1. This first appeal has been filed by the plaintiff being aggrieved of judgment and decree dated 25.10.2018 passed by learned Additional District and Sessions Judge, Varanasi in Original Suit No.31 of 2017 dismissing an application under Order XXXIX Rule 1 and 2 Civil Procedure Code, 1908.
2. Brief facts of the case are that plaintiff-appellant carries on business under the trade mark ''MODI' and it is the case of the appellant that they are using this trade mark since 1986 whereas the defendant deceptively uses trade mark ''STAR MODI' which is not only subsequent but attempts to promote their products at the cost of the product of the plaintiff-appellant and therefore, prayed for injunction against the defendants from using such trade mark.
3. It is submitted that learned trial court failed to appreciate the facts of the case in correct perspective and has dismissed the application for injunction under Order XXXIX Rule 1 and 2 C.P.C. in an arbitrary and casual manner. It is prayed that impugned order be set aside and defendants be restrained from using trade mark ''STAR MODI'.
4. In the present case, dispute is that plaintiff-appellant has been using trade mark ''MODI' since 1986 and the trade mark of the defendant, namely, ''STAR MODI', is deceptively similar. It is also submitted that once a trade mark is registered, then as per the provisions contained in Section 31 of Trade Marks Act, 1999, registration is to be treated as prima facie evidence of validity. It is further submitted that as per the provisions contained in Section 31 (1) of Trade Marks Act, 1999, in all legal proceedings relating to a trade mark registered under this Act, the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof., but the trial court has failed to appreciate that since trade mark of the plaintiff has achieved, secondary distinctiveness of a kind immediately relating the product of the plaintiff, therefore, injunction should have been passed.
5. Reliance is placed on the judgment of Hon'ble Supreme Court in case of Parle Products (P) Ltd. Vs. J.P. And Co., Mysore, 1972 AIR (SC) 1359, wherein the dispute was, in regard to word "Gluco" used by the appellant in their half pound biscuit packets alongwith the wrapper with its colour scheme used in connection with sale of their biscuits known as 'Parle s Gluco Biscuits'. Wherein, it has been held as under:-
"According to Karly's Law of Trade Marks and Trade Names (9th Edition Paragraph 838):
Two marks, when placed side by side, may exhibit many and various differences, yet 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 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 the 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 rather 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."
6. Similarly reliance is placed on the judgment of Hon'ble Supreme Court in the case of K.R. Chinna Krishna Chettiar Vs. Sri Ambal and Co. and Another AIR 1970 SC 146, wherein it has been held that if there is striking phonetic resemblance between distinctive words of existing and proposed trade marks, then proposed trade mark cannot be registered. It is further held that the Registrars' opinion that there was no deceptive similarity between two trade marks, having an expert knowledge in the matter, his opinion should not be lightly disturbed, however, it is also held that when there are concurrent finding of two courts below expressing presence of deceptive similarity, then such finding is binding in appeal under Article 136 of the Constitution.
7. Reliance is also placed on the judgment of Hon'ble Supreme Court in the case of Tube Investments of India Ltd. Vs. Trade Industries, Rajasthan 1997 (6) SCC 35, where facts are that respondent had applied for registration of his trade mark in the year 1984 in respect of goods in Class 18, which deals with leather and leather goods. Appellants filed their opposition to registration. Ultimately, in 1991, the respondent withdrew his application. He filed another application for registration of the same mark for the same category of goods in Ahmedabad and taking such circumstances into consideration and taking cognizance of the fact that appellants are already registered holders of their mark, which is specifically registered for bicycle parts, court granted injunction in favour of the appellant.
8. Reliance is also placed on the judgment of Hon'ble Supreme Court in case of Aachi Spices and Food Pvt. Ltd., Chennai and Another Vs. Arasi Masala Foods (P) Ltd., Chennai, AIR 2015 MADRAS 27, wherein it is held that covers used for packing masalas by defendants were similar to plaintiffs. Covers and size were almost similar giving overall impression that they are same. Leading characteristics of covers used by defendants in size, colour design, background, name and mark as well as ingredients and preparation method explained in wrappers were also one and the same. Taking into consideration that defendants wrapper proved to be deceptively similar to plaintiffs registered mark, permanent injunction was granted.
9. Reliance is also placed on the judgment of Hon'ble High Court of Allahabad in case of Badli Ram Sharma Proprietor A B S Bidi Company Vs. Manglore Ganesh Bidi Works reported in 2010 AIHC 90, wherein, observation of the trial court have been quoted as under:-
"It is well established that it is not superficial differences or differences in detail that matter but that the question has to be determined bearing in mind the essential features of the two marks. In doing so the points for consideration are not the simple points of difference which could be discovered by careful scrutiny of the two marks kept side by side. The real object of the investigation is to discover what would be the totality of the impression on the minds of the probable class of customers with average intelligence and average memory subject nevertheless to the common infirmities of human memory. Most significant and eye catching feature of plaintiff's trade mark is numeral 501. The defendant has used the same numeral on his labels. The defendant is thus using the identical basic feature of the plaintiff's trade mark."
and in this backdrop, appeal was dismissed.
10. Reliance is also placed on the judgment of Hon'ble Supreme Court in the case of Uniply Industries Ltd. Vs. Unicorn Plywood Pvt. Ltd. And Others, AIR 2001 SC 2083, wherein it has been held as under:-
"Some courts indicate that even prior small sales of goods with the marks are sufficient to establish priority. The test being to determine continuous prior user and the volume of sale or the degree of familiarity of the public with the mark. Bona fide test of marketing, promotional gifts and experimental sales in small volume may be sufficient to establish a continuous prior use of the mark. But on some other occasions courts have classified small sales volume as so small and inconsequential for priority purposes. Therefore, these facts will have to be thrashed out at the trial and at the stage of grant of temporary injunction a strong prima facie case will have to be established. It has also to be borne in mind whether the appellant had also honestly and concurrently used the trade marks or there are other special circumstances arising in the matter. The courts below have merely looked at what the prima case is and tried to decide the matter without considering the various other aspects arising in the matter. Therefore, we think, the appropriate order to be made is that injunction, either in the favour of the appellant or against them or vice-versa is not appropriate and the proceedings in the suit shall be conducted as expeditiously as possible or the Registrar under the Trade and Merchandise Marks Act, 1958 may decide the matter which may govern the rights of the parties.
The order made by the High Court shall stand set aside and it is made clear that there shall be no order of temporary injunction in favour of either party."
11. Reliance is also placed on the judgment of Hon'ble Supreme Court in the case of Mahendra and Mahendra Paper Mills Ltd. Vs Mahindra and Mahindra Ltd., AIR 2002 SC 117, wherein it has been held as under:-
"......... The real question in each case is whether there is as a result of misrepresentation a real likelihood of confusion or deception of the public and consequent damages to the plaintiff. The focus is shifted from the external objective test of making comparison of activities of parties to the state of mind of public in deciding whether it will be confused. With the passage of time and reputation acquired, the trade mark 'Kirloskar' has acquired the secondary meaning and has become almost a household word. The judgments relied upon by Mr. Kane pertain to the cases of one type of business and not where variety of businesses have been carried by the plaintiff and defendant as in the instant case. The business activities of the Respondents vary from pin to piano as borne out from the object clauses of the Memorandum of Association of the Respondents. The appellants have still to commence their business activities but as mentioned in the Memorandum of Association of 1st Appellant in each appeal, some of the object clauses therein overlap with the activities of Respondents and more particularly of Respondents Nos. 6 and 7.
23. Judging the case in hand on touchstone of the principles laid down in the aforementioned decided cases, it is clear that the plaintiff has been using the word "Mahindra" and "Mahindra & Mahindra" in its companies/business concerns for a long span of time extending over five decades. The name has acquired a distinctiveness 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 effect 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 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 utilising 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."
12. Shri Manu Khare, learned counsel for respondent on the other hand places reliance on the judgment of Hon'ble Supreme Court in case of Wander Ltd., and another vs. Antox India Pvt. Ltd., 1990 (Supp) SCC 727 wherein paragraph 14, it is held that the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely or where the court had ignored settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against excise of discretion is said to be an appeal on principle. The appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material.
13. Reliance is placed of judgment of Hon'ble Supreme Court in case of Parakh Vanijya Pvt. Ltd., vs. Baroma Agro Product 2018 SCC online SC 686 wherein allegation against defendant was of passing off special biriyani rice under the mark ''MALABAR GOLD' claiming it to be identical with and/or deceptively similar to plaintiff's trade mark ''MALABAR'. The Supreme Court held that label of defendants containing words "BAROMA" "MALABAR" "GOLD" were circled having a different get up from that of plaintiff. By comparison of two label marks, both appears to be substantially different. There appears to be no similarity between both labels, more so, deceptive similarity. Keeping in view interest of respective parties High Court rightly held that defendants will be entitled to use "MALABAR" in conjunction with "BAROMA" with different getup.
14. Learned counsel for the respondent submits that trade mark of the plaintiff, namely, MODI is having 'M' in capital and 'odi' in small letters, whereas 'STAR MODI' is the trade mark of the defendant, which contains all the alphabets in capital letters and, therefore, there is no deception or similarity between the trade mark of the plaintiff and that of the defendant.
15. It is further submitted that this dissimilarity is easily discernible and does not cause any confusion in the minds of the customer. It is also submitted that even the trade mark of the defendant is registered trade mark. In support of the contention, reliance is placed on the judgment of Parakh Vanijya Pvt. Ltd. (supra), wherein it has been held that if there is use of different spatters and one is in capital letter and another is small letter, then they are to be treated differently.
16. After hearing learned counsel for the parties and going through the record, it is apparent that the judgment in case of Tube Investments of India Ltd. (supra) is distinguishable on its own facts. In that case, respondent after withdrawing his application, filed another application for registration of trade mark at Delhi, had deceptively filed another application at Ahemdabad for registration of the same mark for the same category of goods, whereas in the present case, marks are admittedly different. In case of Parle Products (P) Ltd. (supra) ratio of law is that when two marks are placed side by side, they may exhibit many and various differences, yet the main idea left on the mind by both may be the same. Thus, the test is that whether similarity in the trade mark is so striking that it might deceive a purchaser/customer. However, that is not the case where marks are registered for both the plaintiff and the defendant are respectively in small alphabets and capital alphabets. Another distinctive feature is use of a prefix-STAR, therefore, facts of this case are also distinguishable.
17. Law laid down in the case of K. R. Chinna Krishna (supra) is that expert knowledge in the form of opinion of the Registrar should not be lightly disturbed. It has come on record that plaintiff-appellant had filed objections before the Registrar, which have not been allowed. Therefore, as far as prima facie case is concerned, there is no expert opinion of the Registrar in favour of the plaintiff.
18. Law laid down in case of Aachi Spices & Foods Pvt. Ltd. (supra) also turn on into own facts where packaging of Kulambu Chilly Masala was deceptively similar causing confusion in the minds of user as to which product is the real one. As far as Badli Ram Sharma (supra) is concerned, the guiding principle is that the real object of the investigation is to discover what would be the totality of the impression on the minds of the probable class of customers with average intelligence and average memory subject nevertheless to the common infirmities of human memory. Where another test is whether there is similarity in the eye catching feature of the two trade marks or not. However, in the present case, this aspect has not been highlighted and in any case in absence of such material on record, second ingredient, namely irreparable loss could not be proved by the plaintiff.
19. Law laid down in the case of Uniply Industries Ltd. (supra) is unambiguous, that it is not appropriate to grant injunction without determining as to the two marks are inherently distinctive or have substantial commonality so to be capable of 'passing-off' in relation to goodwill and reputation to goods of the plaintiff. That is the matter to be determined in evidence.
20. Facts in the case of Mahindra & Mahindra Paper Mills Ltd. (supra) reveals that the real test is whether there is, as a result of misrepresentation, a real likelihood of confusion or deception to the public and consequent damages to the plaintiff and that will determine whether the case for injunction is made out or not.
21. The principle of law relating to temporary injunction is as under:-
"The principle of law relating to temporary injunction during the pendency of the suit is well recognized and in his connection, the Supreme Court, in Dalpat Kumar v. Prahalad Singh AIR 1993 SC 276, held as follows:-
"........It is settled law that the grant of injuction is a discretionary relief. The exercise thereof is subject to the court satisfying that:
1. there is a serious disputed question to be tried in the suit and that an act, on the facts before the court, there is probability of his being entitled to the relief asked for by the plaintiff/defendant;
2. the Court's intereference is necessary to protect the party from the species of injury. In other words, irreparable injury or damage would ensure before the legal right would be established at trial; and
3. that the comperative hardship or mischief or inconvenience which is likely to occur from withholding the injunction will be greater than that would be likely to arise from granting it"
The Supreme Court further observed:
"........prima facie case is not to be confused with prima facie title which has to be established, on evidence at the trial. Only prima facie case is a substantial question raised, bona fide, which needs investigation and a decision on merits. Satisfaction that there is a prima facie case by itself is not sufficient to grant injunction. The Court further has to satisfy that non-interference by the Court would result in 'irreparable injury' to the party seeking relief and that there is no other remedy available to the party except one to grant injunction and he needs protection from the consequences of apprehended injury or dispossession. Irreparable injury, however, doe not mean that there must be no physical possibility of repairing the injury, but means only that the injury must be a material one, namely, one that cannot be adequately compensated by way of damages. The third condition also is that "the balance of convenience" must be in favour of granting injunction. The court while granting or refusing to grant injunction should exercise sound judicial discretion to find the amount of substantial mischief or injury which is likely to be caused to the parties, if the injunction is refused and compare it with that it is likely to be caused to the other side if the injunctions granted. If on weighing competing possibility or probabilities of likelihood of injury and if the court considers that pending the suit, the subject matter should be maintained in status quo, an injunction would be issued. Thus, the court has to exercise its sound judicial discretion in granting or refusing the relief of ad interim injunction pending the suit."
23. When this ratio of law is taken into consideration, read in conjunction with the law laid down in case of Parakh Vanijya Pvt. Ltd. (supra), exercise of discretion by the 14th Additional District and Sessions Judge, Varanasi, on the ground that both the trade marks are registered but there is distinctive difference between the trade marks, cannot be faulted with specially when, plaintiff has failed to prove his prima facie case so also balance of convenience. Appellants have enclosed a series of advertisements pertaining to their product specially the fans, but have not enclosed copy of any advertisement under the trade mark of "STAR MODI" so to support their argument that "STAR MODI" is deceptively similar to their own trade mark ''Modi'. Thus, in absence of any competing advertisement to show that advertisement, in the hands of the perceived competitor, is so strikingly similar to point out that it would lead to an impression on the minds of the probable class of customer with average intelligence and average memory that the two trade marks are similar and also in addition will have a eye catching feature so to give an impression that brand of the two products is similar, therefore, there is no error apparent on face on record in appreciation of the facts of the case and, therefore, appeal fails and is dismissed.
24. However, it is made clear that the discussions made in this order shall not be treated as any opinion in favour of or against entitlement of either of the parties to get the suit decreed or get it dismissed on its own merits.
Order Date :- 18.01.2021 Ravi/-