Dr. M.K. Sharma, J.
1. This order will dispose of the application filed by the plaintiff under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure (being IA 4788/1993) praying for grant of temporary injection restraining the defendants, their servants and agents from manufacturing, selling, offering, for sale, advertising directly or indirectly by using the trade mark "LAKME" or "LIKE ME", the device and the word 'Designe in relation to the nail enamel and other cosmetic goods or any other mark which is deceptively similarly or identical with the registered trade mark of the plaintiff and also passing off their goods as the goods of the plaintiff and also the application filed by the defendant seeking vacation of the ex parte ad interim injection dated 13.5.1993 (being I.A. 5466/1993 whereby the defendants were restrained from using the trade mark "LAKME" or "LIKE ME" or the word 'designer' or any other mark which may be identical or deceptively similar to the trade mark of the plaintiff "LAKME".
2. The plaintiff instituted a suit contending inter alia that the plaintiff is the registered proprietor of trade mark "LAKME" under No. 148249 in class 3 in respect of soap, perfurnery, cosmetics and toilet preparations. It was stated that the word "LAKME" is registered under the Trade and Merchandise Marks Act, 1958 as a trade mark for various goods since the year-wise turn over for about 7 years for the cosmetic products under the mark "LAKME" and the advertisement expenses. It was stated that the plaintiff has also been incurring huge expenses in the sale promotion and advertisement in relation to the trade mark "LAKME" on account of which the people in general associate any product or service bearing the word "LAKME" exclusively with the products of plaintiff. Plaintiff has also been using the mark "Designer" since January, 1988 alongwith a device. In or about 3rd week of January, 1992 it came to the notice of the plaintiff that the defendants No. 1 & 2 had introduced into the market a nail enamel under the trade mark "LAKSME" and Coco Sweety Designer. The defendant No. 3 is the dealer of defendants 1 & 2 who is also selling nail enamel under the trade mark "LIKE ME" and the mark Designer which are identical and/or deceptively similar to the trade mark of the plaintiff. The plaintiff has alleged that by use of the trade mark "LAKSME" or "LIKE ME" in respect of the nail enamel the defendants are infringing the trade mark of the plaintiff and also infringing the rights of the plaintiff to their mark Designer. Under the aforesaid circumstances the plaintiff has instituted the present suit in which the application under Order XXXIX Rules 1 & 2 came to be filed.
3. This court by order 13.5.1993 while issuing summons in the suit also issued a temporary ad interim injection restraining the defendant from manufacturing selling offering for sale or advertising enamel nail polish under the trade mark "LAKSME/LIKE ME" and the word "Designer" or any other mark which may be identical or deceptively similar to the trade mark of the plaintiff "LAKME".
4. On service of summons the defendants appeared in the suit and contested the same by filing their written statement contending inter alia that the trade "LIKE ME" of the defendants, its get up design, colour scheme and overall appearance is different from the trade mark of the plaintiff and there cannot be any passing off. It is further stated that the defendant was not using the trade mark "LAKSME" and Sweety 'Designer'. The case of the defendants, as disclosed from the written statement is that the defendant is using the trade mark "LIKE ME" after getting the permission from the Controller of Drugs and Cosmetics from December 1988, of which the plaintiff had full and complete knowledge as the goods of the parties are sold in the same market. The defendants also filed an application under Order XXXIX Rule 4 CPC praying for vacating the ad interim injection granted by this court which was registered as I.A. No. 5466/1993.
5. Learned counsel appearing on behalf of the parties addressed lengthy arguments on the question of feasibility and desirability of issuance of interim injunction in the present suit in favour of the plaintiff and against the defendants and also placed reliance on a number of decisions of the Supreme Court and also of this court.
6. Mr. Manmohan Singh, learned counsel appearing for the plaintiff drew my attention to the definition clauses appearing in Section 2 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The word 'Mark' is defined under sub-clause (i) Section 2 whereas the word 'Trade Mark, is defined under Section 2(v). The definition of the word 'Mark' as given in the Act is an inclusive definition which includes a device, brand, heading, label, ticket, name, signature word, letter or numeral or any combination thereof. The words "deceptively similar" also have been defined in Section 2(d) as a mark shall be deemed to be deceptively similar to any mark if it so nearly resembles with other mark as to be likely to deceive or cause confusion.
Section 12 of the Act prohibits registration of identical or deceptively similar trade mark when it states that no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a proprietor in respect of the same goods or description of goods.
Section 27 of the Act on the other hand lays down that no person would be entitled to institute any proceedings to prevent or to recover damages for, the in fragment of an unregistered trade mark, whereas for an action of passing off goods the right of action against any person for passing off goods is not affected as the goods of any other person or the remedies in respect thereof.
Section 28 enumerates the right conferred by the registration and Section 29 provides for an action for in fragment of trade marks.
7. The decisions relied upon by the counsel for the rival parties also clearly enumerate the distinctions between an action for in fragment and an action for passing. In Ruston & Hornby Ltd. v. Zamindara, Engineering Co. . the distinction between an in
fragment action and a passing off action is succinctly, laid down when it was held that in a passing off action the issue is as follows :
"Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods ?"
But in an in fragment action the issue is as follows :
"Is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiff's registered trade mark ?"
It was further held that :
"It very often happens that although the defendant is not using the trade mark of the plaintiff, the get-up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiff's mark the get-up of the defendant's goods may be so different from the get up of the plaintiffs goods and the prices also may be so different that there would be no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an in fragment action, an injunction would issued as soon as it is proved that the defendant is improperly using plaintiff's mark."
It is, therefore, apparent the although there is a distinction between an action for in fragment and action for passing off there is also some similarity between the two in some respect as has been laid down by the Supreme Court in the aforesaid decision, when it has held thus :
"In an action from in fragment where the defendant's trade mark is identical with the plaintiff's mark, the court will not inquire whether the in fragment is such as is likely to deceive or cause confusion. But where the alleged in fragment consists of using not the exact mark on the Register, but something similar to it the test of in fragment is the same as in an action for passing off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing-off actions."
8. Law with regard to the various facets of an action for infringement and passing off and also in respect of the principles governing grant of injunction is well settled by the decisions of the Supreme Court and off this court which were relied upon and placed before me by the counsel for the parties and require no repitation. However, I shall take only a fleeting glance on some of such decisions having a bearing and relevance to the facts of this case.
9. In the case of K. R. Chinna Krishan Chettier v. Sri Ambal & Co. and another , it has been held that the resemblance
between the two marks must be considered with reference to the ear as well as the eye and ocular comparison is not always the decisive test. Therefore, even if there be no resemblance between the two marks that does not matter when there is a close affinity of sound between the distinctive features of the two marks. The Supreme Court further pointed out that merely because the distinctive words used in both the marks have distinctive meaning it cannot be said that the phonetic resemblance does not lead to confusion, when it is likely that majority of the customers are not capable of understanding the fine distinction between the meanings of the two words. In the same case the Supreme Court was called upon to consider whether there is striking similarity and affinity of sound between the words "AMBAL" and "ANDAL". After considering various decisions, the Supreme Court held that there is a close affinity of sound between the words "AMBAL" and "ANDAL".
Similarly in the case of Ruston v. Zamindara Engg. (Supra) the Supreme Court came to consider whether there was resemblance between the words "RUSTON" and "RUSTAM" and on consideration of various decisions came to uphold the decision of the High Court that there was deceptive resemblance between the words "RUSTON" and "RUSTAM" and therefore, the use of the bare word "RUSTAM" constituted clear infringement of the plaintiff's trade mark "RUSTON".
10. In this context I may also appropriately refer to a decision of a Division Bench of this court in M/s. Hitachi Ltd. v. Ajay Kr. Agarwal and others (1996 PTC (16) (DB) = 1995 (2) Arb. LR 348). In that case the Court was considering whether there is a similarity between the two trade marks "HITACHI" and "HITAISH". The Court, after considering the facts and circumstances of the case and the various decisions of this court as also of the Supreme Court held that the question as to whether there is a similarity between the two trade marks has to be approached from the point of view of an average man with imperfect memory and that even though the two trade marks, one written in English and the other written in Hindi may not be visually similar because of the difference in script but undoubtedly there is a marked phonetic similarity and therefore, the words "HITACHI" and "HITAISHI" are pronounced almost in the same way and an average or ordinary purchaser will not be able to know the difference between the two when he goes to the market to buy the said product. This is likely to cause deception and confusion in his mind. It is further held that to the purchasers and traders these sound alike and they would 2 be pronounced in the same way, and therefore, applying the test of ear the court was of the view that there is real danger of deception and confusion beings caused by the two marks because of the similarity in the two marks "HITACHI" and "HITAISHI".
11. Having stated briefly the law on the subject have relevance to the facts of the case, let me now test the arguments of the counsel for the parties by the touchstone of the principle enunciated by the courts.
12. The specific case of the plaintiff is that the plaintiff is the registered proprietor of the trade mark "LAKME" and the word is registered in the name of the plaintiff w.e.f. 1951, whereas the trade mark "LIKE ME" of the defendants is stated to be used from the year 1988 as stated by the defendant in their written statement. The counsel for the defendants during the course of his arguments stated that it is the specific case of the defendants in the written statement itself that the defendants have nothing to do with the trade mark "LAKSME" & "SWEETY DESIGNER" and that the said trade marks are not being used by the defendants. The defendants however, admit of using the trade mark "LIKE ME". But according to the said defendants the said trade mark "LIKE ME" its get-up, design and colour scheme and over-all appearance is different from, the product of the plaintiff and accordingly there can be no action of any passing off in respect of the said article. Therefore, it is necessary to find out as to whether the trade mark "LIKE ME" adopted by the defendants is phonetically similar to the registered trade mark "LAKME" of the plaintiff and the use of the former is likely to cause deception and confusion in the minds of the traders and general public inasmuch as the goods of the defendants would be taken as the goods of the plaintiff. The counsel for the defendants submitted that there is no phonetic resemblance between the two words and that in the word "LIKE ME" there are altogether six letters as against five in the trade mark of the plaintiff "LAKME". Further there is a hyphen in between the words 'LIKE' and 'ME'. The words "LIKE ME" coined by the defendants actually convey a message and therefore, there could be no confusion and deception.
13. The two words with which we are concerned in the present case although may convey a different meaning and also not contain the same letters yet in my opinion, both the words bear a close resemblance to the ears. When both the words are articulated, it would be difficult for an ordinary prudent man to distinguish between the two sounds produced by the two words. Applying the test of phonetic resemblance as laid down by the Supreme Court I am of the view that there is a striking resemblance between the two words and there is a real danger of deception and confusion, being caused by the marks in view of the similarity and affinity of sounds between the words "LIKE ME" and "LAKME".
14. The counsel for the defendants also submitted that there is a delay of about 4 years in the plaintiff approaching this court inasmuch as the admitted knowledge of the plaintiff of defendant's using he trade mark "LIKE ME" was in the year 1988 whereas they have approach this court only in the year 1993. The counsel submitted that from the statement made in the plaint with regard to increase in the sale of the plaintiff during the course of the years from 1988-89 onwards it appears that the sale of the plaintiff has gone on increasing every year. Even assuming that the cause of action for instituting the present action was in June 1992 as stated by the plaintiff in the plaint when it received a report, the suit came to be filed only in the month of May, 1993, as stated by the defendant and therefore, there is apparent delay of about one year even if the case of the plaintiff is taken in to consideration. In support of his submission the counsel relied upon the decision of this court in Sri Gopal Engineering & Chemical Works v. M/s. POMX Laboratory (AIR 1992 Delhi 302). In that case unexplained delay of 14 months in filing the application and failure to establish adverse effect on sales, improper and sinister motive on the part of infringer was held to be sufficient grounds for refusing the injunction.
15. Counsel for the plaintiff, on the other hand relied upon the Division Bench decision of this court in Shri Swaran Singh Trading and Appliances v. M/s. Usha Industries (India) New Delhi and anothers, , and also in the case of N. R. Dongre and another v. Whirlpool Corporation and another (1996 (2) Arb. LR. 488 (SC)), disposed of on 21.4.1995. The counsel further relied upon the decision of this court in M/s. Hindustan Pencils Ltd. v. Indian Stationery Products .
16. In Swaran Singh Trading case (supra) it was held by this court that since the exclusive right of user of a registered trade mark conferred by the Act cannot be lost by delay, general principles governing grant of injunction in other types of cases might not hold good while dealing with the case of infringement of the above statutory right and normal delay in seeking relief might not non suit the proprietor of the registered trade mark. It was further held that if it was a case of a similar as opposed to the same mark, the concurrent user coupled with delay might be a good ground for refusing an injunction.
However, on the facts of the present case I find that the defendant started selling the cosmetics under the name "LIKE ME" on their own admission from the year 1988. It is the specific case of the plaintiff that the plaintiff came to know about the offending activities of the defendants in the third week of June 1992 and immediately thereafter they got the matter inquired into through their agency and immediately on receipt of the report thereto they filed the suit. In the aforesaid facts, therefore, it cannot be contended by the defendants that there was inordinate delay on the part of the plaintiffs in filing the present suit.
17. The counsel for the defendants also raised a contention with regard to the plaintiff not coming to the court with clean hands. The counsel was drawing my attention to certain technical flaws in filing the suit about verification having been made much earlier than the date it was filed and such similar objections. However, on perusal of the record I don not find the said objections as having any merit, nor the said objections have any relevance and/or material for the purpose of deciding the injunction application.
18. On an over all view of all the aforesaid factors I am of the view that the interim injunction passed by this court on 13.5.1993 is required to be confirmed and I accordingly confirm the same.
19. It is made clear that the decision give herein is my tentative and prima face view of the facts and circumstances of the case for the purpose of deciding the aspect of grant of interim injunction and that the same would not cause any prejudice to the case of the defendants in the trial. Observations made by me shall not be treated as the final opinion on the submissions of the counsel for the parties during the trial and also while disposing of the suit finally. The I.A. No. 4788/1993 accordingly stands allowed and I.A. No. 5466/1993 stands dismissed.
20. S. No. 1083/1993.
21. List on 18.9.1996 for further orders.