IN THE HIGH COURT OF KERALA AT ERNAKULAM PRESENT : THE HONOURABLE MR. JUSTICE P.BHAVADASAN THURSDAY, THE 22ND DECEMBER 2011 / 1ST POUSHA 1933 RFA.No. 186 of 2005() --------------------- OS.3/2004 of 1ST ADDL.DISTRICT COURT, THRISSUR .................... APPELLANTS/DEFENDANTS -------------------------------- 1. M/S. JOSCO JEWELLERY, ROOM NO.42, JAI HIND MARKET BUILDING, MUNICIPAL OFFICE ROAD, THRISSUR, REPRESENTED BY PARTNERS, K.P.JOSE, S/O.PAVUNNY, AGED 58 YEARS, RESIDING AT KATTOOKKARAN HOUSE, MAIN ROAD, NEAR M.T.H.S., MURACHIRA, THRISSUR. 2. K.J.ROY, S/O. K.P.JOSE, RESIDING AT KATTOOKKARAN HOUSE, DO. 3. P.O.ROSY W/O. K.P.JOSE, RESIDING AT KATTOOKKARAN HOUSE, DO. 4. K.P.JOSE, S/O. PAVUNNY, AGED 58 YEARS, RESIDING AT KATTOOKKARAN HOUSE, DO. 5. K.J.ROY, S/O. K.P.JOSE, DO. 6. MRS.P.O.ROSY, W/O. K.P.JOSE, DO. BY ADVS. SRI.VARGHESE C.KURIAKOSE SRI.JACOB SEBASTIAN SRI.PRAVEEN K. JOY RESPONDENT/PLAINTIFF ------------------------------- PAYYAPPILLY ANTONY JOSE, AGED 56 YEARS, SOLE PROPRIETOR, JOSCO FASHION JEWELLERS, THRISSUR, KOTTAYAM, PATHANAMTHITTA, NOW RESIDING AT WARD NO.24, HOUSE NO.110, KURIYACHIRA, THRISSUR CORPORATION. R1BY ADVS. SRI.BABU KARUKAPADATH SMT.M.A.VAHEEDA BABU SRI.JAGAN GEORGE SRI.K.A.NOUSHAD SRI.P.G.PRAMOD THIS REGULAR FIRST APPEAL HAVING BEEN FINALLY HEARD ON 28.10.2011, THE COURT ON ON 22/12/2011 PASSED THE FOLLOWING: VK RFA.No. 186 of 2005() ---------------------------- PETITIONER'S EXHIBITS : NIL ---------------------------- RESPONDENT'S EXHIBIT --------------------------------- ANNXURE R(1). COPY OF LETTER DATED 6.7.10 SENT BY ONE SANKARANARAYANAN / TRUE COPY / P.A. TO JUDGE VK P. BHAVADASAN, J. - - - - - - - - - - - - - - - - - - - - - - - - - - - R.F.A. No. 186 of 2005 - - - - - - - - - - - - - - - - - - - - - - - - - - - - - Dated this the 22nd day of December, 20101. JUDGMENT The plaintiff, who spread his net wide, had the defendants caught for infringement of trade mark and passing off action. The aggrieved defendants have come up in appeal. The parties and facts are hereinafter referred to as they are available before the trial court. 2. The plaintiff is the proprietor of 'Josco Fashion Jewelleres' engaged in the business of gold jewellery business. The said trade name and trade mark have made a mark in the gold business and enjoys considerable goodwill and reputation. The concern has a registered trademark. The plaintiff gives wide publicity and has a considerable turn over in his business, which shows the faith of his customers. According to the plaintiff, the words 'Josco Fashion Jewellers' has achieved a distinctiveness and is associated with a trade in gold ornaments. They have branches both inside and R.F.A.186/2005. 2 outside India. Recently, the plaintiff came to know that the defendants have started a jewellery business under the name and style 'Josco Jewellery' at M.O.Road, Trichur. They had nothing to do with the concern of the plaintiff. By adopting a deceptively similar name, the defendants are passing off their goods as that of the plaintiff. The customers are driven to believe that 'Josco Jewellery' run by the defendants is a limb or closely associated with the concern of the plaintiff. The products marketed by the plaintiff are known for their quality and variety of ornaments. Complaining of infringement of trade mark and passing off, the suit was laid. 3. The defendants resisted the suit. They disputed the claims made by the plaintiff in the plaint. The fourth defendant started a proprietary concern by name 'Josco Jewellery' at M.O. Road, Thrichur. According to the defendants, the trade name 'Josco Jewellery' was invented by the fourth defendant from his name 'Jos' with the suffix 'co'. They have in no way infringed the right of plaintiff R.F.A.186/2005. 3 and at no point of time they have held out that they had any connection with the business run by the plaintiff or the words 'Josco Fashion Jewellers'. The allegations to the contrary are false. They also contended that they did not have large turn over. It is further asserted that most of the customers are from local area and they are persons known to the defendants and their relatives. It was claimed that the names are clearly distinguishable and there is no similarity in the name or in the logo of the two parties. It is also contended that the customers belong to well informed category and the gold or gold ornaments are not purchased like vegetable or provision. It is after much thought and enquiry that one goes to purchase gold ornaments. So before going for purchase, he would assure that he gets a right sort of information regarding the quality of the material to be purchased and the place from where it is to be purchased, so that he is not taken for a ride. Further, it is stated that nobody can prevent a person from using his own name for business purpose. If at all the plaintiff had gained R.F.A.186/2005. 4 any goodwill and reputation, the defendants have done nothing to affect the same. The suit arises out of business jealousy and not out of the need or desire to protect the trade mark or reputation. 4. On the above pleadings, issues were raised by the trial court. The evidence consists of the testimony of P.Ws. 1 to 7 and documents marked as Exts.A1 to A38 from the side of the plaintiff. The defendants had D.W.1 examined and Exts.B1 to B8 marked. Ext.C1 is the commission report and Exts.X1 to X6 are third party exhibits. Materials produced were marked as M.Os.1 to 8. On a consideration of the materials, the court below found that the defendants are guilty of both infringement of trade mark and mischief of passing off and accordingly the suit was decreed. 5. The questions that arise for consideration are : i) whether the court below was justified in coming to the conclusion that there is infringement of trade mark of the plaintiff? R.F.A.186/2005. 5 ii) Is the court below justified in coming to the conclusion that the defendants are guilty of passing off? iii) Do the judgment and decree of the court below call for an interference? Issues 1 and 2 6. As already stated, the short case put forward by the plaintiff is that by adopting a trade mark similar to the one that belongs to the plaintiff and got registration by the plaintiff under the Trade Marks Act by the defendants, his rights are infringed and also that the defendants are guilty of passing off their goods as if it belonged to the plaintiff. The defendants contended that 'Josco' is the invented name by them and the claims made by the plaintiff regarding infringement and passing off are without any basis. 7. The question that would arise for consideration are whether the plaintiff has exclusive right to use the name 'Josco' and whether the defendants are guilty of adopting R.F.A.186/2005. 6 the same name with a view to pass off and infringing the trade mark rights of the plaintiff. 8. Learned counsel appearing for the appellants contended that the lower court was wrong in its approach and conclusion. The trade name of the plaintiff was 'Josco Fashion Jewellers', whereas the trade name of the defendants was 'Josco jewellery'. There is absolutely no similarity between the two and it is quite unlikely that any confusion or deception will be caused. It was pointed out that the nature of the customers who purchase gold ornaments will have to be considered in considering whether there is infringement of trade mark and whether the defendants are guilty of passing off. It was contended that the plaintiffs cannot lay claim to the word 'Josco' alone because the registered trade mark is 'Josco Fashion Jewellers'. There is a clear distinction between the two. Considering the nature of the customers who purchase gold ornaments, and the conspicuous difference of the trade names, there is absolutely no likelihood or even a remote R.F.A.186/2005. 7 chance of causing any deception or confusion. It was also pointed out that the plaintiff has no consistent trade name. The registered trade name is 'Josco Fashion Jewellers'. In U.A.E. the registration is for the word 'Josco'. In India in all advertisements made by the plaintiff they styled themselves as 'Josco Jewellers' and also as 'Josco Fashion Jewellers'. Learned counsel also pointed out that the business of the defendants can in no way be a threat to the plaintiff since the defendants run a small scale business and are unable to compete with a reputed concern like 'Josco Fashion Jewellers'. It was further contended that the name of the fourth respondent is 'Jos' and it was his name that is used for naming the business run by the defendants by adding the suffix 'co'. The defendants are entitled to use the said name as their trade name and the plaintiff can take no manner of objection, so says the counsel. 9. On the other hand, learned counsel appearing for the contesting respondents pointed out that there is no merit in any of the contentions raised by the appellant. The R.F.A.186/2005. 8 trade mark adopted by the plaintiff namely 'Josco Fashion Jewellers' is a registered trade mark and the plaintiff has exclusive right to use the said trade name. It is idle for the appellants to contend that there is no similarity between the two names, since any person can easily be led to believe that the two businesses are interlinked or connected. Learned counsel pointed out that the words 'Fashion Jewellery' is descriptive in nature and the real catch lies in the word 'Josco'. By adopting the name 'Josco', the defendants are trying to hold themselves out as a limb of the plaintiff or they are trying to pass off their goods as if it belonged to the plaintiff. At any rate, the conduct of the defendants affected the reputation of the plaintiff's business and goodwill. Learned counsel referred to the evidence in the case and pointed out that there have been instances where people believed the concern of the defendants to be a sister concern of the plaintiff. Persons who had purchased gold ornaments from the defendants' concern had approached the plaintiff with complaints. As far as the R.F.A.186/2005. 9 infringement of trade mark is concerned, once it is proved that the defendants have adopted a deceptively similar name, that would be sufficient and no further ingredients need to be proved. Learned counsel also pointed out that infact the licence obtained by the defendants is in relation to silver jewellery and under the guise of that licence, he is selling gold ornaments, which is illegal. Since the defendants have adopted a deceptively similar name, it is likely to cause confusion and deception in the minds of the general public and they are likely to be misled. The claim of the appellants that the customers are well informed group is without any basis. 10. Learned counsel also referred to the various provisions of the Trade Marks Act and pointed out that a fair reading of the provisions of the Act would clearly show that the defendants are guilty of infringement of registered trade mark. It is also pointed out that they are equally guilty of the mischief of passing off also. Learned counsel concluded by pointing out that the lower court has referred to various R.F.A.186/2005. 10 decisions regarding infringement of trade mark and passing off and has come to the conclusion that the defendants are guilty of both infringement of trademark and mischief of passing off. There is no reason or justification to interfere with the judgment and decree of the court below. 11. It is seen from the pleadings and evidence that the plaintiff has a registered trade mark namely'Josco Fashion Jewellers' and they are engaged in gold ornament business from 1978 onwards. The complaint of the plaintiff seems to be that recently the defendants have started business in gold ornaments adopting the name 'Josco Jewellery' at M.O.Road, Thrichur. The plaintiff has several branches both inside and outside India. In fact, the objection taken by the plaintiff is regarding the use of the word 'Josco' by the defendants as their trade name. The defendants would say that the registered trade name of the plaintiff is 'Josco Fashion Jewellers' and they cannot lay exclusive claim to the word 'Josco'. They further contended R.F.A.186/2005. 11 that there is absolutely no resemblance or similarity between 'Josco Fashion Jewellers' and 'Josco Jewellery'. 12. Before going into the details, it is necessary to understand what constitutes infringement of trade mark and passing off. 13. According to the Trade Mark Act, 1999, Mark is defined as follows:- 2(m)“mark” includes a device,brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof; 14. Trade mark is defined as follows:- (zb)“trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and -- (i) in relation to the Chapter XII (other than Section 107), a registered trade mark or R.F.A.186/2005. 12 a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to the goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark;” 15. Section 27 reads as follows:- “27. No action for infringement of unregistered trade mark.-(1) No person shall be entitled to institute any proceeding to prevent, R.F.A.186/2005. 13 or to recover damages for, the infringement of an unregistered trade mark. (2) Nothing in this Act be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another persn, or the remedies in respect thereof.” 16. Section 29 reads as follows:- “29. Infringement of registered trade marks:- (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of mark likely to be taken as being used as a trade mark. (2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way permitted use, uses in the course of trade, a mark which because of -- R.F.A.186/2005. 14 (a) its identity with the registered trade mark and the similarity or the goods or services covered by such registered trade mark:, or (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark;,or (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trademark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. (3) In any case falling under clause(c) sub-section (2), the court shall presume that is likely to cause confusion on the part of the public. (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-- (a)is identical with or similar to the registered trade mark; (b)is used in relation to goods or services R.F.A.186/2005. 15 which are not similar to those for which the trade mark is registered; and (c)the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair adavantage of or is detrimental to, the distinctive character of repute of the registered trade mark. (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered. (6) For the purpose of this section, a person uses a registered mark, if, in particular, he- (a) affixes it to goods or packaging thereof: (b) Offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark; R.F.A.186/2005. 16 (c) imports or exports goods under the mark;, or (d) uses the registered trade mark on business papers or in adverting. (7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee. (8) A registered trade mark is infringed by any advertising-- (a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or (b) is detrimental to its distinctive character; or (c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those R.F.A.186/2005. 17 words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.” 17. In short, a trade mark is a word, symbol or phrase used to identify a particular manufacturer’s or seller’s products and distinguish them from the product of others. It is under certain circumstances, trade mark protection is extended beyond words, symbols, phrases includes other aspects of a product such as its colour and packaging. Trade mark makes it easier for consumers to quickly identify the source of a given product. Action for unregistered trademark is provided by Section 27 while action for infringement of registered trade mark is provided under Section 29 of the Trade Marks Act,1999 (hereinafter referred to Act 47 of 1999). Infact, till the inclusion of Section 27(2) in the Act passing off action was considered as a common law remedy. The said mischief has now been given statutory recognition. R.F.A.186/2005. 18 18. Passing off and infringement of trade mark are actions relating to intellectual property rights. Intellectual property rights creates and tries to protect the rights of owners and creators of work, which had resulted in the creativity. Rights may relate to literature, music, inventions etc. The intellectual property laws assign exclusionary rights to the creators or inventors against any misappropriation or use of the work without prior knowledge of the creator of the work or inventor. 19. Modern capitalism is designed and devised to sell products and services by means of some mark, brand or name. This attitude has invaded into all fields. Trade marks arise to afford protection against unfair imitation of marks and names. The trade mark Act 1999, broadly offer two types of protection namely; 1. Infringement of registered trademark and 2. Passing off action. 20. Kerly's Law of Trade Marks and Trade Names, 12th Edn. at page 292 draws distinction between infringement of trade mark and passing off as follows: R.F.A.186/2005. 19 “Although many of the principles applicable are common to both forms of action (and the two are habitually combined in a single action), it is essential to deal separately with actions which are brought to prevent or to recover damages for the infringement of trade or service mark, and with those which are compendiously described as “passing -off actions.” In an action of the first class the plaintiff complains that the defendant has infringed his mark by taking it in its entirety, or by taking a substantial portion of it, or by colourably imitating it, and he relies on his statutory title to the exclusive use of the mark in question for goods or services of a specified kind; in an action of the second class the plaintiff's case is less specialised, for he complains that the defendant is using means which are calculated to pass-off, or to cause to be passed-off, the goods or business of the defendant as and for those of the plaintiff, and the means may or may not comprise or consist of the taking of a mark, either registered or not.” R.F.A.186/2005. 20 21. In Law of Trade Marks and Geographical Indications by K.C.Kailasam and Ramu Vadaraman, 2003 Edn. at page 356 the distinction is drawn thus: “The issue in a passing off action is: would the user of the defendants, either the actual user proved in evidence or the proposed user conceded for the purposes of action, be likely to lead person, either members of the trade or of the public, to suppose that the goods so sold were the product of the plaintiffs or that the business concerned in their production was the plaintiff or was associated with the plaintiff's business. The issue in an infringement action is: Are the defendants proposing to use a mark which is identical with the registered trademark of the plaintiff or which so nearly resembles it as to e likely in normal course of trade to deceive or cause confusion to persons who are brought into contact with it. In an infringement action, once it is found that the defendant's mark is used as a trademark, the fact that he makes it clear that the commercial origin of the goods indicated by the trademark in some business other than that of the plaintiffs, avails him nothing, since infringement R.F.A.186/2005. 21 consists in using the mark as a trademark i.e. as indicating origin.” 22. In Intellectual Property by P. Narayanan, 3rd Edn. at page 222 the author tabulates the difference between infringement of trade mark and action for passing off. 23. It is usually stated that the action for infringement is a statutory remedy, while action for passing off is usually treated as a common law remedy intending to protect unregistered trade mark. 24. In the decision reported in Jaleel Associates v. Hotel Sagar (2005(1) K.L.T.757) this court has observed that in view of Section 27 of the Trade Marks act it could no longer be said that passing off action is a common law remedy. 25. There are umpteen number of decisions drawing the distinction between infringement and passing off. R.F.A.186/2005. 22 26. Some of the decisions are (1). Durga Dutt Sharma V. N.P.Laboratories [AIR 1965 SC 980], (2).Parle Products V.J.P.&Co.Mysore [AIR 1972 SC 1359], (3). Moideen V. Vasu [1980 KLT 325], (4). A.C.Krishnan V. Nambisans Dairy Pvt.Ltd [1997(1) KLT 163], (5). SM Dychem Ltd V. Cadbury (India) Ltd [AIR 2000 (5) SCC 573], (6).Satyam Infoway Ltd V.Sifynet Solutions Pvt.Ltd [AIR 2004 SC 3540], (7). Preme V. Ambujakshan [2006(1) KLT 905] 27. It is unnecessary to refer to the all the above decisions except the one reported Preme's case (supra), wherein the other the decisions on the point has been referred to. In the said decision, it is held as follows:- “6. There is difference between an action for passing off and action for infringement of trade mark. An action for passing off is a common