1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO.3709 OF 2009 IN SUIT NO.2576 OF 2009 Rasiklal Manikchand Dhariwal & Anr. .. Plaintiffs Versus Shelke Bevarages Pvt.Ltd. .. Defendant Mr.Virag Tulzapurkar, Senior Advocate with B.N.Poojari i/b. Asian Patent Law for plaintiffs Mr.Girish Godbole with Ashok Tajane for defendant. CORAM : S.C.DHARMADHIKARI, J. DATE : November 19, 2009. P.C.: 1] By consent of parties and since all affidavits have been filed, the notice of motion is disposed of by this order. 2] By this motion, the plaintiffs are seeking interim reliefs so as to prevent infringement of copyright of their Artistic work/ label more particularly described in Annexures F and H to the plaint. The prayer seeks interim injunction restraining the defendant from infringing 2 copyright of the plaintiffs in the Artistic work and label. 3] Prayer (b) is seeking interim injunction restraining the defendant and their servants, agents, representatives, stockiests or dealers or any person/s claiming under or through the defendant from in any manner passing off the defendant’s packeged drinking water or similar goods by adopting and/or using the impugned “OXYCOOL” Trademark or the impugned label identical with and/or deceptively similar to mark/ label more particularly described at Annexure P. 4] Prayer (c) of the motion prays for restraint against the infringement of the plaintiffs’ label mark which is more particularly described at Annexures (C) and (D) to the plaint. 5] Claim of the plaintiffs arises in the following manner. 6] Plaintiff No.1 is an individual. He claims to be Karta of Hindu Undivided Family carrying on business in the name and style of R.M.Dhariwal (HUF). Plaintiff No.2 is a company incorporated and registered under the Companies Act, 1956 owned by the first plaintiff’s 3 Karta. 7] Plaintiffs are engaged, inter alia, in the business of manufacturing packeged drinking water. The defendant is also a company incorporated and registered under the Indian Companies Act, 1956 as a private limited company. It is claiming to be engaged in similar business. 8] It is stated that in or about 2001, first plaintiff undertook an invention of the method of making Oxygen Enriched Packaged Drinking Water and an Apparatus therefor. This invention was duly secured by Indian Patent under the Indian Patents Act, 1970. A copy of the certificate of patent is annexed as Exh.B to the plaint. 9] In or about 2002, the first plaintiff commenced processing and/or bottling and/or marketing and/or dealing in innovative “Oxygen Enriched Healthy Packaged Drinking Water” of a unique purity and utility. Plaintiffs claim that in the year 2002, they adopted a distinctive mark “OXYYRICH”. The said mark was protected by a priority registration in class 32 in respect of packaged drinking water, mineral and aerated water etc. The Registration is granted with effect from 23rd May 2002 and is 4 still in force. A copy of the Registration Certificate is annexed as Annexure C and D. 10] The second plaintiff was authorised by the first plaintiff under a licence/ permission (user agreement) to use the said trade mark. After this exercise the plaintiffs comnenced preparations for commercial production. They also engaged the services of a Designer/ Artist to create a label for the product. Thereafter, the label was created. The Artistic label OXYRICH is, thereafter registered as a copyright in the name of first plaintiff. The person who prepared the label assigned it under a Deed of Assignment dated 7th April 2005 to the plaintiffs. 11] In paras 11 and 12 of the plaint, the plaintiffs state thus:- “11. The most prominent, essential and striking characteristic of the plaintiffs’ artistic label in Exh.F hereto is depiction of the word “OXYRICH” in While on a Sky Blue background. It is further submitted that the plaintiffs’ packaged drinking water is identified with word “OXYRICH” depicted on the label in a distinctive manner and also colour- 5 scheme, getup, design and lay out.” “12. The plaintiffs state that “OXYRICH” artistic work in Exh.F hereto is protected by priority for registration under the Trademarks Act, 1999 in favour of the 1st plaintiff under application No.1231929 in Class 32, inter alia, in respect of packaged drinking water and the same is pending.” 12] It is their contention that after using the said mark on their packaged drinking water, they have started selling it and the product has been a huge success. The peculiar features of the label mark and how it is popularised has been set out in the plaint thereafter. It is stated that the plaintiffs registered Artistic “OXYRICH” label is in extensive and continuous use and has become distinctive of the “Oxygen Enriched Packaged Drinking Water” bottled and marketed by the plaintiffs or by their licensees. The trade and general public associate and identify Artistic OXYRICH trademark label and the said trademark exclusive with Oxygen Enriched Packeged Drinking Water bottled and marked by first plaintiff and/or his licensees. That valuable goodwill and reputation has accrued to the Artistic OXYRICH trademark label. 6 13] In June 2009, the plaintiffs noticed that the defendant commenced bottling and marketing packaged drinking water by adopting and/or using the Artistic Trademark label having colour scheme, getup, design and layout identical with and deceptively similar to the plaintiffs’ Artistic OXYRICH trademark label. The trademark of the defendant is deceptively similar to the first plaintiff’s registered trademark. Annexure P is specimen of the impugned trademark lable adopted and/or used by the defendants. 14] Thereafter, an Advocate’s notice was sent and a reply thereto was received by the plaintiffs. 15] Heavy reliance is placed on the reply to the Advocate’s notice. In the reply the defendants through their Advocate claimed that they are carrying on business of packaged drinking water. Defendant stated that they have honestly adopted a distinctive label OXYCOOL as trademark it is registered under Trademark Registration No.01763076 in Class 32 in respect of packaged drinking water. 7 16] The stand of the defendant is that it adopted OXYCOOL as distinctive trademark for packaged drinking water like OXY-LIFE, OXYLIFE, OXYLITE, OXYPLUS, OXYWELL, OXYJAL, OXYZAL, OXYFLOW, OXYCARE, OXYSIP, OXYDUE, OXYBLUE and it was asserted that OXYCOOL lable is in no way similar to OXYRICH. It is not deceptively similar as alleged and the defendants have no intentions to trade upon goodwill of the plaintiffs. 17] It is this stand which led to the institution of the present suit, claiming aforementioned permanent injunction in furtherance of which the present notice of motion for interim reliefs has been moved. 18] Mr.Tulzapurkar, learned Senior Counsel appearing on behalf of the plaintiffs invited my attention to the plaint and the annexures thereto and contended that the plaintiffs’ registered trademark is in use since 2002. There are figures for sales and promotions, advertisements which are produced on record. These figures are duly certified by the Chartered Accountant. He submits that the OXYRICH trademark and the label mark are both associated with plaintiffs. The plaintiffs have also obtained a copyright in the Artistic work as set out in the plaint. Although, in law, 8 there is no requirement of registration of a copyright yet, the same has been duly registered. He has invitted my attention to para 18 of the plaint and contended that it is only in the month of June 2009 that the plaintiffs came across the defendant’s trademark and that is how the Advocate’s notice has been sent, reply received after which this Court was moved by the plaintiffs. There is no delay and latches in moving this Court. 19] Mr.Tulzapurkar submits that in the affidavit in reply to this notice of motion, the defendants have alleged that the plaintiffs have suppressed the relevant material facts from this Court. Mr.Tulzapurkar submits that as far as the controversy in a suit instituted by the plaintiffs being Suit No.261 of 2009 against one Shilpa Bevarages Pvt.Ltd., is concerned, although, the notice of motion moved therein by the plaintiffs has been dismissed, so also the appeal, that order turns upon its own facts. The claim therein is not the cause of action in the present suit. Once all necessary facts constituting cause of action in the present suit are set out then, merely because adverse order passed is not referred, plaintiffs cannot be held guilty of suppression of facts. More so, when the said facts are not relevant and material at all. In any event, the said suit was contested by that defendant Shilpa and it was the stand of Shilpa that the 9 mark which has been adopted and used is not deceptively similar. Mr.Tulzapurkar submits that in the said judgement in para 9, the learned Single Judge has compared the marks and on facts held that prima facie case was not established so as to demonstrate deceptive similarity or identity in the marks which can amount to infringement or gives rise to an action in passing off. Mr.Tulzapurkar submits that such is not the case here. The defendant in the affidavit in reply has contended that there are various traders in the market which are using the prefix “Oxy” in respect of their trademark and the plaintiffs alone have no exclusive or independent right to claim ownership of the trademark with the prefix “Oxy” in respect of their products. Further, the stand taken is that there are various traders who are using their labels in the market. However, while alleging thus, it is contended that the trademark of the plaintiff is entirely different from that of the defendants. The colour scheme and the overal getup of the bottles are totally different. The lettering and overall scheme of both labels are entirely different. Therefore, when compared and considered as a whole, the overall outlook of plaintiffs’ product and defendant’s product are totally different. Therefore, there is no possibility of causing any confusion. 10 20] Mr.Tulzapurkar submits that this stand and the stand taken on the earlier occasion that the defendant’s mark is distinctive is enough to grant interim injunction. All this is nothing but an after thought on the part of the defendants. Mr.Tulzapurkar submits that the entire affidavit is silent as to when the defendant obtained registration of the mark OXYCOOL, when they prepared the label, when did they commence commercial production and what are their sales, promotional and advertising figures. On the other hand, in the affidavit in reply it is admitted in para 20 that the label of plaintiffs is in Blue and Green colour whereas the label of defendant is in Blue and Green Colour. There is only a difference in lettering of the words and there is absence of some other material. However, Mr.Tulzapurkar submits that the law is well settled. The tests are also clearly spelt out. If these tests are taken into consideration and applied to the facts of the present case, then, such minute distinction and difference cannot be held to be material at the interim stage. It is overall impresssion of a consumer which is relevant. The product must be seen as a whole and it is not possible to undertake a minute scrutiny of the labels. That is not the approach which should be adopted in such cases. Further, if the defendant is alleging that the word “OXY” has been used in several marks as prefix and by several traders and manufacturers, then, 11 producing details of their registration is not enough. It has to be prima facie established and proved that such marks are being used by the persons seeking and obtaining registration. In the absence of any such details and data, the defendant cannot resist the application for interim reliefs. For all these reasons, he submits that the motion be made absolute. 21] On the other hand, Mr.Godbole, learned Counsel appearing for defendant submits that the matter is completely covered by the order passed by the learned Single Judge in the case of Shilpa (supra). This is a relevant and material fact as plaintiffs in both suits are common. Plaintiffs ought to have approached the Court with clean hands by fully setting out that they moved the Court against another manufacturer manufacturing and marketing identical product. That label mark was “OXYFRESH”. The controversy in both suits is identical, namely, the similarity of label marks. Therefore, this fact could not have been suppressed by the plaintiffs and their suppressing the same would disentitle them from any equitable and discretionary relief. They must, therefore, be visited with the consequences of such suppression and the motion be dismissed on this ground alone. 12 22] That apart, according to Mr.Godbole, the learned Single Judge while cosidering the application for interim reliefs has adverted to the very same materials concerning the registration, adoption and usage of the plaintiffs so also their alleged distinctive mark. That is clear from paras 3 to 5 of the order of the learned Single Judge. Further, identical arguments on behalf of the defendants therein were being considered. After reproducing the rival contentions, the learned Single Judge applied the tests laid down by the Supreme Court in the case of J.R.Kapoor Vs. M/s.Micronix India Ltd., reported in J.T. 94 (5) S.C. 37. It is in this context that the learned Judge rendered his finding. Further, not only did he compare the marks but in para 10 of the order he has observed that on the date on which the plaintiffs’ trademark is registered, another trademark OXYWELL was also registered on 12th July 2001. Thus, it is doubtful as to whether the plaintiffs can claim any proprietory rights over the words “OXY”. This is the clear finding given by the learned Single Judge. 23] Aggrieved by the order passed by the learned Single Judge, the plaintiffs carried the matter in appeal and the Division Bench of this 13 Court, while affirming that order further observed that it was doubtful as to whether the plaintiffs can claim any proprietory rights over the prefix ‘OXY”. Further, the Division Bench observed that the Trademarks in their entirety does not prima facie appear to be similar. For the very reasons that pursuaded the Divison Bench and the learned Single Judge to dismiss the prayer for interim reliefs, moved by these very plaintiffs, even this Court should reject the present motion. 24] Mr.Godbole submits that it is not open to plaintiffs to argue that the orders of Single Judge and that of the Division Bench are not applicable to their case. Those orders are squarely applicable as it has been held that the plaintiffs do not have any right in the prefix “OXY”. Once, they cannot claim any proprietory rights in this mark, then, the claim must be rejected. 25] With the able assistance of both the learned Counsel I have perused the plaint, annexures thereto and the affidavits filed on record. I have also perused with their assistance the decisions brought to my notice. 26] The Supreme Court in the decision reported in A.I.R. 1960 S.C. 14 142 (Corn Products Refining Co. Vs. Shangrila Food Products Ltd.) held that in order that a trademark may acquire reputation among general public what is necessary is that the reputation should attach to the trademark. It should appear that the public associated the trademark with certain goods. The reputation must be the reputation of the trademark and not that of the maker of the goods bearing that trademark. The trademark may acquire reputation in connection with the goods in respect of which it is used, though the buyer may not know who the manufacturer of the goods, is. The Supreme Court was considering a case where the respondent before it was manufacturing Biscuits. It made an application for registration of a mark “Gluvita” in respect of the goods specified in class 30. The Registrar of Trademark ordered the application to be advertised before acceptance. The appellant before the Supreme Court was U.S.based company. It had registered the mark “Glucovita” in respect of the goods falling under Class 30 i.e. Biscuits. The application of the respondent was opposed by the appellant. Both sides filed necessary documents. The Deputy Registrar, after considering the same held that the appellant had acquired reputation and goodwill for its trademark “Gluvita” in respect of Glucose powder mixed with vitamins. This was a finding consistent with its ultimate conclusion that the syllable 15 “co” whch was present in the respondent’s proposed mark sufficiently distinguishes the two marks and made it impossible for anyone to be deceived or confused. 27] The appellant then preferred an appeal to this Court from the order of Dy.Registrar. That appeal was heard by the learned Single Judge who set aside the order of the Dy.Registrar. The respondent before the Supreme Court challenged the order of the learned Single Judge and the Division Bench reversed that judgement in respondent’s appeal. That is how the appellant approached the Supreme Court. 28] It is in this context that it made the following observations:- “13. The second point on which the learned appellate Judges based themselves in arriving at the conclusion that there was no reasonable apprehension of confusion or deception was, as we have earlier stated, that there were various trade marks with a prefix of suffix “Gluco” or “Vita” and that made it impossible to say that the common features “Glu” and “Vita” were only associated with the appellant’s 16 products. This view was founded on a passage which the learned appellate Judges quoted from kerly on Trade marks, 7th Edn., P.624. That passage may be summarised thus:- Where there are a “series of marks, registered or unregistered, having a common feature or a common syllale, if the marks in the series are owned by different persons, this tends to assist the applicant for a mark containing the common feature. This statement of the law i Kerly’s book is based on In re: An application by Beck, Koller and Co. (England) Ltd., (1947) 64 R.P.C. 76. It is clear however from that case, as we shall presently show, that before the applicant can seek to derive assistance for the success of his application from the presence of a number of marks having one or more common features which occur in his mark also, he has to prove that these marks had acquired a reputation by user in the market. We will now read a portion of the judgement at pp.82 and 83 in Beck, Koller and Co.’s case from which what we have stated earlier, appears:- “I am disposed to agree with Mr.Burrell’s submission 17 that the “series” objections is primarily founded upon user, because the inference which the Registrar is asked to draw is that traders and the public have gained such a knowledge of the common element or characteristic of the “series” that when they meet another mark having the same characteristic they will immediately associate the later mark with the “series” of marks with which they are already familiar. But I do not think that this statement neessarily implies that the whole issue must be determined solely under the provisions of Section 11 as I will now endeavour to explain.” “When an appliction for registration is before the Registrar it frequently happens that the search for conflicting marks reveals several marks having some characteristic feature in common with the mark of the application, which marks may stand on the Register in the name of one proprietor only, or in the name of several different proprietors. At this stage, when the matter is one between the applicant and the Registrar, the latter generally has before him no evidence as to whether the registered marks are in 18 actual use or not, but in forming an opinion under section 12 as to whether or not confusion or deception is likely to arise, he is bound, I think, in the absence of evidence to presume that, prima fcie, some at least of the registrations have been effected bona fide by persons who at the date of their respective applications were using or proposed in the near future to use their marks. If, therefore, all the marks were owned by one proprietor, the Registrar would presume that the latter was using a “series” of marks and judge ethe conflict between the applicant’s mark and each of the proprietors marks with this consideration in mind. Of course, if the registrations merely consisted of one and the same word egistered separately in respect of several articles to be found in a single class of the Trade marks schedules, the Registrar would in general regard all these registrations as but the equivalent of a single registration covering all the items, for they would not constitute a “series” as now under discussion. On the other hand, if the registered marks found were owned by several different proprietors, this would be a circumstance which might considerably assist the pplicant, who would be in 19 a position to submit that the common characteristic was one well recognised in marks in use in the particular trade. In short, when the Registrar comes to compare the applicant’s mark with the registered marks, using the principles laid down in the ‘Pianotist” case (..........), the presence of marks on the Register other than the one with which the comparison is being made is regarded as one of the surrounding circumstances which he is required to take into account.” “But when the same question comes before the Registrar in opposition proceedings, it appears to me that he is no longer in a position to make any presumption as regards the surrounding circumstances, but that before he can draw the suggested inference based upon the user of other marks either in the applicant’s or the opponent’s favour, any such user must be established by evidence (See. E.G.Harrods Ld.’s Application 91934) 52 R.P.C. 70, 1.39-p 71, 1.45, where the Registrar refused to draw the necessary inference in favour of the applicants in the proceedings)”. 20 We have no reason to think that Kerly in stating the law on the subject intended to depart from the principle stated in the passage that we have just now read from Beck, Kololer and Co.’s Case (1947) 64 RPC 76.” “15. The series of marks containing the common element or elements therefore only assist the applicant when these marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now in the present case the applicant, the respondent before us, led no evidence as to the user of marks with the common element. What had happened was that the Deputy Registrar looked into his register and found there a large number of marks which had either “Gluco” or “Vita” as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its use at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inferences as to their user from the presence of the marks on the register. If any authority on this question is considered necessary, reference 21 may be made to Kerly p.507 & Willesden Varnish Co. Ltd. Vs. Young & Marten Ltd. (1922) 39 RPC 285 at p.289. It also appears that the appellant itself stated in one of the affidavits used on its behalf that there were biscuits in the market bearing the marks “Glucose Biscuits”, “Gluco biscuits” and “Gucoa Lactine biscuits”. But these marks do not help the respondent in the present case. They are ordinary dictionary words in which no one has any right. They are really not marks with a common element or elements. We, therefore, think that the learned appellate Judges were in error in deciding in favour of the respondent basing themselves on the series marks, having “Gluco” or “Vita” as a prefix or a suffix.” “17. We think that the view taken by Desai, J. is right. It is well known that the question whether the two marks are likely to give rise to confusion or