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1987 Supreme(Del) 471
High Court Of Delhi
JOHNSON AND JOHNSON - Appellant
Versus
CHRISTINE MODEN (INDIA) PRIVATE LIMITED - Respondent
First Appeal Order 219 of 1986
Decided On : 12/04/1987
ANUP SINGH, Feroze Andhyarujina, H.P.SINGH, MANMOHAN SINGH, MOHAN DEVAN, N.K.BHARDVAJ
In a passing off action, the court must consider the totality of the proposed trademark and determine whether it is likely to cause deception or confusion in the minds of consumers.
Headnote:
TRADEMARK - PASSING OFF - STAYFREE - LIKELIHOOD OF CONFUSION - DECEPTION - INJUNCTION - SIMILARITY AND DISSIMILARITY - DESCRIPTIVE WORD - DISTINGUISHABILITY - BALANCE BETWEEN PROTECTION OF INVESTMENT AND FREE COMPETITION.
Fact of the Case:
Plaintiffs, owners of the trademark STAYFREE for sanitary napkins, filed a passing off action against defendants, who used the same mark on their sanitary napkin packaging. Plaintiffs claimed that defendants' use of STAYFREE was likely to deceive customers and cause confusion, and that defendants had fraudulently adopted the mark to trade on plaintiffs' goodwill. Defendants argued that their trademark was COMFIT ALWAYS, that STAYFREE was a common descriptive word, and that there was no likelihood of confusion.
Finding of the Court:
The court held that there was no likelihood of confusion or deception, and that the two packagings were very different. The court found that defendants' use of STAYFREE was not with a view to deceive the ultimate customer, and that the temporary injunction was rightly refused by the learned single Judge.
Issues: 1. Whether defendants' use of the mark STAYFREE was likely to deceive customers and cause confusion. 2. Whether defendants had fraudulently adopted the mark STAYFREE to trade on plaintiffs' goodwill. 3. Whether STAYFREE was a common descriptive word.
Ratio Decidendi: 1. The court applied the principle that the marks must be compared as a whole, and that the true test is whether the totality of the proposed trademark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trademark. 2. The court found that the defendants' trademark was COMFIT ALWAYS, and that the use of STAYFREE was to convey a message to customers that by using their product, they would be free of any external support. The court also found that defendants had given an undertaking in a previous case not to use the trademark COMFREE, which was similar to plaintiffs' trademark CAREFREE. 3. The court found that STAYFREE was a combination of two English words, and that it was not an invented word. The court also found that the word was not a common descriptive word, but that it was a colloquial word.
Final Decision: The court dismissed the appeal and confirmed the order of the learned single Judge, leaving the parties to bear their own costs.
( 1 ) THE appellants are plaintiffs in the original suit (hereinafter referred to as plaintiffs ). Plaintiff No. 1 is a Corporation organised under the laws of New Jersey, U. S. A. Plaintiff No. 2 is a Company incorporated under the Companies Act, 1956. Plaintiffs trade mark is stayfree . The plaintiffs have brought a passing off action. According to the plaint, since June 1978 plaintiff No. 1 has permitted plaintiff No. 2 to use the said trade mark stayfree in respect of sanitary napkins manufactured by them and since then they have used the said mark in respect of sanitary napkins manufactured and marketed by them in India under a licence granted by plaintiff No. 1. The plaintiffs claim that the mark stayfree has acquired a wide reputation and goodwill in India and has come to be associated by the traders and members of public in India exclusively with the plaintiffs. Along with the plaint a statement showing sales figures of the goods sold under the mark STAYFREE in India from 1978 till Dec. 1985 has been filed. Another statement showing amounts spent on advertisements and publicity has also been filed. They claim that the mark stayfree has acquired a vast and enviable reputation and goodwill and has become distinctive of their goods.
( 2 ) PLAINTIFF No. 1 applied for registration of the trade mark stayfree under application No. 369841 dt. 18th Dec. , 1980 in respect of sanitary napkins and personal hygiene products used in menstruation claiming user since 1978. The application was advertised in the Trade Marks Journal on 16th Aug. 1984. On 26th Nov. , 1984 defendant No. 1 filed a notice of opposition to the said application. The said proceedings are pending. It has been further averred in the plaint that since June, 1978 the plaintiffs have adopted polythene packs having distinctive colour scheme of blue, pink and white getup which is easily recognisable by the customers. On the packing, the mark stayfree has been prominently displayed and the catchy legend no BELTS; NO PINS; NO STRINGS is printed. It is claimed that in or about Feb. , 1986 the plaintiff learnt that the defendants have also used the marks stayfree in respect of sanitary napkins and have substantially copied the plaintiffs pack and the mark stayfree . According to the plaintiffs, the defendant No. 1 also adopted their packing which has a deceptively similar getup and colour scheme as that of the packing of the plaintiffs viz. blue, yellow and white combination. They further claimed that the defendants have fraudulently and blatently adopted the same wordings viz. no Belts, No Pins, No Strings with the whole aim and intention to trade upon the enviable reputation and goodwill acquired by plaintiff No. 2 in respect of their goods and to make dishonest and illegal gains. The suit is pending.
( 3 ) PENDING the disposal of the suit the plaintiffs by an application under O. 39, Rr. 1 and 2 read with S. 151, Civil Procedure Code sought temporary injunction restraining the defendants, their servants and agents from in any manner using the mark stayfree or the impugned legend no Pins, No Belts, No Strings on any packing for sale of sanitary napkins. The respondents are defendants in the original suit (hereinafter referred to as the defendant ). In opposition to the claim made by the plaintiffs various preliminary objections have been raised by the defendants in their reply. The defendants opposed the application for grant of temporary injunction primarily on four points. Firstly, that their trade mark is "comfit Always and not stayfree . Secondly, that the word stayfree is a common descriptive word for the product and is incapable of distinguishing the goods; thirdly that the words stayfree is a common dictionary word and was in existence much before either of the plaintiffs came into existence and lastly that there is no likelihood of any confusion or deception.
( 4 ) THE learned single Judge has dismissed the applic
