Manmohan Singh, J.@mdashBy this order, I propose to dispose of the present application bearing I.A. No. 5379/2011 filed under Order XXXIX Rule 1 and 2 read with Section 151 of Code of Civil Procedure, 1908 as well as for infringement of trade mark, passing off and for infringement of Copyright Act, 1963 seeking relief of injunction restraining the defendant from using the mark MANJU in any manner which is amounting to infringement of trade mark, passing off and rendition of accounts.
Facts as per Plaint
a) The plaintiff submits that she is the sole proprietor of the firm in the name and style of M/s Manju Monga Cookery Classes situated at A-97, Gujaranwala Town, Part-I, Delhi- 110009, engaged in educating and training of fine variety of cuisines. She is using the said trade mark/trade label MANJU MONGA?S COOKING CLASSES (herein after referred to as the said trademark).
b) The said trade mark has been adopted by her in the year 1999 and since then it is being used. The plaintiff also submits that the word marks MANJU and COOKERY CLASSES form an integral/essential and prominent part of the trade mark. The word MANJU is recognized and indentified instantly and a lot of reputation and goodwill has been earned by her. Her trademark application No. 862727 is filed with the trade mark registry for registration.
c) She has appeared on various TV shows and "Live Cookery Shows? and her recipes are also published in "Greh Laxmi? magazine. The defendant, a past student of her is also engaged in the same trade and business of that of the plaintiff, under the name and style of "Manju?s Cookery Classes (referred to as the impugned trademark). The defendant has learned all the secrets and the fine art of cooking of the plaintiff.
d) The plaintiff is serving the restaurants, eating houses and
other corporate places. She has been solicited by few corporate houses for lending her name or for partnering ventures.
2. Grievance against the defendant by the plaintiff is that the defendant is misusing the trademark amounting to unethical trade practice and competition who is using the trade mark without any prior permission/leave and license of the plaintiff and infringing the rights of the plaintiff knowingly and deliberately. Scanned copy/specimen are reproduced herein below:
3. Defendant''s case
It is alleged that the defendant is now adding suffix, MITTAL to her name in order to avoid any confusion and deception. It was done since 10th March, 2011 after the receipt of legal notice from the plaintiff. The defendant is also changed the colour scheme and get up and lay out which was similar to the plaintiff. The plaintiff has deliberately suppressed the fact. Defendant''s name reads as "MANJU MITTAL''S COOKERY CLASSES''. The defendant had given up the name i.e. "MANJU''S COOKERY CLASSES'' prior to the filing of this suit by the plaintiff and the same is protected u/s 35 of the Trade Marks Act 1999. Both the names of the parties are different and there is no scope for any confusion amongst the general public. The expression "COOKERY CLASSES'' is a generic term. There are many persons who are using the same suffix of "COOKERY CLASSES'' and has referred many examples like Tarla Dalal''s Cookery Classes, Nita Mehta''s Cookery Classes etc. The defendant''s name is Manju Mittal, therefore, she is entitled to use her name which is protected u/s 35 of the Act.
4. The defendant submits that even to prior to the establishment of plaintiff''s business, there are persons with similar name Manju Malhi and she also has a website named www.manjumalhi.com. Another person, Manju Dhanda also in the same business has her email id manju@jaldicook.com. Even otherwise two businesses of the parties are geographically in different locations, thus, no question arises of general public getting perplexed. Further the in the advertisement published by the plaintiff, her photograph is affixed and hence for that reason too there should not be any confusion. The defendant has also given suggestion to use her photograph in order to further avoid any confusion.
5. The defendant denies that the plaintiff has filed any trademark application under No. 862727 but rather the same is filed being No. 1614795 in Class-41 dated 25th October, 2007 with a limitation that the "Mark be used as substantially shown on the label". The defendant alleges that the plaintiff has suppressed the fact from this Court. The Registrar of Trade Marks erroneously granted the registration without any proof of documentary evidence from the year 1999 the user claimed by the plaintiff. The defendant has also denied plaintiff''s reputation is throughout India and her interview/advertisement is published in newspaper and other electronic media. As per defendant, it is false and baseless. The defendant states that the plaintiff''s publicity has been circulated in "Neighborhood Informer", "Bombay Glitter" of Vijay Nagar, New Delhi & "North Delhi Express" which provides information of the business & services of the neighbourhood.
6. The defendant has raised her objections on the affidavits filed by the plaintiff; the same read as under:
a. The language in all the affidavits is similar/identical. Hence they are tutored and unreliable. The same is without proper cause, title and are on non-judicial stamp-paper.
b. The said affidavits does not reflects any bearing on the present suit and the said affidavits would be used in a judicial proceeding was a hidden fact.
C. Each of the deponents are undergoing training in the said cookery class and hence not independent.
7. Right of using personal name, there does exist a right to use one''s own name but use must be bonafide. Section 35 - Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bonafide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, or any of his predecessors in business, or the sue by any person of any bonafide description of the character or quality of his goods or services.
Bonafide Use
Bonafide use" normally means the honest use by the person of his own name without any intention to deceive anybody or without any intention to make use of the goodwill which has been acquired by another trader as per Baume vs. Moore (1957) RPC 459 463, approved by CA (1958) RPC 226 235; Adrema v Adrema (1958) RPC 323 334; Ballantine v Ballantyne (1959) RPC 47 49, 186, 273; Steiner v Willy Steiner (1964) RPC 356 359, 360. The mere fact that a trader is using his own name which too closely resembles a registered trade mark of which he is aware does not prevent the user from being "bonafide" provided that the trader honestly thought that no confusion would arise, and if he had no intention of wrongfully diverting business to himself by using the name Baume v Moore, (1957) RPC 226 235.
i) The facts in
On the question of balance of convenience and irreparable loss, the Court observed as follows:
14. In any event, in a matter of this nature, it would ultimately be difficult to assess the damage that may be suffered by the Plaintiff since if at all the Defendant adapting the similar trade name as that of the Plaintiff does not provide tasty and proper service of food articles, the same would also affect the business of the Plaintiff wherever they are carrying on since the same would spread by word of mouth and such a loss cannot be quantified. Further on the other hand if the Defendant makes a profit by taking advantage of the name of the Plaintiff, that portion of the gain made by the Defendant cannot be assessed in a case of this nature. While considering this aspect and if the convenience of the Defendant is also looked into, in a business of this nature where food articles are prepared and supplied, since the Defendants have started the outlet only in the year 2006 preventing the Defendant from using the name does not mean stopping of their business, but only forcing them to change the name of the outlet which would mean that they would be entitled to continue with the very same business. But with a different name which would not infringe the Plaintiff''s name. Their success or otherwise in the business would depend on the quality of the food stuff they would provide and the same need not depend on the name they have adapted for their business. Even from this angle, there would be no inconvenience or loss that would be caused to the Defendants and as such the said aspects do not require a detailed consideration in the nature which is made while grant of temporary injunction in a normal circumstances.
ii) The following observations in
15. The plea raised by the defendant that it has a bona fide statutory right to use the trade name "Reddy" as its Managing Director is Mr. Reddy is also liable to be rejected for the reason that the trade mark "Dr. Reddy" in spite of not bring registered has acquired considerable trade reputation and goodwill in the community dealing with drugs and pharmaceutical not only in India but abroad also. This trade mark is now distinctively associated with the plaintiff''s company. Its long and continuous user by the plaintiff is prima facie established. The use of trade name/mark "Reddy" by the defendant is capable of causing confusion and deception resulting in injury to the goodwill and reputation of the plaintiff company. No other "Reddy" has a right to start a rival business by using the same trade name on the plea that it is his surname. This would encourage deception. If such a plea is allowed, rivals in trade would be encouraged to associate in their business ventures persons having similar surnames wind ants was held to be an act of passing off the goods and it was observed that the use of such family name as a trade mark was not permissible. The plea of the defendants that the surname of the partners of its firm could be used to carry on trade in their own name was rejected. It was held that prima facie the defendants were intentionally and dishonestly trying to pass off their goods by use of name "Bajaj" and as such the plaintiff had made out a case for grant of injunction.
19. Section 35 of the TMM Act is also of ho help to the defendant as the use of name "Reddy" on pharmaceutical preparations by the defendant is not shown to be bona fide. The drugs and pharmaceutical preparations being manufactured by the plaintiff may be having different names but that does not disentitle the plaintiff to claim protection in regard to its trade mark "Dr. Reddy" which has earned substantial trade reputation and goodwill. This trade mark has acquired a distinctive reputation. Use of an identical or deceptively similar trade mark may mislead the customers on account of similarity. "Dr. Reddy" and "Reddy" are similar trademarks phonetically and are capable of creating confusion. There is identity of goods, identity of trade mark and identity of consumers. The defendant is not at all an honest and concurrent user of the trade mark "Reddy" and it is apparent on record that it has started using the trade mark "Reddy" on its pharmaceutical preparations in bad faith knowing fully well that the plaintiff company has enormous trade reputation and goodwill in the trade mark " Dr. Reddy" which is completely associated with plaintiff and has acquired a secondary meaning in business circles.
8. It is a question of fact, to be decided on the evidence, whether it is proved that a name or mark has acquired a secondary meaning so that it denotes or has come to mean goods made by a particular person and not goods made by any other person, even though such other person may have the same name. If it is proved on behalf of a claimant that a name or mark has acquired such a secondary meaning, then it is a question for the Court whether a defendant, whatever may be his intention, is so describing his goods that there is a likelihood that a substantial section of the purchasing public will be misled into believing that his goods are the goods of the claimant." (per Lord Morris, Parker-Knoll v Knoll International (1962) RPC 265 279.
9. In the present case, the defendant''s use of personal name MANJU is not bonafide. The defendant has adopted the entire trademark of the plaintiff, (her former teacher, whose trade name and trade mark she was fully aware of, having been a former student) but also the colour combinations and writing style of the plaintiff''s trade mark and label. The defendant claims to have changed the name from MANJU to MANJU MITTAL as well using of similar brochure after receipt of the plaintiff''s cease and desist notice. No doubt, still the defendant has retained the essential mark MANJU, and the same expression COOKERY CLASSES which would still cause confusion and deception in the market and among customers. The ratio in the ADIGA case squarely applies to the present case.
10. Common to the Trade:
i) The law on the point has been cleared by the Division Bench of this Court in
22. In fact, we are of the view that the Respondent/plaintiff is not expected to sue all small type infringers who may not be affecting Respondent/plaintiff business. The Supreme Court in National Bell v. Metal Goods reported in AIR 1971 SC 898 has held that a proprietor of a trademark need not take action against infringement which do not cause prejudice to its distinctiveness. In Express Bottlers Services Pvt. Ltd. v. Pepsi Inc. and Ors., reported in 1989 (7) 14 it has been held as under:
...To establish the plea of common use, the use by other persons should be shown to be substantial. In the present case, there is no evidence regarding the extent of the trade carried on by the alleged infringers or their respective position in the trade. If the proprietor of the mark is expected to pursue each and every insignificant infringer to save his mark, the business will come to a standstill. Because there may be occasion when the malicious persons, just to harass the proprietor may use his mark by way of pinpricks.... The mere use of the name is irrelevant because a registered proprietor is not expected to go on filing suits or proceedings against infringers who are of no consequence.... Mere delay in taking action against the infringers is not sufficient to hold that the registered proprietor has lost the mark intentionally unless it is positively proved that delay was due to intentional abandonment of the right over the registered mark. This Court is inclined to accept the submissions of the respondent No. 1 on this point.... The respondent No. 1 did not lose its mark by not proceeding against insignificant infringers...
In fact, in Dr. Reddy Laboratories v. Reddy Pharmaceuticals reported in 2004 (29) PTC 435, a Single Judge of this Court has held as under:
.....the owners of trademarks or copy rights are not expected to run after every infringer and thereby remain involved in litigation at the cost of their business time. If the impugned infringement is too trivial or insignificant and is not capable of harming their business interests, they may overlook and ignore petty violations till they assume alarming proportions. If a road side Dhaba puts up a board of "Taj Hotel", the owners of Taj Group are not expected to swing into action and raise objections forthwith. They can wait till the time the user of their name starts harming their business interest and starts misleading and confusing their customers.
23. Even otherwise we are of the view that use of similar marks by a third party cannot be a defence to an illegal act of passing off. In Century Traders v. Roshan La! Duggar and Co., reported in AIR 1978 Del 250, a Division Bench of this Court has held as under:
Thus the law is pretty well settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondents. In fact, in Castro! Limited v. A.K. Mehta, reported in 1997 PTC (17) 408 DB it has been held that a concession given in one case does not mean that other parties are entitled to use the same. Also in Prakash Road!ine v. Prakash Parce! Service, reported 1992 (2) Arbitration Law Reporter 174 it has been held that use of a similar mark by a third party in violation of plaintiff''s right is no defence.
Passsing off
11. In the case of
12. Similarity of Two Names:
(i) In the case of
(ii) In the decision in the case of
(iii) In Parker v. Parker, reported in (1965) R.P.C. 323, the Court considered a similar question. There, one John Thomas Parker formerly connected with a company carrying on business as estate agents under the name ''Parkers'' set up in business on his own in the same area also as ''Parkers'', an interlocutory injunction was granted to restrain him from doing so, the Judge remarking:
The question is not simply whether the defendant can be prevented from using his own name but whether the defendant can be prevented from garnishing that name...in such a way that it looks as if the name were being used not by him but by the plaintiffs.
(iv) In Baume and Co. Ltd. v. A.H. Moore Ltd., reported in 1958 (2) All. ER. 113, the defendant contended that he is only using his own name bona fide. Plaintiffs, Baume and Co. Ltd. and their predecessors had traded in England as distributors and sellers of watches. The word ''Baume'' had been the registered trade mark for the watches. The defendants A.H. Moore Ltd. began to import and sell watches made by a Swiss Company known as Baume and Mercier, S.A. The watches and the boxes containing them bore the mark ''Baume and Mercier, Geneva''. The Plaintiffs claimed that this use of the word ''Baume'' constituted an infringement of their trade mark and was calculated to pass off the goods sold by the Defendants as the Plaintiffs goods. The Defendants established that use of the name ''Baume'' was an honest use by them of the makers'' own name. After considering the evidence, it was held that even though no action can be laid for infringement of the Plaintiffs'' registered trade mark, the use constituted a passing off which should be restrained by injunction because there was real probability that the watches marked ''Baume and Mercier, Geneva'' would be regarded as being the same or in some way associated with the Plaintiffs'' goods and no man is entitled even by the honest use of his own name so to describe or mark his goods as in fact to represent that they were the goods of another person.
(v) In the case of John Brinsmead and Sons Ltd. v. Brinsmead and Waddington and Sons Ltd., reported in (1913) 30 R.P.C. 492, Buckley Lord Justice held as follows:
If a trader takes a name which is not his own name, but is that of a rival trader, and uses it in his trade, no doubt that is very strong evidence that he intends to deceive, and the Court will fasten upon that in any case in which it occurs; but if that is not so, if he is simply using his own name and it is proved that its use results in deception, he will be restrained even from using his own name, without taking such steps as will preclude the deception which, by hypothesis is engendered by his using his own name
There are many authorities for this proposition.
G.K. NAMBEESAN
PURE (Emblem) GHEE
G.K. NAMBEESAN DAIRY
as against Plaintiffs'' Nambisan?s Pure Ghee, Nambisan?s D.V. Dairy Farm. Now, we will examine with respect to decided cases the effect of changes.
Infringement
(vi) In the decision of K.R. Chinnakrishna Cketty''s v. K. Venkatesa Mudaliar and Anr., reported in AIR 1974 Mad 7, a Division Bench of the Madras High Court held that "Sri Andhal" is deceptively similar to that of "Sri Ambal" and addition of the word "Radha" to it will not make slightest difference. After considering the decision reported in Cordova v. Vick Chemical Co. (1951) 68 R.P.C. 102 and
Though at one stage we considered that the addition of the word ''Radha'' to the legend ''Sri Andal'' makes all the difference, after our attention was drawn to the three cases referred to above., viz., (1) relating to the Vick Vaporub, where the objection to the registration of the respondents'' Vaporub which infringed the Appellants'' registered mark was sought to be got over by adding a word ''Karosote'' to the Respondents'' legend, and (2) where the objection to the registration of the Respondents'' trade mark ''Rustam'' was sought to be met by the addition of the word ''India'' to the objected legend and (3) where the word ''Bulova'' was sought to be added to the legend ''Accutron'' which legend was held to infringe the Respondents'' trade mark ''Accurist'', we are persuaded to come to the opposite conclusion that the addition of the word ''Radha'' to the legend ''Sri Andal'' will not make the slightest difference and that the view of the learned Judge is correct. The Appellants'' snuff sold under the trade name ''Sri Andal'' the registration of which was objected to by the Respondents, has been in the market for some years and the objection to its registration has now been finally upheld. The question for consideration now will be whether by the addition of the word ''Radha'' to the objected legend makes a vital difference. When the two marks are compared side by side the question will be whether the addition of the word will make any vital difference. As observed by Stamp, J. in 1969 R.P.C. 102 at p. 109. ''Where imperfect recollection is relevant what has to be considered is how far the additional word is significant to prevent imperfect re-collection and the resultant confusion''. We are of opinion that the combination of the two words ''Radha''s Sri Andal'' is likely to be taken by snuff users as the snuff manufactured and marketed by the Appellant originally as ''Sri Andal''. The Appellants'' learned Counsel sought to distinguish the above three cases, on the ground that in the aforesaid decisions the new word sought to be added was only the name of the country of manufacture while in the present case, the addition of the word ''Radha'' to the legend ''Sri Andal'' is a combination which has nothing in common with the Respondents'' legend ''Sri Ambal''. We are unable to accept the ground of distinction made by the learned Counsel. We are of opinion that there is a tangible danger that a substantial number of persons will confuse the Appellants'' ''Radha''s Sri Andal'' mark applied for with the Respondents'' legend ''Sri Ambal snuff''.
13. In the case of
24. Judging the case in hand on touchstone of the principles laid down in the aforementioned decided cases, it is clear that the plaintiff has been using the word "Mahindra" and "Mahindra & Mahindra" in its companies/business concerns for a long span of time extending over five decades. The name has acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name ''Mahindra'' with a certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiffs'' group of companies. Such user may also affect the plaintiff prejudicially in its business and trading activities. Undoubtedly, the question whether the plaintiffs'' claim of ''passing-off action'' against the defendant will be accepted or not has to be decided by the Court after evidence is led in the suit. Even so far the limited purpose of considering the prayer for interlocutory injunction which is intended for maintenance of status quo, the trial Court rightly held that the plaintiff has established a prima facie case and irreparable prejudice in its favour which calls for passing an order of interim injunction restraining the defendant-company which is yet to commence its business from utilising the name of ''Mahendra'' or ''Mahendra & Mahendra'' for the purpose of its trade and business. Therefore, the Division Bench of the High Court cannot be faulted for confirming the order of injunction passed by the learned single Judge.
14. In the present case, admittedly, the plaintiff is the earlier user of the name "MANJU" which is the essential feature of the registered trade mark. The defendant has adopted the same name "MANJU?S COOKERY CLASSES" with the similar get up and colour combination. In view of the settled law on the subject, I am of the considered view that the defendant is not entitled to use the name "MANJU" exclusively with regard to Cookery Classes nor the defendant is entitled to use the similar get up, colour scheme and brochure filed by the plaintiff along with the list of documents. No benefit of bonafide use of the name MANJU by the defendant can be granted u/s 35 of the Act as such use definitely amounts to infringement of plaintiff''s exclusive right.
15. Admittedly, after the receipt of the legal notice, the defendant has changed the colour scheme, get up and layout of their brochure and also modified its name in the pamphlet to "MANJU MITTAL''S COOKERY CLASSES". The new pamphlet of the defendant was placed on record.
16. Mr. Ajay Sahni, learned counsel for the defendant during the course of hearing of interim application has made his submissions and has also given some suggestions for the purpose of interim arrangement of injunction application. He argues that the defendant is carrying on her such business since the year 2007 and in fact, since 2nd April, 2009, the defendant has also owned the domain name. As the defendant has now changed the literature which shows distinguishing features, she has no intention to use the earlier literature and main mark "MANJU" exclusively. But she will always use the full name "MANJU MITTAL" with her photograph. Some of the suggestions, at present, seem to be reasonable and I am of the view that the pending interim application under Order XXXIX Rule 1 & 2 CPC filed by the plaintiff can be disposed of. After considering the defence of the defendant and suggestion given by the counsel and in order to avoid confusion and deception and without prejudice to the rights of the parties to contest the main suit on merits the application is disposed of with the following directions/interim orders:-
(a) That the defendant shall not use the mark "MANJU" exclusively in respect of her business activities, nor she shall use the similar colour scheme, layout and literature as that of the plaintiff.
(b) However, in order to strike the balance between the parties at this stage, the defendant is permitted to use the name "MANJU MITTAL COOKERY HOUSE OR MANJU MITTAL TRAINING CENTRE" along with her photographs instead of MANJU MITTAL COOKERY CLASSES as suggested by Mr. Ajay Sahni, Advocate, appearing on behalf of the defendant. Such use is allowed to the defendant, subject to the condition that the defendant shall use her name "MANJU" and surname "MITTAL" together and shall always use as one word, i.e. MANJUMITTAL.
18. The application is disposed of with these directions.
CS(OS) No. 820/2011
19. The issues in the matter are already framed. The plaintiff is granted further four weeks? time to file the list of witnesses and affidavit(s) as evidence. Mr. Sanjiv Kakra, Advocate (Mobile No.9810295666) is appointed as a Court Commissioner to record the evidence of the parties. He shall make endeavour to complete the evidence of the parties within a period of 6-9 months. Let the matter be listed before the Court Commissioner on 03.08.2012 for directions regarding the recording of evidence of the parties in the High Court premises. His fee is fixed at Rs.50,000/- which shall be paid by the plaintiff. The remaining fee would be fixed, if necessary, depending upon the evidence and time consumed in the matter. The Dealing Assistant of the matter will produce the record of the case before the Court Commissioner on all the dates fixed by him for the purpose of recording the evidence of the parties. He be paid diet money as per rules, by the parties concerned. The parties are also granted liberty to take the assistance of the Registry for the purpose of summoning the witness(s). A copy of this order be sent to the Court Commissioner.
