Judgment:
JUDGMENT : ( Per Girish S. Godbole, J.)
1. By the impugned Judgment and Order dated 20th June, 2011, the learned single Judge (S.J. Kathawala, J.) has allowed the Notice of Motion No. 1183 of 2009 filed by the respondent-plaintiff in terms of prayer clauses (a) and (b). The said prayers read thus : (a) that pending the hearing and final disposal of the Suit, that the Defendants by themselves, their directors, partners, their servants, agents, stockists, or any other person claiming through or under them and the like be restrained by a temporary order and injunction of this Hon'ble Court from using the impugned mark "ULTRATUFF CEMENT" annexed as Exhibit "E", in any manner, directly or indirectly, or any other deceptively similar mark in respect of cement products or any other goods so as to infringe the Plaintiff's registered trademark ULTRATECH CEMENT The Engineer's Choice (Registration Nos. 1326528)
(b) that pending the hearing and final disposal of the Suit, that the Defendants by themselves, their directors, partners, their servants, agents, stockists, or any other person claiming through or under them like be restrained by an order and injunction of this Hon'ble Court from using the impugned mark ULTRATUFF CEMENT annexed as Exhibit "E", or any other deceptively similar mark/artistic work in respect of cement or any other goods so as to pass-off or enable others to pass-off the Defendant's goods as and for the goods or business of the Plaintiff.
2. The plaintiff/respondent has obtained registration of its trade mark with word mark "ULTRATECH CEMENT". It is a device mark used since 31.10.2004 and the same has been registered w.e.f. 17.12.2004 and is valid upto 17.12.2014. The word mark being used by the defendant is "ULTRATUFF". The appellant-defendant also claims to be a Manufacturer of Cement.
3. Learned Senior Advocate Mr. Chagla relied upon Section 17 of the Trade Mark Act, 1999 and submitted that Section 17(2) carves out an exception. Relying upon Judgment of the Supreme Court in Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories AIR 1965 Supreme Court 9801, Mr. Chagla submitted that there is difference between an action for passing off and action for infringement of trade mark. While an action for passing off is a common law remedy 1 AIR 1965 Supreme Court 980 being in substance an action for deceit, the action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of "the exclusive right to the use of the trade mark in relation to those goods".
4. Reliance was also placed on the Judgment of the learned single Judge of this Court (S.A.Bobde,J) in Notice of Motion No. 500/2003 in Suit No. 550 of 2003 in the case of Ayushakti Ayurved Pvt.Ltd., & Ors. vs. Hindustan Lever Ltd.. Relying on this Judgment with the list of the computer generated search report it was submitted that the term "Ultra" is a generic term and several other products have been registered with the word "Ultra" as a part of the trade mark. On this basis it was submitted that the learned Judge of the Trial Court has committed an error in granting injunction. Mr. Chagla also relied upon the Judgment of the learned single Judge of the Calcutta High Court (Sanjib Banerjee, J) dated 26.08.2008 in the case of Three-N-Products Pvt. Ltd., vs. Emami Ltd. MANU/WB/0245/2008=MIPR 2008(3) 319=2008(4) CHM 6082. Reliance was placed on paragraphs 32 to 37 of the said Judgment by Mr. Chagla.
5. Mr. Tulzapurkar, learned Senior Advocate appearing for the 2 MANU/WB/0245/2008=MIPR 2008(3) 319=2008(4) CHM 608 Respondent supported the Judgment of the learned Single Judge. He invited our attention to the fact that the receipts which are produced by the appellants/defendants are not genuine documents. He relied upon the Judgments in the case of James Chadwick & Bros. Ltd. vs. The National Sewing Thread Co. Ltd.(AIR 1951 Bom. 147),3 M/s. Hiralal Prabhudas vs. M/s. Ganesh Trading Co. (AIR 1984 Bom. 218)4, National Sewing Thread Co. Ltd. Chidambaram vs. James Chadwick and Bros. (AIR 1953 SC 357)5, Amritdhara Pharmacy vs. Satya Deo Gupta (AIR 1963 SC 449)6, Corn Products Refining Co. vs. Shangrila Food Products Ltd. (AIR 1960 SC 142)7, Pidilite Industries Limited vs. S.M. Associates 2004(28) PTC 1938, M/s. D.R. Cosmetics Pvt.Ltd. vs. J.R. Industries (AIR 2008 Bom. 122)9, Automatic Electric Ltd. vs. R.K.Dhawan (1999 PTC 81)10 and Indian Hotels Co. Ltd. vs. Jiva Institute of Vedic Science and Culture (MIPR 2008 (3)-0082)11.
6. The undisputed facts are as under :- (a) The plaintiff is a Company manufacturing and marketing cement and 3 AIR 1951 Bom. 147
4 AIR 1984 Bom. 218
5 AIR 1953 SC 357
6 AIR 1963 SC 449
7 AIR 1960 SC 142
8 2004(28) PTC 193
9 AIR 2008 Bom. 122
10 1999 PTC 81
11 MIPR 2008 (3)-0082
other allied products. The defendants are also involved in the same business.
(b) The plaintiff is the registered proprietor of trade mark "ULTRATECH CEMENT The Engineer's Choice" registered under number 1326528 in respect of "cement of all types, building materials (non- metallic), non-metallic rigid pipes for building, asphalt, pitch and bitumen, non-metallic transportable building, monuments, not of metal" specified in Class-19 of the Fourth Schedule of the Trade Marks Rules, 2002 (`the Rules') framed under the Trade Marks Act, 1999 (`The Act') and the same is valid and subsisting.
7. The plaintiff's contentions are as under :-
(a) According to the plaintiff, their trade mark is a distinctive trade mark and their product has achieved great reputation and goodwill in the market by virtue of its quality and superiority, as such the trade mark is associated solely and exclusively with the plaintiff amongst traders and members of public.
(b) According to the plaintiff, it has spent substantial amount over the years for advertising and marketing and the defendants are deliberately using the identical mark "ULTRATUFF CEMENT" with identical colour scheme which is likely to result in deceiving the common user. 8 The defendants' contentions are as under :- (i) According to the defendants their mark has a distinct design, get up and colour scheme and is depicted in a distinctive manner and has absolutely no similarity with the registered trade mark of the plaintiff. (ii) According to the defendants, the plaintiff has been granted registration only for the trade mark type "Device" but is not granted registration as a "Word Mark". According to the defendants, the words "ULTRA" and "ULTRATECH" are common to the trade and are otherwise of a non-distinctive character and the prefix "ULTRA" is a common descriptive word and the remaining part of the word "TECH" is also a descriptive word and, hence, the combination of such two descriptive words does not give any proprietary rights to the plaintiff. According to the defendants, many other trade marks having the word "ULTRA" or "TECH" have been registered.
CONSIDERATION OF SUBMISSIONS :
9. Section 17 of the Trade Marks Act, 1999 reads thus :
"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."
10. Thus, if a trade mark consists of several matters, its registration shall confer exclusive rights on the proprietor to use the trade mark as a whole. When a trade mark contains any part which is not the subject of a separate application and which is not separately registered by the proprietor or contained in matters which is common to the trade or is otherwise of non- distinctive character, registration does not confer any exclusive right in the particular part of the trade mark which is registered. In the plaint all the details regarding registration of the plaintiff's trade mark which is duly registered on 17 December 2004 and deemed to be used since 31 October 2004 have been given and the details of sales volume, sales turn over and advertisement expenditure have also been given. As against this, affidavit filed on behalf of the defendants clearly shows that the defendants do not have substantial sale nor are they able to show that substantial amounts have been invested towards advertising or marketing expenditure. In fact in paragraphs 22 to 24 of the Judgment of the learned Single Judge a finding has been recorded that the invoices relied upon by the defendants are fabricated and the word "ULTRATUFF" is superimposed on the said invoices. Mr. Chagla, learned senior counsel was unable to demonstrate before us as to how this finding of fact recorded by the learned Single Judge on a prima facie consideration of the documents produced by the defendants is improper or illegal. On an independent prima facie consideration of the said invoices produced by the defendants alongwith their affidavit, we concur with the said findings recorded by the learned Single Judge.
11. It is now necessary to deal with the submissions of Mr. Chagla based on Section 17 of the Trade Marks Act, 1999. According to Mr. Chagla, Mark "ULTRATECH CEMENT" was not a word mark but was registered as a device mark and there was no registration of the trade mark "ULTRATECH CEMENT The Engineer's Choice". Mr. Chagla submitted that since the words "The Engineer's Choice" have not been separately registered by the proprietor as a trade mark and since the word "ULTRA" and "TECH" are of a non-distinctive character, the registration has not conferred any right whatsoever on the plaintiff in view of the provisions of Section 17 of the Act. According to Mr. Chagla, since the registration granted to the plaintiff is a limited registration, the provisions of Section 17 are attracted and, hence, the injunction as claimed could not have been granted as, on account of Section 17(2) of the Trade Mark Act, 1999, the registration does not confer any exclusive right in respect of only part of the trade mark namely the word "ULTRA".
12. On the other hand, it is submitted by Mr. Tulzapurkar that 3 portions of provisions of Section 17 (2)(a)(i), (2)(a)(ii) and 2(b) are disjunctive and are not cumulative. It is true that the word "ULTRATECH" is not separately registered nor a special application had been submitted for the word "ULTRATECH". However, the word "ULTRATECH" taken together is a distinctive word. The trade mark of the plaintiff which is registered is "ULTRATECH CEMENT The Engineer's Choice" which is clear from the certificate issued by the Trade Marks Registrar.
13. In this regard in respect of interpretation of the provisions of Section 17 we can usefully refer to paragraphs 32 to 37 of the Judgment of the learned Single Judge of the Calcutta High Court in the case of Three-N- Products Pvt. Ltd.2 (supra) which read thus :
"32. The registration of a device or label would entitle the proprietor to protection against the use of such device or label by a rival 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 services covered by such registered trademark and it appears to court that the rival's mark is likely to cause confusion or is likely to have an association with the registered mark. If the two marks are identical and the goods and services covered by either mark are also identical, there is a presumption that arises in favour of the proprietor of the registered mark and, for interlocutory purposes, it may be enough to earn the plaintiff its injunction. If the two marks are identical and the goods and services are similar or if the two marks are similar and the goods and services are identical, the court has to weigh the likelihood of confusion or assess whether the defendant's mark is likely to have an association with the plaintiff's registered mark.
33. The identity or similarity of the marks has to be assessed on the basis of the entirety of the mark as registered. The identity or similarity of the defendant's mark with the plaintiff's as referred to in Clauses (a) and (b) of Sub-section (2) of Section 29 of the 1999 Act has to be read in the context of Section 17(1) of the Act. Even if Section 29 of the 1999 Act is seen to be tempered by Section 17 thereof, if a device mark is pitted against another device mark or a word mark is pitted against another word mark, the tests would be simpler than in the present case. It is not as inconceivable, however, as comparing apples and oranges in putting up a device mark to stop a word mark or vice versa but there are inherent complexities.
34. The right that the owner of a device or label mark obtains is, loosely speaking, 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 the registered proprietor gains rights as the manner of depiction thereof. It is possible that a registered mark is made up of several components which are distinctive and notwithstanding separate registrations in respect of such distinctive parts not having been obtained by the owner of the registered mark, such proprietor is entitled to cite one distinctive part as being inseparable from the registered whole or such distinctive part being the most outstanding attribute of the mark and thus assert a right over the distinctive part. But in view of Section 17(2)(a) of the 1999 Act, such assertion has to be as in passing off and may not be made in aid of a case of infringement. Section 17(2) and the world beyond the statute that is recognised in Section 27 of the 1999 Act has a combined effect of permitting the registered owner to claim exclusivity of a part of the whole of the registered mark, but only on a cause of action of passing off.
35. The words "the registration thereof shall not confer any exclusive right" towards the end of Section 17(2) have to be understood in the context. The import of such words is that the registration of the composite mark will not ipso facto confer any exclusive right as to the parts of the composite mark. But if the owner can establish exclusivity aliunde, the owner can assert the exclusivity. The registered owner is entitled to protection of its goodwill in such prominent feature as in an action for passing off unless the registered owner seeks to rely on Section 17(2)(b) of the Act in respect of a distinctive matter not common to the trade.
36. But it would appear that an infringement action may not be run on the basis of an unregistered part of the registered whole of a trademark. Alternatively, and even if it is assumed for argument's sake that Section 17(2)(a) of the 1999 Act does not altogether preclude a claim of exclusivity over a part of a registered mark, such part has to be registrable under the Act to qualify for protection. The word "Ayur", prima facie, does not appear to be capable of distinguishing the goods or services of a person from those of another as it seems to consist exclusively of an indication which may serve in the trade to designate the nature of the goods. The plaintiff's claim of infringement based on its "Ayur" mark as part of its device registrations is found to be unacceptable at the interlocutory stage.
37. The plaintiff has not emphasised so much on Clause (b) of Section 17(2) of the 1999 Act as on Clause (a) thereof. If a registered mark is capable of being broken in parts, the registered owner may not sue for infringement upon a part being copied by another. Section 17(2)(a) of the Act does not leave any gap. But Clause (b) disclaims only such matters as are common to the trade or are otherwise not distinctive and leaves room for a registered owner to cite some unique, distinctive matter being an element of the registered mark to claim exclusivity and pursue an action for infringement. It is more than likely that Clause (a) is more apposite for word marks and Clause (b) the more appropriate for device or label marks. It is an entirely different matter, however, that the word "Ayur" does not appear to be strong enough to slip through the window that Clause (b) provides."
14. In the present case, the mark being used by the defendants for their product is "ULTRA TUFF CEMENT". The defendants have admittedly not obtained registration under the Trade Marks Act, 1999. We are dealing with the action of passing off and in that context the provisions of Section 17 will have to be considered. The provisions have to be considered in the context of the degree of similarity. On a visual comparison of the rival marks, similarity is absolutely striking and, hence, even though the words "ULTRA" or "ULTRA TECH" are not subject matter of a separate application, in our considered opinion, the present case is covered by Sub- Section (1) of Section 17 of the Trade Marks Act, 1999. The trade mark of the plaintiff consists of several matters and, when, on a visual comparison of the infringing mark used by the defendants with the registered trade mark of the plaintiff, the similarity is so striking that the same is almost certainly likely to create a confusion in the minds of the user of the product namely cement.
15. We are therefore of the opinion that since the clause in which the plaintiff's mark is registered under Schedule IV of the Trade Marks Rules, 2002 (clause 19) namely, non-metallic building materials etc is the same clause in which the product manufactured by the defendants namely, cement, falls and in fact the product of the plaintiff and the product manufactured by the defendants are identical, the fact that the words "ULTRA" and "CEMENT" are same; the case in hand is covered by Section 17(1) of the said Act.
16. In our opinion, the registered mark of the plaintiff is not capable of being broken in parts as argued by Mr. Chagla and atleast at the interlocutory stage it is not possible to accept his submission that the case in hand is governed by Sub-Section (2) of Section 17. In our opinion, at the interlocutory stage, the plaintiff has been successful in prima facie showing that the registered mark is made up of several components which are distinctive and notwithstanding the fact that separate registration in respect of descriptive parts have not been obtained, the plaintiff has been able to show that one descriptive part is inseparable from the registered whole mark and, hence, the case of the plaintiff would fall under Sub-Section (1) of Section 17.
17. This takes us to the third submission of Mr. Chagla that without prejudice to his submissions regarding Section 17, in fact there is no similarity between the plaintiff's registered trade mark and the mark used by the defendants. This is not a case of identical marks and we will have to therefore consider the aspect of deceptive similarity. The action for passing off is a common law remedy being in substance action for deceit where a person seeks to pass off his goods as those of other, where, such other person has been using the mark for several years and such mark has acquired a reasonable degree of reputation and good will in the market on account of its prolonged user and advertisement so that particular degree of reputation has been created in the minds of a common user.
18. The similarity between the plaintiff's mark and that being used by the defendants is quite close both visually and phonetically. Both the marks start with the word "ULTRA" and end with the word "CEMENT". It is no doubt true that the words "The Engineer's Choice" as used by the plaintiff are absent in the mark used by the defendants. We are of the prima facie opinion that the essential features of the trade mark of the plaintiff have been adopted by the defendants. The class of users of the product is also material factor. Cement is normally sold across the counter in small packs of 50 kgs. each and is very extensively used in building operations of various nature. Class of users would be wide spread, right from highly educated and well informed buyers to completely uneducated illiterate persons. Though the similarity in the trade mark may not cause confusion in the mind of a very well educated and informed buyer, the similarity is certainly likely to cause confusion in the mind of a common Indian man. We can also not overlook the fact that the persons using the product namely, cement are masons; most of whom may not be highly educated and the similarity is such that it may leave the user in a state of bewilderment. In fact in paragraph-28 of the Judgment in case of Kaviraj Pandit Durga Dutt Sharma1 (supra), the Supreme Court has observed thus : ".....Expressed in another way, if the essential features of the trade mark 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.
19. Mr. Chagla submitted that the words "The Engineer's Choice" were not part of the mark being used by the defendants. The name of the manufacturer was entirely different and distinctive than that of the plaintiff, ULTRA is a generic name and there is no similarity between the words "TECH" and "TUFF" so as to entitle the plaintiff to initiate an action for passing off. We are unable to agree. In our opinion, these differences are insignificant to a person of average intelligence with imperfect recollection. It is highly probable that the average Indian consumer may get confused and there is strong probability of the consumer mistaking one mark for the other as they are visually and phonetically identical. The words "The Engineer's Choice" though being part of the plaintiff's trade mark are not likely to be used while phonetically pronouncing the mark for the product of the plaintiff. The nature of the product is same namely, cement which enhances the likelihood of the confusion. We are prima facie satisfied on the facts of this case that there is strong possibility of confusion and deception. The plaintiff has been using the mark since year 2004 whereas the defendants have utterly failed in establishing the prolonged prior user. Rival marks are strikingly similar and the added words "The Engineer's Choice" do not have result of eliminating deceptive similarity of the two marks. Prima facie the defendants have produced invoices, which cannot be relied upon since certain words have been superimposed on them. In Corn Products Refining Co.7 (supra), it was observed that it is well known that a question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the Court to decide that question and it was observed thus: "17. We think that the view taken by Desai J., is right. It is well known that the question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the court to decide that question. English cases proceeding on the English way of pronouncing an English word by Englishmen, which it may be stated is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity. It cannot be overlooked that the word is an English word which to the mass of the Indian people is a foreign word. It is well recognised that in deciding a question of similarity between two marks the marks have to be considered as a whole. So considered, we are inclined to agree with Desai J. that the marks with which this case is concerned are similar. Apart from the syllable "co" in the appellants mark the two marks are identical. That syllable is not in our opinion such as would enable the buyers in our country to distinguish the one mark from the other.
18. We also agree with Desai J. that the idea of the two marks is the same. The marks convey the ideas of glucose and life giving properties or vitamins. The Aquamatic case (Harry Reynolds V. Laffeaty's Ld.) 1958 RPC 387 is a recent case where the test of the commonness of the idea between two marks was applied in deciding the question of similarity between them. Again, in deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them."
20. We have independently reached the conclusion about the deceptive similarity. Grant or refusal of injunction is an equitable relief and the defendants have not approached the Court with clean hands as they have sought to produce invoices/receipts which are prima facie fabricated invoices/receipts. The learned Judge has considered the factual aspects and the provisions of law in proper perspective. The defendants had ample means to discover the registered trade mark of the respondents and it is not their case that any official search was taken by them. There is no merit in the Appeal and the same is accordingly dismissed with cost.