Finance LP
vs. Prafull Saklecha & Ors. MANU/DE/3673/2013 : 2013 (56) PTC 243 (Del), it
was observed in Para 31-44, 48-51 that:
31. As regards infringement, Section 29
of the TM Act 1999 sets out the different situations in which infringement of a
registered mark can result. Section 29 of the TM Act 1999 reads as under:
29. Infringement of registered
trademarks.
(1) A registered trade mark
is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which is
identical with, or deceptively similar to, the trade mark in relation to goods
or services respect of which the trade mark is registered and in such manner as
to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark
is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which
because of-
(a) its identity with the
registered trade mark and the similarity of the goods or services covered by
such registered trade mark; or
(b) its similarity to the
registered trade mark and the identity or similarity of the goods or services
covered by such registered trade mark; or
(c) its identity with the
registered trade mark and the identity of the goods or services covered by such
registered trade mark, is likely to cause confusion on the part of the public,
or which is likely to have an association with the registered trade mark.
(3) In any case falling
under clause (c) of sub-section (2), the court shall presume that it is likely
to cause confusion on the part of the public.
(4) A registered trade mark
is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which-
(a) is identical with or
similar to the registered trade mark; and
(b) is used in relation to
goods or services which are not similar to those for which the trade mark is
registered; and
(c) the registered trade
mark has a reputation in India and the use of the mark without due cause takes
unfair advantage of or is detrimental to, the distinctive character or repute
of the registered trade mark.
(5) A registered trade mark
is infringed by a person if he uses such registered trade mark, as his trade
name or part of his trade name, or name of his business concern or part of the
name, of his business concern dealing in goods or services in respect of which
the trade mark is registered.
(6) For the purposes of
this section, a person uses a registered mark, if, in particular, he-
(a) affixes it to goods or
the packaging thereof;
(b) offers or exposes goods
for sale, puts them on the market, or stocks them for those purposes under the
registered trade mark, or offers or supplies services under the registered
trade mark;
(c) imports or exports
goods under the mark; or
(d) uses the registered trademark
on business papers or in advertising.
(7) A registered trade mark
is infringed by a person who applies such registered trade mark to a material
intended to be used for labelling or packaging goods, as a business paper, or
for advertising goods or services, provided such person, when he applied the
mark, knew or had reason to believe that the application of the mark was not
duly authorised by the proprietor or a licensee.
(8) A registered trade mark
is infringed by any advertising of that trade mark if such advertising-
(a) takes unfair advantage
of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its
distinctive character; or
(c) is against the
reputation of the trade mark.
(9) Where the distinctive elements
of a registered trade mark consist of or include words, the trade mark may be
infringed by the spoken use of those words as well as by their visual
representation and reference in this section to the use of a mark shall be
construed accordingly.
32. Section 29 of the TM Act
contemplates the owner/proprietor of the registered trade mark alleging
infringement of the said mark by another person who is neither a registered
proprietor in relation to the goods and services for which the mark is
registered, nor has permission to use such mark in the course of his trade.
Under Section 29(1) infringement results if the mark is "identical with or
deceptively similar to" the registered trade mark and is in relation to
the goods and services for which the trademark has been registered. The use of
infringing or impugned mark must render it "likely to be taken as being
used as a trade mark".
33. Under Section 29(2)(a) infringement
occurs where the impugned mark is identical with the registered trademark and
the goods or service for which the impugned mark is being used is similar to
the goods and services covered by the registered mark. Under Section 29(2)(b)
infringement occurs where the impugned mark is similar to the registered mark
and the goods and the services for which is used is identical with or similar
to the goods and services for which the registered mark is used. Under Section
29(2)(c) infringement occurs where the impugned trade mark is identical to the
registered trade mark and the goods or services for which the impugned mark is
used is also identical to the goods/services covered by the registered trade
mark.
34. An additional requirement in the
above three situations for infringement to result is that the use of the
impugned trademark "is likely to cause confusion on the part of the
public" or "is likely to have an association with the registered
trade mark". Under Section 29(3) when the impugned trademark is identical
to the registered trademark and the goods/services for which it is used are
also identical to the goods or services for which the registration has been
granted then "the Court shall presume that it is likely to cause confusion
on the part of the public".
35. Therefore, under Section 29(1), (2)
and (3) for infringement to result (i) the impugned mark has to be either
similar to or identical with the registered mark and (ii) the goods or services
for which the impugned mark is sued has to also either be identical with or
similar to the goods or services for which registration has been granted. The
scenario is different as regards Section 29(4) of the TM Act 1999. For
infringement to result under Section 29(4), the following conditions are
required to be fulfilled:
(i) the person using the
impugned mark is neither a registered proprietor in relation to the goods and
services for which the mark is registered nor is using it by way of permitted
use
(ii) the impugned mark must
be used in the course of trade
(ii) the impugned mark has
to be either similar to or identical with the registered mark
(iii) the impugned mark is
used for goods or services different from those for which registration has been
granted;
(iv) the registered trade
mark has a reputation in India;
(iv) the use of the
impugned mark is without due cause, and takes unfair advantage of or is
detrimental to,
(a) the distinctive
character of the registered trade mark; or
(b) the reputation of the
registered trade mark.
36. The expression 'mark' has been
defined in Section 2(m) of the TM Act to include "a device brand, heading,
label, ticket, name, signature, word, letter, numeral, shape of goods,
packaging or combination of colours or any combination there of."(emphasis
supplied) Therefore, for the purpose of Section 29(4), the use of a mark as
part of a corporate name would also attract infringement. In other word's, if
the registered mark is used by a person, who is not the registered proprietor
of such mark or a permitted user, as part of the corporate name under which he
trades then also infringement would also result. What is however important is
that the registered trade mark must be shown to have a reputation in India and
should be shown to have been used by the infringer 'without due cause".
Further, it should be shown that such adoption or use has resulted in the
infringer taking unfair advantage of the registered mark or is detrimental to
the distinctive character or repute of the registered trade mark.
37. Section 29(4) is also distinct from
Section 29(1) to (3) of the TM Act in another important aspect. The element of
having to demonstrate the likelihood of confusion is absent. Perhaps to balance
out this element, the legislature has mandated the necessity of showing that
(a) the mark has a reputation in India (b) that the mark has a distinctive
character (c) the use by the infringer is without due cause. In other words,
the legislative intent is to afford a stronger protection to a mark that has a
reputation without the registered proprietor of such mark having to demonstrate
the likelihood of confusion arising from the use of an identical or similar
mark in relation to dissimilar goods and services. The words 'detriment' in the
context of the 'distinctive character' of the mark brings in the concept of
'dilution' and 'blurring'. In the context of 'repute' they are also relatable
to the concept of 'tarnishment' and 'degradation'. The words "takes
'unfair advantage" refers to 'free-riding' on the goodwill attached to mark
which enjoys a reputation. The disjunctive 'or' between the words 'distinctive
character' and 'repute' is designedly inserted to cater to a situation where a
mark may not have a distinctive character and yet may have a reputation.
38. Section 2(zg) of the TM Act defines
a 'well known trade mark' in relation to any goods or services to mean 'a mark
which has become so to the substantial segment of the public which uses such
goods or receives such services that the use of such mark in relation to other
goods or service would be likely to be taken as indicating a connection in the
course of trade or rendering of services between those goods or services and a
person using the mark in relation to the first-mentioned goods or services.'
Under Section 11(9)(i) and (v), for the purposes of registration of a
well-known mark it is not necessary for such mark to have been used in India or
be well-known to the public at large in India. It must be well known to a
substantial segment of the relevant public.
39. It may not be necessary for the
proprietor of a registered mark to show that it is a 'well-known trademark' as
defined in Section 2(zg) although if in fact it is, it makes it easier to
satisfy the 'reputation' requirement of Section 29(4) of the TM Act. The presumption
of distinctiveness attached to a registered mark is a rebuttable one. At the
interim stage, either of these elements should be shown prima facie to exist.
Whether in fact these elements are satisfied would depend on the evidence led
by the parties at trial.
40. It may be noticed at this stage that
even prior to the TM Act 1999 the Supreme Court in N.R. Dongre v. Whirlpool
Corporation MANU/SC/1223/1996 : 1996 PTC (16) recognised the concept of
cross-border reputation when it upheld the decision of the Division Bench of
this Court which granted a temporary injunction in favour of a Plaintiff based
abroad. The Division Bench of this Court followed the decision in Apple
Computer Inc. vs. Apple Leasing & Industries MANU/DE/0919/1991 : 1992 (1)
ALR 93, and held that it was not necessary to insist that a particular
plaintiff must carry on business in a jurisdiction before improper use of its
name or mark can be restrained by the court. The main consideration was
"the likelihood of confusion and consequential injury to the plaintiff and
the need to protect the public from deception. Where such confusion is prima
facie shown to exist, protection should be given by courts to the name or
mark".
41. Turning to Section 29(5) of the TM
Act 1999, it is seen that it relates to a situation where (i) the infringer
uses the registered trademark "as his trade name or part of his trade
name, or name of his business concern or part of the name, of his business
concern" and (ii) the business concern or trade is in the same goods or
services in respect of which the trade mark is registered. If the
owner/proprietor of the registered trade mark is able to show that both the
above elements exist then an injunction restraining order the infringer should
straightway follow. This is in the nature of a per se or a 'no-fault' provision
which offers a higher degree of protection where both the above elements are
shown to exist. For the purpose of Section 29(5) of the TM Act 1999, there is
no requirement to show that the mark has a distinctive character or that any
confusion is likely to result from the use by the infringer of the registered
mark as part of its trade name or name of the business concern.
42. However, in a situation where the
first element is present and not the second then obviously the requirement of
Section 29(5) is not fulfilled. The question is whether in such a situation the
owner or proprietor of the registered trade mark is precluded from seeking a
remedy under Section 29(4) of TM Act, 1999 if the conditions attached to
Section 29(4) are fulfilled.
43. In the considered view of this
Court, given the object and purpose of Section 29(1) to (4), Section 29(5)
cannot be intended to be exhaustive of all situations of uses of the registered
mark as part of the corporate name. Section 29(5) cannot be said to render
Section 29(4) of the TM Act, 1999 otiose. In other words, the legislature may
not be said to have intended not to provide a remedy where the registered trade
mark is used as part of the corporate name but the business of the infringer is
in goods or services other than those for which the mark is registered.
44. The Statement of Objects and Reasons
of the TM Act 1999 explain that sub-section (5) of Section 29 "seeks to
prevent a person from adopting someone else's trade mark as part of that
person's trade name or business name by explicitly providing that such action
shall also constitute an infringement under this Act. This provision will bring
this clause in harmony with the proposed amendments to Sections 20 and 22 of
the Companies Act, 1956." Sections 20 and 22 of the CA have been amended
to provide that where the name of a company resembles a registered trade mark,
then the registration of the company in that name can be refused. The ROC is
expected to gather information from the TM Registry. Under Section 22(5) of the
CA, the owner of the registered trade mark can apply to have the name of a
company that is purportedly infringing the mark cancelled. All of this only
strengthens the conclusion that where Section 29(5) offers a high degree of
protection where both the elements envisaged in that provision exist, it is not
meant to preclude the owner of a registered mark remediless when only the first
and not the second element exists."
48. In Mahendra & Mahendra Paper
Mills Limited v. Mahindra & Mahindra Limited MANU/SC/0724/2001 : (2002) 2
SCC 147, the case before the Supreme Court pertained to the grant of an
injunction against the Defendant using, in any manner, as a part of its
corporate name or trading style the words Mahindra & Mahindra or any
word(s) deceptively similar to Mahindra or and/or Mahindra & Mahindra so as
to pass off or enable others to pass off the business and/or services of the
Defendant as those of the Plaintiffs or as emanating from or affiliated or in
some way connected with Plaintiffs. The Defendant contended that its products
were in no way similar to that of the Plaintiffs and that the business carried
on by it did not overlap with the business of any of the companies enlisted by
the Plaintiffs. The Supreme Court held that by using the Plaintiffs trademark
as a part of its corporate name, the Defendant had committed the fraud of
passing off its business and/or services as that of the Plaintiffs.
49. In Kalpataru Properties Private
Limited v. Kalpataru Hospitality & Facility Management MANU/MH/1024/2011 :
2011 (48) PTC 135 (Bom.), the issue was whether an action in passing off was
maintainable where the Plaintiff's registered mark was used as part of the
Defendant's corporate name and the goods and services dealt with by the parties
were in different classes. Following Mahendra and Mahendra, the Court held that
a passing off action was maintainable in the case of a well known mark even if
the goods and services being dealt with by the parties are not similar.
50. Recently, in Red Hat Inc. v. Mr.
Hemant Gupta MANU/DE/3112/2012 : 2013 1 AD (Del) 130, this Court, while dealing
with a case which involved the use of a registered trademark as part of its
corporate name by the Defendant, held that the Plaintiff could seek a remedy
for an infringement under Section 29(4) as well as Section 29(5) of the TM Act
1999.
51. The legal position emerging as a
result of the above discussion may be summarised as under:
(a) Section 29(5) of the TM
Act 1999 relates to a situation where (i) the infringer uses the registered
trademark "as his trade name or part of his trade name, or name of his
business concern or part of the name, of his business concern" and (ii)
the business concern or trade is in the same goods or services in respect of
which the trade mark is registered.
(b) This is in the nature
of a per se or a 'no-fault' provision which offers a higher degree of
protection where both the above elements are shown to exist. If the
owner/proprietor of the registered trade mark is able to show that both the
above elements exist then an injunction order restraining order the infringer
should straightway follow. For the purpose of Section 29(5) of the TM Act 1999
there is no requirement to show that the mark has a distinctive character or
that any confusion is likely to result from the use by the infringer of the registered
mark as part of its trade name or name of the business concern.
(c) However, in a situation
where the first element is present and not the second then obviously the
requirement of Section 29(5) is not fulfilled. Where the registered trade mark
is used as part of the corporate name but the business of the infringer is in
goods or services other than those for which the mark is registered, the owner
or proprietor of the registered trade mark is not precluded from seeking a
remedy under Section 29(4) of TM Act 1999 if the conditions attached to Section
29(4) are fulfilled.
(d) Given the object and
purpose of Section 29(1) to (4), Section 29(5) cannot be intended to be
exhaustive of all situations of uses of the registered mark as part of the
corporate name. Section 29(5) cannot be said to render Section 29(4) otiose.
The purpose of Section 29(5) was to offer a better protection and not to shut
the door of Section 29(4) to a registered proprietor who is able to show that
the registered mark enjoying a reputation in India has been used by the
infringer as part of his corporate name but his business is in goods and
services other than that for which the mark has been registered.
(e) A passing off action is
maintainable in the case of a well known mark even if the goods and services
being dealt with by the parties are not similar.
21. In another matter of Rolex Sa vs.
Alex Jewellery Pvt. Ltd. and Ors. MANU/DE/0796/2009 : 2009 (41) PTC 284 (Del),
it was observed as under:
15. Section 2(4)(c) defines a well known
trademark as the one which in relation to any goods, means a mark which has
become so to the substantial segment of the public which uses such goods that
the use of such mark in relation to other goods would be likely to be taken as
indicating a connection in the course of trade between those goods and a person
using the mark in relation to the first mentioned goods. In my view the segment
of the public which uses the watches of the category/price range as the watches
of the plaintiff, ROLEX is a well known trademark. The said segment of the
public if comes across jewellery/artificial jewellery also bearing the
trademark ROLEX is likely to believe that the said jewellery has a connection
to the plaintiff.
16. Yet another provision in the Act,
though for the guidance of the Registrar but in relation to well known
trademarks is to be found in Section 11(6) of the Act. Upon testing the
trademark of the plaintiff on the touchstone of the ingredients of the said
provision also, I find the said trademark of the plaintiff to be satisfying the
test of a well known trademark. The documents filed by the plaintiff i.e., the
advertising done in the media in India since 1947 and particularly in years
immediately preceding the suit, registrations obtained show that relevant
section of the public in India had knowledge of the trademark ROLEX in relation
to the watches. The pleadings of the plaintiff and which are not contested also
show that the plaintiff for the last nearly one century has been using the said
trademark spread over nearly the entire developed/developing world. The
advertisements of the plaintiff had appeared in the magazines in this country
even when there were import restrictions. The plaintiff has filed documents to
show registration of the trademark in a large number of countries and also to
show successful enforcement of its rights with respect to the said
trademark."
20. Over the years and very quickly in
recent times, the international boundaries are disappearing. With the advent of
the internet in the last over ten years it cannot now be said that a trademark
which is very well known elsewhere would not be well known here. The test of a
well known trademark in Section 2(zg) is qua the segment of the public which
uses such goods. In my view any one in India, into buying expensive watches,
knows of ROLEX watches and ROLEX has a reputation in India. Not only so, to
satisfy the needs/demands of consumers in different countries, the well known
international brands which were earlier available at prices equivalent to
prices in country of origin and which owing to the exchange rate conversion
were very high, have adapted to the Indian situation and lowered prices. A
large number have set up manufacturing facilities here and taken out several
variants. Thus, merely because today the price of a ROLEX watch may be much
higher than the price of items of jewellery of the defendants as argued, cannot
come in the way of the consumer still believing that the jewellery is from the
house of the plaintiff. Also, there can be no ceiling to the price at which the
defendants will continue to sell their jewellery. The defendants have claimed
to be selling rolled gold jewellery; with the price of gold soaring, there is
no certainty that the pieces of artificial jewellery of the defendants would
not also be in the same range as the watches of the plaintiff. Even otherwise,
the trend in modern times has been towards artificial/semi precious jewellery.
In fact, the attraction to gold is confined to this part of the world only. In
India also today there are several brands of artificial jewellery/semi precious
jewellery whose brand value and/or prices are quite comparable to the gold
jewellery of the conventional gold smiths.
24. The goods of the plaintiff may lose
their sheen to the strata of the society for which they are intended if such
strata finds the goods in the same brand name even though not from the house of
the plaintiff being available for a much lower price. The goods of the
plaintiff would then cease to be a status symbol or a fashion statement.
Undoubtedly, the same would be to the detriment of the plaintiff. Having found
a prima facie case in favour of the plaintiff and irreparable injury to be
caused to the plaintiff by allowing the defendant to continue using the trademark,
I also find the element of balance of convenience to be satisfied in the
present case. The registration of the mark of the plaintiff is over 90 years
prior to the claimed commencement of the use by the defendant. Even if the
defendant, at the time of commencing the use, did not know of the inherent risk
in adopting the well known trade mark, the defendant, at least, immediately on
applying for registration and on opposition being filed by the plaintiff became
aware of the perils in such use. Thus, use by the defendant of the mark is for
short time only and use during the period of opposition is of no avail. The
mark has got no relation to the jewellery being marketed by the defendants.
Unless the defendant is deriving any advantage of the goodwill/brand value of
the plaintiff and which it is not entitled to, it ought not to make any
difference in the business of the defendants if the said jewellery is sold
under a mark other than ROLEX.
Infringement of Trade Mark
22. Admitted facts are that the
plaintiff is a registered proprietor of trademark "s.Oliver" in India
and the earliest registration is under No. 522064 in Class 25 dated 29th
December, 1989. The said trademark is also registered in various other classes
i.e. 3, 6, 9, 14, 18, 20, 24, 25, 26 and 28 and the same trade mark is also
registered in various countries as per details mentioned in para 13 of the
plaint.
23. The defendants have adopted the
trademark "OLIVE" in relation to the readymade garments. As per the
plaintiff, it came to know about the defendants' activities in April, 2006 when
the said trademark was advertised in the Trade Marks Journal. Photograph of the
defendants' product has also been filed. The defendants have filed documents
claiming manufacturing of the said goods of M/s. Hyatt Clothing Company. The
plaintiff's separate suit against M/s. Hyatt Clothing Company in the District
Court, Delhi has already been decreed.
24. By virtue of registration of
trademark "s.Oliver", the plaintiff has exclusive rights to use the
same. The use of identical or deceptively similar mark(s) in relation to goods
in which the plaintiff's trademark is registered amounts to infringement of
trademark under Section 28 and 29 of the Act. Admittedly the plaintiff is the
prior user, adopter and registered proprietor of the trademark
"s.Oliver".
25. The defendants have not disputed the
fact that the plaintiff is the owner of registered trade mark
"s.Oliver" and the same is being used in relation to the readymade
garments of all kinds. The said trade mark is not only registered in India but
in various countries of the world. It is a well-known trade mark. The products
of the plaintiff in respect of clothing and readymade garments are available in
India. The plaintiff is the prior user of the said trade mark. The plaintiff
has also the registered domain name in its favour i.e. www.s.oliver.de. The
said trade mark is also essential and dominant part of its corporate name. The
defendants have also not disputed that the defendants are using the trade mark
"OLIVE" in relation to the business of ready-made garments and
clothing. The customers and markets of two products are the same. The question
before this court is as to whether two trademarks are identical or deceptively
similar or not in order to prove the case of the infringement of trade mark and
passing off.
26. Being the registered proprietor,
exclusive rights are conferred in favour of the plaintiff in relation to the
goods in respect of which the trade mark is registered, who can obtain relief
in respect of infringement of the trade mark. The registration of the plaintiff
is to be taken as prima facie evidence of validity under Section 31 of the Act
and the registration even otherwise is conclusive after the expiry of seven
years.
Test of Infringement
27. In order to establish infringement,
the main ingredients of Section 29 are that the plaintiff's mark must be
registered under the Act, the defendants mark is identical with or deceptively
similar to the registered trade mark, the defendants use of the mark is in the
course of trade in respect of the goods covered by the registered trade mark.
The rival marks are to be compared as a whole. Where two rival marks are
identical, it is not necessary for the plaintiff to prove further that the use
of defendant's trade mark is likely to deceive and cause confusion as the
registration shows the title of the registered proprietor and the things speak
for themselves. In an infringement action, once a mark is used as indicating
commercial origin by the defendant, no amount of added matter intended to show
the true origin of the goods can effect the question. If court finds that the
defendant's mark is closely, visually and phonetically similar, even then no
further proof is necessary. It is not necessary for the plaintiff to adduce
evidence of actual deception in order to prove the case of infringement. If
packing of two products is different in an action of infringement, the same is
immaterial. Its validity cannot be challenged in the infringement proceedings
under the Trade and Merchandise Marks Act, 1958. (See Corn Products Refining
Co. v. Shangrila Food Products Ltd. MANU/SC/0115/1959 : 1960 SC 142, Amritdhara
Pharmacy Vs. Satya Deo Gupta, MANU/SC/0256/1962 : AIR 1963 SC 449 (V 50 C 63)
and Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories,
MANU/SC/0197/1964 : AIR 1965 SC 980, Automatic Electric Limited v. R.K. Dhawan
and Anr. MANU/DE/0412/1994 : 1999 PTC (19) 81 (Del) and S.A.P. Balraj and Ors.
Vs. S.P.V. Nadar and Sons and Another, 1963 Madras page 12).
28. Even if a word forming part of the
mark has come in trade to be used to identify the goods of the owner of the
trade mark, it is an infringement of the mark itself to use that word as the
mark or part of the mark of another trader for which confusion is likely to
result. The likelihood of confusion or deception in such cases is not disproved
by placing the two marks side by side and demonstrating how small is the chance
of error in any customer who places his order for goods with both the marks
clearly before him, for orders are not placed, or are often not placed, under
such conditions. It is more useful to observe that in most persons the eye is
not an accurate recorder of visual detail and that marks are remembered rather
by general impressions or by some significant detail than by any photographic
recollection of the whole. In the decision reported as De Cordova v. Vick
Chemical Co., (1951) 68 RPC 103 at page 105 the
plaintiffs were the proprietors of a label containing the words "Vick's VapoRub"
as the essential feature, registered in Jamaica, and the defendants used a
similar label with the words "Karsote Vapour Rub" as the essential
feature, and it was shown that the expression "VapoRub" had become
distinctive of the plaintiff's goods in Jamaica, an action for infringement was
successful. (See De Cordova v. Vick Chemical Co. (supra), Saville Perfumery Ld.
v. June Perfect Ld., (1941) 58 RPC 147 , M/s. National
Chemicals and Colour Co. and Others v. Reckitt and Colman of India Limited,
MANU/SC/0412/1972 : AIR 1972 SC 1359 at 1362 and M/s. National Chemicals and
Colour Co. and others vs. Reckitt and Colman of India Limited and Another,
MANU/MH/0016/1991 : AIR 1991 Bom 76).
29. The issue of essential features of
the trade marks has been discussed in details in the case of Kaviraj Pandit
Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories (supra):-
In an action for
infringement, the plaintiff must, no doubt, make out that the use of the
defendant's mark is likely to deceive, but where the similarity between the
plaintiff's and the defendant's mark is so close either visually, phonetically
or otherwise and the court reaches the conclusion that there is an imitation,
no further evidence is required to establish that the plaintiff's rights are
violated. Expressed in another way, if the essential features of the trade mark
of the plaintiff have been adopted by the defendant, the fact that the get-up,
packing and other writing or marks on the goods or on the packets in which he
offers his goods for sale show marked differences, or indicate clearly a trade
origin different from that of the registered proprietor of the mark would be
immaterial;......
When once the use by the
defendant of the mark which is claimed to infringe the plaintiff's mark is
shown to be "in the course of trade", the question whether there has
been an infringement is to be decided by comparison of the two marks. Where the
two marks are identical no further questions arise; for then the infringement
is made out....
30. In order to decide as to whether the
defendants' mark is deceptively similar to the mark of the plaintiff, it is
absolutely necessary to refer the test laid down in the judgment of Mr. Justice
Parker in the decision reported as 1906 (23) RPC 774 ,
Pointiest case, wherein it was discussed that:
You must take
the two words. You must judge them, both by their look and by their sound. You
must consider the goods to which they are to be applied. You must consider the
nature and kind of customer who would be likely to buy those goods. In fact,
you must consider all the surrounding circumstances; and you must further
consider what is likely to happen if each of those trademarks is used in a
normal way as a trade mark for the goods of the respective owners of the marks.
If, considering all those circumstances, you come to the conclusion that there
will be a confusion-that is to say, not necessarily that one man will be
injured and the other will gain illicit benefit, but that there will be a
confusion in the mind of the public which will lead to confusion in the
goods-then you may refuse the registration, or rather you must refuse the
registration in that case.
Likelihood of Confusion and
Deception
31. In the decision reported as James
Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd.,
MANU/MH/0063/1951 : AIR 1951 Bom 147, Chagla C.J. and Bhagwati, J.; referring
to the words "likely to deceive or cause confusion" in section 10
of the Trade Marks Act, 1940, observed at page 152 as follows:-
Now in
deciding whether a particular trade mark is likely to deceive or cause
confusion, it is not sufficient merely to compare it with the trade mark which
is already registered and whose proprietor is offering opposition to the
registration of the former trade mark. What is important is to find out what is
the distinguishing or essential feature of the trade mark already registered
and what is the main feature or the main idea underlying that trade mark, and
if it is found that the trade mark whose registration is sought contains the
same distinguishing or essential feature or conveys the same idea, then
ordinarily the Registrar would be right if he came to the conclusion that the
trade mark should not be registered. The real question is as to how a
purchaser, who must be looked upon as an average man of ordinary intelligence,
would react to a particular trade mark, what association he would form by
looking at the trade mark, and in what respect he would connect the trade mark
with the goods which he would be purchasing. It is impossible to accept that a
man looking at a trade mark would take in every single feature of the trade
mark. The question would be, what would he normally retain in his mind after
looking at the trade mark? What would be the salient feature of the trade mark which
in future would lead him to associate the particular goods with that trade
mark?
The decisions referred with
regard to essential features were followed by the Division Bench in the
decision reported as M/s. Atlas Cycle Industries Ltd. Vs. Hind Cycles Limited,
MANU/DE/0198/1972 : ILR 1973 Del 393. The Division Bench has examined the
similar question very thoroughly while dealing with the two rival trademarks
Royal Star and Eastern Star of the parties and has come to the conclusion that
the trade mark adopted and used by the defendant Royal Star is similar to
plaintiff's trade mark Eastern Star.
In the decision reported as
Aristoc v. Rysta, (1945) 65 RPC 62 decided by the
House of Lords, it was held that the comparison of trademarks was a matter of
first impression, but the mark "Rysta" too closely resembled mark
"Aristoc" phonetically and it would be liable to lead to deception
and confusion.
32. Considering the decisions referred
above and facts and circumstances in the present matter, it is very clear that
the trade mark of the plaintiff "s.Oliver" is a well known trade
mark. The defendants' mark "OLIVE" in relation to similar goods is
deceptively similar to the plaintiff's mark "s.Oliver" and use of the
same amounts to infringement of plaintiff's registered trade mark.
Passing off
33. In Erven Warnink B.V. v. J. Townend
& Sons (Hull) Ltd., 1980 RPC 31 , Lord Diplock
stated the essential characteristics of a passing off action as under:
(1)
misrepresentation, (2) made by a person in the course of trade, (3) to
prospective customers of his or ultimate consumers of goods or services
supplied by him (4) which is calculated to injure the business or goodwill of
another trader (in the sense that this is a reasonably foreseeable consequence
and (5) which causes actual damage to a business or goodwill of the trader by
whom the action is brought or (in a quia timet action) will probably do so.
34. The Supreme Court in the case of
Laxmikant Patel vs. Chetanbhai Shah, reported in MANU/SC/0763/2001 : (2002) 3
SCC 65, the relevant para 10 has held as under:-
The law does
not permit any one to carry on his business in such a way as would persuade the
customers or clients in believing that his goods or services belonging to
someone else are his or are associated therewith. It does not matter whether
the latter person does so fraudulently or otherwise. The reasons are two.
Firstly, honesty and fair play are, and ought to be, the basic policies in the
world of business. Secondly, when a person adopts or intends to adopt a name in
connection with his business or services which already belongs to someone else
it results in confusion and has propensity of diverting the customers and
clients of someone else to himself and thereby resulting in injury.
In this case, the Apex
Court further observed that:
Where there
is probability of confusion in business, an injunction will be granted even
though the defendants adopted the name innocently.
35. The Division Bench of this Court in
the case of B.K. Engineering Co. vs. Ubhi Enterprises and Anr., reported in
MANU/DE/0404/1984 : 1985 PTC 1 57, has held that:
Trading must
not only be honest but must not even unintentionally be unfair.
36. Lastly the learned counsel for the
defendants has argued that there is a delay on the part of the plaintiff in
bringing the action before this Court. However, no cogent evidence has been
filed by the defendants in order to show that the plaintiff was aware about the
use of the defendants. Even otherwise, incase of any delay that happened on the
part of the plaintiff for bringing an action for infringement of trade mark,
the same is not fatal for the purpose of grant of injunction order. It is
pertinent here to mention that the defendants have claimed the user of the
trade mark "OLIVE" in the application for registration of the trade
mark from 1st February, 2001, however, the application for registration was
filed on 1st March, 2004. However also from the record, it appears that the
trade mark "OLIVE" is being used by only the defendants since May, 2004.
No cogent evidence has been produced by the defendants in support of their use
since year 2001 as claimed in the application for registration. The present
suit is filed in the year 2006 and so the delay is of 2 years.
37. Few decisions on the aspect of delay
are referred as under:
a) In the case of Midas
Hygiene Industries Pvt. Ltd. vs. Sudhir Bhatia and Others, MANU/SC/0186/2004 :
2004 28 PTC 121, relevant para-5 of the said judgment is as under:
5. The law on
the subject is well settled. In cases of infringement either of Trade Mark or
of Copyright normally an injunction must follow. Mere delay in bringing action
is not sufficient to defeat grant of injunction in such cases. The grant of
injunction also becomes necessary if it prima facie appears that the adoption
of the Mark was itself dishonest.
b) In the case of Swarn
Singh vs. Usha Industries (India) and Anr., MANU/DE/0366/1985 : AIR 1986 Del
343 (DB) it was held as under:
There is then
the question of delay. Learned counsel for the respondents had urged that the
delay is fatal to the grant of an injunction. We are not so satisfied. A delay
in the matter of seeking an injunction may be aground for refusing an
injunction in certain circumstances. In the present case, we are dealing with a
statutory right based on the provisions of the trade and Merchandise Marks Act,
1958. An exclusive right is granted by the registration to the holder of a
registered trade mark. We do not think statutory rights can be lost by delay.
The effect of a registered mark is so clearly defined in the statute as to be
not capable of being misunderstood. Even if there is some delay, the exclusive
right cannot be lost. The registered mark cannot be reduced to a nullity.....
c) In the case of Hindustan
Pencils Pvt. Ltd. Vs. M/s. India Stationery Products Co., MANU/DE/0383/1989 :
AIR 1990 Delhi 19 it was held as under:
It was
observed by Romer, J. in the matter of an application brought by J.R.
Parkingnon and Co. Ltd., (1946) 63 RPC 171 at page 181
that "in my judgment, the circumstances which attend the adoption of a
trade mark in the first instance are of considerable importance when one comes
to consider whether the use of that mark has or has not been a honest user. If
the user in its inception was tainted it would be difficult in most cases to
purify it subsequently". It was further noted by the learned Judge in that
case that he could not regard the discreditable origin of the user as cleansed
by the subsequent history.
d) In the case of M/s.
Bengal Waterproof Lim. Vs. M/s. Bombay Waterproof Manufacturing Co.,
MANU/SC/0327/1997 : AIR 1997 SC 1398 it was held as under:
20. It is now
well settled that an action for passing off is a common law remedy being an
action in substance of deceit under the Law of Torts. Wherever and whenever
fresh deceitful act is committed the person deceived would naturally have a
fresh cause of action in his favour. Thus every time when a person passes off
his goods as those of another he commits the act of such deceit. Similarly
whenever and wherever a person commits breach of a registered trade mark of
another he commits a recurring act of breach or infringement of such trade mark
giving a recurring and fresh cause of action at each time of such infringement
to the party aggrieved. It is difficult to agree how in such a case when in
historical past earlier suit was disposed of as technically not maintainable in
absence of proper relief, for all times to come in future defendant of such a
suit should be armed with a license to go on committing fresh acts of
infringement and passing off with impunity without being subjected to any legal
action against such future acts.
38. Considering the overall facts and
circumstances of the case, I am of the considered view that the plaintiff has
been able to make out a prima facie strong case for infringement of trade mark
"s.Oliver" as the said trade mark is a well-known trade mark and is
being used by the plaintiff not only in India but in many countries of the world
and the trade mark "OLIVE" of the defendants is deceptively similar
with the trade mark of the plaintiff "s.Oliver" in relation to
similar goods. The plaintiff is the prior user of the trademark. Thus, the
balance of convenience also lies in favour of the plaintiff and against the
defendants. In case the interim order is not passed, the plaintiff will suffer
irreparable loss and injury because using the deceptively similar trade mark by
the defendants would violate the exclusive rights of the plaintiff. Under these
circumstances, the defendants, their servants and agents etc. are restrained
from using the trade mark "OLIVE" in respect of clothing and
ready-made garments including shirts and allied and cognate goods. However,
considering the facts and circumstances of the case and since the defendants
are using the trade mark "OLIVE" for the last many years, the
defendants are granted time up to 31st December, 2014 to dispose of the
existing stock and to change the name/trade mark "OLIVE" to some
other trade mark/mark which may not be either identical with or deceptively
similar to the plaintiff's trade "s.Oliver". The application is
disposed of accordingly.
CS(OS) No. 2035/2006
List on 10th March, 2014.
