G. Bikshapathy, J.@mdashBoth the C.C.C. As. can be disposed of by a common judgment, as they arise out of the judgment and decree passed in O.S. No. 555 of 1999 on the file of the learned II Additional Chief Judge, City Civil Court, Hyderabad, dated 24-7-2000.
2. Ushodaya Enterprises Limited, a Public Limited Company incorporated under the Companies Act, having its registered office at Hyderabad filed the suit in O.S. No. 555 of 1999 u/s 26 and Order VII Rule 1 of Code of Civil Procedure, Sections 55 and 62 of the Copyright Act, Sections 27, 105 and 106 of The Trade and Merchandise Marks Act, 1958, seeking the following reliefs:
(a) For a permanent injunction restraining the Defendants, their servants, agents or anyone claiming through any of them from passing off their Agarbathis business as the business of the plaintiff by using the expression Eenadu or any other expression phonetically and/ or visually similar or deceptively similar to the plaintiff''s mark, AND/OR by applying the artistic script Eenadu annexed to the plaint either as part of their Corporate name or using the name otherwise in the course of their business transaction viz., in their correspondence, letterheads, name boards, sign boards, advertisements in print and electronic media and in such other business/trade literature in conducting their business, thereby pass off their business and service as the business and service of the plaintiff and/or enable others to pass off.
(b) For a direction to the Defendants, their men, agents, representatives, servants or any one claiming through them to surrender all printed matter lying with them or in their custody, including wrappers, cartons, packing material, name boards, banners, business forms, letterheads, visiting cards and other articles or stationery containing or consisting the offending trademark Eenadu and copyright Eenadu together with all blocks, dies, rubber stamps, photos negatives and the like containing or consisting the offending Trademark Eenadu and the Copyright Eenadu together with all blocks, dies, rubber stamps, photos negatives and the like containing or consisting the offending Trademark Eenadu and the Copyright Eenadu.
3. Defendant No. l is one T.V. Venugopal, trading as Ashika Incense Inc. incorporated at Bangalore. The 2nd defendant is one Mr. R. Lokesh.
4. The learned trial Court decreed the suit with costs by a judgment and decree dated 24-7-2000. Aggrieved by the said judgment and decree dated 24-7-2000, the defendants filed an appeal in C.M.A. (sic. CCC) No. 178 of 2000. However, aggrieved by the judgment and decree in so far as the relief of injunction was confined to the Andhra Pradesh State, the plaintiff filed appeal in C.C.C.A. No. 180 of 2000.
5. It is necessary to refer to certain essential pleadings in the suit plaint and counter for properly appreciating the matter. For the sake of convenience, the parties as they are arrayed in the suit are referred to herein.
6. It is the case of the plaintiff that it is the publisher of Telugu Daily Eenadu and Mr. Ramoji Rao is the Founder and Chairman of Eenadu and Margadarsi group of companies and also Chief Editor of Eenadu Telugu Daily Newspaper. This group of companies have various business interests in publications, television broadcasting, Chit Funds, hotels, financial services, film production and distribution and developing Film City etc. The first issue of Eenadu daily newspaper was published on 10th August 1974 at Visakhapatnam. It was registered with the Registrar of Newspapers. The business slowly spread its roots in other Cities and it is now being published in 12 centres, most of them are District Headquarters. The word Eenadu became the household name among the people of Andhra Pradesh and the Telugu speaking public in the other States and the rest of the world. It is the largest circulated Telugu daily newspaper having more than 7.25 lakhs circulation per day. The plaintiff-Company also owns a Eenadu Television. The newspaper and the Television use the name Eenadu, which is written in a distinctive and novel artistic design. It gained sufficient commercial goodwill. Eenadu is the trade mark of the plaintiff which owns the newspaper and satellite television. It also owns a copyright in the distinctive and novel artistic script. Thus, it is the case of the plaintiff that it has built enormous trust, goodwill and confidence of public. The defendant has been doing the business under the name and style of Ashika Incense Inc. The 1st defendant has been applying the plaintiff''s trade mark Eenadu fraudulently on the carton of Agarbathis manufactured and sold by him, he has been infringing the plaintiff''s copyright in respect of the artistic script Eenadu deliberately, consciously, dishonestly with a view to confuse and mislead the consumers and passing off such Agarbathis as if they are the products of Eenadu and Margadarsi group. Having come to know these illegal acts, the plaintiff issued a notice dated 27-2-1995 requiring him to desist from such activities. A reply was issued on 8-7-1995 by the defendants asking for a copy of registration document while disputing the material allegations. The plaintiff also published a caution notice in Eenadu newspaper on 23-7-1995. Thereafter, the defendant had given up the sale of Agarbathis with trademark Eenadu of the plaintiff. The plaintiff recently came to know that he has resumed the activity again. The trademark appearing on the packets is the exactly on the same of Eenadu of plaintiff and he has also infringed the trademark of the plaintiff and it is alleged that the 1st defendant has been using the mark Eenadu which is the same in all respects and the defendant is passing off the product of the plaintiff and by deceiving and causing confusion among the minds of the consumers.
7. It is the case of the plaintiff that the artistic work was first published by the 2nd defendant in 1993 knowing that the plaintiff was the owner of the artistic work. The 2nd defendant is not the original owner of the artistic work. The plaintiff had created the artistic script in the year 1974 through one Mr. Swamy during the Course of employment for the use as mast head of the paper. The plaintiff also got copyright registered under the Copyright Act. The plaintiff states that trademark Eenadu has acquired distinct, long and continuous use. The defendant has adopted the name of Eenadu for his Agarbathis business to appropriate the success of commercial goodwill, reputation of the name Eenadu by confusing and misleading the public viz. Agarbathis is connected with the business of Eenadu and Margadarsi group promoted by Mr. Ramoji Rao. The 1st defendant also made wrongful gain by infringing the copyright of the plaintiff and by passing of the goods by use of the plaintiff''s trademark Eenadu. Therefore, the plaintiff claimed that the 1st defendant is liable to be injuncted from using the trademark Eenadu and copyright in respect of artistic script Eenadu.
8. In the written statement filed by the 1st Defendant they have denied various averments made in the plaint. It is stated that the defendant was in no way connected with business activities that are being carried on by the plaintiff either as Eenadu or Eenadu-Margadarsi group. The business of plaintiff comprises or publication, foods, television, and chit fund etc., but not connected with incense sticks of Agarbathis. The word Eenadu has dictionary meaning in Telugu and Kannada as "this time" "this land" and the plaintiff cannot claim monopoly in respect of such a general descriptive word. The plaintiff has not registered the trademark of the name Eenadu in the class in which the incense sticks are included. The defendant has been in the business of Agarbathis right from 1993. The plaintiff has obtained copyright registration surreptitiously after coming to know about the copyright for the artistic work which the defendant had first obtained from the competent authorities. The defendants filed an application for registration for the trademark Eenadu class-3 for incense sticks and it is pending and is in advanced stage of registration and the plaintiff has not made any such applications for registration of the trademark either in clause 3 or 61 where newspapers are not included. The plaintiff''s business is totally unrelated to the goods manufactured by the defendants. The goodwill and reputation built by the defendant in Agarbathis is confined only to the Agarbathis and incense sticks and it no way affects the goodwill, reputation alleged to have been built up by the plaintiff in newspapers and other business. There is no question of misleading the public and for the last six years, he has been doing the business to the knowledge of each and everybody. It is only after the notice was issued on 27-2-1995, the plaintiff was called upon to furnish the copyright particulars of registration. Thereafter, only the plaintiff taken the steps to register the copyright for artistic work Eenadu. Plaintiff has deliberately kept quite for more than four years giving an impression that the defendant had given up the sale of Agarbathis with trademark after the notice was issued by the plaintiff and that the sale of Agarbathis were resumed just before filing of the suit. It is stated that the carton indicated the trademark application number and it did not claim that the trademark has been registered. The copyright registration was obtained by the plaintiff subsequent to the copyright registration of the defendant. Further, it was stated that the mark Eenadu was used by several other producers and by different parties such as coffee powder, washing powder, matches, appalams, ayurvedic soap, chilli powder, coconut oil etc. The defendant had been an honest concurrent user u/s 12(3) of Trade and Merchandise Marks Act, 1958. Hence, the question of infringing the copyright of the plaintiff did not arise. When the defendant and the plaintiff are engaged totally in unrelated type of business, the goodwill gained by the plaintiff did not come in the way of the defendants doing the business independently under its own banner Ashika Inc. The word Ashika has been used as a prefix to the Eenadu and it is called as Ashikavari Eenadu Agarbathis.
9. Basing on the respective pleadings, the trial Court framed the following issues:
(1) Whether the plaintiff-Company owns the copyright in the distinctive and novel artistic script "Eenadu"?
(2) Whether the distinctive and novel artistic script ''Eenadu'' of the plaintiff-Company is the trademark of the plaintiff?
(3) Whether the defendant is passing off their Agarbathi (incense stick) business as the business of the plaintiff by using the expression ''Eenadu'' or any other expression phonetically and/or visually similar or deceptively similar to plaintiff''s mark ''Eenadu'' and or applying the artistic script as depicted in para 3 of page 3 of the plaint and as annexed to the plaint?
(4) Whether this Court has got territorial jurisdiction to try this suit?
(5) Whether the defendant has adopted the artistic script of the plaintiff in ''Eenadu'' and their trademark to pass off his Agarbathi business as that of the plaintiff''s goods?
(6) Whether the plaintiff is entitled for permanent injunction as prayed for?
(7) Whether the plaintiff is entitled for direction as prayed for?
(8) Whether the defendant is the owner of the copyright in the work as appearing on defendant''s Agarbathy cartons along with the word ''Eenadu''?
(9) To what relief?"
5 witnesses were examined on behalf of the plaintiff and Exs.A-1 and A-72 were marked, while defendants examined six witnesses and Exs.B-1 to B-67 were marked. Ex.X-1 to Ex.X-8 were marked through the witnesses, Who were examined on behalf of the defendants.
10. The evidence was adduced in support of their respective pleadings.
11. The facts which are not in dispute are that the plaintiff-Company is engaged in the publication of Telugu daily newspaper Eenadu and English Newstime. It also deals in food products such as pickles, mineral water etc. The plaintiff-Company owns a Telugu Television channel popularly known as EE T.V. First Eenadu telugu newspaper was published on 10th August, 1974 at Visakhapatnam with the artistic script of Eenadu in telugu. The said newspaper was registered with the appropriate statutory authorities. The circulation swelled from time to time and it has touched over 7.25 lakhs by June, 1999. The mast head of the Eenadu newspaper is an artistic work marked as Ex.A-8. It was created by one of the employees of Eenadu newspaper Mr. P. Swamy and this artistic script is being used in various correspondences, identity cards etc. It is not in dispute that apart from Eenadu newspaper, various other items are also being produced by the plaintiff-Company. It obtained the certificate of registration from the appropriate authority under Copyright Act for the artistic work Ex.A-43 dated 9-7-1999 with the words in telugu script Eenadu. The plaintiff has not been manufacturing or trading in Agarbathis. The defendant is the manufacturers of incense sticks and has been selling from 1993 under various names viz., Ashikavari Eenadu Agarbathis, Eenadu Sandals, Eenadu Durbar Agarbathi etc. The defendant registered the entire cartons of Agarbathis with artistic work under the Copyright Act. It was earlier to the registration by the plaintiff-Company. It is also not in dispute that the plaintiff-Company has made an application for registration of trademark under the provisions of the Trademarks Act under various classes, other than the classes in which Agarbathis and incense sticks fall and it is in evidence that the plaintiff-Company did not intend to enter into the product of Agarbathis or incense sticks. On the other hand, it is in evidence that the defendant has also made an application for registration of the trademark Eenadu in the class 3 of Schedule-IV to Trade and Merchandise Marks Rules in respect of the incense sticks and the same is pending consideration before the appropriate authorities. Thus the application of both the plaintiff and the defendants for registration of the trademark is pending with the appropriate authority. But, however, the applications are filed for different class of goods while the application made by the plaintiff is for the goods other than the incense sticks and the application made by the defendant is for incense sticks and thus they travel in different angles. But, the filing of the application have no serious bearing on the issues under consideration as the question of alleged infringement of trademark under the provisions of the Trade Marks Act does not arise and that will not be available to the plaintiff in view of Section 27(1) of Trade Marks Act. In fact, the learned Counsel for the plaintiff also fairly admitted that the main thrust of the grievance is infringement of the Copyright Act and passing off action on the part of the defendant of the incense sticks with the Trademark and Copyright of the mark Eenadu. The learned Counsel for the defendant, however, submitted that defendant has got prior registration under the Copyright Act. Further, there is a vast difference between the artistic work of the defendant and the artistic work of the plaintiff. He further submits that there is an inordinate delay in filing the suit thereby the plaintiff acquiesced his right, if any, to restrain the defendant from using artistic work.
12. The issues that arise for consideration in the appeals is whether the defendants'' infringed the copyright registration obtained by the plaintiff? (2) whether the plaintiff has been able to establish the infringement of copyright under the provisions of the Copyright Act? (3) Whether the plaintiff has established passing off goods by the defendant as if they are the goods of the plaintiff? (4) If so, to what relief, the plaintiff is entitled?
13. Mr. K.N. Srinivasan assisted by Mrs. Kalpana Ekbote appearing for the Appellant/Defendant and Mr. N.A.K. Sharma assisted by Mr. Nalin Kumar referred to numerous case law.
14. Before we consider the issue relating to passing off action, it will be convenient to consider whether the plaintiff has been able to establish infringement of copyright of the plaintiff.
15. It cannot be disputed that the defendant had registered the artistic work on the entire carton of Agarbathis containing the words "Ashikavari Eenadu Agarbathis" and the works on 14-3-1997 with Registration No. A-53813/97 Exs.B-10 to B-14. The applicant name was mentioned as T.V. Venugopal, a subject of Indian Republic solely trading as Ashika incense inc. at Bangalore, Karnataka State. In the extract from the Copyright Register the name of author was mentioned as R. Lokesh (Suji Designs), Bangalore, (India). The entire carton containing the artistic work of the logo Eenadu in Telugu and English was registered. It was also mentioned there Ashikawari Eenadu Agarbathi. The left side of the wrapper, it is mentioned as "two in one". There is also a logo representing A.I.I. in a artistic design. Thus, it is seen that the entire artistic work on the wrapper is registered under Copyright Act as early as in 1997. It is also not in dispute that the Agarbathis are being exported to foreign countries by the Ashika Incense Inc. Bangalore. On the side falps of the wrappers name of Eenadu was written in Hindi, Tamil and Malayalam. The Eenadu emblem is in Telugu as well as in English. On one side it is in Telugu and on the other side it is in English in egg shape design in tri colour, red, white and green. However, in respect of the copyright registered under the Copyright Act by the plaintiff, it is only in Telugu version Eenadu and the artistic work does not similar in design, which I deal with at a later stage. But, in any event, it has to be seen both the defendant and the plaintiff have got registered copyrights of Eenadu. But, however, in respect of the defendant, the entire carton containing Ashikavari Eenadu Agarbathis was registered with various other artistic work including logo whereas the copyright of the plaintiff is only Eenadu in Telugu script.
16. Certain provisions under the Copyright Act are necessary to be referred for proper appreciation of the case. The word ''Artistic work'' is defined u/s 2(c) and ''infringing copy'' is defined in 2(m), which read as follows:
"artistic work" means -
(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;
(ii) an architectural work of Article; and
(iii) any other work of artistic craftsmanship;"
2 (m) "infringing copy" means.-
(i) in relation to a literary, dramatic, musical or artistic work, a reproduction thereof otherwise than in the form of a cinematrographic film;
(ii) in relation to a cinematdgraphic film, a copy of the film made on any medium by any means;
(iii) in relation to a sound recording, any other recording embodying the same sound recording, made by any means;
(iv) in relation to a programme or performance in which such a broadcast reproduction right or a performer''s right subsists under the provisions of this Act, the sound recording or a cinematograp film of such programme or performance,
if such reproduction, copy of sound recording is made or imported in contravention of the provisions of this Act;"
17. Section 13 contains the works in which copyright subsists. It reads thus:
"13. Works in which copyright subsists - (1) Subject to the provisions of this Section and the other provisions of this Act, copyright shall subsist throughout India in the following classes of works, that is to say,-
(a) original literary, dramatic, musical and artistic works;
(b) cinematograph films; and
(c) sound recording.
(2) Copyright shall not subsist in any work specified in Sub-section (1), other than a work to which the provisions of Section 40 or Section 41 apply, unless,-
(i) in the case of a published work, the work is first published in India, or where the work is first published outside India, the author is at the date of such publication, or in a case where the author was dead at that date, was at the time of his death, a citizen of India;
(ii) in the case of an unpublished work other than work of architecture, the author is at the date of the making of the work a citizen of India or domiciled in India; and
(iii) in the case of work architecture, the work is located in India.
Explanation - In the case of a work of joint authorship, the conditions conferring copyright specified in this Sub-section shall be satisfied by all the authors of the work.
(3) Copyright shall not subsist-
(a) in any cinematograph film if a substantial part of the film is an infringement of the copyright in any other work;
(b) in any sound recording made in respect of a literary, dramatic or musical work, if in making the sound recording, copyright in such work has been infringed.
(4) The copyright in a cinematograph film or a sound recording shall not affect the separate copyright in any work in respect of which or a substantial part of which, the film, or as the case may be, the sound recording is made.
(5) In the case of work architecture, copyright shall subsist only in the artistic character and design and shall not extend to processes or methods of construction.
18. The meaning of ''Copyright'' is explained in Section 14, which reads thus:
"14. Meaning of copyright - For the purposes of this Act, "copyright" means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely-
(a) in the case of a literary, dramatic or musical work, not being a computer programme,-
(i) to reproduce the work in any material form including the storing of it in any medium by electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public;
(iv) to make any cinematograph film or sound recording in respect of the work;
(v) to make any translation of the work;
(vi) to make any adaptation of the work;
(vii) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in Sub-clauses (i) to (vi);
(b) xxxx
(c) in the case of an artistic work,-
(i) to reproduce the work in any material form including depiction in three dimensions of a two dimensional work or in two dimensions of a three dimensional work;
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public not being copies already in circulation;
(iv) to include the work in any cinematograph film;
(v) to make any adaptation of the work;
(vi) to do in relation to an adaptation of the work any of the acts specified in relation to the work in Sub-clauses (i) to (iv);
(d) xxxx"
But, however, under Chapter-Ill, the mode of registration of the copyright is contained. Sections 44 and 45 are relevant, which are extracted below:
"44. Register of Copyrights - There shall be kept at the Copyright Office a register in the prescribed form to be called the Register of Copyrights in which may be entered the names or titles of works and the names and addresses of authors, publishers and owners of copyright and such other particulars as may be prescribed.
45. Entries in Register of Copyrights --(1) The author or publisher of, or the owner of or other person interested in the copyright in, any work may make an application in the prescribed form accompanied by the prescribed fee to the Registrar of Copyrights for entering particulars of the work in the Register of Copyrights.
Provided that in respect of an artistic work which is used or is capable of being used in relation to any goods, the application shall include a statement to that effect and shall be accompanied by a certificate from the Registrar of Trade Marks referred to in Section 4 of the Trade and Merchandise Marks Act, 1958 (43 of 1958), to the effect that no trade mark identical with or deceptively similar to such artistic work has been registered under that Act in the name of, or that no application has been made under that Act for such registration by, any person other than the applicant.
(2) On receipt of an application in respect of any work under Sub-section (1), the Registrar of Copyright may, after holding such inquiry as he may deem fit, enter the particulars of the work in the register of Copyrights."
19. From a reading of the above provisions, it is to be noted that the author interested in the copyright in any work shall make an application to the appropriate authority for entering the particulars of the works in the Register of the copyrights. However, in respect of an artistic work which is used or is capable of being used in relation to any goods, the application shall include a statement to that effect and shall be accompanied by a certificate from the Registrar of Trademarks referred to in Section 4 of Trade and Merchandise Marks Act, 1958 to the effect that no trademark identical with or deceptively similar to such artistic work has been registered under that Act. u/s 50 Copyright Act, rectification of registration by Copyright Board reads thus:
"50. Rectification of Register by Copyright Board:- The Copyright Board, on application of the Registrar of Copyrights or of any person aggrieved, shall order the rectification of the Register of Copyrights by-
(a) the making of any entry wrongly omitted to be made in the register, or
(b) the expunging of any entry wrongly made in, or remaining on, the register, or
(c) the correction of any error or defect in the register."
From the above said provision, it is clear that if any person is aggrieved by the entries in the copyright register, he is entitled to make an application to the Copyright Board, who will order the rectification of copyrights either by expunging any entry made wrongly or correction of any mistake or defect etc.
20. Therefore, the issue that arises for consideration is when both the plaintiff and the Defendants, who are the holders of copyright can one of them allege infringement of the copyright over the other?
21. Infringement of copyright is contained in Chapter-II u/s 51, which is extracted below:
"Section 51. When copyright infringed- Copyright in a work shall be deemed to be infringed-
(a) when any person, without a licence granted by the owner of the copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or of any condition imposed by a competent authority under this Act-
(i) does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright, or
(ii) xxx"
Therefore, a copyright in a work shall be deemed to be infringed, when any person without a licence granted by the owner of the copyright or the Registrar of the Copyrights under the Act or in contravention of the conditions of the license does anything, the exclusive right to do which is by the Act conferred upon the owner of the copyright, it amounts to infringement. But, admittedly, both the persons are holding registered copyright in an artistic work. In such a situation, can it be said that they can allege infringement of copyright over the other. Both of them are claiming the copyright of artistic work of Eenadu words and in such a situation, the question is whether the aggrieved party should apply for rectification of the registered copyright by the Copyright Board u/s 50 or can he allege infringement of copyright before the Civil Court. u/s 55, Civil remedy is provided for infringement of copyright and u/s 62 jurisdiction of civil Court is contained. Sections 55 and 62 are reproduced below:
"Section 55: Civil remedies for infringement of copyright- (1) Where copyright in any work has been infringed, the owner of the copyright shall, except as otherwise provided by this Act, be entitled to all such remedies by way of injunction, damages, accounts and otherwise as are or may be, conferred by law for the infringement of a right.
Provided that if the defendant proves that at the date of the infringement he was not aware and had no reasonable ground for believing that copyright subsisted in the work, the plaintiff shall not be entitled to any remedy other than an injunction in respect of the infringement and a decree for the whole or part of the profits made by the defendant by the sale of the infringing copies as the Court may in the circumstances deem reasonable.
(2) Where, in the case of a literary, dramatic, musical or artistic work, a name purporting to be that of the author or the publisher, as the case may be, appears on copies of the work as published, or, in the case of an artistic work, appeared on the work when it was made, the person whose name so appears or appeared shall in any proceeding in respect of infringement of copyright in such work, be presumed, unless the contrary is proved, to be the author or the publisher of the work, as the case may be.
(3) The costs of all parties in any proceedings in respect of the infringement of copyright shall be in the discretion of the Court."
Section 62: Jurisdiction of Court over matters arising under this Chapter -(1) Every suit or other civil proceeding arising under this Chapter in respect of the infringement of copyright in any work or the infringement of any other rights conferred by this Act shall be instituted in the District Court having jurisdiction.
(2) for the purpose of Sub-section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908), or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain."
22. Admittedly, plaintiff and defendant are the registered owners of the respective artistic works in their own sphere; and the power of rectification is vested with the Copyright Board.
23. u/s 72 of Copyright Act, an appeal lies by the aggrieved party lies against the Registrar of Copyrights to the Copyright Board and under Sub-section (2), a further appeal lies to the High Court against any order made by the Copyright Board other than an order under appeal. Therefore, if any person is aggrieved by an order passed u/s 50, the appeal lies under Sub-section (2) of Section 72, u/s 17 of the Copyright Act the author of the work is the first owner and if any person does anything without the permission of the owner it amounts to infringement of copyright u/s 51 of the Act. But the crucial question is as to who is the original author of the work. Both the plaintiff and defendant are claiming ownership in respect of their respective artistic work - one is claiming the word Eenadu in Telugu script and another (defendant) is claiming the artistic work on entire carton. Therefore, under these circumstances when one registered copyright holder alleges infringement of copyright by the other registered owner, then the remedy available for them is to go u/s 50 of the Copyright Act for rectification of entry by means of expunging and they cannot lay any claim before the Civil Court. Hence, I am of the opinion, the plaintiff cannot successfully raise the plea of infringement of copyright before Civil Court and he has to initiate proceedings u/s 50 of the Copyright Act.
24. Even assuming that a Civil suit would lie for infringement of copyright, let us consider whether the plaintiff has been able to establish the infringement of copyright. I have already narrated the artistic work of both plaintiff and defendant. While it is the case of the plaintiff that the copyright being used by the defendant is deceptively similar in get up, layout and arrangement of words ''Eenadu'' in Telugu script. Even though there is no similarity in the goods handled by both parties, yet, the words used by the defendant so resemble as to be likely to deceive or cause confusion in the minds of public and the defendant is passing off his goods (Agarbathis) by creating an impression as if they are goods of plaintiff and thus encashing the goodwill and reputation of the plaintiff copyright and trademark. Since this issue is intricately connected with issue relating to passing off action, yet let us consider whether the plaintiff has been able to establish infringement of copyright by the defendant. The learned Counsel for the parties relied on enormous case law both English and Indian decisions. Let us consider them as far as they are applicable to the facts of the case.
25. The learned Counsel for the plaintiff would however contend that the defendant had infringed the copyright of the plaintiff inasmuch as he used the word Eenadu which is an artistic work prepared by the plaintiff. He submits that it is not necessary that the defendant should reproduce the entire copyright, but if he does substantially the infringement is established. He relies on
26. In
"An action for passing off is a Common Law remedy being in substance an action for deceipt, that is, a passing off by a person of his own goods as those of another. But that is not gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trademark for the vindication of ''the exclusive right to the use of the trademark in relation to those goods''. The use by the defendant of the trademark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trademark, the essential features of both the actions might coincide in the sense that what would be a colourable limitation of a trademark in a passing off action would also be such in an action for infringement of the same trademark. But, there the correspondence between the two cases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant''s mark is likely to deceive, but where the similarity between the plaintiff''s and the defendant''s mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff''s rights are violated. Expressed in another way, if the essential features of the trademark of the plaintiff have been adopted by the defendant, the fact that the get up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may, escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
When once the use by the defendant of the mark which is claimed to infringe the plaintiff''s mark is shown to be "in the course of trade", the question whether there has been an infringement is to be decided by comparison of the marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff''s registered trademark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered. Where the question arises in an action for infringement, the onus would be on the plaintiff to establish that the trademark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks -the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff''s mark. The purpose of the comparison is for determining whether the essential features of the plaintiff''s trademark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the Defendant as a whole is deceptively similar to that of the registered mark of the plaintiff."
27. In
"The action for infringement is a statutory right. It is dependent upon the validity of the registration and subject to other restrictions laid down in Sections 30, 34 and 35 of the Act. On the other hand, the gist of a passing off action is that A is not entitled to represent his goods as the goods of B but it is not necessary for B to prove that A did this knowingly or with any intent to deceive. It is enough that the get-up of B''s goods has become distinctive of them and there is a probability of confusion between them and the goods of A. No case of actual deception nor any actual damage need be proved. At common law the action was not maintainable unless there had been fraud on A''s part. In equity, however, Lord Cottenham L.C. in Millington v. Fox (1838) 3 My and Copyright 338 held that it was immaterial whether the defendant had been fraudulent or not in using the plaintiff''s trademark and granted an injunction accordingly. The common law Courts, however, adhered to their view that fraud was necessary until the Judicature Acts, by fusing law and equity gave the equitable rule the victory over the common law rule.
28. Referring to the above decisions, the Supreme Court observed in S.M. Dyechem Limited v. Cadbury (India) Limited AIR 2000 SC 2114, as follows:
"24. We shall now refer to the broad principles applicable to infringement actions and in particular to devices, labels and composite marks.
Essential features if copied:
25. It is well settled that the plaintiff must prove that essential features of his registered mark have been copied. The onus to prove ''deception'' is on the part of the plaintiff who alleges infringement. A mark is said to be infringed by another trader if, even without using the whole of it, the latter uses one or more of its "essential features". The identification of an essential feature depends partly on the Courts own judgment and partly on the burden of the evidence that is placed before it. Ascertainment of an essential feature is not to be by ocular test alone, it is impossible to exclude consideration of the sound of words forming part of the whole of the mark. (Kerly, Law of Trade Marks and Trade Names. 11th Entitled. 1983 Para 14.21).
26. It is no answer to a charge of infringement - As contrasted with a passing off action - that the defendant''s mark, whilst including the plaintiff''s mark, includes other matters too. Still less is it an answer that by something outside that actual mark the defendant has distinguished his goods from those of the plaintiff by adding his own name (Kerly para 14.22). But this principle is not absolute. It is also accepted that addition of his own name by Defendant is an element to be considered and may turn the scales in favour of the defendant. In same para 14.22, Kerly says:
"But the use of the defendant''s name as part of the mark complained of is an element to be considered and in some cases it has turned the scale in his favour" (Jewsbury and Brown v. Andrew and Atkinson (1911) 28 PRC 293."
Jewsbury case was a case relating to infringement. (Of course, in Para 14.25 Kerly also refers to cases where addition of defendant''s name has not turned the scales).
27. So far as resemblance in words is concerned, Justice Parker in Pianotist Co''s Applications (Pianola): (1906) 23 PRC 774 (at 777) has stated as follows:
"You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy the goods. In fact, you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of these trademarks is used in a normal way as a trademark for the goods of the respective owners of the marks. If considering all those circumstances, you come to the conclusion that there will be confusion-that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but there will be confusion in the mind of the public which will lead to confusion in the goods-then you may refuse registration, or rather you must refuse registration in that case."
This dictum has been quoted with approval by this Court in
Devices and Composite Marks:
28. But the considerations, relating to words, however, differ appreciably when device marks are to be compared or when a device mark is to be compared with a word mark. (Kerly Para 17.07). After referring to the factors mentioned by Parker, J. in the above case, it is stated in Halsbury''s Laws of England (Vol. 38, 3rd Entitled, para 986) as follows:
"These considerations differ to some extent when device marks are being compared or when a device mark is compared with a word mark."
Dissimilarity in essential features in devices and composite marks more important than some similarity:
29. It has been stressed for the appellant that since the word PICNIC is used by defendant while plaintiff is using its misspelling PIKNIK, this is an essential feature which is similar phonetically or visually and there is therefore, infringement. It is argued that presence of even one essential feature in defendant mark is sufficient. In our opinion, in the case of devices and composite marks, the above principle has not been strictly applied. The English Courts have laid emphasis more on dissimilarities in essential feature rather than on similarity. The "whole thing" principle is based on first impression as seen by the Court. we shall now refer to these principles laid down in the English cases.
30. When the question arises whether a mark applied forbears such resemblance to another mark as to be likely to deceive, it should be determined by considering what is the leading character of each. The one might contain many, even most, of the same elements as the other, and yet the leading, or it may be the only, impression left on the mind might be very different. On the other hand, a critical comparison of the two marks might disclose numerous points of difference, and yet the idea which would remain with any person seeing them apart at different times might be the same. Thus, it is clear that a mark is infringed if the essential features, or essential particulars of it, are copied. In cases of device marks, especially, it is helpful before comparing the marks, to consider what are the essentials of the plaintiffs device. (Kerely Para 17.08). The trademark is the whole thing-the whole picture on each has to be considered. There may be differences in the parts of each mark, but it is important to consider the mode in which the parts are put together and to judge whether the dissimilarity of the part or parts is enough to make the whole dissimilar. It has been said that if the only resemblances between two marks are in parts which are common, so that the owner of the one has taken nothing which is peculiar to the other, then there is at all events no infringement, at any rate unless the plaintiff had a distinctive arrangement of the common elements. But, this approach is hardly suited to a comparison word marks; and even in relation to label marks or other features of get-up, it would be more appropriate to consider the case as a whole, with due regard to the background provided by any other marks shown to be in use (Kerly Para 17.17). Therefore, the question is whether the defendant has, so far as the common feature is concerned - copied any distinctive arrangement of the common elements? Or has copied any unusual feature of the common element (Crispin''s Appln., (1917) 34 RPC 249) (See Kerly Para 17, 19, fn.77). The marks, names or get-up concerned must always be considered as the whole thing, as the true test is whether the totality of the impression given both orally and visually is such that it is likely to cause mistake, deception or confusion (Halsbury Vol. 38, 3rd Entitled Para 987)."
29. While distinguishing, the distinctive features of passing off and infringement, the Supreme Court observed thus:
"47. Here the point is in relation to relative strength of the parties on the question of passing off. As discussed under Point 5, the proof of resemblance or similarity in cases of passing off and infringement are different. In a passing off action additions, get-up or trade-dress might be relevant to enable the defendant to escape. In infringement cases, such facts do not assume relevance. (See:
48. It is possible that, on the same facts, a suit for passing off may fall but a suit or infringement may succeed because the additions, the get up and trade dress may enable a defendant to escape in a passing off action. A somewhat similar but interesting situation arose in a dispute between two companies. In N.S. Thread Co. v. James Chadwick and Bros. AIR 1948 Mad. 481, the passing off action failed. But, thereafter James Chadwick Co. succeeded in an appeal arising out of the registration proceedings and the said judgment was confirmed by this Court in
49. In the same tone, Halsbury (Trade Marks, 4th Entitled. 1984 Vol. 48 Para 187) says that in a passing off action the "degree of similarity of the name, mark or other features concerned is important but not necessarily decisive, so that an action for infringement of a registered trademark may succeed on the same facts where a passing off action fails or vice versa." As to vice versa, Kerly says (Para 16.12), an infringement action may fall where plaintiff cannot prove registration or that its registration extends to the goods or to all the goods in question or because the registration is invalid and yet the plaintiff may show that by imitating the mark or otherwise, the defendant has done what is calculated to passing off his goods as those of plaintiff.
50. In Scheweppes Ltd. v. Gibbens (1905) 22 RPC 601 (HL), Lord Halsbury said, while dealing with a passing off action that "the whole question in these cases is whether thing taken in its entirety, looking at the whole thing-is such that in the ordinary course of things a person with reasonable comprehension and with proper insight would be deceived."
Defendant''s name on his goods is an indication of there being no case of passing off.
51. In the present case, the defendant''s goods contain the words ''Cadbury'' on their wrappers. As per the principle laid down in Fisons Ltd. v. E.J. Godwin (1917) RPC 653, the occurrence of the name ''Cadbury'' on the defendant''s wrapper is a factor to be considered while deciding the question of passing off. Similarly in King and Co. Ltd. v. Gillard and Co. Ltd. (1905) 22 RPC 327 and Cadbury Schweppes Pty. Ltd. v. The Publication Squash Ltd. (1981) RPC 429, it was held that the presence of defendant''s name on his goods was an indication that there was no passing off, even of the trade dress was similar.
52. The fact that the defendant''s wrapper contains the word ''Cadbury'' above the words PICNIC as therefore, a factor which is to be taken into account.
Buyer''s ignorance and chances of being deceived:
53. As to scope of a buyer being deceived in a passing off action, the following principles have to be borne in mind. Lord Romer, LJ has said in Payton and Co. v. Snelling Lampard and Co. (1900) 17 RPC 48 that it is a misconception to refer to the confusion that can be created upon an ignorant customer. The kind of customer that the Courts ought to think of in these cases is the customer who knows the distinguishing characteristics of the plaintiff''s goods, those characteristics which distinguish his goods from other goods in the market so far as relates to general characteristics. If he does not know that, he is not a customer whose views can properly be regarded by the Court. (See the cases quoted in N.S. Thread and Co. v. Chadwick and Bros. AIR 1948 Mad81 which was a passing off action). In Scheweppes'' case, Lord Halsbury said, if a person is so careless that he does not look and does not treat the label fairly but takes the bottle without sufficient consideration and without reading what is written very plainly indeed up the face of the label, you cannot say he is deceived.
54. In our view, the trial Court in the present case went wrong in principle in holding that there was scope for a purchaser being misled. The conclusion was arrived at without noticing the above principles."
30. Thus 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 trademark 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 species of unfair trade competition 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 action for deceit. The tort of passing off involves a misrepresentation made by a trade to his prospective customers calculated to injure, as a reasonably forceable consequences, the business or good will of another which actually or probably, causes damages to the business of the goods of the other trader.
31. Applying the aforesaid principle, it has to be seen whether there was infringement of copyright by the defendant or whether there was substantial reproduction of the copyright of the plaintiff. The trial Court took into consideration that plaintiff has been using the word from 1974 though it was registered in 1999 and held that the plaintiff being a prior user, it is entitled to claim exclusive ownership even though the registration of copyright by defendant is earlier in point. That is not the question to be decided in this regard. Whether there was reproduction of plaintiff''s copyright is the prime point and whether there was reproduction of essential features. The Supreme Court in S.M. Dyechem''s case (4th cited supra), was considering the provision of Trademark Act, but yet the same principles will apply when the aspect of infringement of trademark or copyright is dealt with. The Supreme Court observed that in determining the essential features, dissimilarities take priority over similarities. In the instant case, according to the plaintiff, essential feature of the copyright is the artistic work of word Eenadu in Telugu script. But the defendant contention is that there are many dissimilarities, essential features, more especially in a case of unrelated goods. It is in evidence that as per Ex.A-43, the word Eenadu was registered as copyright whereas the entire carton with inscription Ashikavari Eenadu Agarbathis with colour scheme was registered in 1997. An over all comparison of the artistic work on the carton and the sole word Eenadu one would come to inescapable conclusion that dissimilarities are in abundance. The carton on its one side the words Ashikavari Eenadu Agarbathis was printed in artistic design, on the reverse side it is printed in English language as "Ashika''s Eenadu incense sticks". The most important and crucial document for the purpose of comparison is the artistic work of word Eenadu in telugu script. In Ex.A-43, the work as registered in 1999 vide registration No. A-56447/99, dated 9-7-1999. In the remarks column it is stated "The copy of the work is annexed." But, this vital document has not been filed. This document is the only document which builds the foundation for the entire case of infringement of copyright. Non-filing of this document is fatal to the case of plaintiff. The Onus is on the plaintiff to establish and exhibit the work that was registered. When such document is not brought into evidence, it must be held that the plaintiff failed to discharge its burden. The learned trial Court failed to consider this aspect and proceeded as if there was a registered artistic work under the Copyright Act. The words "two in one" and logo are in yellow colour with red stripes. On the side flaps the word Eenadu was printed in three languages viz., Tamil, Hindi and Malayalam. In the evidence also it was accepted that the vertical lines in the registered copyright of plaintiff Eenadu Telugu script are not there on the carton containing the word Eenadu. Thus, I find that the plaintiff has not been able to establish that the defendant has infringed the copyright of the plaintiff. The finding of the lower Court accordingly set aside.
Passing of Action:
32. The most crucial and important issue that arises for consideration is whether the plaintiff had established passing off goods by the defendant as that of plaintiff''s. Case law on this issue is enormous. In this regard, it is to be noted that in most of the cases issues related to passing off goods of identical nature namely related goods and in most of the cases the matters came up on appeal against the interlocutory orders either granting temporary injunction under Order 39 Rules 1 and 2 or refusing the same. Passing off action is sought to be established by various means viz., deceptive similarity, prior user of mark, distinctive and secondary meaning, household name for the product, generic meaning acquiring reputation and goodwill in the market etc. Equally the defendant has many defences such as honest bona fide user, acquiescence, general descriptive word, bar under Specific Relief Act, unrelated goods, absence of similarities, visual, phonetic and other circumstances etc. Let us consider the cases on the above sub-heads cited by both the Counsel.
Deceptive Similarity/Distinctive goods
33. The Madras High Court in Shanmugavel v. Associated Publishers (Madras) Limited 1997 I PLR 82, held thus:
"24. It is well settled that deceptive similarly is not to be decided by keeping the two marks side by side and comparing them but to find out whether ordinary purchasers with a normally imperfect recollection or average memory would mistake the goods of the defendant for those of the plaintiff. But newspapers are not like articles such as tea, soap etc., or any other article bought by the public who take one particular word of a distinctive name and are caught by the similarity in the type, size, or colour of the packages. As pointed out in Borthwick v. The Evesing Post 37 Ch.D. 443 by Cotton L.J. the newspapers will be the same and not merely take a hasty look at it. They will be in position to form an opinion upon the politics contained in the newspapers. They are persons of more intelligence and are not likely to be mislead by the colour or intimation of name as purchasers of house hold article etc.
25. In D.V. Thomson & Co. Limited v. Kent Messenger Limited and Anr. 1975 R.P.C. 191, the question was whether the proprietor of a newspaper ''The Sunday post" could get a quia timet interlocutory injunction restraining the publication of a newspaper called "The South East Sunday Post". Megarry, J. held that the word ''post'' was only descriptive and popular and not fancy or distinctive. The same can be said of the word ''Mail'' in the trademark of the plaintiff.
26. In Newsweek Inc. v. British Broadcasting Corporation 1979 R.P.C. 441, the plaintiffs were publishers of the weekly news magazine "Newsweek". The defendants proposed transmitting four times a week a programme entitled ''Newsweek''. The Court held that the word ''newsweek'' was an ordinary descriptive word and the average television viewer in the United Kingdom would be unlikely to associate the television programme with anything but the B.B.C. Walton, J. said:
"It is not the sort of case where you have well known invented words or words which have become household names such as Kodak; for example, Dunlop or something of that nature. It is perfectly true that it is an invented word, but is comes from two ordinary English words signifying precisely and exactly news of the week. Therefore, it seems to me that if we have to take the ordinary viewers as our guide, and I think we must take the ordinary man as our guide looking at the programme he will not be under any misapprehension at all as to where it comes from.
"This word ''Newsweek'' is very largely a descriptive word. It is ''News of the week'', shortened for commercial and publicity purposes to ''Newsweek''. I do not think we should give any publication virtually a monopoly in that largely descriptive word. It would stretch all over the English speaking countries. We certainly should not do it when the great majority of the ordinary folk on England who watch television would not have the slightest idea or slightest knowledge of the American Periodical ''Newsweek''."
34. In
"The words used in the sections and relevant for our purpose are "likely to deceive or cause confusion". The Act does not. lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case must depend on its own particular facts, and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion. On an application to register, the Registrar or an opponent may object that the trademark is not registerable by reason of Clause (a) of Section 8, or Sub-section (1) of Section 10, as in this case. In such a case, the onus is on the applicant to satisfy the Registrar that the trademark applied for is not likely to deceive or cause confusion. In cases in which the Tribunal considers that there is doubt as to whether deception is likely, the application should be refused. A trademark is likely to deceive or cause confusion by its resemblance to another already on the Register if it is likely to do so in the course of its legitimate use in the market where the two marks are assumed to be in use by traders in that market. In considering the matter, all the circumstances of the case must be considered."
The Supreme Court further held:
"For deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods, which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection."
"The question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the two names ''Amritdhara'' and ''Lakshmandhara'' is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of the two composite words ''Amritdhara'' and ''Lakshmandhara''."
"What degree of resemblance is necessary to deceive or cause confusion must in the nature of things be incapable of definition a priori."
35. In Parle Products Limited v. Bakemans Industries Limited IPLR 1999 Jan. 81, the Madras High Court observed at Para 18 as follows:
"In the instant case, neither the applicant nor the respondent is using the mark ''GLUCO'' on a stand alone basis to apply the ''same mark'' yardstick. The applicant is using the mark with a prefix - Parle-G Gluco -and the respondent with a suffix -''Glucogold''. Therefore, the yardstick for similar mark has to be applied. Both the products are packed with wrappers. Therefore, the colour, getup and lettering ought to be compared to find out similarities or dissimilarities."
36. In Sony Corporation v. Elite Optical Company 1987 IPLR 93, it was held thus:
"(1) that Sony was not an invented word but a common surname interchangeable with Soni as could be seen from entries in the telephone directory and that it was a qualified for registration u/s 9 of the Act as proved by the evidence of acquired distinctive produced by the applicant;
(2) that although the rival marks were identical, the rival goods, albeit falling in the same class, were totally different and hence the objection u/s 12 could not be sustained;
(3) that although the opponents proved extensive use of the mark Sony for electronic goods, in view of the totally different nature of the applicant''s goods and in view of absence of instances of actual confusion between the rival goods, the objection u/s 11 could not be sustained.
(4) that no evidence was produced by the opponents to establish that the applicant had copied their mark. Hence, it was not possible to conclude that the applicant could not claim to be the proprietor of the mark."
37. In Associated Electronic and Electrical Industries v. Sharp Tools Limited AIR 1991 Kar. 406, an appeal was filed for cancellation of copyright entry u/s 50 of the Copyright Act.
38. In
"(1) There can be copyright in an idea subject matter, themes, plots or historical or legendary facts, and violation of the copyright in such cases is confined to the form, manner and arrangement and expression of the idea by the author of the copyright work.
(2) Where the same idea is being developed in a different manner, it is manifest that the source being common, similarities are bound to occur. In such a case the Courts should determine whether or not the similarities are on fundamental or substantial aspects of the mode of expression adopted in the copyrighted work. If the defendant''s work is nothing but a literal imitation of the copyrighted work with some variations here and there it would amount to violation of the copyright. In other words, in order to be actionable the copy must substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy.
(3) One of the surest and the safest test to determine whether or not there has been violation of copyright is to see if the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion and gets and unmistakable impression that the subsequent work appears to be a copy of the original.
(4) Whether the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no question of violation of copyright arises.
(5) Where, however, apart from the similarities appearing in the two works there are also material and broad dissimilarities which negative the intention to occupy the original and the coincidences appearing in the two works are clearly incidental no infringement of the copyright comes into existence.
(6) As a violation of copyright amounts to an act of piracy it must be proved by clear and cogent evidence after applying the various tests laid down by the case law discussed above."
39. Similarly in the case of Kenrick & Co. v. Lawrence & Co. (1993)25 QBD 99, it was however, held that there was no copyright in ideas, schemes or systems. In that connection, it has observed as follows:
"It must always be remembered that ideas, however original are not protected under the Copyright Act. Consequently where a very simple diagram embodies an original idea, it is the diagram and not the idea which is protected. Thus a plaintiff conceived the idea of printing and publishing cards bearing a representation of a hand holdings a pencil in the act of completing a cross within the square. With a view to such cards being used at election by illiterate voters and procured an artist to make under his direction a drawing of the representation above described. Subsequently, the defendant published similar cards with a hand holding pencil, in the act of completing a cross in a particular square, or a voting paper, but the hand in the defendant''s card was in a slightly different position. Though the idea was clearly taken from the plaintiff''s card it was held that the defendant''s had not infringed the plaintiff''s copyright. There was no copyright in the idea. The defendant''s work was not an exact reproduction of the plaintiff''s and the plaintiff was not entitled to prevent any one from producing such a simple design as a hand in a square in any form. The case could probably have been put on the ground that there was no evidence of copying the actual drawing although the idea of making and using such drawing was no doubt copied."
40. It was observed by Lord Halsbury in Scheweppes Ld. v. Gibbens:
"The whole question in these cases is whether the thing-taken in its entirety, looking at the whole thing - is such that in the ordinary course of things a person with reasonable apprehension and with proper eyesight would be deceived."
41. In
"This aspect of the matter is again considered by the Delhi High Court recently in
42. The Division Bench of this Court in
"When the plaintiff brought the suit it was only a common law action for "passing off" the plaintiff''s business name. The scope of an action for passing off goods is now too well settled to require elaborate citation of authorities. It is a remedy against a false representation tending to deceive customers into believing that the goods which the defendant is selling are really the plaintiff''s. The false representation may be by statements or by conduct, i.e., by adopting the distinctive mark, name, number, design, get-up or appearance of another''s goods. The plaintiff may prove either an intent to deceive or an actual damage and it is enough if he shows that the conduct of the defendant was calculated or likely to deceive or mislead public. On proof of these facts the plaintiff would be entitled to an injunction or damages. The onus is on the plaintiff to show that his goods acquired a reputation among the public by some distinctive mark, name, etc. The same principles which are applied in the case of an action for "passing off" the goods are applied where the name of a person''s business is imitated and passed off by another person as his own. It has now been uniformally laid down as settled rule that either in the case of goods or business the plaintiff has to show that his mark has become so distinctive that the public regard the same as belonging to a particular source. The plaintiff has to further prove that the offending mark or name is likely or calculated to deceive and cause confusion among the public thereby injuring the plaintiff''s business. It has also been held that where a trader adopts a trading name including mere descriptive words of common use of the Court will not readily assume that the use of the said word or name by another is likely to cause confusion. In such cases it is incumbent upon the plaintiff to show that the name has acquired a secondary meaning in connection with the goods or business so that the use of this name by another is likely to deceive the public."
43. The Division Bench also refers to certain English decisions in paras 5 and 6, which are extracted below:
"5. We will now refer to a few decisions to illustrate the above principles. In frang Reddaway and Frank Reddaway and Co. Ltd., 1896 AC 199 the plaintiff was manufacturing and selling what is known as "Camel Hair Belting". The defendant, also began to sell belting made of Camel''s hair in the name of "Camel Hair Belting". It was held that though the name was descriptive of the nature of the goods, it had come to be associated with the plaintiff''s business and that the defendant should adopt some other device to distinguish his goods. In Cellular Clothing Company Ltd. v. Maxton and Murray (1899) A.C. 326, the plaintiff marked his goods as "Cellular Cloth" denoting description of the fabric out of which the cloth is made. The defendant also used the same word. It was held that the word "Cellular" was an ordinary English word which appropriately and conveniently described the cloth of which the goods sold were manufactured and that no relief can be acquired a secondary or a special meaning so as to denote that the goods only belong to the f. It was held in the course of the judgment that no one can acquire an exclusive right to the use of a word or term which is in ordinary use descriptive only unless it is further proved that such descriptive word acquired a distinctive and secondary meaning during course of time. In British Vacuum Cleaner Co. Ltd. v. New Vacuum Clearner Co. Ltd. (1907) 2 Ch. 312, there were two rival companies doing business in the name of "British Vacuum Cleaner Co. Ltd." On the one hand and New Vacuum Cleaner Co. Ltd. on the other. It was held that the words "Vacuum Cleaner" are only descriptive words and that unless there is proof of the said words having acquired a secondary or distinctive meaning no action lies to stop another person from using the same description. But, it was observed that the use of a fancy word stands on a different footing, as such word does not relate to the article but the person who makes the article. Similarly, in Office Cleaning Services Ltd. v. Westminster Office Cleaning Association (1944) 2 All ER 269 the plaintiff carried on a business of cleaning the inferiors of offices and windows in the name of "Office Cleaning Services Ltd.," The defendant carried on a similar business in the name of "Office Cleaning Association". It was held therein that in the absence of any fraudulent intention the differentiation between the words "Services" and "Association", was sufficient to distinguish the defendant''s business from that of the plaintiff and the plaintiff''s claim should be dismissed. The above authorities cited by the appellant''s learned Counsel lay down the principle that if a trader makes use of a mere descriptive word to denote his business, he cannot claim any monopoly right to the use of such a word. He takes the risk of other people using similar words. In such a case, in order to sustain his action he should further establish that the said name though descriptive has acquired a secondary or distinctive meaning by which the goods or business has come during a long courses of time to be associated with him. The learned Counsel for the respondent drew our attention to Brestian v. Try (1958) R.P.C. 161. That was a case where the plaintiff did business as Ladies Hairdressers, under the trade name, "Charles of London" from 1952. The defendant also started in 1955 similar business in the name of "Charles of London". It was held on a consideration of large volume of evidence that the plaintiff acquired a goodwill in his business run under the said name and that he was therefore, entitled to relief against the defendant by way of injunction in a modified form. This decision is clearly distinguishable on the ground that it was based upon the goodwill acquired by a person doing business by adopting a proper noun.
44. In
"In an action for infringement of trademark or of passing off, in order to establish a prima facie case for grant of ad interim injunction, it is incumbent upon the plaintiff to show (a) that plaintiff has been using its trading style and trademark for quite a long period and continuously whereas the defendant has entered into the said field only recently, (b) that there has not been much delay in the filing of the suit for injunction by the plaintiff, (c) that the goods of the plaintiff have acquired a distinctiveness and are associated in the mind of the general public as goods of the plaintiff, (d) that nature of activity of the plaintiff and the defendant is same or similar, (e) that the goods of the parties to which the trademark of the plaintiff is associated are same or similar, (f) that the user of the said trademark or trade name by the defendant is likely to deceive and cause confusion in the public mind and injury to the business reputation of the plaintiff, (g) that the sphere of activity and the market of consumption of goods of the parties are the same, (h) that the customers of the plaintiff, inter alia, include uneducated, illiterate and unwary customers who are capable of being deceived or confused or misled. Unless plaintiff''s trading style or trade mark has become common property, it would be no defence for the defendant that there are some other concerns who were also using similar trading style or similar trade mark; as to whether it has become common property is a question of fact in each case. The mere fact that the defendant has got its name approved from the Registrar of Companies would not go against the claim of the plaintiff in any manner whatsoever."
45. In the
"17. Lastly, we may take note of a precedent of the Supreme Court in
"To support a plea of acquiescence in a trademark case, it must be shown that the plaintiff has stood by for a substantial period and thus encouraged the defendant to expend money in building up a business associated with the mark."
18. We shall deal, in a more condensed form, with the citations which have been placed before us from Kerly on Trade Marks (8th Edition, page 246), Halsbury''s Laws of England (Third Edition) Volume 38. Paragraphs 869 and 894 and Dr. Venkateswaran on Trade Marks Act (1963 Edition), these last passages being cited from a number of pages of the work. In the present case, the difficulty is partly that, in a context of this character, one has to be careful to see that a circular argument does not emerge. Certainly, if there is some evidence on record which shows that the Trademark or the word "GANESH", with or without the variance of prefixes or suffixes, was used by about forty traders in that area, as the appellant claims, then it would be common to the trade; that may be so, ab initio. It that is the interpretation, then the attempt of the respondent firm to register this mark, on the basis of their business in Agarbathies built up from 1953 to 1960, must necessarily fail. When a word is publici juris, like the word "DURBAR" which the respondent firm disclaimed, there can be no registration, for there cannot be distinctiveness. This is a question of fact, as Kerly points out (paragraph 3, page 119). If, on the contrary, the word had attained distinctiveness as the mark of the respondent firm, this distinctiveness may be lost. But, unless it is lost, it is entitled to recognition. The loss may be due to abandonment, acquiescence in successful piracy on a large scale, or a volume of common user, which is public and which destroys distinctiveness. The Mark may be publici juris in a particular branch of the trade only (Kerly, pages 245-246). The occurrence of a few fraudulent infringements, without the knowledge of the proprietor, will not make the mark common to the trade (Dr. Venkateswaran''s Treatise, pages 659 to 661). Again, mere disuse for a short period, may not amount to abandonment. When rectification is attempted, the onus is on the applicant to show that the Mark had lost its distinctiveness. There are several authorities, including passages in Kerly, which need not be quoted again here, clearly to the effect that mere surreptitious user, sporadic user, piracy in a concealed manner against which action was taken or attempted by the proprietor, when the piracies came to light, cannot possibly destroy the distinctiveness earlier achieved."
46. In Vishnudas Trading v. The Vazir Sultan Tobacco Co. Ltd. 1997 IPLR 1, it was held that the rival goods though under the same board brought classification were clearly distinguished and separate articles. Registration of Charminar trademark for manufacturing of Tobacco gave exclusive right to the Registrant and for use on articles for broad classification, the appellant''s application for registration of the same mark for Quimam Zarda was not allowed. However, that did not prevent the Assistant Registrar of Trademarks for rectifying the registration and rectifying the registration mark to which the goods on use Cigarette. Otherwise, it would lead to trafficking in trademark. No registration could be take for absolutely perpetual or invariable.
47. In
"An average purchase would, therefore, be likely to think that the respondent''s Gluvita biscuits'' were made with the appellant''s ''Glucovita'' glucose. This was the kind of trade connection between different goods which is in the "Black magic" case (in re: an application by Edward Hact) 1940-58 RPC 91 was taken into consideration in arriving at the conclusion that there was a likelihood of confusion or deception. The goods in this case were chocolates and laxatives and it was proved that laxatives were often made with chocolate coatings..."
48. The Supreme Court in Vishnudas case (16 supra) further observed at paras 45, 46 and 47, which are extracted below:
"45. There is no manner of doubt that the varieties of articles made of tobacco are differently used and they have their distinctive quality and separate identity. These articles are also marketed as distinct articles of use in different manner. In the common trade channel such articles are not only held different and distinct articles but are marketed separately. It does not require any imagination to hold that snuff or quiwam are entirely distinct products and even though the said products and the cigarettes, beedi/s, cheroot are also made of tobacco and all such products may come under the broad classification ''manufactured tobacco'', each of the said products is always held as a distinct and separate article of use having its specific characteristics.
46. The respondent-Company got registration of its brand name "Charminar" under the broad classification ''manufactured tobacco''. So long such registration remains operatives, the respondent-Company is entitled to claim exclusive use of the said brand name in respect of article made of tobacco coming under the said broad classification ''manufactured tobacco''. Precisely for the said reason, when the appellant made application for registration of quiwam and zarda under the same brand name ''charminar'', such prayer for registration was not allowed. The appellant, therefore, made application for rectification of the registration made in favour of the respondent-Company so that the said registration is limited only in respect of the articles being manufactured and marketed by the respondent-Company, namely, cigarettes. In our view, if a trader or manufacture actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacture has no bona fide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers to get registration of separate and distinct goods which may also be grouped under the broad classification. If registration has been given generally in respect of all the articles coming under the broad classification and if it is established that the trader or manufacturer who got such registration had not intended to use any other article except the articles being used by such trader or manufacturer, the registration of such trader is liable to be rectified by limiting the ambit or registration and confining such registration to the specific article or articles which really concern the trader or manufacturer enjoying the registration made in his favour. In our view, if rectification in such circumstances is not allowed, the trader or manufacturer by virtue of earlier registration will be permitted to enjoy the mischief of trafficking in trademark, Looking to the Scheme of the registration of trademark as envisaged in the Trademarks Act, and the Rules framed thereunder, it appears to us that registration of a trademark cannot be held to be absolute, perpetual and invariable under all circumstances. Section 12 of the Trademarks Act prohibits registration of identical or deceptively similar trademark in respect of goods and description of goods which is identical or deceptively similar to the trademark already registered. For prohibiting registration u/s 12(1), goods in respect of which subsequent registration is sought for, must be (i) in respect of goods or description of goods being same or similar and covered by earlier registration and (ii) trademark claimed for such goods must be same or deceptively similar to the trademark already registered. It may be noted here that under Sub-Section (3) of Trademarks Act, in an appropriate case, of honest concurrent use and/or of other special circumstances, same and deceptively similar trademarks may be permitted to another by the Registrar, subject to such conditions as may deem just and proper to the Registrar. It is also to be noted that the expression "goods" and "description of goods" appearing in Section 12(1) of Trademarks Act indicate that registration may be made in respect of one or more goods or of all goods confirming to a general description. The Trademarks Act has noted distinction between description of goods forming a genus and separate and distinctly identifiable goods under the genus in various other sections e.g., goods of same description in Section 46, Sections 12 and 34 and class of goods in Section 18, Rules 12 and 26 read with 4th Schedule to the Rules framed under the Act.
47. The "class" mentioned in the 4th Schedule may subsume or comprise a number of goods or articles which are separately identifiable and vendible and which are not goods of the same description as commonly understood in trade or in common parlance. Manufactured tobacco is a class mentioned in Class 34 of 4th Schedule of the Rules but within the said class, there are number of distinctly identifiable goods which are marked separately and also used differently. In our view, it is not only permissible but it will be only just and proper to register one or more articles under a class or genus if in reality registration only in respect of such articles is intended, by specifically mentioning the names of such articles and by indicating the class under which such article or articles are to be comprised. It is therefore, permissible to register only cigarette or some other specific products made of ''manufactured tobacco'' as mentioned in Class 34 of the 4th Schedule of the Rules. In our view, the contention of Mr. Vaidyanathan that in view of change in the language of Section 8 of Trademarks Act as compared to Section 5 of Trademarks Act, 1940, registration of trademark is to be made only in respect of class or genus and not in respect of articles of different species under the genus is based on incorrect appreciation of Section 8 of the Trademarks Act and 4th Schedule of the Rules."
49. The learned Single Judge of this Court in Syed Nizamuddin v. Golden Tobacco Company Private Limited 1 PLR 1978 A.P. 135, held thus:
"(i) That in an action for passing off the protection extended not only to the same kind of goods which the plaintiffs manufacture, but also to goods which are allied or cognate in nature when the facts in a particular case show that there is likelihood of deception namely that the consumers would think that the goods of the defendants are of the manufacture or the products of the plaintiff (ii) that to get relief in a passing off action besides showing that the marks are deceptively similar it must be shown that on account of such deceptive similarity the plaintiff is likely to suffer substantial damage and (iii) that in the present case even assuming that there is a likelihood of deception in that the customers might think that the cigarettes of the defendant company are of the manufacture of the plaintiffs, it was not shown that by reason of that deception the plaintiff is likely to suffer any substantial damage."
50. In
"The purpose of tort of passing off is to protect commercial goodwill; to ensure that people''s business reputations are not exploited. Since business "goodwill" is an asset, and therefore/species of property the law protects it against encroachment as such. The tort is based on economic policy, the need to encourage enterprise and to ensure commercial stability. It secures a reasonable area of monopoly to traders. It is thus complimentary to trademark law which is founded upon statute rather than common law. But there is a difference between statute law relating to trademarks and the passing off action; for, while registration of relevant mark, itself gives title to the registered owner, the onus in a passing off action lies upon the plaintiff to establish the existence of the business reputation which he seeks to protect. The asset protected is the reputation, the plaintiff''s business has in the relevant market. This is a complex thing. It is manifested in the various indicia which lead the client or customer to associate the business with the plaintiff; such as the name of the business, whether real or adopted, the mark, design, make-up or colour of the plaintiffs'' goods, the distinctive characteristics of services he supplies or the nature of his special processes. And it is sound encroachments upon such indicia that passing off actions arise. What is protected is an economic asset. The plaintiff must establish that his business or goods have acquired the reputation he alleges, and this can be done by showing that a substantial proportion of people who are likely to become purchasers of the goods of the kind in question associate the name with them. The weight of this burden must vary according to the facts. It is the tendency to mislead or confuse that thus forms the gist of action; and the plaintiff need not establish fraud, nor that any one was actually deceived, or that he actually suffered damage. The tort is thus (like label) actionable per se. Indeed the forms bf passing off, like the forms of nuisances, are infinite. Loss of sales is not the only form of probable injury that will suffice, loss of reputation has been accepted as sufficient. Law protects all intangible elements of value and it is not always necessary that there must be in existence goods of that other man with which the defendant seeks to confuse his own.
The plaintiffs were registered proprietors of trademark ''Elora'' in respect of watches, timepieces, clock and their parts. The plaintiffs sold clocks but intended to introduce timepieces. Defendants manufactured time pieces with their distinctive mark ''Gargon'' but their business name was ''Ellora Industries'' used conspicuously by them in advertisements etc., as part of their business name."
The learned Judge held thus:
"On facts that it was a case of passing off and also of infringement of registered trademark of plaintiffs. The use of the word ''Elora'' by the defendants was indicative of a warm intimacy with "the plaintiffs. The registered trademark ''Elora'' was known to the trade and the word ''Elora'' lurked and lingered in the minds of the customers minded to obtain goods of that mark. The word appeals to the ear than eye. There was a real and tangible risk of damage, the field of activity being common. The wrongful appropriation of trade reputation was an injury to plaintiffs. That injury and the acknowledged intention to continue to inflict it was ample justification for the injunction."
51. While dealing with the word deceptively similar to Division Bench of Gujarat High Court, in
"Where no trademarks are used for the products and a manufacturer complains that the likely customer of his goods is apt to be confused by the similarity between the name of his company and the name of some other company which has subsequently, started production, though the Court has to apply the test whether such hypothetical consumer ''would be confused in selecting the goods of the rival companies by the similarities in their names, the Court has ultimately to form its own opinion on the matter.
The test to be applied is the test of an average person with imperfect recollection. The Court has to visualize a customer or a tradesman or a citizen who may happen to have dealings with the company complaining or who may happen to want to purchase the goods manufactured by such company and decide whether such a customer or tradesman or citizen would get confused. It would not be right to apply the test of a man of extraordinary memory who remembers the spelling of the name of each company or a person who jots down meticulously and methodically the names of companies in his diary and brings out his diary and contemplates whether he is dealing with one company or the other."
52. On question of likelihood of confusion in case of deceptively similar goods, the learned Single Judge of Bombay High Court in
"The question of likelihood of confusion has to be decided by comparison of marks as a whole. The totality of the mark is required to be considered to hold as to whether or not the mark is deceptively similar. In deciding whether the word ''Betalong'' is deceptively similar to the word ''Betaloc'', each of the two words must be taken as a whole word. The words are so similar that there is reasonable probability of confusion between the words both from the visual and phonetic point of view. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop. Even if proper attention is paid to the termination of the marks, the likelihood of confusion being caused cannot be ruled out. The mark ''Betaloc'' is too near and so similar to the mark ''Betalong'' as to make the confusion likely. Phonetically, visually and structurally both the marks are similar. Actual deception is not necessary to be proved. What is material is likelihood of deception.
In the present circumstances, doctor''s prescription factor has lost its importance since the reality of the situation cannot be ignored. In India scheduled drugs which are to be sold under doctor''s prescription are even sold without production of doctor''s prescription and as such reduces the weightage that can be given to this aspect of the matter while considering the question of deceptive similarity. The marks ''Betaloc'' and ''Betalong'' being visually, phonetically and structurally similar, and so close to each other that it outweighs the weightage to be given to the factor that the goods are scheduled drugs."
In regard to unrelated goods the plaintiff could imitate action for passing off on the ground that ''Bata'' was a fancy name and it was a surname of the person who started the business. (See:
53. Similarly in
"There are names and marks which have become household words, "Benz" as name of a Car would be known to every family that has ever used a quality car. The name "Benz" as applied to a car, has a unique place in the world. There is hardly one who is conscious of existence of the cars/ automobiles who would not recognize the name "Benz" used in connection with cars. Thus the boxes in which the defendant sells its undergarments for men, and the representation thereon is for a man with his legs separated and hands joined together above his shoulder, all within a circle, indicate, the strong suggestion of the link between the three pointed star of "Mercedes Benz" car and the undergarments sold by the defendant. This cannot be considered to be a "honest concurrent user" by the defendant of the above said symbol. Therefore, the defendant could be restrained from using the word "Benz" with reference to any underwear which is manufactured by them, and injunction could be issued restraining the defendant to cease and desist from carrying on trade in any undergarments in the name of "Benz" and "Three Pointed Human Being in a Ring", forthwith.
The Trademark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else''s reputation with reference to goods, especially so when the reputation extends world wide. By no stretch of imagination can it be said that use for any length of time of the name "Benz" should be not objected to."
54. In a recent case Aktiebolaget Volvo of Sweden v. Volvosteels Ltd. of Gujarat (India) 1998 (Suppl.) Arb.L.R. 627 the learned Single Judge surveyed various decisions on the ground of deceptive similarity and likely to cause confusion and observed at para 61 as follows:
"It is also clear to us that as a matter of law the "common field of activity" is not required to be established. However, as the crux of passing off action lies in possible deception, the existence of common field of activities always relevant consideration. If there is common field of activity; possibility of deception is very high and if there is no common field of activity possibility may be less, but it cannot be laid down as a rule of law that there can be no possibility at all. Thirdly, and more importantly, all these issues ultimately will depend on the facts and circumstances and the material on record of each particular case, as to whether the plaintiff has established the goodwill or reputation, whether the plaintiff has established the transborder reputation, whether the defendant has caused misrepresentation innocently or deliberately and whether the plaintiff has suffered damage or is likely to suffer damage in quia timet action. These will be questions of fact to be determined by the Court. It is also clear that if it is shown that the defendant intended to deceive, the burden would be much lighter on the part of the plaintiff. The existence of unexpected and unexplained similarities between the goods of the defendant and the plaintiff or lack of explanation or false explanation for adoption of name by the defendant, may be extremely relevant."
Descriptive words, exclusive user/ secondary meaning:
55. The Madras High Court in Coromandel Fertilizers Ltd. v. Coromandel Cements Ltd. 1989 I PLR 105, held in para 8 as follows:
"Now to the question of passing off. Passing off is a common law action against a person restraining him from passing off his goods as and for the goods of another, whether the goods are of the same or of different kind by using the trademark or the trade style of the other. It is strenuously contended by the learned Counsel for the plaintiff-applicant that the applicant has been manufacturing and marketing fertilizers under the name. ''Coromandel Fertilizers'' since 1961, that its product has obtained a special reputation in the market, that the applicant is manufacturing and selling cement under the same name from 1984, that the user by the defendant of the name ''Coromandel'' for its cement is likely to cause confusion in the minds of the public, that the public will be made to believe that the defendant-Company is associated with the plaintiff-Company and would lead the people to accept the defendant''s goods on the faith of the plaintiff''s reputation and the defendant must therefore, be restrained from using the word ''Coromandel'' for its cement. This, in essence, is a passing off action and inasmuch as the applicant has given up its relief for passing off in the plaint, it is not entitled to any interim injunction. Secondly, the word ''Coromandel'' is not a word of Article. It is not a fancy name of an invented term from the geographical name denoting the East Coast of South India and is therefore, incapable of acquiring distinctive in general in respect of all businesses and trades. The applicant cannot, therefore, claim the right of exclusive user of the word ''Coromandel'' for whatever business it may carry on or whatever goods it may manufacture. This is obvious from the fact that several companies and concerns with the name ''Coromandel'' are doing various kinds of business for example Coromandel Corporation Private Limited, Coromandel Enterprises Private Limited, Coromandel Electronics Private Limited, Coromandel Engineering Private Limited, Coromandel Garments Limited, Coromandel Industries Private Limited, Coromandel Leather Private Limited, Coromandel Oil Private Limited, Coromandel Prodorite Private Limited, Coromandel Steels Limited, as is seen from the telephone directory. The word can however acquire distinctiveness in respect of a particular trade or goods. The plaintiff as the user of this word for the purpose of fertilisers since 1961 is entitled to claim exclusive user of the word in the manufacture and sale of fertilisers. But, it cannot claim such a right of exclusive user in respect of cement which it has started manufacturing only in 1984 on the other hand, it is the defendant which has registered its name as ''Coromandel Cements Limited'' in 1978 itself though it has not yet started production. By virtue of prior adoption, it is the defendant who can claim the right of exclusive user of the word ''Coromandel'' for cement. The plaintiff is not therefore, entitled to any injunction restraining the defendant from using the word ''Coromandel'' for its cement"
56. The Delhi High Court in Relaxo Rubber Limited v. Aman Cable Industries 1998 (2) ARB 709, it was held thus:
"When a mark is used consisting of a purely descriptive word or words it cannot be said that a case of passing of has been made out. Words ''relaxon'' or ''relax'' adding thereto a vowel ''o'' are dictionary words and more or less purely descriptive in nature. Thus the said words cannot be said to be invented by the plaintiffs. Since the nature of trading and the goods dealt with by the plaintiffs and the defendants are distinct and separate having no connection with each other at all and since the trademark of the plaintiffs is held to be not an invented word it cannot be said that a case of passing off has been made out by the plaintiffs on the user of the defendants of the same trademark in relation to its goods of wires, cables and PVC pipes. Even otherwise the defendants have placed on record the documents indicating the defendants dealing with the mark ''Relaxo'' for last about 8 years, the bills and the receipts place on record indicate that the aforesaid mark is being used atleast from 25-12-1993 and the suit was filed in the year 1997. Thus, there was also delay on the part of the plaintiffs in approaching this Court. The plaintiff has to bring an action of passing off immediately."
57. In
"In regard to a "passing off" action according to settled law, there are broadly two tests which have to be applied for determining the question whether the plaintiff is entitled to an injunction. The tests are:-
(1) Whether the words used in the trade name of the plaintiff are mere descriptive words of common use or have they come to acquire a distinctive or secondary meaning in connection with the plaintiff''s business so that the use of those words in the trade name adopted by another was likely to deceive the public? The test relates to the reputation, which the plaintiff claims for itself.
(2) Whether there is a reasonable probability that the use of the name adopted by the defendant was likely to mislead the customers of the plaintiff by reason of similarity of the two trade names.
In order to succeed the plaintiff has to establish both these things. The Court shall insist on a very high standard of proof before it would grant injunction in favour of the plaintiffs, in view of the seriousness of the repercussions, which such an injunction is bound to have on the rights of the defendants. The injunction prayed for in such cases prohibits the defendants altogether from carrying on their existing business under a trade name adopted by it at the instance of a plaintiff whose claim is founded on no more than such illusive concepts as "reputation" or goodwill and so forth. In the cases of infringement of trademarks, the right is founded on registration of the mark, which per se is property. It must be borne in mind that in the case of an action on infringement of a trademark in view of the statutory provisions, a similarity in the trademarks is per se actionable. In passing off actions, however, the plaintiff has to prove further, that his trade name has by reputation and use, come to acquire a secondary meaning indicating distinctiveness and quality of the business being carried on by him."
58. In Indo-Pharma Pharmaceutical Works Limited, Mumbai v. Citadel Fine Pharmaceuticals Limited, Madras 1999 (1) Arb.L.R. 227, the Madras High Court recorded the following conclusions:
"The word ''Enerj'' is an abbreviation of a generic name ''energy''. The word ''energy'' is a commonly used word and would be the description of energising product. A generic name of a product cannot be treated as a trademark to indicate the origin. The prefix for both the mark, viz., ''Enerj'' is common to the trade and cannot be a proprietary name. Nobody can claim exclusive right to use such an abbreviation.
As per the suffix phonetically, the words ''Jex'' and ''Jase'' are totally dissimilar and are not going to create any confusion in the mind of the users especially, in this case, when the visual impression of the said two trade names is completely different.
In fact, we have compared the two words as a whole with the eye of the public. We think prima facie that the total sound effect on there two words lacks any similarity. So also, when these words are written down and compared, they do not have any similarity which can deceive the eye of the layman."
59. In R.S.K.V. Raghavan Trading as R.S. Krishbna and Company, Mayuram v. G.R. Gopal and Company AIR 1981 Mad. 262, it was held thus:
"When a distinctive label is registered as a whole as a trademark such registration cannot give an exclusive statutory fight to the proprietor of the trademark to the use of any particular word or name contained therein apart from the mark as a whole. Therefore, where the applicant manufacture medicinal oil under the registered trademark consisting of a label containing the word "Thennamarakkudi" along with other words applied for rectification of the respondent''s registered trademark containing the words "Thennamarakkudi oil" on the ground that the same was a clear infringement of his mark and its use was likely to cause deception or confusion in the minds of the purchasing public, the applicant must establish that the word ''Thennamarakkudi'' had been used in his registered label to distinguish his goods from those of others. ''Thennamarakkudi'' being geographical name the applicant could claim a trademark in that name only if he establishes that the geographical name has acquired a distinctive character and has been associated with his goods and therefore, is a distinctive mark for his goods. When several merchants were manufacturing similar medicinal oil preparation called ''Thennamarakkudi oil'' and the preparation itself took its name from the village Thennamarakkudi'' in Nannilam Taluk the applicant could not claim exclusive right to the use of those words in his registered label. Even assuming that the applicant used the word ''Thennamarakkudi'' to show the distinctive character of his medicinal preparation that expression must be taken to have become public jurisdiction as it had subsequently been used by persons making similar medicinal off preparations and the right of the applicant to the trademark must be taken to have gone since nobody could be deceived by the use of it or can be induced from the use of it to believe that he is buying the goods of the original traders. More over, since there was no separate registration of the word ''Thennamarakkudi'' as a trademark the applicant cannot be taken to have acquired a proprietary right in that word though he might have acquired the proprietary right in the label by its registration especially when ''Thennamarakkudi'' is a geographical name not shown to have been used to distinguish the medicinal oil prepared by the applicant. Therefore, the applicant was not entitled to claim rectification."
In Teju Singh''s case (13th cited supra) observed thus:
6. The test whether words are descriptive has been laid down in Corpus Juris Secundum, Vol.87 in paras 34 and 35, at page 271 as follows:
"The true test in determining whether a particular name or phrase is descriptive is whether, as it is commonly used, it is reasonably indicative and descriptive of the thing intended. In order to be descriptive, within the condemnation of the rule, it is sufficient if information is afforded as to the general nature or character of the articles and it is not necessary that the words or marks used shall comprise a clear, complete, and accurate description. The meaning which should be given is the impression and signification which are conveyed to the Pubic. Whether words or marks claimed as trademarks are descriptive or whether they are suggestive or arbitrary and fanciful must be decided with respect to the articles to which they are applied and the mark must be considered as a whole.
An exclusive trademark must consist of some arbitrary or fanciful term, figure, or device, and words or phrases, in order to constitute a trademark, must be used in purely arbitrary or fanciful way was applied to the goods in question. Words or marks are arbitrary or fanciful when they do not, by their usual and ordinary meaning, denote or describe products to which they are applied, but rather come to indicate their purposes by application and association."
60. With regard to the acquisition of secondary or special meaning, the Bench observed in para 8 as follows:
"The next question for consideration is whether the words "One day" have acquired any secondary or special meaning in connection with the plaintiff''s business. On this aspect of the case the learned Judge held that the plaintiff''s trade name being a distinctive name, it is no longer necessary to prove that the name acquired any reputation. Even in the case of a distinctive mark when the action is one for a passing off under common law, it should be proved that the plaintiff established reputation. It is only in an action for the infringement of a trademark that the plaintiff can succeed merely by proof of infringement of a mark and nothing more. The authorities are clear that in the case of a descriptive name the plaintiff has to further prove that the words acquired a secondary meaning and that the plaintiff is associated with the said name. The plaintiff has not given any particulars as to how the words acquired any such meaning. No other evidence has been adduced to show that the words "One day" have acquired any reputation in the locality as to identify the same with the plaintiff''s business. P.W.2 has been examined to show that when he saw the signboards of the plaintiff and the defendant, he was led to believe that the plaintiff and the defendant are the same. He stated that if a servant goes to the shop it is difficult for him to distinguish one from the other."
Acquiescence / Delays / Laches:
61. In
"Even though there may be some doubt as to whether laches or acquiescence can deny the relief of a permanent injunction, it has been consistently held that if the defendant acts fraudulently with the knowledge that he is violating the plaintiff''s rights then in that case, even if there is an inordinate delay on the part of the plaintiff in taking action against the defendant, the relief of injunction is not denied. Where there is an honest concurrent user by the defendant then inordinate delay or laches may defeat the claim of damages or rendition of accounts but the relief of injunction should not be refused. This is so because it is the interest of the general public, which is the third party in such cases, which has to be kept in mind. In the case of inordinate delay or laches, as distinguished from the case of an acquiescence, the main prejudice which may be caused to the defendant is that by reason of the plaintiff not acting at an earlier point of time the defendant has been able to establish his business by the using the infringing mark. Inordinate delay or laches may be there because the plaintiff may not be aware of the infringement by the defendant or the plaintiff may consider such infringement by the defendant as not being serious enough to hurt the plaintiff''s business. Nevertheless, if the Court comes to the conclusion that prejudice is likely to be caused to the general public who may be mislead in to buying the goods manufactured by the defendant thinking them to be the goods of the plaintiff then an injunction must be issued. The Court may, in appropriate cases, allow some time to the defendants to sell off their existing stock but an injunction should not be denied."
62. In
"34. In order to consider the balance of convenience and the damage it is necessary to consider the facts relating to acquiescence, delay and that of confusion that may be created in the minds of the public in order to ascertain the damage that may be caused to the plaintiffs. The Trial Court considering the correspondence between the Mysore Kirloskar and that of the Kirloskar Systems Ltd. with that of the 1st defendant-Company has recorded a finding that the plaintiffs are aware of the incorporation of the 1st defendant-Company. It is an admitted fact that the Mysore Kirloskar entrusted the video filming to the first defendant-Company. Therefore, it cannot be said that there is no delay on the part of the plaintiffs in bringing action for passing of immediately after the incorporation of the first defendant company. It is also an admitted fact that the plaintiffs through one of its group of companies as started earlier the plaintiffs has entrusted the work of video filming to the 1st defendant. In view of this fact, the learned Counsel for the 1st defendant contended that the plaintiffs have acquiesced in their conduct in allowing the defendants to start their business and therefore, the plaintiffs are not entitled for any interim relief. The advocate for the plaintiffs submitted that in order to apply the principles of acquiescence the defendant is required to satisfy certain conditions as held in the decision of Willmott v. Barber 15 Ch.D. 96, as follows:
"It requires very strong evidence to introduce the Court to derive a man of his legal right when he has expressly stipulated that he shall be bound only by a written document. It has been said that the acquiescence which will deprive a man of his legal rights must amount to fraud, and in my view that is an abbreviated statement of a very true proposition. A man is not to be deprived of his legal rights unless he has acted in such a way as would make it fraudulent for him to set up those rights. What, then, are the elements or requisites necessary to constitute fraud of that description? In the first place the plaintiff must have made a mistake as to his legal rights. Secondly, the plaintiff must have expended some money or must have done some act (not necessarily upon the defendant''s land) on the faith of his mistaken belief. Thirdly, the defendant, the possessor of the legal right, must know of the existence of his own right which is inconsistent with the right claimed by the plaintiff. If he does not know of it he is in the same position as the plaintiff, and the doctrine of acquiescence is founded upon conduct with a knowledge of your legal rights. Fourthly, the defendant, the possessor of the legal right, must know of the plaintiff''s mistaken belief of his rights. If he does not, there is nothing which calls upon his to assert his own rights. Lastly, the defendant, the possessor of the legal right, must have encouraged the plaintiff in his expenditure of money or in the other acts which he has done, either directly or by abstaining from asserting his legal right. Where all these elements exist, there is fraud of such a nature as will entitle the Court to restrain the possessor of the legal right from exercising it, but, in my judgment, nothing short of this will do."
In the above said case no doubt the person pleading acquiescence shall prove certain conditions. But, in my opinion the said decision has no application at this stage for the purpose of considering interim prayer. As pleaded in the trial. No doubt it is open to the defendant to prove or establish acquiescence as pleaded in the trial. What is required to be considered at this stage is the conduct of the parties. The Counsel for the appellants that the plaintiffs cited another decision in the case of
"26. Acquiescence is sitting; by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trademark, trade name etc., it implies positive acts; not merely silence or inaction such as is involved in laches. In Harcourt v. White (1860) 28 Beav. 303 Sir, John Romilly said: "It is important to distinguish mere negligence and acquiescence." Therefore, acquiescence is one facet of delay. If the plaintiff stood by knowingly and let the defendants built up an important trade until it had become necessary to crush it, then the plaintiffs would be stopped by their acquiescence. If the acquiescence in the infringement amounts to consent, it will be a complete defence as was laid down in Mouson (J.G.) & Co. v. Boem. The acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendant as was laid down in Rodgers v. Nowill."
In the instant case as held earlier the plaintiffs knew that the 1st defendant incorporated as company in the year 1990 itself. The plaintiffs themselves through one of the group of companies entrusted certain work to the 1st defendant-Company. This fact clearly shows that the 1st defendant has established its business and started carrying on business from the year 1990. Hence, the decision
35. No doubt the delay in bringing the action itself may not come in the way of granting an order of injunction in favour of the plaintiffs as per the decision reported in
36. As observed by me earlier, the plaintiffs and defendants are not engaged in the common field of activity. The business of the defendant is altogether different from that of the business of the plaintiffs as on the date of the filing of the suit. It is also not the case of the defendants that they have taken any steps to start the business which is being carried on by the plaintiffs.
63. In
"Acquiescence is sitting by, when another is invading the right and spending money on it. It is a course of conduct inconsistent with the claim for exclusive right in a trademark, trade name etc. It implies positive acts, not merely silence or inaction such as is involved in laches. If the plaintiff stood by knowingly and let the defendant built upon important trade until it had become necessary to crush it, then the plaintiffs would be stopped by their acquiescence. The Director of the first respondent-Company is the son of the owner of the appellant who is the inventor of the artistic design. They have been closely associated as family members in various concerns. There is evidence of sale of equipment manufactured by the Appellant, but there is no evidence of their manufacture by the first respondent. There is no plea of assignment of copyright. The denial of injunction by High Court cannot be supported. Injunction allowed.
Mere silence and inaction as is the case in laches does not constitute acquiescence. There should be some positive act to indicate consent. Where there is no evidence of assignment of copyright, injunction cannot be refused."
64. In Cluett Peabody and Company Inc. v. Mcintyre Hogg Marsh and Co. Ltd. 1958 RPC 335, it was observed thus:
"The remedy sought is after all equitable, and delay on the part of the plaintiffs of great length with full knowledge of the facts must in principle affect the plaintiffs'' right to relief. What are the facts here? The defendants have used the offending word and device continuously for more than sixty years (including the years of both wars) before issues of the writ. The plaintiffs have known of the defendants'' use of the device since 1911 forty-two years before writ and almost certainly of the word from the same time.
The true principle is to be found in the judgment of Sri Barnes Peacock in Lindsay Petroleum Co. v. Hurd (1874) 5 P.C. 221 at P.239.
"Now the doctrine of laches in Courts of equity is not an arbitrary or a technical doctrine. Where it would be practically unjust to give a remedy, either because the party has, buy his conduct, done that which might fairly be regarded as equivalent to a waiver of it. Or where by his conduct and neglect he has, though perhaps not waiving that remedy, yet put the other party in a situation in which it would not be reasonable to place him if the remedy were afterwards to be asserted, in either of these cases, lapse of time and delay are most material. In every case, if an argument against relief, which otherwise would be just is founded upon mere delay, that delay of course not amounting to a bar by any statute of limitation, the validity of that defence must be tried upon principles substantially equitable. Two circumstances, always important in such cases are the length of the delay and the nature of the acts done during the interval, which might affect either party and cause balance of justice or injustice in taking the one course or the other so far as relates to the remedy."
Honest Consumer User:
65. The Calcutta High Court in J & W Hardie Ltd. v. Joseph E. Seagram and Sons Inc. 1991 IPLR 2555, held thus:
"Dismissing the appeal the Court held:
"that there was no need to interfere with the Registrar''s decision to allow concurrent user since, according to evidence furnished by the respondent and in the absence of evidence to substantiate the contentions of the Appellant, it was clear that the appellant''s mark was not used in India since 1947 whereas the respondent could substantiate sales to parties in India with documentary evidence of honest concurrent user atleast from 1969 if not earlier."
66. In Maekawa Bearing Manufacturing Co. Ltd. v. Onkar Bearing Industries 1997 PTR 147, the Delhi High Court was held that a person manufacturing and selling for over 25 years can be said to be a onus concurrent user and it cannot be said that he has a mala fide user.
Related Goods/Common field of activity:
67. In
"The expression ''common field of activity'' was coined by Wynne-Parry J. in Mc. Colloch v. Levis A. May (Product Distributors) Ltd. popularly known as ''Uncle Mac'' case reported in 65 RPC 58 in which he held that its presence or absence was conclusive in determining whether or not there was passing off. However, the requirement that a ''common field of activity'' is conclusive in determining whether there can be passing off has been extensively criticised by Manning J. in the case of Henderson v. Radio Corporation Pty. Reported in (1969) RPC 218 holding that it would be unsafe to adopt the view expressed in Mc. Culloch v. Mary that what has been called a common field of activity must be established in every case to entitle the plaintiff to succeed. He further held that it is going too far to say that the absence of this so called common field of activity necessarily bars a plaintiff from relief. With the passage of time, law on requirement of common field of activity in a passing off action has radically changed. There is no requirement for a common field of activity to found a claim in passing off. In Marage Studies v. Counter Feat Clothing Co. Ltd. reported in (1991) FSR 145, Browne Wilkison V-C said that the so called requirement of the law that there should be a common field of activity is now discredited. The real question in each case is whether there is as a result of misrepresentation a real likelihood of confusion or deception of the public and consequent damage to the plaintiff. The focus is shifted from the external objective test of making comparison of activities of parties to the state of mind of public in deciding whether it will be confused. With the passage of time and reputation acquired, the trademark ''Kirloskar'' has acquired the secondary meaning and has become almost a household word. The judgments relied upon by Mr. Kane pertain to the cases of one type of business and not where variety of businesses have been carried by the plaintiff and defendant as in the instant case. The business activities of the respondents vary from pin to piano as borne out from the object clauses of the Memorandum of Association of the respondents. The appellants have still to commence their business activities but as mentioned in the Memorandum of Association of 1st appellant in each appeal, some of the object clauses therein over Land Acquisition proceedings with the activities of respondents and more particularly of respondents Nos. 6 and 7."
68. The learned Single Judge of Bombay High Court in Reliance Industries Limited v. Reliance Polycrete Limited 1997 I PLR 418, the High Court observed at para 21 as follows:
"Even otherwise, the defendants are not manufacturing or selling any items manufactured by the plaintiff-Company. The only common item which could be shown was polyester resin. In my view, the undertaking given by Mr. Nair on behalf of his clients that the polyester resin would only be manufactured for personal consumption and would not be sold in the market under the mark "Reliance" is sufficient protection. This undertaking is accepted. The defendants are manufacturing sanitary wares. It is not the plaintiffs'' case that they or any of their group companies are; manufacturing sanitary wares. Thus there is no common field of activity. As the "Reliance" is not Synonymous with the plaintiff''s or their group companies in all fields of activities, even a man of average intelligence and imperfect recollection would not confuse sanitary wares manufactured by defendants to be those of plaintiffs or a company associated with the plaintiffs. The principles laid down in Kirloskar''s case (30 supra) would also not apply here because the word is not a household word associated with the plaintiffs only. Further, no question arises from protecting the public or public interest. If anything public interest requires that a big company like the plaintiffs be not allowed to flex its muscles and try and oust all others from use of a word which is a common word in English language and which is commonly used by a very large number of companies/firms in various fields of activities."
69. The Delhi High Court in Procter and Gamble Co. U.S.A. v. Procter and Gamble Godrej Ltd., Mumbai 1997 I PLR 53, held thus:
"(1) The plaintiffs had not established any reputation in India for the trademark Safeguard on the basis of which they could claim that the mark had acquired secondary meaning so as to identify the mark exclusively with their soap.
(2) The plaintiffs had not raised any objection to defendant''s selling its Safeguard antiseptic cream from 1984 despite the fact that the Ayurvedic cream was advertised in a large scale in prominent places in India.
(3) The defendants has not fabricated or falsified any documents, as alleged by the plaintiffs, to prove the extent of its sales.
(4) The plaintiffs'' mark was not an invented word and they had failed to substantiate their claim to proprietorship based on acquired reputation and goodwill.
(5) The plaintiffs'' failure to take timely action to file the suit was sought to be justified by averment in the plaint that the defendants had come into the market "recently" thus feigning ignorance of the present of defendant''s ''Safeguard'' brand cream for more than ten years in the Indian market."
Specific Relief Act:
70. In
"The Court can in appropriate cases grant temporary injunction in exercise of its inherent power in cases not covered by Order 39 CPC. But, while exercising this inherent power, the Court should not overlook the statutory provision which clearly indicates that injunction to restrain initiation of proceeding cannot be granted. Section 41(b) is one such provision. And it must be remembered that inherent power of the Court cannot be invoked to nullify or stultify a statutory provision."
71. On consideration of entire case law on the issue relating to passing off action, the following principles would emerge:
(a) The concept of passing off which is a form of tort has undergone sea change with the passage of time. Originally it was restricted to the representation of one person''s goods as those of another. Later it was extended to business, service, profession and non-trading activities. Now it is applied to many forms of unfair trading and unfair competition where the activities of one person cause damage or injury to the goodwill associated with the activities of another person.
(b) In a suit for passing off action, the plaintiff shall have to establish that the defendant has been passing off his goods as the goods of plaintiff.
(c) The goods should have deceptive similarity likely cause confusion in the mind of consumer. The plaintiff should establish deceptive similarity so as to cause confusion in the mind of consumer and also likely sufferance of substantial damages either to his business fiscally or to the reputation and goodwill of his trade.
(d) Actual fraud or deception need not be proved.
(e) Action for passing off lies in respect of related goods as well as unrelated goods. Common field of activity is not necessary. But, however, chances of confusion are remote in unrelated goods.
(f) The plaintiff must establish that he has build up good reputation and goodwill on the trademark.
(g) In assessing the degree of confusion or deceptive similarity, the conclusion which an ordinary man of average intelligence should be kept in view.
(h) In case of descriptive mark, the plaintiff has to prove secondary meaning.
(i) The plaintiff will be denied the relief in case of acquiescence and laches.
(j) To avoid action for passing off, the defendant may plead first and continuous user of mark with the knowledge of plaintiff.
(k) The defendant may also plead honest user for long period.
72. The public interest has to be kept in view while dealing with the passing off action viz., whether the public is deceived or confused.
73. Whether there was a deception or likelihood of confusion, or misrepresentation or whether there was dissimilarities in essential features of the mark, whether there was damage to the business or its reputation /goodwill are all pure questions of facts and the burden is on the plaintiff to establish. No general yardstick can be fixed. Each case depends on its own merits depending on the evidence adduced by the parties.
74. In the case on hand, the plaintiff has been using the mark Eenadu from 1974 on the Telugu Newspaper. The name of Eenadu is a common word and unless it becomes a household name, it cannot successfully establish passing off action. The plaintiff deals in newspaper, T.V., Hotel, Chit Funds etc., whereas the defendant deals in Agafbathis only. Therefore, it is not a case of similar goods. The principle of deceptive similarity and likelihood of confusion in this case is too remote. The name Eenadu may be common phonetically. But, visual similarity and the type of goods are quite different and distinct. The word Eenadu is being claimed as trademark of plaintiff. But, it is to be noted that the Agarbathis sachet contained Ashikavari Eenadu incense sticks and in fact number of other names are being used by the defendant. Even though the newspaper and the incense sticks are sold at the same counter it is improbable that the purchase would be under the impression that the Agarbathis are that of plaintiff. The person who purchase the newspaper are literates and there will not be any scope of confusion. There is no evidence that the consumer was mislead or misrepresentation was made. On the other hand, the carton itself speaks the truth. The defendants neither suppressed any information nor made any attempts to confuse the public. More over, the mark of plaintiff and the mark on the Agarbathis carton are quite dissimilar. The reputation and goodwill earned was only for the newspaper and it cannot be linked to the unrelated goods. Thus, I find neither the deceptive similarity nor likelihood of confusion is established. The trademark of both the plaintiff and defendant are dissimilar and there is no iota of evidence that the plaintiff suffered loss of goodwill or reputation apart from financial loss. Further, the plaintiff has not established that the defendant has been playing fraud on the other hand the relief of plaintiff is liable to be rejected on the question of acquiescence and laches. Admittedly, a notice was issued in 1994 calling upon the defendant to desist from using mark Eenadu and according to the plaintiff the defendant stopped marketing the Agarbathis after receipt of notice. But, there is no evidence on this aspect, on the contrary the sales of defendant were increasing year by year as per the sales particulars filed by him. The plaintiff knowingly kept quiet for nearly five years before filing the suit. Further, the word Eenadu is a general word and there is no evidence that the plaintiff became the exclusive user of the mark. It is also not established that on account of use of mark on Agarbathis, the plaintiff incurred substantial loss. Eenadu is not an inventor name and the mark was designed only for use as masthead of the newspaper. The dictionary meaning of Masthead as per Concise Oxford Dictionary 8th Edn., is title of a newspaper etc., at the head of the front or editorial page. Thus, the very name was conceived for the newspaper. At the most the name Eenadu could be a household name of newspaper, but we are dealing with Agarbathis. Even though it was in evidence that word Eenadu is being used by various other persons including a Cooperative Bank, but that cannot be a ground to non-suit the plaintiff. Thus, it is established that the plaintiff acquiesced his right to restrain the defendant from using the mark Eenadu u/s 41(g) and (1) of Specific Relief Act. It is not the case of plaintiff that the defendant has been selling the Agarbathis surreptitiously without the knowledge of the plaintiff. The ingredients required for successfully establishing the passing off action are not established in this case by the plaintiff. The learned trial Court was under mistaken impression that the plaintiff got to trademark of Eenadu Telugu and English version for the goods falling in class 16 and 26. It is the admitted case of plaintiff that it made application for registration only awaiting registration. Thus, I find that the trial Court completely misdirected itself on facts and law.
75. For the foregoing reasons, I set aside the judgment and decree of the lower Court in O.S. No. 555 of 1999, dated 24-7-2000 and allow the appeal C.C.C.A. No. 178 of 2000 without costs and dismiss the suit with costs. In view of this judgment, C.C.C.A. No. 180 of 2000 stands dismissed. No costs.
