1. The claim of exclusive right to use the word mark „WHIP
TOPPING‟ resulted in filing of a suit by the appellants.
The appellants claimed that the said word mark is part of
its registered trademark „RICH‟S WHIP TOPPING‟ and the
use of the word mark „WHIP TOPPING‟ by the respondent
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as part of its trademark / label „BELLS Whip Topping‟ was
deceptively similar. The appellants also claim that the
respondent seeks to pass off its goods for that of the
appellants on account of the trade-dress, packaging and
instructions, which are alleged to be identical. The
appellants, thus, sought appropriate reliefs in the suit
both of perpetual injunction and consequential reliefs for
accounts, etc.
2. The appellants along with the suit filed an application for
interim relief under Order XXXIX Rules 1 and 2 of the
Code of Civil Procedure, 1908, but failed in that
endeavour in terms of an Order dated 03.07.2007 of the
learned Single Judge. In the appeal filed by the
appellants against the interlocutory order, the trial in the
suit was reduced by consent to filing of affidavits of
evidence by both the parties with the documents to be
read in evidence without the need of the cross-
examination and the suit to be decided accordingly.
Learned Single Judge, thus, framed the following issues
on 10.11.2008 :-
"(i) Whether the plaintiff is the proprietor of the
Trademark "RICH‟S WHIP TOPPING" in relation to
its goods as mentioned in the plaint both under the
statutory as well as under the common law? OPP
(ii) Whether the plaintiff No. 1 has acquired
distinctive goodwill and reputation and secondary
meaning in respect of the trademark "RICH‟S WHIP
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TOPPING" by virtue of its prior, long and
continuous user as alleged? OPP
(iii) Whether the trademark "RICH‟S WHIP
TOPPING" is a trademark possessing trans-border
reputation? OPP
(iv) Whether the registered trademark of the
plaintiff "RICH‟S WHIP TOPPING" is deceptively
similar to the trademark of the defendants, "BELLS
WHIP TOPPING‟ and amounts to infringement and
passing off the plaintiffs‟ impugned product? OPP
(v) Whether the defendant‟s packaging is
confusingly similar to the trade-dressing of the
plaintiffs‟ packaging? OPP
(vi) Whether the plaintiff is entitled to damages
against the defendants and if so, in what sum?
OPP
(vii) Whether the trademark of the plaintiff is not
a coined word? OPD
(viii) Whether the trademark of the plaintiff is a
descriptive trademark? OPD
(ix) Whether the trademark of the plaintiff is a
common dictionary word and that the same is
common in use? OPD
(x) Whether the trademark of the plaintiff is
generic in nature? OPD
(xi) Whether the plaintiff is guilty of concealment
of the fact that its registered trademark is subject
to a disclaimer and the effect thereof? OPD
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(xii) Whether the suit instituted by the plaintiff is
barred on account of delay and laches and
acquiescence on the part of the plaintiff? OPD
(xiii) Relief."
3. The parties filed their respective affidavits of evidence.
The suit was taken up for final disposal and in terms of
the impugned judgment and decree dated 19.02.2010,
the suit has been dismissed. Issue No. 1 was answered
in favour of the appellants insofar as the proprietary
rights in the trademark „RICH‟S WHIP TOPPING‟ were
concerned, but it was held that the same did not extend
to a part of the trademark „WHIP TOPPING‟. Issues No. 2,
3, 4 and 5 were answered against the appellants, while
Issues No. 7 to 10 were answered in favour of the
respondent and against the appellants. The sequittor
was that Issue No. 6 was also answered against the
appellants. Issues No. 11 and 12 were, however,
answered in favour of the appellants.
4. The sum and substance of the case of the appellants is
that „RICH‟S WHIP TOPPING‟ is a non-dairy topping and is
one of the various non-dairy products manufactured and
sold by the appellants. The object of all these products is
that the food products remain soft while frozen and can
be served straight from the freezer. The appellants claim
large sales running into billions of US $. The trademark is
originally of appellant No. 1 and appellant No. 2 was a
joint-venture initiated by appellant No. 1 for
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manufacturing the products under the concerned
trademark for which royalty was being paid by appellant
No. 2 to appellant No. 1. It is undisputed that in India
„„RICH‟S WHIP TOPPING‟ is a trademark, which was
registered w.e.f. 13.11.1991 in Class 30 for non-dairy
topping, icing, filling and generally for other goods in that
Class. The registration is subject to a disclaimer with
respect to the letter „S‟ and the word „„TOPPING‟. The
appellants claim that „RICH‟S WHIP TOPPING‟ and „WHIP
TOPPING‟ are registered in several countries across the
globe.
5. In order to support their case, the appellants filed the
affidavits of Mr. Jill K. Bond, PW - 1 in support of the
worldwide reputation and the deceptively similar mark
and packaging of the respondent. The international sales
figures are sought to be proved through Ms. Betty Fye,
PW - 2. The facts pertaining to appellant No. 2 have
been deposed by Mr. Priyakant Himatlal Shah, PW - 3. In
total, eight (8) witnesses have been examined by the
appellants.
6. The case is resisted by the respondent claiming the use
of the expression „BELLS Whip Topping‟ in the trade since
1995. The appellants‟ mark is stated to be generic in
nature with no trademark significance. It is the case of
the respondent that the appellants cannot segregate a
part of the trademark to claim exclusive right in that
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segregated part, especially as „WHIP TOPPING‟ is a
descriptive expression referring to the character and
quality of the product, which has not acquired any
secondary meaning. The expression „WHIP TOPPING‟ is
stated to be common to use in the trade world over. A
number of illustrations for the same are given, which
have been referred to in para 14.1 of the impugned
judgment as under :-
"14.1 In defence of its right to use the mark
"BELLS WHIP TOPPING" the defendant has
stated that the plaintiffs‟ mark is generic in
nature and has no trademark significance. It is
further averred that, in any event, the plaintiffs‟
trademark, which is registered as one
composite whole, is "RICH‟S WHIP TOPPING"
with a disclaimer in so far as letter „S‟ and the
word „Topping‟ is concerned; therefore, there
can be no infringement much less a commission
of tort of passing off by the defendant in using
the trademark "BELLS WHIP TOPPING". This,
according to the defendant, is more so in view
of the fact that "WHIP TOPPING‟ is a descriptive
expression which alludes to the character and
quality of the product itself and hence, cannot
be protected till it can be demonstrated that it
has acquired a "secondary meaning". The
defendant has further averred that the product
in issue is "WHIP TOPPING‟ and it cannot be
described in any other manner except by using
that expression and especially when it is a
manufacturer of the said product. It is the
defendant‟s stand that the said word/expression
„WHIP TOPPING‟ is commonly used in the trade
world over. According to the defendant "WHIP
TOPPING‟ is an imitation dairy product which is
commonly used in making desserts, baked and
frozen products by various manufacturers all
over the world, and hence is "publici juris". In
this regard, example of other manufacturers,
which have used the word mark "whip topping‟
in respect of their products, have been referred
to in the written statement. For the sake of
convenience they are extracted here-in-below:
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S.No. Name of the Product
Company
1. Lego Foods Co. Lego non-dairy Whip
Ltd. Topping
2. Kraft Foods Cool Whip Whipped
Topping
3. Flavor Right Foods, Flavor Right Premium
Columbus, Ohio ready to whip Topping
43216, USA
4. Elgin Dairy Foods, 1) Elgin NP Whip
Inc., Chicago, Topping
Illinois, USA 2) Elgin‟s Indenium
Whip Topping
3) Elgin‟s ready-to-
7. The analysis of the impugned judgment shows that the
learned Single Judge has rightly found that the
registration of the appellants‟ mark is for „RICH‟S WHIP
TOPPING‟ and not „WHIP TOPPING‟ and such a position is
present even in certain foreign jurisdictions such as USA
and New Zealand. This is apart from the disclaimer of
the letter „S‟ and the word „TOPPING‟. There is no
registration in favour of the appellants with respect to
the trade-dress, which is based on use of inter-play of
red, blue and white colours. The appellants can claim
right to the part of the trademark „WHIP TOPPING‟ only if
the appellants are able to establish that the said
expression has acquired a secondary meaning. We are in
agreement with the conclusion of the learned Single
Judge that on analysis of the evidence on record, there is
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no material to suggest that by mere use of the word
mark „WHIP TOPPING‟, the product of the appellants
comes to the mind of a consumer. The testimony of
PW - 8, which refers to the 'eye-catching' aspect of the
appellants‟ packaging, does not deal with the aspect of
distinctiveness of the word mark „WHIP TOPPING‟. The
respondent uses its trademark „BELLS Whip Topping‟ with
prominent use of the word „BELLS‟, leaving no manner of
doubt about the distinctiveness of the description of the
product of the respondent.
8. Learned Single Judge has considered the dictionary
meaning of the expression „WHIP TOPPING‟ - the word
„whip‟ in the context of its use in the present case imply
„a light fluffy dessert made with whipped cream or
beaten eggs‟, while the word „topping‟ would mean „a top
layer or garnish put on food‟. The conclusion drawn is
that „WHIP TOPPING‟ would be „representative of
toppings or garnish for food items, which have a cream-
like quality‟ and, thus, is both „generic‟ and „descriptive‟
of the product. The expression has acquired no
secondary distinctive meaning by its exclusive use and /
or publicity.
9. In order to appreciate the visual impact of the two
cartons, we consider it appropriate to reproduce
Exhibit P - 1 (of the respondent) and Exhibit P - 2 (of the
appellants) as under :-
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Front Side of Exhibit P - 1 (of the respondent)
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Back Side of Exhibit P - 1 (of the respondent)
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Front Side of Exhibit P - 2 (of the appellant)
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Back Side of Exhibit P - 2 (of the appellant)
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If the aforesaid two packagings are analysed, it would be
seen that there is no similarity in the colour scheme
except that both have different hues of combination of
blue, red and white colours. The packaging of the
appellants, in fact, uses more pinkish colour in half of its
packaging, while the packaging of the respondent uses
red colour throughout with a dark blue colour. The word
„BELLS‟ is very prominent as also the distinctive large
cake reproduced on the packaging.
10. We have also compared the instructions at the back on
which a lot of emphasis was laid by learned counsel for
the appellants. It cannot be lost sight of that there are a
limited nature of directions for use, which can be given in
respect of such non-dairy whip topping and, thus, the
directions cannot be different. They are certainly not
copied verbatim nor is the presentation identical. In fact,
if one examines the plea of learned counsel for the
appellants in the context that all these aspects should be
taken together to show the dishonest intention of the
respondent, the conclusion actually reached is quite the
contrary.
11. We are, thus, in complete agreement with the view of the
learned Single Judge contained in paras 39.1 and 40 that
there is not even the slightest attempt to deceive by the
respondent and that the appellants have, in fact, failed to
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show any copyright in the handling instructions /
directions for use.
12. Once a conclusion is reached that there is no exclusive
right of the appellants in the word mark „WHIP TOPPING‟,
but only in „RICH‟S WHIP TOPPING‟ and the use by the
respondent of „BELLS Whip Topping‟ is distinctive
enough, the natural corollary is that Issue No. 1 has to be
answered against the appellants. There is nothing to
show that the word mark „WHIP TOPPING‟ separately has
acquired any secondary distinctive meaning and has
trans-border reputation. In fact, the learned Single Judge
has rightly noticed that the appellants themselves have
accepted the limitation both in USA and New Zealand
with respect to the exclusive right to use the word
„TOPPING‟ and „WHIP TOPPING‟ which form a part of the
registered trademark „RICH‟S WHIP TOPPING‟. In India,
the appellants have even accepted the disclaimer in
respect of the letter „S‟ and the word „„TOPPING‟. There
is no deception arising from any similarity of the
packaging and / or trade-dress and instructions. The
word, „WHIP TOPPING‟ is both „generic‟ and „descriptive‟
and cannot be exclusively appropriated as a trademark.
13. We find that the judgment of the learned Single
Judge is well-reasoned and unexceptionable both on the
legal pleas discussed as well as the analysis of the
evidence.
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14. The appeal being meritless is dismissed with costs.
SANJAY KISHAN KAUL, J.
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