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Ayurherbs Pharmaceuticals Pvt. Ltd. v. Three-N-Products Pvt. Ltd. .
Summary of the Legal Opinion (J.M Malik, J.)
Factual and Procedural Background
The Trial Court, by order dated 19 December 2006, accepted an application by the plaintiff/respondent under Order 39 Rules 1 and 2, CPC, and restrained the defendant/appellant from using the name “Ayur” as part of its trade name and from selling products under names which may consist of “Ayur” (for example “Ayurherbs Pharmaceuticals Pvt. Ltd.”) until the suit's pendency. The respondent alleges it has produced and sold cosmetic products under the trademark “Ayur” since 1984. The respondent contends the appellant registered the name “Ayurherbs Pharmaceuticals Pvt. Ltd.”, which is identical and deceptive with the respondent's trademark; after a legal notice failed to elicit compliance, the respondent filed the instant suit. The appellant appealed from the Trial Court's order (FAO No. 120/2007). The Court (J.M Malik, J.) heard the appellant's counsel at the admission stage and ultimately dismissed the appeal in limine and dismissed the associated miscellaneous application (CM No. 4453/2007).
Legal Issues Presented
- Whether the appellant's use of the name “Ayurherbs Pharmaceuticals Pvt. Ltd.” (and related use of “Ayur” as part of its trade name) amounts to passing off or trademark infringement of the respondent's registered trade mark “Ayur”.
- Whether the similarity (visual/phonetic/overall) between “Ayur” and “Ayurherbs” is likely to cause confusion in the mind of the ordinary purchaser, justifying continuation of the interim injunction granted by the Trial Court.
- Whether an injunction should be granted/continued at the interlocutory stage under Order 39 Rules 1 & 2 CPC in light of the prima facie case and potential for deception.
Arguments of the Parties
Appellant's Arguments
- There is no similarity between the trade marks of the appellant and the respondent.
- The appellant produces various medical preparations with distinct and separate names (examples given: Addvig Tablets and Syrup, Adzyme Syrup, Coflow Syrup, Cytomyn Syrup Drops Tablets, Femiwin Syrup, Lithas Syrup, Encure Oil, Thrill Capsules), and in none of its products has it used the word “Ayur”.
- The word “Ayur” is derived from “Ayurveda”, implying a generic/derivative origin rather than proprietary ownership by the respondent.
- The Registrar of Companies approved the name “M/s. Ayurherbs Pharmaceuticals Pvt. Ltd.” after the appellant submitted three proposed names for registration.
- The appellant's products are different from the respondent's goods (medical preparations v. cosmetic products).
Respondent's Arguments
- The respondent has been transacting business under the trademark “Ayur” for cosmetic products (cream, lotion, shampoo, hair care material, etc.) since 1984.
- The appellant's registration and use of the name “Ayurherbs Pharmaceuticals Pvt. Ltd.” is identical and deceptive with the respondent's trade mark “Ayur”.
- The respondent served a legal notice on the appellant to restrain such use; the appellant did not comply, leading to the present suit and the application for interlocutory relief which the Trial Court granted under Order 39 Rules 1 and 2 CPC.
- The respondent relied on several authorities to support the proposition that a plaintiff can claim exclusive right in such a word as its trade mark to exclude others even when the goods marketed by other parties are different.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Pizza Hut International LLC v. Pizza Hut India Pvt. Ltd. | The opinion records that the plaintiff/respondent relied upon this authority for the proposition that a plaintiff can claim exclusive right on a word as its trade mark to the exclusion of all others even though goods marketed by other parties might be totally different. | The Court noted the respondent relied on this authority before the lower Court to support exclusive rights in the word “Ayur”. |
| Three-n-Products Pvt. Ltd. v. Yashwant, 2002 (24) 518 (Delhi | The opinion groups this authority with others for the proposition that a plaintiff can claim exclusive rights in a word as its trade mark even where goods of other parties are different. | The Court recorded that the respondent relied on this authority before the lower Court in support of exclusive rights. |
| Ellora Industries Delhi v. Banarsi Das Goela | This information was not available in the provided opinion. | This information was not available in the provided opinion. |
| K.G Khosla Compressors Ltd. v. Khosla Extradictions Ltd. | This information was not available in the provided opinion. | This information was not available in the provided opinion. |
| Ruston & Hornby Ltd. v. Z. Engineering Co., (1969) 2 SCC 727 : AIR 1970 SC 1649 | Laid down that the appellant should be granted a decree restraining the respondent by a permanent injunction from infringing the plaintiff's trade mark and from using confusingly similar marks; reliefs including injunction, nominal damages and production of materials bearing the infringing mark were granted. | The Court relied on the authority to support granting injunctions and other reliefs where marks are confusingly similar; the judgment's specific reliefs were quoted to illustrate remedies for infringement. |
| Corn Products Refining Co. v. Shangrila Food Products Ltd, AIR 1960 SC 142 | Held that Trade Mark “Gluvita” (biscuits) and “Glucovita” (glucose) were likely to cause confusion. | The Court cited it as authority for the proposition that visually/phonically similar marks used on different goods may still cause confusion and justify relief. |
| Parle Products v. J.P & Co., Mysore, 1972 SC 1359 | Held that “Gluco Biscuits” and “Glucose Biscuits” are deceptively similar and create confusion; the case also laid down the test to determine deceptive similarity. | The Court relied on its formulation of the test for deceptive similarity and cited the case for the principle that overall similarity likely to mislead an ordinary purchaser suffices. |
| Anglo Dutch PC v. Works Pvt. Ltd., AIR 1977 Delhi 41 | Recorded this Court's observation that the Supreme Court (in Corn Products and Amritdhara Pharmacy) laid down the test for comparing two marks, including: first impressions; doctrine of fading memory; overall visual and phonetic similarity; and consideration of who is likely to be deceived and the proper comparison rules. | The Court relied on this authority to apply the enumerated test (first impression, fading memory, overall similarity, etc.) when assessing deceptive similarity between “Ayur” and “Ayurherbs”. |
| Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449 | This information was cited as part of the test for comparing marks (see Anglo Dutch PC v. Works Pvt. Ltd.), but the opinion does not separately state the specific rule beyond that. | The Court incorporated it into the multi-factor test for assessing deceptive similarity (as cited in Anglo Dutch PC v. Works Pvt. Ltd.). |
| Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia, 2004 (28) PTC 121 (SC) | Held that in cases of infringement either of trade mark or copyright, normally an injunction must follow; mere delay is not sufficient to defeat an injunction; injunction necessary if adoption of the mark was prima facie dishonest. | The Court cited this authority to support the principle that an interlocutory injunction is normally appropriate in trademark infringement matters where prima facie case exists. |
| Kedar Nath v. Monga Perfumery & Flour Mills, AIR 1974 Delhi 12 | The impugned carton closely similar or identical (except a small prefix) with the registered trade mark; prefix was not likely to catch the eye and ordinary purchaser would be deceived. | Used to illustrate that minor differences (such as a small prefix) may not prevent deception of an ordinary purchaser. |
| Avis International Ltd. v. Avi Footwear Industries & Am., AIR 1991 Delhi 22 | Plaintiff used ‘Avis’ for readymade garments; defendant used ‘AEVIS’ for footwear; injunction was granted. | Cited as an example where a similar mark led to an injunction even where goods differed, supporting the Court's view on likelihood of confusion. |
| Gold Star Co. Ltd. v. Gold Star Industries, 195 PTR 78 | Held that mere pendency of rectification proceedings would not disentitle the plaintiff from relief sought; filing rectification is not a valid defence to infringement; denial of injunction once infringement established would put a premium on illegal action. | Referenced to reject the idea that parallel/rectification proceedings or related filings should prevent relief for established infringement. |
| Sir Shadi Lal Enterprises Ltd. v. Kesar Enterprises Ltd., 1998 (1) Arb. LR 323 | Observed that a bald statement that a trade mark belongs to a third party without material showing prior use is insufficient to defeat a plaintiff's claim; only the alleged prior user can raise that issue effectively. | Used to support the Court's view that the defendant's unsubstantiated contentions about third-party prior rights could not defeat the respondent's claim. |
| Parle Products (P) Ltd. v. J.P & Co., Mysore (supra) | Stated again that it is enough that the impugned mark bears overall similarity to the registered mark that would likely mislead a person usually dealing with such goods. | The Court cited this to underline that the test is whether overall similarity would likely mislead an ordinary purchaser. |
Court's Reasoning and Analysis
The Court heard the appellant's counsel at the admission stage, who emphasized dissimilarity between the marks and difference in goods. The Court found these arguments unpersuasive. The key analytical steps recorded in the opinion are:
- The Court determined that the appellant's use of the name “Ayur” as part of its trade name amounted to passing off under the provisions of the Trade Marks Act (as stated in the opinion).
- The Court concluded that the suffix “Ayurherbs Pharmaceuticals Pvt. Ltd.” is likely to cause confusion in the mind of the ordinary purchaser.
- The Court fortified its view by reference to numerous precedents which establish (a) the general readiness to grant injunctions in trademark infringement/passing off cases, (b) tests for deceptive similarity (first impression, doctrine of fading memory, overall visual and phonetic similarity, and consideration of the likely deceived class of purchasers), and (c) that minor differences or prefixes may not prevent deception of an ordinary purchaser.
- The Court specifically relied on the principle that an ordinary purchaser is not expected to have perfect recollection or special powers of discrimination, and therefore an overall similarity which is likely to mislead suffices to justify relief.
- Applying these principles to the facts as presented at the admission stage, the Court found no merit in the appeal and dismissed it in limine, treating its observations on merits as tentative for the purpose of the appeal.
Holding and Implications
FAO No. 120/2007 dismissed in limine; CM No. 4453/2007 dismissed.
Implications:
- The Trial Court's interim order restraining the appellant from using the name “Ayur” as part of its trade name and from selling products under names consisting of “Ayur” remains in effect pending final adjudication of the suit.
- The Court's observations on the merits are expressly tentative and limited to the context of this admission-stage appeal; they are not to be construed as final adjudication of the substantive rights of the parties.
- The opinion does not attempt to lay down any novel legal principle beyond applying established tests and authorities for deceptive similarity, passing off and the grant of interlocutory injunctions; no new precedent is asserted to have been created by this order.
Note: All content in this summary is drawn exclusively from the provided opinion and does not add or infer facts beyond that text.
J.M Malik, J.— The Trial Court vide order dated 19th December, 2006, accepted the application moved by the plaintiff/respondent under Order 39 Rules 1 and 2, CPC and restrained the defendant/appellant from vising the name “Ayur” as part of its trade name and further restrained the defendant/appellant from selling its product under the name which may consist of Ayur such as “Ayurherbs Pharmaceuticals Pvt. Ltd.” till the pendency of the suit. Adumbrated, in brief, the facts of the plaintiff's/respondent's case are these. The respondent is transacting the business of production of cosmetic products including cream, lotion, shampoo, hair care material, etc. in the name of “Ayur”. The above said goods are sold under the trademark of “Ayur” right from 1984.
2. The grouse of the respondent is that the appellant has got itself registered in the name of “Ayurherbs Pharmaceuticals Pvt. Ltd.”. The above said name is identical and deceptive to its trade mark “Ayur”. The respondent had served a legal notice upon the appellant to restrain the appellant from using the trade mark “Ayur” but it did not ring the bell. Ultimately, the instant suit was filed.
3. The appellant has enumerated the following defences in its defence. It is pointed out that there is no similarity between the trade marks of the appellant and the respondent. It was further submitted that the appellant has been producing various medical preparations which have distinct and separate names like Addvig Tablets and Syrup, Adzyme Syrup, Tablets Coflow Syrup, Cytomyn Syrup Drops Tablets, Femiwin Syrup, Lithas Syrup, Encure Oil, Thrill Capsules, etc. According to the appellant, the word “Ayur” is derived from Ayurveda and in none of its product it has used the word “Ayur”. It further submitted that the appellant had given three names to Registrar of Companies for Delhi and the Registrar himself approved the name “M/s. Ayurherbs Pharmaceuticals Pvt. Ltd.” Lastly, the products of the appellant are different from the products of the respondents.
4. Before the lower Court the plaintiff/respondent had relied upon the authorities Pizza Hut International LLC v. Pizza Hut India Pvt. Ltd., 2003 (26) PTC 208 (Bombay), Three-n-Products Pvt. Ltd. v. Yashwant, 2002 (24) 518 (Delhi), wherein it was held, that the plaintiff can claim exclusive right on such word as its trade mark to the exclusion of all other even though goods marketed by other parties might be totally different, Ellora Industries Delhi v. Banarsi Das Goela, AIR 1980 Delhi 254 and K.G Khosla Compressors Ltd. v. Khosla Extradictions Ltd., AIR 1986 Delhi 181.
5. I have heard Counsel for the appellant at the admission stage. He pointed out that there is a marked difference between the two trade marks. He vehemently argued that the goods manufactured by the appellant are not similar to those manufactured by the respondent.
6. I see no force in this argument. The user of the name “Ayur” by the appellant as trade name amounts to passing off under the provisions of the Trade Marks Act. The above said suffix, namely, “Ayurherbs Pharmaceuticals Pvt. Ltd.” is likely to cause confusion in the mind of the ordinary purchaser. The above said view is fortified by the following authorities.
7. In Ruston & Hornby Ltd. v. Z. Engineering Co., (1969) 2 SCC 727 : AIR 1970 SC 1649, it was laid down:
“We are accordingly of the opinion that this appeal should be allowed and the appellant should be granted a decree restraining the respondent by a permanent injunction from infringing the plaintiff's trade mark “RUSTON” and from using it in connection with the engines, machinery and accessories manufactured and sold by it under the trade mark of “RUSTAM” or “RUSTAM INDIA”. The apellant is also entitled to an injunction restraining the respondent and its agents from selling or advertising for sale of engines, machinery or accessories under the name of “RUSTAM” or “RUSTAM INDIA”. The appellant is also granted a decree for nominal damages to the extent of Rs. 100. The appellant is further entitled to an order calling upon the respondent to deliver to the appellant price-lists, bills, invoices and other advertising material bearing the mark “RUTAM” or “RUSTAM INDIA”. The appeal is allowed with costs to the above extent.”
8. In Corn Products Refining Co. v. Shangrila Food Products Ltd , AIR 1960 SC 142, it was held that Trade Mark “Gluvita” used with respect to biscuits and trade mark “Glucovita” used with respect to glucose were likely to cause confusion. Similar view was taken in Parle Products v. J.P & Co., Mysore, 1972 SC 1359, wherein it was held that “Gluco Biscuits” and “Glucose Biscuits” are deceptively similar and create confusion.
9. In Anglo Dutch PC v. Works Pvt. Ltd., AIR 1977 Delhi 41, this Court had observed that “the Supreme Court in Corn Products Refining Co. (supra), and Amritdhara Pharmacy v. Satya Deo Gupta , AIR 1963 SC 449, has laid down the test for comparing the two marks as under:
(i) The question whether the two marks are so similar as likely to cause confusion or deceive is one of the first impressions. It is for the Court to decide this question.
(ii) The question has to be approached by applying the doctrine of fading memory, i.e from the point of view of a man of average intelligence having imperfect recollection.
(iii) Whether the overall visual and phonetic similarity of the two marks is likely to deceive such a man or cause confusion that he may make mistake the goods of the defendant for those of the plaintiff.
(iv) The other questions which are:
(a) who are the persons who are likely to be deceived, and
(b) what rules of comparison are to be adopted in judging whether such resemblance exists.”
10. In Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia, 2004 (28) PTC 121 (SC), it was held:
“5. The law on the subject is well settled. In cases of infringement either of Trade Mark or of Copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.”
11. In Kedar Nath v. Monga Perfumery & Flour Mills, AIR 1974 Delhi 12, the facts were that defendant's impugned carton was closely similar or identical (except the prefix “vijay” in small type) with the registered trade mark of the plaintiff's Sudarshan Dhoop. It was held that the impugned trade mark clearly infringed plaintiff's registered trade mark and that the prefix “vijay” was not likely to catch the eye of an ordinary purchaser who would easily be deceived into thinking that he was buying plaintiff's product.
12. In Avis International Ltd. v. Avi Footwear Industries & Am., AIR 1991 Delhi 22, the plaintiff used the trade mark ‘Avis’ for readymade garments. The defendant used the trade mark ‘AEVIS’ for its footwear. Injunction was granted to the plaintiff.
13. In Gold Star Co. Ltd. v. Gold Star Industries, 195 PTR 78, both the companies had trade mark Gold Star, it was held that mere pendency of the rectification proceedings would not disentitle the plaintiff from relief sought, particularly when plaintiff is proprietor of registered trade mark in respect of washing machines. Filing of the rectification proceedings is not a valid defence for infringement of the trade mark. Therefore, the denial of injunction once the infringement of the trade mark is established would amount to putting a premium on the illegal action of the defendant.
14. In Sir Shadi Lal Enterprises Ltd. v. Kesar Enterprises Ltd., 1998 (1) Arb. LR 323, this Court observed that:
“The defendant's objection in resistance to the plaintiff's case, that the plaintiff is by itself a pirator in that trade mark “Chetak” belongs to a Kashmir Party and consequently the plaintiff is not entitled to the relief sought, in my view, is stated to be rejected. Except for a bald statement that the said trade mark belongs to a Kashmir party, the defendant has not brought on record any material to show that the said party has ever used this trade mark. In such a situation it would be a matter between the plaintiff and the stated Kashmir party. Only that party can object to its user by the plaintiff on the ground that it was a prior user of the mark. It is not for the defendant to rake up the issue on his behalf and claim protection on that score.”
15. The Supreme Court in Parle Products (P) Ltd. v. J.P & Co., Mysore (supra), has laid down the test to determine the question when a trade mark is deceptively similar to another. It was observed:
“It would be enough that the impugned mark bears such an overall similarity to the registered mark as would likely to mislead a person usually dealing with or to accept the other it offered to him.”
16. A little later, it was observed:
“After all an ordinary purchaser is not gifted with the powers of a Sherlock Holmes.”
17. In the light of the discussion above, I find no force in the appeal. FAO No. 120/2007 is, therefore, dismissed in limine. It is however made clear that any observation touching the merits of this case is tentative only for the purpose of this appeal and shall not be construed as an expression of final opinion in the matter. CM No. 4453/2007 also stands dismissed.
FAO & CM dismissed.
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