Hindustan Lever Ltd. vs Lux Flavours and Another

R. Jayasimha Babu, J.—These are appeals filed by the plaintiff against the common order passed by the learned Single Judge on the original

side of this Court in O.A. Nos. 1004 and 1005 of 1992 and application Nos. 497 and 498 of 1993 in C.S. No. 1664 of 1992. The suit by the

plaintiff was to restrain the defendants from infringing his trade mark ''Lux'' which is registered in the name of the plaintiff in class 3 for soaps,

perfumes, essential oils and cosmetics. The plaintiff had also sought for an injunction against the defendants for passing off the flavours and

perfumes manufactured by it as those manufactured by the plaintiff by using the mark ''Lux'' in relation to those products. The plaintiff''s mark was

registered in the year 1943.

The case of the defendants is that it has commenced manufacture in 1981 that it had been regularly advertising its wares in the yellow pages ever

since it commenced manufacture, that the product manufactured by it was flavours for uses in manufacture of liquors, ice creams and

pharmaceuticals and that though it had a proposal to manufacture perfumery compounds and soap compounds, it had not undertaken the

manufacture of these items. Its customers were bulk customers and they were manufacturers of other products like liquor aerated waters, ice

creams etc. The defendants denied that they had infringed the mark of the plaintiff or that they were deceiving the public by using the mark

registered in the name of the plaintiff in relation to any of the goods with respect to which the mark was registered.

The plaintiff produced inter-alia the price list issued by the plaintiff in which the products were classified under several heads as lux, liquor

flavours, lux perfumery compounds and lux soap compounds. The defendants produced the price list dated 5-9-1991. Wherein the products

manufactured by the defendants were listed out and the price list carried the statement that the defendant is a specialist in sophisticated liquor

flavours of the varieties mentioned in the list. While flavours listed out in this price list include Almond, Banana, Biscuits, Butter, Cardamom,

Cherry, Coffee, Coconut, Custard, Lemon, Chocolate, Grape, Ginger, Honey, Kesar, Lime and Mango among the other fruits. These are also

flavours listed with the names Orange, Pineapple, Peppermint, Spearmint and Vanilla. It is the case of the defendants, as already noticed, that the

flavours manufactured by it are for use by the manufacturers of other products, such as liquors, ice creams and aerated waters, and therefore, there

has been no infringement of the plaintiff''s mark, as the plaintiff is not engaged in the business of manufacturing or marketing of flavours of any kind.

The suit was filed in the year 1992, i.e., 11 years after the defendants commenced manufacture of flavours. The defendants, therefore, had also

raised the ground that there was undue delay and there is acquiescence on the part of the plaintiff.

The learned trial Judge initially granted an ex parte injunction, but that injunction was subsequently vacated on applications filed by the

defendants. While dismissing the applications for injunction the learned Judge held that the plaintiff had failed to make out any case on merits that

there was no deception on the part of the defendants in using the mark ''LUX'' in relation goods manufactured and marketed by it that the

customers of the defendants were bulk customers who were not likely to be misled by the use of the word ''LUX'' as it was well known to them,

that the goods viz., flavours manufacturers by the defendants, do not have any association with the plaintiff. It was also held that there was no

likelihood of any loss of business for the plaintiff by reason of the manufacture and sale of flavours by the defendants. It was also held that the

goods manufactured by the plaintiff fall in a class different from the class to which the goods manufactured by the defendants belong the court

found that the defendants goods were likely to fall within classes 5, 30 and 33 while the goods manufactured by the plaintiff were within the items

specified in class 3. The learned Judge concluded by stating that ""there is no question of infringement of the plaintiff''s trade mark and passing off as

the products manufactured and marketed by the defendants are entirely different from that of the plaintiff.

When the matter was argued before the trial Judge it had been brought to the notice of the court that the defendants were engaged only in the

manufacture of flavored essence and were not at that point of time engaged in the manufacture of essence relating to perfumes. It has been noted in

paragraph 8 of the order of the learned Judge that ""it is also stated by the defendant that there was a proposal to manufacture essences relating to

perfumes but subsequently the idea of manufacturing the said ""item was dropped and the defendants have removed the said item from the new

price list"".

After the injunction was vacated by the learned trial Judge the defendants have continued to manufacture and market the flavours and there has

been to further interim order, which prevents them from doing so.

In these appeals, the learned senior counsel for the plaintiff appellant contended that the learned trial Judge has erred in holding that the products

manufactured by the defendants do not fall within class 3 and that they fall within the classes 5, 30 and 33. Counsel submitted that having regard to

the statutory language in Section 8 of Trade and Merchandise Act, 1958 goods in respect of which marks can be registered, can fall only under

one of the other classes specified in the fourth schedule and that the same goods cannot be brought under the registered under more than one class.

Counsel further submitted that the defendants had failed to offer any explanation for adopting the name ''LUX'' and that conduct of the defendants

would be sufficient to warrant the inference that the name had been adopted with a dishonest motive. Counsel further submitted that the use of the

mark by the defendants even through it is in relation to goods which were not presently manufactured or marketed by the plaintiff would well cause

deception as the buyer may associate the plaintiff with the manufacture of those goods in view of the plaintiff well known brand name having been

used in relation to those other goods. The further submission for the appellant was that once it is established that the plaintiff is the registered owner

of a trade mark in relation to the goods specified in any given class it is not necessary for the plaintiff to further show that he was engaged in the

actual manufacturer and sale of those goods and that so long as the registration continued in this name, no other person could use that name in

relation to those goods.

Learned counsel for the defendants submitted that the learned trial Judge had considered all aspects of the matter and had rightly rejected the

applications for injunction. Counsel stressed the fact that the appellant had come to court several years after the defendants had commenced

manufacture the fact that the defendants goods are not identical with the goods manufactured by the plaintiff or even registered in the name of the

plaintiff under the trade and merchandise marks act the fact that the customers for the defendants goods are different from those who used the

plaintiff''s goods that the defendants customers are themselves manufacturers, who are well informers and who cannot be equated to the average

consumer, who may be ill informed or who may not be discriminating with reference to the purchases that he makes and therefore, they are not

people, who will be easily misled, that there is no evidence what so ever to show that any of the customers of the defendants was misled into

thinking that the products made by the defendants were in any way connected with the plaintiff, that the plaintiff had only relied upon a price list,

which was not current, that perfumery goods and the soap compounds referred to in the old price list were not goods that were being currently

manufactured by the defendants and that the defendants, in fact, had on intention what ever of manufacturing essence of perfumes or soap

compounds. Counsel further submitted that what is manufactured by the defendants is flavours and flavours are not items of perfumery, that

flavours are substances, which are used with or in other products, which are internally consumed primarily by human beings and it is the fact that a

market exists for food and beverages that provides them the market for flavours and there is no market for flavours merely because of the small or

the odour or fragrance which they produce and, therefore, flavours cannot be regarded as perfumes or perfumery, which is referred to in class 3

and in respect of which the plaintiff has registered has mark. Counsel submitted that in any event is it a matter for further examination at the trial and

no prima-facie case can be said or have been made out and at this stage and it cannot be concluded that flavours are to be regarded as perfumes

of perfumery. So far as perfumery compounds and soap compounds are concerned, counsel submitted that the defendants are ready to furnish and

undertaking that it will not engage itself in the manufacture of soap compounds or essences relating to perfumes and therefore no injunction is

required to be issued even in relation to those items.

As to whether a particular product falls under a given classification is a matter for decision primarily by the Registrar, when he is asked to

examine the application for registration of a mark. The Registrar has not so far been called upon to examine the question as to whether the flavours

manufactured by the defendants are registrable under classes 5, 50, 33 or 3 or any other class. It is neither admissible nor possible at this stage to

decide in the absence of any evidence the class in which flavour is included in this case, the burden is clearly on the plaintiff to show that the

product manufactured by the defendants is one with respect to which the plaintiff has registered its mark. Admittedly the plaintiff''s mark is not

registered in relation to flavours. The registration is with reference to perfumery. Flavours are not identical with perfumes. Even according to the

plaintiff, the words flavours perfume, essence and scent, each have a distinct meaning which meanings as found in the New Oxford Illustrate

Dictionary have been set out by the plaintiff in its memorandum of appeal. Perfume is defined according to the dictionary, relied upon by the

plaintiff to mean ""Odorous fumes of burning substance; sweet smell, fluid containing essence of flower etc., scent"". Scent is defined as ""distinctive

odour especially of agreeable kind; liquid perfume made by distillation from flowers etc.

The definition of flavour in the Oxford Dictionary is ''Aroma, Mingled sensation of smell and taste something used for flavouring food or drink''.

Flavour thus is not the same as perfume or scent. It is something more and indeed much more. It is smell and taste and it is only when used in food

or drink that it has its attraction. The aroma, and taste produced by the item of food or drink on account of the flavour found or used therein is

what created a market for the manufacture of flavours. Perfumes, on the other hand, are not substances, which are required to be used with food

or drink. In ordinary parlance, perfumes are substances which are valued for the smell alone and it is the attractive distinctive smell that brings

added value to the perfumery that is marketed. Flavours, therefore, cannot prima-facie be regarded as perfumery as that term is used in class 3.

The plaintiff therefore, cannot be said to have established a prima-facie case that by manufacturing flavours, the defendants have infringed the trade

mark held by the plaintiff under class 3 in relation to perfumes. Counsel for the appellant is right in submitting that a it is not necessary for the holder

of the mark to manufacture goods bearing the mark or exploiting the mark and so long as the registration continues in his name, no other person

has a right to use the mark in relation to those goods. That however, does not help the plaintiff in this case, as the plaintiff has failed to establish that

the flavours manufactured by the defendants are substance with reference to which the plaintiff is the registered owner of the trade mark.

It is not necessary for us to embark an investigation as to under which other class flavours can be brought. The burden being on the plaintiff

and that burden not having been discharged, the plaintiff is disentitled to the injunction insofar as the flavours manufactured by the defendants are

concerned.

In view of this findings, it is not necessary to consider any of the other submissions made for the plaintiff. We may however briefly advert to

some of them if the defendants are found to have infringed the trade mark and the delay is satisfactorily explained the delay would certainly not

disentitle the plaintiff from obtaining the relief of injunction, assuming of course that the plaintiff has established the infringement. The defendants will

be able to avoid such an injunction only if they are able to show that there has been acquiescence on part of the plaintiff those questions however

do not arise for our consideration as we have found that at the threshold that a prima facie case had not been made out for granting an injunction in

relation to flavours.

When a matter is not free from doubt, the court would be circumspect in granting an injunction in matters relating to trade marks. It is only

when a clear case is made out that the mark used by the defendants is identical with or deceptively similar to the mark registered in the name of the

plaintiff and that the defendants have been using the mark in relation to goods in respect of which the mark has been registered in favour of the

plaintiff injunction is to be granted. Where there is reasonable doubt as to whether the goods manufactured by the defendants are identical with the

classes of goods in respect of which the plaintiff has registered mark the court should be slow in granting injunction at the interlocutory stage.

Learned counsel for the plaintiff/appellant submitted that the defendants having in the past tried to use the mark in relation to perfumery

compounds and soap compounds, an injunction should be granted at least in relation to those goods. We find considerable substance in that

submission. The plaintiff had produced the price list issued by the defendants where in defendants have referred to ""Lux perfumery compounds

and ""Lux Soap compounds"". These items do prima-facie all within the category or class of perfumes and soaps in respect of which plaintiff is the

registered owner of the mark Lux and it is undeniable that the mark used with reference to this items is Lux which is a mark registered in the name

of the plaintiff since 1943. The plaintiff has established the prima-facie case in so far as perfumery compounds and soap compounds are

concerned. Counsel for the defendants submitted that his clients are ready to give an undertaking that they would not engage themselves in the

manufacture of those two products. Having regard to the conduct of the defendants in having issued a price list listing out those products with the

prefix ''Lux'', we consider it in the circumstances just and equitable to grant an injunction restraining the defendants from using the name ''Lux'' in

relation to the essence of perfumes and in relation to soap compounds.

The appeals are allowed in part to the extend aforementioned parties to bear their respective costs. In view of the disposal of the appeals, no

order is necessary in C.M.Ps.