1 MMJ IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION APPEAL NO.8 OF 2010 IN NOTICE OF MOTION NO.3709 OF 2009 IN SUIT NO.2576 OF 2009 Shelke Bevarages Private Ltd. ) A Company incorporated under the ) Companies Act, 1956, and having Registered ) office at flat No.8, Ganesh Gaytri Apartment, ) 291, Somwar Peth, Pune 411 011 ) through its Director ) Vishal Babanrao Shelke ) Age 26 years, Occ: Business and Agriculture ) R/o 291, Somwar Peth, Pune 411 011 )..Appellants Vs. 1. Rasiklal Manikchand Dhariwal ) Age about 69 years in his personal & ) individual capacity and also in his capacity ) as the Karta of Rasiklal Manikchand Dhariwal ) (HUF) or R.M. Dhariwal (HUF) ) Occ:Business at Manikchand House”, 100-101 ) D, Kennedy Road, Pune 411 001 and also ) At Sonawala Bldg., 1 st floor, 19, Bank Street, ) Mumbai 400 001 ) 2. Dhariwal Industries Ltd. ) A company incorporated under companies Act) 1956 and having registered office at ) Manikchand House 100-101 D, Kennedy Road,) Pune 411 001 and branch office at Sonawala ) Bldg., 1 st floor, 19, Bank Street, ) Mumbai 400 001 )..Respondents 2 Mr. G. S. Godbole i/b Mr. A. B. Tajane for the Appellants Mr. Virag Tulzapurkar Senior Advocate i/b Asia Patent & Law for the Respondents CORAM : J. N. PATEL & A.P. BHANGALE, JJ RESERVED ON : 23rd March, 2010 PRONOUNCED ON: 29th March, 2010. JUDGMENT (Per Shri A. P. BHANGALE, J.) : 1. This appeal arises from the order dated 19.11.2009 whereby the Notice of Motion No.3709 of 2009 in Suit No.2516 of 2009 has been made absolute in terms of prayer clauses (a) to (c). The facts of the case, in brief, are thus: 2. The plaintiffs (respondents herein) claimed that plaintiff No.1 Mr. Rasiklal Manikchand Dhariwal, in or about the year 2001 invented a method of producing Oxygen Enriched Packaged Drinking Water and an Apparatus used therefor. The said invention was fully secured by Indian Patent under the Indian Patents Act 1970. Patent No.204086 was granted under the Patent Certificate dated 26.12.2006 to Shri Rasiklal Manikchand Dariwal, pursuant to his application bearing No. 3 254/MUM/2002 dated 15.03.2002. According to plaintiff No.1, in the year 2002 he started processing, marketing and dealing in innovative “Oxygen Enriched Healthy Packaged Drinking Water” of a Unique Purity and Utility. The plaintiff No.1 adopted distinctive mark “OXYRICH” which was registered as a Trade Mark under the Certificate dated 01.09.2005 under the Trade Marks Act, 1999 in respect of mineral, aerated and packaged drinking water and other non-alcoholic drinks, syrups and other preparations for making beverages, Beer, Ale and Porter. It is the case of plaintiff No.1 that as the Karta of R.M. Dhariwal (Hindu undivided family), he entered into registered user Agreement dated 18.10.2005 with plaintiff No. 1’s company known as Dhariwal Industries Limited to grant non- exclusive right to user company for using the trade marks “MANIKCHAND” and “OXYRICH” in conjunction i.e. “MANIKCHAND OXYRICH” in respect of packaged drinking water. Thus, the Company (the 2 nd plaintiff) was authorised the user invention in consideration of royalty payable under the Royalty Agreement. Further, according to the plaintiffs, the services of a designer/artist were availed to create a label registered as copyright on 06.08.2007 in favour of Shri 4 Rasiklal Manikchand Dhariwal under title “MANIKCHAND OXYRICH HEALTHY DRINKING WATER”. After advertising of the product, valuable goodwill and reputation accrued to it. 3. The plaintiffs further contended that in June 2009 they noticed that the defendants had commenced bottling and marketing packaged drinking water by adopting and/or using the artistic Trade Mark label having identical colour scheme, get-up, design and layout which is deceptively similar to the plaintiffs’ artistic label and registered Trade Mark. Therefore, the plaintiffs through an Advocate’s notice dated 19.06.2009 sought to restrain the defendants from infringing their registered Copy Right and Trade Mark and claimed a sum of Rs.5,00,000/- as damages for violating intellectual property rights. 4. The defendant by its reply dated 29.06.2009 denied the contentions in the notice and contended that they are carrying on business of packaged drinking water honestly by adopting a distinctive label “OXYCOOL” as a trade mark under the Trade Mark Registration No. 01763076 in Class 32 in respect of packaged drinking mineral water. The defendant further contended that it adopted “OXYCOOL” as a 5 distinctive trademark for packaged drinking water like OXY-LIFE, OXYLIFE, OXYLITE, OXYPLUS, OXYWELL, OXYJAL, OXYZAL, OXYFLOW, OXYCARE, OXYSIP, OXYDUE, OXYBLUE etc., for selling packaged drinking water. It is contended that the appellants (the defendants herein) have no intention to tread upon the goodwill of the respondents/plaintiffs and that their Trade Mark “OXYCOOL” is distinct and dissimilar to the plaintiffs’ product. 5. The Learned Counsel for the appellants submitted that there are many traders using the common word “OXY” for selling and identifying their products of packaged drinking water. The word “OXY” has root in Oxygen; a colourless tasteless, normally a gaseous element most abundant in earth’s atmosphere, which is a chemical element “O”. While water is a chemical substance in liquid form composed of hydrogen and oxygen which is vital for all forms of life visualised ordinarily as represented by sky blue or light blue colour and the word “OXY” is a generic term and can not be monopoly of anybody – selling safe drinking water in packages. The Learned Counsel for appellants also contended that when the trade mark and if labels of plaintiff No.1 and defendants are visualised, font wise, 6 script wise in their contents and phonetically also, there are variations between the two and, therefore, prospective customers or buyers cannot be confused or misled in to believing that one is the other. The Learned Counsel for the appellants, therefore, took us through the record and proceedings including the impugned order granting interim injunction and criticized the order passed by the Learned Single Judge on the ground that even otherwise the plaintiffs had not placed before the learned Single Judge any material to show that on account of the defendants selling “OXYCOOL” packaged drinking water they suffered any loss of revenue or profits. According to the Learned Counsel for the appellants, no prima facie case was made out by the plaintiffs of any reduction in income or loss of profits or irreparable loss so as to get interim injunction in their favour. The Learned Counsel submitted that the trade mark “OXYCOOL” is in no way similar to the trade mark “MANIKCHAND OXYRICH” and the Learned Single Judge ought to have noticed dissimilarities and variations - script wise, font wise and in the words used on the lable of the packaged drinking water. The terms “OXY” is a generic term which arose from oxygen 7 component of water and cannot be the monopoly of any trader, selling packaged - safe drinking water while the terms “RICH” and “COOL” were absolutely dissimilar and cannot confuse or mislead any prospective buyer of packaged drinking water. The Learned Counsel for the plaintiffs submitted that there are many traders who prefix “OXY” in respect of their Trade Marks and the plaintiffs cannot claim independent proprietary right or monopoly in respect of the word “OXY”. The labels, colour scheme and overall get-up of the trade mark of plaintiff No.1 and that of the defendants were also different when compared overall visually and phonetically. The colour scheme of the plaintiffs’ label exhibited blue and golden colour, while the colour scheme of the defendant’s label exhibits blue and green colour. The plaintiffs also claimed that the label on their product have special features of 300% more oxygen and exhibits picture of a lady holding bottle whereas this was completely absent on the label of the defendants’ packaged drinking water and the visual and phonetic tests applied by any man of a reasonable and ordinary prudence would indicate the dissimilarities and no buyer can be confused or misled. The Learned Counsel for the appellants also 8 brought to our notice that plaintiff No.1 is not himself using the Trade Mark “MANIKCHAND OXYRICH” but has assigned it for consideration of royalty payable under the Royalty Agreement by plaintiff No.2. Whether the said assignment was valid or legal with prior approval of the competent authority or not is a fact within the knowledge of plaintiff No.1 as no such material is produced by the plaintiffs before claiming interim injunction. The Learned Counsel, therefore, submitted that non-user of Trade Mark by plaintiff No.1 himself or assignment of user thereof by him in favour of the plaintiff No.2-company ought to have been taken in to consideration by the Learned Single Judge to decide the notice of motion. It is also brought to our notice that identical claim by the plaintiffs against Shilpa Beverages Pvt Ltd. was rejected by this High Court in Notice of Motion No.518 of 2009 in Suit No.261 of 2008 by the order dated 15.04.2009 (Coram: A .P .Deshpande, J.) and the appeal by Shri Rasiklal M. Dhariwal and another being Appeal No.236 of 2009 was dismissed by a Division Bench of this Court on 1 st July 2009. The SLP being SLP (Civil) CC No.1148 of 2010, filed by the plaintiffs, was dismissed by the Supreme Court on 08.02.2010. 9 6. The Learned Counsel for appellants made reference to ruling in J. R. Kapoor Vs. M/s. Micronics India {JT 1994 (5) SC 37}.. The Apex Court while considering the trade names ‘MICROTEL’ and ‘MICRONIX’ observed thus in paragraph No.6: “6. Thus micro-chip technology being the base of many of the products, the word ’micro’ has much relevance in describing the products. Further, the word ’micro’ being descriptive of the micro technology used for production of many electronic goods which daily come to the market, no one can claim monopoly over the use of the said word. Anyone producing any product with the use of micro chip technology would be justified in using the said word as a prefix to his trade name. What is further, those who are familiar with the use of electronic goods know fully well and are not only likely to be misguided or confused merely by, the prefix ’micro’ in the trade name. Once, therefore, it is held that the word ’micro’ is a common or general name descriptive of the products which are sold or of the technology by which the products are manufactured, and the users of such products are, therefore, not likely to be misguided or confused by the said word, the only question which has to be prima facie decided at this stage is whether the words ’tel and ’nix’ in the trade names of the appellant and the respondent are deceptive for the buyers and users and are likely to misguide or confuse them in purchasing one for the other. According to us, phonetically the words being totally dissimilar are not going to create any such confusion in the mind of the users. Secondly, even the visual impression of the said two trade names is indifferent. In the first instance, the respondent’s trade name ’MICRONIX’ is in black and 10 white in slimmer letters and they are ensconced in designs of elongated triangles both above and below the said name. On the other hand, the appellant’s trade name ’MICROTEL’ is in thick bold letters in red colour without any design around. As regards the logo, the respondent’s logo consists of the word ’M’ in a slim letter with ‘I’ sporting a dot on it and drawn in the well of ’M’, Below the letter ’M’ in small letters is written the word ‘MICRONIX’ and all these letters and words are written in white in a black square in north-south direction. As against this, the appellant’s logo is one letter, viz,. ‘M’ which is drawn in bold broad letter with its left leg slimmer than all other parts which are in thick broad brush. The letter has also white lines drawn across it which is in blue colour. There is no other letter nor is it set against any background. We are, therefore, unable to see how the visual effect of both the logos will be the same on the mind of the buyers. This being the case, we are of the view that there is not even the remotest chance of the buyers and users being misguided or confused by the two trade names and logos. Same is the case with the carton which merely reproduces both the trade names and the logos. Having observed thus the Hon’ble Supreme Court set aside the interim injunction granted by the High Court. 7. In Medley Pharmaceuticals Ltd. Vs. Khandelwal Laboratories Ltd. {2006(1) Bom.C.R. 292} this Court while dismissing the notice of motion for interim injunction, in para 4, observed thus: 4. It is not possible to accept the contention of the learned counsel for the plaintiff that by virtue 11 of use of the mark “CFI” and other mark “CEFO” the plaintiff has acquired any exclusivity or right of exclusive user of the Trade Mark and thus they are entitled to an injunction for passing off action under the provisions of the Trade and Mercantile Marks Act, 1958. In respect of the passing off action it is necessary that the plaintiff must establish exclusivity of his mark and that his goods have acquired reputation by user of his mark and further that other people are not using similar mark and thus he is entitled to an injunction for such mark as against the other parties.” 8. Reliance is next placed upon the decision in Ranbaxy Laboratories Ltd. Vs. Indchemie Health Specialities Pvt Ltd. [2002(3) Bom CR 186}. The Learned Single Judge of this Court while considering Trade Mark “Zanocin” and “Zenoxim”, observing variations between the two, concluded that phonetically the two marks can not be said to be deceptively similar and refused to grant interim injunction considering the settled legal position that no person can claim exclusive use of the descriptive and generic terms. It would be highly undesirable to confer on one trader proprietary right over the use of an ordinary, descriptive or a generic word indicative of the nature, composition and quality of the goods as that would give him complete monopoly to exploit the word to the exclusion of others. A 12 word which can qualify as an exclusive mark of a trader must be distinctive so as to distinguish his goods from those of the other persons. Thus a party using a descriptive and generic term for its trade mark can not be given sole right to use the same to the exclusion of other traders commonly used words in trade and descriptive of the nature or colour or laudatory of the quality of the goods can not be permitted to be monopolised. 9. On the other hand the Learned Counsel for plaintiffs (the respondents herein) contended that the plaintiffs case is based upon infringement of their Trade Mark by the defendants and not for “passing off” action. He urged that the registered Trade Mark “OXYRICH” is the property to which plaintiff No.1 was exclusively entitled and defendants have infringed it by selling their products in the name as “OXYCOOL” 10.The Learned Counsel for the respondents relied upon the following rulings : (a)F. Hoffmann-LA Roche & Co. Ltd. Vs. Geoffrey Manner & Co. Pvt. Ltd. [1969(2) SCC 716]. 13 It was held that the phrase “Dropovit” is not deceptively similar to the words “Protovit” within the meaning of Section 2(1)(d) of the Act, nor is it likely to cause ‘confusion’ as outlined in that section. The ture tests of ‘Look’ and ‘Sound’ must be used. (b)Automatic Electric Limited Vs. R.K.Dhawan & Anr. {1999 PTC (19) 81} It was held that the defendants’ Trade Mark was “DIMMER DOT”, and the plaintiff was ‘DIMMERSTAT”. Held it does not lie in the mouth of the defendants to claim that word “DIMMER” is a generic impression. (c) Poddar Tyres Ltd. Vs. Bedrock Sales Corporation Ltd. and Anr., {AIR 1993 BOM 237}. The learned Single Judge while granting interim injunction held in the facts of that case that the first defendant by adopting the word “BEDROCK” as part of their corporate name infringed the registered Trade Marks of which the plaintiffs were the 14 registered proprietors. (d) M/s. F. M.Diesels Ltd. Vs. M/s. S. M. Diesels {1193 PTC 75 (Delhi High Court)}. The Learned Single Judge of the Delhi High Court held that the Trade Mark of the defendants “SONA MARSHAL’ as identical or deceptively similar to TM “FIELD MARSHAL” of the plaintiff and restrained the defendants from passing off their diesel engine and parts by the Trade Mark ‘SONA MARSHAL” (e) In The Daily Calendar Supplying Bureau, Sivakasi Vs. The United Concern {AIR 1967 Madras 381}, the Madras High Court held that for infringement of copyright an exact copy of reproduction is not necessary and it depends upon the impression produced upon mind by study of picture. (f) In M/s. Hiralal Prabhudas Vs. M/s. Ganesh Trading Company {AIR 1984 Bombay 218}, tests for 15 comparison of two Trade Marks in dispute were laid down and the same reads thus: 5. What emerges from these authorities is (a) what is the main idea or salient features, (b) marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole, (c) overall similarity is the touchstone, (d) marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection, (e) overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (f) the purchaser must not be put in a state of wonderment, (g) marks must be compared as a whole microscopic examination being impermissible, (h) the broad and salient features must be considered for which the marks must not be placed side by side to find out difference in design and (i) overall similarity is sufficient. In addition indisputably must also be taken in to consideration the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances.” (g) In Ruston and Hornby Ltd. Vs. Zamindara Engineering Co. {AIR 1970 SC 1649}, the Apex Court pointed out the points of distinction in a suit for infringement of Trade Mark and passing off action. (h) In Corn Products Refining Co. Vs. Shangrila Food 16 Products Ltd. {AIR 1960 SC 142}, it was observed that it is well known that a question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the Court to decide that question and it was observed thus: “17. We think that the view taken by Desai J., is right. It is well known that the question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the court to decide that question. English cases proceeding on the English way of pronouncing an English word by Englishmen, which it may be stated is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity. It cannot be overlooked that the word is an English word which to the mass of the Indian people is a foreign word. It is well recognised that in deciding a question of similarity between two marks the marks have to be considered as a whole. So considered, we are inclined to agree with Desai J. that the marks with which this case is concerned are similar. Apart from the syllable “co” in the appellants mark the two marks are identical. That syllable is not in our opinion such as would enable the buyers in our country to distinguish the one mark from the other. 18. We also agree with Desai J. that the idea of the two marks is the same. The marks convey the ideas of glucose and life giving properties or vitamins. The Aquamatic case (Harry Reynolds V. Laffeaty’s Ld.) 1958 RPC 387 is a recent case where the test of the commonness of the idea between two marks was applied in deciding the question of similarity 17 between them. Again, in deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them.” 11.We have heard the Learned Counsel at length and perused the rulings cited. In our opinion, the decision as to granting or refusing of interim injunction is taken upon on three essential questions depending upon facts and circumstances, namely, (a) Whether the plaintiffs have made out a strong prima facie case to justify grant of interim injunction ? (b) What would be the balance of convenience if injunction is granted as prayed for at the interim stage of suit ? (c) Whether any irreparable damage or loss may result to plaintiffs if injunction is withheld ? The Learned Judge is always expected to address himself on these questions while deciding a motion for interim injunction. 12.Coming back to facts of the case, in our view, the get up and features 18 of two labels on the bottles shown to us, when compared, are dissimilar as there are some distinct features between the two and the appellant’s get-up of the label can not be said to be deceptively similar to that of the respondents. No buyer, in our view, could be deceived to buy the appellants’ product believing the same to be product of the respondents. The plaintiffs/respondents had not produced affidavit of even a single customer to swear or solemnly affirm that he was ever misled in to buying the appellants’ product believing it to be the product of the respondents. The advertisement of the respondents’ product lay more stress on purity and uniqueness of the product than a trade mark on the get-up of the label. There is no evidence to justify the interference that the appellants have copied get-up of the respondents. The colour scheme, design, description of the labels, in our view, when compared, are dissimilar considering the font and the scripts of writing. The only similarity may be blue colour back ground but that also can not constitute a special characteristic of the respondents’ product, different colour combination, design and style is exhibited for labels. No prima facie case is made out to establish that due to the defendants selling 19 drinking water in the trade name “OXYCOOL” in the market since June, 2009 has in any way diminished the extent of sales of the plaintiffs/respondents’ product “MANIKCHAND OXYRICH” packaged drinking water sold in bottles. If strong prima facie case of infringement of Trade Mark is not made out, one can not ignore the policy of law e.g. the Competition Act (12 of 2003) to promote healthy competition amongst traders and sustain it for industrial growth by controlling monopolies, preventing practices having adverse effect on competition and to serve social and economic justice, changing policy of law may be relevant to decide motion for injunction by exercise of sound judicial discretion. Likelihood of confusion or deception in the present case is ruled out as buyers of packaged drinking water belong to a class of its own, mostly belonging to middle or upper class, fairly educated using due diligence, knowing what he or she is going to buy, but may not have clear recollection as to which product he or she had bought earlier or what had been advertised for sale of drinking water in packaged bottles. The terms “Oxygen” is common and is known as H2O in Chemistry and consequently the plaintiffs cannot claim any exclusive 20 title to use the word “OXY” by reason of