1 mst IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO.1183 OF 2009 IN SUIT NO.743 OF 2009 Ultra Tech Cement Limited Plaintiff versus Alaknanda Cement Pvt.Ltd. and another Defendants Mr.Veerendra Tulzapurkar, Sr.Counsel a/w Mr.Jamsandekar i/by India Law Services for plaintiff. Mr.D.D.Madon, Sr.Counsel a/w Mr.Hemang Engineer i/by Gordhandas & Fozdar for defendants. CORAM : S.J.KATHAWALLA, J. DATE OF RESERVING THE JUDGMENT : 4th March 2011 DATE OF PRONOUNCING THE JUDGMENT : 28th June 2011 JUDGMENT : 1. The issue to be decided in the above Notice of Motion is whether the defendants by using the trade mark "ULTRA TUFF" are guilty of infringing the plaintiff's trade mark "ULTRATECH CEMENT The Engineer's Choice" and/or are guilty of passing off their goods as that of the plaintiff. 2. Briefly set out hereinbelow are the relevant facts in the matter. 3. The plaintiff is a company carrying on the business, inter alia, in the field of manufacturing and marketing of `Cement' and other allied products. The first defendant is a private limited company carrying on the 2 business of goods, inter alia, Cement and building materials. The second defendant is a sole proprietary concern operating as a licensee of the first defendant and carrying on business of goods, inter alia, of cement products. 4. The plaintiff is the registered proprietor of trade mark "ULTRATECH CEMENT The Engineer's Choice" registered under number 1326528 in respect of `cement of all types, building materials (non-metallic), non- metallic rigid pipes for building, asphalt, pitch and bitumen, non-metallic transportable building, monuments, not of metal" specified in Class-19 of the Fourth Schedule of the Trade Marks Rules, 2002 (`the Rules') under the Trade Marks Act, 1999 (`The Act') and the same is valid and subsisting. 5. According to the plaintiff, the words "ULTRATECH CEMENT" is a distinctive trade mark forming part of the corporate name, trade name, trade style and business name of the plaintiff. The plaintiff's cement bags have a colour scheme wherein the trade mark "ULTRATECH CEMENT The Engineer's Choice" is depicted in bold black font, having a distinctive get up, lay out and colour scheme and placement of the ISI certification logo appearing on one side of the cement bag. 6. According to the plaintiff, they are using the said trade mark and corporate name, trade name openly, continuously and extensively since the year 2004 in India in respect of "cement". The products sold under the registered trade mark "ULTRATECH CEMENT The Engineer's Choice" consists of the cement and other agnate and cognate goods. According to the plaintiff it has spent considerable time and amount to popularize the said trade mark "ULTRATECH CEMENT The Engineer's Choice". The said trade mark has been used by the plaintiff on an extensive scale in respect of cement. The cement sold, supplied and/or offered for sale by the plaintiff dealing with the trade mark "ULTRATECH CEMENT The Engineer's Choice" has acquired a vast and enviable reputation by virtue 3 of its intrinsic quality and superiority. The said trade mark has therefore come to be associated solely and exclusively with the plaintiff amongst traders and members of the public. By virtue of the popularity of the goods of the plaintiff, there is considerable care and skill exercised by them in manufacturing and marketing the same and the trade mark "ULTRATECH CEMENT The Engineer's Choice" has become distinctive of the plaintiff's goods, which has come to be associated exclusively with the plaintiff, by the members of the industry, trade and public. It is submitted that during the course of the uninterrupted business, the said trade mark and trade name of the plaintiff has become well known in the trade and to the public at large, for the excellent quality and superiority of the goods. Consequently the plaintiff is solely and exclusively entitled to use the trade mark 'ULTRATECH CEMENT The Engineer's Choice" to the exclusion of others. A statement of sales turn over of the plaintiff's goods i.e. cement bearing trade mark 'ULTRATECH CEMENT The Engineer's Choice" for the years 2005-2006 to 2007-2008 and a statement of advertisement and publicity expenses incurred by the plaintiff during the said period duly certified by the plaintiff's Chartered Account is annexed and marked as Exhibit-C to the plaint. 7. According to the plaintiff, the plaintiff came across an advertisement in a daily local newspaper "SAKAL" dated 24th May 2008, published by the second defendant. The advertisement pertained to the requirement for "Dealers for Cement Sales in Pune and Surrounding Areas" and "Marketing Executives and Officers having experience of at least 3-4 years in cement sales" and depicted the mark "ULTRA TUFF CEMENT" in bold black. A copy of the said advertisement is annexed and marked as Exhibit-D to the plaint. According to the plaintiff, subsequently the plaintiff got hold of an almost identical product manufactured and sold by the defendant no.1 under the impugned mark/label "ULTRATUFF CEMENT" which mark is identical with and/or deceptively similar to the plaintiff's registered trade mark "ULTRATECH CEMENT The Engineer's Choice", used by the plaintiff in respect of cement. According to the 4 plaintiff with an ulterior motive to come as close as possible to the plaintiff's goods the gunny bag used by the defendants also has identical placement of its mark "ULTRATUFF CEMENT" with identical colour scheme of white and/or off-white and also the placement of impugned mark, font size of words "ULTRATUFF CEMENT", up to the minutest details of pale yellow strips appearing on extreme left and right sides of the gunny bags has been blatantly copied. Also the placement of the name and address of the defendant no.1 at the bottom of the gunny bag along with the quality "Portland Pozzolana Cement" placed on the top right is identical to the plaintiff's gunny bag. The placement of ISI certification logo on the defendants gunny bag also appears at an identical place as that of the plaintiff with an ISI number. It is thus submitted that the defendants motive is clearly to pass off their goods as that of the plaintiff's goods and trade upon the reputation and good will of the plaintiff. 8. According to the plaintiff, the first defendant has copied all the essential features of the plaintiff's registered trade mark. The words "ULTRATUFF CEMENT" are identical with and/or are deceptively similar to the plaintiff's registered trade mark "ULTRATECH CEMENT". The impugned trade mark is structurally, visually, phonetically and confusingly similar to the plaintiff's prior adopted and registered trade mark "ULTRATECH CEMENT" which is likely to cause confusion and/or association in the minds of the consumers with average intelligence and normal imperfect recollection, as to the source or origin of the goods. The defendants are, therefore, infringing on the plaintiff's registered trade mark and/or trying to pass off their goods and/or enabling others to pass off their goods as and for those of the plaintiff's goods. It is submitted that the use by the defendants of an identical label not only constitutes infringement of the plaintiff's registered trade mark but also the trade name/corporate name of the plaintiff company is being infringed. 9. According to the plaintiff, under the circumstances, by its letter 5 dated 28th May 2008, the plaintiff called upon the defendant no.2 to seize and desist from manufacturing, marketing, distributing, selling, offering for sale, advertising and/or howsoever dealing in cement products or any other products under the impugned mark "ULTRATUFF CEMENT" or any other logo deceptively similar to the plaintiff's registered trade mark "ULTRATECH CEMENT The Engineer's Choice" and/or to pass off or to enable others to pass off the defendants' products as and for the products of the plaintiff. The first defendant in its reply to the said notice through their advocate's letter dated 12th June 2008 denied the contentions contained in the plaintiff's letter dated 28th May 2008. The plaintiff through it's advocate sent a rejoinder letter dated 23rd June 2008 to the defendant no.1's letter dated 12th June 2008 and reiterated it's claims mentioned in the notice dated 28th May 2008. The first defendant by its advocate's letter dated 14th July 2008 once again denied the contentions raised by the plaintiff. The plaintiff thereafter filed the present suit and took out the above Notice of Motion No.1183 of 2009 seeking ad-interim and interim reliefs. By an order dated 20th July 2009, the application of the plaintiff for ad-interim relief was rejected. The Notice of Motion is now taken up for hearing and final disposal. 10. The defendants filed their affidavit-in-reply to the Notice of Motion dated 7th September 2009. According to the defendants, in or about July 2006 the defendant no.1 conceived and adopted the trade mark "ULTRATUFF CEMENT" in respect of all types of cement varieties i.e. Ordinary Portland Cement (also known as OP) and Portland Pozzolana Cement (PP or Fly Ash Based Cement). The defendant no.2 is a partnership firm and one of the directors of the defendant no.1 is a partner of defendant no.2 and defendant no.2 is using the said trade mark under the permission of defendant no.1. It is submitted that the goods as manufactured and marketed by the defendants are sold in gunny bags which bear a distinct design, get up and colour scheme which is totally new and novel. The trade mark "ULTRATUFF" is depicted in a distinctive manner and the word "ULTRA" is appearing above the word "TUFF" and 6 letter `T' of word `TUFF' is starting from the foot of letter `A" of the word `ULTRA'. The gunny bag bears the colour combination of red and black with a white background. 11. According to the defendants, the Notice of Motion taken out by the plaintiff deserves to be dismissed on the following grounds :- (i) The present suit is filed after an inordinate and unexplained delay. No reasons are given for not filing the present suit for more than one year after the plaintiff's advocates addressed correspondence to the defendants; (ii) The plaintiff has suppressed the fact that Grasim Industries is the registered proprietor under Registration No.1244745 of the trade mark "ULTRATECH CEMENT"; (iii) The plaintiff has suppressed the fact that the plaintiff is granted registration for the Trade Mark Type `Device'. The plaintiff is not granted registration as a `Word Mark' for the words "ULTRATECH CEMENT The Engineer's Choice"; (iv) The registration granted to the plaintiff does not confer any exclusive right to the plaintiff in the matter "ULTRA" and "ULTRATECH"; (v) The plaintiff's registered trade mark consists of several matters namely "ULTRATECH CEMENT The Engineer's Choice". The words contained in the plaintiff's trade mark namely "ULTRA" and "ULTRATECH" are separately registered by other proprietors; (vi) That in view of the provisions of Section 17(2) of the Trade Marks Act, 1999 ('the Act'), the registration granted to the plaintiff does not confer any exclusive right in the matter "ULTRA" and "ULTRATECH" which are forming only a part of the whole of the plaintiff's registered trade 7 mark; (vii) That the words "ULTRA" AND "ULTRATECH" are common to the trade and are otherwise of a non-distinctive character as is evident from the Search Report dated 7th April 2009 annexed at Exhibit-1 to the reply; (viii) That the word "ULTRA" or "ULTRATECH" has not acquired any distinctiveness qua the plaintiff's goods. The plaintiff's trade mark has not acquired any secondary significance and therefore, the plaintiff is not entitled to claim any monopoly rights in a trade mark which contains the word "ULTRA" or "ULTRATECH"; (ix) That the prefix "ULTRA" being a common word to the trade is a descriptive word and combination thereof with a descriptive word "TECH" that denotes technical is not distinctive of the plaintiff's goods; (x) That the word "ULTRA" itself stands registered under No. 700622 dated 5th March 1996 in respect of identical goods in the name of "Ultra Tile Private Limited" based in Chennai who claims to have used the same from 1st August 1993 and the trade mark "Ultratech" is registered under No.1322426 in the name of Rajiv Gupta who has claimed user from 6th November 1996. The date of the registration application by Rajiv Gupta is 29th November 2004 which is prior to the plaintiff's application date of 17th December 2004; (xi) That the trade marks "Ultracast" and "UltraBond Eco" are also registered trade marks which have been registered earlier and prior to the use by the plaintiff of its trade mark "ULTRATECH CEMENT The Engineer's Choice". The plaintiff has, therefore, adopted a trade mark, of which there is an owner, who had earlier made an assertion of ownership by registration or by user and hence the plaintiff cannot claim to be the proprietor of the trade mark; 8 (xii) The plaintiff has only copied somebody else's trade mark and therefore cannot claim to be the owner of or proprietor of the word "ULTRATECH CEMENT" and maintain an action of passing off. This contention of the defendants is supported by an unreported order of this Court (Coram : S.A.Bobde, J.), dated 21st/22nd April 2003 in Notice of Motion No.506 of 2003 in Suit No.550 of 2003 in the matter of Ayushakti Ayurved Pvt. Ltd. and others Vs. Hindustan Lever Limited; (xiii) That the plaintiff is not entitled to the relief of passing off as the defendants' trade mark is structurally, visually and phonetically different from the plaintiff's label. There is no similarity in the plaintiff's label and the plaintiff's gunny bags in which the cement is sold. 12. The defendants have further submitted that the sale of cement under the trade mark "ULTRATUFF" by the defendant no.1 for the period between 1.7.2006 and 31.3.2007 is Rs.1,40,19,788/-, for the period 2007-2008 is Rs.3,40,51,722/- and for the period 2008-2009 is Rs. 2,72,52,517/- and for the year 2009-2010 is Rs.2,08,59,304/-. The sale of cement by defendant no.2 for the year 2008-2009 is Rs.2,55,14,607/- and for the year 2009-2010 is Rs.4,26,83,567/-. The defendants have in support of their contentions relied on the certificates and statements of turn over as well as copies of bills/invoices which are annexed as Exhibits-3A to 3C, 4 and 5A to 5D to their affidavit-in-reply. The defendants have also submitted that they have incurred advertisement expenses for promoting the sale of cement under the trade mark "ULTRATUFF" to the tune of Rs.4.30 lakhs, Rs.6.70 lakhs, Rs.5,25 lakhs and Rs.5.46 lakhs for the years 2006-2007, 2007-2008, 2008-2009 and 2009-2010 respectively. The certificates issued by the Chartered Accountant of the defendants in respect thereof are annexed as Exhibits-6A to 6C and 7 to the affidavit-in-reply of the defendant no.1. The defendants have also relied on an additional representation made by them to the Trade Marks Registrar wherein the date of user of the trade mark 9 "ULTRATUFF CEMENT" is shown as 5th January 2007. It is submitted on behalf of the defendants that for the aforestated reasons the Notice of Motion be dismissed with costs. 13. The plaintiff filed an affidavit-in-rejoinder dated 12th June 2009, wherein they have denied/disputed the aforestated submissions advanced on behalf of the defendants. 14. Mr.Tulzapurkar, learned Senior Advocate appearing for the plaintiff, in rejoinder pointed out that the defendants have stated in paragraph 17 of their affidavit in reply that the defendant no.1 had conceived and adopted the trade mark "ULTRATUFF CEMENT" in the month of July 2006. The defendants have also stated that they have made an application for registration of the trade mark "ULTRATUFF CEMENT" on 18th March 2008. The application for registration of the trade mark "ULTRATUFF", made by the defendant is annexed to the reply at page 84. In the application for registration of the trade mark "ULTRATUFF", the defendants have claimed user of the impugned trade mark since 5th January 2007. The claim of user by the defendants is therefore different in paragraph 17 of the affidavit-in-reply and in the application made for registration of the trade mark "ULTRATUFF CEMENT". He further submitted that defendants have stated in their affidavit-in-reply that they are using the impugned trade mark "ULTRATUFF" since July 2006 and have produced the purported invoices to prove the same. The plaintiff has in the rejoinder pointed out that the invoices produced by the defendants are fabricated. Mr.Tulzapurkar took me through each and every invoice annexed to the reply and has pointed out how the defendants have subsequently added the word "ULTRATUFF" on copies of the bills/invoices relied upon by them. He has submitted that the defendants have not been honest with the Court and on this ground alone the plaintiff is entitled to the reliefs as sought for by them against the defendants. 10 15. Mr.Tulzapurkar further submitted that for deciding the question of deceptive similarity between two trade marks what is required to be considered by the Court are the essential features of the trade marks, and no microscopic examination is permitted nor any etymological meaning of the words used need to be considered. The Court has to consider the question from the point of view of an ordinary man of average intelligence. The words other than the one which form essential features are to be ignored. The essential features namely the word marks/trade marks "ULTRATECH" and "ULTRATUFF" are to be compared and as stated above, the same are phonetically, visually and structurally similar. Mr.Tulzapurkar submitted that considering the class of purchasers, there can be no doubt that there can be deception and/or confusion and/or there is likelihood of association. The plaintiff's registered trade mark having been fixed in the minds of the purchasers, is bound to be recalled by an unwary purchaser when he sees the impugned mark particularly in respect of identical goods. The purchaser is bound to be put in the state of wonderment if totally not confused or deceived. In support of these contentions Mr.Tulzapurkar relied on the decisions of this Court in case of James Chadwick & Bros. Ltd. Vs. The National Sewing Thread Co. Ltd. (AIR-1951-BOM-147) and M/s.Hiralal Prabhudas Vs. M/s.Ganesh Trading Co. (AIR-1984-BOM-218) and the decisions of the Apex Court in National Sewing Thread Co. Ltd. Chidambaram Vs. James Chadwick and Bros. (AIR-1953-SC-357) and Amritdhara Pharmacy Vs. Satya Deo Gupta (AIR-1963-SC-449). 16. Dealing with the contention of the defendants that in view of the provisions of section 17(2) of the Act the registration granted to the plaintiff does not confer any exclusive right in the matter of "ULTRA" and "ULTRATECH" which form only a part of the whole of the plaintiff's registered trade mark, Mr.Tulzapurkar has submitted that all that section 17 of the Act lays down is that the registration of a trade mark shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered, unless the part is a subject matter of a 11 separate application for registration or is separately registered or is distinctive. Sub section 2(a)(i) and 2(a)(ii) and sub section (b) of Section 17 of the Act show that the three things mentioned therein are disjunctive and not cumulative. In the present case, though the word "ULTRATECH" is not separately registered nor is the subject of a separate application, the same being distinctive, the case falls under sub section 2(b) of section 17. Hence, the defendants' contention that the plaintiff cannot maintain an action for infringement is unsustainable, firstly, for the reason that the essential features are required to be considered and secondly, the word "ULTRATECH" is distinctive. The fact that the plaintiff's mark is registered without any disclaimers or limitations, itself proves that the word "ULTRATECH" is a distinctive mark and the plaintiff has satisfied the criteria laid down in sections 9 and 11 of the said Act. Mr.Tulzapurkar in support of his contention relied on paragraph 35 of the decision of the learned Single Judge of Calcutta High Court in Three-N-Products Private Ltd. Vs. Emami Ltd; GA Nos.2951 and 3976 of 2007 and CS No.204 of 2007 decided on 26th August 2008 and relied upon by the defendants. It is therefore, submitted that the defendants reliance on section 17 of the Act is misplaced. 17. Mr.Tulzapurkar in response to the defendants contention that the word "ULTRA" is common to the trade and therefore there is no likelihood of deception or confusion, has submitted that it is now well established that mere presence of a mark in the register does not prove its user. The person relying on such trade marks having common element is required to establish extensive user. The defendants have failed to prove the extensive user of the mark containing the word "ULTRA". In support of this submission Mr.Tulzapurkar has relied on the decision of the Apex Court in the case of Corn Products Refining Co. Vs. Shangrila Food Products Ltd. (AIR-1960-SC-142) and the decisions of this Court in Pidilite Industries Limited Vs. S.M.Associates 2004(28)-PTC-193 and M/s.D.R.Cosmetics Pvt.Ltd. Vs. J.R.Industries (AIR-2008-BOM-122). Mr.Tulzapurkar has further submitted that the defendants themselves 12 have applied for registration of the impugned trade mark containing the word "ULTRATUFF". The defendants are therefore now estopped from contending that the plaintiff's mark containing the word "ULTRATECH" is descriptive or common to the trade. In support of this submission he has laid reliance on the decision of Automatic Electric Ltd. Vs. R.K.Dhawan (1999-PTC-81) which decision was approved by a Division Bench of the Delhi High Court in the case of Indian Hotels Co. Ltd. Vs. Jiva Institute of Vedic Science and Culture (MIPR 2008(3)-0082). 18. Mr.Tulzapurkar has next submitted that the plaintiff has established the reputation of its mark. The plaintiff by placing the figures pertaining to sales and advertisement expenses in respect of its trade mark "ULTRATECH" has established the reputation of its mark. The plaintiff's case for passing off is based on the deception and confusion caused by the impugned trade mark of which the word "ULTRATUFF" forms an essential part and which is deceptively similar to the plaintiff's trade mark of which the essential feature is the word "ULTRATECH", both the essential features being very close to each other. The goods are ordered with reference to the word marks. The defendants contention that the gunny bags in which cement is sold by the plaintiff and the defendants are different and therefore there is no question of passing off, is unsustainable. Mr.Tulzapurkar has further submitted that the defendants are the subsequent adopter of the impugned mark as their application for registration shows that the mark is used since 5th January 2007 i.e. almost two years after the plaintiff started using its mark. The defendants were aware of the plaintiff's mark and adopted the impugned mark with full knowledge and once the impugned mark is found to be similar, then the defendants cannot rely on the user made after knowledge of the plaintiff's mark. It is the defendants' case that they have adopted the impugned mark after full inquiry. Thus, the defendants adopted the mark with full knowledge of the plaintiff's mark and therefore cannot raise any plea in equity. In support of this submission Mr.Tulzapurkar has relied on a decision of the Division Bench of this Court in the case of Bal Pharma 13 Ltd. Vs. Centaur Laboratories Pvt. Ltd. 2002(24)-PTC-226 (Bom)(DB). 19. Mr.Tulzapurkar has next submitted that the defendants contention that the plaintiff has copied somebody else's mark is also not sustainable. Firstly, the plaintiff is the registered proprietor of the trade mark. As held by this Court in case of Podar Tyres Vs. Bedrock Sales Corporation Limited (AIR-1993-BOM-237), the validity of registration cannot be raised at this stage. Secondly, even if the mark "ULTRATECH" is registered in the name of Rajiv Gupta, the same is in respect of Plywood, Block Boards, Flush Doors etc. which goods are different from the goods for which the plaintiff's mark is registered. Thirdly, the registration of the mark in the name of Rajiv Gupta cannot be a defense to the plaintiff's action both for infringement and passing off against the defendants. The effect of registration in the name of Rajiv Gupta is that the plaintiff cannot complain of infringement against Rajiv Gupta in view of the provisions