Written Submissions 4387462

1
BEFORE THE REGISTRAR OF TRADE MARKS,

OFFICE OF THE TRADE MARKS REGISTRY,
INTELLECTUAL PROPERTY BHAVAN, DELHI
INDEX
Written Submissions to the Examination Report Dated 04.08.2020
Re: Applicant : M/s ASHISH BHATIA
Trade Mark: INDIA ACCELERATOR (Word)
Application No : 4387462
Date of Application: 24.12.2019
Class : 35
Country : India
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INDEX
Sr. No. Particulars Page

Nos.
1. Written Submission to the 2 - 14

Examination Report Dated
04.08.2020
15 - 256
2. Case Law Index and Case Laws
Abhishek Chandra Mishra

(Advocate for the Applicant)
Mobile No. 9871161549
Email Id: [email protected]
2
Written Submissions to the Examination Report Dated 04.08.2020
Re: Applicant : M/s ASHISH BHATIA
Trade Mark: INDIA ACCELERATOR (Word)
Application No : 4387462
Date of Application: 24.12.2019
Class : 35
Country : India
-----------------------------------------------------
We write with reference to the subject application qua grant of Indian protection
to the Applicant’s Trademark “INDIA ACCELERATOR” (Word) and in
response to the Examination Report dated 04.08.2020 which has been
downloaded from the Trade Mark Registry website recently.
We most respectfully submit our detailed response to the objection raised in the
Examination Report as under:
GROUNDS OF OBJECTION OF THE EXAMINATION REPORT

UNDER SECTION 9(1) (a) OF TRADEMARKS ACT, 1999 AND UNDER
SECTION 11(1) OF TRADEMARKS ACT, 1999
The learned Registrar/Examiner has raised the objection under section 9(1) (a)
of the Trade Marks Act, 1999 and section 11(1) of the Trade Marks Act, 1999
stating that the mark is geographical name and same/similar trademarks are
already on record of the register for the same or similar goods/services and the
mark is non-distinctive and not capable of distinguishing the services of one
3
person from those of the others and likelihood of deception arises on part of the
public.
SUBMISSIONS IN RESPECT TO THE ABOVE OBSERVATIONS OF

THE LD. REGISTRAR:
A. Applicant’s Trademark does not come within the ambit of objection under
section 9(1)(a) of the Trade Marks Act, 1999 under which the objection has
been raised:
1. The learned Registrar/Examiner has raised the objection Applicant stating the
mark is geographical name and thus, the Applicant submits that the trade mark
“INDIA ACCELERATOR” is uniquely combined together of two words i.e.
“India” and “Accelerator” wherein the applicant does not seek to independently
create a trademark but seeks to create a trademark over the Applicant’s Mark as
a whole.
2. Section 17(2)(b) [1] of the Trade Marks Act, 1999 states that “when a trademark
contains any matter which is common to the trade or is otherwise of a non-
distinctive character, the registration thereof shall not confer any exclusive
right in the matter forming only a part of the whole of the trade mark so
registered”. This section prescribes that a trademark must be viewed as an
indivisible whole. Further, the trademark is the whole thing and the true test is
whether the totality of the proposed trade mark is such that it is likely to cause
mistake or deception or confusion on the minds of persons accustomed to the
existing mark.
The Anti-Dissection Rule

4
3. The above statutory provision embodies the anti-dissection rule. In cases of

trademark infringement which involve marks, the anti-dissection rule requires
the Courts to consider the marks as an indivisible whole rather than truncating or
dissecting them into component parts to determine deceptive similarity between
the marks. This rule is based on the notion that a typical prospective customer
will be impressed by the mark as a whole rather than its individual components.
Such a dissection of a trademark has been discouraged by the Supreme Court
while laying down the guidelines for comparison of trademarks, as enumerated
below, in Cadilla Healthcare Ltd. v. Cadilla Pharmaceuticals Ltd. [2001 (2)
PTC 541 SC]:
a. The trademark must be considered as a whole. It is not right to take a part
of the trademark and compare it with part of the other trademark.
b. No meticulous or letter by letter comparison is required. Side by side
comparison is not the correct test
c. Comparison should be made from the point of view of a person of average
intelligence and of imperfect recollection.
d. The overall structural, visual & phonetic similarity and similarity of the
idea in the two marks and the fact as to whether it is reasonable likelihood
to cause confusion should be taken into account.”
4. The court in Griffiths vs. Vick Chemical AIR 1959 Cal 654 held that “The true
test is what is the totality of the impression that the mark produces. The registrar
has no power to dissect the mark and then conclude that some components are
distinctive and some are not distinctive and, on that ground, direct registration of
a part of the mark and refuse registration of the other parts. He must consider the
combination mark as a whole”.
5
5. In Khetu ram Bishambar Dass vs Bhim Sain Yash Pal [1983 PTC 313], the
disputed trademarks were "Himalaya" and "Himachal", both geographical names
and were registered as trademarks. In the same way in Hi-Tech Pipes Ltd. vs.
Asian Mills Pvt. Ltd. 2006 (32) PTC 192 (Del.), the Hon’ble Delhi High Court
granted protection to trademark ‘Gujarat’ and the Defendant were restrained to
use the mark.
6. In M/s. Hindustan Radiators Co. vs. Hindustan Radiators Limited 1987 PTC
73, the Plaintiff acquired registration of its trademark “Hindustan Radiator” and
with the initials “H.R.” and an injunction was granted. The trademark consists of
the word “Hindustan” which are geographical names and Defendant were
restrained to use the mark.
Distinctiveness of the Applicant’s Trademark:
7. In response to the averment that the mark is non-distinctive. It is submitted that

the mark is distinctive and the same holds support from the law as laid down by
the Hon’ble Supreme Court of India in National Bell Co. v Metal Goods MFG.
Co.[(1970) 3 SCC 665], wherein it was observed that in determining the
distinctiveness, regard must be had whether a mark is inherently distinctive or is
inherently capable of distinguishing and by reason of its use or any other
circumstances, it is in fact adapted to distinguish or is capable to distinguishing
the goods. The Applicant submits that the mark is inherently distinctive being an
arbitrary mark and as such deserves the highest degree of protection.
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8. As observed in Imperial Tobacco v. Registrar of Trade Marks [AIR 1977 Cal

413] and Chivers v. Chivers [17 RPC 420], the test of acquiring distinctiveness
is that the mark when applied to the goods should indicate to the purchasers that
they are the goods of a particular person and of nobody else. The mark has
become fully associated with the goods and services offered by the organization.
It is in fact deeply ingrained in the functioning. The distinctiveness must carry
with it feature that the goods distinguished are the goods manufactured by
particular person or coming from particular trade source and by no others
9. It is submitted that where there is at least one integral part which by itself is
distinctive and which is sufficiently on the mark so as to attract the attention of
the customers and fix itself in their minds, the mark as a whole may be considered
distinctive.
B. Applicant’s Trademark does not come within the ambit of Section 11(1)
under which the objection has been raised:
10. A comparison of the marks cited in the Examination Report dated 04.08.2020
and the Applicant’s Trademark shall evince that the look and feel of the cited
marks are entirely different from those of the Applicant’s trademark and there
are no chances of deception. For ready reference a tabular comparison of the
cited marks and the Applicant’s Trademark are reproduced hereunder:
Applicant’s Mark Marks cited in the Examination

Report dated 04.08.2020
7
INDIA ACCELERATOR
(Word)
(Device)
11. A bare look at the rival marks demonstrates that the marks are not related to each
other as the Applicant’s Mark is “INDIA ACCELERATOR” whereas the mark
cited in the examination report is AcceleratorIndia. Furthermore, it is cogent
from their depiction that the Applicant’s mark and the cited mark is patently
different for the additional reasons viz:
a. The Applicant mark is a Word mark whereas the cited mark is Device
Mark.
b. The color scheme used by the cited mark i.e. red colour is very different
from the Applicant’s marks.
12. The Hon’ble Supreme Court in Parle Products (P) Ltd. Vs J.P. & Co., Mysore,
AIR 1972 SC 1359 has laid down the test to determine the question when a trade
mark is deceptively similar to another. Their Lordships observed at page 1362:
“It is therefore clear that in order to come to the conclusion whether one mark is
deceptively similar to another, the broad and essential features of the two are to
be considered. They should not be placed side by side to find out if there are any
differences in the design and if so, whether they are of such a character as to
prevent one design from being mistaken for the other. It would be enough if the
impugned marks bear such an overall similarity to the registered trade mark as
would be likely to mislead a person”.
8
13. As cited in P.Narayanan, Law of Trademarks and Passing Off, Sixth

Edition, page number – 396 deals with American jurisprudence and also
determine likelihood of confusion by focusing on the question whether the
purchasing public would mistakenly assume that the applicant's goods originate
from the same source as, or are associated with, the goods in the cited
registrations. They make that determination on a case-by-case basis, In re E.I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973),
those factors are:
a. The degree of resemblance between the conflicting designations.
b. The similarity of the marketing methods and channels of distribution.
c. The characteristics of the prospective purchasers and the degree of
care they exercise.
d. The degree of distinctiveness of the senior user’s mark.
e. Where the goods or service are not competitive the likelihood that
prospective buyers would expect the senior user to expand into the
field of the junior user.
f. Where goods or services are sold in different territories the extent to
which to the senior user’s designation is known in the junior user’s
designation is known in the junior user’s territory.
g. The intent of the junior user.
h. Evidence of actual confusion.
14. The Hon’ble Supreme Court of India has again in Corn Products Refining Co.
v. Shangrilla Food Products Ltd. (Corn Products Refining Co. v. Shangrilla
Food Products Ltd.), held that for the purpose of the comparison, the marks
should be compared as a whole and not in parts. Also, in Medley
Pharmaceuticals Ltd. vs Khandelwal Laboratories Ltd. 2005 (31) PTC 515
9
(Bom), it was held that "CEFI" and "CEFO" are not similar when taken as a
whole.
15. Furthermore, it is a well laid down judicial principle that the marks have to be
viewed as a whole and microscopic examination of the marks cannot be done.
The marks have to appear similar to an average consumer of average intelligence
when viewed as a whole. The concerned subject trademark cannot be considered
as similar to the other cited trademark as it doesn’t satisfy the well-established
test of “overall similarity” propounded by the Indian Courts in many cases such
as Bihar Tubes Ltd v. GargIspat Ltd. 166 (2010) DLT 109 in the following
words “the broad essential features are to be construed-when one compares the
infringing mark with the registered mark. In doing so, the stress ought to be on
the "overall similarity" and not on the differences in the marks”.
C. Despite being in the same class the Genre of Goods are entirely different of
Trademark Application no. 1851911:
16. It is relevant to mention that though the mark cited in the examination report and
the Applicant’s mark bear the same class i.e., Class 35 of the trademark which
pertains to Business Services and Consulting.
17. However, it is pertinent to mention that the Applicant’s mark and the mark cited
vide Trademark Application no. 1851911 in the examination report are different
in respect of nature of the goods they are operating and the type of customer they
deal with.
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18. A table elucidating the goods in which the Applicant’s mark and the mark cited
vide Trademark Application no. 1254671 in the examination report operates are
produced herein under:-
Applicant’s Goods/Services Goods/Services for the cited

Mark vide Trademark
Application no. 1851911
Help start-up companies and India-Europe Corridor of

other businesses by bringing in investment
the right knowledge,
technologies and capabilities
across several key areas, such
as a strategy execution,
domain expertise, hyper-
growth, other personnel
services, design, data science,
human resources and putting
in place operating systems for
effective governance.
19. That the table above demonstrates that the goods pertaining to the Applicant’s
mark and the mark cited vide Trademark Application no. 1851911 in the
examination report are entirely different. Hence, the said mark cannot be said as
similar.
11
20. The judgment of the Supreme Court in Nandhini Deluxe v. Karnataka Co-
Operative Milk Producers Federation Ltd., AIR 2018 SC 3516, the law is
quite clear. As per the Hon’ble Court, registration of a mark that is deceptively
similar to a prior registered mark in the same class is permissible, provided that
the following conditions are met: (a) there is no overlap in the goods and the
manner in which the goods are traded is different; and (b) if both the marks are
in use, the adoption of the subsequent mark is honest and concurrent.
21. In the case of Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd., AIR 1996
SC 2275 in which it held that the owner of the prior registered mark
CHARMINAR cannot be allowed to enjoy monopoly over the entire class of
goods, as it dealt only in specific goods belonging to that class, namely,
cigarettes.
D. Honest and Concurrent Use of the Applicant’s Mark:
22. It is most respectfully submitted that the Applicant is an honest and

uninterrupted user of the trademark since the date of its creation. An Affidavit
in support thereof has already been filed along with the Application.
Statutory Protection u/s 12 of the Act:
23. As per section 12 of the Act, in cases of honest and concurrent use of the mark,
the Registrar is vested with the power to grant registration to the mark.
24. The Division Bench of the Hon’ble Delhi High Court in Goenka Institute of
Education and Research v. Anjani Kumar Goenka and Anr (FAO (OS)
12
118/2009), has held that where honest and concurrent use was established the
parties must be allowed to continue using their trademarks.
25. The law pertaining to honest concurrent use was laid down in Kores (India) Ltd
v M/s KhodayEshwarsa and Son, wherein the Hon’ble Supreme Court clearly
held that the following facts are required to be taken notice of while determining
the registrability of a trademark under the said provision:
(a). The honesty of the concurrent use,
(b). The quantum of concurrent use of trademark shown by the petitioners
having regard to the duration, area, and volume of trade and to the goods
concerned,
(c). The chances of confusion resulting from the similarity of the applicant's
and Cited trademarks, as a measure of the public interest or public
inconvenience
(d). Whether any instances of confusion have been proved, and
(e). The relative inconvenience that may be caused to the parties concerned.
26. That so far there are no instances of confusion resulting from the deception of
the Applicant's trademarks, as a measure of the public interest or public
inconvenience nor any documents has been produced to prove the bonafide
usage of the trademark. On the other hand, the Applicant has sufficiently
demonstrated its honest and concurrent usage of the trademark and as held by
the Hon’ble Delhi High Court in Goenka Institute of Education and Research
v. Anjani Kumar Goenka and Anr (2009, Del), where honest and concurrent
use was established, the parties must be allowed to continue using their
trademarks.
13
E. Goodwill of the Applicant’s Trademark:
27. The earnest and indefatigable efforts of the Applicant coupled with resources
and money are recognized worldwide in the form of extensive sale and
widespread publicity of Applicant’s business, resulting into its significant
national and trans-border market reputation and good-will.
28. Therefore, by virtue of extensive goodwill and reputation, Applicant’s brand and
its trademark(s) are entitled to protection across various classes of goods and
services, as having acquired distinctiveness over a period of time due to its open,
continuous and extensive operations, name of Applicant or its trademark(s) or
any of its formatives has become an expression associated exclusively with the
Applicant alone and has become a well-known mark associated exclusively with
the Applicant.
29. It is a settled law that monopoly cannot be claimed over generic or commonly
used words, as held by the Hon’ble Madras High Court in the case of ITC Vs
Nestle India Limited. Further, in the case of F. Hoffmann-La Roche & Co. Ltd.
Vs. Geoffrey Manner & Co. (P) Ltd. (1969) 2 SCC 716 the Hon’ble Supreme
Court of India has rightly observed that: “It is also important that the marks must
be compared as wholes. It is not right to take a portion of the word and say that
because that portion of the word differs from the corresponding portion of the
word in the other case there is no sufficient, similarity to cause confusion. The
true test is whether the totality of the proposed trade mark is such that it is likely
to cause deception or confusion or mistake in the minds of persons accustomed
to the existing trade mark”.
14
F. Section 17 of the Trademarks Act, 1999
30. As per section 17 of the Act, when a trade mark consists of several matters, its
registration shall confer on the proprietor exclusive right to the use of the trade
mark taken as a whole and not separately. Therefore, in the present case, the
Applicant’s Trademark shall be considered as a whole for comparison and not
in bits and pieces.
Conclusion:
Therefore, it is clear that the mark of the Applicant is inherently distinctive and
is associated solely with the Applicant. It is further submitted that the subject
mark apart from being a novice creation of the proprietor also consists of
indications which is coined directly from their mission i.e. to provide a boost or
“Acceleration” to the Indian economy through India’s most vital resources i.e.
technology and start-ups. The business is intimately associated with the mark.
We most humbly pray to set aside the current objection and allow the subject
Trademark to proceed to advertisement in the forthcoming issue of the Trade
Marks Journal.
Abhishek Chandra Mishra

Advocate for the Applicant
15
CASE LAWS INDEX
Sr. No. Case name Court Citation Held Releva Curren

nt para t Page
No.
1. Cadila SC Appeal (civil) Supreme Court of India 55, 61 20 - 34
Healthcare discouraged dissection of a
Limited vs Cadila 2372 of 2001 trademark while laying
Pharmaceuticals Special Leave down the guidelines for
Limited Petition comparison of trademarks,
as enumerated below:
(civil)
15994 of a. The trademark
1998 must be considered as a
whole. It is not right to take
a part of the trademark and
compare it with part of the
other trademark.
b. No meticulous or
letter by letter comparison
is required. Side by side
comparison is not the
correct test
c. Comparison should
be made from the point of
view of a person of average
intelligence and of
imperfect recollection.
d. The overall
structural, visual &
phonetic similarity and
similarity of the idea in the
two marks and the fact as to
whether it is reasonable
likelihood to cause
confusion should be taken
into account.
2. E. Griffiths Cal HC AIR 1959 It was held that the true test 43 35 - 44
Hughes Ltd. vs Cal 654 is what is the totality of the
Vick Chemical impression that the mark
Co. produces. The registrar has
no power to dissect the
mark and then conclude
that some components are
16
distinctive and some are

not distinctive and, on that
ground, direct registration
of a part of the mark and
refuse registration of the
other parts. He must
consider the combination
mark as a whole
3. Khetu ram Del HC 1983 PTC In the present matter the 8, 9 45 - 47
Bishambar Dass 313 disputed trademarks were
vs Bhim Sain "Himalaya" and
Yash Pal "Himachal", both
geographical names and
were registered as
trademarks.
4. Hi-Tech Pipes Del HC 2006 (32) The court granted
38 - 39 48 - 59
Ltd. vs. Asian PTC 192 protection to trademark
Mills Pvt. Ltd. (Del.) ‘Gujarat’ and the
2006 Defendant were restrained
to use the mark
5. M/s. Hindustan Del HC Limited 1987 In this matter the Plaintiff
12 60 - 66
Radiators Co. vs. acquired registration of its
Hindustan PTC 73 trademark “Hindustan
Radiators Limited Radiator” and with the
initials “H.R.” and an
injunction was granted.
The trademark consists of
the word “Hindustan”
which are geographical
names and Defendant were
restrained to use the mark.
6. National Bell Co. SC (1970) 3 SCC It was observed that in 74-77 67 - 81
v Metal Goods determining the
MFG Co. 665 distinctiveness, regard
must be had whether a
mark is inherently
distinctive or is inherently
capable of distinguishing
and by reason of its use or
any other circumstances, it
is in fact adapted to
distinguish or is capable to
distinguishing the goods
7. Imperial Tobacco Cal HC AIR 1977 Cal The test of acquiring 14,15,42, 82 - 100
v. Registrar of 413 distinctiveness is that the 49,50,51
Trade Marks mark when applied to the
17
goods should indicate to

the purchasers that they are
the goods of a particular
person and of nobody else.
The mark has become fully
associated with the goods
and Para no. 14,15,42,
49,50,51 104 - 122 services
offered by the
organization. It is in fact
deeply ingrained in the
functioning
8. Parle Products SC AIR 1972 SC The Hon’ble Supreme 17 - 19 101 - 106
(P) Ltd. Vs J.P. & 1359 Court has laid down the
Co., Mysore test to determine the
question when a trade
mark is deceptively similar
to another.
9. Corn Products SC AIR 1960 SC It was held that for the 13,18,21, 107 - 113
Refining Co. v. 142. purpose of the comparison, 23
Shangrilla Food the marks should be
Products Ltd. compared as a whole and
not in parts.
10. Medley Bom HC 2005 (31) It was held that "CEFI" and 6, 7 114 - 118
Pharmaceuticals PTC 515 "CEFO" are not similar
Ltd. vs (Bom) when taken as a whole
Khandelwal
Laboratories Ltd.
11. Bihar Tubes Del HC 166 (2010) The broad essential 7, 8 10 119 - 130
Limited vs Garg DLT 109 features are to be
Ispat Limited construed-when one
compares the infringing
mark with the registered
mark. In doing so, the
stress ought to be on the
“overall similarity” and not
on the differences in the
marks
12. Nandhini Deluxe SC AIR 2018 SC As per the Hon’ble Court, 18, 19, 20 131 - 153
v. Karnataka Co- 3516 registration of a mark that
Operative Milk is deceptively similar to a
Producers prior registered mark in the
Federation Ltd. same class is permissible,
provided that the following
conditions are met: (a)
there is no overlap in the
18
goods and the manner in

which the goods are traded
is different; and (b) if both
the marks are in use, the
adoption of the subsequent
mark is honest and
concurrent
13. Vishnudas SC AIR 1996 SC It held that the owner of the 154 - 172
Trading v. Vazir 2275 prior registered mark
Sultan Tobacco CHARMINAR cannot be
Co. Ltd. allowed to enjoy monopoly
over the entire class of
goods, as it dealt only in
specific goods belonging to
that class, namely,
cigarettes
14. Goenka Institute Del HC (FAO (OS) It was held that where 7,9,11, 173 - 194
of Education and 118/2009) honest and concurrent use 13, 20,
Research v. was established the parties 22
Anjani Kumar must be allowed to
Goenka and Anr continue using their
trademarks,
15. Kores (India) Ltd Bom HC 1985 (1) Hon’ble Supreme Court 10,11,12 195 - 209
v M/s Bom CR 423 clearly held that the
KhodayEshwarsa following facts are required
and Son
to be taken notice of while
determining the
registrability of a
trademark under the said
provision:
(a). The honesty of the

concurrent use,
(b). The quantum of
concurrent use of
trademark shown by the
petitioners having regard to
the duration, area, and
volume of trade and to the
goods concerned,
(c). The chances of
confusion resulting from
the similarity of the
19
applicant's and Cited

trademarks, as a measure of
the public interest or public
inconvenience
(d). Whether any
instances of confusion have
been proved, and
(e). The relative
inconvenience that may be
caused to the parties
concerned
16. ITC Vs Nestle Mad HC C.S.No.231 It was held that monopoly 96, 210 - 256
India Limited of 2013 cannot be claimed over 102,221,
generic or commonly used 231
words
20
Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited on 26 March, 2001
Supreme Court of India

Author: Kirpal
Bench: B.N.Kripal, Doraswamy Raju, British Kumar
CASE NO.:
Appeal (civil) 2372 of 2001
Special Leave Petition (civil) 15994 of 1998
PETITIONER:
CADILA HEALTHCARE LIMITED
Vs.
RESPONDENT:
CADILA PHARMACEUTICALS LIMITED
DATE OF JUDGMENT: 26/03/2001
BENCH:
B.N.Kripal, Doraswamy Raju, British Kumar
JUDGMENT:
KIRPAL,J.
L.....I.........T.......T.......T.......T.......T.......T.......J Leave granted. Appellant and respondent are

pharmaceutical companies manufacturing various pharmaceutical products. The two companies
had taken over the assets and business of the erstwhile Cadila Group after its restructuring under
Sections 391 & 394 of the Companies Act. One of the conditions in the scheme of restructuring of the
Cadila Group was that both the appellant and the respondent got the right to use the name CADILA
as a corporate name.
The present proceedings arise from the suit for injunction which had been filed by the appellant
against the respondent in the District Court at Vadodara. The suit related to a medicine being sold
under the brand name Falcitab by the respondent which, according to the appellant, was a brand
name similar to the drug being sold by it under its brand name Falcigo The case of the appellant was
that its drug Falcigo contains Artesunate for the treatment of cerebral malaria commonly known as
Falcipharum. After the introduction of this drug, the appellant on 20th August, 1996 applied to the
Trade Marks Registry, Ahmedabad for registration in Part-A, Class-5 of the Trade and Merchandise
Marks Act. On 7th October, 1996 the Drugs Controller General (India) granted permission to the
appellant to market the said drug under the trade mark of Falcigo. It is, thereafter, that since
October, 1996 the appellant claimed to have started the manufacture and sale of drug Falcigo all
over India.
Indian Kanoon - http://indiankanoon.org/doc/1114158/ 1

21
The respondent company is stated to have got permission on 10th April, 1997 from the Drugs
Controller General (India) to manufacture a drug containing Mefloquine Hydrochloride. The
respondent was also given permission to import the said drug from abroad. According to the
appellant, it came to know in April, 1998 that the said drug, which was also used for the treatment of
Falcipharum Malaria, was being sold by the respondent under the trade mark of Falcitab. The
appellant then filed a suit in the District Court at Vadodara seeking injunction against the
respondent from using the trade mark Falcitab as it was claimed that the same would be passed off
as appellants drug Falcigo for the treatment of the same disease in view of confusing similarity and
deception in the names and more so because the drugs were medicines of last resort.
The respondent company stated in the defence that the word Falci, which is the prefix of the mark, is
taken from the name of the disease Falcipharum Malaria and it is a common practice in
pharmaceutical trade to use part of the word of the disease as a trade mark to indicate to the doctors
and chemists that a particular product/drug is meant for a particular disease. It was also the case of
the respondent that admittedly the two products in question were Schedule L drugs which can be
sold only to the hospitals and clinics with the result that there could not even be a remote chance of
confusion and deception. It may here be noticed that Schedule H drugs are those which can be sold
by the chemist only on the prescription of the Doctor but Schedule L drugs are not sold across the
counter but are sold only to the hospitals and clinics.
The Extra Assistant Judge, Vadodara by his order dated 30th May, 1998 dismissed the interim
injunction application. He came to the conclusion that the two drugs Falcigo and Falcitab differed in
appearance, formulation and price and could be sold only to hospitals and institutions and there
was, thus, no case had been made out for grant of injunction and there was no chance of deception
or/of confusion specially as the drug was not meant to be sold to any individual.
The appeal filed by the appellant before the High Court met with no success. After discussing
various cases which were cited before it and after verifying the cartoons and packings of the
respective products, the High Court came to the conclusion that it could not be said that there was a
likelihood of confusion being caused to an unwary consumer in respect of the disputed marks. It
observed that there was little chance of any passing off one product for the other product.
When the special leave came up for hearing, detailed arguments were heard and, for the reasons to
be given, this Court did not interfere with the orders passed by the courts below but gave directions
regarding expeditious disposal of the suit. In this judgment, we give the reason for not interfering
and also set out the principles which are to be kept in mind while dealing with an action for
infringement or passing off specially in the cases relating to medicinal products. The reason for not
interfering with the order appealed against was that there may be possibility of evidence being
required on merits of the case and directions were given for speedy trial of the suit. Expression of
opinion on merits by this Court at this stage was not thought advisable. We now proceed to examine
the principles on which these cases have been and are required to be decided.
Under Section 28 of the Trade and Merchandise Marks Act on the registration of a trade mark in
Part-A or B of the register, a registered proprietor gets an exclusive right to use the trade mark in

22
relation to the goods in respect of which trade mark is registered and to obtain relief in respect of
infringement of the trade mark in the manner provided by the Act. In the case of un-registered trade
mark, Section 27(1) provides that no person shall be entitled to institute any proceeding to prevent,
or to recover damages for, the infringement of an unregistered trade mark. Sub-section (2) of
Section 27 provides that the Act shall not be deemed to affect rights of action against any person for
passing off goods as the goods of another person or the remedies in respect thereof. In other words
in the case of un-registered trade marks, a passing off action is maintainable. The passing off action
depends upon the principle that nobody has a right to represent his goods as the goods of some
body. In other words a man is not to sell his goods or services under the pretence that they are those
of another person . As per Lord Diplock in Erwen Warnink BV Vs. J Townend & Sons, 1979(2) AER
927, the modern tort of passing off has five elements i.e. (1) a misrepresentation (2) made by a
trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or
services supplied by him, (4) which is calculated to injure the business or goodwill of another trader
(in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage
to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will
probably do so.
There being an action alleging passing off in the present case, it will be appropriate to consider a few
decisions, specially of this Court, which are relevant on the point in issue.
In National Sewing Thread Co. Ltd., Chidambaram Vs. James Chadwick and Bros Ltd. AIR 1953 SC
357, this Court was dealing with a case where an application for registration of a trade mark had
been declined by the Registrar who accepted the objections filed by the respondent to the
application for registration. While interpreting Section 8 of the Trade Marks Act which provides that
no trade mark nor part of a trade mark shall be registered which consists of, or contains, any
scandalous design, or any matter the use of which would by reason of its being likely to deceive or to
cause confusion or otherwise, be disentitled to protection in a Court of Justice , this Court observed
at page 363 as under:
Under this Section an application made to register a trade mark which is likely to deceive or to cause
confusion has to be refused notwithstanding the fact that the mark might have no identity or close
resemblance with any other trade mark.. What the Registrar has to see is whether looking at the
circumstances of the case a particular trade mark is likely to deceive or to cause confusion.
This Court elaborated this principle further at page 363 as under:
The principles of law applicable to such cases are well-settled. The burden of proving that the trade
mark which a person seeks to register is not likely to deceive or to cause confusion is upon the
applicant. It is for him to satisfy the Registrar that his trade mark does not fall within the
prohibition of Section 8 and therefore, it should be registered. Moreover in deciding whether a
particular trade mark is likely to deceive or cause confusion that duty is not discharged by arriving at
the result by merely comparing it with the trade mark which is already registered and whose
proprietor is offering opposition to the registration of the mark. The real question to decide in such
cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary

23
intelligence, would react to a particular trade mark, what association he would form by looking at
the trade mark, and in what respect he would connect the trade mark with the goods which he would
be purchasing.
In Corn Products Refining Company Vs. Shangrila Food Products Limited, 1960(1) SCR 968, this
Court was again concerned with an appeal arising out of the decision of the Registrar pertaining to
registration of a trade mark. M/s. Shangrila Food Products had applied for registration of the mark
Gluvita and M/s. Corn Products, who were the owners of registered trade mark Glucovita filed its
objections to the registration of the respondents mark. The Deputy Registrar came to the conclusion
that the two words Glucovita and Gluvita were not visually or phonetically similar and that there
was no reasonable likelihood of any deception being caused by or any confusion arising from the use
of respondents proposed mark. Against the decision of the Deputy Registrar, the appellant filed an
appeal before the High Court. A Single Judge of the Bombay High Court came to the conclusion,
dis-agreeing with the findings of the Deputy Registrar, that the two marks were sufficiently similar
so as to be reasonably/likely to cause deception/confusion. The Division Bench, on an appeal,
however, set-aside the decision of the Single Judge and restored the decision of the Deputy
Registrar. While allowing the appeal, it was observed at page 977 as follows:
We, therefore, think that the learned appellate Judges were in error in deciding in favour of the
respondent basing themselves on the series marks, having Gluco or Vita as a prefix or a suffix.
Dealing with the question as to whether there was likelihood of confusion between the two marks,
which was the view taken by Desai, J. of the Bombay High Court in that case which was over-ruled
by the Division Bench, this Court observed at page 978 as follows:
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. (emphasis added) In Amritdhara Pharmacy Vs. Satya Deo, AIR 1963 SC 449
the respondent had applied for the registration of the trade name Lakshmandhara in respect of a
medicinal preparation for the alleviation of various ailments. This was opposed by the appellant
whose trade name Amritdhara had already been registered in respect of similar medicinal
preparation. The question, which arose, was whether the name Lakshmandhara was likely to deceive
the public or cause confusion to the trade. While interpreting Sections 8 & 10 of the Trade Marks
Act, this Court observed at pages 452-454 as follows:

24
It will be noticed that the words used in the sections and relevant for our purpose are likely to
deceive or cause confusion. The Act does not lay down any criteria for determining what is likely to
deceive or cause confusion. Therefore, every case must depend on its own particular facts, and the
value of authorities lies not so much in the actual decision as in the tests applied for determining
what is likely to deceive or cause confusion. On an application to register, the Registrar or an
opponent may object that the trade mark is not registrable by reason of clause (a) of Section 8, or
sub-section (1) of Section 10, as in this case. In such a case the onus is on the applicant to satisfy the
Registrar that the trade mark applied for is not likely to deceive or cause confusion. In cases in
which the tribunal considers that there is doubt as to whether deception is likely, the application
should be refused. A trade mark is likely to deceive or cause confusion by its resemblance to another
already on the Register if it is likely to do so in the course of its legitimate use in a market where the
two marks are assumed to be in use by traders in that market. In considering the matter, all the
circumstances of the case must be considered. As was observed by Parker,J. in Re Pianotist Co.s
Application (1906) 23 RPC 774 which was also a case of the comparison of two words You must take
the two words. You must judge them, both by their look and by their sound. You must consider the
goods to which they are to be applied. You must consider the nature and kind of customer who
would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and
you must further consider what is likely to happen if each of those trade marks is used in a normal
way as a trade mark for the goods of the respective owners of the marks. (p.777) For deceptive
resemblance two important questions are: (1) who are the persons whom the resemblance must be
likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether
such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of
mind of a customer who, on seeing a mark thinks that it differs from the mark on goods which he
has previously bought, but is doubtful whether that impression is not due to imperfect recollection.
(see Kerly on Trade Marks, 8th Edition, p. 400) Let us apply these tests to the facts of the case under
our consideration. It is not disputed before us that the two names Amritdhara and Lakshmandhara
are in use in respect of the same description of goods, namely, a medicinal preparation for the
alleviation of various ailments. Such medicinal preparation will be purchased mostly by people who
instead of going to a doctor wish to purchase a medicine for the quick alleviation of their suffering,
both villagers & townsfolk, literate as well as illiterate. As we said in Corn Products Refining Co. Vs.
Shangrila Food Products Ltd., (1960) 1 SCR 968: (AIR 1960 SC
142) the question has to be approached from the point of view of a man of average intelligence and
imperfect recollection. To such a man the overall structural and phonetic similarity of the two names
Amritdhara and Lakshmandhara is, in our opinion, likely to deceive or cause confusion. We must
consider the overall similarity of the two composite words Amritdhara and Lakshmandhara. WE do
not think that the learned Judges of the High Court were right in saying that no Indian would
mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection
would not, as the High Court supposed, split the name into its component parts and consider the
etymological meaning thereof or even consider the meaning of the composite words as current of
nectar or current of Lakshman. He would go more by the overall structural and phonetic similarity
and the nature of the medicine he has previously purchased, or has been told about, or about which
has otherwise learnt and which he wants to purchase. Where the trade relates to goods largely sold
to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi

25
language would go by the etymological or ideological meaning and see the difference between
current of nectar and current of Lakshman. Current of Lakshman in a literal sense has no meaning;
to give it meaning one must further make the inference that the current or stream is as pure and
strong as Lakshman of the Ramayana. An ordinary Indian villager or townsman will perhaps know
Lakshman, the story of the Ramayana being familiar to him; but we doubt if he would etymologise
to the extent of seeing the so-called ideological difference between Amritdhara and Lakshmandhara.
He would go more by the similarity of the two names in the context of the widely known medicinal
preparation which he wants for his ailments.
We agree that the use of the word dhara which literally means current or stream is not by itself
decisive of the matter. What we have to consider here is the overall similarity of the composite
words, having regard to the circumstance that the goods bearing the two names are medicinal
preparations of the same description. We are aware that the admission of a mark is not to be
refused, because unusually stupid people, fools or idiots, may be deceived. A critical comparison of
the two names may disclose some points of difference but an unwary purchaser of average
intelligence and imperfect recollection would be deceived by the overall similarity of the two names
having regard to the nature of the medicine he is looking for with a somewhat vague recollection
that he had purchased a similar medicine on a previous occasion with a similar name. The trade
mark is the whole thing - the whole word has to be considered. In the case of the application to
register Erectiks (opposed by the proprietors of the trade mark Erector) Farwell, J. said in William
Bailey (Birmingham) Ltd.s Application, (1935) R.P.C. 136:
I do not think it is right to take a part of the word and compare it with a part of the other word; one
word must be considered as a whole and compared with the other word as a whole..I think it is a
dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a
portion of the other word.
Another case relating to medicinal product is that of Durga Dutt Sharma Vs. N.P. Laboratories, AIR
1965 SC 980. In that case the respondent, who manufactured medicinal products, had got the word
Navaratna registered as a trade mark. The appellant, who was carrying on the business in the
preparation of Ayurvedic pharmaceutical products under the name of Navaratna Kalpa applied for
registration of the words Navaratna Kalpa as a trade mark for his medicinal preparations. The
objection of the respondent to the proposed registration prevailed. This led to proceedings which
culminated in the appeals to this Court. The observations by this Court on two aspects are very
pertinent. Firstly with regard to the difference between an action for passing off and action for
infringement of trade mark, it observed at page 990 as follows:
While an action for passing off is a common law remedy being in substance an action for deceit, that
is, a passing off by a person of his own goods as those of another, that is not the gist of an action for
infringement. The action for infringement is a statutory remedy conferred on the registered
proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade
mark in relation to those goods (Vide S. 21 of the Act). The use by the defendant of the trade mark of
the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an
action for infringement. No doubt, where the evidence in respect of passing off consists merely of

26
the colourable use of a registered trade mark, the essential features of both the actions might
coincide in the sense that what would be a colourable imitation of a trade mark in a passing off
action would also be such in an action for infringement of the same trade mark. But there the
correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt,
make out that the use of the defendants mark is likely to deceive, but where the similarity between
the plaintiffs and the defendants mark is so close either visually, phonetically or otherwise and the
court reaches the conclusion that there is an imitation, no further evidence is required to establish
that the plaintiffs rights are violated. Expressed in another way, 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; 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.
Secondly, while dealing with the question of burden of proof in an action for infringement of trade
mark, this Court in Durga Dutt Sharmas case (supra) held as under:
When once the use by the defendant of the mark which is claimed to infringe the plaintiffs mark is
shown to be in the course of trade, the question whether there has been an infringement is to be
decided by comparison of the two marks. Where the two marks are identical no further questions
arise; for then the infringement is made out. When the two marks are not identical, the plaintiff
would have to establish that the mark used by the defendant so nearly resembles the plaintiffs
registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of
which it is registered (Vide S. 21). A point has sometimes been raised as to whether the words or
cause confusion introduce any element which is not already covered by the words likely to deceive
and it has some times been answered by saying that it is merely an extension of the earlier test and
does not add very materially to the concept indicated by the earlier words likely to deceive. But this
apart, as the question arises in an action for infringement the onus would be on the plaintiff to
establish that the trade mark used by the defendant in the course of trade in the goods in respect of
which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a
comparison of the two marks the degree of resemblance which is necessary to exist to cause
deception not being capable of definition by laying down objective standards. The persons who
would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being
deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the
basic idea represented by the plaintiffs mark. The purpose of the comparison is for determining
whether the essential features of the plaintiffs trade mark are to be found in that used by the
defendant. The identification of the essential features of the mark is in essence a question of fact and
depends on the judgment of the Court based on the evidence led before it as regards the usage of the
trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is
whether the mark used by the defendant as a whole is deceptively similar to that of the registered
mark of the plaintiff.
Dealing once again with medicinal products, this Court in F. Hoffmann-La Roche & Co. Ltd. Vs.
Geoffrey Manner & Co. Pvt. Ltd., 1969(2) SCC 716 had to consider whether the words Protovit

27
belonging to the appellant was similar to the word Dropovit of the respondent. This Court, while
deciding the test to be applied, observed at page 720 as follows:
The test for comparison of the two word marks were formulated by Lord Parker in Pianotist Co.
Ltd.s application as follows:
You must take the two words. You must judge of them, both by their look and by their sound. You
must consider the goods to which they are to be applied. You must consider the nature and kind of
customer who would be likely to buy those goods. In fact, you must consider all the surrounding
circumstances; and you must further consider what is likely to happen if each of those trade marks
is used in a normal way as a trade mark for the goods of the respective owners of the marks. If,
considering all those circumstances, you come to the conclusion that there will be a confusion, that
is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that
there will be a confusion in the mind of the public which will lead to confusion in the goods-then you
may refuse the registration, or rather you must refuse the registration in that case.
It is necessary to apply both the visual and phonetic tests. In Aristoc Ltd. v. Rysta Ltd. the House of
Lords was considering the resemblance between the two words "Aristoc and Rysta. The view taken
was that considering the way the words were pronounced in English, the one was likely to be
mistaken for the other. Viscount Maugham cited the following passage of Lord Justice Lukmoore in
the Court of Appeal, which passage, he said, he completely accepted as the correct exposition of the
law:
The answer to the question whether the sound of one word resembles too nearly the sound of
another so as to bring the former within the limits of Section 12 of the Trade Marks Act, 1938, must
nearly always depend on first impression, for obviously a person who is familiar with both words
will neither be deceived nor confused. It is the person who only knows the one word and has
perhaps an imperfect recollection of it who is likely to be deceived or confused. Little assistance,
therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and
syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The
Court must be careful to make allowance for imperfect recollection and the effect of careless
pronunciation and speech on the part not only of the person seeking to buy under the trade
description, but also of the shop assistant ministering to that persons wants.
It is important that the marks must be compared as wholes. It is not right to take a portion of the
word and say that because that portion of the word differs from the corresponding portion of the
word in the other case there is no sufficient similarity to cause confusion. The true test is whether
the totality of the proposed trade mark is such that it is likely to cause deception or confusion or
mistake in the minds of persons accustomed to the existing trade mark. Thus in Lavroma case Lord
Johnston said:
we are not bound to scan the words as we would in a question of comparatio literarum. It is not a
matter for microscopic inspection, but to be taken from the general and even casual point of view of
a customer walking into a shop."

28
On the facts of that case this Court came to the conclusion that taking into account all circumstances
the words Protovit and Dropovit were so dissimilar that there was no reasonable probability of
confusion between the words either from visual or phonetic point of view.
Our attention was drawn to a recent judgment of this Court in S.M. Dyechem Ltd. Vs. Cadbury
(India) Ltd. (2000) 5 SCC 573 where in a passing off action, the plaintiff, which was carrying on the
business under the mark of Piknik, filed a suit for injunction against the defendant which was using
the mark of Picnic for some other chocolates sold by it. On the allegation that the defendants mark
was deceptively similar, the trial court had issued an injunction which was reversed by the High
Court. On appeal, the decision of the High Court was affirmed. One of the questions, which this
Court considered, was that for grant of temporary injunction, should the Court go by the principle of
prima facie case, apart from balance of convenience, or comparative strength of the case of either
parties or by finding out if the plaintiff has raised a triable issue. While considering various
decisions on the point in issue, this Court rightly concluded at page 591 as follows:
Therefore, in trade mark matters, it is now necessary to go into the question of comparable strength
of the cases of either party, apart from balance of convenience.
On merits of the case, this Court took note of some English decisions and observed in Dyechems
case (supra) at page 594 that where common marks are included in the rival trade marks, more
regard is to be paid to the parts not common and the proper course is to look at the marks as a
whole, but at the same time not to disregard the parts which are common. This Court sought to
apply the principle that dissimilarity in essential features in devices and composite marks are more
important than some similarity. This Court, after considering various decisions referred to
hereinabove, observed in Dyechems case (supra) at page 596 as follows:
Broadly, under our law as seen above, it can be said that stress is laid down on common features
rather than on differences in essential features, except for a passing reference to a limited extent in
one case.
Notwithstanding the aforesaid observations this Court in Dyechems case (supra) proceeded to
observe as follows:
It appears to us that this Court did not have occasion to decide, as far as we are able to see, an issue
where there were also differences in essential features nor to consider the extent to which the
differences are to be given importance over similarities. Such a question has arisen in the present
case and that is why we have referred to the principles of English Law relating to differences in
essential features which principles, in our opinion, are equally applicable in our country.
We are unable to agree with the aforesaid observations in Dyechems case (supra). As far as this
Court is concerned, the decisions in the last four decades have clearly laid down that what has to be
seen in the case of a passing off action is the similarity between the competing marks and to
determine whether there is likelihood of deception or causing confusion. This is evident from the
decisions of this Court in the cases of National Sewing Thread Co. Ltd.s case (supra), Corn Products

29
Refining Companys case (supra), Amritdhara Pharmacys case (supra), Durga Dutt Sharmas case
(supra), Hoffmann-La Roche & Co. Ltd.s case (supra). Having come to the conclusion, in our
opinion incorrectly, that the difference in essential features is relevant, this Court in Dyechems case
(supra) sought to examine the difference in the two marks Piknic and Picnic. It applied three tests,
they being 1) is there any special aspect of the common feature which has been copied ? 2) mode in
which the parts are put together differently i.e. whether dissimilarity of the part or parts is enough
to make the whole thing dissimilar and 3) whether when there are common elements, should one
not pay more regard to the parts which are not common, while at the same time not disregarding the
common parts ?. In examining the marks, keeping the aforesaid three tests in mind, it came to the
conclusion, seeing the manner in which the two words were written and the peculiarity of the script
and concluded that the above three dissimilarities have to be given more importance than the
phonetic similarity or the similarity in the use of the word PICNIC for PIKNIK.
With respect, we are unable to agree that the principle of phonetic similarity has to be jettisoned
when the manner in which the competing words are written is different and the conclusion so
arrived at is clearly contrary to the binding precedent of this Court in Amritdharas case (supra)
where the phonetic similarity was applied by judging the two competing marks. Similarly, in Durga
Dutt Sharmas case (supra), it was observed that in an action for infringement, the plaintiff must, no
doubt, make out that the use of the defendants mark is likely to deceive, but where the similarity
between the plaintiffs and the defendants mark is so close either visually, phonetically or otherwise
and the court reaches the conclusion that there is an imitation, no further evidence is required to
establish that the plaintiffs rights are violated.
Lastly, in Dyechems case (supra), it was observed in para 54 as under:
As to scope of a buyer being deceived, in a passing-off action, the following principles have to be
borne in mind. Lord Romer, L.J. has said in Payton & Co. Vs. Snelling, Lampard & Co. (1900) 17
RPC 48 that it is a misconception to refer to the confusion that can be created upon an ignorant
customer that the courts ought to think of in these cases is the customer who knows the
distinguishing characteristics of the plaintiffs goods, those characteristics which distinguish his
goods from other goods in the market so far as relates to general characteristics. If he does not know
that, he is not a customer whose views can properly be regarded by the Court. (See the cases quoted
in N.S. Thread & Co. Vs. Chadwick & Bros. AIR 1948 Mad 481 which was a passing-off action.) In
Schweppes Case (1905) 22 RPC 601 (HL) Lord Halsbury said, if a person is so careless that he does
not look and does not treat the label fairly but takes the bottle without sufficient consideration and
without reading what is written very plainly indeed up the face of the label, you cannot say he is
deceived.
These observations appear to us to be contrary to the decision of this Court in Amritdharas case
(supra) where it was observed that the products will be purchased by both villagers and townfolk,
literate as well as illiterate and the question has to be approached from the point of view of a man of
average intelligence and imperfect recollection. A trade may relate to goods largely sold to illiterate
or badly educated persons. The purchaser in India cannot be equated with a purchaser of goods in
England. While we agree that in trade mark matters, it is necessary to go into the question of

30
comparable strength, the decision on merits in Dyechems case (supra) does not, in our opinion, lay
down correct law and we hold accordingly.
It will be useful to refer to some decisions of American Courts relating to medicinal products. In the
case of American Cynamid Corporation Vs. Connaught Laboratories Inc., 231 USPQ 128 (2nd Cir.
1986), it was held as under:
Exacting judicial scrutiny is required if there is a possibility of confusion over marks on medicinal
products because the potential harm may be far more dire than that in confusion over ordinary
consumer products.
It may here be noticed that Schedule H drugs are those which can be sold by the chemist only on the
prescription of the Doctor but Schedule L drugs are not sold across the counter but are sold only to
the hospitals and clinics. Nevertheless, it is not un-common that because of lack of competence or
otherwise, mistakes can arise specially where the trade marks are deceptively similar. In Blansett
Pharmaceuticals Co. Vs. Carmick Laboratories Inc., 25 USPQ 2nd, 1473 (TTAB 1993), it was held as
under:
Confusion and mistake is likely, even for prescription drugs prescribed by doctors and dispensed by
pharmacists, where these similar goods are marketed under marks which look alike and sound alike.
In the case of Glenwood Laboratories, Inc. Vs. American Home Products Corp reported in 173 USPQ
19(1972) 455 F. Reports 2d, 1384(1972), the Court of the United State had held that:
The fact that confusion as to prescription drugs could produce harm a contrast to confusion with
respect to non-medicinal products as an additional consideration of the Board as is evident from
that portion of the opinion in which the Board stated: The products of the parties are medicinal and
applicants product is contraindicated for the disease for which opposers product is indicated. It is
apparent that confusion or mistake in filling a prescription for either product could produce harmful
effects. Under such circumstances, it is necessary for obvious reasons, to avoid confusion or mistake
in the dispensing of the pharmaceuticals.
The boards view that a higher standard be applied to medicinal products finds support in previous
decisions of this Court, Clifton Vs. Plough 341, F.2d 934, 936, 52, CCPA 1045, 1047 (1965) (It is
necessary for obvious reasons, to avoid confusion in the dispensing of pharmaceuticals), Campbell
Products, Inc. Vs. John Wyeth & Bro. Inc, 143, F. 2d 977, 979, 31 CCPA 1217 (1944) it seems to us
that where ethical goods are sold and careless use is dangerous, greater care should be taken in the
use of registration of trade marks to assure that no harmful confusion results) In the case of R.J.
Strasenburgh Co. Vs. Kenwood Laboratories, Inc. reported in 106 USPQ 379, as noted in the
decision of Morgenstern Chemical Companys case (supra), it had been held that:
Physicians are not immune from confusion or mistake. Further more it is common knowledge that
many prescriptions are telephoned to the pharmacists and others are handwritten, and frequently
handwriting is not unmistakably legible. These facts enhance the chances of confusion or mistake by

31
the pharmacists in filling the prescription if the marks appear too much alike when handwritten or
sound too much alike when pronounced."
The drugs have a marked difference in the compositions with completely different side effects, the
test should be applied strictly as the possibility of harm resulting from any kind of confusion by the
consumer can have unpleasant if not disastrous results. The courts need to be particularly vigilant
where the defendants drug, of which passing off is alleged, is meant for curing the same ailment as
the plaintiffs medicine but the compositions are different. The confusion is more likely in such cases
and the incorrect intake of medicine may even result in loss of life or other serious health problems.
In this regard, reference may usefully be made to the case of Glenwood Laboratories, Inc. Vs.
American Home Products Corp., 173 USPQ 19(1972) 455 F.Reports 2d, 1384(1972), where it was
held as under:
The products of the parties are medicinal and applicants product is contraindicated for the disease
for which opposers product is indicated. It is apparent that confusion or mistake in filling a
prescription for either product could produce harmful effects. Under such circumstances, it is
necessary for obvious reasons, to avoid confusion or mistake in the dispensing of the
pharmaceuticals.
It was further submitted on behalf of the appellant that although the possibility of confusion in a
drug being sold across the counter may be higher, the fact that a drug is sold under prescription or
only to physicians cannot by itself be considered a sufficient protection against confusion. The
physicians and pharmacists are trained people yet they are not infallible and in medicines, there can
be no provisions for mistake since even a possibility of mistake may prove to be fatal.
As far as present case is concerned, although both the drugs are sold under prescription but this fact
alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying
infrastructure for supervision of physicians and pharmacists of medical profession in our country
due to linguistic, urban, semi-urban and rural divide across the country and with high degree of
possibility of even accidental negligence, strict measurers to prevent any confusion arising from
similarity of marks among medicines are required to be taken.
Here, it will be useful to refer to the decision of Morgenstern Chemical Companys case (supra)
where it has been held as under:
[5] In the field of medical products, it is particularly important that great care be taken to prevent
any possibility of confusion in the use of trade marks. The test as to whether or not there is
confusing similarity in these products even if prescribed and dispensed only by professionally
trained individuals does not hinge on whether or not the medicines are designed for similar
ailments. The rule enunciated by Judge Helen in Cole Chemical Co. Vs. Cole Laboratories D.C. Mo.
1954, 118F. Supp. 612, 616, 617, 101, USPQ 44,47,48, is applicable here:
Plaintiff and defendant are engaged in the sale of medical preparations. They are for ultimate
human consumption or use.* * *They are particularly all for ailments of the human body. Confusion

32
in such products can have serious consequences for the patient. Confusion in medicines must be
avoided. * * * * * Prevention of confusion and mistakes in medicines is too vital to be trifled with The
observations made by Assistant Commissioner Leeds of the Patent Office in R.J. Strasenburgh Co.
Vs. Kenwood Laboratories, Inc. 1955, 106 USPQ 379, 380 are particularly apt, that Physicians are
not immune from confusion or mistake. Further more it is common knowledge that many
prescriptions are telephoned to the pharmacists and others are handwritten, and frequently
handwriting is not unmistakably legible. These facts enhance the chances of confusion or mistake by
the pharmacists in filling the prescription if the marks appear too much alike when handwritten or
sound too much alike when pronounced."
The defendant concedes that physicians and pharmacists are not infallible but urges that the
members of these professions are carefully trained to detect differences in the characteristics of
pharmaceutical products. While this is doubtless true to dos not open the door to the adoption by
manufacturers of medicines of trade marks or names which would be confusingly similar to anyone
not exercising such great care. For physicians and pharmacists are human and in common with the
rest of mankind are subject to human frailties. In the field of medicinal remedies the courts may not
speculate as to whether there is a probability of confusion between similar names. If there is any
possibility of such confusion in the case of medicines public policy requires that the use of the
confusingly similar name be enjoined (See Lambert Pharmacol Ltd. Vs. Bolton Chemical
Corporation DCNY 1915, 219 F. 325.326.
In the book titled as McCarthy on Trade Marks, it is observed in the footnote at page 23-70 as
under:
Physicians and Pharmacists are knowledgeable in their fields does not mean they are equally
knowledgeable as to marks and immune from mistaking one mark from another. (Schering Corp Vs.
Alza Corp reported in 207 USPQ 504 (TTAB 1980) ) In the case of Syntex Laboratories Inc. Vs.
Norwich Pharmacal Co. reported in 169 USPQ 1(2nd Cr. 1971), it is observed as under:
Stricter standard in order to prevent likelihood of confusion is desirable where involved trade marks
are applied to different prescription pharmaceutical products and where confusion result in physical
harm to consuming public.
Trade mark is essentially adopted to advertise ones product and to make it known to the purchaser.
It attempts to portray the nature and, if possible, the quality of the product and over a period of time
the mark may become popular. It is usually at that stage that other people are tempted to pass off
their products as that of the original owner of the mark. That is why it is said that in a passing off
action, the plaintiffs right is against the conduct of the defendant which leads to or is intended or
calculated to lead to deception. Passing off is said to be a species of unfair trade competition or of
actionable unfair trading by which one person, through deception, attempts to obtain an economic
benefit of the reputation which other has established for himself in a particular trade or business.
The action is regarded as an action for deceit. (See Wander Ltd. Vs. Antox India Pvt Ltd., 1990
Suppl. SCC 727.

33
Public interest would support lesser degree of proof showing confusing similarity in the case of trade
mark in respect of medicinal product as against other non-medicinal products. Drugs are poisons,
not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely
inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors,
there should be as many clear indicators as possible to distinguish two medicinal products from
each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under
critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a
position to differentiate between the medicine prescribed and bought which is ultimately handed
over to them. This view finds support from McCarthy on Trade Marks, 3rd Edition, para 23.12 of
which reads as under:
The tests of confusing similarity are modified when the goods involved are medicinal products.
Confusion of source or product between medicinal products may produce physically harmful results
to purchasers and greater protection is required than in the ordinary case. If the goods involved are
medicinal products each with different effects and designed for even subtly different uses, confusion
among the products caused by similar marks could have disastrous effects. For these reasons, it is
proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal
preparations. The same standard has been applied to medical products such as surgical sutures and
clavicle splints.
The decisions of English Courts would be relevant in a country where literacy is high and the marks
used are in the language which the purchaser can understand. While English cases may be relevant
in understanding the essential features of trade mark law but when we are dealing with the sale of
consumer items in India, you have to see and bear in mind the difference in situation between
England and India. Can English principles apply in their entirety in India with no regard to Indian
conditions? We think not. In a country like India where there is no single common language, a large
percentage of population is illiterate and a small fraction of people know English, then to apply the
principles of English law regarding dissimilarity of the marks or the customer knowing about the
distinguishing characteristics of the plaintiffs goods seems to over look the ground realities in India.
While examining such cases in India, what has to be kept in mind is the purchaser of such goods in
India who may have absolutely no knowledge of English language or of the language in which the
trade mark is written and to whom different words with slight difference in spellings may sound
phonetically the same. While dealing with cases relating to passing off, one of the important tests
which has to be applied in each case is whether the misrepresentation made by the defendant is of
such a nature as is likely to cause an ordinary consumer to confuse one product for another due to
similarity of marks and other surrounding factors. What is likely to cause confusion would vary from
case to case. However, the appellants are right in contending that where medicinal products are
involved, the test to be applied for adjudging the violation of trade mark law may not be at par with
cases involving non-medicinal products. A stricter approach should be adopted while applying the
test to judge the possibility of confusion of one medicinal product for another by the consumer.
While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff,
confusion between the two medicinal products may have disastrous effects on health and in some
cases life itself. Stringent measures should be adopted specially where medicines are the medicines
of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The

34
confusion as to the identity of the product itself could have dire effects on the public health.
Keeping in view the provisions of Section 17-B of the Drugs and Cosmetics Act, 1940 which inter alia
indicates an imitation or resemblance of another drug in a manner likely to deceive being regarded
as a spurious drug it is but proper that before granting permission to manufacture a drug under a
brand name the authority under that Act is satisfied that there will be no confusion or deception in
the market. The authorities should consider requiring such an applicant to submit an official search
report from the Trade Mark office pertaining to the trade mark in question which will enable the
drug authority to arrive at a correct conclusion.
Broadly stated in an action for passing off on the basis of unregistered trade mark generally for
deciding the question of deceptive similarity the following factors to be considered:
a) The nature of the marks i.e. whether the marks are word marks or label marks or composite
marks, i.e. both words and label works.
b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
c) The nature of the goods in respect of which they are used as trade marks.
d) The similarity in the nature, character and performance of the goods of the rival traders.
e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their
education and intelligence and a degree of care they are likely to exercise in purchasing and/or using
the goods.
f) The mode of purchasing the goods or placing orders for the goods and
g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity
between the competing marks.
Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same
weightage cannot be given to each factor in every case.
The trial court will now decide the suit keeping in view the observations made in this judgment. No
order as to costs.
Appeal is disposed of.

35
E. Griffiths Hughes Ltd. vs Vick Chemical Co. on 19 May, 1959
Calcutta High Court

Equivalent citations: AIR 1959 Cal 654
Author: Bose
Bench: K Dasgupta, H Bose
JUDGMENT Bose, J.
1. This appeal is from the decision of the Deputy Registrar of Trade Marks, Calcutta, and raises
primarily the question of construction of Section 6 of the Trade Marks Act, 1940.
2. On 22nd October, 1945 the appellant, a British Company carrying on the business of
Manufacturing Chemists, applied before the Registrar of Trade Marks, Calcutta, for registration of a
trade mark consisting of the words "Karsote Vapour Rub" represented in special type and the words
"Protective comforting. Germ Killing" in smaller type, inside a black rectangular border, for a
chemical product specified as a vaporising ointment. This Mark was advertised as accepted in the
Trade Marks Journal of January 1949.
3. On 2nd May, 1947 the respondent, an American Company, also applied before the Registrar of
Trade Marks, Calcutta, for registration of a trade mark consisting of the word "Vapo Rub" for goods
specified as "Pharmaceutical preparations". This mark was however advertised as accepted a month
earlier in the Trade Marks Journal of December, 1948.
4. As a result of these advertisements the appellant and the respondent filed their oppositions
against each other's application for registration. As is usual in such cases, the parties produced
before the Deputy Registrar, in support of their respective cases, evidence in the shape of affidavits
affirmed by Doctors, nurses and dealers.
5. Some of the records of a litigation which the parties had in respect of these very Marks in the
Court of Jamaica and which ultimately went up before the Privy Council, were also produced before
the Deputy Registrar.
6. The learned Deputy Registrar after hearing the parties at length has directed registration of the
Mark of the respondent with an amendment that instead of the word "Vapo Rub" simpliciter, the
word "Vicks" should be introduced before the word "Vapo Rub" and the mark of the Respondent
should be registered as "Vicks Vapo Rub". With regard to the appellant's application for registration,
the direction of the Deputy Registrar is, that the words "Vapour Rub" should be deleted from the
appellant's mark offered for registration, and only the word "Karsote" should be registered as the
appellant's mark. Being aggrieved by these directions of the Deputy Registrar, the British Company
has preferred this appeal.
7. It is convenient to set out verbatim the provisions of Section 6 of the Trade Marks Act, 1940 (Act
V of 1940) which are as follows :

36
Section 6 (1). A trade mark shall not be registered unless it contains or consists of at least one of the
following essential particulars, namely :--
(a) the name of a company, individual or firm represented in a special or particular manner;
(b) the signature of the applicant for registration or some predecessor in his business;
(c) one or more invented words;
(d) one or more words having no direct reference to the character or quality of the goods, and not
being, according to its ordinary signification, a geographical name or surname or the name of a sec,
caste, or tribe in India;
(e) any other distinctive mark, provided that a name, signature or any word other than such as fall
within the descriptions in the above clauses, shall not be registrable except upon evidence of its
distinctiveness.
(2) For the purposes of this section, the expression "distinctive" means adapted, in relation to the
goods in respect of which a trade mark is proposed to be registered to distinguish goods with which
the proprietor of the trade mark is or may be connected in the course of trade from goods in the case
of which no such connection subsists either generally or where the trade mark is proposed to be
registered subject to limitations, in relation to use within the extent of the registration.
(3) In determining whether a trade mark is adapted to distinguish as aforesaid, the tribunal may
have regard to the extent to which -
(a) the trade mark is inherently so adapted to distinguish, and
(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so
adapted to distinguish;
Provided that in the case of a trade mark which has been continuously used (either by the applicant
for registration or by some predecessor in his business, and either in its original form or with
additions or alterations not substantially affecting its identity) in relation to the same goods as those
in relation to which registration is applied for, during a period from a date prior to the 25th day of
February, 1937, to the date of application for registration, the Registrar shall not refuse registration
by reason only of the fact that the trade mark is not adapted to distinguish as aforesaid and may
accept evidence of acquired distinctiveness as entitling the trade mark to registration."
8. Now the opening words of Section 6 make it quite clear that in order that a trade mark may be
registrable under the Act it should contain one of the essential particulars designated in Clauses (a),
(b), (c), (d) and (e) of Sub-section (1) of Section 6, which clauses are separate and distinct.

37
9. The contention of the appellant is that the word "Karsote" in the appellant's trade mark "Karsote
Vapour Rub" is an invented word and as it thus satisfies the requirements of Clause (c) of
Sub-section (1) of Section 6, it is a registrable trade mark. The appellant further contends that
although the words "Vapour Rub" are common words of the English language and such words may
be regarded as generic words common to the trade the appellant is entitled to registration of the
whole of the Trade Mark proposed for registration, subject to its disclaiming its right to the exclusive
use of the words "Vapour Rub" as provided in Section 13 (b) of the Trade Marks Act, 1940.
10. With regard to the trade mark of the respondent the appellant's contention is that it is not
eligible for registration inasmuch as the word "Vapo Rub" is a mere misspelling of the ordinary
English words Vapour and Rub and as it is a word which has direct reference to the character and
quality of goods--a factor, which according to Clause (d) of Sub-section (1) of Section 6, disqualifies
a trade mark from being registered under the Act.
11. It is further submitted on behalf of the appellant that the Deputy Registrar of Trade Marks had
no jurisdiction to direct registration of the respondent's mark, offered for registration, by
introducing the word "Vicks" before the word "Vapo Rub" and thus amending it suo motu and
without an application made by the respondent for the purpose.
12. The contention of the respondent on the other hand is that the word "Vapo Rub" is an in vented
word or at any rate a "distinctive mark"
within the meaning of the expression "any other distinctive mark" occurring in Clause (e) of
Sub-section (1) of Section 6 of the Act and as it is a trade mark which is inherently adapted to
distinguish and by reason of its use and on account of other circumstances it is in fact so adapted to
distinguish, the mark is registrable under the Act. It is further contended by the respondent that in
any event the Mark being in continuous user in India from a date prior to 25th February, 1937 has
acquired distinctiveness even if it be found that it is not adapted to distinguish and the Registrar
therefore cannot refuse registration of the Mark in view of the Proviso to Sub-section (3) of Section 6
of the Act.
13. The respondent further seeks to justify the Deputy Registrar's order for registration of their Mark
with amendment, as being permissible under Section 14 (3) and Section 15(4) of the Act.
14. The respondent resists the registration of the appellant's trade mark "Karsote Vapour Rub" on
the ground that it is not distinctive of the goods of the appellant and is not adapted to distinguish
their goods. Furthermore the registration of the appellant's trade mark is likely to deceive and cause
confusion and as such the registration of it is prohibited by Section 8 (a) of the Act.
15. The respective contentions of the parties may now be considered in the light of the authorities
and the provisions of the Trade Marks Act, 1940. The argument of the respondent that the word
"Vapo Rub" is an invented word can be disposed of, at the very outset by pointing out that it is not
an invented word. It is plain that the word "Vapo Rub" suggests the combination of two ordinary
English words "Vapour" and "Rub" with a slight distortion of the word "Vapour". It has been now

38
authoritatively established that the combination of two English words is not an invented word even
though the combination may not have been in use before; nor is a mere variation of the orthography
or termination of a word sufficient to constitute an invented word if to the eye or ear the same idea
would be conveyed as by the word in its ordinary form. It is no doubt true that by the dropping of
"U" and "R" the word 'Vapo' ceases to be an ordinary English word and some element of novelty is
introduced into it, which gives it the appearance of a coined word, but still it does not attain the
status of an invented word which is a word not to be found in the existing vocabulary. In the case of
In re Dunlop Rubber Co. Ltd., (1942) 59 RPC 134, the mark "Trakgrip" was allowed to be registered
as a coined word and as distinctive of the applicant's goods, as the court was of the view that other
traders were not likely, in the ordinary course of their business, to desire to use such a word in
connection with pneumatic tyres,
16. At the same time, it may be safely assumed that the word "Karsote" in the appellant's mark is an
invented word.
17. The next question that arises for consideration is whether the mark of the respondent can be
regarded as a distinctive mark within the meaning of the expression as used in Clause (e) of
Sub-section (1) of Section 6. Now the mark can fall within Clause (e) if there is "evidence of
distinctiveness." So the further question that arises is what is "distinctiveness." The answer to the
question is furnished by Sub-section (2) read with Sub-section (3) of Section 6. The expression
"distinctive" is defined in Sub-section (2) as meaning some quality or feature in the trade mark
which earmarks the goods as distinct from the goods of other manufacturers or producers. But
Sub-section (3) of Section 6 provides what factors the Registrar should take into consideration in
determining whether the requirements of Sub-section (2) are satisfied. Sub-section (3) requires the
Registrar to satisfy himself about two factors (a) "inherent distinctiveness" and (b) "distinctiveness
in fact". If he finds that the two factors co-exist then he is to decide whether the two factors exist to
such an extent as to justify him in holding that the mark is "distinctive" as contemplated in
Sub-section (2).
18. If however the proviso to Sub-section (3) is applicable to the case then the question whether the
trade mark is adapted to distinguish or not becomes immaterial and the Registrar can direct
registration solely on the evidence of acquired distinctiveness. In other words if the proviso is
attracted then the "acquired distinctiveness" is conclusive] and entitles the mark to be registered.
But if the proviso does not apply then the "acquired distinctiveness" is not conclusive, and the
Registrar has to find that adaptability to distinguish is present in the trade mark proposed to be
registered.
19. With these introductory words on the question of interpretation of Section 6 of the Act I now
pass on to the consideration of the evidence as to user which has been adduced in this case. Now it is
well-settled that in the case of all applications for registration of trade marks, including opposed
applications, the rights of the party or parties are to be determined as at the date of the application
for registration. The evidence which is tendered before the Registrar is normally by way of affidavits
of persons who are competent to testify to the user of the particular mark.

39
(19a) Section 70, Clause (b) of the Trade Marks Act 1940 is as follows :--
"Section 70.
In all proceedings under this Act before the

Registrar * * * * *
(b) evidence shall be given by affidavit provided that the Registrar may, if he thinks
20. The principal affidavit on behalf of the respondent is of Robert M. Dunning dated 20th July,
1948. It appears from this affidavit that Mr. Lunsford Richardson, the founder of the respondent
company's business had coined the word "Vapo Rub" in the year 1911 and this trade mark has been
in use in India since at least 1925.
21. It further appears from this affidavit that Declarations of ownership of this trade mark were filed
and registered under the Registration Act, in India so far as the Carton was concerned, on 18th
April, 1928, and so far as the word "Vapo Rub" was concerned, on 3rd March, 1935, and the records
of the company as to shipments to India of products bearing the trade mark "Vapo Rub" show that
shipments to India started from the years 1924-25 and gradually increased in volume. The
particulars of such shipments up to 1947-1948 and of the publicity or advertisement expenses for
the period 1935-36 to 1947-1948 are set out in this affidavit. It may be pointed out that in the Carton
which was registered in this Country on 18th April, 1928 the word "Vicks" is more prominently
displayed than the word "Vapo Rub".
22. Several supporting affidavits made in October, 1948 have also been filed on behalf of the
respondent company. William Strachen, an employed of and at the date of the affidavit, the manager
of Bathgate and Co. Ltd., a firm of Chemists and Druggists of Calcutta has stated in his affidavit that
the Mark "Vapo Rub" had been in use for 20 years, that is since about 1928. Others who have made
affidavits are Ferozuddin, a dealer, Dr. Walmsley Fisher, a Surgeon and registered medical
practitioner in Calcutta since 1929, Mrs. Dumayne, a nurse registered since 1929, Devaraja Nayagar,
a dealer of Madras engaged in the retail sale of drugs since about 1923 : Thammanna Gounder, also
a dealer of Madras since about 1918: Dr. Venugopalan, a medical practitioner of Madras; Amar Nath
Gupta, a dealer of Delhi; Tekchand, a dealer of New Delhi; Roshanlal, another dealer and chemist of
New Delhi; Beni Prosad also a dealer of New Delhi; Sabuwalla, a dealer of Bombay, and Kesharlal
Raichand a dealer of Bombay. The Deputy Registrar has dealt with all these affidavits (except the
affidavit of Mr. Dunning, the two Doctors and the nurse) together and in view of certain similarity of
the wordings in these affidavits, has remarked, following the well-known observations of Evershed
M. R. (In the matter of Broadhead's case, (1950) 67 RFC 209 at p. 211) that "every player in the
orchestra plays in unison the same monotonous tune", and has rejected these affidavits. The Deputy
Registrar has however relied on some other affidavits filed on behalf of the respondent by way of
reply to the affidavits filed by the appellant. It appears to me that it will not be unreasonable to place

40
reliance on the affidavit of K. R. Sawhney dated 29th July, 1952 the proprietor of British Medical
Stores having its place of business at Chandni Chawk, Delhi. He is doing business as chemist and
druggist since about 1935 and he has sold "Vapo Rub" which is also known as Vicks Vapo Rub since
about 1942. It is since 1947 that he has seen Karsote Vapour Rub in the market. The next affidavit
which can be taken into consideration is that of F. X. Braganca, the manager of Alex Ross and Sons
of 21 Park Street, Calcutta, a firm of Chemists and Druggists. He has known the product "Vapo Rub"
which is also known as "Vicks Vapo Rub" for the last 16 years, that is, since about 1936. If he had
seen the words "Vapour Rub" on a piece of paper it would only suggest to him "Vicks Vapo Rub"
product.
23. Besides these affidavits, the affidavits of P. B. Johnson, M. K. Stremen, H.D. Sunawala and L.C.
Bullack who are employees of Muller and Phipps (India) Ltd., the distributors of the Vick Chemical
Company since about 1935, are helpful and can be relied on. The affidavit of Mr. Johnson shows that
the sales of the respondent's products were effected in India through the offices of Muller and
Phipps (India) Ltd., between the period 1936 and 1948 and in 1936 the sale was to the extent of Rs
13583/- and in 1947 the extent of such sale amounted to Rs. 223776/- and in 1948 the figure was Rs.
177255/-. The total amounts of the sales for the years 1936 to 1948 have been collected from the
various account books and records of the company (Muller and Phipps. (India) Ltd.) and have been
set out in this affidavit. This is good secondary evidence of the entries in the original records.
24. The affidavit of Jagan Nath Jaini who is the Advertising Agent in India of the respondent can
also be safely relied upon. This affidavit shows that since 1935-36 the respondent company was
spending large sums as advertisement expenses, every year and in the year 1935-1936 the amount so
spent was Rs. 13282/13/6 and in 1949-50 the figure went up to Rs. 29,427/-. The cuttings of the
Advertisements however show that the word "'Vicks" has always been associated and used with the
word "Vapo Rub" in the advertisements and sometimes the word "Vicks" is more prominently
displayed than the word "Vapo Rub".
25. Thus there is satisfactory evidence to show that the product of the respondent company has been
sold in the Indian Market from sometime prior to 1930 and the mark "Vapo Rub" has been always
associated with and understood to be as indicative of the products of the respondent.
26. It is also clear that instead of the word "Vapo Rub" simpliciter the combination of the words
"Vicks" and "Vapo Rub" has occasionally served as the Mark denoting the goods of the respondent.
There is also no doubt, that the word "Vapo Rub" is also descriptive to a certain extent of the
character and quality of the goods but as has been pointed out by Fletcher Moulton L.J. in the case
of Re Joseph Crossfield and Sons Ltd., (1910) 1 Ch. 130 at p. 145, there is no absolute incompatibility
between what is descriptive and what is distinctive.
27. It has been pressed upon us that in the British Pharmaceutical Codex there is a description given
of such ointments in the following words : --
"Vapour Rubs are preparations of menthol with other volatile substances in a basis of soft paraffin
and are applied to the chest for their local action and on account of their value when inhaled" and so

41
the words "Vapour Rubs'' being generic terms and the word "Vapo Rub" being merely a misspelling
of the words "Vapour Rub", no distinctiveness can be acquired in respect of such word."
28. Now although the British Pharmaceutical Codex 1934 received statutory recognition in India
under the Indian Drugs Act 1940 (see Section 2(d). Sections 8 and 16) it is quite clear from the
evidence that the word "Vapo Rub" had become associated with the vaporising ointments
manufactured by the respondent and had become current in the Indian Market since about 1925
and long before 1934 when British Pharmaceutical Codex was published. Reliance is also placed by
the appellant on British Pharmacopoeia which is also recognised by the Drugs Act 1940 and wherein
the Pharmaceutical Formulae of Chest Vapour Rub is set out; but it is to be pointed out that it was in
1929 that in this British Pharmacopia the formulae of Chest Vapour Rub first came to be published.
29. The appellant company has also adduced evidence by way of affidavits and otherwise to prove
that the word "Vapo Rub" had become generic term. But it is admitted in the affidavit of Mr. Green
that the appellants mark has been in effective user in India only since about November, 1945. In the
supporting affidavits of Rajaratnam, Mohamed Yousuff, Subramaniam who are dealers of Madras it
is stated ''hat "Karsote Vapour Rub", Vicks Vapo Rub and other preparations of Vapour rub type
have been sold in the Indian Market as different brands of Vapour rub products, fo the same effect
also is "the affidavit of Shanghvi, a Calcutta dealer, who says that since 1941 his firm was dealing in
"Vapour Rub" products, and customers and mofussil dealers often ask for Vapour Rub preparations
without mentioning the brand. The affidavit of Nabendu Roy another Calcutta dealer is to the effect
that the difference in the spelling between "Vapo Rub" and Vapour Rub" is so negligible that 90 per
cent of the people dealing in such products do not notice the difference in spelling.
30. This Nabendu Roy is dealing in Karsote Vapour Rub and Vicks Vapo Rub since about 1947. The
affidavit of Chhotalal J. Seth, another Calcutta dealer is that his firm was dealing in Vapour Rub
preparations since 1947 and he is acquainted with the term since 1947. The affidavit of Fidahusein of
Spencer and Co., is that he has always regarded "Vapo Rub" as being a misspelling of the words
Vapour Rub. His customers always ask for Vicks when they want to purchase Vicks Chemical
Company's preparations. The affidavit of Dr. B.P. Nundi is that he is acquainted with Vapour Rub
preparations since 1948. He considers Vapo Rub as misspelling of the term Vapour Rub. The
affidavits of the two nurses Mabal Poole and Emily Livesay are rather vague but they also state that
Vapo Rub is a misspelling of the words Vapour Rub and there are different brands in the market
such as Karsote, Kipak and Vicks. The affidavit of C. A. Barnes is to the effect that the respondent
advertised their products in the British publications "Nursing Mirror", "Sunday Pictorial" and "News
of the World" having circulation in India, as "Vick Brand Vapour Rub" preparation. The annexures
show that during the period 1938 to 1944, such advertisement was made and the word "Vick" was
always more prominently displayed.
31. The affidavit dated 1st August, 1951 of George Ernest Large, the Secretary of Gordon Gotch Ltd.,
London, carrying on the business of exporter of British newspapers and periodicals is that copies of
the "Sunday Pictorial", "Nursing Mirror" and "News of the World" have been regularly sent out to
India during the last 12 years at least and his estimate is that about 350 copies of the "News of the
World", 1000 copies of the "Sunday Pictorial" and 5 copies of the "Nursing Mirror" had been

42
normally sent to India.
32. This is in substance the state of the appellant's affidavit evidence. But like some of the first set of
respondents supporting affidavits filed in October. 1948, most of these affidavits filed on behalf of
the appellant suffer from the defect of being stereotyped in character.
33. It has been pointed out that it is not the right or proper way of preparing evidence for a case of
this kind to put before members of the public, a statutory declaration already drafted containing
statements of facts and statements as to what the witness would have thought if certain things had
happened or impressions of the witness without previously ascertaining by means of non-leading
questions and answers that it represents his views. It really amounts to putting a series of leading
questions which suggest the answer required in the most complete manner and put into the mouth
of the witness words which he might not have thought of using, although when the declaration is put
before him, he may think, and think quite honestly, that it accurately represents the facts.
34. It has at the same time been pointed out that merely because several affidavits filed in trade
mark oases or passing off cases are precisely in the sane form, it does not follow that any of these
affidavits has been obtained by any improper means. See In the matter of an Application by Edward
Hack, (1941) 58 RPC 91 at pp. 110-111.
35. In the later case known as (1950) 67 BPC 209 at p. 211, and already referred to the practice of
tendering evidence by way of affidavits drafted in precisely the same form and with the same
defects, was deprecated by the Court of Appeal in England.
36. Evershed M. R. observed:--..
"................... Every player in the orchestra plays in unison. Not only that, but I find that the points
which now are the vital points in the case remain shrouded in ambiguity or indeed, are passed over
altogether sub silentio."
37. Now many of the affidavits filed by the respective parties in the case before us do not give
sufficient indication of the status of the persons swearing the affidavits, and it becomes therefore
difficult for the Court to form an opinion as to the weight which should be attached to the particular
affidavits. The affidavit of Colonel Walmsley Fisher gives us an idea about his qualifications and
status. The affidavit of Mrs. Dumayne indicates that she has held responsible, positions in
well-known hospitals. These two affidavits also enable the Court to form the opinion that this doctor
and the nurse are persons of considerable experience and they had opportunities of acquiring an
idea as to the extent of the user of the mark "Vapo Rub" and about the reputation it enjoys and as to
whether the mark has acquired any distinctiveness or not. So it is not unreasonable to place reliance
on such affidavits, and I am not inclined to ignore or brush aside these affidavits as worthless or
unreliable.
38. So taking into consideration these two affidavits and the other affidavits of the respondent
company to which I have already made reference in an earlier part of this judgment as reliable

43
affidavits, I hold that the Mark "Vapo Rub" has been continuously in user in India from a date prior
to 25th February, 1937 and up to the date of the application of the respondent company for
registration and even later than that, and this mark has acquired sufficient distinctiveness in fact, to
entitle) the mark to registration.
39. The further question that arises is whether the Deputy Registrar was within his rights in suo
motu amending the respondent's mark proposed for registration by adding the word "Vicks'" before
the word "Vapo Rub" and directing registration of this amended mark. Mr. Ginwalla has argued that
the definitions of the words "Limitations" and "Trade Mark" as given in Section 2, Clauses (E) and
(L) in the Act and the provisions of Sections 19 (2) and 15(4) of the Act make it clear that the
Registrar has power to direct registration of trade mark with amendments made by him.
40. Mr. Dutt Roy on the other hand has contended that the only power the Registrar has of allowing
amendment of a trade mark proposed for registration is before or at the time of acceptance of the
mark for advertisement for purposes of registration; and also after acceptance, provided the
applicant makes application for or asks for such amendment. Reliance is placed by Mr. Dutt Roy on
Sections 14(1), 14(3), 15(1) and Section 16 (which says that it is only the accepted trade mark which
can be registered) of the Act.
41. It appears to me that the contention of Mr. Dutt Roy is correct. The words "Conditions and
limitations" in Sections 10(2) and 15(4) of the Act have no reference to the power of amendment of
the trade mark. The words "Conditions and limitations" have reference to such things like mode of
user of the trade mark or as to the area of its user. As for example it may be a condition of the
registration that the mark is to be used in relation to goods to be sold only in the State of West
Bengal, or the mark is to be used only on goods sold in jars or bottles, or the mark is to be used by
way of printed adhesive labels and so on.
42. In my view the learned Deputy Registrar was not justified in suo motu amending the proposed
trade mark of the respondent company and directing registration of such amended trade mark. But
no fault can be found with the Deputy Registrar's direction correcting the name of the respondent
company as "Vick Chemical Company" instead of Vicks Chemical Company, as it is within the
competence of the Deputy Registrar to correct such an error under Section 14 (3) of the Act.
43. The learned Deputy Registrar's direction that only the word "Karsote" of the appellant's
proposed trade mark "Karsote Vapour Rub" do proceed to registration, is equally untenable. Section
11 of the Act gives an indication that it is the whole mark which is proposed for registration that is to
be registered. The Deputy Registrar had no power to cut out the words "Vapour Rub" from the
appellant's trade mark and direct registration of the amended mark "Karsote". The Deputy Registrar
had no power to dissect the mark and then conclude that some component parts were distinctive
and some were not distinctive, and on that ground direct registration of a part or the mark and
refuse registration of the other parts. He must consider the combination mark as a whole. It is to be
noted however that the respondent has not challenged before us that the order of the Deputy
Registrar directing registration of the word "Karsote" is bad.

44
44. Now the next question that arises is whether the learned Deputy Registrar is right in refusing
registration of the appellant's proposed trade mark as a whole. I think he is right.
45. There is hardly much room for doubt that the use of the words "Vapour Rub" in the appellant's
trade mark is likely to deceive or cause confusion and lead ordinary and unwary people into thinking
that the products of the appellant company were really the products of the respondent company. It
is not at all unlikely that when a person goes into a shop or speaks over the telephone and asks for
"Vapo Rub" the shop keeper may in view of the phonetic similarity between the words "Vapour Rub"
and "Vapo Rub" think that the customer is asking for "Vapour Rub" product of the appellant and
thus hand over the appellant's product instead of the respondent's product to the customer although
the latter intended to buy the product of the respondent company.
46. The onus of proving that a mark is not likely to deceive or cause confusion is on the applicant
and if it is not clear that deception may not result the registration should be refused. (See Eno v.
Dunn, (1890) 7 RPC 313.; In re Me Dowell's Application, (Mc Dowell v. Standard Oil Co.), (1927) 44
RPC 335; and Aristoc Ltd v. Rysta Ltd., (1945) 62 RPC 65.
47. It appears to me that the user by the appellant of the proposed trade mark "Karsote Vapour Rub"
will not in the facts and circumstances of this case be a "bona fide user" within the meaning of that
expression as used in Section 26 of the Act, and the application of the appellant for registration of
the proposed mark has been rightly refused by the Deputy Registrar.
48. In the result the order of the Deputy Registrar of Trade Marks will stand with this modification
that instead of the respondent company's amended mark "Vicks Vapo Rub" the respondent
company's mark "Vapo Rub" do proceed to registration.
49. Subject to the modification stated above, the Appeal is dismissed.
50. Each party will bear its own costs.
51. Certified for two Counsel.
Das Gupta, C.J.
52. I agree.

45
MANU/DE/0501/1983
Equivalent Citation: 1983(3)PTC 313(Del)
IN THE HIGH COURT OF DELHI

I.A. 2746/83 in Suit No. 938 of 1983
Decided On: 11.08.1983
Appellants: Khetu Ram Bishambar Dass
Vs.
Respondent: Bhim Sain Yash Pal
Hon'ble Judges/Coram:
B.N. Kirpal, J.
Counsels:
For Appellant/Petitioner/Plaintiff: Anoop Singh and H.P. Singh, Advocates
For Respondents/Defendant: Y.J. Trivedi, Advocate
JUDGMENT
B.N. Kirpal, J.
1 . The plaintiffs have filed a suit for perpetual injunction against the defendants
alleging that the defendants are infringing the trade mark and the copyright of the
plaintiff. In the suit the present application has been filed in which the prayer is that the
defendants, pending the disposal of the suit, should be injuncted from using the trade
mark which is stated to be similar to the registered trade mark of the plaintiffs.
According to the plaintiffs it is the registered owner of the trade mark No. 142136 in
Clause 34 since 31st May, 1950. This trade mark is in respect of snuff which is
manufactured and sold by the plaintiffs. This snuff is sold under the brand name of
Himalaya snuff. The trade mark label under which this snuff is sold consists of four
panels. On panel No. 1, there are 5 photos of Sh. Bishamber Dass and on panel No. 3,
there are 5 photos of Sh. Khetu Ram, the founders of the firm. The photographs show
that Sh. Bishamber Dass was clean shaven whereas Sh. Khetu Ram had a beard. In
panels No. 2 and 4, there are pictures of hills, fields, rivers and flowers in multi colours
giving an idea of hills and its surrounding atmosphere. There is, also a black square
panel under all the pictures and the name Himalaya snuff is written in Hindi, English,
Punjabi and Urdu. On the panel in which the name is written in English the name of the
manufacturer is indicated. That name is also indicated on the panel in which the writing
is in Hindi.
2 . According to the plaintiffs their mark is being infringed by the defendants who are
manufacturing and selling snuff under the trade name of Himachal snuff. The trade label
of the snuff sold by the defendants has been produced in court. The two labels namely
the label of the plaintiffs as well as of the defendants are remarkably similar. In panel
Nos. 1 and 5 of the label of the defendants there are 5 frames which are shown. In the
middle frame on panel No. 1 is a photograph of a clean shaven man with a turban,
similar to the turban of Sh. Bishamber Dass. On panel No. 3 is a photograph of a
bearded person, similar to the photograph of Sh. Khetu Ram. It is true that on each of
these panels other photographs are not these but in place of photographs a shape of
playing card club, in the four corners of the label is printed. On panel Nos. 2 and 4 are
22-04-2023 (Page 1 of 3) www.manupatra.com Abhishek Chandra Mishra

46
the pictures of hills, fields, rivers and flowers in multi colours and they clearly appear to
be a copy of the pictures on the panel of the trade mark label of the plaintiff. Just like
the trade mark label of the plaintiff, in the label of the defendants also there are black
colour panels under all the four pictures and the name Himalaya snuff is given in Hindi,
English, Punjabi and Urdu. Similar to the trade mark label of the plaintiffs under the
words Himachal Naswar written in Hindi, the name of the manufacturer in Hindi is also
given. The name of the manufacturer is not given under the Urdu and Punjabi writings.
Even the colour of the label is remarkably similar.
3. The visual impression of the two labels is that they are remarkably similar. It appears
to me that there can be little doubt that an effort has been made by the defendants in
copying the label of the plaintiffs but some attempt has been made to try and disguise
the copy.
4 . The plaintiffs further states that the trade mark PANCH PHOTO is also registered
under the registration No. 105800 and they are also the registered proprietors of the
artistic work/label under copyright No. A 35760/82. The registration certificates have
been produced before me in original. The same clearly support the averments made by
the plaintiffs, notwithstanding the fact that the factum of registration has been denied
by the defendants.
5. According to the plaintiffs they manufacture and sell snuff under the trade and style
of Himalaya snuff of the value of about Rs. 1 crore per year. The counsel for the
defendants on the other hand admits that the sale of Himalaya snuff manufactured by
the defendants is not more than Rs. 2 lakhs a year. Sh. Trivedi vehemently contends
that no injunction should be granted because there are a number of persons who are
using similar labels having the same features. In my opinion, however, merely because
a large number of persons many work have tried to copy the trade mark label of the
plaintiffs can be no ground for refusing to grant an injunction. When a trade mark is
registered certain rights are conferred on the proprietor of the same under the
provisions of Sections 28 and 29 of the Trade and Merchandise Marks Act, 1958. As
regards the defendants are concerned it cannot be said, as at present advised, that there
has been a honest concurrent user of the said label by them with that of the plaintiffs.
As I have indicated above the manner in which the label have been prepared clearly
shows that the inspiration has been drawn from the label of the plaintiffs. It is not
disputed that the label of the defendants was prepared subsequent to the label of the
plaintiffs. The plaintiffs' label was registered as for back in 1950 whereas according to
the defendants it had started manufacturing only in the year 1973 namely after lapse of
23 years. It is difficult to believe, therefore, that the defendants adopted the label
without being aware of the label of the plaintiff. There appears to have been a
conscious effort on the part of the defendants in trying to copy and adopt the label of
the plaintiffs.
6. It is submitted by the learned counsel for the defendants that an application has been
filed by the defendants in 1980 for the registration of their label. It is further stated that
this application has been admitted and has been ordered to be advertised. In my
opinion, as held by a Division Bench of this Court in the case of Metro Playing Card Co.
v. Wazir Chand Kapoor MANU/DE/0022/1972 : AIR 1972 Delhi 248, merely because an
application has been admitted and ordered to be advertised would give no rights to the
applicant under Section 12(3) of the said Act. It is only after the objections, if any, are
dealt with and a registration is granted under Section 12(3) that the applicant who may
then become a registered owner would be entitled to use the mark for which it has
applied. Till the said application is allowed and the registration granted, in my opinion,

47
the registered trade mark of the plaintiffs has to be protected and cannot be allowed to
be infringed by the defendants.
7 . It was lastly contended that there has been a delay on the part of the plaintiff in
approaching this Court. According to the defendants they have been manufacturing
since the year 1973. No documentary evidence has been placed on record to
substantiate this claim. However, assuming this to be correct the averment of the
plaintiffs, however, is that it is only in the year 1980 that it came to know about the
manufacture and sale of Himachal snuff by the defendants. It immediately thereupon
issued a notice to the defendants to desist from manufacturing and selling the same but
the defendants refused to do so. But that as it may, 'the delay, if any, can only be one
of the circumstances which is to be taken into consideration while deciding whether
temporary injunction should be granted or not. If I come to the conclusion that there
has been an acquiescence on the part of the plaintiffs then of course the injunction may
not be issued. In the presence case, however, there is nothing on record which can
persuade me to come to the conclusion that the plaintiffs willingly or knowingly
permitted the defendants to carry on the sale of snuff. It will be seen that where as the
sale of the plaintiffs is about Rs. 1 crore the goods which are sold by the defendants are
only worth about Rs. lakhs. So it cannot be said that the goods of the defendants are
freely or openly marketed as that of the plaintiffs. In such a circumstance it is not
improbable that a large manufacturer may not be immediately aware of the small
manufacturer copying his labels and infringing his trade mark.
8 . It was also contended by Sh. Trivedi that this would be a fit case where the
defendants should not be injuncted from manufacturing and selling under the trade and
style of Himachal snuff and it would be in the interest of justice if the defendants are
merely asked to maintain accounts. It is now common knowledge that most of the
intending purchasers of snuff include agriculturalists, labourers, uneducated men and
women living in suburbs and villages. The fact that the sale of the plaintiffs is over a
crore means that it has acquired a certain amount of reputation in the market. If the
defendants are permitted to sell the snuff in cartons bearing labels which are
deceptively similar to that of the plaintiffs, there is every likelihood that amongst such
type of consumers, there will be a genuine mistake committed by them. They may feel
that they are purchasing the snuff manufactured by the plaintiffs, whereas in fact this
may not be so. There is every likelihood, if this quality of the snuff prepared by the
defendants is not the same as that of the plaintiff, that there may be serious damage to
the reputation of the plaintiffs which will adversely effect its business.
9. For the aforesaid reasons I allow this application and restrain defendants from using
the impugned mark/label annexure 'X' to the plaint--in respect of snuff sold by them
under the name and style of Himachal snuff. Mr. Trivedi has prayed that I may stay the
operation of this order. I see no reason as to why I should stay the operation of the
order, when I am prima facie of the opinion that there has been a deliberate attempt on
the part of the defendants to infringe the registered trade mark of the plaintiffs. The
application stands disposed of.
© Manupatra Information Solutions Pvt. Ltd.

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MANU/DE/8065/2006
Equivalent Citation: 2006(32)PTC 192(Del)

IA No. 6198 and 8461/2002 in CS(OS) 1175/2002
Appellants: Hi-Tech Pipes Ltd.
Vs.
Respondent: Asian Mills Pvt. Ltd.
Sanjay Kishan Kaul, J.
Counsels:
For Appellant/Petitioner/plaintiff: Amarjeet Singh and Mohini, Advs
For Respondents/Defendant: Pravin Anand and Nidhi Chopra, Advs.
JUDGMENT
Sanjay Kishan Kaul, J.
IA 6198/2002 (U/O 39 Rs 1 & 2 CPC) & is 8461/2002 (U/O 39 R 4 CPC)
1. The plaintiff has filed a suit for perpetual injunction restraining piracy of trade mark,
copyright, passing off and rendition of accounts in respect of the mark 'Gujrat' in
relation to his products steel pipes, etc. The defendant is selling 'MS ERW' pipes under
the trade name 'Gujarat'.
2. The plaintiff company claims to have been established in the year 1985 and started
manufacturing steel pipes since 1988. The trade mark 'Gujrat' is stated to have been
adopted in the year 1985 by the predecessor of the plaintiff and the plaintiff has been
using it since 1988. The said trade mark is stated to have acquired secondary meaning
and distinctiveness on account of its open, regular, continuous, extensive and exclusive
use coupled with large scale publicity and advertisement. The plaintiff is stated to have
filed an application for registration of the trade mark in respect of all kinds of steel
tubes, pipes falling in class-06 on 06.12.1994 before the Registrar of Trade Marks, New
Delhi. The total sales figures of the product have been given in Para 10 of the plaint as
under:

49
3 . The purchasers of the pipes are stated to be general labourers, illiterate or semi-
literate purchasers, mechanics, plumbers, builders, etc. and if the test of effect on the
mind of an unwary class of purchasers is applied, it is stated that any deceptively
similar mark was liable to cause confusion. The defendant-company is alleged to have
been established recently and started using the name 'Gujarat' under application no.
901936 and are the owners of copyright under no. A-60552/2002.
4 The plaintiff has alleged that the defendant is attempting to pass off his goods as that
of the plaintiff by use of the trade mark 'Gujarat'.
5. The plaintiff filed an application for interim relief is No 6198/2002 along with the suit
and ad interim ex parte orders were granted on 22.07.2002. The defendant has entered
appearance and filed its written statement. The defendant has also filed an application
for vacation of stay vide application No 8461/2002.
6 . Learned counsel for the defendant submitted that insofar as the disposal of the
interim application is concerned, the same is a matter of pure question of law and
though issues have been framed and evidence directed to be recorded, the application
can be considered de hors the same.
7. Learned counsel for the defendant contended that there could never be an exclusive
right in favor of the plaintiff in respect of the trade mark 'Gujrat' On the other hand,
learned counsel for the plaintiff submitted that the defendant by its notice dated
26.06.2002 had claimed exclusive right in the word 'Gujarat' calling upon the plaintiff to
stop the use. It is only in response thereto when the plaintiff submitted that it was the
prior user, did the defendant change its stand and claimed that there could not be
exclusive user in the word 'Gujrat' as the same is a geographical name and cannot be
termed as a trade mark. The plaintiff's contention thus is that the defendant cannot shift
the stand and is bound by the admission in the legal notice. Learned counsel for
defendant seeks to explain away the said stand on the basis that the defendant was not
properly legally advised, and on proper legal advise being rendered, has taken the
appropriate stand.
8. In my considered view, it cannot be said that the defendant is precluded from raising
the legal issue. No doubt the defendant initially wanted the plaintiff to restrain itself
from using the trade mark, but was informed that the plaintiff is a prior user . Over this
issue, there is really no doubt. However, the question remains as to whether 'Gujarat'
per se cannot be a trade mark. This is an aspect of law which is sought to be contended
by learned counsel for the defendant and there cannot be any estoppel or admission
against law. It is a different matter whether the said plea of the defendant can be
sustained or whether the same would be dependent on the nature of evidence to be led
arising from the claim of the plaintiff being a prior user.
9 . Learned counsel for the defendant has proceeded on the basis that the plaintiff be
assumed to be a prior user and then the proposition be tested whether it is permissible
for the plaintiff to have exclusivity for the user of the trade mark 'Gujrat'
10. Learned counsel for the defendant submitted that geographical terms can be used
as a trade mark only in certain exceptional situations as discussed hereinafter.
11. Thus if a place is geographically insignificant whether by reason of population or
otherwise, it may be possible to adopt the name as a trade mark. This is stated not to
be the position in case of 'Gujarat'. The present case is stated to be one of geographical
mis-description as the plaintiff is admittedly based in Delhi and has no operation or

50
commercial nexus with the State of Gujarat. It was thus submitted that the plaintiff is
attempting to mislead the consumers, the purchasing public and the trade into believing
that steel pipes originate or are manufactured in Gujarat. On the other hand, the
defendant hails from Gujarat and is incorporated in the said State. Thus insofar as the
defendant is concerned, it was submitted that the use of the trade name 'Gujarat' is an
attempt to describe the origin of goods, which is bona fide and amounts to descriptive
usage of the mark.
12. Learned counsel for the defendant submitted that 'Gujarat' is a prominent State of
India, and in its ordinary or geographical significance, it is inherently neither distinctive
nor adapted to distinguish or capable of distinguishing the goods of the plaintiff from
those of others. An illustration of this is sought to be given by the fact that on a random
internet search of the word 'Gujarat' on a single search engine, there were 5,13,000
results as opposed to only 36 hits for a lesser known place like Dodaballapur. State of
Gujarat is stated to be the hub of industrial activity and the plaintiff's acts are
detrimental not only to the defendant, but also to several other members of the trade
who have a genuine right to use the word' Gujarat' as a source indicator of their goods.
It was thus submitted that the plaintiff seeks to wrongfully acquire monopoly over the
use of name of State of Gujarat.
13. In order to substantiate the pleas, the learned counsel for the defendant referred to
McCarthy on Trademarks and Unfair competition which dealt with the issue of false
designation of geographical origin in para 14:23 where it was observed as under:
A geographic designation that is used with goods that do not come from the
place named by the designation, and which leads consumers to buy under a
misapprehension as to origin, is probably deceptive. This is merely a form of
false advertising. If a geographically generic term is used falsely by one who is
not in fact selling goods accurately described by the term, then this is clearly a
deceptive use. The use of a geographical term that might cause deception as
well as confusion will lead to an inquiry as to the motive of defendant.
14. Learned counsel thus submitted that what the plaintiff is doing is actually a form of
false advertising. Learned counsel referred to the Division Bench judgment of the
Calcutta High Court in the Imperial Tobacco Company Limited v. Registrar of Trade
Marks and Anr 1977 SC 413. The subject matter of the dispute therein was a wrapper of
packet of cigarette bearing the device of snow clad hills in outline with the word 'Simla'
written prominently. T he Deputy Registrar of Trademarks held that though the trade
mark was composite in character, its essential feature was 'Simla'. The similarity in its
only and obvious signification is a well known geographical name and the chief town of
a State, and further, the word 'Simla' was inherently not adapted to distinguish the
goods of any particular trader. Insofar as the plea that mark had become distinctive on
the material date by reason of extensive sales and advertisement, it was held that it
would be unwise to accept the trade evidence as conclusive on question of acquired
distinctiveness.
15. The decision of the Deputy Registrar was impugned before the High Court. It was
held that the distinctiveness of the trade mark in respect of a geographical name which
makes it capable of distinguishing the applicant's goods is vital and essential element
for the purpose and such distinctiveness is not possible for any geographical name in its
ordinary significance. Thus 'Simla' was held to be a prominent city, capital of Himachal
Pradesh, well known in the country and abroad in its ordinary or geographical
significance and it was inherently neither distinctive nor adapted to distinguish or

51
capable of distinguishing the goods of the appellant as a particular trader from those of
others. The Division Bench further observed that courts of law have further imposed a
condition that no trade mark should be allowed to be registered which may hamper or
embarrass the trader or trade now or in future in respect of the place or country which
is proposed to be registered.
16. Learned counsel for the defendant thus submitted that only if a geographical name
has inherent distinctiveness, can the same acquire distinctiveness. Learned counsel
referred to the judgment of House of Lords in re: Yorkshire Copper Works Limited v.
Registrar of Trade Marks 1952 69 RPC 207. The House of Lords held that the Registrar
must consider both whether a mark is inherently adapted to distinguish and whether it
is in fact adapted to distinguish. The mark 'Yorkshire' although in fact adapted to
distinguish the applicant's goods was inherently not adapted to distinguish goods of any
trader and the trade mark was held not to be distinctive and the application rightly
rejected and the test laid down was that a geographical name can only be inherently
adapted to distinguish the goods of A when you can predicate of it that it is such a
name as it would never occur to B to use in respect of similar goods. The illustrations of
such names as classic examples given were 'Monte Rosa' cigarettes or 'Teneriffe' for
boiler plates. Learned counsel for the defendant also referred to the treatise of P.
Narayanan on The Law of Trademarks and Passing Off (Fifth Edition) dealing with the
issue of registration of geographical names in para 10.12 which is as under:
3. REGISTRATION OF GEOGRAPHICAL NAMES
10.12 Principles same as for descriptive words Although a geographical name
or a word indicating geographical origin is not prima facie capable of
distinguishing it may be considered for registration upon evidence of acquired
distinctive character by use of the word as a trade mark in relation to particular
goods or services. The name of a place when applied to any goods will on the
face of it indicate that the goods are manufactured in that particular place; in
other words it is descriptive of the place of manufacture. Thus the principles to
be applied to the registration of a geographical names are analogous to those
for the registration of descriptive words and vice versa.
Just as a manufacturer is not entitled to a monopoly of laudatory or descriptive
epithet, so he is not to claim as his own a territory, whether country or district
or town, which may be in the future, if it is not now, the seat of manufacture of
goods as his own. A geographical name can only be prima facie capable of
distinguishing the goods or services of one person from those of others when
one can predicate of it that it is such a name as it would never occur to others
to use as a trade mark in respect of his similar goods or services.
17. Learned counsel for the defendant next referred to the judgment of the Chancery
Division in the matter of application by Liverpool Electric Cable Company; Volume XLVI;
Reports of Patent, Design, and Trade mark Cases; Page 99. It was held that the word
'Liverpool' was not prima facie capable of distinguishing electric cables of the applicant
or becoming distinctive of them. 'Liverpool' was one of a class of geographical names
which were of such importance that that the name ought not to be registered to any one
trader. 'Liverpool' was held to describe the common characteristic of vast quantities of
goods, namely that they come from Liverpool, and that the phrase 'Liverpool Cables'
Therefore meant not the cables of the applicant company, but cables manufactured or
dealt in at 'Liverpool' Learned counsel for the defendant thus submitted that 'Gujrat'
falls in the same category and would be geographical name which would only occur to

52
fellow traders. It would not fall in the category of geographical names with inherent
distinction as in the case of 'Luxor', which is a place in Egypt and is used as a trade
mark for pens. Such a name could never occur to other manufacturers of pen.
18. Learned counsel for the defendant lastly referred to the judgment of the House of
Lords in A.Bailey & Co. Ltd v. Clark, Son & Morland, Ltd Volume LV; Report of Patent,
Design, and Trade mark Cases Page 253. The controversy related to the registration of
trade mark 'Glastonburys' in respect of slippers, slipper-shoes and motor over shoes.
Lord Maugham observed as under:
The Respondents had in fact begun to use the word 'Glastonburys' as a trade
mark applied to their slippers in the year 1931. It is agreed that Glastonbury is
a geographical name and that the addition of the letter 's' at the end of it makes
no difference to the questions which your Lordships have to determine. It is a
word which could not be registered as a trade mark under any of the first four
paragraphs of Section 9, and in the circumstances of the case it could only be
registered at all under paragraph (5) upon evidence that it was distinctive, a
word which in this connection is defined to mean; adapted to distinguish the
goods of the proprietor of the trade mark from those of other persons The
paragraph further provides that ' in determining whether a trade mark is so
adapted, the 'tribunal may, in the case of a trade mark in actual use' - which
was here in the case - take into consideration the extent to which such user has
rendered 'such trade mark in fact distinctive for the goods with respect to which
it is 'registered, or proposed to be registered'.
Lord Russel of Killowen in the same judgment observed as under:
The word 'Glastonburys' is an obviously geographical name indicating a
locality, namely, the town of Glastonbury. In the town of Glastonbury there are
( and were at the date of the registration) two manufacturers of these sheepskin
slippes, namely, the appellants and in the respondents. The town of
Glastonbury enjoys a reputation connected with sheepskin slippers, arising
from the fact that it is famous for its efficient tanning of the sheepskins with the
wool on, which are used in their manufacturer. The buyer for the shoe
department of Frederick Gorringe, Limited, testified as follows: It is customary
for manufacturers of slippers whose factories are not situate in Glastonbury to
make a big selling point of the fact that the skins from which their slippers are
made were either tanned or finished in Glastonbury, and they Therefore expect
to obtain better prices solely for the reason that their skins had been treated in
Glastonbury. I have always been prepared to pay more for a slipper which had
been produced from a skin treated in Glastonbury than one treated elsewhere,
as there is something in the Glastonbury tanning which does not appear to be
produced elsewhere.
19. In view of the aforesaid, it was held that the word 'Glastonburys' ought not to have
been registered as a trade mark.
20. Learned counsel for the plaintiff, on the other hand, has emphasised the fact that
'Gujrat' has never been known for tubes and thus can be used as a trade mark. The test
according to learned counsel for the plaintiff is that if a town is known for a particular
product then it would amount to a geographical indication and cannot be used. Thus
'Kolhapuri' cannot be used for chappals while while 'Kolhapuri' can be used for a
perfume. Learned counsel for the plaintiff emphasised that the cases cited by the

53
defendant are of registration of a mark. This would imply the proposed use and not a
consistent past use.
2 1 . Learned counsel for the plaintiff referred to the judgment in Imperial Tobacco
Company Case (Supra) to emphasise that even while dealing with the word 'Simla' the
principle of law which was laid down was that there has to be strong evidence of
distinctiveness. Similar would the situation with the judgment in Yorkshire Copper
Works Limited's case (Supra). Thus the mark can qualify for registration if it acquires
secondary significance.
2 2 . Learned counsel for the plaintiff referred to the treatise of Mr. P.Narayanan to
substantiate the plea that there can be a possibility of secondary significance to the
name by user as a trade mark over a period of time. The application of the plaintiff was
filed in the year 1994 and the plaintiff continued to use the same till the year 2000. In
fact the user of the plaintiff as per the material furnished is even for a period longer
than that. It was thus submitted that there could not occasion for the defendant to file
an application for registration thereafter and the object was to pass off its goods as that
of the plaintiff.
23. Learned counsel emphasised that the principles to be applied for a geographical
name is the same as for descriptive words.
24. Learned counsel referred to the judgment of the learned Single Judge of the Gujarat
High Court in Bharat Tiles and Marble Private Ltd v. Bharat Tiles Manufacturing
Company 1978 Guj LR 518 to advance the proposition that merely because a trade
name is geographically descriptive, it cannot be urged successfully that the proprietor of
the trade is not entitled to succeed in a passing off action provided he is able to
establish the requisite grounds of deceit by the use of similar names though it may be
of relevant consideration when an application for registration is made Under Section 9
of the Trade and Merchandise Marks Act, 1958. It was held that the name of a business
may acquire goodwill in the course of time and the courts would always protect them,
and thus, if a rival businessman carries on his business in a name which is calculated to
deceive or which may divert the business from the plaintiff to the defendant or may
occasion confusion between the two businesses, a passing off action would lie. It would
be useful to reproduce para 12,13 & 16 as under:
12. What then are the relevant principles, which the court should bear in mind
in passing off action like the present one. The principles are well known and
settled by the authorities. The name under which a business trades will almost
always be a trade mark and it is always considered difficult, if not impossible,
to distinguish between the trading business and a trade name (vide Reuter
(R.J.) Co. v. Muhlens (1958) 70 R.P.C. 235. It is no doubt true that where the
trade name of an individual business man is geographically descriptive, the
mere fact of adoption of the same or similar geographically descriptive trade
name would not by itself establish a cause for the relief in a passing off action.
The aggrieved party has to prove, as in any other passing off action, that the
use by the rival party of his trading style is calculated to lead to the belief that
the business of the rival party is the business of the aggrieved party (see Office
Cleaning Service v Westminsiter Window and General Cleaners (1946) 63 RPC
3 9 . Merely because a trade name is geographically descriptive, it cannot be
urged successfully that the proprietary of that trade name is not entitled to
succeed in a passing-off action, provided he is able to establish the requisite
grounds of deceit by the use of similar name, though it may be a relevant

54
consideration when an application for registration is made under section 9 of

the Trade and Merchandise Marks Act, 1958. It is equally significant to note that
the name of a business will acquire a goodwill in course of time and the Courts
always protect them. A passing-off action would certainly lie at the instance of
a business man, if his rival caries on his business in the name which is
calculated to deceive or which may divert the business from the plaintiff to the
defendant or it may occasion a confusion between the two businesses (vide
Daimler Motor Car Co.(1904) Ltd. v. London Daimler Co. Ltd (1907) RPC 379
13. The crux of the problem in passing off action of business or goods is that :
'Is a name so nearly resembling the name of another firm as to be likely to
deceive? And that question is to be determined by the Court.
16. In Brestian v. Try (1958) RPC 161 a similar dispute between two ladies
Hairdressers concerning the right jto use the name Charles of London in
relation to their respective business arose before the Court of Appeal. Both the
parties to the action carried on business as Ladies Hairdressers under the
trading name 'Charles of London', Mr. Karl Brestian, the plaintiff, having
branches in London, Wambley and Brighton, carried on his business under
wholly owned private Company Maison Charles Limited' and the defendant, Mr.
Charles Try, carried on business in Tronbridge under the wholly owned private
Company 'Charles of London (Coiffeur) Ltd'. The plaintiff's use of the name was
added from 1952 while of the defendant was from 1955. Danckwerts, J.held
that there was a certain amount of justified apprehension of potential customers
of the plaintiff being diverted to defendant and, Therefore, g ranted injunction
restraining the defendant from using the name 'Charles of London'. The
defendant carried the matter before the Court of Appeal. Jenkins L.J. In his
opinion, stated the law applicable in action of such kinds in the following
terms:
The law applicable in an action of this kind is not, I apprehend, really
open to doubt but it was the subject of some discussion in the course
of the hearing, and perhaps I should briefly deal with it before passing
to a further examination of the facts. In an action such as this the
plaintiff in order to succeed must show first that he has a proprietary
interest in the name, or perhaps, it is more accurate to say in the
goodwill attaching to the name, and secondly, that the adoption of
name by the defendant brings about a tangible risk of damage whether
in the form of diversion of customers or confusion of the plaintiff's and
defendant's businesses or both. To that one must add that confusion in
itself is held to import a sufficient risk or damage to maintain the
action.
Romer L.J. In his concurring opinion stated the position of law as under:
.. If a name in which a plaintiff has a substantial goodwill is likely to be
confused with a trade name which is adopted by a defendant, then
passing-off is established. The law then assumes that damage will
follow. Once a plaintiff has established substantial goodwill in a name,
he has a property in it which he is entitled to have protected against
passing off. When the plaintiff has established that property, the only
question is : is there a likelihood in the future that, if the plaintiff and
the defendant trade as the Courts think reasonably probably, confusion

55
will arise from the trade name adopted by the defendant?

DOrmered L.J. in his concurring speech stated the legal position in the
following terms:
The plaintiff must prove a property in the name which he claims that he
is entitled to protect and to prevent the defendant using and the name
used by the defendant must be proved to be calculated to cause
confusion in such a manner that either damages is actually caused or
will be apprehended in record to the plaintiff's trade.
25. Learned counsel for the plaintiff sought to substantiate the aforesaid plea that if the
submission of the learned counsel for the defendant were to be accepted then in Indian
Oil Corporation or Bharat Petroleum, the word 'Indian' or 'Bharat' could not be used
exclusively.
2 6 . Learned counsel for the plaintiff referred to the judgment of the learned Single
Judge of this Court in Geepee Ceval Proteins and Investment Pvt.Ltd v. Saroj Oil
Industry 2003 (27) PTC 190 delhi. The plaintiff was engaged in the business of
manufacturing of edible oils and selling its various oil products under the trade mark
'Chambal'. The defendant was selling oil under the trade mark 'Chambal Deep' Interim
injunction was granted on the basis that the plaintiff had incurred substantial
expenditure on advertisement to build its good reputation and the trade mark 'Chambal'
had acquired distinctiveness with the plaintiff's product. The plaintiff was a prior user of
the trade mark 'Chambal' and the products were identical. It may be noticed that the
plea raised by the defendant was that the word 'Chambal' being a geographical name
was not entitled to protection while counsel for the plaintiff argued that the action was
one of passing off Under Section 27(2) of the Trade and Merchandise Marks Act, 1999.
The defendant contended that its industry was situated on the bank of river Chambal
whereas the plaintiff's industry was far off from the said place, and thus, the defendant
had superior right to use the word 'Chambal' for selling its products in comparison to
the plaintiff's. In this context, it was observed as under:
6 . On behalf of the defendant it is vehemently canvassed that the industry of
the defendant is situated on the bank of river Chambal whereas the plaintiff's
industry is far off from this place, Therefore, the defendant has superior right to
use the word 'Chambal' for selling its products in comparison to the plaintiff's.
It is also argued that Section 9(10)(a) of the Act prohibits the registration of
the geographical name as trade mark and 'Chambal' is the name of river which
flows through the 'Chambal' ravines and as such it is a geographical name to
which the plaintiff cannot claim exclusive right. Certain judgments as referred
to in the arguments of the counsel for the plaintiff have been referred in
support of tis contention.
8. The word 'Chambal' is a geographical name and a geographical name can be
registered as a trade mark if its distinctiveness is proved. Therefore, section 9
of the Act does not put a blanket ban on the registration of a geographical
name as a trade mark. Moreover, the present case is based on passing off the
goods of the defendant as that of the plaintiff's goods, Therefore, Section 27 of
the Act would save the action of the plaintiff.
9 . In Bharat Tiles & Marbles Pvt. Ltd (Supra) the trademark involved was
'Bharat' and it was held that mere fact that geographical descriptive name is
adopted is not always a defense in passing off action and an injunction was

56
granted. In M/s Hindustan Radiators Co. (Supra) the trademark involved was
'Hindustan', which is a geographical name, and an injunction was granted. In
M/s Khetu Ram Bishambar Das (supra) the disputed trademarks were 'Himalaya'
and Himachal', both geographical names and were registered was trademark
and the injunction was granted. In Shri Jawaharlal & Anr. (supra) the trademark
'Bharat', which was a geographical name and an injunction was granted. In
Bajaj Electricals Ltd.(supra) the trademark was 'Bajaj' which was a surname and
was registered as a trade. In a number of other suits which have been referred
on behalf of the plaintiff the trademark was 'Gwalior' and 'Oxford which are
geographical names and the injunction was granted. In South India Textiles &
Ors (supra) the trademark was 'South India' and it was held that it does not
affect the Emblem Act. In Sunder Nagar Association Regd. & Anr (supra) it was
held that 'Sunder Nagar', a geographical name, can be a trademark. Same view
was taken in Banwari Lal Sham Lal (supra) where 'Landra' a geographical word
was upheld as trademark. In Mahendra & Mahendra Paper Mills Ltd. (supra) the
work 'Mahendra' was accepted as a registered trade mark and an injunction was
granted. All these judgments would show that geographical name, if it had
acquired distinctiveness, can be used as a trademark and may even be
registered under sub section (2) of Section 9 of the Act.
10. In Imperial Tobacco of India Ltd (supra) the registration of the trademark
'Shimla' was involved and case arose out of the proceedings before the
Registrar of Trade Marks. It was not a case of passing off so does not apply to
the facts of the case in hand. In R.S.K. v. Raghavan Trading as R.S. Krishna &
Co. (supra) the case related to Thennamarakkuddi Oil. Thennamarakuddi is a
village in Tamil Nadu, which was famous for manufacturing a particular type of
oil. The case arose out of the registration of the trademark which was being
used by a number of traders for selling Nilgiri Oil and it was held that the word
'Thennamarakuddi could not be appropriated by any one trader since it was not
distinctive of the plaintiff so registration of the said trademark was declined. IN
M/s Surya Agro Oils Ltd.(supra), it was held that the word 'Surya' cannot be
registered as a trademark. The decision turns on its own facts because in a
number of other cases the word 'Surya' and 'Sun' have been protected as
registered trademark where they have become distinctive of the plaintiff. In
Hindustan Pencils Pvt. Ltd. & Ors (supra) the word 'Nataraj' was not protected
but the judgment showed that it was decided on its own peculiar facts which
are inapplicable to the present case since it is not a case of the registration of
trademark. In fact, the counsel for the plaintiff has mentioned a number of well
known trademarks like Gwalior Suitings, Ganga Mineral Water, Taj Mahal
Tea,Lal Quila Rice, Charminar Cigarette, Hindustan Petroleum, etc. etc. which
are geographical names and action based on them has been upheld. Having
regard to the case law cited and the fact of the present case, prima facie, it may
be held at his stage that Chambal, although it is a geographical name, is
capable of becoming a trademark and action for passing off based on it could
be maintained.
27. Learned counsel for the plaintiff also referred to the judgment of the learned Single
Judge of this court in Bikanervala v. New Bikanerwala; 2005 (30) PTC (Delhi) 113.
Interim injunction was granted restraining the use of trade name/trade mark 'Bikaner
Walla'. Though the trade name contained a geographical name, but conveyed a distinct
and specific meaning in common parlance in view of the user by the plaintiff of over
100 years. 'Bikaner' is a well known geographical city of Rajasthan, which is known and
recognized for a particular type/kind of food articles for human consumption.

57
2 8 . Learned counsel for the plaintiff lastly referred to the judgment of the Division
Bench of the Karnataka High Court in The Nilgiri Dairy Farm v. S.A. Rathnasabhapthy
1975 KL J 505 wherein 'Nilgiris' was a geographical name and 'Dairy Farm' was
description of the business. The trade name and trade mark being used : 'Nilgiri Dairy
Farm' and 'Nilgiris'. The milk used in manufacture of dairy products came from
Coimbatore District and not from Nilgiri District. It was held though the words 'Nilgiris'
was a geographical name and 'Diary Farm' was descriptive of the business, the name
Nilgiri Dairy Farm had become a trade name to the extent necessary to maintain an
action for passing off, and as the plaintiff had acquired valuable reputation, the court
would restrain the unauthorised use of that name and mark in a manner calculated to
deceive the public and cause damage to the plaintiff.
29. Learned counsel for the defendant in the end sought to rely upon the judgment of
the House of Lords in re: York Trademark Case; 1984 RPC 231. It was held that the
words 'capable of distinguishing' in the Trademark Act, 1938 Section 10 embraced not
only 'capable in fact of distinguishing' but also 'capable in law of distinguishing'. In the
case in question, the geographical significance of the mark 'York' was held to have
rendered it incapable in law of distinguishing the applicant's goods, even though the
mark was 100 per cent factually distinctive of those goods.
3 0 . On consideration of the submissions of learned counsel for the parties, in my
considered view, a material fact to be kept in mind is that the present action is one
really of passing off. A number of judgments have been referred to by learned counsel
for the defendant. They all are in respect of the parameters to be fulfilled before
registration of a trade mark.
31. The paragraph referred to by learned counsel for the defendant from the treatise of
McCarthy on Trademarks and Unfair competition propounds the principle of false
advertising which would arise by geographical designation that is used with the goods
which do not come from the place named by the designation. The trade mark in
question is 'Gujrat'. It is general in nature since it cannot be said that the whole of
Gujarat is known for any particular business/trade. It is not of a particular village or
town or city which may be specifically known for goods of a particular origin. It is
nobody's case that Gujarat is known for its steel pipes though Gujrat as a State may be
known for its business enterprise and a large number of manufacturing units. The word
'Gujrat' is not being used as descriptive of the origin of the goods in the present case.
The treatise of P.Narayanan also explains that for purposes of registration, a
geographical name may be so registered upon evidence of acquired distinctive character
by use of the word as a trademark in relation to particular goods/services. The position
i s more or less same with the other examples give by the defendant in relation to
registration of Liverpool Cables, Glastonburys' slippers, Simla for Tobacco and
Cigarettes which have been explained in the judgments referred to above.
32. There is a distinction to be made in respect of an application for registration of a
mark which is really for proposed use and an action for passing off where reputation
and goodwill associated with the mark being used by the plaintiff has a material
bearing. Thus though Section 27(1) of the Trademark Act, 1999 stipulates that no
person shall be entitled to institute any proceedings to prevent or recover damages of
infringement of an unregistered trademark, right of action against any person for
passing off the goods is not extinguished.
33. The important aspect to be considered is whether the word 'Gujarat' has acquired
secondary significance and has distinctiveness in respect of the steel pipes produced by

58
the plaintiff. This principle finds support from the judgment of the learned Single Judge
of the Gujarat High Court in Bharat Tiles and Marble Private Ltd Case (Supra) as it was
held that merely because a trade name is geographically descriptive, it does not imply
that an action for passing off cannot be maintained provided the plaintiff is able to
establish the requisite grounds of deceit by use of similar name.
3 4 . It is not disputed that both the marks 'Gujrat' and 'Gujarat' are similar if not
identical. The only issue is whether the plaintiff can abrogate to itself the use of the
said trademark for its steel pipes or preclude the defendant from using the same in
respect of the same product on the ground that such sale is an attempt by the defendant
to pass off its goods as that of the plaintiff since by consistent prior use, the mark is
associated with the product of the plaintiff.
3 5 . It is interesting to note that GeepeeCeval Proteins and Investment Pvt Ltd Case
(supra) there was an element of similarity of proposition. The word ' Chambal' was
pleaded to be incapable of being protected being a geographical name. The industry of
the defendant was situated on the bank of the river Chambal whereas plaintiff's industry
was far away from the place. Thus superior right to sue the word 'Chambal' for selling
its products in comparison to the plaintiff's products was pleaded. This is also the
position in the present case where defendant pleaded that they are manufacturers
located in Gujarat while the plaintiff has nothing to do with Gujarat. The learned Single
Judge considered the judgments in Bharat Tiles and Marble Private Ltd Case (Supra) as
also in the Imperial Tobacco Company Case (Supra) to come to the conclusion that
Imperial Tobacco of India Limited Case (Supra) would not apply since that was not a
case of passing off. The cases where injunction was granted in respect of the
trademark: Himalaya and Himachal, were considered. Similar was the position with the
trade mark 'Gwalior' and 'Oxford'. Even, Sunder Nagar, a geographical name was held
to be a trademark.
36. In view of the aforesaid, it cannot be said that the plaintiff is dis-entitled on the
ground of geographical mis-description as the trade mark 'Gujrat' is not being used to
indicate the source of origin.
37. The only question to be considered is whether the continuous prior user of the
mark by the plaintiff entitles it to an exclusive user and restraint order against the
defendant.
3 8 . A perusal of the plaint and documents shows that sufficient material has been
placed on record to substantiate the plea, at least prima facie, of such user over a
period of time from the sales running into crores under the said trade mark starting
from 1987-88 till 2001-02, the details of which have already been mentioned
hereinabove, it does appear prima facie that the name 'Gujrat' has acquired secondary
meaning and distinctiveness and has thus come to be exclusively identified and
recognised with the products of the plaintiff. The defendant is a much later entrant in
the field. The various sample invoices and other documents placed on record do show
such vast sales and trade in the particular product under the trade mark/name Gujrat
has resulted in a situation where the trade mark/name has prima facie acquired
secondary significance and distinctiveness with the plaintiff's product. The use by the
defendant of the same trade name for the same nature of products does seem to be an
attempt at passing off its goods as that of the plaintiff's. The defendant in fact wanted
the plaintiff to restrain itself by a notice but on the plaintiff showing material of much
prior use decided to take a turn in its defense. It may also be noted that further enquiry
in this behalf can be made during the trial.

59
39. I am thus of the considered view that the interim orders granted on 22.07.2002 are
liable to be confirmed during the pendency of the suit restraining the defendant from
using the trade mark 'Gujarat' or 'Gujrat'.
40. is 6198/2002 is allowed and is 8461/2002 is dismissed leaving parties to bear their
own costs.
41. Needless to say that the views expressed are prima facie in nature and will not
effect the final disposal of the suit.

60
MANU/DE/0371/1987
Equivalent Citation: AIR1987Delhi353, 1987(1)ARBLR182(Delhi), 31(1987)DLT271, (1987)ILR 1Delhi138

Interim Application No. 989 of 1986 and Suit No. 639 of 1986
Appellants: Hindustan Radiators Co.
Vs.
Respondent: Hindustan Radiators Ltd.
Mahesh Chandra, J.
Counsels:
Anoop Singh, H.P. Singh and Rakesh Sawhney, Advs
JUDGMENT
The plaintiff
(1) M/S. Hindustan Radiators Company, Station Road, Jodhpur, a partnership concern,
has filed this suit for permanent injunction against passing off and using its trading
style and trade marks by M)s. Hindustan Radiators Limited, Model Town, Delhi, on the
allegations that the plaintiff was carrying on business since 1959 and had been
manufacturing about hundred types of radiators for use in various vehicles like buses,
trucks, cars, jeeps, cranes and compressor etc. under the marks "HINDUSTAN Radiator
"and with the initials "H. R.", short form of 'Hindustan Radiator on the radiators
manufactured by it and due to extensive, long and continuous use the trading style
'HINDUSTAN Radiator CO.' and the trade mark 'HINDUSTAN RADIAtor/H. R.'" known and
associated with the excellent quality of radiators. manufactured and sold and offered for
sale by the plaintiff ; that the plaintiff has since 1959 sold radiators approximately of
the value of seven crores of rupees and their present annual sale was approximately
fifty lakhs of rupees and the plaintiff's main market is in Delhi ; that the plaintiff has
been supplying "HINDUSTAN RADIAtorS" to M/s. Mysore State Road Transport
Corporation, Mohindra and Mohindra, Bombay, State Transport, Maharashtra, Kirloskar
Pneumatic Company. Pune and several other leading concerns, and has also been
exporting Hindustan Radiators outside India and has been taking part in exhibitions and
has been awarded Udyog Patras ; that the plaintiff has been advertising its radiators
with its trade style and marks in various leading trade magazines and has spent
approximately two lakhs of rupees on the advertisements and trade promotion and its
present annual expense on advertisements is to the tune of Rs. 30,000.00 ; that due to
long, continuous and extensive user of the trading style "HINDUSTAN Radiator CO."
they are known in the public as 'Hindustan Radiator Wale' and their radiators are asked
for as 'Hindustan Radiators or H. R. Radiators' ; that the plaintiff has applied for
registration of trade marks "H. R." and "HINDUSTAN RADIAtor" in the Trade Marks
Registry, New Delhi ; that apart from Government and semi-government bodies, the
purchasers and intending purchasers of plaintiffs Hindustan Radiator H. R. radiators
include illiterate persons, mechanics, drivers as well ; that about a fortnight before the
filing of the suit, the plaintiff has come to note that the defendant had incorporated a
company under the name "Hindustan Radiators Limited" with their registered office at

61
Delhi and the main business thereof as evident from trading style and from the brochure
issued by the defendant is of manufacture of radiators for cars, trucks, tractors etc. and
the defendant is going to bring radiators on commercial scale into the market soon ;
that it has further come to the notice of the plaintiff from the brochure issued by the
defendant that the defendant is also using and intend to use the trade mark "H. R." as
their mark in respect of their radiators ; that the trading style of the defendant is exactly
similar to that of the plaintiff and likewise the mark used by the defendant is also
similar and same and the purchasers and intending purchasers would find it difficult to
differentiate between the goods of the plaintiff from the goods of the defendant in view
of the similarity in the name of the trading style and this would result in passing of the
goods of the defendant as that of the plaintiff and to the detriment of the plaintiff and
the public and the intending customers are likely to consider the goods of the defendant
as that of the plaintiff that even otherwise the public and persons in trade have started
making enquiries from the plaintiff about the plaintiff being converted into a limited
company under the Companies Act and the public is likely to invest and purchase the
defendant's company's share on the assumption and belief that the plaintiffs have
converted themselves into a limited company and as such the defendants have collected
and are likely to collect share money on the goodwill, name and reputation of the
plaintiff ; that the defendant's trading style and the trade marks being similar, confusion
between the business and the goods of the parties would cause irreparable loss of
business, goodwill, and reputation of the plaintiff ; that the plaintiff being well known
in the radiators business, the defendant must be aware about the popularity, goodwill
and name of the plaintiff and the adoption of the trading style "HINDUSTAN Radiators
LIMITED" and the trade mark Hindustan RADIAtor/H R." is not honest from the very
beginning and is tainted and the defendant's intention do not seem to be honest as the
defendant wants to trade upon the goodwill, name and reputation of the plaintiff which
the plaintiff has built up during the last about 27 years and the conduct of the defendant
is fraudulent ; that the defendant has adopted the same trading style and similar trade
mark to create deliberate confusion with. the business and goods of the plaintiff and
take unlawful advantage from the plaintiff's reputation, goodwill, name and long
standing ; that the defendant is causing deception and confusion with the plaintiff's
business and divert their customers and hence, the plaintiff is entitled to restrain the
defendant from using the trading style "HINDUSTAN Radiators LIMITED" and trade mark
"HINDUSTAN RADIAtor/H. R." and hence, this suit for permanent injunction.
(2) The defendant has contested this suit of the plaintiff, inter alia, on the ground that
the plaintiff is guilty of misrepresentation and suppression of material facts and the
trading style of the plaintiff "HINDUSTAN Radiators COMPANY" is visually, phonetically
and substantially different from that of the defendant and the plaintiffs have not been
using "H. R." as the only trade mark but have also been using trade marks such as Hrc,
Hac and Bradco ; that the plaintiffs have no right or title in the name or trade mark
because investigations made by the defendant have revealed that there are more than
3,000 units claiming to be manufacturers of radiators in India and at least ten of such
units have their trade name that bears the words "Hindustan Radiators" and all these
units have existed for the last ten to fifteen years and the plaintiff has not at any point
of time objected to the use of the name "Hindustan Radiators" in case of these firms or
units and as such the present suit of the plaintiff is malafide ; that even otherwise
letters "H. R." have been used even by Haryana Radiators Limited which shows that the
plaintiff has no exclusive right therein ; that the plaintiff cannot claim any monopoly in
the trade name "HINDUSTAN Radiators CO." or trade mark "HINDUSTAN RADIAtorS/H.
R." inasmuch as 'Hindustan' is a common name and common property of the entire
people of India and is a name of country and 'Radiator' is only descriptive term and as
such the plaintiff is not entitled to any injunction prayed for. It may be mentioned here

62
that it is disputed that the plaintiffs have been manufacturing radiators since the year
1959 but it is admitted that the defendant was registered on 2nd August, 1985. It has
also been urged that while the plaintiffs was functioning from Jodhpur, the defendant
was functioning from Delhi and, Therefore, they have entirely different fields of their
functioning and that any similarity in the trade name or the trade mark was purely
coincidental and not intentional and as such it is prayed that the suit of the plaintiff be
dismissed.
(3) In this suit the plaintiff has filed 1. A. 1989186 under Order xxxix Rules 1 & 2 read
with Section 151 of the Code of Civil Procedure on the same allegations for grant of ad-
interim injunction till the decision of the suit which has been contested by the
defendant, inter alia, on the same grounds as the suit and it is this application which is
sought to be disposed of by this order. I have heard the learned counsel for the plaintiff
and the defendant and have gone through the file and after giving my considered
thought to the matter before me, I have come to the following findings.
(4) Before the plaintiff can be said to be entitled to ad interim injunction it would be
necessary for the plaintiff to establish that he has a prima facie case in his favor and the
balance of convenience lies in the grant of ad-interim injunction so as to protect him
otherwise irreparable injury would be caused to him. In order to prove its prima facie
case the learned counsel for the plaintiff has drawn my attention to the fact that the
plaintiff has been in this business since 1959 whereas the defendant had got itself
incorporated in August, 1985. So far as the defendant's incorporation in August, 1985 is
concerned, it is admitted in the written statement by the defendant. As regards the
plaintiff being in this business, my attention has been drawn firstly to various purchase
orders, photostat copies whereof have been filed by the plaintiff. Copies of Purchase
order dated 15th July, 1959 of Mohindra & Mohindra Limited, purchase order dated 5th
September, 1962 of Mysore State Road Transport Corporation, purchase order dated
11th March, 1963 of State Transport, Maharashtra, purchase order dated 24th February,
1982 of Kirloskar Pneumatic Co. Ltd., letter dated 3rd December, 1983 of Rajasthan
State Mines and Minerals Ltd., letter dated 30-1-1983 of Prashant Khosla Pneumatics
Ltd., purchase order dated 30-4-1978 of Atlas Copco (India) Ltd., letter dated 7-1-1983
of J. K. Satoh Agricultural Machines Ltd.; letters dated 11-12-1984 & 15-6-1984 from
Air Force Station, Jodhpur, purchase order dated 6-7-1984 of Plasser (India) Pvt. Ltd.,
letter dated 26-11-1984 of Hindustan Zinc Ltd., letter dated 7-9-1982 of K. C. Khosla
Compressors Ltd., purchase order dated 31-8-1978 of Rajasthan State Road Transport
Corporation, purchase order dated 24-2-1982 of Kirloskar Pneumatic Co. Ltd., purchase
order dated 25-9-1976 of Krishi Engines Limited, inspection voucher dated 15-2-1982
of Hmt Limited, purchase order dated 15-12-1984 of Consolidated Pneumatic Tool
Company (India) Ltd., purchase order dated 23-4-1984 of Chief Ordnance Officer,
Controller of defense Accounts, letter dated 12-6-1984 from Executive Engineer,
Southern Railway, letter dated 18131-12-1980 from Tata Engineering and Locomotive
Company Ltd., letter dated 29-6-1985 from Maruti Udyog Limited, letter dated 21-11-
1985 from Acma, letter dated 4-6-1982 from Ashok Leyland Limited. letter dated 12-4-
1985 from Holman-Climax, of order dated 10-7-1985 from Jyoti Limited, purchase order
dated 25-10-1985 from J. K. Cement Works, letter dated 10-2-1986 from Hindustan
Petroleum Corporation Limited, order dated 19-5-1975 from Ongc, Tel Bhavan, Dehra
Dun, letter dated 16-12-1974 from Ongc, Ahmedabad, letter dated 9-10-1985 from High
Explosives Factory, Kirkee, Poona, letter dated 10-10-1985 from Indian Oil Corporation
Ltd., letter dated 28-7-1979 from Ingersoll-Rand (India) Limited., letter dated 19-9-
1979 from U. P. State Road Transport Corporation, letter from Directorate of Purchase &
Stores of the Department of Atomic Energy, letter dated 7-9-1977 from the Premier
Automobiles Limited, Inquiry letter dated 30-11-1979 from Bharat Aluminium Company

63
Ltd., letter dated 24-5-1982 of Tata Chemicals Limited, letter dated 17-7-1981 from
Gujarat Tractor Corporation Limited, letter dt. 16-3-1982 from Oil India Limited, letter
dated 22-2-1982 from Four Wheel Drives, Australia, letter dated 18-8-1983 from
Karnataka State Road Transport Corporation and purchase order dated 16121-8-1983
from the Association of State Road Transport Undertakings, New Delhi, are these
documents to which my attention has been drawn by the learned counsel for the
plaintiff which do go to show that the plaintiff has been in this business since 1959 and
has been since then running the said business. Similarly my attention has been drawn
to certificates of inspection dated 20th December, 1977 and 5th August, 1977 issued by
the Export Inspection Agency of Government of India: Delhi, which go to show that the
plaintiff has even been exporting its radiators. My attention has similarly been invited to
copy or registration-cum-membership certificate purported to have been issued by
Engineering Export Promotion Council to the plaintiff showing that the plaintiff has been
established, since January, 1960. This also shows that the plaintiff has been registered
as a factory also since 25th July, 1961 by the Director" of Industries, Rajasthan, Jaipur.
Similarly photostat copy of registration and license to work as a factory issued by the
State of Rajasthan to the plaintiff has also been filed which shows that amended license
was issued on 16th December, 1977 to the plaintiff. There is certificate of registration
on form ST-4 which is. valid from 13th August, 1959 in favor of the plaintiff . Letter
dated 14th August, 1964 from National Small Industries Corporation of the Government
of India shows that the plaintiff was enlisted with the said Corporation as well us for
supply of automobiles radiators and engine radiators etc. Similarly is the letter dated
5th May, 1961 from Small Industries Service Institute of Government of India, enlisting
the plaintiff for supply of radiators for cars, trucks and tractors for participation in the
Central Government Stores Purchase Programme. The plaintiff has likewise placed on
record photostat copy of license to manufacture copper and copper alloy tubes in the
year 1962 by the Central Excise. Then there is copy of certificate of registration of the
plaintiff as a partnership form with the Registrar of Firms, Rajasthan, Jaipur, issued on
6th August, 1962. A photostat copy of the partnership deed dated 1st April, 1973 also
has been filed by the plaintiff. Copy of license dated 30th December, 1961 purported to
have been issued by the Chief Controller of Imports & Exports of the Government of
India, to the plaintiff for export of its goods from India has also been filed. There are
other certificates of inspection purported to have been issued by the Export Inspection
Agency, Delhi, to the plaintiff on 9th October, 1972, 5th August, 1977, 10th November,
1978 and 20th October. 1977, copies whereof have been filed by the plaintiff. All these
documents further go to confirm that the plaintiff has been in this business since 1959.
Thus, prima facie, the plaintiff has established that the plaintiff has been in existence
since 1959 as against defendant which was incorporated in August, 1985.
(5) My attention has further been invited to the sales statement of the plaintiff for the
period 16th November, 1963 to 31st December, 1985 which prima facie goes to show
that net sales of the plaintiff during this period have been of the amount of Rs.
7,38,34,829.00 which by itself is indicative of the fact that the plaintiff must have
acquired distinctiveness as manufacturers and suppliers of various types of radiators
under its trade name and its trade mark "HINDUSTAN RADIAtorS/H. R." This further
goes to show that the trade name "Hindustan Radiators Co." has become distinctive of
plaintiff's business and consequently user of trade name "HINDUSTAN Radiators
LIMITED" by the defendant was likely or calculated to deceive or cause confusion and
injury to the business reputation of the plaintiff. The plaintiff has been in business for
the last more than 27 years as against the defendant who was incorporated in August,
1985. My attention on behalf of the .plaintiff has also been invited to various
pamphlets, brochures and souvenirs issued by the plaintiff for advertising its products
which would show that a good amount of money must have been by now spent by the

64
plaintiff on advertising its goods. Here is a case in which prima facie the plaintiff has
established that the plaintiff has been in the business of manufacturing and sale of
radiators since 1959 and that the plaintiff has been even exporting its products in
foreign countries and has had sales over rupees seven crores and has spent a
considerable amount on advertisements of its products.
(6) As against this, the learned counsel for the defendant has drawn my attention to
four documents which have been placed on record by the defendant, the first of which
is a letter dated 18th January, 1986 from Hindustan Radiators Corporation, Sanjay
Gandhi Chowk, G. T. Road, Panipat (Haryana). to the defendant which brings out that
the former firm is engaged in major repair work of radiators and had been serving the
replacement market only and that they were not in a position to supply Maruti radiators.
The other document is a letter dated 13th January, 1986 from Hindustan Auto Radiators,
G.T. Karnal Road, Delhi, to the defendant giving their quotation for water cooled
radiators for Hmt tractors. The third letter is dated 7th February, 1986 from Hindustan
Radiators Workshop introducing itself to the defendant with an offer of spare capacity
for manufacturing of radiators. There is another dated 10th May, 1986 from Haryana
Radiators Limited, Faridabad (Haryana) addressed to M/s. Asbestos & Belting Co.
quoting their rates of Ford radiator. These letters do not in any manner undermine the
case of the plaintiff. The submission of the learned counsel for the defendant in this
behalf is that these letters have been produced on record to show that there are other
firms with practically the same name and even initials in the same activity, which are
functioning and the plaintiff has not brought any case against them or has not
challenged their activities and consequently this suit is mala fide in so far as the
plaintiff has chosen to prosecute only the defendant. I do not think this argument would
be available to the learned counsel for the defendant, inasmuch as the plaintiff has in
this behalf stated in his replication to preliminary para 2 of the written statement that
"the plaintiffs are not aware about these business nor have the plaintiffs seen any
advertisement issued in any recognised paper in respect of the above said units as
alleged. It is denied that four units are there for last 25 years. The plaintiffs will take
action against those persons who are openly using the trading style which is deceptively
similar to those of the plaintiff's". The plaintiff has further denied categorically that the
trading style of the plaintiff has become common trade property.
(7) It has further been submitted by the learned counsel for the defendant that the
plaintiff is functioning at Jodhpur and Rajasthan whereas the defendant is to function
from Delhi and consequently the right of the plaintiff would not be infringed by the
defendant. However, keeping in view copies of various purchase orders placed on
record, it would be difficult to accept that the activity of the plaintiff is limited only to
Jodhpur or Rajasthan, rather from perusal thereof it can be gathered that the plaintiff
has its customers throughout India and even abroad and consequently it can be safely
concluded that the sphere of activity of the plaintiff is also practically the same as that
of the defendant. It is not disputed before me that the nature of manufacturing activity
of the defendant is going to be the same as is that of the plaintiff and even otherwise a
reference in this context may be made to a pamphlet purported to have been issued by
the defendant in connection with its public issue and the share application form which
have been placed on record by the plaintiff which by themselves are enough to
corroborate that the nature of manufacturing activity of the defendant is going to be the
same as that of the plaintiff. The fact that the plaintiff has received some awards also is
established prima facie by the pamphlets filed by the plaintiff in this behalf. The names
of two firms are almost identical and so is the name of their products and consequently,
there is bound to be a confusion in the mind of the people as regards the origin of the
goods and the submission of the learned counsel for the plaintiff that many an

65
uneducated, illiterate and wary drivers, who are their would be customers, would likely
be deceived .In these circumstances, it is safe and logical to prima facie conclude that
the extensive, long and continuous user by the plaintiff of their trading style
"HINDUSTAN Radiators CO." and the trade mark "HINDUSTAN RADIAtorS/H. R." have
come to be well known and have come to be associated in the public mind with their
excellent quality of radiators manufactured by the plaintiff. The mere fact that the
plaintiff has filed application for registration of the trade mark in the Trade Marks
Registry, New Delhi, only recently would not go against the claim of the plaintiff. The
plaintiff categorically stated that it was a fortnight prior to the filing of the suit that it
came to notice of the plaintiff that defendant had recently incorporated a company
under the name "HINDUSTAN Radiators LIMITED" and consequently it also cannot be
said that the action of the plaintiff is belated. Trading style and the trade mark of the
defendant are similar to that of the plaintiff with a very minute difference and the said
difference cannot be brought out in the mind of average prospective purchasers. In view
of the brochure issued by the defendant, it is not unlikely that many a people have
started making inquiries from the plaintiff about their firm being converted into a
limited company which would indicate that the defendant are likely to trade upon the
goodwill, name and reputation of the plaintiff which would cause irreparable loss of
business, goodwill and reputation of the plaintiff and would cause deception and
confusion in the public mind as regards the origin of goods likely to be produced by the
defendant. There is nothing which has been brought out to my notice by the learned
counsel for the defendant which goes to suggest that the plaintiff is guilty of mis-
representation or suppression of material facts. There is nothing to suggest that the
plaintiff has relinquished its exclusive title in the trading style or trade mark. The mere
fact that the defendant has got its name approved from the Registrar of Companies
would not go against the claim of the plaintiff in any manner whatsoever. In an action
for infringement of trade mark or of passing off, in order to establish a prima facie case
for grant of ad interim injunction, it is incumbent upon the plaintiff to show (a) that
plaintiff has been using its trading style and trade mark for quite a long period and
continuously whereas the defendant has entered into the said field only recently, (b)
that there has not been much delay in the filing of the suit for injunction by the
plaintiff, (c) that the goods of the plaintiff have acquired a distinctiveness and are
associated in the mind of the general public as goods of the plaintiff, (d) that nature of
activity of the plaintiff and the defendant is same or similar, (e) that the goods of the
parties to which the trade mark of the plaintiff is associated are same or similar, (f) that
the user of the said trade mark or trade name by the defendant is likely to deceive and
cause confusion in the public mind and injury to the business reputation of the plaintiff,
(g) that the sphere of activity and the market of consumption of goods of the parties are
the same, (h) that the customers of the plaintiff, inter alia, include uneducated, illiterate
and wary customers who are capable of being deceived or confused or misled. Unless
plaintiff's trading style or trade mark has become common property, it would be no
defense for the defendant that there are some other concerns who were also using
similar trading style or similar trade mark; as to whether it has become common
property is a question of fact in each case. A perusal of my discussion above would
show that the plaintiff in the instant case has prima facie established all these
ingredients which farther leads me to the conclusion that plaintiff has established a
prima facie case for grant of ad interim injunction in the instant matter.
(8) Once a prima facie case is established, balance of convenience would follow. Even
otherwise the question of balance of convenience would arise only when the parties are
practically on the same level and as such their rights are about equal. However, where,
as in the case in hand, the plaintiff's position is infinitely superior to that of the
defendant who intends to use the trade mark and trading style of the plaintiff and

66
consequently, there is no difficulty to hold that balance of convenience lies in the grant
of ad interim injunction as in the instant case inasmuch as the case of the plaintiff is not
marginal but a clear-cut case and consequently, balance of convenience is in favor of
grant of ad interim injunction prayed for.
(9) Coming to the question of irreparable injury, it needs to be mentioned here that
where the plaintiff has established a prima facie case and the balance of convenience is
in favor of grant of ad interim injunction the Court can assume that irreparable injury
would necessarily follow if ad interim injunction prayed for is not granted. The
irreparable injury in the instant case would be the likely confusion that may be caused if
the defendant is allowed to use the mark which is prima facie mark of the plaintiff-
petitioner. Even otherwise. it will take quite some time before this suit is decided and if
the respondent is not restrained by means of an ad interim injunction they would start
manufacturing their radiators under same and similar name as that of the plaintiff-
petitioner and would start marking their goods with the offending mark and in course of
time it might ultimately be held that the defendant-respondent had become common or
concurrent user of the said trade mark. Thus, the likelihood of confusion being caused
and likelihood of the plea of common or concurrent user being raised at a later stage
would be the irreparable injury to the plaintiff-petitioner. Even otherwise injunction
would not be refused unless the supposed consequences of deception are remote,
speculative and improbable. Once the plaintiff has established that he has got a prima
facie case in respect of same and similar goods, he would be prima facie entitled to ad
interim injunction and heavy burden would lie upon the defendant to prove that the
plaintiff should not be granted ad interim injunction. The plaintiff, in these
circumstances, is entitled to the ad interim injunction prayed for.
(10) No other point has been urged before me.
(11) It may be mentioned here that my discussions above are solely for the purposes of
disposal of this I. A. and have no bearing on the merits of the case which would be
decided on the evidence which may be led before the Court.
(12) In view of my discussion and findings above, I. A. 1989186 is allowed and the
defendant, their agents, servants, stockists and all other persons on their behalf are
restrained during the pendency of the suit to use the trading style 'HINDUSTAN
Radiators LIMITED'. and from using the mark 'HINDUSTAN RADIAtorS/H. R.' in respect
of their radiators in any manner whatsoever or to pass off their business and goods as
business and goods of the plaintiff.

67
National Bell Co. & Anr vs Metal Goods Mfg. Co. (P) Ltd. & Anr on 18 March, 1970

Equivalent citations: 1971 AIR 898, 1971 SCR (1) 70
Author: Shelat
Bench: Shelat, J.M.
PETITIONER:
NATIONAL BELL CO. & ANR.
Vs.
RESPONDENT:
METAL GOODS MFG. CO. (P) LTD. & ANR.
DATE OF JUDGMENT:
18/03/1970
BENCH:
SHELAT, J.M.
BENCH:
SHELAT, J.M.
VAIDYIALINGAM, C.A.
CITATION:
1971 AIR 898 1971 SCR (1) 70
1970 SCC (1) 665
CITATOR INFO :
RF 1981 SC1786 (139)
ACT:
Trade and Merchandise Marks Act (43 of 1958), ss. 9(3),
11(a) and (e), 32(b) and (c) and 56--'Distinctive', meaning
of--Numeral as trade mark--'Aggrieved person, and 'without
sufficient cause' in s. 56--Scope of--'Disentitled to
protection', meaning of--Abandonment of right in trade mark,
when inferred--Rectification of register--Discretion of
Court.
HEADNOTE:
For a number of years prior to 1952 cycle bells manufactured
by Lucas And other foreign concerns bearing the numbers '50'
and other numerals were in the Indian market. After 1952,
the import of foreign bells was prohibited, and though
foreign made bells with the numerals '50' were being sold as
late as 1958, the sales were from the stock remaining out of
the earlier imports and were few and far between. In 1953,
the respondent company got registered two trade marks in
respect of cycle bells being the numeral '50' and the figure
'Fifty'. The appellant companies were manufacturers and
also dealers in cycle bells and were selling their cycle

68
bells with the numeral '50' inscribed on them. The

respondent therefore, filed suits in 1959, against the
appellants, alleging infringement of its trade marks. In
1961, the appellants applied for stay of trial of the suits
and filed applications in the High Court for rectification
of the register by cancelling the trade marks of the
respondent under s. 56 of the Trade and Merchandise Marks
Act, 1958. A single Judge of the High Court, refused to
expunge the trade mark 'Fifty' but ordered the cancellation
of the trade mark '50'. In appeals to the Division Bench of
the High Court, the order cancelling the trade mark '50' was
set aside.
In appeals to this Court, it was contended that : (1) the
trade marks in question were common and not distinctive at
the date of their registration as required by s. 9(3), and
therefore, ought never to have been registered; (2) that the
numeral '50' is not distinctive; (3) that the use of the
trade mark was likely to deceive or cause confusion and
hence the registration should be cancelled under s. 32(b)
and s. II (a); (4) that the respondent had imitated the use
of the marks by Lucas and other foreign concerns that
therefore they would be disentitled to protection under s.
11(e) and hence the registration should be cancelled under
s. 32(h); and (5) that the trade marks were not, at the
commencement of the proceedings, distinctive 'and hence
liable to be cancelled under s. 32(c).
HELD : (1) Under s. 32(b) and (c) the original registration
of the trade mark has, after the expiration of 7 years from
the date of registration to be taken to be valid in all
respects including in rectification applications under s. 56
unless it is proved : (1) the trade mark was registered in
contravention of the provisions of s. 11 or offends against
the provisions of that section on the date of the
commencement of the proceeding or (2) that the trade mark
was not, at the commencement of the proceedings distinctive
of the goods of the registered proprietor. Section 11(a)
prohibits the registration of trade mark which would be
likely to deceive or cause confusion, and s. 11(e) prohibits
the registration of trade marks if they were such that they
were otherwise disentitled to protection in a court.
Section
71
56(2) confers a right on any person aggrieved by an entry
made in the register without sufficient cause or by an entry
wrongly remaining in the register, to apply for expunging or
varying such an entry. Since 'an aggrieved person' includes
a person who has, before registration, used the trade mark,
and a person against whom an infringement action is taken,
and the words 'without sufficient cause' relate to the time
of original registration,. the appellant could apply for
cancellation on the ground that the trade mark in question
was not distinctive within the meaning of s. 9(3).
But in view of the language of s. 32, no contention could be

69
raised in the present case, that the trade mark '50' and
'Fifty' were not distinctive under s. 9(3), that is, adapted
to distinguish the cycle bells of the respondent, at the
date of registration, as, seven years had elapsed since the
date of the Registration. [78 D-F; 79 B-H]
Paine & Co. v. Doniells & Sons" Breweries Ltd. (1893) R.P.C.
217, 232, referred to.
(2) It is not an inflexible rule that except in the case of
textile goods. a mark consisting of a numeral is necessarily
not distinctive and is not registerable. [80 E]
Kerly on Trade Marks, 9th End. p. 284, and Reuiter v.
Hublens, (1954) Ch. 50, referred to.
(3) Section 32(b) relates to facts existing both at the time
of and after registration. If the mark at the time of
registration was likely to deceive or cause confusion or
would otherwise be disentitled to- protection of a court,
and therefore, was, under s. 11 (a) and (e) prohibited from
being registered, the rule as to conclusiveness of the
validity of the registration in s. 32 cannot be invoked and
that would also be so, if the trade mark at the date of
commencement of rectification proceedings was such as to
offend against the provisions of s. 11. [80F-H]
The sales of foreign bells with numeral '50' after 1953 were
'so few that they could hardly be considered as evidence for
showing a likelihood of confusion or deception. In fact the
purchasers used to call those bells, not by the numerals,
but by the manufacturers' names. As regards bells said to
have been manufactured by one of the appellant companies
since 1947 and bearing the numeral '50', no evidence was led
to show either the extent of manufacture or sale between
1947-1953 or thereafter from which the High Court could be
asked to draw any inference as to the likelihood of
deception or confusion. As against the voluminous sales of
the respondent for the years 1949-1962, there was no
corresponding evidence on behalf of the appellants
indicating sales of their bells with number '50' from which
any likelihood of confusion or deception could be deduced.
Therefore, s. 11(a) was not attracted.[816-C, G-H; 82 D-F]
(4) The true construction of s. 11(e) is that even assuming
that the trade marks in question were not distinctive and
for that reason not registerable as not falling within s. 9,
that fact, by itself, would not mean that they became
disentitled to protection in a court. That is, although a
mark cannot be registered because it is not distinctive as
provided by s. 9, such a mark is not for that reason only
one, the registration of which is prohibited by s. 11 ,
because, the section lays down positive objection to
registration, and not mere lack of qualification, by using
the words disentitled to protection. Therefore, unless the
trade 'mark offends the provisions of s. II, that is,
offends any of the matters in cls. (a) to (d) of s. 11, or
is disentitled to protection in a court under s. 11(e), the
rule

70
72
as to conclusiveness of the validity of registration
embodied in s. 32 -applies.
In the present case, in fact, there was no evidence of any,-
fraud having been committed by the respondent at the time of
the registration. There was neither averment by the
appellants nor evidence, that Lucas or any ,other foreign
concern had obtained registration of trade marks of '50' or
'Fifty'. 'nose concerns merely used various numerals for
distinguishing one type of bell from another manufactured by
them and there was no question of any piracy by the
respondent. The trade mark had also be,come distinctive
with respective to the respondent. [82 F-H; 84 D-F]
Imperial Tobacco Co. Ltd. v. De Pasquali & Co. 35 R.P.C.
186, referred to.
(5) The principle underlying s. 32(c) is that property in a
trade mark exists so long as it continues to be distinctive
of the goods of the registered proprietor in the eyes of the
public or a section of the public. If the proprietor is not
in a position to use the mark to distinguish his goods from
those of others or has abandoned it or the mark has become
so common in the market that it has ceased to connect him
with his goods then there would be no justification for
retaining the mark on the register. Under s. 32(c) the
marks have to be distinctive at the 'commencement of the
proceedings', that is the proceedings in which the
conclusive character of the' Registration arises.
Therefore, it may be the date when a suit for infringement
is filed by the proprietor of the trade mark or the date on
which the rectification proceedings ;ire filed as a result
of the suit. Rights in a trade mark could be abandoned by
the owner, but when such abandonment is sought to be
inferred from the proprietors neglect to challenge
infringement the character and extent of the trade of the
infringers and their position would have to be reckoned in
considering .whether the registered proprietor was barred by
such neglect [84 F-H; 85 A-C, D-E]
In the present case, the progressive increase of the sales
of the respondent's bells from 1949 together with the
evidence of witnesses of the respondent shows that the said
trade marks distinguished the goods of the respondent from
those of other manufacturers. Also, whether the crucial
date is taken as 1959 or 1961, the date of suit or the date
of rectification proceedings, the evidence on record
indicates that the trade marks were distinctive. The
respondent has all along been zealously trying to maintain
its right, against all infringements. There were no
repeated breaches which went unchallenged by the respondent
when known to the respondent. Mere neglect in a few cases
to proceed did not necessarily constitute abandonment,
because, it was in respect of infringements which were not
sufficient to affect the distinctiveness of the mark. There
was no .evidence to show that the use by others of the word

71
'Fifty' or the numeral '50' was substantial and the plea

that there was common use of the trade marks must fail.
Therefore, it is impossible to sustain the contention
founded on s. 32(c). [86 A-E]
Re. Farina, (1879) 27 W.R. 456 and Rowland v. Mitchell,
(1897) 14 R.P.C. 37, applied.
(6) The power to rectify under s. 56 is discretionary and
when such .discretion was properly exercised, a court of
appeal would refuse to interfere. But, in the present case,
the single Judge did not appreciate the principles of ss.,
11 and 32, and hence, the Division Bench was justified in
setting aside his order. [86 F]
73
JUDGMENT:
CIVIL APPELLATE JURISDICTION: Civil Appeal Nos. 1952 and 1953 of 1966.
Appeals from the judgment and order dated February 25, 1965 of the Punjab High Court, Circuit
Bench at Delhi in Letters Patent Appeals Nos. 38-D and 42-D, and 39-D and 43-D of 1963.
S. T. Desai and Naunit Lal, for the appellants (in both the appeals).
C. B. Agarwala, K. P. Gupta and R. C. Chadha, for respondent No. 1 (in both the appeals).
The Judgment of the Court was delivered by Shelat, J. These two appeals, under certificate, are
directed against the common judgment and order of the High Court of Punjab, dated February 25,
1965, passed in four Letters Patent appeals filed by the two appellant-companies and the respondent
company against the judgment and order of a learned Single Judge of the High Court.
The said appeals were the outcome of two applications filed in the High Court under s. 111 of the
Trade and Merchandise Marks Act; XLIII of 1958 (referred to hereinafter as the Act) for rectification
of the register in respect of two registered Trade Marks, Nos. 161543 and 161544, registered on
November 20, 1953 in respect of cycle bells manufactured by the respondent company. Registered
Trade Mark No. 161543 was the numeral '50' and Trade Mark No. 161544 was the figure 'Fifty'.
The two appellant companies carry on business in Kapurthala in Punjab, one of them the National
Bell Co. Ltd. claimed to be manufacturing bells with numerals '33', '50', '51' and '40' inscribed on
them since 1957, and the other M/s Gupta Industrial Corporation since 1947 with numerals, '20',
'50' and '60' inscribed on cycle bells manufactured by it. The two applications for rectification arose
out of suits filed in the District Court, Lucknow by the respondent-company against the two
appellant companies on the ground of infringement of its said registered trade marks, the numeral
'50' and the figure 'Fifty'. On April 24, 1961 the District Court stayed the said suits at the instance of
the appellant companies giving them time for filing the said rectification applications in the High
Court.

72
The grounds alleged in the applications were (1) that the numeral '50' and the word 'Fifty' were
common to the trade at the time of the original registration and were therefore not distinctive of the
bells manufactured by the respondent- company, Sup. CI- 6 (2)that many other manufacturers in
the market were using the numeral '50' and the word 'Fifty' on or in relation to cycle bells, and
therefore, the distinctiveness of the said marks in relation to the bells manufactured by the
respondent-company, if any, had been lost, (3) that the respondent-company did not get the
registration of these marks with any bona fide intention of using them in relation to their cycle bells
and that in fact there had been no bona fide use of the said trade marks in relation to their goods
before the date of the applications. They also alleged that the respondent-company had fraudulently
declared at the time of registration that they were the originators or proprietors of the said two
marks '50' and 'Fifty'. Both sides led evidence, oral and documentary, the latter including several
price-lists from the possession of some of the dealers in cycle spare parts.
The learned Single Judge, who in the first instance tried the applications, found on a consideration
of the evidence that cycle bells with different numerals and in particular the numeral '50' were being
sold in the market before the respondent-company put its cycle bells with the numeral '50' and the
figure 'Fifty' inscribed on them in the market and continued to be sold right upto 1952 when import
of foreign manufactured cycle bells was prohibited, and that despite such prohibition those cycle
bells were being sold in the market as late as 1958, presumably from old stocks still lingering in the
market, though not from any new imported stock. The learned Single Judge also found that there
was no evidence of the original registration having been fraudulently obtained by the
respondent-company, that there was no averment by the appellant companies that Lucas or any
other concern had obtained registration of any mark either of the numeral '50' or the figure 'Fifty',
and that therefore, cl. (a) of S. 32 did not apply. He further found that cl. (b) of S. 32 also did not
apply. He held, however, that the trade mark, namely, the numeral '50' was not at the
commencement of the proceedings distinctive of the goods of the respondent company as (a)
numerals are prima facie not distinctive except in the case of textile goods as recognised by Part HI
of the Trade and Merchandise Marks Rules, 1959, and (b) that the numeral '50' was being
commonly used by several dealers and manufacturers subsequent to the registration thereof by the
respondent- company, and that therefore, the registered trade mark, the numeral '50', was hit by cl.
(c) of S. 32. So far as the trade mark of the figure 'Fifty was concerned, he held that there was no
evidence that it was used by other parties either prior to or after the registration thereof by the
respondent-company and in that view declined to rectify or expunge the trade mark 'Fifty' as seven
years had already elapsed by the time the rectification proceedings were launched and could not,
therefore, be challenged on the ground of absence of distinctiveness as laid down in s. 32.
The learned Single Judge, on the basis of his aforesaid conclusions, cancelled the trade mark- No.
161543, i.e., of the numeral '50'.
In the appeals filed against the said judgment the Division Bench of the High Court held (1) that
though the use of the numeral '50' in relation to cycle bells dated back at least 30 years as in the case
of Lucas and certain other foreign concerns, the imports of such goods stopped from ;about 1952,
though some bells were being sold till 1958 presumably from the remaining previous stock, (2) that
the numeral '50' in connection with those foreign made bells was never intended as a trade mark but

73
was used only as an indication of the type or quality, and (3) that statements Exs. R-2, R-3 and R-4
produced by the respondent-company showed that sales of its bells with the trade marks '50' and
'Fifty' inscribed on them had risen from the value of Rs. 19,644 in 1949-50 to Rs. 14.83 lacs in
1961-62. The Division Bench agreed with the Trial Judge that cl. (a) of s. 32 did not apply as there
was no question of the original registration having been fraudulently procured in 1953. It also held
that the trade marks in question could not be cancelled merely on the ground that if their
registration had been opposed they would not have been registered, and that therefore, the question
for determination was whether it was liable to cancellation in view of s. 32(c), which lays down that
the section would not apply in cases where the trade mark in question was not distinctive at the
commencement of the proceedings. According to the Division Bench, the word "commencement of
proceedings" in cl. (c) of s. 32 meant the commencement of the infringement suits filed by the
respondent-company as the proceedings for cancellation were the off shoots arising from those
suits, that therefore, the situation in respect of s. 32(c) had to be assessed in the light of the state of
affairs existing in 1959. According to the Division Bench, the earliest use of the-mark '50' by any
concern other than Lucas and other foreign manufacturers was in 1953 by M/s Indian Union
Manufacturers Ltd. The respondent-company, however, had filed a suit against that company in
1954 which resulted in a compromise dated February 5, 1955 whereunder the said company
recognised the exclusive right of the respondent-company to the use of the word% 'Fifty', 'Thirty'
and the numerals '50' and '30', while the respondent-company recognised the right of the said
company to the exclusive use of the words and numerals 'Thirty one', 'Forty one' and 'Fifty one' and
'31', '41' and '51', that the respondent-company had also in 1956 similarly taken action against K. R.
Berry & Co. of Jullundur for use by that company of the mark 'Five 50'. The suit, however, had to be
withdrawn in 1958 on account of lack of jurisdiction of the Banaras court where it was filed that
though no fresh suit was filed against that company, the respondent-company had opposed an
application by that company for registration of the mark 'Five Fifty' before the Registrar and that
application was then pending in 1962, and lastly, that the respondent-company had filed in 1959 the
two suits against the appellant companies out of which these rectification proceedings arose. The
Division Bench held that though there was some evidence of the use of the numeral '50' by certain
other concerns after 1953, no importance could be attached to such breaches as there, was hardly
any evidence as to when the infringers started manufacturing and the extent of their manufacture
and sales, and that the correct principle applicable in such cases was that a few unchallenged,
scattered infringements by a number of traders did not render a registered trade mark common. As
regards the earlier use of the word 'Fifty' and the numeral '50' by Lucas and other foreign concerns,
the Division Bench held that they were not the registered trade marks of those companies and that
those concerns had used those marks as merely type marks. Though the idea of using '50' and 'Fifty'
was not the original idea of the respondent-company when it obtained registration in 1953, the
foreign concerns had ceased importing the goods and though sales of those bells continued until
1958, such sales were from the stock still remaining unsold. Such sales could not he in any
appreciable bulk. Even if the idea of using, the two marks might have been conceived by the
respondent-company from the marks used by Lucas and other foreign concerns, there was no
question of any piracy or infringement of those marks as the respondent-company was the first to
convert what were originally type marks into registered trade marks. Lastly, it held that the
statements of sales produced by the respondent-company demonstrated that its sales had been
steadily increasing and that some concerns, finding the use by the respondent-company of its marks

74
'50' and 'Fifty' highly successful, had sought in recent years to take advantage of am popularity of the
cycle bells of respondent- company by imitating its marks. This fact, however,, could not mean that
either in 1959 when the respondent-company filed the suits or in 1961 when rectification
proceedings commenced, the marks had ceased to be .distinctive in relation to the goods of the
respondent-company or were, therefore, liable to cancellation under s. 56 by reason of cl. (c) of s.
32. Accordingly, the Division Bench allowed the. respondent-company's appeals and set aside the
order of the learned Single Judge cancelling the registration of its trade mark No. 161543 in respect
of the numeral '50' and dismissed the appeals of the appellant companies. Mr. S. T. Desai for the
appellant companies contended that the two trade marks in question were liable to cancellation on
the grounds that (1) they were common and not distinctive at the date of their registration, and
therefore, ought never to have been registered, (2) that in any event, the numeral '50' is prima facie
not distinctive unless shown to be of such extensive use as to make it distinctive, (3) that there was
clear evidence that the respondent-company had imitated the use of these marks by Lucas and other
manufacturers, and that therefore, these marks would be disentitled to protection in a court of law,
and (4) that the said marks were not, at the commencement of the proceedings distinctive, that is,
adapted to distinguish the goods of the respondent-company. Mr. Agarwala, on the other hand,,
argued that, (1) the two marks having been registered in 1953 and seven years since then having
elapsed at the commencement of these proceedings, the question whether they were distinctive at
the time of registration was not open to dispute, (2) that that being so, there was no question of any
alleged piracy by the respondent-company of the marks of Lucas and other concerns, and therefore,
the marks could not be said to be disentitled to protection by a court, (3) that the marks had not lost
their distinctiveness at the date of these proceedings under s. 56, and (4) that the Letter Patent
Bench was, therefore, justified in dismissing these proceedings by the appellant-companies.
A mark under s. 2(j) includes a word, letter or numeral or any combination there-of. A trade mark,
as difined in S. 2(v) means in relation to Chapter X (i.e. for offences and penalties provided in that
chapter) a registered trade mark or a mark used in relation to the goods for the purpose of
indicating or so as to indicate a connection in the course of trade between the goods and some
person having the right as proprietor to use the mark, and in relation to the other provisions of the
Act a mark used or proposed to be used in relation to the goods for the purpose of indicating or so as
to indicate a connection in the course of trade between the goods and some person having the right,
either as proprietor or as registered user, to use the mark and includes a certification trade mark
registered as such under the provisions of Chapter VIII. Under s. 9, a trade mark is not registerable
in Part A of the register unless it contains or consists of at least one ,of the essential particulars
mentioned therein. One of these particulars in "any other distinctive mark". Cl. (3) of S. 9 defines
the expression "distinctive" in relation to the goods in respect of which a trade mark is proposed to
be registered, as meaning "adapted to distinguish goods with which the proprietor of the trade mark
is or may be connected in the course of trade from goods in the case of which no such connection
subsists either generally or, where the trade mark is proposed to be registered subject to limitations,
in relation to use within the "tent of the registration." In determining whether a trade mark is
distinctive, regard is to be had whether it is inherently distinctive or is inherently capable of
distinguishing and by reason of its use or any other circumstances it is in fact adapted to distinguish
or is capable of distinguishing the goods. S. 1 1 prohibits certain trade marks from being registered.
These are marks the use of which would be likely to deceive or cause confusion, or the use of which

75
would be contrary to any law or which comprises or contains scandalous or obscene matters or any
matter likely to hurt the religious susceptibilities of any class or section of the citizens, or "(e) which
would otherwise be disentitled to protection in a court". On registration of a trade mark, the
registered proprietor gets under s. 28 the exclusive right to the use of such trade marks in relation to
the goods in respect of which the trade mark is registered and to obtain relief in respect of any
infringement of such trade mark. Under s. 31, registration is prima facie evidence of its validity. The
object of the section is obviously to facilitate proof of title by a plaintiff suing for infringement of his
trade mark. He has only to produce the certificate of registration of his trade mark and that would
be prima facie evidence of his title. Such registration is prima facie evidence also in rectification
applications under s. 56, which means that the onus of proof is on the person making such
application. Being prima facie evidence, the evidence afforded by the registration may be rebutted,
but in view of s. 32 that can be done if seven years have not elapsed since the original registration.
Even where such rebuttal is possible, i.e., where seven years have not elapsed, and it is shown that
the mark in question was not registerable under s. 9 as no evidence of distinctiveness was
submitted to the Registrar, the registration would not be invalid if it is proved that the trade mark
had been so used by the registered proprietor or his predecessor-in-interest as to have become
distinctive at the date of registration. Sec. 32, with which we are immediately concerned, reads as
follows :
"Subject to the provisions of section 35 and section 46, in all legal proceedings
relating to a trade mark registered in Part A of the register (including applications
under section
56), the original registration of the trade mark shall, after the expiration of seven
years from the date of such registration, be taken to be valid in all respects unless it is
proved-
(a) that the original registration was obtained by fraud; or
(b) that the trade mark was registered in contravention of the provisions of section 11
or offends against the provisions of that section on the date of commencement of the
proceedings; or
(c) that the trade mark was not, at the commencement of the proceedings, distinctive
of the goods of the registered proprietor."
We are not concerned with cl. (a) as no such case was even averred in the applications as pointed out
both by the Trial Judge and the Division Bench. As regards cl. (b), it will be at once noticed that the
clause relates to facts existing both at the time of and after registration. If a mark at the time of
registration was such that it was likely to deceive or cause confusion or its use would be contrary to
any law or contained or consisted of scandalous or obscene matters or matter likely to hurt religious
susceptibilities or which would otherwise be disentitled to protection of a court, and therefore, was
under s. 1 1 prohibited from being registered, cl. (b) would apply, and the rule as to conclusiveness of
the validity of the registration cannot be invoked. That would also be so, if the trade mark at the date

76
of the rectification proceedings was such as to offend against the provisions of s. 11. But, unlike cl.
(b), cl.
(c) relates to facts which are post-registration facts, existing at the date of the commencement of the
proceedings. If the trade mark at such date is not distinctive in relation to the goods of the registered
proprietor, the rule as to conclusiveness enunciated in s. 32 again would not apply. It would seem
that the word 'distinctive' in cl. (c) is presumably used in the same sense in which it is defined in s.
9(3), as the definition of that expression therein commences with the words "for the purposes of this
Act" and not the words "for the purposes of this section," the intention of the legislature, thus, being
to give uniform meaning to that expression all throughout the Act. S. 56 deals with the power to
cancel or vary registration and to rectify the register. Sub-s. 2 thereof confers a right to any person
"aggrieved" by an entry made in the register without sufficient cause or by an entry wrongly
remaining in the register to apply to the tribunal for expunging or varying such an entry. The
expression "aggrieved person" has received liberal construction from the courts and includes a
person who has, before registration, used the trade mark in question as also a person against whom
an infringement action is taken or threatened by the registered proprietor of such a trade mark. The
words "without sufficient cause" in the section have clearly relation to the time of the original
registration. Therefore, a person can apply for cancellation on the ground that the trade mark in
question was not at the date of the commencement of the proceedings distinctive in the sense of s.
9(3). The burden of proof, however, in such a case is, as aforesaid, on the applicant applying under s.
5 6.
The contention was that numerals, such as '50', are prima facie not considered distinctive and to be,
registerable there must be evidence of extensive use. The contention was sought to be fortified by
showing that contrary to the practice in England, rules 139 and 140 of the Rules of 1959 permit
numerals to be registered as trade marks only in the case of textile goods. But that is permitted on
account of a long standing practice in that particular trade of using numerals with a view to
distinguish goods of a particular manufacturer or a particular type or quality. It will, however, be
noticed that although in the 8th edition of Kerly on Trade Marks, page 135, it was stated that
numerals are considered to be prima facie not distinctive and registerable only upon proof of their
extensive use, the 9th edition of the same work does not reproduce that passage. On the contrary, at
p. 284, the learned editor states that numerals are capable of registration and that such marks exist.
For this change the learned editor relies, on the registered trade mark, "4711" for eau-de-Cologne,
which was the subject-matter of dispute in Reuter v. Mutblens(1). In that case, however, no
contention was raised as to whether the trade mark consisting of a numeral could be distinctive or
not and the court, therefore, was not called upon to decide such a point. But the parties appear to
have proceeded on the assumption that the numeral "471 1 " was validly registered as a trade mark
for that particular brand of eau-de-Cologne by reason of its having gained distinctiveness by
extensive use. It is, therefore, not an inflexible rule and that was also conceded by Mr. Desai, that a
mark consisting of a numeral is necessarily not distinctive and is not registerable, except only in the
case of textile goods, in spite of proof of extensive use. S. 32 in clear terms provides that the original
registration of a trade mark, after expiry of seven years from the date of its registration shall be
taken to be valid in all respects in all legal proceedings including those under s. 56, except in the
three categories of cases mentioned therein. It follows, therefore, that no objection that the trade

77
mark in question was not distinctive and therefore was not registerable under s. 9 can be
entertained if such an objection is raised after seven years have lapsed since the date of its
registration as in the present came, nor can an objection be entertained that no proof of
distinctiveness was adduced or insisted upon at the time of the original registration. This is clear
also from the fact that the three exceptions set out in s. 32 against conclusiveness as to the validity of
the registration relate to, (1) fraud, (2) contravention of s. 11, and (3) absence of distinctiveness at
the commencement of the proceedings in question and not at the time of registration. No
contention, therefore, (1) [1954] Ch. 50.
can be raised that the trade marks, '50' and 'Fifty', were not distinctive, i.e., adapted to distinguish
the cycle bells of the respondent-company at the date of the registration, and therefore, were not
registerable as provided by s. 9 (cf. Paine & Co. v. Daniells & Sons' Breweries Ltd.(1).
But the argument was that the appellant companies were entitled to show under cls. (b) and (c) in
s. 32, (1) that these marks were registered in contravention of S. 11, or that they offended against the
provisions of that section on the date of the commencement of these proceedings, and (2) that they
were not distinctive at the date of the commencement of these proceedings.
S.11, as already noticed,, does not, as s. 9 does, lay down the requisites for registration, but lays
down prohibition against certain marks from being registered. Cls. (b), (c) and (d) of s. 1 1 obviously
do not apply in the present case but reliance was placed on cls. (a) and (e), i.e., that the use of these
trade marks would be likely to deceive or cause confusion and that they were such that they were
otherwise disentitled to protection in a court. The burden of proof being on the appellant
companies, the question is : has that burden been satisfactorily discharged ? The evidence relied on
by them was that of dealers in cycle spare parts including bells, certain price-lists produced through
them and the two representatives of the two appellant companies. That evidence, no doubt, shows,
(1) that for a number of years prior to 1952 bells manufactured by Lucas and certain other foreign
concerns with various numerals such as '30', '50' and 61' inscribed either on the belts or on their
cartons were in the market, (2) that even after 1952 bells with inscriptions thereon, such as "Berry
50", "National 50", manufactured by one of the appellant companies, "Five 50", "Padam 50", "Balco
50" etc. were sold in the market, (3) that Gupta Industrial Corporation, one of the appellant
companies, claimed to have started the manufacture of bells since 1947, calling them "Gupta 50"
and the National Bell Company likewise began to produce bells, calling them "National 50" since
1957. But both the learned Single Judge and the Division Bench clearly found, (1) that there was no
evidence of any fraud having been committed by the respondent-company at the time of the
registration; (2) that there was no averment by the appellant companies, much less any evidence,
that Lucas or any other foreign concerns had obtained registration of trade, marks either of the
numeral '50' or the word 'Fifty', that the indication, on the contrary, was that those concerns used
the different numerals, '30', '61', '50' etc. for distinguishing one type of bell from the other
manufactured by them; and (3) that about a year prior (1) [1893] R.P.C. 217, 232.
to the registration of the trade marks in question in 1953 foreign bells were prohibited from being
imported. Obviously, therefore, the evidence as to purchases and sales by the dealers examined by
the appellant companies related to bells which had remained unsold from out of the stock earlier

78
imported. As regards the bells called "Gupta 50" said to have been manufactured by one of the
appellant companies since 1947, no evidence was led to show either the extent of manufacture or
sale between 1947 and 1953 or thereafter from which the High Court could be asked to draw any
inference as to the likelihood of deception or confusion. Though there was some evidence that
foreign made bells Such as Lucas "30", "50" and "61" were being sold as late as 1958, such sales
must have been few and far between as they could only be from the remaining stock out of the
earlier imports. Such sales could hardly be considered as evidence showing a,likelihood of confusion
or deception as contemplated by s. 1 1 (a). In fact, the evidence was that purchasers used to call
those bells not by their numerals but simply as Lucas' bells and those manufactured by the
respondent company, as "Asia bells", and in some cases "Asia 50". As against the voluminous sales
by the respondent- company shown by the statements filed by it for the years 1949-50 to 1961-62,
there was no such corresponding evidence,- indicating the sales of other bells with numerals, such
as "50" inscribed on them from which any likelihood of confusion or deception could be deduced.
Regarding deception, there was indeed no evidence whatsoever in that regard. There was no
question of piracy also on the part of the respondent company as argued by counsel as there was
nothing to show that Lucas or any other foreign concerns used this numeral except for
distinguishing one type of bell from another manufactured by them. In our view, cl. (a) of s. 11,
therefore, is clearly not attracted. The next question is whether the trade mark "50" or "Fifty" is one
which would otherwise be disentitled to protection in a court as laid down in cl. (e) of s. 1 1 so as to
attract cl. (b) of s. 32. While construing cl. (e) of S. II, it is necessary to repeat that it deals with
prohibition and not with requisites of registration. Therefore, although a mark cannot be registered,
for instance, because it is not distinctive, as provided by S. 9, such a mark is not for that reason only
one the registration of which is prohibited by s. 1 1. The section lays down positive objection to
registration and not to mere lack of qualification. This is clear from cl. (e) of s. 11, which uses the
expression "disentitled to protection", and not the expression "not entitled to protection". The
former contemplates some illegal or other disentitlement inherent in the mark itself. (see Kerly, 9th
ed. 344).
In Imperial Tobacco Co. Ltd. v. De Pasqualil & Co.(1) the appellant company was the proprietor of
two trade marks consisting of "Regimental Cigarettes" and "Regimental Tobacco". The company
brought an action for infringement of its trade marks and for passing off against the respondent who
sold cigarettes under the name of "Pasquali's the Regiment" in packets and boxes decorated with
regimental crests. The respondent moved to have the trade marks expunged contending that the
word "Regimental" was only a laudatory adjective in on use. It was proved that for many years it had
been the practice of regiments to have their crests stamped on their mess cigrettes which were
known as "Regimental Cigarettes". The appellant company, on the other hand, contended that under
s. 41 of the Trade Marks Act, 1905 (equivalent to s. 32 of our Act) their trade mark could not be
expunged and that s. 1 1 (equivalent also to our s. 11 ) read in conjunction with s. 41 was not
relevant to the question whether or not a trade mark was registerable. The Trial Court held against
the appellant company stating that if the appellant company's contention was correct, the combined
effect of ss. 1 1 and 41 would be to perpetuate as distinctive a trade mark that was incapable of being
distinctive and that such a contention was erroneous. On appeal, the Court of Appeal reversed the
judgment and held that s. 11 was a qualification of s. 9, that ss. 1 1 and 41 must be construed
together, that the more fact that a mark did not comply with the requisites of s. 9 (i.e. not being

79
distinctive and therefore not registerable) did not bring it within s. II, that the marks did not offend
against s. 11 and that under s. 41 their registration was valid. At page 203 of the Report,Swinfen
Eady, M.R. observed that s. 11 contained a prohibition as to what it shall not be lawful to register
and it followed upon s. 9 which provided for the essentials of a trade mark. S. 9 laid down what a
registerable trade mark must contain and unless it contained one or the other requisites there set
out, it was not registerable and it was only registerable trade marks which were entitled to
registration. But even if a mark were to fall within, S. 9, that alone was not necessarily sufficient to
entitle it to registration because it might offend against s. 11. S. 11, being a qualification of s. 9 and
being a provision laying down a prohibition', it did not contemplate any enquiry on the question
whether the, trade mark complied with one or the other requisites enumerated in s. 9, e.g., whether
it had the quality of being distinctive or not. Dealing with s. 41, he observed that it formed a new
departure in dealing with trade marks and differed widely from the earlier Acts. The present section
expressly enacted that the original registration shall, after a lapse of seven years, be taken to 'be
valid in all respects, that is to say, whether the mark originally consisted of or (1) 35 R.P.C. 185.
contained one or the other essential proofs or not, that cannot be enquired into after the lapse of
seven years. It had to be taken to be valid in all respects and what had to be taken to be valid in all
respects was the registration of the trade mark unless it offended against the provisions of s. 1 1.
That section was a prohibitive section as to a matter which was disentitled to protection in a court,
that is, it was intended to exclude from registration what would, otherwise be included or covered
under s. 9. It did not extend to a mark disentitled to protection because originally not containing one
of the essential particulars. It applied to a different set of circumstances such as that its use was
likely to deceive or confuse etc. The words "disentitled to protection", he further observed, were not
equivalent to "not entitled to protection", which was the expression used in the earlier Acts. In other
words, they did not mean that a trade mark was not entitled to protection because it ought not
originally to have been registered as a valid trade mark falling within s. 9. The construction of cl. (e)
of s. 11 contended for on behalf of the appellant companies is, therefore, not correct. The true
construction of cl. (e) is that even assuming that the trade marks in question were not distinctive
and for that reason not registerable as not falling within s. 9, that fact by itself would not mean that
they became disentitled to the protection in a court. That being the true import of s. 1 1 (e), the rule
as to conclusiveness of the validity of registration embodied in s. 32 applies even to those cases
where if full facts had been ascertained at the time of the registration that registration would not
have been allowed provided of course that it does not offend against the provisions of s.11, i.e., by
there being a likelihood of deception or confusion or its bring contrary to any law or containing
obscene matter etc. or which would otherwise, i.e., in addition to the matters in cls.(a) to
(d) in s. 1 1 be disentitled to protection in a court. Conse quently, the appellant companies cannot
bring their case for cancellation of the trade marks in question under cl. (b) of s. 32.
There then remains the question whether cl. (c) of s. 32 applies, i.e., that the trade marks were not
at the commencement of the proceedings distinctive of the goods of the respondent company. The
distinctiveness of the trade mark in relation to the goods of a registered proprietor of such a trade
mark may be lost in a variety of ways, e.g., by the goods not being capable of being distinguished as
the goods of such a proprietor or by extensive piracy so that the marks become publici juris. The

80
principle underlying cl. (c) of s. 32 is that the property in a trade mark exists so long as it continues
to be distinctive of the goods of the registered proprietor in the eyes of the public or a section of the
public. If the proprietor is not in a position to use the mark to distinguish his goods from those of
others or has abandoned it or the mark has become so common in the market that it has ceased to
connect him with his goods, there would hardly be any justification in retaining it on the register.
The progressive increase in the sales of 'Asia Fifty' and 'Asia 50' bells from 1949-50 and onwards
together with the evidence of witnesses examined by the respondent company shows that the said
trade marks distinguished the goods of the respondent company from those of other manufacturers
in the field. Under s. 32 (c) the marks have to be distinctive at the commencement of the
proceedings. Prima facie, the expression "commencement of the proceedings" would mean the
commencement of proceedings in which the question as to the conclusive character of the
registration, as laid down in S. 32, arises. Such a question may arise in a suit for infringement of the
trade mark in which the registered proprietor may rely on s. 32 to prove his title to the registered
trade mark as also in rectification proceedings filed as a result of such a suit or otherwise, and the
period of seven years would have to be calculated according to the particular proceedings in which
the conclusive nature of the validity of registration is relied on. In the prevent case, whether the
crucial date for the purpose of s. 32(c) is taken to be 1959 when the suits were filed or 1961 when the
appellant companies took out the. rectification proceedings it makes no difference as it is not
possible from the evidence on record to say that the trade marks in question were not or had ceased
to be distinctive. The indication, on the contrary, is that they were distinctive. That is to be found
from the zeal with. which the respondent company tried to maintain its right in them. The evidence
shows that when the respondent company found in 1954 that M/s Indian Union Manufacturers Ltd.,
Calcutta had been inscribing the word 'Fifty' on its bells, it at once filed an infringement action. The
action ended in a compromise by which the said company acknowledged the respondent company's
rights in its trade marks of 'Fifty' and '50'. Again, when the attention of the respondent company was
drawn to an advertisement "Five 50", it addressed a notice to the manufacturers of those- bells. The
case of the respondent company was that Gupta Industrial Corporation started using the word 'Fifty'
on its bells in 1958 and not in 1948 as contended by Mr. Desai. In the absence of any evidence as to
the extent of manufacture and sale of those bells it would not be possible to say with any certainty
that the respondent company did not come to know about it till 1958, and therefore, presumed that
Gupta Corporation had started using the word 'Fifty' on its bells in that year. According To the
appellant National Bell Co., it went into production only in 1957 and in 1959 the respondent
company commenced action against it. A similar notice of infringement followed by a suit was also
given to M/s Berry & Co., but the suit became infructuous on account of lack of the jurisdiction of
the Court of Banaras where it was filed. This evidence negatives any abandonment of trade marks or
letting infringements go unchallenged or misleading the other manufacturers that the respondent
company would not interfere it they were to use the same marks. Rights in a mark can, of course, be
abandoned by its owner but so long as he remains the registered proprietor of the mark and carried
on the business to which the mark is attached, a plea of abandonment is difficult to sustain. It
would, however, be a different matter if it is shown that there, were repeated, undisturbed
infringements. The evider in the present case does not show that there were repeated breaches
which went unchallenged though known to the proprietor. Mere neglect to proceed does not
necessarily constitute abandonment if it is in respect of infringements which are not sufficient to
affect the distinctiveness of the mark even if the proprietor is aware of them. (see Re. Farina(1)

81
Where neglect to challenge infringements is alleged, the character and extent of the trade of the
infringers and their position have to be reckoned in considering whether the registered proprietor is
barred by such neglect. [see Rowland v. Mitchell(2) ]. The plea of common use must fail, for, to
establish it the use by other persons should be substantial. Though evidence was produced by the
appellant companies to show that there were other bells in the market with 'Fifty' or '50' inscribed
on them, no evidence was led to show that the use of the word 'Fifty' or the numeral '50' was
substantial. In these circumstances, it is impossible to sustain the contention founded on cl. (c) of S.
32. Under s. 56, the power to rectify is undoubtedly discretionary. Where such discretion has been
properly exercised, a court of, appeal would refuse to interfere. In the present case, however, the
Trial Court did not appreciate the principle embodied in ss. 32 and 1 1, with the result that the
Division Bench was justified in interfering with the discretion exercised by the Trial Court.
In our view, the contentions urged on behalf of the appellant companies cannot be sustained and
consequently the two appeals fail and are dismissed with costs. There will be one hearing fee.
V.P.S. Appeals dismissed.

(1) (1879) 27 W.R. 456.
(2) (1897) 14 R.P.C. 37.

82
Imperial Tobacco Co. Of India Ltd. vs Registrar Of Trade Marks And Anr. on 28 May, 1968
Calcutta High Court

Equivalent citations: AIR 1968 Cal 582, 73 CWN 169
Author: P Mukharji
Bench: P Mukharji
JUDGMENT P.B. Mukharji, J.
1. This is an appeal under Section 109 of the Trade and Merchandise Marks Act of 1958.
2. The Appellant is the Imperial Tobacco Co. of India Ltd. having its registered office at Virginia
House, 37. Chowringhee, Calcutta. The respondents are the Registrar and Deputy Registrar of Trade
Marks.
3. The facts are briefly as follows: On 29-2-60 the Appellant made its first application for
registration of a trade mark before the Registrar applying for registration as a trade mark of a label
bearing the device of snow-clad hills in outline and the word "Simla" written prominently in various
panels of the label. The specification of the goods in the application reads as "Manufactured
tobacco". This application was for registration of the trade mark in Part A of the Register in Clause
34 The application stated: "The said trade mark is proposed to be used "The point is that on 29-2-60
there was no use of the said trade mark and it was only proposed to be used at that point of time. By
his letter dated 9-12-60 the Registrar of Trade Marks informed the Appellant as follows:
"Word Simla' which forms the essential and distinguishing feature of the mark is a tamous
geographical name and is not registrable except on very strong evidence of distinctiveness. No such
evidence is possible as the mark is proposed to be used. You should therefore show cause why the
application should not be refused ".
4. The Appellant replied to this Show Cause Notice on 8-2-61 pleading that since the filing of their
application for registration the Appellant had used ''Simla" trade mark continuously and extensively
throughout India having sold 69894000 cigarettes under the trade mark "Simla" throughout their
branches of Calcutta, Gauhati, Patna, Kanpur, Delhi, Jullundur. Ahemedabad, Bombay, Jabalpur,
Visakhapatnam, Madras and Coimbatore during the period April 1960 to December 1960 and that
the Appellant has also incurred advertisement expenses to the extent of Rs. 3,74,749 during that
period for popularising Simla cigarettes. It was the plea of the Appellant in that letter of 8-2-61 that
Simla trade mark had acquired distinctiveness by continuous and extensive user and that the word
"Simla" connoted and denoted goods manufactured and sold by the Appellant.
5. In answer to this plea, the Registrar of Trade Mark replied on 27-2-61 stating that in order to be
registrable, the mark should have acquired distinctiveness on the date of making the application for
registration. Therefore, the distinctiveness acquired after the date of the application would not
support the application and could not be considered for the purpose of registration. The Registrar by
that letter also informed the Appellant whether the Appellant desired to withdraw the application or
desired to have a hearing at Calcutta

83
6. Then followed a complete silence for more than two years. The Appellant remained quiet until
17-7-63 when it represented that a since the evidence of acquired distinctivenes could not be
considered because it was acquired after the date of the application for registration, the Appellant
had no other alternative but to withdraw the previous application. But the Appellant stated that they
were arranging to file a fresh application for registration of the Simla trade mark on the basis of the
extensive user of the mark and acquired distinctiveness. The present application for registration of
trade mark was the second one. It was filed on 17-7-63 before the Registrar. It was also on that date
that the first application for registration was withdrawn. In other words, on 17-7-63 the Appellant
was withdrawing their first application for registration and filing their second application for
registration.
7. In this second application for registration filed on 17-7-63, the Appellant wanted registration in
Part A of the Register of the accompanying trade mark in Class 34 in respect of Manufactured
Tobacco in the name of the Appellant. The ground stated in this application was: "The applicants
have used and are continuing to use the accompanying trade mark extensively throughout India
having sold 42,2100000 cigarettes under the accompanying trade mark through its branches at
Calcutta, Gouhati, Patna, Kanpur Delhi, Jullnnder. Ahmedabad, Bombay Jabalpui Visakhapatnam.
Madras and Coimbatore during the period of April 1960 to June 30, 1963 and the applicants had
also incurred advertisement expenses of over Rs 15,50,000 during that period for popularising the
accompanying trade mark."
8. In support of this application for registration the appellant filed 22 affidavits from different
persons, who could be classified as (1) the employees of the appellant. (2) the dealers of the
appellants' tobacco, and (3) the consumers of Simla cigarettes.
9. The crucial point in this appeal is not whether a geographical name could be used as trade mark
or not, but whether this geographical name "Simla" has acquired distinctive ness within such a short
period between 29th February 1960 or rather April 1960 and 17th July 1963 which is barely a period
of 3 years.
10. By his order dated the 26th March 1966 the Registrar of Trade Marks refused the appellant's
application for registration The present appeal to this Court is from that decision.
11. The trade mark "Simla" with the label is composite in character. Its essential feature is the word
Simla. ''Simla" is neither an invented word nor is it a word having a dictionary meaning. It is a well
known hill-station of India. Its geographical signification is, therefore, plain and unequivocal. The
snow-clad hills in outline on the label makes the geographical significance inescapable. The
appellant's whole case now rests on 3 years prior use of this trade mark before the date of the
application for registration with the assertion that the geographical name has acquired
distinctiveness and so qualified for registration.
12. The Registrar finds that the appellants have no branch at Simla and that tobacco is not grown
nor is there any factory for manufacturing tobacco goods in the district or town of Simla according
to official publication under the title 'Indian Tobacco Statistics 1939 to 1959 and 'Review of The

84
Central Excise Administration In India 1961-1962'.
13. In the first place, the Registrar ha: come to the finding that the word 'Simla' which in its only and
obvious signification is a well-known geographical name of a chief town of India, is inherently not
adapt' d to distinguish the goods of any particular trader. He therefore, rightly proceeded to discuss
whether the geographical name Simla had acquired a distinctiveness. In discussing the evidence of
distinctiveness as sworn in the affidavits used in the application in support of the registration, he
said that he had no reason not to accept the appellant's evidence regarding large sale and increasing
popularity He however, expressly pointed out that the nature of the evidence was not independent
and disinterested. The Registrar came to the conclusion on this point which can be stated in his own
words "It will, therefore, be unwise to accept the trade evidence on behalf of the applicants as
conclusive on the question of acquired distinctiveness of the word Simla." The Registrar came to the
finding that the mark was not distinctive on the material date and expressed his conclusion in the
following words, "I am therefore, unable to hold that the applicants' mark had become distinctive on
the material date.
14. On the question of deceptiveness of the mark, the Registrar considered the following facts. The
appellants' goods did not emanate from Simla and the word Simla was not connected with the origin
of the goods. He also considered the fact that tobacco was neither grown nor manufactured in Simla.
He repelled the argument on behalf of the appellant that the fact that tobacco was neither grown nor
manufactured in Simla could not deceive any one because it was a well known fact, by the remark
that it was a fact which would be known only to those people who were living in the neighbourhood
of Simla and who were equipped with all the information of the industrial and agricultural resources
of the different parts of India. The Registrar took the view that informed smokers may not be
deceived, but to an ordinary smoker, who had no special knowledge, Simla might not appear to be a
totally unlikely place to be associated with the origin of the cigarettes, and he would, therefore, be
deceived by the appellant's mark.
15. The appellant as a last resort made the argument before the Registrar for the registration of the
mark Simla at least in Part B of the register, on the ground that the mark had been in extensive use
for 3 years prior to the material date and did in fact distinguish the goods of the appellant. Having
regard to the finding already arrived at by the Registrar the Registrar refused the registration of the
mark also in part B of the register because of its inherent incapacity to distinguish the goods of a
particular trader. The Registrar also expressed the view "Registration in any form, whether in Part A
or Part B, will confer a kind of monopoly right on the registrants and will naturally interfere with the
bona fide rights of traders of the locality dealing in the same goods. Such monopoly rights must not
be granted, as otherwise wealthy applicants will divide amongst themselves all the names of
important cities and towns in India to the embarrassment and prejudice of smaller traders."
16. The first major question of law relates to the registrability of the trade mark which is only a
geographical name, such as "Simla". The statutory position in India in the Trade and Merchandise
Marks Act 1958, may be examined at the outset The definition of Trade Mark is contained in Section
2(v)(i) and (ii) of the Trade and Merchandise Marks Act 1958. That definition points out that for the
purposes of Chapter X of the Statute relating to the offences and penalties and procedure except for

85
penalty for falsely representing the trade mark as registered, as stated in Section 81 of the Act,
means a trade mark used in relation to the goods for the purpose of indicating or so as to indicate a
connection in the course of a trade between the goods and some person having the right as
proprietor to use the mark, and in relation to other provision of this Act a mark used or proposed to
be used in relation to goods for the purpose of indicating or so as to indicate a connection in the
course of trade between the goods and some person having the right, either as proprietor or as
registered user to use the mark, whether with or without any indication of the identity of that person
and includes a certificate trademark registered under the Act.
17. The main accent of this definition in the Trade and Merchandise Marks Act does not raise
question of geography or geographical names and is confined to the indication of connection in the
course of trade between the goods and the person using the trade mark. In other words the main
emphasis in this definition is the connection between the person and whose goods they are.
18. The question of geographical name, however, appears in Section 9(1)(d) of the statute. It says
that a trade mark shall not be registered in Part A of the register unless it contains or consists of at
least one of the following essential particulars and one of the particulars mentioned in Sub-clause
(d) of Section 9(1) is "one or more words having no direct reference to the character or quality of the
goods and not being, according to its ordinary signification, a geographical name or a surname or a
personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India."
The material words in Section 9(1)(d) of the Act for the purpose of this appeal, are 'one or more
words having no direct reference to the character and quality of the goods and not being according
to its ordinary signification a geographical name" The words of import are "a geographical name"
and "according to its ordinary signification". There is and can be no doubt that in this case "Simla" is
a word of geographical name according to its ordinary signification within the meaning of Section
9(1)(d) of the Act.
19. But such a geographical name or a geographical word Is not an absolute disqualification for the
purpose of its registration in Part A of the register because by reason of Section 9(2) of the Trade
and Merchandise Marks Act, 1958 it is expressly provided, inter alia, that a geographical name "shall
not be registrable in Part A of the register except upon evidence of its distinctiveness." Therefore a
geographical name or a geographical word is registrable on the evidence of distinctiveness. The
whole point in this appeal therefore would be whether there is evidence of distinctiveness. There is a
definition in Sub-section (3) of Section 9 of the Act which says that for the purposes of the statute
the expression "distinctive in relation to the goods in respect of which a trade mark is proposed to be
registered," means adapted to distinguish goods with which the proprietor of the trade mark is or
may be connected in the course of trade from goods in the case of which no such connection subsists
either generally or where the trade mark is proposed to be registered subject to limitations, in
relation to use within the extent of its registration. Subsection (4) of Section 9 of the Act deals with
Part B of the register and provides inter alia, that a trade mark shall not be registered in Part B
unless the trade mark is distinctive, or is not distinctive but is capable of distinguishing goods. Part
B therefore of the register may include a mark which is not distinctive but capable of distinguishing.
That is one point of difference between Part A and Part B of the Trade Marks register under the
Indian statute. By its Sub-section (6) of Section 9 of the Act the statute gives certain guides for

86
determining whether a trade mark is distinctive or is capable of distinguishing and it provides inter
alia that in making such a determination the Tribunal may have regard to the extent to which (a) a
trade mark is inherently distinctive or is inherently capable of distinguishing as aforesaid, and (b) by
reason of the use of a trade mark or of any other circumstances, the trade mark is in fact so adopted
to distinguish or is in fact capable of distinguishing.
20. This brief analysis of the relevant Sections of the Trade and Merchandise Marks Act, 1958 itself
shows that a geographical name can be registered in Part 'A' on the evidence of distinctive-ness. The
position in law therefore may be stated to be that there is a prima facie bar to the registration in Part
'A' of a geographical name simpliciter but this bar can be overcome on the evidence of
distinctiveness by the express provision of Section 9(2) of the statute.
21. Numerous decisions have been cited at the Bar as usual in these Trade Mark appeals. Some of
them show geographical names have been refused registration and others show that they have been
registered. On the statutory position the law is clear as I have stated whether a geographical name
will or will not be registered In Part 'A' will depend on the fact found in each case whether it has
acquired or not acquired distinctiveness. Out of deference to the citations made from the Bar I will
have to make some reference to at least some of the cases and authorities.
22. Mr. Chakraborty appearing for the appellant has in the first place drawn my attention to the
position of the English statutory law on the point. It is not in my view very relevant where our
statute if clear enough but nevertheless it gives a perspective of how the statute has reacted towards
a geographical name and its registration under the Trade Marks Act In the earlier English Acts like
Trade Marks Registration Act 1875, The Patents. Designs and Trade Marks Act 1883 and the
Merchandise Marks Act 1887 there was no special provision at all relating to geographical names in
England. For the first time the taboo on geographical names appeared in the Patents, Designs and
Trade Marks Act, 1888 of England where under Section 64(1)(e) these familiar words appeared "A
word or words having no reference to the character or quality of the goods and not being a
geographical name". Having imposed the total taboo, relaxation by subsequent statutes started
coming in. The Trade Marks Act, 1905 in England introduced by Section 9(4) the significant words
"and not being according to its ordinary signification a geographical name" Therefore it has got to be
not only a geographical name but must be so according to its ordinary signification so that if the
ordinary signification does not identify it with the geographical name then the name crosses the bar
of registration. With this relaxation the English statutory law continued almost in the same position
until the Trade Marks Act, 1938 when by Section 9(1)(a) the exception was engrafted that even a
geographical name will be registrable if it was on the evidence of its distinctiveness. That is the
present position under the Indian statutory law under the Trade and Merchandise Marks Act of
1958.
23. Mr. Chakraborty thereafter drew my attention to the fact that geographical names have been
registered in Class 34, in India. He collected his materials from the Trade Marks Journal with
considerable industry to show that such geographical names as St. Moritz, North Pole Everest,
Medina, Panama. Oxford, Kali-ghat, Ellora, Mavfair, West End, Gulmarg, London etc. have been
registered. To support his endeavour he produced the list which will be kept with the records of this

87
appeal and which is not objected to on behalf of the Registrar. Strictly speaking no doubt it is not
disputed that a geographical name can be registered when it has acquired distinctiveness Therefore,
if in a particular case on its facts a geographical name acquired a distinctiveness then there was no
bar to its registration, Each case will have to be judged on its own merits to find out whether the
geographical name in that particular case has acquired distinctive-ness. The language of Section
9(2) may be recalled that a geographical name shall not be registrable "except upon evidence of its
distinctiveness."
24. There should therefore be evidence of distinctiveness. In each case therefore where the claim is
to register a geographical name, the evidence of distinctive ness has to be carefully scrutinised,
analysed and weighed. That is one of the primary requirements of the law on this point It is
necessary to emphasise this because it is often thought that any and every kind of evidence will do.
In my view the evidence will have to be dependable, careful and effective. The importance of this
evidence is the only safeguard in the registration of trade marks against indiscriminate use of
geographical names. Both the courts and the Registrar should not be careless on this vital
requirement of the statute for evidence about distinctiveness. I propose to analyse later in this
judgment both the nature of evidence in this appeal as well as the law on the subject of this evidence
for purpose of establishing distinctiveness in trade within the meaning of trade mark law.
25. I shall at this, stage, out of respect to Mr. Chakraborty's citations, discuss some of the other cases
on which he relied. I shall also for the same reason discuss some of the eases cited by Mr. Tibriwal
appearing on behalf of the Registrar. The well-known cases are the Liverpool case, (1928) 46 RPC 99
and the Yorkshire case, (1954) 71 RPC 150.
26. In the matter of application by the Liverpool Electric Cable Co. Ltd. reported in (1928) 46 R.P.C.
99, the applicants applied to register the words "Liverpool Cables" in Parts A and B of the register in
respect of the electric cables. The Registrar there refused the applications on the ground that
although the evidence showed that those words indicated to the trade the company's electric cables,
the word "Liverpool" was not prima facie capable of distinguishing those cables or of becoming
distinctive of them and that "Liverpool" was one of a class of geographical names which were of such
importance that the names ought not to be registered for any trader and that the word "Liverpool"
describes the common characteristic of vast quantities of goods, namely, that they come from
Liverpool and that the phrase "Liverpool cables" therefore meant, not the cables of the applicant
company, but cables manufactured or dealt in at Liverpool. On appeal from the Registrar's decision
to Romer J. the appellant succeeded on the ground that the evidence showed that the words
"Liverpool Cables" did in fact distinguish the company's goods and therefore they were adapted to
distinguish or capable of distinguishing them. Romer. J., expressed the view that for such proof of
distinctiveness the Registrar should have accepted the application in Part B and in the exerrise of his
discretion should have accepted the application in Part A. On further appeal before the Bench of
Han-worth. Master of the Rolls and Lawrence L. J. and Russel L. J the appeal was allowed and the
decision of Romer J . reversed.
27. The Court of Appeal lays down certain important principles in that case. In the first place, it lays
down the principle that the Registrar is not bound to accept an application in Part B to register upon

88
proof of user or that the mark is in fact distinctive and that it is a part of his duty to consider as a
judicial officer application put before him and that he may refuse the registration it not satisfied that
the proposed mark is capable of distinguishing. Secondly it lays down the principle that in
considering whether a geographical name is registrable, both the locality and the goods must be
taken into consideration and that the name of such an important commercial centre as Liverpool,
even though it may in fact be distinctive of the goods m respect of which it is sought to register it, is
not registrable. Thirdly. Lord Hanworth M. R. points out in this decision at page 116 of the report
that the duty of the Registrar is not merely to pay attention to the evidence which is essential for
fulfilling one condition, but it is important that he should look at the question from the point of view
of the public and otherwise as indicated by Hamilton L. J. later to become Lord Sumner, in the
application of R. J. Lea Ltd.. (1913) 30 RPC 216 at p. 227 where he said "It must be adapted to
distinguish, which brings within the purview of his discretion the wider field of the interests and
strangers and of the public" and Lord Parker in W and G du Cros Ltd.. (1913) 30 R P.C. 660 (673)
observing, "If the Tribunal finds that a mark is anywhere or among any class of people, in fact,
distinctive of the goods of the applicant, it may be influenced by this fact in determining whether it
is adapted to distinguish these goods from those of other persons, but distinctiveness in fact is not
conclusive, and the extent to which the Tribunal will be influenced by it must in my opinion, depend
on all the circumstances including the area within which and the period during which such
distinctiveness of fact can be predicated of the mark in question." In fact Lord Parker had observed
in that case at the same page at 638 and laid down the principle that but the tribunal is not bound to
allow registration even if the mark be in fact distinctive. The common law mark is still not
necessarily registered.'
28. The Liverpool case, therefore, does not help the appellant in the present appeal before me On
the contrary it goes against the contention of the appellant No doubt if Romer J's views were upheld
then the appellant would have succeeded but then the court of appeal in England reversed the
judgment of Romer J. If that principle is applied then the decision of the Registrar in the instant
case before me was right.
29. The other case is the Yorkshire case, Yorkshire Copper Works Ltd's application for trade mark
reported in (1954) 71 RPC 150 There the House of Lords was considering the geographical name
Yorkshire for registration in Parts A and B of the register. It may be noticed here that there it was
considered that if registration in Part A was refused, registration in Part B must also be refused. The
applicant's mark for registration of the word 'Yorkshire' was refused by the Registrar. Appeal to
Lloyd-Jackob J. was also dismissed and further appeal to the Court of Appeal was also dismissed.
30. The House of Lords in dismissing the appeal finally reiterated the principle that the Registrar
must by virtue of Section 9(3) of the Trade Marks Act 1938 in England consider both, whether the
mark is inherently adapted to distinguish and whether it is in fact adapted to distinguish, and
secondly that the mark 'Yorkshire' in that case although in fact adapted to distinguish the applicant's
goods was inherently not adapted to distinguish the goods of any trader, and thirdly that the mark
was not distinctive and the application was rightly refused Lord Chancellor Lord Simond at p. 154 of
that Report observed "But I would say that, paradoxically perhaps, the more apt a word is to
describe the goods of a manufacture the less apt it is to distinguish them; for a word that is apt to

89
describe the goods of A, is likely to be apt to describe the similar goods of B. It is. I think, for this
very reason that geographical name is prima facie denied registrability. For just a manufacturer is
not entitled to a monopoly of laudatory or descriptive epithet. so he is not to claim for his own
territory, whether country, county or town. which may be in the future, if it is not now, the seat of
manufacture of goods similar to his own "The other observations of Lord Simond L. C. at p 154
emphasise another principle in this connection where the learned Lord Chancellor emphasised the
duty of the Registrar in this connection by saving that in exercising his discretion the Registrar must
protect the interest of the public not only of today but of tomorrow and the day after tomorrow This
is the principle for deciding the border line cases and Lord Simond L. C. distinguished Monte Rosa
case and Teneriffe case. Lord Oaksey delivering the judgment in the Yorkshire case. (1954) 71 RPC
150 and agreeing with the Lord Chancellor at p. 156 of that report expressed the view that 'Indeed
where the trade mark is geographical it follows, paradoxical as it may sound; that it can only satisfy
factor A (inherent distinctiveness), where it is significant, in the particular context is
non-geographical. For only so can it serve to distinguish the goods of one producer from the goods
of others. Good imaginary instance of this paradox are North Pole Bananas' Monte Rosa Cigarette'
and so on In these instances the geographical term is clearly not applied in any geographical sense,
and pro tanto may. I will not say must, be a sufficient compliance with Section 9(3)(a)."
31. The net result of the Yorkshire case, (1954) 71 RPC 150 is that the appellant cannot really have
the word 'Simla' registered in the manner that he proposed to do in the present instance, unless he
can succeed in showing that it is a name of pure fancy, that it is a fancy word and though the name is
geographical, it is not applied in the geographical sense at all. The fact on which the appellant relies
to make his case that the word 'Simla' is a fancy name in this instance is that the tobacco is not
grown in Simla, it have already quoted that the decision of the Registrar in this case on this point
with which I associate Myself. I shall add however, a few more reasons, I shall assume that Simla
has no agricultural potentialities even under modern scientific '(sic)thuds to grow tobacco
agriculturally, but that is not the end of the appellant's difficulty There may be traders in future who
will manufacture tobacco there. Simla may have in future a manufacturing though not an
agriculitural centre for tobacco. For instance ipaddy may not be grown on the high altitude hill tops
but there may be rice mills on high altitudes. The fact that there is no manufacturing centre in Simla
today is not conclusive. The principle M laid down in the cases just quoted above is that the
Registrar has to look after the interest of the traders and public "not only of today but of tomorrow
and the day after" Then again there is really nothing of fancy in the word 'Simla' to suggest that it
was not used in any geographical sense whatever This is n tobacco which say? it it manufactured in
India Simla is a well known popular hill-station in India, The Label itself as part of the proposed
trade mark, shows the snow-clad hill Lops. The geographical context of Simla therefore, is
inescapable in the present label for registration.
32. This is not like the Magnolia cast in (1897) 14 RPC 265, on appeal in the same volume (1897) 14
RPC 621 where Rigby L. J at p. 627 voiced the principle in discussing the geographical name
Magnolia by saying "But in our judgment the phrase geographical name in Section 64(e) ought not
in general to receive so wide an interpretation It must, we think, in the absence of special
circumstances, be interpreted so as to be in accordance, in some degree, with the general popular
meaning of the words; a word does not become a geographical name simply because some place

90
upon the earth's surface has been called by it. For example, we agree with Kekewich J that the word
"monkey" is not proved to be a geographical name by saving merely that a small and by no means
generally-known island has been applied by that name"
33. That principle cannot be applied m this case for the simple reason that Simla is far too
well-known a place in the geography of India among the Indians to be compared to 'Monkey' as a
small island unknown to many. Secondly, the reason m the Magnolia case was not that Magnolia
was so much a geographical name but that it was associated with the device of the flower on the face
of the mark as Magnolia is the name of a well known flower The statute, in my view is quite clear on
this point of a geographical name and it has to be a geographical name which is so "according to its
ordinary signification' If one applies that test of "ordinary signification", then the legal position
becomes quite clear 'Monkey" in its ordinary signification it no, a geographical name at all but the
name of an animal. See Section 9(1)(d) of the. Trade and Merchandise Marks Act 1958
34. Having regard to this view, it will of unnecessary to discuss in detail the of the references on
which Mi Chakraverty for the Appellant relied namely (1) Stilton Cheese case, 1967 RPC 173 at pp.
180-81. (2| Scotsman case, 1965 RPC 358 at p. 361 (3) Stone Ale ease (1889) 6 RPC 404 at p. 413 (on
Appeal to the House of Lords in (18911 8 RPC 361), (4) Roman Holiday case, 1964 RPC 129, (5) The
Champagne case, 1961 RPC 116 at p. 127 (6) Berna case, (1915) 32 RPC 113 and (7) Itala case (1910)
27 RPC 493
35. As Tookev Q. C deciding the Scotsman's case, in (1965) 1965 RPC 358 observed that the word
"Scotsman" in that case had qualified for registration under Section 9(1)(d) being a word having no
direct reference to the character or quality of the goods and that it was a figurative or fanciful
suggestion of association which the public would accept as such and no more would not be
objectionable". See the observations at p. 361 of that Report. Here, as I have said, I am unable to
draw that conclusion that the word "Simla" is so figurative or fanciful in the present case.
36. Similarly, in the Stilton Cheese case reported in (1967) 1967 RPC 173 it was found and held that
the word "Stilton" had been used for 50 years to denote exclusively cheese manufactured by the
particular process and in that particular district and therefore it was held that the word "Stilton" was
inherently adapted to distinguish. Pennycquick J. at p. 181 of the Report makes it quite clear by
these words: "The word is still today used to denote exclusively cheeses made by that process and in
that district. It seems to me then that from this factual angle the word 'Stilton' is eminently
appropriate to distinguish cheese manufactured lay members of the Association and certified by the
Association from cheese not so certified." Finally the learned judge also observes at p. 181,
summarising the points of that case, in these terms "On the other hand, the evidence before Court at
this stage is conclusive that in the trade and amongst the gastrenomic experts the name indicates
not only those physical properties", (shape, colour, taste etc.) "but also a certain method of
manufacture and in particular the region from which the cheese comes. Upon this evidence I think
one must treat the name 'Stilton' as being distinctive in the sense in which the word 'distinguish' is
used in Section 37" of the Trade Marks Act 1938 in England "Simla" cannot in my judgment on the
facts found, claim these characteristics in the present appeal.

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37. An interesting case is the one of "London Candles" reported in (1909) 26 RPC 797 under the title
Prices Patent Candles Co. Ltd. v. Ogston and Tennant Ltd This raised the question of a geographical
name acquiring a secondary meaning and not in the geographical place but somewhere outside.
Price & Co. had a registered trade name consisting of an oblong label with a panoramic view of
London looking across Black-friars Bridge with St. Paul's Cathedral prominent in the centre. On the
right-hand side of the label was a double circle containing a ship in full sail Price & Co., used this
label with the addition of the words "London Candles" in large letters printed across it for many
years is the Morocco market, they designated their staple candle for that market by the words
"London Candles" and these candles were at least to a large extent known to the customer by the
native equivalent of those words. Ogston ana Tennant Co. almost copied these words "London
Candles" with their labels. The learned Single Judge in the Court of Session in Scotland Lord
Johnston came to the conclusion that O and T's label was an infringement of P. Co's registered trade
mark and that at common law O and T's label taking the words "London Candles" without regard to
their meaning as part of the pictorial design was a colourable imitation of P. Co's label and O and T
had been guilty of passing-off. Lord Johnston came to the conclusion that the words "London
Candles" had acquired a secondary meaning in the Morocco market in connection with P. Co's
candles. Lord Johnston at page 813 of the report formulates the theory of secondary meaning in
these terms:
"London is a geographical term and perhaps the most general that could be adopted. There have
from time immemorial been other candle makers in London besides the Pursuers. As the word
'London' could not be adopted as a trade mark so its use cannot be absolutely monopolised by any
particular manufacturer But a geographical name may acquire a secondary meaning, identifying the
goods on which it appears with a particular trader ".
On the facts in this case it cannot be claimed that the word 'Simla' has acquired a secondary
meaning and that in course of only three years' time so as to mean by association "Simla" to be
always the tobacco of the appellant company without reference to the geographical place Simla'
38. A secondary or fancy meaning for a geographical name in its ordinary geographical signification
can only come in on the ground of distinctiveness according to the statute in this country. In Van
Duzer's Trade Mark Application reported in (1887) 4 RPC 31 Lopes L. J., in explaining what is a
fancy word observed as follows:
"But now I come to the expression 'fancy word'. It is difficult thing to define: but it is necessary in
this case that the Court should define what is meant by 'fancy word' I adhere to the two definitions I
gave of that expression during the course of that argument. I think that a word to be a fancy word
must be obviously meaningless as applied to the article in question. I think it must be a word
fanciful in its application to the article to which it is applied in the sense of being so obviously and
notoriously inappropriate as neither to be deceptive nor descriptive, nor calculated to suggest
deception or description. Further than that. I think, that the word must have an innate and inherent
character of fancifulness which must not depend on evidence, and cannot be supported by evidence,
to show that in fact that it is net the deceptive nor descriptive, or calculated to be deceptive or
descriptive. What I mean is that a fancy word in nay opinion must speak for itself, it must be a fancy

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word on its own inherent strength." Not any of these tests is applicable in the case of the word
"Simla" for which the appellant is asking for registration.
39. The other case to which reference was made in the course of the argument was the Glastonburys'
case reported in (1938) 55 RPC 253. When the matter came up before Clauson J., it was held that in
spite of the final "s". "Glastonburys" was a geographical name prims facie unregistrable and that the
evidence was insufficient to prove distinctiveness and that the word was not adapted to distinguish.
It was also held by the learned Judge that the presence of such a trade mark would cause confusion.
The Registrar was therefore ordered to rectify the register by expunging the mark. On appeal to the
Court of Appeal the appeal was allowed and the application to expunge the mark was dismissed. The
House of Lords reversed the Court of Appeal and restored the judgment of Clauson J., and came to
the conclusion that the mark was not adapted to distinguish the goods of the respondent and that its
presence on the register would hamper the rights of other traders.
40. Important observation was made in the House of Lords about the nature of evidence in such
cases. Lord Atkin expressly observed at page 260: "Reliable evidence by salesmen in retail shops or
departments that their customers ask for goods by the trade-mark name, and that they supply them
to the customers under that name appears to me to be direct evidence and indeed beat evidence that
the word is in fact distinctive." But the majority of the House of Lords did not accept that view of
Lord Atkin about the appreciation of the evidence.
41. The majority view was expressed by Lord Maugham L. C. at p. 258 of that report. The learned
Lord Chancellor after referring to the decision of the Registrar of Trade Marks v. W. & G. Du Cros
Ltd., 1913 AC 624 and the Court of Appeal's judgment in the Liverpool Cable Case. (1928) 46 RPC 99
and Lord Sumner (formerly Lord Justice Hamilton) in the case of R. J. Lea Ltd., (1913) 30 RPC 218
made the following observation:
"In short I am unable to see why the respondents in the circumstances which exist in that case
should be allowed to gain such a monopoly in respect of the word 'Glastonbury' as important place
of trader in Glastonbury desirous of making a perfectly honest use of the word in a position of grave
difficulty and might cause confusion in the minds of the purchaser."
The learned Lord Chancellor on the question of evidence made the following significant observation
at p. 258 of the report:
"Moreover, I am of the opinion that a great deal, if not a bulk, of the evidence relied on by the
respondents was evidence of little weight. If a manufacturer in a particular town chooses for some
years to use the name of the town as a trade mark in respect of his goods, and then (whilst still
manufacturing there) proceeds to ask of his trade customers what the name of the town indicates to
them, it is I think inevitable that many of them will reply that the name indicates to them the
manufacture of the persons from whom they have been in the habit of procuring the goods. The
association of the good's with the place is not in my opinion thereby negatived. Accordingly for my
part I attach some weight to the respondent's customers - all of them or nearly all of them, framed in
the same words - stating that the name of Glastonbury, when used in connection with the

93
slipper-shoes and over-shoes, indicates the respondent's goods to the exclusion of those of other
manufacturers. I should add that it is plain that such a customer of the Respondents can only give
evidence as to what the name means and that he is not entitled to give evidence a? to what the name
would mean to anyone else in the trade or to the public. Evidence as to the meaning which members
of the public, actual or probable buyers of Sheepskin slippers would attach to the words is
exceedingly scanty. In the view that I take of the evidence given by customers of the Respondents,
the conclusion is almost inevitable that the opinion of the trial Judge on the question whether the
evidence was sufficient to prove that the mark was a mark adapted to distinguish the Roods of the
Respondents from those of other persons was correct."
42. The reason for setting out the observation of Lord Maugham, L. C. in A. Bailey & Co. Ltd. v.
Clark, Son & Morland Ltd., (Glastonbury's case) in (1938) 55 RPC 253 (259) will be obvious when I
come to deal with the present appeal before me.
43. In summarising the legal position on this point of geographical names and distinctiveness, the
learned Editor of the 9th Edn. of Kerly's Law of Trade Marks and Trade Names at p. 400 and para
758 analyses the cases as falling under two categories. In the first place, there is a class of cases
"where the question is whether a defendant has made a misleading use of a geographical
appellation; and those where the allegation is that, although as a geographical appellation the
expression complained of may have been accurately used its use is calculated to represent that the
goods are of the plaintiffs". The learned commentator then proceeds that to succeed under the
former head it is enough for the plaintiff to prove "(1) that he produces the substance in a given
place. (2) that no one else produces the substract in that place; (3) that the defendant is selling the
substance with the name of that place, as a description; and (4) that there is likely to be deception of
the public; although as the Spanish Champagne case show.-- there are other ways of making out a
case." To succeed under the second head, the learned editor comments that the plaintiff must prove
that the appellation in dispute has ceased to have a purely descriptive meaning as in the "Stone Ales"
case where although the right of the appellant to state that his been was brewed at Stone was
recognised it was held to be subject to an obligation not to do so in any manner calculated to cause
the appellant's beer to be passed off as that of the respondents, which was commonly known as
"Stone Ale" In other words, it is said that if as required by the rule laid down by the authorities the
plaintiff proves that an apparently descriptive word which he claims to appropriate has ceased to
have a purely descriptive meaning, it is difficult to imagine how the defendant can be truthfully
using that word with that meaning.
44. It will be appropriate at this stage to refer to two Indian case . In Hindusthan Development
Corporation Ltd. v Deputy Registrar of Trade Marks on a reference to a learned third Judge when
there was difference between two learned Judges of a Division Bench, it was decided that Section
6(1) of the Trade and Merchandise Marks Act 1958 is couched in a negative form and its effect is
that in order to be eligible for registration, a mark must contain at least one of the particulars so
specified. In other words, the absence of any of the particulars would disqualify the mark for
registration though the presence of any one of them would not make the mark ipso facto eligible for
registration. There the mark was ''Rasoi". It quoted with approval the celebrated Livron case, (1936)
54 RPC 1R1 and approved the observation made by Crossman J. at p. 180 viz. "In my judgment.

94
'Livron' is a word whose only signification is geographical and hence does not contain the essential
particulars of Section 9(4) "
45. Menai. J. of this Court in the Matter of India Electric Works Ltd., reported in (1945) 49 Cal WN
425 upheld the decision of the Registrar refusing to register "India" as a trade mark in respect of the
electric fans and regulators although used by the applicant from before the relevant date on the
ground that it was not adapted to distinguish.
46. The legal position then is clearly established that a geographical name which is geographical in
its ordinary signification cannot be registered in Part 'A' except upon evidence of its distinctiveness.
It would be therefore necessary to examine whether in the present case there is evidence of such
distinctiveness.
47. Before analysing the evidence a word here is necessary to say how Courts have looked at the
problem of acquiring distinctiveness. The leading authority on the point is the decision of the House
of Lords already mentioned above, 1913 AC 624 Lord Parker in His Lordship's judgment at page 633
of that report observed .
''My Lords the proper time for considering whether a mark is registrable or whether having regard
to the interests of the public it ought to be accepted or rejected is in my opinion when the
application for its registration first comes before the Registrar under the 12th section of the Act of
1905. If the mark be then allowed to proceed to advertisement under the 13th section, all possibility
of considering whether in the interest of public or otherwise, it ought to be admitted to registration
may have been lost for unless there he private opposition to the registration the mark must, in
default of the intervention of the Board of Trade be put on the register under the 16th section. In this
respect the Court of Appeal appears to have acted under an erroneous impression as to the true
meaning and effect of the Act They were, in my opinion, bound to determine the question raised
before them and could not postpone its determination until after the mark had gone to
advertisement
48. This answers Mr. Chakraborty's argument on behalf of the appellant that the Registrar should
not have decided it himself before the stage of advertisement but should have first advertised the
mark and then after opposition and on evidence decided this point. Mr. Chakraborty has tried to
distinguish this case by saving that the decision in that case was based on the British Trade Marks
Act of 1905 which was different with regard to advertisement and other provisions. He is right in
that submission But that difference would not make the difference here on the ground that the
scheme of the Trade and Merchandise Mark1- A 1 1958 in India is VPS the Registrar amole
discretion, power and in some case duty to decide this point before ii reach*-*- the stage of
advertisement Section ' 814) gives the Registrar the right to refuse the application or to accept it
absolutely or subject to such amendments, modifications conditions or limitations as he may deem
fit Section 18(6) inter alia makes it clear that in case of such refusal the Registrar has to record in
writing the grounds for such refusal which he ha: done in this case. Even after acceptance the
Registrar may withdraw his acceptance under Section 19 of the Act on grounds mentioned there. It
is followed by Section 20 which provides that when an application for registration has been accepted

95
the Ragistrar shall cause the application at accepted to be advertised in the prescribed manner.
There is a proviso which dispenses with such advertisement by saying that the Registrar may cause
the application to be advertised before the acceptance if it relates to a trade mark to which Section
9(2) applied which includes the case of a geographical name on evidence of distinctiveness or in any
other case where it appears to him that it is expedient by reason of any exceptional circumstances so
to do. This proviso in my opinion does not take away the discretion, the right or even the duty of the
Registrar to decide this point at the time when he is considering whether he should accept or reject
the application for registration under Section 18.
49. Secondly. Lord Parker in that case observed that both the area and the time are important
considerations in finding distinctiveness. In that case which Lord Parker was deciding the company
commenced its business only in 1908 and applied for registration on the 2nd December 1910. It was
held in that case that this was too short a time to acquire distinctiveness. Lord Parker observed a
page 637 of that report as follows:
"But the tribunal is not bound to allow registration even if the mark be in fact distinctive. A common
Law mark is still not necessarily registrable. If the tribunal finds that a mark is anywhere or among
any class of people, in fact, distinctive of the goods of the applicant, it may be influenced by this fact
in determining whether it is adapted to distinguish these goods from those of other persons, but
distinctiveness in fact is not conclusive and the extent to which the tribunal will be influenced by it
must, in my opinion, depend on all the circumstances, including the area within which and the
period during which such distinctiveness in fact can be predicated of the mark in question. In the
present case it appears that the mark W & G in script is at the present moment, and in a particular
area, in fact distinctive of the cars of the applicants for registration, but the area within which and
the time during which such distinctiveness has existed, are in my opinion insufficient to displace the
opinion on more general grounds."
The learned Editor of the 9th Edition of Kerly on the Law of Trade Marks and Trade Names in
paragraph 286 and pages 144-45 has also emphasised both the elements of area and time to acquire
distinctiveness. It has been said there that an applicant is entitled to withdraw an application and to
make a second application so as to obtain the advantage of a longer period of use and the case of
Thorne & Co. Ltd. v. Sandow Ltd., (1912) 29 RPC 440 at p. 451 is cited as an authority for that
purpose. It is also made clear that it is to be observed that the use which the tribunal is authorised to
take into consideration is use of the trade mark applied for as a trade mark; therefore, where there
has been no actual use as a trade mark although there may have been use in other ways, the Court
cannot, it would seem, take into consideration such other use and in support of this proposition the
case of Gramophone Co's application, (1910) 27 RPC 689 and Lea's application. (1917) 34 RPC 94
are cited. A significant observation appears in the Gramophone case reported in (1910) 27 RPC 689
at page 700 where Parker J., makes the observation: "The notion of distinguishing gramophones
made by the proprietor of the Trade Mark from gramophones made by others, in other words, the
original and legitimate function of a Trade Mark, appears to re entirely lost in the idea of a trade
monopoly in the name of an article, a monopoly which it appears to be thought anyone who can
afford it may secure by spending enough on advertisement, and of which quite apart from any deceit
or misrepresentation it would be dishonest after such expenditure to attempt to deprive him."

96
This answers one of the points urged on behalf of the appellants that they have spent over Rs.
15.30.000 in advertisement expenses Spending on advertisement is not enough or sufficient proof to
establish distinctiveness There are many articles or goods over which a lot of money is spent in
advertisement but the magnitude of advertisement expenses does not by itself prove that they have
acquired distinctiveness On the contrary, there may be articles or goods over which comparatively
little advertisement expense is incurred but which may nevertheless acquire distinctiveness.
50. I will be appropriate now to have a close look at the affidavit evidence and evidence in letters
used in this case to prove acquisition of distinctiveness, The letters which I have already quoted
from the appellant company to the Registrar and the Deputy Registrar show (a) sale of 42.21.00.000
cigarettes under the proposed trade mark and (b) the expenditure of Rs 15,50.000 on
advertisements. Sale of cigarettes, as expenditure on advertisements does not by itself establish that
the goods have acquired distinctiveness There are many goods or articles in trade or business which
have large sales but no distinctiveness It has been argued that sales of all cigarettes are increasing in
the modern age in India for a variety of reasons such as increase of population, rise in the standard
of living, increasing vice and addition to nicotine habit in spite of the threat of cancer and therefore
increase in sales of cigarettes by themselves are no conclusive indication of "distinctiveness" within
the trade mark law.
51. Distinctiveness in trade has to be established. It is a notion by itself. It may be result of the sales
or of the advertisements, but that result has to be proved. Sales and advertisements may be the
means to lead to distinctiveness but they themselves are neither necessarily so nor conclusive. It is
unfortunate that except the bare figures stated in these letters and bare statement of sales of Simla
Cigarettes appearing at p. 80 of the Paper Book, no books of accounts, no allocation of separate
expenditure, no profits from Simla Cigarettes from the books of the appellant and not even the
nature and frequency of advertisement have been produced to support the total figures put down in
these letters or statements.
52. Coming now to the affidavit evidence in this case, the affidavits come from three classes of
people (1) the employees themselves, (2) the dealers and (3) the consumers. It is admitted in these
affidavits that the mark was first used in April 1960. It, therefore, follows that on the 2nd
application for registration made on 17th April 1963, the appellant claims to have acquired
distinctiveness within about a period of 3 years time which the House of Lords did not find to be
sufficient time to acquire distinctive-ness in Du Cros's case in 1913 AC 624. Applying the test of
judging the evidence as laid down by Lord Maugham L. C. in the House of Lords in Du Cros's case
1913 AC 624 it Is plain that the evidence is wholly insufficient as found by the Registrar. The
evidence comes from such persons as (1) A compounder, Desai, (2) Gangaram, who is really a shop
keeper and who calls himself as a Merchant, (3) Sachnindra Nath Dey, a smoker for 3 years, (4)
Sanat Kumar Bhattacharya, another shop keeper, (5) Md. Jaffer. a shop keeper in the New Market,
(6) Agarwalla, a wholesale cigarette dealer, (7) Prohlad Singh, a smoker. (8) Gangabishan Sud. a
shop keeper, (9) Sudarsan Bhatia, a smoker, (10) Binoy Kumar Shome, who is a new smoker of 2
years standing, (11) Gopal Nandi, a shop keeper of Panbazar Gauhati, (12) Haslam, smoker who does
not say that he him-self smokes Simla cigarettes, (13) Atmaram, another shop keeper, (14)
Choureshla, a shop keeper, who describes himself as a Cigarette and Pan Merchant, (15) Md. Ahsan,

97
a smoker, (16) Rammurti, another smoker. (17) Famir Md. a seller of cigarettes.
53. These affidavits try to say - (a) that Simla cigarettes are popular, (b) that their sales are
increasing, and (c) that they are known in the market as Simla cigarettes of the appellant No doubt
these affidavits come from different parts of India.
54. So far as the employees and the dealers are concerned their evidence is not disinterested or
independent evidence. They are interested to boost the appellant who patronises them. The evidence
of the smokers is certainly disinterested and independent. But they are few and far between and of a
type not dependable as will be seen from the list above. The pattern of affidavits is almost common
to all. The pattern is the same & the contents are almost verbatim the same. In some cases like the
Affidavits of Atmaram and Sud whose originals were produced by the Registrar in Court although
are in English the deponents do not seem to know English having signed in Hindi or Urdu and other
Indian languages and there is no statement in the affidavits that the statements made therein were
read over and explained to them and they signed such affidavits after having understood what they
were signing. The status, responsibility, dependability of these persons specially when they used the
evidence of affidavits which cannot be checked do not seem to indicate that it is reliable evidence
which can prove distinctiveness in a magically short time of barely three years. Distinctiveness of
goods in a trade by its association with a particular name required normally a hard, laborious and
time-consuming process in business. There can certainly be no hard and fast rule for any particular
minimum period of time required to acquire distinctiveness. In some cases the time to acquire
distinctiveness may be larger than in others. But In this there Is a limit. No doubt what that limit is
will depend on the facts of each case. But then the important point is that it must be a reasonable
time which can make it reasonably possible for one to acquire distinctiveness in the ordinary world
of business. When the application in this case was first made on the 29th February 1960, it was a
mark which was not in use at all, but which mark was only 'proposed' to be used. When the Registrar
pointed out to the appellant that Simla being a geographical name this 'proposed' mark could not be
registered because there was and could be no distinctiveness acquired. Keeping this application for
registration pending the appellant is alleged to have gone on building up a trade In 'Simla' cigarettes
by investing money in advertisements and pushing on with his sales of Simla cigarettes without
registration. While all these were being done, the original application was kept pending until the
17th July 1863, when the appellant simultaneously withdrew their original application and put in
this new application for registration stating that while the original application was pending, they
have acquired distinctiveness with the word Simla in the meantime. That is a context which does not
impress and help in the acquisition of distinctiveness in the facts of this case.
55. The need for careful scrutiny o) the affidavit evidence produced in Trade Mark Appeals cannot
be overemphasised. Hamilton L. J. in Bardman's case, (1913) 30 RPC 218 went so far as to say that
in cases of application which are not opposed, the Registrar is entitled to scrutinise the evidence not
only with 'critical' but even with 'sceptical vigilance'. I perhaps, shall not go to the length of
suggesting that vigilance should be sceptical but I agree respectfully with Hamilton L. J that scrutiny
of the evidence should he critical.

98
56. For these reasons, I uphold the decision of the Registrar and his finding that the appellant's
mark had not become distinctive, Evidence is not such which proves such distinctiveness The
question now is if there is good reason for registration of the appellant's mark in register B of the
Trade Marks Register.
57. The Registrar in his decision has refused registration of the Appellant's mark in Part B of the
Register because of its inherent incapacity to distinguish the goods of a particular trader. He has
also observed that "registration in any form, whether in Part A or Part B, will confer a kind of
monopoly right on the registrants and will naturally interfere with the bona fide rights of traders of
the locality dealing in the same goods. Such monopoly rights must not be granted, as otherwise
wealthy applicants will divide amongst themselves all the names of important cities and towns in
India to the embarrassment and prejudice of smaller traders."
58. The Registrar has a discretion in this matter He has exercised his discretion and has refused the
Appellant's claim to have the mark registered in Part B of the Trade Mark Register. I do not think
that he exercised his discretion improperly or capriciously or illegally.
59. The relevant sections relating to the registration in Parts A and B of the Register have already
been noticed earlier in the judgment under Section 9(4) of the Trade & Merchandise Marks Act
1958. Registration in Part B is not permissible unless either the trade mark is distinctive or even if it
is not distinctive but is capable of distinguishing goods. There are many legal debates in different
judicial decisions about the fine distinction between a mark which is "distinctive" and a mark which
is "capable of distinguishing" although is not distinctive.
60. There are certain guides laid down by Section 9(5) of the Trade Marks Act to show when a trade
mark is distinctive or it capable of distinguishing. 1 do not consider Section 9(5) of the Act is
exhaustive. It is illustrative to indicate the features which the Tribunal "may" regard in determining
whether a trade mark is distinctive or is capable of distinguishing. The first consideration under
Section 9(5)(a) is when a trade mark is inherently distinctive or is inherently capable of
distinguishing The second feature which the Tribunal may regard under Section 9(5)(a) of the Act is
where by a reason of the use of the trade mark or of any other circumstances, the trade mark is in
fact so adapted to distinguish or is in fact capable of distinguishing, as aforesaid. Even applying
these Illustrative tests in Section 9(5) (a) or (b) I am of the opinion, in agreement with the
Registrar's decision, that "Simla" trademark on the facts of this case is not inherently distinctive of
the appellant's goods Nor do I think it is inherently capable of distinguishing the appellant's goods
on the same facts discussed above. I am satisfied that on the facts found, the use of the trademark
"Simla" or any other circumstance in fact makes the appellant's trademark adapted to distinguish or
capable of distinguishing the appellant's goods within the meaning of Section 9(5)(b) of the Act.
61. I am of the view that the whole doctrine of a trade mark which is not distinctive but which is only
capable of distinguishing, within the meaning of Section 9(4) of the Trade and Merchandise Marks
Act 1958 for the purpose of registration is Part B, must be applied with great caution in respect of
marks which fail to be registered in Part A of the Register under Clauses (a), (b), (c) and (d) of
Section 9(1) of the Act which includes the case of a geographical name according to its ordinary

99
signification like Simla. Important reason is that such a geographical name under Section 9(1)(2) is
expressly made by the status not to be registered in Part 'A' 'except upon evidence of its
distinctiveness'. It is only when such a geographical name is distinctive and its distinctiveness has
been proved on evidence then the geographical name can be registered in Part 'A'. It does not say
that it can be registered in Part 'A' even upon evidence of the fact that it is capable of distinguishing
the goods. Distinctiveness is the verv core ground for registration in Part 'A' of the Register. Those
marks which are capable of distinguishing or adapted to distinguish are not necessarily or always
those which are not distinctive, so that the common impression that a mark which fails to be
registered in Part 'A' automatically qualifies for registration in Part 'B' is not legally correct. The
expression "capable of distinguishing" involves uotb the future potentiality and the pre-sent
capability of distinguishing in determining whether a mark is "capable of distinguishing" it is not
mere future speculation by itself into uncertain future events. There has to be a present judging and
assessment whether the mark is "capable of distinguishing" In doing so the nature of the mark the
nature of the goods in respect of which it is used or to be used, the nature of the market in which it is
to operate including the geography, the country the consumer and also the future prospects Where it
has to be judged whether the mark is "adapted to distinguish" the further consideration should be
the nature of the adaptation and what is it in the mark which is adapted to distinguish
62. In a RECENT decision of the English Court of Appeal in 'Weldmesh' trade mark reported in 1966
RPC 220, Lloyd-Jackob J. ,in the first instance reported in (1948) 65 RPC 590 interpreted the words
'adapted to distinguish' in part A and 'capable of distinguishing' in relation to Part B of the English
register as being deliberately chosen so as to direct the particular inquiry aright, the former
emphasising that it is because of the presence of a sufficient distinguishing characteristic in the
mark itself that distinctive-ness is to be expected to result whatever the type and scale of the used
and thus secure an estimation of the positive Quality in the mark and the second that, in spite of the
absence of sufficient distinguishing characteristic in the mark itself, distinctiveness can be acquired
by appropriate user thereby overcoming a negative quality in the mark The Court of appeal in
dismissing the appeal observed that the legislature must have intended to draw a distinction
between that which is inherently capable of distinguishing with that which is inherently adapted to
distinguish and approved of the definition propounded by Lloyd-Jackob J. See observations of
Wilmer L J in 1966 RPC 220 at Rs 227-228 of Harman L. J. at page 228, Russell L. J. at p. 229. It
must however, be remembered that the Weldmesh trade mark was not concerned with a
geographical name.
63. It must be observed that the registration either in Part A or Part B of a trade mark if valid gives
to the registered proprietor of the trade mark the exclusive right to the use of such trade mark and to
obtain relief in respect of the infringement of the trade mark in the manner provided by the Statute.
That is the provision of Section 28(1) of the Trade and Merchandise Marks Act 1958 The only
difference is that under Section 29(2) of the Act, in an action for infringement of a trade mark
registered in Part B. an injunction or other relief shall not be granted. If the defendant establishes to
the satisfaction of the Court that the use of the mark is not likely to deceive or cause confusion in the
manner laid down in Sub-section (2) of Section 29 of me Act. That defence apparently on the
language of Section 29, is not open to the defendant when registration is in Part A of the Act. The
other special provision which distinguishes registration in Part A of the register from Part B of the

100
register it. Section 32 of the Trade and Merchandise Marks Ad 1958, which makes registration in
Part A conclusive regarding its validity after the expiration of 7 years, except on 3 grounds, specially
mentioned there of (a) fraud, (b) contravention of Section II or offending against the provisions of
this section on the date of the commencement of the proceedings or (c) that the trade mark was not
at the commencement of the proceeding distinctive of the goods of the registered proprietor.
64. For the reasons stated above and on the authorities discussed. I uphold the decision of the
Registrar on the grounds stated before me and on further grounds advanced in this judgment.
65. The appeal, therefore, fails, and is

dismissed with costs. Certified for two
Counsel.

101
Parle Products (P) Ltd vs J. P. & Co. Mysore on 28 January, 1972

Equivalent citations: 1972 AIR 1359, 1972 SCR (3) 289
Author: G Mitter
Bench: Mitter, G.K.
PETITIONER:
PARLE PRODUCTS (P) LTD.
Vs.
RESPONDENT:
J. P. & CO. MYSORE
DATE OF JUDGMENT28/01/1972
BENCH:
MITTER, G.K.
BENCH:
MITTER, G.K.
VAIDYIALINGAM, C.A.
DUA, I.D.
CITATION:
1972 AIR 1359 1972 SCR (3) 289
1972 SCC (1) 618
ACT:
Trade and Merchandise Marks Act, 1958, s. 2(d)--Deceptively
similar'--Proper approach by court for determining if one
mark is deceptively similar to another.
HEADNOTE:
The appellants filed a suit for an injunction restraining
the respondents from infringing their registered trade mark
used on packets of biscuits manufactured by them, The suit
was dismissed by the trial court and the High Court.
Allowing the appeal to this Court,
HELD : (1) Under the Trade and Merchandise Marks Act, 1958,
a registered trade mark is infringed by a person who uses,
in the course of trade, a mark which is identical with or
deceptively similar to, the trade mark, in relation to any
goods in respect of which the trade mark is, registered; and
the expression 'deceptively similar' means a mark which so
nearly resembles another mark as likely to deceive or cause
confusion. In order to come to the conclusion whether one
mark is deceptively similar to another the broad and
essential features of the two are to be considered. They
should not be placed side by side to find out if there are
any differences in the design, and if so, whether they are

102
of such character as to prevent one design from being

mistaken for the other. It would be enough if the impugned
mark bears such an overall similarity to the registered mark
as would be likely to mislead a person usually dealing with
one to accept the other if offered to him. [292 B-D; 294 D-
F]
In this case, the packets of biscuits manufactured by the
appellants and respondents were practically of the same
size, the color scheme of the two wrappers was almost the
same, and the designs on both, though not identical, bore
such a close resemblance that one could easily be mistaken
for the other. If one was not careful enough to note the
peculiar features of the wrapper on the plaintiffs' goods,
he might easily mistake the defendants' wrapper for the
plaintiffs' if shown to him some time after he bad seen the
plaintiffs' wrapper. Though the trial court and the High
Court had concurrently found that the defendants' wrapper
was not deceptively similar to that of the plaintiffs, the
finding must be set aside as it was not arrived at on a
proper consideration of the law. 1294 F-H],
Durga Dutt v. Navaratna Laboratories [1965] 1 SC.R. 737
followed.
Karly's Law, of Trade Marks and Trade Names, 9th ed. para
838 .referred to.
JUDGMENT:
CIVIL APPELLATE JURISDICTION : C.A. No. 1051 of 1967. Appeal by special leave from the
judgment and decree dated July 5, 1966 of the Mysore High Court in Regular First Appeal No. 170 of
1963.
S. T. Desai and I. N. Shroff, for the appellant. S. K. Mehta and K. L. Mehta, for the respondent. The
Judgment of the Court was delivered by Mitter, J. This is an appeal by special leave from a judgment
of the Mysore High Court confirming the dismissal of a suit for an injunction restraining the
respondent from infringing the registered trade mark of the plaintiffs used on packets of biscuits.
The facts are as follows. The plaintiffs-appellants before us are manufacturers of biscuits and
confectionery and are owners of certain registered trade marks. One of them is the word "Gluco"
used on their half pound biscuit packets. Another registered trade mark of theirs is a wrapper with
its color scheme, general set up and entire collocation of words registered under the Trade Marks
Act 1940 as No. 9184 of 7th December, 1942. This wrapper is used in connection with the sale of
their biscuits known as "Parle's Gluco Biscuits" printed on the wrapper. The wrapper is of buff color
and depicts a farm yard with a girl in the centre carrying a pail of water and cows and hens around
her on the background of a farmyard house and trees. The plaintiffs claim that they have been
selling their biscuits on an extensive scale for many years past under the said trade mark which
acquired great reputation and goodwill among. the members of the public. They claimed to have
discovered in March 1961 that the defendants were manufacturing, selling and offering for sale

103
biscuits in a wrapper which according to them was deceptively similar to their registered trade
mark. The plaintiffs assert that this act of the defendant constitutes an infringement of their trade
mark rights. As in spite of lawyer's notice the defendants persisted in manufacturing, selling and
using the wrappers complained of with regard to their biscuits, the plaintiffs filed the suit claiming
injunction as already mentioned. The defendants pleaded ignorance of the registration of the trade
marks claimed by the plaintiffs. They denied that the wrapper used by them in connection with the
sale of their biscu its was deceptively similar to the plaintiffs' trade marks as alleged or that they had
in any way infringed the trade mark rights of the plaintiffs. They pleaded further that there was a
good deal of difference in the design of their wrapper from that of the plaintiffs and relied on certain
features of their design which were said to be quite dissimilar to those of the plaintiffs' wrapper
inasmuch as the defendant's wrapper contained the picture of a girl supporting with one band a
bundle of hay on her head and carrying a sickle and a bundle of food in the other, the cow-, and hens
being unlike those of the plaintiffs' wrappers. There was also said to be difference in the design of
the buildings on the two wrappers and the words printed on the two wrappers were distinct and
separate.
The trial court meticulously examined the features found on the two wrappers and the packets of
biscuits produced before it and took the view that there were greater points of dissimilarity than of
similarity between the two and as such it was unlikely that the defendants, goods could be passed off
as and for the goods of the plaintiffs. After pointing out the distinguishing features of the wrappers,
the trial court concluded that there was no chance of a seller committing fraud on a customer and an
ordinary purchaser would certainly refuse to purchase the defendants' goods if he was offered them
as and for the plaintiffs' goods. Accordingly the trial court held that the plaintiffs had failed to
establish their case.
Although the High Court held that in such a case it was not necessary for the plaintiffs to adduce
evidence that any particular individual had been deceived by the defendants' wrapper and it was
undeniable that the general get up of the two wrappers was more or less similar, it went on to
observe that the court had to bear in mind that it was dealing with packets of biscuits which were
generally used by people of the upper classes, and a purchaser desirous of getting a packet of Parle
biscuits would go and ask for the same as such, in which case there could be no scope for deception;
again the plaintiffs could have no cause for grievance if a purchaser was content to buy any biscuits
which were offered to him by the shopkeeper. The High Court also took the view that there were
several' distinguishing features between the two wrappers and these could be noticed even from a
distance. According to the High Court, the similarity in the two wrappers lay in the facts that both
were partly yellow and partly white in color and both bore the design of a girl and some birds. "But"
the High Court said "there the similarity ends. The lady in the wrapper used by the plaintiff
company has a pot on her hand while, the lady in the wrapper used by the defendant has a hay-
bundle on her head. In fact, they are not identical in features. In the defendants' wrapper we have
got a cow and in the plaintiffs' wrapper we have got two calves. The upper portion of the defendants
wrapper is not similar to that of the ,Plaintiffs' wrapper." The High Court went on to comment:
"it is true that in a passing off action, one is not to look to minor details but must take
into consideration the broad features. Even if we take the broad features of the two

104
wrappers into consideration, we do not think that they are similar. At any rate, they
are not so similar as to deceive an ordinary purchaser of biscuits."
With due respect to the learned Judges of the High Court, we are constrained to remark that they
fell into an error. The plaintiffs' marks were registered under the Trade Marks Act, 1940 which was
however repealed by S. 136 of the Trade and .,Merchandise Marks Act, 1958. Under sub-s. (2) of the
said section any registration under the Act of 1940 if in force at the commencement of the Act of
1958 was to continue in force and have effect as if made, issued and given under the corresponding
provisions of the Act of 1958. Under S. 21(1) of the Act of 1940 the registration of a person in the
register as proprietor of a trade mark in respect of any goods gave to that person the, exclusive right
to the use of the Trade mark in relation to those goods and that right was to be deemed to be
infringed by any person who, not being the proprietor of the trade mark or a registered user thereof
using by way of the permitted use, used a mark identical with it or so nearly resembling it as to be
likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of
which it was registered. Under s. 28(1) of the Trade and Merchandise Marks Act, 1958 the
registration of a trade mark in Part A or Part B of the register gave to the registered proprietor of the
trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of
which the trade mark was registered and to obtain relief in respect of the infringement of the trade
mark in the manner provided by the Act. Under s. 29(1):
"A registered trade mark is infringed by a person who, not being the registered
proprietor of the trade mark or a registered user thereof using by way of permitted
use, uses in the course of a trade a mark which is identical with, or deceptively similar
to, the trade mark, in relation to any goods 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."
The expression '.'deceptively similar" has now been defined under s. 2(d) of the Act of 1958 thus "A
mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other
mark as to be likely to deceive or cause confusion;"
It is to be noted that although there was no such provision in the definition section of the Act of
1940 s. 21(1) of the said Act was to the same effect. The Indian Trade Marks Act of 1940 was based
on the English Trade Marks Act, 1938 and s. 21 of the Act of 1940 was more or less similar to s. 4 of
the English Act of 1938.
To decide the question as to whether the plaintiffs' right to a trade mark has been infringed in a
particular case, the approach must not be that in an action for passing off goods of the defendant as
and for those of the plaintiff. According to this, Court in Durga Dutt v. Navaratna Laboratories(1):
"While an action for passing off is a Common Law remedy being in substance an
action for deceit, that is, a passing off by a person of his own goods as those of
another, that is not the gist of an action for infringement. The action for infringement
is a statutory remedy conferred on the registered proprietor of a registered trade

105
mark for the vindication of the exclusive right to the use of t he trade mark, in
relation to those goods (vide s. 21 of the Act). The, use, by the defendant of the trade
mark of the plantiff is not essential in an action for passing off, but is the sine qua
non in the case of an action for infringement."
In the above case the Court further pointed out "In an action for infringement, the plaintiff must, no
doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity
between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise
and the court reaches the conclusion that there is an imitation, no further evidence is required to
establish that the plaintiff's rights are violated. Expressed in another way, 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 hi which he offers his goods for sale show
marked differences, or indicate clearly a trade or' in different from that of the registered proprietor
of the mark would be material; 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."
According to Karly's Law of Trade Marks and Trade (9th edition paragraph 838):
"Two marks, when placed side by side, may exhibit many and various differences vet
the main idea left on the mind by both may be the same. A person acquainted with
one mark, and not having the two side by side .lm0 (1) [1965] 1 S.C.R. 737. 754 for
comparison, might well be deceived, if the goods were allowed to be impressed with
the second mark, into a belief that he was dealing with goods which. bore tile same
mark as that with which he was acquainted. Thus, for example, a mark may represent
a game of football; another mark may show players in a different dress, and in very
different positions, and yet the idea conveyed by each might be simply a game of
football. It would be too much to expect that persons dealing with trade-marked
goods, and relying, as they frequently do, upon marks, should be able to remember
the exact details of the marks upon the goods with which they are in the habit of
dealing. Marks are remembered rat her by general impressions or by some significant
detail than by any photographic recollection of the whole. Moreover, variations in
detail might well be supposed by customers to have been made by the owners of the
trade mark they are already acquainted with for reasons of their own."
It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar
to another, the broad and essential features of the two are to be considered. They should not be
placed side by side to find out if there are any differences in the design and if so, whether they are of
such character as to prevent one design from being mistaken for the other. It would be enough if the
impugned mark bears such an overall similarity to the registered mark as would be likely to mislead
a person usually dealing with one to accept the other if offered to him. In this case we find that the
packets are practically of the same size, the color scheme of the two wrappers is almost the same; the
design on both though not identical bears such a close resemblance that one can easily be mistaken
for the other. The essential features of both are that there is a girl with one arm raised and carrying

106
something in the other with a cow or cows near her and hens or chickens in the foreground. In the
background there is a farm house with a fence. The word "Gluco Biscuits" in one and "Glucose
Biscuits" on the other occupy a prominent place at the top with a good deal of similarity between the
two writings. Anyone in ,our opinion who has a look at one of the packets to-day may easily mistake
the other if shown on another day as being the same article which he had seen before. If one was not
careful enough to note the peculiar features of the wrapper on the plaintiffs goods, he might easily
mistake the defendants' wrapper for the plaintiffs if shown to. him some time after he had seen the
plaintiffs'. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock
Holmes. We have therefore no doubt that the defendants' wrapper is deceptively similar to the
plaintiffs' which was registered. We do not think it necessary to refer to the decisions referred to at
the Bar as in our view each case will have to be, judged on its own features and it would be of no use
to note on how many points there was similarity and in how many others there was absence of it.
It was argued before us that as both the trial court and the High Court had come to the same
conclusion namely, that the defendants, wrapper was not deceptively similar to the plaintiffs', the
finding is one of fact which should not be disturbed by this Court. Normally, no doubt this Court
does not disturb a concurrent finding of fact. But where, as here, we find that,, the finding was
arrived at not on proper consideration of the law on the subject it is our duty to set the same aside
on appeal.
In the result, we hold that the defendant had infringed the registered trade mark of the plaintiff and
the suit of the plaintiff should be decreed and an injunction granted restraining the
defendant-respondent from selling or using in any manner whatsoever biscuits in wrappers similar
in appearance to the registered trade mark of the plaintiffs on their packets. The appellants will be
entitled to their costs throughout.
V.P.S.
Appeal allowed.

107
Corn Products Refining Co. vs Shangrila Food Products Ltd. on 8 October, 1959

Equivalent citations: AIR 1960 SC 142, (1960) 62 BOMLR 162, 1960 1 SCR 968
Author: Sarkar
Bench: A S Kapur, S Das
JUDGMENT Sarkar, J.
1. This appeal arises out of an application made under the Trade Marks Act, 1940, hereinafter called
the Act, for registration of a trade mark. The application was made by the respondent and it was
opposed by the appellant.
2. The respondent is a manufacturer of biscuits. On November 5, 1949, it made the application for
registration of the mark 'Gluvita' in respect of the goods specified in class 30, which mark, it
appeared later, it had not used prior to that date. The Registrar ordered the application to be
advertised before acceptance on the respondent's agreeing to limit the registration to biscuits only
which were one of the classes of goods specified in class 30.
3. The appellant is a corporation organised under the laws of the State of New Jersey in the United
States. On August 31, 1942, it had registered the mark 'Glucovita' under the Act in class 30 in respect
of "Dextrose (d-Glucose powder mixed with vitamins), a substance used as food or as an ingredient
in food; glucose for food." On the same date the appellant had also registered the same trade mark
in class 5 in respect of "Infants' and invalids' foods."
4. The appellant opposed the respondent's application contending that it should be refused under ss.
8(a) and 10(1) of the Act to which opposition the respondent duly filed a counter statement. Both
sides filed affidavits in support of their respective cases.
5. The Deputy Registrar held that Section 12 as for biscuits included in class 30 were not goods of
the same description as glucose powder mixed with vitamins which was in the same class. He
further held that the words 'Glucovita' and 'Gluvita' were not visually or phonetically similar and
that there was no reasonable likelihood of any deception being caused by or any confusion arising
from, the use of the respondent's proposed mark. In regard to s. 8(a), he held applying the cases of
In re : an application by Smith Hayden & Coy. Ld. [(1945) 63 R.P.C. 97], that the syllable 'co' which
was absent in the respondent's proposed mark sufficiently distinguished the two marks and made it
impossible for any one to be deceived or confused. One of the findings made by the Deputy Registrar
was that the appellant had acquired a reputation and goodwill for its trade mark 'Glucovita' in
respect of glucose powder mixed with vitamins.
6. The appellant then preferred an appeal to the High Court at Bombay from the order of the Deputy
Registrar. That appeal was heard by Desai, J., exercising the original jurisdiction of that Court. It
was not seriously pressed before him on behalf of the appellant that the goods were of the same
description and he himself also came to the conclusion that they were not so. He, therefore, held
that the registration could not be refused under s. 10(1) of the Act. Desai, J., agreed with the Deputy
Registrar's finding that the appellant had acquired a reputation among the public for the mark

108
'Glucovita' in respect of glucose powder mixed with vitamins. He however disagreed with the view of
the Deputy Registrar that the respondent's mark was not likely to cause deception or confusion. He
held that the two marks were sufficiently similar so as to be reasonable likely to cause deception and
confusion. He, therefore, set aside the order of the Deputy Registrar and held that the respondent's
mark could not be registered in view of s. 8(a).
7. Now the respondent appealed from the judgment of Desai, J. This appeal was heard by Chagla,
C.J., and Shah, J., of the same High Court. The learned Judges of the appellate bench took the view
that there was no evidence that the appellant's mark had acquired any reputation among the public
but that the evidence produced showed that it had acquired a reputation among the trades people
only who were discerning and were not likely to be deceived or confused. According to them, the
public not being aware of the reputation of the appellant's trademark were not likely to be deceived
or confused by the use by the respondent of its proposed trademark. They also held that the
evidence established that there were a series of marks in which the prefix or suffix 'Gluco' or 'Vita'
occurred and that it could not therefore be said that the common features 'Gluco' and 'Vita' were
only associated with the manufacture of the appellant's goods. On both these grounds they held that
the proposed mark of the respondent was not likely to confuse or deceive any one. In the result, they
set aside the order of Desai, J., and restored that of the Deputy Registrar. The appellant has now
appealed to this Court from the judgment of the appellate Judges of the High Court.
8. As we have earlier stated, the appellant had opposed the registration of the respondent's mark
under s. 8(a) and also under s. 10(1). In order that s. 10(1) might apply to the case, the appellant had
to establish that its mark had been registered in respect of the same goods or description of goods
for which the respondent had made its application for registration. On this question the decisions of
the Deputy Registrar and Desai, J., are against the appellant. Before the appellate Judges of the
High Court the appellant proceeded on the basis that the goods were not of the same description.
Before us also the appellant has adopted the same attitude. That puts s. 10(1) out of the way. We are
thus left only with the question whether s. 8(a) prevents the registration of the respondent's mark.
9. In our judgment the view of the appellate Judges of the High Court that there was no evidence
that the appellant's trade mark had acquired a reputation among the public cannot be sustained. In
coming to this view, they relied on the affidavits filed by the appellant wherein it was stated that
"Glucovita is a well-known mark in the trade" and denoted only the products of the appellant. We
think that the learned appellate Judges put too strict a meaning on the words "in the trade" in
thinking that they referred only to the tradespeople. In our view, these words may refer also to the
public. If they do, then of course, that would be evidence that the appellant's mark had acquired a
reputation among the public.
10. But apart from this, there is other evidence on the record to support the conclusion that the
appellant's mark had acquired a reputation among the public. The appellant had in its opposition
categorically stated that its mark had acquired a reputation among the Indian buying public. There
is no clear denial of this in the counter-statement filed by the respondent. There is further ample
evidence to show that the appellant's goods under its mark 'Glucovita' were sold in very large
quantities in small containers of one pound and four ounces capacities. The small sizes of the

109
containers would indicate that the goods were sold to the public for if those sales had been to
tradespeople for industrial purposes, they would have been made in bulk on in much larger
containers. It appears that the appellant spent considerable sums for the advertisement of its mark
'Glucovita' in ordinary popular journals and this would indicate that it had a large sale for its goods
among the general public. But the most conclusive evidence of the sale of the appellant's goods
under the mark 'Glucovita' to the general public comes from the affidavits filed by the respondents
itself. From the affidavit of K. M. Jamal, a partner in a firm of Pawar and Co., filed by the
respondent, it appears that "a number of customers come to buy the products 'Gluvita' and the
products 'Glucovita'." Similar statements appear in eight other such affidavits. The evidence
provided by these affidavits make it perfectly clear that the appellant's mark had acquired a
reputation among the general buying public. We think it right in this connection also to refer to the
respondent's grounds of appeal against the judgment of Desai, J. In these the respondent does not
dispute, and in fact it assumes, that the appellant's mark had acquired a reputation among the
public. We are, therefore, fully satisfied that the appellant has established that its mark has acquired
a reputation among the buying public.
11. In connection with the question of reputation, the learned appellate Judges seem to have fallen
into another curious error. They said "A commodity may acquire reputation by its being made by a
particular manufacturer and the consumers may require not a particular commodity but the
commodity made by a particular manufacturer. It is only in the latter case that it could be said that
the commodity manufactured by a particular manufacturer has acquired a reputation among the
public. On those affidavits there is not even a suggestion that the public wanted the 'Glucovita'
powder mixed with vitamins manufactured by the respondent and not by anybody else." The
respondent referred to by the learned Judge is the appellant before us. We are unable to agree with
the view expressed by them. It seems clear to us that what is necessary is that the reputation should
attach to the trade mark; it should appear that the public associated that trade mark with certain
goods. The reputation with which we are concerned in the present case is the reputation of the trade
mark and not that of the maker of the goods bearing that trade mark. A trade mark may acquire a
reputation in connection with the goods in respect of which it is used though a buyer may not know
who the manufacturer of the goods is.
12. In our view, therefore, it would be wrong in this case to say that the appellant's trade mark had
not acquired any reputation among the general public and that hence there is no reasonable
apprehension of their being confused or deceived by the use of the respondent's proposed mark.
13. The second point on which the learned appellate Judges based themselves in arriving at the
conclusion that there was no reasonable apprehension of confusion or deception was, as we have
earlier stated, that there were various trade marks with a prefix or suffix 'Gluco' or 'Vita' and that
made it impossible to say that the common features 'Glu' and 'Vita' were only associated with the
appellant's products. This view was founded on a passage which the learned appellate Judges quoted
from Kerly on Trademarks, 7th Edn. p. 624. That passage may be summarised thus : Where there
are a "series" of marks, registered or unregistered, having a common feature or a common syllable,
if the marks in the series are owned by different persons, this tends to assist the applicant for mark
containing the common feature. This statement of the law in Kerly's book is based on In re : an

110
application by Beck, Kollar and company (England) Limited [64 R.P.C. 76]. It is clear however from
that case, as we shall presently show, that before the applicant can seek to derive assistance for the
success of his application from the presence of a number of marks having one or more common
features which occur in his mark also, he has to prove that those marks had acquired a reputation by
user in the market. We will read a portion of the judgment at pp. 82 & 83 in Beck, Kollar & Co's case
[64 R.P.C. 76] from which what we have stated earlier, appears :
"I am disposed to agree with Mr. Burrell's submission that the "series" objections is primarily
founded upon user, because the inference which the Registrar is asked to draw is that traders and
the public have gained such a knowledge of the common element or characteristic of the "series"
that when they meet another mark having the same characteristic they will immediately associate
the later mark with the "series" of the marks with which they are already familiar. But I do not think
that this statement necessarily implies that the whole issue must be determined solely under the
provisions of section 11, as I will now endeavour to explain.
"When an application for registration is before the Registrar it frequently happens that the search
for conflicting marks reveals several marks having some characteristic feature in common with the
mark of the application, which marks may stand on the Register in the name of one proprietor only,
or in the name of several different proprietors. At this stage, when the matter is one between the
applicant and the Registrar, the latter generally has before him no evidence as to whether the
registered marks are in actual use or not, but in forming an opinion under Section 12 as to whether
or not confusion or deception is likely to arise, he is bound, I think, in the absence of evidence to
presume that, prima facie some at least of the registrations have been effected bona fide by persons
who at the date of their respective applications were using or proposed in the near future to use their
marks. If, therefore, all the marks were owned by one proprietor, the Registrar would presume that
the latter was using a "series" of marks and judge the conflict between the applicants' mark and each
of the proprietor's marks with this consideration in mind. Of course, if the registrations merely
consisted of one and the same word registered separately in respect of several articles to be found in
a single class of the Trade Marks Schedules, the Registrar would in general regard all these
registrations as but the equivalent of a single registration covering all the items, for they would not
constitute a "series" as now under discussion. On the other hand, if the registered marks found were
owned by several different proprietors, this would be a circumstance which might considerably
assist the applicant, who would be in a position to submit that the common characteristic was one
well recognised in marks in use in the particular trade. In short, when the Registrar comes to
compare the applicant's mark with the registered marks, using the principles laid down in the
"Pionotist" case the presence of marks on the Register other than the one with which the
comparison is being made is regarded an one of the surrounding circumstances which he is required
to take into account.
"But when the same question comes before the Registrar in opposition proceedings, it appears to me
that he is no longer in a position to make any presumption as regards the surrounding
circumstances, but that before he can draw the suggested inference based upon the user of other
marks either in the applicant's or the opponent's favour, any such user must be established by
evidence (see, e.g. Harrods Ld.'Application, 52 R.P.C., p. 70, 1. 39-p. 71, 1. 15, where the Registrar

111
refused to draw the necessary inference in favour of the applicants in the proceedings)."
14. We have no reason to think that Kerly in stating the law on the subject intended to depart from
the principle stated in the passage that we have just now read, from Beck, Kollar & Co's case.
15. We may also refer to In re : Harrods' application [52 R.P.C. 65], mentioned in the quotation from
Beck, Kollar & Co's case [64 R.P.C. 76], set out in the preceding paragraph. It was there said at p. 70,
16. Now it is a well recognised principle, that has to be taken into account in considering the
possibility of confusion arising between any two trademarks, that, where those two marks contain a
common element which is also contained in a number of other marks in use in the same market
such a common occurrence in the market tends to cause purchasers to pay more attention to the
other features of the respective marks and to distinguish between them by those features. This
principle clearly requires that the marks comprising the common element shall be in fairly extensive
use and, as I have mentioned, in use in the market in which the marks under consideration are being
or will be used.
17. The series of marks containing the common element or elements therefore only assist the
applicant when those marks are in extensive use in the market. The onus of proving such user is of
course on the applicant, who wants to rely on those marks. Now in the present case the applicant,
the respondent before us, led no evidence as to the user of marks with the common element. What
had happened was that Deputy Registrar looked into his register and found there a large number of
marks which had either 'Gluco' or 'Vita' as prefix or suffix in it. Now of course the presence of a mark
in the register does not prove its user all. It is possible that the mark may have been registered but
not used. It is not permissible to draw any inference as to their user from the presence of the marks
on the register. If any authority on this question is considered necessary, reference may be made to
Kerly p. 507 and Willesden Varnish Co. Ltd. v. Young & Marten Ltd. [39 R.P.C. 285 p. 289]. It also
appears that the appellant itself stated in one of the affidavits used on its behalf that there were
biscuits in the market bearing the marks 'Glucose Biscuits', 'Gluco biscuits' and 'Glucoa Lactine
biscuits'. But these marks do not help the respondent in the present case. They are ordinary
dictionary words in which no one has any right. They are really not marks with a common element
or elements. We, therefore, think that the learned appellate Judges were in error in deciding in
favour of the respondent basing themselves on the series marks, having 'Gluco' or 'Vita' as a prefix
or a suffix.
18. We have already said that in our view the mark 'Glucovita' has acquired a reputation among the
general buying public. The first question that then arises is whether the marks 'Glucovita' and'
Gluvita' are so similar as to be likely to cause confusion to the buying public or deceive them. On this
matter, we have not the advantage of the view of the learned appellate Judges of the High Court.
They did not express any view on this aspect of the question at all. We are however inclined to think
that their answer to the question would have been in the affirmative. However that may be, the
Deputy Registrar felt that the words were not so similar as to be likely to give rise to confusion or to
cause deception. He felt that the syllable 'co' in the appellant's mark was an emphatic characteristic
and was not likely to be slurred over. He apparently felt that this syllable would prevent any

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confusion arising between the two marks or any person being deceived by the use of them both. He
thought that the test down in what is called the "Ovax" case (In re : an application by Smith Hayden
and Co. Ltd. [63 R.P.C. 97], should be applied and that the emphatic characteristic of the second
syllable in the mark 'Glucovita' should decide that there was no likelihood of confusion arising.
Desai, J., thought that the Deputy Registrar was wrong.
19. 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 appellant's 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.
20. 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 of vitamins. The Aquamatic case (Harry Reynolds v.
Laffeaty's Ld.) [1958 R.P.C. 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 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 reasonable likely
to cause a confusion between them.
21. It was then said that the goods were not of the same description and that therefore in spite of the
similarity of the two marks there would be no risk of confusion or deception. We are unable to
accept this contention. It is true that we have to proceed on the basis that the goods are not of the
same description for the purposes of s. 10(1) of the Act. But there is evidence that glucose is used in
the manufacture of biscuits. That would establish a trade connection between the two commodities,
namely, glucose manufactured by the appellant and the biscuits produced by the respondent. An
average purchaser would therefore be likely to think that the respondent's 'Gluvita biscuits' were
made with the appellant's 'Glucovita' glucose. This was the kind of trade connection between
different goods which in the "Black Magic" case (In re : an application by Edward Hack [58 R.P.C.
91]), was taken into consideration in arriving at the conclusion that there was likelihood of
confusion or deception. The goods in this case were chocolates and laxatives and it was proved that
laxatives were often made with chocolate coatings. We may also refer to the "Panda" case (In re : an
application by Ladislas Jellinek [63 R.P.C. 59]). The goods there concerned were shoes and shoe
polishes. It was observed that shoe polishes being used for shoes, there was trade connection
between them and that this might lead to confusion or deception though the goods were different.
The application for registration was however refused under that section of the English Act which
corresponds to s. 8 of our Act on the ground that the opponents, the manufacturers of shoes, had

113
not established a reputation for their trademark among the public.
22. It is true that in both the above-mentioned cases the two competing trade marks were absolutely
identical which is not the case here. But that in our opinion makes no difference. The absolute
indentity of the two competing marks or their close resemblance is only one of the tests for
determing the question of likelihood of deception or confusion. Trade connection between different
goods is another such test. Ex hypothesi, this latter 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 applies, as held in the "Black Magic" and "Panda" cases, where the competing marks were
identical. 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.
23. It is then said that biscuits containing glucose are manufactured with liquid glucose whereas the
appellant's mark only concerns powder glucose. We will assume that only liquid glucose is used in
the manufacture of biscuits with glucose. But there is nothing to show that an average buyer knows
with what kind of glucose, biscuits containing glucose are or can be made. That there is trade
connection between glucose and biscuits and a likelihood of confusion or deception arising
therefrom would appear from the fact stated by the appellant that it received from a tradesman an
enquiry for biscuits manufactured by it under its mark 'Glucovita'. The tradesman making the
enquiry apparently thought that the manufacturer of 'Glucovita' glucose was likely to manufacture
biscuits with glucose; he did not worry whether biscuits were made with powder or liquid glucose.
Then again it is stated in one of the affidavits filed by the appellant that the respondent's director
told the appellant's manager that the respondent had adopted the name 'Gluvita' to indicate that in
the manufacture of its biscuits glucose was used. Those statements of behalf of the appellant are not
denied by the respondent. So, a trade connection between glucose and biscuits would appear to be
established. We are therefore of opinion that the commodities concerned in the present case are so
connected as to make confusion or deception likely in view of the similarity of the two trade marks.
We think that the decision of Desai, J., was right.
24. In the result, we set aside the order of the learned appellate Judges of the High Court and restore
that of Desai, J. The appeal is accordingly allowed. The appellant will get the costs before the
appellate Judges in this High Court and in this Court.
25. Appeal allowed.

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Medley Pharmaceuticals Ltd. vs Khandelwal Laboratories Ltd. on 27 September, 2005
Bombay High Court

Equivalent citations: 2006 (1) BomCR 292, 2005 (31) PTC 515 Bom
Author: S Kamdar
Bench: S Kamdar
JUDGMENT S.U. Kamdar, J.
1. The present notice of motion is taken out for interim reliefs in a suit for passing off. By prayer (a)
of the motion it has been prayed that the defendant should be restrained by temporary order and
injunction from manufacturing, selling, exhibiting for sale and advertising pharmaceutical and
medicinal preparations under the trade mark CEFI or CEFI-DT or any other trade mark deceptively
similar to the plaintiff's trade mark CEFO, CEFO-P or CEFO-DT so as to pass off the defendant's
pharmaceutical and medicinal preparation as if the same are pharmaceutical preparation of the
plaintiff herein.
2. The present suit is filed on a passing off action under Section 27 of the Trade and Merchandise
Marks Act, 1958. It is the case of the plaintiff that sometime in or about December, 199 the plaintiff
adopted a distinctive trade mark called CEFO for its use in relation to a medicinal and
pharmaceutical preparation containing the drug "Cefixime" to be marketed by the plaintiff. It is the
case of the plaintiff that on 23.12.1999 the plaintiff applied for registration of the said mark CEFO
under the provisions of the Trade & Merchandise Marks Act, 1958 in class 5 and that the said
application is pending before the Trade Mark Authorities. It is the further case of the plaintiff that in
or about January 2000, the licensee of the plaintiff one M/s. Emil Pharmaceutical Industries (P)
Ltd., made an application to the Joint Commissioner, (Konkan Division), Food & Drug
Administration, Maharashtra, for licence to manufacture "Cefixime" dispersible tablets under the
name CEFO-DT and "Cefixime" oral suspension under the name CEFO-P. Accordingly, on
14.1.2000, the Joint Commissioner granted the necessary licence to the said Emil Pharmaceutical
Industries (P) Ltd. who is the licensee of the plaintiff. It is the further case of the plaintiff that since
September 2000 the licensee of the plaintiff is manufacturing the said goods and for the year
2000-2001 the sales figures of the plaintiff is Rs. 1,12,19,475.00 and for the year 2001-2002 the
figure is Rs. 1,24,77,571.00 and for the period April 2002-Sept. 2002 the figure has been Rs.
50,36,726.00. It is also the case of the plaintiff that the plaintiff has spent on sale promotion
expenses in the year 2000-2001 about Rs. 25 lacs and in the year 2001-2002 also in the range of few
lacs of rupees. It is therefore the case of the plaintiff that the said mark CEFO-DT and CEFO-P has
acquired reputation and is distinctive to the goods of the plaintiff and, therefore, the defendant
should be restrained from using deceptively similar trade mark. In para 8 of the said plaint the
plaintiff has also stated that in respect of one of the company namely, Alembic Ltd., they have
obtained an ex-parte injunction order from using the trade mark CEFO in relation to their drug. In
para. 9 of the said plaint it has been contended by the plaintiff that they learnt recently in 2002
when they filed the present suit that they have come to know that the defendant is using the similar
drug formulation CEFIXIME and the said pharmaceutical formation are used in making and
manufacturing the drugs and are sold under the trade mark CEFI and CEFI-DT which is similar to
the plaintiff's mark of CEFO-DT and CEFO-P and, therefore, the mark used by the defendant is
deceptively similar to that of the plaintiff. It is the case of the plaintiff that on 3.10.2002 the plaintiff

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gave notice and since the defendant did not desist from using the said mark the plaintiff has filed the
present suit on the basis of the passing off action for restraining the defendant from using the mark
similar or deceptively similar to that of the plaintiff herein.
3. On the other hand, the defendant has raised various contentions. It has been contended by the
defendant that the plaintiff has made various false statements in the plaint particularly as to the
date of the knowledge of the plaintiff about the defendants use of the said mark. Even in respect of
proceedings at Ahmedabad against Alembic Ltd., it has been contended by the defendant that the
statements in para 8 of the said plaint was false because on 11.10.2002 the interim orders were not
in force. A perusal of the record and proceedings it has been found that on 7.10.2002 to 8.1.2003
there were no orders in operation and, therefore, the statement made in para 8 of the said plaint is
false. The defendant has also claimed that the words "CEF" is a prefix of the formulation and is
commonly used by the various companies and there are large number of drugs which are already in
market with prefix CEF and thus the plaintiff has no proprietary right nor the said mark is any
innovative design or innovation by the plaintiff and thus the plaintiff is not entitled to use the said
mark exclusively. It has been contended that the defendant has also made an application on
17.8.2000 for registration of the trade mark "CEFI" in Class 5 and the said application is also
pending. It has been also stated by the defendants that the defendants are in the market for the said
goods right from November 2000 when the permission is granted by FDA for manufacture and sale
of the said product. The learned counsel for the defendant has relied upon various documents to
show which includes the various pharmaceutical guides and the bulletins to show that the drugs of
various companies with words "CEF" being used are in the market and are sold side by side and thus
there is no question of any right of the plaintiffs to prevent the defendant from using the said mark
or from selling the said goods under the said mark.
4. I have considered the arguments advanced by the learned counsel for the plaintiff and the
defendant. Even without going into the contention of the defendant that the plaintiff has made
erroneous and false statements in paragraphs 8 and 9 of the plaint, I find even on merits the
plaintiff has no case. It is clear from the record before me that the said mark with the prefix "CEF"
with almost identical mark of the plaintiff is already in the market and is sold by various parties. In
respect thereof a book called Indian Drug Review for May-June'2001 has been produced before me
which inter alia gives a mark with "CEFO" being used by Claris Lifesciences in respect of tablets
manufactured by them of 250 mg and 500 mg. Apart therefrom in Exhibit 11 which is a Indian Drug
Review for November-December 2000 a large number of items are shown as items which are
manufactured and produced with prefix "CEF". In fact a company such as Intas Laboratory Pvt.
Ltd., are using the mark "CEFTAS", Glaxo Smithkline Ltd., is using the mark "CEFSPAN", Cipla
Ltd., is using the mark "CEFIX", Lupin Laboratories Ltd., is using the mark "CEFF", Lincolin
Pharmaceuticals Ltd., is using the mark "CEFLIN", Cadila Healthcare is using the mark
"CAFOGEN". Similarly, various other companies are also using the mark. Thus, from the perusal of
the aforesaid marks which are in the market, particularly, the mark of Lupin Laboratories Ltd.,
which is absolutely close to the mark of both the plaintiff and the defendant, namely, "CEFF" which
is identical to "CEFI" being the mark of the plaintiff and "CEFP" being the mark of the defendant. It
is not possible to accept the contention of the learned counsel for the plaintiff that by virtue of the
user of the mark "CFI" and other mark being "CEFO" the plaintiff has acquired any exclusivility or a

116
right of exclusive user of the said 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 exclusivility 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.
5. However, the learned counsel for the plaintiffs has contended that the learned Single Judge of this
Court has in the case of Pidilite Industries Ltd., v. S.M. Associates and Ors., reported in 2004 (28)
PTC 193 has taken the view that the mere fact that the said mark has been used by various other
companies in the market is not sufficient to deny an injunction in favour of the plaintiff but the
defendant must also establish that the parties who are using the similar mark in the market have
huge market share and that their sale is of substantial amount. It is being contended that thus
unless the defendant establish that the market share of third parties which are also using the said
mark is of such a huge amount that the plaintiff can be disentitled to obtain the injunction. The
learned Single Judge in the aforesaid judgment has relied upon a judgment of the Apex Court in the
case of Corn Products v. Shangrila Food Products and gave a finding that the defendant must
establish a substantial evidence to show that the said goods are sold extensively in the market and
the sale figures of such third parties are such that such a party has acquired reputation by user of the
said goods in the market. It has been held by the learned Single Judge that the defendant must
establish exclusive use in the market. Even at the interim proceedings according to the learned
Single Judge it is not sufficient merely for the defendant to show prima facie that there is user of the
mark by various parties in the market. He must produce a prima facie evidence to show substantial
use and at the final hearing of the suit the level of the proof is higher and the defendant must prove a
substantial use by such third parties. On the basis of the aforesaid judgement the plaintiffs have
urged that the defendant has failed to show the substantial sale of the said various products which
are sold in the market under mark "CEF" and thus even though products are sold in the market with
similar mark as that of the plaintiff still the defendant should be injuncted from using the same
mark. Apart from the fact that I do not subscribe to the view expressed by the learned Single Judge
in the aforesaid judgment but I am refraining to go into the same in this matter. It is because in the
present case on the facts in my opinion the defendant has been able to establish a substantial user of
the said mark by various companies in the market. The defendants have produced before me in the
form of sale figures of various companies by relying upon the survey conducted by ORG-MARG
which are set out at Exhibits 14, 15 and 16 of the affidavit in reply. A mere perusal of the said
exhibits leaves no manner of doubt that the drugs almost with similar mark as that of the plaintiff
and defendant both is in the market extensively and is being sold in market also with substantial
sales figure. In that view of the matter I am of the opinion that the mark of the plaintiff does not
have any exclusivity and is being frequently used not only by the defendant but by various other
parties in the market in respect of pharmaceutical drugs. However, the learned counsel for the
plaintiff has relied upon the judgment of the Apex Court in the case of Cadila Health care Ltd., v.
Cadila Pharmaceuticals Ltd., . He has also relied upon the judgment of the Division Bench in which
the Division Bench has interfered with the order of the learned Single Judge and has granted
injunction. The learned counsel has relied upon para 27 of the said judgment and has contended
that the confusion arising from similarly of marks among medicines are required to be taken into
consideration and, therefore, the Court must grant an injunction. In the present case, no such case

117
has been made out and, therefore the question of granting injunction on that basis does not arise.
Thereafter the learned counsel has relied upon the unreported judgment of the Division Bench of
this Court in Appeal No. 498 of 2002 in Notice of Motion No. 725 of 2002 in Suit No. 1305 of 2002
(Bal Pharma Limited v. Wockhardt Limited and Anr. dated 12.6.2002 by A.P. Shah and Nishita
Mhatre, JJ. and has contended that even if the pre-fix is common still the other words which are in
common use in the said pre-fix specify the exclusivity of the said product in favour of the plaintiff
herein. He has relied upon para 7 of the said judgment which reads as under :
"7. In order to decide whether the word "AZIWIN" is deceptively similar to the word "AZIWOK",
each of the two words must, therefore, be taken as a whole word. Each of them consists of six letters,
the first three letters "AZI" being common in both the words. The affidavit of the appellants indicate
that various brands of Azithromycin tablets and syrup are marketed by different pharmaceutical
companies using the common prefix AZI, which is derived from the generic name of drug and in fact
the appellants have given a list of as many as 13 different names of the companies including the
parties to the suit who are using the prefix AZI. It is thus apparent that the drug Azithromycin being
the base of these products the word AZI has been commonly used in describing the product and no
one can claim monopoly over the use of the said word. In fact any company producing
Aazithromycin tablets would be justified in using the said word as prefix to its trade name. The word
AZI being both descriptive and common to the trade the users of such product are not likely to be
misguided or confused by the said word. Once it is held that the word "AZI" is common to the trade,
then having regard to the un-common letters in these two words namely "work" and "win" which are
totally dissimilar and also having regard to the fact that even phonetically the two words are totally
dissimilar, it is difficult to hold that one will be mistaken or confused with the other. There is not
even a remote chance of anyone being misguided by the two words. It is a common ground that
Azithromycin can only be ordered by prescription from a certified medical practitioner and the
public cannot be supplied with the same without such prescription as the said drug is "Scheduled H"
drug. It is highly unlikely that doctors and pharmacists would get confused by the two marks."
In the present case not only the pre-fix but even the suffix are commonly used with the word "CEF"
by various companies and, therefore, also I do not find any substance in the present case.
6. The learned counsel for the defendant on the other hand has relied upon a judgment of the Delhi
High Court in the case of the defendants themselves. The defendants also sought protection of their
trade mark by initiation of a passing off action in the Delhi High Court and the Delhi High Court by
the judgment in the case of Khandelwal Laboratories Ltd., v. FDC Limited reported in 2001 PTC 864
(Del), has reiterated the case of the plaintiff that the items like CEFEX, CEFIXE, CEFOX, CIFEX are
very common and are commonly used in market and, therefore, the defendant in the present case
who was plaintiff in that case is not entitled to protect his mark. The Delhi High Court has held as
under :
3. The plaintiff's mark CEFI is derived from the chemical compound or salt Cefixime and there are
umpteen authorities on the proposition that where marks are derived from such pharmaceutical
sales, these are weak trademarks. Here the plaintiff has taken the first four letters of the name of the
salt and this is therefore a weak trademark [F. Hoffman La Roche v. Geoffrey Manners, 1982 PTC

118
335; Panacea Biotec v. Recon, 1996 PTC 561].
7. Quite apart from the above CEFI and ZIFI are pronounced differently and visually appear quite
different particularly when pronounced in the Devnagri script and being scheduled drugs can only
be purchased through a written prescription of a doctor or a registered medical practitioner and
dispensed by a chemist or a registered pharmacist. Therefore, there are inherent checks and
balances within the pharmaceuticals industry which would ensure that the competing marks would
not be confused."
7. In my opinion, even in the present suit, the plaintiff has failed to establish any exclusivity of the
mark which is used by them being CEFO, CEFO-DT and CEFO-P and that the same is commonly
used by many companies in the market and the goods are commonly sold under various brand name
marks of similar nature and thus, the plaintiffs are not entitled to injunction in the action of passing
off initiated by them. In the aforesaid circumstances, I dismiss the motion. Motion dismissed.
However, there shall be no order as to costs.

119
Bihar Tubes Limited vs Garg Ispat Limited on 26 October, 2009
Delhi High Court

Author: Rajiv Shakdher
* THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved on: 20.10.2009

Judgment delivered on: 26.10.2009
CS(OS) No. 1633/2009
BIHAR TUBES LTD. ..... Plaintiff
Through : Ms. Kajal Chandra, Ms. Leena

Sehgal, Advocates.
vs.
GARG ISPAT LTD. ....Defendant
Through : Mr. Chetan Sharma, Sr. Advocate

with Mr.Sanjay Aggarwal, Advocate.
CORAM :-
HON'BLE MR JUSTICE RAJIV SHAKDHER
1.
Whether the Reporters of local papers may be allowed to see the judgment ? No
2. To be referred to Reporters or not ? Yes
3. Whether the judgment should be reported in the Digest ? Yes RAJIV SHAKDHER, J IA No.
11296/2009 (O. 39 R. 1 & 2 of CPC)
1. In the captioned application filed by the Plaintiff under the provisions of Order 39 Rules 1 & 2
read with Section 151 of Code of Civil Procedure, 1908 (in short the „CPC ) ad-interim injunction is
sought against the defendants in the following terms:-
"an order to interim injunction restraining the defendants, partners/promoters as the

case may be, directors, servants, agents, franchisees or any one acting for or on their
behalf in any manner using the mark "APOLLO" or any other mark identical or
deceptively similar to the plaintiff s mark "APL APOLLO" in relation to their
manufacturing, trading or any export in any other form whatsoever so as to result in
violation of plaintiff s statutory and common law rights."

120
2. The plaintiff has based its action in the background of the following averments made in the
plaint/application:- 2.1 The plaintiff has stated that it had conceived the trade mark "APL APOLLO"
in the year 1999 in relation to its business of manufacturing, trading and export of steel pipes and
tubes. It is the case of the plaintiff that it has been using the said trade mark i.e., "APL APOLLO"
continuously and extensively in relation to the aforementioned goods. It is also averred that due to
the quality of goods manufactured by it and the extensive publicity given thereto, the trade mark
"APL APOLLO" enjoys a reputation, and has consequently earned for itself goodwill not only in
India but also in the overseas markets. In support of its case, the plaintiff asserts that its turnover
has grown from Rs 31 crores (approximately) in the financial year 1999-2000 to over Rs 420 crores
(approximately) in the financial year 2008-2009. There is also reference to the fact that a vast
amount of money has been spent by the plaintiff towards advertisement in both the print and
electronic media for creating a brand image for its mark "APL APOLLO". In this regard it is averred
that its advertising expenses have enhanced from a figure Rs 55,000/- (approximately) incurred in
the financial year 1999-2000 to a sum in excess of Rs 2.3 lakhs in respect of financial year
2005-2006.
2.2 In order to secure its interest the plaintiff in the year 2004 applied to the Registrar of Trade
Marks (in short the „Registrar ) for registration of its trade mark "APL APOLLO". Consequent
thereto, a Certificate of Registration dated 10.08.2005 was issued by the Registrar.
2.3 The plaintiff is aggrieved, by virtue of the fact that the defendant who is engaged in the
manufacturing of steel pipes and tubes, and fittings which is an identical, or to say the least, a
similar field of business activity; is using a similar or deceptively similar mark "APOLLO" for the
purpose of its business.
2.4 The plaintiff has thus instituted the instant action on the grounds that use of the mark
"APOLLO" by the defendants has resulted; in an infringement of its registered trade mark "APL
APOLLO"; commission of tort of passing off, and dilution of the brand equity assiduously created by
the plaintiff, in respect of its, mark "APL APOLLO".
3. In support of the case set out in the plaint and averments made in the interlocutory application,
Ms. Kajal Chandra, Advocate drew my attention to the following documents:-
(i) A certificate of Registration dated 10.08.2005 issued under Section 23(2) of the Trade Mark Act,
1999 read with Rule 62(1) framed thereunder, evidencing thereof the registration of trade mark
"APL APOLLO" in respect of M.S. Black and galvanized, pipes and tubes included in Class 6. This
Certificate has been issued in favour of the plaintiff based on its claim that the said Trade Mark has
been used by it since 01.02.1999.
(ii) A caution notice issued in the Financial Express, in Chennai edition, dated 07.08.2004. By this
notice the plaintiff sought to inform the public that its trade mark was being unauthorisedly used to
deceive general public and traders.
(iii) Reference was made out to photocopies depicting advertisements.

121
(iv) An application made to the Bureau of Indian Standards (in short "BIS") for carrying a BIS
certification mark; which indicated thereto the plaintiff s trade name as "APL APOLLO". In this
application the plaintiff has alluded to the fact that mark "APL APOLLO" was introduced on
10.04.2000.
(v) A reference has also been made to a search report - TM 54/60 dated 09.01.2008 issued by the
Examiner of Trade Marks to demonstrate that the plaintiff has been using the trade mark
"APOLLO" even as per the said search report since 01.02.1999, whereas the defendant has been
using the same since 01.04.2001.
(vi) A reference was also made to the document dated 01.04.2007 pertaining to the defendant;
(which the defendant has filed along with his application under Order 7 Rule 11 of the C.P.C.) to
demonstrate that on its own showing the defendant s turnover is substantially less than that of the
plaintiff. As per this document in the financial year 2001-02 the defendant grossed a turnover of Rs
14.85 crores, which increased to Rs 42.81 in financial year 2004-05, and thereafter, dipped to Rs
29.03 crores in financial year 2006-07.
(vii) A reference was also made to the invoices of the defendant of the recent past (filed by defendant
with their documents under Order 7 Rule 11 of the C.P.C.) for the period 30.11.2008 till as recent as
June, 2009 which did not carry the defendant s mark "APOLLO". This is in contradiction to the
invoices issued by the defendant in the past which carried the infringing mark "APOLLO". The
purpose for which the said latest invoices of the defendant were evidently referred to, was to
demonstrate that for a period of time the defendant had discontinued the use of infringing trade
mark "APOLLO"; which perhaps lulled the plaintiff into complacency.
4. In the background of the above, the learned counsel for the plaintiff made the following
submissions:-
4.1 the plaintiff has been using the trade mark "APL APOLLO" since February, 1999. In order to
secure its interest an application for registration of the mark was filed with the Registrar. A trade
mark registration certificate was issued to the plaintiff on 10.08.2005 with respect to its mark "APL
APOLLO". Therefore, both by virtue of prior user, as also the registration of the mark "APL
APOLLO", the defendant ought to be injuncted from using the infringing trade mark "APOLLO",
which is confusingly and deceptively similar to plaintiff s mark.
4.2 In support of her submissions, relevance was placed on the following judgments:
Larsen & Turbo Ltd. vs Lachmi Narain Trades & Ors. 2008 (36) PTC 223 (Del.);
Syncom Formulations vs SAS Pharmaceuticals 2004 (28) PTC 632 (Del.); and Amar
Singh Chawal Wala vs Shree Vardhman Rice & Gen. Mills 160 (2009) DLT 267.
5. As against this, Mr. Chetan Sharma, Sr. Advocate, learned counsel appearing for the defendant
made the following submissions:

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(i) the plaintiff has displayed a lack of candour in not disclosing that the defendant has also filed a
notice of opposition bearing No.127543 with the Registrar, in respect of, the plaintiff s application
for registration of the mark "APOLLO";
(ii) the defendant has filed an independent application for registration of the mark "APOLLO" with
the Registrar on 29.06.2004. The said application was accepted on 05.08.2004 and published in the
trade mark journal dated 20.12.2004. The plaintiff has filed an opposition (bearing
No.DEL/186923) to the defendant s application on 9/11.03.2005. The pleadings, as well as
evidence, in the said application are complete, as far back as 2007;
(iii) there has been delay of at least 5 years on the part of the plaintiff in coming to court to seek an
injunction, which is quite evident from the plaintiff s own averments in paragraphs 12 and 14 of the
plaint;
(iii)(a) A perusal of the averments made therein (i.e., paragraph 12 of the plaint)
would show that the plaintiff on its own showing became aware of the defendant
using trade mark "APOLLO" on coming across an advertisement in trade mark
journal dated 20.12.2004. Therefore, the averments made in paragraph 14 of the
plaint that, it was only upon a survey being carried out by a surveyor, and on receipt
of his report dated 09.01.2008, that it discovered infringement of its mark by the
defendant; was not quite accurate.
(iii)(b) The delay in the circumstances stated above would, according to the learned
counsel, amount to acquiescence; and hence no order of injunction ought to be
passed against the defendant at the behest of the plaintiff. In support of his
submissions made hereinabove, the learned counsel for the defendant also alluded to
the fact that the defendant had, as a matter of fact filed caveats before this Court on
two dates, i.e. 24.08.2005 and 15.09.2006; as also a caveat in the District Court on
19.09.2006. Therefore, having not come to the court at the earliest, there was no
good ground to entertain plaintiff s prayer for injunction at this stage.
(iv) the plaintiff has not placed on record any evidence by way of sales invoices or expenses incurred
towards advertisement to show prior use of its trade mark "APL APOLLO". It was contended that
since it is not disputed by the plaintiff that at least since April, 2001, the defendant has been using
the mark "APOLLO"; and given the fact that the defendant has been in business for a period of eight
years (i.e., since 2001) and generated a turnover of nearly Rs 200 crores; the balance of convenience
was in its favour. An injunction if granted, is bound to impact the defendant.
5.1. In support of his submission, the learned counsel for the defendant has relied upon the
judgments of the Supreme Court in the case of Uniply Industries Ltd Vs. Unicorn Plywood Pvt. Ltd
and Ors AIR 2001 SC 2083, and S.M. Dyechem Ltd Vs. Cadbury (India) Ltd. (2000) 5 SCC 573, and
the judgment of this court in Standard Electricals Ltd. Vs. Rocket Electricals & Anr. 2004 (28) PTC
26 (Del)

123
6. In rejoinder Ms Kajal Chandra, apart from reiterating what was stated by her in the opening,
sought to clarify by way of an emphasis that the plaintiff is using not one (1) but three (3) trade
marks. These being: "APL APOLLO", "APOLLO" and "APL". The application for registration(s) and
opposition(s) thereto are pending with respect to the other two marks and not with respect to "APL
APOLLO" which is already registered. She also referred to a response dated 06.10.2009 received by
the plaintiff from BIS which seemed to indicate that the defendant had been using the trade mark
"APOLLO" since, 02.07.2004, and not 01.04.2001 as represented to the Registrar.
REASONS:
7. I have heard the learned counsel for the plaintiff, as well as, the defendant. At the outset I must
record that summons in the suit and notice in the plaintiff s application under Order 39 Rules 1 & 2
of the C.P.C. was issued on 02.09.2009. On that date the defendant was represented through
counsel, and time was sought for filing a written statement and reply to the interlocutory
application. Accordingly, a period of four weeks for filing the written statement and two weeks for
filing a reply to the said interlocutory application was granted to the defendant. The matter was
posted for further proceedings on 20.10.2009. Since defendant failed to file, either the written
statement, or the reply to the interlocutory application within a stipulated period of two weeks, the
plaintiff was constrained to move a fresh interlocutory application being: IA No.12645/2009. By this
application the plaintiff sought reliefs in terms of prayers made in the earlier interlocutory
applications i.e., IA No.11296/2009. This application was listed before court on 25.09.2009. On
25.09.2009 the following order was passed:-
"IA No.12645/2009 in CS(OS) No. 1633/2009 The defendant was to file its written
statement in the suit within four weeks and reply to the IA within two weeks. It is
stated that neither has been done as of date. An advance copy of the applications was
served on learned counsel for the defendant who was not present at the first call.
In the interest of justice, list on 5th October, 2009.
Sd/-
September 25, 2009 S.MURLIDHAR, J"
7.1 On 05.10.2009, the said application was renotified for the date
already fixed, i.e., 20.10.2009. The defendant, in the meanwhile, filed an application
under Order 7 Rules 10 & 11 of the CPC, being IA No. 12877/09. This application was
listed before court on 07.10.2009. Plaintiff was represented through counsel, and
accordingly, notice was accepted. The said application was also posted for hearing on
20.10.2009.

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7.2 At the commencement of hearing I was informed by the learned counsel for the plaintiff that
neither the written statement nor reply to the application under Order 39 Rules 1 & 2 of the C.P.C.
had been filed by the defendant; whereas the plaintiff had filed a reply to the defendant s
application under Order 7 Rule 11 of the CPC. On a query being raised, the learned counsel for the
defendant informed me that the written statement had been filed on 15.10.2009, with a copy to the
plaintiff vide diary no. 162763. The learned counsel for the plaintiff emphatically denied having
received a copy of the written statement. To be noted that 15.10.2009 was the day the court was
closing for deepawali vacations and re-opening only on 20.10.2009.
7.3 It is clear from the events as noted above that the plaintiff has been, in the very least, slothful in
completing the pleadings, if not guilty of deliberate proscasination. These stratagems ought to be
abjured. The learned counsel for the plaintiff is rightly aggrieved in view of the fact that her plea for
grant of an injunction was deferred by the Court only to give time to the defendant to file a response,
and not to misuse the opportunity granted. Therefore, in effect on record, there is only the say of the
plaintiff.
8. However, despite these limiting factors, a complete hearing has been given to the learned
counsels for the parties. As a matter of fact the learned counsel for the defendant, objected to the
plaintiff referring to certain additional documents, as an appropriate application seeking leave of the
court had not been filed. Faced with this difficulty, the learned counsel for the plaintiff decided to
press her interlocutory application without referring to additional documents that had been filed on
behalf of plaintiff.
9. After considering the submissions of the learned counsels for the parties the following facts and
circumstances have emerged in the case:-
(i) It is not disputed that the plaintiff has obtained registration of its trade mark "APL APOLLO".
This is evidenced at least prima facie by a Registration Certificate dated 10.08.2005.
(ii) The plaintiff has made an averment both in the plaint, as well as in the application, that the trade
mark "APL APOLLO" has been in use since February, 1999.
(iii) At least prima facie the plaintiff has been able to demonstrate that its turnover has increased
from Rs 31 crores (approximately) in financial year 1999-2000 to nearly Rs 420 crores
(approximately) in financial year 2008-2009, as also that, a substantial amount of money has been
spent over the years in propagating the brand equity of plaintiff s trade mark through
advertisements in print and electronic media.
10. There is no doubt that the application of the plaintiff for registration of trade mark "APOLLO"
has been opposed by the defendant, as also the defendant s application, stands opposed by the
plaintiff. But that cannot impinge upon plaintiff s case with respect to infringement of its trade
mark "APL APOLLO". Therefore, the submission of the learned counsel for the defendant that the
plaintiff had failed to disclose the fact that the defendant had filed its opposition to the plaintiff s
application for registration of trade mark "APOLLO" is not material in my view. In my opinion,

125
failure to disclose a fact which is not material, will not come in the way of the court in granting the
requisite relief, if the party approaching the court is otherwise entitled to it. See observations in
S.J.S. Business Enterprises (P) Ltd. Vs. State of Bihar and Others (2004) 7 SCC 166 in paragraph 13
at page 173.
11. As regards the submission of the defendant that delay in approaching the court ought to
disentitle the grant of relief by way of an injunction in an action for infringement of trade mark or a
passing off action; is also untenable in my view.
11.1 It is settled that a Court will not, in general, deny protection to a plaintiff only on account of the
reason of, mere delay and laches. The rationale for this is that if Courts were to deny relief for this
reason, then in a sense, they would have put their seal of approval on the conduct adopted by the
plaintiff and the defendant in allowing the public to believe that the goods manufactured by one are
those of another. The public have a right not to be deceived. See Syncom Formulations vs SAS
Pharmaceuticals 2004 (28) PTC 632 (Del.), paragraph 12 at page 636. Also see observations of the
Supreme Court on effect of delay in the case of Midas Hygiene Industries (P) Ltd. and Anr vs Sudhir
Bhatia & Ors (2004) 3 SCC 90, as encapsulated in the following words:-
"5. The law on the subject is well settled. In cases of infringement either of trade
mark or of copyright, normally an injunction must follow. Mere delay in bringing
action is not sufficient to defeat grant of injunction in such cases. The grant of
injunction also becomes necessary if it prima facie appears that the adoption of the
mark was itself dishonest."
12. In any event, as submitted by the learned counsel for the plaintiff, it is demonstrable from
invoices filed by the defendant pertaining to November, 2008 that the defendant had stopped the
use of infringing trade mark "APOLLO", and that it was only on a survey being carried out on
09.01.2008, and a subsequent discovery of an infringing invoice of 12.05.2009, that a cause arose
which impelled the plaintiff to file the present action. There is no reason to disbelieve these
averments at this stage. Therefore, even otherwise, I am of the view that there is no delay in
approaching the court. I must, however, point that Mr. Chetan Sharma made another valiant
attempt, of course on instructions, that while the mark "APOLLO" was missing in the copies of the
invoices filed (along with their application under Order 7 Rule 11 of the CPC) due to the poor output
of the photocopier; the same was not the position with regard to the original invoices. In my view
even if this state of affairs were accepted as correct it would not impact my conclusion for two short
reasons. First, the veracity of this stand cannot be ascertained at this stage. The defendant ought to
take responsibility for its action. Second, consistent with the view expressed by me hereinabove that
delay by itself cannot be a factor which would impede the grant of injunction, if the plaintiff is
otherwise entitled to it; mere failure to sue would not enure to the benefit of defendant. The
observations in Kerely's Law of Trade Marks and Trade Names, Fourteenth Edition at page 412
being apt, are culled out below:
"Mere failure to sue, however, without some positive act of encouragement, is not in
general enough to give a defence. A defendant who infringes knowing of the

126
claimants mark can hardly complain if he is later sued upon it, nor is a defendant
who starts to infringe without searching the Registrar of Trade Marks in any better
position than if he had searched and so learned of the claimant s mark. Acts of the
proprietor done in ignorance of the infringement, or even done without his own
registration in mind, will not amount to acquiescence. A defence of estopple by
acquiescence is to be distinguished from a defence that by delay the mark has become
publici juris."
13. The submission of the learned counsel for the defendant that the conduct of the plaintiff in not
approaching the court immediately after December, 2004 would show its acquiescence in defendant
using the mark "APOLLO" is also not borne out by the facts which have been alluded to by the
plaintiff. Acquiescence to my mind, would mean conscious acceptance of an inimical state of affairs.
The meaning of the word "acquiescence" would perhaps also depend on the context in which it is
used. In the present context, amongst various meanings ascribed to the word, the closest would be
the following given in Corpus Juris Secundum Volume I & Black's Law Dictionary, Sixth (6th)
Edition.
Corpus Juris Secundum Volume I at Pages 915-916 "Acquiescence-the word, it has been said,
implies acceptance or approval, active assent, active consent, assent, assent or consent, consent, also
knowledge, and power to contract."
Black's Law Dictionary , Sixth (6th) Edition at Page "Acquiescence - conduct recognizing the
existence of a transaction, and intended, in some extent atleast, to carry the transaction, or permit it
to be carried, into effect."
13.1 It would also perhaps be useful to cull out the distinction between acquiescence and laches as
stated in the Black's Law Dictionary (6th Edition at page 24):
"Acquiescence and laches are cognate but not equivalent terms. The former is a
submission to, or resting satisfied with, an existing state of things, while latches
implies a neglect to do that which the party ought to do for his own benefit or
protection. Hence laches may be evidence of acquiescence. Laches imports a merely a
passive assent, while acquiescence implies active assent. In re Wilbur s Estate, 334
Pa. 45, 5 A.2d 325, 331. "Acquiescence" relates to inaction during performance of an
act while "laches" relates to delay after act is done."
13.2 The plaintiff, in the instant case, has amply demonstrated its disapproval of the conduct of the
defendant by taking resort to requisite steps, such as, issuance of a caution notice to the public at
large, and also by filing opposition to the defendant s application for registration of the mark
"APOLLO". Therefore, the submission of the learned counsel for defendant that the plaintiff has
acquiesced to the use of mark "APOLLO" by the defendant is in my view without merit. There is no
"active assent". A submission made in the passing by the learned counsel for the defendant that a
cease and desist notice was not issued to the defendant by the plaintiff, is in my view not the only
mode to establish that there is no acquiescence on the part of the plaintiff to the adverse conduct of

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the defendant. The question is not of degree but that of consent, express or implied. IS THE
INFRINGING MARK IDENTICAL OR DECEPTIVELY SIMILAR-
14. Section 28 of the Trade Mark Act, 1999 (in short "T.M. Act") subject to other provisions of the
T.M. Act, gives an exclusive right to a registered proprietor in relation to the goods or services, in
respect of which, its trade mark is registered, and also entitles him to relief, if there is an
infringement of the trade mark. The exceptions are set out in sub-Section (2) and (3) of Section 28
of the T.M. Act. As to what constitutes infringement is set out in Section 29, while Section 30 of the
T.M. Act limits the effect of a trade mark. The defences available to a defendant as against the
registered proprietor of a trade mark, are set out in Section 34 of the T.M. Act. Therefore, normally
if the following queries are answered in affirmative a injunction should follow:
(i) Whether the infringing mark is identical or deceptively similar to the registered
mark?
(ii) Whether the field of activity of the infringer and the registered owner is the same?
(iii) Whether the infringer is using the infringing mark, in a manner, which suggests
the use of the registered mark?
14.1 The aforesaid field of enquiry is perhaps the same as the triple- identity list referred to in the
case of Ahmed Oomerbhoy & Anr vs. Gautam Tank & Ors 146 (2008) DLT 774. In Ahmed
Oomerbhoy (supra) this court was called upon to adjudicate as to whether the defendant s mark
"Super Postman" was deceptively, similar to the plaintiff s mark "Postman". This court held that the
only difference between the two marks apparently was in the prefix. This court applying the
triple-identity test which is nothing but that: the mark used by the defendant is similar; the goods
are the same; and area of trade is also „common . If these three tests are applicable to the infringer
then it would be duty of the court to protect the registered mark. The position in the present case is
quite similar. The only difference between defendant s and that of the plaintiff s mark is that of the
prefix "APL". The plaintiff s mark carries the prefix "APL", while the infringing mark is sans the
prefix. Apart from the fact that the triple identity test is applicable in the present case, the
consumers who deal with the goods in issue, that is, pipes and tubes, come from various social
stratas of life. They are not necessarily bestowed with the power of acute discernment. The memory
of a normal but prudent consumer is a „fading memory which carries with it broad impressions.
14.2 Therefore, in order to discern whether the mark is confusingly or deceptively similar with
respect to which rights are claimed by the registered owner; the apposite test is that, in which, the
broad essential features are to be construed-when one compares the infringing mark with the
registered mark. In doing so, the stress ought to be on the "overall similarity" and not on the
differences in the marks. The "overall similarity" test ought to be one, which should lead to a
conclusion that it would mislead a person usually dealing with the goods in issue, to accept the
goods of the infringer, as those manufactured by the proprietor of the registered mark. The
"ordinary purchaser is not expected to be gifted with the powers of observations of Sherlock
Homes". See Parle Products (P) Ltd Vs. J.P. and Co., Mysore 1972(1) SCC 618.

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15. In my view, if the aforesaid parameters are applied the injunction against the defendant ought to
follow almost axiomatically. The reason being that apart from the deceptive similarity in the two
marks the field of activity is the same i.e., steel pipes and tubes. It is also not disputed by the
defendant that the use of the mark "APOLLO" by it, has not commenced prior to 01.04.2001. As a
matter of fact the plaintiff s counsel has been able to demonstrate, at least prima facie, that this
assertion of the defendant, might not be correct since the information supplied by the defendant to
the BIS seems to suggest that the defendant has been using the mark „APOLLO , since 02.07.2004.
The plaintiff has been able to least prima facie establish that mark "APL APOLLO" has been used by
it since February, 1999. Reference in this regard is to be made to an advertisement in the trade
journal prior to the issuance of the registration certificate by the Registrar on 10.08.2005. In any
event, this is a matter, (i.e., with regard to „prior use ) which would require trial, and is a defence
available to the defendants in terms of Section 34 of the T.M. Act. Prima facie, in my view, as of
today, the defendant s use of the mark "APOLLO" is dishonest.
16. In support of his submissions learned counsel cited the following judgments: firstly,
S.M.Dyechem Ltd. Vs. Cadbury (India) Ltd (2000) 5 SCC 573. I need not discuss this judgment in
detail as it stands overruled by a larger Bench of the Supreme Court in the case of Cadila Health
Care Ltd. Vs. Cadila Pharaceuticals Ltd. (2001) 5 SCC 73. The Supreme Court rejected the test
applied in S.M.Dyechem (supra), where stress was laid on applying the test of „dissimilarity with
regard to in essential features in order to arrive at a conclusion as to whether the marks in issue
were deceptively or confusingly similar.
16.1 Learned counsel for the defendant then cited Khodey Distilleries Ltd. Vs.Scotch Whisky
Association and Anr. (2008) 10 SCC 723 (paragraph 43 and 49) for the proposition that delay and
acquiescence are a valid defence. Only to be noticed that the Supreme Court was dealing with an
appeal against a final judgment. Obviously evidence had been led. In the instant case we are still at
the interlocutory stage. Therefore, the plaintiff cannot be denied relief on the ground of „mere
delay. I have discussed this aspect in detail hereinabove. In Khodey s judgment, in paragraph 49, it
is noted that delay would be a valid defence where it caused „change in subject matter or
„situation in a manner that „justice could not be done . In the instant case the turnover achieved
by the plaintiff at least prima facie seems far in excess of that of the defendant. Whether delay itself,
caused a change in situation, is a matter which will be determined only upon a trial being conducted.
16.2 The third case, which the plaintiff cited, is the judgment of a Single Judge of this Court in
Standard Electricals Limited Vs. Rocket Electricals & Anr. 2004(28) PTC 26 (Del). In Standard
Electricals (supra) the facts briefly were as follows: The plaintiff had been using the mark
"STANDARD" in relation to electrical equipments, since 1958, while the defendant had been selling
its own products under the mark "MS STANDARD", since 1979 and under the trade mark "MS
STANDARD" since 1992. It is pertinent to note that the Court in paragraph 27 of the judgment
reiterated the test that delay by itself cannot defeat the remedy available to the plaintiff in coming to
court with regard to protection of its proprietary rights in a trade mark, in a passing off action. The
court s decision in denying the relief to the plaintiff was grounded in balance of convenience,
arising in favour of the defendant, in the following peculiar circumstances: The plaintiff had come to
court after twenty (20) years. In the interregnum the defendant had got its trade mark registered in
1979/1992. Therefore, even though the plaintiff had prior registration, that is, in 1958 or

129
thereabouts, it permitted the defendant to use the infringing mark. Both the defendant and the
plaintiff continued to sell their goods in the market under their respective trade marks. It is in these
circumstances obtaining in the case, that the court held that even if it is assumed that there is prima
facie case in favour of the plaintiff for grant of ad-interim injunction, the balance of convenience in
the facts of the case was not in its favour. And hence injunction was denied. While denying
injunction the defendant was directed to maintain audited accounts of electrical equipments
manufactured, and sold by it under the trade mark "MS STANDARD". Facts of the instant case are
distinguishable. The plaintiff has consistently opposed the registration of the mark "APOLLO" by
the defendant. As noticed above, the matter in this regard is pending before the Registrar.
16.4 The last case, cited by the defendant was Uniply Industries (supra). The facts of this case are
clearly distinguishable from the instant case. In Uniply Industries (supra) both the appellant and the
respondent were not in possession of a registered trade mark. Suits were filed both by the appellant
as well as the respondent. In the suit filed by the appellant an injunction was granted against the
respondent. The matter travelled to the Supreme Court against the order of the High Court which
prima facie, held in favour of the respondent on the question of prior user of the mark of "UNIPLY"
AND "UNIBOARD". The Supreme Court vacated the order of injunction and observed that it
required trials. The Supreme Court specifically held that in the circumstances, there will be no order
of injunction in favour of either party. Directions were given for expeditious trial of the suit as also
the proceedings pending before the Registrar. On the contrary, in the instant case the plaintiff has a
registered mark in its favour. It is the defendant, who would have to establish prior use in terms of
Section 34 of the T.M. Act.
17. In view of the discussion above, I am of the opinion that the plaintiff has been able to establish a
strong prima facie case that the defendant s mark "APOLLO" is deceptively and confusingly similar
to the plaintiff s registered trade mark "APL APOLLO". The balance of convenience is also in favour
of the plaintiff looking at the comparative sale figures: Any further delay in grant of injunction will
cause continued harm to the plaintiff. Therefore, in the interregnum, during the pendency of the,
suit the defendant, its partners/ promoters, directors, servants, agents are restrained from using the
mark "APOLLO" or any other similar or deceptively similar mark to that of the plaintiff s registered
trade mark "APL APOLLO" in relation to their business of manufacturing, trading and export of
steel pipes and tubes. The application stands disposed of.
IA No. 12645/2009
15. In view of the orders passed in IA No. 11296/09, the same is rendered infructuous. It is,
accordingly, disposed of. CS(OS) 1633/2009 List before the Joint Registrar for completion of
pleadings on 30th November, 2009.
OCTOBER 26, 2009 RAJIV SHAKDHER, J

da

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131
M/S. Nandhini Deluxe vs M/S. Karnataka Cooperative Milk ... on 26 July, 2018

Author: A.K.Sikri
Bench: A Bhushan, A Sikri
REPO
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDICTION
CIVIL APPEAL NOS. 2937-2942 OF 2018
M/S. NANDHINI DELUXE .....APPEL
VERSUS
M/S. KARNATAKA CO-OPERATIVE MILK .....RESPONDE

PRODUCERS FEDERATION LTD.
WITH
CIVIL APPEAL NO. 2943-2944 OF 2018
JUDGMENT
A.K.SIKRI, J.
The judgment dated 2nd December, 2014 given by the High Court of Karnataka in writ petitions
filed by the appellant herein is the subject matter of detailed debate and arguments in the present
proceedings, because of the reason that the dispute in question has evoked considerable
controversy. The dispute pertains to the use of mark ‘NANDHINI’. The respondent herein,
Signature Not Verified Digitally signed by SUSHIL KUMAR RAKHEJA Date: 2018.07.26 which is a
Cooperative Federation of the Milk Producers of 16:07:35 IST Reason:
Karnataka, adopted the aforesaid mark ‘NANDINI’ in the year 1985 and under this brand name it
has been producing and selling milk and milk products. It has got registration of this mark as well
under Class 29 and Class 30. The appellant herein, on the other hand, is in the business of running
restaurants and it adopted the mark ‘NANDHINI’ for its restaurants in the year 1989 and applied for
registration of the said mark in respect of various foodstuff items sold by it in its restaurants. The
respondent had opposed the registration and the objections of the respondent were dismissed by the
Deputy Registrar of the Trade Mark who passed orders dated August 13, 2007 allowing the
registration of the said mark in favour of the appellant.

132
2. We may note at this stage itself that the mark used by the appellant is objected to by the
respondent on the ground that it is deceptively similar to the mark of the respondent and is likely to
deceive the public or cause confusion. According to the respondent, the appellant could not use the
said mark which now belongs to the respondent inasmuch as because of its long and sustained use
by the respondent, the mark ‘NANDINI’ is held to have acquired a distinctive character and is
well-known to the public which associates ‘NANDINI’ with the respondent organization. Therefore,
according to the respondent, it has exclusive right to use the said mark and any imitation thereof by
the appellant would lead the public to believe that the foodstuffs sold by the appellant are in fact
that of the respondent. When these objections were rejected by the Deputy Registrar and
registration granted to the appellant, the respondent approached the Intellectual Property Appellate
Board (for short, ‘IPAB’), Chennai by filing appeal with the prayer that the registration given by the
Deputy Registrar, Trade Mark in favour of the appellant be cancelled. These appeals of the
respondent were allowed by the IPAB vide common order dated 4 th October, 2011 and the writ
petitions filed by the appellant there against have been dismissed by the High Court vide impugned
order dated 2 nd December, 2014, thereby confirming the order of the IPAB and, in the process,
accepting the plea of the respondent therein.
3. Before we proceed further, it is pertinent to mention at this stage that the milk and milk products,
which are sold by the respondent under the trade mark of ‘NANDINI’, fall under Class 29 and Class
30 as per classification under Schedule IV to the Trade Marks Rules, 2002. On the other hand,
various kinds of foodstuffs sold by the appellant in its restaurants also fall under Class 29 and 30 as
well as other Classes.
4. For the sake of clarity and comparison, we may also, at this stage itself, give the representation of
competing marks of the appellant as well as respondent, which is as under :
5. Before we proceed to state the arguments of the learned counsel for appellant and rebuttal thereof
by the respondent, it would be necessary to have a brief discussion in respect of the orders passed by
the Deputy Registrar of Trade Marks, IPAB and the High Court.
ORDER OF THE DEPUTY REGISTRAR, TRADE MARKS:
6. This order discloses that the appellant herein had moved the applications for registration of trade
mark ‘NANDHINI DELUXE WITH LOGO (Kannada)’’ in respect of meat, fish, poultry and game,
meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, eggs, milk and milk
products, edible oils and fats, salad dressings, preserves and all other goods being included in Class
29. In the Opposition filed by the respondent herein, it was, inter alia, stated that respondent was
manufacturer and dealer of milk and milk products, cattle feed and other allied products which are
the source of ‘NANDINI’ products. Trade mark ‘NANDINI’ with device of the cow is being used by
the respondent extensively not only in the State of Karnataka but in other parts of country as well.
This trade mark was registered in the name of the respondent which was used right from the year
1985. The trade mark sought to be adopted by the appellant was confusingly and deceptively similar
to the respondent’s trade mark. It was a clever move on the part of the appellant who wanted to
trade upon and benefit from the reputation and goodwill acquired by the respondent for the last so

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many years and, therefore, the appellant could not claim any proprietary rights in the impugned
mark under Section 18(1) of the Trade Marks Act, 1999 (hereinafter referred to as the ‘Act’).
Registration was objected to under Sections 9,11,12 and 18 of the Act.
7. In the counter statement filed by the appellant to the aforesaid objections, it was pleaded that the
appellant had honestly conceived and adopted the trade mark ‘NANDHINI’ in Kannada with a
particular artistic work, design and getup for running vegetarian and non-vegetarian Andhra style
restaurant. It had opened as many as six branches (particulars whereof were given) all over
Bangalore by using trade mark ‘NANDHINI’ since 1989. The appellant had also obtained
registration of copyright of ‘NANDHINI’ under Copyright Act, 1957. It was further argued that since
the artistic work, design and getup adopted by the appellant was totally different, there was no
question of any deception or confusion arising in the mind of public. Moreover, the class of
purchasers/customers of both the trade marks was entirely different. The Deputy Registrar noted
that the issues involved in these proceedings were based on Sections 1 9, 11 and 18 of the Act. As per
Section 9, the generic words cannot be registered as trade mark unless they have acquired
distinctiveness and are 1 S.9. Absolute grounds for refusal of registration.—(1) The trade marks—
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the
goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications which may serve in trade to designate the kind,
quality, quantity, intended purpose, values, geographical origin or the time of production of the
goods or rendering of the service or other characteristics of the goods or service;
(c) which consist exclusively of marks or indications which have become customary in the current
language or in the bona fide and established practices of the trade, shall not be registered:
Provided that a trade mark shall not be refused registration if before the date of application for
registration it has acquired a distinctive character as a result of the use made of it or is a well-known
trade mark.
(2) A mark shall not be registered as a trade mark if—
(a) it is of such nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or
section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12
of 1950).
(3) A mark shall not be registered as a trade mark if it consists exclusively of—

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(a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods. Explanation.—For the purposes of this
section, the nature of goods or services in relation to which the trade mark is used or proposed to be
used shall not be a ground for refusal of registration.
S. 11 Relative grounds for refusal of registration.—(1) Save as provided in section 12, a trade mark
shall not be registered if, because of—
(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade
mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services
covered by the trade mark, there exists a likelihood of confusion on the part of the public, which
includes the likelihood of association with the earlier trade mark. associated with the
persons/company using the said mark. The case set up by the appellant was that its mark was
distinctive one and was its trading style as well. It was also argued that trade mark ‘NANDHINI’ is
not an invented word and, therefore, there was no question of copying trade mark of the respondent.
The (2) A trade mark which—
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those for which the earlier trade
mark is registered in the name of a different proprietor, shall not be registered, if or to the extent,
the earlier trade mark is a well-known trade mark in India and the use of the later mark without due
cause would take unfair advantage of or be detrimental to the distinctive character or repute of the
earlier trade mark.
(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be
prevented
(a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark
used in the course of trade; or
(b) by virtue of law of copyright.
(4) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the
earlier trade mark or other earlier right consents to the registration, and in such case the Registrar
may register the mark under special circumstances under section 12. Explanation.—For the
purposes of this section, earlier trade mark means—

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(a) a registered trade mark or convention application referred to in section 154 which has a date of
application earlier than that of the trade mark in question, taking account, where appropriate, of the
priorities claimed in respect of the trade marks;
(b) a trade mark which, on the date of the application for registration of the trade mark in question,
or where appropriate, of the priority claimed in respect of the application, was entitled to protection
as a well-known trade mark.
A trade mark shall not be refused registration on the grounds specified in sub-sections (2) and (3),
unless objection on any one or more of those grounds is raised in opposition proceedings by the
proprietor of the earlier trade mark.
(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take
into account any fact which he considers relevant for determining a trade mark as a well-known
trade mark including— (I) the knowledge or recognition of that trade mark in the relevant section of
the public including knowledge in India obtained as a result of promotion of the trade mark; word
‘NANDHINI’ represents the name of goddess and a cow in Hindu Mythology. The trade mark
‘NANDHINI’ is used by people from all walks of life and it is also referred in puranas and Hindu
mythological stories. Large number of people worship NANDHINI
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) the duration, extent and geographical area of any promotion of the trade mark, including
advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the
trade mark applies;
(iv) the duration and geographical area of any registration of or any application for registration of
that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade mark; in particular, the extent to
which the trade mark has been recognised as a well-known trade mark by any court or Registrar
under that record.
(7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a
relevant section of the public for the purposes of sub-section (6), take into account— (I) the number
of actual or potential consumers of the goods or services;
(ii) the number of persons involved in the channels of distribution of the goods or services;
(iii) the business circles dealing with the goods or services, to which that trade mark applies. (8)
Where a trade mark has been determined to be well-known in at least one relevant section of the
public in India by any court or Registrar, the Registrar shall consider that trade mark as a
well-known trade mark for registration under this Act.

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(9) The Registrar shall not require as a condition, for determining whether a trade mark is a
well-known trade mark, any of the following, namely:—
(i) that the trade mark has been used in India;
(ii) that the trade mark has been registered;
(iii) that the application for registration of the trade mark has been filed in India;
(iv) that the trade mark—
(a) is well known in; or
(b) has been registered in; or
(c) in respect of which an application for registration has been filed in, any jurisdiction other than
India; or
(v) that the trade mark is well-known to the public at large in India. as a goddess and, therefore, the
respondent cannot claim monopoly over the word ‘NANDHINI’.
8. Taking note of the aforesaid submissions and virtually accepting the same, the Deputy Registrar
noted that since the appellant is using the trade mark continuously from 1 st April, 1989 which claim
of the appellant was supported by documentary proof, objection raised by the respondent under
Section 9 stood waived. (10) While considering an application for registration of a trade mark and
opposition filed in respect thereof, the Registrar shall—
(i) protect a well-known trade mark against the identical or similar trade marks;
(ii) take into consideration the bad faith involved either of the applicant or the opponent affecting
the right relating to the trade mark.
(11) Where a trade mark has been registered in good faith disclosing the material informations to the
Registrar or where right to a trade mark has been acquired through use in good faith before the
commencement of this Act, then, nothing in this Act shall prejudice the validity of the registration of
that trade mark or right to use that trade mark on the ground that such trade mark is identical with
or similar to a well-known trade mark.
S. 18. Application for registration.— (1) Any person claiming to be the proprietor of a trade mark
used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the
Registrar in the prescribed manner for the registration of his trade mark.
(2) A single application may be made for registration of a trade mark for different classes of goods
and services and fee payable therefor shall be in respect of each such class of goods or services.

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(3) Every application under sub-section (1) shall be filed in the office of the Trade Marks Registry
within whose territorial limits the principal place of business in India of the applicant or in the case
of joint applicants the principal place of business in India of the applicant whose name is first
mentioned in the application as having a place of business in India, is situate: Provided that where
the applicant or any of the joint applicants does not carry on business in India, the application shall
be filed in the office of the Trade Marks Registry within whose territorial limits the place mentioned
in the address for service in India as disclosed in the application, is situate.
(4) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it
absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he
may think fit.
(5) In the case of a refusal or conditional acceptance of an application, the Registrar shall record in
writing the grounds for such refusal or conditional acceptance and the materials used by him in
arriving at his decision.
9. Coming to Section 11 of the Act which prohibits registration of mark and the goods in which it is
sought for registration is likely to deceive or confuse, he noted that whereas respondent’s mark is
‘NANDINI’ per se, the appellant’s mark is ‘NANDHINI DELUXE WITH LOGO (In Kannada).
Moreover, respondent is using trade mark ‘NANDINI’ in respect of dairy products, i.e., milk and
milk products only. On the other hand, the goods for which the registration was sought by the
appellant were altogether different, even though both fall in the same Class, i.e., Class 29.
Highlighting this factual difference of the nature of goods in which the appellant and respondent are
trading, the Deputy Registrar was of the view that the respondent’s objection under Section 11 was
not tenable. While coming to this conclusion, he also took aid of some judgments of the IPAB as well
as different High Courts. In the process, he also rejected the contention of the respondent that the
trade mark used by the appellant was a colourable imitation of the respondent’s trade mark which
was well-known mark under Section 11(2) of the Act.
10. Dealing with the objections on the touchstone of Section 18 of the Act, the Deputy Registrar
came to a conclusion that the appellant is the proprietor of the mark as claimed under Section 18(1)
of the Act, but restricted his entitlement for registration by holding that the appellant would not be
entitled to registration in respect of milk and milk products. Relevant discussion in this behalf is
reproduced below:
“The balance of convenience is in favour of the applicants. The applicants are the
extensive user of the mark since the year 1989. the adoption of the mark by the
Applicants is honest and concurrent. To prove their claim, the applicants have filed
documents in support of application. In these circumstance, the applicants are having
definite claim to the proprietorship of the mark applied for. Hence the Applicants are
the proprietors of the mark as claimed for under the provisions of Section 18(1) of the
Act.

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On carefully considered the arguments advanced by both the counsel and materials
available on the record and the evidence adduced by the concerned parties, in the
interest of justice and purity of the Register since the Applicants are not using milk
and milk products in class-29 whereas the Opponents have proved that they are the
famous Dairy products producers and the evidence produced by the Opponents also
reveals that they are using the mark for Milk and Milk products only. Therefore, the
applicants are directed to delete the goods “Milk and Milk products” from the
specification of goods by way of filing a request on from TM-16 to delete the same
and after deletion of the goods, the same should be notified in the Trade Marks
Journal.
It is significant to note that both Applicant and Opponent are carrying business in Bangalore. While
the Applicant claims to be suing the trade mark NANDHINI since 1989, the Opponents have been
using the trade mark NANDINI prior to Applicant, the artistic work, design and getup are totally
different. While the Applicant has been using the traded mark NANDHINI with a lamp and written
in a particular style, the Opponents are using NANDINI with device of cow. The Opponent has not
produced any evidence to show that use of trade mark NANDHINI by Applicant is causing confusion
or deception. In view of continuous user of the trade mark NANDHINI by Applicant, the Applicant
has deemed to have become proprietor of the trade mark NANDHINI.
Lastly coming to the exercise of discretion of the Registrar vested with him, the onus to prove the
claim of proprietorship of the mark is always on the Applicants. The Applicants have successfully
discharged their onus that they are the proprietors of the mark NANDHINI DELUXE WITH LOGO
(Kannada) applied for registration. In order to safeguard the public interest and to protect the
intellectual and industrial property rights of the Applicants who are honest adopters and bonafide
users, the applicant’s trade mark is to be protected by granting registration enabling the applicants
to use their mark legally without any hindrance, this authority has no other alternative except to
allow application and to grant registration of the impugned mark.
In view of the foregoing, it is ordered that the opposition No. MAS-194405 is dismissed and
application No. 982285 in Class-29 shall proceed to registration subject to deleting the items “Milk
and Milk products” from the specification of goods by filing a request on form TM-16 and the
amended application should be notified in the Trade Marks Journal.” ORDER DATED 20TH
APRIL, 2010 OF THE IPAB :
11. The aforesaid order rejecting the opposition of the respondent to the registration of trade mark
‘NANDHINI’ as sought by the appellant and allowing appellant’s application for registration, except
for milk and milk products, was challenged by the respondent by filing set of appeals. One such
appeal being OA/4/2008/TM/CH was decided by IPAB vide its order 20 th April, 2010. The IPAB
referred to the judgment of this Court in Vishnudas Trading as Vishnudas Kushandas vs. The Vazir
Sultan Tobacco Ltd. and Anr.2 and quoted the following passage therefrom:-
“In our view if a trader or manufacturer actually trades in or manufactures only one
or some of the articles coming under a broad classification and such trader or

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manufacturer has no bonafide intention to trade in or manufacture other goods or

articles which also fall under the said broad classification, such trader or
manufacturers to get registration of separate and distinct goods which may also be
grouped under the broad classification.”
12. If registration has been given generally in respect of all the articles under the broad classification
and if it is established that the trader or manufacturer who got such registration had not intended to
use any other article except the articles being used by such trader or manufacturer, the registration
of such trader is liable to be rectified by limiting the ambit of registration and confining such
registration to the specific article or articles which really concerns the trader or manufacturer
enjoying the registration made in his favour.
13. The IPAB noted that in the instant case, the respondent is dealing with milk and milk products
whereas the appellant is dealing with the other products like meat and fish etc. from which dishes
are 2 1996 SCALE (5) 267 prepared in its restaurants and served to the customers. It took note of
certain principles that when a person trades or manufactures one good under the broad
classification having no bona fide intention to trade in all other goods falling under that broad
classification, he cannot be permitted to enjoy monopoly in articles falling under such classification
as held in Vishnudas Trading as Vishnudas Kushandas2 . Therefore, in the instant case, when the
respondent has its limited business only in milk and milk products with no intention to expand the
business of trading in other goods falling under Class 29 and the appellant was given registration in
other articles only, specifically excluding milk and milk products, there was nothing wrong in
according registration of those products in favour of the appellant under the trade mark
‘NANDHINI’. The IPAB also observed that the respondent had failed to prove that by allowing such
registration in favour of the appellant, any confusion or deception would ensue. On that reasoning,
appeal of the respondent was dismissed. At the same time, the appellant was asked to file a request
on Form 16 to delete the goods ‘milk and milk products’ The appellant filed the affidavit to this
effect, as directed by IPAB on 18th July, 2011.
ORDER DATED 4TH OCTOBER, 2011 OF THE IPAB :
14. Notwithstanding, order dated 20th April, 2018 passed by the IPAB, insofar as other appeals of
the respondent are concerned, the events took a different turn as vide orders dated 4 th October,
2011 appeals of the respondent herein were allowed by the IPAB. It accepted the case of the
respondent that ‘NANDINI’ is a well- known trade mark and a household name in the State of
Karnataka and that it is the registered trade mark of the respondent. The goods sold are milk and
milk products such as curd, butter, cheese, ghee, milk powder, flavoured milk, paneer, khoya, ice
cream and all milk based sweets. They are sold in bottles, sachets, tetra packs, polythene containers
etc. The device used by the respondent is standing cow on a grass land having rising sun in the
background. The IPAB also took note of the statistics given by the respondent in respect of sales
turnover as well as advertisement and sale promotion expenditure for the last 10 years. It had
obtained several registrations in respect of trade mark NANDINI and label forms in Classes 29, 30,
31 and 32 and had also secured copyright registration as early as in the year 1984 and 1985.

140
15. In the opinion of IPAB, the appellant is running a restaurant which would come under Class 42
with which the Board was not concerned. Therefore, the fact that respondent had not raised any
objection to appellant’s mark for 18 years was of no relevance.
It also noted that insofar as this trade mark ‘NANDINI’ used by the respondent is concerned, it has
acquired distinctiveness. It further held that since milk and milk products fall under Classes 29 and
30 and the goods registered in the name of the appellant also fall in the same class, the average
consumer would conclude that goods manufactured by the appellant belonged to the respondent
and, therefore, there is likelihood of confusion. Further, the respondent was using the trade mark
prior to the appellant in the same class of goods and, therefore, registration of the appellant’s mark
could not be permitted. We would like to reproduce the following discussion as that captures the
entire essence of the reasoning given by the IPAB in support of its conclusion:
“14. So each case has to be decided on the basis of t he facts on hand. With regard to
the appellant’s mark we find that one of the documents which is the Kannada Weekly
Sudha where it is stated that “I am using NANDINI. You?” In Tharanga Kahhanda
Weekly, ‘Nandini Ghee has a role in every moment of life celebration” (translated
from Kannada). These are pieces of evidence to show that the word Nandini itself has
become associated with the appellant’s products and therefore, though it might be a
Hindu name, or even a deity’s name, it has come to be recognized as a distinctive
mark of the appellant by the appellant’s use of the same for nearly two decades. The
conclusion of the Registrar that it is not likely to confuse cannot be sustained. The
word is identical. The addition of a letter H by the respondent cannot make a
difference. Whether it is Nandini or Nandhini, it is pronounced identically. And in
Kannada there is no difference in the spelling of the trademark of the appellant and
that of the respondent.
15. We have referred to the advertisement which says ‘I am using Nandini”. It is clear
that the consumer and the general public who are the source of the goods ‘when the
word Nandini is used. When that is so, we cannot permit the respondent to use the
identical mark in relation to goods which are akin to the appellants.
16. The addition of the Word Deluxe cannot improve the case of the respondent since
the word NANDHINI is identical and it definitely will confusion in the minds of the
consumers.
17. The priority in use is indisputably the appellants. It has been so and consistently used that the
marks have become entrenched in the minds of the consumer. It will definitely not being in the
interest of the public to allow the respondent to use the mark in connection with the goods in
question. The balance of convenience is not in favour of the respondent.” IMPUGNED JUDGMENT
OF THE HIGH COURT:
16. The High Court upholding the order dated 4 th October, 2011 of the IPAB and dismissing the
writ petitions of the appellant herein has done nothing except accepting the the aforesaid reasoning

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of the IPAB, namely, (a) mark NANDINI as held by the respondent has acquired a distinctive
character and has become well-known; (b) the use of another mark is different only in one alphabet
but with no difference in spelling or pronunciation in the local language and would very likely to
cause confusion in the minds of public if allowed to be registered for the commodities falling in the
same class; (c) argument of the appellant herein that it was running the business of restaurant since
1989 and the respondent had started using mark ‘NANDINI’ since the year 1985 only for milk and
not for other products was rejected on the ground that there is no foundation in facts for the
aforesaid argument and no material was produced to substantiate the same.
17. As stated in the beginning, very detailed arguments are advanced by counsel for both the parties.
The precise nature of the arguments of the parties is as follows:
18. Mr. Sushant Singh, learned counsel appearing for the appellant, advanced the following
propositions, while laying attack to the orders of IPAB as well as the High Court:
(i) In the first instance, he submitted that both the High Court of Karnataka as well as IPAB grossly
erred in law in interpreting the provisions of Section 11 of the Act to mean that once a trademark has
acquired a distinctive character, then the registration of the trade mark is barred and is likely to
cause confusion if it is allowed to be registered in the commodities within the same class. His
response was that this finding of the High Court of Karnataka as well as of IPAB, is in principle
erroneous inasmuch as there is no proposition of law which supports this interpretation to Section
11 of the Act. Learned counsel emphasised that no proper weightage and consideration was given to
the fact that goods and services of the appellant were totally different from that of the respondent
and, therefore, there was no likelihood of confusion or deception among the public. Instead, the
courts below compared only the marks. This is not in accord with Sections 9 and 11 of the Act. He
also referred to the following judgments in support of his plea:
(a) Eco Lean Research and Development A/S v. Intellectual Property Appellate Board and The Asst.
Registrar of Trade Marks, Trade Mark Registry3:
“11. As noticed above, the intimation given to the petitioner at the first instance by the
Trade Mark Registry on 6.12.2007 is by stating that the registration has been refused
under Sections 9 and 11 of the Act. However, in the grounds of decision, the order
proceeds only under Section 11 and not under Sections 9 and 11 of the Act.” 3
MANU/TN/3041/2011
(b) British Sugar Plc v. James Robertson & Sons Ltd.4:
“(d) Infringement pursuant to section 10(2)?
Because “Treat” is the very mark registered and is clearly used by Robertson’s I think
the case falls to be considered under section 10(2)(a), the identical mark/similar
goods provision. I do not think it falls within section 10(2)(b) because I reject the
argument that the sign used is to be regarded as “Robertson’s Toffee Treat”. That is

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used too but the first two words are added matter and it does not matter in what
capacity “Treat” is used.
The questions arising under section 10(2)(a) are:
(1) Is the mark used in the course of trade?
(2) Are the goods for which it is used similar to those covered by the registration?
(3) Is there a likelihood of confusion because of that similarity?
The first of these questions causes no difficulty here. The problems arise under the
second and third questions. British Sugar seek to elide the questions of confusion and
similarity. Their skeleton argument contends that there is “use in relation to a
product so similar to a dessert sauce that there exists a likelihood of confusion
because the product may or will be used for identical purposes.” I do not think it is
legitimate to elide the question in this way. The sub-section does not merely ask “will
there be confusion?”: it asks “is there similarity of goods?”, if so, “is there a likelihood
of confusion?” The point is important.
For if one elides the two questions than a “strong” mark would get protection for a
greater range of goods than a “weak” mark. For instance “Kodak” for socks or bicycles
might well cause confusion, yet these goods are plainly dissimilar from films or
cameras. I think the question of similarity of goods is wholly independent of the
particular mark the subject of registration or the defendant’s sign.” 4 (1996) RPC 281
(CH)
(c) London Rubber Co. Ltd. v. Durex Products Incorporated & Anr.5:
“8. The provisions of Sections 8 and 10 of the Act are enabling provisions in the sense
that it is not obligatory upon a proprietor of a mark to apply for its registration so as
to be able to use it. But when a proprietor of a mark, in order to obtain the benefit of
the provisions of the Trade Marks Act, such as a legally protected right to use it,
applies for registration of his mark he must satisfy the Registrar that it does not
offend against the provisions of Section 8 of the Act. The burden is on him to do so.
Confining ourselves to clause (a) the question which the Registrar has to decide is,
whether having regard to the reputation acquired by use of a mark or a name, the
mark at the date of the application for registration if used in a normal and fair
manner in connection with any of the goods covered by the proposed registration,
will not be reasonably likely to cause deception and confusion amongst a substantial
number of persons (See 38 Halsbury's Laws of England pp. 542-43). What he decides
is a question of fact but having decided it in favour of the applicant, he has a
discretion to register it or not to do so (Re Hack's Application [(1940) 58 RPC 91] ).
But the discretion is judicial and for exercising it against the applicant there must be

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some positive objection to registration, usually arising out of an illegality inherent in

the mark as applied for at the date of application for registration (Re Arthur Fairest
Ltd. Application [(1951) 68 RPC 197] ). Deception may result from the fact that there
is some misrepresentation therein or because of its resemblance to a mark, whether
registered or unregistered, or to a trade name in which a person other than the
applicant had rights (Eno v. Dunn [(1890) 15 AC 252] ).
Where the deception or confusion arises because of resemblance with a mark which
is registered, objection to registration may come under Section 10(1) as well (See note
‘k’ at p. 543 of 38 Halsbury's Laws of England). The provisions in the English Trade
Marks Act, 1938 (1 & 2 Geo. 6 clause 22) which correspond to Sections 8 and 10(1) to
10(3) of our Act are Sections 11 and 12(1) to 12(3). Dealing with the prohibition of
registration of identical 5 (1964) 2 SCR 211 and similar marks Halsbury has stated at
pp. 543-44, Vol.
38, thus:
“Subject to the effect of honest concurrent use or other special circumstances, no trade mark may be
registered in respect of any goods or description of goods that (1) is identical with a trade mark
belonging to a different proprietor and already registered in respect of the same goods or description
of goods; or (2) so nearly resembles such a registered trade mark as to be likely to deceive or cause
confusion.” Since the Trade Marks Act, 1940 is based on the English statute and the relevant
provisions are of the same nature in both the laws, though the language of Section 8(a) is slightly
different from that of Section 11 of the English Act and that of Section 10(1) from that of Section
12(1) of the English Act, we see no reason for holding that the provisions of Section 8(a) would not
apply where a mark identical with or resembling that sought to be registered is already on the
register. The language of Section 8(a) is wide and though upon giving full effect to that language the
provisions of Section 10(1) would, in some respects, overlap those of Section 8(a), there can be no
justification for not giving full effect to the language used by the legislature.”
(ii) He also argued that even if it is assumed that Section 9(2)(a) is distinct from Section 11(1),
insofar as enquiry “likelihood of confusion and deception” is concerned, it was supposed to be
undertaken by applying well settled factors and variables which are stipulated in a series of
judgments. He referred to Polaroid Corporation v. Polarad Electronics Corporation6, Shree Nath
Heritage Liquor Pvt. Ltd. & Ors. v. Allied Blender and 6 182 F. Supp. 350 (1960) Distillers Pvt. Ltd.7
and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.8 in this behalf.
(iii) Another submission of Mr. Sushant Singh was that the finding of the High Court that the mark
is prohibited from registration in respect of entire class or classes of goods runs contrary to the
principle of law laid down in Vishnudas Trading Co. v. Vazir Sultan Tobacco Co. Ltd.9 where the
Court has observed that the monopoly under Trademark only extends to the goods which are falling
in a particular class and not the entire class of goods and the trade mark which is identical or similar
in nature can be registered for the goods which are falling within the same class inasmuch as giving
the monopoly to the entire class of goods and services to the registered proprietor would lead to

144
trafficking in the trade mark which is not the object and the purpose of the Trade Mark Act.
(iv) Learned counsel went to the extent of targeting the finding that Trademark “NANDHINI”
adopted by the respondent is a well- known inasmuch as such finding was without any supporting
material. In this behalf, he attempted to show that there was no 7 (2015) 221 DLT 359 8 (2001) 5
SCC 73 9 (1997) 4 SCC 201 finding by the IPAB that the mark “NANDHINI” of the respondent is a
well-known mark. He argued that the concept of well-known trademark enshrined under Section
11(2) of the Act which gives wider net of protection to the trademarks in respect of different set of
goods is a completely different than that of the Section 11(1). It is submitted that for arriving at the
conclusion of well-known trademark there are certain defined parameters on which the trademark is
required to be tested, as held by Delhi High Court in Nestle India Ltd. v. Mood Hospitality Pvt.
Ltd.10
(v) According to the learned counsel, the matter also needed to be examined in the light of the fact
that the nature of the mark “NANDHINI” which is admittedly a common name and name of the
diety and coupled with its level of distinctiveness on account of its user confined to milk and milk
products would not warrant invocation of Section 11(2) of the Act as the said provision is applicable
in the present case. Stress was laid on the submission that the use of the mark “NANDHINI” by the
appellant is honest and with due cause since the year 1989. Respondent has never filed any suit for
injunction against the appellant and clearly 10 (2010) 42 PTC 514 (Del) (DB) acquiesced to the user
of the appellant. Therefore, Section 11(2) is not applicable.
(vi) Advancing the aforesaid line of argument, his another submission was that Section 12 is an
inbuilt scheme which allows the Registrar to register same or similar trademark in respect of same
or similar goods. More so, when the name “NANDHINI” is a common name of the deity and
common name of Hindu girl to which IPAB agrees. In this context, he also referred to the order
passed by the Registrar wherein concurrent user of both the appellant and the respondent was
accepted and submitted that there was no reason to upset the said finding.
(vii) Mr. Sushant Singh further argued that since the respondent was in the business of manufacture
and marketing of milk and milk products only, and had admittedly not expanded its business to any
other items in Class 29 or 30, the case of the respondent at the highest could be qua milk and milk
products only. He submitted that the appellant was ready to give concession by not claiming any
registration or trademarks which fell in the category of milk and milk products. In this behalf, he
submitted the list of goods which the appellant was ready to delete from its application for
registration and the goods in respect of which the appellant intended to claim registration. This was
submitted in the tabulated form as under:
CLASS GOODS APPLIED IN THE GOODS GOODS

TRADE MARK APPLICATION PROPOSED PROPOSED
TO BE TO BE
DELETED RETAINED
Class 29 TRADE MARK APP. NO. 982285 Eggs; milk and Meat, f
Meat, fish, poultry and game; milk products poultry
meat extracts; preserved, dried and all other game; meat
and cooked fruits and goods being extracts;

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vegetables; jellies, jams, fruit included in preserved,

sauces; eggs; milk and milk Class 29. dried
products; edible oils and fats, cooked fruit
salad dressings, preserves and and
all other goods being included in vegetables;
Class 29. jellies, jam
fruit sauces
edible
and f
salad
dressings,
preserves
Class 30 TRADE MARK APP. NO. 817305 Tea, coffee, Sugar, rice,
Coffee, tea, cocoa, sugar, rice, cocoa, artificial tapioca,
tapioca, sago, artificial coffee, coffee, coffee sago, fl
flour and preparations made from substitute, and
cereals, bread, pastry and biscuits, cakes, preparations
confectionery, ices, honey, pastry and made fro
treacle, yeast, baking-powder, confectionery, cereals,
salt, mustard, vinegar, sauces ices, ice and all bread, honey
(except salad dressings), spices, other goods treacle,
ice and all other goods being being included yeast,
included in Class 30 in Class 30. baking-
powder, salt
TRADE MARK APP. NO. 982284 mustard,
Coffee, tea, cocoa, sugar, rice, pepper,
sago, substitute flour and masala
preparations made from cereal, paste,
bread, biscuits, cakes, pastry and vinegar,
confectionery, ices, honey, yeast, sauces
baking powder, salt, mustard, (except sala
pepper, masala paste, vinegar dressings),
sauces, spices spices.
(viii) The learned counsel submitted that neither the IPAB nor the High Court had answered all the
questions/issues which had been raised by the Registrar on the basis of which findings of the
Registrar had been premised including under Section 12 of the Act. Moreover, argued the counsel,
IPAB did not even refer to or take into consideration the earlier order dated April 20, 2010 passed
by IPAB itself wherein IPAB had dismissed the appeal of the respondent on the same issue.
Therefore, the appeal filed by the respondent before the IPAB was even barred by the Principle of
Issue Estoppel.
19. Mr. S.S. Naganand, learned senior counsel appearing for the respondent submitted, per contra,
that IPAB had properly considered all the contentions expressly argued in the appeal as well as in
the review petition. It had recorded the factual position and upon such appreciation of facts, the

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IPAB concludes not only that “the word Nandhini has acquired a distinctiveness” but also that
“there is no doubt that if goods under Class 29 and 30 bearing the respondent’s (petitioner herein)
trademark come out in the market, the average consumer would conclude that it belongs to the
Karnataka Cooperative Milk Producers Federation”. The IPAB was also pleased to hold that “the
work Nandhini itself has become associated with the appellant’s (present respondent’s) products
and, therefore, though it might be a Hindu name, or even a deity’s name, it has come to be
recognized as a distinctive mark of the appellant by the appellant’s use of the same for nearly two
decades. The conclusion of the Registrar that it is not likely to confuse cannot be sustained.” These
findings were expressly affirmed by the High Court in the impugned judgment. Mr. Naganand also
submitted that all the essential characteristics of a well-known mark as understood under Section
11(2) read with Section 11(8) of the Act have been found by the IPAB in the respondent’s mark
“NANDHINI”. Under Section 11(8) of the Act, if any Court or Registrar has found that a trade mark
is well-known in at least one relevant section of the public in India, it shall be a well-known trade
mark for purposes of the Act. Based on the facts and evidence on record, IPAB has clearly recorded a
finding that the respondent’s trademark is associated with the respondent organisation and that it
has acquired distinctiveness in Paras 9 and 14 of the IPAB order. These findings of fact cover the
essentials to be considered as a ‘well-known’ trademark and a household name. The High Court has
affirmed the correct findings of the IPAB. He asserted that the respondent’s trademark
“NANDHINI” is a household name in the entire South India, and more so in Karnataka.
“NANDHINI” is to Karnataka what “Amul” is to Gujarat. Therefore, there can be no doubt as to
“NANDHINI” being a well-known mark. It is important to note that the appellant is running
Restaurants only in the city of Bangalore in Karnataka and one town in Tamil Nadu. Outside the city
of Bangalore, the public are not aware of the respondent’s restaurant and “NANDHINI” all over
Karnataka is related exclusively to the respondent organisation.
20. Insofar as argument of the appellant that “NANDHINI” is the name of a God/Deity and,
therefore, cannot be registered as Trademark, reply of the learned senior counsel was that this
argument is counterproductive and against the appellant’s own interest. He submitted that the
prevailing question in the present petition is whether or not the appellant can register a trademark
bearing the name “NANDHINI”. If it is the appellant’s averment that the name “NANDHINI” is the
name of a Hindu deity and as a result cannot be registered, then such an argument will not only
render futile the very registration the appellant has applied for, but will also render the present
petition otiose.
Without prejudice to the above, he argued that merely because the word “NANDHINI” denotes a
Hindu Goddess or deity, does not mean that it cannot be registered. He submitted that the only
provision contained in the Act on the subject matter of registration of trademarks that affect
religious sentiments is contained in Section 9(2)(b) which is set out below for ready reference:
“Section 9(2) : A mark shall not be registered as a trademark if:
(b) : it contains or comprises of any matter likely to hurt the religious susceptibilities
of any class or section of the citizens of India.”

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21. According to the learned senior counsel, the significance of Nandhini, as a symbol of purity and
the source of wholesome milk is the reason for the adoption of that word by the respondent. In view
of the same, the registration of the trademarks of the respondent in the present case, do not fall
within the ambit of the provisions of Section 9(2)(b) of the Act. There is no prohibition in law to
include the name of any God as a part of a trademark. It is settled law that if a mark has obtained a
secondary distinctiveness in the minds of the consumer, then the same should be registered and
protected. He emphasised that the respondent has been able to prove that the appellant’s case was
covered by Section 11(2) of the Act and, therefore, it could not be registered. For this purpose, he
referred to the judgment of Delhi High Court in Nestle India Ltd. wherein the Court laid down
following conditions which need to be satisfied for the applicability of Section 11(2):
“(a) The mark has to be identical with or similar to an earlier trademark and is to be
registered for goods or services which are not similar to those for which the earlier
trademarks is registered – both the aforementioned conditions (forming sub-section
(a) and (b) of Section 11(2)) have to be satisfied and not just one, due to the use of the
word and between them.
(b) The registered Trademark must have a reputation in India, and
(c) The use of the mark in question must be without due cause, and
(d) Such use must take unfair advantage of or be detrimental to the distinctive
character or repute of the registered trademark.”
22. In this hue, another submission of the learned senior counsel for the respondent was that the
appellant’s contention regarding honest and concurrent user was untenable for the following
reasons:
(a) The question of the Court/Registrar taking into consideration the provisions of Section 12 of the
Act, which provides for registration in the case of honest and concurrent user does not arise as the
very basis for the application of this Section is the “honesty of the concurrent use.” The appellant
was well- aware of the widespread use of the mark Nandhini by the respondent and has admitted
that they were purchasing Nandhini milk for their restaurant. Therefore, the appellant cannot claim
to be an honest or concurrent user, as such claims would be contrary to the evidence placed on
record and their own admissions.
(b) Section 12 of the Act relates to identical or similar goods or services. The appellant is not in the
business of selling milk or milk products and the claim made by it is with regard to the trading style
for their restaurants’ name “NANDHINI”. Therefore, the goods or services of the appellant are
neither identical, nor similar, to those of the the respondent.
(c) At any rate, Section 11(2) being couched in negative language indicates that it is mandatory
nature and would override the provisions of Section 12.

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(d) Section 12 has never been expressly pleaded by the appellant. In any case, this contention has
not been expressly argued on behalf of the appellant before the lower fora.
23. We have duly considered the aforesaid submissions of both the counsel with reference to the
record of the case. Though the detailed arguments are advanced touching upon various aspects, it is
not necessary to traverse through all these arguments. We proceed on the presumption that the
trade mark ‘NANDHINI’, which is registered in the name of the appellant has acquired
distinctiveness though the appellant disputes the same. Otherwise also there is no challenge to the
registration of this name in favour of the respondent. The moot question, according to us, is as to
whether the appellant is entitled to seek registration of the mark ‘NANDHINI’ in respect of the
goods in which it is dealt with, as noted above. Therefore, the fulcrum of the dispute is as to whether
such a registration in favour of the appellant would infringe rights of the respondent. The entire case
of the respondent revolves around the submissions that the adaptation of this trade mark by the
appellant, which is phonetically similar to that of the respondent, is not a bona fide adaptation and
this clever device is adopted to catch upon the goodwill which has been generated by the respondent
in respect of trade mark ‘NANDINI’. On that premise, the respondent alleges that the proposed
trade mark ‘NANDHINI’ for which the appellant applied for registration is similar trade mark in
respect of similar goods and, therefore, it is going to cause deception and confusion in the minds of
the users that the goods in which the appellant is trading, in fact, are the goods which belong to the
respondent. Precisely, it is this controversy which needs to be addressed in the first instance.
24. Before we answer as to whether the approach of the IPAB and the High Court in the impugned
orders is correct, as contended by the respondent or it needs to be interdicted as submitted by the
appellant, some of the relevant facts about which there is no dispute, need to be recapitulated. These
are as follows: (A) Respondent started using trade mark in respect of its products, namely, milk and
milk products in the year 1985. As against that, the appellant adopted trade mark ‘NANDHINI’ in
respect of its goods in the year 1989.
(B) Though, the respondent is a prior user, the appellant also had been using this trade mark
‘NANDHINI’ for 12-13 years before it applied for registration of these trade marks in respect of its
products.
(C) The goods of the appellant as well as respondent fall under the same Classes 29 and 30.
Notwithstanding the same, the goods of the appellant are different from that of the respondent.
Whereas the respondent is producing and selling only milk and milk products the goods of the
appellant are fish, meat, poultry and game, meat extracts, preserved, dried and cooked fruits and
vegetables, edible oils and fats, salad dressings, preserves etc. and it has given up its claim qua milk
and milk products. (D) Insofar as application for registration of the milk and milk products is
concerned, it was not granted by the trade mark registry. In fact, the same was specifically rejected.
The appellant was directed to file the affidavit and Form 16 in this behalf to delete the goods ‘milk
and milk products’ which affidavit was filed by the appellant. Further concession is already recorded
above.

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(E) NANDINI/NANDHINI is a generic, it represents the name of Goddess and a cow in Hindu
Mythology. It is not an invented or coined word of the respondent.
(F) The nature and style of the business of the appellant and the respondent are altogether different.
Whereas respondent is a Cooperative Federation of Milk Producers of Karnataka and is producing
and selling milk and milk products under the mark ‘NANDINI’, the business of the appellant is that
of running restaurants and the registration of mark ‘NANDHINI’ as sought by the appellant is in
respect of various foodstuffs sold by it in its restaurants.
(G) Though there is a phonetic similarity insofar as the words NANDHINI/NANDINI are
concerned, the trade mark with logo adopted by the two parties are altogether different. The manner
in which the appellant has written NANDHINI as its mark is totally different from the style adopted
by the respondent for its mark ‘NANDINI’. Further, the appellant has used and added the word
‘Deluxe’ and, thus, its mark is ‘NANDHINI DELUXE’. It is followed by the words ‘the real spice of
life’. There is device of lamp with the word ‘NANDHINI’. In contrast, the respondent has used only
one word, namely, NANDINI which is not prefixed or suffixed by any word. In its mark ‘Cow’ as a
logo is used beneath which the word NANDINI is written, it is encircled by egg shape circle. A bare
perusal of the two marks would show that there is hardly any similarity of the appellant’s mark with
that of the respondent when these marks are seen in totality.
25. When we examine the matter keeping in mind the aforesaid salient features, it is difficult to
sustain the conclusion of the IPAB in its order dated 4th October, 2011 as well in the impugned
order of the High Court that the mark adopted by the appellant will cause any confusion in the mind
of consumers, what to talk of deception. We do not find that the the two marks are deceptively
similar.
26. We are of further opinion that the earlier order dated 20 th April, 2010 of IPAB approached the
subject matter in correct perspective. The test laid down in Polaroid Corporation vs. Polarad
Electronics Corporation11 is as follows:
“The problem of determining how far a valid trademark shall be protected with
respect to goods other than those to which its owner has applied it, has long been
vexing and does not become easier of solution with the years. Neither of our recent
decisions so heavily relied upon by the parties, Harold F. Ritchie, Inc. v.
Chesebrough-Pond's, Inc., 2 Cir., 1960, 281 F.2d 755, by plaintiff, and Avon Shoe Co.,
Inc. v. David Crystal, Inc., 2 Cir., 1960, 279 F.2d 607 by defendant, affords much
assistance, since in the Ritchie case there was confusion as to the identical product
and the defendant in the Avon case had adopted its mark "without knowledge of the
plaintiffs' prior use," at page 611.
Where the products are different, the prior owner's chance 11 287 F.2d 492 (1961) of success is a
function of many variables: the strength of his mark, the degree of similarity between the two marks,
the proximity of the products, the likelihood that the prior owner will bridge the gap, actual
confusion, and the reciprocal of defendant's good faith in adopting its own mark, the quality of

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defendant's product, and the sophistication of the buyers. Even this extensive catalogue does not
exhaust the possibilities — the court may have to take still other variables into account. American
Law Institute, Restatement of Torts, §§ 729, 730, 731. Here plaintiff's mark is a strong one and the
similarity between the two names is great, but the evidence of actual confusion, when analyzed, is
not impressive. The filter seems to be the only case where defendant has sold, but not manufactured,
a product serving a function similar to any of plaintiff's, and plaintiff's sales of this item have been
highly irregular, varying, e. g., from $2,300 in 1953 to $303,000 in 1955, and $48,000 in 1956.”
27. This Court in National Sewing Thread Co. Ltd. vs. James Chadwick and Bros.12 accepted the
following principles which are to be applied in such cases:
“22. The principles of law applicable to such cases are well settled. The burden of
proving that the trade mark which a person seeks to register is not likely to deceive or
to cause confusion is upon the applicant. It is for him to satisfy the Registrar that his
trade mark does not fall within the prohibition of Section 8 and therefore it should be
registered. Moreover in deciding whether a particular trade mark is likely to deceive
or cause confusion that duty is not discharged by arriving at the result by merely
comparing it with the trade mark which is already registered and whose proprietor is
offering opposition to the registration of the mark. The real question to decide in
such cases is to see as to how a purchaser, who must be looked upon as an average
man of ordinary intelligence, would react to a particular trade mark, what association
he would form by looking at the trade mark, and in what respect he would 12 AIR
1953 SC 357 connect the trade mark with the goods which he would be purchasing.”
28. Applying the aforesaid principles to the instant case, when we find that not only visual
appearance of the two marks is different, they even relate to different products. Further, the manner
in which they are traded by the appellant and respondent respectively, highlighted above, it is
difficult to imagine that an average man of ordinary intelligence would associate the goods of the
appellant as that of the respondent.
29. One other significant factor which is lost sight of by the IPAB as well as the High Court is that
the appellant is operating a restaurant under the trademark ‘NANDHINI’ and it had applied the
trademark in respect of goods like coffee, tea, cocoa, sugar, rice, rapioca, sago, artificial coffee, flour
and preparations made from cereals, bread, pastry, spices, bill books, visiting cards, meat, fish,
poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams,
fruit sauces, etc. which are used in the products/services of restaurant business. The aforesaid items
do not belong to Class 29 or 30. Likewise, stationery items used by the appellant in the aid of its
restaurant services are relatable to Class 16. In these circumstances, there was hardly any question
of confusion or deception.
30. Having arrived at the aforesaid conclusion, the reasoning of the High Court that the goods
belonging to the appellant and the respondent (though the nature of goods is different) belong to
same class and, therefore, it would be impermissible for the appellant to have the registration of the
concerned trade mark in its favour, would be meaningless. That apart, there is no such principle of

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law. On the contrary, this Court in Vishnudas Trading as Vishnudas Kushandas2 has decided
otherwise as can be seen from the reading of para 47 of the said judgment:-
“47. The respondent Company got registration of its brand name “Charminar” under
the broad classification “manufactured tobacco”. So long such registration remains
operative, the respondent Company is entitled to claim exclusive use of the said
brand name in respect of articles made of tobacco coming under the said broad
classification “manufactured tobacco”. Precisely for the said reason, when the
appellant made application for registration of quiwam and zarda under the same
brand name “Charminar”, such prayer for registration was not allowed. The
appellant, therefore, made application for rectification of the registration made in
favour of the respondent Company so that the said registration is limited only in
respect of the articles being manufactured and marketed by the respondent
Company, namely, cigarettes. In our view, if a trader or manufacturer actually trades
in or manufactures only one or some of the articles coming under a broad
classification and such trader or manufacturer has no bona fide intention to trade in
or manufacture other goods or articles which also fall under the said 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 from
getting registration of separate and distinct goods which may also be grouped under
the broad classification. If registration has been given generally in respect of all the
articles coming under the broad classification and if it is established that the trader or
manufacturer who got such registration had not intended to use any other article
except the articles being used by such trader or manufacturer, the registration of such
trader is liable to be rectified by limiting the ambit of registration and confining such
registration to the specific article or articles which really concern the trader or
manufacturer enjoying the registration made in his favour. In our view, if
rectification in such circumstances is not allowed, the trader or manufacturer by
virtue of earlier registration will be permitted to enjoy the mischief of trafficking in
trade mark. Looking to the scheme of the registration of trade mark as envisaged in
the Trade Marks Act and the Rules framed thereunder, it appears to us that
registration of a trade mark cannot be held to be absolute, perpetual and invariable
under all circumstances. Section 12 of the Trade Marks Act prohibits registration of
identical or deceptively similar trade marks in respect of goods and description of
goods which is identical or deceptively similar to the trade mark already registered.
For prohibiting registration under Section 12(1), goods in respect of which
subsequent registration is sought for, must be (i) in respect of goods or description of
goods being same or similar and covered by earlier registration and (ii) trade mark
claimed for such goods must be same or deceptively similar to the trade mark already
registered. It may be noted here that under sub-section (3) of Section 12 of the Trade
Marks Act, in an appropriate case of honest concurrent use and/or of other special
circumstances, same and deceptively similar trade marks may be permitted to
another by the Registrar, subject to such conditions as may deem just and proper to

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the Registrar. It is also to be noted that the expression “goods” and “description of
goods” appearing in Section 12(1) of the Trade Marks Act indicate that registration
may be made in respect of one or more goods or of all goods conforming a general
description. The Trade Marks Act has noted distinction between description of goods
forming a genus and separate and distinctly identifiable goods under the genus in
various other sections e.g. goods of same description in Section 46, Sections 12 and
34 and class of goods in Section 18, Rules 12 and 26 read with Fourth Schedule to the
Rules framed under the Act.
48. The “class” mentioned in the Fourth Schedule may subsume or comprise a
number of goods or articles which are separately identifiable and vendible and which
are not goods of the same description as commonly understood in trade or in
common parlance. Manufactured tobacco is a class mentioned in Class 34 of Fourth
Schedule of the Rules but within the said class, there are a number of distinctly
identifiable goods which are marketed separately and also used differently. In our
view, it is not only permissible but it will be only just and proper to register one or
more articles under a class or genus if in reality registration only in respect of such
articles is intended, by specifically mentioning the names of such articles and by
indicating the class under which such article or articles are to be comprised. It is,
therefore, permissible to register only cigarette or some other specific products made
of “manufactured tobacco” as mentioned in Class 34 of Fourth Schedule of the Rules.
In our view, the contention of Mr Vaidyanathan that in view of change in the
language of Section 8 of the Trade Marks Act as compared to Section 5 of the Trade
Marks Act, 1940, registration of trade mark is to be made only in respect of class or
genus and not in respect of articles of different species under the genus is based on
incorrect appreciation of Section 8 of the Trade Marks Act and Fourth Schedule of
the Rules.”
31. We may mention that the aforesaid principle of law while interpreting the provisions of Trade
and Merchandise Act, 1958 is equally applicable as it is unaffected by the Trade Marks Act, 1999
inasmuch as the main object underlying the said principle is that the proprietor of a trade mark
cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said
trade mark in respect of certain goods falling under the same class. In this behalf, we may usefully
refer to Section 11 of the Act which prohibits the registration of the mark in respect of the similar
goods or different goods but the provisions of this Section do not cover the same class of goods.
32. The aforesaid discussion leads us to hold that all the ingredients laid down in Section 11(2) of the
Act, as explained by the Delhi High Court in Nestle India Ltd., have not been satisfied. We are not
persuaded to hold, on the facts of this case, that the appellant has adopted the trade mark to take
unfair advantage of the trade mark of the respondent. We also hold that use of ‘NANDHINI’ by
appellant in respect of its different goods would not be detrimental to the purported distinctive
character or repute of the trade mark of the respondent. It is to be kept in mind that the appellant
had adopted the trade mark in respect of items sold in its restaurants way back in the year 1989
which was soon after the respondent had started using the trade mark ‘NANDINI’. There is no

153
document or material produced by the respondent to show that by the year 1989 the respondent had
acquired distinctiveness in respect of this trade mark, i.e., within four years of the adoption thereof.
It, therefore, appears to be a case of concurrent user of trade mark by the appellant.
33. There is some force in the argument of learned counsel for the appellant that IPAB while passing
orders dated 4 th October, 2011 ignored its earlier order, of a Coordinate Bench, passed on 20 th
April, 2010. Appeal in which order dated 20 th April, 2010 was passed was between the same parties
on identical issue. The IPAB had dismissed the said appeal of the respondent and that order had
attained finality. Prima facie, this would act as an issue of estoppel between the parties (see the
Bhanu Kumar Jain vs. Archana Kumar and Anr. [(2005) 1 SCC 787]; Hope Plantations Ltd. vs.
Taluk Land Board, Peermade and Another, [(1999) 5 SCC 590)]. However, as we are holding that
the impugned orders of the IPAB and High Court are not sustainable in law and have decided these
appeals on merits it is not necessary to make any further comments on the aforesaid aspect.
34. As a result, the orders of the IPAB and High Court are set aside.
These appeals are allowed and the order of the Deputy Registrar granting registration in favour of
the appellant is hereby restored, subject to the modification that registration will not be given in
respect of those milk and milk products for which the appellant has abandoned its claim, as noted in
para 18(vii) above.
35. In the peculiar facts of this case, we refrain ourselves from awarding any costs.
.............................................J.
(A.K. SIKRI) .............................................J.
(ASHOK BHUSHAN) NEW DELHI;
JULY 26, 2018.

154
Vishnudas Trading As Vishnudas vs The Vazir Sultan Tobaccoco. Ltd. ... on 9 July, 1996

Equivalent citations: JT 1996 (6), 366 1996 SCALE (5)267
Author: G Ray
Bench: Ray, G.N. (J)
PETITIONER:
VISHNUDAS TRADING AS VISHNUDAS
Vs.
RESPONDENT:
THE VAZIR SULTAN TOBACCOCO. LTD. HYDERABAD AND ANR.
DATE OF JUDGMENT: 09/07/1996
BENCH:
RAY, G.N. (J)
BENCH:
RAY, G.N. (J)
G.B. PATTANAIK (J)
CITATION:
JT 1996 (6) 366 1996 SCALE (5)267
ACT:
HEADNOTE:
JUDGMENT:
J U D G M E N T G.N. Ray, J.
Leave granted. Heard learned counsel for the parties. These appeals are directed against the
common judgment dated October 11, 1990 passed by the Division Bench of Madras High Court in
Trade Mark Second Appeal Nos.1 and 2 of 1981 arising out of the judgment dated September 11,
1980 passed by a Single Bench of Madras High Court in AAO Nos. 582-83 of 1978. The respondent
No.1 Company, namely, the Vazir Sultan Tobacco Co. Ltd. Hyderabad, has been manufacturing
cigarrettes under the brand name "Charminar". The said Company in 1942 and in 1955, under the
then Trade Mark legislation obtained registration of Trade Mark in respect of "manufactured
tobacco" falling in Class 34 of the 4th Schedule to the rules framed under the Trade Marks Act 1940
and 1950 Act. The respondent No.1 Company, however, did not manufacture anything other than
cigarettes during all these long years. The appellant, namely, Vishnu Das Trading as Vishnudas
Kishendas Zarda are manufacturing quiwam and 'zarda'since 1973 and the appellant has been using
the same trade mark, namely, "Charminar" on his bottles and boxes of quiwam and zarda. The

155
device of trade mark "charminar" in the city of Hyderabad as used by the appellant is, however,
different from the device being used by the respondent No.1 Company. The appellant applied for
registration of cuiwam and zarda with trade mark "Charminar" under the Trade and Merchandise
Marks Act 1958 and the Trade Marks Rules, 1959 framed under the said Act. The respondent
Company raised objections that the trade mark sought by the appellant would conflict with the
registered Trade Nos. 9951 and 170427 which the respondent No.1 Company obtained in 1942 and
1955. The Joint Registrar of Trade Marks, however, observed inter alia in the minutes dated
September 24, 1973 about the objections of the respondent to the effect that the mark would conflict
with registered trade marks Nos. 9951 and 170427. It was also observed that although the applicant
had contended that such registration of trade marks was in respect of cigarettes but quiwam and
zarda were goods of different specifications and such goods would not cause any conflict with the
goods being manufactured by the respondent No.1 Company, since the registration was of the trade
mark made in favour of the respondent to respect of 'manufactured tobacco' which in its ambit
would also take quiwam and zarda, the objection of the respondent No.1 Company under Section
12(1) of the Trade Marks Acts, therefore, could not be waived. It was noted in the minute that the
counsel for the applicant i.e. the appellant herein, had offered to apply for rectification of the said
trade mark in favour of the respondent No.1 Company.
Accordingly, on October 15, 1973, the appellant filed two applications under Section 46 read with
Section 56 of the Trade and Mechandise Marks Act. 1958 before the Registrar of Trade Marks,
Madras for rectifying the registration of existing trade mark held by the respondent No.1 Company
mainly on the ground of non user of the same in respect of quiwam and zarda by the respondent
No.1 Company. The proceedings before the Registrar of Trade Marks continued from 1973-76 but
the respondent No.1 Company though contested the said applications could not dispute or refute the
allegation of the appellant that the respondent No.1 Company had never manufactured any other
article of tobacco except the cigarettes. The said applications made by the appellant were ultimately
disposed of by the Assistant Registrar, Trade Marks, Madras on August 31, 1976 by allowing the
applications for rectification. The Assistant Registrar Trade Marks ordered that the Registrar, Trade
Mark, bearing Nos. 9951 and 170427 would be rectified by making the entries relating to
specification of goods to read as 'cigarettes'.
Respondent No.1 Company thereafter preferred two statutory appeals under Section 109(2) of the
Trade and Merchandise Marks Act before a learned Single Bench of Madras High Court. By a
common judgment dated September 11, 1980, the learned Single Judge allowed the said appeals
preferred by the respondent No.1 and set aside the order of the Assistant Registrar, Trade Marks,
dated August 31, 1976. The learned Single Judge, in his order allowing the said appeals, had
observed that the Assistant Registrar of Trade Marks had made a sub-classification of
'manufactured tobacco' occurring in Class 34 although sub-classification could not be made. It was
also held by the learned Single Bench of the Madras High Court that to sustain registration for an
article manufactured tobacco' in Class 34, it was not necessary to establish user of the trade mark
and rectification as ordered by the Assistant Registrar would enable the appellant to pass them as
the goods manufactured by the respondent No.1 Company.

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Against the judgment and order passed by the learned Single Bench, the appellant preferred two
statutory appeals under Section 109(5) of the said Trade and Merchandise Marks Act, 1958
(hereafter referred to as Trade Marks Act) before a Division Bench of the Madras High Court and by
the impugned common judgment dated October 11, 1990, the Division Bench dismissed the said
appeals thereby affirming the order passed by the learned Single Bench of Madras High Court. It
was inter alia held by the Division Bench of the Madras High Court that there could be no separate
registration in respect of cigarettes as Class 34 spoke only of "manufactured tobacco" and that
ground alone was sufficient for setting aside the order of the Assistant Registrar. The Division Bench
further held that the Joint Registrar had already passed an order under Section 12 of the Trade
Marks Act, 1958 declining registration of trade marks as sought by the appellant and in the abscence
of rectification of the trade marks in the register in favour of the Respondent No.1 Company, the
said registration was conclusive of the matter ad the rectification applications were not
maintainable. The Division Bench also held that manufacture of cigarettes would come under
'manufactured tobacco'. Hence, the respondent No.1 Company's trade mark could not be removed or
restricted on the ground of non-use with reference to goods of different specifications such as
quiwam and zarda falling under the class 'manufactured tobacco' even if quiwam and zarda had
never been manufactured or were intended to be manufactured by the respondent No.1 Company.
As aforesaid, the said decision of the Division Bench of Madras High Court is under challenge in
these appeals.
1) the respondent Company is and always has been solely manufacturing cigarettes under the brand
name of 'charminar' ever since 1942 and 1955. The said Company obtained registration of Trade
Marks for manufacturing tobacco in relation to the cigarrettes bearing the said brand name falling
under Class 34 of the 4th Schedule of the Trade Mark Rules framed under the Trade Marks Act
1940. The Schedule in Trade Marks Rules 1942 continues verbatim as the 4th Schedule of Trade
Mark Rules framed under the Trade Marks Act. The Trade Mark 'charminar' is not defensive
registration. The word 'charminar' is not an invented word which is the condition precedent for a
defensive registration under Section 38 of the 1940 Act corresponding to Section 48 of the
subsequent Trade Marks Act.
ii) the respondent Company never intended to nor evinced any intention to nor even intends to
manufacture anything other than cigarettes.
iii) Class 34 reads thus "34 tobacco raw or manufactured, smokers' articles, matches."
"manufactured tobacco" covers a large range and variety of goods and articles which in terms of
their different descriptions as well as different modes of consumption, may be broadly categorised
as:
a) tobacco consumed by smoking, cigarattes, cigars cheroot, bidis, pipe tobacco
b) tobacco consumed by chewing and ingestion quiwam which is the paste form and applied as an
ingredient to pan, zarda which is in the form of fine flakes (usually aromatic) also applied to pan as
another ingredient; gutka-it is again in fine flakes which is chewed sometimes with the addition of

157
lime (chuna).
c) tobacco consumed by inhalation-
snuff which is in powder form and taken in or inhaled through the nose.
iv) the word 'charminar' is distinct and specific in connotation. It is the name of a well known 18th
century monument standing as a landmark in the city of Hyderabad. Its name and depiction in any
form was not susceptible to any proprietary or pre-emotive claim by any one.
v) Since 1973 the appellant has been manufacturing quiwam and zarda in respect of which the
appellant sought trade marks under the brand name and device of 'charminar' on the bottle and
boxes of the product of the appellant with an entirely different depiction as compared to that used
by the respondent Company on its cigarette packets and cartoons. The appellant also holds a duly
registered copyright under the Copyright Act. 1957 on the brand name and device of 'charminar' as
depicted by the appellant.
vi) When the appellant had applied for registration of the said trade mark under Class 34 in respect
of quiwam and zarda, the trade mark Registry declined to grant the same on account of the
respondent Company's said registered trade mark in relation to the cigarettes for which the
appellant was constrained to get the register rectified in relation to the respondent Company's trade
mark.
Hence, the proceedings under Section 46 read with Section 56 of the Trade Marks Act had to be
initiated by the appellant.
Mr. Ganesh has contended that "manufactured tobacco" is a genus of which those consumed
variously i.e. by chewing, inhaling or by smoking are species. Each of these species constitutes
articles of different description from the others and each is distinct in character and use, though all
of them fall within the same broad Class i.e. "manufactured tobacco".
Mr. Ganesh has contended that the trade mark is or can be granted in respect of a Class of goods
which is nebulous and lacks in any specificity and precise identification such as "manufactured
tobacco", without any reference to the particular goods or articles or thing falling in the class which
is traded in or manufactured and in respect of which the applicant trader or manufacturer seeks a
trade mark. Hence, the registration of Trade Mark in favour of Respondent No.1 in 1942 and 1955 as
"manufactured tobacco" was fundamentally erroneous and consequential erroneous entry in the
Trade Mark Register is liable to be appropriately rectified. By such rectification, limiting the
respondent Company's trade marks to cigarettes, no prejudice will be caused to the respondent
Company, whereas if such rectification is not carried out, the appellant si irreparably prejudiced and
is precluded for all time from getting the trade marks for his goods, quiwam and zarda registered.
Such prejudice is equally occasioned to the rest of the trading and manufacturing community in
relation to any species of "manufactured tobacco" other than cigarettes. Mr. Ganesh has submitted
that such prejudice, preemption and exclusion in rem can not be permitted by a trade mark

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registration.
Mr. Ganesh has also submitted that on a true interpretation and proper construction of Trade Marks
Act and Trade Marks Rules 1959, where (as in this case) a trader or manufacturer actually trades in
or manufactures solely one article namely cigarettes and evinces no bonafide whatever to trade in or
manufacture any other goods or articles belonging to the genus "manufactured tobacco", such trader
or manufacturer cannot by obtaining a trade mark for its product in respect of the class in which it
falls (in this case, "manufactured Tabasco") preclude the public at large or in any event, the trading
and manufacturing community e.g. traders and manufacturers of quiwam and zarda or traders and
manufacturers of snuff etc. from obtaining any trade mark in respect of their products simply
because they fall under a broad class or a genus i.e. "manufactured tobacco" although the goods
belong to different species and are essentially different in description as also in the mode of
consumption.
Mr. Ganesh has further submitted that exclusion of different species which may come under the
heading of a genus comprising various specifics even when a trader or manufacturer having
obtained registration under the heading of genus, in fact, is manufacturing only one of the species
thereby pre-empting or excluding others to get registration in respect of different species other than
the species which is being manufactured by the trader or manufacturer, will be unjust and unfair
and against the principles by which registration of trade mark is made. This proposition would be
particularly valid where (a) the registration of the registered trade mark is not a defensive
registration and the brand name of the goods under registration is not an "invented word" and the
device, logo or symbol associated with that name and depicting the product is not an invented one
and (b) even though the registered trade mark holder obtained the registration for the entire class in
which his product falls, but he has neither any bonafide intention to use nor made any bonafide use
of the registered trade mark in relation to any other goods falling within that class, whether within
the stipulated statutory periods or beyond them, governing rectification of the Register and
imposition of limitations on the ground of non-use concerning registered trade marks.
Mr. Ganesh has further submitted that a contrary approach to the interpratation and construcation
of the Trade Marks Act and the rules framed thereunder will go against the very object and spirit of
and principles underlying the trade mark law. According to Mr. Ganesh, the aforesaid propositions
and the principles they adumbrate apply a fortiori to a case such as the present one. Mr. Ganesh has
contended that a registered trade mark holder cannot, in law, claim exclusive monopoly rights over
its trade mark as extending to goods of all descriptions falling within the same class in which its sole
and solitary product fails. The registration in favour of the respondent Company cannot be held to
interpose or sustain objection to the rectification of its registered trade mark or imposition of
limitations thereon with reference to the goods or articles of entirely different description, character
and mode of consumption in relation to which it had, at the time of obtaining the registration, no
bonafide intention to use its trade mark and which goods and articles, it has never manufactured or
intends to manufacture in fact. Mr. Ganesh has contended that the registration of trade mark can
appertain only to specific goods and not to a generic class. Referring to Sections 46 and 56 of the
Trade Marks Act. Mr. Ganesh has submitted that the statute contains the following postulates:

159
1) the existing trade mark was registered without any bonafide intention on the part of the applicant
that it should be used in relation to those goods by him and there has in fact been no bonafide use of
the trade mark in relation to those goods by him upto a date one month before the date of the
application under Section 46 by the person aggrieved. Mr. Ganesh has submitted that this
requirement is fully satisfied in the present case.
ii) upto a date one month before the date of the application by the person aggrieved, a continuous
period of five years or longer had elapsed during which the trade mark was registered and during
which there was no bonafide use thereof in relation to those goods by the registered trade mark
holder. In such a case, the concerned Tribunal, (High Court or the Registrar), may impose on the
registration of the existing trade mark such limitations as it thinks proper for securing that the
existing registration shall cease to extend to such use. Mr. Ganesh has submitted that this
requirement is also fully satisfied and the Assistant Registrar of trade marks has specifically ordered
so.
In this connection, Mr. Ganesh has submitted that the statutory burden lies on the registered trade
mark holder to show that his said non-use was due to special circumstances in the trade and not to
any intention to abandon or not to use the trade mark in relation to the goods to which the
application of the aggrieved person relates. It has been contended by Mr. Ganesh that the
respondent Company has not pleaded that under any special circumstance the Company did not use
other items of the goods falling under the class in which the respondent Company got registration.
The respondent Company has not discharged the burden arising from non-use of different items
coming under the broad classification 'manufactured tobacco'. Mr. Ganesh has also submitted that if
either of the above mentioned ingredients is satisfied, then allowing of an application by the person
aggrieved for the rectification will be matter of course and refusal of such application for any valid
reason will be an exception. Mr. Ganesh has submitted that when the concerned authorities satisfy
that rectification of the registered trade mark is warranted an the facts and circumstances of the
case, such authority may make such order for making, expunging or varying entries in the register as
it may think fit for one or more of the following reasons:
a) the entry made in the Register without sufficient cause
b) the absence or omission from the Register of any entry
c) any error or defect in an entry in the Register It has also been contended by Mr.
Ganesh that it is consistent with the scheme and provisions of the Trade Marks Act
and the framed thereunder that no registration of trade mark is absolute, perpetual
and invariable. Thus, under Section 12 which deals with prohibition of registration of
identical or deceptively similar trade marks, in case of honest concurrent use or of
other special circumstances which in the opinion of the Registrar make it proper so to
do, he may permit the registration by more than one proprietor of trade marks which
are identical or nearly resemble each other whether or not any such trade mark is
already registered in respect of the same goods or description of goods subject to
such conditions and limitations as the Registrar may think fit to impose. Mr. Ganesh

160
has submitted that this statutory scheme pervades other provisions of the Act as well
including in particular those that relate to the institution of applications/proceedings
for any purposes governed by the Act. In this connection, Mr. Ganesh has drawn
attention of the Court to Sections 16,17,18,21,46,47,56,69, and 112 of the Trade Marks
Act.
Mr. Ganesh has also submitted that intrinsic evidence in the Trade Marks Act and the 1959 rules
leads inexorably and ineluctably to the following conclusions:-
a) Trade mark means a mark used in relation to the goods for the purpose of
indicating or so as to indicate a connection in the course of trade between the goods
and some persons having the right to use the mark. "Goods" means anything which is
the subject of trade or manufacture. A trade mark posits an integral connection
between a specific article or thing forming the subject matter of trade/manufacture
and its attribute as that of a particular trader/manufacturer. Obviously, anything
which is the subject of trade or manufacture, must be an article or thing that is
distinctly complete, identifiable and vendible but not something nebulous and
lacking in specificity or precise identification. In this connection, the attention of this
Court is drawn by Mr. Ganesh to the definition of "Goods and the definition of "Trade
Mark" in Sections 2(1) (g) and (v).
b) the focus of trade marks and registration thereof is on concrete, specific,

identifiable and vendible goods and not on a concept or appellation of a class or a
genus of goods. In this connection, the Court's attention was drawn by Mr. Ganesh to
the definitions relating to "certification trade mark," false trade description", "trade
marks" appearing in Section 2, sub-section (1) Clauses (c),
(f),(g),(i),(m),(u) & (v) and Section 2, sub-section (2) Clause
(b).
Mr. Ganesh has contended that a trade mark can appertain only to specific goods and not to a
generic class. No trade mark is or can granted in respect of a class of goods, such as "manufactured
tobacco" without any reference to particular goods or articles or thing falling in that class which is
traded in or manufactured and in respect of which the applicant trader or manufacturer seeks the
trade mark. Mr. Ganesh has contended that the classification of goods and names of the classes as
set out in the fourth Schedule to the 1959 Rules framed under the Trade Marks Act under Section
133 read with Section 22 of the General Clauses Act, 1897 is purely for the purposes of enabling the
Trade Marks Registry to ascertain in which class, specified goods or a particular article or thing falls
before granting and registering any trade mark in respect thereof.
Mr. Ganesh has further submitted that Section 112 of the Trade Marks Act gives express recognition
and weight to the practice of the Trade Marks Registry. According to Mr. Ganesh, appreciable
significance and interpretative value are attached to the index maintained and used by time

161
honoured practice by the Trade Marks Registry. The index is an amplification in alphabetical order
of the classification of goods, names of the classes set out in the fourth Schedule of the 1959 Rules
framed under the Trade Marks Act. The said Index is based on and derived from "The International
Classification of Goods and Services to which Trade Marks Act Applied," published by the World
Intellectual Property Organisation (WIPO) which was established by a Convention at Stockholm on
July 14, 1967. Mr. Ganesh has stated that India is a member country of that Organisation and a
signatory to that convention. The amplification and refinement of a statutory classification for
practical utility and efficacy based on an internationally accepted and time honoured classification
and practice, deserves to be given due weight especially when such practice is given express
statutory recognition and sanctity even to the extent of mandatorily constituting evidence in the
proceeding.
Mr. Ganesh has also submitted that the Trade Marks Act maintains a clear distinction between
goods of the same description (occurring in Section 46 with grammatical variations in Sections 12
and 34) and "class of goods" with its grammatical variations in Section 18 and Rules 22 and 26 read
with the fourth Schedule to the 1959 Rules. A given class occuring in the said Schedule may
comprise a number of goods or articles or things each of which is separately identical and vendible
and all of which are not goods of the same description as contradistinguished from goods falling
within the same class. 'Manufactured tobacco is a class which covers widely varying goods of
different description, character and mode of consumption. Mr. Ganesh has contended that Section 2
(1) (m) of the Trade Marks Act defines 'permitted use' in relation to a registered trade mark to mean
inter alia the use of a trade mark by a registered user thereof "in relation to goods with which the
user is connected in the course of trade". Similarly, a mark i.e. a device, brand, heading, label, ticket,
name, signature, word, letter or numeral or any combination thereof can be placed or used upon
specific goods only and not upon something that is a concept or appellation, for example,
manufactured tobacco. Mr. Ganesh has submitted that Section 2 (2) (b) of the Trade Marks Act
provides that in the Trade Marks Act any reference to the use of a mark in relation to goods shall be
construed as a reference to the use of the mark upon or in any physical or in any other relation
whatsoever to such goods.
Referring to Section 8 of the Trade Marks Act, Mr. Ganesh has submitted that Section 8
contemplates that registration can only be in respect of particular goods and that there is a
distinction between "goods" and "a prescribed class of goods" in which they may be comprised. It
also postulates that the attribution of particular goods to their proper class for purposes of
registration of trade mark is to be determined by the Registrar whose decision in the matter shall be
final. Mr. Ganesh has also submitted that Section 9 of the Trade Marks Act deals with requisites for
registration in the Trade Marks Register. Sub-section (4) highlights the point that if it not
distinctive, a trade mark shall not be registered in part B of the Register unless such trade mark is
capable of distinguishing goods with which the proprietor of a trade mark is or may be connected in
the course of trade from goods in the case of which no such connection subsists, generally.
Mr. Ganesh has submitted that Section 12(3) of the Trade Marks Act provides that in case of honest
concurrent use or of other special circumstances which in the opinion of the Registrar, make it
proper so to do, the Registrar of trade marks which are identical or nearly resemble each other in

162
respect of the same goods or description of goods subject to such conditions and limitations, if any,
as the Registrar may think fit to impose. Section 45(2) also provides that the High Court or the
Registrar may impose on the registration of an existing trade mark such limitations as the Tribunal
thinks proper for securing that registration shall cease to extend to use of the registered trade mark
to the extent of its actual non- use.
Mr. Ganesh has submitted that at the very stage of application for registration of a trade mark, the
Trade Marks Act recognises the distinction between specific goods and the class of goods in which
they way fall. Section 18(2) provides that an application for registration "shall not be more in respect
of goods comprised in more than one prescribed class of goods." Similarly, Section 24 which deals
with jointly owned trade marks adverts to an article with which both or all of them are connected in
the course of trade.
Mr. Ganesh has further submitted that extrinsic aids to the interpretation and construction of the
Trade Marks Act and the 1959 Rules framed thereunder also serve to sustain the submissions made
by him. The extrinsic aid includes corresponding legislation in the United Kingdom, the legislative
history of the Trade Marks Act of 1958 and 1959 Rules framed thereunder, the Report of the Trade
Marks Enquiry Committee, 1954, the Report of Mr. Justice Rajagopala Ayyangar on Trade Marks
Law Revision in 1955 and the statement of Objects and Reasons for the Bill which culminated in the
Trade Marks Act. Mr. Ganesh has submitted that the decisions of Courts in India and also the
authorities of persuasive value from foreign jurisdiction support the contentions made by him. Mr.
Ganesh has submitted that the rationale of trade mark law with reference to the rectification of the
Registrar is aptly and succinctly articulated in a locus classicus in Edwards Vs. Dennis (1885) 30 Ch.
Div. 454 at 474). Lord Justice Cotton (Lindley and Fry, L.J.J. concurring) has observed to the
following effect:-
".... The registration in the present case has been for the entirety of that class. In my
poinion that is wrong. Even if a trade mark can be registered which is not in actual
use. it ought to be restricted to those goods in connection with which it is going to be
used. In my opinion, it is not the intention of the Act that a man registering a trade
mark for the entire class and yet only using it for one article in that class, can claim
for himself the exclusive right to use it for every article in the class..... can a man
claim registration for all the article specified in the class when the business he is
engaged in, comprises only one specific portion of the article named in the class? I
am of the opinion he cannot...... Consequently, I am of the opinion that the Register
ought to be rectified........
"...... In my opinion, if a man wishes to extend his business to a new description of

goods and to use his trade mark in connection with the goods, he ought to register it
in respect of those goods. All we have how to do is to construe this Act of Parliament;
and it appears to me that it would be a wrong interpretation of the Act, to hold that,
when registration is general for an entire class, it can be maintained for that class by
a man who is assignee of a business in only one particular description of goods in the
class".

163
Mr. Ganesh has submitted that both the learned Single Judge and the Division Bench of the Madras
High Court in the impugned Judgment erred in interfering in appeal with the properly exercised
discretion of the Registrar to limit the respondent Company's registered trade mark to cigarettes
and to rectify the Register accordingly. In this connection, Mr. Ganesh has referred to the decision
of this Court in National Bell Co. Vs. Metal Goods Co. (1971 (1) SCR 70 at page 86 E-F). This Court
has observed that under Section 56, the power to rectify is undoubtedly discretionary. Where such
discretion has been properly exercised, a Court of Appeal would refuse to interfere. Mr. Ganesh has
also referred to the decision in American Home Products Corporation Vs. Mac Laboratories Pvt. Ltd.
(1985 Supp. (3) SCR 264). It has been held by this Court in the said decision that:
"From what we have said above, we must not be understood to mean that a person
who does not intend to use a trade mark himself, can get it registered and when faced
with a application under Clause (a) of Section 46 (1) to have that trade mark removed
turn round and say that he intended to use it through some person who was proposed
to be registered as registered user. This would clearly amount to trafficking in a trade
mark."
Mr. Ganesh has submitted that the registration in 1945 and 1993 made in favour of the respondent
company under the broad classification "manufactured tobacco" although the Respondent Company
is admittedly only manufacturing cigarettes and does not intend to manufacture any other goods
and articles falling under the genus manufactured tobacco; has created a monopoly of trade mark
over varieties of goods coming under the said broad classification thereby preventing the other
traders and manufacturers like the appellant to get their distinctive articles which also fall under the
general classification 'manufactured tobacco' to get registered in respect of such distinctive articles.
In such circumstance, the rectification allowed by the Assistant Registrar was only just and proper
and no interference was called for by the High Court against such order of rectification. Mr. Ganesh,
therefore, submits that the appeal should be allowed by setting aside the impugned decision of the
High Court and by restoring the order of rectification passed by the Assistant Registrar of Trade
Marks in favour of the appellant.
Mr. C.S. Vaidyanatha, learned counsel appearing for the respondent No.1, however, disputes the
contentions made by Mr. Ganesh. Mr. Vaidyanatha has submitted that the question involved in
these appeals are not confined only to the ambit of Sections 46 and 56 of the Trade Marks Act and
Rules 94 to 97 of the Rules framed thereunder. According to Mr. Vaidyanatha in the proceedings
concerning the appeals, question of infringement of trade mark by the appellant is also involved. He
has submitted that the appellant has been using trade mark- 'charminar' since 1973, despite being
aware of the respondent Company's objection to the use of such trade mark, as amounting to
infringement of the trade mark of the respondent Company. The Madras High Court has
categorically held that the respondent Company got registration in Class 34 and such registration is
for manufactured tobacco'. The respondent Company, therefore, has exclusive right to use the trade
mark 'charminar' for all goods falling under 'manufactured tobacco'. As the Assistant Registrar of
Trade Marks had erroneously restricted the respondent Company's registration only to cigarettes,
both the Single Bench and Division Bench of the Madras High Court have rightly set aside such
erroneous order.

164
Mr. Vaidyanatha has also submitted that the respondent Company had not filed the appeal before
the Madras High Court solely for the purpose of deciding the questions of law and procedure
regarding the power of the Registrar of Trade Marks to solit classes in terms of Sections 46 and 56.
The respondent Company preferred the appeals before the High Court to restore registration made
in its favour and to ensure removal of the restrictions which had been improperly and unjustly
imposed by the Assistant Registrar of Trade Mark by confining the registration only in respect of
cigarettes.
Mr. Vaidyanatha has also submitted that the Madras High Court has rightly indicated that a conjoint
reading of Section 8(1) and Rules 22 the 26 framed under the Trade Marks Act together with
Schedule 4, support the contention of the respondent Company that apart from classification made
in Schedule 4, no other classification is possible for the purpose of registration of trade mark. Mr.
Vaidyanatha has submitted that there is no separate or independent item in the classification
contained in the 4th Schedule for cigarettes. Cigarettes can only be brought under the entry
'manufactured tobacco under Clause 34 of Schedule 4, Mr. Vaidyanatha has submitted that in view
of such legal position, the High Court has rightly held that the order of Registrar was liable to be set
aside on that ground only.
Mr. Vaidyanatha has also submitted that Section 8 of the Trade Marks Act is different from Section
5 of the previous Trade Marks Act of 1940. The legal incidence of the expression in Section 8 of the
present Act, "comprised in prescribed class of goods" which does not find place in Section 5 of the
previous Act or 1940 requires proper consideration. Mr. Vaidyanatha has submitted that legislative
change by the aforesaid expression introduced in the present Act has been consciously made by the
legislature for a purpose. Mr. Vaidyanatha has submitted that the Statement of Object and Reasons
as contained in the Trade Marks Act, 1958 clearly indicates that the new Act was introduced to
enlarge the field of registrability and to avoid the difficulties which were being exercised by the
Indian merchants in securing registration of trade marks in foreign countries where the production
of certificate of home registration was a condition precedent for obtaining foreign registration. Mr.
Vaidyanatha has submitted that the present Trade Marks Act was enacted not any to prevent
confusion and deception but also to provide effective protection to Trade marks. To buttress this
argument, Mr. Vaidyanatha has also drawn the attention of the Court to the debates in the floor of
the Parliament (Lok Sabha) when the Bill to amend the Trade and Mechandise Marks Act, 1940 was
introduced.
Mr. Vaidyanatha has further submitted that a reference to Trade Marks Act 1940, and similar
Sections of the English Trade Marks Act of 1938, 1905 and 1875 will show that under the 1940 Act
and also under the said English Trade Mark Acts, it could be registered only in respect of particular
goods or Classes of goods. The omission of the expression "particular goods" and inclusion of
"prescribed class of goods" in the 1958 Trade Act is significant and such change has bearing on the
true construction of Section 8 of the Trade Marks Act. Mr. Vaidyanatha has submitted that under
the present Trade Marks Act, registration can be only in the nomenclature, phraseology and
terminolgoy used in the classification, prescribed under the rules.

165
Mr. Vaidyanatha has also submitted that the decision of the English Court Edwards Vs. Dennis
(supra) is not applicable for considering the effect registration of trade mark in respect of specified
class of goods under the present Act in view of the express language used in Section 8 of the present
Act. the Madras High Court has also indicated the import of such expression in Section 8 of the
Trade Marks Act.
Mr. Vaidyanatha has referred to another decision of English Court in Lever Brothers, Port Sunlight,
Ld. Vs. Sunniwite Products Ltd. (LXVI RPC 84). In the said decision, the plaintiffs were proprietors
of the mark "sunlight" registered in 1884 in Class 3 in respect of soap, substances for laundry use.
detergents, and certain cosmetic goods. At the beginning of 1946, the defendants commenced to use
the mark "sunniwite" on a spapless detergent poweder. The plaintiffs sued for infringement and the
defendants counter claimed to rectify the Register by striking out goods other than soap, on the
ground of non-user. The plaintiff's mark had been used on a large scale but on soap only. It has been
held in the said deision that:
a) the mark had been infringed, b) the specification of goods ought not to be
amended to exclude detergents or supstances for laundry use, c) the cosmetic goods
within the specification were not of the same description as soap and that subject to
the general discretion of the Court, they might be liable to exclusion but that- d) the
defendants were not persons aggrieved by the registration in respect of those goods
and were not therefore entitled to claim their exclusion from the plaintiff's
registration.
Mr. Vaidyanatha has further submitted that the Madras High Court has rightly held with reference
to Section 46 of the Trade Marks Act. in particular the proviso to the said Section that it was quite
apparent that the applications for rectificaton were not maintainable. The concerned authorities had
already come to a finding that cigarettes, Quiwam and zarda- all would come under the same
description of goods, namely, 'manufactured tobacco'. Accordingly, the cigarettes having already
been registered under the head of 'manufactured tobacco' at the instance of the respondent
Company, the rectification applications for restricting the said trade mark only for cigarettes were
not maintainable so as to enable the appellant to register the same trade mark for manufacture of
quiwam and zarda even though the said articles fall under the same description of goods. Mr.
Vaidyanatha has also submitted that the respondent company alone is entitled to use "charminar"
trade mark with respect to the 'manufactured tobacco' products in Class 34. Therefore, there was no
question of proving that the respondent Company and utilised or had intended to utilise its trade
mark for quiwam and zarda.
Mr. Vaidyanatha has also contended that the trade mark "charminar" had been registered in favour
of the respondent Company under the general heading 'manufactured tabacco' referred to in Class
34 of the 4th Schedule. Accordingly, the respondent Company, namely, the registered proprietor
cannot be compelled to produce or trade in all the goods falling under that category on the pain of
losing his trade mark for non-use. So long, a separate classification has not been made in respect of
different classes of goods falling under the general heading 'manufactured tobacco', the registration
of the respondent Company' s trade mark in respect of 'manufactured tobacco cannot be held to be

166
bad or invalid. Mr. Vaidyanatha has also submitted that the appellant has been manufacturing
quiwam and zarda only after it had filed application for registration which was initially objected to
by the Registrar. It is, therefore, quite evident that on the date of making the application for
registration by the appellant, the mark was only proposed to be must but the appellant went ahead
and started using the marks in relation to quiwam even though the respondent Company had
objected to such use as being an infringement of its registered trade mark in Class 34.
According to Mr. Vaidyanatha, the respondent Company by virtue of its extensive use and brior
registration since 1942, is entitled to use the said trade mark 'charminar' in relation to the tobacco
manufactured products and such right cannot be restricted only to cigarettes which is only one of
the articles under the said heading 'manufactured tobacco'. Mr. Vaidyanatha has disputed the
contention of Mr. Ganesh that cigarettes, quiwam and zarda are neither "the same goods" nor "the
same description of goods". Mr. Vaidyanatha has submitted that the Madras High Court has rightly
observed that all the goods are of the same description, namely, 'manufactured tobacco'. Mr.
Vaidyanatha has also submitted that common trade channels through which the product of a trader
or manufacturer is marketed is an important consideration in deciding whether the goods are of the
same or different description. Mr. Vaidyanatha has further submitted that it is not denied by the
appellant that cigarettes, quiwam and zarda are all marketed through the same trade channel.
In support of such contention, Mr. Vaidayanatha has referred to a decision of this Court in Corn
Products Refining Co. Vs. Shargrila Food Products Ltd. (AIR 1960 SC
142). It has been observed in the said decision that:
"an average purchaser would, therefore, be likely to think that the respondent's 'Glucovita biscuits'
were made with the appellants 'Glucovita' glucose.
This was the king of trade connection between different goods which in the "Black Magic" case (In
re: as application by Edward Hact) 1940-58 RPC 91 was taken into consideration in arriving at the
conclusion that there was a likelihood of confusion or deception. The goods in this case were
chocolates and laxatives and it was proved that laxatives were often made with chocolate
coatings...."
Similarly, in the case reported in AIR 1983 Punjab and Haryana 418, the High Court of Punjab and
Haryana has held that the goods are being marketed through the common trade channel by
observing that:
....the respondent have never manufactured watchesor clocks but they have been
manufacturing clock- work-timers used in photography and the radio clocks. The
watches and clocks are being sold on the same counter along with radio, transistor
and other electrical appliances even by the defendants...."
Mr. Vaiydanatha has submitted that similar view has also been taken by the Delhi High Court in the
case reported in AIR 1986 Delhi 329. It has been observed in the said decision that:

167
".... there is little doubt that the trade mark Goodmans has been used by the plaintiffs
from long, for their medicines. They being the prior user, have the right to seek its
protection. The defendant manufactured disinfectants under the same mark i.e.
'Goodmans', considering the nature of the goods manufectured by the parties, the
trade channels through which they are marketed and the file of activity that they
have, they can be termed as cognate goods. The likelihood of deception or confusion
that the goods of the defendant are as well being manufactured by the plaintiffs,
cannot be ruled out."
Mr. Vaidyanatha has also submitted that the Bombay High Court has also taken a similar view by
nothing that the goods though of different descriptions, were being marketed through a common
trade channel. In a decision in the case reported in 1988 PTC 133, the Bombay High Court has held
that the registered trade mark Proprietor of Bajaj in respect of electrical goods and appliances falling
in Class 7,8 and 11 can prevent the use of the mark 'Bajaj' which falls in Class 21 in respect of
domestic utencils on the grounds of common trade channel.
Mr. Vaidyanatha has further submitted that when there is registration of trade mark for
'manufactured tobacco in Class 34 but its use is confined to cigarettes, another manufacturer of
smoking tobacco, cigars, snuff, or chewing tobacco or any form of manufactured tobacco which are
all made of tobacco, cannot use the registered trade mark so as to create confusion or deception in
the mind of the purchaser that the goods sold under the trade mark had been produced by the
cigarette manufacturer. In support of this contention, Mr. Vaidyanatha has referred to a decision of
the Privy Council in Somerville Vs. Sehembri (1887 (2) AC
453). He has submitted that the view taken in the said decision was followed in the decision of
various High Courts, namely Calcutta High Court in Rustom Ali Vs. Bata Shoe Company (AIR 1957
Cal. 120), Bombay High Court in Sunder Vs. Caltex (AIR 1969 Bombay 24), Delhi High Court in
Nestle Products Vs. Milkmaid Corporation (AIR 1974 Delhi
40). Mr. Vaidyanatha has submitted that the learned Single Judge of the Madras High Court has
referred to the decisions mentioned above and has rightly held that having obtained registration in
respect of the tobacco products under the heading 'manufactured tobacco' in Class 34, the
respondent Company is entitled t prevent any other trader of manufacturer to claim registration of
the same trade mark in respect of his products which also is manufactured tobacco.
Mr. Vaidyanatha has also submitted that the proviso to Section 46(1) of the Trade Marks Act
imports into the proceedings for rectification "the concept of goods of the same description"
pronibited for registration under Section 12(1). In this connection, Mr. Vaidyanatha has referred to
the decision of the English Court reported in (26 RPC 428). Buckley L.J. has held that the
alternative of the expression "classes of goods" which occurred in the U.K. Act of 1883 was made
designedly. It was observed by Buckley, L.J.that:
"The purpose of it was this: that where the goods are not of the same class, but are of
the same description, taking as an instance, goods made of India-Rubber, then the

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intention of the Act of 1883 and that of 1905 is that there shall be a veto in respect of
registering an identical trade mark, or a similar trade mark in respect of goods falling
within the description, as distinguished from the class. Section 19 is perfectly capable
of being read, as is, I think, to be read, as if it ran thus: No trade mark shall be
registered in respect of any class of goods falling within a particular description of
goods, when an identical or similar mark is already on the Register in respect of any
goods falling within the description. It is true that a man cannot register for a
description of goods, but he can register for a class of goods which fall within a
particular description, and that is, I think, what Section 19 was aimed at".
Mr. Vaidyanatha has submitted that appellant failed in the attempts of getting its products
registered under Section 12(1) of the Trade Marks Act as the respondent Company had already got
an earlier registration of the same trade mark in respect of the class of goods namely, manufactured
tobacco. The applications to rectify trade mark in respect of the goods of the appellant is sought
under Sections 46 and 56 of the Trade Marks Act by the method of applying for rectification of the
entry in the Register in favour of the respondent Company. Mr. Vaidyanatha has submitted that
such applications for the reasons already indicated are not maintainable. Accordingly, no
interference is called for in these appeals and the same should be dismissed.
Mr. Jayaram, the learned Additional Solicitor General appearing for the respondent No. 2, namely
the Assistant Registrar of Trade Marks, has submitted that Section 8 of the Trade Marks Act
provides for registration in respect of any or many or all items within a class. He has submitted that
within a class there may be various goods. Mr. Jayaram has drawn the attention of the Court to
sub-rule (2) of Rule 26 of the Trade Mark Rules. He has submitted that Rule 26 envisages that an
application for registration would be in respect of only class of goods as mentioned in 4th Schedule.
If a manufacturer or trader intends to get registration of a number of goods which appertain to
different classes a mentioned in Schedule 4, separate applications are to be made relating to goods
coming under each of the separate classes. Sub-rule (2) of Rule 26 indicates that in the case of
application for registration in respect of goods included in a class or of a large variety of goods in a
class, the Registrar may refuse to accept an application unless he is satisfied that the specification is
justified by the use of the mark which the applicant has made or intends to make if and when it is
registered. Mr. Jayaram has submitted that sub-Rule (2) of Rule 26 clearly indicates that a
registration may be refused in respect of varieties of goods which may be comprised in a class.
'Manufactured tobacco' is a broad classification. If a trader or manufacturer gets registration of a
trade mark in respect of such a broad classification namely manufactured tobacco, then such trader
may claim exclusive right of the use of the trade mark in respect of all the items falling under
'manufactured tobacco'. Mr. Jayaram has submitted that for the aforesaid reason, initially when
appellant made an application for registration of quiwam and zarda with the same brand name
"charminar", such application for registration made by the appellant could not be accepted by
indicating that registration given to the Respondent Company covered various items under the
genus. But when the appellant made an application for rectification of the entries in the register,
such entries have been rectified by limiting the registration to specific product coming under the
said broad classification 'manufactured tobacco', namely, cigarettes by indicating reasons as to why
such rectification would be justified. Mr. Jayaram has submitted that for the purpose of entertaining

169
the application for registration and allotting the appropriate slot to the article intended to be
registered, index of various articles has been made. Such index serves as an important guideline to
indicate to which class the article to be registered is to be classified. Various goods alphabetically
classified in the index ensures rationality of approach in registering and removes arbitrariness. Mr.
Jayaram has, in this connection, referred to a compilation by Stephen P. Ladas "Patents Trade
Marks and Related Rights - National and International Protection"- Vol.. published by the Haryana
University Press. Mr. Jayaram has submitted that cigarettes being a specific and identifiable article
is dealt separately in the trade channel and cigarette is specifically mentioned as a distinct
commodity of use in the index in 1975. He has also submitted that from tobacco various articles can
be manufactured but such articles are used differently and have separate identifications and are
separately vendible e.g. cigarette, snuff, quiwam and zarda. All the said articles have been
manufactured from tabacco but each of the articles is distinctly different and is differently used.
Initially, when the respondent Company got registration of the trade mark "charminar" not in
respect of any specific article under the genus, 'manufactured tobacco', the Company by virtue of
registration in a wide enjoyed the right of the use of trade mark in respect of various goods coming
under the said braod heading 'manufactured tobacco'. It has however been demohstrated that ever
since 1942-43, the respondent Company had manufactured only cigarettes and had not intended to
manufacture or trade in other distinct articles coming under the broad heading 'manufactured
tobacco'. Mr. Jayaram has submitted that there is no question of passing off quiwam or zarda for
cigarette being manufactured by the respondent Company even if the same brand name "charminar"
is given to quiwam and zarda produced by the appellant. Referring to Section 8 of the Trade Marks
Act, Mr. Jayaram has submitted that it is permissible to register any of the goods which may fall
under a prescribed class of goods. Hence, only cigarettes may be registered under the broad
classification 'manufactured tobacco' by specifically indicating that the registration relates to
cigarettes only falling under the broad classification. Mr. Jayaram has submitted that as registration
in respect of one or some or the articles under the broad classification is permissible, there cannot
be any difficulty in limiting the registration earlier given to the respondent Company in respect of a
broad genus namely, 'manufactured tobacco' to one of the species under the said genus, namely,
cigarettes. Mr. Jayaram has submitted that for the purpose of registration of trade mark, apart from
the classification as sepcified in the Schedule 4, no new classification can be made. But a particular
goods falling under a classification in the schedule may be registered by indicating the broad
classification to which the articles in question falls. Such registration will not militate against the
provisions of Section 8 of the Trade Marks Act.
Mr. Jayaram has submitted that the respondent Company is certainly entitled to all the protection
under the Trade Marks Act in respect of the articles dealt or intended to be dealt by the Company
namely cigarettes. It has used its trade mark "charminar" in respect of the goods manufactured by it,
namely, cigarettes and the Company is also entitled to prevent any other trader or manufacturer to
use the brand name in respect of the said article i.e. cigarette. But it will be not proper to allow him
to enjoy monopoly over large varieties of goods which are distinct in their use and which are clearly
identifiable as separate products and also separately vendible and marketed. Even when the
respondent Company is concerned only in one of such products, namely, cigarettes if the
rectification of trade mark is not made thereby permitting the other manufacturers and traders to
deal with other distinct products made of tobacco, the respondent Company will be given an

170
unmerited privilege of enjoying monopoly over all goods coming under a broad class 'manufactured
tobacco'. Such position is unjust and inequitable and also not consistent with the Trade Marks Act
and the Rules. Mr. Jayaram has, therefore, submitted that in the facts of the case, rectification as
made by the Assistant Registrar of Trade Marks is rational and justified and such rectification
should be permitted.
After giving our careful consideration to the facts and circumstances of the case and submissions
made by the learned counsel for the parties, it appears to us that the avowed object of the Trade
Marks Act as indicated in the Statement of Objects and Reasons is "to enlarge the field of
registrability". In these apeals, the propriety and validity of the order of rectification are only
germane. It is not necessary to address on the questions relating to infringement of trade mark or
passing off or defensive registration because such questions do not arise for decisions. There is no
dispute that the respondent No.1 Company has been manufacturing cigarettes under the brand
name "charminar" since 1943. In 1942 and 1955, the said Company got registration of the said brand
name "charminar" for the goods being classified as manufactured tobacco in class 34 of 4th
Schedule in the Rules framed under Trade Marks Act. It is also not disputed that the expression
"charminar" is not an inventive word which is the condition precedent for defensive registration
under Section 47 of the Trade Marks Act (Section 38 of the Trade Marks Act of 1940). No evidence
has been led by the respondent Company that the respondent Company had really intended or even
now intends to manufacture any other product of tobacco other than cigarettes. It will be
appropriate to refer to Class 34 of Schedule 4 which is to the following effect:-
"34 tobacco raw or manufactured, smokers' articles matches."
Manufactured tobacco is a broad genus covering large variety of goods and articles. It has been
rightly indicated by the appellant that :
a) tobacco may be consumed by somking and articles made of tobacco which are
consumed by smoking comprise of cigarettes, cigars, cheroot, bidis, pipe tobacco.
b) tobacco may be consumed by chewing and ingestion and this category includes
quiwam which is in the paste form and applied usually as an ingredient to pan; zarda
in the form of fine flakes (usually aromatic) is applied to pan; gutka also in flakes
which is chewed sometime with the addition of lime (chuna).
c) tobacco consumed by inhalation. In this category snuff which is in powder form

and taken in or inhaled through nose may be mentioned.
There is no manner of doubt that the varieties of articles made of tobacco are differently used and
they have their distinctive quality and separate identity. These articles are also marketed as distinct
articles of use in different manner. In the common trade channel such articles are not only held
different and distinct articles but are marketed separately. It does not require any imagination to
hold that snuff or quiwam are entirely distinct products and even though the said products and the
cigarettes, bidis, cheroot are also made of tobacco and all such products may come under the broad

171
classification manufactured tobacco, each of the said products is always held as a distinct and
separate article of use having its specific characteristics.
The respondent Company got registration of its brand name "charminar" under the broad
classification manufactured tobacco. So long such registration remains operative, the respondent
Company is entitled to claim exclusive use of the said brand name in respect of articles made of
tobacco coming under the said broad classifiction manufactured tobacco. Precisely for the said
reason, when the appellant made application for registration of quiwam and zarda under the same
brand name "charminar", such prayer for registration was not allowed. The appellant, therefore,
made application for rectification of the registration made in favour of the respondent Company so
that the said registration is limited only in respect of the articles being manufactured and marketed
by the respondent Company, namely, cigarettes. In our view, if a trader or manufacturer actually
trades in or manufactures only one or some of the articles coming under a broad classification and
such trader or manufacturer has no bonafide intention to trade in or manufacture other goods or
articles which also fall under the said 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. If same or
similar and covered by earlier registration and
ii) trade mark claimed for such goods must be same or deceptively similar to the trade mark already
registered. It may be noted that under sub-section (3) of Section 12 of Trade Act. in an appropriate
case of honest concurrent use and/or of other special circumstances, same and deceptively similar
trade marks may be permitted to another by the Registrar, subject to such conditions as may deem
just and proper to the Registrar. It is also to be noted that the expression "goods" and "description of
goods" appearing in Section 12(1) of Trade Marks Act indicate that registration may be made in
respect of one or more goods or of all goods conforming a general description. The Trade Marks Act
has noted distinction between description of goods forming a genus and separate and distinctly
identifiable goods under the genus in various other Sections e.g. goods of same description in
Section 46, Sections 12 and 34 and class of goods in Section 18, Rules 12 and 26 read with 4th
Schedule to the Rules framed under the Act.
The "class" mentioned in the 4th Schedule may subsume or comprise a number of goods or articles
which are separetely identifiable and vendible and which are not goods of the same description as
commonly understood in trade or in common parlance. Manufactured tobacco is a class mentioned
in Class 34 of 4th Schedule of the Rules but within the said class, there are number of distinctly
identifiable goods which are marketed separately and also used differently. In our view, it is not only
permissible but it will be only just and proper to register one or more articles under a class or genus
if in reality registration only in respect of such articles are intended, by specifically mentioning the
names of such articles and by indicating the class under which such article or articles are to be
comprised. It is, therefore, permissible to register only cigarette or some other specific products
made of manuactured tobacco as mentioned in Class 34 of 4th Schedule of the Rules. In our view,
the contention of Mr. Vaidyanatha that in view of change in the language of Section 8 of Trade
Marks Act as compared to Section 5 of Trade Marks Act 1940, registration of trade mark is to be

172
made only in respect of class or genus and not in respect of articles of different under the genus is
based on incorrect appreciation of Section 8 of the Trade Marks Act and 4th Schedule of the Rules.
Since such registration initially had not been done, the rectification of the registration by limiting or
confining the registration of trade mark of the Respondent Company to particular goods, namely,
cigarettes, in the facts and circumstances of the case, cannot be held as illegal or unjustified.
It has already been indicated that the controversy in the instant appeals, is only confined to the
propriety and validity of the order of rectification of the registration of trade mark made in favour of
Respondent Company and it is not necessary to address on the questions of infringement of trade
marks, passing off, defensive registration etc. In that view of the matter, various decisions cited at
the bar dealing with the likely prejudice to be suffered by a trader or manufacturer enjoying
registration of trade mark in the event, similar or deceptively similar trade mark is allowed to other
trader or manufacturer in respect of similar goods or goods marketed through common trade
channel need not be taken into consideration for the disposal of these appeals. As in the facts and
circumstances of the case, the rectification of the trade marks registered in favour of the respondent
Company since allowed by the Assistant Registrar of Trade Marks was valid and also justified, such
order in our view, should not have been interfered with in appeal. We, therefore, allow these
appeals, set aside the impugned judgments of the High Court and restore the order of rectification
passed by the Assistant Registrar of Trade Marks, Madras. By way of abundant caution, it is
expressly made clear that we have not expressed any opinion on the claim of registration of the trade
mark "charminar" in favour of the appellant for quiwam and zarda being manufactured and traded
by the appellant. In the facts of the case, there will however be no order as to costs.

173
Goenka Institute Of Education & ... vs Anjani Kumar Goenka & Anr. on 29 May, 2009
Delhi High Court

Author: Valmiki J. Mehta
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ FAO (OS) No. 118/2009
Reserved on : May 21, 2009

Date of decision : May 29, 2009
GOENKA INSTITUTE OF EDUCATION & RESEARCH ...Appellant
Through: Mr. Sudhir Chandra Agarwal, Sr. Advocate

with Ms. Vrinda Sharma, Advocate.
VERSUS
ANJANI KUMAR GOENKA & ANR. ....Respondents
Through: Mr. Rajiv Nayar, Sr. Advocate with

Ms. Nidhi Bisht, Mr. Kapil Wadhwa,
Ms. Saya Chaudhary, Ms. Archna &
Mr. J.P.Karunakaran, Advocate
CORAM:
HON'BLE MR. JUSTICE MUKUL MUDGAL
HON'BLE MR. JUSTICE VALMIKI J.MEHTA
1. Whether the Reporters of local papers may be allowed to see

the judgment? yes
2. To be referred to the Reporter or not? yes
3. Whether the judgment should be reported in the Digest? yes
FAO (OS) No. 118/2009 Page 1

% JUDGMENT
VALMIKI J.MEHTA, J.

174
1. The dispute in this appeal centres around the use of the expression "Goenka" as a trademark
and/or trade name. The respondents claim exclusive ownership/right to use the word "Goenka",
whether per se or with other words or initials, as their trademark /trade name with respect to their
educational institutions and which is disputed by the appellant. The learned Single Judge agreed
with the respondents/plaintiffs and allowed their injunction application. Hence, this appeal filed by
the defendants/appellant. Reference to trade mark hereinafter, in the facts of the present case, will
include reference to trade name also wherever the circumstances so require.
2. The appellant claims the right to use the word "Goenka" on the basis of three basic contentions:-
(i) From the year 2000 they have been using "Goenka" for their school "Goenka Public School" and
hence are owners being prior users of the trade mark. In fact the appellant is running since the year
1995 "Mohini Devi Goenka Mahila Mahavidyala" and, therefore, "Goenka" is very much a prominent
part of FAO (OS) No. 118/2009 Page 2 the name of this Mahavidyala. Though the respondents have
registered "Goenka" as a trade mark in the year 2005 (w.e.f 2003 the year of the application), yet the
respondents have never per se used "Goenka" i.e "Goenka" itself and have used the same only as
part of "G D Goenka Public School" and therefore mere registration without actual use does not
confer ownership of a trade mark.
(ii) The appellant had formed vide a trust deed in 1990 a trust in the name of "Shree Lal Goenka
Charitable Trust" by the trustees Sh. Shyam Sunder Goenka & Sh. Ashutosh Goenka and which trust
is also running various institutions including the institutions stated in (i) above. The adoption and
user of the trademark is therefore claimed to be honest.
(iii) The word "Goenka" being a common surname is per se not distinctive and to acquire
distinctiveness in such a common surname is not possible. It is further contended that even if
distinctiveness can be achieved for such a common surname, it is contended that the respondents
have not achieved such distinctiveness.
(iv) A further limb of the above argument is that the word "Goenka" is publici juris or at least in
prior common use by other persons/institutions i.e. such other persons/institutions have used the
word "Goenka" in the field of education even FAO (OS) No. 118/2009 Page 3 prior to the use thereof
by the respondents from 1995. It is, therefore, contended that the respondents cannot be said to be
exclusive owners and entitled to exclusively use the trademark "Goenka" and they cannot prevent
the appellant from using the same.
3. On the other hand, the stand of the respondents/plaintiffs is based upon three main counts:
(i) The respondents since the year 1994 have been running a school in the name of "G.D.Goenka
Public School" and the word "Goenka" forms a prominent and distinctive part of the trademark
"G.D.Goenka Public School" and, therefore, the respondents are prior users/owners of the
trademark inasmuch as the appellant had set up "Mohini Devi Goenka Mahila Mahavidhyala" for
the first time only later in the year 1995 and "Goenka Public School" much later in the year 2000.

175
(ii) The respondents are the owners of the word "Goenka" inasmuch as they have got the word
"Goenka" registered in 2005 w.e.f 2003 in different classes under the Trademark Act, 1999.
FAO (OS) No. 118/2009 Page 4
(iii) The adoption of "Goenka" by the appellant was not honest inasmuch as the appellant adopted
the word "Goenka" after one employee Mrs. S. C. Arora left the respondents and joined the
appellant.
4. The learned Single Judge by the impugned order dated 24.2.2009 has restrained the appellant
from using "Goenka Public School" and "Goenka College of Pharmacy" by granting four months€
time to dis-continue the use of the said names. The learned Single Judge has held that on account of
the use by the appellant of the word "Goenka" in the aforesaid two institutions the same leads to
infringement of the registered trademark of the respondents/defendants and also passing off. The
learned Single Judge also restrained the appellant from using "Goenka Girls School" since there was
no use shown of the said name except in the website of the appellant. The learned Single Judge,
however, permitted the appellant to use the names "Mohini Devi Goenka Mahila Mahavidyala",
"Mohini Devi Goenka Girls B.Ed College", "Mohini Devi Goenka Girls Mahavidayala" and "Goenka
Shiksha Avam Sodh Sansthan".
5. The conclusions of the learned Single Judge are basically as follows:
(a) There is an infringement of the registered trademark "Goenka" of the respondents/plaintiffs

because the word "Goenka" forms an essential feature of FAO (OS) No. 118/2009 Page 5 the
trademark of the respondents/plaintiffs and the use of the said expression by the appellant leads to
deceptive similarity and consequently infringement of the trademark of the respondents/plaintiffs.
(b) There arises passing off on account of the use of the word "Goenka" by the appellant in the
names of their educational institutions because both the parties are in the same field viz of
education. The learned Single Judge negated the arguments of the appellant that the
respondents/plaintiffs cannot have monopoly of a common surname and further that the
respondents did not have exclusive rights as there were other educational institutions in India which
use the word "Goenka" as part of their name. The learned Single Judge held that unauthorized or
un-consented use by other parties of "Goenka" is of no avail and in this regard with respect to the
prior use than of both the appellant and the respondents viz of "M/s Goenka College of Commerce"
by a third party, the learned Single Judge held as under:
"Apart from one M/s Goenka College of Commerce whose present actual status could
not be traced till date by the Plaintiffs there is no other institute on record showing
use of the mark/word „Goenka€ per se, prior to that of the Plaintiffs or even
otherwise"
FAO (OS) No. 118/2009 Page 6 The learned Single Judge also held with respect to
other institutions using the word „Goenka€ by holding as under:

176
"The Defendant in para 9 at page 7 of I.A.307/2009 has named a few institutions

which are using the word „Goenka€ in their name. A perusal of the same list itself
establishes that all these institutions are using their own/full name as the name of
their institutes."
(c) The learned Single Judge also held that the defence of the respondents that since
the surname of their trustees is „Goenka€, so far as the claim of their being entitled to
use the same under Section 35 of the Trademark Act, 1999 is concerned, is not correct
because the defence of bona fide user of the name applies to use of the full name and
that too by a natural person and not by institutions which can adopt different names.
(d) Balance of Convenience was held to be in favour of the respondents and delay in instituting the
suit in 2008 was found to be not relevant in the facts of the case, inter alia as the suit was also for
infringement.
6. In this present appeal, therefore, we are called upon to basically decide the following basic issues:
FAO (OS) No. 118/2009 Page 7

(i) In between the appellant and the respondents who is the prior user of the
trade mark „Goenka ?
(ii) If respondents are prior users of the trade mark „Goenka can the same
make them owners of the trade mark „Goenka€ per se as the word „Goenka€ was only a part of their
name „G.D. Goenka Public School€ and the word „Goenka€ per se has never been used
independently in itself? Related to the above question is whether the „Goenka€ is an essential
feature/prominent part/predominant part of their trade mark/trade name and has it achieved
distinctiveness independently so as to enable the respondents to claim ownership rights in the name
of „Goenka€ in itself?
(iii) Even if as between the appellant and the respondents, the respondents are prior users of the
word „Goenka€, what would be the effect of others using the word „Goenka€ in the names of their
institutions much prior to the adoption and user of „Goenka€ by the respondents? Will this make
the trade mark „Goenka€ either lose distinctiveness or that it cannot achieve distinctiveness, more
so as the same is a surname commonly used in India? Is the surname „Goenka€ publici juris?
FAO (OS) No. 118/2009 Page 8
(iv) Is not the appellant entitled to use the word „Goenka€ on account of being an honest concurrent
user?
(v) Are the respondents entitled to claim infringement of their registered trade mark „Goenka€? Is
there passing off of the name „G.D. Goenka Public School€ when the appellant uses the word
177
„Goenka€ in their institutions „Goenka Public School€ and „Goenka College of Pharmacy€?
(vi) What is the effect of delay in filing the suit in 2008 when the appellant is using the word
„Goenka€ in „Goenka Public School€ since the year 2000 and since 1995 in „Mohini Devi Goenka
Mahila Mahavidyalaya€ and in whose favour is balance of convenience and who will be caused
irreparable injury?
7. During the course of hearing of the present appeal, the appellant moved an application under
Order 41 Rule 27 Code of Civil Procedure (CPC) for taking on record additional documents to show
firstly that it has been running school under the name "Goenka Public School" since the year 2000.
This was necessitated because the learned Single Judge found that the appellant€s documentation
with respect to the use of the name "Goenka Public School" was only from 2004-2005 only.
Secondly, the application under Order 41 Rule 27 CPC has sought to bring in further documents of
various other institutions using the word „Goenka€ in FAO (OS) No. 118/2009 Page 9 their
educational institutions much prior to the user by both the parties herein and the documents also
sought to buttress the plea with regard to the earlier institution „M/s G.D.Goenka College of
Commerce€ on which matter the arguments were urged before the learned Single Judge. This
application was allowed by us on 14.5.2009 after calling for the reply from the respondents. The said
order dated 14.5.2009 is reproduced below : -
" This is an application under Order 41 Rule 27 of the Code of Civil Procedure for
taking on record the additional documents on behalf of the appellant. The additional
documents sought to be filed are in order to show the user of the name "Goenka
Public School" by the appellant since the year 2000 by referring to the register of the
students, the secondary school admit cards, forms filled in by the wards of the
students and so on. We find that prima facie these documents appear to be
genuine/authentic. We note that the appellant has claimed that the school "Goenka
Public School" started as a Lower K.G. in the year 2000. The second set of documents
pertain to user of the surname "Goenka" by various other institutions, much prior to
the user and registration of the same by the respondent.
In order to determine the issue with regard to the user of the appellants and also the prior user by
persons other than the respondent, the documents are relevant to determine the matter in
controversy. We feel that in the interest of justice, in order to enable this Court to come to a decision
with respect to the matters in controversy qua the grant of injunction, the additional documents
sought to be filed are required to be taken on record. The respondent would be caused no prejudice
inasmuch as the suit itself is at an initial stage and the present appeal arises only from the interim
order of injunction. The respondents will have ample opportunity to meet these documents and the
case sought to be urged thereon. We may note that the plea with respect to the prior user is FAO
(OS) No. 118/2009 Page 10 already there in the pleadings and in fact, user of other persons is also a
fact which is mentioned not only in the pleadings but also in the impugned order. In these
circumstances, the application is allowed and the additional documents sought to be relied upon in
this appeal are taken on record."

178
8. The basic facts which have emerged on record qua the appellant are : The appellant has been
running "Mohini Devi Goenka Mahila Mahavidalaya" since the year 1995. The school is run by the
society managed by the trust namely " Shree Lal Goenka Charitable Trust" which was formed by a
trust deed of the year 1990. The trustees of the trust are Shyam Sunder Goenka and Ashutosh
Goenka. The appellant started running the school "Goenka Public School" since the year 2000. Qua
the respondents, the facts which have emerged on record are: They started running their school
under the name of "G.D.Goenka Public School" from the year 1994, the first session being of
1994-95. The respondents applied for registration of the trademark „Goenka€ in different classes in
the year 2003 and which registrations were granted to it in the year 2005 w.e.f. 2003. Though
registrations have been obtained by the respondent with respect to the word „Goenka€, they have
never used the word „Goenka€ per se with respect to their school i.e their school has been called not
as "Goenka Public School" but has been called as "G.D.Goenka Public School". There is, therefore,
no user of the word „Goenka€ per se i.e in itself without any other additions there to.
FAO (OS) No. 118/2009 Page 11
9. We may now take up one by one the issues which we are called upon to answer as stated in para 6
above.
Honest concurrent use - para 6(iv)
10. For the purpose of deciding this issue we will assume that respondents are the prior users of the
trade mark „Goenka€. We will also assume that „Goenka€ is an essential feature/prominent or
predominant part of the full name „G.D. Goenka Public School€. Making these assumptions let us
examine whether the appellant is entitled to the benefit of the doctrine of honest concurrent use.
11. Section 12 of the Trade Mark Act, 1999 (equivalent of Section 13 of the Trade Merchandise Marks
Act, 1957) contains the subject matter of honest concurrent use. The same reads as under :-
"12. Registration in the case of honest concurrent use, etc.--In the case of honest
concurrent use or of other special circumstances which in the opinion of the
Registrar, make it proper so to do, he may permit the registration by more than one
proprietor of the trade marks which are identical or similar (whether any such trade
mark is already registered or not) in respect of the same or similar goods or services,
subject to such conditions and limitations, if any, as the Registrar may think fit to
impose."
FAO (OS) No. 118/2009 Page 12
12. There are two parts of the doctrine of honest concurrent use. First part is that the
adoption must be honest and the second part is that there is concurrent use of the
trade mark with another trade mark. There is however a third salient feature on the
applicability of this doctrine and which is that conditions and limitations can be
imposed by the Registrar of Trade Marks while allowing registration of one or more

179
trade mark which are identical or similar in case there is found a case of honest
concurrent user. This third part will also, as will be seen, be an important aspect
while issuing directions for disposing off the appeal.
13. Taking up the aspect of honesty in adoption we are clearly of the view that the adoption by the
appellant by the word „Goenka€ in the name of its institution is honest. This is because the Trust
Deed is of 1990, well before the „G.D. Goenka Public School€ was started in 1994 and that the name
of the trustees of the trust have their surnames „Goenka€. The institution „Mohini Devi Goenka
Mahila Mahavidyalaya€ was started in 1995, in the District of Sikar in Rajasthan (well away from
Delhi) just one year after the respondents started „G.D. Goenka Public School€. In one year it is not
possible that „G.D. Goenka Public School€ became so famous that its name and fame spread well
beyond Delhi into Sikar District of Rajasthan, that it can be said that appellant would have liked to
copy the same to pass off its institute as that of the respondents. Nothing so categorical FAO (OS)
No. 118/2009 Page 13 and clinching has been placed on record by the respondents to this effect.
Also as stated above the appellant had a valid reason to us „Goenka€ in their institution in 1995 as
the trustees were Goenkas themselves. So far as use of „Goenka€ in the name „Goenka Public
School€ in the year 2000 is concerned the arguments as stated in favour of the appellant as stated
above will hold good and additionally also that the respondents had till 2000 admittedly called their
school „G.D. Goenka Public School€ and had never used „Goenka€ in itself/per se. Therefore, we
have no reason to hold that adoption of „Goenka€ per se by the appellant in the year 2000 was in
any manner mala fide. A feeble argument was sought to be raised that one Mrs. S.C. Arora was
working with the respondents left them in around 1996 and joined the appellant immediately
thereafter and then in the year 2000 „Goenka Public School€ was started by the appellant and
therefore the adoption is stated not to be honest. We find this argument wholly devoid of merit as
there is absolutely nothing on record to substantiate these facts of joining of Mrs. S.C. Arora with
the appellant prior to the year 2000. We asked the counsel for the respondents to refer to
documents to substantiate this contention and chain of facts chronologically and he was not able to
do so. Further, admittedly the respondents applied for registration only in the year 2003 i.e. well
after 2000. We also feel that if respondents feel that „Goenka€ is a prominent/essential part of FAO
(OS) No. 118/2009 Page 14 their name then the same argument will logically favour the appellant
also who is running „Mohini Devi Goenka Mahila Mahavidyalaya€ since 1995. We therefore hold
that the appellant is entitled to the benefit of the doctrine of honest concurrent user for use of the
word „Goenka€ in the name of their institutions.
However, to avoid any confusion in the minds of the public, we are passing certain directions in the
later part of this judgment by exercising powers similar to those vested in a Registrar under Section
12 of the Trade Marks Act, 1999. Prior use paras 6(i) & (ii), Infringement & Passing off Paras 6(v),
Surname and Distinctiveness para 6(iii)
14. The respondents started their school „G.D. Goenka Public School€ in 1994. Therefore, as
between the appellant and the respondents, they are prior users so far as the word „Goenka€ as part
of their trade mark/trade name. But, are they „prior users€ within the meaning of the term as
understood in the law of infringement of trade mark and passing off to get an injunction in their
favour? Further can the respondents be said to be prior users of „Goenka€ though the user is not of

180
„Goenka€ in itself but it is only a part of their trademark/trade name „G.D. Goenka Public School€?
15. Section 34 of the Trade Marks Act, 1999 provides that priority of use prevails as compared to
registration and deals thus with principle well established FAO (OS) No. 118/2009 Page 15 in the
law of trade mark that ordinarily it is the prior user of a trade mark who is the owner of the trade
mark. Section 34 reads :
"34. Saving for vested rights.--Nothing in this Act shall entitle the proprietor or a
registered user of registered trade mark to interfere with or restrain the use by any
person of a trade mark identical with or nearly resembling it in relation to goods or
services in relation to which that person or a predecessor in title of his has
continuously used that trade mark from a date prior--
(a) to the use of the first-mentioned trade mark in relation to those goods or services
by the proprietor or a predecessor in title of his; or
(b) to the date of registration of the first-mentioned trade mark in respect of those
goods or services in the name of the proprietor of a predecessor in title of his;
Whichever is the earlier, and the Registrar shall not refuse (on such use being
proved), to register the second mentioned trade mark by reason only of the
registration of the first mentioned trade mark."
16. Prior user has been sufficiently pronounced upon and we need to refer to only two Division
Bench Judgments of this Court in the case of N.R.Dongre & others Vs. Whirlpool Corporation and
others, AIR 1995 Delhi 300 and Century Traders VS. Roshan Lal Duggar & Co. & others, AIR 1978
Delhi
250. In N.R.Dongre€s case, the relevant paras holding that prior user prevails over subsequent
registration are as under:
"29. Thus the right created by Section 28 (1) of the Act in favour of a registered proprietor of a trade
mark is not an FAO (OS) No. 118/2009 Page 16 absolute right and is subservient to other provisions
of the Act namely Sections 27(2), 33 etc. Neither Section 28 nor any other provision of the Act bars
an action for passing off by an anterior user of a trade mark against a registered user of the same. In
other words registration of a trade mark does not provide a defence to the proceedings for passing
off as under Section 27(2) of the Act a prior user of trade mark can maintain an action for passing off
against any subsequent user of an identical trade mark including a registered user thereof. Again
this right is not affected by Section 31 of the Act, under which the only presumption that follows
from registration of a mark is its prima facie evidentiary value about its validity and nothing more.
This presumption is not an unrebuttable one and can be displaced. Besides Section 31 is not
immune to the over-riding effect of Section 27(2)."

181
"The rights of action under Section 27(2) are not affected by Section 28(3) and Section 30(1) (d).
Therefore, registration of a trade mark under the Act would be irrelevant in an action for passing off.
Registration of a trade mark in fact does not confer any new right on the proprietor thereof than
what already existed at common law without registration of the mark. The right of good will and
reputation in a trade mark was recognized at common law even before it was subject of statutory
law. Prior to codification of trade mark law there was no provision in India for registration of a trade
mark. The right in a trade mark was acquired only by use thereof. This right has not been affected by
the Act and is preserved and recognized by Sections 27(2) and 33."
(Emphasis added) In the case of Century Traders, the Division Bench of this court had also similarly
held that prior user prevails over subsequent registration as under:-
FAO (OS) No. 118/2009 Page 17 "14. Thus, the law is pretty well settled that in order to succeed at
this stage the appellant had to establish user of the aforesaid mark prior in point of time than the
impugned user by the respondents. The registration of the said mark or similar mark prior in point
of time to user by the appellant is irrelevant in an action for passing off and the mere presence of the
mark in the register maintained by the trade mark registry did not prove its user by the persons in
whose names the mark was registered and was irrelevant for the purposes of deciding the
application for interim injunction unless evidence had been led or was available of user of the
registered trade marks."
17. The question which follows now is that whether „Goenka€ being only a part of the trade
mark/trade name „G.D. Goenka Public School€ whether even such part of larger trademark is
entitled to protection. Putting it differently, if there is prior use of a larger trade mark will there be a
prior use also for a part of the trade mark?
18. The law in this regard is stated in para 34 to 39 of the impugned judgment. Some of the paras are
reproduced below:-
34. A trade mark is infringed if a person other than the registered proprietor or
authorized user uses, in relation to goods covered by the registration, one or more of
the trade mark€s essential particulars. The identification of an essential feature
depends partly upon the Court€s own judgment and partly upon the burden of the
evidence that is placed before the Court.
FAO (OS) No. 118/2009 Page 18
35. In James Chadwick & Bros. Lid. V. The National Sewin Thread Co. Ltd.,
MANU/MH/0063/1951 the Court ruled as under:
"in an action for infringement what is important is to find out what was the
distinguishing or essential feature of the trade mark already registered and what is
the main feature or the main idea underlying the trade mark. In Parle Products (f)
Ltd. v. J.P. & Co. Mysore. :MANU/SC/0412/1972 the Supreme Court took the same

182
view."
36. In the judgment of the Supreme Court in Ruston and Hornby Ltd. v. Zamindara
Engineering Co., MANU/SC/0304/1969. The High Court, in appeal, held that the
offending trade mark infringed the appellant€s trade mark "Ruston", and restrained
the respondent from using the trade mark "Rustam", but further held that the use of
the words "Rustam India" was not an infringement of the registered trade mark, as
the appellant€s goods were manufactured in England and not in India and the suffix
of the word "India" constituted a sufficient distinguishing factor. The Supreme Court,
white upholding the first part of the High Court Judgment and reversing the second
part, held that an infringement of a registered trade mark takes place not merely by
exact imitation but by the use of a mark so nearly resembling the registered mark as
to be likely to deceive.
39. As observed by the Privy Council in De Cordova and others Vs. Vick Chemical
Company, 68 R.P.C. 103, 106 it was held as under:
"it has long been accepted that, if a word forming part of a mark has come in trade to
be used to identify the goods of the owner of the mark, it is an infringement of the
mark itself to use that word as the mark on part of the mark of another trader, for
confusion is likely to result.".
FAO (OS) No. 118/2009 Page 19
19. Therefore, subject to facts and circumstances of each individual case, no one can
copy an essential part or predominant part of a trade mark and the benefit of prior
use doctrine will also be available to an essential/prominent/predominant part of
trade mark i.e. an important part of a trade mark of another person, but, that is
however not the end of the matter. When two marks are identical nothing further
needs to be seen in the cases of infringement, but if the marks are not identical but
only deceptively similar, then, the tests of passing off are to be applied to see if user of
a trade mark by a person other than the registered proprietor infringes the trade
mark of the registered proprietor i.e. if after adopting an essential feature of a trade
mark of a registered proprietor by another person, in the peculiar facts of that case, it
is to be seen whether there is deceptive similarity by applying the tests of passing off,
and in case there is no passing off of the trade mark, then it cannot be said that there
is infringement. The learned Single Judge referred to the judgment in Ruston's case
(infra) but has overlooked the relevant part thereof which lays down the ratio that
once the two trademarks are not identical, the question which arises is the question
of deceptive similarity and the tests to be applied for seeing existence of deceptive
similarity in an action for infringement is the same as in an action for passing off.
FAO (OS) No. 118/2009 Page 20 Reference is invited to para 7 of the judgment in
Ruston & Hornsby Ltd. v.

183
Zamindara Engineering Co., (1969) 2 SCC 727, which holds as under:-
"In an action for infringement where the defendant€s trade mark is identical with the
plaintiff€s mark, the Court will not enquire whether the infringement is such as is
likely to deceive or cause confusion. But where the alleged infringement consists of
using not the exact mark on the register, but something similar to it, the test of
infringement is the same as in an action for passing-off. In other words, the test as to
likelihood of confusion or deception arising from similarity of marks is the same both
in infringement and passing-off actions."
The ratio of this judgment in respect of the test for infringement and passing off being the same on
the issue of deceptive similarity when the two competing trade marks are not identical has been
again reiterated by the Supreme Court in the case of Ramdev Food Products (P) Ltd. v. Arvindbhai
Rambhai Patel,(2006) 8 SCC 726, at page 765 in which judgment in paragraph 91,the Supreme
Court has held as under:
"........In an action for infringement where the defendant€s trade mark is identical
with the plaintiff€s mark, the court will not enquire whether the infringement is such
as is likely to deceive or cause confusion. The test, therefore, is as to likelihood of
confusion or deception arising from similarity of marks, and is the same both in
infringement and passing-off actions."
20. The tests for passing off are : -
(1) a misrepresentation, (2) made by a trader in the course of trade, FAO (OS) No. 118/2009 Page 21
(3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4)
which is calculated to injure the business or goodwill of another trader (in the sense that this is a
reasonably foreseeable consequence), and (5) which causes actual damage to a business or goodwill
of the trader by whom the action is brought or (in a quia timet action) will probably do so." See
Heinz Italia v. Dabur India Ltd.,(2007) 6 SCC 1, para 15. Following Cadila Health Care Ltd. Vs.
Cadila Pharmaceuticals Ltd., 2001(5) SCC 73.
21. Before we however give our decision on the issue of passing off and deceptive similarity in view
of the law stated above, it is further necessary to concomitantly refer to the related issue of
distinctiveness of a surname.
22. Lack of distinctiveness of a common surname „Goenka€ and the issue of publici juris.
The learned counsel for the appellant has placed strong reliance on the provision of Section 9 of the
repealed Trade and Merchandise Marks Act, 1957 and more particularly sub-section 1(d) and
sub-section 2 and also the provision of Section 9 of the new Trademarks Act, 1999 to contend that a
common surname such as „Goenka€ is devoid of distinctive character and to achieve distinctiveness
in such a common surname, should not be easily accepted, he has relied upon in this regard, on the
commentary of Law of Trade Marks and passing off by P.Narayanan, Sixth Edition (2004) and para

184
8.20 thereof which reads as under:-
FAO (OS) No. 118/2009 Page 22 "8.20. Surnames are commonly used as trade marks.
Although it is not specifically mentioned in the definition of mark, the word name would include
surname and personal name.
A mere surname of an individual, though it may be adapted to distinguish or capable of

distinguishing the goods or services of all persons, taken collectively, who bear the surname from
those of other persons bearing a different surname, is not adapted to distinguish or capable of
distinguishing the goods or services of one person from those of another having the same surname.
Every trader has a right to trade in his own name and ought not to be hampered in its use. One has
therefore to consider the interests of other persons having the same surname who might at any time
carry on trade in the same goods or services. A surname therefore is considered prima facie not
adapted to distinguish nor capable of distinguishing. For the same reason a personal name or the
name of a caste, sect or tribe is also considered having the same built-in disability. Common
abbreviations of surname, or personal name is to be considered on the same footing as a surname or
a personal name."
(emphasis added)
(ii) The counsel for the appellant also relied upon the following passage in The Law of Trade Marks
and Passing off by Dr. S.Venkateshwaran (Fourth Edition (1999 Reprint) for the same purpose:-
"Surname according to ordinary signification.---The word "according to ordinary

signification" qualify the words surname, personal names, etc. A word which
according to its ordinary signification is a surname, is excluded under clause (d).
"The right to the surname that a man uses", said FAO (OS) No. 118/2009 Page 23
Neville, J., "is shared with every other person who has the same name, and,
consequently, he has got about as much monopoly in it as he has in the air that he
breathes; he has to share it in common with all this fellow-citizens".
23(i). Though what has been urged by counsel for the appellant, is no doubt correct, however, the
argument of the counsel for the appellant is answered by the argument raised by the counsel himself
inasmuch as once it is held that a surname has become distinctive, normally such a surname can in
fact be owned and used as a trademark. Reference in this regard is invited to the judgment of the
Hon€ble Supreme Court in the case of Mahendra and Mahendra Paper Mills Ltd. Vs. Mahindra and
Mahindra Limited 2002 (2) SCC 147. The relevant portion of this judgment is at para 24 which
reads as under:
24. Judging the case in hand on the touchstone of the principles laid down in the
aforementioned decided cases, it is clear that the plaintiff has been using the words
"Mahindra" and "Mahindra & Mahindra" in its companies/business concerns for a
long span of time extending over five decades. The name has acquired distinctiveness

185
and a secondary meaning in the business or trade circles. People have come to
associate the name "Mahindra" with a certain standard of goods and services.
Any attempt by another person to use the name in business and trade circles is likely to and in
probability will create an impression of a connection with the plaintiffs€ Group of Companies. Such
user may also affect the plaintiff prejudicially in its business and trading activities. Undoubtedly, the
question whether the plaintiffs€ claim of "passing-off action" against the defendant will be accepted
or not has to be decided by the Court FAO (OS) No. 118/2009 Page 24 after evidence is led in the
suit. Even so for the limited purpose of considering the prayer for interlocutory injunction which is
intended for maintenance of status quo, the trial court rightly held that the plaintiff has established
a prima facie case and irreparable prejudice in its favour which calls for passing an order of interim
injunction restraining the defendant Company which is yet to commence its business from utilizing
the name of "Mahendra" or "Mahendra & Mahendra" for the purpose of its trade and business.
Therefore, the Division Bench of the High Court cannot be faulted for confirming the order of
injunction passed by the learned Single Judge.
(ii) Another relevant judgment in this regard is the judgment of a Division Bench of this court in the
case of Montari Overseas Ltd Vs. Montari Industries, 1996 PTC (16) 142 (Del). The relevant portions
of this judgment are as under:
"When a defendant does business under a name which is sufficiently close to the
name under which the plaintiff is trading and that name has acquired reputation and
the public at large is likely to be misled that the defendant€s business is the business
of the plaintiff, or is a branch or department of the plaintiff, the defendant is liable for
an action in passing off.
Even if the word "MONTARI" as part of the corporate name of the appellant was derived from the
names of the father and father-in-law of the M.D. of the appellant company it would still be liable
for an action in passing off as the use of the word "MONTARI" in its corporate name is likely to
cause confusion and injure the goodwill and reputation of the respondent, in the sense that this is a
reasonable and foreseeable consequence of the appellant€s action. We find from the record of the
trial court, which contains the Memorandum of Association of six Montari group of companies and
annual reports of Montari FAO (OS) No. 118/2009 Page 25 Industries Ltd., that Montari group of
industries have large operations and some of them have been in business for a long time. The
members of the public are likely to mistakenly infer from the appellant€s use of the name which is
sufficiently close to the respondent€s name that the business of the appellant€s company is from the
same source, or the two companies are connected together."
"It is well settled that an individual can trade under his own name as he is doing no more than
making a truthful statement of the fact which he has a legitimate interest in making. But while
adopting his name as the trade name for his business he is required to act honestly and bonafidely
and not with a view to cash upon the goodwill & reputation of another. An individual has the
latitude of trading under his own name is in recognition the fact that he does not have choice of
name which is given to him. However, in the case of a Corporation the position is different. Unlike

186
an individual who has no say in the matter of his name, a company can give itself a name. Normally
a company can not adopt a name which is being used by another previously established company, as
such a name would be undesirable in view of the confusion which it may cause or is likely to cause in
the minds of the public. Use of a name by a company can be prohibited if it has adopted the name of
another company.
It is well settled that no company is entitled to carry on business in a manner so as to generate a

belief that it is connected with the business of another company, firm or an individual. The same
principle of law which applies to an action for passing off of a trade mark will apply more strongly to
the passing off of a trade or corporate name of one for the other. Likelihood of deception of an
unwary and ordinary person in the street is the real test and the matter must be considered from the
point of view of that person. Copying of a trade name amounts to making a false representation to
the public from which they have to be protected. Besides the FAO (OS) No. 118/2009 Page 26 name
of the company acquires reputation and goodwill, and the company has a right too to protect the
same. A competitor cannot usurp the goodwill and reputation of another. One of the pernicious
effects of adopting the corporate name of another is that it can injure the reputation & business of
that person".
(iii) The ratio of Montari is also the ratio of the judgments of this court in Dr. Reddy's Laboratories
cases which are reported as Dr. Reddy's Laboratories Ltd. VS. Reddy Pharmaceuticals Ltd. 2004
(29) PTC 435 (Del) and Reddy Pharmaceuticals Ltd. Vs. Dr. Reddy's Laboratories Ltd. 2007 (35)
PTC 868 (Del.) (DB). Paras 15 and 16 of the learned Single Judge€s Judgment in the above decision
read as under:-
"15. The plea raised by the defendant that it has a bona fide statutory right to use the
trade name "Reddy" as its Managing Director is Mr. Reddy is also liable to be rejected
for the reason that the trade mark "Dr. Reddy" in spite of not being registered has
acquired considerable trade reputation and goodwill in the community dealing with
drugs and pharmaceutical not only in India but abroad also. This trade mark is now
distinctively associated with the plaintiff€s company. Its long and continuous user by
the plaintiff is prima facie established. The use of trade name/mark "Reddy" by the
defendant is capable of causing confusion and deception resulting in injury to the
goodwill and reputation of the plaintiff company. No other "Reddy"
has a right to start a rival business by using the same trade name on the plea that it is his surname.
This would encourage deception. If such a plea is allowed, rivals in trade would be encouraged to
associate in their business ventures persons having similar surnames FAO (OS) No. 118/2009 Page
27 with a view to encash upon the trade reputation and goodwill acquired by others over a period of
time. In Bajaj Electrical Limited, Bombay v. Metals & Allied Products, Bombay and another, AIR
1988 Bombay 167, the user of a family name by the defendants was held to be an act of passing off
the goods and it was observed that the use of such family name as a trade mark was not permissible.
The plea of the defendants that the surname of the partners of its firm could be used to carry on
trade in their own name was rejected. It was held that prima facie the defendants were intentionally
and dishonestly trying to pass off their goods by use of name "Bajaj" and as such the plaintiff had

187
made out a case for grant of injunction.".
"16. In the case of Kirloskar Diesal Recon Pvt. Ltd.
and another v. Kirloskar Proprietary Ltd. and others, AIR 1996 Bombay 149 also, it was held that the
use of surname was not saved by Section 34 of the Trade and Merchandise Marks Act, 1958 for an
artificial person like incorporated Company. It was also held that the mark „Kirloskar€ used by the
plaintiffs had acquired a secondary meaning and had become a household word and as such Section
34 of the Act could not come to the rescue of the defendants."
The view of the learned Single Judge has been accepted by the Division Bench in the judgment
reported as Reddy Pharmaceuticals Ltd. Vs. Dr. Reddy's Laboratories Ltd. 2007 (35) PTC 868 (Del.)
(DB).
(iv) We may incidentally state that the aforesaid ratio of Division Bench judgment of this court in
the Montari case answers one of the contentions raised by the counsel for the appellant that the
appellant is entitled to use the name FAO (OS) No. 118/2009 Page 28 „Goenka€ by virtue of Section
35 of the Trademark Act, 1999. Clearly, the arguments of learned counsel for the appellant are not
well founded because the defence under Section 35 will only apply to a full name and that also by a
natural person and not by a legal entity which can choose a separate name. Also, once
distinctiveness is achieved or secondary meaning acquired with respect to a surname, then, another
person cannot use that surname for an artificial person or entity. The appellant, therefore, only on
the strength of Section 35 cannot successfully contend that it is entitled as of right to use the name
„Goenka€ merely because it happens to be the surname of its original and present trustees. Of
course, nothing turns strictly on this issue in the facts and circumstances of this case, so far as the
relief with respect to infringement or passing off or prior user issue is concerned because, we have
otherwise held that appellant is an honest concurrent user and we have given later in this judgment
sufficient directions for bringing about distinction in both the trademarks so that there is no
confusion in the minds of the public.
24. We now answer the issue (as stated in para 21 above) of deceptive similarity and passing off. We
are of the view that in the facts and circumstances of the case, there would not arise any deceptive
similarity or passing off between FAO (OS) No. 118/2009 Page 29 the two names of "Goenka Public
School" and "G D Goenka Public School" for the following reasons:-
(i) The respondents began their educational institutions in the year 1995 in Delhi by opening a
single school. No doubt it can be urged that the respondents could have earned distinctiveness with
respect to their name so far as the region of Delhi or in and around Delhi concerned, but it cannot be
said that respondents have achieved such amount of distinctiveness or secondary meaning that such
distinctiveness would be applicable throughout the country in a period of a year in 1995 or in five
years in 2000 that anyone else who in a different district in a different State starts using „Goenka€
as part of its name, it would result in passing off, other institutions as that of the respondents.
Nothing has been for the present, placed on record that in one year respondents user has spread so
extensively throughout India that respondents can prevent the appellant from using the surname

188
„Goenka€ more so as „Goenka€ is a common surname in India.
(ii) Secondly, students studying in a school in Sikar district of Rajasthan would not be led into
believing that they are studying or applying for any school which is the same as the respondents€
school in Delhi.
FAO (OS) No. 118/2009 Page 30

(iii) There is sufficient and noticeable difference between „Goenka Public
School€ and „G.D. Goenka Public School€ when taken in context that respondents are Delhi based
and appellant is based in Sikar, Rajasthan.
(iv) No doubt the field of operation of both the appellant and the respondents is the same, viz
education, however, the issue of deceptive similarity will also have to be negated not only on account
of „Goenka€ being a common surname but also because of the fact that other educational
institutions using the name „Goenka€ either per se or with other words already existed prior to the
respondents establishing the institutions in the year 1994. Furthermore the promoters of the
appellant€s institute do bear the surname „Goenka€ and such user is thus bona fide. It has been
found on record that the following institutions have been operating in different parts of India using
the word „Goenka€ in their trademark or trade name viz the name of the institution and which are
as under:-
(a) Goenka College of Commerce, Kolkatta since 1951 (P.388 of appeal)
(b) Goenka Vidya Mandir, Pilani, since 1983 (P.397 of appeal), and
(c) Goenka Sanskrit Mahavidyalaya, Banaras, since 1957 (P.403/405 of appeal) FAO
(OS) No. 118/2009 Page 31 We, therefore, prima facie find that there is merit in the
contention of the appellant that various other institutions have been using the word
„Goenka€ as part of their trademark and trade name even prior to the use of the word
„Goenka€ by the respondents as part of their trade mark and, therefore, it cannot be
said that „Goenka€ has become distinctive or acquired a secondary meaning so far as
the respondents are concerned. Therefore, neither the appellant nor the respondents
can be said to be the first user or prior user for the purposes of becoming exclusive
owners of the word „Goenka€ to prevent others from using „Goenka€.
In fact, the number of institutions run by different parties may, after trial, lead to the word
„Goenka€ being publici juris.
Publici Juris, Para 6(iii)
25. The subject of a publici juris trade mark in same part can be traced to Section 9(1) (a) & (c) and
Section 13 of the Trade Marks Act, 1999. The said sections are reproduced below:-

189
"9. Absolute grounds for refusal of registration.--(1) The trade marks--
(a) which are devoid of any distinctive character, that is to say, not capable of
distinguishing the goods or services of one person from those of another person;
(b) xxxxxx
FAO (OS) No. 118/2009 Page 32
(c) which consist exclusively of marks or indications which have become customary
in the current language or in the bona fide and established practices of the trade,
shall not be registered:
13. Prohibition of registration of names of chemical elements or international

non-proprietary names.--No word--
(a) which is the commonly used and accepted name of any single chemical element or
any single chemical compound (as distinguished from a mixture) in respect of a
chemical substance or preparation, or
(b) which is declared by the World Health Organisation and notified in the prescribed
manner by the Registrar from time to time, as an international non-proprietary name
or which is deceptively similar to such name, shall be registered as a trade mark and
any such registration shall be deemed for the purpose of Section 57 to be an entry
made in the register without sufficient cause or an entry wrongly remaining on the
register, as the circumstances may require."
26. On the issue with regard to a trade mark becoming common to the trade and hence publici juris
the law in this regard is contained in a Division Bench judgment of this court reported as
Astrazeneca UK Limited & Anr. Vs. Orchid Chemicals & Pharmaceuticals Ltd. 2007 (141) DLT 565
(DB) : 2007 (34) PTC 469. The relevant portion of this judgment is as under:
"We are informed that there are a number of such other similar names with the prefix
„Mero€ which are in the market.
They were also taken notice of by the learned Single Judge while dealing with the injunction
application. In the decisions of the Supreme Court and this Court also, it has been clearly FAO (OS)
No. 118/2009 Page 33 held that nobody can claim exclusive right to use any word, abbreviation, or
acronym which has become publici juris. In the trade of drugs, it is common practice to name a drug
by the name of the organ or ailment which it treats or the main ingredient of the drug. Such an
organ ailment or ingredient being publici juris or generic cannot be owned by anyone exclusively for
use as trade mark."

190
On the aspect of publici juris however we do not want in any manner to pronounce one way or the
other because we do not think that on the strength of the documents as available at the present
stage, it can be authoritatively said that the word „Goenka€ has become publici juris. It will be open
to the appellant to establish its case at the trial and accordingly, urge at the time of final arguments
its contention with regard to the word „Goenka€ having become publici juris. At this stage, one
aspect of the judgment of the learned Single Judge needs mention where the learned Single Judge
seems to hold that user of third person is not relevant to the issue of ownership of a plaintiff. The
impugned judgment is incorrect to the extent it holds that user by the third party of a trademark
prior to the user claimed by the plaintiff is not relevant. In fact, in such a case, prior user by third
parties of the trademark in certain facts and circumstances of a case, may throw considerable light
on, the existence or not, of exclusive ownership claim of a plaintiff/respondent with respect to a
trademark.
FAO (OS) No. 118/2009 Page 34
27. Now taking up the case as regards the issue of infringement on account of registration of the
trade mark in favour of the respondents and which has been held by the learned Single Judge in
favour of the respondents and against the appellant, we are of the view that in view of the additional
documents having come on record of the appellant€s having started in 2000 we cannot hold the
appellant guilty of infringement of the registered trademark „Goenka€ of the respondent because
the admitted fact is that the trademark „Goenka€ has been registered only in the year 2003 whereas
the appellant has been carrying on its institution with the word „Goenka€ per se from the year
2000. Also mere registration, will be of no avail to the respondents as they have never used
„Goenka€ per se and mere registration without actual user cannot confer ownership rights in a trade
mark.
28. Since, however, education of students is involved in order to ensure that there is no deceptive
similarity between the institutions of the appellant and the respondents and so that no student or
his/her ward is led into believing that two institutions are similar, we would seek to invoke the
rationale of the provision of Section 13 of the Trade Marks Act, 1999 which deals with the principle
of honest concurrent user. Under this provision at the time of registration of trademarks which are
found to be deceptively similar, power has been vested in the Registrar FAO (OS) No. 118/2009
Page 35 to allow such registration in case of honest concurrent user subject to certain conditions and
limitations i.e. such restrictions and directions which the Registrar may impose. The object of this
provision is that if there are similar trademarks in the market then in such circumstances, in order
to ensure that there is no confusion amongst the public, directions can be issued to ensure that the
public in general do not confuse the goods and services of one trademark with that of another, at the
same time allowing rival traders who have carried on their business under their trade marks because
such trade Marks have been used by both such persons for such time that it has become distinctive
qua such traders.
Accordingly, we direct that the appellant should take such steps that while writing the name of its
school namely, "Goenka Public School" it shall add such information of disclaimer or distinction
that enough distinction would be maintained with respect to the names of the appellant and that of

191
the respondents. We also direct that the appellant should put the name of their trust in brackets
below the name of its school so that it is clear that the appellant€s school is of a trust based in Sikar,
Rajasthan. Further, in public advertisements, literature or brochures which are issued by the
appellant the name of its trust must be mentioned and the appellant is also directed to state that it is
not affiliated to any other institution using „Goenka€ as a trademark or trade name. Since we are
FAO (OS) No. 118/2009 Page 36 dealing with the case at the stage of interim injunction and subject
to any final judgment which may otherwise be passed in the suit, we have noted the plea of the
appellant that it is at the moment is confining its activities to Sikar in Rajasthan. In case, it seeks to
extend its activities beyond Sikar in Rajasthan, it may move an application bringing appropriate
facts on record thereby seeking permission from the court and the court will dispose of such
application as per the facts and circumstances stated in the application. Balance of Convenience and
Delay para 6(vi)
29. We are also of the view that the balance of convenience is in favour of the appellant and against
the respondents. Irreparable injury which cannot be compensated in money will be caused to the
appellant if the injunction as granted by the learned Single Judge is not vacated and the respondents
can be compensated monetarily in case they finally succeed. The appellant is running its educational
institution being „Goenka Public School€ from the year 2000 and the suit has been filed only in the
year 2008. Object of an injunction is to be looked at differently when a business is about to start and
as against a business which has been going on from a long time. In the latter category of cases
injunction is not ordinarily granted whereas in the case of the former where the business is about to
start or has just recently started, the court favourably considers the grant of FAO (OS) No. 118/2009
Page 37 pendent lite injunction. Furthermore several students are studying in the school run by the
appellant and it would cause serious inconvenience and undue trouble to the appellant if so
necessitated by the order of the learned Single Judge. The object of an injunction is not create a new
state of affairs but to maintain status quo with regard to the position emerging for a long time before
filing of the suit. Reference in this behalf is invited to a judgment of Single Judge of this court in
QRG Enterprises & Anr. Vs. Surendra Electricals & Ors, 2005 (120) DLT 456: 2005 (30) PTC 471.
Paras 30 , 31 & 39 of the said judgment are relevant wherein the Single Judge has relied upon the
Supreme Court judgments for this purpose, and which paras read as under:
"30. Interlocutory remedy is normally intended to preserve in status quo rights of the
parties which may appear of a prima facie case. As observed by Their Lordships of the
Supreme Court in the decision reported as 1990 (Supp.) SCC 727, Wander Ltd. & Anr
v. Antox India Pvt. Ltd:
"Usually, the prayer for grant of an interlocutory injunction is at a stage when the
existence of the legal right asserted by the plaintiff and its alleged violation are both
contested and uncertain and remain uncertain till they are established at the trial on
evidence.
The Court at this stage acts on certain well settled principles of administration of this form of
interlocutory remedy which is both temporary and discretionary. The object of the interlocutory
injunction, it is stated, "... is to protect the plaintiff against injury by violation of his rights for which

192
he could not adequately be compensated in damages recoverable in the action if the uncertainty
were resolved in his favour at the trial. The need for such protection must be made against the
corresponding need of FAO (OS) No. 118/2009 Page 38 the defendant to be protected against injury
resulting from his having been preventing from exercising his own legal rights for which he could
not be adequately compensated. The Court must weigh one need against another and determine
where the „balance of convenience€ lies."
31. As observed by Their Lordships in Mahendra & Mahendra Paper Mills Ltd. (supra):
"The Court also, in restraining a defendant from exercising what he considers his legal right but
what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration
whether the defendants has yet to commence his enterprise or whether he has already been doing so
in which latter case considerations somewhat different from those that apply to a case where the
defendant is yet to commence his enterprise, are attracted."
39. I am required to preserve a status quo, the rights of the plaintiffs and defendants which may
appear on a prima facie case. Protection of the interest of the plaintiffs has to be weighed vis-a vis
the corresponding interest of the defendants. It is not a case where the defendants have to
commence enterprise. Real challenge is to defendants 5 and 6 who have been in business since 1956
and 1974 respectively. In the light of the prima facie facts noted above, balance of convenience and
irreparable loss and injury, I am of the opinion that the ex parte ad interim injunction granted to the
plaintiffs on 25.11.2004 requires to be vacated." We may make a passing reference to Section 33 of
the Trade Marks Act, 1999 which now for the first time statutorily provides a period of five years
with respect to acquiescence. Though, Section 33 is with reference to the right of an unregistered
user and a subsequent registered user, however indication of a period FAO (OS) No. 118/2009 Page
39 for acquiescence which is provided as a defence under Section 30(2) (c) (i) can be said to have
been provided by the statute for the first time. The appellant started „Goenka Public School€ in the
year 2000 and suit has been instituted in the year 2008, however, we will not go further into this
issue or pronounce upon it as no arguments have been addressed on the basis of acquiescence, and
also because appellant will have to prove knowledge of the respondents since long of their existence
and other requirements qua the defence of a acquisence. 30 In view of the above, our conclusions
are as under:
(i) The respondent cannot successfully contend infringement of its trade mark „Goenka€ because
the trade mark has been registered w.e.f. 2003, but the appellant have used the trademark
„Goenka€ per se w.e.f. 2000 when it started its „Goenka Public School€. Mere registration cannot
confer right on the respondents as registration without user is of no effect and respondents have
never used the trade marks „Goenka€ in itself per se.
(ii) The respondents can be said to be prior user of the trademark „Goenka€ as against the appellant
on the ground that the word „Goenka€ forms a prominent part of its name „G.D.Goenka Public
School€ on their establishing distinctiveness/secondary meaning after trial of the case but as of
today no FAO (OS) No. 118/2009 Page 40 injunction can be granted to the respondents because the
two trademarks are not identical and when the tests for deceptive similarity are applied there is

193
enough material to hold that there is no deceptive similarity especially because, whereas the
appellant is based in Sikar, Rajasthan, the respondents are based in Delhi and both the parties have
started using the word „Goenka€ as part of the name of their institutions near about each other so
that it can be said that the appellant is an honest concurrent user of a word „Goenka€, because since
1995 it was using „Goenka€ as part of "Mohini Devi Goenka Public School" and for which it had a
bona fide reason to adopt because the surname of its trustees was „Goenka€. Directions have
however been issued by us as stated in para 28 above so as to ensure that there is no confusion
between the names of the separate institutions using their trademarks/ trade names.
(iii) Though the appellant is correct that a common surname like „Goenka€ cannot easily achieve
distinctiveness but this can be established in a given case. We find that this issue in the facts of the
present case need not be pronounced upon by us for the present inasmuch as we have permitted the
respondent to use the name „Goenka Public School€ with certain minor restrictions as stated above.
Similarly, we do not hold one way or the other with FAO (OS) No. 118/2009 Page 41 respect to
whether the word „Goenka€is publici juris and which is left for decision after the trial in the case.
(iv) On account of the appellant€s running its institution as „Goenka Public School€ from the year
2000 i.e. 8 years before filing of the suit, the relief of injunction on the ground of passing off is to be
declined on the ground of delay also, because the balance of convenience is in favour for the
appellant whose institutions having several students were not just recently established before filing
of the suit in 2008 or were to be established after filing of the suit.
(v) It is doubtful that the respondents can claim to be exclusive and sole owners of the word
„Goenka€ because third parties have been using the word „Goenka€ as part of their trademark/
trade name in the name of their institutions much prior to the user of the word „Goenka€ by the
respondent.
31. Accordingly, we allow the appeal and vacate the injunction order granted by the learned Single
Judge in the impugned judgment. We permit the appellant to use the name „Goneka Public School€
with respect to its school but with the condition that during the pendency of the suit it will use the
name „Goenka Public School€ subject to directions in para 28.
FAO (OS) No. 118/2009 Page 42

32 With these observations, the appeal is disposed of, leaving the parties to
bear their own costs. Needless to state that our findings are prima facie and will not affect the final
decision on merits of the case after trial.
VALMIKI J.MEHTA, J

194
MUKUL MUDGAL, J
MAY 29, 2009

ib/dkg
FAO (OS) No. 118/2009 Page 43

195
Kores (India) Limited vs Khoday Eshwarsa And Son, And Anr. on 3 March, 1984
Bombay High Court

Equivalent citations: 1985 (1) BomCR 423
Author: M Pendse
Bench: M Pendse
JUDGMENT M.L. Pendse, J.
1. This is an appeal preferred under sub section (2) of section 109 of the Trade and Merchandise
Marks Act, 1958 (hereinafter referred to as the "Act") to challenge the legality of the order dated
January 1, 1977 passed by the Assistant Registrar of Trade Marks refusing registration of mark of the
petitioners by upholding the objections raised on behalf of the respondents. The fact giving rise to
the filing of this appeal are as follows.
2. On October 13, 1969, the petitioners-M/s. Kores (India) Limited preferred an application being
Application No. 259975 in respect of Carbon papers, typewriting ribbons, stencils for duplicating
machine, duplicating ink, ink tablets, drawing ink, stamp pad fluid, stamp pads glue (office), etc. in
Class 16 for a trade mark consisting of device of a typist girl at the typewriter. An objection was
raised to the registration of the mark under section 9 of the Act as an identical device of a typist girl
and word "khoday" was registered under Application No. 91882 on January 28, 1944 in respect of
typewriting ribbons in Class 16 in the name of the respondents. The application which was then
converted for registration under Part B, amending the specification of goods, sets out in the
application to read as "Carbon papers, typewriter ribbons, stencils for duplicating machines and
duplicating ink". The application so amended was advertised before acceptance subject to disclaimer
of a device of a woman typing on a typewriter. On July 18, 1973, Shri K. Lashmansa, K. Krishnasa,
K.L. Swamy and others trading as Khoday Eshwarsa & Sons and also as Khoday R.C. Industries,
Bangalore filed a notice of Opposition to the registration of the trade mark. The grounds of
Opposition, inter alia, were that the respondents are the Proprietors of a trade mark consisting of
the device of a lady in typing position on a typewriter and the word "KHODAY" and the mark is used
continuously, extensively, widely and openly in respect of articles such as carbon papers, typewriter
ribbons, stencils for duplicating machines, duplicating ink, etc. since about the year 1937-38
onwards. It is claimed that by virtue of continuous long and extensive user, the respondents' trade
mark has acquired distinctiveness and great reputation, so much so that the stationary articles
bearing the said trade mark have been associated in the minds of the public as goods manufactured
by the respondents. The respondents, in order to safeguard the interest in the trade mark of the
respondents have diligently taken all possible legal steps against infringement of the mark. The
mark was deposited with the Registrar of trade marks under section 85 of the Trade Marks Act,
1940. The trade mark was duly registered under Application No. 91882 on January 28, 1944. The
respondents also claimed that the proposed mark of the petitioners is identical and was deceptively
similar in respect of the same goods or of the same description and, in fact, there is a triple identity
between both the trade marks, which if allowed to continue, is bound to put the public into great
inconvenience, uncertainty and confusion leading also to deception. The respondents denied that
the petitioners used the mark since the year 1959 and claimed that the user of the mark by the
petitioners cannot be honest and is not entitled to registration under section 12(3) of the Act. On
September 28, 1973, the petitioners filed a counter statement denying various allegations made in

196
the notice of Opposition and claiming that the petitioners have used the trade mark extensively
since the year 1959 and the mark has secured goodwill by reason of long, continuous and extensive
user. The petitioners also claimed that the use of the mark is original, artistic and honest and,
therefore, the petitioners are entitled to claim registration under sub-section (3) of section 12 of the
Act.
3. The respondents in support of their Opposition filed affidavits and the petitioners also filed large
number of affidavits in support of their claim and the main affidavit filed on behalf of the petitioners
is sworn by Shri S.R. Bhattacharjee, the General Sales Manager of the petitioner Company and is
sworn on April 7, 1975. It is not necessary, at this stage, to recite the contents of this affidavit. The
Assistant Registrar heard the Counsel of both the sides at length and ultimately by the impugned
order dated January 1, 1977 upheld the Opposition and refused the registration. The Assistant
Registrar came to the conclusion that the respondents established that the registered mark was used
by them on an extensive scale right from the year 1937-38 onwards and the respondents have
acquired reputation by virtue of such user and certain amount of goodwill. The Assistant Registrar
further held that the mark proposed to be registered by the petitioners is similar to that of the
respondents and confusion will inevitably result from simultaneous sue of the identical marks and
would calculate to deceive purchasers or other persons with whom the respondents have business
relations. The Assistant Registrar further held that the objection under section 12(1) of the Act is
also valid as the two marks both of which consist the device of a typist girl would lead to confusion.
The Assistant Registrar recorded a finding that the petitioners failed to establish the honest
concurrent user from the year 1959 onwards to enable the petitioners to claim advantage of
concurrent registration under sub-section (3) of section 12 of the Act. The Assistant Registrar found
that the petitioners have copied the mark of the respondents and the petitioners have also not used
the mark in the form in which the registration is sought and have not claimed any exclusive right to
the device of typist girl. The Assistant Registrar gave about 9 reasons for declining to exercise
discretion under sub-section (3) of section 12 of the Act in favour of the petitioners. In view of this
conclusion, the application for registration was refused and that order is under challenge.
4. Shri Mehta, learned Counsel appearing on behalf of the petitioners, submitted that the Assistant
Registrar was in error in not exercising the discretion under sub-section (3) of section 12 of the Act
in favour of the petitioners. The learned Counsel urged that the conditions requisite for exercise of
jurisdiction were clearly present and on the strength of the evidence produced on record, the
Assistant Registrar ought to have granted concurrent registration. The learned Counsel urged that
neither the objection under section 12(1), nor under section 11(a) of the Act should have been upheld
because the two marks are not deceptively similar. Shri Tulzapurkar, learned Counsel appearing on
behalf of the respondents, on the other hand, urged that the evidence on record unmistakably
establishes that the respondents had adopted the mark i.e. the device of typist girl in the year
1937-38 and have used it for over several years and have acquired reputation. The learned Counsel
urged that the prohibition under sub-section (1) of section 12 of the Act squarely applies to the facts
of the present case and the mark sought by the petitioners could not be registered as the goods or
the description of the goods are identical and the mark is deceptively similar to the trade mark of the
respondents which is already registered in the year 1948. Shri Tulzapurkar also urged that the
petitioners are not proprietors of trade mark proposed to be registered and as such the application

197
for registration filed under sub-section (1) of section 18 is not maintainable. Finally, it was urged
that the evidence on record clearly leads to the inference that the use of the mark by the petitioners,
even assuming from the year 1959, is neither honest, nor concurrent and, therefore, the Assistant
Registrar was justified in declining to exercise the discretion to register the trade mark under
sub-section (3) of section 12 of the Act. It was further urged that as the Assistant Registrar did not
exercise his discretion, it is not appropriate or necessary to disturb the order in exercise of appellate
jurisdiction.
5. In view of the rival submissions, the first question which requires determination is whether the
application filed by the petitioners under sub-section (1) of section 18 of the Act was maintainable.
The respondents raised the question of maintainability of the application on the ground that the
petitioners are not the proprietors of a trade mark used or proposed to be used by the petitioners.
Sub-section (1) of section 18 of the Act reads as under :---
"Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who
is desirous of registering it shall apply in writing to the Registrar in the prescribed manner for the
registration of his trade mark either in Part A or in Part B of the register."
The plain reading of this sub-section makes it clear that an application can be lodged by any person
claiming to be a proprietor of a trade mark. The essential requirement is that the applicant should
have legitimately claimed the proprietorship of the mark. It was urged on behalf of the respondents
that the mark of the respondents i.e. the device of the typist girl was registered in respect of
typewriting ribbons on January 28, 1944. It was claimed that the petitioners have appropriated the
trade mark of the respondents which has acquired reputation by extensive and open user. It was
urged that the petitioners have infringed the statutory right in the registered trade mark and have
merely copied the trade mark of the respondents and the claim of the petitioners that the mark was
conceived in the year 1954 and was used from the year 1959 onwards is not true. Shri Tulzapurkar
submitted that once a mark is registered, then it is not open for any person to make application
under sub-section (1) of section 18 of the Act for registration of the identical mark because such
person could not claim the right of proprietorship in the same.
6. In support of this submission, reliance is placed on the decision of this Court in the case of
Consolidated Foods Corporation v. Brandon and Co. Private Ltd., . The learned Single Judge, after
considering the judgment of Sir John Romilly in the case of Hall v. Barrows, reported in (1862) 32
L.J. Ch. 548, and the judgment of Justive Leving in the case of Ewing and Company v. Grant Smith
and Company, reported in (1864) 2 Hyde's Rep. 185, observed in Paragraph 22 that in case of a
distinctive mark within the meaning of the Act, right to the exclusive use thereof can be acquired
immediately on the mark being used as a trade mark i.e., used by the trader in his business upon or
in connection with his goods and it is not necessary to prove either the length of the user or the
extent of the trade. The learned Judge further observed :
"It may be noted that the word "Monarch" in this case, as conceded by the Counsel at the Bar, is a
distinctive mark and therefore, it follows that if it is shown that this mark was used by the
petitioners corporation as a trade mark in this country upon or in connection with its food products

198
even for once prior to the use of that mark by the respondent company in 1961, and if there is no
evidence to show that this mark was abandoned by it, it would be entitled under section 18 of the Act
to apply for registration of that mark as its trade mark and also to oppose an application made by
any other trade for the purpose of registering that mark in his name."
Relying on this observation Shri Tulzapurkar submitted that once the trade mark of the respondents
was registered, then the respondents had a right to the exclusive use thereof, and it is not
permissible for any other person to make an application under sub-section (1) of section 18 of the
Act for registration of the mark which similar. It is not possible to accept such a wide submission. In
case, such submission is accepted, it would make the provisions of sub-section (3) of section 12 of
the Act entirely redundant. Sub-section (3) of section 12 of the Act enables the Registrar, in case of
honest concurrent use to permit the registration by more than one proprietor of trade marks which
are identical or nearly resemble each other in respect of the same goods. In my judgment, it is
impossible to accept the submission that the application filed by the petitioners was not
maintainable because the trade mark of the respondents was earlier registered and the mark
proposed to be registered is either identical or nearly resemble the mark of the respondents.
7. Shri Tulzapurkar then submitted that the petitioners have not established how they have adopted
the mark which they propose to register and urged that the petitioners have bodily lifted the mark of
the respondents. It was urged that the affidavit filed by Shri Bhattacharjee on April 7, 1975 does not
disclose how the petitioners have adopted the mark. The respondents in their affidavit challenged
the petitioners to disclose how the petitioners commenced use of the mark and Shri Bhattacherjee
filed another affidavit dated September 3, 1975, inter alia, stating that he was responsible for
adopting the trade mark which was conceived by another Kores Organisations abroad. Shri
Bhattacharjee further stated that the mark was adopted in the year 1954 and the mark is identical
with similar trade mark of other Kores Organisations abroad. It was also claimed that one such
trade mark is registered under No. 208094 in the international Register of Trade Marks maintained
by the Organisation Mondiale De La Propriote Intellectuals. Shri Tulzapurkar submitted that this
affidavit does not disclose as to how the petitioners are connected with the Kores International
Organisation and it is not sufficient for Shri Mehta to state across the Bar that the petitioner
Company is a subsidiary of Kores Organisation. Shri Tulzapurkar also urged that there is no
material on record to indicate that the Kores Organisation abroad had adopted the identical mark in
the year 1954 and even assuming it to be so, it is not permissible for the petitioners to copy the same
and claim proprietorship for its use in India.
8. Shri Mehta, on the other hand, urged that the mark was registered in the year 1954 by the Kores
Organisations abroad and the petitioners have merely adopted the same for use in India from the
year 1959. In my judgment, there is no reason to discard the claim of Shri Mehta that the petitioner
Company is the sister concern of Kores International. Shri Mehta submitted that even assuming that
the petitioner Company has copied a foreign mark, that by itself, does not amount to a false claim to
proprietorship when the owner of the foreign mark has not claimed proprietorship of the mark in
India and in support of this submission reliance was placed on the decision in the case of Tm(1974)
RPC 692 Shri Tulzapurkar did not dispute that proposition but submitted that in such cases it is
necessary for the petitioners to establish that it has made reasonable enquiries as to whether any

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other person had made claim to the proprietorship. In my judgment, the submission urged on behalf
of the respondents that the petitioner Company is not proprietor of the mark and, therefore, cannot
maintain the application under sub-section (1) of section 18 of the Act is without any merit and
deserves to be repelled. It is possible that the contention was not very seriously pressed before the
Assistant Registrar and, therefore, not been dealt with by the Assistant Registrar in the impugned
order. In any event, I am not inclined to accept the submission that the application is not
maintainable.
9. It is now necessary to ascertain whether the order passed by the Assistant Registrar holding that
there is a bar under section 11(a) and section 12(1) of the Act to the registration of the mark is
correct or otherwise. Shri Mehta made a faint submission to urge that the conclusion recovered by
the Assistant Registrar on this point is not accurate because the two marks are not similar. It was
urged that in the trade mark No. 91882 which is registered under the name of the respondents, only
the hand of the typist girl is shown, whereas in the mark applied for by the petitioners, two hands of
the typist girls are shown. The typist girl in the mark of the respondents wears a hair bun at the back
of her neck, where as in the mark applied for, the typist girl wears bobbed hair at the back of her
neck and the hair are also turned up. The typist girl in the mark applied for wears of bow, while it is
absent in the mark registered. The back rest of the typist's chair in the trade mark registered is
absent from the trade mark applied for by the petitioners. Shri Mehta submitted that in view of
these differences, the finding of the Assistant Registrar that the two marks are likely to cause
deception and confusion amongst substantial number of persons is not correct. It is not possible to
accept this submission. It is true that the two marks are not exactly identical but it is difficult to hold
that the two marks are not similar marks. It is not necessary that the two marks must be exactly
identical but it is sufficient if the two marks are similar and have deceptive resemblance and
deceptive similarity. The goods sold under the two marks are identical and the goods sold are carbon
papers, typewriting ribbons and other stationary articles. The goods are sold on a large scale and are
available in any stationary shop. Shri Tulzapurkar is right in his submission that the goods are
known by the customers and the traders as bearing the mark of the typist girl and, therefore, the
similarity in the device of the typist girl is bound to cause deception and confusion in the mind of
the customers. In my judgment, the conclusion recorded by the Assistant Registrar on this aspect is
correct and deserves to be upheld.
10. The principal submission urged in support of the appeal by Shri Mehta is about the applicability
of sub-section (3) of section 12 of the Act to the facts of the case. Sub-section (3) of section 12 of the
Act reads as under :
"In case of honest concurrent use or of other special circumstances which, in the opinion of the
Registrar, make it proper so to do, he may permit the registration by more than one proprietor of
trade marks which are identical or nearly resemble each other (whether any such trade mark is
already registered or not) in respect of the same goods or description of goods, subject to such
conditions and limitations, if any, as the Registrar may think fit to impose."
It is now well-settled by the decision of the Supreme Court in the case of London Rubber Co. Ltd. v.
Durex Products Incorporated and another, that a mark which comes within the scope of section

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12(3) is not disentitled to protection in a Court by reason of its being similar to another trade mark,
whether registered or unregistered. It is also well-settled that section 12(3) of the Act permits the
registration of identical or similar trade marks in respect of same or same description of goods and
it is an exception to the prohibition of registration of similar marks contained in sections 11(a) and
12(1), and it over-rides the generality of prohibitions contained in these sections. Shri Mehta
referred to the well known decision in (Alex Pirle & Sons Ltd.)5 application reported in 49 R.P.C.
195. The appeal Court consisting of Master of the Rolls and Lord Justices Lawrence and Romar,
while considering the ambit of section 21 of the Trade Marks Act of England which is identical to
sub-section (3) of section 12 of the Act observed :
"The first thing to be borne in mind, in approaching that section, is that in cases of honest
concurrent user an application is being made to register a Mark which so nearly resembles a Mark
already on the Register that it is impossible to say that there is no reasonable probability of it
causing deception".
It was further observed :
"It must also be borne in mind that, if the Mark, as the applications are applying to register, it might
cause deception, but by the imposition of conditions and limitations all risk of deception would be
removed, the learned Registrar could impose such conditions and limitations under section 12".
The appeal Court strongly deprecated any attempt to limit by rigid Rules the exercise of the
discretion that is conferred upon the Registrar. The decision was carried in appeal before the House
of Lords and was upheld. Shri Mehta also cited the decision of the Comptroller-General in 61 R.P.C.
31.
11. From the decided cases, it can be gathered that the facts which are to be taken into account to
determine whether the mark is entitled to registration under sub-section (3) of section 12 of the Act
are as follows :
(1) The honesty of the concurrent use, (2) The quantum of concurrent use shown by the petitioners
having regard to the duration, area and volume and trade and to goods concerned, (3) the degree of
confusion likely to follow from the resemblance of the applicants' mark and the opponents' marks.
(4) Whether any instance of confusion have in fact been proved, and (5) the relative inconvenience
which would be caused to the parties and the amount of inconvenience which would result to the
public if the applicants' mark is registered.
It is obvious that the honesty in adoption and the user in sin-qua-non for considering the
applicability of sub-section (3) of section 12 of the Act. The knowledge of the registration of the
identical mark may be important factor but is not conclusive on the point of honesty of user. The
honesty of user is a commercial honesty and the circumstances which led to the adoption of the
trade mark in the first instance are of considerable importance to consider whether the use of the
mark is honest or otherwise. If the user from its inception was tainted then it would be difficult to

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purify it subsequently. With these well-settled principles, it is now necessary to examine whether the
petitioners establish the claim for registration under sub-section (3) of section 12 of the Act.
12. As mentioned hereinabove, the Assistant Registrar, in the impugned order, has relied upon 9
circumstances while refusing to exercise discretion to register the mark under sub-section (3) of
section 12 of the Act and it is necessary to examine each of the circumstances to determine the issue
as to what relief the petitioners are entitled to. The first circumstance relied upon by the Assistant
Registrar is that the petitioners have failed to establish user of the mark i.e. the device of the typist
girl since the year 1959. The petitioners produced "samples for test" and folders marked as "samples
for trial classic series" before the Registry to establish the claim that the said samples and folders
depicting the device of typist girl was introduced in the year 1959. The Assistant Registrar held that
the samples do not contain the device of typist girl and the carbon paper folders are referred to as
"Kores Carbon Papers" on samples. The observation of the Assistant Registrar is clearly faulty and
contrary to the evidence on record. At the hearing of the appeal, I directed the Registrar to produce
the original record and on perusal of the relevant documents it becomes clear that the samples
contained the device of typist girl so also the carbon paper folders and the carbon papers. The
Assistant Registrar has also observed that the petitioner Company is selling various products under
different trade marks such as "Kores lable" and the word "Kores" and the device of typist girl with
the word "Kores" are common features of the mark. In my judgment, the observation of the
Assistant Registrar that visual representation of the typist girl is not available on the samples and
the folders is clearly contrary to record and the conclusion is clearly erroneous and cannot be
sustained by a mere look at the samples and folders produced by the petitioners. The first ground
given by the Assistant Registrar for not exercising the discretion in favour of the petitioners is
clearly erroneous.
13. The second ground given by the Assistant Registrar is that the evidence led by the petitioners to
establish the user from the year 1959 is not acceptable and Shri Mehta very seriously challenged this
conclusion complaining that it is contrary to clear cut evidence on record. There is considerable
merit in the submission of the learned Counsel. The petitioners produced before the Assistant
Registrar the advertisement published in "Times of India" on May 13, 1959 and another
advertisement published on June 13, 1959 and the advertisements clearly establish that the device of
the typist girl was used by the petitioners in the year 1959. The petitioners also furnished the figures
of annual sales turn-over from the year 1959 till-October 1974 in the affidavit of Shri Bhattacharjee
sworn on April 7, 1975. The annual sales turn-over of the petitioner Company in the year 1959 was
Rs. 1,10,41,515/-, while in October 1974 it rose to Rs. 7,64,05,106/-. The affidavit also sets out the
advertisement expenses incurred during the year 1959 to October 1974. The advertisement expenses
for Company's products in the year 1959 were Rs. 58,270/-, while in October 1974, the expenses
jumped up to Rs. 1,51,421. The Assistant Registrar declined to place any reliance on these figures
solely on the ground that the figures of the sales and the figures of the advertisement expenses are in
respect of products of the petitioner Company and the petitioner Company has failed to give
break-up in respect to sales and advertisement expenses for the goods for which the mark is
proposed to be registered. It is true that Shri Bhattacharjee in his affidavit stated that out of the
figures of sales, approximately, 25% represents the total value of the sales of the goods under the
trade mark in question and in paragraph 14, it was claimed that about 50% to 75% of the

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advertisement expenses related to advertisement of the trade mark "Typist Girl". Shri Tulzapurkar
submitted that the failure of the petitioner Company to give break-up in respect of sales and
advertisement expenses of goods sold under the trade mark with the device of typist girl is fatal to
the claim to get the mark registered under sub-section (3) of section 12 of the Act. It is not possible
to accept such a broad proposition. It is true that it would have been better if the petitioners could
have supplied the break-up of the sales and advertisement expenses but the conclusion of the
Assistant Registrar that the figures given on percentage basis are not admissible and, therefore,
should be ignored is not accurate. There is ample evidence on record in the shape of affidavits of
various traders and dealers to indicate that the goods of the petitioner Company under the mark of
typist girl were sold on large scale. The reference can be conveniently made to the affidavits of (1)
Ram Khanna of M/s. B.K. Khanna and Company Stationers, Delhi, (2) Shashi Mody of M/s.
Imperial Stationery Mart, Bombay, (3) L.S. Sreekanta Rao of M/s. Sesha & Company, Bangalore and
(4) Bhimraj Rathi of M/s. Sakhai Maniklal of Calcutta to establish that the petitioner Company was
trading under the mark of typist girl on large scale and the approximate amount suggested by Shri
Bhattacharjee cannot be branded as without any substance.
14. The next ground given by the Assistant Registrar is that the evidence on record is not sufficient
to establish the correct nature of trade mark as actually used by the petitioners. The Assistant
Registrar proceeded on the assumption that the petitioner Company did not produce a single
instance of the use of proposed trade mark, but, as mentioned hereinabove, the observation is
clearly erroneous. The Assistant Registrar observed the evidence on record shows that the mark
used by the petitioners represents a device of a typist girl clad in sari at the typewriter with the word
"Kores" within the circle appearing as a prominent feature of the mark. This observation of the
Assistant Registrar is contrary to the evidence on record and it is clear that the Assistant Registrar
has misread the evidence. The petitioners, in support of their case, have relied upon orders given by
various traders for the goods manufactured by the petitioners and the original orders written on the
letter-heads of various traders were produced. The letter head of R.M. Jasjee Mohammed Ali &
Brothers, Paper Merchants, Quilon, State of Kerala, booking order on March 12, 1960, the letter
head of S. Kadharsa Rowther, General Merchant, Tiruchirapalli, booking order on November 3,
1960, the letter head of A.B. Abdul Gafoor & Bros., General Importers and Wholesale Dealers,
Dindigul, ordering the goods of the petitioners on March 25, 1960, and the letter head of C.R.
Natarajan & Son, Booksellers, Stationers & Paper Merchants, Coimbatore, booking order on
December 2, 1960 indicate that on the letter heads a device of the typist girl clad in Sari and sitting
at the typewriter is printed with the word 'Kores'. It is not in dispute that the picture of the typist girl
clad in Sari sitting at the typewriter is on the letter heads of various traders and the petitioners had
nothing to do either with the letter heads of with the device of the typist girl clad in sari. The orders
written on letter heads of various traders were produced by the petitioners in support of their claim
that the petitioners were selling the goods from the year 1959 to various traders all over the country
and the Assistant Registrar was clearly in error in assuming that the device of the typist girl clad in
Sari on these letter heads was used by the petitioners themselves. The assumption of the Assistant
Registrar clearly indicates that the evidence was misread and Shri Tulzapurkar could not dispute
this position. The Assistant Registrar sounded a suspicion that the mark could not have been used
from the year 1959 as otherwise the petitioners would not have waited for a period of 10 years to
make the application. The suspicion voiced by the Assistant Registrar is entirely contrary to the

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clear-cut evidence on record. As mentioned hereinabove, the petitioners produced the

advertisement published in the Times of India in the year 1959 itself and the sales figures from the
year 1959 onwards and the affidavits of the traders and the orders booked by them from time to
time, leaving no manner of doubt that the mark was used by the petitioners right from the year
1959.
15. The next ground relied upon by the Assistant Registrar for declining to exercise discretion under
sub-section (3) of section 12 of the Act is that the petitioners had filed the application for
registration of the mark consisting of the word "Kores" and the device of a typist girl vide
Application No. 271040 in which the petitioners claimed user since the year 1968. The Assistant
Registrar felt that the petitioners have disclaimed in the said application of the user of the device of
a typist girl and have also claimed the user only from the year 1968. The reasoning of the Assistant
Registrar in this connection is entirely faulty and the Assistant Registrar has not properly
appreciated the effect of filing of the application in the year 1968, Application No. 271040 was filed
by the petitioners on April 1, 1971 in respect of the product 'Hecto Carbon 640' and in the
advertisement published in the Trade Marks Journal on February 1, 1974, it is recited that the user
is claimed by the petitioners since the year 1968. The mark was proposed to be registered in respect
of carbon papers. Now, the mark was advertised by the Registrar after imposing a condition that the
registration of the mark shall give no right to the exclusive use of the device of a girl typing and the
word "Hecto Carbon". Shri Mehta submitted that the conclusion of the Assistant Registrar that the
device of a typist girl was used only from the year 1968 by reliance of this advertisement is
inaccurate because the petitioners claimed the user since the year 1968 of the mark "Kores" with the
device of the typist girl and the words "Hecto Carbon 640". The learned Counsel submitted that it is
a far cry to say that because the user was claimed in respect of this particular mark since the year
1968, therefore, it is to be assumed that the claim of the petitioners that the device of the typist girl
was sued form the year 1958 is not proved. The submission of the learned Counsel is correct. The
Assistant Registrar has clearly confused the claim of the petitioners that the device of typist girl is
used from the year 1958 in respect of the stationery articles with the claim made in the
advertisement published on February 1, 1974. The finding of the Assistant Registrar that the
petitioners have actually disclaimed in the Application No. 271040 the user of the device of a typist
girl is also inaccurate. The Registrar has been given powers to register the mark subject to
disclaimer under section 17 of the Act and the Registrar may require the Proprietor to disclaim any
right to the exclusive use of a part or of all or of any portion of the mark while registering the mark
provided the conditions under section 17 of the Act are attracted. Section 17(b) enables the Registrar
to impose the condition of disclaimer of the Proprietor in cases where a trade mark contains any
matter which is common to the trade or is otherwise of a non-distinctive character. Shri Mehta
submits that the Registrar imposed a condition on the petitioners that the petitioners shall not claim
any right to the exclusive user of the device of a girl typing and the word "Hecto Carbon" while
publishing advertisement on February 1, 1974. The imposition of such condition cannot be
construed against the petitioners for exercise of discretion under sub-section (3) of section 12 of the
Act. The Assistant Registrar has clearly overlooked that the application filed by the petitioners on
October 13, 1969 and out of which the present appeal arises, the petitioners are claiming registration
of the mark of a device of a typist girl only, while Application No. 271040 was in respect of a mark
consisting of word 'Kores' and device of a typist girl. The latter application filed in the year 1971 was

204
subsequently withdrawn by the petitioner. In my judgment, in these circumstances, it is futile to

hold that the petitioners have disclaimed the user of the devise of a typist girl in the subsequent
application made in the year 1971.
16. The Assistant Registrar then held that the petitioners have filed number of affidavits of the
traders but no credence could be given to the same and the evidence produced by the petitioners is
not clear, cogent and specific and there is every reason to doubt the honesty of the concurrent user.
Shri Mehta very strongly criticised this finding of the Assistant Registrar by complaining that the
Assistant Registrar did not care to peruse the affidavits filed on behalf of the petitioners and merely
rejected the same by observing that no credence can be given without assigning any reason
whatsoever. There is considerable substance in the complaint made by the learned Counsel.
17. The petitioners tendered affidavit of Behram Ardeshir Mulla, senior Sales Representative of the
Bombay Branch of Metal Box Company India Limited and Shri Mulla claims that Metal Box
Company manufacturers and supplies metal boxes in which the petitioners sell their 'Typist Girl"
brand ribbons for the last over 14 years. The affidavit was sworn on April 7, 1975 and Shri Mulla
states that for last over 14 years, his Company manufactured several lakhs of metal boxes bearing
the device of typist girl. Affidavit of February 14, 1975 of Shri Ram Khanna, the partner of the firm of
M/s. B.K. Khanna & Company Stationers at Nai Sarak, Delhi was also filed. Shri Khanna stated that
his firm has big business in Carbon Papers, Typewriter Ribbons, Stencils for duplicating machines,
duplicating ink etc. bearing the trade mark "Typist Girl" of the petitioners Company since the year
1959. Shri Khanna claims that many small dealers and consumers of the aforesaid goods visit his
shop and ask for the goods by the trade name 'Typist Girl'. Shri Khanna further stated that he had
never seen articles like carbon papers, typewriter ribbons, duplicating ink, etc. of Khoday Eshwarsa
& Sons of Bangalore using the trade mark device of typist girl. The turnover of Shri Khanna is
approximately Rs. 8 lakhs aggregating during the last 16 years prior to the filing of the affidavit.
Affidavits making identical claim are also filed by Shri Shashi Mody, Proprietor of the firm of M/s.
Imperial Stationary Mart, Sarder Vallabhbhai Patel Road, Bombay, Shri L.S. Sreekant Rao, a
partner of the firm of M/s. Sesha & Co., Bangalore and Mr. Bhimraj Rathi, a partner of the firm of
M/s. Shakhal Maniklal of Calcutta.
18. Affidavits dated August, 13, 1975 sworn by Shri Naresh Tull, the partner of M/s. Rattan Stores,
Amritsar and Shri R. Jayaram, the partner of M/s. Narayan 7 Co., Madras, are also filed by the
petitioners and the said deponents also claimed that they traded in the goods of the petitioners from
the year 1959 and the goods were sold and known in the market by the mark of typist girl and they
had not come across the goods manufactured by the respondents. In my judgment, the Assistant
Registrar was not right in rejecting all these affidavits by merely observing that no credence could be
given to the same. The respondents have not suggested any reasons why these traders dealing with
the goods of the petitioners in various part of the country have come forward to file false affidavits.
Shri Tulzapurkar was also unable to suggest any reason for discarding these affidavits have and
except stating that the persons who filed the affidavits did not produce any documentary evidence in
support of their claim. Surely, the documentary evidence could have been produced provided the
respondents called upon the said deponents to produce the same. Shri Tulzapurkar admitted that no
application was made before the Assistant Registrar demanding that a person who filed affidavits

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should be called upon to produce documentary evidence in support to their claim. In my judgment,
there is no warrant to turn down the claim made by various deponents on the ground that their
evidence is not clear, cogent and specific. The evidence is normally produced before the Assistant
Registrar in Trade Mark proceedings in the shape of affidavit and if the affidavits are to be discarded
on such vague and untenable grounds, then it would lead to denying of justice. In my judgment, the
Assistant Registrar was clearly wrong in not considering the claim made in the affidavits and
rejecting the affidavits outright. In my judgment there is no warrant to discard the affidavits and the
claim made in the affidavits deserves acceptance.
19. The last ground suggested by the Assistant Registrar for refusal to exercise discretion for
concurrent registration of the mark is that the petitioners had prior knowledge of the trade mark of
the respondents and which has been used from the year 1937-38 onwards and registered in the year
1944. Knowledge of the registration of the respondents mark is a relevant factor but when once the
honesty of the user has been established, the fact of knowledge loses much of its significance. The
adoption and use by a trader of a mark maybe honest despite his knowledge of a similar mark
already registered (Paddie's Application)6 (1944)61 RPC 32 at p. 36 in my judgment, the Assistant
Registrar should not have declined to exercise the discretion merely on the ground that the
petitioners had prior knowledge of the respondent's trade mark. Shri Mehta in this connection also
pointed out that Shri S.R. Bhattacharjee clearly stated in his affidavit dated September 3, 1975 that
at the time of the adoption of the mark, he was not aware of the existence of the respondent's trade
mark and he had no knowledge whatsoever about the mark of the respondents. In my judgment,
there is no reason to discard the claim made by Shri Bhattacharjee in this connection. The Assistant
Registrar has not given any reason for recording the conclusion that the petitioners have prior
knowledge of the respondent's trade mark save and except suggesting that the mark of the
respondent was registered in the year 1944. In my judgment, 7 or 8 reasons suggested by the
Assistant Registrar for refusal to exercise discretion under sub-section (3) of section 12 of the Act in
favour of the petitioners are clearly untenable and irrelevant. Some of the reasons furnished, as
found earlier, are contrary to the clear-cut evidence on record and are given by mis-reading the
evidence on record. In my judgment, none of the reasons furnished by the Assistant Registrar are
sustainable and it is not possible to deprive the petitioners of the advantage of sub-section (3) of
section 12 of the Act on any of those reasons.
20. Shri Tulzapurkar suggested two or three reasons to sustain the order of the Assistant Registrar.
It was urged that the adoption of the mark was not honest and there is no denial on the part of the
petitioners to the claim made by the respondents that the mark was copied by the petitioners from
the registered trade mark of the respondents. The submission is not correct because Shri
Bhattacherjee has stated in his affidavit dated September 3, 1975 that he had no knowledge
whatsoever of the trade mark of the respondents and, therefore, there was no question of the
petitioners being inspired by the essentials of the respondents' trade mark. Shri Tulzapurkar also
urged that the petitioners are not the Proprietors and as the Proprietorship of the mark used by the
petitioners vests in Kores International Organisation, the user of the said mark by the petitioners
cannot be termed as dishonest. The submission proceeded on the basis that the petitioner Company
had not established that it was the sister concern or subsidiary organisation of the Kores
International Organisation. I have already dealt with this submission in the earlier part of this

206
judgment and I have come to the conclusion that the petitioners are the Proprietors of the mark
used by them from the year 1959. Shri Tulzapurkar then submitted that the evidence on record
about the user of the mark by the petitioners from the year 1959 is neither cogent, nor sufficient and
in support of the submission, it was urged that no reliance should be placed on the affidavits of the
traders filed in support of the application, the advertisement issued by the petitioners in "Times of
India" in the year 1959, and the samples and the folders produced by the petitioners before the year
1959. It is impossible to accede to this submission. As mentioned hereinabove, the samples and
folder produced by the petitioners before the assistant Registrar clearly establish the user of the
mark and there is ample evidence to establish that the samples and the folders were published and
distributed in the year 1959. There is no reason to discard the claim made by various traders spread
all over the country on the solemn affirmation and the contention that the affidavits should be
discarded because of non-production of documentary evidence in support of the claim cannot be
entertained.
21. Shri Tulzapurkar also urged that the Assistant Registrar had ignored the affidavits filed on behalf
of the respondents and that submission is correct. Indeed, the Assistant Registrar has not bothered
to deal with any of the affidavits either on behalf of the petitioners or the respondents in the
impugned order. Shri Tulzapurkar invited my attention to the affidavit of Chakravati Sandill,
Chemist cum-Chemical Engineer, employed with the respondents from the year 1963 onwards. The
Affidavit is sworn on August 28, 1974 and Shri Sandill claims that from the year 1954 he was
employed as Chief Chemist with Bharat Carbon and Ribbon Manufacturing Company and as a part
of his duty came across the stationery products and brands of various manufacturers including the
respondents. Shri Sandill claims that the Trade Mark Symbol of device of "typist girl and typewriter"
was used by the respondents and further proceeded to state that the mark proposed to be registered
by the petitioners is identical in all material aspects of distinctive features with that of the mark of
the respondents. It is not possible to place reliance on the affidavit of Shri Sandill because he is in
the employment of the respondents from the year 1963 and has an interest in the result of the
proceedings for registration of the mark. Shri Tulzapurkar also invited my attention to the affidavit
dated August 31, 1974 by Shri G.N. Dattani, trading as Jayant Brothers at Bangalore and it was
deposed in this affidavit that Dattani came in contact with the respondents in the year 1954 and
agreed to supply labels and manufacturing packing materials to the respondents. Shri Dattani stated
that he has seen the device of the "Typist girl and typewriter" from the year 1954 and then proceeded
to state that on perusal of the mark of the respondents and the proposed mark of the petitioners, his
immediate reaction was that in all essential and distinctive respects both the trade marks are
deceptively similarly to each other. Reliance was also placed on the affidavit dated August 31, 1974
of Shri R.V.K. Narasimhaiah of Bangalore. The deponent is working in Accounts section of the
respondents from the year 1946-47 onwards and is still in the employment of the respondents on the
date of the filing of the affidavit. Shri Narasimhaiah states that the proposed mark of the petitioners
is deceptively similar to the mark of the respondents. It is not possible to place reliance on the
affidavit of Shri Dattani and Shri Narasimhaiah because Dattani has business connections with the
respondents over several years, while Narasimhaiah is in the employment of the respondents. The
two affidavits mainly give their assessment about the similarly of the mark and such affidavits
cannot determine the issue as to whether the two marks should be registered under sub-section (3)
of section 12 of the Act.

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22. Realising that the affidavits of Shri Sandill, Dattani, and Narsasimhaiah would not help the
respondent in defeating the claim of the petitioners under section 12(3) of the Act. Shri Tulzapurkar
relied upon the affidavit of Shri K.K. Mehta, partner of Eastern Agencies, Madras, sworn on October
3, 1974. Shri Mehta claims that he is dealing in Stationery articles since the year 1955 and secured
some business from the respondents from the year 1967 onwards. Shri Mehta further states that the
respondents are enjoying reputation in respect of their mark and the mark of the petitioners is
deceptively similar. Reliance is also placed on the affidavit of Palanichami of Tirunelveli, South
India, stating that being impressed with the superior quality of the stationery goods of the
respondents, an agency was secured in the year 1964 and the deponents is familiar with the trade
mark of the respondents. Another affidavit of Shri Om Prakash Mohan, Managing Director of Kiran
Exports Private Limited, New Delhi, is filed claiming familiarity with the mark of respondents. Shri
Mohan further stated that recently he has seen advertisement of the petitioners in some Newspapers
and the mark of the petitioners is deceptively similar. The affidavit of Alimahomad Ahmed
Thanawala, sworn on February 15, 1976, affidavit of Shri S.V. Oza, sworn on March 22, 1976 and
affidavit of Shri T.R. Nirul sworn on March 22, 1976 are filed on behalf of the respondents. I would
deal with the affidavits of Shri Oza and Shri Nirula at a latter stage, but on perusal of the affidavits of
Mehta, Palanichami, Om Prakash Mohan, and Alimahomed Thanawale, it can be concluded that the
claim made in the affidavits does not disentitle the petitioners to seek relief under sub-section (3) of
section 12 of the Act, even after accepting claimed in the affidavits of these persons.
23. Reliance was also placed on these affidavits by Shri Tulzapurkar to claim that not only the
concurrent user of the mark from the year 1959 was not established but on the other hand, the
evidence filed by the respondents disproves that claim. It is impossible to accede to this submission
because none of the affidavits positively state that they were not aware of the sale of the goods by the
petitioners under the mark of device of typist girl since the year 1959. Om Prakash Mohan merely
claims that very recently he has seen an advertisement of the petitioners with the device of typist girl
but this statement is as vague as possible. What Shri Mohan thinks to be a recent time is not
disclosed. The claim of Shri Mohan that he had seen advertisement very recently is belied by the fact
that the advertisement of the petitioners with the device of a typist girl was published in "Times of
India" in the year 1959 itself.
24. Shri Tulzapurkar placed strong reliance on affidavits of Shri S.V. Oza an Shri T.R. Nirula to
claim that there are instances of confusion in the minds of the traders and customers in respect of
the goods of the petitioners and the respondents because of the similarity of the goods. Shri
Tulzapurkar urged that in view of this positive evidence that the two similar marks have led to the
confusion because of the identity of the goods and the identity of the area in which they were sold,
the Assistant Registrar was justified in declining to exercise power under sub-section (3) of section
12 of the Act. Shri Oza has stated in the affidavit that he confirms having written letter on March 12,
1976 to the respondents and the letter written on inland letter is annexed to the affidavit. Shri Oza
has stated in this letter that he had been regularly using for several years, the typewriting ribbons of
'Typist Girl' brand of the respondents. Shri Oza claims that of late, he found in a number of popular
News Papers and advertisement of the petitioners in respect of identical goods similar mark of typist
girl. Shri Oza further stated out of curiosity, he tried to seek clarification from a number of
stationary dealers in Bombay but to his utter disappointment, none could give him satisfactory reply

208
as to how the identical trade mark was used by both the concerns. Oza claimed that being unable to
tolerate the mental turmoil caused by this confusion, puzzle and doubt, he had taken the course of
writing letter directly to the respondents.
25. Shri Nirula from New Delhi, in his affidavit, states that the user of the similar mark by the
petitioners has caused great confusion in his mind and he apprehends that the same confusion
would be caused in the minds of the consumers of the goods. The reliance of Shri Tulzapurkar of
these two affidavits to claim that there was instance of confusion in the minds of the customers is
entirely inappropriate. The plain reading of Oza's letter leaves no manner of doubt that it was
written only to serve the purpose of the respondents. Oza claims that out of curiosity, he contacted
number of Stationery dealers but has very shrewdly not disclosed the name of any one of them. It is
interesting to observe that though the application for registration by the petitioners was not given in
the year 1969, it is for the first time in March 1976 that Oza felt some confusion in his mind because
of the advertisement published by the petitioners. The petitioners are using the mark right since the
year 1959 and the claim of Oza that he saw it just recently prior to March 1976 cannot be believed.
An impression is left on perusal of the letter that Oza was out to oblige the respondents and the
letter was created merely to suit the claim of the respondents. It is impossible to place any reliance
on the letter of Shri Oza. As regards the affidavit of Shri Nirula. It is clear that Nirula claims that two
marks caused confusion in his mind and apprehended that the said confusion would be cause also in
the minds of the customers. Nirula is dealing in stationery articles over several years as per his claim
and it is impossible to believe that only in March 1976 that he felt confused because of the user of
the mark by the petitioners. The evidence of confusion in the minds of the traders and the customers
must be substantiated and it is impossible to place reliance on such stray and vague statement made
by Nirula in the affidavit. In my judgment, there are no concrete instances of confusion and even
otherwise, the fact that there is some confusion in the user of the two marks is not sufficient to
override the provisions in section 12(3) of the Act. Though the hardship and inconvenience to the
public is relevant factory while considering the application of section 12(3) of the Act, the hardship
which would be cause by refusal to exercise the discretion in favour of the petitioners far exceeds
some hardship which maybe caused to the customers. In my judgment, in the present case, there is
no evidence whatsoever to establish instances of confusion and, therefore, the question of hardship
to the customers does not arise and even otherwise some slight hardship to the customers is not
sufficient to deprive the petitioners of the advantage of the mark.
26. In my judgment, the petitioners have proved beyond doubt the user of the proposed mark since
the year 1959 and have also established that the adoptation of the mark was honest. The honesty of
the concurrent user is also established and the quantum of the concurrent user shown by the
petitioners is substantial both in respect of volume of trade and the area in which the trade is carried
out. The degree of confusion is negligible and in my judgment, there would be no public
inconvenience by registration of the mark of the petitioners. In my judgment, inconvenience which
would be cause to the petitioners far exceeds the alleged inconvenience which may result to the
public, if the mark of the petitioners is registered. In my judgement, all the requisite conditions for
registration of the mark of the petitioners under sub-section (3) of section 12 of the Act are satisfied
and, therefore, the order of Assistant Registrar refusing to register the trade mark under sub-section
(3) of section 12 of the Act deserved to be set aside.

209
27. Shri Tulzapurkar, at this juncture, submitted that without prejudice to his condition, that the
discretion under sub-section (3) of section 12 of the Act should not be exercised, it would be
desirable to impose condition upon the petitioners before registration of the mark. The learned
Counsel urged that the mark proposed to be registered is pure and simple device of a typist girl and
the mark should not be registered unless the petitioners are directed to register the word "Kores"
along with the device of the typist girl. The learned Counsel suggested that the petitioners should
use the word 'Kores' in the immediate vicinity of the typist girl and that should be imposed as a
condition for exercise of jurisdiction under section 12(3) of the Act. Shri Mehta opposed the
submission by urging that the petitioners have used the device of typist girl from the year 1959 and
all along the petitioners have printed the word "Kores" on the items sold by the petitioners and so
also on the covers, carbons, samples and folders. Shri Mehta submitted that if the condition
suggested by Shri Tulzapurkar is added, it would lead to further litigation as the respondents would
always claim that the work "Kores" is not written close to the device of the typist girl or in
sufficiently large print, and to avoid multiplicity of litigation, such condition should not be imposed.
Shri Mehta submitted that it is difficult to conceive that the petitioners would not publish the word
'Kores' and would merely use the device of the typist girl while effecting the sales of their goods. I
find considerable merit in the submission of Shri Mehta and, in my judgment, it would not be
proper to impose any such condition as suggested by Shri Tulzapurkar.
28. Accordingly, the appeal succeeds and the order dated January 1, 1977 passed by the Assistant
Registrar of Trade Marks is set aside and the Assistant Registrar is directed to register the mark of
the petitioners as sought by Application No. 259975B dated October 13, 1969. In the circumstances
of the case, there will be no order as to costs.

210
M/S. Itc Limited vs Nestle India Limited
Madras High Court

C.S.No.2
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Reserved On 21.01.2020
Pronounced On 10.06.2020
CORAM
THE HON'BLE MR.JUSTICE C.SARAVANAN
C.S.No.231 of 2013
M/s. ITC Limited,

ITC Centre, 4th Floor,
No.760, Anna Salai,
Chennai – 600 002.
rep. by its Constituted Attorney
Mr.S.Satyanathan ... Plai
Vs.
Nestle India Limited,

No.769, Spencer Plaza,
Phase-1, 6th Floor,
Anna Salai, Mount Road,
Chennai – 600 002. ... Defe
Prayer:- This suit filed under Order IV Rule 1 of O.S. Rules and O
VII Rule 1 of C.P.C., read with Sections 27, 134 & 135 of the Trad
Marks Act, 1999, for the following reliefs:-
(a) a permanent injunction restraining the defendant by

themselves, their Directors, principal officers, successor
business, assigns, servants, agents, distributors, retaile
stockiests, advertisers or any one claiming through them f
____________
http://www.judis.nic.in
Page No 1 of 112
C.S.No.
in any manner passing off or enabling others to pass off th

products i.e. noodles as and for the plaintiff's noodles by
of the offending mark MAGICAL MASALA or any mark
similar to plaintiff's mark MAGIC MASALA or in any other
manner whatsoever;
(b) The defendant be ordered to surrender to plaintiff for the

purpose of destruction all goods including containers, car

211
packs labels, prints, blocks, dyes, plates, moulds and oth

material bearing the mark/name MAGICAL MASALA which
is deceptively similar to the plaintiff's MAGIC MASALA;
(c) a preliminary decree be passed in favour of the plaintiff

directing the defendant to render account of profits made
use of offending mark MAGICAL MASALA and final decree
be passed in favour of the plaintiff for the amount of pro
thus found to have been made by the defendant, after latte
have rendered accounts;
(d) The defendant be directed to pay to the plaintiff as

compensatory and punitive damages a sum of Rs.10,05,000/-
for the acts of passing off committed by them; and
(e) for costs of the suit.
For Plaintiff : Mr.P.S.Raman, Senior Counsel &

Mr.Manishankar, Senior Counsel
for Mr.Arun C. Mohan
For Defendant : Mr.Hemanth Singh, Senior Counsel &

M/s.Mamtha Jha for
M/s.Gladys Daniel.
JUDGMENT
____________ http://www.judis.nic.in Page No 2 of 112 C.S.No.231 of 2013 The plaintiff has filed
the present suit for the following reliefs:- i. a permanent injunction restraining the defendant by
themselves, their Directors, principal officers, successors-in- business, assigns, servants, agents,
distributors, retailers, stockiests, advertisers or any one claiming through them from in any manner
passing off or enabling others to pass off their products i.e. noodles as and for the plaintiff's noodles
by use of the offending mark “Magical Masala” or any mark similar to plaintiff's mark “Magic
Masala” or in any other manner whatsoever;
ii. The defendant be ordered to surrender to plaintiff for the purpose of destruction all goods
including containers, cartons packs labels, prints, blocks, dyes, plates, moulds and other material
bearing the mark/name “Magical Masala” which is deceptively similar to the plaintiff's “Magic
Masala”; iii. a preliminary decree be passed in favour of the plaintiff directing the defendant to
render account of profits made by use of offending mark “Magical Masala” and final decree be
passed in favour of the plaintiff for the amount of profits thus found to have been made by the
defendant, after latter have rendered accounts;
iv. The defendant be directed to pay to the plaintiff as compensatory and punitive damages a sum of
Rs.10,05,000/- for the acts of passing off committed by them; and v. for costs of the suit.

212
2. The plaintiff was represented by Mr.P.S.Raman, the learned senior counsel and by
Mr.C.Manishanker, the learned senior counsel. They made elaborate submissions on behalf of the
plaintiff. They were ____________ http://www.judis.nic.in Page No 3 of 112 C.S.No.231 of 2013
assisted by the Mr.Arun C.Mohan and Ms.Divya Bhatt of M/s. Arun C.Mohan & Brinda C.Mohan,
Advocates, the counsel on record on behalf of the plaintiff.
3. On behalf of the defendant, Mr.Hemant Singh, learned counsel made elaborate submissions. He
was assisted by Ms.Mamta Jha, and Ms.Gladys Daniel, Advocates, the counsel on record on behalf of
the defenant.
4. Plaintiff a well-known company which was originally engaged in the tobacco business but had
successfully diversified into Hospitality Industry, Paper & Paper Board Industry, Agri Based
Business industry and later forayed into the Fast Moving Consumer Goods Sector (FMCG) in 2010.
5. The dispute between the plaintiff and the defendant in the present suit arises on account of
adoption of the expression “Magical Masala” by the defendant for marketing its instant noodles
viz.“Maggixtra -delicious Magical Masala” in 2013. The plaintiff had ____________
http://www.judis.nic.in Page No 4 of 112 C.S.No.231 of 2013 earlier introduced Sunfeast Yippee!
noodles in two varieties, namely, “Classic Masala” and “Magic Masala” in 2010.
6. Screen shot of the respective wrappers of the plaintiff and the defendant which were marked as
Exhibit Nos.P14 and P21 are reproduced below:-
Plaintiff's wrapper Defendant's wrapper Exhibit P19 Exhibit P21
7. It is the case of the plaintiff that it had successfully launched “Sunfeast Yippee!
noodles” in two variants namely “Magic Masala” and “Classic Masala” in the year
2010 and that the adoption of the deceptively similar expression “Magical Masala" by
the defendant in the ____________ http://www.judis.nic.in Page No 5 of 112
C.S.No.231 of 2013 year 2013 for marketing their noodles with the aforesaid
offending trademark albeit sub-brand “Magical Masala" amounted to passing-off by
the defendant.
8. It is submitted that the expression “Magic Masala” forms the predominant feature of the
plaintiff’s composite trademark “Sunfeast Yippie! noodles Magic Masala”.
9. It is submitted that the expression “Magic Masala” had become distinctive and was immediately
identified by the trade and the public as that of the plaintiff. It is submitted that due to superior
quality and affordability, instant noodle bearing the aforesaid expression “Magic Masala” enjoyed
reputation and immense goodwill and translated into huge turnover and stupendous success.
10. It is stated that the defendant is a pioneer in the instant noodles in the country and had
introduced “2-Minutes Maggi Noodles” in India in the early 80’s and has practically enjoyed a
monopoly. It has introduced several variants during the course of time and in 2013, it

213
____________ http://www.judis.nic.in Page No 6 of 112 C.S.No.231 of 2013 introduced another

variant, viz. “Maggi xtra -delicious Magical Masala” to trade on the goodwill of the plaintiff.
11. It is the case of the plaintiff that its product “Sunfeast Yippee!noodles Magic Masala” was well
received and the distributors, traders and the consumers.
12. It is further submitted that general public associated “Sunfeast Yippee! noodles Magic Masala”
with the expresson “Magic Masala”. It is submitted that brand “Magic Masala” was a run-away
success for the plaintiff and had cornered about 12.5% of the market share in the instant noodle
segment within a short period of time.
13. Threatened by the plaintiff’s stupendous success, defendant launched “Magical Masala” as a
sub-brand. It is further submitted that the defendant copied the expression “Magic Masala” by
slightly tweaking it by adding a syllable “al” to the word “ Magic”.
14. It is the case of the plaintiff that the use of the expression ____________
http://www.judis.nic.in Page No 7 of 112 C.S.No.231 of 2013 “Magical Masala” by the defendant was
intended to pass-off defendant’s “Maggi xtra -delicious Magical Masala” as that of plaintiff’s
“Sunfeast Yippee! noodles Magic Masala” which is recognised as “Magic Masala”. This according to
the plaintiff amounted to passing-off and therefore the plaintiff has prayed for the above reliefs.
15. The defendant has filed a detailed written statement. In the written statement, the defendant has
stated that the plaintiff has used the expression “Magic Masala” as a flavour descriptor for the
noodle and it was not used as a trademark.
16. It is further submitted that the two words “Magic” and “Masala” are common to the trade and
are not distinctive and therefore cannot be appropriated. It is further submitted that there is no
passing-off as plaintiff’s brand “Maggi” was to large a brand to ride on a non- exisitng brand called
“Magic Masala”.
17. The expression “Magical Masala” was a flavour descriptor ____________

http://www.judis.nic.in Page No 8 of 112 C.S.No.231 of 2013 and therefore the defendant was well
within its right when it adopted “Magical Masala” in 2013.
18. According to the defendant, even otherwise it adopted the word “Magic” for some of its products
much prior to the plaintiff. It is further submitted that statutorily also the plaintiff cannot restrain
the defendant from using the expression “Magical” in view of Section 35 of the Trade Marks
Act,1999. I shall refer in some depth to the content of the written statement in the course of the
narration in this judgment.
19. Following elevan issues were framed by this Court on 28.04.2016:-
1. Whether the plaintiff is entitled to protect its mark “Magic Masala” used in respect
of instant noodles?

214
2. Whether the action of the defendant in adopting “Magical Masala” for one of its
instant noodles is bona fide?
3. Whether the defendant has proved that “Magic Masala” is descriptive as claimed
by it?
4. Whether the defendant is estopped from contending that “Magic Masala” is

descriptive?
5. Whether the plaintiff enjoys Trademark Rights in the expression “Magic Masala”?
____________ http://www.judis.nic.in Page No 9 of 112 C.S.No.231 of 2013
6. Whether the use of the expression “Magical Masala” for the defendant Maggi noodles results in
passing-off?
7. Whether “Magic Masala”, “Chinese Masala” and “Classic Masala” are merely flavour descriptors
or variants and are non-proprietary in nature?
8. Whether the defendant is the prior user of the expression “Magic” in the flavour world in relation
to food category?
9. Whether the expression Magic/Magical is common to the trade in relation to flavour variants in
the food category?
10.Whether the plaintiff is guilty of material concealment and misrepresentation and if so to what
effect?
11.Whether the plaintiff is estopped from claiming trademark rights in “Magic Masala” having
admitted it to be a flavour descriptor in the annual reports?
20. For the recording of evidence, Mr.J.Krishnamoorty, District Judge (Retd.) was appointed as a
Commissioner. The learned District Judge (Retd.) recorded the evidence painstakingly over a period
of time.
21. At the time of filing of the suit, the plaintiff filed only nine documents. However, during the
course of the trial, the plaintiff introduced other twelve documents apart from Exhibit P1 being
authorisation given to the PW1 to depose evidence on behalf of the plaintiff.
22. Exhibits P1 to P22 were marked during chief-examination of plaintiff’s witnesses. Exhibits P23
to P37 were marked during cross examination of DW1. In all, the plaintiff marked Exhibits P1 to P37
during the course of the trial.

215
23. On behalf of the plaintiff, six different persons deposed evidence as PW1 to PW6. Six proof
affidavits were filed. These witnesses were subjected to cross-examination by the defendant.
Exhibits D1 to D27 were marked during cross-examination of PW1.
24. On behalf of the defendant, Mrs.Dhawani Singh Rao was examined as DW1. A proof affidavit
was filed by her. She was examined and later cross-examined by the defendant. Exhibits D1 to D44
were marked on behalf of the defendant. Exhibits D28 to D44 were marked during chief
examination of the DW1 while Exhibits P23 to P37 were marked during cross-examination of the
DW1. ____________ http://www.judis.nic.in Page No 11 of 112 C.S.No.231 of 2013
25. The details of the witnesses and the Exhibits marked through the respective witnesses are as
under:-
Plaintiff Relationship with the Plaintiff Exhibits.
Witness Chief
No. Examination.
PW1 Mr. Angad Keith, the Regional P-1 to P-16, 19- D-1
Sale Manager of the Plaintiff 22 *
PW2. Mr.R.Balaji, the wholesale dealer P-17
of the plaintiff.
PW3 Mr.Raghavan V.C, -
S/o.V.P.Chokkalingam,
residing at No.100A, L Block,
19th Street, Anna Nagar.
(In charge of his family

proprietorship concern
M/s.V.Palani Mudaliar Sons -
wholesale dealer)
PW4 Mr K.Jayakumar, P-18
Proprietor of Sujai Departmental
Stores, No.734, Anna Street,
Poompozhil Nagar, Avadi,
Chennai 600 062.
(retail dealer)
PW5 Mr.E.Subramani, S/o.Elumalai, -
residing at No, 10-C, Madavaram,
Milk Cooperative Road, Chennai
600052.
An employee of M/s.
Mariappan Wholesale Traders,
No.79, Iyyappa Chetty Street,
____________
Page No 12 of 112

216
Mannadi, Chennai 600 001 –

Local Grocery Shop (retailer).
PW6 Mr. Dileepan, S/o.Mohan Kumar, -
residing at No.19, Post office
Street, Mannadi, Chennai 600 001.
A customer of above mentioned

M/s. Mariappan Wholesale
Traders.
DW1 The authorised Signatory of the D-28 to D-44
defendant.
26. During the Chief Examination of the PW1, Exhibits P1 to P22 were marked. They are as follows:
-
Exhibits Details of Exhibits

No.
P1 Letter of Authorization
P2 Copies of articles published in Forbes Septemb
issue (internal page 64 to 66) regarding the achievements of the plaintiff.
P2 A series Copies of articles published in Business Today November 2011 issue, July 2011 issue,
November 2012 issue and March 2004, Articles published in Fortune magazines Dec. ‘2011 and
Business World Oct’ 2012 & Feb' 2011. P3 Certificate dated BIL given by Murali Ganesan, EVP-
Finance, Procurement and IT, ITC Limited Foods Division.
P4 Copies of invoices (50 sheets)

P4A Copies of invoices containing 41 sheets which
produced by the witness from his custody. P5 Original certificates along with authenticated copies of
the ____________ http://www.judis.nic.in Page No 13 of 112 C.S.No.231 of 2013 advertisement
made by the plaintiff containing 26 sheets. P6 Original certificates along with authenticated copies
of newspaper reports containing 12 sheets. P7 The original certificate dated 26.09.2016 issued by
Mr.K.Ramakrishnan, Country Head, IMRB Kantar World panel.
P8 Photographs of the Defendants various range of Noodles containing 8 sheets.
P9 Print out copies of the Trademark Application dated 17.01.2013 and the Additional
representation dated 21.01.2013 for the Trademark “Masala-AE-Magic”. P10 Print out copies of
Trademark Application dated 14.11.2011 along Additional representation covering letter and TM-48

217
(4 sheets) for the Trademark “Multigrainz”. P11 Print out copies of Trademark Application dated
25.08.2006 along Additional representation containing two sheets for the Trademark “Hot &
Sweet”.
P12 Print out copies of Trademark Application dated 14.04.2006 and Additional representation
containing three sheets for the Trademark “Hotheads”.
P13 Print out copies of the judgment dated 04.11.2014 reported in 2005 (30) PTC 63 (Del.) P14 Print
out copies of notice of opposition dated 14.08.2013 filed by the Defendant before the Trademark
authorities containing 9 sheets.
P15 Photocopies of the Application dated 14.08.2013 for amending the notice of opposition
containing 8 sheets. P16 Photograph of point of sale merchandising advertisement of the
Defendant’s “Magical Masala” Noodles containing 18 sheets (three sets).
P17 Affidavit of Raghavan and R.Balaji

P18 Affidavit of K.Jayakumar
P19 Original wrapper of Plaintiff’s Magic Masala
P20 Wrapper of Plaintiff’s Classic Masala
____________
Page No 14 of 112
C.S.N
P21 Original wrapper Defendant’s Magical Masala

P22 Photocopies of five invoices of the year 2013
27. During the cross-examination of the P.W.1, Exhibits D1 to D27 were marked. They are as
follows:-

No.
D1 Colour print out of the photographs of the produce
Sunfeast Yippee Chinese Masala Packet of the Plaintiff D2 series Colour print out of the photographs
of the products Sunfeast Yippee Tri colour pasta-masala, Sunfeast Pasta Treat-Tomato Cheese,
Sunfeast Pasta Treat-Cheese, Sunfeast Pasta Treat –Sour Cream Onion packets (4 photographs) D3
series Colour print out of the photographs of the products Bingo! Mad Angles Masala Madness,
Bingo! Tangles Masala Cheese, Bingo! Tangles Tomato Tangle, Bingo! Tangles Masala Tangle,
Bingo! Tangles Salted Tangle, Bingo! Yumitos International Cream & Onion (6 photographs) D4
series 3 photographs of ITC Mangaldeep Puja Agarbattis SIN1, Sandal, Bouquet, Jasmine, Amalu,
Cleon; ITC Mangaleep Puja Agarbattis Sandal’ ITC Mangaldeen Puja Agarbattis Fragrance of temple
218
Silver Tradition Products. D5 Series Two photographs of the Lay’s India’s Magic Masala and Lay’s
Classic Salted chips products.
D6 Only the cover of the masala mix after removing the masala.
D7 series Seven photographs of the packs of Smith & Jones Masala Noodles, Top Raamen Atta
Noodles Masala, Everyday ____________ http://www.judis.nic.in Page No 15 of 112 C.S.No.231
of 2013 instant masala noodles, Wai Wai X-press instant noodles Masala delight, Prima Stella
instant noodles fun masala, Tasty Treat instant masala noodles, Mr.Noodles Magic Masala.
D8 series Photographs of the packs of the above products. D9 series Colour photocopies of the
relevant pages of annual reports 2011, 212 and 213 of the Plaintiff containing seven sheets D10
Copies of page nos.455 and 497 of Oxford English-English Hindi Dictionary D11 Colour print outs of
photographs of Maggi Magic Cubes ( 4 sheets) D12 Three sheets of print outs of photographs of
Maggi Masala, Chilli, Smith and Jones Masala Chilli, Smith and Jones Chilli Garlic, Maggi Chilli
Garlic, Smith and Jones Hot and Sweet and Maggi Hot and Sweet.
D13 Original 12 cash memos pasted on four sheets. D14 series Six CDs with story board of the
television commercials D15 series Three sheet print outs of the plaintiff’s website D16 series Two
sheets of the print out of the plaintiff’s web page under the heading “You ask we answer”.
D17 Print out of the image from the face book page relating to Sunfeast Yippee! noodles D18 series
Print outs from the ITC portal.com of the financial results of the Plaintiff relating to quarters ending
30.09.2010, 31.12.2010, 31.03.2011, 30.06.2011 along with press report, Business standard 17 Aug
2011 contained in the Plaintiff’s portal ( 14 sheets) D19 series Colour print outs of the lays magic
masala chips packet ( 2 sheets) D20 series Print outs of the trade mark registrations status and
certificates taken from www.opindiaonline/gov/in which is the official website of the Registrar of
Trademarks (20 sheets) ____________ http://www.judis.nic.in Page No 16 of 112 C.S.No.231 of
2013 D21 series Colour print out of the photographs of those biscuits (four sheets) D22 Print out
from the websites www.rolinkitchen.com (7 sheets) D23 Print out from the websites 2
\www.recipeby sagarika.blogspot.in (9 sheets) D24 The entire magazine in Hindi Crihlakshmi
Magazine dated January 2013 D25 series The original relevant pages of the annual reports (7 sheets)
D26 series The Empty packets being Maggi Meri Masala 2 minute noodles, Maggi Meri Maala
Hungrooo, Maggi Vegetable Multrigrain noodles (Spice remix) Maggi vegetable atta noodles masala
tastemaker and Maggi Meri Masala Dumdaar instant noodles (5 sachets) D27 series The print outs
of photographs of the reverse side of the packets referred in Ex.D7 series (8 sheets)
28. During the Chief Examination of the DW1, Exhibits D28 to D44 were marked. They are as
follows:-

No.
D28 series The Power of Attorney dated 22.06.2013 and original authorization letter dated
07.04.2017 in favour of Mr.T.S.Venkateswaran D29 series Print media advertisements dated
219
15.10.1986 D30 Certificate issued by the advertising Agency TLG India Private Limited giving
statement as to total cost and spots aired on various channels pertaining to Maggi Magic Cubes for
the years 2007-2009 D31 series Photographs of the product Maggi Dal Magic used in the
____________ http://www.judis.nic.in Page No 17 of 112 C.S.No.231 of 2013 year 2003(5 pages)
D32 series Sales Invoices pertaining to Maggi Magic Cubes for the period 2004-2012 (57pages) D33
series Television commercial telecast details along with promotional invoice pertaining to Maggi
Magic Cubes for the period 2005 and 2009 (3 pages) D34 series Print Media Advertisements
pertaining to Maggi Magic Cubes for the period 2009(29 pages) D35 series Publicity expense
estimate in respect of Maggi Dal Magic for the year 2003 (3 pages) D36 series List along with
depiction showing various Maggi product using internationally the word Magic Section 65B
Affidavit dated 13.04.2017 is encl. as Document No.2 filed on 18.04.2017 before the Court (16 pages)
D37 Original certificate without dated issued by TLG India Limited (5 pages) D38 series Original
annual reports of the Defendant for the years 2009-2011 (9 pages) D39 series Computer print out of
the story boards of the Defendant’s produce (Section 76(B) certificate as prescribed under the
Evidence Act is already filed) (16 pages) D40 series Computer print out of the point of sale materials
pertaining to the defendant’s Masala-Ae-magic (Section 65(B) certificate as prescribed under the
Evidence Act is already filed) (16 pages) D41 series Computer print out of the sale and promotional
invoices (23 pages) (Section 65B certificate already filed) D42 series AC Nelson Report of 2012
showing various distributors for Maggi Masala-Ae-Magic in various states in India (1 page) D43
series Computer print out of the search report from the official website of the Trademark Registry
with the search string containing the word Magic in Class 29 & 30 (109 pages) D44 series Computer
print out of the depiction of the products showing use of the words Magic Masala in trade (21
____________ http://www.judis.nic.in Page No 18 of 112 C.S.No.231 of 2013 pages)
29. During the cross -examination of the DW1, Exhibits P23 to P37 were marked. They are as
follows:-

No.
P23 Copy of the Notice to produce documents dated
12.04.2018 issued by Counsel for plaintiff to the Defendant.
P24 The reply dated 16.04.2013 given in response to Ex.P23 P25 Certified copy dated 31.10.2017 of
Application No.2463851 [Masala-A-Magic (Label)] P26 Certified copy dated 31.10.2017 of
Application No.2233354 [multigrain] P27 Certified copy dated 31.10.2017 of Application
No.1481850 [Hot & Sweet] P28 Certified copy dated 31.10.2017 of Application No.3233479
[Hotheads] P29 Certified copy dated 31.10.2017 of Application No.2455786 [Insta-Filter (Device)]
P30 Certified copy dated 03.10.2017 concerning the Application No.1884590 of the Registered
Trademark “Pazzta”.
Trademark “Maggi 2-Minute Noodles”.

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Trademark “Maggi 2-Minute Noodles”.
P33 Story Board containing 4 sheets
____________
Page No 19 of 112
C.S.
P34 Story Board of the Nescafe Sunrise Insta Filter (3

P35 Two Story Boards containing Maggi Pazta (9 sheets)
P36 Story Board containing the advertisement of the Ma
Magical Masala (4 sheets)
P37 Story Board containing the advertisement of Maggi
Minute Noodles (3 sheets).
30. According to the plaintiff, “Magic Masala” became instantaneously popular right from its
inception so much so that the public and the consumer in general associate the expression "Magic
Masala" in the instant noodle segment in the market with the plaintiff and plaintiff alone.
31. According to the plaintiff, the adoption of the aforesaid offending expression "Magical Masala"
by the defendant was with a dishonest intention to cheat unwary and gullible customers including
children and housewife’s to buy the defendant’s instant noodle with the aforesaid offending
trademark as that of the plaintiff’s instant noodle with the trademark "Magic Masala".
32. It was further alleged that the adoption of the offending expression “Magical Masala” by the
defendant was intended to dilute the plaintiff’s proprietary rights over "Magic Masala" and goodwill
associated with it which has been in the market since 2010.
33. According to the plaintiff, it has vested right in the expression "Magic Masala" for their instant
noodle as its adoption was prior in time and adoption of the offending expression “Magical Masala”
by the defendant was later after copying it from the plaintiff. It was not only intended to enable the
defendant to pass-off their product as that of the plaintiff’s product but also to facilitate others to
pass-off their goods as that of the plaintiff.
34. In the plaint, it has been averred that to distinguish its superior product from that of others, the
plaintiff started using “Magic Masala” and therefore designed a distinct label comprising of several
distinctive features. In order to protect the composite label comprising the aforesaid expression
“Magic Masala”, the plaintiff claims to have filed several trade marks applications under the law to
protect the same and same were ____________ http://www.judis.nic.in Page No 21 of 112

221
C.S.No.231 of 2013 stated to be pending as on the date of the suit and registered vide Exhibit D20
(series).
35. It is further submitted that owing to its excellent quality and reputation, the plaintiff’s “Magic
Masala” had attained distinctiveness and a secondary meaning came to be associated with the
plaintiff and none else. In this connection, reference was made Exhibits P2 and P2A (series).
36. It is further stated that the plaintiff had substantially invested by advertising and promoting the
aforesaid brand in the print and electronic media and through hoardings etc. It was further stated
that the advertising expense runs to several crores of rupees as is evident from Exhibit P3 and the
name has become a household name in the country and is synonymous with the plaintiff.
37. It is further stated that the plaintiff’s aforesaid product was of superior quality manufactured in
its sophisticated and state of art factories under supervision with strict adherence to quality control.
____________ http://www.judis.nic.in Page No 22 of 112 C.S.No.231 of 2013 “Magic Masla”
instant noodle was also affordable and enjoys a unique reputation and goodwill among the trade and
the public.
38. According to the plaintiff, the turnover of “Sunfeast Yippee! noodles Magic Masala” in the year
2010 was Rs.23.09 Crores and increased to Rs.251.49 crores by 2013 and thus capturing 12.5% of
the market share within a period of 3 years as per Exhibit P7. During the period between 2009-10 to
2012-13, the plaintiff spent Rs.118.84 Crores as per Exhibits P3, P4 and P4A (series).
39. It is submitted that being aware of the fact that the plaintiff had made inroads in the market with
the aforesaid trademark “Magic Masala”, the defendant adopted deviously “Magical Masala” for
their instant noodle with a malafide intention to ride on the goodwill of the plaintiff and to cut into
the market share enjoyed by the plaintiff. It is submitted that the defendant was resorting to unfair
trade practice. ____________ http://www.judis.nic.in Page No 23 of 112 C.S.No.231 of 2013
40. It is further submitted that the defendant who was a market leader was having a monopoly in
the segment and had lost a sizeable share in the market with the launch of “Magic Masala” and
“Classic Masala” in 2010 by the plaintiff and thus resorted to passing-off.
41. It is submitted that though the defendant was a market leader and was commanding 75% of the
market share, felt threatened and thus adopted the expression “Magical Masala” to market their
instant noodle in 2012, to destabilise the customer base and customer loyalty built by the plaintiff.
The plaintiff has thus prayed for the above relief.
42. On behalf of the plaintiff, it was further submitted that there was nothing “Magical” about the
flavour and therefore it was not open for the defendant to claim bonafide right over the use of the
expression “Magical Masala” in the purported exercise of the rights conferred under Section 35 of
the Trade Marks Act, 1999. It is further submitted that the defendant cannot have a big brother
attitude towards the plaintiff merely because the plaintiff was a late entrant. ____________
http://www.judis.nic.in Page No 24 of 112 C.S.No.231 of 2013

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43. Elaborating the above submission, on behalf of the plaintiff the learned senior counsel for the
plaintiff, Mr.P.S.Raman submitted that being the market leader in the instant noodle market, the
defendant was aware of the reputation gained by the plaintiff within a short period and the
sub-brand “Magic Masala” came to be associatied with the plaintiff. It is submitted that with a view
to break goodwill and reputation associated with the plaintiff, the defendant launched their noodle
with the offending sub-brand “Magical Masala”.
44. It is submitted that the expression “Magic Masala” was not used as a “flavour descriptor” as was
contended by the defendant. It was further submitted that is no flavour called “Magic” and therefore
it is not correct to state that the expression “Magic Masala” was adopted as “flavour descriptor” by
the plaintiff.
45. It is submitted that the adoption of the expression “Magical Masala” by the defendant was
dishonest with an intention to trade and ride on the goodwill associated with the plaintiff and its
“Magic Masala” noodles. Therefore, the plaintiff was entitled for the relief aspect for.
46. It is further submitted that the expression “Magic Masala” was a sub-brand of the plaintiff and
had gained immense popularity and therefore it was capable of being protected. In this connection,
the plaintiff has relied on the deposition of PWs 2-6, to state that it was recognised in the market
that the expression “Magic Masala” was a sub- brand of the plaintiff.
47. It is further submitted that the defendant has also recognised the existence of sub-brand and
therefore attention to the sub-brands of the defendant with the sub-brand “Multigrainz” vide
TM.No.2222354 (vide Exhibit P10), “Hotheads” (vide Exhibit P27), “Insta-Filter”(vide Exhibit P29),
“Pazzata” (vide Exhibit P30), Masala-Ae-Magic (vide Exhibit P25) etc., was invited.
48. It was submitted that the defendant had also filed suits against 3rd party to restrain them from
using their sub-brand such as “Hot & Sweet” (vide Exhibit P13), “Masala Chilli” (vide Exhibit P13)
and “Chilli Garlic” (vide Exhibit P13) etc. ____________ http://www.judis.nic.in Page No 26 of
112 C.S.No.231 of 2013
49. It was further submitted that defendant’s other brands such as “2-Minutes Noodles” was also
descriptive and yet the defendant has exercised proprietary rights over such descriptive
trademarks/brands and therefore, the defendant cannot take a contrary stand when it came to
“Magic Masala”.
50. It is submitted that since the defendant has itself applied for registration of the trademark,
“Masala-Ae-Magic” (vide Exhibit P25 and vide Exhibit P43) and therefore it is not open for the
defendant to take a contrary stand. It is submitted that the defendant cannot take inconsistent
stand. In this connection, reference was made to the decision of this Court in Blue Hill LogisticsVs.
Ashok Leyland Ltd, 2011 (4) CTC 417; Ashok Leyland Limited Vs. Blue Hill Logistics, MIPR 2011 (1)
0249 and Automatic Electric Ltd Vs. R.K.Dhawan and others, MANU/DE/0461/1999.

223
51. It is further submitted that the defendant has not only applied for registration of the word such
as “Maggi Masala-Ae-Magic (taste ____________ http://www.judis.nic.in Page No 27 of 112
C.S.No.231 of 2013 enhancer), Magic, Mithai Magic etc., but has also initiated proceedings before
the trademark registry against other proprietors to prevent them from a registering the word
“Magic” vide Exhibit P14 against Radika Food for registration of the words “Magic Masti”.
52. The fact that the defendant had also initiated opposition proceedings against the registration of
the mark “Magic Masti” of another proprietor vide Exhibit P15, on the ground that it has been using
the sub-brand “Magic” along with seasoning “Dal Magic” shows an inconsistent stand of the
defendant.
53.It is submitted that defendant has itself admitted that the word “Magic” was capable of being
protected in as much as the defendant has products brands such as “Maggi Real Magic”, “Maggi
Magic Cubes” (for flavour solutions) and “Maggi Masala-Ae-Magic” (taste enhancer) and “Dal
Magic” (Seasoning).
54. It is submitted that since the plaintiff was the first to adopt the words/expression “Magic
Masala” for noodles, it was not open to ____________ http://www.judis.nic.in Page No 28 of 112
C.S.No.231 of 2013 defendant copy the expression “Magical Masala” for noodles which is both
deceptively and phonetically similar to the expression “Magical Masala” by mere additon of an
additional syllable “al” to the word “Magic” from the plaintiff’s aforesaid sub-brand.
55. In any event, the defendant has not produced any evidence to show that the defendant has
adopted “Magical Masala” for noodles prior in time or prior to the plaintiff. In this connection,
reference was made to Exhibits P4, P4A (series), Exhibits P3, P5 and P6 to demonstrate that the
plaintiff’s adoption of the word “Magic Masala” for instant noodle was prior in time.
56. It is therefore submitted that the defendant was estopped from contending that the word
“Magic” was incapable of being protected even if it was laudatory.
57. It is further submitted that the plaintiff has not only proved the likelihood of confusion but also
actual confusion on account of the use of the offending expression “Magical Masala”. In this
connection, reliance ____________ http://www.judis.nic.in Page No 29 of 112 C.S.No.231 of 2013
was placed on the deposition of PW6 who stated that consumer was supplied “Magical Masala”
though they were asking for plaintiff’s “Magic Masala” and that a consumer thought that the
plaintiff’s wrapper /packaging had undergone a change. A reference was also made to the deposition
of PW4 who stated that noodles were bought by the consumer by referring to their variant names
like “Magic Masala”, “2-Minute Masala Noodles”, “Atta Noodles”, “Chicken Noodles”, Oat Noodles”,
etc.
58. He further stated that if a consumer asked for any of the variants, he would ask for the brand of
noodles which they desired. He stated that consumers normally ask for “2-Minutes Masala
Noodles”, “Magic Masala Noodles”, “Atta Masala Noodles”, etc. He further stated that sometime
when his consumer asked for “Magic Masala”, by mistake he supplied “Magical Masala” to them and

224
only when the customers pointed out the mistake, he realised that the confusion was on account of
the similar name. He further stated that some of his customers were also upset because of the mix
up in the delivery. ____________ http://www.judis.nic.in Page No 30 of 112 C.S.No.231 of 2013
59. The learned senior counsel for the plaintiff further submitted that the noodles are purchased by
persons from different background and age group. They could be semi-literate to literate consumers
and includes ordinary home maker, children, young adults, adults and old person. He submits that
the test to be applied is that of a person of average intelligence and imperfect recollection. He
submits that the customers are prone to confusion if the impugned sub-brand is allowed.
60. He submits that consumers are not expected to check the details in a road side grocery shop. The
retailers themselves may confuse and substitute one product for another when orders are placed for
“Magic Masala”.
61. He therefore submits that use of the offending expression “Magical Masala” by the plaintiff was
clearly intended to cause confusion in the minds of the consumers and the retailers and to faciliate
passing-off. He submits that difference between the two sub-brands. viz “Magic Masala” and the
“Magical Masala” was only in the syllable “al”. Both the sub-brands for noodles were phonetically
similar. ____________ http://www.judis.nic.in Page No 31 of 112 C.S.No.231 of 2013
62. In this connection, he drew my attention to the depositions of PW2 & 3 wholesale dealers of the
plaintiff and that of PW4 & 5 retailers of provision and that of PW6, a consumer, namely,
Mr.Dileepan, who used to buy noodles and other household consumer goods from PW5. To
establish goodwill and reputation, he also drew my attention to the report of Indian Market
Research Board (IMRB) [Exhibit P7], a private company engaged in market survey.
63. Learned senior counsel also drew my attention to certain other documents to show that the
defendant has itself trademarks which were descriptive words and had used them as sub-brands for
their noodles and sauce and had successfully thwarted its competitors from using them. Therefore,
the defendant cannot adopt a different standard.
64. A specific reference was also made to the deposition of PW6, a customer of plaintiff’s
“SunfeastYippee! noodles Magic Masala”, who in his deposition stated that the retailer sold
defendant’s “Magical Masala” and charged Rs.15/- when indeed he had asked for plaintiff’s
____________ http://www.judis.nic.in Page No 32 of 112 C.S.No.231 of 2013 “Magic Masala”
costing only Rs.10/-.
65. It is therefore submitted that in the instant noodles market, the references to the sub-brand of
the product as everybrand has multiple sub-brands. In this case, the plaintiff’s “Sunfeast Yippee!
Noodles” has three sub-brands, namely, “Magic Masala”, “Classic Masala” and “Chinese Masala”.
Likewise according to the learned senior counsel for the plaintiff, the defendant has different
sub-brands like “Meri Masala”, “Multigrains”, “Thrillin Curry”, “Tricky Tomato”, “Hotheads”.

225
66. The learned senior counsel for the plaintiff Mr.P.S.Raman further submitted that both the
plaintiff and defendant are in the same business of sale of instant noodles and considering the fact
that both the products had similar sub-brands there were confusion and chances of the customers
getting misled as was demonstrated.
67. Learned senior counsel for the plaintiff also submitted that the court can take judicial notice of
the fact that bulk of the products are sold in small retail shops where the seller himself would hand
over the ____________ http://www.judis.nic.in Page No 33 of 112 C.S.No.231 of 2013 product to
the customer and therefore there is the likelihood of passing- off.
68. Finally, learned senior counsel also submitted that merely because others in the industry have
used “Magic” is of no significance as the dispute the present case is confined to instant noodles. He
further submits that the sub-brand “Magic Masala” adopted by the defendant was invented/coined
by the plaintiff and that no other manufacturer has used the aforesaid sub-brand for their instant
noodles.
69. With reference to Exhibits D19, 43 and 44, it is submitted that none of them use a combination
of the word “Magic” and “Masala”. He, therefore, submits that they are of no significance. He further
submits that instant noodle is a separate class of product different from other product as the method
of preparation is very simple as compared to other products.
70. These Exhibits have been relied on by the defendant are irrelevant to the issue and are therefore
liable to be ignored. He submits ____________ http://www.judis.nic.in Page No 34 of 112
C.S.No.231 of 2013 that use of the expression “Magic Masala” by others in other products is of no
significance. He submits that Exhibit D43 containing a list of both registered and pending
applications in several classes in respect of several other goods for registration of the word marks
containing the word “Magic” also goes to prove that the mark “Magic” is capable of protection under
the Act.
71. He further submits that use of the word “Magic” by others is of no significance and it is not
defence known in the law. In this connection, he relied on the decision of the Court in Novartis AG
Vs. Crest Pharma Private Limited, 2009 (41) PTC 57 and the decision in Indian Shaving Products
Ltd Vs. Gift Pack and Another, 2000 CLC
72. It is further submitted that the expression “Magical Masala” is not found in Exhibit D29. It is
further submitted that reliance placed on Exhibit D8 (series) is totally irrelevant as it deals with
products other than instant noodles of the plaintiff. He therefore submits that Exhibit
____________ http://www.judis.nic.in Page No 35 of 112 C.S.No.231 of 2013 D8 (series ) is liable
to be eschewed.
73.Mr. P.S.Raman, the learned senior counsel for the plaintiff referred to the following case laws:-
i. Future Logitic Pvt. Ltd. Vs. Future Logistics Solutions Pvt. Ltd., MIPR 2009 (3)
0170; ii. Satyam Infoways Ltd. Vs. Siffnet Solutions (P) Ltd., 2004 (6) SCC 145;

226
iii. Dhariwal Industries Ltd. Vs. MSS Food Products, (2005) 3 SCC 63;
iv. SNJ Distilleries Ltd. Vs. Imperial Spirits P. Ltd., 2010(4) LW 304;
v. Innovation Ventures, LLC Vs. N.V.E. Inc., No.10- 2353 (6th Cir.2012), 763 F. 3d
524 (2014) vi. Societe des Products NESTLE S.A. Vs. Gopal Agencies, 2005(30) PTC
63 (DEL) vii.Carter & Parker Ltd. Vs. Scotia wools Ltd., 1960 RPC 206;
viii.JC Eno Lyd. Vs. Vishnu Chemical Co, AIR 1941 BOM 3;
ix. Ishi Khosla Vs. Anil Agarwal and anr., 2007(34) PTC 370 (Del);
x. Hem Corporation Pvt. Ltd. and Ors. Vs. ITC Limited, MIPR 2012 (2) 314;
____________ http://www.judis.nic.in Page No 36 of 112 C.S.No.231 of 2013 xi. Ashok Leyland

Limited Vs. Blue Hill Logistics, MIPR 2011 (1) 0249;
xii.Blue Hill Logistics Vs. Ashok Leyland Limited, 2011 (4) CTC 417;
xiii.Automatic Electric Limited Vs. R.K.Dhawan and Ors., (06.01.1999 DELHC) – 1999 (19) PTC 81;
xiv.Toyota Jidosha Kabushiki Kaisha Vs. M/s.Prius Auto Industries Ltd. & Ors., 2018 (2) SCC 1;
xv.Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 63;
xvi.Sir Shadi Lal Enterprises Ltd. Vs. Kesar Enterprises Limited, 1998 PTC (18) 309;
xvii.Novartis AG Vs. Cret Pharma P. Ltd., 2009(41) PTC 57 (Del);
xviii.Indian Shavings Products Ltd. Vs. Gift Pack and anr., 2000 CLC 183;
xix.Pidilite Industries Ltd. Vs. Jubilant Agri Consumer Products Ltd., MANU/MH/0019/2014;
xx.Kailash and others Vs. State of Rajasthan and another -Unreported judgment – Food Safety
Appellate Tribunal Appeal No.FA/0090/2018 xxi.JK Oil Industries Vs. Adani Wilmar Ltd.,
MANU/DE/0332/2010.
xxii.Premier Synthetic Processors Ltd. and Ors. Vs. Roshan F.Chinoy, MANU/MH/0424/1986.
____________ http://www.judis.nic.in Page No 37 of 112 C.S.No.231 of 2013 xxiii.Nestle SA and

another Vs. Basant Alal Kokcha & others, MANU/DE/3050/2009;
xxiv.Nestle’s Products Ltd. and others Vs. Milkmade Coporation and others, MANU/DE/0199/1972.
xxv.Extracts from Hallsbury’s Laws of India Vol 20(1) xxvi.Hindustan Lever Ltd. Vs. Reckitt
Benckiser India Ltd. and others, MANU/DE/3643/2006;

227
xxvii.Heinz India Pvt. Ltd. Vs. Glaxo Smithkline Consumer Healthcare Ltd and others,
MANU/WB/1101/2009;
xxviii.Emami Ltd Vs. Nikhil Jain, MANU/Q1/0012/2017; xxix.Indian Shaving Products Ltd. and
others Vs. Gift Pack and others, MANU/DE/0209/1999;
xxx.Hindustan Unilever Ltd. Vs. Three-N-Products (P) Ltd., MANU/IC/0061/2012;
xxxi.Reckitt Benckiser (India) Ltd. Vs. Hindustan Unilever Ltd., MANU/DE/0967/2008;
xxxii.Hindustan Unilever Ltd Vs. Reckitt Benckiser India Ltd., MANU/DE/033/2014;
xxxiii.Super Cassette Industries Ltd. Vs. Entertainment Network (India) Ltd.,

MANU/DE/0530/2004; xxxiv.Sony Kabushiki Kaisha Vs. Aashish Electronic and others,
MANU/MH/1114/2005;
xxxv.Reckitt & Colman of India Ltd. Vs. Jyothi Laboratories Ltd. and others,
MANU/WB/0110/1999; ____________ http://www.judis.nic.in Page No 38 of 112 C.S.No.231 of
2013
74. Learned Senior Counsel Mr.C.Manishankar appearing on behalf of the plaintiff submitted that
several documents produced by the defendant during cross examination of the PW1 were
inadmissible and therefore, this Court ought to ignore them.
75. Elaborating the submission, learned Senior Counsel Mr.C.Manishankar submitted that print
outs from website of third parties cannot be relied upon. Similarly, it was stated that the Annual
Report of the defendants are not relevant to establish that the defendant was prior adopter of the
word “Magic”.
76. He further submitted that Exhibit D29 news paper clipping advertising a food festival called
“Maggi Magical Mealtimes” in Hotel Ashok, New Delhi, between October 15th to 30th, 1986, was an
event not connected with noodles or instant noodles and therefore, it also cannot be relied upon. It
is submitted that Exhibits P30 and 37 (series) are copy of certificates by an advertising company
regarding the total cost and details of advertisement aired in various channel.
77. Elaborating the above submission, the learned senior counsel ____________
http://www.judis.nic.in Page No 39 of 112 C.S.No.231 of 2013 submits that Exhibit D30 (series) was
an incomplete document, undated and irrelevant document and hence inadmissible. It is further
submitted that DW1 has herself admitted that the document was found in the Accounts Department
of the defendant and that she had no personal knowledge of the same and therefore DW1 was
incompetent to introduce Exhibit D30 (series).
78. Similarly, it is submitted that Exhibit D31 (series) and Exhibit D36 (series) are nothing, but
photographs of the Maggi advertisement of the year 2003. He submits that they are inadmissible as

228
it has not been translated. It is submitted that as per Order 9 Rule 1 of the Madras High Court
Original Side Rules, the defendant ought to have produced a translated copy of the same.
79. It was also submitted that some of the photocopies submitted ought to have been produced with
the leave of the Court. It is submitted that these are inadmissible. It is further submitted that the
defendant had produced sample and documents of products which had been admittedly expired in
2003 and had been incinerated even as per the deposition of ____________
http://www.judis.nic.in Page No 40 of 112 C.S.No.231 of 2013 DW1. Therefore, these documents are
inadmissible. As far as Exhibit D32 (series) is concerned, it is submitted that the invoices pertaining
to “Maggi Magic Cubes” for the period between 2004 to 2012, are inadmissible as they are
photocopies for a totally different product.
80. It is submitted that in any event, “Maggi Magic Cube” is merely a seasoning and not variety of
instant noodle by the plaintiff. As far as Exhibit D33 (series) is concerned, it is submitted that they
are television commercial details along with promotional invoices pertaining to “Maggi Magic
Cubes” for the period between 2005 and 2009. It is submitted these documents are inadmissible in
as much as they are photocopies of the purported advertisement and the affidavit filed under
Section 65B of the Indian Evidence Act on behalf of the defendant was not accordance with the law.
81. Similarly, the learned senior counsel also submitted Exhibit D34 (series), Exhibit D35 (series),
Exhibit D40 (series), Exhibit D41 and Exhibit D42 (series) were inadmissible as they were not
accordance with Section 65B of the Indian Evidence Act, 1872. ____________
82. As far as Annual Reports for the year 2009-2011 of the defendant, which was marked as Exhibit
D38 (series), is concerned, it was submitted that same is irrelevant as there is no reference to instant
noodles in the I.D image of “Masala-Ae-Magic”.
83. Learned Senior Counsel Mr.C.Manishankar referred to the following case laws:-
i. Life Insurance Corporation of India Vs. Ram Pal Singh Bisen, (2010) 4 SCC 491;
ii. TVS Motor Company Ltd. Vs. Bajaj Auto Limited, order dated 18.07.2016 passed in
A.Nos.2119 and 2120 of 2016 passed by Hon’ble Mrs. Justice Pushpa Sathyanarayana
– Unreported iii. Anvar P.V. Vs. P.K.Basheer & Ors., 2014 (10) SCC 473;
iv. Ishwar Dass Jain Vs. Sohan Lal, (2000) 1 SCC 434; v. RakeshMohindra Vs. Anita
Beri, (2016) 16 SCC 483; vi. H.Siddiqul Vs. A.Ramalingam, (2011) 4 SCC 240;
vii.P.Rama Srinivasa Rao Vs. Dr.N.Raghavan, 2006(2) CTC 43;
viii.Rejitha Vs.Vikram V. Rajkumar, 2017 SCC OnLine ____________ http://www.judis.nic.in

Page No 42 of 112 C.S.No.231 of 2013 Mad 1065;
ix. Syed and Co. Vs. State of J & K, 1995 Supp(4) SCC 422;

229
x. Madras Cements Vs. TMT Kannammal, 2015(1) LW 312;
xi. S.Babu Vs. J.K.Industries Ltd, 2008(3) L.W.609; xii.Shalimar Chemical Works Vs. Surendra Oil
and Dal Mills; (2010) 8 SCDC 423.
xiii.R.V.E.Venkatachala Gounder Vs. Arulmigu Visweshwaraswami, (2003) 8 SCC 752;
xiv.Essel Packaging Vs. Sridhar Narra, (2002) 98 DLT 565;
xv.Indian Shaving Products Ltd. Vs. Gift Pack Co., (1999) 77 DLT 137;
xvi.Vishnudas Trading as Vishnuda Kishandas Vs. Vazir Sultan Tobacco Co. &Anr., 1007)4) SCC
201; xvii.K.Gopala Pillai Vs. N.Gopala Pillai, MANU/KE/0096/1955.
84. The defendant in its written statement has denied having copied the expression “Magical
Masala”. It is stated that it is not inspired from the “Magic Masala” used by the Plaintiff. The
defendant had relied on several documents which were marked as Exhibits to show
____________ http://www.judis.nic.in Page No 43 of 112 C.S.No.231 of 2013 that they were prior
adopter of the word “Magic” in the food industry and therefore, the plaintiff cannot have an
exclusive right of the same.
85. The defendant further disputed the claim for monopoly over the expression “Magic Masala” by
the plaintiff on the ground that same was used as a “flavour descriptor” and “product descriptor” by
the plaintiff and therefore the assertation of rights was contrary to the provisions of the Trademark
Act, 1999. It is therefore submitted that the plaintiff was not entitled to the relief.
86. Further, defence of the defendants that the expression “Magic” was laudatory and therefore
incapable of any protection under the provisions of the Trade Mark Act, 1999 and no common law
rights of passing-off recognised under the aforesaid Act inures to the plaintiff.
87. It is also submitted that the word “Magic” means as “marvellous” and “exciting” as per 10th
edition of the Chambers Dictionary. As per the New Shorter Oxford English Dictionary, it means
____________ http://www.judis.nic.in Page No 44 of 112 C.S.No.231 of 2013 “superlatively
good”, “excellent”, “fantastic”. The word “Masala” is the mix of spice for food preparation known to
the Indian culinary.
88. It is therefore submitted that the two words i.e. one which is laudatory (Magic) and the other
(Masala) which is the word used for collectively describing the mix of Indian spice cannot attain
distinctiveness so to exclude others from using them.
89. According to the defendant, the expression “Magic” has been used to qualify the quality of the
masala in the packet as "Magic Masala". It describes the masala in the sachet used for flavouring
and for bringing taste to the bland noodles in the pack as wonderful / extraordinary / excellent /
fantastic etc. It was used in a laudatory sense. It is therefore submitted that no action for passing-off

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was maintainable against the defendant based on the averments in the plaint.
90. It is further submitted that the plaintiffs' trademark is “ITC, Sunfeast Yippee!” and the instant
noodle is sold in a combined pack ____________ http://www.judis.nic.in Page No 45 of 112
C.S.No.231 of 2013 consisting of bland noodles with a masala sachet in it.
91. In the written statement, it is further stated that the plaintiff has admitted instant noodles
manufactured and sold by the plaintiff under the aforesaid three trademark in three different
variants, i.e. flavours, namely “Classic Masala”, “Magic Masala” and “Chinese masala” and that these
expressions were used on the packaging of the instant noodles by the plaintiff with the aforesaid
expression as a “flavour descriptor” of the masala inside the noodle pack.
92. It is therefore submitted that for the aforesaid reason also the plaintiff cannot claim any
Trademark usage over the three “flavour descriptors” in terms of Section 2(zb) of the Trademarks
Act, 1999.
93. It is further submitted that in the Annual Reports for the years 2011, 2012 and 2013 [Exhibit D9
(series)], the plaintiff has itself stated that the plaintiff had introduced "Sunfeast Yippee! noodles" in
three different flavours, namely, “Classic Masala”, "Magic Masala" and Chinese masala”.
94. It is therefore submitted that the claim in the suit was contrary to the plaintiff’s own admission
that “Sunfeast Yippee! noodles” was made available in three different flavours, namely, “Classic
Masala”, "Magic Masala" and “Chinese Masala”.
95. The defendant further claimed superiority and supremacy of its Trademark “Maggi” which was
introduced in India in the year 1983 and that sales of “Maggi” instant noodle as of 2012 was pegged
at Rs.2,377 crores and that the defendant had adopted the words “Magic” and “Masala” from
defendant’s allied food products, namely, “Maggi Dal Magic” (Dal Taste Maker), “Maggi Masala
Magic Cubes” and “Masala- Ae-Magic” (flavour solutions) etc.
96. It is further submitted that the food industry market was flooded with various products where
both the words “Magic” and “Masala” are very common. They are in use by several other persons in
the food industry and therefore neither the plaintiff nor any other person can claim the monopoly
over them as they are words and expressions ____________ http://www.judis.nic.in Page No 47
of 112 C.S.No.231 of 2013 which are common to the trade in the food industry. Unless their use has
been continuous and distinguished over a period of time, no distinctiveness can be associated with
it.
97. It is submitted that there is no trade connection established with the expression “Magic Masala”
so as to qualify it as a trademark for the plaintiff to claim any proprietary rights over the expression
“Magic Masala” to the exclusion of the others.

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98. Similarly, it was stated that in the newspaper advertisements and TV commercials, the plaintiff
has referred to its trademark as “Sunfeast Yippee!” and not as “Classic Masala”, “Magic Masala” and
“Chinese Masala”.
99. It is submitted that the expression “Classic Masala”, “Magic Masala” and “Chinese Masala” were
used as flavour/product descriptor by the plaintiff describing the quality of the masala sold along
with the bland noodles in the package.
100. To substantiate the same, the defendant also referred to a printout from the plaintiff’s website,
namely, http://www.itcportal.com/media-centre, wherein, the plaintiff has the brand in the
wrapper as “Yippee! noodles” and that “Sunfeast Yippee! continues to wow consumers across the
country. Its unique round block and long, slurpy and non-sticky noodles have created consumer
delight. The range is available in three flavours of Magic, Classic and newly launched Chinese
Masala. Sunfeast Pasta Treat continues to offer a delicious and nutritious range of Pasta products in
4 different flavours.
101. The defendant has also compared both the wrappers of the plaintiff and the defendant side by
side to state that there is no case made out for passing-off as there is no similarity between the two
and therefore the suit was misconceived.
102. It is further submitted that the suit has been filed to merely prevent bonafide and fair
competition by claiming an unfair monopoly over the descriptive epithet, laudatory words or phrase
or tagline which ____________ http://www.judis.nic.in Page No 49 of 112 C.S.No.231 of 2013
essentially constitutes a “flavour descriptor” for conveying the flavour, taste, characteristics or
quality to the consumer enabling the consumer to choose the variant.
103. It is further submitted that the defendant has used the expression “Magical Masala” as a
“flavour descriptor” in the same manner as the plaintiff has adopted “Magic Masala” as a “flavour
descriptor” for its “Sunfeast Yippi! noodles”.
104. It is further submitted that the use of the expression “Magical Masala” is statutorily protected
and cannot be interfered with in view of the principle of law envisaged under Section 13(2)(a) of the
Trade Marks Act, 1999.
105. It is further submitted that under Section 35 of the Trade Marks Act, 1999, a proprietor or a
registered user of the trademark cannot interfere with any bonafide use by a person any bonafide
description of the character of the quality of his goods or service. ____________
106. It is therefore submitted that as far as the defendant was concerned, the use of the expression
“Magical Masala” was in the exercise of its bonafide right conferred under the statute to describe the
character or quality of the goods, namely, instant noodle sold by the defendant.

232
107. It is further submitted that expression “Magical Masala” was a variantor taste of masala of
Maggi noodles and the masala or the tastemaker has a garnish of assorted dehydrated vegetable like
carrot, cabbage, onion and spinach along with the spices and that these spices magically change the
taste, making it extraordinary, wonderful, excellent, fantastic quality. It makes something special
and exciting. This meaning is the meaning of the word “Magical” in Cambridge and Chamber’s
dictionary.
108. According to the defendant, the variant “Magical Masala” encapsulates additional properties
such as:-
i. great spicy taste;
ii. vegetables; and iii. great visual appeal.
109. It is further submitted that Maggi noodles of the defendant are sold in various variants such as
“Maggi 2-Minute Masala”, “Maggi Meri Masala”, “Maggi Vegetable Atta Noodles Masala”, “Maggi
Cuppa Mania Masala Yo!”, “Me & Meri Tricky Tomato Maggi”, “Me & Meri Thrillin’ Curry Maggi”
and “Maggi Dal Atta Noodles Sambhar” and “Magical Masala” was another variant.
110. It is further submitted that the flavour “Magical Masala” was decided after a long study by their
in-house team responsible for creation of flavours and when the taste was finalised and approved,
appropriate flavour descriptor name was researched through consumers and traction and it is only
thereafter the aforesaid flavour descriptor was adopted by the defendant.
111. It is submitted that the expression “Magic Masala” or “Magical Masala” or “Classic Masala” or
“Meri Masala” or “Masala Yo” are nothing, but flavour descriptors which are a common expression
in the food industry and cannot be subjected to any proprietary right by ____________
http://www.judis.nic.in Page No 52 of 112 C.S.No.231 of 2013 any member of the trade to the
exclusion of others.
112. According to the defendant, they are in any event the prior adopter of the expression/words
such as “Magic” and “Masala” for atleast 9 or more of their products referred to supra for the taste
enhancers in the year 2009 “Maggi Masala-Ae-Magic” vide Exhibit D40 (series), “Maggi Magic
Cube” vide Exhibit D34 (series) as a flavour solutions in the year 2003 with the tagline “pinch of
magic” and in Hindi “Chutkibhar Jadoo” and “Maggi Dal Magic” vide Exhibit D31 (series).
113. It is submitted that the defendant also ran a jingle for “Maggi Magic Cubes”. Similarly, in the
year 2003, the defendant had launched a taste maker for Dal called “Maggi Dal Magic”. Thus,
according to the defendant, the use of the expression “Magic” and “Masala” by the defendant was
prior to adoption of the flavour descriptor “Magic Masala” by the plaintiff for their “Sunfeat Yippi!
noodles”.

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114. Apart from the above, the defendant is also gave examples of the following products of the
defendant’s where the word “Magic” was ____________ http://www.judis.nic.in Page No 53 of
112 C.S.No.231 of 2013 used by the defendant for various food products:-
i. MAGGI Magic Sinigang ii. MAGGI MagicSarap iii. MAGGI Magic Chef iv. MAGGI
Magic Meals v. MAGGI MagicSabaw vi. MAGGI MagicLezat vii.MAGGI Magic Asia
viii.MAGGI Magic Curry mix ix. MAGGI Magic Chicken
115. It is further submitted that in the year 1986, the defendant also had a food
festival called “Maggi Magical Meal (noodles)” in a restaurant called “Samovar” in
Ashok Hotel, New Delhi [Exhibit D2 (series)]. It is therefore submitted that the word
“Magical” was used by the defendant much earlier.
116. The defendant also referred to several other products in the food industry where the word
“Magic” was used and therefore submits that apart from the fact that the word “Magic” being
laudatory and incapable of any unfair appropriation and protection was in use in the trade even
before the plaintiff entered the FMCG sector in the year 2010 when it launched “Sunfeast Yippee!
noodle” in two different flavours, namely, “Classic Masala” and “Magic Masala”. In this connection,
the ____________ http://www.judis.nic.in Page No 54 of 112 C.S.No.231 of 2013 defendant
referred to the following products with their labels on the wrappers which were marked as Exhibits
D5 & D7(series):-
i. Lay’s Magic Masala ii. Balaji Magic Masala iii. Hello Just 2 Good! Magic Masala iv.
Samrudhi Kitchen Magic Masala v. SDS Magic Masala vi. Bindaas Masala Magic vii.
Janak Magic Noodles Masala viii. Shreya Magic Mazaa Mix ix. Chatpati Magic Zeera
Masala x. Food Glory Kitchen Magic Masala xi. Soya Masala Chow You & Me Magic
xii. MasalaChowmein You & Me Magic xiii.FoodyMacroni Magical Masala xiv. Magic
Chow xv. Soya Masala Chow You & Me Magic xvi.MasalaChowmein You & Me Magic
xvii.FoodyMicroni Magical Masala xviii.Magic Chow xix.Knorr Soupy Noodles Mast
Masala xx.Nissin Cup Noodles Mast Masala xxi.Mug Noodles Mast Masala
xxii.Walmart’s Instant noodles Mast Masala xxiii.NESTLE Slim Milk xxiv.Danone
Slim Milk xxv.Good life Slim Milk xxvi.Tropicana Slim Milk xxvii.Alaska Slim Milk
xxviii.Good Milk Slim
117. It is further submitted that the products with the brand name Maggi has a
tremendous market presence since 1974 in India starting ____________
http://www.judis.nic.in Page No 55 of 112 C.S.No.231 of 2013 with a turnover of
Rs.0.02 Crore in the year 1972 to a staggering amount of Rs.2377/- crores in the year
2012.
118. That apart, the defendant has claimed to have spent a whopping amount of Rs.112.9 crores in
the year 2012 towards promotional expenditure which was pegged at Rs.0.89 crore in the year 1978.
It is submitted that the trademark Maggi has attained the status of the well-known trademark and
that the defendant has about 80% of the market share in the instant noodle segment and therefore it

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is improper to accuse the defendant of unfairly adopting a so-called trademark of the plaintiff to
pass-off their Maggi noodles as that of the defendant.
119. The learned counsel appearing for the defendants relied on the following case laws:
i. Laxmikant V. Patel Vs. Chetanbhai Shah @ anr., AIR 2002 SC 275.
ii. Britannia Industries Ltd. Vs. ITC Limited, 2017(70) PTC 66 (Del) (DB).
iii. IntexTechnologies (India) Ltd. and Anr. Vs. AZ Tech (India) and Ant., 2017(70)
PTC 118 (Del) (DB).
____________ http://www.judis.nic.in Page No 56 of 112 C.S.No.231 of 2013 iv. British Sugar

PLC Vs. James Robertson & Sons Ltd., (Descriptive sub-brand), (1996) R.P.C. 281. v. McCain
International Ltd. Vs. Country Fair Foods Limited and another, (1981) R.P.C. 69.
vi. Horlick’s Malted Milk Company Vs. Summarskill (Descriptive sub-brand), 34 R.P.C. 63.
vii.Sant Kumar Mehra Vs. Ram Lakhan, (1999) PTC (19) 307 viii.Kalyan Kumar Gogoi Vs. Asuthosh
Agnihotri and Ors., (2011) 2 SCC 532.
ix. Corn Products Refining Co. Vs. Shangrila Good Products Ltd., AIR 1960 SC 142.
x. Kaira District Co-Operative Milk Producers Union Ltd., Vs. Bharat Confectionary Works.
xi. Kamal Trading Company Bombay and Others Vs. Gillete U.K. Ltd. Middle Sex, England, 1988
PTC 1. xii.Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmeutical Laboratories, AIR 1965 SC
980. xiii.Ruston and Hornby Ltd. Vs. amindara Engineering Co., AIR 1970 SC 1649.
xiv.J.R.Kapoor Vs. Micronix India, (1994) Suppl. 3 SCC 215.
xv.F.Hoffmann-La Roche & Co. Ltd. Vs. Geoffrey ____________ http://www.judis.nic.in Page No
57 of 112 C.S.No.231 of 2013 Manner & Co. Pvt. Ltd.
xvi.M/s.Johnson and Johnson and Anr. Vs. Christine Hoden India (P) Ltd. and Anr.,AIR 1988 Delhi
249. xvii.Nestle India Ltd. Vs. Mood Hospitality Pvt. Ltd, 2010(42) PTC 514 (Del) (DB).
xviii.The Rajasthan State Industrial Development and Investment Corporation Vs. Subhash Sindhi
Cop. Housing Society Jaipur &Ors., 2013(2) SCALE 434. xix.M.Ambrose Vs. S.Jeyaraj and Ors.,
MANU/TN/4125/2011.
xx.Harish Mansukhani Vs. Ashok Jain,

MANU/DE/1742/2008.

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xxi.Societe des Products Nestle S.A. & Anr. Vs. Shiny Electricals Pvt. Ltd., &Ors. (Order dated
27.08.2018 in suit CS (COMM) 1175 of 2016) (MAGGI – A well- known trademark).
xxii.Mount Mettur Pharmaceutical (P) Ltd. Vs. Dr.A.Wander & Another PTC, (Suppl) (2) 714 (Mad)
(DB).
xxiii.Mahendra & Mahendra Paper Mills Ltd. Vs. Mahindra & Mahindra Limited, AIR 2002 SC 117.
xxiv.Ramesh Khatanmal Lulla Vs. Mohammad Yusuf Abdul Gaffar, AIR 2018 Bom 244.
xxv.Amritdhara Pharmacy Vs. Satyadeo Gupta, AIR ____________ http://www.judis.nic.in Page

No 58 of 112 C.S.No.231 of 2013 1963 SC 449.
xxvi.Hem Coporation Pvt. Ltd. & Ors. Vs. ITC Limited, 2012 (52) PTC 600 (Bom).
xxvii.Honda Motor Enrope Ltd. Vs. Office for Harmonisation in the Internal Market.
xxviii.C & T Holding Aps Vs. Haribo Lakrids A/S, Denmark (EUIPO).
xxix.I.T.C.Limited Company Vs. GTC Industries Ltd. & Another, 2002 (25) PTC 465 (Bom).
xxx.Indchemie Health Specialities Pvt. Ltd. Vs. Intas Pharmaceuticals Ltd. &Ors.
xxxi.Marico Limied Vs. Agro Tech Foods Limited (Descriptive sub-brand), 2010 (44) PTC 736 (Del.)
(DB).
120. He also referred to the following:-
i. Oxford English Reference Dictionary – Second Edition Meaning of MAGIC ii. Webster’s New
World Dictionary Meaning of MAGIC iii. Christopher Wadlow on Passing off iv. Mc Carthy v.
Halsbury’s Laws of England
121. It was further submitted that the defendant has also used “Maggi Magic” food products in other
markets as “Maggi Magic ____________ http://www.judis.nic.in Page No 59 of 112 C.S.No.231 of
2013 Sinigang”, “Maggi Magic Sarap”, “Maggi Magic Chef”, “Maggi Magic Meals”, “Maggi Magic
Sabaw”, “Maggi Magic Lezat”, “Maggi Magic Asia”, “Maggi Magic Curry Mix”, “Maggi Magic
Chicken” etc. prior to 2010 as evident from documents forming part of Exhibit D36 (series).
122. Reliance was placed on the affidavit of DW1 in para 2A, it was stated that “I say that Nestlé is
bonafide adopter and prior user of the word MAGIC and its various derivatives either singularly or
in combination with other terms such as Magic Cubes, Masala-Ae-Magic, Magical etc. Nestlé has
used the mark MAGICAL in relation to advertisement of MAGGI noodles in the year 1986 and has
used MAGIC for cubes in relation to flavour solutions in the year 2003 for two flavours-chicken and
vegetarian. I further say that in the year 2009, the Defendant adopted unique mark being
combination of English, Hindi and Urdu language namely "Masala- Ae-Magic" for aromatic roasted

236
spices acting as taste enhancer.
123. For the ready reference, the products of the plaintiff as well as of the defendant along with the
masala were compared as below:- ____________ http://www.judis.nic.in Page No 60 of 112
C.S.No.231 of 2013 Plaintiff's Product Defendant's Products
124. It is further submitted that the trade has been using “Magic” as product descriptor and
therefore it is not associated with any particular manufacturer or trader and no one can claim
exclusive or proprietary right therein. Under such circumstances, no proprietary right of exclusive
use can be claimed by the plaintiff in the word “Magic”.
125. It is also submitted that in order to succeed in a passing-off claim, it is essential for the plaintiff
to establish that on account of prior adoption and extensive commercial use as trade mark, “Magic
Masala” has acquired distinctiveness (so as to exclusively distinguish the source and origin of the
product with the plaintiff), goodwill and reputation and hence the plaintiff has developed a
proprietary right in the mark. But for ____________ http://www.judis.nic.in Page No 61 of 112
C.S.No.231 of 2013 a mark to acquire such level of distinctiveness, goodwill and reputation
distinguishing any source, use of the mark as trade mark is sine qua non.
126. In the present case, the word “Magic Masala” has been used by the plaintiff to describe the
characteristics and quality of the flavour of masala sold along with “Sunfeast Yippee! noodles”.
Hence, use thereof is incapable of conferring any proprietary right in law on plaintiff. “Magic
Masala” is not the registered trademark of the plaintiff and therefore no statutory right can be
claimed by the plaintiff therein. In the claim for passing-off, the onus is on the plaintiff to establish
that it has proprietary right and such right is not permissible unless the plaintiff establishing the
following three factors namely:
i. That the mark has been used prior in point of time by the plaintiff;
ii. That the mark has been used as trade mark (Section 2(1)(zb)) so as to distinguish
the Plaintiff's product from similar products of others in the trade and not to describe
character or quality of masala;
iii. That upon such exclusive and extensive use as trademark, it has acquired such level of
____________ http://www.judis.nic.in Page No 62 of 112 C.S.No.231 of 2013 distinctiveness,
goodwill and reputation that it has come to identify the source and origin of instant noodles of the
Plaintiff.
127. It is submitted that the plaintiff has not produced any evidence which proves that “Magic” or
“Magic Masala” have acquired such distinctiveness, goodwill or reputation for following reasons:-
i. All trade promotion is for the brand Sunfeast Yippee! leading to plaintiff's instant
noodles being identified by the brand Sunfeast Yippee!;

237
ii. Every retail invoices and purchase of Plaintiff's product are identified by their
brand Sunfeast Yippee! iii. The volume of sales given as Exhibit P3 is not admissible
in evidence on account of mode of proof as the said document has not been adduced
properly. The said objection was raised by the defendant at the time of
Examination-in-chief dated 24.10.2016. The certificate pertaining to volume of sales
is signed by one Mr.Murali Ganesan, EVP-Finance, Procurement and IT, ITC Limited
Foods Division. The said signatory has not filed any affidavit nor has been examined.
As far as PW1 is concerned, he has admitted in cross- examination that he has
verified no documents in support of the figures given in Exhibit P3. Hence, the
Exhibit P3 therefore is hearsay evidence which is not admissible;
iv. Even otherwise, Exhibit P3 is at best evidence of goodwill or reputation of the

brand Sunfeast Yipee! under which the plaintiff's instant noodles are sold.
Considering that there is no independent commercial ____________ http://www.judis.nic.in

Page No 63 of 112 C.S.No.231 of 2013 promotion, sale of the plaintiff's instant noodles under
Magic/Magic Masala by the plaintiff and Magic Masala being used descriptively masala provided to
enhance the flavour and taste of noodles and same being a descriptor of quality of masala, there is
no trade mark usage thereof and no question of it having acquired distinctiveness or a brand
indication of source or no origin arises and consequently no question of proprietary right that can be
claimed therein arises given retail sale has no reference to Magic Masala as brand. When a mark is
neither promoted in advertisement as a brand nor the product is purchased by consumers by such
mark as a brand nor being sold by retailers under it as a brand, there is no brand usage and no
question of such mark acquiring brand equity, distinctiveness, goodwill or reputation arises.
128. It is further submitted by Mr.Hemant Singh, learned counsel for the defendant that even if it is
assumed that the plaintiff has a proprietary right, in order to succeed in a passing-off case, the
plaintiff would have to establish that there is passing-off of the goods of the defendant for those of
the plaintiff.
129. Such claim is liable to be rejected considering that both the products are well distinguishable by
their respective brands “Sunfeast Yippee!” and “Maggi” and the get-up, trade dress and colour
combination of the competing packaging are totally different. ____________
130. Considering that the defendant is the market leader and “Maggi” is a well-known trademark in
the field of instant noodles and other culinary products admittedly, the question of passing-off does
not arise. The defenands sells its product with the brand “Maggi”. It is “Maggi” which is the
trademark which identifies the defendant's product. The well-known character of the trademark
“Maggi” has been recognized by the Hon'ble High Court of Delhi in the suit being Societe des
Products Nestle & Anr Vs. Shiny Electricals & Ors., CS (COMM) 1175 of 2016.
131. It is submitted that the goods are well distinguished by their well-known brands, “Sunfeast
Yippee!” and “Maggi” and considering the fact that the packaging is distinct with different get up

238
and trade dress, there is no question of passing-off of goods of one for the other arises and any such
claim is misconceived and is liable to be rejected. He therefore prayed for dismissal of the suit with
cost.
132. I have considered the arguments advanced by Mr.P.S.Raman, the learned senior counsel who
argued on behalf of the plaintiff. I have ____________ http://www.judis.nic.in Page No 65 of 112
C.S.No.231 of 2013 also considered the argument advanced by Mr.C.Manishankar, the learned
senior counsel who made an elaborate submission on the admissibility of the exhibits introduced by
the defendant
133. I have considered the arguments of Mr.Hemanth Singh, learned senior counsel for the
defendant. I have also considered the evidence on record and the material object filed which are
nothing but packs of plaintiff and defendant.
134. A trademark metaphorically answers the buyer’s question “who are you? Where do you come
from? and Who vouches for you? [See McCarthy on Trademarks and Unfair Competition, 3rd
Edition, J.Thomas McCarthy].
135. The expression “mark” is defined as follows in Section 2(m) of the Trade Marks Act, 1999 as
follows:-
Section 2(m) :‘mark’ includes a device, brand, heading, label, ticket, name, signature,
word, letter, numeral, shape of goods, packaging or combination of colours or any
combination thereof;
136. The expression trademark has been defined in section 2(zb) of the Trade Marks Act, 1999 as
follows:-
Section 2(zb):trade mark” means a mark capable of being represented graphically

and which is capable of distinguishing the goods or services of one person from those
of others and may include shape of goods, their packaging and combination of
colours; and—
(i) in relation to Chapter XII (other than section
107), a registered trade mark or a mark used in relation to goods or services for the
purpose of indicating or so as to indicate a connection in the course of trade between
the goods or services, as the case may be, and some person having the right as
proprietor to use the mark; and
(ii)in relation to other provisions of this Act, a mark used or proposed to be used in
relation to goods or services for the purpose of indicating or so to indicate a

239
connection in the course of trade between the goods or services, as the case may be,
and some person having the right, either as proprietor or by way of permitted user, to
use the mark whether with or without any indication of the identity of that person,
and includes a certification trade mark or collective mark;
137. The purpose of a trademark/service mark is to establish a trade connection between the goods
or the service offered by the ____________ http://www.judis.nic.in Page No 67 of 112 C.S.No.231
of 2013 proprietor of such a trademark/service mark. An average consumer decides to pay for such
goods or service by referring to the mark associated with them.
138. Trademark identifies the goods of the proprietor. It is intended to grab the attention of the
consumer instantly to make a on the spot decision whether to buy the goods or service of a
proprietor. They powerful tools used by proprietors to build a customer base. They collectively
represent the intrinsic value of the goods or service offered by the proprietor. They are the assets of
the proprietors. A trademarks helps a proprietor to sell their goods or service.
139. Trademarks are intangible assets of proprietors. They are by themselves capable of being
bought and sold like any other goods. They are the assets of the proprietors and is capable of being
valued. In fact, even if there is change in ownership of the trademark and the same goods or services
are offered by the transferee or the new proprietor of such mark, the consumer may continue to buy
products or the services offered by such new proprietors. Thus, it is very power asset of a trader or
service provider.
140. Once a mark or the brand has attained certain level of recognition and reputation, the buyers of
goods or service may not even look beyond the brand or the mark .
141. The proprietors therefore invest their time, money, efforts and resources in promoting them
through aggressive advertisement and sales promotion. Proprietors are therefore expected to choose
them wisely before promoting them as their trademark or service mark.
142. However, often proprietors delude themselves in adopting weak marks. Such marks are
incapable of protection and get diluted. Proprietors are not expected to choose words which are not
distinct or which are descriptive or marks which are either ordinary words, common to the trade or
those words which are laudatory. If they do, they do it at their peril.
143. A word or expression becomes trademark, if it is either distinctive or is intended to distinguish

the product. A distinctive mark is ____________ http://www.judis.nic.in Page No 69 of 112
C.S.No.231 of 2013 that mark which requires no proof of its distinctiveness. It is unique and
different from others. It is class apart and stands out as distinctive from others. There is a marked
difference between the generic name and trademarks. Generic name can never be monopolised
while a trademark can be.

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144. To be called as a distinctive mark, the mark should be unique and different from rest in the
milieu. It requires no proof of its distinctiveness. It instantly establishes connect between the
product and its proprietor for the consumers to buy the goods or the service.
145. Generic marks are descriptive of quality of the product and can never confer any proprietary
rights to a person even if it is assiduously projected and promoted as a trademark. Generic names
can never be registered under the law [Section 9 of the Act].
146. As per the said author Mr. J.Thomas McCarthy in McCarthy on Trademarks and Unfair
Competition, 3rd Edition, there are two basic categories of distinctive trademarks. They are as
follows:- ____________ http://www.judis.nic.in Page No 70 of 112 C.S.No.231 of 2013
a) a mark which is distinctive and capable of being protected; and
b) the mark which has acquired distinctiveness through secondary meaning,
147. According to him, within the above two basic categories of distinctive trademark, there are
sub-categories that form the complete spectrum of distinctiveness of marks. Arrayed in an
ascending order roughly reflecting their eligibility to trademark status and the decree of protection
afforded, the categories are follows:-
1) generic terms;
2) descriptive;
3) suggestive; and
4) arbitrary or fanciful.
148. “Descriptive” words are not inherently distinctive while suggestive, arbitrary and fanciful terms
are regarded as being inherently distinctive. [See McCarthy on Trademarks and Unfair Competition,
3rd Edition, J.Thomas McCarthy]. ____________ http://www.judis.nic.in Page No 71 of 112
C.S.No.231 of 2013
149. A mark, which conveys character or quality of the goods, is a descriptive mark. It is an
inherently weak mark and is almost incapable of being protected and/or registered unless it has
acquired distinctiveness due to its long and continuous use over a period of time to the exclusion of
others.
150. Proprietor who chooses words or artistic work which are not distinctive and are inherently
weak or is incapable of protection, run the risk of such mark trampled or used by others. Law will
cannot come to their rescue and they are often left without any remedy. Descriptive marks may
attain distinctiveness on account of its long use and if nobody else had used it prior in time. If the
marks are invented or coined as a new word, it affords a higher decree of protection under law.

241
151. Therefore, before conceiving a mark to establish a trade connection, proprietors are expected to
choose marks wisely which are either arbitrary, fanciful and/or at best suggestive of their
product/goods/services to market.
152. If the mark is suggestive, it would require to pass the test of imagination for being protected.
The more imagination is required on the customer’s part to get the direct description of the product
from the term, the more likely the term is suggestive and not descriptive.
153. In Stix Products Inc. Vs. United Merchants &Mfrs Inc., 295 F.Supp 479,160 USPQ7777
(SCNY1968), Judge Weinfeld’s formulation of the imagination test is often quoted in applied:-
“A term is suggestive if it requires imagination, thought and perception to reach a

conclusion as to the nature of the goods. The term is descriptive if it walked with
conveys an immediate idea of the ingredients, qualifies or characteristics of the
goods”.
154. For instance, Rexona, Vivel, Liril, Margo, etc. for soap, Bata, Reebok for footwear, etc. prima
facie appear to be invented or coined words. They may command a higher decree of protection if
there is a contest. Similarly, Apple for apple computers, Ipad, Iphone or Maggi for ____________
http://www.judis.nic.in Page No 73 of 112 C.S.No.231 of 2013 various food products manufactured
and marketed by the defendant or Sunfeast Yipee! by the plaintiff, Hushpuppies, Pavers, Nike,
Puma etc. for foot wear appear to be fanci & arbitrary words and therefore command a higher decree
of protection.
155. Composite label used by both the plaintiff and the defendant in Exhibits P19 and 21 qualify as
trademarks. However, same cannot be said about the expression “Magic Masala” or “Magical
Masala” used in the respective labels.
156. Under the Trade Marks Act, 1999, proprietors are entitled to apply for registration. If the mark
is registered, such proprietor can take proceedings for infringement of their mark. However, if the
mark is not registered, common law protection of passing-off is available to such proprietors.
157. In Godfrey Philips India Ltd. Vs.Girnar Food & Beverages (P) Ltd., (2004) 5 SCC 257, the
Division Bench of the High ____________ http://www.judis.nic.in Page No 74 of 112 C.S.No.231
of 2013 Court had held that phrase “SUPER CUP” which was used as a trademark was descriptive
and laudatory of the goods of the appellant and, therefore, the appellant was not entitled to any
order of injunction.
158. The Hon’ble Supreme Court however while remanding the case to the Division Bench of the
High Court held that, “A descriptive trade mark may be entitled to protection, if it has assumed a
secondary meaning which identifies it with a particular product or as being from a particular
source”.

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159. Thus, a “descriptive term” which directly and clearly conveys information about the ingredients,
qualities and characteristics of the product or services is not protectable at the first instance but may
qualify for protection if it has assumed a secondary meaning and identifies a particular product or as
being from a particular source.
160. On the other hand, a “suggestive term” used as a mark which indirectly suggest the qualities
and characteristics of the product may be ____________ http://www.judis.nic.in Page No 75 of
112 C.S.No.231 of 2013 registrable and protected.
161. Before an expression attains a secondary meaning in the eyes of the consumers, it has to go
through a long and an arduous uninterrupted use. Such use are at the risk of being run-over or
trampled and used by others. Before such words or expression achieve a secondary meaning, they
are at the risk of being used by others in which case they loose their claim for protection under law.
162. If such a proprietor initiates an action for an injunction to exclude a subsequent user in their
journey to distinguish such words as their marks, the Courts rarely rescue such proprietors. Such
proprietors promote such words or expression as their marks at their peril.
163. Thus, the thumb rule under the law is that words or the expression which and are not
distinctive are inherently weak and are therefore incapable of being registered or protected.
164. However, such words may become distinctive on account of their long and uninterrupted use
over a period time as a result of which they may get a secondary meaning and the consumer may
begin to associate them with the goods of such proprietor.
165. It is the submission of the learned senior counsel for the plaintiff that the expression “Magic
Masala” at best was suggestive and therefore the petitioner was entitled for the relief. It is submitted
that the expression “Magic Masala” was not a descriptive expression as there is no “Masala” in the
Indian culinary which is called “Magic”.
166. Alternatively, it was argued that even if the expression “Magic Masala” was construed to be
descriptive, it had become distinctive with the Sunfeast Yippee! noodles of the plaintiff and plaintiff
alone and therefore the plaintiff was entitled to protection. In this connection, the learned counsel
for the plaintiff alluded to the deposition of the PW2 to PW6, news paper clipping vide Exhibit P6
and report of the IMRB vide Exhibit P7.
167. It is the submission of the learned senior counsel for the plaintiff that the expression “Magic
Masala” had attained a secondary meaning right at the inception in 2010 when the plaintiff
launched Sunfeast Yippee! noodles with their sub- brand “Magic Masala”. In this connection, the
reference to the name “SIFY” in Satyam Computers case was invited.

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168. Before proceeding further, I shall also briefly refer to certain decisions on the law relating to
passing-off. The expression "passing- off" has not been defined anywhere under the Trade Marks
Act, 1999 though there is a reference to the same in Section 27(2) and Sections 105(C), 106 and 135
of the Act.
169. The expression “passing-off” means and suggest to pass-off one’s goods as that of another
person whose product has a reputation in the market and to dilute such person’s goodwill. It is to
trade on the good-will of another person and thereby not only to deceive the buyers (consumers) but
also is intended to cause injury to the proprietor of the trademark. This is the essence of passing off.
170. Passing- off action is a common law remedy recognised under the above Act. An action for
passing-off is a broader remedy than an action for infringement of a trademark under Section 134
the said Act. It is to restrain or stop by an order of a Court an unfair trade practice by a competitor
who misleads the consumer by making them believe that they are indeed purchasing the goods of
his competitor.
171. An action for passing-off is not merely confined to protect an unregistered trademark of a
proprietor. It is also intended to protect overall colour scheme, get-up, layout and trade dress etc.
adopted by a proprietor which his competitor unfairly copies and causes deception on the consumer
and thereby inflicts a loss on the proprietor.
172. Loss to the consumer is the actual loss for the consumer is cheated by the competitor. Though a
consumer suffers, rarely a consumer take action against the perpetrator unless the consumer
approaches the Consumer Forum.
173. Loss to the proprietor in the case of passing-off is a direct reduction in sale, growth, dilution of
the intrinsic value of the mark and risk of being exposed to unnecessary civil action and the
expenses incurred in connection of burden of vigilient.
174. The purpose of passing-off action is not only to protect commercial goodwill but is also to
ensure that the purchasers are not exploited and dishonesty intrading is prevented. For that the
plaintiff must establish that his business or goods have acquired reputation. [Sir Shadi Lal
Enterprise Ltd.Vs. Kesar Enterprise Ltd., 1998 PTC(18)].
175. On passing-off, eminent jurist Salmond in Law of Torts, 17th Edn. p. 401 has stated as follows: -
"The gist of the conception of passing-off is that the goods are in effect telling a
falsehood about themselves, are saying something about themselves, which is
calculated to mislead. The law on this matter is designed to protect traders against
that form of unfair competition which consists in acquiring for oneself, by means of
false or misleading devices the benefit of the reputation already achieved by rival

244
traders."
176. In an action for passing-off, the plaintiff is required to show colourable imitation so calculated
to cause deception that the goods traded by him are to be taken to by the ordinary purchaser as that
of the plaintiff.
177. While testing whether there is actual confusion or not by such copying, the court adopts the test
of an ordinary person with an average intelligence and imperfect recollection. [See Corn Products
Refining Co. Vs. Skangrila Food Products Ltd., (1960) (1) SCR 968 and Amritdhara Pharmacy Vs.
Satya Deo Gupta, (1963) 2 SCR 484: AIR 1963 SC 449]. In Amritdhara Pharmacy Vs. Satya Deo
Gupta, (1963) 2 SCR 484 : AIR 1963 SC 449, on facts it was held that “To such a man the overall
structural and phonetic similarity-of the two names “Amritdhara” and “Lakshmandhara” is, in our
opinion, likely to deceive or cause confusion”.
178. In Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, the Hon’ble
Supreme Court observed as under:
Broadly stated, in an action for passing-off on the basis ____________ http://www.judis.nic.in

Page No 81 of 112 C.S.No.231 of 2013 of unregistered trade mark generally for deciding the question
of deceptive similarity the following factors are to be considered:
(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite
marks i.e. both words and label works.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their
education and intelligence and a degree of care they are likely to exercise in purchasing and/or using
the goods.
(f) The mode of purchasing the goods or placing orders for the goods.
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity
between the competing marks.
179. In Toyota Jidosha Kabushiki Kaisha Vs. Prius Auto Industries, (2018) 2 SCC 1, it was held that
an action for passing-off is premised on the right of the prior user generating a goodwill and is
unaffected by any registration of the mark under the Act. To prove and establish an action of

245
passing-off, three ingredients are required to be ____________ http://www.judis.nic.in Page No

82 of 112 C.S.No.231 of 2013 proved by the plaintiff ie. Goodwill, misrepresentation and damages.
Actual deception is not required [Century Traders Vs. Roshan Lal Duggar & Co., AIR (1978)
250(DEL)].
180. In Eastman Photography Materials Company, Limited Vs. The Comptroller-General of Patents,
Designs, And Trade-Marks Respondent, [1898] A.C. 571, it was observed as follows:-
“We would add upon this point that we think that where any English word would be
rejected as not entitled to registration, no person ought to be permitted to register its
translation into any other language. The question has been raised whether a word
having the same sound as one entered on the register, though differently spelt and
with a different meaning, should be registered. The question in such a case would
seem to be whether the resemblance between the old mark and that applied for was
such as to be calculated to deceive; if it were it ought, of course, to be rejected.”
181. Lord Halsbury further observed as under:-
“Of course also words which are merely mis-spelt, but which are nevertheless, in
sound, ordinary English words, and the use of which may tend to deceive, ought not
to be permitted.”
182. In Ruston Vs. Zamindara, AIR 1970 SC 1649, the Hon’ble ____________
http://www.judis.nic.in Page No 83 of 112 C.S.No.231 of 2013 Supreme Court held
that the test in the case of passing-off is whether the defendant selling goods so
marked is to be designed or is calculated to lead purchasers to believe that they are
the plaintiff's goods?”
183. In Oertli Vs. Bowman, 1957 RPC 388 (CA) (at p. 397), the gist of passing-off
action was explained by stating that it was essential to the success of any claim to
passing-off based on the use of given mark or get-up that the plaintiff should be able
to show that the disputed mark or get-up has become by user in the country
distinctive of the plaintiff's goods so that the use in relation to any goods of the kind
dealt in by the plaintiff of that mark or get-up will be understood by the trade and the
public in that country as that of the goods of the plaintiff's goods.
It is in the nature of acquisition of a quasi-proprietary right to the exclusive use of the mark or
get-up in relation to goods of that kind because of the plaintiff having used or made it known that
the mark or get-up has relation to his goods. Such right is invaded by anyone using the same or
some deceptively similar mark, get-up or name in relation to goods not of plaintiff. The three
elements of passing-off action are the reputation of goods, possibility of deception and likelihood of
damages ____________ http://www.judis.nic.in Page No 84 of 112 C.S.No.231 of 2013 to the
plaintiff. In our opinion, the same principle, which applies to trade mark, is applicable to trade
name.

246
184. In Satyam Infoway Ltd. Vs. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145, the Hon’ble Supreme
Court was concerned with an invented / coined word “Sify” and held that in “An action for passing
off, as the phrase “passing off” itself suggests, is to restrain the defendant from passing-off its goods
or services to the public as that of the plaintiff's. It is an action not only to preserve the reputation of
the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its
services in a manner which has deceived or would be likely to deceive the public into thinking that
the defendant's goods or services are the plaintiff's. The action is normally available to the owner of
a distinctive trade mark and the person who, if the word or name is an invented one, invents and
uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is
able to establish prior user will succeed. The question is, as has been aptly put, who gets these first?
It is not essential for the plaintiff to prove long user to establish reputation in a passing-off action. It
would depend upon the ____________ http://www.judis.nic.in Page No 85 of 112 C.S.No.231 of
2013 volume of sales and extent of advertisement.
185. That apart, the Court has to view whether there is likelihood of confusion with the possible
injury to the public and consequential loss to the appellant. Similarity in the name may lead an
unwary user of internet of average intelligence and imperfect recollection to assume the business
connection between the two. Thus, to maintain a suit for passing- off, the plaintiff has to be
established that the mark is distinctive.
186. In order to show what amounts to sufficient business to amount to goodwill, the claimant
should show that it has sufficient goodwill in the form of customer base.
187. In Laxmikant V. Patel Vs. Chetanbhai Shah, (2002) 3 SCC 65, the Hon’ble Supreme Court
observed as under:-
13. In an action for passing-off it is usual, rather essential, to seek an injunction,

temporary or ad interim. The principles for the grant of such injunction are the same
as in the case of any other action against injury complained of. The plaintiff
____________ http://www.judis.nic.in Page No 86 of 112 C.S.No.231 of 2013 must
prove a prima facie case, availability of balance of convenience in his favour and his
suffering an irreparable injury in the absence of grant of injunction. According to
Kerly (ibid, para 16.16) passing-off cases are often cases of deliberate and intentional
misrepresentation, but it is well settled that fraud is not a necessary element of the
right of action, and the absence of an intention to deceive is not a defence, though
proof of fraudulent intention may materially assist a plaintiff in establishing
probability of deception. Christopher Wadlow in Law of Passing-Off (1995 Edn., at p.
3.06) states that the plaintiff does not have to prove actual damage in order to
succeed in an action for passing-off. Likelihood of damage is sufficient. The same
learned author states that the defendant's state of mind is wholly irrelevant to the
existence of the cause of action for passing- off (ibid, paras 4.20 and 7.15). As to how
the injunction granted by the court would shape depends on the facts and
circumstances of each case. Where a defendant has imitated or adopted the plaintiff's
distinctive trade mark or business name, the order may be an absolute injunction

247
that he would not use or carry on business under that name (Kerly, ibid, para 16.97).
188. In JK Oil Industries Vs. Adani WilmarLtd., 2010 (42) PTC 639 (Del.), the Delhi High Court has
observed as follows:
“In order to bring home a tort of passing off, the plaintiff will have to establish and
prove the following: (i) the defendant has made a false representation or employed
deception. Mere confusion will not suffice; (ii) because of such false representation
an unwary consumer is deceived, ____________ http://www.judis.nic.in Page No
87 of 112 C.S.No.231 of 2013 though there is no necessity to prove intent; and (iii)
lastly, the false representation has injured the plaintiff"s goodwill and not just its
reputation. 11.1 In sum and substance passing off is really a tort of false
representation whether intentional or unintentional whereby, one person attempts to
sell his goods or service as those manufactured or rendered by another, which is,
"calculated" to damage the goodwill of the other person. (See Erven Warnink BV vs
Townend & Sons (Hull) Ltd 1980 RPC 31 at page93). Therefore, for the plaintiff to
succeed, it will have to prove all three ingredients referred to hereinabove. (See
Island Trading vs Anchor Brewery 1989 RPC 287 at page 295).
189. In Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceuticals Laboratories, (1965) 1
SCR 737:AIR 1965 SC 980, the Court recognised that passing-off is a Common Law remedy being in
substance an action for deceit, that is, a passing-off by a person of his own goods as that of another.
In the same decision, the Court held as follows:-
“30. The mark of the respondent which he claimed was infringed by the appellant
was the mark ‘Navaratna Pharmaceutical Laboratories’, and the mark of the
appellant which the respondent claimed was a colourable imitation of that mark is
‘Navaratna Pharmacy’. Mr Agarwala here again stressed the fact that the ‘Navaratna’
which constituted an essential part or feature of the Registered Trade Mark was a
descriptive word in common use and that if the use of this word in the appellant's
mark were disregarded there would not be enough material left for holding that the
appellant had used a trade mark which was deceptively similar to that of the
respondent. But this proceeds, in our opinion, on ignoring that the appellant is not,
as we have explained earlier, entitled to insist on a disclaimer in regard to that word
by the respondent. In these circumstances, the trade mark to be compared with that
used by the appellant is the entire registered mark including the word ‘Navaratna’.
Even otherwise, as stated in a slightly different context: [Kerly on Trade Marks 8th
Edn. 407] “Where common marks are included in the trade marks to be compared or
in one of them, the proper course is to look at the marks as wholes and not to
disregard the parts which are common”.”
190. In Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd., (1955) 2 SCR 252 :
AIR 1955 SC 558, in para 14, it has been held as follows:-

248
14. It is true 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. As said by Lord Esher in Pinto v. Badman [8 RPC 181 at p 191] :
____________ http://www.judis.nic.in Page No 89 of 112 C.S.No.231 of 2013 “The

truth is that the label does not consist of each particular part of it, but consists of the
combination of them all”.
Observations to the same effect will be found also in In re Apollinaris Company's

Trade Marks [LR (1891) 2 Ch 186] , In re Smokeless Powder Co., In re Clement and
Cie [LR (1900) 1 Ch 114] and In re Albert Baker & Company and finally in the Tudor
case referred to above which was decided by Sargant, J. This circumstance, however,
does not necessarily mean that in such a case disclaimer will always be unnecessary.
It is significant that one of the facts which give rise to the jurisdiction of the tribunal
to impose disclaimer is that the trade mark contains parts which are not separately
registered. It is, therefore, clear that the section itself contemplates that there may be
a disclaimer in respect of parts contained in a trade mark registered as a whole
although the registration of the mark as a whole does not confer any statutory right
with respect to that part.
191. In F. Hoffmann-La Roche & Co. Ltd. Vs. Geoffrey Manner & Co. (P) Ltd., (1969) 2 SCC 716 at
page 720, it was held as follows:-
“It is also important that the marks must be compared as wholes. It is not right to
take a portion of the word and say that because that portion of the word differs from
the corresponding portion of the word in the other case there is no sufficient,
similarity to cause confusion.The true test is whether the totality of the proposed
trade mark is such that it is likely to cause deception or confusion or mistake in the
minds of ____________ http://www.judis.nic.in Page No 90 of 112 C.S.No.231 of
2013 persons accustomed to the existing trade mark.Thus,in Lavroma case [Tokalon
Ltd. v. Davidson & Co., 32 RPC at 133 at 136] Lord Johnston said:
“… we are not bound to scan the words as we would in a question of comparatioliterarum. It is not a
matter for microscopic inspection, but to be taken from the general and even casual point of view of
a customer walking into a shop.”
192. In Amritdhara Pharmacy Vs. Satya Deo Gupta, (1963) 2 SCR 484 : AIR 1963 SC 449, in para 8,
it was been held as follows:
“8. We agree that the use of the word “dhara” which literally means “current or
stream” is not by itself decisive of the matter. What we have to consider here is the
overall similarity of the composite words, having regard to the circumstance that the
goods bearing the two names are medicinal preparations of the same description. We

249
are aware that the admission of a mark is not to be refused, because unusually stupid
people, “fools or idiots”, may be deceived. A critical comparison of the two names
may disclose some points of difference, but an unwary purchaser of average
intelligence and imperfect recollection would be deceived by the overall similarity of
the two names having regard to the nature of the medicine he is looking for with a
somewhat vague recollection that he had purchased a similar medicine on a previous
occasion with a similar name. The trade mark is the whole thing-the whole word has
to be considered. In the case of the application to register “Erectiks” (opposed by the
proprietors of the trade mark “Erector”) Farwell, J., said in William Bailey
(Birmingham) Ltd.
____________ http://www.judis.nic.in Page No 91 of 112 C.S.No.231 of 2013 Application [(1935)

52 RPC 137] :
“I do not think it is right to take a part of the word and compare it with a part of the other word; one
word must be considered as a whole and compared with the other word as a whole…. I think it is a
dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a
portion of the other word.””
193. Issue Nos.1 and 5 are the same. They are therefore para- phrased as a single issue as follows:-
“Whether the expression “Magic Masala” qualifies as a trademark and is capable of

being monopolised to the exclusion of defendant and others”?
194. Issue Nos.2 & 6 are the same. They are also para-phrased as follows:
“Whether in the facts there was passing-off of the instant noodle by the defendant by
adopting the expression “Magical Masala” for trading its “Maggi xtra delicious
Magical Masala” Noodles?”
195. In my view, the above issue are the primordial issues to this ____________
http://www.judis.nic.in Page No 92 of 112 C.S.No.231 of 2013 case. While answering
these above issues, I shall answer rest of the issues as well.
196. According to the plaintiff, it was the prior adopter of the expression “Magic Masala” as a
sub-brand along with its primary brand/trademark “Sunfeast Yippee! noodles” to market instant
noodle in 2010. Adoption of the offending expression “Magical Masala” by the defendant for
marketing its instant noodle in 2013 was not bonafide.
197. It is submitted that defendant has copied the word “Magic” from the plaintiff’s label by adding a
syllable “al” to the word “Magic” cause confusion in the minds of the public.
198. The plaintiff claims that both “Magic Masala” and “Magical Masala” are the respective
sub-brands and since the latter is phonetically similar to the former and since both the plaintiff and

250
the defendant are in the same business, i.e. sale of instant noodles, there is deception and confusion
and therefore the defendant was liable to be permanently injuncted.
199. It is submitted that the expression “Magical Masala” is phonetically similar to “Magic Masala”
used by the plaintiff and therefore there is passing-off by the defendant as was demonstrated in the
deposition of PW2 to PW6 and the report of IMRB vide Exhibit P7.
200. It is submitted that the adoption of the expression “Magical Masala” was calculated with a view
to cause confusion in the minds of the consumer and therefore to pass -off the defendant’s instant
noodle as that of the plaintiff’s noodle.
201. On the other hand, it is the claim of the defendant that both the expression “Magic Masala” and
“Magical Masala” have been used both by the plaintiff and the defendant as a flavour descriptor and
therefore are incapable of being protected and therefore the suit was liable to be dismissed.
202. From the evidence on record, it is clear that it is the defendant who has used the expression
“Magic” for some its food items prior to the ____________ http://www.judis.nic.in Page No 94 of
112 C.S.No.231 of 2013 plaintiff though not for instant noodles.
203. The defendant has adopted “Dal Magic” (Seasoning), “Maggi Masala-Ae-Magic” (taste
enhancer), “Maggi Magic Cubes” (for flavour solutions) and “Maggi Real Magic” as in Exhibits
D31(series), P19 and D11 (series) much prior to the plaintiff.
204. The word “Magic” is also commonly used in the food and cosmetic industry. It is also used in a
variety of the products cutting across different segments of goods as is seen from the trademark
search report in Exhibit D43 downloaded by the defendant from the Trade Mark Registry’s website.
205. It also appears that the expression “Magic Masala” was first adopted by Lays for their potato
chips [Exhibit D-15]. It was rather used to name the flavour along some of its other flavours such as
classic, onion flavour, etc. ____________ http://www.judis.nic.in Page No 95 of 112 C.S.No.231 of
2013
206. The adoption of the aforesaid expression “Magic Masala” by Lays was much prior to the
plaintiff’s foray into instant noodle market and adoption of the same expression for its Sunfeast
Yippee! noodles in 2010. Both these products have same consumers and have similar target groups.
The point of sale is also similar.
207. Both the words “Magic” and its derivative “Magical” are common to the trade. Therefore,
neither the plaintiff nor the defendant can claim any monopoly over the expression Magic” or
“Masala” for they are common words in Indian culinary and Indian food industry. Issue No.9 is
answered accordingly in the affirmative.

251
208. The adoption of the word “Magic” by the plaintiff was inspired from the use of the said word
across the industry and also from some of the food products of the defendant.
209. Thus, it would be fair to conclude that the expression “Magic Masala” was inspired from both
the common words viz. “Magic” and “Masala” as they were not only used by the defendant for some
of its ____________ http://www.judis.nic.in Page No 96 of 112 C.S.No.231 of 2013 products as
mentioned above but also from other products in the food and cosmetic industry.
210. It would be also fair to conclude that the plaintiff was the first to use the combination of the two
words i.e. “Magic” and “Masala” as “Magic Masala” for noodles in 2010.
211. The adoption of the expression “Magical Masala” by the defendant was inspired not only from
the words “Magic” and “Magical” which are common to the trade but also from some of its own
products. It was therefore certainly inspired from adoption of the expression “Magic Masala” by the
plaintiff in 2010 for its “Sunfeast Yippee!” noodles. However, such adoption cannot be said to be
malafide. It was a legitimate adoption by the defendant as no person can appropriate common and
laudatory words.
212. There is no reason or explanation forthcoming from the plaintiff as to why the expression
“Magical Masala” or for that matter “Magic Masala” was not adopted by the defendant earlier as it
has used ____________ http://www.judis.nic.in Page No 97 of 112 C.S.No.231 of 2013 these
words for one or more of its products and for a food festival earlier in 1986 [Exhibit D29].
213. It also requires no detailed enquiry on facts draw a conclusion that the expression “Magic
Masala” was in the contemplation of the defendant when it adopted the phrase “Magical Masala” for
its “Maggi Instant Noodles”. Since the defendant has used the expression “Magic” prior in time.
Issue No.8 is thus answered in favour of the defendant.
214. In this connection, reference to the Latin phrase “Res Ipsa loquitur” i.e. the thing speaks for
itself is apposite. Though traditionally this doctrine was used in the case of tortious liability in
accident case, it appears that the Courts have over a period of time used this phrase for resolving
Trade Mark disputes as well.
215. The defendant has defended its action by stating that not only the plaintiff adopted the
expression “Magic Masala” as flavour descriptor but it also adopted the expression “Magical Masala”
as a flavour descriptor for its “Maggi Xtra delicious Magical Masala”. ____________
216. According, the plaintiff, the expression “Magic Masala” was a suggestive term and not
descriptive. It is submitted that even if descriptive, the plaintiff is entitled to protection in the light
of the ratio of the Hon’ble Supreme Court in Godfrey Philips India Ltd Vs. Girnar Food & Beverages
(P) Ltd., (2004) 5 SCC 25.

252
217. It is interesting to note a divergent and conflicting views expressed by the same publication in
UK and India on the same subject. They are reproduced below:-
Halsbury’s Laws of England, Halsbury’s Laws of India Vol 20(1) Volume 48 “Trade
marks can be laudatory and still “Although no statutory limitation be registerable.The
decision depends on is imposed on words registerable the degree to which the trade
mark is on proof of distinctiveness, words descriptive of the character or quality of of
a purely laudatory or the goods and on whether the mark is descriptive nature cannot
be one which other traders would or adapted to distinguish, however should be able
to use to describe their extensive the user maybe. The goods. It must be established
that the same rule applies in general to laudatory significance of the mark will
geographical names, unless not be perceived by the public as a these have clearly no
reference direct reference to the character or either to the character or to the quality
of the goods. Such reference origin of the goods. A misspelt must be direct and plain
and not remote version of a wholly and far-fetched. Likewise the word unregisterable
word is itself ____________ http://www.judis.nic.in Page No 99 of 112 C.S.No.231
of 2013 construed as laudatory must have unregisterable.” obvious significance of
praise and must not require to be spelt out by a laboured process.”
218. Though there are divergent and conflicting views on the same subject by the
same journal published in India and UK, in my view, it is perhaps on account of the
solitary observation of the Hon’ble Supreme Court in Godfrey Philips India Ltd Vs.
Girnar Food & Beverages (P) Ltd., (2004) 5 SCC 25 that “ A descriptive trademark
may be entitled to protection, if it has assumed a secondary meaning which identifies
it with a particular product or as being from a particular source”.
219. However, on facts it is to be noted that the expression “Magic” was not used as a “flavour
descriptor” by the plaintiff because there is no flavour known to the world which is called “Magic”.
Therefore, the expression “Magic Masala” was not used as a flavour descriptor by the plaintiff. The
plaintiff has used the word “Magic” to name the flavour in sachet as “Magic” and thus called it
“Magic Masala”.
220. It would therefore be incorrect to conclude on facts that the ____________

http://www.judis.nic.in Page No 100 of 112 C.S.No.231 of 2013 expression “Magic Masala” was used
by the plaintiff as a “flavour descriptor”. Therefore, Issue No.3 is answered in favour of the plaintiff.
Issue No.4 is irrelevant for the same reason.
221. However, at the same time, the plaintiff has used the expression “Magic Masala” in a laudatory
manner to praise the “Masala” in the sachet. Laudatory epithet cannot be given monopoly or
protection as has been held by Courts. The expression “Masala” signifies a mixture of ground spices
used in Indian cooking. It is a household name in Indian culinary and is used for describing a
mixture of different spice. It is a generic name to collectively call a mix of different spice. The said
word is used across length and breadth of the county irrespective of the zone, culture and
geographical location.

253
222. Taste of masala varies from place to place and is peculiar to the geographical region and
location. It is a common name for describing the mixture of spice in majority of the Indian
languages. Therefore, it can never be appropriated.
223. The word “Magic” is also a common word in the food and cosmetic industry. It is not a coined
or invented word. It is inherently not a distinctive word. It cannot be said that it was adopted to
distinguish the noodles sold by the plaintiff. Since it is a laudatory word, it can never be
monopolised.
224. Further, both the defendant and the plaintiff have themselves established that the word
“Magic” is common to the trade vide Exhibits D8 (series), D9, D19, D22, D36, D38, D43 (series),
etc., and Exhibit P9. Therefore, it is not open for the plaintiff that the word is distinctive to claim any
monopoly over the word “Magic”.
225. Since the words “Magic” and “Masala” are also common word in the packaged food industry
and are used by different manufacturers of different brands of “Masalas”, it would be unfair to
confer or recognise any monopoly over the said expression to the plaintiff whether the exclusion of
the defendants or others from the trade and industry.
226. The plaintiff merely called its flavour as “Magic Masala”. It is to facilitate the consumers to
discern between different flavour under its brand “Sunfeast Yippee!” for instant noodle. Plaintiff did
not intend use “Magic Masala” as trademark or a sub-brand.
227. The fact that no trademark application was filed by the plaintiff to register the aforesaid
expression “Magic Masala” as word mark also shows that the said expression was not intended to be
used as trademark or a sub-brand by the plaintiff.
228. On the other hand, the plaintiff has registered the expression “Sunfeast Yippee!”, “Yipee” and
“Yipee!” [Exhibit D20 (series)] vide T.M. Application Nos.1651223, 1651224, 2301118 and 2301119
respectively. It has not filed a single trademark application for registration of the expression “Magic
Masala” as a word mark.
229. The plaintiff has filed trademark application only for ____________ http://www.judis.nic.in
Page No 103 of 112 C.S.No.231 of 2013 registration of composite label mark vide TM Application
No.2088997 in Class 99 consisting of the expression “Sunfeast Yippee! noodles” and “Magic Masala”
together with the artistic work vide (Exhibit D20) as captured in column below.
230. The word “Magic” is laudatory. It is incapable of being appropriated by the plaintiff. As such no
person can claim any monopoly over the said word “Magic” or “Magical” or their derivative as they
are common to the trade. Therefore, it is incapable of being monopolised by any trader.

254
231. In my view, neither the plaintiff nor the defendant can claim the monopoly over the respective
laudatory words “Magic” or “Magical” along with common word “Masala” to the exclusion of one
another. Therefore, neither the plaintiff nor the defendant can dissect a portion of a label and claim
monopoly over it. As such the plaintiff cannot claim monopoly over the expression “Magic Masala”.
232. It would unfair to take a view that two common English and ____________
http://www.judis.nic.in Page No 104 of 112 C.S.No.231 of 2013 Indian words “Magic” and “Masala”
respectively or when together which are common to the trade former being laudatory had become
distinctive of plaintiff’s “Sunfeast Yippee! noodles” so much so that the expression “Magic Masala”
had transcended itself to the status of a sub- brand. Even in an ephemeral sense, the expression
“Magic Masala” cannot be said to have became distinctive as it is common to the trade.
233. The expression “Magic Masala” and “Magical Masala” are not adapted to distinguish the
noodles sold either by the plaintiff or the defendant. They are adapted only to distinguish different
flavours offered by them with the brand “Sunfeast Yippee!”.
234. Therefore, even though there is a phonetic similarity between the word “Magic” used by the
plaintiff and the word “Magical” used by the defendant, nevertheless they are incapable of being
monopolised as they are not only laudatory but also common to the trade. Issue Nos. 1 & 5 as
para-phrased in paragraph No.193 is thus answered against the plaintiff.
235. Further, from a reading of the in-house literature of the plaintiff, namely, the Annual Reports
for the years 2009 to 2011 [Exhibit D18], it is quite clear that the plaintiff itself did not conceive the
expression “ Magic Masala” as a brand or sub-brand as was argued. Their brand was projected as
“Sunfeast Yippee!” for noodles. Initially, it was introduced in two variants, namely “Classic Masala”
and “Magic Masala” in 2010 and later added another variant “Chinese Masala”. Similarly, Exhibit
D16 (printouts of the plaintiff’s web page under the heading “You ask we answer”) and Exhibit D17
(printout of the facebook page relating to “Sunfeast Yippee! noodles”) show that the plaintiff
projected its brand “Sunfeast Yippee!” and not as “Magic Masala”. Thus, “Magic Masala”, “Classic
Masala” and “Chinese Masala” were used to describe the name of the flavour and not the sub-brand.
Issue No. 7 is answered accordingly.
236. Observation contained herein will not be to the prejudice of the plaintiffs’ right to have the
respective labels containing any of the expression “Magic Masala”, “Chinese Masala” and/or “Classic
Masala” considered for registration under the Trade Marks Act, 1999 ____________
http://www.judis.nic.in Page No 106 of 112 C.S.No.231 of 2013 subject to acceptance of a disclaimer
to the expression “Magic Masala”, “Chinese Masala” and “Classic Masala” by the plaintiff by the
plaintiff.
237. On comparison of two wrappers in column below, it is evident there is no scope for concluding
there could be any passing-off by the defendant. Both the wrappers are reproduced again below:-

255
Plaintiff's packaging Defendant's packaging Ex.P19 Ex.P21 Packaging has primarily a

red Packaging has primarily yellow, and orange colour in the green and red colour in
the background. background.
____________ http://www.judis.nic.in Page No 107 of 112 C.S.No.231 of 2013 The Trade mark is
prominently The trade mark is mentioned at mentioned on the top of the the top as MAGGI. The
trade packaging as SUNFEAST mark MAGGI and MAGGI logo YIPEE!. used since the year 1974 in
India Magic Masala is written for the Xtra Delicious Magical Masala flavour sachet inside the pack
to is written for flavour sachet give taste to the noodles. inside the pack.
238. Overall colour scheme, layout, style and overall the get-up of the two wrappers i.e. of the
plaintiff’s “Sunfeast Yippee! noodles” bearing the expression “Magic Masala” for its instant noodle
and the defendant’s “Maggi Xtra-delicious Magical Masala” are different. There is no scope for
confusion.
239. Respective labels of the plaintiff and defendant are quite different in overall colour, scheme, get
up, layout and trade dress. Each label, i.e. Exhibits P19 and P21 which have been reproduced in this
Judgment, are a separate trade mark within the meaning of Section 2(zb) of the Trade Marks Act,
1999 and qualify for protection as whole.
240. The competing brands viz. “Sunfeast Yippee!” of the plaintiff and “Maggi” of the defendant are
completely different from ____________ http://www.judis.nic.in Page No 108 of 112 C.S.No.231
of 2013 each other. Under law, there is also no scope to dissect the plaintiff’s aforesaid label to
conclude that the defendant has copied the plaintiff’s sub-brand “Magic Masala” as it was never
conceived as brand or trademark by the plaintiff. Therefore, it cannot be said that there is a
misrepresentation by the defendant.
241. Though the defendant is the undisputed market leader in the instant noodles segment and had
commanded about 75% of the market share in the instant noodles segment, it must of felt
threatened by the plaintiff’s rapid inroad into the food industry particularly in the instant noodle
and therefore decided to use “Magical Masala” in two wrappers or packages.
242. It will be therefore wrong to hold that the defendant has made any misrepresentation to ride
upon the alleged reputation and goodwill of the plaintiff while using the expression “Magical
Masala”. Had the defendant not used the words “Magical Masala”, plaintiff could have perhaps at a
later point of time made a claim that the expression “Magic Masala” had become distinctive and
therefore was entitled for a ____________ http://www.judis.nic.in Page No 109 of 112 C.S.No.231
of 2013 monopoly. However, the defendant has intervened at the earliest occasion.
243. In fact, if the plaintiff had filed a trademark application to register the expression “Magic
Masala” as a word mark, it would have been rejected by the Trade Mark Registry under Section 9 of
the Trade Marks Act, 1999.

256
244. Though the adoption of the expression “Magical Masala” by the defendant is inspired from the
adoption of the expression “Magic Masala” and success of the plaintiff, the plaintiff cannot claim any
advantage for the reasons recorded. In my view, the plaintiff is not entitled to succeed in a
passing-off as there is no passing-off by the defendant.
245. As there is no visual or ocular similarity between the two wrappers, there is no scope to infer
passing-off from a ocular or visual comparison of the two labels. Accordingly, Issue Nos. 2 & 6 which
have been re-phrased in paragraph No.194 are answered against the plaintiff. ____________
246. In roads made by the plaintiff in the instant noodle sector with the use of the expression “Magic
Masala” was perhaps on account of the attractive pricing of Rs.10/- per pack of instant noodles as
compared to Rs.15/- by the defendant and on account of the fact that the plaintiff has very strong
market and brand presence under its well known brand “ITC”. Issue Nos. 10 & 11 are irrelevant in
view of the answers to the other issues.
C.SARAVANAN, J.
jen
247. In the result, the suit is dismissed. The plaintiff is not entitled for any of the reliefs as prayed
for. No Costs.
10.06.2020 Index : Yes/No Internet :Yes/No jen ____________ http://www.judis.nic.in Page No

111 of 112 C.S.No.231 of 2013 Pre-Delivery Judgment in C.S.No.231 of 2013 ____________
http://www.judis.nic.in Page No 112 of 112

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1

BEFORE THE REGISTRAR OF TRADE MARKS,

Written Submissions to the Examination Report Dated 04.08.2020

Re: Applicant : M/s ASHISH BHATIA

Trade Mark: INDIA ACCELERATOR (Word)

Sr. No. Particulars Page

1. Written Submission to the 2 - 14

Abhishek Chandra Mishra

Written Submissions to the Examination Report Dated 04.08.2020

Re: Applicant : M/s ASHISH BHATIA

Trade Mark: INDIA ACCELERATOR (Word)

GROUNDS OF OBJECTION OF THE EXAMINATION REPORT

SUBMISSIONS IN RESPECT TO THE ABOVE OBSERVATIONS OF

The Anti-Dissection Rule

3. The above statutory provision embodies the anti-dissection rule. In cases of

Distinctiveness of the Applicant’s Trademark:

7. In response to the averment that the mark is non-distinctive. It is submitted that

8. As observed in Imperial Tobacco v. Registrar of Trade Marks [AIR 1977 Cal

Applicant’s Mark Marks cited in the Examination

13. As cited in P.Narayanan, Law of Trademarks and Passing Off, Sixth

Applicant’s Goods/Services Goods/Services for the cited

Help start-up companies and India-Europe Corridor of

D. Honest and Concurrent Use of the Applicant’s Mark:

22. It is most respectfully submitted that the Applicant is an honest and

Statutory Protection u/s 12 of the Act:

E. Goodwill of the Applicant’s Trademark:

F. Section 17 of the Trademarks Act, 1999

Abhishek Chandra Mishra

CASE LAWS INDEX

Sr. No. Case name Court Citation Held Releva Curren

distinctive and some are

goods should indicate to

goods and the manner in

(a). The honesty of the

applicant's and Cited

Supreme Court of India

DATE OF JUDGMENT: 26/03/2001

L.....I.........T.......T.......T.......T.......T.......T.......J Leave granted. Appellant and respondent are

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Indian Kanoon - http://indiankanoon.org/doc/1114158/ 2

This Court elaborated this principle further at page 363 as under:

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Lastly, in Dyechems case (supra), it was observed in para 54 as under:

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Appeal is disposed of.

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Calcutta High Court

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(c) one or more invented words;

(a) the trade mark is inherently so adapted to distinguish, and

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