2011 Supreme(SC) 251

2011 (2) Supreme 394
SUPREME COURT OF INDIA
Dalveer Bhandari and K.S. Panicker Radhakrishnan, JJ.
T.V. Venugopal — Appellant
versus
Ushodaya Enterprises Ltd. & Another — Respondents
Civil Appeal Nos.6314-15 of 2001
Decided on : 3-3-2011

IMPORTANT POINT
Infringement and assign off of trademarks – scope and injunction.

Headnote:(a) Trade Marks Act, 1999 – Section 29 – Confusion/ passing off/ dilution – Confusion should be either confusion arising due to get up of products, confusion as to sponsorship/affiliation of source or confusion arising out of the use of identical/deceptively similar trademarks – If there is confusion, there is no dilution – Standard for establishing dilution are completely different. (Paras 24, 25 and 28)

        AIR 1994 DELHI 239 – Cited with approval

        (b) Indian Evidence Act, 1872 – Section 3 – Admissible evidence – Wikipedia does not have any evidentiary value in the court proceedings. (Para 37)

        69 Fed. Cl. 775 (2006); 540 F. 3d 909 – Relied upon

        (c) Trade Marks Act, 1999 – Section 29 – Descriptive nature of the mark – First inquiry which the court ought to carry out is to determine whether the mark is invented, arbitrary/suggestive, descriptive or generic with respect to the goods – It is only with respect to descriptive marks that secondary meaning needs to be pleaded. (Paras 39 and 40)

        1944 (2) All E R 269 – Relied upon

        (d) Trade Marks Act, 1999 – Section 29 – Descriptive mark – Secondary meaning – Only with respect to descriptive marks secondary meaning needs to be pleaded – Distinction between generic, descriptive and suggestive marks. (Paras 40 and 41)

        (e) Trade Marks Act, 1999 – Section 29 – Passing off – A deception to be actionable should satisfy certain pre-requisites – Manufacturer’s goods have acquired a reputation in the market and are known by some distinguishing feature – Misrepresentation has deceived or is likely to deceive a customer – Manufacturer is likely to suffer damage by such deception. (Paras 61 to 69)

        1895-99 All ER 133; 1990 (1) ALL ER 873; (1969) 2 SCC 727; (2002) 3 SCC 65; (2004) 6 SCC 145; (2006) 8 SCC 726; (1924) RPC 74 – Relied upon

        (f) Trade Marks Act, 1999 – Section 29 – Infringement – In cases of infringement, normally an injunction must follow (Paras 70 and 71)

        (2004) 3 SCC 90 – Relied upon

        100 (2002) DLT 306 (DB) – Cited with approval

        (g) Trade Marks Act, 1999 – Section 29 – Using a name identical to the one which has acquired a reputation such as becoming a household name constitutes passing-off – The offender would be guilty of passing off by cashing in on the reputation and goodwill of the business of the other – Should be restrained. (Para 72)

        (1996) RPC 697; (2002) 2 SCC 147 – Relied upon

        AIR 1994 DELHI 239; AIR 1985 All 242 – Cited with approval

        (h) Trade Marks Act, 1999 – Section 29 – Passing-off – Scope – Wider than infringement – Hence injunction can be granted even against a registered trademark holder. (Para 78)

        (1996) 5 SCC 714 – Relied upon

        (i) Trade Marks Act, 1999 – Section 29 – If in a trade mark the common words retain their strong primary meaning, then protection would be granted only qua the product for which such common word is used (Para 80)

        (2004) 5 SCC 257 – Relied upon

        98 (2002) DLT 499 – Cited with approval

        (j) Trade Marks Act, 1999 – Section 29 – Use of the word (in the trade mark of one company) by another would result in diminishing the distinctiveness of the word qua the good and reputation of the former. (Para 86)

        (1994) 4 All E R 75 – Relied upon

        (k) Trade Marks Act, 1999 – Section 29 – Common field of activity is not restricted to same or similar products – It now extends to all other products – Test of common field of activity is that of “common class of consumers”. (Para 88)

        [1988] IPLR 135; 101 (2002) DLT 359 – Cited with approval

        (l) Trade Marks Act, 1999 – Section 29 – Limitation – Passing-off being a continuing tort, fresh period of limitation begins to run every moment of the time during which the breach continues – Hence the action cannot be defeated on ground of delay. (Para 92)

        (1997) 1 SCC 99; (2007) 6 SCC 1; (2006) 8 SCC 726 – Relied upon

        (m) Trade Marks Act, 1999 – Section 29 – Use of a similar mark(s) by third parties is not a defense to an illegal act of passing-off. (Para 96)

        2009 (39) PTC 149 – Relied upon

        48 (1992) DLT 390 – Cited with approval

        (n) Trade Marks Act, 1999 – Section 29 – Respondent company’s mark ‘Eenadu’ acquiring extra-ordinary reputation and goodwill in the State of Andhra Pradesh – The word ‘Eenadu’ may be a descriptive word but has acquired a secondary or subsidiary meaning being fully identified with the products and services provided by the respondent company – Appellant started using the name ‘Eenadu’ for its Agarbathi – Also used the same artistic script, font and method of writing the name as that of the respondent – Cannot be a co-incidence – Appellant’s sales in Andhra Pradesh reaching 90% of the total after adoption of the name – Permitting the appellant to sell his product with the mark ‘Eenadu’ would be encroaching on the reputation and goodwill of the respondent company and this would constitute invasion of proprietary rights vested with the respondent company. (Paras 100 to102)

       Facts of the case:

        1. The appellant, manufacturer and dealer in incense sticks, applied for registration of trade mark on or about 10.02.1994 of its label

        2. The appellant made an application to the Registrar of the Trade Marks for a certificate under proviso to Section 45(1) of the Copyright Act, 1957. The Registrar issued a certificate on 7.3.1996. Thereafter, an application for registration for copyright was made by the appellant on 14.3.1997.

        3. The respondent company, who was engaged in the business of publishing a newspaper in Telugu entitled as ‘Eenadu’, served a cease and desist notice on the appellant which was replied by the appellant on 8.3.1995. The respondent company in the year 1999 filed a suit for infringement of copyrights and passing-off trade mark

        4. The dispute arose because of the meaning of the word Eenadu. It means ‘today’ in Telugu. In Tamil, Malayalam and Kannada it means ‘this land’.

        The Second Additional Chief Judge, City Civil Court, Hyderabad on 24.11.1999 had granted an ex-parte ad interim injunction restraining the appellant from using the expression ‘Eenadu’ and the same was confirmed on 27.12.1999.

        5. The appellant moved the High Court which suspended the interim injunction and permitted the appellant to dispose off their finished products to the tune of Rs.1 crore and also permitted the appellant to produce goods that were in the process of manufacture to the tune of Rs. 78 lakhs.

        6. Meanwhile, the trial court on 24.7.2000 partially decreed the suit of the respondent company. The appellant was not injuncted from using the words ‘Eenadu’ in the entire country other than in the State of Andhra Pradesh.

        7. The appellant filed an appeal before the High Court. The respondent company also filed an appeal praying that the order of injunction to be made absolute and not be confined to the State of Andhra Pradesh.

        8. The appeal filed by the respondent company was dismissed and the appeal filed by the appellant was allowed.

        9. The High Court allowed respondent’s appeals.

       Finding of the Court:

        Appellant company cannot be permitted to continue with usoing the word ‘Eenadu’.