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High Court Of Calcutta
Kalyan Jyoti Sengupta
BALSARA HYGIENE PRODUCTS LIMITED - Appellant
Versus
ARUN CHOWDHURY - Respondent
G. A. 2486 Of 2001
Decided On : 11/14/2002
TRADEMARK - PASSING OFF - ODO - COMMON ENGLISH WORD OR GENERIC TERM - INFRINGEMENT OF REGISTERED TRADEMARK - ESSENTIAL FEATURE OF TRADEMARK - BALANCE OF CONVENIENCE - DELAY.
Fact of the Case:
Plaintiff, the owner of registered trademarks 'odonil', 'odopic', and 'odomos', brought an action against the defendant for infringement and passing off of its trademark. The defendant used the name and mark 'odoja' for its products, which were under the same class as the plaintiff's products. The plaintiff claimed that it was the first to use the word 'odo' in its trademarks for commercial purposes and that the defendant's mark was likely to deceive consumers into believing that the defendant's products were associated with the plaintiff's products.
Finding of the Court:
The court found that the word 'odo' was not a common English word or a generic term and that the plaintiff had acquired goodwill and reputation in the market through its use of the word 'odo' in its registered trademarks. The court further found that the defendant's mark 'odoja' was likely to cause confusion among consumers and that the defendant had not established any defense to the plaintiff's claims.
Issues: 1. Whether the word 'odo' is a common English word or a generic term. 2. Whether the plaintiff's mark 'odo' is an abbreviated term of the English word 'odo'. 3. Whether the word 'odo' has become anything common to trade or for that matter whether the plaintiff has got any distinctive in its mark opposite to descriptive or not.
Ratio Decidendi: 1. The court held that the word 'odo' was not a common English word or a generic term, as it was not known to or used by everyone. 2. The court held that the plaintiff's mark 'odo' was an abbreviated term of the English word 'odo' and that the plaintiff had acquired goodwill and reputation in the market through its use of the word 'odo' in its registered trademarks. 3. The court held that the word 'odo' had not become anything common to trade and that the plaintiff had a distinctive mark opposite to descriptive.
Final Decision: The court held that the defendant had infringed the plaintiff's registered trademarks and had passed off its products as those of the plaintiff. The court granted a permanent injunction restraining the defendant from using the mark 'odoja' or any other mark that was likely to cause confusion with the plaintiff's trademarks.
( 1 ) THE plaintiff is the owner of the registered trade marks 'odonil', 'odopic', 'odomos' both label and word under the common classes- 5,3, 9,11, 21, and it has also applied for further registration between the years 1985 and 2001, for the word 'odo'. This action has been taken against infringement and passing of by the defendant who uses the name and mark 'odoja' in their products which are under same class. With the word 'odo' the plaintiff claims that the aforesaid registrations were effected at different point of time ranging from 24th August, 1962 to 26th February, 1990. Admittedly the defendant's mark is not a registered one and it has merely applied for registration of its mark on or about 27th of March, 2000. The plaintiff claims that it was the first in using of the word 'odo' in its trademarks for commercial purpose.
( 2 ) THE defendant in his affidavit in opposition has taken defence that the word 'odo' is a generic term and used by all the traders as such it has become common to the trade. The mark used by the defendant has been made known to the public for a long time and in fact the plaintiff has also noticed the same. The plaintiff cannot claim any monopoly over the word 'odo'. The application for registration of the plaintiff of the word 'odo' is still pending.
( 3 ) MR. Chakraborty, senior advocate, appearing for the plaintiff submits, under the provision of the Trade and Merchandise Mark Act, 1958 his client is entitled to get protection against the aforesaid infringement done by the defendant using the prefix of the aforesaid registered marks. The adoption of the mark 'odoja' by the defendant is motivated and is calculated to deceive the consumer in respect of the same product, as the product of the plaintiff.
( 4 ) CONFUSION in the mind of the consumer public is naturally bound to arise by reason of the fact that both the marks are used for the same product. He contends that defence for the use of the word 'odo' put forward by the defendant is not acceptable under the law and the same appears to be illogical and absurd. His contention is that the word 'odo' as abbreviated is a generic word and common to the trade is not correct. 'odour' is not a generic term and according to the Oxford Dictionary, it means smell or scent. There is no proof of sale in India of West Bengal of the defendant's product. It has merely proposed to start the use of the word 'odoja' and no concrete instances has been given that any of the manufacturers has got registration of or has been using any mark with the word 'odo' in order to establish the case of commonness. He contends further that although the origin of the word 'odo' may be 'odour' yet the petitioner is entitled to use part of an English word as an essential feature of its mark. Mere distinction and/or differentiation in the get up of the defendant's product and the plaintiff's product do not establish any dissimilarity of the registered trademark. The whole point is whether the defendant is entitled to use the word 'odo' along with the suffix 'ja' as its mark. On this point he has drawn my attention to the passage of Kerly's Trade Mark, 12th Edition, Articles 14-21 and 14-22 at page 273 and 274. According to Mr. Chakraborty a mark is infringed by another trader even without using the whole of it, if he uses one or more of its essential features. The identification of an essential feature depends on the Court's own judgment and partly on the burden of the defence placed before it. He has further drawn my attention on this point to the passage of the Kerley's Trade Mark, 13th Edition at page 603 being Articles 16-38 and 16-39. Thus the defendant has adopted the essential feature of the trademark of the plaintiff. In support of his contention he has relied on a decision reported in AIR 1965 SC 980.
( 5 ) HIS next contention is that since the year 1962 the plaintiff has been using the word 'odo' as essential feature in respect of its marks r
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