Injunction - Trade Mark - Breach of Trade Marks Act - The present appeal is filed on the grounds that granting of temporary injunction orders passed in aforesaid I.A. is arbitrary, illegal and against the principles of natural justice.? - No - asappellant/defendant has copied the logo of horse when horse, by itself, is not registered as trade mark of the appellant, leave alone, even the trade mark authorities themselves cannot register horse as trade mark to any person. = It is not in dispute that the respondent got copyright in the artistic work in the label of Double Horse gunny bags/packaging with distinctive get up and layout including the device of two horses along with a distinct arrangement of features.-The Court below has restrained by way of injunction, not to proceed with the activities of Three Horse label or any other label deceptively similar to the registered trade mark of the respondent, which shall cause irreparable loss to the respondent. = As discussed above, the farmers in India are illiterate. They are poor even in their regional languages, leave aside Hindi and English. Those who are illiterate, they just keep in mind one label and accordingly order for fertilizer. In the case on hand, the label used by the appellant is Three Horses whereas the trade mark of the respondent is Double Horse. The farmers, specially in Hindi speaking areas, as the product of the fertilizer in issue before this Court is supplied in the States of Rajasthan and Madhya Pradesh, would only ask for Ghode wala Khad (fertilizer of horses). They are not able to distinguish which horse going in which side or how many horses are exhibited there. They just keep in mind horses and the colour of the gunny bag. In the present case, the gunny bag used by the appellant and used by the respondent is of similar and in same colour with Three Horses and Double Horses label respectively. Thus, this type of deceptive label will certainly cause confusion in the minds of the illiterate farmers because the colour of the gunny bag is similar with horses thereon. The product sold by both the appellant and respondent is fertilizer. Therefore, majority of the farmers would be influenced by the pictorial depiction on the product. Admittedly, the respondent enjoys the registered trade mark Double Horse brand depicting two running horses for nearly more than a decade. The respondents product label indicates the pictorial depiction of two running horses towards left side with a green band with the words Gromor written in different languages, while on the right side, a band in green mentions the word Gromor in large font. The appellants product label bears the name Three Horses and depicts three horses in motion. This pictorial depiction of three running horses is bordered on the top side with a thin red band with words written therein, while on the right side, a wider band in green mentions the words Triple Horses with the same pictorial depiction of three horses in motion. Thus, there are similarities in both the labels visually, which certainly will confuse a gullible and un-informed customer. The farmers in our country may also innocently believe that use of three horses indicates more potency of fertilizers as compared to two horses.
HONBLE SRI JUSTICE SURESH KUMAR KAIT AND HONBLE SRI JUSTICE U. DURGA PRASAD
CIVIL MISCELLANEOUS APPEAL No.71 of 2017
28-03-2017
Jagdamba Phosphate, (A Unit of Jagdamba Pesticides Pvt. Ltd.), Represented by
its Director...Petitioner
Coromandel International Ltd., Secunderabad, rep. by its Vice-President -
Legal...Respondent.
For appellant: Sri M. Govind Reddy, Advocate.
For Respondent::Sri S.Ravi, Senior Counsel &
Sri Ch.Pushyam Kiran, Advocate.
<Gist:
>Head Note:
? CITATIONS:
1. AIR 2001 SC 1952
2. 2010 (44) PTC 293
3. 2011 STPL 1332 Delhi
4. 2009 (40) PTC 417
5. CMA.No.138 of 2016, dt.25.01.2017.
HONBLE SRI JUSTICE SURESH KUMAR KAIT
AND
HONBLE SRI JUSTICE U.DURGA PRASAD RAO
CIVIL MISCELLANEOUS APPEAL No.71 of 2017
JUDGMENT : (Per Honble Sri Justice Suresh Kumar Kait)
Vide the present appeal, the appellant/defendant has challenged the
order dated 19th December 2016 passed in I.A.No.782 of 2016 in O.S.No.56
of 2016, by the I-Additional Chief Judge, City Civil Court, Secunderabad.
2. The present appeal is filed on the grounds that granting of temporary
injunction orders passed in aforesaid I.A. is arbitrary, illegal and against the
principles of natural justice. It is wrongly held that the label on the Gunny
Bag is similar and deceptive to the general public even before examining any
one of the general public. On one hand, the learned Court holds that Gunny
Bags look like having deceptively similar marks and on the other hand gives
a finding that appellant/defendant adopted similar mark, which shows the
total non-application of mind. Accordingly, learned Judge wrongly held that
appellant/defendant has copied the logo of horse when horse, by itself, is not
registered as trade mark of the appellant, leave alone, even the trade mark
authorities themselves cannot register horse as trade mark to any person. It
is wrongly held that all the artistic features are similar in nature, even
before
examining any of the witnesses, including expert witness.
3. We have heard learned counsel for the parties in length and perused
the material on record.
4. Learned counsel Sri M.Govind Reddy, appearing on behalf of the
appellant/defendant would submit that the learned trial Judge has wrongly
held that arrangement of features and placing of features goes to show that
appellant/defendant has merely copied the Trade Mark and Label of the
respondent/plaintiff whose trade mark was Double Horse and that of
appellant/defendant was Triple Horse. The learned Judge, while relying
on the decision of Honble Supreme Court in Cadila Healthcare Ltd. v.
Cadila Pharmaceuticals Ltd. , completely failed to identify or assess in
what way or otherwise in what manner the Logo/Mark of the
respondent/plaintiff is similar to that of appellant/defendant either visually
or
phonetically, or otherwise connected, but gave a finding that using of similar
trade mark by the appellant/defendant with minor changes is nothing but
infringement of respondent/plaintiffs Mark.
5. Learned counsel for appellant/defendant would further submit that the
learned Judge wrongly held that farmers are illiterate, though the
appellant/defendant never admitted that farmers are illiterate. The learned
Judge ought not to have held that the Public are incapable of distinguishing
the trade marks, without calling even one witness for examination.
Moreover, the learned Judge has wrongly held that perusal of Exhibits B1
and B2 causes confusion in the minds of the farmers, without even calling
one farmer to identify whether it causes confusion.
6. The learned Judge ought to have seen that the judgment in the case of
Kirorimal Kashiram Marketing & Agencies Pvt. Ltd. V. Shree Sita
Chawal Udyog Mill relied on by the respondent is based totally on
different set of facts and circumstances which is squarely not applicable to
the present case, as the said judgment did not consider the grounds raised in
this case. The learned Judge ought to have seen that the requirement of
S.S.P. in Rajasthan is 14.50 Kgs per Hectare, whereas, it requires 29.21 Kgs
per Hectare in Madhya Pradesh. So, it can be presumed that consumers are
aware of the strength of their respective soils, and therefore, before
purchasing such huge quantities, any reasonable person would at least glance
at the Mark and make his efforts to know the details of manufacturer or
producer from whom he is purchasing it.
7. To strengthen his arguments, learned counsel for appellant has relied
upon the case of Wheels India v. S.Nirmal Singh & another , whereby, it
is held that the continuance of an ad interim injunction granted in favour of
the plaintiff ex parte and without disclosure of full facts is not warranted and
the ends of justice will be met if pending disposal of the suit, the interim
orders are vacated with a direction to the 2nd defendant (therein) to maintain
accounts of profits earned by it and to file the same in the Court on a
quarterly basis. Accordingly ordered that the 2nd defendant (therein) shall
maintain regular accounts of its sales under the trade mark PRINCE and
pending disposal of the suit, shall file the same every three months. It is
further directed, it shall also publish public notices in Hindustan Times,
The Hindu and The Pioneer within six weeks, informing prospective
buyers of the relevant goods that the goods marketed by it under the
trademark PRINCE have no connection with the goods marketed by the
plaintiff under the same trademark.
8. While concluding his arguments, learned counsel for
appellant/defendant submits that the learned Judge, while granting the
interim relief, failed to examine by comparing each of the mark wholly.
Accordingly, the learned Judge totally failed to see whether the component
images of the mark are matching while keeping in view that relevant
members of public would always keep dominant image of the mark in the
minds.
9. On the other hand, it is submitted by the learned Senior Advocate Sri
S.Ravi, appearing for respondent/plaintiff that the trade mark Double
Horse was adopted by Liberty Phosphates Limited in respect of Single
Super Phosphate fertilizer in the year 2004. The said trade mark was
extensively used since 1994 by Liberty Phosphates Limited and registration
certificate for trade mark Double Horse was registered under No.1156780
in class I on 10.12.2002 by trade marks office at Mumbai. Later in the year
2014, Liberty Phosphates Limited was merged with the respondent/plaintiff-
Coromandal International Ltd., and the scheme of amalgamation was
sanctioned by this Court on 07.04.2014. It is also accepted by the High
Court of Gujarat on 24.04.2014. By virtue of amalgamation, rights, title and
interest vested with the said Liberty Phosphates Limited have been
transferred to the respondent and the respondent, being a subsequent
proprietor of trade mark Single Super Phosphate Fertilizer, manufactured
and marketed under the name Double Horse which is emanated by bunch
of invoices. It has got a good reputation and goodwill and exclusive use in
trade and it is associated with public through its label. The respondent in
order to protect its right over the market Double Horse, obtained
registration of the same under Registration No.1156780 in respect of
powdered and granulated Single Super Phosphate and registration has been
renewed from time to time.
10. Learned Senior Counsel further submits that respondent is also a
proprietor of copyright in the artistic work in the label of Double Horse
gunny bags/packaging with distinctive get up and layout including the
device of two horses along with a distinct arrangement of features and
get up. The respondents trademark Double Horse has acquired
tremendous reputation and goodwill in the fertilizer market. Learned
counsel submits that in the month of August 2015, it was brought to the
knowledge of the respondent that the appellant/defendant is marketing
Single Super Phosphate fertilizer under a deceptive similar mark Three
Horses and label. The appellant has malafidely adopted similar trade mark
and get up in its gunny bags with a malafide intention to ride upon the wide
spread reputation and goodwill of the respondent. The appellant has not
only adopted deceptively similar mark but has also copied the scheme and
get up of the respondents label. Accordingly, the respondent issued a desist
notice to the appellant on 22nd August 2015 in order to amicably settle the
matter. The appellant sent an evasive reply to the respondent on 18.09.2015,
for which, on 09.10.2015, a rejoinder was sent by the respondent.
11. Mr.S.Ravi, learned Senior Counsel argued that fertilizers are
purchased mostly by illiterate farmers who are incapable of distinguishing
the products by trade name and certain minor changes in the label. They
identify the products only with their over all get up. Hence, the imitation of
the layout of the respondents Double Horse mark and label by the
appellant/defendant has been done with the malafide intention to deceive the
minds of the purchasers and cause confusion that the product manufactured
by the appellant/defendant actually emanates from the respondent. The
fertilizer sold by the appellant/defendant with imitative Three Horse mark
and label are of substandard and inferior quality. The appellants activities
are seriously hampering the business of the respondent and spoiling its hard
earned reputation and goodwill attained for the goods sold under the
respondents trade mark Double Horse. As the products involved are
identical and the channel of trade is also the same, there is every possibility
of deception and confusion in the minds of traders and public.
12. In reply, the learned counsel for appellant has argued that the trade
mark of the appellant is totally different from that of the respondent and the
suit filed by the respondent is only to capture and monopolise the
respondents product in the market. The appellant is doing business under
the name and style of Jagadamba Phosphates under the brand name Three
Horses, accordingly, is supplying the products of Single Super Phosphate
principally in Rajasthan and Madhya Pradesh. The production and
movement of product is monitored by web based fertilizer monitoring
system since 2011 onwards and thereby it is not causing infringement of any
right of the respondent in marketing. The mark of the appellant is neither
identical nor deceptively similar to that of the respondent and it is quite
different one.
13. Before going into the issue, the comparison of the label of Double
Horse and Three Horses is necessary to adjudicate the present appeal,
which is as under :
Double Horse Label
Three Horse Label
The device of two horses one beside
the other.
The device of three horses one beside
the other.
The device of two horses in running
posture.
The device of three horses in running
posture.
The words DOUBLE HORSE
BRAND which is written in Hindi.
The words THREE HORSE BRAND
which is written in Hindi.
The DOUBLE HORSE BRAND label
with device of two horses is placed to
the top centre of the gunny
bag/packaging.
The THREE HORSE BRAND label
with device of three horses is placed at
the top centre of the gunny
bag/packaging.
A thin strip on the left side and thick
strip on the right side of the gunny
bag/packaging.
A thin strip on the left side and thick
strip on the right side of the gunny
bag/packaging.
The packaging/gunny bag is in the
combination of green and red.
The packaging/gunny bag is in
combination of green and red.
14. It is not in dispute that the respondent got copyright in the artistic
work in the label of Double Horse gunny bags/packaging with distinctive
get up and layout including the device of two horses along with a distinct
arrangement of features. The learned trial Court, after seeing from the
invoices, has observed that there was an extensive scale of sales said to be
made by the respondent/plaintiff alone. The trial Court also perused Exhibit
A-7, whereby, the respondent has invested huge sum of money for
advertising, permission and sales promotion of fertilizer sold under
distinctive trade mark Double Horse label.
15. It is also not in dispute that the respondent, in the month of August
2015, on noticing that the appellant is marketing Single Super Phosphate
under deceptively similar mark of Three Horses label and the appellant
has malafidely imitated the branding, colour scheme, get up and layout of
the respondents Double Horse mark and label, issued desist notice and
called upon the appellant for amicable settlement. The Court below also
perused Exhibits B-1 and B-2, and observed that the gunny bags look like a
deceptively similar trade mark and appellant adopted a similar mark on their
gunny bags and as per the document covered under Exhibit A-8, the
respondent got issued a legal notice to the appellant to seize and desist the
product and also demanded for amicable settlement of the matter, for which,
the appellant gave a reply covered under Exhibit A-9. No doubt, in which,
the appellant denied and disputed the averments of the respondent. The
Court below also perused the documents filed by the respondent covered
under Exhibits A-1 to A-6 and observed that the label on the gunny bag of
appellant is similar to that of the respondents gunny bag and is deceptive to
the general public. Moreover, the respondent got issued rejoinder notice
under Exhibit A-10 intimating that if the appellant did not come forward for
settlement, he will go for alternative remedy.
16. Based upon the aforesaid documents, the learned trial Court opined
that the gunny bags and documents clearly go to show that the appellant has
copied the logo of the horse. The concept of packing is similar and as
evident from the gunny bags, however, the appellant has just changed the
trade mark as Three Horses instead of Double Horse mark. All other
artistic features are similar in nature. Thus, the arrangement of features and
placing of features also clearly go to show that the appellant has merely
copied the respondents trade mark and label. However, it is observed that
there are some little variations between the labels like respondents is
Double Horse and the appellants is Three Horses; respondents horses
are one beside the other and the appellants horses are opposite to each other
and the respondents horses are in running posture, whereas, the appellants
horses are opposite to each other.
17. In the case of Cadila Healthcare Ltd. (1 supra), whereby, it is held
that relevant similarities between marks must be considered and
dissimilarities cannot be given importance. In an action for infringement,
the plaintiff must make out that the use of defendants mark is likely to
deceive and the similarities between the plaintiff and defendants trade
marks are also close either visually, phonetically or otherwise.
18. In our country i.e. India, the farmers are illiterate and while
purchasing the fertilizers, they being illiterate, incapable of distinguishing
the product by trade name or minor changes in the label. Normally they will
identify the products by over all get up of the product. Exhibits B-1 and
B-2, which are at pages 108 and 110 of the paper book, show that both the
trade marks cause confusion in the minds of farmers, who used to use Single
Super Phosphate. The appellants trade mark is likely to be deceptive in
nature and there are no distinctive features between the respondents trade
mark and the appellants trade mark and the activity of appellant may
hamper the business of the respondent, whose trade mark is registered under
Exhibit A-2.
19. The case of Kirorimal Kashiram Marketing & Agencies Pvt. Ltd.
(2 supra) is relevant in the facts and circumstances of the present case,
whereby, it is held that the expression Deer is arbitrarily adopted with
respect to the product rice and, deer is a prominent part of the trade mark
Double Deer of the appellant therein, similar to the prominent word mark
Qilla in the case of Amar Singh Chawal Wala v. Shree Vardhman Rice
and Genl Mill . In the above cited case, the respondent therein failed to
give any satisfactory explanation as to why it adopted the expression Deer
when there already existed a registered trade mark Double Deer of the
appellant therein.
20. In the case of Cadila Healthcare Ltd. (1 supra), the Honble
Supreme Court held that 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 that the purchaser of such goods in India may have
absolutely no knowledge of English language or of the language in which
trade mark is written, and for them, different words with slight difference in
spellings may sound phonetically the same. While dealing with cases
relating to such issues, one important aspect 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.
21. Coming to the case in hand, the respondent is a part of Murugappa
group and such group is a Company incorporated in the year 1961 and doing
business of manufacturing a wide range of fertilizers and pesticides and has
multi-location product facilities and markets its products all over India. The
trade mark Double Horse was adopted by Liberty Phosphates Limited in
respect of Single Super Phosphate Fertilizers in the year 2004. The trade
mark of Double Horse was extensively used since 1994 by Liberty
Phosphates Limited and registration certificate of trade mark Double
Horse was registered under Registration No.1156780 in Class I on
10.12.2002 by trade marks office at Mumbai. In the year 2014, Liberty
Phosphates Limited was merged with the respondent-Coromandal
International Limited and the scheme of amalgamation was sanctioned by
this High Court on 07.04.2014. It is also accepted by the High Court of
Gujarat on 24th April 2014. Accordingly, by virtue of amalgamation, rights,
title and interest vested with the said Liberty Phosphates Limited have been
transferred to Coromandal International Limited (respondent) and
respondent being subsequent proprietor of trade mark, the Single Super
Phosphate Fertilizer is manufactured and marketed by the respondent under
the name Double Horse. Whereas, the appellant started using similar
mark somewhere in 2014 and it came in the notice of the respondent in the
month of August 2015 that the appellant is marketing Single Super
Phosphate fertilizers deceptively under a similar mark Three Horses.
Moreover, from the table as shown in paragraph No.13 above and
documents under Exhibits A-11 and A-12, which are copies of gunny bags
of the respondent and appellant, that the gunny bags of appellant are having
the disputed trade mark of the respondent with deceptive features. Exhibit
A-8 whereby the respondent issued a desist notice and appellant made an
attempt to distinguish the trade mark, but the alleged activity of the appellant
with triple horse logo is in the deceptive nature, which causes substantial
injury to the business of the respondent.
22. The Court below has restrained by way of injunction, not to proceed
with the activities of Three Horse label or any other label deceptively
similar to the registered trade mark of the respondent, which shall cause
irreparable loss to the respondent.
23. It is pertinent to note here that in the case of Patel Phosphate v.
Coromandel International Ltd. , similar issue came before this Court,
whereby, it is held as under :
Perusal of the order under appeal reflects that the Court below
examined the marks used by both the parties and found them to be
deceptively similar. The products sold by both parties are
fertilizers. Needless to state, consumers of fertilizers would be, by
and large, illiterate. They would therefore be majorly influenced
by the pictorial depiction on the product. Admittedly, the
plaintiff/Liberty Phosphate Limited enjoyed the registered trade
mark Double Horse Brand depicting two running horses for
nearly a decade now. The plaintiffs product label indicates that
the pictorial depiction of the two running horses is bordered on the
left side with a green band with the words Gromor written in
different languages, while on the right side, a band in green
mentions the word Gromor in large font. The defendants
product label bears the name Three Horse and depicts three
horses in motion. This pictorial depiction of three running horses
is bordered on the left side with a thin red band with words written
therein, while on the right side, a wider band in green mentions the
words Triple Horse with the same pictorial depiction of three
horses in motion. Visually, there are enough similarities in the two
to confuse a gullible and uninformed consumer.
It is an admitted fat that the defendant, having started its business
in fertilizers in 2006, did not choose to adopt this label till 2014. It
only applied for registration of this label in February, 2014, clearly
indicating that its usage started roughly around the same time. An
illiterate farmer is liable to be influenced by the similarity in the
words Double Horse and Triple Horse and may also
innocently believe that use of Three Horses indicates more
potency of the fertilizer as compared to two horses. The
pictorial depiction on both the products also is not dissimilar so as
to dispel any such misconception. This Court therefore finds no
reason to disagree with the finding of the trial Court that there is
every possibility of the consumer being misled and confused.
24. As discussed above, the farmers in India are illiterate. They are poor
even in their regional languages, leave aside Hindi and English. Those who
are illiterate, they just keep in mind one label and accordingly order for
fertilizer. In the case on hand, the label used by the appellant is Three
Horses whereas the trade mark of the respondent is Double Horse. The
farmers, specially in Hindi speaking areas, as the product of the fertilizer in
issue before this Court is supplied in the States of Rajasthan and Madhya
Pradesh, would only ask for Ghode wala Khad (fertilizer of horses). They
are not able to distinguish which horse going in which side or how many
horses are exhibited there. They just keep in mind horses and the colour of
the gunny bag. In the present case, the gunny bag used by the appellant and
used by the respondent is of similar and in same colour with Three Horses
and Double Horses label respectively. Thus, this type of deceptive label
will certainly cause confusion in the minds of the illiterate farmers because
the colour of the gunny bag is similar with horses thereon. The product sold
by both the appellant and respondent is fertilizer. Therefore, majority of the
farmers would be influenced by the pictorial depiction on the product.
Admittedly, the respondent enjoys the registered trade mark Double Horse
brand depicting two running horses for nearly more than a decade. The
respondents product label indicates the pictorial depiction of two running
horses towards left side with a green band with the words Gromor written
in different languages, while on the right side, a band in green mentions the
word Gromor in large font. The appellants product label bears the name
Three Horses and depicts three horses in motion. This pictorial depiction
of three running horses is bordered on the top side with a thin red band with
words written therein, while on the right side, a wider band in green
mentions the words Triple Horses with the same pictorial depiction of
three horses in motion. Thus, there are similarities in both the labels
visually, which certainly will confuse a gullible and un-informed customer.
The farmers in our country may also innocently believe that use of three
horses indicates more potency of fertilizers as compared to two horses.
25. In view of the facts and law cited above, and more importantly, the
issue has already been decided by this Court vide the judgment dated 25th
January 2017 in C.M.A.No.138 of 2016, wherein, the respondent was also
one of the parties, we are of the considered view that there is a similarity in
the label used by the appellant and the registered trade mark of the
respondent.
26. Finding no merit in the instant appeal, the same is accordingly
dismissed with costs of Rs.25,000/- (Rupees Twenty Five Thousand). Out
of the costs amount, an amount of Rs.15,000/- shall be paid in favour of the
respondent and an amount of Rs.10,000/- to be paid in favour of High Court
Legal Services Committee within two weeks from the receipt of a copy of
this judgment.
Pending miscellaneous applications, if any, shall stand closed.
________________________
SURESH KUMAR KAIT, J
__________________________
U.DURGA PRASAD RAO, J
28th March, 2017
CIVIL MISCELLANEOUS APPEAL No.71 of 2017
28-03-2017
Jagdamba Phosphate, (A Unit of Jagdamba Pesticides Pvt. Ltd.), Represented by
its Director...Petitioner
Coromandel International Ltd., Secunderabad, rep. by its Vice-President -
Legal...Respondent.
For appellant: Sri M. Govind Reddy, Advocate.
For Respondent::Sri S.Ravi, Senior Counsel &
Sri Ch.Pushyam Kiran, Advocate.
<Gist:
>Head Note:
? CITATIONS:
1. AIR 2001 SC 1952
2. 2010 (44) PTC 293
3. 2011 STPL 1332 Delhi
4. 2009 (40) PTC 417
5. CMA.No.138 of 2016, dt.25.01.2017.
HONBLE SRI JUSTICE SURESH KUMAR KAIT
AND
HONBLE SRI JUSTICE U.DURGA PRASAD RAO
CIVIL MISCELLANEOUS APPEAL No.71 of 2017
JUDGMENT : (Per Honble Sri Justice Suresh Kumar Kait)
Vide the present appeal, the appellant/defendant has challenged the
order dated 19th December 2016 passed in I.A.No.782 of 2016 in O.S.No.56
of 2016, by the I-Additional Chief Judge, City Civil Court, Secunderabad.
2. The present appeal is filed on the grounds that granting of temporary
injunction orders passed in aforesaid I.A. is arbitrary, illegal and against the
principles of natural justice. It is wrongly held that the label on the Gunny
Bag is similar and deceptive to the general public even before examining any
one of the general public. On one hand, the learned Court holds that Gunny
Bags look like having deceptively similar marks and on the other hand gives
a finding that appellant/defendant adopted similar mark, which shows the
total non-application of mind. Accordingly, learned Judge wrongly held that
appellant/defendant has copied the logo of horse when horse, by itself, is not
registered as trade mark of the appellant, leave alone, even the trade mark
authorities themselves cannot register horse as trade mark to any person. It
is wrongly held that all the artistic features are similar in nature, even
before
examining any of the witnesses, including expert witness.
3. We have heard learned counsel for the parties in length and perused
the material on record.
4. Learned counsel Sri M.Govind Reddy, appearing on behalf of the
appellant/defendant would submit that the learned trial Judge has wrongly
held that arrangement of features and placing of features goes to show that
appellant/defendant has merely copied the Trade Mark and Label of the
respondent/plaintiff whose trade mark was Double Horse and that of
appellant/defendant was Triple Horse. The learned Judge, while relying
on the decision of Honble Supreme Court in Cadila Healthcare Ltd. v.
Cadila Pharmaceuticals Ltd. , completely failed to identify or assess in
what way or otherwise in what manner the Logo/Mark of the
respondent/plaintiff is similar to that of appellant/defendant either visually
or
phonetically, or otherwise connected, but gave a finding that using of similar
trade mark by the appellant/defendant with minor changes is nothing but
infringement of respondent/plaintiffs Mark.
5. Learned counsel for appellant/defendant would further submit that the
learned Judge wrongly held that farmers are illiterate, though the
appellant/defendant never admitted that farmers are illiterate. The learned
Judge ought not to have held that the Public are incapable of distinguishing
the trade marks, without calling even one witness for examination.
Moreover, the learned Judge has wrongly held that perusal of Exhibits B1
and B2 causes confusion in the minds of the farmers, without even calling
one farmer to identify whether it causes confusion.
6. The learned Judge ought to have seen that the judgment in the case of
Kirorimal Kashiram Marketing & Agencies Pvt. Ltd. V. Shree Sita
Chawal Udyog Mill relied on by the respondent is based totally on
different set of facts and circumstances which is squarely not applicable to
the present case, as the said judgment did not consider the grounds raised in
this case. The learned Judge ought to have seen that the requirement of
S.S.P. in Rajasthan is 14.50 Kgs per Hectare, whereas, it requires 29.21 Kgs
per Hectare in Madhya Pradesh. So, it can be presumed that consumers are
aware of the strength of their respective soils, and therefore, before
purchasing such huge quantities, any reasonable person would at least glance
at the Mark and make his efforts to know the details of manufacturer or
producer from whom he is purchasing it.
7. To strengthen his arguments, learned counsel for appellant has relied
upon the case of Wheels India v. S.Nirmal Singh & another , whereby, it
is held that the continuance of an ad interim injunction granted in favour of
the plaintiff ex parte and without disclosure of full facts is not warranted and
the ends of justice will be met if pending disposal of the suit, the interim
orders are vacated with a direction to the 2nd defendant (therein) to maintain
accounts of profits earned by it and to file the same in the Court on a
quarterly basis. Accordingly ordered that the 2nd defendant (therein) shall
maintain regular accounts of its sales under the trade mark PRINCE and
pending disposal of the suit, shall file the same every three months. It is
further directed, it shall also publish public notices in Hindustan Times,
The Hindu and The Pioneer within six weeks, informing prospective
buyers of the relevant goods that the goods marketed by it under the
trademark PRINCE have no connection with the goods marketed by the
plaintiff under the same trademark.
8. While concluding his arguments, learned counsel for
appellant/defendant submits that the learned Judge, while granting the
interim relief, failed to examine by comparing each of the mark wholly.
Accordingly, the learned Judge totally failed to see whether the component
images of the mark are matching while keeping in view that relevant
members of public would always keep dominant image of the mark in the
minds.
9. On the other hand, it is submitted by the learned Senior Advocate Sri
S.Ravi, appearing for respondent/plaintiff that the trade mark Double
Horse was adopted by Liberty Phosphates Limited in respect of Single
Super Phosphate fertilizer in the year 2004. The said trade mark was
extensively used since 1994 by Liberty Phosphates Limited and registration
certificate for trade mark Double Horse was registered under No.1156780
in class I on 10.12.2002 by trade marks office at Mumbai. Later in the year
2014, Liberty Phosphates Limited was merged with the respondent/plaintiff-
Coromandal International Ltd., and the scheme of amalgamation was
sanctioned by this Court on 07.04.2014. It is also accepted by the High
Court of Gujarat on 24.04.2014. By virtue of amalgamation, rights, title and
interest vested with the said Liberty Phosphates Limited have been
transferred to the respondent and the respondent, being a subsequent
proprietor of trade mark Single Super Phosphate Fertilizer, manufactured
and marketed under the name Double Horse which is emanated by bunch
of invoices. It has got a good reputation and goodwill and exclusive use in
trade and it is associated with public through its label. The respondent in
order to protect its right over the market Double Horse, obtained
registration of the same under Registration No.1156780 in respect of
powdered and granulated Single Super Phosphate and registration has been
renewed from time to time.
10. Learned Senior Counsel further submits that respondent is also a
proprietor of copyright in the artistic work in the label of Double Horse
gunny bags/packaging with distinctive get up and layout including the
device of two horses along with a distinct arrangement of features and
get up. The respondents trademark Double Horse has acquired
tremendous reputation and goodwill in the fertilizer market. Learned
counsel submits that in the month of August 2015, it was brought to the
knowledge of the respondent that the appellant/defendant is marketing
Single Super Phosphate fertilizer under a deceptive similar mark Three
Horses and label. The appellant has malafidely adopted similar trade mark
and get up in its gunny bags with a malafide intention to ride upon the wide
spread reputation and goodwill of the respondent. The appellant has not
only adopted deceptively similar mark but has also copied the scheme and
get up of the respondents label. Accordingly, the respondent issued a desist
notice to the appellant on 22nd August 2015 in order to amicably settle the
matter. The appellant sent an evasive reply to the respondent on 18.09.2015,
for which, on 09.10.2015, a rejoinder was sent by the respondent.
11. Mr.S.Ravi, learned Senior Counsel argued that fertilizers are
purchased mostly by illiterate farmers who are incapable of distinguishing
the products by trade name and certain minor changes in the label. They
identify the products only with their over all get up. Hence, the imitation of
the layout of the respondents Double Horse mark and label by the
appellant/defendant has been done with the malafide intention to deceive the
minds of the purchasers and cause confusion that the product manufactured
by the appellant/defendant actually emanates from the respondent. The
fertilizer sold by the appellant/defendant with imitative Three Horse mark
and label are of substandard and inferior quality. The appellants activities
are seriously hampering the business of the respondent and spoiling its hard
earned reputation and goodwill attained for the goods sold under the
respondents trade mark Double Horse. As the products involved are
identical and the channel of trade is also the same, there is every possibility
of deception and confusion in the minds of traders and public.
12. In reply, the learned counsel for appellant has argued that the trade
mark of the appellant is totally different from that of the respondent and the
suit filed by the respondent is only to capture and monopolise the
respondents product in the market. The appellant is doing business under
the name and style of Jagadamba Phosphates under the brand name Three
Horses, accordingly, is supplying the products of Single Super Phosphate
principally in Rajasthan and Madhya Pradesh. The production and
movement of product is monitored by web based fertilizer monitoring
system since 2011 onwards and thereby it is not causing infringement of any
right of the respondent in marketing. The mark of the appellant is neither
identical nor deceptively similar to that of the respondent and it is quite
different one.
13. Before going into the issue, the comparison of the label of Double
Horse and Three Horses is necessary to adjudicate the present appeal,
which is as under :
Double Horse Label
Three Horse Label
The device of two horses one beside
the other.
The device of three horses one beside
the other.
The device of two horses in running
posture.
The device of three horses in running
posture.
The words DOUBLE HORSE
BRAND which is written in Hindi.
The words THREE HORSE BRAND
which is written in Hindi.
The DOUBLE HORSE BRAND label
with device of two horses is placed to
the top centre of the gunny
bag/packaging.
The THREE HORSE BRAND label
with device of three horses is placed at
the top centre of the gunny
bag/packaging.
A thin strip on the left side and thick
strip on the right side of the gunny
bag/packaging.
A thin strip on the left side and thick
strip on the right side of the gunny
bag/packaging.
The packaging/gunny bag is in the
combination of green and red.
The packaging/gunny bag is in
combination of green and red.
14. It is not in dispute that the respondent got copyright in the artistic
work in the label of Double Horse gunny bags/packaging with distinctive
get up and layout including the device of two horses along with a distinct
arrangement of features. The learned trial Court, after seeing from the
invoices, has observed that there was an extensive scale of sales said to be
made by the respondent/plaintiff alone. The trial Court also perused Exhibit
A-7, whereby, the respondent has invested huge sum of money for
advertising, permission and sales promotion of fertilizer sold under
distinctive trade mark Double Horse label.
15. It is also not in dispute that the respondent, in the month of August
2015, on noticing that the appellant is marketing Single Super Phosphate
under deceptively similar mark of Three Horses label and the appellant
has malafidely imitated the branding, colour scheme, get up and layout of
the respondents Double Horse mark and label, issued desist notice and
called upon the appellant for amicable settlement. The Court below also
perused Exhibits B-1 and B-2, and observed that the gunny bags look like a
deceptively similar trade mark and appellant adopted a similar mark on their
gunny bags and as per the document covered under Exhibit A-8, the
respondent got issued a legal notice to the appellant to seize and desist the
product and also demanded for amicable settlement of the matter, for which,
the appellant gave a reply covered under Exhibit A-9. No doubt, in which,
the appellant denied and disputed the averments of the respondent. The
Court below also perused the documents filed by the respondent covered
under Exhibits A-1 to A-6 and observed that the label on the gunny bag of
appellant is similar to that of the respondents gunny bag and is deceptive to
the general public. Moreover, the respondent got issued rejoinder notice
under Exhibit A-10 intimating that if the appellant did not come forward for
settlement, he will go for alternative remedy.
16. Based upon the aforesaid documents, the learned trial Court opined
that the gunny bags and documents clearly go to show that the appellant has
copied the logo of the horse. The concept of packing is similar and as
evident from the gunny bags, however, the appellant has just changed the
trade mark as Three Horses instead of Double Horse mark. All other
artistic features are similar in nature. Thus, the arrangement of features and
placing of features also clearly go to show that the appellant has merely
copied the respondents trade mark and label. However, it is observed that
there are some little variations between the labels like respondents is
Double Horse and the appellants is Three Horses; respondents horses
are one beside the other and the appellants horses are opposite to each other
and the respondents horses are in running posture, whereas, the appellants
horses are opposite to each other.
17. In the case of Cadila Healthcare Ltd. (1 supra), whereby, it is held
that relevant similarities between marks must be considered and
dissimilarities cannot be given importance. In an action for infringement,
the plaintiff must make out that the use of defendants mark is likely to
deceive and the similarities between the plaintiff and defendants trade
marks are also close either visually, phonetically or otherwise.
18. In our country i.e. India, the farmers are illiterate and while
purchasing the fertilizers, they being illiterate, incapable of distinguishing
the product by trade name or minor changes in the label. Normally they will
identify the products by over all get up of the product. Exhibits B-1 and
B-2, which are at pages 108 and 110 of the paper book, show that both the
trade marks cause confusion in the minds of farmers, who used to use Single
Super Phosphate. The appellants trade mark is likely to be deceptive in
nature and there are no distinctive features between the respondents trade
mark and the appellants trade mark and the activity of appellant may
hamper the business of the respondent, whose trade mark is registered under
Exhibit A-2.
19. The case of Kirorimal Kashiram Marketing & Agencies Pvt. Ltd.
(2 supra) is relevant in the facts and circumstances of the present case,
whereby, it is held that the expression Deer is arbitrarily adopted with
respect to the product rice and, deer is a prominent part of the trade mark
Double Deer of the appellant therein, similar to the prominent word mark
Qilla in the case of Amar Singh Chawal Wala v. Shree Vardhman Rice
and Genl Mill . In the above cited case, the respondent therein failed to
give any satisfactory explanation as to why it adopted the expression Deer
when there already existed a registered trade mark Double Deer of the
appellant therein.
20. In the case of Cadila Healthcare Ltd. (1 supra), the Honble
Supreme Court held that 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 that the purchaser of such goods in India may have
absolutely no knowledge of English language or of the language in which
trade mark is written, and for them, different words with slight difference in
spellings may sound phonetically the same. While dealing with cases
relating to such issues, one important aspect 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.
21. Coming to the case in hand, the respondent is a part of Murugappa
group and such group is a Company incorporated in the year 1961 and doing
business of manufacturing a wide range of fertilizers and pesticides and has
multi-location product facilities and markets its products all over India. The
trade mark Double Horse was adopted by Liberty Phosphates Limited in
respect of Single Super Phosphate Fertilizers in the year 2004. The trade
mark of Double Horse was extensively used since 1994 by Liberty
Phosphates Limited and registration certificate of trade mark Double
Horse was registered under Registration No.1156780 in Class I on
10.12.2002 by trade marks office at Mumbai. In the year 2014, Liberty
Phosphates Limited was merged with the respondent-Coromandal
International Limited and the scheme of amalgamation was sanctioned by
this High Court on 07.04.2014. It is also accepted by the High Court of
Gujarat on 24th April 2014. Accordingly, by virtue of amalgamation, rights,
title and interest vested with the said Liberty Phosphates Limited have been
transferred to Coromandal International Limited (respondent) and
respondent being subsequent proprietor of trade mark, the Single Super
Phosphate Fertilizer is manufactured and marketed by the respondent under
the name Double Horse. Whereas, the appellant started using similar
mark somewhere in 2014 and it came in the notice of the respondent in the
month of August 2015 that the appellant is marketing Single Super
Phosphate fertilizers deceptively under a similar mark Three Horses.
Moreover, from the table as shown in paragraph No.13 above and
documents under Exhibits A-11 and A-12, which are copies of gunny bags
of the respondent and appellant, that the gunny bags of appellant are having
the disputed trade mark of the respondent with deceptive features. Exhibit
A-8 whereby the respondent issued a desist notice and appellant made an
attempt to distinguish the trade mark, but the alleged activity of the appellant
with triple horse logo is in the deceptive nature, which causes substantial
injury to the business of the respondent.
22. The Court below has restrained by way of injunction, not to proceed
with the activities of Three Horse label or any other label deceptively
similar to the registered trade mark of the respondent, which shall cause
irreparable loss to the respondent.
23. It is pertinent to note here that in the case of Patel Phosphate v.
Coromandel International Ltd. , similar issue came before this Court,
whereby, it is held as under :
Perusal of the order under appeal reflects that the Court below
examined the marks used by both the parties and found them to be
deceptively similar. The products sold by both parties are
fertilizers. Needless to state, consumers of fertilizers would be, by
and large, illiterate. They would therefore be majorly influenced
by the pictorial depiction on the product. Admittedly, the
plaintiff/Liberty Phosphate Limited enjoyed the registered trade
mark Double Horse Brand depicting two running horses for
nearly a decade now. The plaintiffs product label indicates that
the pictorial depiction of the two running horses is bordered on the
left side with a green band with the words Gromor written in
different languages, while on the right side, a band in green
mentions the word Gromor in large font. The defendants
product label bears the name Three Horse and depicts three
horses in motion. This pictorial depiction of three running horses
is bordered on the left side with a thin red band with words written
therein, while on the right side, a wider band in green mentions the
words Triple Horse with the same pictorial depiction of three
horses in motion. Visually, there are enough similarities in the two
to confuse a gullible and uninformed consumer.
It is an admitted fat that the defendant, having started its business
in fertilizers in 2006, did not choose to adopt this label till 2014. It
only applied for registration of this label in February, 2014, clearly
indicating that its usage started roughly around the same time. An
illiterate farmer is liable to be influenced by the similarity in the
words Double Horse and Triple Horse and may also
innocently believe that use of Three Horses indicates more
potency of the fertilizer as compared to two horses. The
pictorial depiction on both the products also is not dissimilar so as
to dispel any such misconception. This Court therefore finds no
reason to disagree with the finding of the trial Court that there is
every possibility of the consumer being misled and confused.
24. As discussed above, the farmers in India are illiterate. They are poor
even in their regional languages, leave aside Hindi and English. Those who
are illiterate, they just keep in mind one label and accordingly order for
fertilizer. In the case on hand, the label used by the appellant is Three
Horses whereas the trade mark of the respondent is Double Horse. The
farmers, specially in Hindi speaking areas, as the product of the fertilizer in
issue before this Court is supplied in the States of Rajasthan and Madhya
Pradesh, would only ask for Ghode wala Khad (fertilizer of horses). They
are not able to distinguish which horse going in which side or how many
horses are exhibited there. They just keep in mind horses and the colour of
the gunny bag. In the present case, the gunny bag used by the appellant and
used by the respondent is of similar and in same colour with Three Horses
and Double Horses label respectively. Thus, this type of deceptive label
will certainly cause confusion in the minds of the illiterate farmers because
the colour of the gunny bag is similar with horses thereon. The product sold
by both the appellant and respondent is fertilizer. Therefore, majority of the
farmers would be influenced by the pictorial depiction on the product.
Admittedly, the respondent enjoys the registered trade mark Double Horse
brand depicting two running horses for nearly more than a decade. The
respondents product label indicates the pictorial depiction of two running
horses towards left side with a green band with the words Gromor written
in different languages, while on the right side, a band in green mentions the
word Gromor in large font. The appellants product label bears the name
Three Horses and depicts three horses in motion. This pictorial depiction
of three running horses is bordered on the top side with a thin red band with
words written therein, while on the right side, a wider band in green
mentions the words Triple Horses with the same pictorial depiction of
three horses in motion. Thus, there are similarities in both the labels
visually, which certainly will confuse a gullible and un-informed customer.
The farmers in our country may also innocently believe that use of three
horses indicates more potency of fertilizers as compared to two horses.
25. In view of the facts and law cited above, and more importantly, the
issue has already been decided by this Court vide the judgment dated 25th
January 2017 in C.M.A.No.138 of 2016, wherein, the respondent was also
one of the parties, we are of the considered view that there is a similarity in
the label used by the appellant and the registered trade mark of the
respondent.
26. Finding no merit in the instant appeal, the same is accordingly
dismissed with costs of Rs.25,000/- (Rupees Twenty Five Thousand). Out
of the costs amount, an amount of Rs.15,000/- shall be paid in favour of the
respondent and an amount of Rs.10,000/- to be paid in favour of High Court
Legal Services Committee within two weeks from the receipt of a copy of
this judgment.
Pending miscellaneous applications, if any, shall stand closed.
________________________
SURESH KUMAR KAIT, J
__________________________
U.DURGA PRASAD RAO, J
28th March, 2017
Comments
Post a Comment