IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED : 05.05.2011 CORAM : THE HONOURABLE Mrs.JUSTICE R.BANUMATHI and THE HONOURABLE Mr.JUSTICE V.PERIYA KARUPPIAH O.S.A.NOs.7 & 8 of 2011 Blue Hill Logistics Private Ltd. 171, 2nd Floor, Nilgiri's Building, Brigade Road, Bengaluru – 560 001. ... Appellant in both appeals/1st Defendant Vs. 1.Ashok Leyland Limited, 1, Sardar Patel Road, Guindy, Chennai – 600 032, rep. by its General Manager – Legal, and Constituted Attorney Mr.S.Venkataraman. 2.Dilip Chhabria Design Private Limited, Keytuo Industrial Compound, Kondivita Road, MIDC, Andheri (East), Mumbai – 400 059. ... Respondents in both the appeals/Plaintiff 2nd Defendant Prayer: Original Side Appeals are filed against the Order dated 21.12.2010 made in O.A.Nos.1240 & 1241 of 2010 in C.S.No.979 of 2010 on the file of this Court. For Appellant : Mr.P.S.Raman, Senior Counsel for M/s.P.V.S.Giridhar & Sai Associates For Respondent : Mr.Arvind Dattar, Senior Counsel for Mr.A.A.Mohan https://hcservices.ecourts.gov.in/hcservices/ COMMON JUDGMENT R.BANUMATHI,J Challenge in these Appeals is the correctness of the order of learned single Judge in O.A.Nos.1240 & 1241 of 2010 in C.S.No.979 of 2010 whereby the learned single Judge granted temporary injunction restraining the Appellant-1st Defendant from in any manner infringing the 1st Respondent-Plaintiff's registered trade mark "LUXURA" by use of similar mark "LUXURIA". 1st Defendant is the Appellant and Plaintiff is the 1st Respondent herein. 2. Plaintiff is engaged in the business of manufacture and sale of commercial vehicles for the past six decades offering range of buses, trucks, engines, defence and special application vehicles. Plaintiff has seven manufacturing plants and sophisticated modern state of the art research and development facilities. Plaintiff launched several established brands such as "LYNX, CHEETAH, VIKING, CRUISER, PANTHER" etc. In the course of its business, Plaintiff coined and adopted a trade mark "LUXURA" in the year 2006 in relation to the commercial vehicles/comfort buses equipped with distinctive features catering the needs to the travelling passengers to have comforts and luxurious travel. Plaintiff obtained registration of the said mark "LUXURA" under trade mark No.1552326 dated 20.04.2007 in Class 12 relating to Motor Vehicle Chassis, Motors for land Vehicles, Apparatus for Locomotion by land including Commercial Vehicles, Couplings, Motor parts and fittings. Plaintiff launched its "LUXURA" bus during the Auto Expo held in January, 2006 at New Delhi. Plaintiff sold "LUXURA" bus to many customers all over India including the Transport Corporations. Plaintiff had spent a considerable expenditure towards sales and promotion of "LUXURA" branded buses through print and electronic media. In August 2010, Plaintiff came to know that the 2nd Defendant-Dilip Chhabria Design Private Limited had designed and engineered a business class bus under the mark "LUXURIA". Plaintiff issued a legal notice dated 13.08.2010 to the 2nd Defendant calling upon them to "cease and desist" using the infringing mark "LUXURIA". 2nd Defendant issued a reply dated 21.08.2010 stating that they do not own the vehicle mentioned in the magazine "Premium Practicality" and that they build bodies for the vehicles of their clients. 2nd Defendant refused to disclose the details of the owner for whom the vehicle was designed. There was exchange of second notice between the Plaintiff and the 2nd Defendant. Through enquiries, Plaintiff came to know that Blue Hill Foods and Retail Private Limited, Bangalore was proposing to operate bus services under the trade mark "LUXURIA" and therefore, Plaintiff issued "cease and desist" notice dated 20.09.2010 to the said company. Blue Hill Foods and Retail Private Limited, Bangalore issued notice dated 29.09.2010 stating that they are not concerned with the manufacturing of vehicles, but engaged in the business of https://hcservices.ecourts.gov.in/hcservices/ running supermarkets. In the mean time, 1st Defendant company Blue Hill Logistics Private Limited served a caveat upon the Plaintiff which made it clear that Blue Hill Logistics Private Limited of Blue Hill Group was proposing to market the buses under the trade mark "LUXURIA" and therefore, Plaintiff issued a "cease and desist" notice dated 03.11.2010 to 1st Defendant-Blue Hill Logistics Private Limited. Inspite of receiving the notice, 1st Defendant-Blue Hill Logistics Private Limited proceeded with the launch of bus services on 12.11.2010 under the trade name "LUXURIA" and thereafter issued reply dated 15.11.2010 refusing to comply with the demand made by the Plaintiff. Thereafter, Plaintiff filed the suit C.S.No.979 of 2010 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. 3. 1st Defendant resisted the suit/applications for temporary injunction contending that they are part of the family of Blue Hill Investment Private Limited and that their company has introduced a high quality and luxurious intercity travel services; super luxury intercity bus services have been launched with 12 VOLVO buses and necessary infrastructure, the services have been launched under the name and style of "LUXURIA". 1st 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. Since Plaintiff has registered its trade mark under Class 12 and Plaintiff is not operating any travel services for the public, there is no likelihood of confusion in the minds of the consumers. Even assuming that there was some similarity in the goods/services rendered, there is no similarity between the trade marks. The mark adopted by the 1st Defendant "LUXURIA" is preceded by an image of a luxurious reclining seat. Case of 1st Defendant is that both the words "LUXURA" and "LUXURIA" are derived from the generic word "LUXURY" and Plaintiff cannot claim monopoly either over the word "LUXURY" or over the variants of that word. According to 1st Defendant the registered trade mark of the Plaintiff pertains to goods, while the trade mark adopted by the 1st Defendant pertains to services and that there is neither prima facie case nor balance of convenience infavour of the Plaintiff to grant injunction. 4. Upon consideration of documents filed by the Plaintiff and 1st Defendant and the rival contentions, learned single Judge held that Plaintiff having obtained registration of the trade mark "LUXURA" in respect of the goods falling under Class 12 by virtue of Section 28 (1) of Trade Marks Act, Plaintiff has exclusive right to use the trade mark in relation to those goods. Pointing out the dubious conduct of Blue Hill Logistics Private Limited and finding that Plaintiff has established prima facie case and that the balance of convenience is infavour of the Plaintiff, the learned single Judge granted temporary injunction infavour of Plaintiff on the following https://hcservices.ecourts.gov.in/hcservices/ findings:- 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. But the 1st Defendant cannot take advantage of the same for the reason that 1st 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 Sec.9(1)(b) of the Act. Plaintiff's registered trade mark is "LUXURA" and the mark adopted by the 1st Defendant is the word "LUXURIA" along with the device of a reclining chair and therefore, the mark adopted by the 1st Defendant is similar to the registered trade mark of the Plaintiff. Hence, Clause (a) of sub-section (4) of Section 29 of Trade Marks Act stands satisfied. By the use of similar mark viz., "LUXURIA", 1st Defendant would certainly tend to take undue advantage and the same is also detrimental to the reputation of the registered trade mark of the Plaintiff and therefore, Sec.29(4)(c) of the Trade Marks Act would also stand satisfied. Once dilution is permitted by allowing the 1st Defendant to use deceptively similar mark on the very same goods purchased by them from the competitors of the Plaintiff, the competitors of the Plaintiff themselves would acquire a right to infringe the rights of the Plaintiff. 5. Upon consideration of materials, order of learned single Judge and the rival contentions of 1st Defendant and Plaintiff, the following points arise for consideration along with the other incidental and related issues:- (1)By virtue of registration of the mark "LUXURA" in Class-12, whether Plaintiff has got exclusive right to use the trade mark "LUXURA" and consequently, whether an action for infringement is maintainable? (2)Whether 1st Defendant's user of the mark "LUXURIA" is in respect of Classes 39 and 35 used in relation to the services which are similar and whether such user is infringement under Section 29(1) of Trade Marks Act? (3)Whether the user of trade mark "LUXURIA" in respect of services under Classes 39 and 35 are not similar to Plaintiff's goods and whether the alleged user is https://hcservices.ecourts.gov.in/hcservices/ infringement under Section 29(4) of Trade Marks Act? (4)Whether the learned single Judge was right in saying that Plaintiff has established the ingredients of Section 29(4) of Trade Marks Act? 6. Point No.1:- In January 2006, news appeared in "The Hindu" announcing Plaintiff's launch of the bus Intercity "LUXURA". During the preview, it was reported that "LUXURA" would be competitively priced and would compete with the buses in that segment from VOLVO. AshokLeyland Employees Journal "Ashley News/February 2006 contains details about the launch of the vehicle "LUXURA" in the Auto Expo 2006 in New Delhi. After initial launching of the vehicle in the Auto Expo 2006, Plaintiff registered its trade mark. Plaintiff registered the trade mark "LUXURA" in Class 12 relating to "Motor Vehicle Chassis, Motors for land Vehicles, Apparatus for Locomotion by land including commercial Vehicles, Couplings, Motor parts and fittings". 7. On 20.04.2007, after the registration of trade mark if valid, Section 28 shall give to the registered proprietor of a trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain the relief in respect of infringement of the trade mark in the manner provided by the Act. The exclusive right shall be subject to the conditions and limitations to which the registration is subject to. If there is any invasion of this right by any other person using his trade mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain injunction, damages or account of profits made by the other person. However this right of the owner of the registered trade mark is subject to the other provisions contained in the Act. The exclusive right to the use of a trade mark is limited to the goods or services in respect of which the trade mark is registered falling in one or more of the Classes in the Fourth Schedule. 8. No doubt when a person gets his trade mark registered, he acquires valuable right by reason of such registration and registration of his trade mark gives him exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered. If there is any invasion of this right by any other person using his trade mark which is the same or deceptively similar to his trade mark he can protect his trade mark by an action for infringement in which he can obtain injunction, damages or account of profits made by the other person. However this right of the owner of the registered trade mark is subject to other provisions contained in the Act. 9. Point No.2:- Section 29 of Trade Marks Act deals with https://hcservices.ecourts.gov.in/hcservices/ infringement of trade marks and states as to the various acts which constitute infringement. Section 29 reads as follows:- "S.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 the 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 of permitted use, uses in the course of trade, a mark which because of - (a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or (b) its similarity to the registered trade mark and 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 trade mark, 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) of sub-section (2), the court shall presume that it 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; and (b) is used in relation to goods or services 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 advantage of or is detrimental to, the https://hcservices.ecourts.gov.in/hcservices/ distinctive character or 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 trade name, or name 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. ..." Section 29 (1) of Trade Marks Act is a general proposition of law. The various circumstances in which the trade mark is infringed are enumerated in sub-sections (2) to (9) of Section 29 of the Act. 10. On a careful reading of Section 29 of the Act, it is seen that sub-section (2) of Section 29 entitles an action being filed for infringement of a registered trade mark against an identical, nearly identical or deceptively similar trade mark used in relation to the same goods in respect of which the trade mark is registered or to similar goods. In case, the trade mark is not identical and the goods are also not the same for which the trade mark is registered, an infringement action will lie under Section 29(4) only if the conditions of sub-Section (4) of Section 29 are satisfied. 11. Mr.P.S.Raman, learned Senior Counsel for Appellant-1st Defendant contended that Plaintiff obtained registration of their trade mark "LUXURA" in Class 12 for manufacture of buses whereas the 1st Defendant is running intercity transport services and their application for registration of trade mark is in respect of Class 39 [Transport and Travel Services] and Class 35 [Advertising, Business Management and Office Functions] and since both are operating in different field, 1st Defendant's services are not similar to Plaintiff's goods. Learned Senior Counsel further contended that when the goods and services are different, only Section 29(4) is attracted and the learned single Judge ought to have appreciated that the ingredients necessary for protection under Section 29(4) were neither pleaded nor established. In support of his contention, learned Senior Counsel has placed reliance upon 2007 Vol.109 (2) Bom.LR 0911 [BALKRISHNA HATCHERIES v. NANDOS INTERNATIONAL LTD. AND ANOTHER]; MIPR 2010(3) 226 [MARICO LIMITED v. AGRO TECH FOODS LIMITED]; 2010 (42) PTC 514 (Del.) (DB) [NESTLE INDIA LIMITED v. MOOD HOSPITALITY PRIVATE LIMITED]; 2010 (42) PTC 572 (Del.) [ITC LIMITED v. PHILIP MORRIS PRODUCTS SA AND OTHERS]; MANU/TN/1816/2010 [CONSIM INFO PVT. LTD. REPRESENTED BY ITS DIRECTOR AND CHIEF EXECUTIVE OFFICER MR.JANAKIRAMAN MURUGAVEL v. GOOGLE INDIA PVT. LTD. AND OTHERS] and MIPR 2010 (2) 0400 [RAYMOND LIMITED v. RAYMOND PHARMACEUTICALS PVT. LTD.]. 12. Per contra, Mr.Arvind Dattar, learned Senior Counsel for Plaintiff has submitted that since Plaintiff has obtained https://hcservices.ecourts.gov.in/hcservices/ registration of the trade mark "LUXURA" in respect of the goods falling under Class 12 relating to Motor Vehicle Chassis, Motors for land Vehicles, Apparatus for Locomotion by land including commercial Vehicles, Couplings, Motor parts and fittings. Case of Plaintiff is that Section 29 entitles an action for infringement of a registered trademark against an identical or nearly identical or deceptively similar trade mark used in relation to the same goods in respect of which Plaintiff has registered the trade mark "LUXURA". Learned Senior Counsel for Plaintiff has further contended that the transport services operated by the 1st Defendant is similar and the transport services is having similarity of the Plaintiff's goods and therefore, it is a clear case of infringement under Section 29(2) of the Trade Marks Act. It was submitted that having regard to the similarity of the goods or services and that the mark adopted by the 1st Defendant "LUXURIA" is deceptively similar/identical, the learned single Judge rightly held that such use is likely to cause confusion on the mind of the public and rightly granted injunction. It was further submitted that where there is an infringement in respect of Plaintiff's goods by similar service, under Section 29(1) and (2) of Trade Marks Act, injunction has to follow. It was further argued when the learned single Judge has correctly exercised the discretion in granting temporary injunction, Appellate Court may not lightly interfere with the same. In support of his contention, learned Senior Counsel placed reliance upon AIR 1992 MADRAS 253 [G.T.C. INDUSTRIES LTD., BOMBAY v. I.T.C. LIMITED, MADRAS]; AIR 1995 SC 2372 [M/S.GUJARAT BOTTLING CO. LTD. AND OTHERS v. COCA COLA COMPANY AND OTHERS]; AIR 2001 SC 1952 [CADILA HEALTH CARE LTD. v. CADILA PHARMACEUTICALS LTD.]; (2006) 8 SCC 726 [RAMDEV FOOD PRODUCTS (P) LTD. v. ARVINDHBHAI RAMBHAI PATEL AND OTHERS]. 13. The scope of infringement under Section 29(2) of Trade Marks Act is wide and consists of three parts. A registered trade mark is infringed if the alleged use of the mark is likely to cause confusion on the part of the public, or is likely to have an association with the registered trade mark, because of – (a) its identity with the registered trade mark and similarity of the goods or services covered by such trade mark; or (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such trade mark; or (c) its identity with the registered trade mark and the identity of the goods or services covered by such trade mark. Sub-section (3) expressly enacts that in any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the mind of the public. In other words, where the rival trade marks are identical and the competing goods or https://hcservices.ecourts.gov.in/hcservices/ services are also identical, there is a statutory presumption that such use is likely to cause confusion in the mind of the public. The Plaintiff has merely to prove that the Defendant has been using an identical mark, in relation to identical goods/services, as a mark in relation to such goods/services, not being those of the Plaintiff, and no further. 14. Plaintiff registered its trademark "LUXURA" under Class-12 relating to MOTOR VEHICLES, CHASSIS, MOTORS FOR LAND VEHICLES, APPARATUS FOR LOCOMOTION BY LAND INCLUDING COMMERCIAL VEHICLES, COUPLINGS, MOTOR PARTS AND FITTINGS. Whereas, 1st Defendant filed application for registration of a trade mark "LUXURIA" under Class 39 relating to "TRANSPORT AND TRAVEL SERVICES" and Class 35 relating to "ADVERTISING, BUSINESS MANAGEMENT AND OFFICE FUNCTIONS". 15. Contention of Plaintiff is that under Section 29(2), user of trade mark is infringed by a person using the similar trademark in relation to similar goods or services so as to cause confusion on the mind of the public or which is likely to have an association with the trade mark. Learned Senior Counsel for Plaintiff contended that use of almost identical trademark "LUXURIA" on buses in respect of bus service by the Defendants is bound to make the trade and public associate the Defendants' services with the Plaintiff who is a well known manufacturer of the vehicles and using the mark "LUXURA" since from the year 2007. Learned Senior Counsel further contended that use of identical trademark "LUXURIA" for bus services by the 1st Defendant is likely to cause confusion and therefore, Defendants committed infringement within the meaning of Section 29(2) of the Act. 16. Per contra, learned Senior Counsel for 1st Defendant Mr.P.S.Raman contended that 1st Defendant is only running intercity transport services and that their goods/services are not similar/identical with the goods of the Plaintiff and therefore, the case would not fall under Section 29(2) of the Act. It was further contended that the scheme and provisions of Trade Marks Act clearly disclose distinction between "goods" on the one hand and "services" on the other and therefore, the trade mark registered for goods would confer right upon the proprietor, only in respect of that Class and the statutory protection cannot be extended to a different Class of goods or to services. In support of his contention, learned Senior Counsel heavily placed reliance upon 2007 Vol.109 (2) Bom.L.R.0911 [Balkrishna Hatcheries v. Nandos International Limited and another]. 17. In the said case, Plaintiff's registered trade mark "NANDU" was in respect of processed and frozen meat products. Defendants were using the trade mark "NANDOS" in relation to eatable goods or restaurant or hoteling services. In the said case, Defendants started the business in restaurant or hoteling services from 1987 and had established Anglo Portuguese Cuisine restaurant in more than 40 countries, had registered the mark "NANDOS" in more than 100 https://hcservices.ecourts.gov.in/hcservices/ countries and had established restaurant in Mumbai in the year 2005. The Defendant serves Afro Portuguese Cuisine (Vegetarian and Non- vegetarian) and the Defendants claimed that it is a major international chain running fast food outlets and the restaurant business. Plaintiff dealing in processed or frozen chicken had not even started the business and had only an intention to start the business in India. In the said case after elaborately considering the scheme and the provisions of the Act, single Judge held that "use of the trade mark in relation to the goods is distinct from the use of the trade mark in relation to the services" and that there is a fine distinction between "goods" and "services". 18. In NANDOS case, the single Judge of Bombay High Court held that "scheme and provisions of the Act clearly disclose the dichotomy between goods on the one hand and services on the other". After referring to various English and American Case Laws, the single Judge of Bombay High Court held as under:- " 12. (iii) ........ Section 28(1) confer upon the registered proprietor a statutory monopoly to use the trade mark in relation to the goods or services in respect of which the trade mark is registered. This would mean that a trade mark registered for goods or for any particular goods will confer upon the proprietor a monopoly only in respect of that class or if the registration is narrow only in respect of the goods for which the registration is given within a particular class. Similarly, the monopoly over the mark qua services would be restricted to only those services mentioned in the registration certificate. In the present case, as the Plaintiffs registration certificate discloses that the first trade mark is only in respect of "processed and frozen meat products" falling in Class 29 of Schedule IV to the 2002 Rules. The mark confers upon the Plaintiff the exclusive right to use the trade mark in respect of processed or