IN THE HIGH COURT OF GUJARAT AT AHMEDABAD APPEAL FROM ORDER No 90 of 2000 with CIVIL APPLICATION No 1505 of 2000 with CIVIL APPLICATION No 6293 of 2003 For Approval and Signature: HON'BLE MR.JUSTICE K.S.JHAVERI ============================================================ 1. Whether Reporters of Local Papers may be allowed : YES to see the judgements? 2. To be referred to the Reporter or not? : YES 3. Whether Their Lordships wish to see the fair copy : NO of the judgement? 4. Whether this case involves a substantial question : NO of law as to the interpretation of the Constitution of India, 1950 of any Order made thereunder? 5. Whether it is to be circulated to the concerned : NO Magistrate/Magistrates,Judge/Judges,Tribunal/Tribunals? -------------------------------------------------------------- BHAVNESH MOHANLAL AMIN Versus NIRMA CHEMICAL WORKS LTD. -------------------------------------------------------------- Appearance: 1. Appeal from Order No. 90 of 2000 MR P M THAKKAR Sr.Advocate with Mr.Premal S Rachh and MR YM THAKKAR Advocates for Appellant No. MR K B TRIVEDI Sr.Advocate with Mr.Y J Trivedi and MR Tejas Barot Advocates for Respondent No.1-2 -------------------------------------------------------------- CORAM : HON'BLE MR.JUSTICE K.S.JHAVERI Date of decision: 09/05/2005 C.A.V. JUDGEMENT 1.0 This appeal is directed against the judgment and order dated 11.2.2000 passed by the City Civil Judge, Ahmedabad, below Exh.5/6 in Notice of Motion in Civil Suit No.1952/1999, whereby the defendants-appellants were restrained from manufacturing and marketing their products i.e. flour mills (Ghar Ghanti) by using the word NIMA till hearing and final disposal of the suit. 2.0 The respondents-original plaintiffs filed Civil Suit No.1952/1999 for a declaration and permanent injunction. The case of the respondents-original plaintiffs is as under: 2.1 The plaintiff no.1 is a Company incorporated under the provisions of the Indian Companies Act, 1956 and plaintiff no.2 is a Trust registered under the provisions of the Indian Trusts Act. Plaintiff no.2 is the owner and proprietor of the trade mark NIRMA and the same trade mark has been assigned in favour of plaintiff no.1 by way of assignment deed. The assignment deed is filed for registration under the provisions of the Trade Marks Act and plaintiff no.1 is engaged in the business of manufacturing and marketing various consumer products in India and elsewhere. 2.2 The plaintiff's predecessor-in-title started manufacturing and marketing detergent powder, detergent cake and other products in India and elsewhere. The word NIRMA has been coined and invented from the name of NIRUPAMA, daughter of Smt. Shantaben K. Patel, a partner of the said partnership firm and as trade mark NIRMA has been registered. The same is continuously used in various packing materials for different products i.e. soap, detergent powder, detergent cake, cleaning preparations, etc.. 2.3 Trade mark NIMA is also used and got registered under the Trade Marks Act in respect of various classes i.e. like spices, match box and other consumer items. Plaintiffs' products are sold throughout India and the name NIRMA has acquired reputation and goodwill in the market. The plaintiffs have applied for registration of similar names NIRMAL, NIMA and also applied for exclusive right to use the same word. According to them, the plaintiffs have got some of the registration which includes registration of mark NIMA. The plaintiff no.1 is registered at Registration No.422839 in respect of the goods covered in Class 7, and therefore, the use of the same or any other identical or deceptively similar by any other person more particularly by the defendants amounts to infringement to the plaintiffs' trade marks. Trade mark NIMA is also registered bearing Registration No.396185/B of 1982. 2.4 It is alleged that the appellants-defendants have adopted and started using the word NIMA for marketing their flour mills. Therefore, Notice was served on 22.9.1998 calling upon the defendants to stop using the trade mark NIMA. The defendants replied to the Notice on 07.10.1998. Again, another notice was served to which there was no reply. According to the plaintiffs, by using the word NIMA the defendants are creating confusion and deception in the mind of general public because the word NIMA is identical and deceptively similar to the plaintiff no.1's very popular trade mark NIRMA. However, the defendants declined to stop using the word NIMA for their products. Under these circumstances, the plaintiffs preferred the aforesaid Civil Suit. In the suit proceedings, notice of motion was taken out at Exhs.5/6. 2.5 The trial Court after hearing the parties passed an order on 11.2.2000, whereby the plaintiffs-defendants were restrained by an order of temporary injunction from manufacturing and marketing their products i.e. flour mills (Ghar Ghanti) by using the word NIMA till hearing and final disposal of the suit. 2.6 It is against the aforesaid order the present appeal has been filed by the original defendants. 3.0 Mr.P M Thakkar learned Senior Counsel appearing with Mr.Premal S. Rachh and Mr.Y M Thakkar learned advocates for the appellants has submitted that the appellants are using the mark NIMA since 12.02.1997 with respect to flour mills, whereas the respondents have never used either the mark NIRMA nor the mark NIMA for the said product at all. He has submitted that the respondents have not used the mark NIRMA for any product other than detergent in the form of bar, cake or powder. 3.1 Learned counsel has submitted that in the impugned order there is a reference that the respondents have used the mark NIMA for a residential house and in relation to a Trust. He has submitted that the usage is wholly irrelevant as the residential house or the Trust is not a "product" and the mark is required to be used in relation to goods in respect of which it is registered, and therefore, the same cannot be relied for seeking injunction. 3.2 Learned counsel has submitted that the findings of the trial Court in favour of the plaintiffs-respondents with respect to the Associated mark and Defensive mark is wholly erroneous, since it is not even the case of the respondents-plaintiffs that the word NIMA is an Associated trademark of NIRMA nor that the mark NIRMA is registered as Defensive trade mark u/s.47(3) of the Trade & Merchandise Act, 1958 (for short, "the Act"). Learned counsel has, therefore, submitted that in the result the mark NIMA is not used as a trademark with any goods of the respondents either in Class 3 or Class 7. 3.3 Learned counsel has further submitted that the respondents' suit for infringement of trademark and for passing off was based on the Registration of the trademark NIRMA in Para-A of the Register in respect of the goods, inter alia, "washing powder and washing soap" - which are included in Class 3, the Registration of the trademark NIMA in Part-B of the Register in respect of the goods, inter alia, "washing soap and detergents in the form of power, cake and bar, cleaning powder" - which are included in Class 3 and the Registration of the trademark NIRMA in respect of the goods "machines and machine tools, motors (except for land vehicles) machine couplings other than belting (except for land vehicles)" - which are included in Class 7 on 25/06/1984. 3.4 Learned counsel has submitted that though the respondents-plaintiffs had obtained registration of the trademark NIRMA in respect of the aforesaid goods included in Class 7 in the year 1984, they have not been used so far, and therefore, the suit filed by the respondents-plaintiffs for infringement of trademark, against the use of the trademark NIMA for flour mills by the appellants-defendants is not tenable in view of the rights of registration conferred by registration within the meaning of Section 28(1) of the said Act. The said provision reads as under; "Section 28(1) : Subject to the other provisions of this Act, the registration of a trademark in Part-A or Part-B of the register shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trademark in relation to the goods in respect of which the trademark is registered and to obtain relief in respect of infringement of the trademark in the manner provided by this Act." 3.5 Learned counsel has, therefore, submitted that the trial Court has grossly erred in granting injunction in favour of the respondents since the registration obtained by the respondents in Class 7 does not include "flour mills" and that the registration of the trademark NIMA is in respect of the goods included in Class 3 and not in Class 7. 3.6 Learned counsel has further submitted that in view of the provisions of Section 29(2) of the said Act, the suit filed by the respondents-plaintiffs is basically of the nature of "passing off" since the respondents have obtained registration of the trade mark NIMA in respect of goods included in Class 3 only and that too in Part-B of the register. Therefore, the respondents are not entitled to maintain an action for infringement against the appellants herein for the use of the trade mark NIMA for flour mills. 4.0 Learned counsel has submitted that the suit for "passing off" based on the user of the trade mark NIMA and NIRMA for the goods included in Class 3 only against the use of the trade mark NIMA for flour mills by the appellants is to be considered as per the ratio laid down by the Apex Court in a decision of the Gujarat High Court in the case of Cadila Health Care v. Cadila Pharmaceuticals reported in [2001 PTC - 300 (SC) = 2001 (1) CTMR 288 (SC) = J.T. 2001 (4) S.C. 243], wherein it has been held that factors like the nature of the goods, the similarity in the nature, the class of purchasers, the mode of purchasing the goods or placing orders for goods, degree of skill to be exercised in purchasing the rival goods and the price of the respective goods are to be considered. Learned counsel has, therefore, submitted that the learned trial Judge has committed a serious error in granting injunction in favour of the respondents since there didn't exist even a remote chance of deception or confusion or passing off and accordingly, it cannot be said that the appellants have infringed any right or passed off their goods with that of the respondents' goods. 4.1 Learned counsel has relied upon a decision of the Bombay High Court in the case of Macmillan & Co. v. K.& J. Cooper reported in A.I.R. 1924 Privy Council 75, and more particularly, on the following observations made in page 85; "The word 'original' does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the origin of ideas but with the expression of thought; and in the case of 'literary work', with the expression of thought in print or writing. The originality which is required relates to the expression of the thought; but the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work that it should originate from the author." 4.2 Learned counsel for the appellants has next relied upon a decision of the Allahabad High Court in the case of Thomas Bear & Sons (India) Ltd. v. Prayag Narain and another reported in A.I.R. 1940 Privy Council pg. 86, wherein it has been held that in trademark cases, conditions peculiar to India must be borne in mind in applying any doctrine of English Law and English decisions which turn or partly turn on questions of fact, as do most cases of common law, trade marks and passing off can only be applied with care and circumspection. 4.3 Learned counsel has next relied upon a decision in the case of Edwards v. Dennis reported in 1885 Chancery Division Vol.30 pg.454, and more particularly on the observations of the Court in page 477 of the decision. It reads as under; "..... In my opinion, it is perfectly ridiculous to suppose it means that a trademark is to be registered as belonging to goods which the man does not manufacture at all. It must mean that the mark is to be registered, not in connection with nothing, but in connection with the particular trade in respect of which he desires to use it." 4.4 Learned counsel has next relied upon a decision of the Delhi High Court in the case of Three-N-Products (P) Ltd. v. Pardesi General Store & Ors. reported in 2000 (20) PTC 489, wherein it has been held that there shall be no passing off, if the color scheme and the manner of reproduction of the logo are not similar. 4.5 Learned counsel has next relied upon a decision of the Bombay High Court in the case of Alkem Laboratories Pvt. Ltd v. Alchem (India) Ltd. reported in I.P.L.R. 1999 October 352. In that case, the plaintiff, a pharmaceutical company, was at the material time carrying on business of manufacturing drugs and medicines under the registered trade marks "Alkem" and "Alfakem" while the defendant was selling chemical products under the registered corporate name "Alchem (India) Ltd.". It was held therein that there was no likelihood of passing off, as the rivalry was between different types of products, i.e. between medicines and chemicals and that the features of the respective trading and marketing were also vastly different. 4.6 Learned counsel has relied upon a decision of the Delhi High Court in the case of Relaxo Rubber Limited and another v. Aman Cable Industries and another reported in 1998 PTC (18) 759, wherein it has been held that the use of the registered mark by any person in any manner in any place or in any circumstance not covered by the scope of registration does not constitute infringement. 4.7 Learned counsel has next relied upon a decision of the Bombay High Court in the case of Reliance Industries Ltd. v. Reliance Polycrete Ltd. reported in 1997 PTC (17) 581. In that case, the plaintiff was using the word "Reliance" as part of their corporate name and the defendants were in the business of manufacturing sanitary wares. It was held therein that an Undertaking by the defendant that they would not sell their products under the mark "Reliance" in the market was a "sufficient protection" against any likelihood of deception and confusion in the public. 4.8 Learned counsel has next relied upon a decision in the case of in the case of Vishnudas Trading as Vishnudas Kishandas v. Vazir Sultan Tobacco Co. Otd., Hyderabad and another reported in [A.I.R. 1996 S.C. 2275 = 1997 (4) S.C.C. 201], and more particularly, on Paras 22, 42, 43, 44, 45, 46 & 48. In that case, it has been held that if a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers to get registration of separate and distinct goods which may also be grouped under the broad classification. 4.9 Learned counsel has next relied upon a decision of the Delhi High Court in the case of Kellogg Company v. Pravin Kumar Bhadabhai reported in 1996 PTC (16) 187, wherein it has been held that there shall be no passing off of the goods merely on an allegation that they were in the similar trade dress and that in determining the similarity of get-up, the whole thing must be seen in its entirety and not in parts. 4.10 Learned counsel has relied upon a decision in the case of Exxon Corporation, 1251 Avenue of the America, New York, U.S.A. v. Exxon Packing Systems Pvt. Ltd., Hyderabad, reported in A.I.R. 1989 Madras 182, wherein it has been held that the word "otherwise" appearing in Section 120(1) of the Trade and Merchandise Marks Act, 1958, includes a "legal notice of an Advocate", and therefore, an application for grant of injunction, directly or indirectly by issuance of notice, advertisement, circular etc., was maintainable. 4.11 Learned counsel has next relied upon a decision in the case of Soni Kabushiki Kaisha v. Shamrao Maskar and others reported in A.I.R. 1985 Bombay 327, wherein it has been held that the factors creating confusion would be the nature of the mark itself, the class of customers, the extent of the reputation, the trade channel, the existence of any connection in the course of trade and several other circumstances which are required to be taken into consideration in combination, before recording a conclusion as to whether there is a likelihood of deception or confusion by use of the mark. 4.12 Learned counsel has next relied upon a decision of the Delhi High Court in the case of R. J. Reynolds Tobacco Co. v. I.T.C. Limited reported in [I.P.L.R. 1990 pg.85 = 1987 PTC 57 (DEL)]. In that case, the plaintiff was a manufacturer of cigarettes under a registered trade mark in several countries including India. The mark was not used by the plaintiff in India because of Govt. of India restrictions on import of cigarettes. It was held therein that when the plaintiff had applied for registration of the mark, the Government ban on import of cigarettes was already in existence for about 18 years, and, therefore, the plaintiff's application for registration on the plea that the mark would be put into use as and when the ban was lifted could only mean that they had no bona fide intention to use the mark at the time of application. 4.13 Learned counsel has next relied upon a decision in the case of American Home Products Corporation v. Mac Laboratories Pvt. Ltd. and another reported in A.I.R. 1986 S.C., pg.137, wherein it has been held that an application u/s.46(1)(a) of the Trade and Merchandise Marks Act, 1958 to have the trade mark in question removed on the ground that it was not at any relevant point of time being used as a trade mark itself and that permitting its use would amount to permitting trafficking in the trade marks is liable to be quashed and set aside. 4.14 Learned counsel has next relied upon a decision of the Calcutta High Court in the case of London Rubber Co. v. Durex Products Incorporated and another reported in A.I.R. 1963 S.C., pg.1882, wherein a comparison was made between the provisions of Section 8(a) and Section 10(1) of the Trade Marks Act, 1940. It was held therein that the object of both the above provisions was to prohibit from registration, marks which are likely to deceive or cause confusion. It was further held therein that there was no likelihood of confusion or deception in the marks because the respondent's goods were confined to contraceptives for use by women which could only be used with medical assistance while the appellant's contraceptives were essentially for men. 4.15 Learned counsel has next relied upon a decision in the case of Corn Products Refining Co. v. Shangrila Food Products Ltd. reported in A.I.R. 1960 S.C. 142 [ 1960(1) S.C.R. 968 = 1960 S.C.J. 509], wherein it has been held that the absolute identity of the two competing marks or their close resemblance is only one of the tests for determining the question of likelihood of deception or confusion. Trade connection between different goods is another such test. Ex-hypothesis test applies only when the goods are different. These tests are independent tests. There is no reason why the test of trade connection between different goods should not apply where the competing marks closely resemble each other just as much as it applied. Whether by applying these tests in a particular case the conclusion that there is likelihood of deception or confusion should be arrived at would depend on all the facts of the case. 4.16 Learned counsel has relied upon a decision in the case of Rustom Ali Molla and others v. Bata Shoe Co. Ltd. reported in A.I.R. 1957 Calcutta 120, wherein it has been held that the acquisition of an exclusive right to a mark or name in connection with a particular article of commerce, cannot entitle the owner of that right to prohibit the use by others of such mark or name in connection with goods of a totally different character; and that such use by others can as little interfere with his acquisition of the right. 4.17 Learned counsel has relied upon a decision in the case of Gaw Kan Lye v. Saw Kyone Saing reported in A.I.R. 1939 Rangoon 343. In that case, since there was no statutory provision for the registration of trade marks in Burma, no action could be brought for infringement of a trade mark, but the Courts can entertain passing off suits. 4.18 Learned counsel has next relied upon a decision in the case of Anglo Indian Drug and Chemical Co. v. Swastik Oil Mills Co. Ltd. reported in A.I.R. 1935 Bombay 101, wherein it has been held that in actions for infringement of trade marks, the plaintiff has to prove that his goods are known to the public by some distinct name, mark, badge, get up or appearance and that the defendant's use or imitation of the same is likely to mislead the public into a belief that the defendant's goods are those of the plaintiff. It was further held that the actual length of time during which a trade mark is used or employed is not important element for consideration and that it must have been used or employed long enough to render it probable that a reputation in the market has been acquired. 4.19 Learned counsel has next relied upon a decision in the case of Nestle's Products Ltd. and others v. M/s.Milkmade Corporation and another reported in A.I.R. 1974 Delhi 40, wherein it has been held that if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial in an action for infringement; whereas, in the case of passing off the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff. 5.0 Mr.Kamal B Trivedi learned Senior Advocate appearing with Mr.Y J Trivedi and Mr.Tejas Barot learned advocates for the respondents-plaintiffs has submitted that the contention raised by the appellants-defendants that the respondents-plaintiffs are using the mark NIRMA only in respect of bars, cakes and powders is wholly incorrect, since the said mark is also being used by the respondents for products like salts, SSPs, watches, stationery, educational services, scales etc.. He has, therefore, submitted that the contention raised by the appellants that the mark NIRMA is not used by the respondents for any other product except bars, cakes or powders is absolutely false and incorrect. 5.1 Learned counsel has submitted that so long as the mark NIRMA of the respondents is subsisting on the register, the appellants or any other person cannot be permitted to trade under the same name, since an action for passing off is maintainable in law, even in cases where the goods being traded under deceptively and / or phonetically similar mark are different in character with different trade channels and different prices. Learned counsel has submitted that registration of a mark is not to be made qua particular goods falling under a class in which registration is sought. 5.2 He has submitted that registration is conferred in respect of a class of goods and not in respect of particular goods, and therefore, the contention raised by the appellants that though the respondents have obtained registration of trade mark NIRMA in respect of the goods included in Class 7 in the year