K.V. Associates Pvt. Ltd. and Others vs Nikit Chem

Rajiv Narain Raina, J.—This petition arises out of a suit for trademark infringement M/s. Nikit Chem, Ludhiana manufactures multipurpose adhesives and holds a registered trademark for its products known in the market as "Nikit''s American Bond". The trademark registration authority has registered this trademark on 1st July, 2007. It is claimed that the trademark enjoys great reputation in the market and its product is very popular. M/s. K.V. Associates Private Limited, a competitor has emerged in Ludhiana which is the defendant in the original suit brought on 30th September, 2013 at Ludhiana. It also makes multipurpose adhesives. It has started selling its products under the name "Radon Aferican Bond". This company is not a trademark holder of its brand name but has applied for trademark registration before the competent authority. Along with the suit, an application was filed under Order 39 Rule 1 & 2 of the C.P.C. seeking interim relief during the pendency of the suit for restraining the defendants from selling their products in the market under the aforesaid name which is deceptively similar to their registered trademark and of unlawfully passing off the products to the detriment of the plaintiff. Notice of the suit was given to the defendants. They appeared and have contested the case. They prayed for denial of a temporary injunction and rejection of the application and the suit. They revealed in their reply that they had applied for a trademark through an application dated 18th September, 2013 in the name and style "Radon Aferican Bond". They claimed that there is a world of a difference between the two trade names in their designs and the words used on the wrappers in which the two products are sold. It is pleaded that the wrappers of the plaintiff are of Brown yellow mixed colour with different photographs whereas the colour of the wrappers of the plaintiff is yellow.

The learned Additional District Judge, Ludhiana being the trial court under the trade mark law, vide his order dated 12th February, 2014 has granted temporary injunction in favour of the plaintiff, the respondents in this petition. The reason for denial when paraphrased is twofold; one, that the plaintiffs possessed a registration certificate dated 12th March, 2010 issued under the Trademarks Act, 1999 protecting its product named "Nikit''s American Bond". The other reason given is that the word "Aferican" resembles the word "American" and a customer visiting the market might think the products are from the same source. The trial Judge opines that Nikit and Radon are distinguishable but this distinction can be detected by ''applying mind''. What the learned Trial Court means is that two products look alike. Though he does not use the words passing off anywhere in the judgment but what he really means is of passing off an action.

The law on trademarks is settled that even an unregistered owner of an trademark or brand name can bring forth a suit on principles of passing off and the defendant can be injuncted from selling a product which can pass of as a product of the plaintiff. In the present case, the plaintiff is the trademark holder. The defendant is a trademark seeker. At several places in the impugned order dated 12th February, 2014, the word "African" has been used. African is name of a country and is a proper noun. However, the product of the petitioner is cleverly put spelt "Aferican" bond. There is a wide difference between the words "Aferican" and "African". The arrangement of letters a-f-e-r-i-c-a-n is a trick and together do not constitute a word with meaning and if it were a word it is not found in the English dictionary or in any spoken language.

The trial Judge has granted temporary injunction in favour of the plaintiff and has restrained the defendant from using the trademark in selling the product till the disposal of the suit. Against this order, the present petition has been filed by the defendant.

On 11th March, 2013, when this matter came up before me, for the first time, it was argued by the learned counsel on a showing of the impugned order that no one can have a trademark of a proper noun or a name of a country. As I read the impugned order, I found the words "African" written wherever its context demanded and was persuaded to think that "African" was miss spelt in the petition. I had asked the petitioner''s counsel to show me if they were packets, pouches and wrappers of the two products from where I could find dissimilarity sufficient to interfere in the matter since Xerox copies of the product wrappers were not produced on record. The wrappers of the defendant-petitioner were not produced on the record of this petition and only the material relating to the plaintiff was produced as Annexure A-2 being public record of grant of trademark. Counsel promised to show them in due course. In these circumstances, I issued of notice of motion to the respondents returnable on 1st April, 2014.

On 1st April, 2014, the report of the Office Clerk placed on the file was that the respondent was duly served. Since no one appeared for them, I ordered them to be proceeded ex parte. Assuming that the case turns on the principal argument that the name of a country cannot be subject matter of trademark, and having faith in the learned counsel insistence that both products were clearly dissimilar in packaging and had distinguishing features, then even though the petitioner was not a registered mark holder, he could still claim rights in a passing off action, I proceeded to stay the operation of the impugned order dated 12th March, 2014 but directed that the respondents would be at liberty despite being proceeded ex parte to approach this Court for vacating or varying the order.

The respondents put in appearance through Shri Manwinder Singh Sidhu, Advocate who had filed CM No. 6984-II-2014 on 4.4.2014 praying for vacation of stay on being served the stay order. Notice of the stay vacation application was issued to the non-applicant petitioner for 22.4.2014.

When the application was taken up, learned counsel for the trademark holder/respondent produced before me the original wrappers of the product sold by the two disputing parties. I saw in them a striking similarity between the two. Since the matter was pressed as urgent by Mr. Sidhu for vacation of stay, and finding Mr. Kataria not present in court when the case was called, I called for Mr. Kataria to confront him with the two wrappers by passing the matter over to await his appearance.

He appeared and the matter was taken up on board for final disposal.

Heard the learned counsel for the parties.

Mr. Kataria tried to point out the distinguishing features of both the wrappers to show their differences. Differences there are in both. But those differences are not enough in the total impact viewed from the point of view of the common man in the market looking for adhesives. The product wrapper of the petitioner can easily pass off as one coming from the same source. They are identical in size and in theme. It is the theme and content that sways readily. A buyer can verily be misled when the two are put together in the same display rack in a shop. The only change in the brand name is of the letter ''M'' in the proper noun ''American'' which has been substituted for ''F'' to make ''Aferican''. Herein lies the deceit.

Of what use would this order be without pictures of the wrappers. Those would tell their own story. One look is worth a thousand words. In Alice''s Adventures in Wonderland, lies the oft quoted opening fine "and what is the use of a book," thought Alice "without pictures or conversation?" Therefore, scanned copies of both the products are made part of this order made by NCC Unit of this Court which are placed below though not in colour: First the packaging of the plaintiff and then the defendant are placed.

Both the front and the back of the wrappers would give an impression that the products come from one and the same source. The theme in both is remarkably the same. Two tables and four chairs, paintings, planters, the interior decoration all by and large resemble each other including the flower arrangement on the round table not in their exactness but in their idea. One cannot say that they are identical but the content, theme and the plot is the same. Even the format at the back of the wrappers is identical. The icons are about the same in the theme and content with minor variations changed to pass off.

Mr. Kataria points out that at the back of the wrappers of the respondents, there is an eagle in the background but not in the wrapper of the petitioner and there is a difference in colour combinations of both and although the products are the same but their packaging in wrappers are presented differently with many points of departure and of the details. I am not impressed with these submissions. I say no more as they are for all to see and gauge.

On the legal side, he relies on J.R. Kapoor Vs. Micronix India, in which the Court dealt with the trademark Micronix and Microtel. Micro is a common or general name in technology over which no one could exercise trade-mark nor claim monopoly on the word. However, Tel and Nix are dissimilar and not deceptive. In the present case, deception is practiced by the letter ''F'' in "Aferican".

In M/s Aristo Pharmaceuticals Ltd. Vs. M/s. Wockhardt Ltd., ; the Court dealt with the drugs Spasmo Proxyvon and Spasmo Flexon and found them different. This case does not help the petitioner.

He then relies on the decision of the learned Single Judge of Himachal Pradesh High Court in Amrit Banaspati Company Ltd. Vs. Suraj Industries Ltd., where the Court dealt with packet wrappers of Gagan and Angan. Simply because colour of the two products were dark blue and the writings on the pouches were in white colour, was not found to make both the pouches to be of similar nature and the two words are not deceptively similar.

He would then refer to McDonald''s Corporation Vs. MacGilz Fast Food, . This ruling is cited by Mr. Kataria not on the point of trademark or passing off action but that interim injunction ought not to have been granted by the trial court in favour of the plaintiff since the loss of fiscal business could be established only at the trial upon evidence and not at an interim stage of the suit. If the petitioner is restrained from selling its products, it will suffer grievous monetary loss throughout the pendency of the suit which cannot be compensated in any manner, the nature of the business being such involving sales of its products in the market and therefore the balance of convenience is lies in favour. It was in these circumstances of financial toss and irreparable injury that the learned single judge in McDonald''s did not form any opinion at the pre-evidence stage that the two words "Mc" and "Mac" are deceptively similar in nature. None of these cases can hold any water in the face of the visible similarity between the packing of the identical product sold by both the parties which are deceptively similar in nature, content and theme, the product admittedly being the same i.e. multipurpose adhesive.

Besides, the respondent is the owner of a registered trademark of its brand product and came earlier in the market. It cannot be accused of passing off its product. The stay order granted by this Court was induced by non-production of the wrappers of both the products at the first hearing which were withheld. A trademark case of this kind can be best understood by production of the two products for a comparison before proceeding further. These were produced by the respondents before me to startling effect. The interim order might have resulted in business loss to the respondents for which they deserve to be compensated. The petition fails and is ordered to be dismissed with costs of Rs. 1 lac to be paid before the trial court on the next date fixed.