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Judgment
Sanjib Banerjee, J.—The suit is on account of alleged passing-off by the Defendant of "Orient" electric lamps as those of the Plaintiff. Though the Plaintiff is the registered proprietor of the word mark "Orient" in respect of electric lamps under Class 11, the Plaintiff has clarified that the suit is not one for infringement.
The Plaintiff says that it manufactures and markets lamps of various kinds and claims that the word mark "Orient" has been exclusively associated with the Plaintiff for more than twenty years. The Plaintiff has set out its turn-over figures from the year 1990-91 and shows that the annual sales of the Plaintiff has jumped from about Rs. 60 lakh in the year 1990-91 to Rs. 6.20 crore in the year 2008-09. The expenses incurred by the Plaintiff for advertising its "Orient" brand of lamps are not equally impressive. In 1990-91 the advertisement expenses were about Rs. 2.52 lakh and in 2008-09 the Plaintiff incurred expenses of about Rs. 1.82 lakh on such count. In between, there were several years when the advertisement expenses were well below Rs. 10,000/-. Though the petition does not clearly state that the sales and advertisement figures relate only to the "Orient" brand of lamps, it has been clarified in the affidavit-in-reply that the Plaintiff sells its lamps only under the mark "Orient" and the sales and advertisement figures in the petition relate to the Plaintiff''s "Orient" range of lamps. Even though such statement is not completely correct, but the papers relied upon by the Plaintiff show substantial sales of the "Orient" brand of lamps.
The Plaintiff has also relied on copies of bills and invoices from or about the year 1987. Several of the copies, bills and invoices appended to the petition do not clearly show the sale of "Orient" lamps or "Orient" products but a number of the others distinctly refer to "Orient" lamps being the goods covered thereby. The Plaintiff''s registration is in respect of a label mark bearing the name "Orient" covering electric bulbs for the sale thereof in the state of West Bengal; the word mark "Orient" relating to, inter-alia, electric lamps; and, another label mark bearing the name "Orient" for electronic goods. The registration of the label mark for sale of electric bulbs in this state was in the year 1987. The word mark was registered in the year 1995 and the other label registration was obtained in the year 2004. There is a further application pending in respect of electric lighting and fittings, including lamps, which was lodged in the year 2006.
The Plaintiff says that its "Orient" range of products has acquired a reputation in the trade and among consumers such that the mark "Orient" in relation to electric lamps is exclusively associated with the Plaintiff. According to the Plaintiff, the Defendant is engaged, inter alia, in the manufacture and marketing of ceiling and other kinds of fans and is the proprietor of the trade mark in the word "Orient" in respect of fans. The Plaintiff says that in or about March, 2008 the Plaintiff came across electric lamps being sold in the market under the mark "Orient" originating from the Defendant. The Plaintiff caused a cease and desist notice dated March 28, 2008 to be issued to the Defendant. The Plaintiff asserted in such letter that the mark "Orient" was registered in its favour and it had used the same since the year 1972. It alleged that it had come to know only sometime prior to the issuance of such letter that the Defendant was marketing CFL and fluorescent tube lights under the word mark "Orient" which was a slavish imitation of the Plaintiff''s well-known mark. The Defendant''s response of April 18, 2008 referred to the Defendant''s manufacturing, marketing and exporting various electrical goods under the mark "Orient." It said that the mark "Orient" bearing registration No. 106065 had been used since 1946 by one Calcutta Electrical Manufacturing Company Ltd which was later assigned to Orient General Industries Pvt. Ltd which changed its name to the present one. The Defendant countered that the Plaintiff had no justification in adopting the word mark "Orient" and alleged that it was the Plaintiff which was bent upon taking advantage of the goodwill and reputation of the Defendant built around the mark "Orient."
The Defendant''s "Orient" word mark is registered in its favour in class 11 in respect of fans, refrigerators, electric bulbs, electric heaters and stoves. There was another registration of the word mark "Orient" in favour of the Plaintiff bearing registration No. 1397541 in classes 10 and 11 which has now been cancelled and directions have been given by the registry for re-advertisement of the goods covered thereby. The principal point that the Defendant canvasses is that since lamps of all descriptions would be covered by class 11 of the list of classifications and since the Plaintiff''s word mark "Orient" is registered in respect of, inter alia, electric bulbs since 1994, its foray into the manufacture of CFL and other lamps was a logical extension of its business continued for decades. The Defendant says that the Defendant''s "Orient" brand is one of the most acclaimed fans and it is one of the market-leaders in such segment. The Defendant asserts that the mark "Orient" is associated with the Defendant and has developed a secondary meaning since it is used in respect of a wide range of products from cement to paper to electrical fans. The Defendant insists that in view of its overwhelming presence in the electrical goods market, its "Orient" brand of electric lamps is recognised to come from the Defendant''s stable. The Defendant informs that it has taken steps for rectification of the register relating to the Plaintiff''s "Orient" word mark and suggests that a bit player like the Plaintiff should not be permitted to dislodge the overbearing presence of the Plaintiff in the electric lamp segment.
The other, and more emphatic, aspect urged by the Defendant is that the admitted presence of the Defendant in the related market of electrical fans and the exclusive use of the word mark "Orient" in connection therewith would permit the Defendant to claim exclusivity over the use of such mark in the cognate segment of electric lamps and, rather than the Plaintiff being entitled to any protection, it is Defendant''s mark that needs to be accorded exclusivity. The underlying suggestion of the Defendant is that since it had an admitted prior registration in class 11 covering electric bulbs, it was entitled to the exclusive use of the mark "Orient" in relation to the technological advancement on electric bulbs reflected in CFL and fluorescent tube lights.
The Defendant, with the help of judicial precedents, seeks to compare fans and lamps with toothbrush and toothpaste, razors and toothbrushes and other allied groups of goods. The Defendant has carried judgments of English Courts and of the Bombay and Delhi High Courts in furtherance of its submission on such score.
The primary basis of the Plaintiff''s claim rests on a judgment Vishnudas Trading as Vishnudas Kishandas Vs. Vazir Sultan Tobacco Co. Ltd., Hyderabad and another, The Respondent before the Supreme Court, a well-known cigarette manufacturing company, was in the market with its "Charminar" brand of cigarette for a considerable period. During the decades leading up to the institution of the suit, the Respondent did not manufacture anything other than cigarettes. The Appellant before the Supreme Court started manufacturing and marketing "quiwam" and "zarda" since 1973 and used the mark "Charminar" on the bottles of the products. The Appellant applied for registration of the "Charminar" mark in respect of its products, whereupon the trade marks registry ruled that since the Respondent''s registration was in respect of manufactured tobacco it covered the entire gamut of products answering to that description. The Appellant applied for rectification of the register primarily on the ground of the Respondent''s non-user thereof in respect of "quiwam" and "zarda." The applications for rectification succeeded in that the Respondent''s mark was restricted to cigarettes. The resultant appeal was allowed by a single judge of the Madras High Court on the reasoning that a sub-classification of the entry of manufactured tobacco could not be made. The intra-court appeal was rejected. The Supreme Court held that the classes mentioned in the fourth schedule to the Rules framed under the Trade and Merchandise Marks Act, 1958 may consist of goods or articles which could be separately identified and all goods bunched in a class were not goods of the same description as commonly understood in the trade. The essence of the view was that if a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bona fide intention to trade in or manufacture other goods or articles which fall under the same broad head, such trader or manufacturer cannot be permitted to enjoy a monopoly in respect of all goods or articles falling within the sweep of the wider classification.
The Plaintiff has placed several provisions from the Trade Marks Act, 1999. The Plaintiff has referred to Section 7 which provides for classification of goods and services. Sections 9 and 11 of the Act have been placed as to the absolute and relative grounds for refusal of registration. The Plaintiff has read Section 29 of the Act to demonstrate what would amount to infringement of a registered trade mark. The reference to infringement may be inapposite in the context of the Plaintiff having declared in its affidavit-in-reply that the suit is for passing-off and not for infringement. The Plaintiff has, however, attempted to demonstrate, with the assistance of the judgmen Century Traders Vs. Roshan Lal Duggar Co., that registration of a mark is not the be-all or end-all of a matter since the common law rights in respect of a mark are left unaffected by the statute and the registration of a mark by itself does not create the trade mark. The Plaintiff has placed paragraph 12 of the report where the Division Bench of the Delhi High Court quoted from the well-known Bombay judgment Consolidated Foods Corporation Vs. Brandon and Company Private Ltd., The substance of the Plaintiff''s contention is that a trade mark exists independently of the registration which merely affords further protection under the statute; and that priority in adoption of a trade mark is superior to priority in registration.
On a combined application of the dictum in Vazir Sultan Tobacco and Century Traders, the Plaintiff urges that its prior use of the word mark "Orient" in relation to electric lamps should be regarded as the priority of its mark in respect of such goods which should outweigh the priority of the Defendant''s registration of the word mark "Orient" in respect of the more general class 11 of the list of classifications. The Plaintiff says, again on the strength of Consolidated Foods and Century Traders, that the Defendant''s argument discrediting the Plaintiff''s proprietorship of the "Orient" word mark on the ground of its alleged sporadic use is of no consequence unless it was demonstrated that the Plaintiff had abandoned its use of the mark in relation to the specific goods. The Plaintiff says that the evidence that it has brought to Court would not support any argument that its use of the mark was casual or experimental that did not amount to an intention to adopt the mark as a trade mark for a particular product.
The Plaintiff has referred to a judgment Sona Spices Pvt. Ltd v. Soongachi Tea Industries Pvt. Ltd. 34 PTC 91 In that case, the Plaintiff sought to restrain the Defendant''s use of the "Sona" word mark and logo. There was also a cross-suit by the Defendant. The Plaintiff claimed that it had used the mark "Sona" in relation to spices and subsequently extended the use thereof to tea. The evidence at the interlocutory stage revealed that the Defendant''s use of the mark in relation to tea preceded the Plaintiff''s use thereof in respect of the same goods though the Plaintiff had used the mark in connection with its spices long before the Defendant''s adoption thereof in respect of tea. The Court held that though the Plaintiff could have used the mark in respect of tea pursuant to its registration in the same class, the fact that it had not asserted such right and the Defendant had adopted the mark in respect of tea prior to the Plaintiff''s use thereof in such regard disentitled the Plaintiff from obtaining any interim relief. The Plaintiff in the present case suggests that the registration of a mark in a particular class may permit the registered owner thereof to laterally extend the use of the mark to goods in the same class other than those originally manufactured or marketed by the owner, but if the space was occupied by another''s use of the mark in respect of separate products within the same class, the registered owner cannot dislodge the other from the occupied field.
It is in such connection that the Plaintiff relies on a judgment Provident Financial PLC v. Halifax Building Society. 1994 FSR 81 A company by the name of The Halifax Insurance Co. Ltd was incorporated in 1966 and grew to be a leading motor insurance underwriter that marketed its services under its "Halifax" name. The Defendant was a building society set up several decades earlier and was known as The Halifax Building Society. The Defendant''s business concerned building and house contents insurance. Both parties applied to register, inter alia, the "Halifax" mark. The Plaintiff''s mark was registered and the Defendant''s applications were advertised. In the action for infringement and passing-off, it was held at the interlocutory stage that though the activities of the two parties did not overlap at one stage, the Defendant''s venture into the field of the general motor insurance would confuse the public irrespective of whether the Defendant had intended to do so.
The Plaintiff has referred to a judgment rendered at the trial of a suit and a counter-claim in respect of medicinal compounds Sterwin A.G. v. Brocades (Great Britain) Ltd. 1979 RPC 481 The matter involved what is known as line extension which implies the introduction by an established manufacturer of another form of the same product. The two marks involved were "Danol" of the Plaintiff and "Denol" of the Defendant. The Defendant had marketed a liquid product for the treatment of gastric and duodenal ulcers long prior to the Plaintiff''s use of a pharmaceutical product which was an inhibitor to suppress the menstrual cycle. The Plaintiff brought the action quia time complaining of the possible introduction of a solid form of "Denol" by the Defendant which was likely to cause confusion and deception. Though the considerations that weighed with Court in that case may be somewhat irrelevant for the present purpose, the Plaintiff cites the decision for the proposition that the marketing of even the same product in a different form but under the same mark may be impermissible in some cases.
The Defendant has relied heavily on a judgment Harish Motichand Sariya v. Ajanta India Ltd. (2004) 28 PTC 42 where an interlocutory injunction in a passing-off action was granted in favour of the owner of the "Ajanta" mark in respect of toothbrushes against the use of the same mark by the Defendant in respect of toothpaste. There is substantial discussion in the judgment as to cognate or related goods. Though the Plaintiff here has criticised the use of the word cognate in this branch of law, such word has been widely used in a number of judgments to describe allied or related goods. The view in Ajanta was based on the reasoning reflected in a judgment AIR 1940 86 (Privy Council) where it was held that the rights relating to a mark "would ordinarily extend to ... goods so similar in kind to the goods actually put upon the market by the trader in connexion with the trade mark that it is an almost inevitable inference that such goods would be manufactured or marketed by the trader." The connection between the toothbrush and toothpaste is much more pronounced than between a fan and an electric lamp. The Ajanta judgment has to be read in such context and on the anvil of the strict test formulated by the Privy Council on which the reasoning in Ajanta rests.
It is the same light in which the judgment Kamal Trading Co., Bombay v. Gillette U.K. Ltd, Middle Sex, England 1988 PTC 1, that has next been cited by the Defendant, has to be seen. The Plaintiff in that case was the owner of the "7 O''clock" mark for blades, razors and shaving brushes. The Plaintiff complained of the Defendant''s use of the same mark in connection with toothbrushes. Again, a safety razor or safety blade that is kept on the same bathroom shelf alongside a toothbrush may lead to confusion or deception if the marks were the same in respect of both; but the analogy cannot be extended to a fan and an electric lamp.
The Defendant says that if the class of customers and the trading channels of the two goods are the same, the use of a mark in connection with one would amount to the use thereof in respect of the other. The Defendant''s argument is that if the Defendant''s use of its "Orient" word mark in relation to fans accorded it a protection in an allied field of products; that the Plaintiff here subsequently encroached on the allied field would not give it a right to curb the Defendant''s use of the mark in such allied field. The Defendant asserts that articles of common use that reach the customer through the same trading channels and the proximity of the use or efficacy of the goods would be the basis for assessing if one was allied to the other or whether the two sets of goods are cognate.
The Defendant has relied on a judgment reported at 1999 RPC 297 (Balmoral Trade Mark) where an appeal from the order of refusal of the Registrar to register the mark in respect of wines on the ground of its earlier registration for whisky and bar services was rejected on the ground that the distinctiveness, resemblance and proximity of trading were matters of fact and degree that had to be taken into account in assessing the likelihood of confusion. The Defendant has also placed a judgment Bajaj Electricals Limited Vs. Metals and Allied Products and Another, where the close proximity of the products was the basis for an interlocutory injunction. In similar circumstances, in the judgment Creative Handicrafts v. Sedana Electric Co. (1988) 2 Arb LR 297 the Court held that televisions manufactured by the Plaintiff and electrical appliances sold by the Defendant could be regarded as allied or cognate goods.
In the judgment Kumar Electric Works v. Anuj Electronics 1990 PTC 26 cited by the Defendant, the use by the Plaintiff of the mark "Olympus" for its electronic and electrical goods was found to warrant an injunction against the Defendant''s use thereof in connection with television sets as the two sets of goods were found to be "in the same trading channel and were cognate goods." Similarly, in the judgment Weston Electronics Limited Vs. Rajesh and Company, the Plaintiff''s use of the word mark "Weston" in connection with electronic and electrical goods entitled the Plaintiff to an interlocutory injunction against the Defendant''s use of the same mark in connection with electronic and electrical goods. This judgment was based on a previous judgment of the same Court Jugmug Jugmug Electric and Radio Co. Vs. Telerad Private Ltd., where the word mark "Telerad" in respect of radio receiving sets and components thereof was accorded protection against an identical word mark used in connection with domestic electrical appliances. Though in several of the cases cited on behalf of the Defendant disparate goods were found to be cognate or related goods, it has to be noticed that such decisions were rendered at least 15 or 20 years back when the Indian economy had not developed and the variety of products available in the market was far more limited than at present. With the development of the market and the burgeoning of retail outlets, it can no longer be said that any and every mark registered or otherwise owned in respect of the wider class of electrical or electronic goods would invariably lead to the earlier user being protected even in respect of other goods not manufactured by the earlier user by dint of the goods manufactured by the two warring parties failing within the larger sweep of electrical and electronic goods. The technological advancement, particularly in the field of electrical and electronic goods, and the wider choice available in the market have created a more discerning consumer base. As much as the proprietor of a mark is deserving of protection, it cannot be made a ticket to monopoly.
The Defendant has next carried a judgment reported at 1959 RPC 29 (Brown Shoe Company Inc). The principle that the Defendant propounds is captured in the following passage at page 33 of the report:
The first ground may, I think, be put thus. It is incumbent on an applicant for registration of a trade mark which has not yet been used in trade to assert that it is proposed to be used by him and that he claims to be the proprietor thereof. If there is an owner of a similar trade mark who has made an earlier assertion of proprietorship and who has not abandoned that claim, then the claim of the applicant is not well founded and the application should not be allowed to go forward.
The judgment was rendered on an appeal against an order passed by the trade marks registry. The Appellant sold ladies'' shoes under the "Naturalizer" mark. The Appellant applied in 1952 for the registration of the mark which was met by an objection on behalf of the Registrar. The applicant did not immediately pursue the application. The Respondent obtained registration of the mark "Naturlizet" in respect of boots, bootees, shoes, slippers and sandals in 1953. The Appellant revived its earlier application in 1955 and discovered that the Respondent had obtained registration of its mark. In the Appellant''s challenge to the Respondent''s mark that followed, the registry took the view that the evidence presented before it in connection with the Appellant''s application for rectification of the register by removing the Respondent''s mark therefrom did not establish that the Appellant''s mark had acquired the necessary degree of reputation in the country. It was in such circumstances, and particularly the Court''s reliance on the principle of res ipsa loquitur to hold that the Respondent may have been inspired by the Plaintiff''s mark to adopt it, that the test as set out above was laid down. The dictum cannot be extended to cover the present case for several reasons. First, the nature of the goods of the rival parties in that case was similar. Secondly, the law of this country as laid down in Vazir Sultan Tobacco has recognised that a registration in respect of a class of goods would not amount to the proprietor thereof being entitled to ward off use of the same mark by others manufacturing different products within the same class. Thirdly, the decision has been doubted in a judgment Indo-Pharma Pharmaceutical Works Pvt. Ltd v. Farbenfabriken Bayer Ag. 1975 RPC 545 cited by the Plaintiff, where a Division Bench of the Bombay High Court relied on a passage from Kerly''s Law of Trade Marks and Trade Names. Further, that two sets of goods fall within the same classification will not, by itself, lead to the inevitable inference that they are related or are allied goods for one mark to dislodge the other under the strict test evident from the Privy Council dictum in Thomas Bear. Finally, the considerations that are relevant in an appeal arising out of an order refusing to rectify the register are irrelevant in the present context; even though it is appreciated that the Defendant has cited the authority to justify the expansion of its business from fans to lamps.
The Defendant has next presented two decisions to cover either aspect of the same point. The judgment Ayushakti Ayurved Pvt. Ltd v. Hindustan Lever Ltd (2004) 28 PTC 59 has been relied upon for the proposition that if a person had conducted due search of registered marks before adopting one and hit upon a mark which was similar to a mark already registered, it would be for such party to rebut a presumption that it had copied the registered mark. The judgment Bal Pharma Ltd v. Centaur Laboratories Pvt. Ltd. (2002) 24 PTC 226 views the matter from the other perspective. If a party had adopted a mark without taking due care and caution to conduct searches as to whether there was a similar registered mark in respect of comparable goods, such party would not be rewarded by being permitted to continue with the similar mark. Again, the applicability of the principles enunciated in such decisions to the facts of the present case appears to be doubtful. The facts that the Plaintiff has come to Court with are that its use of the mark in connection with the goods was prior in point of time than the Defendant''s and that the Plaintiff cautioned the Defendant shortly after the Defendant launched its products under the identical mark in respect of the same product.
In today''s competitive market where the degree of specialisation of products is much more pronounced than it was in this country even in the 1990s, an assessment as to whether the two sets of goods of the rival parties trading under an identical mark are allied or related requires a closer scrutiny than applied by Courts earlier. Loosely speaking, electric fans and electric lamps may be used in the same breath. But that would not imply that the use of a mark in relation to either would cast any umbra of proprietorship in respect of the other. The cases brought by the Defendant would have been more apposite if, say, the rival goods were ceiling fans and exhaust fans. One may also venture to add that the test applied when the range of products available in the market was limited would not be the same today. The Defendant has relied on photographs showing fans and lamps being sold side by side from some shops. It would be risky to accept the photographs as conclusive of the Defendant''s argument that the trading channels are identical. In the context of the present proceedings and the claim that falls for consideration, it has to be completely kept out of mind that a casual purchaser of an electric lamp may be tempted to opt for the "Orient" brand on such customer''s association of the brand with the Defendant''s widely-sold fans. This is not the Defendant''s action at the initial stage of the Plaintiff''s adoption of the "Orient" mark to assert that the reputation of the Defendant''s "Orient" fans may prompt a casual purchaser of an electric lamp to opt for such brand ahead of the others.
The test today is as to whether in view of the Plaintiff''s use of the mark in relation to electric lamps for a considerable period, the Plaintiff is entitled to stop the Defendant in its tracks since the Defendant''s entry into the electric lamps market is of recent vintage. It matters little that the suit is one for passing-off and not for infringement since the marks are identical and the Plaintiff''s use thereof some twenty years or so prior to the Defendant''s in respect of electric lamps is, prima facie, established on affidavit evidence. Though the Defendant has been able to discredit an assertion found in the Plaintiff''s affidavit-in-reply that it sold lamps only under the "Orient" mark and none other, that would still not detract from the Plaintiff''s right as the prior user of such mark in relation to electric lamps to keep the much larger commercial entity at bay and assert the Plaintiff''s exclusivity over the mark "Orient" in relation to electric lamps.
The Defendant has offered to continue the arrangement directed under the ad-interim order for monthly accounts to be tendered in sealed cover to Court. But on a prima facie assessment of the material in support of the rival cases brought to Court, the Plaintiff appears to be entitled to the interlocutory injunction that it seeks. The Defendant is restrained from using the mark "Orient" or any colourable imitation thereof in respect of electric lamps pending disposal of the suit. GA No. 2558 of 2009 is allowed accordingly without any order as to costs.
Urgent certified photocopies of this judgment, if applied for, be supplied to the parties subject to compliance with all requisite formalities.
Later:
The defendant seeks a stay of the operation of the order which is refused.