Mukul Mudgal, J.— The application (I.A 6122/2000) has been filed by the plaintiff under order xxxix, rules 1 & 2, cpc for interim injunction and the application (I.A 6523/2000) is an application under Order XXXIX, Rule 4, CPC filed by the defendant for vacation of the ex parte interim injunction granted by this Court on 19th June, 2000.
2. The plaintiff has filed this suit seeking an injunction against the defendants 1 and 2 for the infringement and passing off the defendant's ‘Ayur Slim Tablets’ which according to the plaintiff were deceptively similar to the plaintiff's product in question which is a wooden tumbler called ‘Ayur Dia Slim Tumbler’. The defendant No. 1 is a stockist of the product Ayur Slim Tablets manufactured and marketed by the defendant No. 2 (hereinafter referred to as the defendant).
3. During the course of the arguments the learned Counsel for the plaintiff stated that he is not pressing the relief for infringement as the trade mark is not registered for the Ayur Dia Slim Tumbler and is confining his case for an injunction in respect of passing off only. The plaintiff submits that if is the maker of several cosmetic products under the registered trade mark ‘Ayur’ including cream, skin cream and ayurvedic medicines. The plaintiffs inter alia also markets its product called ‘Ayur Dia Slim Tumbler’ which according to the plaintiff is an ayurvedic treatment for reducing fat and weight and also controlling the sugar. The said Dia Slim Tumbler is made out of wood. The mode and method of user is by filling up the wooden glass overnight with water and drinking it in the morning which is said to reduce body fat and control blood sugar. On the plaintiff's product below the words ‘Ayur Dia Slim Tumbler’ is carried a notation “Natural Diabetes Controller Glass”.
4. The plaintiff's case is that for the last 15 years the plaintiff's trade mark/artistic work ‘Ayur’ has acquired a unique reputation and valuable goodwill in the eyes of the public and the trade and the user of the trade mark by any other would tend to misled the customers into purchasing the marketed goods as those of the plaintiff. The plaintiff's claim is it has advertised extensively in respect of the mark ‘Ayur’ in various forms of media including the National TV Network. The plaintiff has complained that the defendant has marketed medicines under the trade mark ‘Ayur Slim Capsules’ which according to the claim of the defendant burn excess fat. The averment of the plaintiff is that the defendant has also copied the artistic work of the plaintiff because the overall appearance, get up and lay out of the defendant's product is identical and or deceptively similar to those of the plaintiff's trade mark. It is said by the plaintiff that the product of the defendant” ‘Ayur Slim Capsule’ is equivalent to plaintiff's product ‘Ayur Dia Slim’ as the purpose of goods of both the parties as well as the customers are the same. Consequently it is submitted that the likelihood of confusion and deception is more.
5. This matter came up before the Hon'ble Vacation Judge first time on 19th June, 2000 when an ex parte order of injunction was passed restraining the defendant from using the trade mark ‘Ayur Slim’ or any other trade mark identical with or deceptively similar to the plaintiff's trade mark ‘Ayur’ in relation to medicines and other allied and cognate goods until further orders. This ex parte interim order was sought to be vacated by filing an application under Order XXXIX, Rule 4, i.e I.A 6523/2000.
6. Both the applications have been heard together and are being disposed of by this common order.
7. The case of the defendant is that the plaintiff is not a registered user of the owner of the trade mark ‘Ayur’ and the tumbler of the plaintiff bears the circled ‘R’ to wrongly imply that the trade mark is registered. The learned Senior Counsel for the defendant Mr. V.P Singh, has further submitted that the word ‘Ayur’ is of generic and descriptive nature and cannot be registered under section 9 of the trade & merchandise marks act, 1958. It is his plea that Section 9 of the Trade Marks Act forbids trade mark registration in a generic word. For this purpose he has placed reliance on the Hindi Dictionary meaning of the word Ayur which according to the dictionary means traditional Indian Science of health or medicine. The defendant's case is that its product is covered under Drug & Cosmetics Act, 1940 and it has an appropriate licence for manufacturing such drugs.
8. The learned Counsel for the defendant has also submitted that no particulars have been provided by the plaintiff of the demand having been made by the plaintiff on the defendant asking them to cease and desist from manufacturing Dia Slim Capsules. In reply the learned Counsel for the plaintiff has stated that the demands made were orally and not in writing.
9. The defendant has further submitted that the main plank of the defendants case is that the defendant's product is marketed under an umbrella brand ‘Ayurvedic Concepts’ and the get up, the origin and the visual presentation of the defendant's product is such that no confusion of any kind, let alone materially significant confusion, can be caused in any customer's mind as to the nature of the origin of the defendant's product. He has laid emphasis on the fact that the marketing of its product is as a part of the range of products labelled as Ayurvedic Concepts and the product is known more as an Ayurvedic Concept product rather than mere Ayur Slim Capsule. He has further submitted that a visual perusal of both the marks shows vividly that the products are totally different not only in size but also in colour, depiction of the mark, use of the word ‘Ayur’ and the price and the nature of the product. It is submitted that the product of the plaintiff is a wooden tumbler and that of the defendant's are capsules which are packed in a plastic bottle. The plaintiff's product is targeted at diabetes whereas the defendant's product is targeted at over weight and obesity related problems. He further submitted that the sale figures of the defendant's products are much higher than the sale figures of the plaintiff's tumblers.
10. The learned Counsel for the plaintiff has relied upon judgment in Century Traders… v. Roshan Lal Duggar & Co…, AIR 1978 Delhi 250, to contend that in a passing off action the registration of a mark is not relevant and it is the prior user which is relevant. The principle laid down by the above judgment would clearly apply to the present case provided the plaintiff is able to establish passing off. The learned Counsel has also relied upon several other judgments such as—
(a) M/S. Kala Niketan…Plaintiff v. M/S. Kala Niketan…Defendant, 1981 PTC 213, where both by the plaintiff and the defendant were dealers in Sarees with the same name Kala Niketan where an injunction was granted to restrain the defendant on account of prior user of the name Kala Niketan by the plaintiff.
(b) Prakash Metal Works v. Square Automation (P) Ltd., 1992 PTC 29, where the defendant was restrained from using ‘Hot Flo’ on account of prior use by the plaintiff. The learned has relied upon the said judgment to contend that ‘Hot Flo’ was held not to be descriptive in nature and the same principle would also be applicable in the present case as ‘Ayur’ is also not descriptive. I am of the view that the above judgment does not come to the aid of the plaintiff as ‘Ayur’ is a generic name and does not fall within the scope of a mere descriptive name.
11. Several other similar judgments have been cited by the plaintiff which are not necessary to be considered at this stage. In the judgments cited by the plaintiff it has been held that where there was deceptive similarity and likelihood of a prospective customer being misled, the plaintiff on account of prior user and/or registration was entitled to an injunction. In view of the fact that I am prima facie of the view that the competing products in the present case are not deceptively similar, the ratio laid down in the above judgments would not be applicable.
12. The learned Counsel for the defendant has further submitted that the only registration legally permissible is ‘Ayur’ as a logo and not as a name as the name ‘Ayur’ per se being generic cannot be a trade mark. He has further relied on the judgment of this Court in Liv 52's case, 1997 PTC 17 to contend that the generic and/or descriptive words do not confer an exclusive right on its proponent.
13. The learned Senior Counsel for the plaintiff Mr. Rajiv Nayyar, has formulated three propositions in support of his plea for continuation of the injunction. His first proposition is that the name of the competing products is the same. In support of this plea he has highlighted the fact that the word ‘Ayur’ occurs in both the products. He has further submitted that the purpose of goods is the same. He has submitted that both the products relate to control of obesity and fat reduction. He has submitted that in view of what is stated regarding the nature of the products, the prospective purchasers of both the goods are common and, therefore, are likely to be misled. He has further submitted that in view of the above similarity the customers in general may feel that the capsules marketed by the defendant's are in fact made by the plaintiff and thus it would amount to the defendant unfairly enjoying the reputation built up by the plaintiff. He has further submitted that mere visual comparison is not the correct test as per the law laid down by the Hon'ble Supreme Court in Parle Products (P) Ltd. v. J.P & Co., Mysore, (1972) 1 SCC 618 : AIR 1972 SC 1359. In particular he has relied upon paragraph 9 of the above judgment where it has been held as follows:
“It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.”
14. The test laid down by the Hon'ble Supreme Court was that the broad and essential features of the two competing products are to be considered and it would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually seeking one product to accept the other if offered to him. Firstly the aforesaid judgment is in respect of a registered trade mark which is not the situation in the present case. Even assuming that the above test formulated for a registered trade mark would apply in the present case, a bare comparison of the two competing products eloquently demonstrates that there is no overall similarity or any similarity of substance between the two marks and products. A customer wanting to purchase a tumbler of the plaintiff is not likely to be deceived into buying tablets marketed by the defendant's even assuming that the purpose and/or user of both the products is the same.
15. In so far as the plaintiff's plea of name of the plaintiff's and the defendant's product being the same is concerned it is seen that the word ‘Ayur’ occurs in the plaintiff's product in the form of a logo approximately 1′ × 1′ enclosed in an oval circle. In so far as the defendant's product is concerned it is marketed as a part of the umbrella brand ‘Ayurvedic Concepts’ which figure permanently on the carton. The carton also carries the word ‘Ayur Slim’ written in letters which are of about 1/4′ height. The letters Ayurvedic CONCEPTS on the carton of the defendant are larger than the words Ayur Slim though on the bottle itself the size of the letters of Ayur Slim is slightly larger than the words Ayurvedic Concepts. The colour scheme, as already stated, is entirely different and the manner of reproduction of the logo is not at all similar to that of the plaintiff's. In fact the word ‘Ayur’ does not figure independently in the defendant's logo. It only figures as a part of a combination word ‘Ayur Slim’. As far as the motive of the purchasing public being the same is concerned the plaintiff's product is said to be a diabetic controller glass as per the print on the product itself whereas the defendant's product is for regulation of production of fat and reduction of cholesterol. While there may be a similarity in some of the purposes achieved by the products, the marketing of the plaintiff's product is as a natural diabetes controller whereas the marketing of the defendant's product is a product which regulates production of fat and reduces cholesterol. Furthermore the articles are vastly different physically and no consumer proceeding to buy the plaintiff's product is likely to be misled the plaintiff's plea is that on account of the goodwill due to the trade mark ‘Ayur’ generated by the plaintiff the said goodwill extends to a whole range of goods including medicines.
16. The learned Counsel for the plaintiff has said that the plaintiff's brand is ‘Ayur’ and not ‘Aayur’. It is his submission that ‘Ayur’ is an invented word and not generic and descriptive in nature. Inherent in this plea is the submission that ‘Ayur’ is not derived from Ayurveda. The learned Counsel has submitted that the test for judging, in case passing off is alleged, is to see whether the goods of the defendant are likely to be mistaken as the goods of the plaintiff. No actual deception or actual damages are required to be proved. The aforesaid plea of the plaintiff is not sustainable as in view of the foregoing discussion there is no likelihood of any purchaser mistaking the goods of the defendant to be those made by the plaintiff. While the word ‘Ayur’ may be a key part of the trade dress of the plaintiff's product it is not the key part of the trade dress of the defendant's product. This is evident from the size of the letters used for printing the word ‘Ayur’ on the carton as well as the fact that the defendant's product ‘Ayur’ is used only in the form of a combination word ‘Ayur Slim’. The size of the phrase ‘Ayurvedic CONCEPTS’ on the defendant's carton being larger than ‘Ayur Slim’ (though vice versa on the bottle) is significant as the prospective purchaser mainly views the carton. In so far as the plaintiff's product is concerned the word ‘Dia-Slim’ is separated by a hyphen and the word ‘tumbler’ is a separate word. In so far as the defendant is concerned in its product the word Ayur Slim is a combination word and it is significant that ‘Ayur’ is not a key feature of the defendant's product. The defendant has marketed the product as a part of its umbrella brand Ayurvedic Concepts. The get up, the trade dress and the appearance of the product cannot be mis-leading as averred by the plaintiff. In so far as the phonetic difference between ‘Ayur’ & ‘Aayur’ as pleaded by the plaintiff is concerned his plea is that the registration is for the word ‘Ayur’ which is unknown in the Hindi language. The plaintiff has submitted that the pronunciation of the word ‘Ayur’ as far as the plaintiff's product is concerned is different than the word ‘Aayur’. In so far as this plea of phonetic difference is concerned what is to be considered by the Court is how a prospective purchaser will view or call for the product. I have no manner of doubt that the intending purchaser is not going to be swayed by the phonetic difference pointed out by the plaintiff. In any event the pronunciation as propounded by the plaintiff cannot be a determinative factor at the interim stage.
17. The defendant has clearly shown by reference to the Oxford Hindi English Dictionary that ‘Ayur’ is a Hindi word which is defined to mean the traditional Indian Science of health or medicine. The defendant has also shown that in so far as the word ‘Ayur’ is concerned there are more than 20 applicants all over India for the word ‘Ayur’ in combination with the other words and the defendant has been able to show that at least one of the one trade mark, i.e the combination word of ‘Ayur gentone’ is registered as per the Trade Mark Journal No. 961 dated 16th June, 1989.
18. The plaintiff's product is a brown coloured glass tumbler about 5′ high wrapped in transparent plastic pack with the Ayur in a circle printed on the plastic wrapping. The defendant's product comprises of a plastic bottle which is enclosed in a card board carton which is 2½′ to 3′ high. The colour scheme of the defendant's product is cream and green and with a floral border. The logo ‘Ayur’ implanted on the plaintiff's product is about 1′ thick surrounded by an oval shaped circle. In the defendant's product the word ‘Ayur’ occurs in a smaller print and only occurs as a part of a newly coined word called ‘Ayur Slim’ and occurs as a part of the larger phrase ‘Ayurvedic CONCEPTS’.
19. In this view of the matter I am satisfied that the plaintiff has not been able to make out a case of continuance of the ex-parte interim order passed on 19th June, 2000. The interim order accordingly stands vacated.
20. Both the applications accordingly stand disposed of.
S. 1272/2000:
21. List before the Joint Registrar for further proceedings on 15th September, 2000.
Applications disposed of.