Rameshchandra Paliwal, Proprietor, M/s. Paliwal Perfumers vs Sima & Company

This appeal is directed against the order dated 19.01.2016

passed by the District Judge, Pratapgarh, whereby the application

filed by appellant under Order XXXIX, Rule 1 and 2 CPC seeking

injunction has been rejected.

The appellant-plaintiff filed a suit for permanent injunction

alongwith an application for temporary injunction alleging

infringement/passing of label trademark and infringement of

copyright of ''Nikah'' label in respect of perfumeries against the

respondent.

It was claimed in the plaint that a label trademark with

prominence of word ''Nikah'' and depicting ''Rani'' was adopted by

the appellant in respect of the goods and he applied for trademark

registration on 24.04.2003 and was granted registration under

No.1184951 in Class-3 in respect of attar and perfumes. It was

claimed that the appellant is also registered owner of label

trademark with prominence of word ''Nikah'', depicting ''Rani''

(Queen) and ''Mor'' (Peacock) bearing No.1770552 in Class-3 in

respect of goods. It was claimed that the mark was continuously,

openly and extensively used by the appellant since 01.06.2002.

Further submissions were made that the trademark was

adopted/originated by the appellant with his own creation, labour

and capital, which includes light green colour in the background,

which label is also used for box of perfumes for outer packaging.

It was also claimed that the appellant is owner and proprietor of

the artistic features involved in the trademarks and holds

copyright registration No.A-87830/2009 and 87831/2009. Further

claims were made that the appellant''s goods and business under

the trademark/label acquired tremendous goodwill and reputation

in the markets and has attained sizable turnover.

Thereafter, it was alleged that the respondent was infringing

and passing off the label trademark ''Nikah'' in respect of attar and

perfumes by imitating deceptively similar label with prominence of

word ''Nagma''; the respondent was selling its goods with a copied

label trademark to that of the appellant''s trademark/label. The

distinctive light green combination of colour alongwith the style of

display of ''Rani'' (Queen) and ''Mor'' (Peacock) alongwith the word

''Nagma'' was being used with a dishonest, malafide and fraudulent

intention. It was alleged that the overall resemblance between the

appellant-plaintiff''s trademark/label and that of the respondent''s

trademark/label is so close that the same is apparently a result of

deliberate imitation. The unwary customers are bound to get

confused and deceived, resulting in loss of goodwill and reputation

of the appellant-plaintiff. It was prayed that the respondent be

injuncted by way of temporary injunction from using the similarly

deceptive trademark/label.

A response was filed by the respondent to the plaint as well

as the application seeking temporary injunction, inter alia,

claiming that the label trademark ''Nagma'' was being used for

many years, the firm was registered since the year 1964 and is

doing business since then, the label trademark is not deceptively

and confusingly similar to the label trademark and there is no

decrease in sale of the appellant''s products and in absence of

actual damage, evidence by affidavits of third party, no case is

made out.

The trial court after hearing the parties, came to the

conclusion that from the perusal of the two trademarks, there was

no deceptive similarity, colour scheme was different. The

respondent was using the trademark ''Rani'' (Queen) and ''Mor''

(Peacock), from before the same was got registered by the

appellant and, therefore, there was no violation of provisions of

the Trade Marks Act . No material has been produced to indicate

any confusion and the names of the product were also different

and, therefore, did not find any prima facie case in favour of the

appellant. While considering the aspect of balance of convenience

and irreparable injury, it was found that besides the fact that

phonetic similarity has not been proved, the appellant has failed to

prove that there has been any loss in business. There was

material available on record to show that the respondent firm was

registered since the year 1964 and was using ''Rani'' (Queen) and

''Mor'' (Peacock) for selling perfumeries. The appellant has obtained

the registration in the year 2009 and, therefore, there was no

question of any irreparable injury and, consequently, dismissed

the application.

It is submitted by learned counsel for the appellant that the

trial court committed error in rejecting the application for

temporary injunction filed by the appellant while applying wrong

parameters. It was submitted that side by side comparison is not

permissible, actual damage is not necessary and, therefore, the

very foundation of the order being contrary to law, the order

impugned deserves to be set aside.

With reference to the pleadings, it was submitted that there

was no plea raised by the respondent regarding use of trademark

from prior to appellant''s registration and only plea raised was

regarding registration of the firm, which has been wrongly read by

the trial court, resulting in a perverse finding in this regard. It is

submitted that the respondent despite being aware of appellant''s

registration has not filed any application for rectification and has

simply claimed that as others are also using similar

trademarks/labels, the respondent was entitled to use the same.

It was further submitted by learned counsel for the appellant that

the trial court committed error in finding out the dissimilarities

between the two trademark labels, whereas it is settled principle

that the two label trademarks are to be examined as a whole and

a perusal thereof, would reveal that both the labels are

deceptively similar. Submissions were also made that merely

because a firm exists since 1964, is of no consequence and it is

only when the respondent sought to violate the registered

trademark that the proceedings were initiated.

Reliance was placed on judgment of Hon''ble Supreme Court

in Parle Products (P) Ltd. V. J.P. and Co., Mysore : (1972) 1

Supreme Court Cases 618; Heinz Italia and Anr. v. Dabur India

Ltd .: (2007) 6 SCC 1; Corn Products Refining Co. v. Shangrila

Food Products Ltd .: PTC (Suppl) (1) 13 (SC) and a judgment of

Delhi High Court in Century Traders v. Roshan Lal Duggar & Co.

and Ors .: AIR 1978 Delhi 250.

It was prayed that the order impugned passed by the trial

court be set aside and application filed by the appellant be

allowed.

Vehemently opposing the submissions made by learned

counsel for the appellant, learned counsel for the respondent

submitted that the trial court has found the prima facie case

against the appellant, issues of balance of convenience and

irreparable injury have been decided in favour of the respondent,

which finding is justified in the circumstances of the case and,

therefore, the same does not call for any interference. It was

submitted that there is no substance in the allegations made by

the appellant regarding deceptive similarity between two label

trademarks and the trial court has clearly indicated the said aspect

in the order impugned, which is in accordance with the material

available on record. The use of Peacock, a national bird and

pictorial representation of woman as Queen or Bride, cannot be

claimed as violation of the registered trademark.

From the material, which has already come on record, the

appellant has failed to show any irreparable injury being caused to

him, inasmuch as, his business from the figures available on

record, has increased over a period of time and he has failed to

show any loss. On the other side, if the respondent is restrained

from dealing in the product, the same would lead to irreparable

injury to him. The balance of convenience is also in favour of the

respondent, inasmuch as, both the Peacock and Bride being used

by the respondent are different from the marks being used by the

appellant. Further submissions were made that the court should

be slow in interfering in exercise of discretion by the trial court in

this regard.

Reliance was placed on Wander Ltd. & Anr. V. Antox India P.

Ltd .: 1990 (Supp) SCC 727; Ramdev Food Products Pvt. Ltd. v.

Arindbhai Rambhai Patel & Ors .: AIR 2006 SCC 3304 and

Rajendra Singh Shekawat v. M/s. Shrinath Heritage Liquor Pvt.

Ltd .: (2014) 1 DNJ (Raj.) 416.

I have considered the submissions made by learned counsel

for the parties and have perused the material available on record.

From the bare perusal of the order passed by the trial court,

it is apparent that the trial court rejected the application

essentially by side by side comparing both the labels and on its

coming to the conclusion that there were several dissimilarities

between the two products and apparently did not take an overall

view of the two labels. Further the trial court was also swayed by

the fact that the respondent''s firm was registered since the year

1964 and was allegedly using pictures of Queen and Peacock on

its products, whereas the appellant''s firm got the registration in

the year 2009.

So far as the procedure adopted by the trial court in

comparing the two trademark labels and pointing out

dissimilarities is concerned, the law in this regard was settled way

back in the case of Parle Products (P) Ltd. (supra), wherein it was,

inter alia, laid down as under:-

"9. It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken by the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the color scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word "Gluco Biscuits" in one and "Glucose Biscuits" on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs'' goods, he might easily mistake the defendants'' wrapper for the plaintiffs'' if shown to him some time after he had seen the plaintiffs''. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendants'' wrapper is deceptively similar to the plaintiffs'' which was registered. We do not think it necessary to refer to the decisions referred to at the Bar as in our view each case will have to be, judged on its own features and it would be of no use to note on

how many points there was similarity and in how many others there was absence of it.

It was argued before us that as both the Trial Court and the High Court had come to the same conclusion namely, that the defendants'' wrapper was not deceptively similar to the plaintiffs'', the finding is one of fact which should not be disturbed by this Court. Normally, no doubt this Court does not disturb a concurrent finding of fact. But where, as here we find that the finding was arrived at not on proper consideration of the law on the subject it is our duty to set the same aside on appeal."

The Hon''ble Supreme Court laid down that the broad and

essential features of the two marks are required to be considered

for deceptive similarity and that they should not be placed side by

side to find out if there are any differences in the design and if so,

whether they are of such character as to prevent one design from

being mistaken for the other and it would be enough if the mark in

question bears an overall similarity to the registered mark and is

likely to mislead a person, whereby one product is accepted in

place of the other.

Further in the case of Heinz Italia (supra), wherein the

judgment in the case of Wander Ltd. (supra) relied on by counsel

for the respondent was also considered, it was laid down that in

the case of passing off action the similarities rather than the

dissimilarities have to be taken note of by the court and the

principle of phonetic ''similarity'' cannot be ignored and the test is

as to whether a particular mark has obtained acceptability in the

market so as to confuse a buyer as to the nature of product he

was purchasing.

In view of the settled position of law, the entire consideration

of the trial court, which has merely focused on pointing out the

dissimilarities between two products, therefore, the same cannot

be sustained.

Coming to the other aspect, relied on by the trial court for

denying the application on the basis that the firm of the

respondent was existing since 1964.

A bare look at the response filed by the respondent to the

temporary injunction application, would reveal that the respondent

though claimed that the firm existed since the year 1964, it was

not the case of the respondent that it was utilizing the pictures of

Queen and Peacock from before the appellant. The relevant paras

of the reply of the temporary injunction application, in this regard

read as under:-

"VERNACULAR MATTER OMITTED"

(Emphasis Supplied)

A bare reading of the above averments in the reply would

reveal that it was claimed by the respondent that many firms

manufacturing attar and perfumes were using pictures of Queen

and Peacock from before products of the appellant i.e. from before

2000, however, it was not the case of the respondent that the

respondent firm was using the same from before the product was

got registered by the appellant. Merely because certain other firms

were allegedly doing something, the same cannot justify the

action of the respondent in committing the violation of the

registered trademark.

Further, the plea raised in the additional plea is only

regarding its working/registration since 1964 and not that it was

using the trademark since 1964 as has been read by the trial

court, which finding of the trial court based on the misreading of

the pleadings is vitiated.

Further, while considering the issue of irreparable injury, the

finding recorded by the trial court regarding lack of actual loss in a

suit for injunction of the present nature is apparently baseless,

inasmuch as, in a suit for injunction based on violation of the

trademark and passing off action, a plaintiff cannot be made to

wait till he suffers actual loss by the goods being passed off or his

trademark being violated before approaching the court seeking

injunction against the party. The action essentially is for

preventing the violation/continuance of the violation of the

trademark, therefore, it cannot be said that for lack of actual loss,

balance of convenience would not be in favour of the plaintiff.

In Century Traders (supra), it was laid down that proof of

actual damage or fraud is unnecessary in a passing off action

whether the relief asked for is injunction alone or injunction,

accounts and damages, if there is likelihood of the offending

trademark invading the proprietary right, a case for injunction is

made out.

In view of the above, the finding of the trial court regarding

balance of convenience and irreparable injury also cannot be

sustained.

Coming to the merits of the case of the appellant, a bare

look at the two packages, which have been reproduced by the trial

court in its order as well as by the appellant in its memo of

appeal, it would be seen that the colour scheme of the

attar-''Nikah'' and attar-''Nagma'' is almost identical that with a

pictures of woman as Queen and Bride and that of Peacock on

both. Merely because the picture of Peacock and Bride used are

dissimilar, the colour scheme and the overall effect of the package,

if seen, the same can easily confuse a purchaser and in those

circumstances and the fact that appellant''s label marks are

registered and admittedly the respondent has started using the

same much later in point of time, the appellant has been able to

make out prima facie case for grant of injunction.

As already noticed hereinbefore, the issue of balance of

convenience and irreparable injury not being dependent on the

actual loss caused to the appellant, the very fact that the

deceptively similar product was sought to be marketed by the

respondent, the same would violate the rights of the appellant,

resulting in irreparable injury to him and balance of convenience

also lies in his favour.

So far as the submissions made by learned counsel for the

respondent regarding not disturbing the finding recorded by the trial court is concerned, as already noticed hereinbefore, the

findings of the trial court have been arrived at against the settled

position of law regarding consideration of the trademark cases

besides being factually incorrect and against the record based on

misreading of pleadings, the plea raised in this regard by the

respondent cannot be sustained.

In view of the above discussion, the appeal filed by the

appellant is allowed. The order dated 19.01.2016 passed by the

trial court is quashed and set aside. The application filed by the

appellant under Order XXXIX, Rule 1 and 2 CPC is allowed and the

respondent is restrained from using the registered trademark of

the appellant bearing No. 1184951 in Class-3 in respect of attar

and perfumes and label trademark baring No.1770552 1184951 in

Class-3 in respect of attar and perfumes depicting ''Nikah'', ''Rani''

and ''Mor'' and/or anything similar to the said registered

trademark/label trademark during the pendency of the suit.

It is clarified that this order is confined only to the

limited question of grant of temporary injunction, any

observations in this regard would not bind the trial court in the

proceedings in the suit.