1 A.O.139/2011 IN THE HIGH COURT OF JUDICATURE AT BOMBAY, BENCH AT AURANGABAD APPEAL FROM ORDER NO.139 OF 2011 WITH CIVIL APPLICATION NO.9771 OF 2011 Assam Tea Company, Raees Peth, Godhan, District Nizamabad, Andhra Pradesh, through its Authorised Signatory Mohd.Alimoddin s/o Mohd. Meera Mohiyoddin, Age 35 years, Occu.Business, R/o As above ..APPELLANT VERSUS Gujarat Tea Traders Pvt.Ltd., Tea Company, Registered Company incorporated under the provisions of the Companies Act, through its Authorised Signatory, and Power of Attorney Holder Shri Vishal s/o Vilasrao Kulkarni, Age 26 years, Occu.Service, having its Office at Bhishree Chambers, Veer Sawarkar Chowk, Jalna, District Jalna ..RESPONDENT Mr D.Venkat Reddy, Advocate holding for Mr S.S.Kazi, Advocate for appellant Mr Sanjeev B.Deshmukh, Advocate for respondent (sole) WITH APPEAL FROM ORDER NO.27 OF 2011 WITH CIVIL APPLICATION NO.1268 OF 2011 Shaikh Muktar Shaikh Bashir, Age 42 years, Occu.Business, Proprietor of Bharat Tea Suppliers, Shahagad, Taluka Ambad, District Jalna ..APPELLANT VERSUS 2 A.O.139/2011 Gujarat Tea Traders Private Ltd. Company, through its Officer and/or Power of Attorney Holder Shri Vishal s/o Vilasrao Kulkarni, Age 27 years, Occu.Service, having its Office at Bhishree Chambers, Veer Sawarkar Chowk, Jalna, ..RESPONDENT Shri V.S.Bedre, Advocate holding for Mr A.N.Nagarkar, Advocate for appellant Mr Sanjeev B.Deshpande, with Mr S.B.Joshi and Mr S.S.Patnoorkar, Advocates for respondent WITH APPEAL FROM ORDER NO.92 OF 2011 WITH CIVIL APPLICATION NO.6373 OF 2011 Shaikh Muktar Shaikh Bashir, Age 42 years, Occu.Business, Proprietor of Bharat Tea Suppliers, Shahagad, Taluka Ambad, District Jalna ..APPELLANT VERSUS Gujarat Tea Traders Private Ltd. Company, through its Officer and/or Power of Attorney Holder Shri Vishal s/o Vilasrao Kulkarni, Age 27 years, Occu.Service, having its Office at Bhishree Chambers, Veer Sawarkar Chowk, Jalna, ..RESPONDENT Shri V.D.Salunke, Advocate holding for Mr A.N.Nagarkar, Advocate for appellant Mr Sanjeev B.Deshpande, with Mr S.B.Joshi and Mr S.S.Patnoorkar, Advocates for respondent 3 A.O.139/2011 CORAM : K.U.CHANDIWAL, J. DATE OF RESERVING THE ORDER : 22.11.2011 DATE OF PRONOUNCING THE JUDGMENT : 07.12.2011 JUDGMENT 1. These three appeals though are featuring distinct facts, however, the plaintiff in the suits being the same, and grounds raised against the defendants being identical, the law involved and the reported judgments being common, they are heard together and finally. Appeals admitted. APPEAL FROM ORDER NO.139 OF 2011(R.C.S.No.6/2009): (i) The plaintiff in a suit under the Trade Marks Act, 1999 and Copyright Act, 1957 sought injunction for using the name of tea packets of “Assam No.11” thereby alleging that it is copy of his different packets, i.e. “Vikram No.11”. The learned Extra Joint Ad hoc District Judge, Jalna, by order dated 6.8.2011 restrained the defendant from making infringement of trademark of plaintiff “Vikram No.11 Chay” by way of selling the tea products under a label in dispute, i.e. “Assam No.11 Chay” till disposal of the suit. 4 A.O.139/2011 (ii) The defendant disputed about the claim of the plaintiff by pointing that from appearance of name of the plaintiff – Company and the defendant – Company no one can get confused about similarity, it reflects distinct names. The literary meaning of both the companies is different. There is no infringement of trademark of plaintiff – Company to infer that it creates confusion in the mind of ordinary customer. It was also informed, design, the structure, logo, symbol language, colour combination, slogan, place of manufacture, photograph of the model are different from each other. APPEAL FROM ORDER NO.27 OF 2011 (R.C.S.NO.5/2010): (i) The plaintiff asserted that it is involved in tea products and launched various products in the market under its name. It has set up its own quality assurance department. At every stage of preparation of tea packets, abundant precaution is taken regarding the contents as well as packets. Due to the intrinsic quality of the produce coupled with attractive and full proof packing along with excellent market network, various products launched by the plaintiff company soon carved niche in the market. The plaintiff urged that their registered trademark “Vikram No.11 Chai” should not be allowed to be copied by the 5 A.O.139/2011 name “Vikas No.11 Chai” or any other deceptively similar to the plaintiff’s registered trademark. (ii) The defendant is also in the tea packet business and so, the defendant dealing in selling identical tea packets by using identical colour combination, which is deceptively similar to the trademark of the plaintiff. The trademark of the defendant is not registered. On 18.11.2010 injunction was clamped against the defendant below Exh.5 in the said suit. APPEAL FROM ORDER NO.92 OF 2011 (R.C.S.NO.3/2009): (i) The plaintiff felt that the defendant is infringing his rights in registered trademark and copyright in “Vikram No.11”. The plaintiff had the registration as “Lion No.5” registered in the name of Assam Tea Company in the year 2005, which assigned to the plaintiff vide Assignment Deed dated 20.8.2008 for consideration of Rs.1,25,000/-. In addition to getting registration of Lion No.5, in its name, from the competent authorities, the plaintiff has also moved application for registration of various additional trademarks and artistic work to be associated with trademark “Lion No.5”. The cumulative effect of the characteristic on the tea packets with the trademark “Lion No. 6 A.O.139/2011 5” is in identification of the plaintiff – company about the tea packets. (ii) The defendant has preferred tea packets under the label, “Tiger No.5 Chai”. That was conveyed to the plaintiff from the well wishers of such depiction and dissection. The plaintiff and its officials noticed deceptive similarity of the defendant’s tea packets with “Lion No.5” with colour combination, pattern of writing. The overall impression one gets by looking at two packets, is enormous deceptive similarity between the packets. The defendant’s tea packet is a colourable imitation of the plaintiff’s tea packets. (iii) The defendant canvased that tea packets marketed by the defendant are depicting tiger in a distinct feature and there are least chances of any deception or confusion to the purchaser. The plaintiff has no copyright over the graphics of Lion and the artistic work thereon. The alleged graphics of logo of tea cup of the plaintiff depicts vapours emanating. The plaintiff has failed to establish any injury by violation of his rights. The plaintiff has no balance of convenience. The distinction between Tiger and Lion have been by pronouncement is phonetically different and no actionable damage has been caused to the plaintiff. Hence, 7 A.O.139/2011 order of injunction dated 20.4.2011 warrants interference. 3. The respective Counsel canvassed their points by placing reliance to numerous reported judgments from various High Courts and the Honourable Supreme Court. The learned Counsel for the defendant in Appeal From Order No.139 of 2011 has placed reliance to following judgments : 1 2006 (2) Bom.C.R. 103 (The Brihan Maharashtra Sugar Syndicate Vs. Meher Distilleries Pvt.Ltd. 2 2003 Ivad (Delhi) 524 (Micronix India Vs. Mr.J.R.Kapoor 3 2008 (1) CHN 508 (Heinz Italia SRL and Heinz India Pvt.Ltd., Vs. Dabur India Pvt. Ltd. 4 MANU/DE/0551/2009 (Perfetti Van Melle SPA Vs. Shankarlal Dhingra) 5 121 (2005) DLT 316 (Novartis AG Vs. Walbury Ltd.and anr.) 6 1996 (36)DR 509 (Kellog Company Vs. Praveen Kumar Bhadabhai and anr.) 7 90 (2001) DLT 839 (M/s Girinar Food and Beverages Vs. M/s Godfrey Philips India Ltd.) 8 1997 IVAD (Delhi) 757 (SDL Ltd., Vs. Himalaya Drug Company) 9 174 (2010) DLT 279 (Marico Ltd. Vs. Agrotech Foods Ltd.) 10 (2000) 1 GLR 680 (Cadbury India Ltd. Vs. SM Dyechem Ltd.) 8 A.O.139/2011 11 2011 (4) ALT 692 (DB) (Trinetra Super Retain Pvt. Ltd. Vs. Mee Trinetra Trading Pvt.Ltd.) 12 2007 (34) PTC 469 (DB) (Del) (Astrazeneca U.K. Ltd. and anr. Vs. Orchid Chemicals and Pharmaceuticals Ltd.) 13 2006 (4) alt 581 (A. Anuradha Vs. Canara Bank) 14 2010 (4) Mh.L.J.Shelke Beverages Vs. Rasiklal 15 2010 (3) Civil Court Cases 445 (S.C.) (Skyline Education Institute (India) Pvt. Ltd., Vs. S.L. Vasvani and another) The learned Counsel for the plaintiffs (in all the matters) has placed reliance to following judgments: 1 AIR 1971 SC 898 (National Bell Company Vs. Metal Goods Mfg. Co) 2 AIR 1972 SC 1359 (Parle Produce (P) Ltd Vs. J.P. and Company, Mysore 3 AIR 1984 Bom.218 (1) (M/s. Hiralal Prabhudas Vs. Ganesh Trading Co.) 4 1992 (2) Bom.C.R.68 (Bombay Oil Industry Vs. Raj Oil Mills) 5 1998(3) Bom.C.R.670 (Maharashtra Rajya Sahakari Dood Mahasangh Vs. M/s Ideal Vitamin Food) 6 2003 (4) Bom.C.R.252 (Tata Tea Ltd. Vs. Suruchi Tea Company 7 2004 (1) Bom.C.R. 436 (R.R.Oomlebhoy Pvt. Ltd. Vs. Court Receiver, High Court, Bombay 9 A.O.139/2011 8 2007 (5) Bom.C.R. 262 (Encore Electronics Vs. Anchor Electronics and Electricals) 9 2009 (1) Bom.C.R. 862 (Deccan Bottling and Distilling Industry Vs. Brihan Maharashtra Sugar Syndicate 10 2006 (4) Mh.L.J. 396 (Shaw Wallace and Co.Ltd. Vs. Mohan Rocky Spring Water Breweries Ltd.) 11 184 1999 SC 22 (1) (Whirpool Corporation Vs. Registrar of Trade Marks) 12 1998 AIR SCW 2351 (Manmohan Garg Vs.Radhakrishna Narayan Das) 13 AIR 1987 DEL 313 (m/s Vrajlal Manilal and Co. Vs. M/s N.S.Bidi Co.) 14 2003 (27) PTC 63 = 2003 DLT (105) 586 ( Shaw Wallace and Co.Ltd., Vs. Superior Industries Ltd.) 15 AIR 1977 DELHI 41 (M/s Anglo-Dutch Paint, Colour and Varnish Works Pvt. Ltd., Vs. M/s.India Trading House) 16 AIR 1984 DEL 265 (Glaxo Operations UK Ltd., Vs Samrat Pharmaceuticals, Kanpur) 17 2002 (4) ALL MR 637 (Asian Paints Vs. Jaikisan Paints) 18 AIR 1984 BOMBAY 218 91) (M/s.Heeralal Parbhudas Vs. M/s. Ganesh Trading Company and ors.) 19 2009 (1) Bom.C.R. 862 (Deccan Bottling & Distilling Industries Pvt. Ltd., Vs. Brihan Maharashtra Sugar Syndicate Ltd.) 20 2003 (4) Bom.C.R.252 (Tata Tea Ltd. Vs. Suruchi Tea Company 21 (2009) 39 PTC 444 Karnataka (S.M.K.A.Enterprise Vs. Suchita Industries) 10 A.O.139/2011 22 AIR 1972 CALCUTTA 261 (Prem Nath Mayer Vs Registrar of Trade Marks and another) The sum and substance from these reported judgments illustrate several features as under : (a) In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other, it would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. (b) The Honourable Supreme Court, in AIR 1972 1359, on the facts of the case gave following finding :- “ In this case we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word "Glucose Biscuits" in one and "Gluco Biscuits" on the 11 A.O.139/2011 other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs goods, he might easily mistake the Defendants wrapper if shown to him some time after he had seen the plaintiffs. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes." (c) The efforts of the Court has to be not to compare the two marks with a view to notice the difference between them, but to consider whether the overall impact i.e. conveyed by the mark of one of the party seeking registration is one of the visual similarity with the mark of already registered trade mark. (d) In a given case two marks may not be phonetically similar but visually similar. In some cases the material would be similar visually, phonetically and artistically. It would ultimately depend on the overall appearance of the mark coupled with the most necessary essential feature of the infringement action and that is its effect, impact on the mind of ordinary persons of average intelligence. Therefore, it would be for the Court in the given fact situation of a case to analyse and appreciate the alleged deceptive similarity from the angle of the ultimate user, customer and persons of average intelligence having imperfect recollection. 12 A.O.139/2011 (e) Where the two marks are identical, no further questions arise for, then the infringement is made out; When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered; (f) The onus would be on the plaintiff; The degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standard. The persons who would be deceived are of course the purchasers of the goods and it is the likelihood of their being deceived that is the subject for consideration. The purpose of the comparison is for determining whether the essential features of the plaintiff s trade mark are to be found used by the defendant. The ultimate test is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff; (g) The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark; (h) The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on evidence led before it as regards the usage of the trade. 13 A.O.139/2011 (i) In an infringement action the issue is : Is the defendant using a mark which is the same as or which is colourable imitation of the plaintiff's registered trade mark ? (j) The element of deception or confusion becomes irrelevant in the second issue “as the same is implicit, inherent or presumed to be present.” (k) Two marks, when placed side by side, may exhibit many and various differences. yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which before the same mark as that with which he was dealing with goods which bore the same mark as that with he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It could be too much to expect that persons dealing with trade marked goods, and replying, as they frequently do, upon marks should be able to remember the exact details of the marks upon goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons for their own. 14 A.O.139/2011 4. Mr Reddy claimed, No.11 cannot be monopolised. The copyright certificate in favour of the plaintiff is not related to cup and saucer. There is no separate registration for each part. Consequently, no monopoly gathered to the plaintiff. There is no deceptive similarity to cause confusion in the market. There is nothing from third party of informing that it was deceived from seeing the packets of the defendant to be that of the plaintiff. 5. The learned Counsel for the plaintiff submits, the defendant in each of the case have copied the colour combination. Section 2 (1) (m) of the Trade Marks Act “mark” includes a “device, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.” The term “goods” means “anything which is the subject of trade or manufacture”. 6. Section 11 deals with relative grounds for refusal of registration. APPEAL FROM ORDER NO.139 OF 2011 7. By now, there should not be any controversy that there is a certificate of registration from copyright office in favour of 15 A.O.139/2011 plaintiff-company. The plaintiff has, got trade mark “Vikram No. 11 Chai” registered. Its name is in typical calligraphy. The tea packets are in green colour. The packets are glossy, sealed in scientific manner preventing intrusion of any foreign particle. It carries typical words, “Bhaishri Ki Chai”. The packets of the defendant are “Assam No.11” with light blue colour on the packets. The pattern of plaintiff at Vikram No.11 is red and blue with golden colour. Same pattern is adopted by the defendant in the inscription, “Assam No.11” “Chay”. The plaintiff has used cup and saucer in the middle of the rectangle. This idea is copied by the defendant in same colour combination. It has also displayed cup and saucer. 8. The trade mark registration of the plaintiff is for user of “No.11”, including “Vikram”. Both the learned Counsel had placed before me for inspection the respective packets of the parties to controvert each other’s contentions. 9. It is amply clear that the plaintiff’s trade mark is registered. In respect of user of “Bhaishri Ki “Vikram No.11 Chai” with colour combination as background. The defendant’s trade mark is not registered. The background on the defendant’s packet and that of the plaintiff is virtually identical to be of light blue colour. Though there is no specification for 16 A.O.139/2011 user of cup and saucer to the plaintiff, however, the placement, colour combination, size of the packets of the plaintiff and of the defendant are resembling each other without causing any difference to ordinary senses. Even, the title on both the labels are in rectangular. The plaintiff carries the name as “Bhaishri Ki “Vikram No.11 Chai” while the defendant carries the name as “Assam No.11 Chai”. These aspects taken together necessarily illustrate that barring “Assam No.11” used by the defendant, all the features in the packets are identical. There is no registration of the defendant’s packet in the category as “Assam No.11”. The ordinary purchaser of tea is from all sectors of the society. It is not a specialised item that the purchaser is necessarily to demand. The deceptive similarity may not remain alive for ordinary purchaser to distinguish his earlier purchase and subsequent. The colour scheme being identical, the customer is bound to be confused and deceptively felt to be the same packet. The printing of packets by defendant is without authorization from competent authorities. APPEAL FROM ORDER NO.92 OF 2011 10. Mr Salunke submits that two distinct situations emerge in the case. According to him, Plaintiff’s packets are titled “Lion No.5 Chay” while that of defendant is “Tiger No.5 Chay”. 17 A.O.139/2011 According to the learned Counsel this user by the defendant is prior in time to the plaintiff. The animals are distinct. There is no similar case. The picture of roaring lion is shown on the packet of the plaintiff whereas distinct tiger is shown in circular shape. There are even no similarity in packets, slogans are not identical. There is nothing whether plaintiff’s trade has been adversely affected. 11. The certificate of registration of trade mark No.1066231 is issued in the name of Assam Tea Company dated 3.5.2005. It was basically registered on 11.12.2011 owned by Assam Tea Company. The plaintiff asserted that such trade mark was got assigned from Assam Tea Company and plaintiff-company and consequently, “Lion No.5” vide trade mark No.1066231 vested by Assam Tea Company to the plaintiff. 12. Even if it is accepted that plaintiff has moved for registration of “Lion No.5”, the fact remains there is no such registration specifying plaintiff’s claim to be exclusive user of “Lion No.5”. The picture of Lion and Tiger appearing on packets even in ordinary course cannot be said to be similar or identical. The lion shown is roaring while the tiger in the defendant’s case is pensive placed in a circle, though the background of both the 18 A.O.139/2011 packets are in green colour. 13. It is difficult to conceive that lion and tiger cannot make different for the public at large. The scope of infringement of registered trade mark of the plaintiff will operate from the date of its registration in favour of the plaintiff. However, from the documents placed on record, it does not depict that the trade mark “Lion No.5” vide registration No.363791 or trade mark No. 1066231 in the name of “Aram Chai” is of the plaintiff. The cup and saucer depicting the vapour emanating, even if accepted to be artistic work of the plaintiff, however, by that itself would not imply for the plaintiff to institute the suit seeking injunction. The defendant has also moved under the logo, “Tiger No.5 Chai” and the competent authority has issued copyright registration certificate of trade mark “Tiger No.5 Chai” (Exh.20). The end user, customer could be collectively in a position to distinctly identify two packets. They are called with clear nomenclature of two animals. In this situation of the matter, the injunction granted by the learned Judge, below Exh.6 in R.C.S.No.3/2009 calls for interference. APPEAL FROM ORDER NO.27 OF 2011 14. The plaintiff’s trade mark, “Vikram No.11” is registered 19 A.O.139/2011 vide No.604234 and trade mark is 1198406 in February 2007 under Category Class-30. The defendant has tried to circulate their tea packets in identical colour packets to that “Vikram No. 11” of the plaintiff by changing the name to “Vikas No.11”. The name of the plaintiff is in a typical calligraphy. The features in the packets of the defendants is, to repeat identical. At the top of the plaintiff’s packet, it is inscribed as “Bhaishri Ki Chai”, while defendant has inscribed it as “Bhai-Bhaiki Vikas No.11 Chai”. A person with average intelligence will definitely get confused between the packets referred above. This is more so, as the defendant’s colour used in the tea packets is with the identical colour combination including the cup and saucer. The script used that “Vikram “ and “Vikas” is also causing confusion to a buyer. If the packets are seen from little distance, “Vikas” is made to believe to be “Vikram”. 15. The manner of tea profession and its user at large are also to be kept in mind. The trade activities for vending tea would be to the persons at remote village, including metropolis. The virtual identical nomenclature would certainly create deception and the impression generated is, the defendant has acted with fraudulent intent. The circulation or sale of the items of the defendant is in Jalna district while that of the plaintiff in entire 20 A.O.139/2011 country. The defendant’s conduct is calculated to pass off other goods as those of the plaintiff’s and defendant has indeed succeeded to produce a confusion in the mind of the customers or the purchasers. In this situation, the grant of injunction dated 18.11.2010 does not call for interference. The legal position discussed before is also taken into consideration. The respective packets are verified, its long drawn impact on stakeholders is visualised. The rights confirred under Trade Marks Act, 1999 are also considered. ORDER (a) Appeal from Order No.139 of 2011 and Appeal from Order No.27 of 2011 dismissed with costs, with respective civil applications. The injunction in respective suits confirmed. (b)