G.M. Modular Pvt. Ltd. v. Tm Marketing (India) Others

Badar Durrez Ahmed, J:

1. In this application, the plaintiff seeks an interim injunction restraining the defendants, etc. from using, manufacturing, selling, offering for sale, advertising or displaying directly or indirectly or dealing in any other manner or mode in electronic goods, accessories, appliances, electronic components and goods of same/similar/allied/cognate description thereto under the impugned "TM" trademark/label as per Annexure D-A-I or any other trademark/label identical with or deceptively similar thereto or bearing the word/mark "TM" either by itself or in an artistic manner and the impugned trade dress (Annexure-D-B-I) or any other identical or deceptively similar trade dress which would amount to or result in passing off and violation of the plaintiff's "GM" trademark/label being (Annexure-A) or passing off and violation of the plaintiff's trade dress/cartons being (Annexure-B). The application also seeks injunction against infringement, passing off and violation of the plaintiff's copyrights in the said mark/label/trade dress.

2. Before dealing with the arguments advanced by the counsel for the parties, it would be appropriate to set out the nature of the controversy and it cannot be better demonstrated than by visually depicting the same. The trademark/label of the plaintiff as given in Annexure-A is as under:-

3. The plaintiff has filed the suit for passing off of the trademark as well as for infringement of its copyrights. The plaintiff claims to be the proprietor of the trademark "GM" and its artistic label in relation to electrical goods, including electrical switches, etc. as per Annexure-A and B depicted above. According to the learned counsel for the plaintiff, the plaintiff's company was incorporated on 25.06.1999 and the mark "GM" forms a material part of the plaintiff's trademark, the plaintiff company's name being "GM Modular Private Ltd." It is stated that the plaintiff adopted the trademark "GM" and its label in the year 1999 and claims continuous user thereafter. In the plaint, the plaintiff has mentioned that it had applied for registration of the trademark. During the pendency of the suit, the trademark has been registered. It is stated that the plaintiff is now the registered proprietor of the trademark "GM" in relation to electrical goods, including electrical switches in Class 09. A copy of the trademark registration certificate which was granted during the pendency of the suit has been filed alongwith the list of documents dated 13.01.2005. The said certificate indicates the details of the registration as under:-

"Trade Mark: GM Label

Trade Mark Number: 934452 in Class 09

Date of Registration: 26.6.2000"

4. It is also pointed out by the learned counsel for the plaintiff that the copyright for the "GM" label is also registered under No. A64280/03. The plaintiff has claimed exclusive rights in the trademark "GM" Label under Sections 28 and 29 of Trade marks Act, 1999 and exclusive rights in its copyrights on account of its origination under Section 2 (c) of India Copyright Act, 1956. The plaintiff has also stated that it has built up an extensive goodwill and reputation in the trademark "GM". The sales figures for the year 2002-03 indicate sales of more than Rs. 76 lakhs. A copy of the certificate of approval with regard to quality standards conforming to ISO 9001:2000 dated 25.07.2002 has also been placed on record. Copies of advertisements appearing in prominent magazines as well as in hoardings around the stadia in international cricket matches have also been filed. Invoices in respect of the particular goods under the trademark/label "GM" commencing from the year 2001 have also been filed. Certain Government test reports in respect of the brand name "GM" have also been filed. The earliest report being of 31.05.2000. These factors were pointed out by the learned counsel for the plaintiff to indicate the extensive use, reputation, goodwill and prior adoption and use by the plaintiff of the mark/artistic work.

5. It was contended by the learned counsel for the plaintiff that the defendant has adopted a deceptively similar mark/label "TM" in relation to similar goods. The defendants' label and trade dress of the packing/carton have already been indicated above. According to the learned counsel for the plaintiff, the trademark/label of the defendant is identical with and/or deceptively similar to the trademark/label of the defendant and accordingly, the plaintiff is entitled to an order of injunction being issued against the defendant in respect of the use of the trademark "TM" and its artistic features.

6. On behalf of the defendants, it has been firstly contended that while arguments have been addressed with regard to infringement of a registered trademark, there is no pleading with regard to the registration of the mark No. 934452. Accordingly, the plaintiff is not entitled to argue the case of infringement of trademark or to rely upon registration No. 934452. It was next contended by the learned counsel for the defendants that the plaintiff has made certain false statements. It is pointed out that while the plaintiff claims to have used the trademark "GM" since 1999, the plaintiff's, documents themselves show the introduction of the trademark "GM" in May, 2000. The sales tax registration is only of 29.02.2000. It was also pointed out that the label shown as Annexure-A and Annexure-D-A-I are only portions of the labels/marks and not the complete labels. It was next contended on behalf of the defendants that the plaintiff has suppressed material facts. The plaintiff had earlier instituted Suit No. 1068/2003 claiming identical reliefs, but that suit was withdrawn on a flimsy ground. The plaintiff has not mentioned the filing of the earlier suit and its withdrawal. According to the learned counsel for the defendant, this fact is itself disentitles the plaintiff to the discretionary relief of injunction. In support of this submission, the learned counsel for the defendants relied upon the following decisions:-

(i) Virumal Praveen Kumar v. Gokal Chand Hari Chand: 2000 PTC 507;

(ii) Fair Deal Corporation Pvt. Ltd v. Vijay Pharmaceuticals: 1985 PTC 80;

(iii) Chandra Shashi v. Anil Kumar Verma: 1994 (4) Scale 994;

(iv) Indian Bank v. Satyam Fibres (India) Pvt. Ltd..: JT 1996 (7) SC 135;

(v) SPC Naidu v. Jagan Nath: AIR 1994 SC 583;

(vi) Smithkline Beecham & Others v. G.D. Rathore & Others: 2002(25) PTC 243."

7. The learned counsel for the defendants also submitted that no copyright subsists in a font and that the use of "TM" in ordinary letters on the part of the defendants does not constitute infringement of a copyright.

8. The learned counsel for the defendants also submitted that the plaintiff's suit is barred under the principles of Order 2 Rule 2 of the Code of Civil Procedure, 1908 (hereinafter referred to as `CPC'). The plaintiff had instituted a suit No. 854/2003 with respect to the alleged infringement of the design of switches as were being sold by the plaintiff under the trademark "GM". According to the learned counsel for the defendants, the plaintiff, while instituting the said Suit 854/2003, omitted to sue on the alleged cause of action of passing off arising out of the use of mark "TM" on the part of the defendant. The plaintiff was entitled to claim more than two reliefs, including the relief of passing off and having omitted to do so, the plaintiff was not entitled to maintain the present suit. It was also contended on behalf of the defendant that the defendants' user was prior in time. According to the learned counsel, the defendant was in the business of the said goods much prior to the plaintiff. The defendant had stated on oath that the mark "TM" was being used since 1998 and that merely because the word "TM" is not mentioned in the invoices filed on behalf of the defendant does not prove that the said mark was not being used by the defendant.

9. Finally, on the key issue of deceptive similarity, it was contended on behalf of the defendants that there is no similarity between the label marks of the plaintiff and the defendants taken as a whole. It was submitted that for the purpose of comparing the competing marks in order to decide the question of likelihood of confusion and deception, marks are to be compared as a whole. It was also submitted that the marks at Annexure-B of the plaintiff and Annexure-D-B-I of the defendant have no similarity. It was also submitted by the learned counsel for the defendants that the essential features of the plaintiff's label mark are "G Magic" as against the essential feature of the defendants mark "Touch Me". According to the learned counsel, the comparison of the label marks has to be made with reference to the essential features of the marks. Reliance was placed on the decisions of the Supreme Court in the cases of Corn Products Refining Co. v. Shangrila Food Products Ltd .: AIR 1960 SC 142 and F. Hoffimann-La Roche and Co. Ltd v. Geoffrey Manners and Co. Pvt. Ltd: AIR 1970 SC 2062. It was further submitted that the colour combination of the Annexures B and D-B-I were totally different and that there were sufficient added matters in the label of the defendant to establish distinction between the goods of the defendants from that of the plaintiff. For this proposition, reliance was also placed on the Judgment of the Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories: AIR 1965 SC 980. It was also contended that the test for comparison of the word mark consisting of two or three ordinary letters of the English alphabet is different from the test applicable to word marks having phonetic similarity. It was submitted that the initial letter difference in a short word mark or two letter marks is sufficient to distinguish the marks. Reliance was placed on an English decision of the Chancery Division reported in 1979 R.P.C. 355.

10. With regard to the submission of the defendants that the plaintiff cannot rely upon the registration of the trademark because of an absence of pleading in the plaint, it is relevant to point out that the plaintiff had stated in paragraph 12 of the plaint that in order to have statutory rights of registration conferred upon it, the plaintiff has duly filed for registration of its trademark/label under the Trade and Merchandise Marks Act, 1958. The registration of the trademark was granted only subsequently during the pendency of the suit. However, once the trademark is registered it shall relate back to the date of application as mentioned above. Therefore, in my view, there is sufficient pleading in the plaint with regard to the registration of the trademark and the objection of the defendants is not sustainable. As regards the alleged false claims made by the plaintiff with regard to the user of the trademark "GM" since 1999, that would be a matter of evidence. At this, prima facie, stage, all that needs to be seen is that the plaintiff has been using the trademark "GM". While the plaintiff has filed various documents indicating user of the trademark "GM" since at least the year 2000, no document whatsoever has been filed by the defendants indicating any prior user. The invoices that have been filed by the defendants did not mention the trademark "TM" and as of now, there is no evidence on record to show that the defendants had a prior user.

11. As regards the submission that only portions of the labels have been indicated in Annexure-A and Annexure-D-A-I, it must be pointed out that Annexure-A and Annexure-D-A-I are the trademarks/labels which are, in point of fact, to be compared and Annexures-B and D-B-1 are the trade dresses of the packing/cartons in which the electrical items are sold. Therefore, this plea of the defendants is also not tenable.

12. As regards the allegation of suppression of the material fact of having earlier instituted the Suit No. 1068/2003 claiming an identical relief, it must be pointed out that the earlier Suit No. 1068/2003 had been filed against some of the defendants herein. The plaintiff wanted to add further defendants and sought leave of the Court to add some more parties. The Court permitted withdrawal of the said suit with liberty to file a fresh suit. The order passed by this Court on 11.07.2003 reads as under:-

"11.07.2003

Present: Mr S.K. Bansal for the plaintiff.

S. No. 1068/03

Counsel for the plaintiff requests for leave to withdraw this suit with liberty to file a fresh suit since according to him some more parties are to be added. The leave prayed for is granted. Suit is dismissed with liberty to file a fresh suit on the same subject in accordance with law."

Thus, while dismissing the earlier suit, this Court had granted liberty to the plaintiff to file a fresh suit on the same subject in accordance with law. While it is true that the withdrawal of the said suit is not mentioned in the plaint, it is not, in my opinion, a material fact in view of the liberty granted by this Court for filing a fresh suit.

13. With regard to the submission that the present suit is barred under the principles of Order 2 Rule 2 of CPC, it would be pertinent to note that two suits had been field by the plaintiff in 2003, one being Suit No. 1068/2003 and the other being Suit No. 854/2003 (renumbered as CS(OS) 497/2005). While Suit No. 1068/2003 had been withdrawn, as indicated above, with liberty to file a fresh suit after adding certain other parties, Suit No. 854/2003 (renumbered as CS(OS) 497/2005) was continued. The latter suit was for permanent injunction to restrain infringement of the registered design, passing off, delivery up, etc. The prayers in that suit were different from the prayers in Suit No. 1068/2003. The causes of action were also distinct. Therefore, this objection of the defendants would also not be tenable at this stage.

14. Coming to the crux of the matter as to whether the trademark/label of the plaintiff and that of the defendant is deceptively similar or not, it would be pertinent to note that in a recent decision of the Supreme Court in the case of Ramdev Food Products Ltd v. Arvindbhai Rambhai Patel & Others: 2006 (8) SCC 726, the Supreme Court has observed that the test for determining deceptive similarity in an infringement action would be the same as in the case of a passing off action. The Court observed that although the defendants might not be using the actual trademark 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 could be proved. The Supreme Court observed that in a case for infringement where the defendant's trademark is identical with the plaintiff's mark, the Court will not enquire whether the infringement is likely to deceive or cause confusion. However, in the case of deceptive similarity, the test would be as to the likelihood of confusion or deception arising from similarity of marks and the test is the same, both in infringement and passing off actions. A reference to various decisions cited by the learned counsel for the plaintiffs with regard to deceptively similar trademarks would also be fruitful. In N. Ranga Rao & Sons v. Anil Garg and Others: 2006 (32) PTC 15 (Del), the trademarks `DIA' and `LIA' were held to be deceptively similar. In M/s. Pidilite Industries Pvt. Ltd v. M/s. Mittees Corporation and Another: 1989 PTC 151, the trademarks `TREVICOL' was held to be deceptively similar to the trademark `FEVICOL'. In Asha Soap Factory v. Dhanthak & Co. and Another: 1985 Arb. L. R. 176, the trademarks `BB' and `88' were held to be deceptively similar. In M/s. Hitachi Ltd v. Ajay Kr. Agarwal & Others: 1996 PTC (16) (DB), the trademark `Hitashi' was held to be deceptively similar to the trademark `Hitachi'. Other decisions of deceptively similar trademarks are as under:-

(i) TISCO and FISCO : 1992 (I) Arbitration Law Reporter 417 (The Tata Iron & Steel Co. Ltd., v. Mahavir Steels and Ors).

(ii) LAKME and LIKE-ME : 1996 PTC (16) 567 (Lakme Ltd., v. Subhash Trading);

(iii) NIREX and MIREX : 1984 PTC 97 (Nirex Industries (P) Ltd., v. Man Chand Foot Wear Industries);

(iv) M2 TONE and MV - TONE : 2004 (2) PTC 458 (Del) (Charak Pharma Private Limited v. Prashi Sharma Private Limited);

(v) G.E.C. and A.E.C. : AIR 1974 Punjab & Haryana 14 (The General Electric Co., v. Pyara Singh)

15. The test for determining whether one trademark is deceptively similar to another is based on the likelihood of confusion or deception arising in the minds of the consumers. Visually comparing the trade/label "GM" with the trademark/label "TM", one finds that they are prone to be confused for each other. The background, colour (red) is the same. The letters "GM" and "TM" are similar. The manner and style in which "GM" and "TM" are indicated are prone to be confused for one another. Looking at Annexures-A and D-A-I and comparing the two, there is no doubt in my mind that the two are deceptively similar. As regards Annexure B and Annexure D-B-I, if the elements of the trademarks "GM" and "TM" as indicated in Annexure-A and D-A-I (respectively) are removed, there would be no deceptive similarity between them (Annexure B and Annexure D-B-I). If the essential features as submitted by the learned counsel for the defendants were "G Magic" and "Touch Me", then the defendants ought to have no objection to the deletion or removal of the trade mark/label "TM" because even as per their submissions, this is not an essential feature.

16. Accordingly, the plaintiff has been able to establish a prima facie case in its favour and the balance of convenience also lies in passing an order of injunction whereby the defendants are injuncted from using the trademark/label "TM" as indicated in Annexure-D-B-I in respect of the products in question. However, the plaintiffs are not entitled, at this stage, to any injunction with regard to the trade dress of the box/carton as indicated in Annexure-D-B-I. The trade dress, as indicate in Annexure D-B-I can continue to be used by the defendants provided the trademark/label "TM" is removed therefrom.

With these directions, this application stands disposed of.