Dr. M.K Sharma, J.— This order shall dispose of the application filed by the plaintiff and registered as I.A.No 11401/1997 under order 39, rules 1 & 2 of the code of civil procedure praying for a temporary injunction against the defendants from infringing or reproducing copies of the artistic words in respect of which the plaintiffs are the owners and also for restraining the defendants from in any manner manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in goods under the trade mark ‘RELAXO’ or any other trade mark which may be deceptively similar to the plaintiff's trade mark.
2. The plaintiffs are engaged in the manufacture of various kinds of footwears. The plaintiff No. 1 is manufacturing its products and plaintiff No. 2 is marketing, selling and making publicity of footwears manufactured by plaintiff No. 1. The plaintiff No. 1 adopted the trade mark ‘RELAXO’ in relation to their various kinds of footwears. According to the plaintiffs RELAXO is not a dictionary word and the same is an invented word and the plaintiffs also adopted the word RELAXO in an artistic manner and in a unique, distinctive and novel style. The artistic works in respect of the word RELAXO adopted by the plaintiffs were registered under the Copyright Act and the said artistic works are being used by the plaintiffs in relation to their footwear products. The trade mark ‘RELAXO’ is also registered in respect of the footwears and the plaintiff No. 1 is entered in the register of trade marks as subsequent proprietor of the two trade marks ‘RELAXO’ in respect of rubber chappals and straps of rubber chappals, shoes, chappals, sandals and other footwears. According to the plaintiffs due to excellent quality of their products the said trade mark ‘RELAXO’ and the artistic works RELAXO have acquired in all the markets of the country a valuable reputation and intending purchasers identify and recognise the products of the plaintiff by the said mark ‘RELAXO’ and the said artistic works. The plaintiffs came to know that the defendant No. 1 is manufacturing cables and PVC pipes and it is also using the plaintiff's invented words RELAXO in the same style of writing in which the plaintiffs have copyright registration. The plaintiffs have also learnt that the defendant No. 2 is the distributor of defendant No. 1 and is distributing, selling and offering for sale cables and PVC pipes and printing copies of the artistic works in which the plaintiffs have copyright. It is also alleged that the defendants have not only copied the plaintiff's trade mark ‘RELAXO’ but has also copied the style of writing the words RELAXO, and also have been using the trade mark ‘RELAXO’ in an identical style as that of the plaintiffs. Accordingly the present suit has been instituted by the plaintiffs for the aforesaid reliefs.
3. This Court by order dated 19.9.1997 while issuing summons in the suit, issued an ex parte ad interim injunction restraining the defendants, its proprietors, partners, servants, agents, representatives, dealers from dealing in any goods under the trade mark ‘RELAXO’ or any other trade mark which may be identical or deceptively similar to the plaintiff's trade mark ‘RELAXO’.
4. The defendants entered appearance in the suit and have filed a reply to the injunction application filed by the plaintiff. The defendants have stated in paragraph 12 of the written statement that the said defendants are ready to undertake to amend the mark by using the word RELAXO in different style. It is also stated that the” defendants are in the market for the last more than 10 years and have been using the trade mark ‘RELAXO’ in respect of the wires and cables (electric) in Clause 9 and PVC pipes. The defendants stated that the impugned trade mark ‘RELAXO’ is registered in respect of only shoes, chappals, sandals, sleepers, and other footwears and thus the goods manufactured and sold by the plaintiffs and the goods manufactured and sold by the defendants are entirely different and therefore, no injunction could be granted in favour of the plaintiffs and against the defendants restraining the defendants from using the trade mark ‘RELAXO’ in respect of wires, cables and PVG pipes.
5. Mr. Bhale Rao, learned Counsel appearing for the plaintiffs submitted that the trade name of the plaintiffs ‘RELAXO’ is being used by them since 1968 for their various kinds of footwears and same is a registered trade mark and has acquired reputation and goodwill. Counsel submitted that even though the goods of the plaintiffs and the defendants are dissimilar but in such cases also principle of passing off is applicable as was done in the cases of Benz, Bata & Bata Foam, Cat and Caterpillar and Annapurna. In support of his contention he relied upon M. Mahendra Shah of Annapurna Enterprises v. Hindustan Lever Ltd., 1997 (2) Arb. L.R 118, Andhra Pradesh High Court held that the principle of passing off could be applied even to dissimilar goods or goods used for different purposes. The said decision relied upon the decision given by this Court in Daimler Benz Aktiegesselschaft v. Hydro Hindustan, AIR 1994 Delhi 239 and the decision in Bata India Ltd. v. Pyare Lal & Co., AIR 1985 Allahabad 242. The learned Counsel also relied upon the decision in Caterpillar Inc. v. Jorange, 1998 PTC (18)(DB) page 31, wherein the Madras High Court applied the principle of passing off to dissimilar goods. In the said case the goods of the plaintiffs were earth moving equipments, construction and road building equipment whereas the defendant's goods were articles of clothings including Jeans. Counsel also relied upon 7'O’ Clock case titled Kamal Trading Co. v. Gillette U.K Limited, 1998 IPLR 135 wherein the goods of the rival parties were ‘Razor Blades’ as against ‘Tooth Brushes’. Counsel also referred to the case of M/S. Montari Overseas Limited… v. M/S. Montari Industries Limited…S, (1996 PTC (16) page 142, wherein the goods of the plaintiffs were ‘Chemicals, Agro-Chemicals, Paints, Cosmetics, Pharmaceuticals, leather articles, tea, coffee, clothing, carpets, inks and food articles' whereas the defendant's goods were ‘worsted yarn, blends, acrylic and hosiery. Counsel for the plaintiffs also relied upon the case of USHA Group v. R.K.K Rai Group, Industrial Property Law Reporter (IPLR 1997 April, page 181) wherein the goods of the plaintiffs were household products like sewing machines, electric fans, etc. whereas the defendant's goods were engineering, iron, electrical and heavy industries. In Ceat Tyres Of India Ltd.…Plaintiff; v. Jai Industrial Services…, 1996 PTC (16) 720, injunction was granted by this Court in respect of plaintiff's goods which were tyres for vehicles and the defendant's goods were V Belts and Fan Belts. In Rolce Royce PLC v. R.R Motors Pvt. Ltd., 1997 PTC (17) page 60, the plaintiff's goods were motor cars and motor chassis and internal combustion engines for land vehicles and parts thereof whereas the defendant's business was running of motor car repair workshop or garage under the letters ‘R.R’. Counsel also placed reliance on Aktiebolaget Volvo v. Volvo Steels Limited, 1989 PTC (18)(DB) page 47, wherein the plaintiff's goods were cars, trucks, buses, marine engines, aircraft engines, construction industry equipments whereas the defendant's goods were mild steel ingots. In all the aforesaid cases, Counsel for the plaintiff submitted that although the goods or activities of the rival parties were dissimilar yet the injunctions were granted.
6. Mr. Aggarwal appearing for the defendants however, submitted that the nature of the business of the two competing words in the present suit being entirely different and having no connection of any kind whatsoever and the trade mark being not an invented word no passing off action could be taken against the defendants using ‘RELAXO’ as its trade mark for wires, cables and PVC Pipes. Counsel further submitted that in an action for passing off an injunction could be granted only when there was some kind of trading connection between the two competing goods. Counsel also submitted that the trade marks which are absolutely new, novel, distinctive and invented works like KODAK, YERA, BENZ, CASTROL etc. In such cases alone an injunction could be granted but the word ‘RELAXO’ cannot be called an invented word and is only to be described as a descriptive word and as such no such injunction could be granted. In order to substantiate his submissions the learned Counsel placed reliance on a passage from Law of Trade Marks and Passing Off by P. Narayanan and also in the cases of INSTEA, TRACKGRIP AND VAPO RUB cases (AIR 1978 Madras 336, 1942 RPC 134, 1951 RPC 108 respectively). It was submitted that the trade mark ‘RELAXO’ is not an invented word because only by trifling addition of ‘O’ to the word RELAX it will not make the word ‘RELAXO’ an invented word. Counsel also relied upon the decision of the Supreme Court in London Rubber Co. Ltd. v. Durex Products Incorporated, AIR 1963 SC 1882; White Horse Distillers Ltd. v. The Upper Doab Sugar Mills Ltd., 1984 ALR page 97; Rustom Ali Molla v. Bata Shoe Co. Ltd., AIR 1957 Calcutta 120; Vishnudas trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd., 1996 PTC 512. Counsel also placed reliance on a decision of the Bombay High Court in Sony Kabushiki Kaisha v. Shamrao Markar, 1986 IPLR 405 and the decision of the Supreme Court in 1996 PTC 512. In the aforesaid decision the Supreme Court came to the conclusion that cigarettes on one hand and Zarda on the other are different goods and both parties are entitled to use the same trade mark ‘CHARMINAR’. In the case before Bombay High Court it was held that the word ‘SONY’ for nail polish and ‘SONY’ for electronic goods are not likely to cause confusion, inspite of the fact that the plaintiff was a multinational giant having worldwide reputation. In Bata case (supra) the Division Bench of Calcutta High Court allowed the defendant in an action for passing off to use the trade mark ‘BATA’ in respect of lungis because the goods of the plaintiff and the goods of the defendant are entirely different.
7. In the light of the aforesaid decisions and the submissions of the learned Counsel for the parties let me consider whether the plaintiffs are entitled to an injunction as sought for. The defendants in their written statement have categorically stated that the defendants are ready to undertake to amend the mark by using the word ‘RELAXO’ in different style. Mr. Aggarwal appearing for the defendants also stated during the course of arguments that the defendants stand by their commitment and would amend the mark by using the word ‘RELAXO’ in different style; Therefore, in view of the aforesaid commitment and the undertaking on behalf of the defendants I am inclined to issue an injunction in favour of the plaintiff and against the defendants relating to the artistic works ‘RELAXO’ of the plaintiff.
8. Now coming to the issue of infringement and/or passing off, it is admitted case of the parties that the trade mark ‘RELAXO’ is being used by the plaintiffs in respect of different varieties of footwears whereas the defendants are using the same trade mark in respect of wires, cables and PVC pipes. The plaintiffs are registered owners of the trade mark ‘RELAXO’ in respect of only footwears as is apparent from the registration certificate placed on record. In that view of the matter provisions of Section 30(1) becomes applicable which provides that the use of the registered mark by any person in any manner in any place or in any circumstance not covered by the scope of registration, does not constitute infringement. Thus the present case cannot be a case of infringement of the trade mark of the plaintiffs and that at the most it could be a case of passing off the goods of the defendants as that of the plaintiffs, which require consideration. Some of the decisions relied upon by the plaintiffs do indicate that even if there is no grading connection and the goods are distinct and separate, action for passing off is maintainable. It is however, to be noted that almost all the cases relied upon by the Counsel appearing for the plaintiffs relate to cases where the impugned trade mark is an invented word and the two companies are engaged in almost similar field of activity. In order to ascertain as to whether the competing trade marks are deceptively similar the Court has to compare the same for the purpose of finding out whether there is a general similarity which may invariably deceive the unwary purchasers. When two companies are engaged in different fields and the goods are not sold from the same counter and in the same shape there is generally no likelihood of causing deception or confusion or mistake in the minds of the customers. The customers of the two goods are distinct and dissimilar and the two competing goods are completely different.
9. Some of the decisions indicated that even if the goods are dissimilar in nature still an action for passing off is maintainable but there also the impugned trade mark has to be an invented word. In CALTEX, BATA-BATA FOAM, BENZ cases the Courts found that the said words are invented words and therefore, in such matters injunction was granted by the Courts although goods marketed by the plaintiff and the defendants were absolutely different and distinct.
10. Therefore, I am required to examine in the present case whether the word ‘RELAXO’ is an invented word. The word ‘RELAXO’ is being used by the plaintiff for its various types of footwears. Admittedly, the word ‘relaxo’ is derived from the word ‘relax’ and to the said word ‘relax’ a suitable vowel ‘o’ has been added to constitute a pronounceable word. Otherwise it could also be that to the word ‘relax’ another word namely ‘on’ is used deleting ‘n’ from the word ‘on’. Since the word ‘RELAXO’ is being used as a trade mark for the footwears marketed by the plaintiffs the intention of having the said mark could be to denote or make the customers aware that a person wearing the footwears of the plaintiffs would feel relaxed or the customers could relax on the footwear being marketed by the plaintiffs. In the latter case the plaintiffs intended to take two dictionary words, join them together and then drop the letter ‘n’ so as to make it one single word, and also to make it distinct from the originating word. In the earlier case it is a case of using a word, adding thereto a suitable vowel to constitute a pronounceable word. The word ‘relax’ is a dictionary word and is descriptive in nature. ‘RELAXON’ or ‘RELAXO’ are also descriptive words both ‘relax’ and ‘on’ signifying the nature and character of the article. The mark is indicative and descriptive of the thing intended. Examined thus I am of the opinion that the word ‘RELAXO’ is prima facie purely descriptive.
11. Now question to be examined is whether a word could be said to be invented when with some trifling addition or very trifling variations the word is adopted as a trade mark. My attention was also drawn to a decision in Solio case, (1898) 15 RPC 476. In the said case Lord Herschell observed thus—
“I do not think the combination of two English words is an invented word, even though the combination may not have been in use before, nor do I think that a mere variation of the orthography or termination of a word would be sufficient to constitute an invented word, if to the eye or ear the same idea would be conveyed as by the word in its ordinary form.”
12. In the same case Lord Shand stated at page 487 thus:
“The employment of a word in such use, with a diminutive or a short and meaningless syllable added to it, or a mere combination of two known words, would not be an ‘invented’ word, and a word would not be ‘invented’ which, with some trifling addition or very trifling variation, still leaves the word one which is well known or in ordinary use, and which would be quite understood as intended to convey the meaning of such a word.”
13. In County Chemicals Appln., (1949) 66 RPC 268 at 270 it was held that combining forms, like ‘Mega’ or ‘Cyclo’, which appear in dictionaries as such and also in combination with other words into which they carry their meanings are not considered invented words. In Nestle's v. Thankaraja, AIR 1978 Madras 336 at 339 the Madras High Court held that the invention may be in the adoption of a foreign word; it may consist in an abbreviation; it may be an anagram; it may be formed out of a combination of two or more words, as they are, or in any clipped or altered form; it may introduce one or two meaningless syllables or letters in between words. The decision finally held that in short an invented word must be different from any word in common speech, and the difference must be substantial and not skin deep, merely.
14. When a mark is used consisting of a purely descriptive word or words it cannot be said that a case of passing off has been made out. Words ‘relaxon’ or ‘relax’ adding thereto a vowel ‘o’ are dictionary words and more or less purely descriptive in nature. Thus the said words cannot be said to be invented by the plaintiffs. Since the nature of trading and the goods dealt with by the plaintiffs and the defendants are distinct and separate having no connection with each other at all and since the trade mark of the plaintiffs is held to be not an invented word it cannot be said that a case of passing off has been made out by the plaintiffs on the user of the defendants of the same trade mark in relation to its goods of wires, cables and PVC pipes. Even otherwise the defendants have placed on record the documents indicating the defendants dealing with the mark ‘RELAXO’ for last about 8 years, the bills and the receipts placed on record indicate that the aforesaid mark is being used atleast from 25.12.1993 and the suit was filed in the year 1997. Thus there was also delay on the part of the plaintiffs in approaching this Court. The plaintiff has to bring an action of passing off immediately after the user of the same trade mark by the defendants. Thus on consideration of the entire facts and circumstances the prayer of the plaintiffs for temporary injunction stands refused and it is held that the defendants cannot be restrained from using the trade mark ‘RELAXO’ in respect of its goods in the nature of wires, cables and PVC pipes. The ad interim injunction granted by this Court stands vacated to the aforesaid extent.
15. In the result, a temporary injunction is granted in favour of the plaintiffs and against the defendants restraining the defendants from using the artistic work of the plaintiffs ‘RELAXO’ and it is directed that the defendants would amend the mark by using the word ‘RELAXO’ in different style. However, the prayer for the plaintiffs for temporary injunction in respect of the trade mark ‘RELAXO’ stands rejected and no injunction is granted in favour of the plaintiffs and against the defendants restraining them from using the aforesaid trade mark ‘RELAXO’ in respect of wires, cables and PVC pipes. The ad interim injunction granted by this Court to the aforesaid effect stands vacated. It is made clear that whatever opinion and views have been expressed herein are all tentative and prima facie opinions and shall be subject to final decision in the suit.
16. In the light of the aforesaid observations and directions the application stands finally disposed of.
17. List this matter on 18th February, 1999 further directions in the suit.
I.A disposed of.
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