1 IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED: 05-07-2011 CORAM: THE HONOURABLE MR. JUSTICE V.RAMASUBRAMANIAN O.A.Nos.518 & 519 of 2010 in C.S.No.460 of 2010 M/s.Aravind Laboratories, No.3/7, Valluvar Salai, Ramapuram, Chennai-600 089 Represented by its Partner Mr.T.Devanathan .. Applicant in both OAs/Plaintiff vs. Modicare, Ali Towers, 2nd Floor, Greams Road, Thousand Lights, Chennai-600 006, Tamil Nadu, India. .. Respondent in both OAs/Defendant For Applicant/Plaintiff in both OAs : Mrs.Gladys Daniel For Respondent/Defendant in both OAs : Mr.Satish Parasaran C O M M O N O R D E R Pending suit for infringement of a registered trade mark and passing off, the plaintiff has come up with (i) O.A.Nos.518 of 2010 praying for an interim order of injunction restraining the respondent from manufacturing, selling, advertising and offering their products for sale using the trade mark Daily Dazzler in any media and using the same in nail polish, nail glitter, invoices, letter heads and visiting cards or any other https://hcservices.ecourts.gov.in/hcservices/ 2 cosmetics and by using any other trade mark which is in any way visually, phonetically or deceptively similar to the applicant's trade mark EYETEX DAZLLER or in any manner infringing the applicant's registered trade mark Nos.1261112 and 1261117 in Class 3; and (ii) O.A.No.519 of 2010 praying for an interim order of injunction restraining the respondent from manufacturing, marketing, distributing, offering or advertising or using the mark Daily Dazzler or similar sounding names in the course of their business and passing off their nail polish or other cosmetic products using the trade mark Daily Dazzler as and for the EYETEX DAZLLER goods of the applicant. 2. I have heard Mrs.Gladys Daniel, learned counsel for the applicant/ plaintiff and Mr.Satish Parasaran, learned counsel for the respondent/ defendant. 3. The plaintiff is the manufacturer and marketer of cosmetics for the past 75 years. One of the cosmetics marketed by the plaintiff is Kajal, which is applied on the eyes. The plaintiff conceived and adopted the word "EYETEX DAZLLER" as one of its trade marks and got registration of the same in respect of the Nail Polish and Nail Glitters under Class 3. Apart from the trade mark "EYETEX DAZLLER", the plaintiff is also the proprietor of several trade marks, whose details are as follows: https://hcservices.ecourts.gov.in/hcservices/ 3 S. No . TRADE MARK APPLN. REGD. NO. DATE CL . 1 EYETEX [Label] 124824 9/11/46 3 2 EYETEX Bindi Kumkum [Label] 176769 10/20/56 3 3 EYETEX KUMKUM [Label] 231497 9/27/65 3 4 EYETEX 271583 4/24/71 3 5 EYETEX (Label) 271584 4/24/71 3 6 EYETEX (Telugu Character)(word) 296909 6/14/74 3 7 EYETEX (Devanagari Character)(word) 296910 6/14/74 3 8 EYETEX (Kannada Characters)(word) 296913 6/14/74 3 9 EYETEX (Tamil Characters)(word) 296914 6/14/74 3 10 EYETEX (Malayalam Character) 296915 6/14/74 3 11 EYETEX (Word Per Se) 303087 2/19/75 3 12 EYETEX (Label) 412736 11/3/83 3 13 EYETEX (Label) 412737 11/3/83 3 14 EYETEX Kumkum 412738 11/3/83 3 15 EYETEX Kumkum (LABEL) 412748 11/3/83 3 16 EYETEX Kumkum (Label) 412749 11/3/83 3 17 EYETEX Kumkum (Label) 412754 11/3/83 3 18 EYETEX POORNIMA (Word Per Se) 527083B 3/29/90 3 19 EYETEX DIVYAA Kumkum 527084 3/29/90 3 20 EYETEX DIVYAA 527085B 3/29/90 3 21 EYETEX POORNIMA Kumkum (L) 1261111 1/14/04 3 22 EYETEX DAZLLER 1261112 1/14/04 3 23 EYETEX POORNIMA Kumkum (L) 1261113 1/14/04 3 24 EYETEX PALLAVI Kumkum (L) 1261114 1/14/04 3 25 EYETEX POORNIMA Kumkum (L) 1261115 1/14/04 3 https://hcservices.ecourts.gov.in/hcservices/ 4 S. No . TRADE MARK APPLN. REGD. NO. DATE CL . 26 EYETEX PALLAVI (Word Per Se) 1261116 1/14/04 3 27 EYETEX DAZLLER (Word Per Se) 1261117 1/14/04 3 4. It is the claim of the plaintiff that in April 2010, an advertisement issued by the defendant appeared in a magazine, which indicated that they were marketing a nail polish with the trade mark "Daily Dazzler". Therefore, complaining that the defendant is guilty of infringement and passing off, the plaintiff has come up with the above suit and the applications for injunction. 5. The plaintiff has filed as document No.1 series, the copies of the cartons in which their products are sold with the label which contain the words "EYETEX DAZLLER" written in an artistic manner. The plaintiff has also filed the certificates of registration of their trade marks bearing Nos.1261112 and 1261117, as document Nos.2 and 3. These documents disclose that the plaintiff has obtained registration of the word "EYETEX DAZLLER" in respect of Nail Glitter and Nail Polish under Class 3 with effect from 14.01.2004 and had also obtained registration of a device which includes the words "EYETEX DAZLLER". The advertisement issued by the defendant in a magazine titled "New Woman" is filed as document No.4. Document No.4 shows the picture of a bottle in which the nail enamel marketed by the defendant is displayed. It contains the words "Daily https://hcservices.ecourts.gov.in/hcservices/ 5 Dazzler". Therefore, based on these documents, the plaintiff complains that there is infringement and passing off. 6. In addition to the above documents, the plaintiff also filed copies of sales invoices from the year 2003 to 2010, as additional set of documents, in the course of hearing of the applications, to show that they have actually been using the trade mark "EYETEX DAZLLER" in relation to their Nail Glitters. 7. In response to the averments contained in the application for injunction, the respondent/defendant has filed a counter affidavit contending as follows: (a) that the defendant is part of the Modi Group of Companies founded in 1932, involved in the business of home care and personal care products, including cosmetics; (b) that the defendant markets all its products through direct marketing and not through retail outlets; (c) that the defendant manufactures and markets its products under various trade marks, including the mark "Essensual 20", which is used extensively in respect of Hand and Body Lotions, Lipsticks, Lip Pencils, Lip Gloss, Foundation, Base Makeup, Powder, Blush, Eye Shadow, Eye Pens and Eye Pencils ever since the year 2000; (d) that the defendant's turnover during the financial year 2009-2010 was over Rs.50.00 crores, out of which, a sum of Rs.4.72 crores was generated by the sale of the https://hcservices.ecourts.gov.in/hcservices/ 6 products under the brand name/trade mark "Essensual 20"; (e) that the defendant is the registered proprietor of the marks ESSENSUAL (No.782714), ESSENSUAL 20 TFC (No.1354408), ESSENSUAL 20 THE FRENCH COLLECTION (No.1351239), ESSENSUAL AROMA (No.1041035), ESSENSUAL SPORTS (No.1029340) and ESSENSUAL WOMAN (No.1029342) in Class 3 and that the mark 'ESSENSUAL 20 DAILY DAZZLER' is another extension of the mark "Essensual 20"; (f) that the Nail Enamels manufactured by the defendant are primarily intended to add glitter to the nails and to make them attractive and impressive; (g) that therefore the defendant honestly adopted the name "Daily Dazzler" in respect of its "Essensual 20" nail enamels; (h) that "Daily Dazzler" variant of "Essensual 20" Nail Enamel was introduced by the respondent in August 2009; (i) that the defendant also offers other variants of "Essensual 20" Nail Enamels, such as The French Collection (TFC), Show Off, Style n Shine; (j) that no person can claim any monopoly over the English word "Dazzle"; (k) that while the trade mark used by the plaintiff is "EYETEX DAZLLER", the mark adopted by the defendant is "Essensual 20 Daily Dazzler" and hence, the broad and essential features are different; https://hcservices.ecourts.gov.in/hcservices/ 7 (l) that the channels of marketing are different for the plaintiff and the defendant, since the defendant does direct marketing; and (m) that while the plaintiff's product is priced at Rs.40/-, the defendant's product is priced at Rs.100/- and hence, there is no possibility of deception or confusion. 8. The defendant filed the following documents in the first instance: (i) print outs of the website pages of different manufacturers or marketers of the Nail Polish and Nail Glitters to show that many of them use the word "Dazzle" as descriptive of their products; (ii) the trade mark applications filed by the defendant for their mark "Essensual 20" and their variants; (iii) sample invoices evidencing the sale of "Essensual 20 Nail Enamel – Daily Dazzler", for the period 2009-2010; (iv) the advertisements and write ups in respect of the defendant's products; (v) the business manual of the defendant; (vi) the price list of the defendant's products; and (vii) advertisement of the mark "Dazzler" in the Trade Marks Journal. 9. In addition to the above documents, the defendant also filed one set of additional documents, which are as follows: https://hcservices.ecourts.gov.in/hcservices/ 8 (i) the examination report in respect of the trade mark No.1261117 of the plaintiff; (ii) notice given to the plaintiff by the Trade Marks Registry; (iii) journal publication of the plaintiff's trade mark; (iv) trade mark No.231497 of the plaintiff; and (v) Chartered Accountant's certificate showing the sales turnover and promotional expenses of the defendant's products for the year 2001 to 2010. 10. Subsequently, the defendant filed another set of documents, which are as follows: (i) trade mark application No.550019 filed by a third party for the mark "Dazzle"; (ii) the examination report in respect of the trade mark No.550019; (iii) the trade mark application No.971504 filed by a third party; (iv) trade mark application No.925947 filed by another third party; (v) examination report in respect of TM No.925947; and (vi) the trade mark application of the defendant bearing No.1835528, for the "Daily Dazzlers". 11. From the pleadings and the documents, it is clear (i) that the plaintiff is the "registered proprietor" of the device mark "EYETEX Dazller" bearing Trade Mark https://hcservices.ecourts.gov.in/hcservices/ 9 No.1261112 with effect from 14.1.2004 in respect of nail glitters, nail polish and other beauty specialities in relation to nail; (ii) that the plaintiff is the "registered proprietor" of the word mark "EYETEX DAZLLER" bearing Trade Mark No.1261117 with effect from 14.1.2004 in respect of nail glitters, nail polish; and (iii) that the plaintiff is actually using the registered marks, as seen from the invoices from 2003 to 2010, filed as additional documents. 12. Therefore, by virtue of the provisions of Section 28 (1) of the Trade Marks Act, 1999 and by virtue of the decision of the Apex Court in Midas Hygiene Industries (P) Ltd vs. Sudhir Bhatia {2004 (3) SCC 90}, the plaintiff is entitled to an order of injunction restraining the defendant from committing infringement of the registered trade mark, provided I find infringement and I also find that the defence set up by the defendant, does not fall under any of the exceptions contained in Sections 30, 33, 34 and 36. In other words, we have to see (i) if the action of the defendant falls within the purview of any of the sub-sections of Section 29, so as to constitute infringement or (ii) if the defence set up by the defendant falls under any one or more of the exceptions. Alternatively, I should find passing off. 13. The contents of the counter affidavit filed by the defendant, which I have extracted in para 7 above, would https://hcservices.ecourts.gov.in/hcservices/ 10 show that their defence could be classified into the following:- (i) The defence arising out of Section 17. (ii) The defence arising out of Section 30(2)(a) and (iii) The defence arising out of Section 35 DEFENCE UNDER SECTION 17: 14. Admittedly, the registration obtained by the plaintiff is in respect of the whole of the mark "EYETEX Dazller". Though the plaintiff has also obtained registration of the word "EYETEX" separately, they have not chosen to obtain registration for the word "Dazller" separately. Section 15(1) of the Act, enables the proprietor of a trade mark who claims to be entitled to the exclusive use of any part of the trade mark separately, to apply both for the registration of the whole as well as for the registration of the parts, as separate trade marks. But each of those marks should satisfy all the conditions necessary for its registration as an independent trade mark. Under Section 17(1) of the Act, if a trade mark consists of several matters, its registration would confer on the proprietor, the exclusive right to the use of the trade mark taken as a whole. But it is conditioned by sub- section (2) of Section 17, to the following effect:- (a) If the trade mark contains any part which is neither the subject matter of a separate application nor registered separately as a trade mark, then the https://hcservices.ecourts.gov.in/hcservices/ 11 registration shall not confer any exclusive right in the matter forming only a part of the whole of the registered trade mark. (b) If the trade mark contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration shall not confer any exclusive right in the matter forming only a part of the whole of the registered trade mark. 15. On the basis of the above provision, it is pointed out by the defendant that the Trade Mark No.1261112, registered in favour of the plaintiff, is a device mark containing not only the words "EYETEX Dazller", but also the words "Nail Glitter" along with the picture of two nail polish bottles and the sketch of a lady showing her fingers. The other mark viz., Trade Mark No.1261117, registered in favour of the plaintiff is only a word mark, again containing two words viz., (i) EYETEX and (ii) DAZLLER. 16. Apart from the above two registered marks, the plaintiff has also obtained registration of as many as 25 marks, all of which contain the word "EYETEX", either independently or in combination with other words such as "Kumkum", "Poornima", "Divyaa", "Pallavi" etc. Therefore, it is clear that though the plaintiff has obtained independent registration of the word "EYETEX", the plaintiff did not obtained registration of the word https://hcservices.ecourts.gov.in/hcservices/ 12 "DAZLLER", separately. 17. As a matter of fact, the defendant filed three sets of additional documents, in the course of hearing of the above applications. Some of these additional documents show that if an attempt had been made by the plaintiff to have the word "DAZLLER" separately registered, it would have met with stiff resistence from the Registry. One of the documents filed by the defendants is the copy of the "Examination Report" of the Registrar of Trade Marks, in respect of the trade mark application No.1261117, filed by the plaintiff. In paragraph 1 of the said report, the Registrar raised an objection that the mark directly referred to the quality of the goods. In the Annexures to the Report, the Registrar had also pointed out that there were conflicting marks, either already existing on the Register or pending consideration. One set of conflicting marks pointed out in the Report, related to the word "EYETEX", registered in favour of the plaintiffs themselves. The other set of conflicting marks pointed out in the Report, related to the word "Dazzle". Three companies by name Cherie Cosmetics Pvt. Ltd., Vasu Pharmaceuticals Pvt Ltd., and Pacific International, had applied for registration of the very same word "DAZZLE" under Application Nos. 550019, 925947 and 971504, respectively under Class 3 itself. These applications were pending with the Registry on 21.1.2004 when the plaintiff https://hcservices.ecourts.gov.in/hcservices/ 13 had applied for the registration of their mark "EYETEX DAZLLER". Therefore, after holding a hearing on 8.4.2004, the Registrar of Trade Marks appears to have accepted the trade mark of the plaintiff, under Application No.1261117, with a condition that it is "to be associated with registered T.M.Nos.231497, 271583 and 412748". 18. Thus it is clear that the Registrar of Trade Marks had raised an objection with regard to the word "DAZZLE" on the ground that it was descriptive and also on the ground that there were three applications pending as on the date of application of the plaintiff. The Registrar also raised an objection with regard to the word "EYETEX" on the ground that the plaintiffs themselves had registration for the word "EYETEX". Ultimately, the issue was resolved by granting registration to the whole of the mark "EYETEX DAZLLER". 19. Therefore, it is clear that the plaintiff could not have obtained registration for the word "DAZLLER" independently, if they had taken recourse to Section 15(1) of the Act. This is fortified by another set of documents filed by the defendant viz., (i) the Trade Mark Applications bearing Nos.550019, 971504 and 925947 and (ii) the Examination Reports in respect of these three applications. These documents would show-- (i) that Cherie Cosmetics Pvt. Ltd., applied for registration of the word "DAZZLE" way back on 29.4.1991 https://hcservices.ecourts.gov.in/hcservices/ 14 under Application No.550019, but withdrew the application after the Registrar raised an objection that the mark had a direct reference to the nature and quality of the goods; (ii) that one Jivan Narayandas Rathi applied for registration of the word "DAZZLE" way back on 20.11.2000 under Application No.971504, but abandoned the application and (iii) that one Vasu Pharmaceuticals Pvt Ltd., applied for registration of the word "DAZZLE" way back on 19.5.2000 under Application No.925947, but abandoned the application after the Registrar raised an objection that the mark was descriptive. 20. Therefore, it is clear that the registration of the trade mark in favour of the plaintiff was granted as a whole (i.e., as EYETEX DAZLLER) and that one of the constituent parts of the registered mark viz., the word "DAZLLER" is not registered separately. Even the attempt made by others to get the word "DAZZLE" registered, met with stiff resistence from the Registry on the ground that the word was descriptive. Therefore, it is anybody's guess today as to whether the plaintiff could have obtained registration for the word "DAZLLER" separately, in terms of Section 15(1). 21. Once it is seen that the word "DAZLLER" is not separately registered in favour of the plaintiff and that even the attempt made by others to appropriate the word https://hcservices.ecourts.gov.in/hcservices/ 15 'dazzle' failed, then the prescription in Rule 17(2)(a)(ii) would come into operation. Consequently, the defendant's use of the word "DAZLLER", as part of the mark "Daily Dazzler" cannot be held to be an act of infringement. 22. In one of the earliest cases which arose under the Trade Marks Act,1940 before the Supreme Court in The Registrar of Trade Marks vs. Ashok Chandra Rakhit Ltd {AIR 1955 SC 558}, a question arose as to whether the proposal of the Registrar for the disclaimer of the word "Shree" in respect of a composite mark containing a word as well as a device, was justified or not. It is relevant to note at this stage that the Registrar had the power under the old Act, to require the proprietor of a mark to disclaim any part of the mark. The real purpose of requiring a disclaimer, as pointed out by the Apex court in that case, was to define the rights of the proprietor under the registration so as to minimise, even if it cannot wholly eliminate, the possibility of extravagant and unauthorised claims being made on the score of registration of the trade marks. But this provision for disclaimer was omitted and a general proposition was incorporated in Section 17(2) of the 1999 Act. Therefore, while considering the validity of the disclaimer, the Supreme Court made certain interesting observations in paragraph 8 of its decision, which reads as follows:- "8. The third thing to note is https://hcservices.ecourts.gov.in/hcservices/ 16 that the avowed purpose of the Section is not to confer any direct benefit on the rival traders or the general public, but to define the rights of the proprietor under the registration. The registration of a trade mark confers substantial advantages on its proprietor as will appear from the Sections grouped together in Chapter IV under the heading "Effect of Registration". It is however a notorious fact that there is a tendency on the part of some proprietors to get the operation of their trade marks expanded beyond their legitimate bounds. An illustration of an attempt of this kind is to be found in In Re : Smokeless Powder Co's Trade Mark. Temptation has even led some proprietors to make an exaggerated claim to the exclusive use of parts or matters contained in their trade marks in spite of the fact that they had expressly disclaimed the exclusive use of those parts or matters. Reference may be made to Greers Ltd vs. Pearman and Corder Ltd, commonly called the "Banquet" case.". 23. Again in paragraph 14 of the same decision, the Supreme Court held as follows:- "14. It is true that where a distinctive label is registered as a whole, such registration cannot https://hcservices.ecourts.gov.in/hcservices/ 17 possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole. As said by Lord Esher in Pinto vs. Badman 'the truth is that the label does not consist of each particular part of it, but consists of the combination of them all' ". 24. In paragraph 9-082 of the Kerly's Law of Trade Marks and Trade Names (14th Edition-South Asian Edition 2007), it is stated as follows:- "Where a trade mark is registered subject to a disclaimer of the right to the exclusive use of a specified element of the registered mark, the rights conferred by registration are restricted accordingly. It follows that an objection based upon an earlier registration cannot succeed where the only resemblance between the marks in issue is an element for which protection has been disclaimed". Therefore, on the basis of the above judgment of the Supreme court and on the foundation of Section 17(2)(a)(ii) of the 1999 Act, a defence is raised by the defendant that the use of the word "Dazzler", which is not registered separately, would not amount to infringement. 25. But relying upon certain observations of the Apex court in Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel [AIR 2006 SC 3304], Ms.Gladys Daniel, learned counsel for the plaintiff contended that in an action for https://hcservices.ecourts.gov.in/hcservices/ 18 infringement, such a dichotomy is not permissible. It was held in the said judgment, as follows:- "80. There are three elements in the said trade mark viz., 'Ramdev', 'Masala' and the 'horse'. The deception could be as regards the prominent features of the said trade mark. 81. Section 15 of the 1958 Act, in our considered opinion, is not attracted in the instant case. By reason of the said provision, registration of trade mark in regard to the exclusive use is permissible both in respect of the whole trade mark as also the part thereof separately. Where such separate trade mark in regard to a part of it is applied for, the applicant must satisfy the conditions applying to and have all the incidents of an independent trade mark. Sub- section (3) of Section 15 of the 1958 Act provides for a case where the proprietor of several trade marks claimed registration in respect of the same goods or description of the goods which while resembling each other in the material particulars thereof yet differ in respect of the matters provided for therein. We are not, in this case, concerned with such a legal question. 82. In Ashok Chandra Rakhit Ltd (AIR 1955 SC 558), whereupon reliance https://hcservices.ecourts.gov.in/hcservices/ 19 has been placed by Mr.Nariman, this Court was concerned with a proprietary mark of 'Shree'. It was claimed that the mark 'Shree' was a trade mark apart from the device as a whole and it was an important feature of its device. The respondents were carrying on business in the name and style of Shree Durga Charan Rakshit. It was in the peculiar factual background obtaining therein, this Court, referred to the decision of Lord Esher in Pinto vs. Badman {8 RPC 181} to say that where a distinctive label is registered as a whole such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole. This Court in the aforementioned factual backdrop opined: "....This, as we have already stated, is not quite correct, for apart from the practice the Registrar did advert to the other important consideration,