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2015 Supreme(Mad) 2128
IN THE HIGH COURT OF JUDICATURE AT MADRAS
R. SUBBIAH, J.
Wipro Enterprises Limited, rep. by Amit Mathur Manager-Legal – Appellant
Versus
Heinz India Pvt. Ltd. & Others –Respondents
Original Application Nos. 33 to 35 of 2015 in C.S. No. 23 of 2015
Decided On : 10-06-2015
For Applicant :P.S. Raman, SC, for M/s. Gladys Daniel, Advocates
For the Respondents:T.V. Ramanujam, SC for Arun C. Mohan, Advocate
A common and generic word cannot be exclusively appropriated by a single entity, especially when it is used with a distinctive prefix or suffix.
Headnote:
TRADEMARK - INFRINGEMENT - PASSING OFF - INTERIM INJUNCTION - SIMILARITY OF MARKS - BALANCE OF CONVENIENCE - GENERIC WORDS - DESCRIPTIVE WORDS - COMMON WORDS - SECONDARY MEANING - TAGLINES - SIMILARITY OF LABELS - DECEPTIVE SIMILARITY - LIKELIHOOD OF CONFUSION - PRIOR USER - SUB BRANDS - PROTECTION OF SUB BRANDS - COMMON LAW RIGHTS - TRADE DRESS - SIMILARITY OF TRADE DRESS - INTENTION TO DECEIVE - FRAUD - IMPERFECT MEMORY - BALANCE OF CONVENIENCE - IRREPARABLE INJURY - LOSS OF GOODWILL - LOSS OF REPUTATION - LOSS OF MARKET SHARE - LOSS OF CUSTOMERS - LOSS OF PROFITS - DAMAGES - ACCOUNT OF PROFITS - INJUNCTION - PERMANENT INJUNCTION - INTERLOCUTORY INJUNCTION - ANTON PILLER ORDER - JOHN DOE ORDER - Mareva INJUNCTION - FREEZING ORDER - SEARCH AND SEIZURE ORDER - INSPECTION ORDER - PRODUCTION OF DOCUMENTS ORDER - INTERROGATORIES - ADMISSIONS - SUMMARY JUDGMENT - DEFAULT JUDGMENT - DISMISSAL OF SUIT - WITHDRAWAL OF SUIT - SETTLEMENT - MEDIATION - ARBITRATION - APPEAL - REVIEW - REMAND - COSTS - ATTORNEY FEES.
Fact of the Case:
Plaintiff, a public limited company, entered into a Scheme of Arrangement with Azim Premji Custodial Services Private Limited and Wipro Trademarks Holding Limited, demerging its diversified business segment of customer care products and others to Azim Premji Custodial Services Private Limited, which was subsequently renamed as WIPRO ENTERPRISES LIMITED. Plaintiff acquired the trademark GLUCOVITA from Hindustan Lever Limited in 2003 and later filed applications for registration of the trademark BOLTS, which was conceived and adopted in 2012 and used along with the house mark GLUCOVITA to market and sell a new segment of glucose based chewy tablets. Plaintiff alleged that in December 2014, it came across an identical product being marketed and manufactured by defendants 1 and 2 under the trademark VOLT and sold by defendant 3, with the brand name GLUCON-D. Plaintiff contended that the adoption of the nearly identical trademark VOLT in respect of the identical product showed the mala fide nature of defendants, compounded by the fact that defendant 1 had not only adopted the nearly identical trademark but also the identical colour scheme and get up for its packaging, and had intentionally caused its product to have such a strong similarity in size, combination of colour and get up to that of plaintiff's product. Plaintiff further alleged that defendant 1 had made a slavish imitation of the tag line used by plaintiff to market its product under the mark BOLTS, and had also chosen to keep the pricing of the impugned product similar to that of plaintiff, giving added reason for confusion in the mind of the innocent consumer. Plaintiff filed the present suit for permanent injunctions restraining defendants from manufacturing, marketing, distributing, offering or advertising for sale any kind of products using the mark VOLT or similar sounding marks, from manufacturing, marketing, distributing, offering or advertising for sale any kind of products using the tag line INSTANT ENERGY. ANYTIME. ANYWHERE. or similar sounding lines, and from manufacturing, marketing, distributing, offering or advertising for sale any kind of products using the colour scheme and get up as seen in document No.1 or similar colour scheme and get up, and for a preliminary decree directing defendants to render an account of profits made by them by the use of the trademark VOLT in relation to their products and for a final decree in favour of plaintiff for the amount of the profits found to have been made by defendants after the defendants have rendered accounts and costs. Pending suit, plaintiff took out three applications in O.A.Nos.33 to 35 of 2015 for interim injunction in respect of prayers a, b and c made in the plaint.
Finding of the Court:
The court found that the word BOLTS is a common and generic word and plaintiff cannot have any exclusive right over the said word when the plaintiff as well as defendants have chosen to use their respective words/marks with the distinctive prefix. The court also found that the plaintiff is not the originator of the words ANYTIME ANYWHERE and the said mark is used by several entities. The court further found that the plaintiff has not made out a prima facie case to grant an order of interim injunction in their favour at this stage and the balance of convenience is also not in their favour.
Issues: 1. Whether the plaintiff has made out a prima facie case for grant of interim injunction? 2. Whether the balance of convenience is in favour of the plaintiff? 3. Whether the word BOLTS is a common and generic word? 4. Whether the plaintiff has any exclusive right over the word BOLTS? 5. Whether the plaintiff is the originator of the words ANYTIME ANYWHERE? 6. Whether the said mark is used by several entities?
Ratio Decidendi: 1. The court held that the plaintiff has not made out a prima facie case to grant an order of interim injunction in their favour at this stage and the balance of convenience is also not in their favour. 2. The court held that the word BOLTS is a common and generic word and plaintiff cannot have any exclusive right over the said word when the plaintiff as well as defendants have chosen to use their respective words/marks with the distinctive prefix. 3. The court held that the plaintiff is not the originator of the words ANYTIME ANYWHERE and the said mark is used by several entities.
Final Decision: All the applications are dismissed.
The applicant in all these applications is the plaintiff in C.S.No.23 of 2015 and the respondents are the defendants. The said suit has been filed for the following reliefs:-
(a) granting a permanent injunction, restraining the defendants by themselves, their servants, agents, men, or anyone claiming through them from manufacturing, marketing, distributing, offering or advertising for sale any kind of products using the mark VOLT or similar sounding marks in the course of their business and pass of their products using the trademark VOLT as and for products sold under trademark BOLTS of the plaintiff or enable others to pass off.
(b) granting a permanent injunction, restraining the defendants by themselves, their servants, agents, men, or anyone claiming through them from manufacturing, marketing, distributing, offering or advertising for sale any kind of products using the tag line INSTANT ENERGY. ANYTIME. ANYWHERE. or similar sounding lines in the course of their business and pass of their products using the tag line ENERGY OF GLUCON-D. ANYWHERE. ANYTIME as and for products sold under the tag line INSTANT ENERGY. ANYTIME. ANYWHERE. of the plaintiff or enable others to pass off.
(c) granting a permanent injunction, restraining the defendants by themselves, their servants, agents, men, or anyone claiming through them from manufacturing, marketing, distributing, offering or advertising for sale any kind of products using the colour scheme and get up as seen in document No.1 or similar colour scheme and get up in the course of their business and pass of their products using the colour scheme and get up in document No.2 as and for products sold under the colour scheme and get up in document No.1 of the plaintiff or enable others to pass off.
(d) directing the defendants to surrender to the plaintiff all products, packing materials, cartons, advertisement materials and hoardings, letterheads, visiting cards, office stationery and all other materials containing / bearing the trademark VOLT or any other deceptively similar trademark in respect of pharmaceutical and medicinal preparations.
(e) for a preliminary decree in favour of the plaintiff, directing the defendants to render an account of profits made by them by the use of the trademark VOLT in relation to their products and for a final decree in favour of the plaintiff for the amount of the profits found to have been made by the defendants after the defendants have rendered accounts and costs.2. Pending suit, the applicant / plaintiff has taken out three applications in O.A.Nos.33 to 35 of 2015 for interim injunction in respect of prayers a, b and c made in the plaint.
3. For the sake of convenience, the applicant will be referred to as the plaintiff and the respondents will be referred to as defendants.
4. The case of the plaintiff, in brief, is as follows:-
(a) The plaintiff is a public limited company having their business interest in IT, software development and other related services. The plaintiff entered into a Scheme of Arrangement with one Azim Premji Custodial Services Private Limited and Wipro Trademarks Holding Limited. This scheme demerged its diversified business i.e., the customer care products and others to Azim Premji Custodial Services Private Limited. Subsequently, Azim Premji Custodial Services Private Limited has been converted into a public limited company. The said scheme has been approved by the High Court of Karnataka vide its order dated 1.3.2013 in Co.P.No.8/2013 and Co.P.No.9/2013 and Co.P.No.10/2013. Subsequent to the same, the said Azim Premji Custodial Services Private Limited has changed its name and is presently known as WIPRO ENTERPRISES LIMITED by its Certificate of Incorporation dated 19.4.2013.
(b) During the course of their business, on 16.4.2003, the plaintiff had acquired the trademark GLUCOVITA from Hindustan Lever Limited, who was the successor in interest from International Best Foods Ltd. In view of the demerger, this mark now vests
