IN THE HIGH COURT OF JUDICATURE AT MADRAS Date:- 30.11.2009 Coram The Honourable Mrs. Justice PRABHA SRIDEVAN and The Honourable Mr. Justice K.K. SASIDHARAN O.S.A.Nos.307 & 308 of 2009 & M.P.No.1 of 2009 (2 Nos.) "WITCO" (India) Pvt. Ltd Rep. by its Director V.P.Nurdeen No.103, Usman Road T. Nagar, Chennai-600 017. .. Appellant in both appeals ..vs.. 1. "NITCO" rep.by its Partners Zakir Hussain and Anis Fathima W-109, Ground Floor, 3rd Avenue Anna Nagar, Chennai-600 040. 2. Zakir Hussain 3. Anis Fathima ... Respondents in both appeals Original Side Appeals against the order dated 31.7.2009 in O.A. Nos. 428 & 429 of 2009 in C.S.No.372 of 2009 on the file of this court. For Appellant : Mr.P.S.Raman, Senior Counsel for Mr.S.Rajasekar For Respondents : Mr.T.V.Ramanujam Senior Counsel for Mr.V.Srinivasa Babu --------- J U D G M E N T K.K.SASIDHARAN, J These two original side appeals are directed against the common order dated 31.7.2009 in O.A. Nos. 428 & 429 of 2009 in C.S.No.372 of 2009 whereby and whereunder the application filed by https://hcservices.ecourts.gov.in/hcservices/ the appellant for an order of interlocutory injunction during the pendency of the Civil Suit was dismissed. BACKGROUND FACTS:- 2. The appellant filed a suit in C.S.No.372 of 2009 against the respondents for the following reliefs:- (i) For a permanent injunction, restraining the defendants, their partners, servants, agents, men or any one claiming through them from in any manner infringing the registered trade/service mark of the plaintiff viz., "WITCO" in any form deceptively similar to the business name of the plaintiff. (ii) For a permanent injunction restraining the defendants their partners, servants, agents, men, or anyone claiming through them from marketing, distributing, offering, advertising or using the Mark "NITCO" in any form or variation in English language and or any other vernacular language with or without tag-line "The luggage Expert" or similar surrounding names or any other mark deceptively similar to the plaintiff's mark "WITCO" with identical colour scheme, get up and lay out in the course of their trade/services and passing off goods or services or enabling others to pass off the goods or services as the goods of the plaintiff or as services provided by the plaintiff. (iii) For a mandatory injunction directing the defendants to deliver to the plaintiff all the business materials, goods, invoices, bills, receipts, books of accounts, cartons, advertisement materials, hoardings, letter-heads, visiting cards, office stationery and all or any other materials containing/bearing the Mark "NITCO" with or without the logo "The Luggage Expert" or any other deceptively similar mark or labels for destruction. (iv) directing the defendants to pay to the plaintiff a sum of Rs.10,00,000/- by way of damages for the acts of infringement and passing off. (v) For a preliminary decree directing the defendants to render account for profits made by them by the use of the mark "NITCO" with or without the logo/tag-line "The Luggage Expert" as and from 28.2.2009 and for a final decree in favour of the plaintiff for the amount of profits found to have been made by the defendants after rendering accounts; and (vi) directing the defendants to pay to the plaintiffs the cost of the suit. THE PLAINT:- 3. In the plaint in C.S.No.372 of 2009 the appellant as plaintiff contended inter alia thus:- https://hcservices.ecourts.gov.in/hcservices/ (a) The predecessor-in-interest of the plaintiff by name Thiru M.P.C. Mohammed founded West India Plastic Trading Company in the year 1951. The business was conducted in a shop located at George Town. In the course of time the firm also started manufacturing handcrafted luggage and launched "WITCO" as a brand name being the abbreviation of the firm's name, and incidentally it is also a coined word to deal with travel goods and accessories. (b) In the early 1970's "WITCO" gradually spread its wings geographically to other districts in Tamil Nadu and Kerala and during late 1970's the wholesale business of the firm was transformed to retail business. Subsequent to the demise of the founder M.P.C.Mohammed, his sons took over the business with a vision to become India's leading retailer in travel requisites. Therefore with an intention of doing business in travel goods in a grand manner, they have incorporated a company in the name and style of "WITCO (India) Private Limited". The incorporation was on 18.11.1988. (c) The plaintiff company retails internationally and nationally renowned premium travel brands like Samsonite, Antler, VIP, Delsey, American Tourister, Giordano, etc. The plaintiff company, being a leading player in the luggage industry, has about thirteen retail outlets in Chennai, Kochi and Calicut. It has to its credit six prominent stores at T.Nagar, Anna Nagar, Mount Road, Cathedral Road, Luz and Adyar to cater to the needs of the elite Chennai. The plaintiff company has employed over one hundred dedicated and experienced staff for its in-store, marketing and administrative work. A state of art computerized system has been put into place on a Corporate level in all its stores to handle professionally and effectively the point of sale operations, re- order level, tracking of product movement, accounting, etc. (d) The plaintiff company made very many efforts and spent substantial sums in establishing the brand and the trade mark "WITCO" in the travel goods and services through aggressive retailing, involving special programmes, apart from participating in various bag exhibitions. The plaintiff has also spent considerable amount towards advertisement in establishing value for its brand and trade mark "WITCO". The brand has been built over fifty years by good governance, quality, service and advertising over Radio, Cinema, Television, Press, Outdoor, Direct Mail, Sponsoring of Events and Internet. (e) The plaintiff company emerged as a leader when the moulded luggage industry was witnessing its major growth in phases in India. The plaintiff was also recognized as No.1 retailer for Samsonite in India and VIP luggage in South India. The plaintiff company has won a silver medal in Advertising Club Chennai Awards 2003 for best outdoor campaign for luggages. The plaintiff company has engaged the best consultants available in the market for media planning and for market research and other allied activities. Their services were utilised to promote the trade and service mark "WITCO" which now enjoys great loyalty amongst its customers. https://hcservices.ecourts.gov.in/hcservices/ (f) The plaintiff company has been using the tagline "The Luggage Expert" till recently along with the name "WITCO". However after "WITCO" introduced premium apparels about six months back in five of its stores to cater to the needs of the travelling customers, the tagline was changed from "The Luggage Expert" to "Travel in Style". Even now, the original tagline namely, "The Luggage Expert" which was continuously used by "WITCO" for the past several decades is identified by the general public with the brand name of the plaintiff. (g) While so, on 28-2-2009, the defendants with malafide intention opened a show room in the name and style of "NITCO" adjacent to the premises and within the same building where the plaintiff is running an exclusive store "WITCO" for the past more than nineteen years located at No.109, Ground Floor, "W" Block, Third Avenue, Anna Nagar, Chennai-600 040. The defendants have adopted the trade mark "NITCO" with respect to same services and goods as that of the plaintiff. The defendants have also used visually and phonetically similar mark to distract and confuse the customers of the plaintiff and the general public. The defendants are also surreptitiously trying to convey to the public that they were acting under the aegis of the plaintiff, while, in fact, there was no such connection between the plaintiff and the defendants. (h) The defendants have displayed the confusingly similar artistic work having the same get up, paneling and same scheme of arrangement both in look and phonetically along with the tagline "The Luggage Expert". This leads to confusion and deception among the public in general. The defendants are making illegal gains and commercially exploiting the goodwill and reputation earned by the plaintiff all these years. In fact the malafide intention of the defendants is also evident from the pending rent control proceedings initiated by the third defendant and her brother against the plaintiff for evicting them from the premises at Anna Nagar. (i) The plaintiff is the prior adopter and user of the mark "WITCO". The plaintiff is also the registered proprietor of the trade mark "WITCO" under clause 42 and 16 in the Fourth Schedule to the Trade Marks Rules, 2002 pertaining to luggage, travel bags and travel accessories, paper articles, printed matter as per Registration No.692172 granted by the Trade Marks Registry pursuant to the Application No.1249060 dated 12.11.2003. The trade mark "WITCO" has been continuously used by the plaintiff since the year 1951 and as such, has been adopted to distinguish their goods and services. By reason of such continued and extensive use of the said trade/service mark in the market and by reason of the high standard of the goods concerned, "WITCO" has come to be exclusively associated in the minds of the purchasing public with the goods dealt with by the plaintiff company. (j) The defendants have dishonestly adopted the identical mark with respect to their goods and services with a view to monetarily https://hcservices.ecourts.gov.in/hcservices/ enrich themselves. The conduct of sale and services rendered by the defendants is nothing but a fraud on the public calculated to deceive the customers of the plaintiff and make them to believe that the defendants' business, services and the goods dealt with by them are in some way or the other connected with the plaintiff. The defendants are therefore causing injury not only to the public but also to the plaintiff resulting in huge financial loss to them. In such circumstances the plaintiff has filed the suit for injunction. APPLICATION FOR INJUNCTION:- 4. The appellant has also filed an application for interlocutory injunction in O.A.Nos.428 and 429 of 2009 to restrain the respondents , their partners, servants, agents, men or anyone claiming through them from in any manner infringing the registered trade/service mark of the plaintiff viz., "WITCO" in any form deceptively similar to the business name of the plaintiff or using the mark "NITCO" in any form or variation in English language or any other Vernacular Language with or without the tagline "The Luggage Expert" or similar sounding names or any other mark deceptively similar to the plaintiff's mark "WITCO" with identical colour scheme, get up and layout in the course of their trade/services and passing off goods or services or enabling others to pass off the goods or services as the goods of the plaintiff or as services provided by the plaintiff during the pendency of the suit. THE DEFENCE:- 5. The respondents who entered on caveat in the subject proceedings filed their common counter affidavit in O.A.Nos.428 and 429 of 2009. The material contentions as found in the counter affidavit filed by the second respondent reads thus:- (a) The Commercial Complex bearing Door No.W-109, 3rd Avenue, Anna Nagar, Rountana, Chennai-600 040 consisting of ground and two floors were owned by Mr.K.A.Abdul Ali, father of the third respondent and father-in-law of the second respondent. He retained part of ground floor portion on the northern side of the building and was carrying the business of departmental stores in the name and style of "Gaylord Stores" from 1975 onwards. In the year 1990, the departmental stores was closed and "Gaylord Shoe Store" was started in the said premises and thereafter with effect from 16.11.2007, the Gaylord Shoe Store was renamed as "Gaylord Luggage and Bag Stores". (b) The business was run by the brother of the third respondent and his family members. They were doing retail business in marketing luggages, bags, raincoats, ladies hand bags, school bags and leather articles. The predecessor-in-interest of the respondents Thiru K.A.Abdul Ali executed a deed of settlement in favour of his children, wherein the southern portion of the complex consisting of ground, first and second floor was given to his son and grand son and the northern portion of the complex consisting of ground, first and second floor was given to the third respondent, being his only daughter. https://hcservices.ecourts.gov.in/hcservices/ (c) Subsequently an eviction proceeding was initiated by the third respondent against her brother and the matter was settled and a memorandum of understanding was made on 25.2.2009 whereby and whereunder the northern side of ground floor portion was delivered to the third respondent with an undertaking that no such business in the name of "Gaylord or Gaylord Stores" should be conducted by the third respondent. (d) Subsequently the second and third respondents formed a partnership in the name and style of "NITCO" in pursuance of a partnership deed dated 25.2.2009 with an idea of providing services to the customers for the purpose of purchasing luggages, bags and other travel accessories. Accordingly an application was submitted before the Commercial Tax Department to do business with effect from 25.2.2009. The first respondent firm had applied for registration with the Registrar of Firms and the name "NITCO" was entered in the register maintained by the Registrar of Firms on 26.2.2009. (e) Similarly application was submitted before the Registrar of Trade Marks for registering the service mark "NITCO" under the Trade Marks Act, 1999. The said application was submitted on 27.2.2009 vide application No.17900230 and the registration was sought in respect of rendering services of bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase goods pertaining to luggage and bags, travel accessories, shoes and garments which services fall under Clause 35 of IV Schedule or Trade Mark Rules, 2002. (f) The word "NITCO" was coined and invented as a unique name for the first respondent firm as a result of the fusion of words "knitting" and "Consumers" which was envisaged in Clause 35 of the IV Schedule of Trade Mark Rules, 2002. The first respondent firm deals only in retail sale of luggage, bag and travel accessories to its customers and they are not manufacturers of any of those goods. (g) The service mark "NITCO" is followed by three words "The Luggage Expert" in the bottom of the board and on the extreme right side of the board, the word "NITCO" has been incorporated in Tamil. The name board has been shown in black colour and the words are written in white colour. The service mark applied for "NITCO" carries "N" as capital letter and other words in small letters in order to distinguish its label from other companies carrying the name "NITCO". (h) The service mark registered under the Trade Mark Act, 1999 in respect of the plaintiff's company was displayed in white colour with a black background carrying the word "WITCO" in all capital letters. A mere perusal of both the mark/label would show that they are neither identical nor deceptively similar and as such there would be no confusion to the general public in distinguishing the trade name. The service mark registered by the first respondent firm is totally a different mark from that of the plaintiff. https://hcservices.ecourts.gov.in/hcservices/ (i) The alleged use of tagline "The Luggage Expert" till recently along with the name "WITCO" and changing of new logo to "Travel in Style" would not confer any right to the plaintiff to use it for their exclusive usage in the absence of registration of the said logo before the registering authority. The People of Chennai are elite group and more specifically the people residing at Anna Nagar are all educated people with ability to purchase products from traders without persuasion and it is not possible to mislead or confuse them and as such the apprehension raised by the plaintiff has no basis. Accordingly the respondents prayed for dismissal of the applications. JUDGMENT OF THE JUDGE:- 6. The learned Single Judge considered both the interlocutory applications together and was of the view that there is no infringement of trade mark of the appellant as the term "WITCO" and "NITCO" are totally different names. According to the learned Judge, there is no phonetic similarity and the word "The Luggage Expert" is only a coinage of common usage and there cannot be any right over the usage of such term. The learned Judge also opined that the test of common man and the class of goods dealt with by both the parties cannot be tested on the touch stone of an ordinary street man as both of them are not manufacturers of goods and they are doing retail selling of branded items in their shops. Therefore there is no question of infringement to the reputation. Accordingly the learned Judge arrived at a factual finding that no prima facie case was made out for granting an order of interlocutory injunction. In short both the applications were dismissed. 7. The order dated 31.7.2009 in O.A. Nos. 428 & 429 of 2009 are the subject matter of these Original Side Appeals. SUBMISSIONS:- 8. The learned Senior Counsel for the appellant contended thus:- (a) The word "NITCO" being deceptively identical with and similar to the trading name of the appellant is bound to mislead an unsuspecting average customer and the similarity in the trade name adopted by the respondents would be sufficient to warrant the grant of an order of temporary injunction. (b) The words used in the trade name of the appellant are not mere descriptive words of common use. It is in fact invented/abbreviated and a generic word which has come to acquire a distinctive or secondary meaning in connection with their business and therefore the use of those words or anything similar to that either phonetically or visually in the trade name adopted by the respondents are likely to deceive the public. https://hcservices.ecourts.gov.in/hcservices/ (c) The decisions relied on by the learned Single Judge to deny the relief of interlocutory injunction are factually different. (d) The third respondent along with her brother initiated action for eviction of the appellant and the commencement of business in the next door by using the impugned trade mark "NITCO" is yet another attempt to compel the appellant to close their business. (e) In an action for passing off the Court must take into consideration the broad features and in case those features are so similar and it is likely to deceive an ordinary purchaser of goods the same is a ground to grant injunction in favour of the appellants. (f) The impugned mark "NITCO" bears such an over all similarity to the trade mark "WITCO" that it would mislead not only the ordinary customer but even the elite customer. (g) The appellant's mark "WITCO" has three dots above the letter "i" whereas "NITCO" has two similarly placed dots apart from adopting the tagline "The Luggage Expert" was promoted all these years by "WITCO" and therefore the word "NITCO" with the get-up and colour scheme is confusingly similar to the appellant's trade name. The said fact has not been appreciated by the learned Judge. (h) The learned Single Judge has not considered the balance of convenience as well as prima facie case in favour of the appellant inasmuch as the brand name of the appellant has already been registered. However the application submitted by the first respondent for registration is still pending. The said fact has not been considered by the learned Judge. (i) The learned Senior Counsel for the appellants placed reliance on the following judgments in support of his contention that the appellants have made out a case for interlocutory injunction. (a) National Sewing Thread Co., Ltd., v. James Chandwick & Bros., Ltd., (AIR 1953 SC 357); (b) Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449); (c) Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001(5) SCC 73). 9. The learned Senior Counsel for the respondents would submit:- (a) The alleged use of tagline "The Luggage Expert" was not registered before the registrar of Trade Mark and as such the appellant is not entitled for the exclusive use of the said tagline. https://hcservices.ecourts.gov.in/hcservices/ (b) The appellant as well as respondents are dealing only in the luggage manufactured by reputed manufacturers. It is only the elite customers,, who would purchase those articles and as such there is no question of confusion. (c) There is no phonetic similarity between the words "WITCO" and "NITCO" as those two terms are entirely different. Similarly the appellant's are not entitled to use the word "The Luggage Expert" as it is only a coinage of ordinary usage and as such no right could be claimed on the basis of such usage. (d) The learned Senior Counsel for the respondents relied on the judgment of a Division Bench of this Court in Aravind Laboratories v. M.A.Rahim (2007 (1) CTC 392). DISCUSSION:- 10. The appellant is the registered user of the trade mark "WITCO". The registration was given in pursuance of their application dated 12.11.2003. The appellant has redesigned the logo and according to them the present logo type was designed in the (i) lower case - to give it a young, casual, friendly and fresh look and (ii) bold – to represent strength and stability. According to the appellants the three dots above the letter "i" in "WITCO" is the logo-graphic signifies (i) travel and commute; (ii) movement & motion and (iii) going ahead and progress. The new logo applications have been adopted in all the WITCO Store name-boards. 11. The appellant has got an exclusive store "WITCO" functioning at No.109, Ground Floor, "W" Block, Anna Nagar, Chennai-600 040. They are in possession of part of the ground floor and the entire first floor. The respondents are in possession of a portion of the ground floor as well as second floor. The photographs produced in the typed set of papers shows that the respondents have put up their name board on the side wall of the building as well as in the second floor, besides on the eastern side of the shopping complex. The appellant has put their name board in the remaining area in the ground floor as well as in the first floor. It is found from the photographs that the names "WITCO" and "NITCO" are so similar. In fact the coinage of the words are more or less similar and prima facie we are convinced that except the mark "•••" the coinage and the look out of the word "NITCO" is deceptively similar to "WITCO". 12. The following table would show as to how the name "WITCO" and "NITCO" are similar. WItco Nitco The arm of "W" in dotted lines is the only difference. The font and the slant of the letters are identical. From a distance, even an educated customer may be deceived into mistaking one for the other. https://hcservices.ecourts.gov.in/hcservices/ 13. According to the plaintiff they have been doing business in the name and style of "WITCO (India) Private Limited" with the trade mark "WITCO" in the premises at Anna Nagar for the last more than nineteen years. The respondents were doing business in the name and style of "Gaylord Luggage and Bag Stores" with effect from 16.11.2007. Initially they were conducting departmental store in the said premises. It was only during February, 2009 the respondents constituted a partnership in the name and style of "NITCO". Their application for registration of the service mark "NITCO" is still pending on the file of Registrar of trade mark. 14. The learned Single Judge appears to have proceeded on the basis that the trade name of the respondents were also registered. However the learned Senior Counsel for the respondents would fairly submit that no such statement was made before the learned Judge as the respondents are yet to get their registration. 15. The admitted facts clearly shows that the appellant has obtained the name "WITCO" registered long back. They are the prior user of the word "WITCO". According to the appellant, the usage of the word "NITCO" would mislead the public and as both the business establishments are located in the very same premises, it would confuse not only the common man but even the elite class. 16. In an action for passing off