1997 Supreme(Del) 508

High Court Of Delhi
GODFREY PHILLIPS INDIA LIMITED - Appellant
Versus
GIRNAR FOOD AND BEVERAGES PRIVATE LIMITED - Respondent
Interim Application 7896 of 1996
Decided On : 06/01/1997

Headnote:

TRADE MARK - INFRINGEMENT - PASSING OFF - INTERIM INJUNCTION - WORDS SUPER CUP - LAUDATORY EPITHETS - DESCRIPTIVE WORDS - COMMON TO THE TRADE - PUBLIC JURIS - NO EXCLUSIVE RIGHTS OR MONOPOLY - SUPER CUP NOT THE MOST ESSENTIAL FEATURE OF THE PLAINTIFF’S MARK - DEFENDANTS HAVE SUFFICIENTLY DISTINGUISHED THEIR GOODS BY USING THEIR TRADE MARK GIRNAR ALONGWITH THE WORDS SUPER CUP - PLAINTIFFS HAVE FAILED TO ESTABLISH THAT SUPER CUP HAS BECOME EXCLUSIVELY ASSOCIATED WITH THE PLAINTIFF’S GOODS IN QUESTION - INTERIM INJUNCTION GRANTED IN FAVOUR OF THE PLAINTIFF CONFIRMED.

Fact of the Case:

Plaintiff, a manufacturer and seller of tea under the brand name SUPER CUP, filed a suit for injunction, passing off action with other ancillary reliefs against the defendant, who started selling tea under the brand name SUPER CUP TEA with the device of CUP and SAUCER under their trade mark GIRNAR. The plaintiff alleged that the defendant was dishonestly copying and adopting the plaintiff’s trade mark and passing off their goods as those of the plaintiff. The defendant contended that the words SUPER CUP are laudatory epithets or descriptive words and are not inherently capable of distinguishing the goods of the plaintiff, that SUPER CUP is not the most essential feature of the plaintiff’s mark, and that the defendants have sufficiently distinguished their goods by using their trade mark GIRNAR alongwith the words SUPER CUP. The plaintiff filed an application for ad interim injunction, which was granted on 2nd August, 1996. The defendant filed an application for vacating the injunction.

Finding of the Court:

The court held that the words SUPER CUP are not purely laudatory or descriptive and are capable of acquiring secondary meaning by its use by traders as well as customers/public. The court further held that the defendant’s use of the words ‘super CUP Tea’ and the device of cup and saucer are displayed prominently and have deceptive similarity or are likely to cause confusion among the unwary consumers/customers and the trade. The court also held that the defendant has not acted honestly and their sole object is either of actually misleading the public or of taking undue advantage of the business reputation/goodwill of the rival trader, i.e. the plaintiff.

Issues: 1. Whether the words SUPER CUP are laudatory epithets or descriptive words and are not inherently capable of distinguishing the goods of the plaintiff? 2. Whether SUPER CUP is the most essential feature of the plaintiff’s mark? 3. Whether the defendants have sufficiently distinguished their goods by using their trade mark GIRNAR alongwith the words SUPER CUP? 4. Whether the plaintiffs have failed to establish that SUPER CUP has become exclusively associated with the plaintiff’s goods in question?

Ratio Decidendi: 1. The court held that the words SUPER CUP are not purely laudatory or descriptive and are capable of acquiring secondary meaning by its use by traders as well as customers/public. The court relied on the case of Reddaway v. Benhem, (1896)13 RPC 218, where the House of Lords held that when words which are descriptive of an article have come to denote the goods of a particular manufacturer, he is entitled to restrain others from using them so as to deceive the purchasers, notwithstanding that the words are a description of the goods. 2. The court held that SUPER CUP is not the most essential feature of the plaintiff’s mark. The court relied on the case of Sumnat Prasad v. Sheo Janan Prasad, AIR 1972 SC 2488, where the Supreme Court held that a trade mark is recognised as a kind of incorporeal property - the property consists in the right of the owner to use the mark in relation to specific goods and under certain circumstances to prevent others from using it. 3. The court held that the defendants have sufficiently distinguished their goods by using their trade mark GIRNAR alongwith the words SUPER CUP. The court relied on the case of Standard Ideal Co. v. Standard Sanitary Manufacturing company, 1910 (27) RPC 789, where the Privy Council held that a common English word having reference to the character and quality of the goods in connection with which it is used, and having no reference to anything else cannot be an apt or an appropriate instrument for distinguishing the goods of one trader from those of another. 4. The court held that the plaintiffs have failed to establish that SUPER CUP has become exclusively associated with the plaintiff’s goods in question. The court relied on the case of Cellular Clothing Company v. Maxton and Murray, (1899) 16 RPC 397 (H. L.), where the House of Lords held that the mark ‘cellular’ was a descriptive name in respect of particular cloth or clothing and could not be monopolised by any trader.

Final Decision: The court allowed the plaintiff’s application for ad interim injunction and dismissed the defendant’s application for vacating the injunction. The interim order dated 2nd August, 1996 was confirmed.