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Judgment
M.M. Sundresh, J.—The appellants, who are the plaintiffs in the suit, have preferred these Original Side Appeals being aggrieved against the
dismissal of the applications filed for injunction in O.A. Nos. 411 and 412 of 2012 in C.S. No. 325 of 2012. The facts in brief:
1.1. Case of the Appellants:
The appellants have adopted the word ""Tastee Masala"". They have registered their label in the year 2005, which also includes the name ""Tastee
Masala"". The appellants have been manufacturing and marketing spices and masalas. They have conceived and adopted the said trade mark from
the year 1994 onwards. The word ""TASTEE"" was coined in the year 1994 from the generic word ""TASTY"". In the year 2010, the appellants
came to know that the respondent has been using the word ""TASTII"". The words used by the respondent has visual and phonetical similarity with
the trade mark of the appellants. As the respondent is trying to confuse the general public by suing a mark having phonetical, structural and visual
similarities with the mark of the appellants, they filed a suit seeking the relief of permanent injunction on the ground of infringing their trade mark and
passing off as well.
1.2. Case of the Respondent:-
In the counter affidavit, the respondent has stated that the product manufactured by the parties are different. The respondent has been selling
savouries"" and not ""masala"". It is engaged in the said manufacturing activities from the year 1984. It adopted the trade mark ""TASTII"" in the year
2008 bonafidely. It was published in the Trade Mark Journal in the year 2010. The appellant cannot maintain the suit and the applications, as even
according to them the word ""TASTEE"" is a common word from which marks of both the parties were derived. Such a stand was taken by the
appellants when an opposition proceeding was initiated by one Prakash Chand Brijmohan. Even before this Court, the appellants have admitted
that ""TASTEE"" was coined from the common word ""TASTY"". Further more, what has been registered by them is only the label and therefore,
they cannot seek infringement of the name alone. Hence, it was prayed by the respondent that the applications were to be dismissed.
1.3. The learned single Judge, dismissed both the applications filed by the appellants holding that the products are different and what was
registered is only a label and the appellants themselves had accepted that their registered name was adapted from the common word and they took
a similar stand in another proceedings. The learned single judge has made reliance upon the judgment of the Honourable Apex Court in The
Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd., . Challenging the same, the present Original Side Appeals have been filed.
Submissions of the Counsels:
2.1. The learned counsel appearing for the appellants, would submit that the admittedly there is a phonetic similarly between the two names used
by the parties. The respondent has been using number of other products as well. The appellants are prior users. They have also registered their
trade name. There is a disclaimer on the part of the respondent to use the name unsuccessfully by it. The similarities of the names would cause
confusion in the mind of the public. Section 29(2) of the Trade Marks Act will have to be pressed into service in favour of the appellants. In
support of his contention, the learned counsel appearing for the appellants made reliance upon the following judgments and also the judgment of
this Court in O.S.A. No. 71 of 2013, dated 12.04.2013.
(i) The Trade Marks Act, 1999, Form TM 5;
(ii) Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd.,
(iii) Godfrey Phillips India Ltd. Vs. Girnar Food and Beverages Pvt. Ltd.,
(iv) Thalappakattu Biriyani and Fast Food Vs. Thalappakatti Naidu Ananda Vilas Biriyani Hotel
(v) Alaknanda Cement Private Limited Vs. Ultratech Cement Limited, and
(vi) Charan Dass and M/s. Veer Industries (India) v. M/s. Bombay Crockery House (1984 PTC 102).
2.2. Per contra, learned counsel appearing for the respondent, would submit that the learned single Judge has considered the entire materials
available on record. The documents produced by both sides would show that neither of them can claim to use the word ""TASTY"" exclusively. The
product manufactured and marketed by the parties are different and therefore, there cannot be any confusion. In support of his contention, the
learned counsel has made reliance upon the following judgments.
(i) Jhaveri Industries Vs. Majethia Masala, and
(ii) T.T. Krishnamachari and Co., v. Godrej Agrovet Limited (CDJ 2010 MHC 2022)
Conclusion:
2.3. We have gone through the judgment of the learned single Judge as well as the materials produced before us. The learned single Judge has
dealt with the contentions extensively for arriving at the conclusions. We do not find any error warranting interference in these Original Side
Appeals. Admittedly, the product manufactured and marketed by the parties are different. Therefore, we respectfully concur with the findings of
the learned single Judge on the question of infringement and passing off. Further more, what has been registered by the parties is only the ""label"".
The names ""TASTEE"" and ''TASTII"" are part of the labels. We also do not find any similarity between two labels. In this connection, we would
like to reiterate the decision of the Honourable Apex Court in The Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd., ), wherein in
paragraphs 14 it has held as follows:
It is true that where a distinctive label is registered as a whole, such registration cannot possibly give any exclusive statutory right to the
proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole. As said by Lord Esher in
Pinto v. Badman:
The truth is that the label does not consist of each particular part of it, but consists of the combination of them all. Observations to the same effect
will be found also in In re Apollinaris Company''s Trade Marks, In re Smokeless Powder Co., In re Clement and Cie and In re Albert Baker and
Company and finally in the Tudor case referred to above which was decided by Sargant, J. This circumstance, however, does not necessarily
mean that in such a case disclaimer will always be unnecessary. It is significant that one of the facts which give rise to the jurisdiction of the tribunal
to impose disclaimer is that the trade mark contains parts which are not separately registered. It is, therefore, clear that the section itself
contemplates that there may be a disclaimer in respect of parts contained in a trade mark registered as a whole although the registration of the
mark as a whole does not confer any statutory right with respect to that part.
2.4. The learned single Judge has rightly appreciated the law laid down by the Honourable Apex Court and declined the discretionary relief of
injunction pending suit. The word ""TASTEE"" is a common word. It is also descriptive and generic in nature. This position has also been accepted
by the appellants themselves both before us and in some other proceedings. Therefore, they cannot claim an order of injunction having recourse u/s
17 of the Trade Marks Act, 1999. The scope of ambit of Sections 17, 29 and 30 of the Trade Marks Act has also been considered by us in
O.S.A. No. 71 of 2013 dated 12.04.2013, reported in Orchid Chemicals and Pharmaceuticals Ltd. Vs. Wockhardt Limited, wherein it has been
held in the following manner.
5.6. Sections 28 to 30 of the Trade Marks Act, 1999, deal with the effect of registration under Chapter IV of the Act. In so far as Section 28 of
the Act is concerned, it deals with the rights conferred by registration. Section 28 of the Act specifically deals with the ""exclusive"" right under the
Act. Therefore, a registered proprietor of a trade mark can assert an exclusive right to use the trade mark u/s 28 of the Act. However, the said
assertion is subject to two conditions. The first condition is that it is ""subject to other provisions of the Act"". The second condition is that it is
subject to its ""validity"".
5.7. Now coming to Section 29 of the Act, it deals with an infringement of the registered trade mark. Section 29 of the Act specifies that an
infringement would occur when an unregistered Proprietor uses a registered trade mark, which is likely to cause confusion on the part of the public
or which is likely to have an association with the registered trade mark. Therefore, if one sees the object and reasons u/s 29 of the Act, it is clear
that it is meant to be used against the person, who is not entitled to use the said trade mark under ""law"". This is required to constitute an
infringement.
5.8. Now coming to Section 30 of the Act, it limits the effect of registered trade mark. A perusal of Section 30 of the Act would show that Section
29 of the Act is subjected to it. Therefore, Section 30 of the Act is an overriding provision to Section 29 of the Act. However, the parameters
stipulated u/s 30 of the Act will have to be complied with. For example, in a case where a party is using a registered trade mark belonging to
another one, if it is in accordance with honest practices in industrial or commercial matters or is detrimental to the distinctive character of the
different trade mark, no infringement would occur as it limits the effect of registered trade mark. Similarly, when the usage is indicative of a kind,
quality or a quantity, then there will not be any infringement notwithstanding the registration.
5.9. While considering the statutory provisions, the Courts will have to read them together to understand the intending purpose and object.
Therefore, we are of the considered view that Sections 28 to 30 of the Trade Marks Act, 1999, are to be read in connection with each other.
Such a yardstick will have to be adopted in view of the settled interpretative principle of harmonious construction.
Applying the said ratio, we do not find any reason to interfere with the well reasoned order passed by the learned single Judge. Accordingly, these
Original Side Appeals are dismissed. No costs. However, it is made clear that the findings and the observations rendered in these appeals as well
as in the interlocutory applications are to be construed as only for the purpose of deciding them and not in deciding the suit. We also request the
learned single Judge dealing with the final hearing of the Civil Suits to expedite the hearing of the same. Consequently, connected miscellaneous
petitions are also dismissed.