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Karnataka High Court · body

2011 DIGILAW 973 (KAR)

Apna Car, Com v. Automart India Ltd.

2011-09-30

N.KUMAR

body2011
Judgment :- 1. This is a plaintiff’s appeal against the order of the trial Court refusing to grant order of temporary injunction. 2. For the purpose of convenience, the parties are referred to as they are referred to in the original suit. 3. The plaintiff M/s APNA CAR.COM PRIVATE LIMITED is as registered company incorporated under the provisions of the Indian Companies Act, 1956 on 17th September, 2000. The plaintiff is in the business of providing its customers a hassle free buying experience by creating an interactive market channel for efficient networking among buyers, sellers, dealers and manufacturers in the Indian Market. In this regard ‘apnacar.com’ introduced by the plaintiff on 11.12.19999 is an online market place and the customers could approach the plaintiff at ‘contactus@apnacar.com’. The plaintiff conducts their business under the brand name ‘First Choice’ and that they are popularly well known under the said Trade name through out. The said trade name finds a place in all the dealings of the plaintiff such as their web page, brochure, advertisements, etc. The plaintiff in order to promote and make popular the said Trade name have spend huge sums of money in advertisement and business promotions. There has been wide coverage of the same in leading news papers and other forms of media from time to time. The said Trade name is hugely popular. The public/consumers identify and associate the said Trade name with the premium services run/owned/managed by the plaintiff. They have made an application under the Trade Mark Act, 1999 for registration of the said Trade name to the Registrar of the Trademarks under various classes 12 and 36. The said Trade name has acquired distinctiveness amongst its customers since its inception in September 2000. As per the Trademark Act, the owners of the Trade names/marks which has acquired distinctive character have the right to exclusive use of his/her/its Trademark and is entitled for protection against violation of such right. 4. Plaintiff is the sole and absolute owner of the aforesaid Trade name as per the law. The plaintiff had put up a Caution notice in Times of India, thereby informing the public at large about the aforesaid facts. 4. Plaintiff is the sole and absolute owner of the aforesaid Trade name as per the law. The plaintiff had put up a Caution notice in Times of India, thereby informing the public at large about the aforesaid facts. Irrespective of the aforesaid fact the defendant who is conducting similar business have ventured to utilize the Trade name of the plaintiff with the ulterior motive of exploiting, misusing and to gain illegally the benefits out of the tremendous goodwill and great value of the said Trade name thereby causing confusion in the mind of the public as they would visit the defendant’s concern on the firm belief that the same is a part of the plaintiff’s claim of business outlets due to similarity in both the names, the services, the set up etc., The plaintiff has checked with the authorities and found out that the defendant has started his service under the Trade name of the plaintiff on or by 4th August, 2007, through out India thereby making unlawful gain and causing irreparable loss/injury in terms of goodwill, reputation, business etc, that cannot be compensated in terms of money to the plaintiff’s concern. 5. The acts committed by the defendant exploits the Trade name and goodwill of the said Trade name by running their business with a mark and brand name similar to that of the plaintiff and that the same is illegal. In all cases the acts as above whether intentional or not amount to cheating the plaintiff of the said Trade name which they have taken many years of hard effort to build. Plaintiff are the sole legal proprietor of the said Trade name as per law and that no person can carry on business similar to that of the plaintiff’s using the said Trade name/s or use phonetically or visually similar Trade name/s open to public who visit the same in the belief that the said business is being conducted/run by the plaintiff. Therefore, the plaintiff sought for a direction to the defendants to cease and desist from using the Trade name ‘First Choice’ belonging to the plaintiff or by any other name/s which are phonetically/visually similar to the word ‘First Choice’ and to produce statement of accounts to evidence the amount of sales made and for a permanent injunction restraining the defendant from using their name and for other consequential reliefs. 6. 6. Plaintiff also filed an application under Order 39 Rule 1 and 2 of CPC, reiterating the allegations made in the plaint and sought for temporary injunction restraining the defendant from using the name ‘First Choice’ or any Trade name which is phonetically or visually similar to the word ‘First Choice’. On the said application an exparte order of interim injunction was granted on 16.11.2007. 7. Defendant entered appearance and filed their objections to I.A.I/07. Defendant contended that plaintiff ha not used the words ‘First Choice’ as a Trade Mark. The entire material produced by the plaintiff would show that ‘Apna Car.Com’ were the words that were being projected as a Trade name and not the words ‘First Choice’. More over, most of the documents filed by the plaintiff such a brochures, website materials, pamphlets, bear no date or period of use. The same are irrelevant and cannot be considered as primary evidences to show proof of use of the mark. Plaintiff does not have any exclusive right over the phrase ‘First Choice’ as the plaintiff had not progressed with the idea of promoting ‘First Choice’ as its exclusive Trade Mark. Even though the said phrase has been used intermittently by the plaintiff, the material on record would demonstrate the fact the same was not used in the Trade Mark sense. The documents, relied on by the plaintiff shows that absolutely no activity with regard to the plaintiff advertising even the said phrase ‘First Choice’ in any form, from 20.11.2004 to 25.08.2007. Assuming that plaintiff has in fact using the alleged Trade name ‘First Choice’ as their exclusive Trade name for more than 8 years as claimed to the affidavit, there is no reason whatsoever given by the plaintiff for its absolute silence and total inaction to propagate or associate the words ‘First Choice’ from 20.11.2004 up to and inclusive of 25.08.2007. As revealed from the plaint, it is crystal clear that the words ‘First Choice’ were not even projected, used or propagated as a Trade name or Trade Mark in its Strict sense and it is the only reason for the long continuous absence or inaction on the part of the plaintiff to advertise, use or propagate the said words, alleged to be their exclusive Trade Name in any known form of media. 8. 8. The defendant after conducting thorough Trade Mark search and ascertaining that they will not be violating or infringing upon anybody’s Trade Mark, applied for registration of the trade Mark ‘First Choice’ on 20.07.2007 before the Trade Mark Registry at Mumbai. Thereafter the defendant announced their adoption of the Trade Mark ‘First Choice’ on August 2, 2007 which was reported in the ‘Business Line’ dated 45h August, 2007 and other leading Newspapers and also in the Electronic Media. After coming to know about the defendant’s adoption of the Trade Mark ‘First Choice’ and the wide publicity that was being given by the media to the said Mark, the plaintiff with malafide intention issued the alleged Trade Mark Caution Notice dated 03.10.2007 alleged to have been published in the limited Edition of Times of India. Defendant has no knowledge of the said Caution Notice until it received the notice of filling of the suit and exparte injunction order. The alleged Trade Name of the plaintiff’s ‘First Choice’ has not acquired distinctiveness amongst its consumers since September 2000 as claimed. Similarly, consumers/public identify and associate the said Trade Name with the alleged premium service run/owned/managed by the plaintiff is also false. With a view to make wrongful gain, the plaintiff has issued advertisement purporting to advertise its Trade Name ‘First Choice’ by publishing the same in a newspaper by name Bangalore Mirror on 25.08.2007m, Malayala Manorama, Bangalore Edition dated 26.08.2007, so as to make it appear as if the plaintiff is incurring expenses in promoting its alleged Trade Name ‘First Choice’ with a view to later on set up Civil Suit before this Court. 9. Plaintiff is not entitled to claim any right on the said words ‘First Choice’ when it is the ‘Trade Mark of the defendant company exclusively for the simple reason that for almost three years, i.e., from 20.11.2004 until 25.08.2007 the plaintiff had virtually given up its idea to promote the said words ‘First Choice as its Trade Name even assuming that the plaintiff had intended to do so originally. After coming to know the goodwill of the defendant and its vast expansion programme from the article published in Business Line dated 04.08.2007 and various other leading publications throughout the Country, the extensive publicity that was being done in the print and electronic medias, the plaintiff appears to have conceived the fanciful idea of claiming right or interest over the exclusive Trade Mark belonging to the defendant with a view to encash and reap commercial benefit out of it. The plaintiff has set up an illegal exploitation attempt by filing this frivolous and vexatious suit. The plaintiff has approached this Court with unclean hands and with a motive to pressurize and curtail the efforts of the defendant company in establishing its Trade Mark ‘First Choice’ and along with it the goodwill, reputation and business attached to it. In fact, in a very short time, throughout the Country, it is the defendant who is being identified by the words ‘First Choice’ popularly and widely and not the plaintiff, as falsely claimed in the plaint. 10. The plaintiff has filed an application seeking registration of the Trade Mark only on 21.08.2007, much after the publication made as early as on 04.08.2007 by the defendant which was widely reported throughout India in all the newspapers, it is only after applying for registration of the Trade Mark on 21.08.2007, the alleged advertisements have appeared after a wide gap over three years and the plaintiff had given by the very idea of using the Mark in any manner ever since 20.11.2004. Defendant has set out in a tabular column the number of advertisement issued by them giving particulars such as date of advertisement, name of publication and the expenses incurred. According to the statement a sum of Rs.1,38,15,701-00 is the expenses incurred from 04.08.2007 to 26.09.2007 for issuing advertisement. 11. The defendant further stated that the defendant company is founded in the year 1000 as part of the well established Mahindra Group, Shah & Sanghi Group and the HDFC. Having been incorporated as “Automart India Limited’ the said Company’s name has been changed to ‘First Choice wheels Limited’ with effect from 13th November 2007. Its turnover for the last four years is more than Rs.100 crores each year consistently. For the year ended March, 2007, the turnover has crossed Rs.144 crores. Having been incorporated as “Automart India Limited’ the said Company’s name has been changed to ‘First Choice wheels Limited’ with effect from 13th November 2007. Its turnover for the last four years is more than Rs.100 crores each year consistently. For the year ended March, 2007, the turnover has crossed Rs.144 crores. Having come to know about the stakeholders and the stakes of the defendant company in terms of its business, profits, goodwill, efforts and expenses incurred by the defendant company to promote its Trade Mark ‘First Choice’, which is also a part of the defendant Company’s name now, the plaintiff with a view make wrongful gains and to pressurize the defendant to come forward for an unjust settlement, has made a false claim as if the plaintiff has exclusive right over the alleged Trade Name ‘First Choice’. Defendant has not done anything with an ulterior motive. On the other hand, the Trade Mark ‘First Choice’ had been conceived, created and adopted honestly by the defendant to promote, develop and propagate its business to the public, all with a view to be identified amongst the general public and to distinctly be visible to the public as offering leading services in buying and selling used cars. Such a honest adoption of the Trade Mark is permitted and protected under Section 12 of the Trade Mark Act, 1999. The defendant Company has followed all the legal requirements and also ensured that it was not violating on infringing anybody else’s Trade Mark prior to its filing application for registration of Trade Mark in July 2007. The Trade Mark search conducted by the defendant revealed only two identical marks, one label called M/s. Classic Exports and another under Class 35 (Advertising service) applied for by a Company named M/s. Dairy Farm Associate. Therefore in July 2007, the defendant Company applied for Trade Mark registration under Class 12 (Vehicles including cars, whether used or new). Class 35 (Advertising Service in respect of buying and selling vehicles) Class 36 (owning and leasing services for vehicles) and Class 37 (building, construction, maintenance, repairs of vehicles, etc.,). Thus, the defendant has followed the necessary due diligence that has to be adopted by a prudent person who honestly adopts a Trade Mark, prior to applying for registration of a Trade Mark as on July 2007. Thus, the defendant has followed the necessary due diligence that has to be adopted by a prudent person who honestly adopts a Trade Mark, prior to applying for registration of a Trade Mark as on July 2007. Defendant also ensured that it did not seek registration for the very same service to which the other two entitles had sought for registration and to make clear that there is no conflict whatsoever between the earlier applications of the other two entitles and the present application by the defendant. They also ensured by making necessary search to trade journals, magazines, searches in interest search engines that its adoption of mark ‘First Choice’, in respect of services offered by it, does not conflict with the trade marks of others. Thus, it demonstrated in clear terms that if at all the plaintiff had taken steps to register the Trade Mark prior to the defendant’s make the application for registering the said Trade Mark, the defendant would have certainly ensured that either a distinction is shown in the Trade Mark to avoid conflict with the plaintiff if made earlier or would have ensured that there is no conflict of interest between the plaintiff and the defendant on the said Trade Mark, now alleged to be claimed as a Trade Name by the plaintiff. Thus, it is clear that respondent has no inkling or idea of cashing upon the plaintiff’s goodwill in any manner. 12. The name ‘First Choice’ used by the plaintiff has not lost its primary meaning and also not acquired any secondary meaning by virtue of usage. Whatever descriptive words are used as Trade Mark, the onus is on the plaintiff to plead/prove in their plaint that their mark by virtue of usage has acquired a secondary meaning. Plaintiff in the instant case has miserably failed to establish their claim so as can be seen from the plaint and affidavit accompanying the I.A. for interim injunction. The goods and services associated with the mark First Choice are of the nature that cannot create any confusion in the mind of a customer. A customer wanting to buy a used car goes by the brand such as Honda or Maruthi and knows the difference is not likely to get confused between dealers in such used cars as the customer for such goods/service is a discerning/sophisticated customer. A customer wanting to buy a used car goes by the brand such as Honda or Maruthi and knows the difference is not likely to get confused between dealers in such used cars as the customer for such goods/service is a discerning/sophisticated customer. There are enough additional features to distinguish the Trade Mark of the defendant from that of the plaintiff, such is the mention of the names Mahindra/Shah & Sanghi and HDFC Venture beneath the defendant’s mark, the overall artistic depiction of the logo. Etc., whereas, the plaintiffs are using words only ‘Apnacar’ in a proficient manner and not the ‘First Choice’ as falsely claimed now. The defendant’s mark is a composite label mark represented with distinctive in colour and font that is easily distinguishable from the others. Apart from that there is no evidence furnished by the plaintiff with regard to the extensive use of the mark in cities other than Bangalore, whereas the defendant’s mark is extensively used all over India. The use of words ‘First Choice’ by the plaintiff is not extensive enough to claim proprietorship or any right whatsoever in the mark. 13. Therefore, they contended that the plaintiff has no prima facie case. Balance of convenience is not in favour of the plaintiff. Plaintiff has not come to the Court with clean hands. Therefore, the defendants sought for vacating the exparte interim order of injunction granted and for dismissal of the application. 14. After hearing the learned Counsel for the parties, the trial Court on appreciation of the material placed before it, held that in the case of passing off action. It is the prior user and not the registration, which is the relevant test. Passing off can take place if there is any misrepresentation made in the course of trade to ensure business and good will of another which causes actual damage to others. The user of the said mark does not deceive the customer of the plaintiff as it has become inactive from the year 2004 to 2007. The question of using the similar mark likely to deceive and cause confusion is to approach from the point of view of a man and average intelligence and imperfect recollection. The user of the said mark does not deceive the customer of the plaintiff as it has become inactive from the year 2004 to 2007. The question of using the similar mark likely to deceive and cause confusion is to approach from the point of view of a man and average intelligence and imperfect recollection. An un-vary purchaser of average intelligence and imperfect recollection do not split the name into its component parts and consider the etymological meaning thereof or even considering the meaning thereof or even considering the meaning of composite words. As the plaintiff is not at all suing the mark ‘First Choice’ for its business and using its trade name as ‘apnacar.com private Limited’ there is no question of deceit or causing any confusion by the defendant. The plaintiff has miserable failed to make out a case for the confirmation of exparte order of temporary injunction. Therefore, it proceeded to vacate the exparte temporary injunction granted, by its order dated 30th January 2008. 15. Aggrieved by the said order, the present appeal is filed. 16. The learned Counsel for the plaintiff assailing the impugned order contends, that from the material on record it is clear that the plaintiff hosted web site on 11.12.1999 with the words ‘first choice’. The company was incorporated on 17.09.2000. The first advertisement was issued in December 2004. Thereafter they have spent considerable money on advertisements to advance their interest in business. The defendant, a Multi National Company came into picture for the first time in 2007 using the word ‘First Choice’ in its corporate name. Because of its money power they were able to destroy the plaintiff, as they have net work through out the country and thus using the trade mark which is popularized by the plaintiff and taking advantage of the same. When once the prior user is established, the plaintiff is entitled to protection of his trade mark by grant of order of temporary injunction. In so far as deception or confusion is concerned, the people who had the service of the plaintiff all these years, remembers the name ‘First Choice’ and not actual company name. When by word of mouth they mentioned the name of ‘First Choice’, few customers are deceived by the defendant. Similarly, when the plaintiff is consulted over phone or through web site, the customers are confused. When by word of mouth they mentioned the name of ‘First Choice’, few customers are deceived by the defendant. Similarly, when the plaintiff is consulted over phone or through web site, the customers are confused. Therefore he submits that in the facts of the case, prima facie the plaintiff has made out a case for grant of injunction. Though the trial Court was convinced about the same and granted exparte temporary injunction, it committed serious error in vacating the same. 17. Per contra, the learned senior Counsel appearing for the respondent submitted that the defendant was completely ignorant about the existence of the plaintiff at all till they received a notice from the Court in the suit. In fact, bonafide, they made enquiries and got a search made in the Registrar of Trade Marks, but the plaintiff’s name was not found anywhere. On the contrary, the said name was used by various others who have no grievance against the plaintiff. In fact, it is the defendant who gave an application for registration of their mark on 21.07.2007. It is only thereafter, the plaintiff in order to blackmail the defendant became active, filed application for registration of trade mark and issued few advertisement to make it appear that they are in business. From the year 2004 to 2007, absolutely there is nothing on record to show that the plaintiff was in business. It is only after the defendants came into market, they have become active with the fond hope of exploiting the defendant and making some fast money. Therefore he submits that absolutely there are no bonafides. None of the ingredients of passing off action has established in this case. Therefore the plaintiff is not entitled to any relief at the hands of this Court. 18. In the light of the aforesaid submission, the short question that arise for consideration is: “Whether a case for interference with the discretionary order passed by the trial Court refusing to grant an order of temporary injunction is made out”” 19. In order to answer the aforesaid question. 18. In the light of the aforesaid submission, the short question that arise for consideration is: “Whether a case for interference with the discretionary order passed by the trial Court refusing to grant an order of temporary injunction is made out”” 19. In order to answer the aforesaid question. It is necessary to look into the law on the point: The Supreme Court in the case of CORN PRODUCTS V. SHANGRILA GOOD PRODUCTS, AIR 1960 SC 142 held as under: In order that a trade mark may acquire reputation among the general public what is necessary is that the reputation should attach to the trade mark, it should appear that the public associated that trade mark with certain goods. The reputation is the reputation of the trade mark and not that of the marker of the goods bearing that trade mark. A trade mark may acquire a reputation in connection with the goods in respect of which it is used though a buyer may not know who the manufacturer of the goods is. 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 English men, which is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity. It is well recognized that in deciding a question of similarly between two marks, the marks have to be considered as a whole. 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, 1958 RPC 887, Ref. The absolute identify of the two competing marks or their close resemblance is only one of the tests for determining the question of likelihood of deception or confusion. Trade connection between different goods is another such test. Ex. Hypothesi, this latter test applies only when the goods are different. These tests are independent tests. The absolute identify of the two competing marks or their close resemblance is only one of the tests for determining the question of likelihood of deception or confusion. Trade connection between different goods is another such test. Ex. Hypothesi, this latter test applies only when the goods are different. These tests are independent tests. There is no reason why the test of trade connection between different goods should not apply where the competing marks closely resemble each other just as much as it applies where the competing marks are identical. Whether by applying these tests in a particular case the conclusion that there is likelihood of deception or confusion should be arrived at would depend on all the facts of the case. (14) We may also refer to In Re: Harrods’ Application, (1934) 52 R.P.C. 65 mentioned in the quotation from Beck, Koller and Co.’s case (1947) 64 R.P.C. 76, set out in the preceding paragraph. It was there said at P.70: “Now it is a well recognized principle, that has to be taken into account in considering the possibility of confusion arising between any two trademarks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective marks and to distinguish between them by those features. This principles clearly requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the market in which the marks under consideration are being or will be used.” (15) The series of marks containing the common element or elements therefore only assist the applicant when these marks are in extensive use in the market, The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now in the present case the applicant, the respondent before us, led no evidence as to the user of marks with the common element. What had happened was that the Deputy Registrar looked into his register and found there a large number of marks which had either ‘Gluco’ or ‘vita’ as prefix or suffix in it. Now of course the presence of mark in the register does not prove its user at all. What had happened was that the Deputy Registrar looked into his register and found there a large number of marks which had either ‘Gluco’ or ‘vita’ as prefix or suffix in it. Now of course the presence of mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register. If any authority on this question is considered necessary, reference may be made to Kerly p. 507 & Willesden Varnish Co. Ltd., v. Young & Marten Ltd., (1922) 39 RPC 285 at p.289. It also appears that the appellant itself started in one of the affidavits used on its behalf that there were biscuits in the market bearing the marks ‘Glucoa Lactine biscuits’. But these marks do not help the respondent in the present case. They are ordinary dictionary words in which no one has any right. They are really not marks with a common element or elements. We, therefore, think that the learned appellate Judges were in error in deciding in favour of the respondent basing themselves on the series marks, having ‘Gluco’ or ‘Vita’ as a prefix or a suffix. The Supreme Court in the case AMRITDHARA PHARMACY Vs. SATYA DEO GUPTA (AIR 1063 SC 449) held as under:- The act does not lay down any criteria for determining what is likely to deceive or cause confusion within meaning of S.8(a) and S.10(1). Therefore, every case must depend on its own particular facts and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion. On an application to register, the Registrar or an opponent may object that the trade mark is not registrable by reason of ckl.(a) of S.8. or sub-sec. (1) of S.10. In such a case the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause confusion. In cases in which the tribunal considers that there is doubt as to whether deception is likely, the application should be refused. or sub-sec. (1) of S.10. In such a case the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause confusion. In cases in which the tribunal considers that there is doubt as to whether deception is likely, the application should be refused. A trade mark is likely to deceive or cause confusion by its resemblance to another already on the Registrar if it is likely to do so in the course of the legitimate use in a market where the two marks are assumed to be in use by traders in that market. In considering the matter, all the circumstances of the case must be considered. What degree of resemblance is necessary to deceive or cause confusion must in the nature of things be incapable of definition a priori. 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. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that if differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. The Supreme Court in the case of DURGA DUTT SHARMA v. N.P. Laboratories, AIR 1965 SC 980 , held as under:- An action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another. But, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of “the exclusive right to the use of the trade mark in relation to those goods”. The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable limitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. 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 limitation, 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 difference, or indicate clearly a trade orgin 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. The Supreme Court in the case of K.R. CHINNA KRISHNA CHETTIAR Vs. SRI AMBAL & CO., AND ANOTHER) (SC 1970 146) held as under:- Whether if the proposed trade mark is used in a normal and fair manner and if similarly fair and normal user is assumed of the existing registered marks, will there be such a likelihood of deception that the proposed mark ought not to be allowed to be registered is a question which has to be decided on a comparison of the competing marks as a whole and their distinctive and essential features. Where a dealer sells snuff under a registered trade mark and the word “Ambal” is the distinctive and essential feature of that trade mark and that word fixes itself in the recollection of an average buyer with imperfect recollection another dealer also dealing in snuff cannot be allowed to get the trade mark registered, of which the word “Andal” is a distinguishing feature, as thee is a striking similarity and affinity of sound between the words “Ambal” and “Andal”. The resemblance between the two marks must be considered with reference to the ear as well as the eye and ocular comparison is not always the decisive test. Therefore, even if there be no visual resemblance between the two marks, that does not matter when there is a close affinity of sound between the words which are distinctive features of the two marks. Merely because the distinctive words used in both the marks have distinctive meanings it cannot be said that the phonetic resemblance does not lead to confusion, when it is likely that majority of the customers are not capable of understanding the fine distinction between the meanings of the two words. The Supreme Court in the case PARLE PRODUCTS (P) LTD Vs. J.P. & CO., MYSORE ( AIR 1972 SC 1359 ) has held as under:- To decide the question as to whether the plaintiffs’ right to a trade mark has been infringed in a particular case, the approach must not be that in an action for passing off goods of the defendant as and for those of the plaintiff. 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. It is of no use to note on how many points there is similarity and in how many points there is similarity and in how many others there is absence of tt. It is of no use to note on how many points there is similarity and in how many points there is similarity and in how many others there is absence of tt. AIR 1965 SC 980 , Rel. on: R.F.A. No.170 of 1963, D/- 5-7-1966 (Mys.) Reserved. The Supreme Court in the case of CADILA HEALTH CARE LTD Vs. CADILA PHARMACEUTICALS LTD ( AIR 2001 SC 1952 ) held has under:- (E) Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered: (a) The nature of the marks i.e., whether the marks are word marks or label marks or composite marks, i.e., both words and label works. (b) The degree of resembleness between the marks, phonetically similar and hence similar in idea. (c) The nature of the goods in respect of which they are used as trade marks. (d) The similarity in the nature, character and performance of the goods of the rival traders. (e) The class of purchasers who are likely to buy the goods bearing the marks they required, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. (f) The mode of purchasing the goods or placing orders for the goods and (g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. Weightageto 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. 20. From the aforesaid judgments, it is clear that one should bear in mind the difference between action for passing off and action for infringement of a trade mark. An action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods an those of another. But, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods. But, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods. The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. In the case of passing off action what is to be seen is the similarity between the competing marks and to determine whether there is likelihood of deception of causing confusion. For deceptive resemblance two important questions arise: (1) Whether the persons to 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. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. 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. 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. 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 basis 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 used by the defendant. The identification of the essential features of the marks 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. The identification of the essential features of the marks 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. The onus in a passing of action rests on the plaintiff to prove whether there is likelihood of the defendants’ goods being passed off as the goods of the plaintiffs. Therefore, the consideration relevant in a passing of action are somewhat different than they are on an application made by registration of a mark under the Trade Marks Act and that being so the decision of a Court in a passing off action cannot be considered as relevant on the questions that the Registrar has to decide under the provisions of Section 8. In order that a trade mark may acquire reputation among the general public what is necessary is that the reputation should attach to the trade mark; it should appear that the public associated that trade mark with certain goods. The reputation is the reputation of the trade mark and not that of the maker of the goods bearing that trade mark. A trade mark may acquire a reputation in connection with the goods in respect of which it is used though a buyer may not know who the manufacturer of the goods is. Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered: Firstly the nature of the mark. Secondly, the degree of resembleness between the marks, phonetically similar and hence similar in idea. Thirdly, the nature of the goods in respect of which they are used as trade marks. Then the similarity in the nature, character and performance of the goods of the rival traders. Fifthly the class of purchasers who are likely to buy the goods bearing the marks they required, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. Similarly, the mode of purchasing the goods or placing orders for the goods also assumes importance. Fifthly the class of purchasers who are likely to buy the goods bearing the marks they required, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. Similarly, the mode of purchasing the goods or placing orders for the goods also assumes importance. In addition to that any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. Any one of these factors by itself is not crucial. It is a cumulative effect of these factors, which would ultimately decide the dispute in question. However, 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. 21. It is in this background we have to decide in the facts of this case, i.e., that the interlocutory stage, whether a prima facie case of passing off action is made out and the plaintiff is entitled to equitable relief of a order of temporary injunction. 22. It is not in dispute that the trade mark, ‘First Choice’ is not a registered trade mark. Therefore, it is not a case of infringement of the trade mark. It is a case of passing off action. The plaintiff M/s APNA CAR.COM PRIVATE LIMITED, a company incorporated under the Companies Act, 1956, on 17.09.2000 claimed these words, ‘First Choice’ as its trade mark. It is the case of the plaintiff that they have created a web site on 11.12.1999 in which the words ‘First Choice’ is prominently displayed as their trade mark. They are dealing with sale and purchase of used cars. They have produced two newspaper cuttings dated 21.2.2004 and 22.2.2004 to show that they have extensively adverted their trade mark ‘First Choice’ and have popularized at considerable expense. According to them the said trade mark is known in the trade circle as belonging to the plaintiff. A reputation is attached among the general public to the said trademark. They also rely on the invoices showing that using the word ‘First Choice’ they have transacted business of purchasing and selling used cars. They are using this trademark from the year 1989 and therefore they are the prior users of this trademark. A reputation is attached among the general public to the said trademark. They also rely on the invoices showing that using the word ‘First Choice’ they have transacted business of purchasing and selling used cars. They are using this trademark from the year 1989 and therefore they are the prior users of this trademark. They have also made an application on 21.7.2007 to the Registrar of Trademark for registration and it is pending consideration. Their grievance is defendants who are late entries into the business of purchase and sale of used cars are trying to pass off their goods under the trade name ‘First Choice’ which belongs to the plaintiffs. From August 2007 the defendants are using their trademark ‘First Choice’ in all their advertisements. Invoices and other literature connected with the business. The plaintiff got issued a caution notice from the newspaper ‘Times of India’ on 3.10.2007. In spite of the same, as the defendants are using the said trademark, they were constrained to get issue a legal notice which is duly served on them. Now the defendants have used the word ‘First Choice’ in their corporate name itself. All this is done with an intention calculated to deceive the customers, thereby seriously affecting the business of the plaintiff. 23. Defendants contend it is only after service of summons and notice in the present suit, they came to know about the existence of the plaintiffs. They are in the business of purchase and sale of cars not only in Bangalore but throughout the country. They have got 7 outlets and 50 franchises throughout the country. They have been spending amounts not less than Rs.2 crores per year for advertisement and they have produced documents to substantiate the same. The word ‘First Choice’ has not acquired any secondary meaning of distinctiveness so as to connect it to the plaintiff. That apart having regard to the nature of the business which is being carried on both by the plaintiff and defendants, thee is absolutely no chance of confusion in the mind of the customers. Any customer who walks into their place before making purchase, looks at the car manufactured by the leading manufacturers of the world. He steps into their office not to purchase a product manufactured either by the plaintiff or the defendant. Any customer who walks into their place before making purchase, looks at the car manufactured by the leading manufacturers of the world. He steps into their office not to purchase a product manufactured either by the plaintiff or the defendant. They step into purchase a used car manufactured by a leading automobile company of the world and their enquiry would be to find out how those cars are functional in spite of they being used by others and manufactured several years before. Therefore, this word ‘First Choice’ which is the trademark claimed by the plaintiff which is the trademark also used by the defendant has no role to play in the customer making up his mind in purchasing a used car. The purchasers mostly are not illiterate, unintelligible customers. They are all well read, at any rate they have good knowledge of automobile and they walk into these places to make purchase, i.e., to get a car got good price. Therefore, no question of confusion, deception, arises in the nature of the business. 24. In the invoices which are produced which are anterior to 2004 though the word ‘First Choice’ is mentioned there is nothing to indicate that their invoices emanate from the plaintiff because their corporate name is conspicuously missing in these invoices. On the contrary those invoices on which reliance is placed reads as under:- “First Choice, Used Cars Buying/Selling, C/o Solar Automobiles, No.6, St. Johns Road, Bangalore-42, Ph. 4133040” In no part of the said invoice which is called ‘Vehicle Appraisal Form’, the name of the plaintiff is mentioned. 25. In so far as the two advertisements on which reliance is placed, the first advertisement is dated 21.2.2004 issued in Deccan Herald. In that notification again the plaintiffs’ corporate name is conspicuously missing. On the contrary it is published as under:- “Walk in ‘First Choice’ pre-owned cars, Solar Automobiles”. In the second paper publication on which reliance is placed which is dated 22.2.2004 in Deccan Herald what is contained in the publication dated 21.2.2004 is repealed. But, the addition that we find is the following writing:- “APNA CARS: buying/selling/exchange of all types of cars, finance available 57601488/57614666/36848415/31863308”. Now, an attempt is sought to be made out that the advertisement contained below those words is an advertisement issued by the plaintiffs. But, the addition that we find is the following writing:- “APNA CARS: buying/selling/exchange of all types of cars, finance available 57601488/57614666/36848415/31863308”. Now, an attempt is sought to be made out that the advertisement contained below those words is an advertisement issued by the plaintiffs. A comparison with the advertisement dated 21.2.2004 with the advertisement dated 22.2.2004 makes it very clear what is found below the aforesaid words does not relate prima facie to the plaintiff. The third advertisement on which reliance is placed is again in Deccan Herald dated 13.1.2007 where some connection could be found with Apna Car.Com with the earlier two advertisements issued by Solar Automobiles. 26. Therefore, the contention that with the issue of these three advertisements, the trademark ‘First Choice’ has acquired a reputation among the general public and case of distinctiveness connected to the plaintiff is made is difficult to digest. In fact, the plaintiffs’ turnover, amount spent on advertisement and amount spent towards web site and interest charges for the year 2000-01 to 2006-07 is as under:- 27. The defendants changed their company name from Automark India to First Choice Wheels Limited on 13.11.2007 and subsequently the name was further changed to Mahindra First Choice Wheels Limited on 23.6.2008. The total turnover in the Finance Year 2007 in respect of these used cars is Rs.144,61,92,806/-. As stated earlier they have 7 branches throughout the country and 50 franchises. These figures speak for themselves. In fact, the defendants have incurred expenses on the advertisement amount of Rs.1,38,15,701/- during the period from October 2007 to November 2007. The defendants company was founded in the year 1994 as a part of Mahindra Group Sham and Shangal Group and the HDFC. From the day they started this business their turnover is more than Rs.100 crores consistent. They have also produced material to show that before using ‘First Choice’ in their corporate name they have made enquiries, they have obtained a search report from the Registrar of Companies and also from the Trademark Registrar and therefore it cannot be said the user of the name ‘First Choice’ in their corporate name is not bona fide and it was adopted to deceive the customers and deprive the business of the plaintiff. Therefore, having regard to the nature of the goods in which both of them are dealing and the services extended by them and the class of purchasers who are likely to buy the goods through them and the mode of purchasing the cars, it is not possible to hold that the customers would be confused or deceived while making purchase of used cars. From the material on record it is not possible to hold the trade mark ‘First Choice’ has acquired a reputation among the general public so as to connect the same to the plaintiff, so as to give them a right of exclusive use of the said word ‘First Choice’. Prima facie at this stage it is not possible to hold that the plaintiff has made out a case of passing off and that there is likelihood of deception and confusion among the customers. The trial Court on appreciation of the pleadings of the parties, the documents produced to substantiate their respective cases, keeping in mind the law on the point has recorded a finding of fact that there is no confusion in the mind of the customers. The word ‘First Choice’ has not attained a reputation in general public so as to claim exclusiveness by the plaintiff and that if the defendants are permitted to continue their business with the word ‘First Choice’, it would not result any injury or loss to the plaintiff. In trademark matters it is now well settled that the Court has to go into the question of comparable strength of the cases of either party, apart from balance of convenience. From that angle when we look at this case, the total turnover of the plaintiff is less than the amount of expenditure incurred by the defendants in giving advertisement. We also cannot loose sight of the fact that the defendant is a group company of a leading industrial group. By accident, at any rate, prima facie the word ‘First Choice’ is also adopted by them and now adopted in the corporate name and even if the plaintiff has been using this work at a point anterior to the use of the said trademark by the defendants that by itself do not constitute a sufficient ground to grant an order of temporary injunction. In that view of the matter, the order passed by the trial Court declining to exercise the discretion in favour of the plaintiff cannot be called perverse or capricious so as to call for interference by this Court. Therefore, there is no merit in this appeal. Accordingly, it is dismissed. 28. However, it is made clear the trial Court shall decide the dispute between the parties on its merits, on the basis of the evidence to be adduced during trial without being in any way influenced by any of the observations made by this Court in this order or as well as its own order while disposing of the interlocutary application. Parties to bear their own costs.