2011 Supreme(Bom) 429

2011(4) ALLMR 152
High Court of Judicature at Bombay
THE HONOURABLE CHIEF JUSTICE MR. MOHIT S. SHAH & THE HONOURABLE MR. JUSTICE S.J. VAZIFDAR
Cadila Pharmaceuticals Limited
Versus
Sami Khatib of Mumbai & Another
APPEAL NO. 1158 OF 2010 IN NOTICE OF MOTION NO. 599 OF 2006 IN SUIT NO. 568 OF 2006
Decided on: 08-04-2011

Headnote:Trade Marks Act, 1999 - Sections 27, 28, 29 and 56-Appli-cability of Section 56 of Act-Infringement and passing off of trade mark-Trade mark applied in India and goods exported and sold outside India by appellants-Trade mark applied to appellant’s goods within meaning of Section 56-Section 56 of Act applicable to infringement and passing off of trade mark even though goods with impugned mark not sold in India.-It is admitted that the appellant applies the impugned mark to the goods in India which are thereafter exported. The impugned mark has thus been applied to the appellant’s goods within the meaning of Section 56. Had the mark been applied in relation to goods to be sold within India, it would undoubtedly have constituted use of the trade mark in India. By virtue of Section 56, the application in India of the trade mark, although to goods to be exported from India is deemed to constitute use of the trade mark in relation to the said goods "for any purpose for which such use is material under the Trade Marks Act, 1999, or any other law". The plain language of Section 56, therefore, constitutes the application in India of trade marks even to goods to be exported from India as use of the trade mark in relation to those goods for any purpose for which such use is material under the Act or any other law.

       Thus Section 56 would clearly apply to an action for infringement if the trade mark is applied in India to goods to be exported from India as the same is deemed to constitute use of a trade mark in relation to those goods for any purpose of which such use is material under the Act.

       Trade Marks Act, 1999 - Section 29-Infringement and passing off, of trade mark-Goodwill and reputation in trade mark established by respondents/plaintiff-Sales invoices relied upon by respondents, duly certified by chartered accountants-Not disputed by appellants-Respondents established their goodwill and reputation in mark adequate to maintain an action for passing off.-The respondents have more than satisfactorily established their goodwill and reputation in the trade mark "RB TONE". Indeed, Court did not understand Mr. Dwarkadas as having seriously disputed the same on facts. The appellant never sought inspection of or effectively disputed the sales invoices, relied upon by the respondents, which were duly certified by the Chartered Accountants. Suffice it to note that the products have been sold under the mark "RB TONE" in India since the year 1972. The sales under the said mark, which in the year 1972 were to the extent of Rs. 4,67,000/-, increased enormously over the years. For the past ten years the sales have been about Rs. 20.00 crores per annum.

       The respondents had exported the said preparations to various countries including Kenya, Uganda, Tanzania, Zambia, Yemen, Sri Lanka, Vietnam, Cambodia and Myanmar. The export sales figures of the products sold under the mark "R.B. TONE" have also been furnished. In the year 1999, the value of the product exported was Rs. 41,56,000/-. The same increased to Rs. 82,65,000/- the following year. In the year 2004-2005, the exports were of the value of Rs. 53,72,000/-.

       The respondents have thus established their goodwill and reputation in the mark adequate to maintain an action for passing off.

       Trade Marks Act, 1999 - Section 29-Infringement of trade mark-Cause of action based on word and label mark-Label mark registered-Registration of label mark precludes respondents/plaintiffs from basing their cause of action also on word mark which forms a predominant feature thereof.-From a reading of the plaint as a whole as well as the cease and desist notices it is clear that the cause of action is based, not merely on the label mark, but on the word mark "RB TONE" as well. This is also clear from prayer (b) wherein the respondents have sought relief against passing of qua their trade marks, including "RB TONE". It is not limited to the label mark. Merely because the label mark was registered it would not preclude the respondents from basing their cause of action also on the word mark which forms a predominant feature thereof.

       Trade Marks Act, 1999 - Section 29-Infringement of trade mark-Passing off-Difference of only one letter between mark of appellant and respondent-Mark deceptively similar-Deceptive similarity between appellants and respondent’s mark-Respondent’s claim for action against appellant maintainable.-The similarity of the rival marks in the present case is so striking that the added material, in Court’s opinion, Court does not detract from the deceptive similarity of the two marks.

       We will assume that the appellant adopted the mark "Hb TONE" as alleged in the affidavit in support. Firstly, even if it did so honestly and independently, it would make no difference to the grant of an injunction for infringement or passing off once it is held that the mark is deceptively similar to the respondent’s mark.

       Secondly, it is difficult to accept that the average consumer would, when purchasing the product, be aware of the fact that the letters "Hb" are symbolic of an abbreviation and the chemical symbol of haemoglobin and thereby distinguish the appellant’s products from those of the respondents. Indeed, only a microscopic minority of consumers could be expected to even know the chemical symbol "Hb" much less distinguish the products of the parties based on the chemical symbol "Hb".

       It is settled law that the test while determining similarity is one of possibility and not probability of confusion. Moreover, while comparing marks, the Court does not go into the etymological meaning of the rival words/marks.

       The appellant’s mark is, therefore, deceptively similar to the respondent’s trade mark "RB TONE". The minor difference between the two would not enable a person of average intelligence with imperfect recollection to distinguish between the two. There is no justification to interfere with the Judge’s decision in this regard.

       Trade Marks Act, 1999 - Section 29-Infringement of trade mark-Post of mark word "TONE" in common use in trade-No evidence produced by appellants in this respect-Mere registration of marks with suffix "TONE" not establishes that it is common use in trade-Respondent/plaintiff entitled to grant of interim relief-Cannot be denied to him.-Even assuming that some marks are registered using the suffix ’TONE’ that by itself is not sufficient to assume that there would be no likelihood of deception or confusion. It is now well settled that the mere fact that the mark is on the Register is no sufficient but it is necessary to establish the user of such mark in the market. In absence of any material, it is not possible to accede to the submission that the suffix ’TONE’ is common to the trade.

       Thus, the mere reliance upon the Register to indicate the registration of the marks with the suffix "TONE" does not establish the defence that it is common to the trade.

       Trade Marks Act, 1999 - Section 29-Civil Procedure Code, 1908, Order XXXIX, Rule 1-Infringement of trade mark-Grant of injunction-Sought by respondents/plaintiffs-Opposed by appellants/defendants-Documents relied on by appellants not mentioned names of countries to which goods exported-Respondents had no means to notice export of gods by appellants-Respondents/plaintiffs cannot be denied grant of Interim injunction on ground of acquiescence or waiver.-It is difficult to see how the same, even if true, establishes the respondent’s knowledge thereof. Firstly, there is no mention of the countries to which the goods were exported during this period. In other words, there is nothing to show that the exports were also to countries in which the respondents may have had the means to notice the same by virtue of their also trading in those countries. Court hasten to add that even in these particulars were furnished, it would not establish knowledge on the respondent’s part of the said exports. This would be too flimsy a basis to deny the respondents reliefs, which they are otherwise entitled to on the ground of acquiescence or waiver.

       Trade Marks Act, 1999 - Section 29-Civil Procedure Code, 1908, Order XXXIX, Rule 1-Infringement of trade mark-Injunction-Grant of-Respondent’s marks registered-Respondents proceeded against appellants use of trade mark-Entitled for grant of relief of injunction.-There are two other hurdless regarding the question that appellant has not overcome. Firstly, the appellant had the means of discovering the respondent’s mark. Secondly, the appellant was in fact aware of the respondent’s mark and that they had not only opposed the appellant’s use of the impugned mark but had adopted proceedings to prevent the same. The second aspect will be dealt with while considering Mr. Dwarkadas’s submission that the respondent had acquiesced in the use of the impugned mark. The appellant’s used of the marks despite the same was, therefore, at its peril.

       Trade Marks Act, 1999 - Section 29-Limitation Act, 1963, Section 3-Infringement of trade mark-Delay and laches-Respondents opposed immediately to use its trade mark by appellants in India and abroad-Criminal case against appellants-Goods returned to appellants prohibiting them to sell it-Two applications for registration of trade mark by appellant-Opposed by re-products-One application for registration not opposed as it escaped attention of respondents-Delay explained, sufficient-Respondents not acquiescened or waived their rights towards their marks.-The question then is whether the delay, if any, on the respondent’s part in filing the suit was of the nature indicated in the judgments disentitling them to an injunction. This brings us to the facts of the case. The facts clearly establish that the respondents have from the beginning opposed in India and abroad, the used of the said marks by the appellant. The question of acquiescene does not by any stretch of imagination apply in the present case.

       Firstly, the background of the matter, especially the vigorous action that the respondents have taken, both in India and abroad for protecting their marks, belies the contention that they acquiesced in the appellant using the impugned mark. It just does not stand to reason. Further, application No. 1180285, which was admittedly opposed by the respondent by their application No. 292366, who also in respect of the mark "Hb TONE" although it is part of the label mark. It is impossible, therefore, to accept the appellant’ contention of waiver and acquiescence merely because there was no opposition to be registration application No. 1180286. The respondents having defended their marks throughout in India and abroad the only reasonable explanation for their having omitted to oppose only one application for registration of the impugned mark is that it escaped their attention.

       There is, therefore, a valid explanation for the delay, if any, on the respondents part in filing the suit. Far less have the respondents acquiesced in the appellant using the mark "Hb TONE"/"HB TONE". Nor have the respondents waived their right qua their marks.

       Trade Marks Act, 1999 - Section 56-Dual actionability-Application of mark by appellant to goods exported by it constitutes use of mark by it in India-Respondents action for passing-off, maintainable-Section 56 of Act not warrants application of principle of dual actionability.-Do not find anything in the plain language of Section 56 that warrants the application of the principle of dual actionability. Are not inclined to read into the section, restrictions absent therein.

       The application of the mark by the appellant to the goods exported by its thus constitutes use of the marks by it in India. The respondent’s action for passing off is, therefore, maintainable.