IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED :21-12-2010 CORAM: THE HONOURABLE MR. JUSTICE V. RAMASUBRAMANIAN O.A.Nos. 1240 and 1241 of 2010 and A.Nos. 6981 and 6982 of 2010 in C.S.No. 979 of 2010 Ashok Leyland Limited, 1, Sardar Patel Road, Guindy, Chennai-600 032 represented by its General Manager-Legal and Constituted Attorney Mr.S.Venkataraman .. Plaintiff vs. 1.Blue Hill Logistics Pvt. Ltd., 171, 2nd Floor, Nilgiri's Building, Brigade Road, Bengaluru-560 001. 2.Dilip Chhabria Design Private Limited, Keytuo Industrial Compound, Kondivita Road, MIDC, Andheri (East), Mumbai-400 059. .. Defendants For Plaintiff : Mr.Arvind P.Datar, Senior Counsel for Mr.A.A.Mohan. For First Defendant : Mr.P.S.Raman, Senior Counsel for Mr.P.V.S.Giridhar. COMMON ORDER Pending suit for permanent injunction restraining the defendants from committing infringement of the plaintiff's registered trademark 'LUXURA" and from passing off and for various consequential reliefs, the plaintiff filed two applications for interim injunction in O.A.Nos.1240 and 1241 of 2010. The prayer in OA.No.1240 of 2010 was for the grant of an interim order of injunction restraining the defendants from committing infringement and the prayer in O.A. No.1241 of 2010 was for an interim injunction restraining the defendants from passing off. 2. On 2.12.2010, when the applications for injunction were moved for ad interim ex parte orders, the first respondent, who was on caveat, took notice through counsel and represented to this Court that the first respondent has already started operating the passenger bus service between Madras and Bangalore using the name "LUXURIA". Therefore, this court passed an interim order, the operative portion of which is found in paragraph 8 and it reads as follows : "Therefore, I am restricting the order of injunction by restraining the respondents from operating any other buses any where in the country under the trade name 'LUXURIA' or 'LUXURA' until further orders, excepting operating their services from Madras to Bangalore and Bangalore to Madras. Excepting this route where only one bus is being operated, the defendants shall not operate any other luxury buses under the name 'LUXURA' or 'LUXURIA'. It is made clear that if the respondents/defendants are found using their buses under the mark 'LUXURA' or 'LUXURIA' in their routes, excepting the Madras-Bangalore route, the plaintiff shall seek police assistance to seize the said buses." 3. Thereafter, the first respondent has come up with two applications in A.Nos.6981 and 6982 of 2010 for vacating the interim orders of injunction granted in both the above applications. Therefore, all these applications were taken up for hearing and I have heard Mr.Arvind P.Datar, learned Senior Counsel for the plaintiff and Mr.P.S.Raman, learned Senior Counsel for the first defendant. 4. The case of the plaintiff is that it is engaged in the business of manufacture and sale of commercial vehicles for the past more than six decades, offering a world class range of buses, trucks, engines, defence and special application vehicles; that they have seven manufacturing plants and sophisticated modern state of the art research and development facilities; that the plaintiff's vehicles have gained a reputation; that in the course of its business, the plaintiff coined and adopted a trademark known as 'LUXURA' in relation to commercial vehicles in the year 2006; that they also obtained registration of the said mark under trademark No.1552326 dated 20.4.2007 in Class 12; that the plaintiff launched its LUXURA bus during the Auto Expo held in January 2006 at Delhi; that the plaintiff had sold these buses to many customers all over India including transport corporations; that the plaintiff had spent considerable expenditure towards sales and promotion of the LUXURA branded buses through print and electronic media; that in August 2010, the plaintiff came across an article titled 'Premium Practicality' in a magazine to the effect that the second defendant had designed and engineered a business class bus under the trademark 'LUXURA/ LUXURIA', which was ready for launch; that immediately, the plaintiff issued a legal notice dated 13.8.2010 to the second defendant calling upon them to cease and desist; that the second defendant issued a reply dated 21.8.2010 stating that they do not own the vehicle mentioned in the magazine, but only build bodies for the vehicles of their clients; that however, they refused to disclose the details of the owner for whom the vehicle was designed; that the plaintiff issued a further legal notice dated 1.9.2010, to which, the second defendant issued a reply dated 5.9.2010; that the plaintiff thereafter came to know through enquiries that a company, by name Blue Hill Foods and Retail Private Limited, Bangalore was proposing to operate bus services under the trademark 'LUXURIA'; that the plaintiff therefore issued a cease and desist notice dated 20.9.2010 to the said company; that the said company issued a reply dated 29.9.2010 stating that they are not concerned with the manufacturing of vehicles, but engaged in the business of running supermarkets; that in the meantime, a company, by name Blue Hill Logistics Private Limited served a caveat upon the plaintiff, which made it clear to the plaintiff that it was that company, which was proposing to market buses under the trademark 'LUXURIA'; that thereafter, the plaintiff issued a cease and desist notice dated 3.11.2010 to the said company; that despite receiving the notice, they proceeded with the launch of the bus services on 12.11.2010 under the trade name 'LUXURIA' and thereafter issued a reply dated 15.11.2010, refusing to comply with the demand made by the plaintiff; and that therefore, the plaintiff was constrained to file the above suit for infringement and passing off and for various consequential reliefs such as rendition of accounts, surrender and destruction of all offending materials and for compensatory and punitive damages to the tune of Rs.1 crore. 5. In the affidavits in support of the vacate injunction applications, the first defendant has contended that they are part of the family of Blue Hill Investment Private Limited; that their company has introduced high quality and luxurious intercity travel services; that the super luxury intercity bus services have been launched with an investment of more than Rs.30 crores; that with 12 VOLVO buses and necessary infrastructure, the services have been launched under the name and style of "LUXURIA"; that the first defendant had filed an application for registration of the trade mark "LUXURIA" under Class 39, relating to transport, packing and storage of goods, travel arrangements, etc and Class 35 relating to advertisement, business management, business administration and office functions; that since the plaintiff has registered its trade mark under Class 12 and they are not operating any travel services for the public, there was no likelihood of confusion in the minds of the consumers; that even assuming that there was some similarity in the services rendered, there was no similarity between the use of the trademarks; that the service mark adopted by the first defendant with the word "LUXURIA" is preceded by the image of a luxurious reclining seat; that both the words "LUXURA" and "LUXURIA" are derived from the generic word "LUXURY"; that the plaintiff cannot claim monopoly either over the word 'LUXURY' or over the variants of that word; that while the registered trade mark of the plaintiff pertains to goods, the trade mark adopted by the first defendant pertains to services; and that there is neither prima facie case nor balance of convenience in favour of the plaintiff. 6. The plaintiff has filed a set of 19 documents. The first document is a news item that appeared in the English daily "The Hindu" on 11.1.2006, announcing the plaintiff's launch of the bus under the trade mark 'LUXURA'. The second document is the February 2006 issue of Ashok Leyland Employees' Journal titled "Ashley News", containing details about the launch of the vehicle with the trademark 'LUXURA', in the Eighth Auto Expo held in Delhi in January 2006. The catalogue/brochure of the plaintiff's bus is filed as Doc.No.3. An article which appeared in the newspaper "Business Standard" on 6.4.2007, about the plaintiff's bus 'LUXURA' is filed as Doc.No.4. The news item which appeared in "The Times of India" in its edition dated 9.3.2009, about Andhra Pradesh State Road Transport Corporation introducing the plaintiff's 'LUXURA' buses for their interstate services, is filed as Doc.No.6. These documents establish that the plaintiff launched its luxury bus with the trademark 'LUXURA', way back in the year 2006 and that the launch received wide publicity and that the vehicles have also reached the market place. 7. The certificate of registration issued in favour of the plaintiff by the Registrar of Trademarks, on 24.3.2009, for the word mark 'LUXURA' in respect of motor vehicles, chassis, motors for land vehicles, apparatus for locomotion by land including commercial vehicles, couplings and motor parts and fittings under Class 12, is filed as Doc.No.5. The mark has been assigned trademark No. 1552326 and the registration is with effect from 20.4.2007. Thus, it is clear that the plaintiff is the registered proprietor of the word mark 'LUXURA' in respect of goods falling under Class 12. 8. The relevant pages of the magazine by name "Commercial Vehicles", containing an article titled "Premium Practicality" is filed as Doc.No.7. This contains information about the vehicle designed by the second defendant, with the word "LUXURIA" appearing on a luxury bus along with the device of a reclining chair. Doc.No.8 is the cease and desist notice dated 13.8.2010 issued by the plaintiff to the second defendant. In their reply dated 21.8.2010 filed as Doc.No.9, the second defendant had simply stated that they did not own the vehicle in question, but only build bodies for their clients, the information about whom could not be divulged on account of confidentiality. 9. In the light of the stand taken by the second defendant in their reply (Doc.No.9), the plaintiff issued a rejoinder dated 1.9.2010, filed as Doc.No.10 calling upon the second defendant to issue a corrigendum to the article published in the magazine referred to in Doc.No.7, if they really had nothing to do with the trademark. But, the second defendant issued a reply dated 5.9.2010, filed as Doc.No.11, informing the plaintiff that they have a non disclosure agreement with their client and that therefore, they would not divulge any information. However, it was also stated in Doc.No.11 that the second defendant had forwarded the copies of the correspondence, to their client. 10. Thereafter, the plaintiff made enquiries and found out that a company by name Blue Hill Foods and Retail Private Limited, had applied for registration of a trade mark "LUXURIA". Therefore, the plaintiff issued a cease and desist notice to them on 20.9.2010, filed as Doc.No.12. That company gave a reply dated 29.9.2010 filed as Doc.No.13, stating that they are only in the business of running supermarkets and that they are in no way concerned with the manufacture of vehicles. They also categorically stated that they had not applied for the registration of a trademark "LUXURIA". 11. Therefore, the plaintiff again made enquiries and came to know about the attempt made by the first defendant to adopt the name 'LUXURIA'. Therefore, a cease and desist notice dated 3.11.2010 was issued to that company, namely Blue Hill Logistics Private Limited, which is the first defendant herein. The copy of the said notice is filed as Doc.No.14. Thereafter, a news item appeared in the English daily "The Hindu  Business Line" dated 13.11.2010, about the launch of an intercity bus service between Bangalore and Chennai under the name 'LUXURIA'. The copy of the news item is filed as Doc.No.15. 12. After proceeding with the launch, the first defendant issued a reply dated 15.11.2010 filed as Doc.No.16 raising all contentions that they have now raised in their applications for vacating the injunction. The fiscal and other details regarding the first defendant, taken out from the website of the Registrar of Companies is filed as Doc.No.17. It shows that the first defendant was incorporated only on 13.5.2010 with an authorised capital of Rs.5 crores and a paid up capital of Rs.1,00,100/-. The print out of the website of the first defendant containing the photographs of the interior as well as the exterior of the bus belonging to the first defendant, is filed as Doc.No.18. The copy of the trademark application filed by Blue Hill Foods and Retail Private Limited, for the registration of the word "LUXURIA" as a device mark along with a reclining chair, under Class 12, is filed as Doc.No.19. 13. The first defendant has filed a set of about 23 documents. The first document is the advertisement issued in Trade Mark Journal No.1402, dated 16.10.2008, in respect of the plaintiff's mark "LUXURA". The second document is a corrigendum issued in the magazine 'Commercial Vehicle', to the effect that the word "LUXURIA" was wrongly spelt as "LUXURA", in respect of the brand name of the bus designed by D.C.Designs (second defendant) for a client. The third and fourth documents are the trade mark applications filed by the first defendant on 3.8.2010 in respect of the mark "LUXURIA" with the device of a reclining chair appearing before the word mark. The first defendant has claimed the period of user of the mark only from July 2010. While one application is for registration under Class 35, the other is under Class 39. 14. Doc.Nos.5 to 10 relate to the advertisement and publicity campaign undertaken by the first defendant in Radio Indigo, Chennai Live FM, Bangalore Times and Bangalore Mirror. But, these are dated 3.11.2010, 9.11.2010, 15.11.2010 and 25.11.2010. The website information relating to the type of buses operated by APSRTC is filed as Doc.No.11. 15. The inaugural issue of a monthly magazine titled "LUXURIA" issued for November-December 2010 containing the photographs and features of the bus of the first defendant, is filed as additional document No.1. The pamphlet issued by the first defendant, indicating the different divisions of the Blue Hill group, containing the logo "LUXURIA" is filed as additional document No.2. The news items published in DNA(Bangalore Edition), Sanjeevini (Bangalore Edition  Kannada version), Deccan Herald (Bangalore Edition), Economic Times (New Delhi Edition) and The Hindu  Metroplus (New Delhi Edition) are filed as additional document Nos.3 to 8. But, these are dated 13.11.2010, 16.11.2010, 18.11.2010 and 23.11.2010. 16. Three more documents were filed by the first defendant to show that a Bath manufacturer has adopted the word "LUXURA" for his whirlpool bath and that a pharmaceutical company had also adopted the same word "LUXURA" for their insulin pen. 17. From the pleadings and the documents, it is clear that the plaintiff has already obtained registration of the word mark "LUXURA" in respect of the goods falling under Class 12. Therefore, the plaintiff has the exclusive right, by virtue of Section 28(1) of the Trade Marks Act, 1999 to the use of the trade mark in relation to those goods, subject however to any conditions and limitations, to which the registration is subject. Hence, as per the decision of the Supreme Court in Midas Hygiene Industries Pvt Ltd case {2004 (28) PTC 121}, the plaintiff is entitled to an interim injunction, under normal circumstances, subject however to the nature and validity of the defence put up by the defendants. Therefore, let me now have a look at the defence raised by the first defendant. 18. The defence raised by the first defendant are as follows : i. that the words "LUXURA" and "LUXURIA" are only derivatives of the generic word "LUXURY" and that no one can claim any exclusive right to the use of the same; ii. that while the plaintiff's word mark is registered in respect of goods under Class 12, the first defendant's use of the device mark is in respect of services falling under Classes 35 and 39; and iii. that while the plaintiff is the manufacturer of buses and motor vehicles, the first defendant is merely a provider of transport services to the public at large and hence, the target population for both of them are quite distinct and different, leaving no room for any confusion or likelihood of confusion. 19. Insofar as the first defence is concerned, it is no doubt true that the registered word mark of the plaintiff "LUXURA" as well as the word "LUXURIA" adopted by the first defendant, are only derivatives of the common English word "LUXURY". But, then the question is as to whether the word 'LUXURY' is generic or not. 20. McCarthy's Desk Encyclopedia of Intellectual Property defines a generic name as "a word used by a majority of the relevant public to name a class or category of product or service". McCarthy goes on to state that whether a term is a generic name is ultimately determined by majority public usage of the term and that the issue is whether the relevant public interprets and uses that term to name a whole class of goods or services or only to identify and distinguish one commercial source of those goods or services. 21. Therefore, a term can be identified as a generic name, only if the relevant public uses the same to identify a class or category of products or services. In other words, it is only when the term 'LUXURY' has come to be identified in public usage, with buses and/or transport services, that the said term can be said to have become a generic term in relation to the products, namely buses or in relation to services, namely transport. 22. It is common knowledge that more than buses and transport services, the term 'LUXURY' has come to be identified by the relevant public, with cruises, most of which are advertised as Luxury Liners. Some times, the word 'LUXURY' is also used in association with the word 'SEGMENT', in relation to cars. But, the term 'LUXURY' does not become a generic name, because of such usage. 23. In pharmaceutical industries, the usage of generic terms is common and is also unavoidable, due to the fact that every product is a derivative or species of a generic term. All companies manufacturing a penicillin drug, may out of necessity, name the drugs as variants or derivatives of the generic name penicillin. Therefore, it is only those names, which have come to be identified with a class or category of goods or services, by the public at large, that can be called as generic. 24. There are several terms by which different types of passenger buses are identified by the public. "Deluxe", "Super Deluxe", "A/C Coach" and "Video Coach" are some of the terms by which the relevant public understands transport services. But, even these terms are merely descriptive of the nature of the services rendered. These terms by themselves could not be taken to be generic terms. Therefore, the contention that the words 'LUXURA' and 'LUXURIA' are derivatives of the generic word 'LUXURY', cannot be accepted. 25. At the most, the term 'LUXURY' or its variants could only be said to be descriptive of the nature of the services rendered by a transport operator or the manufacturer of buses. A descriptive mark is defined by McCarthy, on the following lines, based upon the decision of the 7th Circuit in G.Helleman Brewing Co. Vs. Anheuser-Busch Inc.(873 F.2d.985) : "A word, picture, or other symbol that directly describes something about the goods or services in connection with which it is used as a mark. Such a term may be descriptive of a desirable characteristic of the goods; the intended purpose, function, or use of the goods, the size or color of the goods; the class of users of the goods; or the end effect upon the user. The issue of descriptiveness is usually tested from the view point of the hypothetical customer who has that basic amount of knowledge about the product which is conveyed by advertising and promotion currently available in the marketplace." 26. Words that are self laudatory of the goods or services, such as BEST, SUPERIOR, HIGH, etc are placed in the descriptive category. Therefore, the word 'LUXURY' would also fall only under such a category, since it happens to be self laudatory of the quality of the goods manufactured by the plaintiff or the quality of the services rendered by the first defendant. 27. Though the words 'LUXURA' and 'LUXURIA' are only variants of the descriptive term "luxury' and as a consequence, the protection available to such marks are not very strong, I do not think that the first defendant can really take advantage of the same. This is due to the fact that the first defendant themselves have applied for registration of the trade mark 'LUXURIA' under Classes 35 and 39, despite the fact that there is a prohibition under Section 9(1)(b) of the Act, for the registration of marks which serve to designate the kind, quality, intended purpose or value of those goods or services. A similar view was taken by the Delhi High Court in respect of a generic word "dimmer' in Automotive Electric Limited Vs. R.K.Dhawan {1999 PTC (19) 81 (Delhi)} wherein it was held that a person claiming exclusive right over an expression cannot challenge the same expression as generic. 28. In Indian Hotels Company Limited Vs Jiva Institute of Vedic Science and Culture {2008 (37) PTC 468 (Delhi)}, the Division Bench of the Delhi High Court rejected the argument that the word 'Jiva' is a descriptive word not entitled to protection, on the simple ground that when the appellant itself had applied for registration of the same name, they would not be permitted to take such a stand. 29. More over, the objection relating to the right to exclusive use of a registered trade mark, stands on a different footing than the objection relating to the very entitlement to the registration of a mark. While the former is an objection raised after registration, the latter is one raised before registration. A person who obtains registration of a mark, albeit its non registerability, acquires statutory rights under Section 28, which are made subject only to (i) the restrictions and limitations imposed at the time of registration and (ii) the restrictions and conditions imposed by the other provisions of the Act. 30. This is why it was held by me in Health and Glow Retailing Private Limited Vs. Dhiren Krishna Paul {2007 (35) PTC 474 (Mad)} that such objections could have been raised only at the pre- registration stage and that after registration, a person is entitled to raise such an objection only by taking recourse to the remedies available under the Act and not by committing infringement. It was pointed out in the said judgment that a different interpretation would place the proprietor of a registered trade mark in no better position than the proprietor of an unregistered mark. The said view was quoted with approval by the Delhi High Court in Ashland Licensing and Intellectual Property LLC Vs. Savita Chemicals Ltd. {2010 (44) PTC 220 (Del)}. Therefore, the first defence taken by the first defendant cannot be sustained. 31. The second defence taken by the first defendant is that while the registration of the plaintiff's trade mark is in respect of goods falling under Class 12, the adoption of the first defendant's mark is in respect of services falling under Classes 35 and 39. Therefore, it is the contention of the first defendant that no infringement takes place within the meaning of Section 29, by the adoption of the word "LUXURIA" in relation to transport services. 32. The above defence stems out of the emphasis laid in Sections 28(1) and 29(1) on the phrase "in relation to goods or services in respect of which the trade mark is registered". But, then Section 29(4) provides an extended meaning to what constitutes infringement. As per Section 29(4), infringement arises even by the use of the trade mark in relation to dissimilar goods or services, if three conditions are satisfied, namely i. that the mark is identical with or similar to a registered mark {Section 29(4)(a)}; ii. that the registered mark has a reputation in India {section 29(4)(c)}; and iii. that the use of the mark without due cause, takes unfair