Construction Research and Technology GMBH vs Dirk India Private Limited

Sunil Gaur, J.

I. A. No. 781/2011 (under Order 39 rule 1 & 2 CPC) in C.S. (OS) No. 117/2011

An injunction to restrain the Defendant from adopting and using confusingly similar trademarks ''POZZOPLAST and POZZOCRETE'' is sought by the Plaintiffs while asserting that they are exclusively, extensively and continuously using their trademarks ''POZZOLITH and POZZUTEC in the field of building materials, i.e., admixture material and building material for concrete. Plaintiffs assert that they are the owner of the registered trademark POZZOLITH in India for more than 60 years and have acquired significant reputation and goodwill for its trademark in this field and this can be gauged from Plaintiff''s sales figures worldwide and in India, details which have been disclosed in paragraph no: 19 and 20 of the plaint. Copies of some Sale Invoices of the year 1998 have been also placed on record by the Plaintiffs. According to the Plaintiffs, owing to such long and continuous usage of its well known trademarks, the prefix ''POZZO/POZZU'' have become distinctive of Plaintiffs'' product and the consuming public today associates all POZZO formative mark with the source of Plaintiffs.

Plaintiffs are aggrieved by Defendant''s subsequent adoption and use of similar trademarks ''POZZO, POZZOCRETE, POZZOPLAST, POZZOTAR'', in the same business as of Plaintiffs'' and the use of the aforesaid impugned marks by the Defendant, as per the Plaintiffs, is manifestly dishonest and calculative to deceive the consumers and to ride on the goodwill and reputation of the Plaintiff''s marks and there exist a real likelihood of confusion and deception amongst consumers. Plaintiffs assert that they will suffer irreparable loss, injury and damage to their business, goodwill and reputation if the Defendants are not immediately restrained from continuing their illegal trade activity of infringement of Plaintiffs'' marks and to support its case, reliance has been placed upon decisions in Bihar Tubes Ltd. Vs. Garg Ispat Ltd., ; M/s. Hindustan Pencils Pvt. Ltd. v. M/s. India Stationery Products Co. & Anr., 1989 (9) PTC 61 (Del) ; Midas Hygiene Industries P. Ltd. and Another Vs. Sudhir Bhatia and Others, Laxmikant V. Patel Vs. Chetanbhat Shah and Another, Automatic Electric Limited v. R.K. Dhawan & Anr, 1999 (19) PTC 81 ; Ford Motor Company of Canada Limited and Another Vs. Ford Service Centre, Godfrey Philips India Ltd. Vs. Girnar Food and Beverages Pvt. Ltd., Madhubahn Holiday Inn v. Holiday Inn Inc. 2002 (25) PTC 308 (Del) (DB); Info Edge (India) Pvt. Ltd. and Another Vs. Shailesh Gupta and Another, Plastindia Foundation Vs. Ajeet Singh and Another, Indian Shaving Products Ltd. & Anr. v. Gift Pack & Anr., 1998 (18) PTC 698 (DEL) ; Amritdhara Pharmacy Vs. Satyadeo Gupta, Corn Products Refining Co. v. Shangrila Food Products, PTC (Suppl) (1) 13 (SC); Parle Products (P) Ltd. Vs. J.P. and Co., Mysore, The Singer Company Limited and Another Vs. Chetan Machine Tools and Others, Clinique Laboratories LLC and Another Vs. Gufic Limited and Another, Rich Products Corporation and Another Vs. Indo Nippon Food Ltd., and Marico Limited Vs. Agro Tech Foods Limited,

On behalf of the Defendant, the stand taken is that it is registered proprietor of the marks ''POZZOCRETE and POZZOPLAST'' since the year 2000 and 2005 and the Defendant had been using the above said marks honestly, bona fidely and both the sides have adopted their respective trademarks from the generic expression POZZO derived from POZZOLANA and there is no question of any misrepresentation, as both the sides cater to the needs of educated class of customers and the form of products of the parties is different, i.e., the goods of the Plaintiffs is in liquid form whereas, the Defendant''s goods are in powder form and the appearance, get up and layout of the products of both the sides is totally different and there is no chance of any confusion or deception, as specialized Institutions are the consumer of the intermediate products of the parties, used in building and construction area and because of substantial price variation, as Plaintiffs product is much more expensive than of the Defendant and so there is no question of overlapping of market or likelihood of confusion and deception in the market. Defendant claims special equities in its favour, as it is said that user of Defendant''s marks is overwhelming as is indicative from the sales of its products of more than Rs. 64 crores. Apart from the bona fide and concurrent use of the trademarks by the Defendant, it is asserted that there is concealment of material facts by the Plaintiffs, which disentitles the Plaintiffs to obtain interim injunction, as they have not disclosed that they had dealings with the Defendant since the year 2007-2008, which is evidenced by documents at pages 1191 to 1194 to indicate that Plaintiffs had placed an order for POZZOCRETE on the Defendant. Thus, it is said on behalf of the Defendant that Plaintiffs are guilty of not merely delay and acquiescence, but there is serious issue regarding the part of a trademark, i.e., POZZO, which is per se not registered and since both the sides are registered proprietors of the trademarks, and as the challenge to the trademarks in question is pending before Intellectual Property Appellate Board (IPAB), therefore, no case for grant of any interim injunction is made out.

In support of the aforesaid stand, learned senior counsel for the Defendant has placed reliance upon decisions in Micolube India Ltd. v. Maggon Auto Center, 2008 (36) PTC 2131 (Del) ; Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories, BDA Private Limited Vs. Paul P. John and Another, Shri Gopal Engg. and Chemical Works Vs. M/s. POMX Laboratory, Amritdhara Pharmacy Vs. Satyadeo Gupta, Shri Atul Rawal Vs. S.B. Equipments, Astrazeneca UK Ltd. & Anr. v. Orchid Chemicals & Pharmaceuticals Ltd., 2007 (34) PTC 469 (DB) (Del) ; Schering Corporation and Others Vs. Alkem Laboratories Ltd., Rich Products Corporation and Another Vs. Indo Nippon Food Ltd., Rhizome Distilleries P. Ltd. and Others Vs. Pernod Ricard S.A. France and Others, Cadila Healthcare Ltd. Vs. Diat Foods (India), Goenka Institute of Education and Research Vs. Anjani Kumar Goenka and Another, in F.A.O. (OS) No. 222/2009, titled as M/s. Gufic Limited & Anr. v. Clinique Laboratories LLC and Anr., decided on 9.7.2010.

The principles in relation to grant of interim injunction in trademark infringement action are well settled. In Power Control Appliances and Others Vs. Sumeet Machines Pvt. Ltd., the pertinent observe(sic)ions made by the Apex Court, are as under:

It is necessary that an application for interlocutory injunction should be made immediately after the plaintiff becomes aware of the infringement of the mark. Improper and unexplained delay is fatal to an application for interlocutory injunction. The interim injunction will not be granted if the plaintiff has delayed interfering until the defendant has built up a large trade in which he has notoriously used the mark. North British Rubber Co., Ltd. v. Gormully and Jeffery Manufacturing Co., (1894) 12 RPC 17, Army and Navy Cooperative Society, Ltd. v. Army Navy and Civil Service Cooperative Society of South Africa Ltd., (1902) 19 RPC 574; Hayward Bros. Ltd v. Peakall, (1909) 26 RPC 89, Yost Typewriter Co. Ltd v. Typewriter Exchange co., (1902) 19 RPC 422, Royal Warrant Holders'' Assn. v. Slade & Co., Ltd, (1908) 25 RPC 245

Apex Court in Zenit Mataplast P. Ltd. Vs. State of Maharashtra and Others, has dealt with the broad principles governing grant of injunctions, in these words:

Grant of an interim relief in regard to the nature and extent thereof depends upon the facts and circumstances of each case as no straitjacket formula can be laid down. There may be a situation wherein the respondent-defendant may use the suit property in such a manner that the situation becomes irretrievable. In such a fact situation, interim relief should be granted (vide M. Gurudas and Others Vs. Rasaranjan and Others, and Shridevi and Another Vs. Muralidhar and Another, Grant of temporary injunction is governed by three basic principles i.e. prima facie case; balance of convenience; and irreparable injury, which are required to be considered in a proper perspective in the facts and circumstances of a particular case. But it may not be appropriate for any court to hold a mini-trial at the stage of grant of temporary injunction [vide M/S S. M. Dyechem Ltd. Vs. M/S Cadbury (India) Ltd., and Anand Prasad Agarwalla Vs. Tarkeshwar Prasad and Others,

After having heard both the sides and on perusal of the record of this case and the decisions cited, I find that both the sides are registered owners of their respective trademarks and in such a case, Courts are slow in granting interim injunction. On this aspect, what has been said by Division Bench of this Court in a recent decision in Rhizome Distilleries P. Ltd. (supra) in paragraph no: 22 and 23 merits attention. It reads as under:

The legal nodus which still remains to be unraveled is whether the interlocutory : orders postulated in Section 124(5) of the TM Act would include those flowing from the concept of infringement. It is our considered opinion that while staying proceedings in the suit, a Civil Court can pass such orders for a multitude of reasons. Firstly, it is trite that registration of a trademark is always susceptible to challenge on the ground of prior user as is evident from a reading of Section 11 of the TM Act and a volume of precedents which exists on this aspect of the law. In this regard, Section 34 would also be of advantage. Secondly, all other things being largely equal, the party with prior registration of a trademark would logically be entitled to claim exclusive use in the case of any litigation as is obvious from a perusal of Section 11(2)(a) of the TM Act. In saying so, we are not unmindful of Section 28(3) of the TM Act, which the Courts seized with the dispute would keep in mind in arriving at any decision. In other words, unless there are strong reasons in favour of the plaintiff, the Court would decline injunctions predicated on the prayer of infringement. Section 91 of the TM Act provides for an Appeal to the IPAB to any person aggrieved by an order or decision of the Registrar, which in the context of the present conflict, is the grant of registration of a trademark to more than one person. Section 93 of the TM Act contains a bar on jurisdiction of Courts on matters falling within the province of IPAB. The intervening Section 92(2) of the TM Act states that the IPAB shall have, for the purposes of discharging its'' functions under the Act, the same powers as are vested in a Civil Court under the Code of Civil Procedure, 1908 while trying a suit in respect of the following matters, namely, (a) receiving evidence, (b) issuing commissions for examination of witnesses, (c) requisitioning any public record and (d) any other matter which may be prescribed. The power to grant an injunction is conspicuous by its absence.

The similarities between the case before us and Allied Blenders and Distillers P. Ltd. v. Paul P. John 2008 (38) PTC 568 (Del) are indeed remarkable. The dispute related to whisky marketed under the trademarks OFFICERS CHOICE and OFFICIAL CHOICE. The former was granted registration on 19.4.2007 under Class-33 albeit with a disclaimer for the word ''Choice''. We are not a little surprised that no disclaimer was recorded by the Registrar for IMPERIAL, which would have resulted in both parties adding something more to this word so as to create distinction. The Division Bench found delay and acquiescence present since the Defendant therein had built up significant sales in six years previous to the filing of the suit. On the second ground of passing off, the Division Bench abjured delving deep since the IPAB was seized with rectification proceedings, but on a comparison of the labels found prima facie sufficient scope for confusion. In Astrazeneca UK Limited v. Orchid Chemicals and Pharmaceuticals Lid., 2007 (34) PTC 469 another Division Bench was called upon to decide the dispute in the use of the trademarks MEROMER and MERONEM, in respect of which the learned Single judge had vacated the ad interim injunction granted earlier. The Division Bench observed that MERO was generic in character and concluded that the suffix in both the rival trademarks were sufficient to draw a distinction between the two. The Bench drew support from the LlV-52 and LIV-T litigation to uphold the refusal of an interim injunction. We can do no better than reproduce a passage from SBL Limited v. Himalaya Drug Company 1997(17) PTC 540 in which Justice R. C. Lahoti, as his Lordship Chief Justice of India then was, spoke for the Bench in these words "Nobody can claim exclusive right to use any generic word, abbreviation, or acronym which has become public jurisdiction. 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 an organ ailment or ingredient being public jurisdiction or generic cannot be owned by anyone for use as a trademark". The jural message, therefore, is clear and unequivocal. If a party chooses to use a generic, descriptive, laudatory or common word, it must realize that it will not be accorded exclusivity in the use of such words. At the most, it may bring a challenge in the nature of passing off and in such an event the Court would look at the rival labels/pack-agings/trade dresses in order to determine whether a customer possessing a modicum memory and ordinary intelligence may be so confused as to purchase one product believing it to be the other.

In the aforesaid decision, the rival trademarks were IMPERIAL'' BLUE and IMPERIAL GOLD and it was held that one part of the trademark cannot constitute infringement. It is prima facie evident that no monopoly can be claimed in part of the trademark unless the said part of the trademark is separately registered as a trademark. Undisputedly, neither side claims registration or exclusive use of the mark POZZO and there appears to be a serious dispute regarding part of the trademark - POZZO and the descriptiveness of the mark POZZO and the rules of comparison while adjudging with the name of the active ingredient used as a trademark, is a moot question, which would fall for determination at trial.

Whether infringement suit would lie against a registered proprietor and POZZO being descriptive, so comparison of marks is to be limited to their suffixes, are the larger Issues, which would be determined at trial of this case and so the decisions relied upon by the Plaintiffs'' counsel would not be of much assistance at this stage, as I am of the tentative opinion that a prima facie case to injunct the Defendant from using their trademarks is not made out, as it does not appear to be plausible that despite filing an opposition to Defendant''s application for registration of trademark POZZO, Plaintiffs being unsuccessful in discovering Defendant''s use of the impugned trademarks. Thus in these circumstances, it does not appear to be prima facie equitable to continue the interim injunction Order, as it now transpires that the sales figures of the product in question, of both the sides is equally formidable and as neither side holds a registration of the trademark POZZO per se.

The aspect of delay and acquiescence in view of the documents at pages 1191 to 1194 on record also assumes importance and tilts the equity in favour of vacating the interim Order and of substituting it, with a direction to the Defendant to maintain the audited accounts of its sales of the product in question, on quarterly basis and to place it on record, as and when directed.

With aforesaid directions, this application is dismissed and the interim Order stands vacated forthwith. Needless to say that temporary injunction is merely of a provisional nature and does, not conclude the rights of the parties in any way and since a strong case is not made out to exercise the discretion in favour of the Plaintiffs, who needs to substantiate its stand at trial and so, the proper course in such a case is to expedite the trial of this case. Thus, the Plaintiffs are at liberty to seek a time bound trial in this case, after completion of the pleadings, admission/denial of documents, etc., i.e., before commencement of the trial.

This application is disposed of, while refraining to comment upon the merits of this case, lest it may prejudice the trial.

C.S. (AS) No. 117/2011

Plaintiff will be at liberty to file replication within four weeks.

Parties to file their original/additional documents within four weeks and to carry out admission/denial thereon.

List before Joint Registrar on 23rd August 2011, for completion of pleadings and admission/denial of documents.