Citation Codes

Equivalent Citations

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Case Number

IAs No 4146/96, 4611/96 in SUIT NO. 1075/96

Attorney(S)

Mr. K.G Bansal Adv. for Petitioner.
Mr. Vijay Hansaria Adv. for Respondents.

Judges

K. Ramamoorthy, J.

Acts

Section 45(1) of the Copy Right Act, 1957
Order XXXIX Rule 4 CPC.
MERCHANDISE MARKS ACT
Order XXXIX Rule 4

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Smart Summary

Court Opinion Summary

Factual and Procedural Background

Source: Opinion of K. Ramamoorthy, J.

The plaintiff, Ajendra Kumar Aggarwal, Proprietor of Dayal Medico (Mathura), instituted a suit against two defendants seeking injunctions restraining alleged trade mark infringement and passing off. The contested products were Ayurvedic medicines marketed for treatment related to menstrual problems (described in the opinion as "Stop Menses Clear"). The plaintiff stated he had been manufacturing and marketing under the trade mark "MENSUROL" since January 1990 and asserted that the trade mark was registered. He also applied for registration of the carton and logo.

The plaintiff supplied sales figures for the years 1991–1996 and relied on long, continuous and exclusive use to assert that the MENSUROL mark and logo had become synonymous with him. The plaintiff alleged that the defendants had started selling a similar Ayurvedic medicine under the trade mark "MENSCURE" (manufactured by the first defendant and marketed by the second) and that MENSCURE was deceptively similar to MENSUROL in get-up, make-up, lettering style and placement (including placement within a rectangle).

It was admitted that both parties operated in the same line of business and in the same geographical markets. The plaintiff filed an interlocutory application for injunction (IA No. 4146/96) under Order XXXIX Rules 1 and 2 CPC. The defendants filed a cross-application (IA No. 4611/96) under Order XXXIX Rule 4 CPC seeking dismissal of the plaintiff's injunction application.

The plaintiff placed before the court a bundle of evidentiary documents (ten documents), including a certificate of registration of the trade mark MENSUROL dated 17.4.1995 (stating use since 20.4.1990), trade mark journal advertisement, correspondence from the Registrar of Trade Marks (one document referencing Section 45(1) of the Copy Right Act, 1957 as described in the opinion), sales figures, advertisements, and an invoice dated 6 April 1994. The defendants produced evidence including their advertisements and coloured reproductions of both parties' boxes (noted as at page 25 of their application).

Legal Issues Presented

Whether the plaintiff had made out a prima facie case for grant of interlocutory injunction restraining the defendants from using the trade mark and get-up alleged to be deceptively similar to MENSUROL (i.e., whether there was a likelihood of confusion or passing off warranting interim relief).
Whether the marks "MENSUROL" and "MENSCURE" are deceptively similar phonetically and visually such that an injunction is warranted.
To what extent the plaintiff's registration of the trade mark (and evidence of use) would entitle him to interlocutory relief in the absence of phonetic similarity.

Arguments of the Parties

Plaintiff's Arguments

The plaintiff alleged long, continuous and exclusive use of the trade mark MENSUROL since 1990 and submitted sales figures and advertising expenditure as evidence of market presence and distinctiveness.
The plaintiff contended that the defendants' trade mark MENSCURE and its logo were extremely close to MENSUROL both phonetically and visually, including similarity of get-up, make-up, lettering style and placement (inside a rectangle), causing a likelihood of confusion and passing off.
The plaintiff relied on registration of the MENSUROL mark (certificate dated 17.4.1995 and other documentary evidence) in support of entitlement to injunctive relief.

Defendants' Arguments

The defendants denied phonetic similarity and contended the logos and cartons are different.
They submitted that only the first four letters ("MENS") are similar, and those letters describe the nature of the ailment (menstrual problems) rather than constituting a distinctive monopolizable element.
The defendants presented a detailed comparison of the two packages and contents (as reproduced in the opinion) showing multiple differences in base colour, printing style, inscriptions (e.g., "Non-Hormonal Ayurvedic Medicine", caution statements), placement of manufacturer/marketing names, capsule colour and internal packaging, and other features. They argued these distinctions negate any likelihood of confusion.
The defendants asserted that the medicine is sold on prescription by doctors, reducing the risk of consumer confusion at retail.
They also pointed to prior market activity by another company ("Search Pharma") predating the plaintiff's use (as alleged by the defendants) and to the first defendant's association with a large turnover business, suggesting commercial capacity and distinct branding.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
J.R. Kapoor v. Micronix India, 1994 Supp (3) SCC 215	The court explained that a descriptive or common prefix (example: "micro") that is relevant to the product or technology cannot be monopolized; the central inquiry for confusion centers on the remaining distinctive elements (phonetic and visual similarity of the non-descriptive parts). Phonetic dissimilarity and distinct visual impression weigh against finding likelihood of confusion.	The trial court applied this principle and found that the plaintiff's and defendants' cartons and trade marks were entirely different in appearance and that there was no phonetic similarity between "MENSUROL" and "MENSCURE". The court held that the plaintiff could rely on registration only if there is phonetic similarity and concluded the plaintiff had not shown a prima facie case for injunction.

Court's Reasoning and Analysis

The court's analysis proceeded in the following steps, relying expressly on the guiding principle from J.R. Kapoor v. Micronix India:

The court examined the nature of the challenged marks and the packaging (cartons) of the two products. It observed that the visual appearance of the two boxes and the trade marks thereon "look entirely different."
The court assessed phonetic similarity and concluded there was no phonetic similarity between "MENSUROL" and "MENSCURE."
The court applied the principle from J.R. Kapoor that descriptive or common prefixes (here, implicitly the element "MENS" as indicating menstrual-related products) do not give rise to a monopoly and that the decisive inquiry for interim relief is whether the remaining elements create deception or confusion. Following that reasoning, the court focused on whether the non-descriptive elements were likely to mislead purchasers.
Having compared the cartons, their colour schemes, lettering styles and other packaging features (and noting the defendants' detailed list of distinctions), the court concluded the overall get-up and impression were distinct and not likely to cause confusion.
The court observed that the plaintiff's registration of the mark did not automatically entitle him to interim injunctive relief in the absence of phonetic similarity and a prima facie case of deception or confusion.
The court balanced the equities and found that the balance of convenience did not favour the plaintiff, and therefore the threshold for granting an interlocutory injunction was not satisfied.

The court's reasoning is anchored in the comparative visual and phonetic assessment and the precedent that descriptive elements cannot be monopolized; the court did not elaborate additional novel legal tests beyond applying that precedent to the facts before it.

Holding and Implications

Holding:

IA No. 4146/96 (plaintiff's application under Order XXXIX Rules 1 & 2 CPC for injunction) — dismissed.
IA No. 4611/96 (defendants' application under Order XXXIX Rule 4 CPC) — allowed.
There were no orders as to costs.
The matter was posted for further proceedings on 17.10.1996.

Implications:

Direct effect on the parties: The plaintiff's request for interlocutory injunctive relief was refused; the defendants' application seeking dismissal of that injunction application was allowed. Practically, this meant no interim restraint was imposed on the defendants' use of the MENSCURE mark and associated packaging pending trial.
The court applied existing Supreme Court authority (J.R. Kapoor) and did not purport to lay down any new precedent; the decision is an application of established principles regarding descriptive elements in trade marks and the requirement of a prima facie case and balance of convenience for interlocutory relief.

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Anjendra Kumar Aggarwal v. Kruzer Herbals

K. Ramamoorthy, J.:— The plaintiff Ajendra Kumar Aggarwal, Proprietor of Dayal Medico carrying on business in Mathura has filed the above suit against two defendants for an injunction restraining infringement of trade mark and injunction on the ground of passing off. The product invented and manufactured by the plaintiff and the first defendant are Ayurvedic medicines. According to the plaintiff he is engaged in the business of manufacturing and marketing Ayurvedic medicines for the treatment of Stop Menses Clear. He has been in the business since January, 1990 carrying on business under the trade Mark MENSUROL. The trade mark according to the plaintiff is registered. Originally the business was carrying on by a parter and now he is the proprietor. According to the plaintiff, relating to the carton and logo the plaintiff has applied for registration. It is the assertion in the reply on account of distinctiveness acquired by the plaintiff and no one else in the market could use the trade mark and deceptively similar to MENSUROL.

2. The plaintiff has given his sales figures in paragraph 7 of the plaint as follows:

Year Amount in Rs. 1991-1991 95,363.05 1991-1992 2,06,007.30 1992-1993 3,26,741.00 1993-1994 3,87,400.10 1994-1995 4,65,789.00 1995-1996 7,99,275.00

3. It is also the case of the plaintiff that the trade mark MENSUROL logo has become synonymous with the plaintiff in view of its long continuous extensive and exclusive user.

4. The plaintiff came to know that the defendants had started selling the same Ayurvedic medicine under the trade mark MENSURE, manufactured by the first defendant and the marketed by second defendant. The case of the plaintiff is that MENSCURE logo chosen by the defendant is similar to the trade mark MENSUROL logo of the plaintiff in its get up, make up and lettering style and also its placement and arrangement inside a rectangle. It is asserted by the plaintiff “the resemblance of the defendants impugned trade mark MENSCURE logo is extremely close to the plaintiffs trade mark MENSUROL logo phonetically as well as visually”.

5. It is not disputed that the plaintiff and the defendant are operating in the same line of business under the same area and the markets.

6. The plaintiff has filed IA No. 4146/% for an injunction pending his suit.

7. The Plaintiff has filed 10 documents. Document No. 1 is the certificate of registration of trade mark MENSUROL. The certificate is dated 17.4.1995 It is stated therein that the persons who had applied for registration have been using it since 20.4.1990 Second document is the advertisement made by the plaintiff for MENSUROL logo and carton for registration. This is the document showing the advertisement in the Trade Mark Journal. Third document is a letter dated 22.5.1995 from the Registrar of Trade Marks to the plaintiffs advocate stating that no other person is using the trade mark MENSUROL. The Registrar of trade marks had seen the certificate alongwith the letter under Section 45(1) of the Copy Right Act, 1957 The certificate reads as follows:

“It is hereby certified that a search has been made among the collection of pending marks as well as in the Register of Trade Marks for the artistic work as a whole and that no trade mark identical with or deceptively similar to the above said artistic work (a copy of which is annexed hereto) has been registered or applied for registration under the Trade and Merchandise Marks Act, 1958.

Dated this 17th day of May, 1995”.

9. The next document shows the sales figures and also expenditure on account of advertisements, the next document is the logo of the first defendant showing the carton and the name of the trade mark MENSCURE. The next document is the copy of the newspaper Amar Ujala, Agra dated 15.4.1996 which shows the advertisement of the defendants trade mark MENSCURE. The next document is letter dated 1.2.1995 from the plaintiff to the Registrar, Trade Mark. Next document is copies of newspapers showing the advertisement made by the plaintiff for its' product under the Trade Mark MENSUROL the last document is the invoice dated 6th April, 1994 showing the sale of the plaintiffs product under the trade mark MENSUROL.

10. The defendants filed IA No. 4611/96 under Order XXXIX Rule 4 CPC. The stand taken by the Defendants is that there is no phonetic similarity between the MENSUROL and MENSCURE and the logos are different.

11. According to the defendants that except the first four letters which would indicate the nature of the disease sought to be cured, namely, Menstrual problems of ladies there is no similarity in the two products. A company called ‘Search Pharma’ has been carrying on business prior in point of time to the plaintiff. According to the defendants the first defendant is the sister concern of a private Ltd. Company which has a very large turn over more than 50 lacs. The distinctive features of the two trade marks and the cartons are mentioned in the application in the following terms:—

SI.No MENSCURE MENSUROL ON THE PACKAGE 1. The name of the product is different and only the first four latters are similar. The name of the product is different and only the first four letters are similar. 2. The base colour of the package is White. The base colour of the package is Orange. 3. The name of the product is printed with White ink on purple base. The name of the product is printed with black ink on white base between two black lines. 4. The letter type is broader and different. The letter type is thinner. 5. The following inscription is made “Non-Hormonal Ayurvedic Medicine”. There is no such inscription. 6. The following warning is given “CAUTION: CAN CAUSE ABORTION. Hence, not to be used by pregnant ladies.” There is no such warning. 7. Bears the defendants distinctive logo. There is no logo at all 8. The name of the defendant No. 2 is printed as Marketing Company in letters and style which are totally different from the defendants product. The name of the manufacturer is mentioned in letter and type totally different from the plaintiffs product. 9. Manufacturing date and batch No. is printed on the package. Manufacturing date and batch No. is as per label. 10. The name on the top and bottom of the package is only in English. The name is both in Hindi & English, 11. “3 Capsules” written on the side in very small letters. “3Capsules” written in Bold & Capital letters in the middle. 12. The name “Menscure” is clearly mentioned on front & back of the package. The name “Mensurol” is only mentioned only in front of the package. INSIDE THE PACKAGE 13. The colour of the capsuls inside the package is “Maroon”. The colour of the capsuls inside the package is “Blue” or “White & Blue”. 14. The polethene inside the package containing the capsuls is plain. The polethene inside the package containing the capsuls is printed with the name of the product and the manufacturing company. 15. The polethene containing the capsuls also contains Silica Gel for absorbing moisture. There is no Silica Gel in the package.

12. It is also stated that the medicine is sold on the prescription of the doctors and therefore there is no question of passing off the defendants' product as that of the plaintiff. The defendants have filed a few documents alongwith the application. The defendants have file their advertisements alongwith the application. The boxes of the defendants and the plaintiff are shown in colour at page 25 of the application.

13. The plaintiff does not claimed to be trading under a trade mark which has been invented by him and the name adopted by the plaintiff is a very common name which is prevailing in the medical field whether it is Ayurvedic System of medicine or Alopathic system of medihine.

14. The Supreme Court of India in J.R Kapoor v. Micronix India. 1994 Supp (3) SCC 215 had occasion to consider the question whether the respondent before the Supreme Court could injunct the appellant from using the trade mark MICROTEL, the logo and the carton. The Supreme Court setting aside the order of the lower court held that the plaintiff/respondent was not entitled to an order of injunction. The Supreme Court had considered the name and also the logo, the Supreme Court observed as follows:

“Thus micro-chip technology being the base of many of the products, the word ‘micro’ has much relevance in describing the products. Further, the word ‘micro’ being descriptive of the micro technology used for production of many electronic goods which daily come to the market, no one can claim monopoly over the use of the said word. Anyone producing any product with the use of micro-chip technology would be justified in using the said word as a prefix to his trade name. What is further, those who are familiar with the use of electronic goods know fully well and are not likely to be misguided or confused merely by, the prefix ‘micro’ in the trade name. Once, therefore, it is held that the word ‘micro’ is a common or general name descriptive of the products which are sold or of the technology by which the products are manufactured, and the users of such products are, therefore, not likely to be misguided or confused by the said word, the only question which has to be prima facie decided at this stage is whether the words ‘teP and ‘nix’ in the trade names of the appellant and the respondent are deceptive for the buyers and users and are likely to misguide or confuse them in purchasing one for the other. According to us, phonetically the words being totally dissimilar are not going to create any such fonfusion in the mind of the users. Secondly, even the visual impression of the said two trade names is different”.

15. I am of the view that the principle laid down by the Supreme Court in the above case governs the instant case. The appearance of two boxes and the trade marks thereon look entirely different and there is no phonetic similarity between the two trade marks. A close study of the carton would also show that they are distinct and different and there is no scope for any confusion. The plaintiff can rely upon the registration only if there is any phonetic similarity.

16. On the facts and circumstances, I am not able to come to the conclusion that the plaintiff has made out a prima facie strong case for the grant of injunction pending the suit. The balance of convenience is also not in favour of the plaintiff.

Therefore, application No. IA 4146/96 filed by the plaintiff under Order XXXIX Rules 1 and 2 for the grant of injunction is dismissed.

IA No. 4611/96 filed by the defendants under Order XXXIX Rule 4 is allowed.

There shall be no orders as to costs.

Post the matter for further proceedings on 17.10.1996

Anjendra Kumar Aggarwal v. Kruzer Herbals

Court Opinion Summary

Factual and Procedural Background

Legal Issues Presented

Arguments of the Parties

Plaintiff's Arguments

Defendants' Arguments

Table of Precedents Cited

Court's Reasoning and Analysis

Holding and Implications

Anjendra Kumar Aggarwal v. Kruzer Herbals

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