M/S.GOLDGEM OVERSEAS VS. FLAWLESS DIAMOND (INDIA) LTD. decided on 07.01.2009

M/S.GOLDGEM OVERSEAS VS. FLAWLESS DIAMOND (INDIA) LTD.

NLS 07/01/2009 TM/Bom.

NOTICE OF MOTION NO.4657 OF 2007 in SUIT NO.3372 OF 2007

SMT.ROSHAN DALVI, J.

ORDER

  1. The Plaintiff has sued the Defendant upon for infringement of his registered trademark and for the act of passing off the said mark. Both the parties are in the business inter alia of diamond jewellery. Both claim to use the trademark “AUM” in respect of their products, which are jewellery items. The goods of both the parties which essentially fall under the aforesaid mark are sold in retail outlets. It is the case of the Plaintiff that there is identity of business, goods as well as customers called “The Triple Identity”.
  1. How and when both the parties came to use and apply the said mark are matters of admitted facts and documented records which need to be noted at the outset:

1.The Defendant has been in business of jewellery since last 17 years. He has exhibited his products in various outlets and show-rooms.

2. The Plaintiff adopted the trademark “AUM” for his products since May, 2000.

3. The Plaintiff applied for and obtained registration of his trademark “AUM” in April 2003.

4. The parties had a certain meeting in April, 2006.

5. The Defendant applied for registration of his 2nd trademark on June 2006. His trademark has yet not been registered. He has commenced use of the trademark since the year 2006 itself. This is reflected in his annual report of the year 2006-2007, which is absent in the annual report of the preceding year 2005-2006.

  1. Upon these admitted facts Mr. Dhond on behalf of the Plaintiff contends that since the Plaintiff’s use of his trademark pre-dates that of the Defendant by six years and his registration pre-dates the use by the Defendant by three years, the Defendant’s use is impermissible in law. The Plaintiff also contends that since the Defendant had knowledge of the Plaintiff’s registered trademark prior to his application for registration of the same trademark, his registration cannot be granted and the use by the Defendant of the mark even prior to the registration being granted is dishonest and malafide, it having been made despite knowledge of the Plaintiff’s mark.

4.An intriguing aspect has been shown by the Plaintiff to impute knowledge of the mark upon the Defendant. In paragraph 14 of the plaint, the Plaintiff has contended that the Defendant wanted to purchase the Plaintiff’s mark, and therefore, parties had a meeting to settle the terms of purchase. The Defendant has denied the purpose of meeting, but not the factum of the meeting. The Defendant states that it was for business talks. The parties are competitors dealing in the same product. They are unlikely to have business talks, the specifications of which are not shown. The Defendant’s Director’s father is a Jain by Religion. He had taken Diksha as per the tenets of Jainism. He has been conferred the title of Acharya Maharaj. His name is Uttamchandji. He is, therefore, known as Acharya Uttamchandji Maharaj, a fact set out by the Plaintiff in the

plaint itself. His initials are A.U.M. Regular business talks alone would not reveal this intrinsic personal fact to the Plaintiff. Hence, the meeting averred by the Plaintiff must be

taken to be for the purpose which is also averred by him.

  1. The meeting not withstanding, and not having fructified in any agreement or settlement, the Defendant commenced his use of the mark “AUM” in that year itself as evidenced by

the aforesaid two annual reports – the first of which does not show the mark and the second of which shows it on each page of the report as well as in colour on the last cover page. Since the Defendant’s application for registration of his trademark is in June 2006, it is seen that it has been made after the admitted talks, business or otherwise, in April 2006 and the use soon thereafter without waiting for the registration being granted.

  1. The trademark consists of the aforesaid three alphabets AUM as its most prominent part. The Defendant’s mark further shows the expression AUM in Sanscrit script denoted by the number “3” in English. Below the said mark the Defendant further uses the expression “Diamond Jewellery ”. The Plaintiff’s mark is in simple alphabet font “AUM” below which in almost illegible print is the expression “Wear your mystique ”. The expression below the mark “AUM” is not a part of the Plaintiff’s registered trademark. The Plaintiff has not contended that that expression is used by the Defendant or that it cannot be used. Only the word “AUM” is the mark craved by both the parties. The Defendant’s mark is not only visually, alphabetically, Structurally, but also phonetically identical. It is only styled differently. The English word is in cursive font. The Sanscrit version represented by the English number “3” is a mere arithmetical figure. It is the phonetical expression of the Sanscrit term alongside the English script.
  1. Such being the facts, it would have to be seen whether the same mark “AUM”, if used by the Plaintiff and by the Defendant as they have done, would constitute infringement of the Plaintiff’s registered trademark.
  1. In the case of Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories A.I.R . 1965 S.C. 980 (V 52 C 157) at 990 . The parameters of infringement action are laid down which have been followed since making it the most settled preposition of the law relating to the basics of the infringement actions. The relevant portions in paragraphs 28 and 29 of the judgment run thus:

“28 . ….. 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 an 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 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.

29 . Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the Plaintiff would have to establish that the mark used by the Defendant so nearly resembles the Plaintiff’s registered trade mark as is likely to deceive or cause confusion in relation to goods in respect of which it is registered.” Hence, since the Plaintiff’s action in this case is based upon infringement of registered trademark, the parameters to be considered by the Court are simple once the imitation of the mark is seen . In this case the essential features of the  Plaintiff’s mark are the letters “AUM” which are adopted by the Defendant. The further artistics and visuals in the Defendant’s trademark is of no consequence. There is no such distinction between the two marks made out by the added matter as would be so requently different as to distinguish the Plaintiff’s goods from that of the Defendants. In fact the marks are identical, except for a different font visually. Even in another script they are identical phonetically. They more than resemble the Plaintiff’s mark. Hence the action for infringement poses no difficulty.

  1. The Plaintiff’s action is also for passing off. That is a common law remedy under the tort of deceit. For such an action even the use by the Defendant of the mark is not essential. If the getup is the same, the action in tort would lie. However, in this case as in many others since the action is for infringement as well as passing off the imitations by the Defendant must be seen as much as the use of the mark. In the case of Kaviraj Pandit (supra) the name Navratna Pharmaceutical Laboratories and Navratna Pharmacy came up for consideration as to whether they were an imitation meant to deceive. Though the words were descriptive, it was held that the phonetic expression could be tending to deceive, if it was a sufficient imitation. It was explained how an imitation of a mark can be considered in paragraph 29 thus:

“This has necessarily to be ascertained by a comparison of the two marks – the degree of  resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the Plaintiff’s mark. The purpose of the comparison is for determining whether the essential features of the Plaintiff’s trade mark are to be found in that use by the Defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the Defendant as a whole is deceptively similar to that of the registered mark of the Plaintiff.”

Since the resemblance may be either visual or phonetic the mark “AUM” in English as well as the phonetics in the Sanscrit script would both be covered as being deceptively similar.

  1. Similarly in the case of Amritdhara Pharmacy Vs. Satya Deo Gupta 1963 S.C. 449 (V 50 C 63) at page 453 the explanation of Parkar, J in Re Pianotist Co’s application (1906) 23 RPC 774 was set out thus:

“You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.”

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?”

  1. It was held that the two terms Amritdhara and Lakshmandhara had an overall similarity. It would deceive or cause confusion in a man of average intelligence with imperfect recollection who would not consider the etymology of the words, but go merely by the similarity of the two names. Hence it was observed that even if a critical comparison would disclose some points of differences in the two marks, it would be the overall similarity of the concept which must be considered as the one tending to deceive.

The two words “AUM” being in nearly identical fonts as well as phonetically identical lend themselves to confusion if not deception.

  1. In the case of Parle Products Pvt. Ltd. vs. J.P.& Co., Mysore (1972) 1 SCC 618 which was an infringement action, upon considering the wrappers of two biscuit packets, the test of the propensity to deceive was laid down by the Supreme Court. In that case two pictures depicting two scenes of village life were meticulously examined by the High Court setting out points of dissimilarity which could be undertaken not by a passing eye but by microscopic examination of the wrappers of the product. The various intricate and even insignificant aspects of dissimilarities were meticulously set out upon a scientific comparison to see the dissimilarities which outnumbered the similarities. The Supreme Court observed that the general getup of the two wrappers were more or less similar. After setting out the dictum contained in Kerly’s Law of Trade Marks and Trade Names (9th edition, Paragraph 838) . The Supreme Court held in paragraph 9 of the judgment thus:

“ It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him”.

“Anyone in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs’ goods, he might easily mistake the defendants’ wrapper for the plaintiffs’ if shown to him some time after he had seen the plaintiffs’. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes”.

In this case also the two marks containing the same alphabets need not be placed side by side. They must be considered with the view point of “the main idea left on the mind” by both of them. As observed by Kerly, a person seeing one mark and not having seen the two side by side could well be deceived that the diamond jewellery is of the same seller. Persons seeing the marks would not be able to remember the exact detail of the Defendant’s imitation or the Plaintiff’s simplicity by the “General impressions or by some significant detail then by photographic recollection of the whole” .

  1. In the case of Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 . The similarities between the names “Falcigo” and “Falcitab” were considered – the dissimilarities, if any, to be ignored. It was observed in that judgment that the phonetic expression is more important specially for drugs of foreign companies bearing foreign names which are read and understood by the Indian public of average knowledge by such expressions and pronunciations. Considering a case of Amritdhara Pharmaceutical Laboratories (supra) as also the case of Corn Products Refining Company Vs. Shangrila Food Products Ltd. A..R. 1960, S.C. 142 which referred to two products “Gluvita” and “Glucovita”, it was held that the phonetic expressions were likely to deceive. Hence it was held that only the overall similarity of the composite word is to be regarded. Considering the case of Kaviraj Pandit (supra) for the test of comparison of two marks it was held that the mark, if copied phonetically, visually or in its basic idea, can be successfully challenged.
  1. Earlier cases which considered words such as Aristoc / Rysta in Aristoc Ltd. Vs. Rysta Ltd., 962 R P C 65 being phonetically similar, the words “Picnic /Piknik” in S.M.Dyecem Ltd. Vs. Cadbury (India) Ltd. (2000) 5 SCC 573 ,the mark “Cherish /Cheri” in Indchemie Health Specialities Pvt. Ltd Vs. Naxpar Labs Pvt. Ltd. 2002 (24) PTC 341 (Bom) (DB) were similarly held to have the propensity to confuse and deceive. In those judgments the factors required to be considered in an action for passing off an unregistered trademark were exclusively set out.
  1. Keeping the principles of comparison laid down in the aforesaid judgments in mind the two marks should not be seen together. They should be merely visualised; What would a prospective purchaser think when he sees the Defendant’s posters after seeing the Plaintiff’s trademark ? The purchaser is unlikely to discern the difference merely because of the addition of the number “3” . He would confuse himself to think that the diamonds advertised by the Defendant is the same as the diamonds advertised by the Plaintiff. Since this is an infringement action, we are not concerned with whose sales would increase and why. We are more concerned with the confusion that would be caused in the minds of the purchasers to mistake the products of one for that of another. It is that confusion which must be avoided by the Court. It may be mentioned that though this is an action in passing off also,the main basis of the Plaintiff’s claim is upon infringement of a registered trademark. The two marks in this case are unmistakably similar.
  1. It is contended on behalf of the Defendant that it contains a generic expression. It is equivalent to term “God” which is incapable of registration as a Trademark. It may be mentioned that that stage has long passed. Both the parties have sought to register the mark and it does not allow for the Defendant to contend that he should not have registered what he proceeded to do. Mr. Madon drew my attention to the case of Rupee Gains Tele-Times Pvt. Ltd. Vs. Rupeea Times(01.09.1995 DELHC),1995 (35) D R J 30 with regard to generic words which is not applicable in view of the conduct of both the parties in seeking to register their respective Trademarks.
  1. Mr. Madon contended that it is a class of persons who are the customers which would largely matter in considering the deceptive angle. He drew my attention to the case of L’oreal India Pvt. Ltd. Vs. Henkel Marketing India Ltd. 2005(6) C.R. 77 , which dealt with purchasers in cosmetics business. It was observed in paragraph 22 of the judgment that the persons buying elitist products were not expected to purchase them without reading the trademark prominently displayed on the trade-dress and hence the Defendant could not seek to have such Trade address as would lead to a possibility of confusion. However, in that case the dissimilarities of the getup of the products were considered in the colour scheme of the trade dress and the depiction of the Model on the label, an aspect which the Supreme Court in the case of Parle Products (supra) had directed to desist from.
  1. Mr. Madon argued that the class of customers who purchase diamond jewellery would be the upper crust of the Society who would be required to pay large amounts for purchase of a single item. They would be unlikely to be swayed by a mark or a label depicting the name of another seller of the same products. He drew an analogy for such purchase to the purchasers of cars and referred to the judgment of the Supreme Court of Judicature – Court of Appeal of the Royal Courts of Justice in the case of LANCER TRADE MARK APPLICATION, 1987 RCC 303 . An application to register “Lancer” as a Trademark was opposed by the owner of the earlier registration “Lancia” – The Chancery Court initially observed at page 318 that the Motoring public was very well informed and well able to distinguish the two marks. The reasoning given for such exercise was that the vehicles were “expensive items and the potential purchaser will study the market carefully before parting with the thousands of pounds which a new car will cost”. It was observed that “the discerning buyer of the cars would immediately pick out the differences between the two marks. Even the Appeal Court in Appeal Similarly observed at page 325 of the judgment “Its purchase will usually be considered with some care, and will be assisted in a competitive market by an abundance of brochure literature” .
  1. Alas the purchase of diamond jewellery is a completely different ballgame. There is no literature for understanding the quality and carats of the diamonds as is in the case of the car industry. Diamonds are dicey. They are essentially only ornamental. Their intrinsic value is not known to a majority of purchasers. The difference between real diamonds and what are publicly called American diamonds is never apparent. It cannot be ascertained and understood except by Gemologists. Semi-precious stones such as zircons are much the same in appearance. In fact even cut glass may reflect no difference to several uninformed though rich buyers. The purchaser may often require to buy a tiny item as an important and lasting gift. Even purchase for oneself would be for a life-time. The tarnishing of the diamonds may be a malaise which would present itself much later. Unlike cars, a purchaser of diamonds would rather go by a brand name. The comparison merely on account of the class of customers considering the monetary paying power would be a shallow perspective. The analogy applied in the case of Lancer Trade Mark (supra) where buyers can and do discuss the pros and cons of the models from the experience of previous users would not be applicable in the case of diamonds which would be a fine gift or a status symbol left in dark vaults where their shine may deteriorate with age, if it is of any inferior quality.
  1. Mr.Madon’s analogy with the adoption of names in case of five-star hotel business shown in the case of Bharat Hotels Limited vs. Unison Hotels Limited 2004(28) P T C 404 (Delhi) is much in the same light. Several hotels with prefix “GRAND”, came up for consideration. It was observed that when there was prior use of the said word for a hotel chain or for another new hotel with or without the suffix, the Plaintiff would be entitled to protection of his mark . In that case prior use was not seen and the use of the words “The Grand” by the Defendant was held permissible as the Plaintiff had not acquired distinctiveness or secondary meaning in respect of the name of the hotel.
  1. Considering the two marks, the registered trademark of the Plaintiff and the yet unregistered trademark of the Defendant, Mr. Madon argued that at best the letters “AUM” cannot be used by the Defendant. But the other distinct expression in the trademark being the number “3” , which is the Sanskrit script of the word “AUM” and the words diamond jewellery cannot be prohibited. The Plaintiff takes no exceptance to the words diamond jewellery . However, the expression denoted by number “3” forms a part of the entire getup of the Defendant together with its phonetics. Since no part of it is yet registered and since registration would prima facie be seen to be likely to be refused in view of the Plaintiff’s registered mark, the entire of the expression would fall within the mischief of an infringement action. The added matter which Mr. Madon seeks to have excepted from the injunction order is, therefore, required to be considered.
  1. Halsbury’s laws of England IV Edition Volume 48 in paragraph 89 lays down precisely the parameters of such added matter thus :

“89 . Irrelevance of added matter; comparison with passing off. As the registration of a trade mark gives an exclusive right to its use, it is no defenc e for a defendant who has used the registered mark or its essential features to claim to have added additional words or matter in order to negative confusion.

… The comparison is between what the defendant actually does (ignoring matter added to the mark used by him) and any normal use of the plaintiff’s mark comprised within the registration. Thus, in these respects, infringement rights are wider than rights in connection with passing off, where the comparison is between what the defendant does as a whole and what the plaintiff has done as a whole”.

  1. The Defendant has shown extensive sale in India and abroad for years even prior to the use of the mark “AUM” by them as can be seen from the annual reports of prior years produced by the Defendant. Though these represent their consolidated turnover, in India and abroad, the Plaintiff’s action is only with regard to their retail trade in India in their various outlets and showrooms. The Defendant has prided itself on the length of its business – the last 17 years-well before the Plaintiff set his foot into it. The Defendant has accordingly shown its worth in the market even without the use of the mark “AUM”. Consequently upon the Defendant’s case itself the real necessity of the use of the mark is not seen. Indeed as has been pointed out by the Plaintiff in paragraph 14 of the plaint itself, a fact which is not disputed by the Defendant, that it is only case of the sentimental nexus between the expression “AUM” and the name of the father of the Defendant’s Director, that the Defendant is keen on using the trademark since the year 2006.
  1. It may be mentioned that the Plaintiff has strangely sought to sell his mark not only to the Defendant, but to others as is his case in paragraph 17 of the plaint. It may be that the Plaintiff only seeks to make money from his trademark already registered not very long ago. One does not hear of cases of sale of trademark. Genuine Trademarks, are used as one’s own distinguishable mark in business. They are not registered for sale. The Plaintiff’s case however, is different. A lack of complete bonafides is reflected. Paragraph 13 of the plaint shows that the “Plaintiff has been time and again receiving “feelers ” from various parties to purchase his trademark. This is not what a trademark owner in any market normally expects. One wonders how only the Plaintiff could make a sale of his own trademark. Nevertheless, a transaction of the kind between the Plaintiff and the Defendant is prima facie seen to have transpired, given the above unique facts of this case. Since that transaction has not materialised, stricto senso the Defendant’s right to use the Plaintiff’s registered trademark is not established.
  1. Mr. Madon contended that the Plaintiff is a small time businessman; the Defendant is a big time settled diamond merchant. The sales of the parties are highly unequal, the Defendant’s being far more than that of the Plaintiff’s. The export trade of the Defendant is similarly large. The Plaintiff carries on business from his residence, whereas the Defendant has various show-rooms and outlets aside from its registered office. All these aspects could have been considered in an action for passing off simplicitor, if the Plaintiff’s trademark was not registered. Since the Plaintiff’s action is essentially on infringement of the trademark “AUM”, for prevention of the use of the said trademark or any other deceptively similar name, mark, word or style on jewellery products, the Defendant’s admitted use brings his case within the mischief of the Trademarks Act.
  1. Hence, a case for grant of injunction is made out.
  1. The Notice of Motion is made absolute in terms of prayer (b).
  1. The Defendant shall not use the mark “AUM” or any other deceptively similar mark, name, word or style as a part of the Defendant’s jewellery products.

 

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