OF THE JUDGE:- 6. The learned Single Judge considered both the interlocutory applications together and was of the view that there is no infringement of trade mark of the appellant as the term "WITCO" and "NITCO" are totally different names. According to the learned Judge, there is no phonetic similarity and the word "The Luggage Expert" is only a coinage of common usage and there cannot be any right over the usage of such term. The learned Judge also opined that the test of common man and the class of goods dealt with by both the parties cannot be tested on the touch stone of an ordinary street man as both of them are not manufacturers of goods and they are doing retail selling of branded items in their shops. Therefore there is no question of infringement to the reputation. Accordingly the learned Judge arrived at a factual finding that no prima facie case was made out for granting an order of interlocutory injunction. In short both the applications were dismissed.
7. The order dated 31.7.2009 in O.A. Nos. 428 & 429 of 2009 are the subject matter of these Original Side Appeals.
SUBMISSIONS:-
8. The learned Senior Counsel for the appellant contended thus:-
(a) The word "NITCO" being deceptively identical with and similar to the trading name of the appellant is bound to mislead an unsuspecting average customer and the similarity in the trade name adopted by the respondents would be sufficient to warrant the grant of an order of temporary injunction.
(b) The words used in the trade name of the appellant are not mere descriptive words of common use. It is in fact invented/abbreviated and a generic word which has come to acquire a distinctive or secondary meaning in connection with their business and therefore the use of those words or anything similar to that either phonetically or visually in the trade name adopted by the respondents are likely to deceive the public.
(c) The decisions relied on by the learned Single Judge to deny the relief of interlocutory injunction are factually different.
(d) The third respondent along with her brother initiated action for eviction of the appellant and the commencement of business in the next door by using the impugned trade mark "NITCO" is yet another attempt to compel the appellant to close their business.
(e) In an action for passing off the Court must take into consideration the broad features and in case those features are so similar and it is likely to deceive an ordinary purchaser of goods the same is a ground to grant injunction in favour of the appellants.
(f) The impugned mark "NITCO" bears such an over all similarity to the trade mark "WITCO" that it would mislead not only the ordinary customer but even the elite customer.
(g) The appellant's mark "WITCO" has three dots above the letter "i" whereas "NITCO" has two similarly placed dots apart from adopting the tagline "The Luggage Expert" was promoted all these years by "WITCO" and therefore the word "NITCO" with the get-up and colour scheme is confusingly similar to the appellant's trade name. The said fact has not been appreciated by the learned Judge.
(h) The learned Single Judge has not considered the balance of convenience as well as prima facie case in favour of the appellant inasmuch as the brand name of the appellant has already been registered. However the application submitted by the first respondent for registration is still pending. The said fact has not been considered by the learned Judge.
(i) The learned Senior Counsel for the appellants placed reliance on the following judgments in support of his contention that the appellants have made out a case for interlocutory injunction.
(a) National Sewing Thread Co., Ltd., v. James Chandwick & Bros., Ltd., (AIR 1953 SC 357);
(b) Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449);
(c) Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001(5) SCC 73).
9. The learned Senior Counsel for the respondents would submit:-
(a) The alleged use of tagline "The Luggage Expert" was not registered before the registrar of Trade Mark and as such the appellant is not entitled for the exclusive use of the said tagline.
(b) The appellant as well as respondents are dealing only in the luggage manufactured by reputed manufacturers. It is only the elite customers,, who would purchase those articles and as such there is no question of confusion.
(c) There is no phonetic similarity between the words "WITCO" and "NITCO" as those two terms are entirely different. Similarly the appellant's are not entitled to use the word "The Luggage Expert" as it is only a coinage of ordinary usage and as such no right could be claimed on the basis of such usage.
(d) The learned Senior Counsel for the respondents relied on the judgment of a Division Bench of this Court in Aravind Laboratories v. M.A.Rahim (2007 (1) CTC 392).
DISCUSSION:-
10. The appellant is the registered user of the trade mark "WITCO". The registration was given in pursuance of their application dated 12.11.2003. The appellant has redesigned the logo and according to them the present logo type was designed in the (i) lower case - to give it a young, casual, friendly and fresh look and (ii) bold to represent strength and stability. According to the appellants the three dots above the letter "i" in "WITCO" is the logo-graphic signifies (i) travel and commute; (ii) movement & motion and (iii) going ahead and progress. The new logo applications have been adopted in all the WITCO Store name-boards.
11. The appellant has got an exclusive store "WITCO" functioning at No.109, Ground Floor, "W" Block, Anna Nagar, Chennai-600 040. They are in possession of part of the ground floor and the entire first floor. The respondents are in possession of a portion of the ground floor as well as second floor. The photographs produced in the typed set of papers shows that the respondents have put up their name board on the side wall of the building as well as in the second floor, besides on the eastern side of the shopping complex. The appellant has put their name board in the remaining area in the ground floor as well as in the first floor. It is found from the photographs that the names "WITCO" and "NITCO" are so similar. In fact the coinage of the words are more or less similar and prima facie we are convinced that except the mark "" the coinage and the look out of the word "NITCO" is deceptively similar to "WITCO".
12. The following table would show as to how the name "WITCO" and "NITCO" are similar.
W?tco Nitco The arm of "W" in dotted lines is the only difference. The font and the slant of the letters are identical. From a distance, even an educated customer may be deceived into mistaking one for the other.
13. According to the plaintiff they have been doing business in the name and style of "WITCO (India) Private Limited" with the trade mark "WITCO" in the premises at Anna Nagar for the last more than nineteen years. The respondents were doing business in the name and style of "Gaylord Luggage and Bag Stores" with effect from 16.11.2007. Initially they were conducting departmental store in the said premises. It was only during February, 2009 the respondents constituted a partnership in the name and style of "NITCO". Their application for registration of the service mark "NITCO" is still pending on the file of Registrar of trade mark.
14. The learned Single Judge appears to have proceeded on the basis that the trade name of the respondents were also registered. However the learned Senior Counsel for the respondents would fairly submit that no such statement was made before the learned Judge as the respondents are yet to get their registration.
15. The admitted facts clearly shows that the appellant has obtained the name "WITCO" registered long back. They are the prior user of the word "WITCO". According to the appellant, the usage of the word "NITCO" would mislead the public and as both the business establishments are located in the very same premises, it would confuse not only the common man but even the elite class.
16. In an action for passing off the Court should sit in the arm chair of a consumer and an attempt should be made to determine as to whether the trade name of the infringer was distinctively different from that of the person, who alleges such dishonest action. The Court is expected to compare the trade name for the purpose of coming to a definite conclusion as to whether the trade name was similar and the similarity would create confusion in the mind of the consumers. It is true that while considering an issue like this the nature of the product and the type of customers who would buy such kind of products also is a relevant fact.
17. The society is progressing day-by-day and the commodity hitherto considered as that of the product for the elite class are no longer the same. The advancement of science and technology has its own effect on the economy. Merely because the consumers are illiterates, it could no longer be said that there was no scope for them to purchase branded items by paying visit to Mega-mall. The element of confusion which would be caused to the consumers in the case of goods has to be considered in the light of the development of our economy and increase in the purchasing power of even the middle class. Therefore it cannot be said that some of the articles are exclusively kept for the purchase of elite class and therefore there would be no element of deception or confusion, even if two trade names are similar. What was considered as items of luxury yesterday are part of essentials today.
LEGAL PRINCIPLES:-
18. The Supreme Court in Laxmikant V. Patel v. Chetanbhai Shah (2002(3) SCC 65) held that the principles which apply to trade mark is applicable to trade name also. Therefore the decisions pertaining to the trade mark could be usefully referred to for deciding the issue regarding infringement of trade name and passing off.
19. In Corn Products Refining Co. v. Shangrila Food Products Ltd., (AIR 1960 SC 142 = (1960) 1 SCR 968), the dispute was regarding registration of the mark "Gluvita" and the appellant in the said case had a registered mark "Glucovita". Before the Supreme Court it was contended that the words "Gluvita" and "Glucovita" 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 trademark "Gluvita". The Supreme Court considered the question of reputation accrued to the trade mark and observed thus:-
"11. .........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."
20. In Corn Products Refining Co. case, the Supreme Court confirmed the views expressed by Desai, J of the Bombay High Court and the note of confirmation reads thus:-
"17. ......... 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.
18. ..................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 reasonably likely to cause a confusion between them."
21. The Concept of passing off was considered by the Supreme Court in Ruston & Hornsby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727 and the observation reads hereunder.
"4. It very often happens that although the defendant is not using the trade mark of the plaintiff, the get up of the defendants goods may be so much like the plaintiffs that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiffs mark the get up of the defendants goods may be so different from the get up of the plaintiffs goods and the prices also may by so different that there would be no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the defendant is improperly using the plaintiffs mark."
22. In Ruston & Hornsby Ltd. v. Zamindara Engineering Co., case cited supra, the Supreme Court indicated the test to be applied in an action for infringement and passing off thus:-
"3. The distinction between an infringement action and a passing off action is important. Apart from the question as to the nature of trade mark the issue in an infringement action is quite different from the issue in a passing off action. In a passing off action the issue is as follows:
Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiffs goods? But in an infringement action the issue is as follows:
Is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiffs registered trade mark.
23. The legal position with respect to an action for infringement as well as passing off was considered in detail by the Supreme Court in Durga Dutt Sharma v. Navaratna Pharmaceuticals Laboratories (AIR 1965 SC 975 = (1965) 1 SCR 737). The relevant paragraph would read thus:-
"28. ..............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
Section 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 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.
24. In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., {(2001) 5 SCC 73}, the Supreme Court opined that while dealing with the sale of consumer items in India, in the light of the decisions in English Courts, the difference in situation between England and India should be taken note of. The relevant paragraph reads thus:-
"33. 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 overlook 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."
25. In Cadila Health Care Ltd. Case cited supra, the Supreme Court indicated the factors to be considered in an action for passing off thus:-
"35. 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 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."
26. The Supreme Court made a reference of the judgment "Ervin Warnink BV v. J. Townend & Sons (1979 (2) ALL ER 927)" in Cadila Health Care Ltd. cited supra to indicate the five elements in the modern tort of passing off. It reads thus:-
"10. ........ As per Lord Diplock in Erven Warnink BV v. J. Townend & Sons1 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.
27. In Laxmikant V. Patel v. Chetanbhai Shah,(2002) 3 SCC 65, the plaintiff was doing business of Colour Lab and Studio in the name and style of "Muktajivan Colour Lab". Subsequently the defendant, who was originally doing business in the name and style of "Gokul Studio" made an attempt to commence business in the name and style of "Muktajivan Colour Lab and Studio." The District Court as well as High Court rejected the prayer for interlocutory injunction on various grounds which includes the plea taken by the defendant that the business premises of the plaintiff was four to five kilometres away from the place where the defendant intended to do business. In the said factual context, the Supreme Court considered, the essential features of an action for passing off and observed thus:
"10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.
11. ...........
12. In Oertli v. Bowman1 (at p. 397) the gist of passing-off action was defined 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 plaintiffs 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 meaning that the goods are the plaintiffs 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 to the plaintiff. In our opinion, the same principle, which applies to trade mark, is applicable to trade name.
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 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."
28. In Khoday Distilleries Ltd. v. Scotch Whisky Assn.,(2008) 10 SCC 723, the Supreme Court observed that in an action for passing off, in addition to the nature and kind of customers, who would likely to buy goods, surrounding circumstances must also be considered as this plays an important factor. The judgment reads thus:-
"75*. The tests which are, therefore, required to be applied in each case would be different. Each word must be taken separately. They should be judged by their look and by their sound and must consider the goods to which they are to be applied. Nature and kind of customers who would likely to buy goods must also be considered. Surrounding circumstances play an important factor. What would be likely to happen if each of those trade marks is used in a normal way as a trade mark of the goods of the respective owners of the marks would also be a relevant factor.
29. In Aravind Laboratories case (2007 (1) CTC 392) the issue was regarding the usage of the mark "IRIS" in Tamil character, which was registered in the name of the appellant. The respondent adopted the word "EVERIS" in English. The contention of the appellant was that the respondent was committing a fraud by adopting the word "EVERIS" as an English rendition of his actual registered trade mark in Tamil "IRIS". The Division Bench found that the trade mark of the appellant consisted of a word mark in English reading "EYETEX" along with an artistic feature of a human eye. However the trade mark of the respondent consisted of word mark in Tamil reading as "IRIS". The Division Bench held that there was no structural, overall or visual similarity and confirmed the order of the Registrar made in the rectification application. However in the case on hand, the phonetic similarity, overall structural similarity and visual similarity are present and as such the decision in Aravind Laboratories case has no application to the facts of this case.
30. The registration of trade mark and the continuous use of the said trade mark would prima facie shows that the appellant has got a legal right to protect. Therefore while the appellant approached the court with a grievance that there was infringement of his trade mark or there was an attempt on the part of the respondents to sell their goods as that of another constituting an act of passing off, the Court was obliged to consider the prima facie case, irreparable injury as well as balance of convenience.
LAW OF INJUNCTION:-
31. In SEEMA ARSHAD ZAHEER & ORS v. MUNICIPAL CORPORATION OF GREATER MUMBARI & ORS. (2006(5) Scale 263) the Supreme Court laid down the salient principles governing the grant of injunction thus:-
"The discretion of the court is exercised to grant a temporary injunction only when the following requirements are made out by the plaintiff: (i) existence of a prima facie case as pleaded, necessitating protection of plaintiff's rights by issue of a temporary injunction; (ii) when the need for protection of plaintiff's right is compared with or weighed against the need for protection of defendant's right or likely infringement of defendant's rights, the balance of convenience tilting in favour of plaintiff; and (iii) clear possibility of irreparable injury being caused to plaintiff if the temporary injunction is not granted. In addition, temporary injunction being an equitable relief, the discretion to grant such relief will be exercised only when the plaintiff's conduct is free from blame and he approaches the court with clean hands."
32. In Laxmikant V. Patel case, the Supreme Court observed that refusal to grant an injunction in spite of availability of facts necessarily would occasion a failure of justice. The observation reads thus:-
"17. .............A refusal to grant an injunction in spite of the availability of facts, which are prima facie established by overwhelming evidence and material available on record justifying the grant thereof, occasion a failure of justice and such injury to the plaintiff as would not be capable of being undone at a later stage. The discretion exercised by the trial court and the High Court against the plaintiff, is neither reasonable nor judicious. The grant of interlocutory injunction to the plaintiff could not have been refused, therefore, it becomes obligatory on the part of this Court to interfere."
33. The prima facie case is clearly on the side of the appellant in this matter. Their trade mark was registered as of the date 12.11.2003. The appellant is the prior adopter and user of the mark "WITCO". They are doing business since long. The very partnership in the name and style of "NITCO" was constituted only on 25.2.2009 and the business commenced only thereafter. The document produced by the appellant shows their volume of business. The respondents have started the business in the very same shopping complex just adjacent to the showroom of the appellant. The name "NITCO" is written in such a manner that it would appear as if it was also the concern of the appellant. Both the appellant and respondents are dealing with the very same goods. The location of the shop, the manner in which the name boards were put up and the similarity in the names would cause confusion to the consumers. Therefore the appellant fully satisfied the factors for the grant of an interlocutory injunction.
34. The way in which the word "NITCO" was coined as well as the advertisement put up in the shop where they are doing business clearly shows that the intention in using the trade name "NITCO" was not bonafide and was intended to create confusion among the consumers. There would be chances of confusion on account of the similarity in name as well as proximity of two shops.
35. Therefore we are of the considered view that the appellant has made out a case for interlocutory injunction.
CONCLUSION:-
36. In the result, the order dated 31.7.2009 in O.A.Nos.428 and 429 of 2009 are set aside. There shall an be an ad interim injunction in favour of the appellant restraining the respondents, their partners, servants, agents and men or anybody claiming through them from in any manner infringing the registered trade mark/service mark "WITCO" in any form deceptively similar to the name of the appellant and from marketing, distributing, advertising or using the mark "NITCO" in any form or variation in English or any other vernacular language with mark deceptively similar to the mark "WITCO" with identical colour scheme, set up and lay out in the course of their trade/services and passing off goods or services as the goods of the appellant pending disposal of the suit. However we make it clear that whatever we have observed and indicated above will have absolutely no bearing in the trial of the suit as it was made only for the purpose of deciding the interlocutory applications. Consequently the connected Mps are closed. No costs.
Tr/ To The Sub Assistant Registrar Original Side High Court Madras