Intouch Leather House India Pvt Ltd vs Ishaan Overseas

G.S. Patel, J.(Oral) - I have heard Mr. Poojari for the Plaintiff and Mr. Memon for the Defendant at some length.

The action is in trade mark infringement and passing off. The Plaintiff has registration of a device mark as also of a word mark, ESBEDA. The Plaintiff claims to have adopted it in 2006. It is used for designer leather products such as handbags, luggage, purses and wallets. The word ESBEDA is written in a special slab serif font in capitals. There is a device which looks like a stylized lower-case "e" with a mirror image, the two being joined at the centre. Representations of the marks are annexed, [Plaint, Exhibits "A1" and "A2", pp. 31-32] as are registration certificates under various classes. [Plaint, Exhibits "C1" to "C7", pp. 36 to 55]

One Maniben Shamji Bheda used to do business in leather products in the name and style of M/s Intouch Leather. In September 2006, her son Satish Shamji Bheda coined the mark, combining, the Plaintiff says, the phonetic of the first letter ''S'' of his first and middle names and a phonetic equivalent of his surname, Bheda, to form ''ESBEDA''. He also conceived, designed and developed the artwork in the logo of the stylized lower-case ''e'' and its mirror image joined in the centre. Another label superimposing the device on the word mark came later, developed with the help of commercial artists. Applications for trade mark registration were made on 12th September 2006 in Classes 18 and 25. On its incorporation, the Plaintiff took over the business of M/s Intouch Leather. On 26th June 2009, the Plaintiff filed application No. 1833696 for registration of the ''e''/mirror image logo in Class 18, claiming user since 2006. The first two registrations in the name of Mrs. Maniben Shamji Bheda were assigned to the Plaintiff on 3rd February 2010. The Plaintiff has made the necessary applications to have itself recorded as the registered proprietor of the earlier two marks. It now claims to be the registered proprietor of all three marks.

The Plaintiff says that it has used the marks continuously and without interruption. There are annexed to the plaint copies of the year-wise turnover.[Plaint, Exhibit "D", pp. 56�57] Mr. Poojari claims that the turnover even for the last year is considerable, in excess of Rs. 38 crores, and that the Plaintiff thus has garnered goodwill and reputation in the Esbeda word and device marks. I must note that while the Chartered Accountant''s certificate does not specifically attest to this turnover being only in respect of this mark and the logo or device. I will, however, proceed on the footing that these figures are indeed of sales of products under this mark. Copies of various booklets, brochures and advertisements are also annexed.[Plaint, Exhibits "E" & "F", pp. 58�99]

The Plaintiff''s complaint is that it found in July 2015 that the Defendant had adopted a mark which the Plaintiff claims is deceptively and confusingly similar to that of the Plaintiff. A representation of this mark is annexed.[Plaint, Exhibit "G", p. 100] The mark in question is EDMODA. The device adopted is of the numeral "3" along with its mirror image, both interlinked and set in a green and gold ring. The Defendant uses this mark on ladies'' bags, travelling bags and school bags. The Plaintiff found that the Defendant had applied under No. 2945258 in Class 18 on 20th April 2015 for registration of this mark, claiming user since that date. The Plaintiff sent cease and desist notices through its lawyers to the Defendant on 28th July 2015, 2nd September 2015, 24th September 2015 and 6th October 2015.[Plaint, Exhibits "H-1" to "H-4", pp. 101�109]

Mr. Poojari would have it that the Defendant''s mark is phonetically, visually and structurally the same as that of the Plaintiffs. It is difficult to accept this. Merely because each has six letters, and each begins with "E" and ends with "A", it is not possible to conclude that the well-heeled and affluent consumers of the Plaintiff''s products who typically form its consumer base would be unable to tell one from the other, or that in the words of a Division Bench of this Court in M/s Hiralal Parbhudas v. M/s Ganesh Trading Co & Ors., AIR 1984 Bombay 218 would be cast into a state of wonderment. Although Mr. Poojari is correct in saying that the offending mark need not be an exact replica, [Ruston & Hornsby Limited v. The Zamindara Engineering Co., (1970) 2 SCR 222] this is not the issue here. Visually and One of these letters was returned undelivered; the others were not, though the acknowledgement cards were not returned either phonetically certainly the two marks are sufficiently distinct. Mr. Memon also points out that the Plaintiff itself uses the mark in a variety of different ways and not in a single consistent manner. It does not confine itself to the registered mark. The Defendant''s mark is in all capitals, but that is just about where all similarity ends. The font and stylization are distinct, as is the device and its placement. I do not believe it is correct to move backward from a presumption of confusion - of which I have no material at all in any case - and then assume, ex hypothesi, that there is a similarity. The test of similarity must be applied first, and one must then proceed to the other tests.

As to passing off, that is a distinct cause of action, one in the tort of deceit. To succeed on that cause of action, the mark complained must at least prima facie be shown to be calculated to deceive even though actual confusion need not be shown. The three probanda that constitute the so-called Classical Trinity set out by Oliver LJ in Reckitt & Colman Products Ltd v. Borden Inc., [1990] 1 All ER 873 are to be applied: (i) goodwill owned by a claimant; (ii) misrepresentation; and (iii) damage to that goodwill. This trifecta places on a plaintiff the burden of proving goodwill in its goods or services, trade dress, brand, mark or even the thing itself. A plaintiff must also show false representation (it matters not that this is unintended) to the public that leads it to believe that the goods or services of the defendant are those of the plaintiff. Fraud is not a necessary element.[Laxmikant V. Patel v. Chetanbhai Shah & Anr., (2002) 3 SCC 65] The test of deception or its likelihood is that of the ordinary consumer, she of average intelligence and imperfect recollection. Here again, the similarity tests used in infringement actions have a role to play: a court will look to the aural, visual and conceptual similarity. A plaintiff need not prove actual or special damage; a reasonably foreseeable probability is sufficient. The Plaintiff''s consumers, whatever their mental acuity, are almost certainly of more than average wealth and education and will undoubtedly be able to tell one product from the other. The three probanda in the classical trinity case all must be satisfied. Absent any one, there can be no question of an injunction in passing off. If there is no similarity or likelihood of confusion, and there is nothing to show any element of deceit on the Defendant''s part, then no injunction in passing off can follow.

I am thus unable to find for the Plaintiff on either cause of action. The Notice of Motion is dismissed. There will be no order as to costs.