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2007 DIGILAW 3277 (MAD)

D'zine Garage Pvt. Ltd. v. D'zine Cafe Fze

2007-10-09

PRABHA SRIDEVAN

body2007
JUDGMENT Prabha Sridevan, J. The respondent/plaintiff is carrying on the business of a leading interactive agency, specializing in online communication and claims to be one of the oldest interactive agencies with global presence, with offices at Chennai, Mumbai and London. They have extensive experience in managing online communication for a spectrum of the industry, viz., banking, insurance, healthcare, IT etc. Their product suite includes a core content management system "Brew Master" which enables creation, management and deployment of virtually any type of content across multiple websites or interfaces. The respondent/plaintiff is the pioneer in "Communities build brands" in India with a number of successful experiences in this segment. In the course of business, the applicant/plaintiff adopted the mark D'ZINE and has registered the said mark under No. 1323883 dated 3.12.2004 in Class 35 in respect of "advertising which includes website building and maintenance, etc. The respondent/plaintiff claims that their service, mark D'Zine is a coined word invented by them and they are the first one to adopt D'Zine as a predominant feature of a service mark, corporate name and domain name in the world in respect of web designing and internet, computer business. The mark D'Zine is a unique, distinctive feature, which was adopted by the plaintiff and has attracted customers all over India and in several countries abroad. The respondent/plaintiff's service mark D'Zine not only forms a predominant feature of their corporate name, but it also forms a predominant feature of their domain name, www.dzinegarage.com. They have also acquired tremendous goodwill and reputation by an extensive use of the mark D'Zine garage with the predominant feature D'Zine as a service mark and as part of the corporate name and domain name. The respondent/plaintiff is doing business worth several lakhs of rupees and the business has been increasing steadily all through the years. The respondent/plaintiff has invested huge sums of money for advertising their service mark and as part of the corporate name and domain name. By virtue of such long, extensive, open and continuous use and advertisements, the service mark D'Zine has acquired enormous reputation and goodwill amongst the members of the public all over India and in many countries abroad. According to the respondent/plaintiff, the service mark and domain name has etched in the public a good reputation and goodwill in their business and commands a large loyal clientele from across India and many countries abroad. According to the respondent/plaintiff, the service mark and domain name has etched in the public a good reputation and goodwill in their business and commands a large loyal clientele from across India and many countries abroad. The service mark, trading style and domain name D'Zine plays a vital role in the business of the respondent/plaintiff and the customers of the respondent/plaintiff also spread the reputation by word to their friends, relatives and acquaintances across the country, thus bringing in new clientele. The nature of the respondent/plaintiff's business is that most of the customers/clients do a search in the internet such as Google or Yahoo and access their website to get details. Satisfied with the scope of the services that can be provided by the plaintiff, the customer/client contacts the respondent/plaintiff, places the order with the internet being used as platform for their business activities, the service mark D'Zine plays a vital role as most of the customers do the search typing the registered service mark D'Zine. The above facts coupled with the wide and extensive advertising by them has brought enviable reputation to their business, their service mark and domain name D'Zine, trade name D'Zine garage and domain name www.dzinegarage.com respectively. 2. The respondent/plaintiff states that they became aware that the applicant/defendant is using the mark D'zine cafe as a service mark and as part of their corporate name and domain name www.dzinecafe.com. The applicant/defendant is involved in the business of web designing, multimedia presentations, online communication, etc. According to the respondent/plaintiff, the applicant/defendant has deliberately adopted a similar service mark/trade name D'Zine cafe in a calculated attempt to cash in on the reputation and goodwill enjoyed by the respondent/plaintiff and to get illicit and quick gains without putting any substantial efforts. The unauthorized and unlawful use of D'Zine cafe for the applicant/defendant's business activities is with mala fide intention to make the customers believe that their business also originates from the respondent/plaintiff. On 29.3.2007, the respondent/plaintiff issued a notice calling upon the applicant/defendant to desist from using D'Zine as a service mark or as part of their corporate name/domain name. The applicant/defendant sent an evasive reply, but failed to comply with the notice. Again, a rejoinder was issued by 16.4.2007 by the respondent/plaintiff stating the similarity of the line of business of the applicant/defendant would infringe the right of the respondent/plaintiff. The applicant/defendant sent an evasive reply, but failed to comply with the notice. Again, a rejoinder was issued by 16.4.2007 by the respondent/plaintiff stating the similarity of the line of business of the applicant/defendant would infringe the right of the respondent/plaintiff. They also enclosed the registration certificate of the said service mark D'Zine. But the applicant/defendant did not comply with the lawful demands of the respondent/plaintiff and therefore, the suit was filed and interim injunction was asked. Interim injunction was granted on 14.6.2007. 3. The applicant/defendant has how filed applications to suspend and vacate the order of interim injunction and also to strike the pleadings and reject the plaint. 4. Application No. 4410 of 2007 for striking out the pleadings and rejecting the plaint will be taken up first. According to the applicant/defendant, they do not have any office in India, much less in Chennai and the premises in Shivalaya Building given in the plaint has been taken on lease by M/s. Niyati Technology Pvt. Ltd. and a copy of the lease agreement is also produced. According to the learned Counsel appearing for the applicant, the fact that the Chennai docket address was given by the applicant in the website is taken advantage of by the respondent/plaintiff and the suit has been filed in this Court, knowing fully well that this Court has no jurisdiction. According to the deponent of the affidavit, the only work carried on by him is to receive and forwarded trade enquiries and he is only a liaison contact person. The applicant does not have any bank account, billing or any other business facility anywhere in India and it is totally based in the U.A.E. According to the applicant, without prejudice to his contention that this Court has no jurisdiction to try the suit, the word D'Zine is a common and universally corrupted and abbreviated form of the mark and word 'design', which is used in SMS messages sent through mobile phones, where abbreviated words are very commonly used throughout. According to the applicant, in an online search of the internationally famous website Google, it is found that there are in all 1,90,000 search options available on and over the said word D'Zine alone and as such, the respondent/plaintiff does not, and cannot, have the sole and exclusive corporate and domain right over the said common mark and word. According to the applicant, in an online search of the internationally famous website Google, it is found that there are in all 1,90,000 search options available on and over the said word D'Zine alone and as such, the respondent/plaintiff does not, and cannot, have the sole and exclusive corporate and domain right over the said common mark and word. It is submitted that no one will be misled by the use of the said mark and work and there is no confusion among general public and therefore, the suit has been filed only to ruin the business reputation of the applicant, that too in a Court which has no jurisdiction and the same has, therefore, to be dismissed. I. As regards the application for rejection of plaint, the defendant claims that they have no presence in Chennai and therefore the suit could not have been filed here since no cause of action has arisen within the jurisdiction of this Court. The plaint averments, however, would show that the defendant is operating from India and has a full fledged development centre in India and marketing team in India. According to the defendant, however, only a liaison office is in Chennai. The typed set of papers have been filed by the plaintiff to show the presence of the defendant in India and the printout of the websites enclosed therein are as follows : If you are located in the Middle East, please get in touch with our Dubai Office: Contact person : Shyam Krishnan. If you are located in the US/India/Europe or other locations, you can get in touch with our India office: Contact persons : Ramesh Nair/Pradeep K The website print outs of the defendants www.dzinecafe.com, which reads as follows: that they have the Indian outsourcing advantage that their development center is located in India and it shows O2007 Dzine Cafe Chennai, India, All rights reserved. Many of the print outs have this caption 2007 Dzine Cafe Chennai, India. In one of the print outs the following sentence is found. Dzine Cafe is among the most creative Indian web designers. Our service in web development touches every aspect involved in setting up a website. From suggesting the perfect domain name to booking the url (domain name), designing and coding the pages and even hosting and updating the site. In one of the print outs the following sentence is found. Dzine Cafe is among the most creative Indian web designers. Our service in web development touches every aspect involved in setting up a website. From suggesting the perfect domain name to booking the url (domain name), designing and coding the pages and even hosting and updating the site. In paragraph No. 17 of the affidavit, the defendant has put the plaintiff to strict proof of the pleadings contained in Paragraph Nos. 6 to 12 and 15 to 20 of the plaint. The pleadings can be struck off only if on the face of the pleadings they cannot be accepted. If the plaintiff is put to strict proof, necessarily he will have to let in evidence to prove his cage, and therefore, the pleadings cannot be struck off. The following decisions were relied on. (i) In P.T. Ummer Koya, Hon. Secretary, All India Chess Federation Vs. Tamil Nadu Chess Association and Others, (2005) 3 LW 590 , the Madras High Court has held as follows: In other words, an application for revocation of leave should be made at the early-stage of the suit and delay and acquiescence is a bar to such an application. Though Mr. T.V. Ramanujam vehemently contended that mere filing of vakalath would not amount to participation in the proceedings, as demonstrated before us, the appellants herein not only filed affidavit questioning the grant of injunction but also prayed for vacation of the same and thereafter filed the separate application for revocation of leave. We are satisfied that by their conduct in participating the proceedings by filing affidavit opposing the injunction, they are acquiesced jurisdiction of this Court and they cannot be permitted to contend otherwise for revocation of leave. (ii) In 1998 I LW 640 (Scientific Compounds & Processes Private Limited v. National Soapnut Works, Bangalore), it was held: The proper course would have been, after the respondent had filed the written statement, an issue could be taken as to the jurisdiction and that could have been dealt with either as a preliminary issue or alongwith other issues on the basis of the evidence that could be let in by the parties. The plaintiff has filed an additional typed set of papers in which the extract of the website of the defendant has been enclosed. The plaintiff has filed an additional typed set of papers in which the extract of the website of the defendant has been enclosed. It reads thus: web designers from Dubai and Chennai, India who can give a new dimension to your on-line plans. and Dzine Cafe is an India based company providing high quality outsourcing solutions. Chennai India based outsourcing company with marketing office in Dubai and the US. At Dzine Cafe we are based out at Dubai and Chennai, India. Therefore, the impression one gets from the materials above is that there is definitely a base at Chennai for the defendant. In the affidavit in support of the Judge's Summons the defendant has stated that, the premises in Shivalaya Buildings, C-Block, Commander-in-Chief Road (Ethiraj College Salai), Egmore, Chennai 600 008 given in the plaint, has been taken on lease by M/s. Niyati Technologies Pvt. Ltd. , of which I am one of the Directors, and the Applicant/Defendant does not have its branch and/or office there, and a copy of the Lease Agreement is also filed herewith. This will have to be proved at the time of the trial. The impression, which the defendant gives to its customers who visit its web site, is that it has a base in Chennai. It has been held that in several judgments that to justify an order of rejection of plaint, the defendant would be required to show a very strong case in his favour and the power would be exercised sparingly and only in exception cases, since it would interfere with the right of the party to proceed with the trial to get to its legitimate and according to the substantive merit of his case. Such a case has not been made out by the defendant here. Therefore, it is not possible to reject the plaint. II. Next we come to the injunction applications. (a) The injunction granted to the plaintiff in sought to be vacated on the ground that the registration is for a logo only; dzine is not a coined word, it is a corrupt from of design and is commonly used, dzine grage and dzine cafe are sufficiently different and not similar and not likely to mislead and many others are using it. These are all denied by the plaintiff and he refers to Sections 2(m), 2(zb), Section 29(5) and Section 135(1) of the Trademarks Act, 1999. These are all denied by the plaintiff and he refers to Sections 2(m), 2(zb), Section 29(5) and Section 135(1) of the Trademarks Act, 1999. (b) On 03-12-2004, the plaintiffs' trade mark Dzine was given certification in Class 35 under No. 1323883-user claimed since 01-05-1999. The web site of the plaintiff Dzine garage as extracted in the typed set of papers indicates that it is an 8-year-old interactive agency. On 29-03-2007, the plaintiff issued a cease-and-desist notice, which reads thus: During the course of business, our clients adopted the mark Dzine in May 1999. Clients have resisted the said mark under No. 1323883 in class 35. The reply is evasive. It runs thus: Our client is informed that no such trade mark of your client has been registered and much less under he alleged application No. 1323889. 2. Be what it may, our Client states, that the word and mark Dzine, the use of which is sought to be objected to by your Client, is actually a common and universally corrupted and abbreviated use of the mark and work design, and this will be evident from the fact that in an online search of the website Google, it is found that there are in all 1,90,000 search options available on and over the said word Dzine alone, and as such your Client does not have the sole and exclusive corporate and domain right over the said common mark and word. 5. Furthermore, our client's line of business is based, located and operated from Dubai, and not from India, and the Indian address given in our Client's website is only for the purpose of liaisoning, as our Client has no branch office or franchise at all in India. (c) Very cleverly, a wrong registration number is mentioned. The existence of the plaintiff from 1999 is not denied. Nor is there anything to show from when the defendants have started business. The rejoinder to this repeats the registration number and reiterates the contents of the cease-and-desist notice. Now the defendant says, 1. (c) Very cleverly, a wrong registration number is mentioned. The existence of the plaintiff from 1999 is not denied. Nor is there anything to show from when the defendants have started business. The rejoinder to this repeats the registration number and reiterates the contents of the cease-and-desist notice. Now the defendant says, 1. Our Client states that the Trade Mark Application number given in your g.mail was evidently wrong, and after your furnishing the correct number, and after making further enquiries in the Office of the Registrar of Trade Marks in Chennai, our Client is informed that it is only the LOGO, i.e., the coining of the artistic design, and get-up of, the word DZINE that has been registered by you, and not the common and universally corrupted and abbreviated use of the said word itself, and that is why in the website Google, it is found that there are in all 1,90,000 search options available on and over the said word (Sic) Clients does not have the sole and exclusive corporate and domain right over the said word, and our Client also emphatically denies of any such right in your Client's favour. 2. Our Client also emphatically denies that on any comparison whatsoever, there is any similarity I the use of the said word by your and our Clients, much less they being identical, which will be belied even from a casual look of the same by any common man, much less by specialists in the field of the said business, wherein none of whom have, or are, with any imperfect memory and recollection, for them to get confused or deceived in any manner, as the clienteles are a different class in themselves. 3. Our Client further states that though there is total similarity in business in most of the household and consumer products and articles such as Televisions, Refrigerators, etc., this does not lead to any confusion and deception to the common man, for whom it is healthy competition, besides the fact that the use of the said mark and work DZINE by our Client and yours, are both totally different is their get-up, colour, logo, presentation, look and out-look, etc., besides the qualifying words thereafter of Garage used by your Client and Cafe used by our Client even in their website, and even the connotations there from are different. (d) It would therefore, be clear that essentially it would depend upon the facts as stated in Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 , that, 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. (e) In Indo-Pharma Pharmaceutical Works Ltd. Vs. Citadel Fine Pharmaceuticals Ltd., AIR 1998 Mad 347 , it was held as follows: Infringement of trade mark Phonetic similarity Plaintiff selling its product, allopathic medicinal preparation under trade mark "Enerjex" Adoption of trade mark "Enerjase" by defendant for selling Ayurvedic medicinal preparation Prefix for both marks viz., "Enerj" is common and abbreviation of generic name "energy" Suffix to said words "Jex" and "Jase" are totally dissimilar Does not create confusion in mind of users especially when visual impression of the said two trade names is completely different Total sound effect of these two words lacks any similarity No infringement of trade mark of plaintiff. (e) In Infosys Technologies Ltd. Vs. Park Infosys and Others, (2007) 137 DLT 349 , it was held that the confusion was held to have been established. (f) In J.R. Kapoor Vs. Micronix India, (1994) 3 SCC 215 Supp, the Supreme Court held that there is no likelihood of confusion whereas in 2007 CLC 261 (Narmadha Chemicals (P) Ltd. v. Siva Shakthi Soap Works) it was held that the similarity was established to warrant injunction. (g) In 1976 R.P.C. No. 7 171 Computervision Corporation v. Computer Vision it was held that, "granting an injunction, (1) that in view of the evidence that wide diversification in the electronics field was commonplace, there was sufficient overlap in the plaintiffs' and the defendants' fields of activity for the purpose of passing off." (h) Recently, the Supreme Court in Heinz Italia and Another Vs. Dabur India Ltd., (2007) 6 SCC 1 , had an occasion to deal with a similar question between Glucon-D and Glucose-D. In fact, in that case though two courts had declined to grant ad-interim injunction it observed that principle of similarity cannot be strictly applied; Phonetic similarity cannot be ignored; prior user must be proved and dishonest intention must be there and injunction was granted. (i) In the case on hand, there is phonetic similarity. (i) In the case on hand, there is phonetic similarity. Dzine is not a generic word, it cannot be said to carry distinctive reference to a particular trade, thus losing its distinctiveness and falling into common use and (Sic) publici juris. The fact, one is Dzine cafe and the other is Dzine garage, hardly helps since even the defendants accepts that the business is the same, so the clientele is likely to be confused and to think both are the same. The prior user is established. There is no specific denial of the charge that the defendant is taking advantage of the plaintiff's mark. All that the defendant says is there are other persons using Dzine. Dzine is not a common word. That has never been a defense in the injunction application. (j) For all these reasons, there will be an interim injunction as prayed for. In the result, the Original Applications 7192720/2007 (Sic) and the Application 4410/2007 for rejection of plaint is rejected. In view of the above order, Application Nos. 4411 to 4414 of 2007 are closed.