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JUDGMENT J.B. Goel, J.
(1) By this order two applications, (1) I.A. 6973/96 under0rder39 Rules I and 2, Civil Procedure Code filed by the plaintiff for ad interim injunction and (2) I.A. 7896/ 96 under Order 39 Rule 4, Civil Procedure Code filed by the defendant for vacating the ex parte interim injunction granted on August 2, 1996 are being disposed of.
(2) On the aforesaid application of the plaintiff an ex parte injunction was granted on 2nd August, 1996 restraining the defendant from manufacturing, selling, offering for sale or distributing tea with the trade mark Super Cup or any other trade mark deceptively similar thereto.
(3) The plaintiff has filed a suit for injunction, passing off action with other ancillary reliefs.
(4) The case of the plaintiff is that they have been carrying on business inter alia manufacturing and selling various brands of tea and in the year 1988 they had adopted and started selling tea under new trade brand Super Cup and since then they have been advetisiing their tea with this trade mark incurring huge expenditure on advertisement of this product. Such expenditure during 1988-89 was of Rs. 27 lacs which has increased to Rs. 285 lacs in the year 1995-96. Their goods enjoyed good reputation and goodwill. During these years their sale figures in quantity and value under this trade mark have also increased from Rs. 13 lacs to Rs. 1,898 lacs and 23 tons to 2184 tons. Year-wise break up of sales and expenditure has been given in the plaint. It is alleged that in December, 1995 they came to know that the defendant was advertising and offering for sale tea in packages using similar or deceptively similar trade mark Super Cup Tea and thereby dishonestly copied and adopted the plaintiff's trade mark wrongfully with a view to trade upon the plaintiff's goodwill and reputation enjoyed on account of their said product being of superior quality and sold under the trade mark Super CUP. On coming to know this fact plaintiff had sent a cease and desist notice dated January Ii, 1996 to the defendant but the defendant has failed to stop selling their goods under the offending trade mark and is fraudulently and wrongfully selling and passing off their goods as those of the plaintiff and thereby causing irreparable loss, harm and injury to the plaintiff's reputation and business. On the application filed by the plaintiff an ex parte ad interim injunction was granted on 2nd August, 1997.
(5) The defendant filed the aforesaid application (I.A. No. 7896/96) under 0rder39 Rule 4, Civil Procedure Code for vacation of that injunction. Affidavits and detailed written statement contesting the suit and the application of the plaintiff have also been filed.
(6) It is alleged that the plaintiff had applied for registration of the trade mark Super Cup Tea City Label with the device of Cup and Saucer which was advertised in Trade Mark Journal No. 1117 of 16.12.1995, page 2668 wherein they had given a disclaimer in respect of the words "SUPER CUP" and the device of Cup and SAUCER. The fact of disclaimer has not been disclosed in the plaint and this is a material concealment and misrepresentation of facts made which disentitles them to the equitable relief; that in view of the aforesaid disclaimer the plaintiff cannot claim any monopoly in the use of trade mark Super CUP. Even otherwise the trade mark of the plaintiff is Tea City Label and not Super CUP.
(7) It is also alleged that the defendant's predecessor M/s. Shah Shantilal & Co. had adopted and been using the trade mark Girnar with a particular colour scheme and device in respect of tea since 1975 till 1982-83 and from 1983-84 to 1992- 93 M/s. Girnar TEA'S succeeded the previous proprietor and thereafter the defendants have been using this trade mark as successors. The trade mark Girnar has been registered after being advertised on 1.6.1987. They have given sale figures of the product since 1974-75 and for the years 1993-94 to 1995-96 goods of the value of Rs. 1.04 crores. Rs. 46 crores and over Rs. 68 crores have been sold. It is claimed that their tea is of superior quality, is being exported and they have been awarded meritcerti ficates by the Government of India during the years 1992-93 and 1994-95. That in July, 1995 the defendant started selling a new brand of their superior quality of tea under the brand name Super Cup Tea with the device of Cup and Saucer under their trade mark Girnar used on their cartons and packages.
(8) Besides these pleas, broadly stated their defense is, (1) that the Super Cup is not the trade mark of the plaintiff, (2) that the plaintiffs have failed to establish that Super Cup has become exclusively associated with their goods, (3) the words Super Cup are inherently incapable of distinguishing the goods of the plaintiff being laudatory epithets, descriptive words and common to the trade (public juris), (4) Super Cup is not the essential feature of the plaintiff's trade mark Tea City Label, (5) that the defendant's trade mark is Girnar and Super Cup Tea is their brand name which is used alongwith their registered trade mark Girnar and the use of their mark Girnar and other features distinguish their goods from those of the plaintiff's use of the words Super CUP.
(9) Plaintiff has filed replication, reply to the defendant's application, several supporting affidavits and documents. They have admitted that they had applied for the registration of the trade mark Super Cup Tea City Label in which they had given the disclaimer of the words Super Cup and device of cup and saucer, but it is immaterial as the suit of the plaintiff is an action for passing off in which disclaimers of no consequence. Even otherwise relevant documents had been filed alongwith the suit and as such the question of concealment or misrepresentation of facts does not arise. Defendant has also filed affidavit, rejoinder affidavit and several documents.
(10) It is not disputed that the plaintiff had applied for registration of trade mark Super Cup Tea City Label in class 30 which was advertised in Trade Mark Journal No. 1117 on 16.12.1995 at page 2668 with the following disclaimer: "REGISTRATION of this trade mark shall give no right to the exclusive use of the word Super Cup and the sensible new way to buy tea and device of Cup and SAUCER." A copy of relevant extract of the Journal was filed alongwith the plaint and the application at the initial stage. (11) Suit of the plaintiff is an action for passing off and not for infringement of trade mark Super CUP. In the interim order passed on 2nd August, 1996 there is nothing to show that it was represented to or it was so understood by the Court that the trade mark Super Cup was a registered one. In an action for passing off disclaimer in respect of a trade mark or part of the trade mark is wholly irrelevant.
(12) Section 17 of the Trade and Merchandise Marks Act, 1958 (for short the Act) empowers the Tribunal registering the trade mark to require the applicant as a condition of the trade mark being registered to disclaim any right to the exclusive use of all or any portion of such matter. Proviso to Section 17 provides that no disclaimer shall affect any rights of the proprietor of a trade mark except as arise out of the registration of the trade mark in respect of which the disclaimer is made. Passing off action is a common law remedy based on use of a trade mark and not upon its registration as a trade mark. Old Trade Marks Act, 1940 contained provision similar to Section 17 of the present Act in Section 13 of that Act with similar proviso.
(13) The scope and effect of the disclaimer as contained in proviso to Section 13 of the old Act has been explained by the Supreme Court in the case of Registrar of Trade Marks v. Ashok Chander Rakhit, as under: "THE real purpose of requiring a disclaimer is to define the rights of the proprietor under the registration so as to minimise, even if it cannot wholly eliminate, the possibility of extravagant and unauthorised claims being made on the score of registration of the trade mark............ That proviso preserves intact any right which the proprietor may otherwise under any other law have in relation to the mark or any part thereof. The disclaimer is only for the purposes of the Act. It does not affect the rights of the proprietor except such as arise out of registration. That is to say, the special advantages which the Act gives to the proprietor by reason of the registration of his trade mark do not extend to the parts or matters which he disclaims. In short, the disclaimed parts or matters are not within the protection of the statute. That circumstance, however, does not mean that the proprietor's rights, if any, with respect to those parts or matters would not be protected otherwise than under the Act. If the proprietor has acquired any right by long user of those parts or matters in connection with goods manufactured or sold by him or otherwise in relation to his trade, he may, on proof of the necessary facts, prevent an infringement of his rights by a passing off action or a prosecution under the Indian Penal Code."
Thus disclaimer is of no consequence and does not affect the rights of the plaintiff in the present case for an action of passing off. It thus cannot be said that the plaintiff has suppressed or has not disclosed any material facts which may disentitle them for the relief of injunction. Even otherwise copy of disclaimer as published in Trade Mark Journal was filed in Court and copy thereof was also supplied to the defendant at the very initial stage. This objection thus has no merit.
(14) The other contentions raised on behalf of the defendants in opposition to the interim application are: (1)The words Super Cup are laudatory epithets or descriptive words and are not inherently incapable of distinguishing the goods of the plaintiff. Also that the words are in common use (Public juris), plaintiff cannot claim exclusive rights or monopoly in such words. (2) Super Cup is not the most essential feature of the plaintiff's mark and defendants have sufficiently distinguished their goods by using their trade mark Girnar alongwith the words Super Cup, and Girnar being their trade mark. (3) Plaintiffs have failed to establish that Super Cup has become exclusively associated with the plaintiff's goods in question.
A mark, as defined by Section 2(l)(j) of the Act, includes a device, brand, heading, label, ticket, name, signature, word, letter or numerical or any combination thereof.
(15) The meaning and function of trade mark was explained by Bowen, L.J. in re: Powell's Trade Mark (1893) 10 Rpc 200; as under : "7.A trade mark means a mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use that mark. The ' function of a trade mark is to give an indication to the purchaser or a possible purchaser as to manufacture or quality of the goods, to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market."
(16) This has been followed in Sumnat Prasad v. Sheo Janan Prasad, . Section 9 of the Act provides for registration of a Trade Mark. The object of Section 9 is to protect the legitimate interests of the trade and public in the use of words and devices legitimately used by them in relation to their wares. It provides that a mark in order to be registrable in Part 'A' must be distinctive, that is, adapted to distinguish the goods of the applicant from those of others and for registration in Part 'B' a mark must be either distinctive or capable of distinguishing the goods of the applicant from those of other traders. A trade mark is recognised as a kind of incorporeal property - the property consists in the right of the owner to use the mark in relation to specific goods and under certain circumstances to prevent others from using it. It can be acquired by use of the mark on specific goods or by registration under the statute in respect of particular goods or class of goods.
(17) Under the common law when a person designates his wares or commodities with a particular trade mark, he acquires the right to prevent others from selling similar wares which are not his, marked with that trade mark, in such a manner as would lead to be calculated to lead the public to believe that they are the manufacturer to which that trade mark was originally applied.
(18) Thus it is an essential condition for constituting property in a trade mark that it should have been used by the proprietor in his business upon or in connection with some vendible articles.
(19) Referring to the common law of Trade Marks in U.K. before first Registration Act was passed. Lord Diplock in "G.E."Tm (1973) Rpc 297 (at pages 325 - 26) observed: "The right of property in a Trade Mark had special characteristics. One was that it was a monopoly, that is to say, it was a right to restrain other persons from using the mark. But it was an adjunct of the goodwill of a business and incapable of separate existence dissociated from that goodwill. To be capable of being the subject matter of property a trade mark had to be distinctive, that is, to say it had to be recognisable by a purchaser of goods to which it was affixed as indicating that they were of the same origin as other goods which bore the same mark and whose quality had engendered goodwill. Property in a trade mark could, therefore, only be acquired by public use of it as such by the proprietor and was lost by disuse." A trade mark has to be distinctive one.
(20) However, when the trade mark consists of a name of a person or of a place, or a word or device descriptive or laudatory of the goods, which is prima facie not distinctive in relation to the goods to which it is applied, it cannot be said that the person who uses the mark, by virtue of such user alone, acquires a right of property in the Trade Mark so as to entitle him to restrain others from the use of it on similar goods. In such a case, it should be established by evidence that the mark has, as a result of sufficient use, become distinctive and come to denote the goods of the trader using it and none else.
(21) The function of a trade mark thus is to distinguish the goods of one trader from those of others. A word which is apt for describing any character or quality of the goods can no doubt distinguish goods possessing that particular character or quality from goods which do not possess that character or quality. But it is obviously not suitable for describing the goods of one trader from those of another, for if it is apt to describe the goods of A, it is likely to be apt to describe the goods of B also. The more apt a word is to describe the goods of a manufacturer the less apt it is to distinguish them. Thus the words which are descriptive of goods are not considered prima facie distinctive ( Para 8.30 at page 116 Trade Mark Law of P. Narayanan 4th Edition.) (22) No one has any right in ordinary dictionary words. In order that a trade mark may acquire reputation amongst the general public, what is necessary is that the reputation should attach to the trade mark, it should appear that the public associated that trade mark with certain goods. The reputation is the reputation of the trade mark in relation to particular goods and not that of the maker of the goods bearing that trade mark. A trade mark may acquire a reputation in connection with the goods in respect of which it is used and a buyer may not know who the manufacturer of the goods is. Corn Products Refining Company v. Shangrila Food Products Ltd., .
(23) The Privy Council in Standard Ideal Co. v. Standard Sanitary Manufacturing company, 1910(27) Rpc 789 has reiterated the law that "a common English word having reference to the character and quality of the goods in connection with which it is used, and having no reference to anything else cannot be an apt or an appropriate instrument for distinguishing the goods of one trader from those of another. Distinctiveness is the very essence of a trade mark."
(24) On behalf of the defendant a number of decided cases have been referred to show that laudatory or descriptive marks have not been given any protection by the Courts.
(25) In the Standard Ideal Company v. Standard case,(supra) plaintiff was the registered owner of the trade mark "Standard". Defendant also got a trade mark consisting of the word "Standard" registered in respect of enameled bath tubs, wash stands, sinks etc. and started selling their goods under that mark. Plaintiff took action for infringement and for passing off. Dismissing the action, the Privy Council held that the word "Standard" is a common English word and signifies that the goods in connection with which it is used are of high class or superior quality and acknowledged merit and descriptive of the goods and was not apt or appropriate instrument for distinguishing the goods of one trader from those of another. It was held to be not a valid trade mark. It was also found that the word had not acquired a secondary signification as goods manufactured by the plaintiff-Company nor the action of the defendant in adopting the trade mark was calculated to deceive or to lead customers to believe that in buying the defendant's goods they were buying the goods of the plaintiff.
(26) In Cellular Clothing Company v. Maxton & Murray, (1899) 16 Rpc 397 (H.L.) the mark 'Cellular' was held to be descriptive name in respect of particular cloth or clothing and could not be monopolised by any trader and the appellant had failed to establish that an ordinary word in English language properly applicable to subject matter of the sale was one which had so acquired a technical and secondary meaning that it could be excluded from the use of everybody else. Action for injunction and passing off failed.
(27) In Henry Thorne & Co. Ltd. v. Eugen Sandow and Sandow Ld. (1912) Rpc 440 the trade mark 'Health' registered for Cocoa, Chocolate and confectionery goods was removed from the Register as being a commendatory epithet and not distinctive.
(28) In W.N. Sharpe Ld. v. Solomon Bros. Ltd., 32 (1915) Rpc (15) the mark 'Classic' registered for Christmas and greeting cards on a motion to rectify was held to be primarily laudatory epithet and incapable of being treated as adapted to distinguish or of acquiring secondary meaning.
(29) In Parsons Bros. & Co. v. John Gillespie & Co., (1898)15 Rpc 57, plaintiffs were the only persons who had sold a preparation of oats under the name "Flaked Oatmeal" for 5 to 6 years when the defendant started selling similar preparation under the same name. Injunction was refused as the expression was an appropriate word descriptive of the goods.
(30) In McCain international Ltd. v. Country Fair Foods Ltd., (1981) Rpc 69(CA), the plaintiff in 1979 introduced a novel product-Chips which could be cooked in the Oven or baked under the grill and sold the same under the name "McCain Oven Chips". Subsequently, the defendant wanted to launch similar products under the names "Country Fair Oven Chips" and "Birds Eye Oven Chips". Interlocutory injunction was refused on the ground that the word 'Oven Chips' were descriptive of the product.
(31) In Salaried Persons Postal Loans Ltd. v. Postal and Salaried Loans of Glasgow Ltd., 1966 R.P.C. 24 it was held that the petitioner's name was a purely descriptive one applied to a business recently set up in Glasgow and as the petitioners were unable to aver any actual injury to their business except the use of the respondents' name and balance of convenience was also in favour of the respondents being allowed to carry on their business under their present name, interim injunction was recalled.
(32) In Office Cleaning Services Ld. v. West minister Window and General Cleaners Ld., 63 (1946) R.P.C. 39 plaintiff and defendant both carried on same class of business - plaintiff under the style "Office Cleaning Services Ld." and the defendant adopted the name as "Office Cleaning Association". It was held that the names of the business style were descriptive and had not acquired secondary meaning and so the plaintiff could not claim a monopoly in such a title.
(33) In World Athletic & Sporting Publication Ltd. v. A.C.M. Webb (Publishing) Co. Ltd., 1981 F.S.R. 27, plaintiffs magazine "Athletic Weekly" was being published for a number of years. Defendant started publishing a magazine called "Athletics Monthly". It was held that the word 'Athletics' was descriptive which could not be monopolised and also the two magazines were different in their size, price and contents and so there was no possibility of confusion. Injunction was refused.
(34) In M/s. Johnson & Johnson & Anr. v. Christine Holden India Pvt. Ltd. & Anr., (1986) Iplr 37 plaintiff sold sanitary towels under the mark "STAYFREE". Defendant started using these words but in quite different packings and their label contained their trade mark 'COMFIT ALWAYS'. Interim injunction was refused as it was found that there was no likelihood of causing deception or confusion or mistake in the minds of the customers, being literate or semi literate and not illiterate ladies.
(35) In Bayer's Appln. 64(1947) Rpc 125 the applicants applied for registration of the word mark "Diasi" in part A in class 5 in respect of pharmaceutical preparation namely Sulphadizine. The application was opposed by the proprietors of the mark 'Alasil' registered in class 3 in respect of Chemical substance used in medicines since 1928. Opposition was dismissed on the ground that there was too remote likelihood of confusion. This was not a case of passing off action.
(36) In Carew Phipson Ltd. v. Deepay Distilleries Ltd., 1995 Iplr 65 (Bom.) plaintiff's products were asked by customers under the trade mark "Blue Riband Gin-N-Lime" and "Blue Riband Gin-N-Orange" whereas defendant's product being English "Duet Gin-N-Lime" and "Duet Gin-N-Orange". It was held that the words are not invented ones but common words or slang terms and there were several other similar preparations in the market. Defendant's products were also held to be not deceptively similar taking into account the educated and discerning type of customers buying the product. Interim injunction was refused.
(37) In Kellogg Company v. Pravin Kumar Bhandabhai, 1996 (16) Ptc 187 (Delhi DB) plaintiff Company were selling Corn Flakes with the word "KELLOGG'S CORNFLAKES" described on the cartons. Defendant also sold corn flakes under the title "AIMS Aorist Corn FLAKES" written on their Cartons, It was observed that the words "Kellogg's" and "AIMS Aorist" were prominently displayed on their cartons besides other distinguishing features and as such there was no confusion. The customers being of middle class or upper middle class and fairly educated, the likelihood of confusion or deception was ruled out. The words Corn Flakes being descriptive words, interim injunction was refused.
(38) In Johnson A. Wolfing v. Chemical Industrial & Pharmaceutical Labs. Ltd., it was held that there was no deceptive similarity in the words 'CIPLAMINA' and "COMPLAMINA".
(39) In Competition Review (P) Ltd. v. N.N. Ojha, 1996(16) Ptc 124, it was held that the word "Competition" is a generic term and no one can claim any right in its exclusive use. Interim injunction was refused.
(40) The plaintiffs has also relied on some case law. In Reddaway v. Benhem, (1896)13 Rpc 218, plaintiff had largely advertised and sold large quantity of 'Camel hair' belting and had acquired very high reputation in it. The plaintiffs alleged that "Camel-hair Belting" meant exclusively their goods. The defendants who also started using the same mark alleged that their belting was made substantially of Camel hair, and they were entitled to so describe it. At the trial, the Jury found that "Camel-hair Belting" meant the plaintiff's belting; and the defendants by so describing the belting led the purchasers to believe it was the plaintiffs' belting, and endeavoured to pass off their goods as the plaintiffs. On this finding of the Jury, the House of Lords held that when words which are descriptive of an article have come to denote the goods of a particular manufacturer, he is entitled to restrain others from using them so as to deceive the purchasers, notwithstanding that the words are a description of the goods. Plaintiffs were held to be entitled to injunction.
(41) In Powell v. The Birmingham Vinegar Brewery Company, Ld" 14RPC720, plaintiffs brought an action for passing off against defendant's use of the name "Yorkshire Relish" used by the plaintiffs for over 34 years. It was held by the Court of Appeal that Yorkshire Relish was not a descriptive name and also that the defendants, in effect, were, by the use of the name "Yorkshire Relish", passing off and enabling others to pass off the defendant's goods as and for the plaintiff's goods; plaintiffs were held entitled to an injunction.
(42) Brooke Bonds India Ltd. v. Raj Kamal Enterprises, 1989 P.T.C. 237 (Madras), this was not a case of passing off on the ground of use of trade mark.
(43) In Carlsberg Bryggerieirne Og Tutorages Brigadier De Forone De Brigadier Aktieselskabet and Carlsberg Scottish Importers Ltd. v. Tennent Caledonian jBrewcncsLtd.,(1972) 28 Rpc 847,plaintiffs brought an action for passing off against use of the word "Special Brew" used to describe a very strong lager claiming that this name had become distinctive of their product having been used since 1952 (18 years before the action was brought). The respondent in answer alleged that "Special Brew" was a description applied in this trade to a very strong lager. It was held that the petitioners have made a prima facie case for passing off and the balance of convenience was also in their favour. Interim injunction was confirmed.
(44) In Charles Bayerv. J. andL. Baird, 15 Rpc 615 plaintiff brought an action for passing off against use of the letters "C.B." claiming to be owner of the Trade Mark "C.B. "in respect of Corsets against the defendant who started using the same letters "C.B." with the word "& Co." added in loop of the letter "B" in small letter. It was held that the defendant marked their corsets with "C.B. & Co." in such a manner as to be calculated to mislead the purchasers. Injunction was granted inspite of the fact that the plaintiff had disclaimed the exclusive right to the letters "C.B.". It was held that the word "C.B." was an arbitrary sign and was not descriptive.
(45) In O.K. Bus & Baggage Co. v. OX. Transfer & Storage Co., 63 Oklahoma Reports 311, an American case on use of trade name, plaintiff was conducting a business of warehouseman and was not engaged in any bus or baggage business and had used large amounts on advertestings. Defendant also started similar business under the name O.K. Bus & Baggage Company very near to the business premises of the plaintiff and started advertising under this name. Plaintiff brought an action seeking protection in its business on the ground that the letters "O.K." constitute a trade name and that the defendant was guilty of its infringement and of unfair competition.
(46) American Law provided that a trader cannot exclusively appropriate any designation or part of a designation which relates only to the name, quality or description of the thing or business or the place where the thing is produced or the business carried on. Objection was taken to the use of the letters "O.K." . English and American authorities were referred to. Injunction was granted holding : "THAT all practices between business rivals which tend to engender unfair competition are odious to the law and will be restrained by the Courts, for no man will be permitted to make use of signs or tokens which serve to confuse the identity of his business with that of another so as to mislead the public and divert business from his competitor to himself. Where a person intentionally uses signs or advetising or other devices or symbols in imitation of those there-to-fore adopted by a business rival, for the purpose of deceiving the public and obtaining for himself the benefits properly belonging to his competitor, by reason of adoption of such sign, symbol or advertising, the use of such imitation will be restrained". 47. Every case depend son its own particular facts and circumstances. Decided cases are of value only in so far as they provided the necessary principles to be followed, which a re often referred to as rules or tests of comparison, and the factors to be taken into consideration. Further it may be borne in mind that there are some rules which are applicable to all kinds of marks, while some are appropriate only to word marks and others to device marks or business names. On question of fact no previous case can bean authority for any other case, each case must depend upon its own facts. (Amritdhara Phanacy v. Satya Deo Gupta, ; Parle Products v. J.P. & Co., and Cola Cola v. Pepsi Cola, 59 Rpc 127).
(48) Dealing with the words "adapted to distinguish". Cozens Hardy M.R. in the Perfection's case-(In crossfield's application (1909) 26 R.P.C. 837 observed as under: "THERE are some words which are incapable of being so adapted such as 'good', 'best' and 'superfine'. They cannot have a secondary meaning as indicating only the goods of the applicant. There are other words which are capable of being so adapted and as to such words the Tribunal may be guided by evidence as to the extent to which use has rendered the word distinctive. It is easy to apply this paragraph to geographical words, and it is possible to suggest words having direct reference to character or quality which might be brought within it. But an ordinary laudatory epithet ought to be open to all the world and is not, in my opinion, capable of being registered..... Whether in any particular case the word is or is not something more than a laudatory epithet is for the Tribunal to decide...."
In the same case, Fletcher Moulton, L.J. has observed that in case of peculiar collocation of words it might be satisfied with reasonable proof of acquired distinctiveness even though the words taken separately might be descriptive words in common use.
(49) In Mohd.Rafiq & Am. v. Modi Sugar Mills Ltd., , a Division Bench of this Court has held that "the reference to the character and quality" should be direct and plain and not remote and far-fetched. Likewise, the word, which is sought to be construed as laudatory, should have obvious signification of praise and not one out of which an inference of praise has to be spelt out by a laboured process."
(50) In Registrar of Trade Marks v. Hamdard National Foundation (India), , it was held that there may be some words which though they may have reference to the character and quality of goods yet have over a course of period, become associated with the goods of a particular trader and in that sense they would certainly be capable of distinguishing the goods of a particular trader (51) And further held that "there are words which have a direct relation to the character and quality of goods which nevertheless may lose their primary meaning and acquire in a particular trade a secondary meaning." In that case the word "SAFI" a preparation meant for purification of blood was refused to be registered by the Registrar on the ground of being descriptive word having direct reference to the character and quality of the goods and not inherently capable of distinguishing the applicant's goods. Reversing the order of the Registrar it was held that the word "SAFI" had been used since long, there has not been use of the same name by another person and as there has been no confusion or deception involved the trade mark was ordered to be registered.
(52) "THE legal position, thus, is that where the trade mark is a word or device descriptive or laudatory of the goods which is prima facie not distinctive in relation to the goods to which it is applied, it cannot be said that a person by virtue of its use alone, acquires a right of property in the trade mark so as to entitle him to restrain others from the use of it on similar goods. In such a case it should be established by evidence that the mark has as a result of sufficient use, become distinctive and come to denote the goods of the trader using it and nothing else. Thus, length of user will be a material factor for the mark to become distinctive.
(53) A trade mark identifies the product, its origin and also its quality. And a trade mark maybe used to indicate not only that the goods are of a particular maker but are goods of that maker of a particular kind or quality. A trader can have more than one trade mark or brands in respect of the same goods but of different kind or quality.
(54) As held in Ruston Hornby Ltd. v. Zamindari Engineering Company Ltd., , in a passing off action, the issue is "is the defendant selling goods so marked as to be designed or calculated to lead the purchaser to believe that they are the plaintiff's goods".
(55) Recently, the Supreme Court in the case of Wander Ltd. v. Antox India (P) Ltd., 1990 (Supp) Scc, 727 (at Page 734) has summed up the law on this aspect as under: "AN infringement action is available where there is violation of specific property right acquired under and recognised by the statute. In a passing-off action, however, the plaintiff's right is independent of such a statutory right to a trade mark and is against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing-off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. The action is regarded as an action for deceit. The tort of passing-off involves a misrepresentation made by a trader to his prospective customers calculated to injure, as a reasonably for seeable consequence, the business of goodwill of another which actually or probably, causes damages to the business or goods of the other trader."
(56) It follows that once it is established that the defendant's action will lead to passing-off his goods as that of the plaintiff's, it can be assumed that the natural consequences of the defendant's action will be to cause damage to the plaintiff's business.
(57) Coming to the facts of the case. The plaintiff in support of its case has filed an affidavit of Shri R. Ramamoorthy who is Senior Manager (Legal) and duly authorised representative of the plaintiff who has deposed that plaintiff has been selling the tea under the trade mark Super Cup since 1988, has spent heavy expenditure on its advertisement; giving the figures for the years 1988-89 to 1995- 96 showing progressively increase in such expenditure from Rs. 27 lacs to Rs. 285 lacs. He has also stated about the volume of sales during the said period which has increased in value and quantity from Rs. 13 lacs to Rs. 1898 lacs and 23 tonnes to 2184 tonnes. In his second affidavit dated 16.9.1996 he has also stated that the plaintiff are the proprietors of the trade mark 'TEA CITY' which is their umbrella mark and they sell various brands of tea under this umbrella. Names of such brands have been given and the brand /name Super Cup is one of them. According to him, Super Cup is their most popular tea brand among the traders and the public. The plaintiff has placed on record several labels showing various brand names of tea used under the Umbrella mark 'TEA CITY' and also copies of some vouchers/bills/memos showing sale of tea and letters from various parties for the purchase of tea and advertisement/publicity material/cartons/ pouches bearing the mark Super CUP. In the labels the mark Super Cup is prominently displayed in capital letters over a circle which contains a cup and saucer on a triangular board and the words 'TEA CITY' appear almost at the bottom of the label which do not give it that prominent position.
(58) The plaintiff has also filed affidavits of several dealers from Delhi and Faridabad who have stated that they have been purchasing various brands of tea including the brand Super Cup from the plaintiff for the last several years (some from 5 years, some from 4 years and some from 3 years etc.); that they place orders on the plaintiffs under this particular brand name and the retailers/customers from them also ask for the Super Cup brand of tea. According to them, this mark is associated with the plaintiff's goods.
(59) The defendant has filed two affidavits dated 22.8.96 and 30.9.96 of Shri Harinder Kumar Shantilal Shah, its Director. Broadly the pleas taken are : (1)because of disclaimer given plaintiff cannot claim monopoly in the words; (2) that the words 'SUPER' and 'CUP' or 'CUP with SAUCER' arc in common used by traders; (3) main business of the plaintiff is manufacturing and selling cigarettes and not tea; (4) advertisements are in nature of posters and not in any newspaper; (5) denial of the expenses incurred on advertisement; (6) denial of the sale figures given by the plaintiff; and (7) the sale of tea by defendant from 1983 under the name of Super Bop under Girnar trade mark by them or their predecessor-in-interest.
It is admitted that they or their predecessors-in-interest have been using the trade mark Girnar since 1975 and started using the trade mark Super Cup tea with the device of Cup and Saucer in July, 1995.
(60) It may be mentioned that in the present case the plaintiff's trade mark is Super CUP. The word 'SUPER' no doubt is a laudatory word and would not have secondary meaning. However, this word is not used alone. It has been used along with the word cup. The word has to be considered as a whole and not separately. The words like Super Taste, Super Flavour, Super Tea, Superfine Tea, Super Quality Tea, may have direct reference to the character or quality of tea and can have no secondary meaning even by long user. But the words Super Cup have no such direct reference to the character or quality of tea. Any indirect reference, if at all there is, will not make it a laudatory word or incapable of having secondary meaning and as such it cannot be said that this mark is a purely laudatory or descriptive one. Assuming that it may have indirect reference to the quality or character of the goods in that case it is capable of acquiring secondary meaning by its use by traders as well as customers/public. At this stage, the material placed on record by the parties cannot be subjected to detailed examination. The material placed on record prima facie shows that the plaintiff has been selling tea inter alia under the brand name of Super Cup with the device of cup and saucer under a umbrella trade mark 'TEA CITY' since 1988. They have incurred substantial amount on its advertisement and their sales are quite substantial and this trade mark identifies the goods namely, tea as the goods of the plaintiff. The defendants, on their own showing, have been selling their similar goods under the trade name of Girnar since 1975 till July, 1995, when they added the word 'SUPER CUP' tea and the device of cup and saucer alongwith the trade mark GIRNAR. There is no plausible explanation available from the defendant's side for adopting this new trade mark/brand name Super Cup tea with the device of cup and saucer which was the mark and device used by the plaintiffs since 1988. Plaintiff and defendants both being engaged in the trade of tea cannot be said nor there is any material placed on record to show that the defendants were not aware of the use of the trade mark 'SUPER CUP' with device of cup and saucer before use of this mark by them. Defendant's use of the words 'SUPER Cup Tea' and the device of cup and saucer also are displayed prominently. The basic features of the two marks, possibly have deceptive similarity or are likely to cause confusion among the unwary consumers/customers and the trade. In the absence of plausible explanation, it cannot be said that the defendant has acted honestly. The reasonable inference could be that their sole object is either of actually misleading the public or of taking undue advantage of the business reputation/goodwill of the rival trader, i.e. the plaintiff. It could be that what the defendant is doing is calculated to lead persons to think that the goods of the defendant's are goods of the plaintiff's, (61) Relief by way of interlocutory injunction is granted to mitigate the risk of injustice to the plaintiff during the period the dispute regarding the legal right asserted by the plaintiff is resolved. The principles for grant of temporary injunction are well settled. Recently the Supreme Court in Dalpat Kumar and Anr. v. Prahlad Singh and Ors., has reiterated the same as under: It is settled law that the grant of injunction is a discretionary relief. The exercise thereof is subject to the Court satisfying that: (1) there is a serious disputed question to be tried in the suit and that an act, on the facts before the Court, there is probability of his being entitled to the relief asked for by the plaintiff; (2) the Court's interference is necessary to protect the party from the species of injury. In other words, irreparable injury or damage would ensue, before the legal right would be established at trial; and (3) that the comparative hardship or mischief or inconvenience which is likely to occur from withholding the injunction will be greater than that would be likely to arise from granting it.... Only prima facie case is a substantial question raised, bonafide, which needs investigation and a decision on merits. ..... Irreparable injury, however, does not mean that there must be no physical possibility of repairing the injury, but means only that the injury must be a material one, namely, one that cannot be adequately compensated by way of damages. The third condition also is that "the balance of convenience" must be in favour of granting injunction. .... If on weighing competing possibilities or probabilities of likelihood of injury and if the Court considers that pending the suit, the subject matter should be maintained in status quo, an injunction would be issued."
(62) The House of Lords in Awerican Cyanamd v.Ethicon Ltd.,(1975)RPC513, has held that at this stage the Court has to be satisfied that the claim is not frivolous and vexatious; in other words, that there is a serious question to be tried and it cannot be said that there is no real prospect of succeeding in his claim for a permanent injunction at the trial; it is no part of the Court's function at this stage of the litigation to try to resolve conflicts of evidence on affidavit as to facts on which the claims of either party may ultimately depend nor to decide difficult questions of law which cali for detailed arguments and mature consideration; these are matters to be dealt with at the trial.
(63) As already noticed, strong prima facie case has been made out in favour of the plaintiff which needs serious consideration. Balance of convenience is also in favour of the plaintiff, inasmuch as if both the plaintiff and defendant are allowed to use the trade mark in question, there is bound to be confusion in the trade and among the public which may cause irreparable loss to the business and goodwill of the plaintiffs. The plaintiff has been using the trade mark for the last about 8 years when the present suit was filed whereas the defendantr Started using the impugned trade mark in July, 1995, which according to the plaintiff, they came to know in December, 1995 and immediately a cease and desist notice dated 11th January, 1996 was sent to the defendants; the defendant persisted in continuing to use the same. Defendants are already using another trade mark Girnar for the last over 20 years. They are not going to suffer such irreparable injury if they are not allowed to use this trade mark during the pendency of the suit. On the other hand, it would be maintaining the status quo existing not long before the present suit was filed after the alleged infringement of their right was discovered by the plaintiff. In my view, the three conditions required for grant of temporary injunction are satisfied and I do not find any such conduct of the plaintiff which may prima facie disentitle them to the interim injunction.
(64) The result is that the plaintiff's application I.A. No. 6973/96 is allowed and defendant's application I.A. No. 7896/96 is dismissed. The interim order dated 2nd August, 1996 is hereby confirmed. Costs in the suit will be the costs for these proceedings. Nothing stated herein shall be deemed to be the expression of final opinion in any way on the merits of the case.