Supreme Court of India Trademark Case Law

Supreme court of India has decided following Trademark Cases in India since its establishment in 1950.

Lakha Ram Sharma Vs. Balar Marketing P.Ltd.& Ors

Date: November 27, 2013

Held: During the  pendency  of  this  suit  Respondent  No.  1  had  obtained registration of trade mark ‘KUNDAN’ in its favour. This happened in the year 1995. The appellant prompltly filed the petition under Section  45 and 46 of the Trade and Merchandise Marks Act for rectification of  the said registered trade mark and for cancelling/ expunging the same. This petition was filed on 2.5.1995. Therefore as far as  the  appellant  is concerned, there was not even a  slightest  delay  in  challenging  the  validity of the trade mark obtained  by  Respondent  No.  1.  It  is  a different  matter  that  this  petition  was  returned  for   want   of  territorial  jurisdiction.  However,  the  moment  this  petition   was returned by the Registrar i.e. on 2.11.2004, it  was  presented  before  the IPAB on the same day. Having regard to all these facts we  fail  to understand as to how the Appellate Board could dismiss the petition  on  the ground that it was filed after a delay of 10 years.  The  appellant had pursued his remedy in a bonafide manner and if it was  filed  in  a wrong court and if he has pursued his remedy wrongly by  filing  it  in     Delhi High Court, instead of Madras High Court, principles enshrined in  Section 14 of the Limitations Act clearly get attracted.

Satnam Overseas Vs. Sant Ram & Co.& Anr.       

Date November 22, 2013

Held: We find, in this case on facts, the Assistant Registrar of Trademarks, after perusing the various documents found that there was no non-user of the trademark ‘KOHINOOR” in respect of rice in class 30 for five years and one month prior to the date of the rectification application. That finding is purely a question of fact, which was affirmed by the learned Single Judge as well as the Division Bench. The Division Bench has also found no error in the inclusion of another District also for selling the rice and later extending the benefit of the trademark to the respondents to the whole State of Uttar Pradesh. Cogent reasons have been stated for extending the trademark so far as the respondents are concerned in the whole of the State of Uttar Pradesh. It was pointed out that restricting the trademark to few cities would create lot of complications and litigations as to the exact boundary of a particular city or District. It will also be impossible for the respondents to ensure that its products are not sold to retailers outside the six cities. Putting geographical restrictions was rightly held to be unjust. In our view, reasons stated above cannot be said to be arbitrary or perverse calling for interference by this Court under Article 136 of the Constitution of India.

M/S Young Achievers Vs. Ims Learning Resources Pvt.Ltd.           

Date: August 22, 2013

Held: In the new agreement it was mutually decided by the parties that any violation of the respondent’s trade mark IMS would entitle the respondent to take legal recourse against the appellant. Reference was made to clause 4 of the penultimate paragraph of the new agreement dated 01.02.2011…also submitted that Suit No. CS (OS) 2316 of 2011 was based on prior trade mark rights and not on the agreements dated 01.04.2007 and 01.04.2010. Further it was also pointed out that the new agreement dated 01.02.2011 records the mutual agreement between the parties that the appellant shall not be eligible to use -the trade mark IMS in any form and any breach thereof entitles respondent to seek legal recourse on violation of trade mark IMS. 6. We are of the view that survival of the arbitration clause, as sought by the appellant in the agreements dated 01.04.2007 and 01.04.2010 has to be seen in the light of the terms and conditions of the new agreement dated 01.02.2011. An arbitration clause in an agreement cannot survive if the agreement containing arbitration clause has been superseded/novated by a later agreement.

D.A.V.Boys Sr.Sec.School Etc.Etc. Vs. Dav College Managing Committee

Date: July 23, 2010

Held: We are also satisfied that it would be far more practical and in the best interest of the parties that the proceedings are conducted in Delhi. Further, if the petitioners’ claim is accepted, it would open floodgates for similarly placed persons infringing registered trade marks to approach this Court to transfer their suits to the locations convenient to themselves all over India and defeat the purpose of Section 134 of the Trade Marks Act which confers a jurisdiction with respect to a registered trade mark. Since the issue relating to jurisdiction particularly whether Court at Delhi has jurisdiction or not is to be decided by the Trial Court, we are not expressing anything on the merits of their claims.

Narayanan And Anr. Vs. S. Murali

Date: August 5, 2008

Held: We do not find any infirmity in the judgment of Division Bench of the High Court holding that, before registration is granted for the trade mark, there is no right in the person to assert that the mark has been infringed and that a proposed registration which may, or may not be granted will not confer a cause of action to the plaintiff, whether the application for registration is filed by the plaintiff, or the defendant. 25. In this connection, the following decisions of this Court may be strongly relied upon:- In Wander Ltd. and another Vs. Antox India P. Ltd., [1990 (Supp) SCC 727] (para 16), it has been observed as follows:- “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 another has established for himself in a particular trade or business. The action is regarded as an action for deceit. The tort of passing-off involves a misrepresentation made by a trader to his prospective customers calculated to injure, as a reasonably foreseeable consequence, the business or goodwill of another which actually or probably, causes damages to the business or good of the other trader.” …In the present case, mere filing of a trade mark application cannot be regarded as a cause of action for filing a suit for passing off since filing of an application for registration of trade mark does not indicate any deception on the part of the respondent to injure business or goodwill of the appellants. …In Dhodha House Vs. S.K. Maingi, [(2006) 9 SCC 41] (para 31), it has been observed as follows:- ” A cause of action will arise only when a registered trade mark is used and not when an application is filed for registration of the trade mark. In a given case, an application for grant of registration certificate may or may not be allowed. The person in whose favour a registration certificate has already 14 been granted (sic) indisputably will have an opportunity to oppose the same by filing an application before the Registrar, who has the requisite jurisdiction to determine the said question. In other words, a suit may lie where an infringement of trade mark or copyright takes place but a cause of action for filing the suit would not arise within the jurisdiction of the court only because an advertisement has been issued in the Trade Marks Journal or any other journal, notifying the factum filing of such an application.”….In the aforesaid decision, this Court has expressed its concurrence to the views observed by the Division Bench of the High Court of Madras in Premier Distilleries Pvt. Ltd. Vs. Sushi Distilleries [2001(3) CTC 652], which observed as under:- ” The cause of action in a suit for passing off, on the other hand and as already observed, has nothing at all to do with the location of the Registrar’s office or the factum of applying or not applying for registration. It is wholly unnecessary for the plaintiff to prove that he had applied for registration. The fact that the plaintiff had not applied for registration will not improve 15 the case of the defendant either. Filing of an application for registration of a trade mark, therefore, does not constitute a part of cause of action where the suit is one for passing off.” (Emphasis supplied)..In this view of the matter, we are, therefore, of the opinion that filing of an application for registration of a trade mark does not constitute a part of cause of action in a suit for passing off. The appellants cannot file the suit in the High Court of Madras seeking an injunction to restrain the respondent from passing off his goods using the trade mark A-ONE, based only on the claims made in the trade mark application of respondent filed before the Trade Mark Registry, since the necessary requirements of an action for passing off are absent.

Kabushiki Kaisha Toshiba Vs. Tosiba Appliances Co. & Ors.           

Date: May 16, 2008

Held: The intention to use a trade mark sought to be registered must be genuine and real. When a trade mark is registered, it confers a valuable right. It seeks to prevent trafficking in trade marks. It seeks to distinguish the goods made by one person from those made by another. The person, therefore, who does not have any bona fide intention to use the trade mark, is not expected to get his product registered so as to prevent any other person from using the same. In that way trafficking in trade mark is sought to be restricted….It is beyond any doubt or dispute that sub-section (1) of Section 46 confers a discretionary jurisdiction on the Registrar. The jurisdiction may be exercised if any application is filed by a person aggrieved. The said application has to be filed in the manner prescribed therefor. Whence it is found that the application is filed by a person aggrieved in the prescribed manner, the grounds which would be available to the Registrar for exercise of its discretionary jurisdiction are stated in clauses (a) and (b) of sub- section (1) of Section 46. We may, at the outset, notice that clauses (a) and (b) are disjunctive and not cumulative. Recourse may be taken to either of them or both of them. A combined application even under Section 46 and 56 of the Act is permissible in law. 32. Whereas clause (a) refers to bona fide use of the trade mark; clause (b) stipulates the period upto a date of one month before the date of application, a continuous period of five years or longer elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being. Sub-section (3) postulates an exclusion clause as regards 23 application of clause (b) of sub-section (1) of Section 46 if any non-use of a trade mark which is shown to have been due to special circumstances in the trade or not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates. 33. No doubt, a statute is required to be read as a whole, Chapter by Chapter, Section by Section and clause by clause. However, the purpose for which clauses (a) and (b) of sub-section (1) of Section 46 on the one hand and sub-section (3) thereof, vis-`-vis Section 56 of the Act on the other have been enacted require consideration. The appeared to have been enacted for different purposes.

Ramdev Food Products Pvt. Ltd. Vs. Arvindbhai Rambhai Patel & Ors.    

Date August 29, 2006

Held: It is beyond any doubt or dispute that sub-section (1) of Section 46 confers a discretionary jurisdiction on the Registrar. The jurisdiction may be exercised if any application is filed by a person aggrieved. The said application has to be filed in the manner prescribed therefor. Whence it is found that the application is filed by a person aggrieved in the prescribed manner, the grounds which would be available to the Registrar for exercise of its discretionary jurisdiction are stated in clauses (a) and (b) of sub- section (1) of Section 46. We may, at the outset, notice that clauses (a) and (b) are disjunctive and not cumulative. Recourse may be taken to either of them or both of them. A combined application even under Section 46 and 56 of the Act is permissible in law. 32. Whereas clause (a) refers to bona fide use of the trade mark; clause (b) stipulates the period upto a date of one month before the date of application, a continuous period of five years or longer elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being. Sub-section (3) postulates an exclusion clause as regards 23 application of clause (b) of sub-section (1) of Section 46 if any non-use of a trade mark which is shown to have been due to special circumstances in the trade or not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates. 33. No doubt, a statute is required to be read as a whole, Chapter by Chapter, Section by Section and clause by clause. However, the purpose for which clauses (a) and (b) of sub-section (1) of Section 46 on the one hand and sub-section (3) thereof, vis-`-vis Section 56 of the Act on the other have been enacted require consideration. The appeared to have been enacted for different purposes….The matter may be considered from another angle. If the first respondent has expressly waived his right on the trade mark registered in the name of the appellant-Company, could he claim the said right indirectly? The answer to the said question must be rendered in the negative. It is well-settled that what cannot be done directly cannot be done indirectly. The term ‘Waiver’ has been described in the following words: “Waiver is the abandonment of a right in such a way that the other party is entitled to plead the abandonment by way of confession and avoidance if the right is thereafter asserted, and is either express or implied from conduct..Registration of a trade mark and user thereof per se may lead to the conclusion that the plaintiff has a prima facie case, however, existence thereof would also depend upon the determination of the defences raised on behalf of the respondents. The appellant has raised a triable issue. The same by itself although may not be sufficient to establish a prima facie case but in view of our findings aforementioned, we are satisfied that the appellant has been able to establish existence of a legal right in itself and violation of the registered trade mark on the part of the respondents. We have also considered the comparable strength of the cases of the parties and are of the opinion that the case of the plaintiff-appellant stands on a better footing than the defendants-respondents……Thus, when a prima facie case is made out and balance of convenience is in favour of the appellant, it may not be necessary to show more than loss of goodwill and reputation to fulfil the condition of irreparable injury. In fact, if the first two pre-requisites are fulfilled, in trade mark actions irreparable loss can be presumed to have taken place. The expression “irreparable injury” in that sense would have established injury which the plaintiff is likely to suffer.

M/S Reiz Electrocontrols Pvt. Ltd Vs. Commr. Of Central Excise, Delhi-I  

Date: July 31, 2006

Held: It is well settled that registration of trade mark/brand name once granted relates back to the date of application…”Another rule of equal importance is that laws relating to economic activities should be viewed with greater latitude than laws touching civil rights such as freedom of speech, religion etc. It has been said by no less a person than Holmes, J. that the legislature should be allowed some play in the joints, because it has to deal with complex problems which do not admit of solution through any doctrinaire or strait-jacket formula and this is particularly true in case of legislation dealing with economic matters, where, having regard to the nature of the problems required to be dealt with, greater play in the joints has to be allowed to the legislature. The Court should feel more inclined to give judicial deference to legislative judgment in the field of economic regulation than in other areas where fundamental human rights are involved. Nowhere has this admonition been more felicitously expressed than in Morey v. Doud [354 US 457 (1957)] where Frankfurter, J. said in his inimitable style: ‘In the utilities, tax and economic regulation cases, there are good reasons for judicial self- restraint if not judicial deference to legislative judgment. The legislature after all has the affirmative responsibility. The courts have only the power to destroy not to reconstruct. When these are added to the complexity of economic regulation, the uncertainty, the liability to error, the bewildering a conflict of the experts, and the number of times the Judges have been overruled by eventsself-limitation can be seen to be the path of judicial wisdom and institutional prestige and stability.’ The court must always remember that ‘legislation is directed to practical problems, that the economic mechanism is highly sensitive and complex, that many problems are singular and contingent, that laws are b not abstract propositions and do not relate to abstract units and are not to be measured by abstract symmetry’ that exact wisdom and nice adaptation of remedy are not always possible and that judgment is largely a prophecy based on meagre and uninterpreted experience’. Every legislation particularly in economic matters is essentially empiric and it is based on experimentation or what one may call trial and error C method and therefore it cannot provide for all possible situations or anticipate all possible abuses…If the Tribunal holds that the trade mark registration has any relevance, then question of limitation is really of academic interest. But if it is held that the same has no relevance the question of limitation has to be decided in the background of the factual scenario.

M/S. Dhodha House Vs. S.K. Maingi       

Date: December 15, 2005

Held:

The short question which arises for consideration is as to whether causes of action in terms of both the 1957 Act and the 1958 Act although may be different, would a suit be maintainable in a court only because it has the jurisdiction to entertain the same in terms of Section 62(2) of the 1957 Act? A cause of action in a given case both under the 1957 Act as also under the 1958 Act may be overlapping to some extent. The territorial jurisdiction conferred upon the court in terms of the provisions of the Code of Civil Procedure indisputably shall apply to a suit or proceeding under the 1957 Act as also the 1958 Act. Sub-section (2) of Section 62 of the 1957 Act provides for an additional forum. Such additional forum was provided so as to enable the author to file a suit who may not otherwise be in a position to file a suit at different places where his copyright was violated. The Parliament while enacting the Trade and Merchandise Marks Act in the year 1958 was aware of the provisions of the 1957 Act. It still did not choose to make a similar provision therein. Such an omission may be held to be a conscious action on the part of the Parliament. The intention of the Parliament in not providing for an additional forum in relation to the violation of the 1958 Act is, therefore, clear and explicit. The Parliament while enacting the Trade Marks Act, 1999 provided for such an additional forum by enacting sub-section (2) of Section 134 of the Trade Marks Act. The court shall not, it is well well-settled, readily presume the existence of jurisdiction of a court which was not conferred by the statute. For the purpose of attracting the jurisdiction of a court in terms of sub-section (2) of Section 62 of the 1957 Act, the conditions precedent specified therein must be fulfilled, the requisites wherefor are that the plaintiff must actually and voluntarily reside to carry on business or personally work for gain…..In this case, the Delhi High Court could not have invoked its jurisdiction in terms of the 1957 Act. The primary ground upon which the jurisdiction of the original side of the High Court was invoked was the violation of the 1958 Act, but in relation thereto, the provisions of sub- section (2) of Section 62 of the 1957 Act could not be invoked. The plaintiff was not a resident of Delhi. It has not been able to establish that it carries on any business at Delhi. For our purpose, the question as to whether the defendant had been selling its produce in Delhi or not is wholly irrelevant. It is possible that the goods manufactured by the plaintiff are available in the market of Delhi or they are sold in Delhi but that by itself would not mean that the plaintiff carries on any business in Delhi. It is not in dispute before us that the application for registration of the trade mark was to be filed either at Bombay or at Ahmedabad. The objections thereto by the plaintiff were also required to be filed at the said places. The jurisdiction of the Delhi court could not have been invoked only on the ground that advertisement in respect thereof was published in the Trade Marks Journal. Section 62 of the 1957 Act, therefore, will have no application. The plaintiff has no branch office at Delhi. Its manufacturing facilities are not available at Delhi. Both its trade mark and copyright are also not registered at Delhi. Our attention has been drawn to the provisions of Section 45 of the Trade Marks Act; sub-section 2(m) whereof shows that the marks includes a device, brand, brand, heading , label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. It may be so that in a given case if such label is registered, a violation thereof may give rise to cause of action under the said Act; but only because in a given case, the activities on the part of the defendant may give rise to a cause of action both under the 1958 Act as also under the 1957 Act, the same would not mean, irrespective of the nature of violation, the plaintiff would be entitled to invoke the jurisdiction of the court in terms of sub-section (2) of Section 62 of the 1957 Act. For the purpose of invoking the jurisdiction of a court only because two causes of action joined in terms of the provisions of the Code of Civil Procedure, the same would not mean that thereby the jurisdiction can be conferred upon a court which had jurisdiction to try only the suit in respect of one cause of action and not the other. Recourse to the additional forum, however, in a given case, may be taken if both the causes of action arise within the jurisdiction of the court which otherwise had the necessary jurisdiction to decide all the issues. In this case we have not examined the question as to whether if a cause of action arises under the 1957 Act and the violation of the provisions of the Trade Marks Act is only incidental, a composite suit will lie or not, as such a question does not arise in this case. In Patel Field Marsahal (supra), however, we may notice that a subsequent development has taken place, namely, after the remand, a learned Single Judge of the Delhi High Court is said to have granted an order of injunction in favour of the plaintiff-respondent and the matter is pending before the Division Bench. As we have not expressed our views on the merit of the matter, it is needless to mention that the Division Bench shall proceed to determine the questions raised before it on their own merits.

Bhavanesh Mohanlal Amin And Anr. Vs. Nirma Chemicals Works And Anr.           

Date: November 7, 2005

Held: In Satyam Infoway Ltd. case (supra) it was held that to establish an action of passing off three elements are needed to be established. They are as follows: “(a) The first element 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 plaintiffs. (b) The second element that must be established by the plaintiff is misrepresentation by the defendant to the public and what has to be established is the likelihood of confusion in the minds of the public that the goods or services offered by the defendant are the goods or the services of the plaintiff. In assessing the likelihood of such confusion the Courts must allow for the “imperfect recollection of a person of ordinary memory”. (c) The third element of a passing off action is loss or the likelihood of it.”

Commissioner Of Central Excise-I,New Delhi Vs. M/S S.R. Tissues Pvt. Ltd. & Anr.             

Date August 5, 2005

Held: We hold that no new product had emerged on winding, cutting/slitting and packing. The character and the end-use did not undergo any change on account of the abovementioned activities and, therefore, there was no manufacture on first principles. Similarly, there was no deemed manufacture under section 2(f) of the said Act. In order to make section 2(f) applicable, the process of cutting/slitting is required to be recognized by the legislature as a manufacture under the chapter note or the section note to chapter 48. For example, the cutting and slitting of thermal paper is deemed to be “manufacture” under note 13 to chapter 48. Similarly, note 3 to chapter 37 refers to cutting and slitting as amounting to manufacture in the case of photographic goods. However, slitting and cutting of toilet tissue paper on aluminium foil has not been treated as a manufacture by the legislature. In the circumstances, section 2(f) of the Act has no application. In the case Shyam Oil Cake Ltd. v. Collector of Central Excise, Jaipur reported in 2004 (174) ELT 145, this Court held that if a process is indicated in a tariff entry without specifying that the same amounts to manufacture then indication of such process is merely for identifying the product. For a deeming provision to come into play, it must be specifically stated that a particular process amounts to manufacture and in its absence, the commodity would not become excisable merely because a separate tariff item exists in respect of that commodity. In that matter, the question which arose for determination was – whether refining of edible vegetable oil, as a process, constituted “manufacture”. It was held that the product even after refining continued to remain an edible vegetable oil. It was further held that neither in the section note nor in the chapter note, refining as a process was indicated as amounting to manufacture. In the circumstances, it was held that refining of edible vegetable oil did not amount to “manufacture”. In our view, the ratio of the said judgment is squarely applicable to the facts of the present case. As stated above, the characteristics of the tissue paper in the jumbo roll are not different from the characteristics of the tissue paper in the toilet rolls, table napkins, facial tissues etc. Moreover, cutting/slitting of tissue paper is not indicated in the section note or in the chapter note as amounting to “manufacture” and, therefore, section 2(f) of the Act was also not applicable to the facts of this case. In the case of Moti Laminates Pvt. Ltd. v. Collector of Central Excise, Ahmedabad reported in 1995 (76) ELT 241, this Court held that section 3 of the Act levies duty on all excisable goods mentioned in the schedule provided they are produced and manufactured. Therefore, where the goods are specified in the schedule, they are excisable goods but whether such goods can be subjected to duty would depend on whether they were produced or manufactured by the assessee on whom duty is proposed to be levied. Consequently, it is always open to an assessee to prove that even though the goods in which he was carrying on his business were excisable as they are mentioned in the schedule, they could not be subjected to duty as they were not goods either because they were not manufactured or having been produced or manufactured, they were not marketed or capable of being marketed. In the case of Union of India v. J.G. Glass Industries Ltd. reported in 1998 (97) ELT 5, this Court has succinctly drawn a distinction between manufacture vis-`-vis process and in the course of the judgment, it has been observed as follows: “16. On an analysis of the aforesaid rulings, a two-fold test emerges for deciding whether the process is that of “manufacture”. First, whether by the said process a different commercial commodity comes into existence or whether the identity of the original commodity ceases to exist; secondly, whether the commodity which was already in existence will serve no purpose but for the said process. In other words, whether the commodity already in existence will be of no commercial use but for the said process. In the present case, the plain bottles are themselves commercial commodities and can be sold and used as such. By the process of printing names or logos on the bottles, the basic character of the commodity does not change. They continue to be bottles. It cannot be said that but for the process of printing, the bottles will serve no purposes or are of no commercial use.” Applying the above tests to the facts of the present case, we hold that mere mention of a product in a tariff heading does not necessarily imply that the said product was obtained by the process of manufacturing. That, just because the raw-material and the finished product came under two different headings, it cannot be presumed that the process of obtaining the finished product from such raw-material automatically constituted manufacture. In the present case, merely because tissue paper in the jumbo roll of the size exceeding 36 cms. fell in one entry and the toilet roll of a width not exceeding 36 cms. fell in a different entry, it cannot be presumed that the process of slitting and cutting of jumbo rolls of toilet tissue paper into various shapes and sizes amounted to manufacture. The above tests would also apply to cutting and slitting of jumbo rolls of aluminium foils (which item is the subject matter of some of the civil appeals herein)

M/S Pepsi Foods Limited Vs. Collector Of Central Excise, Chandigarh      

Date: November 25, 2003

Held: The Tribunal made the following crucial observations: “The agreement under which the buyers are permitted to use the trademark is not filed either before the lower authorities or before us. Therefore, no views can be expressed as to whether it is interlinked with the sale of ‘concentrate’. There is also no evidence on record to indicate that the ‘concentrate’ is sold only to those who also enter into agreement to buy the ‘trademark’. In other words, there is no evidence to establish that the agreement to purchase trademark is essential before a buyer purchases the ‘concentrate’. Similarly, there is no evidence that a buyer is not willing to purchase the ‘concentrate’ without purchasing the trademark. In other words, there is no evidence to establish that the sale of concentrate is dependent on the purchase of trademark. In the absence of such evidence it is difficult to hold that the sale of concentrate is interlinked or closely connected and without the sale of trademark there is no sale of concentrate.” It was under those circumstances the royalty payment was excluded from the assessable value of the concentrate. The distinguishing features are self-evident from the observations quoted above. In the result we affirm the decision of the Tribunal and dismiss the appeals. However, we leave it open to the assessee to raise any question as to the computation i.e., the quantum of royalty includible, before the adjudicating authority who has to recompute the turnover in any case consequent upon the Tribunal granting partial relief to the appellant.

Hardie Trading Ltd. And Anr. Vs. Addisons Paint And Chemicals Ltd.        

Date: September 12, 2003

Held: It is well established that if the manufacturer was the first to use the device as a trade mark, he alone can claim property over the name as a trade mark3. The factual findings of the High Court that Hardie had never marketed goods manufactured by it in India was, therefore, not only wrong but it had serious repercussions on the maintainability on Addison’s application for registration. The High Court did not give sufficient importance to the fact that Hardie continued to be the registered proprietor of the device outside this country. This coupled with the fact that the initial entry of Hardie’s goods was made under the trade marks much prior to Addisons even setting up its factory, would put Addisons’ claim for registration of the device as proprietor in considerable doubt. There has been no discussion on this aspect of the matter at all by the High Court….We are of the view that the dissenting judgment of Swamidurai, J. was correct. The learned Judge had correctly emphasised that Hardie had manufactured and was the first to market its goods under its registered trade mark and device in India. The learned Judge also correctly construed the consent order. No one had frog-marched Addisons into giving its consent. That is also not Addisons’ case. There are other factual errors in the majority view but it is not necessary to go into those as what we have found is sufficient to set aside the decision impugned and to allow the appeals. Even if we had held in Addisons’ favour on all other points we would have thought that this was a fit case where the Assistant Registrar should have exercised his discretion under Section 18 and rejected Addisons’ application for registration. Not only was no positive proof of an intention to use the device or the trade marks adduced by Addisons but the evidence shows a conscious abandonment of the device in 1971 by the issuance of the public advertisemetns. When did Addisons’ intention to use the device form? What was the necessity to revive the use of the device mark in respect of paints after an interval of almost 7 years? The answer to these issues would be relevant on the question of the bona fide of the Addisons’ applications and yet was neither raised nor considered either by the Registrar or by the High Court. On the other hand taking into consideration the continued user of the mark since 1979 by Hansa, it should have been assumed that the device had over the period of so many years become distinctive of Hansa’s product and therefore to allow registration of the device in Addisons name might deceive the public. We, therefore, allow these appeals and set aside the decision of the High Court without any order as to costs. CIVIL APPEAL NO. 5312-A & 12A-E OF 1993 There is no dispute that the marks which were the subject matter of Addison’s application for registration before the Registrar of trademarks at Madras were identical with Hardie’s marks of Spartan and Spartan Velox. Although, the appellant has impugned the decision of the Registrar inter alia on the ground that the order passed by the Registrar on 2nd June, 1992 was without notice to the appellant and in violation of Section 102 of the Act, it is not necessary to express any opinion on the submissions. The appeals must be allowed on the short ground that we have held that hardie’s trademarks could not have been removed from the Register and as long as the registration of the marks continue in the name of Hardie, the application for registration of the same marks in the absence of any plea of bonafide concurrent user under Section 12 would not arise. These appeals are therefore allowed and the order of the Registrar at Madras is set aside.

Ajay Mitra Vs. State Of M.P. & Ors.         

Date: January 28, 2003

Held: In view of the allegations made in the complaint, the  matter required investigation and the proceedings could not have been quashed on the ground that the dispute was of a civil nature.

M/S S.M. Dyechem Ltd. Vs. M/S Cadbury (India) Ltd.     

Date: May 9, 2000

Held: In the present suit or in the application, the respondent could not raise a defence that the registration of the plaintiff’s trade mark was “invalid” on the ground that the word PIKNIK was not “distinctive” and that it was akin to a dictionary word or that the trade mark did not satisfy various clauses of section 9(1). Section 31 raised a presumption of validity of plaintiff’s registered mark….The marks, names or get-up concerned must always be considered as the whole thing, as the true test is whether the totality of the impression given both orally and visually is such that it is likely to cause mistake, deception or confusion….”the whole question in these cases is whether the thing – taken in its entirety, looking at the whole thing – is such that in the ordinary course of things a person with reasonable comprehension and with proper insight would be deceived”. Defendant’s name on his goods is an indication of there being no case of passing off: In the present case, defendant’s goods contain the words `Cadbury’ on their wrapper. As per the principle laid down in Fisons Ltd. vs. E.J.Godwin [(1976) RPC 653], the occurrence of the name `Cadbury’ on the defendant’s wrapper is a factor to be considered while deciding the question of passing off. Similarly in King & Co. Ltd. vs. Gillard and Co. Ltd. [22 RPC 327] and Cadbury-Schweppes pty Ltd. vs. The Pub. Squash Ltd. (1981) RPC 429, it was held that the presence of defendant’s name on his goods was an indication that there was no passing off, even if the trade dress was similar. The fact that the defendant’s wrapper contains the word `Cadbury’ above the words PICNIC is therefore a factor which is to be taken into account. Buyer’s ignorance and chances of being deceived: As to scope of a buyer being deceived, in a passing off action, the following principles have to be borne in mind. Lord Romer, LJ 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. The kind of customer that the Courts ought to think of in these cases is the customer who knows the distinguishing characteristics of the plaintiff’s 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, 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. In our view, the trial Court in the present case went wrong in principle in holding that there was scope for a purchaser being misled. The conclusion was arrived at without noticing the above principles. In the result, on the question of passing off, the relative strength of the case again appears to us to be more in defendant’s favour. Point 6 is decided accordingly. Point 7: The issue of laches of the appellant-plaintiff, though relied upon by the respondent, does not, in view of our finding at Point 5, assume any significance in this case. Coming to the question whether the appellate court was right in interfering with the discretion of the trial Court and in vacating injunction, In the result, the appeal is dismissed. We, however, reiterate the direction given by High Court in regard to maintenance of accounts and the undertaking to be given by the defendant for damages, if any, that may be granted in the suit, in case the suit succeeds. We make it clear that the above findings on facts are for the purpose of the temporary injunction and will not come in the way of the Court in the suit to decide the matter on the evidence produced.

M/S V.H. Patel & Company & Ors. Vs. Hirubhai Himabhai Patel & Ors.     

Date: April 18, 2000

Held: Though the disputes between the parties originated on the basis whether one or the other partner had not retired from partnership or as to the rights arising in relation to trade marks or otherwise, still when there is no mutual trust between the parties and the relationship became so strained that it is impossible to carry on the business as partners, it was certainly open to them to claim dissolution and such a question could be adjudicated. The scope of reference cannot be understood on the actual wording used in the course of the order made by this Court or the concerned memorandum filed before this Court, but it should be looked from the angle as to what was the spirit behind the reference to the arbitration. The idea was to settle all the disputes between the parties and not to confine the same to any one or the other issue arising thereunder. In that view of the matter, the contention addressed to the contrary is untenable…So far as the power of the arbitrator to dissolve the partnership is concerned, the law is clear that where there is a clause in the Articles of Partnership or agreement or order referring all the matters in difference between the partners to arbitration, arbitrator has power to decide whether or not the partnership shall be dissolved and to award its dissolution. [See:Phoenix v. Pope & Ors., (1974) 1 All E.R. 512]. Power of the arbitrator will primarily depend upon the arbitration clause and the reference made by the court to it. If under the terms of the reference all disputes and difference arising between the parties have been referred to arbitration, the arbitrator will, in general, be able to deal with all matters, including dissolution. There is no principle of law or any provision which bars an arbitrator to examine such a question. Although the learned counsel for the petitioner relied upon a passage of Pollock & Mulla, quoted earlier, that passage is only confined to the inherent powers of the court as to whether dissolution of partnership is just and equitable, but we have demonstrated in the course of our order that it is permissible for the court to refer to arbitration a dispute in relation to dissolution as well on grounds such as destruction of mutual trust and confidence between the partners which is the foundation therefor.

Haldiram Bhujiawala And Anr. Vs. Anand Kumar Deepak Kumar And Anr.             

Date: February 28, 2000

Held: If the reliefs of permanent injunction or damages are being claimed on the basis of a registered trade mark and its infringement, the suit is to be treated as one based on a statutory right under the Trade Marks Act and is, in our view, not barred by Section 69(2).

M/S Gujarat Pottling Co.Ltd. & Ors. Vs. The Coca Cola Co. & Ors.               

Date: August 4, 1995

Held: The grant of an interlocutory injuction during the perdency of legal proceedings is a matter requiring the exercise of discretion of the court. While exercising the descretion the court. While exercising the discretion the court applies the following tests – (i) whether the plaintiff has a prima facie case; (ii) whether the balance of convenience is in favour of the plaintiff; and (iii) whether the pliantiff would suffer an irreparable injury if his prayer for interlocutory injuction is disallowed. The decision whether or not to grant an onterlocutory injuction has to be taken at a time when the existence of the leagal right assailed by the plaintiff and its alleged violation are both contested and uncertain and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. Relief by way of interlocutory injuction is granted to mitigate the risk of injustice to the plaintiff during the period before that uncertainty could be resolved. The object of the interlocutory injuction is to protect the plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection has, however, to be weghed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercisising 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. [see:Wander Ltd.& Anr. v,. Antox India P. Ltd., 1990 (suoo) Scc 727 at pp. 731-32]. In order to protect the defendent whiloe granting an interlocutory injuction in his favour the Court can require the plaintiff to furnish an undertaking so that the defendent can be adequately compensated if the uncertainty were resolved in his favour at the trial.

J.R. Kapoor Vs. Micronlx India   

Date: August 10, 1994

Held: Anyone producing any product with the use of micro chip technology would be justified in using the said word as a prefix to his trade name. What is further, those who are familiar with the use of electronic goods know fully well and are not only likely to be misguided or confused merely by, the prefix ‘micro’ in the trade name. Once, therefore, it is held that tie word ‘micro’ is a common or general name descriptive of the products which are sold or of the technology by which the products are manufactured, and the users of such products are, therefore, not likely to be misguided or confused by the said word, the only question which has to be prima facie decided at this stage is whether the words ‘tel and ‘nix’ in the trade names of the appellant and the respondent are deceptive for the buyers and users and are likely to misguide or confuse them in purchasing one for the other. According to us, phonetically the words being totally dissimilar are not going to create any such confusion in the mind of the users. Secondly, even the visual impression of the said two trade names is indifferent. In the first instance, the respondent’s trade name ‘MICRONIX’ is in black and white in slimmer letters and they are ensconces in designs of elongated triangles both above and below the said name. On the other hand, the appellant’s trade name ‘MICROTEL’ is in thick bold letters in red colour without any design around. As regards the logo, the respondent’s logo consists of the word ‘M’ in a slim letter with T sporting a dot on it and drawn in the well of ‘M’, Below the letter ‘M’ in small letters is written .the word ‘MICRONIX’ and all these letters and words are written in white in a black square in north-south direction. As against this, the appellant’s logo is one letter, viz,. ‘M’ which is drawn in bold broad letter with its left leg slimmer than all other parts which are in thick broad brush. The letter has also white lines drawn across it which is in blue colour. There is no other letter nor is it set against any background. We are, therefore- unable to see how the visual effect of both the logos will be the same oh the mind of the buyers. This being the case, we are of the view that there is not even the remotest chance of the buyers and users being misguided Or Confused by the two trade names and logos. Same is the case with the carton which merely reproduces both trade names and the logos.

Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories    

October 20, 1964

Held: It appears to us that the conclusion reached by the Courts below that the appellants mark is deceptively similar to that of the respondents cannot be stated to be erroneous. Besides, this question of deceptive similarity is a question of fact, unless the test employed for determining it suffers from error.

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