1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORIDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO. 518 OF 2009 IN SUIT NO. 261 OF 2009 Rasiklal M. Dhariwal & anr........Plaintiffs versus Shilpa Beverages Pvt. Ltd.........Defendant. Mr. B.N. Poojari with Khushbu Parekh i/b Asian Patent and Law adv. for the Plaintiffs Mr. S.R. Borulkar i/b R.A. More adv. for the Defendants CORAM: A. P. DESHPANDE, J. DATED : 15th APRIL, 2009. P.C.: 1. Though the matter was listed for hearing on ad- interim relief, by consent of the learned counsel for the respective parties, notice of motion is taken up for hearing and stands disposed of by this order. 2. The plaintiffs have filed the suit against the defendants for perpetual injunction seeking to restrain the defendant, its servants, agents, representatives and/or any person claiming under or through the defendant from infringing with the plaintiff's trade mark “OXYRICH” the word registered under no. 1106382 in class 32, by subsequent adoption and/or use of the mark 2 “OXYFRESH” which is claimed to be identical with and/or deceptively similar to the plaintiff's mark in respect of packaged drinking water and also for consequential relief. 3. According to the Plaintiff the defendant is passing of its goods by subsequent adoption and using “OXYFRESH” word, which is identical with and/or deceptively similar to the plaintiff's prior use and registered trademark “OXYRICH”. Both the products viz. “OXYFRESH” and “OXYRICH” are bottled products and are placed on record for visual perusal. The same are marked as ` X' and `Y' respectively. According to the defendant, the defendant has purchased the said trade mark under deed of assignment from Crystal Foods and Beverages. The deed of assignment is placed on record. The defendant has further claimed that there is no similarity in visual effect between the two products as the design, colour, the container, packing and the cap of the bottle are altogether different. Thus in no case the product of the defendant can be passed off as a product of the plaintiffs. 4. It is pointed out that the label on the bottle of the product of the plaintiff is that of Manikchand Oxyrich with a picture of a lady depicted thereon and the thrust on the said label is that it contains 300% more oxygen whereas the label on the product of the defendant is “OXYFRESH” classic. The design of the plastic bottles is wholly dis-similar and hence in the 3 submission of the defendant, there is no chance of the consumer being mis-led. 5. It is then contended by the learned counsel for the defendant that prefix `OXY ' denote oxygen enriched product and is in common use by various companies manufacturing, selling or offering for sale of bottle drinking water. The plaintiff' s trade mark “OXYRICH” is registered on 23-5-2002. Prior thereto a product in the same class by name “OXYWELL” was registered on 12-7-2001. The defendant claims to have made a search wherein it was revealed that various other traders had applied for registration of their trade mark with prefix “OXY” and the said traders are using their trade mark with prefix “OXY” for a long time. It is stated in para 11 of the affidavit in reply filed by the defendant to the Notice of Motion that more than 50 applications made by different traders for using prefix “OXY” in respect of the goods falling in class 32 are pending, and nine applications with prefix “OXY” have already been registered by the trade marks registering authority in the said category. Thus in substance the claim is that the plaintiffs are not entitled to claim exclusive or independent right over the word prefix “OXY”. A list with particulars of about 50 applications using the prefix “OXY” has been filed on record at Exh.I by the defendant. It is then contended that the use of the prefix “OXY” cannot be objected to, it being common or general to the trade of bottled 4 drinking water denoting oxygen enriched product. 6. The next limb of submission is that if “OXY” is common in all such products,then there is no similarity between the word “RICH” and “FRESH”. Thus no question of infringement of the trade mark would arise. It is next submitted that the plaintiffs had issued notice to the predecessor in title of the defendant from whom the defendant had purchased the trade mark way back on 22-12-2006 and the same was duly replied. The defendant claims that his product is in market since the year 2005. Notice came to be served on the defendant calling upon them to desist from the alleged act of infringement on 31-10-2008 and the said notice was replied on 13-11-2008. In that view of the matter it is contended that in a belatedly filed suit no injunction could be granted as claimed by the plaintiffs. 7. The learned counsel for the defendant has relied upon a judgment in case of J.R. Kapoor Vs. M/s. Micro nix India reported in JT 1994 (5) S.C. 37. In the said case the Supreme Court was called upon to decide whether the word “micro” is a common word used descriptive of the products sold or of the technology by which the products are manufactured and can any one claim monopoly over the use of the said word. Answering in the negative the Supreme Court observed thus: “Anyone producing any product with the use of micro chip technology would be justified in using the said 5 word as a prefix to his trade name. What is further, those who are familiar with the use of electronic goods know fully well and are not likely to be misguided or confused merely by, the prefix`micro' in the trade name. Once, therefore, it is held that the word `micro' is a common or general name descriptive of the products which are sold or of the technology by which the products are manufactured, and the users of such products are, therefore, not likely to be misguided or confused by the said work, the only question which has to be prima facie decided at this stage is whether the words `tel' and `nix' in the trade names of the appellant and the respondent are deceptive for the buyers and users and are likely to misguide or confuse them in purchase in one for the other. According to us, phonetically the words being totally dis-similar are not going to create any such confusion in the mind of the users”. 8. Placing reliance on the said judgment it is submitted that use of the word “OXY” is common to all products which are orygen enriched and no one can claim right over the use of the word “OXY”. 9. Comparison of the product of the plaintiffs and the defendant broadly does not give any visual effect of similarity 6 much less deceptive similarity or identity in design of the bottle, the colour scheme, the packing, and the cap of the bottle, which if taken together clearly distinguishes the two products and one is not capable of being passed off for another. Thus primafacie I hold that the plaintiff has failed to establish that there is any identify or deceptive similarity in the product of the defendant and that of the plaintiffs which can amount to infringement of the trade mark or give rise to a cause for passing-off. 10. The learned counsel for the defendant has then relied upon a judgment of the learned Single Judge of this court in the case of Ayushakti Ayurvad Pvt.Ltd. & ors Vs. Hindustan Lever Limited reported in 2004 (28)PTC 59 (Bom). In para 5 of the said judgment it is observed that: if the plaintiff has himself copied the mark from the existing registered trade mark, he cannot claim proprietorship in the mark and cannot maintain the action. My attention is invited to the averments made by the plaintiff in para 9 of the plaint wherein it is stated that on ascertaining availability of “OXYRICH” as trade mark for use and registration, on or about 23-5-2002, the plaintiffs protected it by priority for registration in class 32 in respect of packaged drinking water, mineral and aerated water. On the date on which the plaintiff's trade mark is registered, another trade mark was already registered on 12-7-2001 viz. “OXYWELL” and thus it is doubtful as to whether the plaintiff can claim any proprietory 7 rights over the word “OXY”. 11. Taking over all view of the matter, I am of the considered view that plaintiff has failed to make out a primafacie case of infringement of trade mark and an action for passing-off. Hence the motion stands rejected. (A. P. DESHPANDE, J.)