1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO.1250 OF 2007 IN SUIT NO.912 OF 2007 Mahesh N. Thakkar ....Plaintiff V/s. Dedhia & Co. ....Defendants Mr.S.U. Kamdar, Senior Counsel with Mr.Ashish Agarwal i/b M/s.Purnanand & Co. for the Plaintiff. Mr.Sandip Parikh with Mr.Hemang Engineer i/b M/s.Gordhandas & Fozdar for the Defendants. CORAM : S.J. VAZIFDAR, J. DATE : 7TH OCTOBER, 2009. P.C. :- 1. This is an action for infringement and passing off in respect of the Plaintiff’s registered mark “VANDEVI”. The Defendants have used the mark “VEENADEVI”. According to the Plaintiff, the Defendants have committed acts of infringement and passing off by using the impugned trade mark “VEENADEVI” in relation to asafetida, which is deceptively similar to the Plaintiff’s registered trade mark “VANDEVI” used for the same goods. The Plaintiff started selling his goods under the brand name “VANDEVI” since the year 1943. The Plaintiff applied for registration of the mark “VANDEVI” under class 30. The Plaintiff’s mark was registered on 16.9.1943. There is no dispute that the registration is valid todate. 2. The Plaintiff has established the fact that his mark has also 2 achieved an enormous reputation by relying upon the sales figures and the advertising expenses of the products sold by him under the said mark. For instance from the year 1999 to 2005-2006 the sales figures increased from 3,90,73,624 to 6,37,22,821. The sales expenses incurred by the Plaintiff during this period aggregate to Rs.37,59,242/-. The advertisement expenses during this period aggregate to Rs.17,55,037/-. 3. According to the Plaintiff, he came across the Defendants’ case in or about March,2007. The cease and desist notice dated 3.3.2007 was served on the Defendants. The Defendants replied to the same by a letter dated 20.3.2007. The reply does not deal with the merits of the contentions raised by the Plaintiff. 4. There can be little doubt that there is both visual and phonetic similarity between the two marks “VANDEVI” and “VEENADAVI”. The fact that the names of various Gods have been used by other manufacturers and dealers of the said product would make no difference. Nor does the fact that the latter part of such names include the word “DEVI’. I cannot bifurcate the mark in such a manner while testing whether one mark is deceptively similar to the other and is likely to cause confusion. The mark must be read as a whole. 5. The Defendants firstly contended that their mark has already been registered. According to them, they got the registration of the mark on 15.5.2000, pursuant to an application made on 10.2.1992. 6. The submission is not well founded as the Defendants have failed to establish that the registration was obtained by them or on their behalf. Exhibit-1 to the affidavit in support is the registration certificate. 3 The registration certificate itself establishes that the mark has been registered in the names of one Premji Lakhamshi Dedhia, who was the Defendants’ father and the Defendant himself, trading as Dedhia & Co. Hingwala. Thus the registration was obtained by the Defendant and his father in the name of the partnership firm constituted between themselves. It is not necessary to go into the question as to whether being a co-owner of the mark, the Defendant could defend his use thereof in view of the fact that the registration certificate itself makes it clear that the registration was granted to the Defendant and his father in the category of the partnership firm and in view of the terms of the partnership deed between them. Clause 15 of the partnership deed between the Defendant and his father read as under :- “15. Notwithstanding anything contained in this Deed the benefit of tenancy and/or other rights of the premises used/occupied by the Firm solely vests in party of the first part. The parties of the second part, the third part and the fourth part shall have no right/interest in goodwill, trade-name and trade-mark(s) of the Firm.” 7. The party of the third part referred to in clause 15 is the Defendant. It is clear, therefore, that the Defendant had no right or interest in the trade mark of the firm. There is no evidence as to how the trade mark was dealt with upon the death of the father. It is the Defendants’ case itself that the partnership firm now stands dissolved. There is no question therefore of the Defendant being entitled to use the said mark or the benefits of the registration thereof as a partner of the said firm. Indeed there were only four partners of the firm, three of whom clause 15 provides 4 had no right or interest in the goodwill, trade name and the trade marks of the firm. 8. In the circumstances,the Defendant’s contention based upon the registration of the impugned mark is rejected. 9. Faced with this, it was submitted that there was no pleading to this effect that the Defendant is not a registered proprietor of the said mark. The submission is not well founded. The defence has been taken by the Defendant on the basis of an alleged registration of the trade mark. It was for him therefore, to establish that he was the registered proprietor of the mark. He has failed to establish the same. In fact the documents produced by the Defendant himself namely the registration certificate and the deed of partnership established the contrary. Further he has failed to establish that the mark ultimately enured to his benefit or vested in him in any manner. 10. Even assuming that the Defendant has established the user of the mark since the year 1964, it would not be a defence under Section 34 of the Trade Mark Act, 1999 as admittedly, the Plaintiff’s registration is prior thereto. As stated above, the Plaintiff’s mark is registered in the year 1943 itself. 11. Thus reliance upon the documents in the sur-rejoinder namely an application dated 16.2.1964 by Dedhia Hing Supplying Company for registration of the mark “Veenadevi Chapp” is of no assistance to the Defendant. Further the Defendant is unable to produce any evidence of what transpired pursuant to the alleged application. It is contended on behalf of the Plaintiff that the record is not available even in the office of 5 the Trade Marks Registry. 12. Nor is the advertisement before the acceptance dated 25.1.1985 by Jaybharat Hing Supplying Company of any assistance. The used claim is since 1980. It is pertinent to note that this application in any event was abandoned. The evidence relied upon for the year 2007 obviously cannot be of any assistance to the defence as the suit itself was filed in the year 2007. 13. It was then submitted that the Plaintiff’s claim is barred under the principles of acquiescence, waiver and abandonment. Mr.Kamdar submitted these principles do not apply to registered marks at the instance of a user whose mark is not registered. He based his submission inter-alia upon Section 33 of the said Act. 14. It is not necessary for me to decide this submission. I will presume that the principles apply. I find however that neither acquiescence nor waiver nor abandonment has been established by the Defendant. There is nothing to indicate that the Plaintiff was aware of the Defendant’s use of the mark. Much less is there anything to indicate that the Plaintiff encourage the use thereof by the Defendant. The reliance by the Defendant upon various bills and a certificate of the Chartered Accountant of the sales figures is of no assistance to the Defendant. The bills themselves do not indicate the sales of such volume as to impute knowledge of the use of the mark by the Defendant. The certificate of the Chartered Accountant merely indicates the sales figures. It does not indicate the same to be of the products sold under the impugned mark. 15. I will assume again that as far as the question of passing off is 6 concerned, the use of additional material is a relevant factor. However, the mere fact that the back ground colour of the label is different and the picture of a different goddess is applied on the label would not eliminate the possibility of confusion 16. Lastly, it was submitted that the products are different and the use of the marks is in conjunction with other words and numerals. The affidavit in sur-rejoinder relied upon by the Defendant and in particular paragraph 6 thereof, does not establish that the products are so different that when sold under a deceptively similar marks the possibility of confusion would not arise. In fact the products are the same under class 30. 17. In the circumstances, the Notice of Motion is made absolute in terms of prayers (a) and (b). The operation of this order is stayed upto and including 31.12.2009.