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1. This is an application under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 (hereinafter referred to as the "CPC") whereby the plaintiffs seeking an interim injunction restraining the defendant from using the impugned trade mark WHIP TOPPING which, according to the plaintiffs, is deceptively similar to their registered trade mark RICH'S WHIP TOPPING or any other deceptive variations thereof upon or in relation to their goods or business. The plaintiffs have also sought an interim injunction restraining the defendant from passing off and infringement of copyright by restraining the defendant from using the identical trade dress, similar packaging, colour scheme, instructions etc in respect of its WHIP TOPPING product.
2. It has been contended that the plaintiff No. 1 is one of the world's premium food companies with more than 2300 products sold in over 75 countries. The plaintiff No. 2 is a company incorporated in India under the Companies Act, 1956 and is a joint venture concern for making the plaintiff No. 1's products, including non-dairy products, available in the Indian market. According to the plaintiffs, the plaintiff No. 1 is a family owned business founded in 1945 by Robert E Rich, Sr., founder and chairman of the Board. The said Mr. Robert E Rich Sr., directed a laboratory team to search for a vegetable based replacement for whipped cream derived from a new source - the soya bean. While still in the development stage, Rich discovered that the soya bean substance could be frozen, thawed and whipped. According to the plaintiffs, the new product was immediately hailed as the miracle cream from soya bean and it revolutionised food processing and opened up a new world of non-dairy products to the growing frozen food industry. The miracle cream was called Rich's Whip Topping (non-dairy topping) and later served as the springboard for a series of other non-dairy products including Rich's Bettercreme Icing and Filling, Rich's On Top non-dairy dessert topping. Page 1646 According to the plaintiffs the mark RICH'S WHIP TOPPING and WHIP TOPPING are registered and/or pending registration in several countries of the world. Insofar as India is concerned, RICH'S WHIP TOPPING is a duly registered trade mark of the plaintiffs under No. 561884 from November 13, 1991 in Class 30 for "non-dairy toppings, icings, fillings and other goods in Class 30".
3. The plaintiffs have also indicated that in India itself there has been substantial sale of its products - RICH'S WHIP TOPPING. In 1978-79 the sales were to the extent of Rs. 2,17,71,722/-. In 1998-99 the sales were Rs. 3,97,68,704. The sales have continued to grow and for the year 2002-2003 the figure was Rs. 15,67,06,584/-.
4. It is alleged by the plaintiffs that sometime in April, 2003, it came to the attention of the plaintiffs that the defendant was selling a product which had various similarities with the product of the plaintiffs. The defendant was using the trademark WHIP TOPPING even though it had been marked as having a trademark significance in the plaintiffs' product. The plaintiffs also contended that the defendant used an identical red, blue and white colour scheme so as to render both, the plaintiffs' products and the defendant's products, identical. Even the instructions given on the plaintiffs' packaging has allegedly been copied verbatim by the defendant. According to the plaintiffs, the similarities of the packaging is obvious to the naked eye. The case of the plaintiffs is that as the product looked similar to each other, it was obvious that the defendant was not only infringing the trademark of the plaintiff but also trying to pass off its product as that of the plaintiffs. According to the plaintiffs, the defendant was fully aware of the plaintiff's' worldwide goodwill and reputation with regard to RICH'S WHIP TOPPING for over 50 years and wanted to derive unjust benefit there from. The defendant product is marketed under the trademark BELLS WHIP TOPPING. It is pertinent to note that the defendant had also filed a suit No. 53/2003 wherein it has claimed that it had filed trademark applications for the said trademark BELLS WHIP TOPPING.
5. Mr Sanjay Jain, the learned Counsel for the plaintiffs submitted that while considering this application under Order 39 Rules 1 and 2, because the trademark is registered in favor of the plaintiff, prima facie, the case has to be assumed in its favor. He submitted that the trademark of the plaintiffs RICH'S WHIP TOPPING is registered since 1991 and that the defendant applied for registration of its trademark BELLS WHIP only after receiving notice from the plaintiffs and the registration is still pending. For the proposition that, prima facie, the case is assumed in favor of the registered trademark, Mr. Sanjay Jain referred to the following decisions:
1. Goyal Gramodyog Sansthan and Ors. v. Seth Brothers and Anr. (2003) 27 PTC 142 (Del.)
2. Midas Hygiene Industries P. Ltd and Anr. V Sudhir Bhatia and Ors. 2004 (28) PTC 121 (SC)
3. Metro Playing Cards Co. v. Wazir Chand AIR 1972 Del 248
4. Wackhaedt v. Aristo Pharmaceuticals Ltd. (1999) 2 Arb. LR 258 Page 1647
6. Mr Sanjay Jain next contended that while comparing trademarks, the trademarks, as a whole, have to be seen. According to him, the trademark in the present case, is a package of the word trademark RICH'S WHIP TOPPING Along with the colour scheme, lettering style, design, instructions, orientation and configuration of packaging. He submitted that if the product with a deceptively similar word mark, packaging and get up for same class of purchaser trading through same channel is introduced, it would then amount to passing off even if only a few essential features are common in the word mark He submitted that side by side comparison of the two marks is not essential. For this proposition, he relied upon the following decisions:
1. Atlas Cycles (Haryana) Ltd v. Atlas Products Pvt. Ltd and Anr. .
2. Parle Products (P) Ltd. v. J.P. & Co. .
3. Hindustan Lever Limited, Bombay v. Nirma Private Ltd. .
7. Mr. Jain further submitted that admitted prior user tilts the balance of convenience in favor of the plaintiffs and, according to him, public policy also requires protection by way of grant of an order of injunction. In this context, he reiterated that the plaintiff No. 1 had been using the trademark in relation to its product since 1945 and even in India since 1991. On the other hand, the defendant's alleged user is from 1995. Therefore, according to him, the plaintiffs' user is the prior user and this in itself is sufficient to tilt the balance of convenience in their favor. Mr. Jain relied upon the following decisions:
1. Glaxo Synthetic Pharma v. Naval Kishore Goyal 2004 (29) PTC 421.
2. Laxmikant V Patel v. Chetanbhat Shah (2002) 24 PTC 1 (SC).
8. The learned Counsel for the defendant submitted that the plaintiffs' registration under No. 561884 in Class 30 in respect of RICH'S WHIP TOPPING is subject to the following disclaimer:
Registration of this trademark shall give no right to the exclusive use of the letter "S" and word "TOPPING"
9. He submitted that it was necessary for the plaintiffs to have disclosed the factum of this disclaimer and the non-disclosure of such a material fact would make the suit liable for dismissal. For this proposition, he placed reliance on a decision in the case of Om Prakash v. Praveen Kumar 2000 PTC 326. Continuing on the question of disclaimer, the learned Counsel for the defendant submitted that the disclaimers are put because they are of non-distinctive character or serve no trademark function or the same have become common to the trade. It was further submitted that the plaintiffs had accepted the disclaimer and are bound by it.
10. He also contended that the trademark and the goods for which the trademark is employed are two different things. It was contended that the trademark is used on the goods to identify their source and origin. Generally Page 1648 speaking, the mark must be something different from the thing marked. It was further contended that the expression WHIP TOPPING is the name of the product itself. It is generic term. It is descriptive of the product i.e., non-dairy toppings, icing and fillings, imitation dairy products commonly used for desserts, baked and frozen products etc. According to the defendant since the expression WHIP TOPPING is descriptive of the product, no person can claim exclusivity over the same. The trademark over which the plaintiffs could claim exclusivity are RICH'S and RICH'S WHIP TOPPING. It was contended that, insofar as the defendant was concerned, its trademark was BELLS and BELLS WHIP TOPPING as a whole. According to the defendant, there could be no exclusivity in respect of WHIP TOPPING. The learned Counsel for the defendant submitted that WHIP TOPPING is disclaimed in the plaintiff No. 1's registration in USA itself, where the plaintiff No. 1 is incorporated. The learned Counsel for the defendant also submitted that under the relevant Canadian legislation, WHIP TOPPING is described as a product. He also submitted that the trade and industry at large use WHIP TOPPING as a product. He referred to some instances of the same which are at pages 33-56 of the defendant's documents.
11. The learned Counsel for the defendant further submitted that even the plaintiffs were using the expression WHIP TOPPING in a descriptive manner. The trademark RICH'S WHIP TOPPING clearly refers to the WHIP TOPPING manufactured by Rich as distinct from the defendant's product which is BELLS WHIP TOPPING or, in other words, WHIP TOPPING manufactured by BELLS. It was further submitted that the essential feature of the trademark of the plaintiffs was RICH'S and that of the defendant was BELLS and the two words are entirely different. The learned Counsel for the defendant referred to various decisions where injunction has been declined due to descriptive words or lack of infringement or passing off or use of a word common to the trade. In J.R Kapoor v. Micronix India. 1994 Supp (3) SCC 215, the trademarks that were considered were 'Microtel' and 'Micronics' in connection with the use in Micro-chip Technology. Similarly in SBL Ltd. v. Himalaya Drug Co. 1997 PTC (17) 540 (Delhi-DB), the trademarks that were considered were 'Liv 52' and 'Liv-T' which were both medicines for the liver. In Gillette Co. and Ors. v. A.K. Stationery and Ors. 2001 PTC 513 (Delhi), 'Flexgrip' and 'Ekco Flexgrip' were considered in respect of writing instruments. In Panacea Biotec Ltd. v. Recon Ltd. 1996 PTC (16) 561 (Delhi), the marks were 'Nimulid' and 'Remulid' both of which were medicines which were derived from the basic drug Nimesulide. In Rupee Gains Tele-Times Private Ltd. v. Rupee Times 1995 PTC (15) 384, the trademarks that were considered were 'Rupee Time' and 'Rupee Gain'. Both of which were used in respect of Journals and newspapers. Finally in Competition Review (P) Ltd. v. N.N. Ojha 1996 PTC (16) 124, the trademarks that were considered were 'Competition Review' and 'Competition (Success) Review', both of which were employed for journals for competitive exams. In all the above cases, injunctions were not granted.
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12. Mr. Sanjay Jain, in rejoinder, submitted with respect to the disclaimer argument advanced by the learned Counsel for the defendant that the disclaimer part of a trademark is relevant only for subsequent registration and not in a passing off action. In such an action, the defendant cannot take advantage of the disclaimer. The validity of the two trademarks is to be taken as a whole and not fragmented in two parts. For this proposition, he placed reliance on : (1) Charan Das & Veer Industries v. Bombay Crockery 1984 (PTC) 102; (2) Pidilite Industries v. S.M. Associates (2004) 28 PTC 193 (Bom.) and (3) Jindal Industries v. Samana Steel 1993 PTC 129
13. Mr Jain also submitted that the descriptive nature of the registered trademark does not dilute its entitlement to protection. For this, he placed reliance on Globe Super Parts v. Blue Super Flame AIR 1986 Del 245
14. There is no doubt that the plaintiffs are prior users of the trademark RICH'S WHIP TOPPING. There is no doubt that this trademark was registered in favor of the plaintiffs in 1991. There is also no doubt that the defendant claims user of its trademark BELLS WHIP TOPPING since 1995. The question here is whether there is any infringement of the plaintiffs' registered trademark. The first thing that has to be noted is that the disclaimer that was placed in respect of the plaintiffs' trademark was not disclosed by the plaintiffs in the plaint. That apart, it appears that the expression WHIP TOPPING has become descriptive of the product. The plaintiffs have two registered trademarks, one of which is RICH'S and the other being RICH'S WHIP TOPPING. WHIP TOPPING by itself is not a registered trademark. Insofar as the exclusivity of use of the trademark RICH'S is concerned, there is no doubt that the plaintiffs are entitled to its exclusive use. But the defendant is not using the word RICH'S in its trademark at all. As regards the trademark RICH'S WHIP TOPPING, the same has to be taken as a whole and cannot be fragmented into RICH'S and WHIP TOPPING separately. The plaintiffs have exclusivity over the whole expression i.e., RICH'S WHIP TOPPING. Prima facie, they do not have exclusivity over the expression WHIP TOPPING. Inasmuch as the latter has become somewhat descriptive of the product itself. This being the case, the distinctive features in the plaintiffs' trade mark and the defendant's trademark are the word RICH'S and word BELLS. Straightaway it can be said that there is no similarity between the two. Furthermore, while the colours employed in the packaging by the defendant may be similar to those employed by the plaintiffs, their presentation is different. This can be easily discerned by a visual examination of their respective packages as placed on record. Therefore, prima facie, I also do not see any scope for passing off the defendant's product as that of the plaintiffs.
15. For all these reasons, I am of the prima facie view that the defendant has not infringed the plaintiffs' trademark nor has it passed off its goods as those of the plaintiffs. In these circumstances, it would not be possible for this Court to grant the interim injunction which the plaintiffs seek.
This application is dismissed.