* IN THE HIGH COURT OF DELHI AT NEW DELHI Pronounced on : [SECTION]1.08.[SECTION]009 + I.A. No. 8463/[SECTION]008 and 11439/[SECTION]008 in CS (OS) No. 1365/[SECTION]008 ASIAN PAINTS LTD. Plaintiff Through: Ms. [ENTITY] and Ms. [ENTITY], Advocates versus M/s [ENTITY] & Anr. Defendants Through: Mr. [ENTITY], Advocate CORAM: HON'BLE MR. JUSTICE [ENTITY] 1. Whether the Reporters of local papers Yes may be allowed to see the judgment? [SECTION]. To be referred to Reporter or not? Yes 3. Whether the judgment should be Yes reported in the Digest? S.RAVINDRA BHAT, J.
1. This order will dispose I.A. No. 8463/[SECTION]008 (filed by the plaintiff under Order XXXIX Rules 1 and [SECTION]) and I.A. No. 11439/[SECTION]008 (filed by the first defendant under [SECTION]) in CS (OS) No. 1365/[SECTION]008.
[SECTION]. The brief facts necessary for deciding these applications are that the plaintiff, Asian Plaints Ltd. filed a suit for permanent injunction restraining the defendants from infringing the plaintiff's registered trade mark/logo "ASIAN PAINTS APCOLITE PREMIUM GLOSS ENAMEL" and the copyright in the artwork in the said mark/logo. It is alleged that the defendants have come out with products under I.A. Nos. 8463/[SECTION]008 & 11439/[SECTION]008 Page 1 the marks "GREAT ASIAN PREMIUM GLOSSY ENAMEL", "GREAT ASIAN HI- GLOSS SYNTHETIC ENAMEL" and "SUPER ASIAN PREMIUM SYNTHETIC ENAMEL" which are deceptively similar, in terms of the trade mark/logo, the trade mark and the artwork, to the plaintiff's well known product.
3. The plaintiff submits that it is engaged in the business, inter alia, of manufacturing and marketing paints, varnishes, thinners, stainers, distempers, synthetic enamel and other like goods for decorative as well as industrial use for about five decades under its prominent and well known mark as well as trade name "ASIAN PAINTS"; the mark has been in continuous use since the year 195[SECTION] till date and is exclusively identified with the plaintiff as being distinctive plaintiff's goods and is also a well-known mark under [SECTION] of the [ACT]; thus, the plaintiff claims to have acquired common law rights therein. It is claimed that the plaintiff's group companies operate in [SECTION]0 countries across the world and have manufacturing facilities in each of them. The group operates in five regions across the world viz. South Asia, South East Asia, South Pacific, Middle East and Caribbean Region. As such the plaintiff enjoys extensive international presence.
4. The claimed expenditure on advertisement and gross sales of the plaintiff's product for the last few years is stated as follows:
Year Gross Sales Advertisemen (Rs. in Lacs) t (Rs. in Lacs) [SECTION]003 - [SECTION]07985.00 68[SECTION]4.[SECTION]0 [SECTION]004-[SECTION]005 [SECTION][SECTION]3153.[SECTION]0 6991.70 [SECTION]005-[SECTION]006 [SECTION]655[SECTION]1.90 9097.30 [SECTION]007-[SECTION]008 3889[SECTION]0.17 16484.78
5. It is stated that the plaintiff company has, since its inception in the year 1945, coined and adopted and extensively used the trade mark/name ASIAN PAINTS. By I.A. Nos. 8463/[SECTION]008 & 11439/[SECTION]008 Page [SECTION] virtue of this, the said trade mark/name has acquired secondary meaning and is instantly associated with the plaintiff. The plaintiff claims to have registered its mark "ASIAN PAINTS" (label) under [SECTION] on 17.0[SECTION].[SECTION]000. Plaintiff enjoys registration for various other marks under [SECTION]. Plaintiff also has copyright registrations in its favour for the artistic works involved in the marks ASIAN PAINTS (A-51166/91) and the device of GATTU (A-51167/91). Apart from domestic registrations the plaintiff also claims to have registrations in Sri Lanka, Bangladesh, Bhutan, Kuwait, Qatar, etc.
6. The first defendant is a proprietary concern involved in the manufacture of paints by the names "GREAT ASIAN" and "SUPER ASIAN" and the same are being marketed under the name "Citizen Paints Industries", the second defendant. Plaintiff claims knowledge that around January, [SECTION]007 the defendants were manufacturing paint cans under the marks "GREAT ASIAN GLOSSY SYNTHETIC ENAMEL", "GREAT ASIAN HI-GLOSS SYNTHETIC ENAMEL" and "SUPER ASIAN PREMIUM SYNTHETIC ENAMEL" which are deceptively similar to plaintiff's "ASIAN PAINTS APCOLITE PREMIUM GLOSS ENAMEL" for which the plaintiff has registration under [SECTION] w.e.f. 0[SECTION].1[SECTION].[SECTION]00[SECTION].
7. The plaintiff concedes that the first defendant has registration for the mark "GREAT ASIAN" under [SECTION] w.e.f. 13.03.[SECTION]000 but emphasises that being a prior user, adopter and also registered proprietor of the mark/logos ASIAN and ASIAN PAINTS (since the said mark was in existence since 1950s in India and 1978 globally), the exclusive rights to exploit the said marks vest with the it (the plaintiffs). Thus, the conduct of defendants constitutes infringement of rights in the registered trade marks and passing off, infringement of copyright; and dilution. Upon acquiring knowledge of the defendants infringing activities, the plaintiff sent a notice dated I.A. Nos. 8463/[SECTION]008 & 11439/[SECTION]008 Page 3 1[SECTION].01.[SECTION]007 in response to which the defendants wrote letter dated [SECTION]9.01.[SECTION]007 showing their willingness to change the designs on the tins and seeking some time to dispose of products worth Rs. [SECTION],01,500/-, which they were already in possession of at that time. The plaintiff allowed 15 days time to the defendants to dispose of those goods and 15 days to give an undertaking by their letter dated [SECTION]8.0[SECTION].[SECTION]007. A "cease and desist" notice dated [SECTION]8.03.[SECTION]008 was served upon the defendants in response to which by their letter dated 04.04.[SECTION]008 they stated that the design and artwork on their products are completely different from the plaintiff's. Since all its efforts went in vain the plaintiff has approached this court for an appropriate remedy.
8. The plaintiff also points out an instance of previous litigation between the same parties when in the year 1995 the same plaintiff had filed a suit against the said defendant, in that case the subject matter of the issue was the word and logo of GATTU (the boy device) the suit was decreed as settled between the parties when the defendant undertook never to use the logo or the word GATTU in any of their products.
9. By order dated [SECTION]3.07.[SECTION]008 of this court ad interim ex-parte injunction was granted against the defendants. The first defendant has filed an application under [SECTION] for vacation of the said order on the premise that that the plaintiff was fully aware that the defendant had applied for registration of his trade mark "GREAT ASIAN" on [SECTION]5.10.[SECTION]003 itself when the said trade mark was published in the trade mark journal MEGA4, as on the very same page a product of the plaintiff by the name of "APCOLITE" also appeared. The first defendant's mark was granted registration on [SECTION]8.03.[SECTION]005 w.e.f. 13.03.[SECTION]000; the plaintiff never objected to the application of the first defendant even though it had knowledge of the same. As the I.A. Nos. 8463/[SECTION]008 & 11439/[SECTION]008 Page 4 plaintiff did not challenge the grant of registration at the relevant time, it cannot raise any objections now.
10. The first defendant states that there is no resemblance between the two marks and as such, the plaintiff can neither establish infringement nor passing off. It is also stated that in an attempt to circumvent the procedures as prescribed under the 1999 Act, the plaintiff has filed the present suit rather than applying for cancellation of the first defendant's registered trade mark. Relying on [SECTION] of the Act (Sic [SECTION](3 . That provision reads as follows "where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor" it is submitted that the plaintiff is not entitled to an ex-parte ad interim injunction.
11. In its reply to the plaintiff's temporary injunction application, the defendant denies that it is involved in manufacturing any product under the mark "SUPER ASIAN" or is in any way related to any such mark. It is also denied that the first defendant was in any manner concerned with the second defendant i.e. Citizen Paint Industry. It is stated that on receiving the first legal notice from the plaintiff the first defendant merely agreed to make suitable changes in the flower design appearing on its packing of the paint, as a matter of courtesy which was misinterpreted by the plaintiff.
I.A. Nos. 8463/[SECTION]008 & 11439/[SECTION]008 Page 5
1[SECTION]. The plaintiff here states that the trade mark registration of the first defendant confines itself to the word "GREAT ASIAN" and that such registration cannot be permitted as defence to dishonest adoption especially when the trade mark adopted by the defendant is not limited to the mark only but also to the colour, packaging, set-up, artistic layout etc. of the entire label and paint-tin. The plaintiff being the prior adopter, user, proprietor of the mark, label, get-up and each and every element of its product, is entitled to protection.
13. A trade mark registration consisting of a mark which is identical/deceptively similar to an earlier mark whether registered or not is not a defence and an injunction can be granted by the court if certain basic tests are satisfied. The plaintiff placed reliance on a decision, [PRECEDENT]; where it was observed that:
"(41) The concept and principle on which passing off action is grounded is that a man is not to sell his own goods under the pretence that they are the goods of another man. A trader needs protection of his right of prior user of a trade mark as the benefit of the name and reputation earned by him cannot be taken advantage of by another trader by copying the mark and getting it registered before he could get the same registered in his favor. We see no reason why a registered owner of a trade mark should be allowed to deceive purchasers into the belief that they are getting the goods of another while they would be buying the goods of the former which they never intended to do. In an action for passing off it should not matter whether misrepresentation or deception has proceeded from a registered or an unregistered user of a trade mark. He cannot represent his own goods as the goods of some body else.
4[SECTION]. In Delco Engineering Works vs. General Motors Corporation ILR 1974 Punjab & Haryana 50[SECTION] it has been held that an action for passing off is founded on the desirability of preventing commercial immorality or dishonesty by a trader who by using a particular mark, whether registered or unregistered wants to falsely represent that his goods are the goods of some one else so that he can take undue and unfair advantage of the reputation of the other person in the mark. Therefore, it cannot be stated that under [SECTION] of the Act the statutory right of use acquired by a trader by registration of a mark is a defence to proceedings for passing off initiated by a prior user of the mark. In our opinion the learned Single Judge correctly analysed the decision of the Division Bench in [PRECEDENT] and we record our respectful approval thereto by holding that there is no statutory I.A. Nos. 8463/[SECTION]008 & 11439/[SECTION]008 Page 6 bar to a prior user of a trade mark for bringing an action for passing off against a registered proprietor thereof. It is also wholly immaterial in an action for passing off that the opposition of the plaintiff to the registration of the mark in favor of the defendant was not accepted. In an action for passing off, it is no defense that the defendant's trade mark is registered and that of the prior user is not so registered."
In the above case the court had to deal with interpretation of [SECTION] read with [SECTION] of the [ACT] which was repealed and replaced by the [ACT]. [SECTION] of the earlier Act corresponds with the [SECTION] of the 1999 Act.
14. The court has considered the pleadings of the parties. The plaintiff's reputation as a leading brand manufacturing paints and varnishes and other like products is unquestioned; it appears to have heavily spent money on popularizing its product. The plaintiff has supplied photographs of the its product i.e. "ASIAN PAINTS APCOLITE PREMIUNM GLOSS ENAMEL" and the defendant's infringing products i.e. "GREAT ASIAN GLOSSY SYNTHETIC ENAMEL", "GREAT ASIAN HI-GLOSS SYNTHETIC ENAMEL" and "SUPER ASIAN PREMIUM SYNTHETIC ENAMEL" in its interim injunction application. The defendant has nowhere disputed the pictures supplied by the plaintiff as not being of its products, though it stated that it has never manufactured any product under the name/mark "SUPER ASIAN".
15. The plaintiff sues for infringement and passing off in respect of trade mark as a whole. No doubt, the first defendant has set up a case for registration, of its mark, to resist the application. Yet, the Court cannot be unmindful of the fact that both the marks are to be seen as a whole, Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., [SECTION]001 (5) SCC 73, is an authority for the proposition that the Court should not place the two marks side by side, to contrast the differences. The correct way to I.A. Nos. 8463/[SECTION]008 & 11439/[SECTION]008 Page 7 consider if the impugned mark infringes, is to gauge its overall effect on the mind of an ordinary consumer of average intelligence.
16. The products of both parties are available in cylindrical shaped tin containers in colour combination of red and yellow used in more or less the same proportion. The design of flower is common to the products and appears in more or less similar fashion in terms of shape, look and placement on the container. Even the font size and style used on the products is similar. There is an undoubted resemblance between the said products. Although the first defendant claims to be a bona fide user and registered trade mark owner for "GREAT ASIAN" yet that cannot stand in defence at this stage as the plaintiff's stand of being a prior adopter and user is uncontroverted. Further, the defendant has not clarified as to how is its adoption and usage of the expression "ASIAN" in relation to the paints is bona fide; there has to be something on record to show that the defendant's adoption of the said expression was veritable. Merely stating that the use was bona fide does not make it a prima facie case for permitting such use, at this stage.
17. In view of the above discussion, there is no reason for this court to vacate the order dated [SECTION]3.07.[SECTION]008 in terms of the first defendant's interlocutory application. Accordingly I.A. No. 11439/[SECTION]008 is dismissed but without any order as to costs. For the same reasons, I.A. 8463/[SECTION]003 is allowed, and the subsisting interim order shall bind the parties till disposal of the suit.
([ENTITY]) JUDGE AUGUST [SECTION]1, [SECTION]009 I.A. Nos. 8463/[SECTION]008 & 11439/[SECTION]008 Page 8