THE HONOURABLE MR.JUSTICE C.V.KARTHIKEYAN CS.No.1031 of 2010 G.M.Pens International Pvt Limited by its Company Secretary Chennai-42 Plaintiff Vs Bright Brothers Limited, Mumbai-11 Defendant Prayer:- This Civil Suit is filed under Order IV Rule 1 of the Original Side Rules and Order VII Rules 1 and 2 of CPC and read with Section 142 of the Trade Marks Act, 1999, for the reliefs as stated therein.
For Plaintiff : Ms.Brinda Mohan For Defendant : Mr.Nainar Dayakar Set Exparte JUDGEMENT This civil suit had been filed to pass a judgement and decree, against the Defendant:-
(a) granting declaration, declaring that the threats issued by the Defendant through their legal notice dated 9th December 2010 is unjustified and groundless.
(b) granting perpetual injunction, restraining the Defendant and their men from in any manner threatening the Plaintiff directly or indirectly by notices, letters, advertisements, circulars or by any other means, regarding use of the brand name REYNOLDS BRITE in the course of its business in relation to its products, goods, services and thereby interfere, harm and/or injure the business of the Plaintiff.
(c) directing the Defendant to compensate the Plaintiff a sum of Rs.1,00,000/- or such other amount for the damages sustained on account of the unjustified and groundless threats made by the Defendant.
(d) directing the Defendant to pay the costs of the suit.
2. The case of the Plaintiff as set out in the plaint, is as follows:-
a. The Plaintiff is the manufacturer and seller of various kinds of pens, such as, ball pens, ink pens, micro tip pens, correction pens, markers, handy boards, highlighters, roller pens, jotter pens, pencils, refills, tips and other accessories and parts of pens under the trademark REYNOLDS since 1986. The Plaintiff is the exclusive licence holder of Reynolds, France in India till date. The Plaintiff has been using several brands, such as, 045 Fine Carbure, Fusion, Office Rite, Liquiflo, Electro, Racer, Jiffy, Trendy, Jetter, Aviator, Metallica, Aeroller, Numatic, Trimax, etc. for marketing writing instruments and other stationery materials under the trademark REYNOLDS throughout India. The Plaintiff had also spent huge amounts towards advertisement expenditure. The turnover of the Plaintiff Company runs into crores of rupees every year.
b. The Plaintiff had adopted one such brand REYNOLDS BRITE in 2009 and has been marketing ball pens. The Plaintiff has been using the tag line THE BRIGHT WRITING PEN as well as the expression BRIGHTER INK FOR BRIGHT WRITING in all its materials. The word BRITE is a phonetic variant and has been derived from the dictionary word BRIGHT and it was adopted to describe the character and quality of the pens marketed by the Plaintiff. The brand REYNOLDS BRITE has acquired enviable reputation and goodwill in the market.
c. While so, to the shock and surprise of the Plaintiff, the Defendant had issued a legal notice of cease and desist, dated 9.12.2010, claiming exclusive rights in the word BRITE and threatened the Plaintiff with civil and criminal proceedings against the use of the brand name REYNOLDS BRITE, alleging that the Defendant is the registered proprietor of the trademark BRITE in many classes, including Class 16 and that they have been using the said mark for selling injection moulded plastic products from 1946 and the word BRITE had been invented and coined by them and that demanding for surrender of materials for destruction and rendering of accounts of profits and claiming that the use of brand name REYNOLDS BRITE by the Plaintiff amounts to infringement and passing off. The Plaintiff had issued a reply dated 15.12.2010, calling for documentary evidence.
d. It had been further stated that the claim of the Defendant against the Plaintiff's use of generic, common dictionary word is totally baseless and the Defendant is not entitled to claim mono poly over the word BRITE. The Defendant is not involved in the manufacture and sale of pens, writing instruments and other stationery products. The Defendant is engaged in the business of manufacturing of plastic moulded goods supplied as original equipments to auto mobile and industrial goods. The business activities of the Plaintiff and the Defendant are totally different and dissimilar, as the Defendant is the manufacturer of original equipments to various industries and the customers segments are also different. There is no scope of any confusion between both the products of the Plaintiff and the Defendant. None of the products manufactured and supplied by the Defendant to various industrial units as original equipments bear the trademark BRITE. The Defendant had obtained registration of the word BRITE in various classes more particularly in respect of Class 16 good by making false representations and the Defendant had never engaged in the business of stationery goods falling under Class 16. The registration obtained by the Defendant is liable to be rectified and the Plaintiff is taking steps to initiate proceedings for the same.
e. There are several companies using the word BRITE in respect of various products in India and all over the world and therefore, the word BRITE is common to trade. The use of the composite brand REYNOLDS BRITE is not detrimental to the trademark of the Defendant BRITE. Therefore, the use of the word BRITE by the Plaintiff would not amount to infringement and the Plaintiff is protected under Sections 17 and 30 of the Trade Marks Act, 1999. The threats issued by the Defendant have the impact of seriously affecting the business of the Plaintiff and are mala fide. The act of the Defendant in issuing the cease and desist notice on the baseless claims is nothing but groundless threat of legal proceedings, done with the sole intention of harassing the Plaintiff. If the Defendant is allowed to continue with issuance of such unjustified threat of legal proceedings, the Plaintiff would be put to irreparable loss and hardship. In such circumstances, this civil suit has been filed for the reliefs as stated above.
3. Though the service had been completed on the Defendant long back, no written statement had been filed by the Defendant, in spite of sufficient opportunity given to them on the several representations of the learned counsel for the Defendant and hence, the matter was ordered to be listed under the caption of "Undefended Board". For non filing of the Written Statement, the Defendant was set exparte on 06.09.2016 and Exparte Evidence was ordered to be recorded by the order of this court dated 06.09.2016.
4. One P.Vijayamadhava, the Company Secretary of the Plaintiff Company had filed the proof affidavit for his chief examination on behalf of the Plaintiff and receipt of 6 documents as documentary evidence to prove the suit claim. In the Exparte Evidence, the said Company Secretary examined himself as PW.1 and marked Exs.P1 to P6 as documentary evidence and MO.1 in order to prove the suit claim.
5. A perusal of the plaint shows that the Defendant has also been using the trademark BRITE and consequently had issued Ex.P4 letter, calling upon the Plaintiff to cease and desist the usage of the registered trademark BRITE in relation to its Pens by name REYNOLDS BRITE. The claim of the Defendant was that they are engaged in the business of manufacturing of plastic moulded consumer durables, household kitchenware and consumer items and trading of material handling crates and pallets. They claimed to have used the word BRITE from 1946. They have also claimed that they have registered their trademark BRITE under the Trade Marks Act, 1999. Consequently, they had issued Ex.P4 notice, calling upon the Plaintiff to cease and desist the usage of word REYNOLDS BRITE. It is under these circumstances that the Plaintiff stated that the word BRITE is not a unique word, but is used to denote the character and quality of the Ball Pens offered for sale.
6. It is also stated that the word BRITE has been derived from the Dictionary word BRIGHT. To substantiate this, the Plaintiff had filed Ex.P6 (series). It is seen that various Organisations are using the word BRITE, including the Organisations in paints and chemicals, scrub for utensils, home cleaning materials, gold jewels, reflective leashes and such other products.
7. In this connection, an useful reference can be made to 2009 (8) MLJ 1607 (Division Bench) (Nutrine Confectionery Co. Limited Vs. Icon Household Products Pvt. Limited), wherein the use of the word LACTO came up for consideration and the Division Bench of this court had considered various decisions of the Honourable Supreme Court and held that use of the word LACTO by the Respondents cannot be construed as an infringement of trademark LACTO as there are humpty number of traders are using the word LACTO. It has been further held that the words LACTO BON BON is a common generic expression used in relation to milk candies.
8. In AIR 1998 Delhi page 126 (Division Bench) (S.B.L.Limited vs.
Himalaya Drug Co.), the trade mark of Himalaya Drug Company viz., 'LIV.52' as well as the trade mark used by the opposite party viz., 'LIV-T' came up for consideration. The Division Bench of Delhi High Court, had once again taken into consideration the decisions reported in AIR 1965 SC page 980 Parle Product's case, (AIR 1972 SC 1359) National Bell Company's case, (AIR 1971 SC page 898) and other decisions and held as follows:-
"To sum up:-
(1) The crucial tests to be applied for judging an infringement action or a passing off action in the field of medicinal and pharmaceutical preparations remain the same as are applicable to other goods. However, in the case of preparations trading whereof is governed by statutory rules or regulations, additional considerations become relevant. They are: (i) the manner in which the trade as carried on, such as sales being made only by authorised or licensed vendors who will be educated, also having special knowledge of medicines and pharmacy (ii) the class of persons who would be the purchasers, whether they would be accompanied by doctors' prescription and would in all probability remain in touch with doctor while consuming the medicine purchased. The court would ask--Is there such a similarity between the two trade marks that a doctor or a chemist or the both by some carelessness in expression, some obscurity in handwriting, some slip of recollection or some careless mistake not expected of a trained professional like doctor or chemist might lead to the one being confused for the other? Regard shall be had not to the hypothetical possibilities but to ordinary practical business probabilities as applied to the circumstances of an individual case.
(2) The decision on the question of likelihood of deception is to be left to the Court.
(3) 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 organ, ailment or ingredient being publici juris or generic cannot be owned by anyone for use as trade mark.
(4) Whether such feature is publici juris or generic is a question of fact.
(5) If the two trade marks by two competing traders use a generic word or an expression publici juris common to both the trade marks it has to be seen if the customers who purchase the goods would be guided by the use of such word of expression or would ignore it and give emphasis to prefixes or suffixes or words used in association therewith. The primary question to be asked is what would remain in the memory of customer? The surrounding circumstances such as the presentation of goods, colour scheme and lettering style etc. used on the packing also assume significance."
9. The word publici juris is a Latin word and it deals with public right.
The word "public" in this sense means pertaining to the people, or affecting the community at large; that concerns a multitude of people; and the word "right," as so used, means a well-founded claim; an interest; concern; advantage; benefit. This term, as applied to a thing or right, means that it is open to or exercisable by all persons. It designates things which are owned by "the public," that is, the entire state or community, and not by any private person. When a thing is common property, so that any one can make use of it who likes, it is said to be publici juris; as in the case of light, air, and public water (vide Black's Law Dictionary -5th Edn.).
10. In 2001 (2) CTC 430: AIR 2001 SC 1952 (Cadila Health Care Ltd., v. Cadila Pharmaceutical Limited), it was held by the Honourable Supreme Court that the real question to decide in 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 connect the trade mark with the goods which he would be purchasing. The Honourable Supreme Court further held that in deciding a question of similarity between two marks, marks have to be considered as a whole and that the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. It further held that to decide the question, it must be seen as to how an unwary purchaser of average intelligence and imperfect recollection split the name into its component parts and consider its etymological meaning thereof or ever consider the meaning of the composite words.
11. In this case, it is seen that the Plaintiff is manufacturing distinct product, namely, Ball Pens and the Defendant is manufacturing a different product, namely, kitchen utensils and related items. Consequently, there can be no confusion whatsoever in the minds of the general public or in the mind of any person with respect to the products manufactured by the Plaintiff and the Defendant. No body can relate a ball pen with a kitchen utensil. I therefore hold that the word BRITE is a publici juris and there is a public right over the said word. Therefore, the claim of the Defendant that since they got the registration of the trademark under the name and style of BRITE, they alone have exclusive right to use the same, lacks merit.
12. Consequently, I hold that even though the Plaintiff has sought a declaration with respect to the legal notice dated 9.12.2010 marked as Ex.P4 and for a perpetual injunction restraining the Defendant from threatening the Plaintiff regarding the use of the brand name REYNOLDS BRITE and for compensation of Rs.1 lakh and costs, exercising the powers under Order VII Rule 1 of CPC, this civil suit is partly decreed, without costs, as mentioned below:-
a) The Plaintiff is entitled for continuous usage of the name REYNOLDS BRITE with respect to the use of its product Ball Pens and the Defendant cannot seek an order of injunction as against the Plaintiff in respect of the same.
b) The reliefs with respect to declaration and damages are negatived.
c) Since the Defendant is also the bona fide user of the word BRITE in its products, the Plaintiff is not entitled for any costs 27.01.2017 Index:Yes/No Web:Yes/No Srcm
1. List of Witnesses Examined on the side of the Plaintiff:-
1. P.W.1 – P.Vijayamadhava
2. List of Exhibits and Material Objects Marked on the side of the Plaintiff:-
Srcm
3. List of Witnesses Examined on the side of the defendant:- Nil
4. List of Exhibits Marked on the side of the defendant:- Nil 27.01.2017 C.V.KARTHIKEYAN, J.
Srcm Pre-Delivery Judgement in CS.No.1031 of 2010 27.01.2017 http://www.judis.nic.in