Judgment:
Bhaskar Bhattacharya, J.
1. Both the appeals, one filed by the plaintiff and the other by the defendant, were taken up together and we propose to dispose those two appeals by this common judgement.
2. The APO No. 248 of 2008 is at the instance of a plaintiff in a suit alleging violation of registered trademark and also complaining passing off and is directed against an order dated 26th August, 2008 passed by a learned Single Judge of this Court by which His Lordship modified the earlier interim order granted ex parte in favour of the plaintiff.
3. Being dissatisfied, the plaintiff has come up with the present appeal.
4. The defendant, on the other hand, is aggrieved by the modified part of injunction granted by the learned Trial Judge and has filed the other appeal being APOT No. 355 of 2008 thereby praying for dismissal of the application for temporary injunction in its entirety.
5. The facts giving rise to filing of these appeals may be summed up thus:
The plaintiff/appellant filed a suit being C.S. No. 204 of 2007 before the leaned Single Judge of this Court thereby praying for the following relief:
a) Declaration that the defendant its servants, agents are not entitled to use the trademark 'AYUR' and 'AYU' alone or by prefixing or suffixing any other word to the word 'AYUR' or 'AYU' or any mark deceptively similar to the plaintiff's trademark 'AYUR' or 'AYU' in respect of any goods;
b) Perpetual injunction restraining the defendant whether by themselves or by their servants, agents and assigns or any of them or otherwise howsoever from infringing the registered trademark and trade name of the plaintiff 'Ayur' and 'Ayu' by using the mark 'Ayucare', 'Ayurcare' and 'Himani Ayurdhara' and 'Himani Ayucare' or any other mark prefixing or suffixing 'Ayur' to any word deceptively similar to the plaintiff's registered trademark 'Ayur' and 'Ayu';
c) Perpetual injunction restraining the defendant whether by themselves or by their servants, agents and assigns or any of them or otherwise howsoever from passing off or attempting to pass off the products of the defendant as products of the plaintiff by using the trademark 'Ayur' or 'Ayu' or the names of 'Ayucare', 'Ayurcare' and 'Himani Ayurdhara' and 'Himani Ayucare' or any other mark or device deceptively and/or confusingly similar to the aforesaid registered trademark of the plaintiff;
d) Perpetual injunction restraining the defendant whether by themselves or by their servants, agent and assigns or any of them or otherwise howsoever from using the registered trademark 'Ayur' and 'Ayu' of the plaintiff or by using the trademarks 'Ayucare', 'Ayurcare' and 'Himani Ayurdhara' and 'Himani Ayucare' which are identical with or any other mark or device deceptively and/or confusingly similar to and/or imitation of the aforesaid registered trademark of the plaintiff;
e) Perpetual injunction restraining the defendant whether by themselves or by their servants, agents and assigns or any of them or otherwise howsoever from proceeding further with their application for registration of the aforesaid names of 'Ayucare', 'Ayurcare' and 'Himani Ayurdhara' and 'Himani Ayucare' or any other mark or device deceptively and/or confusingly similar to the aforesaid registered trademark of the plaintiff;
f) Mandatory injunction directing the defendant to obliterate upon oath the word 'Ayur' and 'Ayu' or 'Ayucare', 'Ayurcare' and 'Himani Ayurdhara' and 'Himani Ayucare' on labels, bills, wrappers, envelopes, cartons, blocks, dices, publicity materials, packaging materials, stationery, forms of the defendant application before the Trade Mark Registry and also all literature or any other device used for the application of the said registered trademark of the plaintiff 'Ayur' or any mark deceptively similar to 'Ayur';
g) Decree directing the defendant and its servants, agents and assigns to deliver upon oath for destruction of all labels, bills, wrappers, envelopes, cartons, blocks, dices, publicity materials, packaging materials, stationery and forms;
h) Interlocutory injunction;
i) Receiver;
j) Attachment;
k) Costs;
l) Further and other reliefs.
6. The case made out by the plaintiff may be epitomized thus:
The plaintiff carries on business of manufacturing and selling of various products including cosmetics, hair lotions, essential oils, shampoo etc. under the trademark 'Ayur' and 'Ayu'. The plaintiff has obtained registration of its trademark 'Ayur' and 'Ayu' under several classes. The first of such registration was obtained in the year 1984. The plaintiff has also registered trademark in countries outside India, namely, Australia, Nepal, New Zealand, South Africa, United Arab Emirates and United Kingdom. The defendant infringed the registered trademark of the plaintiff by using the marks 'Ayucare', 'Ayurcare', 'Himani Ayurdhara' and 'Himani Ayucare' and also tried to pass off their products as those of the plaintiff.
7. In connection with the said suit, the plaintiff filed an application on the selfsame allegations made in the plaint thereby claiming the following interlocutory relief:
a) Injunction restraining the respondent and its servants, agents and assigns from proceeding further in any manner for registration of the trademark 'Ayucare', 'Ayurcare', 'Himani Ayurdhara' and 'Himani Ayucare' or any other trademark deceptively similar to the petitioner's registered trademark; Ayur and Ayu by prefixing or suffixing the word Ayur and Ayu in any other word.
b) Injunction restraining the respondent whether by themselves or their servants, agents and assigns or each of them or otherwise howsoever from using the mark 'Ayucare', 'Ayurcare', 'Himani Ayurdhara' and 'Himani Ayucare' or infringing the registered trademark of the petitioner or any other trademark deceptively similar to the petitioner's registered trademark 'Ayur';
c) Injunction restraining the respondent whether by themselves or by their servants, agents and assigns or any of them or otherwise howsoever from passing off or attempting to pass off the products manufactured by them by using the name 'Ayur' or 'Ayu' or any other name deceptively similar to Ayur or Ayu namely 'Ayucare', 'Ayurcare', 'Himani Ayurdhara' and 'Himani Ayucare';
d) A fit and proper person be appointed as Receiver to take possession of all labels, bills, packaging materials, publicity materials, stationeries, forms, literatures, devices, dices, wrappers, envelopes, cartons, blocks etc. of the respondent relating to the mark 'Ayur' or 'Ayu' or any other name deceptively similar to Ayur or Ayu namely 'Ayucare', 'Ayurcare', 'Himani Ayurdhara' and 'Himani Ayucare';
e) Ad-interim order of injunction in terms of prayers above;
f) Costs of and incidental to this application be borne by the Respondent;
g) Such further or other order or orders and direction be given as to Your Lordships may deem fit and proper.
8. On such application, a learned Single Judge of this Court was pleased to grant an ad interim order of injunction in terms of prayer (b), mentioned above.
9. The defendant entered appearance and filed an application for vacating the ex parte ad interim order of injunction dated 19th September, 2007 on the following allegations:
(a) It will appear from the averments made in the application filed by the plaintiff that its cause of action was based on registration of the mark 'Ayur' and use of trademark 'Ayur'. In paragraph 20 of the application the plaintiff has, however, also alleged without particulars that the defendant had passed off or had been passing off and/or attempting to pass off their goods as and for the genuine goods of the plaintiff under the trademark 'Ayur' or 'Ayu' by prefixing or suffixing any other word. From the above statement it is clear that the plaintiff had primarily relied on infringement of its registered trademark as its cause of action in the above suit.
(b) It would be apparent from the plaint that the plaintiff was well and fully aware of the facts that the word 'Ayur' is devoid of any distinctive character and is not capable of distinguishing the products of the plaintiff from those of any other person. It was not even the case of the plaintiff that 'Ayur' had acquired a distinctive character as a result of its use by the plaintiff or its predecessor-in-interest. Accordingly, all the registrations obtained by the plaintiff in respect of the 'Ayur' mark have been of stylised representation of the word 'Ayur' within an elliptical device.
(c) It will further appear from the plaintiff's application that it has neither applied for nor has obtained registration of the mark 'Ayur' either in India or abroad. It is, in any event, evident that the ex parte ad interim order of injunction was obtained by the plaintiff merely on the basis of its registration of the 'Ayur' mark and the purported infringement thereof by the defendant.
(d) It is apparent that the plaintiff has adopted the word 'Ayur' in an abbreviation of the word 'Ayurveda' or the word 'Ayurved' to signify that its products had ayurvedic qualities or had been manufactured in accordance with Ayurvedic principles or practices. In the circumstances, the word 'Ayur' cannot by itself distinguish the plaintiff's products or any of them from those of any other person. In fact, there are hundreds of products both in India and abroad which represent or hold themselves out to be Ayurvedic products having Ayurvedic qualities or having been manufactured according to Ayurvedic principles and practices. Therefore, to allow the plaintiff to obtain proprietary right over 'Ayurveda or Ayurvedic' will, in effect, amount to recognising the words 'Ayurveda' or 'Ayurvedic' to be the exclusive property of the plaintiff.
(e) Similarly, the word 'Ayu' denotes longevity in Bengali, Hindi and Sanskrit, amongst other, languages and as such, cannot distinguish the plaintiff's products or any of them.
(f) The words 'Ayur', 'Ayurved' and 'Ayu' are used millions of times each day without any reference whatsoever to the plaintiff or its products and consequently, cannot be shackled to the plaintiff. The plaintiff had relied upon its registered trademark 'Ayur' given in a particular style and thereby giving impression to the public and trade that the word 'Ayur' was not capable of registration and therefore, the plaintiff has obtained right, if any, only in a particular manner in which the word 'Ayur' has been registered.
(g) The defendant's product-list reveals that the same includes well-known brands and products which in itself demonstrate that the defendant was used to creating brands and not in hijacking them. The defendant markets its products both in India and abroad. The defendant's turnover is far in excess of the plaintiff's turnover as indicated in the plaint filed in the above suit.
(h) The defendant commenced manufacture of 'Ayurcare' in the year 2003 and has achieved sale in excess of Rs. 54.68 lakh. In this context, it is significant to note that the plaintiff has sold its cosmetic preparation under the name 'Ayurcare' only outside India. All the sales of the said product till date arose out of export sales. The said fact itself indicates that the defendant never intended to exploit any alleged goodwill or reputation of the plaintiff in its products in any manner whatsoever.
(i) The defendant has applied for and has obtained registration of its 'Ayucare' product in classes 3, 5 and class 44 in the European Union without any objection whatsoever from any quarter with regard to such registration.
(j) The get-up and packaging of the defendant's 'Ayucare' product is distinctive and in no way resembles that of the plaintiff's device-mark in respect whereof it has allegedly obtained registration. Consequently, there cannot be any event of the defendant attempting to pass off its 'Ayucare' product as a product of the plaintiff.
10. The learned Trial Judge, by the order impugned herein, has disposed of the application by modifying the interim order earlier granted to this extent that there should be an order of injunction restraining the defendant from using the mark 'Ayucare' similiciter without using the distinguishing feature of 'Himani' in conjunction therewith. His Lordship further held that the rest of the plaintiff's claim, notwithstanding the observations made in the body of the order impugned in this appeal, had to await the trial and thus, the previous ex parte order dated 28th September, 2007 was restricted to the manufacture, marketing and sale of the 'Ayucare' product of the defendant in India.
11. While arriving at such conclusion, His Lordship basically relied upon Section 29(9) of the Trademark Act, 1999 by pointing out that the plaintiff had only registration in the 'label mark' of the words 'Ayu' or 'Ayur' and according to His Lordship, the right that the owner of a device or label mark obtained is somewhat similar to copyright. It is as much the writing or etching in a device or label and the design and colour combination thereof over which registered proprietor gains rights in the manner of depiction thereof. According to His Lordship, the words 'the registration thereof shall not confer any exclusive right' appearing towards the end of Section 17(2) of the Act have to be understood in the context and the import of such words is that the registration of the composite mark will not confer any exclusive right as to the part of the composite mark.
12. As indicated earlier, being dissatisfied, both the plaintiff and the defendant have preferred these two appeals.
13. Therefore, the questions that arise for determination in these appeals are whether the learned Trial Judge was justified in modifying the earlier interim order in terms of prayer (b) of the application or should have totally dismissed the application for temporary injunction.
14. Before deciding the said question, we should bear in mind the scope of investigation at the instance of an appellate Court dealing with an appeal against a discretionary order like temporary injunction, appointment of receiver etc. It is now settled law that in such an appeal, the appellate Court generally does not interfere with the discretion exercised by the Trial Court unless it appears that while exercising such discretion, the learned Trial Judge has wrongly applied the principles for grant of such discretion or unless it is established that such discretion has been unreasonably or capriciously exercised. In dealing with such an appeal, the appellate Court would not be justified in interfering with the discretion under the appeal solely on the ground that if it considered the matter at the trial stage, it might have come to a contrary conclusion. See Uttar Pradesh Co-operative Federation Ltd. v. Sunder Bros., Delhi reported in : AIR 1967 SC 249. In a subsequent case of Manjunath Anandappa Urf Shivappa Hansi v. Tammanasa and Ors. reported in : AIR 2003 SC 1391, the Apex Court reiterated the aforesaid principles which are required to be followed while hearing an appeal against a discretionary order by observing that 'an appellate power interferes not when the order appealed is not right but only when it is clearly wrong. The difference is real, though fine.'
15. Bearing in mind the aforesaid principles, we now propose to consider the decision of the learned Single Judge which is impugned in these appeals.
16. In order to appreciate the disputes involved in these appeals it will be profitable to refer to the provisions contending Sections 17, 28 and 29 of the Trade Mark Act, 1999 which are relevant in this context those are quoted below:
17. Effect of registration of parts of a mark.- (1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.
(2) Notwithstanding anything contained in Sub-section (1), when a trade mark-
(a) contains any part-
(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character,
the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.
28. Rights conferred by registration.- (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under Sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
29. Infringement of registered trademarks.- (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark,
is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under Clause (c) of Sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he-
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising-
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this ection to the use of a mark shall be construed accordingly.
17. The plaintiff has claimed injunction both on the ground of infringement of their registered trademark and the alleged passing off action.
18. So far infringement of the registered trademark is concerned, it appears that the plaintiff is the registered proprietor of the trademark 'Ayu' and 'Ayur' in Class 5 for medicinal and pharmaceutical preparations and is the proprietor of registration of a 'device' or 'label' 'Ayu' and 'Ayur' written in a 'particular design'. It is settled law that the registration of a device or label would entitle the proprietor to protection against the use of such device or label by a competitor in trade if the rival's use is identical or similar to the registered trademark and the use is in connection with identical or similar goods or service covered by such registered trademark and at the same time, if it appears to the Court that the rival's mark is likely to cause confusion or is likely to have an association with the registered mark. In other words, if the two marks are identical and the goods and services covered by either mark are also identical, there is a presumption that there is violation of the registered mark and the Court in such circumstances is entitled to grant a temporary injunction.
19. The identity or the similarity of the marks has to be assessed on the basis of entirety of the marks as registered. The identity of the defendant's mark with the plaintiffs as referred to in Clauses (a) and (b) of Sub-section (2) of Section 29 of the Act is to be understood in the context of Section 17(1) of the Act.
20. We cannot lose sight of the fact that the right which the owner of the device or label marks obtained is somewhat similar to copyright and it is as much the writing in a device or label and the design and colour combination thereof, over which the registered proprietor gains rights as the manner of depiction thereof. In a given case, it may be that a registered mark is made up of several components which are distinct and in spite of separate registration in respect of such distinguishing part not having been obtained by the owner of registered mark, such proprietor is entitled to cite one distinctive part as being inseparable from the whole registered or such distinctive part and thus, can assert a right over the distinctive part. But as pointed out in Section 17(2)(a) of the Act, such assertion has to be in conformity with the law of passing off and may not be made in aid of infringement.
21. Therefore, it is rightly pointed out by the learned Single Judge that the words 'the registration thereof shall not confer any exclusive right' appearing towards the end of Section 17(2) have to be understood in the context and the import of such word is that the registration of the composite mark will not by itself confer any exclusive right as to the part of the composite mark. The registered owner is entitled to protection of its goodwill in such prominent feature as in an action of passing off unless the registered owner seeks to rely of Section 17(2)(b) of the Act in respect of a distinctive matter not common to the trade.
22. It would, therefore, appear that an infringement action is not maintainable on the basis of an unregistered part of the whole of a registered trademark. The plaintiff's claim of infringement based on its 'Ayu' or 'Ayur' mark as a part of its 'device registrations' is, thus, not prima facie acceptable when the defendant has neither adopted that particular style nor has it used any other style deceptively similar to the one registered in favour of the plaintiff. The learned Single Judge, therefore, rightly came to the conclusion that on the alleged violation of the registered design, the plaintiff is not entitled to an order of temporary injunction.
23. As regards the injunction based on the doctrine of passing off, we find that the learned Single Judge came to the conclusion that by using the mark 'Himani Ayucare' there is sufficient bona fide attempt by the defendant to avoid confusion of the plaintiff's use of the word 'Ayu' and as such, the learned Single Judge held that the defendant should be entitled to use 'Himani Ayucare' but should not use only the word 'Ayucare' without using the word 'Himani'.
24. As pointed out by the Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories reported in : AIR 1965 SC 980, the scope of investigation in an action for infringement of registered trademark is different from that of passing off. While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trademark for the vindication of 'the exclusive right to the use of the trademark in relation to those goods'. The use by the defendant of the trademark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trademark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trademark in a passing off action would also be such in an action for infringement of the same trademark. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is in imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trademark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
25. In the case before us, the plaintiff having failed to prove violation of the registered trademark in the form of design, we are required to consider whether the learned Single Judge considered the case of passing off in accordance with the principles mentioned above.
26. However, in applying the above principles, we should bear in mind that the allegation of passing off has been made in respect of cosmetic products manufactured by the defendant which are used by the common people in India. At this stage, we may profitably refer to the following observations of the Apex Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. reported in : AIR 2001 SC 1952 where the said Court narrated the factors which are broadly speaking to be followed while deciding the question of deceptive similarity:
a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
c) The nature of the goods in respect of which they are used as trade marks.
d) The similarity in the nature, character and performance of the goods of the rival traders.
e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
f) The mode of purchasing the goods or placing orders for the goods and
g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case.
27. Although Mr. Kapoor, the learned senior Counsel appearing on behalf of the defendant, tried to convince us that the plaintiff having alleged that the sale of its products is founded on export, we should on that ground alone refuse the prayer of injunction based on passing off as the defendant carries on the business in this country, we are not impressed by such contention. Even if somebody's business is restricted to export sale alone but is a prior user and at the same time, earned its fame in that trade name in a foreign country, it has right to pray for injunction for restraining the defendant from passing off its goods as that of the plaintiff notwithstanding the fact that the plaintiff has no sale of such product for the time being in this country. But in such a case, the plaintiff must show that such goods sold in foreign countries has earned such a fame that although the people of India have not used such product, they would be eager to purchase the same under the impression that those are the famous goods of the plaintiff by merely hearing the name of such product. Moreover, in this case, the plaintiff has in the affidavit-in-reply denied the allegation of the defendant that the business of the plaintiff is restricted only to abroad.
28. In the case before us, the plaintiff mainly relied upon the case of infringement of trademarks and in the process also pleaded the allegation of passing off asserting its right over the words 'Ayu' or 'Ayur' on the basis of prior use. Prior use by the plaintiff is not in dispute. The defendant has been using the words 'Ayu' or 'Ayur' in English in the trade name of their products along with other additional words and thus, there is a common word 'Ayu' or 'Ayur' which is also used from an earlier point of time by the plaintiff in describing its goods. The meaning of the word 'Ayu' is commonly known in different Indian languages as 'longevity' and that of 'Ayur' is an indication that it is somewhat related to 'Ayurveda', a known concept of medicine.
29. Since, at present, we are dealing with the applicability of the doctrine of passing off alone as the attack of the plaintiff, we should bear in mind that the similarities of the two rather than the dissimilarities have to be taken note of by the Court and the principle of phonetic 'similarity' cannot be ignored and the further test is as to whether a particular mark has obtained acceptability in the market as that of the plaintiff so as to confuse a buyer as to the nature of product he was purchasing.
30. At the same time, we are of the view that the word 'Ayu' or 'Ayur' cannot be said to be the particular invented words of the plaintiff for denoting its goods bearing 'no meaning'. The plaintiff cannot claim exclusive right over the word 'Ayu' meaning 'longevity' and similarly, over the word 'Ayur' denoting its connection with Ayurveda. We have verified the design, get up and colour combination of the products placed before us which have no similarity with those of the plaintiff and we have no reasonable doubt to infer dishonest intention of the defendant to pass off its goods as that of the plaintiff as would appear from the fact that it has further added the prefix 'Himani' prior to the word 'Ayu' or 'Ayurcare'. The defendant, it is needless to mention, has also not used the peculiar style in which the words 'Ayu' or 'Ayur' is used by the plaintiff. However, in the absence of the added prefix 'Himani' there is definite scope of confusion among the ordinary people and a dishonest retailer can not only pass off the goods of the defendant to a 'first time user' as that of the plaintiff but also to the existing users as 'an improved product of the plaintiff in new appearance'.
31. Regarding the appeal filed by the defendant with the prayer of dismissing the application for injunction in its entirety, we are of the opinion that the plaintiff being indisputably the prior user of the word 'Ayu' or 'Ayur' in the field and having regard to the fact that the goods in question manufactured by the parties is of the same nature and is used by the common people in India many of whom are illiterate, the learned Single Judge was quite justified in granting the prayer of the plaintiff in part when phonetically the word 'Ayu' or 'Ayur' of the plaintiff's prior used trademark which has acquired a distinctiveness has been sought to be adopted by the defendant as part of trade name of its goods. Therefore, the approach of the learned Single Judge in not permitting the defendant to use the word 'Ayucare' or 'Ayurcare' similiciter without adding the prefix 'Himani' was quite judicious and should not interfered with in this appeal against discretionary order.
32. When a person decides to espouse a trade name consisting of a word of common or generic use, some risk of uncertainty in this regard is inescapable. In such cases, the Courts, in one hand, will not readily infer that the use of such a word by a rival in the business as part of the trade name of the latter would likely to cause confusion, but at the same time, have also the duty to protect the right of individuality accrued to the first user and will rather acknowledge even a small variation from the trade name used by the former at the instance of the latter as sufficient to overcome the allegation of passing off.
33. We, therefore, find that the learned Single Judge rightly appreciated the aforesaid principle as well as the provisions contained in Sections 17, 28 and 29 of the Trade Mark Act, 1999 in disposing of the application filed by the plaintiff and the view adopted by the learned Single Judge was quite reasonable and in conformity with the law of the land.
34. We now propose to deal with the decisions cited by the learned advocate for the appellant.
35. In the case of Three-n-Products Pvt. Ltd. v. Yashwant and Ors. reported in 2002 (24) PTC 518 , the defendant was using the word 'Ayur' written in Hindi by using their product, namely, footwear. The Delhi High Court in such circumstances was of the view that the word 'Ayur' starting with the first Hindi Syllable v (not the second syllable vk) should be held to be invented coined word as it did not form part of the Hindi language dictionary nor was common in Hindi language and was a meaningless word and this, the plaintiff quite legitimately claimed exclusive right to sue on the basis of such a word as its trademark to the exclusion of all others even though the goods marketed by such other parties might be totally different. In the case before us, the defendants are not using the artistic word titled 'Ayur' of the plaintiff which was in Hindi in the Delhi case but are using English word 'Ayur' and preceded by a further word 'Himani' which is sufficient to distinguished its products from that of the plaintiff. Therefore, the said decision cannot have any application to the facts of the present case.
36. In the case of Three-n-Product Pvt. Ltd. v. Karnataka Soaps & Detergents Limited and Anr. reported in : 2006 4 CHN 733, the plaintiff alleged both violation of its registered trademark 'Ayur' and passing off against the defendant who was manufacturer of its product named ' Mysore Sandals Ayur Care'. A learned Single Judge of this Court refused to grant relief on infringement of registered trademark but granted injunction based on passing off mainly on the ground that the plaintiff had been using the word 'Ayur' from an earlier point of time. We had no occasion to verify that other relevant factors, viz. getup, colour combination, design of the writing etc. present in that case so as to accept the allegation of passing off while dealing with the present one. Therefore, the said decision cannot help the plaintiff in any way as a precedent in the facts of the present case.
37. In the case of Century Plyboards (India) Ltd. v. Assam Wood and Allied Products reported in 2005 (30) PTC (Cal) 604, the word 'Centurian' used by the defendant was deceptively similar to the word 'Century' used by the plaintiff. In the case before us, by the prefix 'Himani' the right of the plaintiff would be sufficiently protected. Therefore, the said decision does not help the plaintiff.
38. In the case of Ayurherbs Pharmaceuticals Pvt. Ltd. v. Three-N-Products Pvt. Ltd. reported in (2007) Delhi Law Times 609, a learned Single Judge of the Delhi High Court was dealing with a case of passing off where the defendant appellant was got himself registered in the name of Ayurherbs Pharmaceuticals Pvt. Ltd. which according to the plaintiff was deceptively similar to its trademark 'Ayur'. Such contention of the plaintiff was accepted by the learned Single Judge of the Delhi High Court. We great respect to the learned Judge of that case, we are unable to accept the contention of the appellant that merely because the word 'Ayur' has been used by the plaintiff as its commodity, no person should be permitted to use the said word exclusively as part of his trade name notwithstanding the fact that in that case, the defendant justified the use of the said word as it had been selling various Ayurveda products and the additional suffixes were sufficient to surmount the allegation of passing off. It appears that the learned Judge even did not consider the getup, colour combination etc. of the product of the defendant in that case which were also decisive factors to be considered while deciding a case based on passing off. The word 'Ayu' and 'Ayur' in this case being used in English transcription, we are of the prima facie view that those should be treated to mean 'longevity' and part of the 'Ayurveda' system of medicine respectively and thus, the plaintiff cannot legitimately claim that those words should 'in no case' be used by any other person as part of his trade name. The courts in this type of a case, as indicated earlier, should be satisfied with a small variation of the trade name of the defendant from that of the plaintiff as sufficient justification of avoiding confusion.
39. On consideration of the entire matters on record, we, therefore, find no reason to upset the order impugned and consequently, both the appeals are dismissed.
40. In the facts and circumstances, there will be, however, no order as to costs.
41. We make it clear that we have decided these appeals on the basis of the existing pleadings of the parties as that stand today and we have not taken note of any subsequent event in this appeal in the absence of any amendment of the pleadings.
Bhaskar Bhattacharya, J.
42. I agree.