JUDGMENT

R.M. Doshit, J.

03-04-2001

1. Heard the learned advocates. With the consent of the learned advocates, the appeal is finally disposed of.

2. The appeal arises of an action for infringement of trade mark and of passing off taken against the appellant-defendant. The appellant-defendant is the manufacturer of sanitary wares and has entered the market sometime in the month of December, 1999 with the trade name 'CERA'. The respondent-plaintiff instituted the Civil Suit No. 2384 of 2000 in the City Civil Court at Ahmedabad and claimed that the trade mark 'CERA' was its registered trade mark and the defendants be restrained from using the plaintiff's trade mark 'CERA' for its sanitary products. The plaintiff has claimed that it has been in the market for some twenty years and has been marketing its sanitary products under the trade marks 'CERA' and has earned a considerable goodwill. The plaintiff also took out a notice of motion for interim injunction, pending the suit. By order dated 9th February, 2000 made on the notice of motion, the learned trial Judge has made an order of temporary injunction restraining the defendants from using the word 'CERA' in respect of their sanitary/ceramic products till the hearing and final disposal of the suit. Feeling aggrieved, the defendant has preferred the present appeal.

3. Learned counsel Mr. Thakkar has appeared for the appellant and has submitted that in answer to the summons issued by the trial Court, the appellant gave an undertaking not to use the word 'CERA' for its sanitary products and altered its trademark to 'Re Cera VITREOUS' which is quite distinctive from the trade mark of the plaintiff. He has submitted that the learned trial Judge has failed to apply the correct principles applicable in such cases as determined by the Hon'ble Supreme Court, and the impugned order, therefore, is liable to be set-aside. He has relied upon the judgments of the Hon'ble Supreme Court in the matters of J.R Kapoor v. Micronix India.,: 1994 PTC 260; of Hoffimann-La Roche & Co. Limited v. Geoffrey Manners & Company Private Limited,: 1970 SC 2062; SM Dye Chem v. Cadburys India Limited,: 2000 PTC 297; of Wander Limited v. Antox India Private Limited,: 1990 (Supp) SCC 727 and Aristo Pharmaceuticals Ltd. v. Wockhardt Ltd.,: AIR 2000 SC 3624 : 2001 (21) PTC 139 (SC) and of this Court in the matter of Cadila Chemicals Limited v. Natco Pharmaceuticals Limited, [Appeal From Order No. 261 of 1994: Decided on 9th August, 1994: Coram-Hon'ble Mr. Justice B.C. Patel].

21.04.2001

4. Mr. Vyas has submitted that the plaintiff is the proprietor of the trademark 'CERA' and has adopted the distinctive trade name by writing 'CERA' in an encasing of a peculiar design. The defendant adopted the said logo with a similar encasing and thus is liable for action of infringement of trademark and passing off. He has relied upon the judgments of the Supreme Court in the matters of Wander Limited & Anr. v. Antox India Private Limited,: 1990 (Suppl.) SCC 727; of Ruston & Hornby Limited v. Zamindara Engineering Company Limited,: AIR 1970 SC 1649 and of S.M Dyechem Ltd. v. Cadbury (India) Ltd.,: 2000 PTC 297. He has also relied upon judgments of this Court in the matters of Raj Remedies v. Richardson Vicks Inc.,: 2000 (3) GLR 2323 and of Pam Pharmaceuticals v. Richardson Vicks Inc. & Ors.,: 2001 (1) GLR 125 : 2000 PTC 412 (Guj.). Mr. Vyas has also relied upon section 32 of the trade & merchandise marks act, 1958 and has submitted that the plaintiff's trademark has been registered for more than ten years and has become conclusive. He has further submitted that the scope of interference by the High Court in appeal against order is limited and the impugned order need not be interfered with.

5. In the matter of J.R. Kapoor [Supra], considering the word, "MICRO' occurring in the trademark of the rival parties, the Court held that,...'further the word, being descriptive of the micro-technology used for production of many electronic goods which daily come to the market, no one can claim monopoly over the use of the said word." In the matter of F. Hoffimann-La Roche & Company Limited [Supra] also, the Hon'ble Supreme Court was called upon to examine whether the trade names 'DROPOVIT' and 'PROTOVIT' adopted by the rival parties were deceptively similar. The Hon'ble Supreme Court held that, '..that the suffix 'VIT' indicates that the goods were vitamin preparations and that the said terminal syllable 'VIT' in the two mark is both descriptive and common to the trade.' Considering the uncommon elements 'Dropa' and 'Proto' occurring in these two words, the Hon'ble Court held that they were dissimilar. In the matter of S.M. Dyechem Limited [Supra], in a similar action of passing off, the Court held that, 'a mark is infringed if the essential features, or essential particulars of it, are copied. In cases of device marks, especially, it is helpful before comparing the marks, to consider what are the essentials of the plaintiff's device. The trade mark is the whole thing - the whole picture on each has to be considered. There may be difference in the parts of each mark, but it is important to consider the mode in which the parts are put together and to judge whether the dissimilarity of the part or parts is enough to make the whole dissimilar. It has been said that if the only resemblances between two marks are in parts which are common, so that the owner of the one has taken nothing which is peculiar to the other, then there is at all events no infringement, at any rate unless the plaintiff had a distinctive arrangement of the common element. Therefore, the question is whether the defendant has so far as the common feature is concerned, copied any distinctive arrangement of the common elements? Or has copied any unusual feature of the common element. The marks, names or get up concerned must always be considered as the whole thing, as the true test is whether the totality of the impression given both orally and visually is such that it is likely to cause mistake, deception or confusion.. 'In the matter of Wander Limited & Anr. [Supra], the Hon'ble Supreme Court has observed that,...' the question whether the defendant has yet to commence his enterprise or whether he has been already doing so, would be relevant consideration in restraining the defendant in exercising his legal right that the plaintiff would like to be prevented.' The principles laid down in the above referred judgments have been followed in the matter of M/s. Aristo Pharmaceuticals Limited [Supra] and by this Court, in the matter of Cadila Chemicals Limited [Supra]. In the matter of Raj Remedies [Supra], this Court has held that,"... it is discernible that the touch-stone in such cases should be as to whether the two marks are deceptively similar or not and that depends upon the ability of an average person with imperfect recollection.' In the matter of Pam Pharmaceuticals [Supra], this Court has held that, "so as to ascertain whether the products are deceptively similar, one has not to have careful examination of both the products or to compare them by keeping them side by side, but one to be guided by commonsense and general observation. If, at the first sight, both the products appear to be similar, one can very well say that there is an element of deceptive similarity in the products.' In the matter of Ruston & Hornby Limited v. Zamindara Engineering Company [Supra], the Hon'ble Supreme Court has held that, '...it very often happens that although the defendant is not using the trade mark of the plaintiff, the get-up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiff's mark the get up of the defendant's goods may be so different from the get up of the plaintiff's goods and the prices also may be so different that there would be no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the defendant is improperly using the plaintiff's mark.'

6. Considering the principles laid down in the above referred judgments, on the facts of the present case, I am of the view that the appeal requires to be allowed. The material particulars are:-

(a) the appellant and the plaintiff both are engaged in manufacturing ceramic products;

(b) the word, "CERA' is a generic name derived from the word "ceramics' - a word commonly used for all ceramic products indicating the material from which the goods are produced;

(c) in answer to the summons issued by the trial Court, the appellant has promptly agreed not to use the trade name "CERA' in the distinctive encasement adopted by it and instead adopted the trademark "Re Cera VITREOUS' without any encasing and with a distinctive font;

(d) the trade mark "Re Cera VITREOUS' now adopted by the appellant is visually distinct from the trademark "CERA' owned by the plaintiffs;

(e) the appellant has already entered the market in or about the month of December, 1999 i.e., it has been in the market for over a period of one year.

7. The learned trial Judge appears to have failed to apply the correct principles. It has failed to appreciate that the word, "CERA' is the derivative of a common word "ceramic' which is casually used for many ceramic products and cannot be a monopoly of any one manufacturer. The learned trial Judge has also failed to pay attention to the visual distinction between the logos "CERA' and 'Re Cera VITREOUS' of the plaintiff and the appellant respectively. In view of the above discussion, the appeal is allowed. The impugned order dated 9th February, 2001 made on Notice of Motion in Civil Suit No. 2384 of 2000 is quashed and set-aside. Notice of Motion stands rejected on condition that the appellant-defendant shall submit a statement of sales of its ceramic products sold under the trade name 'Re Cera VITREOUS' every month regularly on or before 15th day of the succeeding month, commencing from 1st April, 2001. The appellant-defendant shall also submit the statement of sales of its ceramic products sold under the trade name 'CERA' or 'Re Cera VITREOUS' made from the date of the suit till 31st March, 2001 on or before 30th June, 2001.

The parties shall bear their own costs.