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High Court Of Delhi
INDIAN SHAVING PRODUCTS LIMITED - Appellant
Versus
GIFT PACK` - Respondent
Decided On : 11/01/1998
TRADEMARK - PASSING OFF - INJUNCTION - SIMILARITY OF TRADEMARKS - LIKELIHOOD OF CONFUSION - PRIOR USER - REPUTATION AND GOODWILL - DESCRIPTIVE WORDS - SECONDARY MEANING - BALANCE OF CONVENIENCE - INTERIM INJUNCTION GRANTED.
Fact of the Case:
Plaintiffs, the exclusive distributor of Duracell batteries in India, and the parent company of Duracell Inc. USA, sought an interim injunction to restrain the defendants from manufacturing, selling, and offering for sale batteries under the trademark 'Ultra,' alleging passing off and infringement of their trademark 'Duracell Ultra.' The defendants, on the other hand, claimed prior adoption and use of the trademark 'Ultra' and argued that the word 'Ultra' was a descriptive and laudatory epithet, not capable of exclusive appropriation.
Finding of the Court:
The court held that the plaintiffs had established a prima facie case for the grant of an interim injunction. It found that the plaintiffs were the prior user and adopter of the trademark 'Duracell Ultra,' having registered the trademark in various countries and made significant sales under the mark. The court also found that the defendants' use of the trademark 'Ultra' was likely to cause confusion and deception among consumers, as the two trademarks were deceptively similar. The court further held that the word 'Ultra' had acquired a secondary meaning and was associated with the plaintiffs' goods, and that the defendants' use of the mark was an infringement of the plaintiffs' trademark rights.
Issues: 1. Whether the plaintiffs had established a prima facie case for the grant of an interim injunction. 2. Whether the defendants' use of the trademark 'Ultra' was likely to cause confusion and deception among consumers. 3. Whether the word 'Ultra' had acquired a secondary meaning and was associated with the plaintiffs' goods. 4. Whether the defendants' use of the mark was an infringement of the plaintiffs' trademark rights.
Ratio Decidendi: 1. To succeed in an action for passing off, the plaintiff must show: (a) a misrepresentation by the defendant with regard to his goods which is likely to lead to confusion in the mind of the people as a result whereof they may treat the goods of the defendant as that of the plaintiff; (b) such representation is likely to cause damage to the reputation, goodwill, and fair name of the plaintiff; (c) the said reputation must have been made during the course of the trade; (d) plaintiff must be the prior user of the trade mark in point of time than the defendant; (e) registration of the trade mark is inconsequential in an action for passing off; (f) plaintiff need not prove actual loss and damage in an action for passing off. 2. A descriptive word can be registered as a trademark if it has acquired a secondary meaning or a distinctive character with constant user for a considerable period of time. 3. The burden of proof is significantly higher for prima facie descriptive terms to show that they have acquired a secondary meaning.
Final Decision: The court granted the plaintiffs' application for an interim injunction, restraining the defendants from selling, offering for sale, advertising, or dealing in batteries under the trademark 'Ultra' or any other deceptively similar trademark.
( 1 ) THIS is an application (IA5333/98) by the plaintiffs under Order 39, Rules 1 and 2 read with Section 151 of the Code of Civil Procedure for issue of an ad-interim injunction restraining the defendants, their servants and agents from manufacturing, selling and offering for sale, directly or indirectly, their batteries under the trade mark Ultra and from passing off their goods as the goods of the plaintiffs under the above said trade mark or any other trade mark deceptively similar to the trade mark of the plaintiff i. e. Duracell Ultra. The application is supported by an affidavit. The defendants, on the other hand, have moved an application, being I. A. No. 6040/98, for vacating the ex-parte ad interim injunction granted to the plaintiffs vide order dated July 1, 1998.
( 2 ). The two applications are being taken up together as the disposal of one would inevitably lead to the disposal of the other since the plaintiffs have prayed fora relief to be granted to"them through I. A. No. 5333/98 to which, according to the defendants,the plaintiff are not entitled and the said application thus deserves rejection.
( 3 ). It would be necessary to place on record a few facts which led to the presentation of the application by the plaintiffs and which are necessary to be gone into in order to properly and effectively appreciate the points involved herein.
( 4 ). Plaintiff No. 1 are a company incorporated under the Indian Companies Act with their registered office at SPA-65a, Bhiwadi Industrial Area, Bhiwadi, District Alwar (Rajasthan ). They are the sole distributor appointed by plaintiff No. 2 for distribution of batteries vide agreement for distribution of goods dated March 19, 1997. Pursuant to the said agreement they are marketing the products manufactured by plaintiff No. 2.
( 5 ). Plaintiff No. 2 are also a company incorporated under the Companies Act with their registered office at 34, Okhla Industrial Estate, New Delhi. A licence has been issued to plaintiff No. 2 in respect of the trade mark Duracell granted to them by NV Duracell Batteries SA, a corporation organised under the Laws of Belgium with their principal office at Nijverheidslaan 7, B-3220, Aarschot, Belgium. Plaintiff No. 2 have been incorporated, inter alia, to design, develop, manufacture, produce, buy, sell, distribute, import, export, assemble, market and otherwise deal in all types of cells and batteries including alkaline batteries. Plaintiff No. 2 were incorporated on April 6, 1994. They commenced their business in the last quarter of 1994. Plaintiff No. 2 are a part of Duracell Inc. , USA which are the leading manufacturers and marketers of high performance alkaline batteries. Duracell batteries are sold all over the world under the trade mark Duracell. The Duracell range of batteries cover 90% of the total world s battery usage. Duracell Inc. currently manufactures more than 30 types of batteries including 13 types of alkaline batteries. Duracell batteries are the world leaders in the field. Plaintiff No. 2 have been importing all 13 varieties of alkaline batteries into India and have been selling them since August, 1994. ( 6 ). Plaintiff No. 2 have also commenced manufacture of aa pencil/pen like cells from December, 1997 for the domestic as well as export market. Plaintiff No. 2 are leaders in the battery segment in India and hold the market share of approximately 48%. Duracell batteries have over a time built a strong brand equity, goodwill and reputation world-wide as well as in India for their products and have millions of satisfied consumers.
( 7 ). Defendant No. 1, on the other hand, arc a concern, inter alia, dealing in the products of defendant No. 2 i. e. BPL Ultra zinc chloride batteries. Defendant No. 2areengaged, inter alia, in commercial manufacture, marketing and selling of Excell range of alkaline batteries in India sinceaugust,1997 and have recently commenced manufacturing zinc chloride batteries. The parent company of the
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