2007 Supreme(Del) 2790

IN THE HIGH COURT OF DELHI
Sanjiv Khanna, J.
Annul Industries - Appellant
Versus
Shiva Tobacco Company - Respondent
FAO No. 228 of 2005
Decided On : 16-01-2007

The initial adoption by the appellant of the mark 'Panchhi' was not honest and, therefore, the appellant was not entitled to the defense of honest and concurrent user.

Headnote:

TRADEMARK - INFRINGEMENT - DECEPTIVELY SIMILAR MARKS - INJUNCTION - DELAY AND LACHES - HONEST AND CONCURRENT USER - REVERSE CONFUSION - REGISTERED OWNER - MERITS AND PRIMA FACIE FACTS - FRAUD AND CONCEALMENT OF FACTS - [UDTA PANCHHI] - [CHEWING TOBACCO] - [ACT SECTIONS 28, 29, 30, 33] - [SUMMARY]

Fact of the Case:

The appellant, M/s Annul Industries, and the respondent M/s Shiva Tobacco Company, both manufacture and sell chewing tobacco. Chewing tobacco manufactured/sold by the appellant is marketed under the trade mark 'Udta Panchhi' and the chewing tobacco manufactured/sold by the respondent is marketed under the brand name 'Panchhi Chaap'. The respondent claims that they started using the brand name 'Panchhi Chaap' in 1973 and is also the registered user of the said trade mark label under the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) since in 1974. The appellant claims his lineage to the trade mark 'Udta Panchhi' through Mr. Krishan Bansal, father of Mr. Anand Bansal, sole proprietor of the appellant. It is claimed that Mr. Krishan Bansal adopted the trade mark 'Udta Panchhi' in March, 1982.

Finding of the Court:

The court held that the marks 'Udta Panchhi' and 'Panchhi Chaap' are deceptively similar and likely to cause confusion or deception in the minds of the buyers. The court also held that the delay in filing the suit for injunction was not a bar to grant of injunction in cases of infringement of trade mark. The court further held that the initial adoption by the appellant of the mark 'Panchhi' was not honest and, therefore, the appellant was not entitled to the defense of honest and concurrent user. The court also held that the doctrine of reverse confusion was not applicable to the facts of the case. The court further held that the respondent was the registered owner of the registered mark and was entitled to sue for infringement. The court also held that the respondent was not guilty of fraud and concealment of facts.

Issues: 1. Whether the marks 'Udta Panchhi' and 'Panchhi Chaap' are deceptively similar. 2. Whether injunction should be denied on the ground of delay and laches. 3. Whether honest and concurrent user is a defense to action for infringement. 4. Whether the principle of Reverse Confusion is applicable to the facts of the present case. 5. Whether the suit filed by the plaintiff is for infringement on basis of 1974 registration is maintainable. 6. Whether the respondent is a registered owner of the registered mark. 7. Merits and prima facie facts. 8. Whether the respondent is guilty of fraud and concealment of facts.

Ratio Decidendi: 1. The question of infringement u/s 29 of the Act is decided whether the mark of the defendant is likely to deceive or cause confusion', In Amritdhara Pharmacy Vs. Satyadeo Gupta, AIR 1963 SC 449, Supreme Court referring to Kerly on Trade Marks, 8th Edn. Observed: For deceptive resemblance two important questions are : (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. 2. With respect, we are unable to agree that the principle of phonetic similarity has to be jettisoned when the manner in which the competing words are written is different and the conclusion so arrived at is clearly contrary to the binding precedent of this Court in Amritdhara Pharmacy Vs. Satyadeo Gupta, AIR 1963 SC 449 where the phonetic similarity was applied by judging the two competing marks. Similarly, in Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, it was observed that: In an action for infringement the plaintiff must, no doubt, make out that the use of the defendants mark is likely to deceive, but where the similarity between the plaintiffs and the defendants mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiffs rights are violated.

Final Decision: The appeal was dismissed. However, the appellant was granted three months time to comply with the injunction Order passed by the learned Trial Court and dispose of its pending stock/wrappers, etc.