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High Court Of Delhi
NESTLE S PRODUCTS LIMITED - Appellant
Versus
MILKMADE CORPORATION - Respondent
First Appeal (OS) 11 of 1972
Decided On : 04/25/1972
TRADEMARK - INFRINGEMENT - PASSING OFF - SIMILARITY OF MARKS - CONNECTION BETWEEN GOODS - MILKMAID - MILK-MADE - BISCUITS AND TOFFEES - CONDENSED MILK - CLASSIFICATION OF GOODS - REGISTRATION OF TRADEMARK - EXCLUSIVE RIGHT TO USE - DECEPTION AND CONFUSION - TRADE NAME - INJUNCTION - INTERIM RELIEF - PRIMA FACIE CASE.
Fact of the Case:
Plaintiffs, Nestle's Products Limited, registered proprietors of the trademark "milkmaid Brand" for condensed milk, filed a suit and an application for a temporary injunction against the defendants, Milkmade Corporation, for infringement of trademark and passing off. The defendants were using the trade name "milkmade" for biscuits and toffees. The plaintiffs contended that the defendants' trade name and mark were visually and phonetically similar to their registered trademark and that the defendants were passing off their goods as those of the plaintiffs. The defendants argued that their goods were in a different class from the plaintiffs' goods and that there was no infringement or passing off.
Finding of the Court:
The court held that the plaintiffs had not made out a prima facie case for the grant of an injunction. The court found that the defendants' goods were in a different class from the plaintiffs' goods and that there was no such trade connection between the two sets of goods as would constitute an infringement of the plaintiffs' trademark. The court also found that the plaintiffs had not established that there was a likelihood of deception or confusion on the part of the public.
Issues: 1. Whether the defendants' trade name and mark were visually and phonetically similar to the plaintiffs' registered trademark? 2. Whether the defendants were passing off their goods as those of the plaintiffs? 3. Whether the plaintiffs had made out a prima facie case for the grant of an injunction?
Ratio Decidendi: 1. The court held that the defendants' trade name and mark were visually and phonetically similar to the plaintiffs' registered trademark. However, the court found that the defendants' goods were in a different class from the plaintiffs' goods and that there was no such trade connection between the two sets of goods as would constitute an infringement of the plaintiffs' trademark. 2. The court held that the plaintiffs had not established that there was a likelihood of deception or confusion on the part of the public. The court found that the defendants' wrappers bore the words "milk-made Corporation", which were sufficient to show that the goods were the products of a different Corporation and not of the Plaintiffs.
Final Decision: The court dismissed the plaintiffs' appeal and held that the learned single Judge, with respect, rightly dismissed the plaintiffs' application for interim relief.
( 1 ) THE Plaintiffs-Appellants, Nestle s Products Limited, instituted a suit on 23-11-1971 and also filed an application under Order 39 Rules 1 and 2 and S. 151 of the Code of Civil Procedure for a temporary injunction against the defendants (Messrs Milkmade Corporation and Anr ). Shankar Lal (defendant No. 2) is supposed to be carrying on the business of the first defendant either alone or in association with other persons in the following circumstances.
( 2 ) PLAINTIFF No. 1 is Nestle s Products Limited, a company registered under the laws of the Bahama Islands and the second Plaintiff, Nestle s Products (India) Limited though registered under the laws of the Bahama Islands has its principal place of business in India at New Delhi.
( 3 ) PLAINTIFF No. 1 is the registered proprietor of the following among other trade marks registered in India in respect of goods mentioned in class 29 of the classified list of goods in the Fourth Schedule of the Trade and Merchandise Marks Rules :
(1) Trade Mark consisting of a figure representing a milkmaid and the words "milkmaid brand". (2) Trade Marks consisting of the transcription of the English word milkmaid in Tamil, Telugu, Bengali, Gujarati, Hindi and Assamese, respectively.
( 4 ) IN addition the second plaintiff had applied for the formalities for the recordal of registered user rights in respect of trade mark containing the words "milkmaid Brand" on a central panel consisting of a figure representing a milkmaid reproduction on either side thereof of two sides of a medal set in the middle of a rectangle with the words "condensed Milk". The trade marks consisting of the word "milkmaid" and the figure representing a milkmaid have been used by the plaintiffs and their predecessors for over 100 years to distinguish the condensed milk manufactured and/or sold by them. The said condensed milk has been sold in India for over 50 years. The plaintiffs had acquired the said trade marks and brand "milkmaid" which had acquired a wide reputation in other markets as well as in India. It came to the notice of the plaintiffs in or about November, 1970 that the defendants had adopted the trade name "milkmade Corporation" and had put on the market biscuits and toffees, under their said trade name and/or mark "milkmade". The plaintiffs complained that the said trade name and/or mark adopted by the defendants was both visually and phonetically nearly identical with and/or deceptively similar to the aforesaid trade marks and brand name "milkmaid". The second plaintiff thereupon wrote to the defendants requiring them to desist from using the word "milkmade" or any other similar word or mark in respect of their goods.
( 5 ) VARIOUS defences were taken to the plaintiffs suit; they are, inter alia, as follows : The plaintiffs trade marks, which were in respect of class 29, could not give them any right in respect of biscuits and toffees manufactured by the defendants, which fall under class 30 and not under class 29 . The defendants had advertised those products in 1968 (An issue of the Indian Express of that year containing the said advertisement was relied upon in support of this) and have invested huge sums of money going beyond Rs. 6 lakhs, on the construction of the factory and installation of machinery for the manufacture of biscuits and toffees. The plaintiffs have stood by and allowed the defendants to carry on their business. Moreover "milkmaid" is an ordinary English word which could not be registered under the Indian Trade and Merchandise Mark Act.
( 6 ) IN their replication, which was filed by the plaintiffs, they met the charge of delay or latches made by the defendants and explained that the registered proprietors (Plaintiff No. 1) had to be consulted, necessary copies had to be obtained and that a counsel had to be engaged and pleadings drafted with the approval of both the plaintiffs. The legal certificates of their trade mark registration were not available until Novem
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