1 NMS4378.09-Judgment.sxw JPP IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO. 4378 OF 2009 IN SUIT NO. 3289 OF 2009 Arviva Industries (India) Ltd. ... Plaintiffs. V/s. Vikas M. Tulsian & Ors. ... Defendants. Dr. Veerendra Tulzapurkar, Sr. Counsel with Vinod Bhagat, Punit Jani and Dhiren Karania i/b. G.S. Hegde and V.A. Bhagat for the Plaintiffs. Dr. Birendra Saraf, Ms. Rajlakshmi Mohandas, Ms. Prachiti Darda i/b. ALMT Legal for the Defendants. CORAM : R.Y. GANOO, J. DATED : 12th JULY 2010. ORAL JUDGMENT:- The Plaintiffs have instituted this Suit to seek an order of injunction on the ground that the Defendants are violating their trade mark VIVA by selling readymade garments with marks VIVACITY, VIVZ including its variants viz. VIVZ GURLZ, VIVZ 79 and VIVZ GALZ. It is also the case of the Plaintiffs 2 NMS4378.09-Judgment.sxw that on account of use of these marks, the Defendants are passing off their goods as that of the Plaintiffs which is in violation of the right of the Plaintiffs qua their mark VIVA. The Plaintiffs have prayed for damages in the sum of Rs.50,000/-. The Plaintiffs have also prayed for delivery of the goods and other articles manufactured by the Defendants bearing impugned mark VIVACITY and VIVZ for destruction. 2. For the sake of convenience, the mark VIVACITY can be referred to as VIVACITY and other marks viz. VIVZ, VIVZ GURLZ, VIVZ 79, VIVZ GALZ can be referred to as other marks. According to the Plaintiffs, the Defendants are advertising their products on a website www.vivacity.co.in and that is in violation of the trade mark of the Plaintiffs VIVA. 3. Keeping in view the aforesaid frame of the Suit, the Plaintiffs have applied for appropriate interim reliefs and prayer clause (a) of the Motion pertains to relief so as to protect the Registered trade mark of the Plaintiffs viz. VIVA. Relief in terms of prayer clause (b) relates to passing off action. According to the Plaintiffs, the Defendants are 3 NMS4378.09-Judgment.sxw advertising their products on a website www.vivacity.co.in. The Plaintiffs claim that this action is in violation of the Plaintiffs’ Trade mark VIVA. By prayer clause (c), the Plaintiffs want that the Defendants should not advertise their products on the website www.vivacity.co.in or any domain name and website address bearing the trade mark VIVA of the Plaintiffs. 4. Parties have completed the pleadings and I have heard learned Counsels on both sides. 5. It is the case of the Plaintiffs that the trade mark VIVA was held by P.N. Amarnani as M/s. Amar Brothers, since 1983 in class 24 “Textile piece goods” under No.409055. The registration in regard to the said mark came to be assigned in February 1989 in favour of the Plaintiffs and since then, the Plaintiffs are holding the said trade mark and there is no dispute about it. It is also the case of the Plaintiffs that the Plaintiffs registered their trade mark VIVA in stylized form under class 25 for clothing and wearing apparels under No. 563521 and the Plaintiffs are in the market right from 1988. 4 NMS4378.09-Judgment.sxw 6. It is the case of the Plaintiffs that in February 2009 they noticed that an advertisement released by the Defendants for intended registration of the mark VIVACITY ITS HAPPENING. The Plaintiffs lodged their opposition by letter dated 3rd February 2009. The Plaintiffs have learnt that the Defendants have also applied for registration of the other marks viz. VIVZ etc. i.e. other marks, however, there is no registration granted in favour of the Defendants as of today. 7. The application for registration of the mark VIVACITY ITS HAPPENING came to be filed by Defendant No.1 and the user of the said mark is being claimed by Defendant No.1 from 1st March 2005. The Plaintiffs claim that in the month of December 2008, they came across an advertisement published by a shop by name Adams Retailing, Bandra, Mumbai as regards the product “VIVACITY”. The Plaintiffs lodged the protest with the said shop. However, no reply is received from the said shop. According to the Plaintiffs, they came to know about the impugned activities of the Defendants in the year 2009 and i.e. how the Suit came to be filed in December 2009. 5 NMS4378.09-Judgment.sxw 8. The Plaintiffs have in support of their claim that they are in the market since 1983 for the fabrics and from 1988 for the readymade garments with the mark VIVA have relied upon their invoices. They have also given their yearwise figures of turn-over to show that they have substantial share in market. In substance, the Plaintiffs want to show that after acquisition of a right in the trade mark VIVA they are the main sellers in the market and the impugned activity of the Defendants has resulted in violation of rights under Trade Mark Act, 1999. It is the case of the Plaintiffs that on account of impugned trade mark VIVACITY the goods of the Defendants are being passed off as that of the Plaintiffs, resulting into the action of passing off which is required to be prevented by grant of appropriate injunction. The Suit is filed on the ground that the trade mark used by the Defendants is similar to the Trade mark of the Plaintiffs VIVA and the mark of the Defendants is deceptively similar and if the goods of the Defendants are allowed to be sold with a mark VIVACITY and other marks, it would give an impression to the purchasers in the market that VIVA and VIVACITY and other marks are goods coming from the same manufacturer and i.e. how the Plaintiffs seek to protect their 6 NMS4378.09-Judgment.sxw rights. 9. The Plaintiffs have clarified in their pleadings that whenever the Plaintiffs have come across the use of the mark VIVA or other variant by other manufacturers, the Plaintiffs have lodged objections with the proper authorities and a list of such companies against whom objections are filed is at Exhibit ‘F’ to the plaint. By this, the Plaintiffs want to show that the Plaintiffs have not given up their grievances against other manufacturers. The Plaintiffs have annexed to the plaint the labels which are used by the Defendants while selling their goods and one such label is at page 108 of the plaint at Exhibit ‘N’ being a tag with the word VIVACITY. The Plaintiffs have produced extracts of the material published on the website run by the Defendants and effort is made to show that Defendants are selling their goods under the brand name VIVACITY. 10. The Defendants have opposed the Notice of Motion. It is claimed by the Defendants that the present Defendant No.1 is not in the market and Defendant No.1 is not selling the goods 7 NMS4378.09-Judgment.sxw under the brand name VIVACITY. According to the Defendants, Defendant No.1 is the Director of Defendant No.2 and Defendant No.2 came to be floated as a special purpose vehicle in the nature of Company in June 2008 to sell the goods under their brand name. In support of the contention of the Defendants that they are in the market from 2005, the application for registration of the mark VIVACITY ITS HAPPENING is relied. The date of user is shown as 1st March 2005. It is noticed that in support of the claim that the Defendants are in the market from 1st March 2005, except a bare statement, no substantive material is placed before the Court. The admission of the Defendants that in June 2008, Defendant No.2 came to be floated for selling the goods is of utmost importance. 11. In substance, the Defendants claim that they are entitled to use mark VIVACITY as they are using it since 2005 and it has been the principal contention of the Defendants that the mark VIVACITY and other marks are not deceptively similar and therefore, the order of injunction should not be passed against the Defendants. 8 NMS4378.09-Judgment.sxw 12. An attempt has been made by the Defendants to show that the mark VIVACITY is not used in isolation and it is used with additional words FASHIONOVA ITS HAPPENING. According to the Defendants, the advertisements published so far as their product under the mark VIVACITY, the word FASHIONOVA ITS HAPPENING are prominently written. It is also the case of the Defendants that the shops in the nature of franchisee shops also depict a board FASHIONOVA ITS HAPPENING, VIVACITY and therefore, the term VIVACITY should not be read in isolation and it should be read as a whole i.e. VIVACITY FASHIONOVA ITS HAPPENING. With this, a positive stand is taken that the goods marketed by the Defendants are patently different than marketed by the Plaintiffs. It is also the case of the Defendants that the goods manufactured by Defendant No.2 are sold in the shops which are in the nature of franchisee shops and therefore, there is no question of causing misrepresentation in the mind of the customers who would be visiting the shops run by the franchisee of the Defendants. According to the Defendants, the use of the word VIVACITY is not malafide and it is not done with a view to deceive the common customer. It is also the stand of the 9 NMS4378.09-Judgment.sxw Defendants that the word Vivacity is derived from the noun form of VIVACIOUS. According to the learned Counsel for the Defendants, if the English meaning of these two terms are seen, the Court should accept that mark of Defendants are not deceptively similar. It is also the stand of the Defendants that other Companies have been using the term VIVA and no action is taken against the other users one such example quoted is that of VIVAFESTA. It is also the case of the Defendants that once the Court comes to the conclusion that the marks used by the Defendants are not deceptively similar then the motion should be dismissed. According to the Defendants, no case for passing off is made out. It was argued that the class of the customers purchasing goods of the Defendants are young boys and girls. This was claimed as a distinguishing factor. It was also argued on behalf of the Defendants that there has been delay in instituting the Suit and as such, the Motion should be dismissed on that ground. 13. It has been the case of the Defendants that the Plaintiffs are selling their goods under the name Harry Collection and therefore, there is no chance of a common customer getting 10 NMS4378.09-Judgment.sxw confused as the Plaintiffs goods are being sold under the domain name Harry Collection and the mark VIVA appearing in the advertisement is inconsequential. In support of this contention, my attention was drawn to advertisements released by the Plaintiffs to pages 57 to 66 where the term “Harry Collection Premium Suitings” is found with prominence. 14. It was also argued that the marks such as VIVZ, VIVZ GURLZ referred to as other marks are not at all similar to the mark of the Plaintiffs VIVA and there is no question of causing deception in the mind of the common customers and according to the learned Counsel for the Defendants, no case is made out for grant of an injunction with reference to those marks. 15. Learned Counsel for the Plaintiffs had relied upon the Judgment in the case of Indchemie Health Specialities Pvt. Ltd. V/s. Naxpar Labs Pvt. Ltd. & Anr. Reported in 2002 (24) PTC 341 (Bom) (DB) to contend that the Court has to consider impugned mark VIVACITY as a whole, try to compare with the mark of the Plaintiffs and ascertain whether there is a 11 NMS4378.09-Judgment.sxw possibility of a confusion in the mind of a common customer and whether the impugned mark is deceptively similar. As against this, the learned Counsel for the Defendants had relied upon the following Judgments at :- (I) F. Hoffmann-La Roche & Co. Ltd. V/s. Geoffrey Manner & Co. Pvt. Ltd. reported in 1969(2) S.C.C. 716. (II) Fitchetts Ld. V/s. Loubet & Co. Ld. reported in The Illustrated Official Journal (Patents) Vol. XXXVI page No. 296. (III) Textron Incorporated and Textron Limited V/s. Henry C. Stephens Limited and Blick Office Equipment Ltd. reported in 1977 R.P.C. 283. (IV) Application by Thomas A. Smith Ld. to Register a Trade Mark reported in Illustrated Official Journal (Patents) Vol. XXX Page No. 363. (V) Tobu Enterprises Pvt. Ltd. V/s. Toho Cycle Industries 12 NMS4378.09-Judgment.sxw reported in (1983) PTC 392. (VI) Bal Pharma Limited V/s. Wockhardt Ltd. in Appeal No.498 of 2002 In Notice of Motion No. 725 of 2002 in Suit No. 1305 of 2002 (O.O.C.J.) High Court, Bombay. (VII) J.R. Kapoor V/s. Micronix India reported in 1994 Supp (3) SCC 215. (VIII) Ranbaxy Laboratories Ltd. V/s. Indchemie Health Specialities Pvt. Ltd. reported in 2002 (3) Bom. C.R. 186. wherein the Courts were required to go into question whether the marks such as Dropovit – Protovit, Rito – Lito, Tobu – Toho, Zanocin – Zanoxin, GAP – GAPPLE are deceptively similar or not and he had pointed out to the Court that the Courts have consistently observed in all these cases that the two marks are not deceptively similar and the injunction was refused. In the case of Ayushakti Ayurved Pvt. Ltd. and Ors. V/s. Hindustan Lever Limited reported in 2003(5) Bom.C.R. 523 where the marks were Ayush V/s. Ayushakti, the Court did not 13 NMS4378.09-Judgment.sxw grant an injunction. The learned Counsel appearing for the Defendants had made efforts to point out as to the principles on which the Court will have to consider whether in the present case the mark used by the Defendants is deceptively similar qua the mark of the Plaintiffs. 16. The learned Counsel for the Plaintiffs had drawn my attention to the Judgment in the case of Automatic Electric Limited V/s. R.K. Dhawan & Anr. reported in 1999 PTC (19) 81 and Amritdhara Pharmacy V/s. Satya Deo Gupta reported in AIR 1963 S.C. 449 (V 50 C 63) where the Court was required to deal with the marks Dimmerstat and Dimmer Dot, Amritdhara and Lakshamandhara respectively. Learned Counsel for the Plaintiffs had taken me through the relevant paragraphs of the Judgment and had submitted that the Court has to consider the whole of the trade mark, variation in prefix and suffix and overall structural and phonetic similarity. My attention was drawn to paragraph 11 of the Judgment in the case of Amritdhara Pharmacy V/s. Satya Deo Gupta reported in AIR 1963 S.C. 449 (V 50 C 63) where a specific mention has been made that each case has to be considered on the facts 14 NMS4378.09-Judgment.sxw bearing in the said case. 17. I have gone through the Judgments cited by the learned Counsels on both sides for the purpose of deciding whether the mark VIVACITY and other marks used by the Defendants are deceptively similar as that of the Plaintiffs. It is to be noted that the term VIVA appearing in the mark used by the Plaintiffs equally appears in the mark used by the Defendants as and by way of a first four alphabets. The additional alphabets CITY have been added by the Defendants so as to make a new word viz. VIVACITY. An argument came to be advanced that the word VIVACITY has been the noun term of the term VIVACIOUS and the term VIVA simplicitor has a different meaning. Even if this stand of the Defendants is accepted as it is, the question is when the person goes to the market for purchase of certain articles whether he would try to understand the meaning of the term used by the manufacturer and then purchase the said article. The question is if the product manufactured by the Defendants comes in the hands of an ordinary purchaser of average intelligence and imperfect recollection and who may even be 15 NMS4378.09-Judgment.sxw an illiterate what would be his reaction. The Court has to go by the understanding of a common man and what would be in the mind of the common man at the time of purchase of the article. Applying the said test, I hold that the mark VIVACITY used by the Defendants is deceptively similar qua the mark of the Plaintiffs. In a very rare case a person would try to know/understand the meaning of the terms and then proceed to purchase a product. Hence, the arguments advanced by the learned Counsel appearing for the Defendants that the word VIVACITY is developed as a noun form as a term VIVACIOUS and has different meaning from the term VIVA is immaterial for the purposes of deciding whether the mark VIVACITY is different and distinct from the mark of the Plaintiffs. 18. It has been the stand of the Defendants that the mark VIVACITY is not to be read in isolation but it should be read along with the words FASHIONOVA ITS HAPPENING. On the basis of the material which is placed before the Court, it is true that these words FASHIONOVA ITS HAPPENING do appear in the advertisement as well as in the boards displayed by the Defendants with the word VIVACITY but the size 16 NMS4378.09-Judgment.sxw of the said words “FASHIONOVA ITS HAPPENING” is very small and the emphasis is on the term VIVACITY. It may be true that the Defendants have applied for registration of the mark VIVACITY ITS HAPPENING. However, on the labels which are attached to the goods the word “VIVACITY” appears. The words ITS HAPPENING OR FASHIONOVA ITS HAPPENING are missing. This is being stated on the basis of label shown at Exhibit ‘N’ with the word VIVACITY in bold capital letters and words Brand : VIVACITY in fine words. If the Defendants wanted to use the word FASHIONOVA ITS HAPPENING as words representing part of the said words as next to their trade mark, the Defendants would have mentioned those on the label. The absence of those words clearly indicate that the Defendants are selling their goods under the brand name “VIVACITY”. The Defendants have on their website clearly stated that their brand name is VIVACITY and not VIVACITY FASHIONOVA ITS HAPPENING. There is a categorical mention that the Defendants have a brand VIVACITY. The relevant sentence is as under “we have our own brand by name of VIVACITY and NIKKSMART.” A pictorial representation is seen forming part of website at page 107 where once again the 17 NMS4378.09-Judgment.sxw reference to the term VIVACITY is found and in front of the term VIVACITY, following words “A FASHIONOVA AN ICONIC BRAND FOR YOUTH” appear. On the entire page except the place mentioned above the word VIVACITY only has been used. All this clearly indicates that the Defendants mark is VIVACITY only. With this, I am inclined to observe that the words FASHIONOVA ITS HAPPENING wherever the words VIVACITY is appearing, said words are of a negligible importance and the prominent part of the whole depiction is VIVACITY. If it was the intention of the Plaintiffs to treat VIVACITY FASHIONOVA ITS HAPPENING as their trade mark, the Defendants could have used the word FASHIONOVA ITS HAPPENING in a prominent form. The Defendants would not have used mark VIVACITY only on their tags or in the website. The conduct of the Defendants in using the words FASHIONOVA ITS HAPPENING in a minuscule form by way of just mentioning at few places as mentioned above clearly goes to show that the Defendants wanted to present that their mark as VIVACITY. The stand of the Defendants that words FASHIONOVA ITS HAPPENING has the effect of distinguishing their mark from the mark of the Plaintiffs cannot be accepted. 18 NMS4378.09-Judgment.sxw In fact, the manner in which the words FASHIONOVA ITS HAPPENING are used by the Defendants clearly indicates that they were conscious of the fact that the term VIVACITY is deceptively similar as that of the term VIVA. As such, in my view, the use of the term VIVACITY, independent word of the words FASHIONOVA ITS HAPPENING or with the words FASHIONOVA ITS HAPPENING in its insignificant manner is a clear user by the Defendants with a view to create an impression in the mind of the common customer that the VIVACITY and VIVA are the same products. It is the case of the Plaintiffs that the Defendants had applied for registration of mark VIVACITY by application dated 8th July 2008. The Plaintiffs have annexed at Exhibit A to rejoinder dated 17th February 2010 an extract of print out taken from the Trade Marks Registry Website which mentions the mark of the Defendants as VIVACITY. This will once again show that the Defendants wanted to present their trade mark as VIVACITY. 19. The use of the mark VIVACITY, in my view is patently deceptively similar as that of the mark of VIVA. The Defendants have not shown to the Court any material to say 19 NMS4378.09-Judgment.sxw that they had conducted proper investigations to check up whether the trade mark VIVA is registered by any other person. If the Defendants would have conducted search certainly they would have come across registration made by the Plaintiffs in their favour of about the trade mark VIVA in class 24 and 25. In the absence of proper material as regards investigations, I am inclined to observe that the use of the mark VIVACITY by the Defendants was solely with a view to create an impression in the mind of a customer that VIVACITY is equal to VIVA and the said use was not bonafide. 20. It was argued by the learned Counsel for the Defendants that the word VIVA is descriptive word and the Defendants should be excused from using the term VIVA while placing their brand as VIVACITY. According to the Defendants, said term VIVA is also generic and therefore, the Plaintiffs cannot seek injunction to protect their products. In reply to this submission, the learned Counsel for the Plaintiffs had relied upon the Judgment in the case of Indian Hotels Company Ltd. and anr. V/s. Jiva Institute of Vedic Science & Culture reported in 2008 (37) PTC 468 (Del.)(DB) to submit that as the 20 NMS4378.09-Judgment.sxw Defendants have themselves applied for the registration of the term VIVACITY certainly, the Defendants cannot say that the term VIVA is generic and to that extent the Defendants cannot put up their defence. In so far as the arguments advanced by the learned Counsel for the Defendants with reference to the understanding, the term of the word VIVACITY and its dictionary meaning and related arguments, learned Counsel for the Plaintiffs had relied upon the Judgment in the case of Cadila Health Care Ltd. V/s. Cadila Pharmaceuticals Ltd. reported in AIR 2001 S.C. 1952 where the Court has observed that a purchaser in India cannot be equated with the purchaser of goods in England. The arguments with reference to the understanding of the various terms and the English meanings thereof, the learned Counsel for the Plaintiffs had drawn my attention to the Judgment in the case of Amritdhara Pharmacy v/s. Satya Deo Gupta reported in AIR 1963 S.C. 449 and had submitted that if the Supreme Court had considered the two terms as Amritdhara and Lakshamandhara as practically similar to each other the said observations are applicable to the terms VIVA and VIVACITY and the Court should hold in favour of the Plaintiffs. I am in agreement with 21 NMS4378.09-Judgment.sxw the submission advanced by the learned Counsel for the Plaintiffs on the points discussed above. The term VIVA can neither be treated as descriptive nor it is generic. The two terms VIVA and VIVACITY are so close to each other that the term VIVACITY can be treated as deceptively similar as that of VIVA. 21. It was argued on behalf of the Defendants that there has been delay in filing the Suit on the basis of facts pleaded in the plaint. In reply, it was argued by the learned Counsel for the Plaintiffs that the Defendants have admitted in their affidavit in reply that a special