J.D Kapoor, J.— Not only the plaintiff company goes by the name of CATERPILLAR an insect but also manufactures and sells variety of goods under the namesake trademark. Another mark it uses is name of an animal, viz. CAT. It is a company incorporated under the laws of the State of Delaware, United States of America having its principal place of business at 100 NE Adams Street, Peoria, Illinois, 61629, United States of America. It has been using these marks in respect of manufacture for construction, mining, roads, building agriculture industries, footwears and garments etc. since 1904. These trademarks are extensively used in relation to footwear besides in respect of wide range of garments including sweaters, jackets, shirts, T-shirts, headwear, sweatshirts and gloves etc.
2. Plaintiff has through this suit sought permanent injunction against the defendants from infringing or its copyright and also by way of passing off action as the defendants are selling and offering for sale various articles including footwear under the trademarks CAT and CATERPILLAR. They are carrying on their business at non-descript place viz. Ballimaran, Chandni Chowk, Delhi.
3. Admittedly the plaintiff has till date not got its trademark and logo registered either under the Trade Mark and Merchandise Act or Copyright Act of India in respect of footwears though there are Copyright Registrations in respect of goods other than footwears.
4. It is averred that the footwears manufactured by the plaintiff bearing the aforesaid trademarks enjoy substantial reputation and goodwill as they are extensively sold and advertised in the USA, the Middle East, and many South, East Asian countries as well as in other countries all over the world as a result of which there has been a spill over of reputation into India as well amongst the relevant clause of customers.
5. The plaintiff has given the sales figures of the sale of its products including footwears under the said trademarks for 10 years period in terms of USD. These figures pertain to countries other than India.
6. Apart from the allegation of copying the trademarks in entirety including the arrowhead-like device on the letter ‘A’ by the defendant it is also alleged to be using the seal bearing the CAT logo and the legend ‘A’ licensed product of CATERPILLAR Inc. and black and ochre slanted stripes reminiscent as used by the plaintiff and not only the label but the goods of the defendant also carries the copyright statement of the plaintiff.
7. Having been served with the summons of the suit the defendants chose not to contest it and allowed themselves to be proceeded ex parte.
8. In support of relief for permanent injunction against the defendants the plaintiff has filed the affidavit by way of evidence and proved the following documents:
(i) Exhibit P1 is the copy of power of attorney;
(ii) Exhibit P2 is the details of the evolution of the company and the pioneering work of its founder in the book entitled “The Caterpillar Story”.
(iii) Exhibit P3 is the original catalogue setting out the range of footwear bearing the trademarks CAT/CATERPILLAR.
(iv) Exhibit P4 is the extracts of 2000 issue of Fortune 500 downloaded from the internet.
(v) Exhibit P5 is the computer database of its registration.
(vi) Exhibit P6 are the originals of downloaded extracts of the web site ‘www.catfootwear.com’ of the company's licensee.
(vii) Exhibit P7 and Exhibit P7A are company's annual reports for the years 1998-1999 along with five years financial summary.
(viii) Exhibit P8 is the photograph of company's original CATERPILLAR shoe.
(ix) Exhibit P10 are the extracts wherein it is shown that trademarks CAT and CATERPILLAR are also recognised as well known brands in the books ‘Brands, An International Review’ (1990) and “The World's Greatest Brands' (1996);
(x) Exhibit P11, are the decisions of Madras High Court and this Court wherein the Courts took note of the repute of the company's trademarks in respect of articles of clothing and footwear.
(xi) Exhibit P12 is the photograph of defendants' product; and
(xii) Exhibit P13 is the report of Local Commissioner which shows discovery of infringing goods, dyes etc. in the possession of the defendants.
9. There are two propositions that crop up for determination. Firstly whether the trademarks CAT and CATERPILLAR which are the names of the animals can be monopolised by any person and secondly whether the plaintiff is required to prove and show the user of the mark by way of sale of its goods in the country where it seeks action for passing off.
10. The words or marks can broadly be divided into six categories. The first category of words is “generic”. These words have dictionary meaning and are neither specific nor special. These words belong to genus. Generic name is name of genus which names the species. Such words are neither brand names nor have any protection by a registered trade mark. The words which are directly descriptive or quality of goods belong to second category. Such words are adjective expressing quality or attribute of an article or goods. These are neither patented nor proprietary names. These words are in common parlance known as laudatory epithets.
11. Third category is that of directly descriptive words. These words describe the character or the quality or attribute of the goods or articles but without an element of laudation. The words of second and third category if used as a mark acquire secondary meaning on account of constant and long user. Fourth category is of ‘indirectly descriptive words’. These words are those which have indirect or remote reference to the nature or quality of goods. The element of directness is wanting in these words. Such words can be used a mark or trademark irrespective of the fact whether they acquire secondary meaning or not.
12. Words which are fanciful or arbitrarily applied to goods and do not have either direct or remote reference to the nature or quality of goods fall within fifth category. The words belonging to categories two, three and five if used in relation to a particular goods can be protected if attempt is made to pass them off by way of deceptive similarity either in look or sound.
13. The last category is of “invented words”. No meaning is attached to these words. These are composed by imagination and are designed for the first time. These words demonstrate or display effort or skill of imagination, faculty or power of inventing. These words are invented in relation to a particular goods. Such words are inherently distinctive and therefore have to be protected in any case. These words are designed or contrived through imagination for the first time wherein ability as well as flight or effort of imagination is displayed.
14. As regards marks or trademarks falling within categories 2 to 5 namely ‘directly descriptive words having laudatory epithets, ‘directly descriptive words without laudatory epithets, indirectly descriptive words and words not being descriptive have also to be protected as some of them over a period acquire secondary meaning while others due to prior and consistent user denote source and origin and if any attempt is made to either mutilate them or simulate them such an attempt amounts to passing off as it demonstrates element of malafideness for cashing upon the reputation and goodwill of such marks. Likelihood of confusion as to source or origin of a particular goods sold under a particular trade mark broadly amounts to an act of passing off.
15. While protecting these marks defence that goods are of better quality or superior nature and therefore there is no danger to their reputation and goodwill is not available to the subsequent user. Another important aspect for protecting such marks or trademarks is to avoid weakening or dilution of the mark. If the subsequent user adopts the similar or near similar mark even in respect of same goods it would not only decrease the value of the trademark of a prior user but ultimately may result in dilution of the mark itself. Such an invasion of the subsequent user is nothing short of commercial invasion. Trademark is like a property and no unauthorised person can be permitted to commit trespass. Such kind of dilution or weakening of the trademark need not, therefore, be accompanied with an element of confusion.
16. So far as doctrine of dilution is concerned it is an independent and distinct doctrine. The underlying object of this doctrine is that there is presumption that the relevant customers start associating the mark or trademark with a new and different source. It results in smearing or partially affecting the descriptive link between the mark of the prior user and its goods. In other words the link between the mark and the goods is blurred. It amounts to not only reducing the force or value of the trade mark but also it gradually tapers the commercial value of the marks slice by slice., Such kind of dilution is not a fair practice that is expected in trade and commerce.
17. Another kind of dilution is by way of sullying or impairing distinctive quality of a trade mark of a senior user. This in common parlance is known as dilution by tarnishment. The object of such an invasion is to tarnish, degrade or dilute the distinctive quality of a mark. For example if an attempt is made to communicate a message that a particular product of a senior user is injurious to health or is inferior in quality some epithet is used in the advertisement. For example to convey the message that Coca Cola is bad for health, advertisement campaign saying Drink Cocaine in the same font and stylized script as used by the senior user, junior user is guilty of dilution. The act of dilution of mark by way of tarnishment is always with regard to well recognised, strong and famous marks, it should have affect to diminish or weaken the strength and identification value of the mark. There is no need to establish likelihood of confusion as to source, affiliation and connection. This is so as some potential purchasers may be confused as to source or affiliation while others may not.
18. Another important question that arises with regard to doctrine of dilution is whether this doctrine can be pressed into service where the case is one of competitive or closely similar goods or services. One view is that dilution theory is restricted to its original purpose i.e where marks are very similar but the products are so different that there is no likelihood of confusion of source or connection. Another view is that dilution theory is applicable even where parties are competitive. The view holding field is that the concept of dilution does not substitute the rule relating to likelihood of confusion when the parties happened to be competitors. Where dispute relates to difference in wording or format of the marks, the dilution theory becomes inapplicable. Dilution of a mark can also flow from the unauthorised use.
19. Let us examine the case of the plaintiff on the touchstone of aforesaid principles and theories governing grant or refusal of injunction against the use of trade mark which has been in prior and long use and has established transborder reputation, goodwill and strength.
20. Plaintiff's trademarks CATERPILLAR and CAT are registered in 175 countries all over the world. Apart from several other goods including heavy machineries, footwear and clothing also under the trademarks CAT and ATERPILLAR. These trademarks are represented in a distinctive stylized manner therein the horizontal bar of the letter ‘A’ in ‘CAT’ is depicted with the tip of an arrowhead like device cutting it and the rest of the said device blotting out the base the letter ‘A’. Another character associated with this mark is the depiction of the arrowhead device in a bright ochre colour and slanting stripes in alternating bright ochre and block colours accompanying the marks. Every licensed product of the plaintiff carries a circular seal bearing the CAT logo within an inner circle and the statement “A Licensed Product of Caterpillar Inc.” on the tongue. So far as footwear are concerned, the catchphrase is ‘Walking Machine’. Various kinds of machines manufactured by the plaintiff like Internal Combustion engines and diesel engines, tractors, tractor engines and equipment and fittings etc. are sold under the trademark AT. Tractors, tractor engines and equipments are sold under the trademark ATERPILLAR.
21. Defendants 1 and 2 are having a shop in Ballimaran. Trademarks CAT and ATERPILLAR have been adopted by the defendants in respect of footwear i.e shoes. They have copied both the trademarks in entirety including arrowhead gain label on defendant's product is identical to the label apparent on the trademarks CAT and CATERPILLAR.
22. As is apparent by copying and reproducing plaintiff's distinctive trademark, label, colour scheme and arrangement of features and get-up, defendants have Tinged copyright of the plaintiff. The only object of the defendants is to create deception amongst the trade and public by clearly misrepresenting that their goods are either licensed by the plaintiff or they are passing off these goods as the goods the plaintiff. Since the goods are identical it has immense effect of diluting the identification value of plaintiff's mark. Such dilution is accompanied with confusion to source, affiliation or connection. Unauthorised use of mark on the goods in question which are competiting itself results in dilution. Potential purchasers are bound to be confused as to source, sponsorship, connection or licence. It is nothing but poaching upon plaintiff's goodwill, reputation and strong trade name as the plintiff has been engaged in the business on footwear for long many years and has wide spread global reputation. It has earned reputation and goodwill by spending considerable and substantial amount of money to make its trademark and name famous.
23. There is no doubt that mark of the plaintiff has become synonym for quality of high degree and adoption of its name along with distinctive and unique characteristics of style by defendants projects propensity to trade or cash upon goodwill and reputation of the plaintiff's trade mark. It is nothing but piracy of trade name. Plaintiff has a right to protect its mark, reputation, goodwill and risk of dilution involved in the act of passing off from the unscrupulous designs of the defendants.
24. Now comes the question whether the plaintiff is required to prove and show the user of the mark by way of sale of its goods in the country where it seeks action for passing off. I have taken a consistent view lately in Jolen Inc. v. Doctor and Company, Suit No. 1398/1993, decided on 6.5.2002 which I deem necessary to reproduce to avoid repetition. The view taken by me is as under:
“It is not necessary that the association of the plaintiff's mark with his goods should be known in the countries other than its origin or to every person in the area where it is known best. Mere advertisement in other countries is sufficient if the trade mark has established its reputation and goodwill in the country of its origin and countries where it is registered.
In modern world, advertisements in the newspapers travel beyond the country where party is engaged in business through overseas editions or otherwise. Even if it is assumed that such advertisements or mark do not travel beyond the borders of the countries where the plaintiff has the business still it has a right to protect its reputation and goodwill. It is more so where the trade name has been pirated in totality and not by way of having deceptive or confusing similarity. We are living in a would where there is enormous mobility. Well travelled Indians and tourists cannot remain unaware of international commodities. Reputation always travels faster than men. Whenever persons travelling abroad for business or pleasure of any other purpose viz. study or temporary postings come across an article of a tradename of international reputation they are bound to be confused as to the source and quality if they happen to see that commodity in their country where there is no physical market. Mere likelihood of confusion is sufficient.
In N.R Dongre v. Whirlpool Corporation, 1996 PTC (16), Supreme Court has taken the view that even advertisement of trade mark without existence of goods in the market is also to be considered as use of the trade marks.”
25. In the result, suit is decreed by way of an order of permanent injunction restraining the defendants, their partners or proprietor as the case may be, their officers, servants, agents, distributors, stockists and representatives from manufacturing and selling and offering for sale, advertising, directly or indirectly dealing in and from in any manner passing off or enabling others to pass off defendants footwear as and for the plaintiff's footwear by use of the trademarks CAT/CATERPILLAR in a plain or stylized form and any of the marks/indicia set out in paragraph 11 or any marks deceptively similar thereto. Defendants, their partners or proprietor as the case may be, their officers, servants, agents, distributors, stockists and representatives from reproducing, printing or publishing any label/packaging which is a colourable imitation or substantial reproduction of the plaintiff's label, specimen. However, prayers (c), (d) and (e) have not been pressed and given up by the plaintiff.
Suit decreed.
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