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2006 DIGILAW 269 (DEL)

UNITED BROTHERS v. NAVIN KUMAR

2006-02-10

A.K.SIKRI

body2006
A. K. SIKRI, J. ( 1 ) PLAINTIFF No. 1, M/s. United Brothers, is a registered partnership firm and is engaged in the business of manufacture and marketing of aluminum hollow ware and other household utensils since the year 1957. It is the registered proprietor of the trademark UNITED under no. 274640 in class 21 as of 31st August 1971. The trademark is also registered under number 369826 in class 21 as of 17th december 1980. According to the plaintiff, by virtue of long and extensive user, large scale advertising, excellent quality control and immense popularity the products, the trademark UNITED has come about to be extensively identified and recognised by the purchasing public and the members of the trade with the goods and business of the plaintiff exclusively. The trademark UNITED has acquired unique reputation in the minds of the purchasing public. The plaintiff established large and extensive sale of the goods of its manufacture and sale under the said trademark and are also spending substantial amount for advertising the trade product. It is also claimed that the trademark united has become a symbol of quality and is indicative of the plaintiffs source of manufacture. ( 2 ) PRESENT suit for permanent injunction, passing off, rendition of accounts of profits and delivery up etc. is filed on the ground that the defendant is marketing its LPG stove under the same name UNITED and this, according to the plaintiff, would cause confusion in the minds of the public which would think that the goods of the defendant marketed under the identical mark UNITED are that of the plaintiff. It is also contended that adoption of the mark UNITED as trademark on the part of the defendants in respect of LPG gas stove is dishonest, mala fide and tainted from its inception as the same is adopted with sole view to trade upon the reputation and goodwill of the plaintiff. The defendants are, therefore, passing of their goods as that of the plaintiffs. It is further stated that the chances of confusion and deception are further enhanced in the facts of this case as the goods of the defendant, namely, LPG stove are cognate goods as both the plaintiff s and defendant s goods are used as kitchen appliances. Further these goods are purchased by all classes of purchasers, including semi-literate and illiterate persons and persons possessing average and/or imperfect recollection. Further these goods are purchased by all classes of purchasers, including semi-literate and illiterate persons and persons possessing average and/or imperfect recollection. ( 3 ) IN this application, ex parte ad interim injunction dated 30th July 2003 was passed restraining the defendants from using the trademark UNITED in relation to their goods and from passing of their goods as those of the plaintiff s till the next date. This injunction order has, however, been extended from time to time and is continuing till date. ( 4 ) THE defence of the defendants is that the two goods are of different descriptions in all respects. By no stretch of imagination pressure cooker of the plaintiff is similar to the lpg stove of the defendant and, therefore, there is no question of any confusion. The following distinctions are sought to be highlighted by the defendants:-" (a) According to the International classification of Goods, the plaintiffs pressure cookers fall in Class 21, whereas the defendant s LPG stoves fall in Class 11. (b) The nature and composition of the competing goods are different. Processes of manufacturing of the competing goods are different. For pressure cookers, a special kind of strong metal is required to be used to withstand high pressure of hot steam. For LPG stoves, no such special metal is required. Only leakage of gas is to be avoided. (c) Uses and functions of the competing goods are different. (d) Trade channels through which these competing goods are brought and sold are different. Manufacturers, traders and retailers and shops of the competing goods are different. Those who manufacture pressure cookers do not manufacture LPG stoves. For example, manufacturers of famous PRESTIGE and hawkins pressure cookers do not manufacture LPG stoves. Shops of the competing goods are different. Pressure cookers are sold in utensil shops. LPG stoves are sold in stove shops. Ten affidavits of shopkeepers are filed herein. (e) Customers of the competing goods are also different. Most of the customers of LPG stoves are L. P. Gas Agencies who supply LP gas cylinders. They are compelled to buy from manufacturers and sell LPG stoves along with LPG cylinders to their customers, particularly at the time of new allotment of LPG gas cylinders. All oil companies who supply L. P. Gas to their agencies have instructed their agencies to sell LPG stoves bearing ISI certification mark, along with LPG cylinders. They are compelled to buy from manufacturers and sell LPG stoves along with LPG cylinders to their customers, particularly at the time of new allotment of LPG gas cylinders. All oil companies who supply L. P. Gas to their agencies have instructed their agencies to sell LPG stoves bearing ISI certification mark, along with LPG cylinders. These instructions have been issued as safety measures to avoid mishaps. LPG stoves are, therefore, mostly purchased from manufacturers or their dealers by such lp Gas Agencies who supply LPG cylinders to their customers. Most of the customers of LPG stoves are, therefore, such agencies. (f) The price of a pressure cooker varies rs. 500/- to Rs. 800/ -. The price of LPG stove varies from Rs. ,1,500/- to rs. 3,500/- depending upon its quality. Customers of LPG stoves are bound to be more discerning and pay more attention while purchasing it. " ( 5 ) IT is also the case of the defendant that the plaintiff cannot have any monopoly over the word united , which is an ordinary English word and having a definite and well understood meaning. It is not a coined or invented word or an acronym and, therefore, the plaintiff cannot have monopoly over this ordinary English word. The defendant has also set up the case of concurrent user by contending that the defendants are carrying on their business in Delhi since 1994 and it is impossible to believe that the plaintiff became aware of the defendant s business activity only in July 2003 as alleged in the plaint. It is contended that the defendant is having ISI mark since 1996 as well as All India Mark since then. Some documents filed at serial nos. 1, 2 and 4 by the defendants were referred in support. Learned counsel for the defendant by highlighting the aforesaid defence taken in the written statement submitted that injunction order should vacated. He also relied upon the judgment of this High Court in United Brothers Vs. United Traders, (1997) PTC (17) 603. ( 6 ) LEARNED counsel for the plaintiff, on the other hand, submitted that the defendant was drawing illusory distinctions between the two products. Coth were kitchen appliances and cognate goods. Many manufacturers were, in fact, manufacturing both pressure cooker as well as LPG stove and, therefore, there could be a cause of confusion. United Traders, (1997) PTC (17) 603. ( 6 ) LEARNED counsel for the plaintiff, on the other hand, submitted that the defendant was drawing illusory distinctions between the two products. Coth were kitchen appliances and cognate goods. Many manufacturers were, in fact, manufacturing both pressure cooker as well as LPG stove and, therefore, there could be a cause of confusion. He also submitted that the defendant could not produce any evidence of its user of trademark united in respect of LPG stove since 1994 as alleged and, therefore, there was no concurrent user. Merely because the two products were classified differently in Schedule iv of the Trademark Rules 2002 would be no ground of defence in view of the judgment of this Court in Rawel Industries (P) Ltd. Vs. Duke Enterprises and Others, 1950-2000 ptc (Suppl) (2) 212 (Delhi) and the judgment of the Bombay High Court in Bajaj Electricals ltd. Metals and Allied Products and another, AIR 1988 Bombay 167. He further submitted that admittedly the plaintiffs trademark was registered trademark, using of the same trademark by the defendant would amount to infringement of the plaintiff s trademark in view of the provisions of Section 29 (4) of the Trademark Act, 1999. He also referred to Section 11 of the said Act which laid down relative grounds for refusal of registration, and one such ground was for refusal of trademark was its identity with an earlier trademark or similarity of goods and services covered by the trademark and existence of likelihood of confusion on the part of public. Thus, his submission was that if the defendant applies for registration of the trademark of its goods and if that would be refused under Section 11, he has no right to use the said trademark. He also submitted that different prices of two products was totally irrelevant consideration as was clearly decided by a Division Bench of this Court in n. R. Dongre and others Vs. Whirlpool corporation and others, AIR 1995 (Delhi) 300. His further submission was that contention of the defendant that the word united was a dictionary word was without any substance as in the present case because of long user and established reputation of the plaintiff s product, word united came to be associated with the plaintiffs product and had acquired secondary meaning. His further submission was that contention of the defendant that the word united was a dictionary word was without any substance as in the present case because of long user and established reputation of the plaintiff s product, word united came to be associated with the plaintiffs product and had acquired secondary meaning. It was, therefore, a protected mark under Section 2 (m) of the Act ( 7 ) AFTER considering the submissions of both the parties I am of the view that the ex parte ad interim injunction granted in favour of the plaintiff warrants to be made absolute till the disposal of the suit. The claim of the plaintiff regarding its excessive user, reputation and registration of trademark UNITED in respect of pressure cooker is not denied by the defendant. The defence of the defendant that two goods are different does not cut the ice. It is to be kept in mind that the goods of the plaintiff as well as the defendant are used as kitchen appliances. The consumer would be common who would be using both the products. It has to be kept in mind that the plaintiff is the registered owner of the trademark UNITED in respect of pressure cooker. Plethora of documents filed by the plaintiff also establish its reputation in view of sales figure as well as substantial amount spend on advertising. The plaintiff has placed sufficient material on record to show that it has acquired distinctiveness and goodwill in the mark UNITED which has become a household mark of the plaintiff. The mark united connotes distinctiveness, reputation, quality and goodwill acquired by the plaintiff over a number of years and is understood by the customers as associated with the plaintiff. Prima facie the plaintiffs claim that the trademark UNITED in respect of its goods has become a symbol of quality and is indicative of plaintiff s source of manufacture appears to be well founded. The goods are not only marked in India but are exported to various countries. With the long user the word UNITED has come to be associated with the plaintiff s products and fits into the definition of the word mark as contained in section 2 (m) of the Act. It has acquired secondary meaning. ( 8 ) THE defendants have alleged in the written statement that the goods in question are different. With the long user the word UNITED has come to be associated with the plaintiff s products and fits into the definition of the word mark as contained in section 2 (m) of the Act. It has acquired secondary meaning. ( 8 ) THE defendants have alleged in the written statement that the goods in question are different. In support of the said submission the defendant has also filed ten affidavits from the market who have deposed that they are selling LPG gas stoves but they do not sell pressure cookers. The plaintiff has also filed various affidavits in the form of documents along with the list of documents dated 22nd October 2003. In the affidavits filed by the plaintiff it has been deposed that the LPG gas stoves and the pressure cookers are sold in the same shop. The plaintiff has also filed the copy of the order passed by the assistant Registrar of Trademarks dated 17th june 1999 in which the mark UNITED is protected by way of refusing the registration of the said mark in respect of room coolers in class 11. At page 167 of the documents filed with the list of documents dated 22nd October 2003, the plaintiff has shown that pressure cooker and LPG gas stove are being sold by the same person, i. e. Prestige who are dealing with both. At page 168 of the said list of documents the plaintiff has filed an advertisement published by Bharat Gas wherein non-stick cook wares and pressure cookers have been shown together. It is also stated that admittedly both set of goods, i. e. pressure cooker and LPG gas stove are available in one shop. Hence, confusion and deception is apparent. Therefore, the plea of the defendant that its goods are different from that of the plaintiff may not save the day for the defendant. ( 9 ) THE different classification of two goods under the Trademark Rules will also not come to the aid of the defendant in view of the two judgments cited by the plaintiffs counsel. In bajaj Electricals Ltd. Metals and Allied products and Another (supra), the Court observed as under:-"that the mere fact that an article manufactured by the contesting parties are different in nature is no answer to the claim that the defendants are guilty of passing off. In bajaj Electricals Ltd. Metals and Allied products and Another (supra), the Court observed as under:-"that the mere fact that an article manufactured by the contesting parties are different in nature is no answer to the claim that the defendants are guilty of passing off. We entirely agree with the conclusion recorded by the learned trial Judge that there is identity of the goods, the mark and the consumer and the goods manufactured by both the plaintiffs and defendants are sold under the same shop. Mr. Cooper complained that the electric goods manufactured by the plaintiffs and the stainless steel utensils manufactured by the defendants are not sold in one shop. The submission is not accurate because it is a common experience that kitchen ware and kitchen appliances like mixers, grinders, pressure cookers, and stainless steel utensils are sold in the same shop. At this interim stage, we are not prepared to accept the submission of Mr. Cooper on this account and we see no reason to take different view from the learned single Judge on this aspect. In our judgment, prima facie, it is clear that the defendants have intentionally and dishonestly tried to pass off their goods by use of name Bajaj. " ( 10 ) LIKEWISE, in Rawel Industries (P) Ltd. Vs. Duke Enterprises and Others (supra) this Court made the following pertinent observations :-"the plaintiffs in para 12 of the plaint have averred that they are a progressive and expanding concern and have intentions to extend their business by manufacturing insulated automobiles cables particularly. In View of this averment and the fact that the plaintiffs have been selling their goods under the name and trading style duke if the defendants are allowed to carry on their business of the insulated cables under the trade mark duke would induce a belief in the minds of the prospective buyers that the defendant s company or that the business of the defendant s company was connected with the business of the plaintiffs company. Without giving added matter on their goods and cartons to substantially distinguish their goods from those of the plaintiffs the representation is implied in the use and imitation of the trade mark duke and trading style duke enterprise by the defendant. Without giving added matter on their goods and cartons to substantially distinguish their goods from those of the plaintiffs the representation is implied in the use and imitation of the trade mark duke and trading style duke enterprise by the defendant. There appears to be a reasonably calculated effort on the part of the defendants to deceive the public; more so when their letter heads the figure of Goddess Laxmi is also printed knowing well that the plaintiffs had been advertising their goods by various media amongst other plastic goods including the figures of goddess Laxmi in gold and silver colours. The attempt of the defendants to sell insulated cables manufactured by them under the trade mark duke would constitute an actionable wrong quite irrespective of the motive of the fraud on their part. " ( 11 ) SIMILARLY, merely because the price of two goods is different is not at all relevant factor. Obviously, when the two products are different and not the same, price may be different. Difference in price would be relevant if the two products are same. Here the relevant consideration is confusion in the mind of the public that LPG gas stove with trademark UNITED may be the product produced by the plaintiff who has established mark for pressure cooker and has acquired name in the market. ( 12 ) IN so far as claim of concurrent user is concerned, the defendant has not been able to produce any satisfactory defence on record. ( 13 ) THE application is accordingly allowed and ex parte ad interim injunction is made absolute till the disposal of the suit. .