Parle Agro Private Limited vs Weaver Aqua Everflo

A.S. Oka, J.—This Notice of Motion has been taken out by the plaintiffs in a suit for preventing passing off action.

According to the case of the plaintiffs, in the year 1992 they adopted a trade mark "Bailley" for their packaged drinking water. According to the case of the plaintiffs the word "Bailley" was coined by them and the said word was a fancy word. The plaintiffs commenced sale of the packaged drinking water under the said mark "Bailley" with effect from January 1993. The case of the plaintiffs is that their packaged drinking water sold and marketed under the mark "Bailley" very soon became immensely popular. The case of the plaintiffs is that having regard to their reputation, excellent quality of the product, cleanliness and hygienic standards adopted by the plaintiffs and the safety of the product, the plaintiffs� packaged drinking water sold under the mark "Bailley" became market leader in the packaged drinking water segment. The plaintiffs claim that for the financial years 2004-2005, 2005-2006 and 2006-2007 the sales turn over of the brand "Bailley" was Rs. 26.51 crores, Rs. 27.26 crores and Rs. 59.06 crores respectively. Further case of the plaintiffs is that they have spent substantial amounts on advertisement pertaining to the said brand "BAILLEY". The case of the plaintiffs is that they are manufacturing and/or marketing various products such as bacteria free water, mineral water, aerated water, packaged drinking water and the word "Bailley" happens to be the most prominent feature of the said products. The plaintiffs are placing reliance on registration of the trade mark "Parle Bailley Minerale", "Parle Bailley Aqua", "Parle Bailley Mineral Water", "Parle Bailley", "Parle Bailley Soda", "Parle Bailley Aqua" under the Trade Marks Act, 1999.

According to the plaintiffs, they are selling the packaged drinking water in bottles having different capacity; viz. 250 ml; 1 litre and 2 litre and large dispensing bottles/jars having capacity of 20 litre. The case of the plaintiffs is that the dispensing bottles/jars having capacity of 20 ltrs. has a unique shape, size and design which is created by the plaintiffs. It is submitted that the uniqueness of the design of the bottles/jars rests in its distinctive shape, configuration and design.

The case of the plaintiffs is that they have applied for and obtained registration of the said design with effect from 20th January 2004 under the Designs Act, 2000 and the Rules framed thereunder. The case of the plaintiffs is that the water bottles/jars of the plaintiffs have a band/label running along their surface in the centre and on the said band/label the mark "Bailley" is written against a coloured background. The case of the plaintiffs is that the arrangement of the label is such that "BAILLEY" is distinctive and prominent.

The case of the plaintiffs is that the word "Bailley" forms the essential and prominent part of the plaintiffs� trade mark. The traders and members of public identify the products of the plaintiffs by the name "Bailley". They claim that the word "Bailley" has became the household mark.

Some time in November 2006 the plaintiffs became aware of the use by the defendants of a deceptively similar trade mark "Beally" in relation to the packaged drinking water. The contention of the plaintiffs is that the defendants have been selling the packaged drinking water on small scale in 20 litre dispensing water bottles/jars having label containing not only deceptively similar mark "Beally" but also a deceptively similar label having a similar lay out, get-up and colour scheme. Therefore, the plaintiffs addressed a letter dated 27th November 2006 to the defendants informing them of the fact that they were registered proprietors of the mark "Bailly" and have been continuously using the same. The plaintiffs alleged in the said letter that the offending mark "Beally" was deceptively similar and was of phonetically similar sounding. Therefore, the plaintiffs called upon the defendants to forthwith discontinue the use of the said trade mark. A reply was sent by the defendants on 29th December 2006 contending that they were the registered proprietors of the trade mark "Beally". The registration was applied on 16th April 2004 and it was granted on 29th December 2006.

The case of the plaintiffs is that the defendants are continuing with the sale of the packaged drinking water in 20 litre dispensing water bottles/jars under deceptively similar brand name "Beally". Even the label used has deceptively similar colour scheme and get up. Reliance has been placed on photographs of 20 litre bottles marketed by the defendants. Therefore, the present suit has been filed for an injunction and damages in the sum of Rs. 1.00 lakh. The grievance in the suit is of passing off and the suit is not for infringement of trade mark.

In the present Notice of Motion for temporary injunction filed by the plaintiffs, on 14th May 2008, while considering the prayer for grant of ad-interim reliefs, the Counsel for the defendants had made a statement that the defendants shall not manufacture and/or market the packaged drinking water with the disputed mark save and except 20 litre jars which were manufactured and marketed on the date of the order i.e. 16th January 2008 pending the disposal of the Notice of Motion. In the said order this Court recorded that an assurance has been held out on behalf of the defendant that the status-quo as of the date of the order of this Court on 16th January 2008 shall be maintained. This Court directed that the defendants shall keep an account in regard to 12,000 bottles of the packaged drinking water which were introduced in or about April 2008.

The Notice of Motion is contested by the defendants by filing affidavits dated 29th January 2008 and 24th June 2008. In the affidavit dated 29th January 2008 the defendants relied upon the registration of their trade mark "Beally". It was contended that the product of the defendants was being marketed mainly in 20 litre jars. It is contended that the product is being marketed through sixty welknown distributors all over Mumbai and Thane Regions. It was contended that the trade mark of the defendants was not deceptively similar to the one adopted by the plaintiffs. It was contended that even if there is prior adoption and extended use of the mark "Bailley" in respect of same products by the plaintiffs, it cannot be the basis of any grievance against the defendants for use of the trade mark "Beally". It was submitted that the trade mark "Beally" has a full literary meaning and it is the combination of two words "Be" and "Ally". It is contended that the band/label of the trade mark of the defendants on the 20 litre jars is of totally different design and the colour combination. It is contended that the mark used by the defendants cannot be said to be deceptively similar. It is submitted that there is a delay in approaching the Court.

The plaintiffs filed an affidavit dated 6th May 2008 of its Constituted Attorney. In the said affidavit it was pointed out that on or before 3rd May 2008 the representative of the plaintiffs noticed that the defendants had commenced the sale of the packaged drinking water under the mark "Beally" in 1 litre and 500 mili litre bottles. It is submitted that the defendants have no regard to the rights of the plaintiffs and pendency of the suit. It is submitted that possibility of deception and confusion is considerably great in case of 1 litre and 500 mili litre bottles as the same are sold to the members of public at small shops and outlets. A grievance is made in the affidavit regarding the defendants copying the colour scheme, lay out and get up of 1 litre and 500 mile litre bottle of "Bisleri" which is the product of Parle Bisleri Private Limited.

To the said affidavit a sur-rejoinder has been filed by the defendants. It is submitted that "Bisleri" is not the trade mark of the plaintiffs and therefore the plaintiffs cannot raise any objection to the defendants� using 1 litre or 500 mili litre packaged drinking water bottles with a label in light green colour.

There is a further affidavit filed by the proprietor of the defendants. It is stated in the affidavit that the defendants had applied for cancellation of the plaintiffs� design of plastic jar/container. It is contended that the similar type of containers are widely available and sold by different manufacturers of plastic jars and containers. Reference is made to the products used by various companies. It is reiterated in the affidavit that the defendants have honestly and in a bona fide manner adopted the trade mark "Beally" having meaning "to be friend or to associate or to connect by some mutual relationship or friendship". Reliance is placed on photographs of the plastic jars used by various other companies.

The learned Counsel appearing for the plaintiffs in support of the Notice of Motion contended that the plaintiffs are registered proprietors of seven trade marks each of which contain as an essential and most prominent feature the word "Bailley". His contention is that the word "Bailley" constitutes the essence of the plaintiffs� mark and it is the most prominent and essential feature of the trade mark under which the plaintiffs sell their packaged drinking water. He submitted that the goods of the plaintiffs are sold with particular reference to the word/mark "Bailley" and the said products are known and/or bought with reference thereto. He pointed out that even the arrangement of the contents of the label used on the products of the plaintiffs namely the bottles and the jars is such that the word "BAILLEY" is distinctive and prominent. He submitted that the material averments in paragraph 4 of the plaint as regards adoption of the trade mark "Bailley" by the plaintiffs as well as the averments in paragraphs 10 and 23 to the effect that the plaintiffs� goods are sold with reference to the word "Bailley" and are known and/or bought with reference thereto have not been denied in the reply. The learned Counsel appearing for the plaintiffs also invited my attention to the figures of sales of the goods of the plaintiffs from the year 1995 onwards as well as figures of expenditure incurred for promoting the product.

The learned Counsel appearing for the plaintiffs submitted that the defendants have admittedly commenced the user of the mark "Beally" in October 2006 when the plaintiffs� product was already a leading brand in the packaged drinking water segment. He submitted that the case of the defendants that they have honestly and in a bona fide manner adopted the mark "Beally" has to be disbelieved. He submitted that the meaning "to be friend or to associate or to connect by some mutual relationship or friendship" sought to be assigned to the mark "Beally" is clearly false as solicitation of friendship has not even a remote connection with the packaged drinking water. He submitted that the plaintiffs� mark is a coined and is a fancy word and it has nothing to do with the product in question. He submitted that even according to the case of the defendants, the mark "Beally" is not a fancy word but it is a word having meaning. He submitted that once it is found that the meaning assigned by the defendants to the mark has not even a remotest connection with the product, it is obvious that the adoption of the said mark by the defendant is clearly dishonest.

He invited my attention to the fact that the defendants used to carry on business of manufacturing, selling and/or distributing the packaged drinking water under the mark "OXYRISE" by imitating the mark "OXYRICH". He invited my attention to the order of this Court granting an injunction against the defendants from using the mark �OXYRISE�. He pointed out that the defendants have copied the get up of other product in the packaged drinking water segment i.e. "PARLE BISLERI". He submitted that all the ingredients of passing off are satisfied in the present case. He submitted that the defendants cannot claim equity as on 27th November 2006 i.e. within a month from the date on which the user of the defendant started, the defendants were put to notice that their user of the mark was illegal. He has relied upon the decision of the Apex Court in the case of N.R. Dongre and Others Vs. Whirlpool Corpn. and Another, , Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., , Midas Hygiene Industries P. Ltd. and Another Vs. Sudhir Bhatia and Others, . He also placed reliance on a decision in the case of Anglo French v. Eisen Pharma [1998] PTC 18. Relying upon the decision in the case of Schering Corporation and Ors. v. Killitch Co. (Pharma) Pvt. Ltd. 1990 PTC Supp 22, he submitted that after 27th November 2006 the defendants have been using the mark at their own peril and therefore alleged delay in filing the suit would not come in the way of the plaintiffs.

The learned Counsel appearing for the defendants submitted that apart from the fact that the defendants are the registered proprietors of the mark "Beally", there is no deceptive similarity between the rival marks. He pointed out that the plaintiffs� label contains the words "Parle Bailley" followed by "AQUA" and the defendants� label contains the word "Beally" followed by words "Surety of Purity". He pointed out that even the colours of the label are different. He pointed out that the plaintiffs� label does not contain any logo before the words "Parle Bailley" and on the other hand, the defendants� label contains the defendants� logo before the word "Beally". Bar code appears in lower half of the label of the plaintiffs whereas no such bar code appears in the defendants� labels. He submitted that the rival marks will have to be compared as a whole and not in parts. He submitted that two labels have totally different features, words, designs, colour scheme, lay out and get-up. He submitted that by no stretch of imagination any confusion can be created in any one�s mind on the basis of the label of the defendants. He reiterated that the defendants have honestly adopted the mark "Beally" containing the combination of two syllables "Be" and "Ally" and the mark has a meaning "to be friend or to associate by some mutual relationship or friendship". He placed reliance on the decision of Privy Council AIR 1940 86 (Privy Council) and decision of the Apex Court in case of Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories, . He placed reliance on a decision of Culcatta High Court in the case of The Singer Manufacturing Co. Vs. The Registrar of Trade Marks and Another, in which it is held that the mark "SAGAR" is not deceptively similar to the mark "SINGER". He submitted that there is no documentary evidence on record to prove the prior use, reputation and goodwill of the mark of the plaintiffs. He submitted that only on this ground the relief of passing of cannot be granted. He submitted that though called upon to do so, the advocate for the plaintiffs has not even given inspection of the original documents of the defendants.

Placing reliance on the decision of the Apex Court in the case of Cadila Health Care (supra), he submitted that the mode of sale of the product of the defendants is also an important factor to be considered in a passing off action. He submitted that the defendants are using the mark only in respect of 20 litre jars which are normally supplied directly to the consumers and to the offices and the said jars are not sold across the counters. He submitted that the factum of registration of the mark of the defendants is also a relevant circumstance as held by the Delhi High Court in the case of P.M. Diesels Private Limited Vs. Thukral Mechanical Works, . He also pointed out that the defendants had applied for cancellation of registration of the plaintiffs� design as the registration has been fraudulently obtained by the plaintiffs. 18. He submitted that as no action was taken by the plaintiffs even though the defendants declined to comply with the cease and desist notice given by the plaintiffs. No legal action was initiated by the plaintiffs for a long time and there is an inordinate delay in approaching the Court. He submitted that the delay shows that the plaintiffs acquiesced to the use of the said mark by the defendants. He submitted that the balance of convenience is in favour of the defendants as a greater hardship will be caused to the defendants if injunction is granted. On the other hand, no hardship will be caused to the plaintiffs if injunction is not granted. He submitted that considering the suppression of material facts by the plaintiffs and the conduct of the plaintiffs, this is not a case for grant of any equitable reliefs in favour of the plaintiffs.

I have carefully considered the submissions. It must be stated here that during the course of the submissions the learned Counsel appearing for the plaintiffs fairly stated that he is not seeking any relief as regards use of the design of the container used by the defendants and he is confining the prayer to the use of the label by the defendants containing the mark "Beally". It must be stated here that the plaintiffs have not brought the suit for infringement of trade mark based on the registration claimed by them and the suit is for preventing the passing off. The Apex Court in the case of Cadila Health Care Ltd. (supra) has referred to the factors which should be normally considered in the action of passing of on the basis of unregistered trademark. Paragraphs 35 and 36 of the said decision read thus:

Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered:

(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.

(b) The degree of resembleness between the marks, phonetically similar and hence similar an idea.

(c) The similarity in the nature, character and performance of the goods of the rival traders.

(d) The similarity in the nature, character and performance of the goods of the rival traders.

(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.

(f) The mode of purchasing the goods or placing orders for the goods.

(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

Weightage to be given to each of the aforesaid factors depending upon facts of each case and the same weightage cannot be given to each factor in every case.

Reliance has been placed by the plaintiffs on the decision of the Apex Court in the case of N.R. Dongre (supra). The said decision is relied upon for urging that the fact that the defendants have obtained registration is by itself not sufficient to record a finding that the suit for passing off action is not maintainable. It will be also necessary to refer to the decision of the Division Bench in the case of Schering Corporation and Ors. v. Kilitch Co. (Pharma) Pvt. Ltd. (supra). The Division Bench has dealt with the aspect of delay in approaching the Court in such matters. In paragraph 20, the Division Bench held thus:

...Once it is established that there is visual and phonetic similarity, and once it is established that the defendants� adoption of the trade mark is not honest or genuine, then the consideration of any plea as to delay must be on the basis of a consideration whether there has been such delay in the matter as had led the defendants to assume that the Plaintiffs have given up their contention and/or whereby the defendants have altered their position so that it would be inequitable to grant interim relief to stop them from using the trade mark until the suit is decided?

....

Reliance has been placed on the observations made by this Court in the case of Anglo-French Drugs & Industries Ltd. v. Eisen Pharmaceutical Co. Ltd. 1998 PTC 18 and in particular observations in paragraph 15. The relevant portion of paragraph 15 read thus:

There can be no dispute with the propositions of law. However, now, sad it is, the reality is that notices of motion do not reach hearing for years. If therefore at the ad interim stage itself the Court is even prima facie satisfied that the marks are deceptively similar and that the adoption is dishonest, not to grant relief would amount to encouraging dishonest parties to use laws delays....

In the case of Midas Hygeine (supra) the Apex Court in paragraph 5 held thus:

The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.

In the light of the aforesaid principles of law, the factual aspects of the case will have to be considered. While considering the issue of deceptive similarity, another factor which will have to be considered is whether the adoption of the mark by the defendants is honest and bona fide.

According to the case of the plaintiffs, their marks "Parle Bailley Minerale", "Parle Bailley Aqua", "Parle Bailley Mineral Water", "Parle Bailley", "Parle Bailley Soda" have been registered under the Trademarks Act, 1999. In passing off action, the fact of registration of the mark by the defendants may not be relevant. Perhaps the only relevant factor is that the marks containing the word "Bailley" of the plaintiffs have been registered. Perusal of the certificates of registration annexed as Exhibit-C (collectively) show that the word "Bailley" is a prominent and essential feature of plaintiffs� registered marks. The photograph of the product of the plaintiff which is the subject matter of the suit is at Exhibit-E. The said product has a label affixed thereon having blue colour on which the mark "Parle Bailley Aqua" has been prominently printed. The word "Bailley" appears to be the most prominent part of the said label. The size of the letters used in the words "Parle" and "Aqua" is less than half the size of the letters used in the word "Bailley". The word "Bailley" appears to be essential and prominent feature of the mark printed on the label. The photograph of the product of the defendants is on page 38 of the plaint. The product has a label. The label has been printed partly in green colour and partly in blue colour. The word "Beally" has been prominently printed on the top of the label and the words "Surity of Purity" appear in very small letters. The word "Beally" appears to be most prominent and essential feature of the label used by the defendants. It must also be stated here that the label of the plaintiffs contains description of the goods as "packaged drinking water". The same is the description of the product on label used by the defendants.

The words "Bailley" and "Beally" are structurally and visually similar. To a person who is not conversant with English pronunciation, the words may appear to be phonetically identical. The words "Parle" and "Aqua" on the labels of the plaintiffs are printed in very small letters. So is the case of the words "surity of purity" on the labels of the defendants. As pointed out earlier, the description of both the products as printed on the labels is the same i.e. "Packaged Drinking Water".

The word "Bailley" has no dictionary meaning and therefore, the case of the plaintiffs is that the mark "Bailley" is a coined and fancy word. The contention of the defendants is that the word "Beally" is a combination of two English dictionary words being "Be" and "Ally" and according to them the meaning of the word "Beally" is solicitation of friendship or relationship. Assuming that the word "Beally" can be taken as a combination of words "Be" and "Ally", the dictionary meaning sought to be attached to the word has not even a remote connection to the product or to the use of the product. That is the reason why prima facie it is very difficult to accept the case of the defendants that the adoption of the said mark by the defendants is honest and bona fide. On the contrary, it appears to me that the case of the adoption of the mark as pleaded in paragraph 16 of the reply is totally unbelievable and cannot be accepted.

The class of buyers of the product of the plaintiffs and the product of the defendants cannot be different. Even the class of buyers of 20 litre jars of both the products is virtually the same as the product is the same. Therefore, the fact that 20 litre jars of the defendants are directly delivered to the customers is not relevant.

Thus, a strong prima facie case is established by the plaintiffs that the mark "Beally" is similar to the mark "Bailley". It is prima facie established that the word "Bailley" forms most prominent and essential feature of the label of the products of the plaintiffs. The mark "Beally" is visually and structurally similar to the mark "Bailley" used by the plaintiffs. Apart from this, the case of honest adoption of the said mark by the defendants cannot be accepted.

The other question which needs to be examined is as regards the proof of reputation, goodwill and substantial user by the plaintiffs. Reliance has been placed on Exhibit-A to the plaint containing sales turn over pertaining to the brand "Bailley" of the plaintiffs for the years 2004-2005 to 2006-2007. The minimum turnover is Rs. 26.51 crores. Moreover, in the reply filed to the Notice of Motion, there is no serious challenge to the averments made in paragraph 4 of the plaint. The registration of the mark "Bailley" having as a prominent and essential feature relates to the year 1996 as evidenced by Exhibit-C. Therefore, on this point, a prima facie case is established by the plaintiffs.

As far as delay is concerned, the law on the point has already been laid down in the case of Schering Corporation (supra) and in particular in paragraph 20 of the decision which is quoted in earlier part of the judgement. The delay by itself is not sufficient to deny the relief of injunction. An injunction can be denied on the ground of delay if the delay is such that the same has led the defendants to assume that the plaintiffs have given up their contention whereby the defendants have altered their position. The said case is not borne out from the pleadings of the defendants in the form of reply to the Notice of Motion. The cease and desist notice given by the plaintiffs on 27th November 2006 and the plaint has been declared on 9th January 2008. In the facts of the case the delay will not defeat the claim of the plaintiffs.

Lastly a submission was made by the learned Counsel appearing for the defendants on the basis of an observation made by the Apex Court in the case of Ciba Geigy Ltd. v. Sun Pharmaceutical Industries 1997 PTC 17. The said observation is made in paragraph 4 which reads thus:

While we decline to interfere with the order of the High Court, we leave it open to the petitioner to move the trial court to impose such conditions, as may be found appropriate, including if necessary, the keeping of accounts and an undertaking to pay damages in the event of the petitioner succeeding ultimately in the action.

In the facts of the present case a strong prima facie case of similarity has been made out. The suit is of the year 2008. The same is likely to remain pending for several years. If the injunction is not granted, irreparable loss will be caused to the plaintiffs. On the other hand, if the injunction is granted confined to the user of the mark "Beally" or the offending label containing mark "Beally", the defendants will not be prejudiced.

In the circumstances, the Notice of Motion must succeed in part and I pass following order:

(a) During pendency and till the final disposal of the suit the defendants are hereby restrained by themselves, their representatives, servants and agents from using the mark "Beally" in relation to packaged drinking water/mineral water/bottled water and from using the offending label Exhibit-H to the plaint containing the mark "Beally";

(b) The Notice of Motion is partly made absolute in the above terms with no orders as to costs.

The learned Counsel appearing for the defendants prays for stay of operation of this order. The learned Counsel appearing for the plaintiff opposes the said prayer. Considering the facts and circumstances of the case, the operation of the order will remain stayed for a period of four weeks from today. However, the arrangement made under the ad-interim order passed by this Court will continue to operate.