Nms262.10 1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO. 262 OF 2010 IN SUIT NO. 217 OF 2010 Telebrands (India) Pvt. Ltd. ...Plaintiff. Vs. Benent Coleman & Co. Ltd. & Anr. ...Defendants. Mr.Rahul Chitnis i/by M/s. Nankani & Associates for the Plaintiff. Mr. Amit Jamsandekar with Ms. Aparna Das i/by M/s. Juris Law for Defendant Nos. 1 and 2. CORAM :- ANOOP V. MOHTA, J. DATED :- 11TH FEBRUARY, 2010. P.C.- 1 By consent, the Notice of Motion is heard finally. 2 The learned counsel appearing for the plaintiff makes statement that they are proceeding with the denials in view of the affidavit filed by Defendant No.1 which is served today in the Court. 3 The Plaintiff has filed this suit against the Defendants referring to the registered trademark “NICER DICER”. The Defendants alleged words are “KITCHEN DICER”. There is no specific reply by Defendant No.2, which is sister concerned of Defendant No.1. 4 The words “DICE” or “DICER” as defined and explained in the Nms262.10 2 various dictionaries are as under:- 1 The Concise Oxford Dictionary of Current English Ninth Edition (The relevant part only) dice- 2 tr cut (food) into small cubes. 3 tr. Austral. Slang reject; leave alone. 4 tr chequer, mark with squares. -no dice colloq. (there is) no chance of success, cooperation, etc.- dicer n.(in sense 1a of v.) (pl. of DIE2) *Usage see Usage Note at DIE2. 2 Concise Oxford English Dictionary Indian Edition dice- 2. (often as adj. diced) cut (food) into small cubes. 3 DICER1 n. (Cookery) cut into small cubes. (ME, f. prec.) 4 THE OXFORD ENGLISH DICTIONARY, VOL-III, D- D-E- explained the meaning of is also to mean “To cut into dice or cubes especially in cookery.” 5 The word “KITCHEN” is a household/ common/ descriptive word and so also “NICER”. In the present case, there is no serious dispute about registration of the trademark "NICER DICER". There is no point, at this stage, to decide as pointed out by the Defendants that registration itself ought not to have been granted. However, considering the scheme and purpose of trademark, basically Sections 17, 28, 30(2) and 35 of the Trade and Merchandise Marks Act (for short, the Trade Marks Act), the concept of descriptive/ common words and the proviso so provided in the facts and circumstances Nms262.10 3 of the case, in my view it is difficult to accept the case of the Plaintiff that no one else can use even these two words, basically “ KITCHEN DICER”. 6 The “KITCHEN DICER” as used, in my view, also if read together is to understand and/or to verify the respective products in question. These are household and common words. There is no question of exclusive or independent rights on all those words, as contended. 7 The registration of trademark, in my view, even if any, still that itself, in the present facts and circumstances, are not sufficient to accept the case of the Plaintiff to grant the injunction as claimed. 8 Defendant No.1 has been carrying on business as publisher, news provider and publishing several journals and books in and outside the country in most of the languages. As per the plaintiff, the Defendants advertised the products on inter-net, as well as, in the paper media, (Exhibit “H” and “L”). It is necessary to understand and to consider the nature and the purpose of shopping on-line and/or doing on-line transactions. Those paper advertisements read as under:- “THE TIMES OF INDIA READER’S OFFER by www.shopping.indiatimes.com “To order - Call 09867748888/ 09910118888 – sms ‘SHOP10’ to 58888.” “For complete range of offers shop online at shopping.india.com/Ro.” “For Complaints Please get in touch with our Customer Care Nms262.10 4 No.:09998308888/09876848888” “**Terms & Conditions Apply” “The images shown here may differ from the original product”. The Second Advertisement (Exhibit “L”) also provides- “. Use Your Credit Card & Get Free Lunch Box Worth Rs.199/-.” “Keep Your Pin Code Ready Before Calling”. 9 It is relevant to note, as averred in the reply dated 11th February, 2010 filed by Defendant No.1 with regard to the disclaimer appears on the web-site www.shopping.indiatimes.com, which is as under:- “TIL IS NOT LIABLE FOR ANY CLAIMS AGAINST LACK OR DEFICIENCY OF SERVICES; NON-FULFILLMENT OR UNSATISFACTORY FULFILLMENT OF PRODUCTS AND SERVICES PURCHASED BY USER FROM THE THIRD PARTY. THUS, TIL SHALL NOT HAVE ANY LIABILITY WHATSOEVER FOR ANY ASPECT OF THE ARRANGEMENTS BETWEEN THE USERS OF THE SITE AS REGARDS THE STANDARDS OF PRODUCTS AND SERVICES. IN NO EVENT SHALL TIL BE LIABLE FOR ANY DIRECT, INDIRECT, PUNITIVE, INCIDENTAL, SPECIAL, CONSEQUENTIAL DAMAGES OR ANY OTHER DAMAGES RESULTING FROM: (A) THE USE OR THE INABILITY TO USE THE PRODUCTS AND SERVICES; (B) THE COST OF PROCUREMENT OF SUBSTITUTE PRODUCTS AND SERVICES; (C) UNAUTHORIZED ACCESS TO OR ALTERATION OF THE USER’S TRANSMISSIONS OR DATA; (D) ANY OTHER MATTER RELATING TO THE SERVICES; INCLUDING WITHOUT LIMITATION, DAMAGES FOR LOSS OF USE, DATA OR PROFITS, ARISING OUT OF OR IN ANY WAY CONNECTED WITH THE USE OR PERFORMANCE OF THE WEBSITE.” 10 The Plaintiff’s words, therefore, “NICER DICER” even if taken note of as the registered trademark, which at present not in dispute, still as the Nms262.10 5 words “KITCHEN DICER” in my view, is a descriptive and commonly used words. Any person who wants to purchase the “DICER” for the kitchen purpose would put/type the words “KITCHEN DICER” on web-site. It is quite natural to put the words “KITCHEN DICER” and if a number of items is reflected on the web-site, the customer/user whosoever wants to purchase or to do business on the web-site, need to click or select specific item and after browsing/verifying the product, he will place the order, either through inter-net or call or sms, subject to the terms and conditions as advertised. The web-site describes the details including the seller’s name or manufacturer’s name or owner’s name and if the purchaser knowing this, place the order, then it is difficult to accept the case that the web-site owner/ Advertiser or such person are doing or dealing with the products as owner or seller. There is no force in the contention that, the website owner or Defendant Nos. 1 and 2, are using and selling the product of the Plaintiffs as the product of the Plaintiffs. 11 Therefore, it is not the case that the Defendants never published any description of ownership and/or as that of the seller. They never claimed and/or advertised that they are the owner and/or the manufacturer and/or seller of the product. This advertisement and/or respective web-site facilitate the consumer/person/user to purchase the product on-line. The owner of the web-site or the service providers can be treated as owners or manufacturers of the products. There are various types of contracts and/or Nms262.10 6 transactions which the parties may enter into while advertising or doing the business on inter-net. 12 In the present case, Exhibit “I” page 72 it is clear that after search for “kitchen dicer” in “all categories”, there are as may as 52 items cropped up/ found. Out of which, one item is also “KITCHEN DICER” with Heavy Duty Professional Fruit Juicer price: Rs. 799, Seller :Ojjas Lifestyle. It is not the product of the Plaintiff. The term “Seller” or “Vendor” or “affiliates” mean any person who offers for sale or puts for auction of products on the web- site. It is always subject to terms and conditions and disclaimers appearing on the paper media, as well as, shopping web-site. The actual seller’s name appeared viz. OJAS LIFESTYLES, IND MART and so of others who display their products on the web-site and the newspaper who have complete control over the price, shipping costs, date, period and mode of delivery, warranties related to products and services including after sale services related to products and services. As advertised on the web-site there are other names appeared as sellers under the respective items/ products, therefore, it is difficult to accept the case of the Plaintiff. The Defendants nowhere claimed to be the sellers and/or the proprietor of the products. The products sold under the name/ mark “KITCHEN DICER” and/ or “NICER DICER”, considering the nature and purpose of web-site shopping, the Defendants and specially No.1 only facilitates and provides the platform or venue, where the buyers/ users of site/ reader may meet and Nms262.10 7 see and verify respective products for their sell and/or purchase transaction. 13 The advertisements of Defendant No.1 and the various terms and conditions published along with the products clearly make the position and the role of the Defendants very clear which nowhere can be stated to be with intention to defraud and/or deceit and/or create impression and/or confusion that they are selling the product of the Defendants and/or such third person as the owner and/or proprietor. It is clear that the Defendants in no way can be treated and/or considered to be the seller of products of Plaintiff “NICER DICER” and even of “KITCHEN DICER” for the purpose of infringement and or passing off. 14 The submission is made referring to the paper advertisement that it provides telephone number, “to order” and also SMS numbers, the user/consumer therefore, can directly call/ place the order and they may get the trade marked product of the Plaintiff. The Plaintiff has shown and placed on record a result of such call. The transaction is denied by the Defendants. In view of above reasons, this itself cannot be the ground for interim relief. 15 We have to consider the whole scope and purpose of inter-net shopping. The person and/or party who wants to purchase the items on inter-net, would expect to go through the product by opening the site and selecting the items. It is just like verifying the product before purchase. Nms262.10 8 The person visits shops and/or market to purchase the goods/items, a known concept is “Window shopping”. In inter-net shopping a user needs to open the Window before purchasing and after verifying the products and contents to book or place the order on that declared terms and conditions. In all, the general scrutiny and verification of any products or contents before purchase by the purchaser is quite normal. Once verified and placed the order by accepting the terms and conditions, the transactions get executed. 16 In the present case, there is nothing to show that though the Defendants are advertising “KITCHEN DICER” but are selling “NICER DICER”, the product of of the Plaintiffs. Having advertised at appropriate site and/or their official site with the clear description of the product along with the name of the seller, I am not inclined to accept the plaintiff’s case that the Defendants are selling the products of the Plaintiff. Merely because the customer/person/user places the order directly, without verifying the product, the Defendants cannot be blamed for that. They are not deliberately, intentionally selling the product of the registered trade mark “NICER DICER” involving the “KITCHEN” items as described. It cannot be treated as selling the products of the Defendants and thereby infringing the rights in question. 17 The learned counsel appearing for the Plaintiff has relied on Poddar Tyres Ltd. Vs. Bedrock Sales Corporation Ltd & Anr., AIR 1993, Bom. Nms262.10 9 237 with regard to the effect of registration which as already observed is not in dispute. This Judgment, in my view is of no assistance. 18 A Division Bench of this Court (Per:- Anoop V. Mohta, J.) in I.T.C. Ltd. Vs. G.T.C. Industries Ltd. & Ors. 2008(2), Mh.L.J. 922, considering the effect of descriptive and laudatory and/or common usage words and the Trade Marks Act and Rules made thereunder cancelled the registration of trademark “MAGNUM” in respect of Cigarettes, bidies etc.. 19 Following the same, I have also in I Plus Inc. Vs. Consim Info Private Limited, 2009 Law Suit (Bom) 1203, on similar foundation, considering two domain names “IndiaProperties.com” and “IndiaProperty.com” being general and descriptive words and not invented words, not granted any interim reliefs and dismissed the notice of motion. 20 The learned counsel appearing for the Plaintiff has also relied on the relevant averments with regard to their business/ reputation and turnover referring to the trademark in question. In view of above, I see that, in the present facts and circumstances of the case, that itself is not sufficient to grant interim relief as prayed. 21 Considering above, and as the term “DICER” is highly descriptive for the goods falling in class 8 of 4th Schedule of the Trade Marks Rules, 2002 and the Trade Marks Act, 1999 and as the Plaintiff cannot monopolies the words even the “KITCHEN DICER” on the basis of registration of the words “NICER DICER”, and as the same is legitimately used by the other sellers Nms262.10 10 also and as the words “KITCHEN DICER” is not identical and/or deceptively similar to the plaintiffs marks “NICER DICER” and as there is no false representation and/or misrepresentation to the public and as no equity and/or balance of convenience and/or no case of any irreparable loss, harm and injury is made out under Order 39, as well as, Order XL of the Code of Civil Procedure (for short, CPC), the Plaintiff is not entitled for any interim relief as prayed. 22 Resultantly, the Notice of Motion is dismissed. No costs. (ANOOP V. MOHTA, J.)