JUDGMENT

Sanjay Kishan Kaul, J. The claim of exclusive right to use the word mark 'WHIP TOPPING' resulted in filing of a suit by the appellants. The appellants claimed that the said word mark is part of its registered trademark 'RICH.S WHIP TOPPING' and the use of the word mark 'WHIP TOPPING' by the respondent as part of its trademark/label 'BELLS Whip Topping' was deceptively similar. The appellants also claim that the respondent seeks to pass off its goods for that of the appellants on account of the trade-dress, packaging and instructions, which are alleged to be identical. The appellants, thus, sought appropriate reliefs in the suit both of perpetual injunction and consequential reliefs for accounts, etc.

2. The appellants along with the suit filed an application for interim relief under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, but failed in that endeavour in terms of an Order dated 03.07.2007 of the learned Single Judge. In the appeal filed by the appellants against the interlocutory order, the trial in the suit was reduced by consent to filing of affidavits of evidence by both the parties with the documents to be read in evidence without the need of the cross-examination and the suit to be decided accordingly. Learned Single Judge, thus, framed the following issues on 10.11.2008:

"(i) Whether the plaintiff is the proprietor of the Trademark "RICH.S WHIP TOPPING" in relation to its goods as mentioned in the plaint both under the statutory as well as under the common law? OPP

(ii) Whether the plaintiff No. 1 has acquired distinctive goodwill and reputation and secondary meaning in respect of the trademark "RICH.S WHIP TOPPING" by virtue of its prior, long and continuous user as alleged? OPP

(iii) Whether the trademark "RICH.S WHIP TOPPING" is a trademark possessing trans-border reputation? OPP

(iv) Whether the registered trademark of the plaintiff "RICH.S WHIP TOPPING" is deceptively similar to the trademark of the defendants, "BELLS WHIP TOPPING. and amounts to infringement and passing off the plaintiffs. impugned product? OPP

(v) Whether the defendant's packaging is confusingly similar to the trade-dressing of the plaintiffs. packaging? OPP

(vi) Whether the plaintiff is entitled to damages against the defendants and if so, in what sum? OPP

(vii) Whether the trademark of the plaintiff is not a coined word? OPD

(viii) Whether the trademark of the plaintiff is a descriptive trademark? OPD

(ix) Whether the trademark of the plaintiff is a common dictionary word and that the same is common in use? OPD

(x) Whether the trademark of the plaintiff is generic in nature? OPD

(xi) Whether the plaintiff is guilty of concealment of the fact that its registered trademark is subject to a disclaimer and the effect thereof? OPD

(xii) Whether the suit instituted by the plaintiff is barred on account of delay and laches and acquiescence on the part of the plaintiff? OPD

(xiii) Relief."

3. The parties filed their respective affidavits of evidence. The suit was taken up for final disposal and in terms of the impugned judgment and decree dated 19.02.2010, the suit has been dismissed. Issue No. 1 was answered in favour of the appellants insofar as the proprietary rights in the trademark 'RICH.S WHIP TOPPING' were concerned, but it was held that the same did not extend to a part of the trademark 'WHIP TOPPING'. Issues No. 2, 3, 4 and 5 were answered against the appellants, while Issues No. 7 to 10 were answered in favour of the respondent and against the appellants. The sequittor was that Issue No. 6 was also answered against the appellants. Issues No. 11 and 12 were, however, answered in favour of the appellants.

4. The sum and substance of the case of the appellants is that 'RICH.S WHIP TOPPING' is a non-dairy topping and is one of the various non-dairy products manufactured and sold by the appellants. The object of all these products is that the food products remain soft while frozen and can be served straight from