A.K. Sikri, J.@mdashThe plaintiff has filed the instant suit for permanent injunction, infringement of trademark, passing off, damages and delivery up etc. In a suit of this nature, present application is filed under Order XXXIX Rule 1 and 2 of the CPC (CPC) seeking ad interim injunction. On the very first date, when the matter was listed, the defendants also appeared on caveat. The Court passed, after hearing the parties, order dated 14th February, 2005 restraining the defendants from launching in the market their measuring tapes and components thereof under the impugned trademark FREEDOM. It is now to be considered as to whether to confirm this order, as prayed for by the plaintiff or vacate this order agreeing with the submissions of the defendants. Arguments were accordingly heard on this aspect.
2. The plaintiff, FMI Limited, is engaged in the business or manufacturing and/or marketing and export of the measuring tapes and parts/components thereof for the last over five decades and is trading under the trademark FREEMANS. It is claimed in the plaint that this trademark was adopted in the year 1950 by National Tape Co., which was a partnership firm. This partnership firm had also a sister concern, namely, Freemans Sales Pvt. Ltd. During the family settlement the trademark FREEMANS and Pvt. Ltd. Company i.e. Freemans Sales Pvt.Ltd. was allotted to Mr. Madan Mohan Nayar, the Chairman and Managing Director of the plaintiff company, who assigned the same to the plaintiff company and, thus, plaintiff is the owner of trademark FREEMANS.
3. It is averred in the plaint that the plaintiff''s FREEMANS products had a modest beginning in 1950, when the plaintiff''s predecessors introduced Metal Wired Tape for the first time in the country. This marked the beginning of the measuring tools industry in India. Encouraged by the response, the first Indian FREEMANS fiberglass tape measures was introduced in 1962 and steel tape measures and tape rules were introduced in 1966 with American technical knowhow. It has constantly upgraded its technology and thus improved the quality of its product as a result of which the plaintiff has also earned worldwide reputation and is having established markets in over sixty countries including Spain, South Africa, Argentina, Brazil, Australia, USA, UK, Greece, Peru, Chile, UAE, Hungry, Ireland etc. It is also claimed that to establish distribution network for serving all the European countries, EUROFREEMANS S.A. was established in Barcelona (Spain) which substantially increased the market penetration in Europe. The sale of the plaintiff''s product is increasing tremendously. It was Rs. 14.12 crores in 1997-98, Rs. 18.55 crores in 1998-99, Rs. 19.38 crores in 2000-01 though it reduced thereafter and sale figures for 2003-04 are stated to be Rs. 16.25 crores. It is also the case of the plaintiff that it has its own R and D division, where all designing of new product development and new technology is undertaken with latest computerized techniques. The plaintiff is spending a huge amount on research and development as well as sales promotion in the form of advertisements etc., particulars whereof are given in para 8 of the plaint.
4. The plaintiff is also the registered proprietor of trademark FREEMANS, details of the same registration are given as under:
(a) Trademark FREEMANS is registered under No. 215880 as of 6th June, 1963 and others, in respect of tapes measure in class 9.
(b) Trademark FREEMANS is registered under No. 440945 as of 26th July, 1985 and others, in respect of measuring tapes and allied goods included in class 9. The said registrations have been renewed from time to time and the same are in full force till date.
5. It is, thus, claimed by the plaintiff that it is enjoying common law and statutory rights to the exclusive use of the trademark FREEMANS for measuring tapes. The plaintiff now feels threatened by use of this trademark by the defendants as the defendants are planning to come out with measuring tapes under the trademark FREEDOM. It is stated that it is mala fide adoption of the trade mark by the defendants. The defendant No. 1, Mr. Ashok Jain who has promoted the defendant No. 2, namely, FREEDOM MEASURES, is the same person who was one of the distributors of the plaintiff for over 25 years under the name and style of Sudesh Hardware Pvt. Ltd. (defendant No. 3) and remained its distributor till December, 2002. The plaintiff had severed all ties with the defendants because of his activities against the interest of the plaintiff and because of not paying to the plaintiff its bills on time. It is mentioned that due to long association of the defendant No. 1 as distributor of the plaintiff and for marketing the goods of the plaintiff, he came to be recognized in the market as FREEDOM FITEWALLA. In other words, he was known as representative of the plaintiff. Therefore, in order to encash upon this trademark and to confuse the general public he has now adopted the trademark FREEDOM which is a well planned move to dupe the customers who are not only close to the plaintiff but would get the impression that the defendants are selling the goods of the plaintiff under the said trademark. It is further stated that the defendants have applied for registration of trademark FREEDOM in the name of Ms. Monica Jain who is daughter of Mr. Ashok Jain. This trademark is deceptively similar to the plaintiff''s trademark FREEMANS and thus the defendants are infringing the legal and statutory rights of the plaintiff.
6. learned Counsel for the plaintiff in support of his plea relied upon the provisions of Sections 28 and 29 of the Trade Mark Act, 1999 as well as Section 2(m) thereof. Section 2(m) defines the term `mark'' in the following manner:
Section 2(m): `Mark'' includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of the goods, packaging or combination of colours or combination thereof.
He submitted that u/s 28 of the Trade Mark Act, 1999 the plaintiff gets the exclusive right to use the said trademark in relation to the goods or services in respect of which the trademark is registered and to obtain relief in respect of infringement of trademark in the manner provided by this Act. u/s 29, which is a statutory provision, protection is given against identical trademark or deceptively similar trademark. The trademark used by the defendant is deceptively similar trademark, Therefore, it is a clear case of infringement of trademark. u/s 31 of the Trade Mark Act, 1999, registration is a prima facie evidence which cannot be challenged u/s 32 of the Act. learned Counsel for the plaintiff also referred to the following judgments:
(i)
(ii) Pidilite Industries Pvt.Ltd. v. Mittees Corporation 1989 PTC 151.
(iii) Atlas Cycle Industries Ltd. v. Hind Cycle Ltd. 1973 1 Delhi.
(iv) Goel Pocket Books v. Raja Pocket Books 1997 PTC 573
(v)
(vi)
(vii)
7. The defendants have contested the suit on various grounds by filing their written statement. It may be noted that during arguments, the defenses which were taken are as follows: The two trademarks are not similar in nature. There is neither any phonetic nor visual similarity between the plaintiff''s trademark FREEMANS and the defendants'' trademark FREEDOM and the manner and style in which two marks are written are completely different. In the plaintiff''s mark the word ''FREEMANS'' is written prominently whereas in the defendants'' mark the alphabet ''F'' is written within a circle and the word ''FREEDOM'' is written on the circumference. There is, thus, no visual or phonetic similarity. Even the logo of the two trademarks is different. Thus, there is no likelihood of any confusion to the consumers, more so, when the two marks convey completely different meanings. It is stated that only the word ''FREE'' is common to both the trademarks. However, it is a common dictionary word over which no exclusive right can be claimed by any person.
It is also stated that the plaintiff itself accepts the distinction and that the two words are not exactly similar as in para 14 of the plaint, the plaintiff has stated that the word ''FREEDOM'' is very close to plaintiff''s well established five decade old FREEMANS trademark. It is also averred that the clientele of the two products is intelligent and discerning which is not going to be confused with the two trademarks having so many dissimilarities. The charge of the defendants is that the plaintiff is trying to avoid competition and attempt to monopolise the mark which is not permitted. The injunction application is also contested on the ground that the plaintiff is guilty of delay and laches as by its own admission it became aware of the defendants'' activities in January, 2004 but instituted the present suit only in February, 2005. This establishes that the plaintiff is not being affected by the defendants'' product and the suit is filed as an afterthought which is an arm-twisting tactic. It is also submitted that the plaintiff did not file any objection with the trade mark registry when the defendants applied for the registration of trademark FREEDOM.
The aforesaid defenses taken by the defendants were sought to be supported with reference to following case law:
(i)
(iii)
8. I have considered the submissions of both the parties and have also perused various judgments cited at the bar by the learned Counsel for the parties. It is not necessary to refer to each and every judgment. Purpose would be served by stating the principles, which have emerged from these judgments.
9. When the court has reached a prima facie conclusion, on the comparison of the two trademarks, as to whether use of the trade mark of the defendant is likely to deceive or cause confusion in the mind of the consumer that the produce of the defendant is that of the plaintiff, actual confusion or deception is not necessary but likelihood thereof is sufficient. Since the Act does not lay down any criteria for determining what is likely to deceive or cause confusion, every case must depend on its own particular facts. In Amritdhara (supra), the Supreme Court observed that � a trademark is likely to deceive or cause confusion by the resemblance to another already on the Register if it is likely to do so in the course of its legitimate use in a 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 also quoted with approval following observations of Parker, J. in Platonist Co.''s Application (1906) 23 RPC 774) which was also a case of the comparison of two words:
You must take the two words. You must Judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. Your must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider, all the surrounding circumstances and you must consider what is likely to happen if each of those trademarks is used in a normal way as a trade mark for the goods of the respective owners of the marks. 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 doubting whether that impression is not due to imperfect recollection. (See Kerly on Trade Mark, 8th edition, p.400).
10. The manner of comparison of the two trade marks as stated above was applied not only in that case but has been thereafter consistently applied in various other cases. The tests were reiterated by a Single Judge of this Court in Pidilite Industries Pvt. Ltd. v. Mittees Corporation and another reported as 1989 PTC 151 and the court, speaking through Hon''ble Mr.Justice Y.K.Sabharwal as he then was (now Hon''ble the Chief Justice of India) laid down the following tests for comparison of two marks:
At this stage only prima facie opinion is required to be formed on the question whether the two marks and containers are deceptively similar or not and it is likely to cause deception or not to an average customer and on which side the balance of convenience lies. Before, I take up the comparison of the two marks or the similarity or dissimilarity on the containers it would be apposite to state some well settled principles governing these matters, namely (1) it is always a question of fact each case whether the deception or confusion is likely to be caused or not by use of the impugned trade mark; the court has to put itself in the position of an average customer and ask a question whether there is likelihood or deception or confusion or not and then answer the question on that basis, (2) the marks must be compared as a whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case, there is no sufficient similarity to cause confusion. The totality of the trade marks is to be seen to find out whether there is likelihood of deception or confusion or mistake in the minds of persons accustomed to the existing trade mar, (3) the likelihood of confusion for deception is to be seen in relation to average unwary customer, (4) it is the tendency to mislead or cause confusion that forms the gist of passing off action and the plaintiff need not establish actual deception.
11. As already noted above, in Kaviraj Pandit Durga Dutt Sharma (supra), it was held that where the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff''s rights are violated. For this purpose, what is to be seen is as to whether essential features of the trademark of the plaintiff have been adopted by the defendants.
12. I may also at this stage note another case decided by the Division Bench of this Court in the case of Atlas Cycle Industries Ltd.(supra). The court was concerned with the similarity of the two marks, namely, EASTERN STAR and ROYAL STAR in relation to cycles. The court held that the proper approach to the question was to consider the overall and phonetic similarity of the two names and this test was applied in the facts of that case, in the following manner:
In applying the said test in the present case, it has to be noted that the meaning of either word �EASTERN or the word �STAR� has no relation at all to cycles. Similarly , the words �ROYAL� and �STAR� have, in their meaning, no relation at all to cycles. They are thus not descriptive or suggestive of the goods, namely, cycles, to which they are applied. A more important thing to be noticed is that both the names, when uttered, end in the same sound. Therefore, a person of average intelligence and imperfect memory is very likely to the deceived or confused between the two names or marks. We are, Therefore, of the opinion, that the said two marks have an overall structural and phonetic similarity, and consequently their use in respect of the same kind of goods, viz.cycles, is likely to cause deception or confusion within the meaning of Section 29 of the Trade and Merchandise Marks Act, 1958.
In this connection, it is also necessary to consider the case of the appellant (plaintiff) that its cycles under the trademark �EASTERN STAR� had acquired a reputation and came to be referred to by the public as �STAR� cycles or ''TARA BRAND� cycles.
13. Thus, what is to be kept in mind is the imperfect memory of a person with average intelligence. The test, Therefore, is to see whether similarities in the two trademarks are similar enough to cause confusion when the consumer of average intelligence with imperfect memory wants to buy a particular product. Test is not to minutely go through the various dissimilarities in a court of law and microscopically scan through those dissimilarities. There may be enough similarities to cause confusion in the mind of an unwary customer. The court, while discussing the case, is not to be influenced by the so-called dissimilarities if the similarities are sufficient to cause confusion in the mind of the targeted consumer.
14. I may state at this stage that many cases referred to by both the parties related to pharmaceutical preparations. However, having regard to the judgment of the Supreme Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd. reported as 2001 PTC 300 (SC) as the tests to be applied when comparing two drugs are most stringent, I am not referring to those judgments. However, I may add that broadly speaking the tests laid down there are also the same as noted above.
15. Before comparing the two trademarks for any similarities in the present case, one has to keep in mind the background in which the defendant adopted the trademark in respect of its product. It is not disputed that M/s. Sudesh Hardware Pvt. Ltd. (defendant No. 3), of which Mr.Ashok Jain (defendant No. 1) was a henchman, was the distributor of the plaintiff for over 25 years. As distributor, they were selling the goods of the plaintiff with trademark FREEMANS. Mr.Ashok Jain has now started the firm FREEDOM MEASURES (defendant No. 2) and under banner he has started manufacturing the same product, namely measuring tapes, and has adopted the trademark FREEDOM. Case of the plaintiff is that, as distributor of the plaintiff''s product for 25 years, Mr. Ashok Jain came to be recognized in the market as FREEDOM FITEWALLA and with such a reputation acquired while working as distributor for the plaintiff, adoption of the trademark FREEDOM, after starting its own business and producing the same product, would obviously not be bona fide. It is clear that the defendants wanted to encash upon the goodwill of the plaintiff''s product in which they had themselves trader for quarter of a century. When the two words FREEDOM and FREEMANS are compared in the aforesaid backdrop, and the person who was up to now selling the goods of FREEMANS and comes out with the goods with the trademark FREEDOM, with same customers, it is bound to cause confusion in the minds of the customers. The two words may not be exactly same, but adoption of the word FREEDOM, which resembles closely with the trademark FREEMANS of the plaintiff, with same clientele, may lead to confusion. It is the word FREE appearing in the plaintiff''s trademark which has been tried to be exploited by adopting the word FREEDOM. Had there not been any association of the defendants with the plaintiff and they had not represented the plaintiff as its distributors for a long period of 25 years by selling their goods and establishing their own reputation as FREEDOM FITEWALLA, things could have been different. The customers who had been buying the goods of the plaintiff from the defendants earlier with prominence of FREE in their mind are likely to be confused that these are the same goods sold by the defendants and, Therefore, are of the same quality and reputation. The fact that when the defendants were selling the goods of the plaintiff with the trademark FREEMANS and came to be known as FREEDOM FITEWALLA, it would show that the consumers did not perceive any difference between the words FREEMAN and FREEDOM. It is the word FREE appearing in the plaintiff''s trademark FREEMANS which strikes in the mind of the users of the goods of the plaintiff for more than 50 years. Therefore, this case would almost be same as the case of Atlas Cycle Industries (supra) where the defendant, who had adopted the trademark ROYAL STAR, was injuncted as it was found that the plaintiff''s trademark EASTERN STAR had acquired a reputation and came to be known to the public as STAR cycles or TARA BRAND CYCLES.
16. In view of the above attempt on the part of the defendants to show that the manner and style in which the two trademarks are written is different and, Therefore, it would not lead to confusion would be of no avail. Thus, certain distinctions sought to be projected by the defendants would not be able to remove the confusion which is likely to arise in the minds of the customers. It is stated at the cost of repetition that the adoption of the trademark FREEDOM by the defendants is utterly mala fide. When the defendants had been the distributors of the plaintiff''s products and sold those products with the trademark FREEMANS for a long period and wanted their own production of the same product, why the word FREEDOM only came in the minds of the defendants to be adopted as trademark, which bears close resemblance to the plaintiff''s trademark FREEMANS, is one thing which is not explained by the defendants at all. It is a clever device opted by the defendants to adopt the trademark FREEDOM and, thereafter, in the cartons, etc. put some distinguishing features so as to press the same as defense when the plaintiff takes legal action, as the present one, against the defendants. The attempt is to confuse the customers by adopting the same name and features and to confuse the Court by trying to show the alleged dissimilarities. Such an attempt has to fail.
17. As far as the plea of delay and laches is concerned, this also would not help the defendants insofar as the question of injunction is to be considered. It is submitted by learned Counsel for the complainant that there was no delay in bringing the present suit because it is the admitted position that the defendants did not introduce any goods in the market earlier and even this submission was made when the injunction was granted, as can be seen from the order dated 14.2.2005, which records as under:
learned Counsel for the defendants state that the plant of the defendants is under construction. She is however not in a position to make a statement that the defendants would not launch their product in the market under the impugned trademark until the application comes up for hearing/disposal. In the circumstances, the defendants are restrained from launching in the market their measuring tapes and components thereof under the impugned trademark FREEDOM, till the next date.
18. Thus, when the suit was filed, the defendants'' plant was still under construction and they had not launched their product. Therefore, it cannot be said that the plaintiff approached the Court belatedly or acquiesced into the adoption of the infringing trademark of the defendants. In any case, the Supreme Court has held in
19. In view of the aforesaid discussion, prayer made in is No. 1099/2005 is allowed and the order dated 14.2.2005 is confirmed till the disposal of the suit.
20. Application is disposed of.
21. CS (OS) No. 189 of 2005 Pleadings are complete. Further documents, if any, be filed by the parties within four weeks. Matter be listed before the Joint Registrar for admission/denial of the documents on 18th January 2007 and before this Court for framing of the issues on 15th May 2007, on which date the matter be listed before the Regular Bench.
