1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY IN THE HIGH COURT OF JUDICATURE AT BOMBAY IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION ORDINARY ORIGINAL CIVIL JURISDICTION ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO. 1837 OF 2003 IN SUIT NO. 1908 OF 2003 Indiacom Limited .. Plaintiff. vs. Tata Teleservices Ltd,. & Ors. .. Defendants. Mr. Shyam Diwan a/w Rahul Kader & H.W. Kane for plaintiffs. Mr. Iqbal Chhagla a/w D.D. Madon i/by Mulla & Mulla for Defendants. CORAM : S.U.KAMDAR, J. CORAM : S.U.KAMDAR, J. CORAM : S.U.KAMDAR, J. DATE : 28th OCTOBER, 2005. DATE : 28th OCTOBER, 2005. DATE : 28th OCTOBER, 2005. ORAL JUDGMENT : . The present notice of motion is initiated by the plaintiff on a passing off action under the provisions of the Indian Mercantile Marks Act, 1999 seeking direction that the defendants should be restrained by an order and injunction from in any manner using the mark in relation to its telecom related services and the products name and/or mark "INDICOM" or any other name or mark deceptively 2 similar to the Plaintiff’s corporate name and trade mark "INDIACOM". The aforesaid injunction is sought in a passing off action as it is contended by the plaintiff that the defendants are seeking to pass off the business services and product of the plaintiff as if the same is the business and product of the defendants. Some of the material facts in the present case briefly enumerated are as under :- 2. The originally the name of the plaintiff company was known as Sesa Seat Information Systems Pvt. Ltd. and it was incorporated in 1988. The company was engaged in the technical collaboration with a foreign company known as STET S.p.a. of Italy. In 1988 the plaintiff entered into the business of directory publication. From the said year the plaintiff also published what is popularly known as "Yellow Pages" and Stand Alone Yellow Page directories. The business of the telecommunication was wholly monopolised in India with the Government of India Undertaking of Mahanagar Telephone Nigam Limited and thus the plaintiff was publishing the directories in respect of the telephones of the said Mahanagar Telephone Nigam Limited. Thus, telephone directories were printed and published on behalf of the said Telephone Nigam Limited of different cities and areas. The said telephone directories were distributed by the said Mahanagar Telephone Nigams Limited free of cost to every subscriber of the 3 telephone connection. Thus, the plaintiff was publishing the said telephone directories on behalf of the Mahanagar Telephone Nigams Limited and distributing the same amongst the public free of charge through the Mahanagar Telephone Nigam Ltd. The main source of the revenue generation of the plaintiff has been from procuring the advertisement from various parties and printing the same in the telephone directories. It is the case of the plaintiff that the income generated from the advertisement revenue during the period 1.9.1988 to 30.9.1999 i.e. for a period of almost 10 years and six months has been in the range of Rs. 43,11,095 to Rs. 14,63,60,292/- It is the further case of the plaintiff that in respect of the advertisement and promotional expenses to promote the name of the plaintiff as a corporate name namely, INDIACOM Limited as well as the trade mark INDIACOM the plaintiff has spent towards the promotional and advertisement expenses from 21.1.1988 to 30.9.1999 from Rs. 10,19,186/- to Rs. 43,89,141/-. It is the further case of the plaintiff that the plaintiff unsuccessfully also attempted to enter into the local network management services and/or to apply for the licence for telecommunication services but they have been unsuccessful. 3. It is the case of the plaintiff that in 1998, the Government of India announced the revised 4 policy of a telecom sector known as National Telecom Policy 1998. It is the case of the plaintiff that a company known as ICPL claimed to have commenced the use of the word "INDICOM". This company known as India Communication Private Limited has been incorporated sometime on 24.1.2000. With effect from 1.4.2000 the business of the said India Communication Private Limited was taken over by a proprietary firm known as M/s. Indicom. The said M/s. Indicom applied for registration of trade mark on 20.7.1999 under Registration Application No. 866988. By the said application the applicants have contended that they are seeking to register mark "INDICOM" under Class 16. In the said application it was the claim that the mark is in use from 1.5.1996. However, subsequently by a covering letter dated 7.2.2003 the defendants have corrected that application and has claimed user of the mark with effect from 1.5.1999. On 26.8.1999, the plaintiff hosted website under the domain name of INDIAREFERENCE.COM. It is the case of the plaintiff that on the other hand the business of the plaintiff of publishing directories for various cities and towns has been commenced since September, 1999. On 6.9.1999, the plaintiff decided to change their corporate name from Sesa Seat to Indiacom Directoires Limited. With effect from 6.9.1999 once again the plaintiff continued to publish directories, yellow pages and Stand Alone Yellow 5 Pages. It is the further case of the plaintiff that they have been issuing the said directories in 24 cities and/or towns and 71 lakh copies are being distributed. The plaintiff was also claiming that they have also published under the brand name "Indiacom" tourist guides, business directories, directory of e-mail pages, and other business information . During the period 2000 to October, 2002 on the other hand the said company known as INDICOM Communications Private Limited also continued the business of web hosting, internet and designing and/or maintenance thereof. It is the case of the plaintiff that defendant erstwhile in title of the brand name "Indicom" was only in web hosting business and publication in respect thereof. They had no business or earned any good-will in respect of the mark "Indiacom" in relation to telecommunication services. 4. On 31.3.2000 the said company Indiacom Communications Private Limited was taken over by the firm Indicom and a MOU came to be signed between the parties for taking over thereof. In October, 2002 the defendant commenced its business in tele services and they have started using the trade name Tata Indicom and particularly lodged their services under the said trade name in November, 2002. It is the case of the defendant that they have been continuously and exclusively using the said trade 6 name "Tata Indicom". On 16.10.2002 the plaintiff company once again changed their corporate name from Indiacom Directories Limited to Indiacom Limited. It is the case of the plaintiff that on 5.12.2002 the plaintiff came across an advertisement in Deccan Chronicle, Hyderabad with the 1st Defendant using the mark "INDICOM" and accordingly on 15.1.2003 gave a notice to the 1st defendant objecting the user of the mark "INDICOM" by the defendant herein. On 6.2.2003 the 4th defendant replied to the letter on behalf of the 1st defendant to the plaintiff herein. On 10.5.2003 a deed of assignment has been executed by a company known as Indicom Communications Pvt. Ltd., in favour of the 4th defendant assigning the trade mark "INDICOM". The 4th defendant Tata Sons Limited, inter alia holding a substantial share holding of the 1st defendant namely Tata Tele Services Limited. Immediately thereafter the plaintiff has filed the present suit on 23.6.2003 inter alia seeking injunction restraining the defendant from using the said mark "INDICOM" in relation to their business of tele services by the defendant no. 1 and has taken out the present notice of motion for interim reliefs. 5. The defendant no. 1 has filed the reply to the notice of motion and has inter alia claimed that they are entitled to use the said mark firstly because of the prior user which was in favour of the 7 firm known as M/s Indicom and by virtue of a deed of assignment the right in the said mark has been acquired by the 4th defendant and has been permitted to be used by them to the 1st defendant. It has also been contended that the adoption of the mark by the defendants in relation to INDICOM is honest and bonafide as of Tata Group of Companies have been using the said mark in some form or the other such as INDICA, INDIGO in relation to various other companies of the Tata Group of Companies. Thus, it has been contended that keeping in mind the said tradition the defendant no. 4 has honestly acquired the assignment in the mark INDICOM from the said M/s. Indicom who was prior user in respect of the said mark prior to the plaintiff herein. Secondly, it has been contended that the plaintiff is not entitled to maintain the suit for injunction firstly because it cannot be said that the plaintiff has acquired any reputation in the mark because there is no sale of any product of the plaintiff in the market. Furthermore, the plaintiff is in different business of directory publication whereas the defendants are in the tele services which are pole apart. 6. On the aforesaid pleadings both the plaintiff and the defendants have argued the present notice of motion at length. The learned counsel appearing for the plaintiff has vehemently contended 8 that the plaintiffs are entitled to the interim injunction on the ground of passing off of their product by the defendant under the brand name INDICOM. It has been contended that the mark INDIACOM which has been used as a trade mark by the plaintiff and the mark INDICOM which has been used by the defendant no. 1 is synonymous both in words as well as phonetically and, therefore, this Court ought to grant an interim relief. It has been further contended that there is plenty of evidence to show that there has been a confusion in the minds of the public at large when the complaints pertaining to the telephone services rendered by the defendants are being received by the plaintiff and thus there is not only a likelihood of confusion but in fact there is a confusion and, therefore, this Court ought to grant injunction so as to avoid any such confusion in the mind of large public. It has been further contended that the telephone directories and the telephone services are cognate goods and in view of the fact that they are cognate goods the action of passing off is maintainable not only in respect of the very same goods which are produced and sold by the plaintiff in market but also apply in relation to the cognate goods and related services to that of the plaintiff and, therefore, the plaintiff is entitled to interim orders. It has been further contended that the socalled claim of prior user by the defendant is 9 dishonest and lacks bonafide. It has been contended that the so called assignment which is sought to be relied upon for the purpose of claiming prior user is bogus and has been deliberately entered into only with a view to defeat the claim of the plaintiff for interim reliefs. It has been further contended that the so called assignment has been entered into by the defendant from the company known as M/s. Indicom after the legal notice is served by the plaintiff on the defendant and thus it cannot be stated that the assignment is valid and legal in favour of the defendant. It is thus submitted that the defendant is not entitled to rely upon the said deed of assignment for the purpose of protecting the user of the trade mark INDICOM in their favour. 7. Alternatively it has been contended by the learned counsel Mr. Diwan appearing for the plaintiff that in any event the said assignment do not confer any right in favour of the defendant because there was no reputation earned by the erstwhile company M/s. INDICOM as no user of the mark has been established prior to September 1999 when the plaintiff adopted the said mark and honestly commenced user of the mark both as a trade style and trading mark. It is thus contended that the defendant is not entitled to claim prior user on the basis of such deed of assignment. It has been further contended that the deed of assignment sought 10 to be relied upon by the defendant is invalid in law in as much as that the document is signed only by one of the parties to the said assignment and not by both the parties whose name is entered in the registration application for the trade mark. It has been further contended that admittedly the application indicated the user of the mark from May 1996 to May, 1999 but by a letter dated 7.7.2003 they themselves have restricted the claim of the user of the mark to September, 1999. In that view of the matter, it has been contended that the claim raised in respect of the prior user by virtue of the trade mark is meritless and, therefore, the same should be rejected. 8. On the other hand, the learned counsel Mr. Chhagla appearing for the defendant has vehemently contended that firstly the plaintiff has no reputation of any nature whatsoever in respect of the said mark INDIACOM. It has been contended that admittedly the plaintiffs are not selling the directories under the mark INDIACOM. It has been contended that there is no dispute between the parties that there is no sale of the directories but directories and/or yellow pages are distributed free of costs by the various Mahanagar Telephone Nigams of different areas and the plaintiff is only doing the printing and publication work on behalf of the said Mahanagar Telephone Nigams Limited. It has 11 been thus contended that the plaintiff cannot be stated to have acquired any reputation in the said mark Indiacom as the said trade name or trading style or trade mark and, therefore, the plaintiff is not entitled to any interim orders. In the alternative, it has been contended that even assuming that there is any reputation earned by the plaintiff in the mark Indiacom then in that event also the plaintiff is not entitled to any interim orders. This is because the business of the plaintiff is only publication and printing of the directories and not related to any telephone services. It has been contended that plaintiff’s business cannot be treated as a tele communication or an internet services which business has ben carried on by the defendant. It has been thus contended that both business are totally separate and distinct and cannot be clubbed as a cognate goods or related services and it has ben thus contended that the plaintiff is not entitled to any interim orders. Thereafter the learned counsel for the defendant has contended that assuming without admitting that the plaintiff is entitled to maintain the present passing off action still the plaintiff is not entitled to relief because in the passing off action, the prior user is a must for the purpose of maintaining an action in the passing off case. It has been contended that by virtue of the acquisition of the mark by the defendant from M/s. INDICOM 12 which was already in the market with the mark INDICOM it is the defendant who has acquired the prior user and as such it is only the defendant who is entitled to use the said mark INDICOM and the plaintiff is not entitled to maintain an action for passing off of his goods and/or related services under the mark INDICOM. It has been contended that there has been a valid assignment in favour of the defendant and the so called contention that the adoption of the mark is dishonest and lacks bonafide, cannot be accepted because the defendants are using the mark in relation to the word ’Indi’ associated with different suffix in respect to many companies and not only in respect of the defendant no. 1 company. Thus, the adoption of the mark by the defendant as well as acquiring the rights under an assignment are both legally valid and bonafide by the defendant so as to preserve the tradition of the defendant by utilising the mark INDICOM in relation to the defendant services. It has been further contended that the word "INDICOM" reflects the service rendered by the defendant which inter alia includes internet services and, therefore, the defendant cannot be prevented from using the mark INDICOM. 9. Both the learned counsel have cited large number of authorities in support of their contention. The learned counsel for the plaintiff 13 in support of the contention that the plaintiff is not entitled to the user of the mark has cited well known passage from the book "The Law of Passing-Off by Christopher Wadlow particularly para 6.29 in which it is inter alia stated that distinction is drawn when the fancy words are coined with two distinct descriptive words and in such cases person can claim the proprietary mark of such fancy words created by joining two descriptive words. It was his argument that the word INDIACOM though consists of two descriptive words INDIA and COM but use in the conjunction with each other could create a fancy word known as INDIACOM which by itself is a non-descriptive word though created by use of two descriptive words. The learned counsel has cited para 6.29 of the aforesaid book which reads as under :- " A distinction is sometimes drawn in which "fancy" words are contrasted with those which are prima facie descriptive. A fancy word is one which has no obvious relevance to the character or quality of the goods or business in relation to which it is used, such as Eureka for shirts, Clock for an hotel or June for toiletries. It is "of an arbitrary and fanciful nature" in that context. Whether a word is fancy or descriptive may depend on how it is used. 14 Health may plausibly be called a fancy word in respect of fishing gear but not for cocoa. The significance of the difference is that distinctiveness is very much more easily acquired for fancy words, and it is inappropriate to speak of secondary meaning when the word has no primary meaning to displace. However, the decision to categorise a word as fancy or descriptive is only one part of the wider issue of whether there is a material representation to restrain. Inherent ability to distinguish is always a matter of degree with there being a continuous spectrum between the highly fanciful and the obviously descriptive. Wherever the name may fall on that range, what matters is whether the name is distinctive in fact. A slightly different distinction was drawn by Templeman L.J. in McCain International v. Contry Fair Foods in which he put weight on the information the names impart as well as on the way they first strike the reader. It is suggested that this change in emphasis is in keeping with the modern understanding of the tort. There is a very real difference in passing-off litigation between a fancy name and a descriptive name. A fancy name which 15 is not descriptive of a product can only indicate that the product bearing that name is, or is licensed by, or is derived from one and the same supplier. Thus in Spalding v. Gamage the plaintiffs described their football as ’Orb Football’ .... in my judgment it was a fancy name in that nobody would have dreamed of connecting a football with an orb in normal speech, and if it was a fancy name the defendants could not use the same fancy name without thereby representing that their goods were the goods of the plaintiff. In my judgment a fancy name is an indication of a single source and that is why it is impossible, generally speaking, for a defendant to appropriate the same fancy name without committing the tort of passing off. A descriptive name, on the other hand, does not indicate the source of the goods, but the nature of the goods." This is reminiscent of the way Parker J. treated the distinction between fancy and descriptive words in British Vaccum Cleanrer Co. v. New Vaccum Cleaner Co. "Now with regard to questions such as arose in Reddaway v. Banham and Cellular Clothing Co. v. Maxton and Chivers & Sons v. Chivers I think a distinction must always be drawn between cases in which the word in question the word which it is proposed to restrain the defendant from using is a word of ordinary use, descriptive of an article, and cases in which the word complained of more or less, partakes of the character of a ’fancy word’, or, primarily, does not relate to the article but to the person who makes the article." 10. Thereafter he has cited the judgment of the Chancery Division in the case of Computervision Corporation v. Computer Vision Limited reported in [1975] R.P.C. No. 7, page no. 171 clubbing the words "computer" and "vision" and used in 16 conjunction with each other as "computervision". He has drawn my attention to the following passage. " But are the words "computer vision" words of ordinary use descriptive of the business carried on in that sense? The word "computer" is no doubt a word in ordinary modern use, as is the word "vision". But those two words have never been used in conjunction except by the plaintiffs. Mr. Stephens, who is n executive engineer in the Post Office Research Establishment at Dollis Hill, who has been employed in the electronics field for 20 years and who is an independent witness, says this in an affidavit which he has sworn: "I do not know of any company other than the plaintiffs which has been selling electronic apparatus under a name closely resembling ’Computervision’ nor do I know of any company trading under such a name". Similarly my attention has also been drawn to the judgment of the Delhi High Court in the case of Living Media India Limited vs. Jitender V. Jain and Anr., reported in 2002 (25) PTC 61 (Del) where the words "AAJ and TAK" is used as one singular word "AAJTAK" and the Court has held that it becomes a fancy word and entitled to its own protection. The 17 learned counsel has thereafter cited before me the judgment of the Chancery Division in the case of Legal and General Assurance Society Limited v. Daniel and Others, reported in [1968] Reports of Patent, Design and Trade Mark Cases [No.9] at page 253 where the issue was the trade mark Legal & General though being two description words when used in conjunction with each other could create a right in the person using the same as fancy as a trade mark. He has cited before me the following passage:- " It seems to me that, although these words "Legal & General" are descriptive words, nevertheless they have acquired such a connotation, such a significance in business and elsewhere, that they have become especially associated with the plaintiff company. The words are very different from the words "office cleaning" which were considered in the House of Lords in Office Cleaning Services Ltd., v. Westminster Window & General Cleaners Ltd., (1946) 63 R.P.C. 39. Those words "office cleaning" were very common, ordinary descriptive words. These words "Legal & General" are less common, less descriptive, more specialised, and rarely used in combination except by the plaintiffs. I find it 18 difficult to believe that Mr. Daniel chose the words "Legal & General" just by chance. Then there is the newspaper advertisement telling people to write to the "Legal & General". In all the circumstances I have no hesitation in holding, as the judge did, that there is a strong prima facie case for holding that the use of the words "Legal & General" by the defendants is calculated to lead to the belief that their business is in some way