Soumen Sen, J.:— The Court:- The plaintiff is a manufacturer of shoes.
2. The defendant has a division under the name and style “Max” which deals with fashionable clothing accessories and footwear in India.
3. This is an interim application filed by the plaintiff/petitioner in aid of the above suit complaining of infringement of the trade mark “PRO”.
4. The facts stated in the petition are summarized below.
5. The plaintiff has been manufacturing, about three hundred varieties of shoes using the trade mark “PRO”. The plaintiff claims to have been using the word mark “PRO” from 10th June, 1997. This word mark was registered on 16 of June, 2005 with effect from 10 June, 1997. The plaintiff is also the owner of a label mark comprising of this word mark “PRO” with a stylized design over it from 13 October, 2009. This label mark was registered on 16 March, 2011. The plaintiff is also the owner of copyright of this mark by virtue of registration on 19 July, 2011.
6. It, however, may be noted that beneath the word “PRO” are written the words “splitting style”.
7. It is stated that in August, 2014, the petitioner for the first time became aware that the respondent was selling footwear by using the trade mark “PRO” being the exclusive property of the petitioner. Subsequently, the petitioner has been able to ascertain that the respondent was, in fact, marketing footwear incorporating the whole trade mark “PRO” of and belonging the petitioner with a suffix “ACTIVE”. The petitioner issued a cease and desist notice. The defendant responded to it by filing a suit alleging groundless threat. The interim application filed by the defendant was disposed of by recording that the order of injunction would no way prevent the plaintiff herein to initiate any legal proceedings as against the present defendants in accordance with law.
8. Mr. Pratap Chatterjee, the learned Senior Counsel appearing on behalf of the petitioner submits that the word “PRO” is prominently displayed on the tongue of the footwear of the defendant with florescent mark thereby highlighting the word “PRO” which is a clear case of infringement of the word mark “PRO”. The learned senior Counsel has referred to Sections 28, 29 and 31 of The Trade Marks Act, 1999 (hereinafter referred to as the “said Act”) and submits that being the registered proprietor of the word mark “PRO”, the plaintiff has the exclusive right to use the mark. It is submitted that a registered trade mark is infringed by a person if he uses the said mark without authority and in a manner which is likely to cause confusion on the part of the public. The absolute similarity or identity of the two marks are not required. The respondent is using the word mark “PRO” in a highlighted manner with the suffix “ACTIVE” just above the throat line on the tongue of its footwear prominently visible with no other distinctiveness which tantamounts to use of the mark under Section 29(6) of the Trade mark Act, 1999. It is submitted that if the distinctive element of a registered trade mark consist of or includes word the trade mark, is infringed by spoken use of those words as well as by their visual representation. It is submitted that the products are identical and the manner in which the said word mark “PRO” is used by the defendant it is likely to cause confusion. In any event, the defendant has not offered any explanation for using the word “PRO” which the plaintiff is using since 1997. The petitioner over the years have spent considerable amount for publicity of the trade mark “PRO” and the said mark has acquired considerable reputation and goodwill in the market. Accordingly, whenever persons in the footwear trade or members of the public have the occasion to buy footwear or see footwear they have always associated the plaintiff with the said mark and they have taken the same to be the footwear of the petitioner and none other. The word mark “PRO” is written in a distinctive and stylized manner and the said word mark is the essential feature of the label. It is submitted that the success of the petitioner's products and/or any product associated with its trade marks “PRO” is very substantial by reason of which numerous unscrupulous persons have sought to imitate the same. The learned senior Counsel has referred to an unreported decision in the matter of Khadim India Ltd. v. Bata India Ltd. No. 1968 of 2012 with CS No. 229 of 2012) decided on 2nd August, 2012 to argue that similar attempt by Bata India Ltd. to use the word mark “PRO” was resisted and an interim order was passed restraining the Bata India Ltd. to use the said mark “PRO” which the Bata India Ltd. had been doing by affixing the said mark inside the shoe at the place where the heel rests. It is submitted that the Court is required to take into consideration the doubt that might create in the mind of unwary customer of imperfect recollection while purchasing the said product.
9. Mr. S.N Mukherjee, learned senior Counsel appearing on behalf of the respondent submits that the plaintiff did not offer any explanation for not approaching this Court soon after cease and desist notice or soon after leave was given to the petitioner to take action in accordance with law. It is submitted that the plaintiff in Paragraph 34 has claimed that the said word mark is in Italics and is used in a particular stylized manner. There is no phonetical similarity between the word mark used by the plaintiff, namely, “PRO” and the mark used by the defendant, namely, “Pro-Active”. The word “PRO” when used as a noun means professional and when used as an adjective it means “in favour”. “Pro Active” means taking the initiation. Mr. Mukherjee, has referred to a large number of documents to show that there are various entities and/or Companies that are using the word “PRO” as a mark or label mark in relation to their product. The plaintiff did not take any action against such entities since the plaintiff knew that the word “PRO” is common to the trade and is otherwise of a non-distinctive character. The averments made in the plaint would show that the products of Khadim are only available in the Khadim showroom whereas the products of Max are only available in the Max outlets in the City. It is submitted that the argument of unwary customer of average intelligence and imperfect recollection would not be applicable in the instant case as the persons who visit the said outlets are of discernible mind and are conscious of the brand they are using. The learned senior Counsel has referred to Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.. reported at (2001) 5 SCC 73 in order to show the tests that are required to be applied in such cases.
10. Mr. Mukherjee has referred to the decision of the Hon'ble Supreme Court in Skyline Education Institute (India) Pvt. Ltd. v. S.L Vaswani reported at (2010) 2 SCC 142 for the proposition that when the mark is devoid of any distinctive character and it is found that the said mark is being used widely by various entities, no injunction should be granted. It is submitted that the word “PRO” is a generic word because the same is being used by thousands of persons as part of their trade name or business activity.
11. In response to the said argument, Mr. Pratap Chatterjee, learned Senior Counsel submitted that the registration of the word mark itself is a prima facie evidence of the validity of such registration inasmuch as the registration of the mark gives the owner of the mark a valuable and indefeasible right to use it exclusively and jealously protect such mark as opposed to an action based on passing off which solely rests on the concept of prior user. It is submitted that Paragraph 35 of the judgment in Cadila (supra) on which Mr. Mukherjee has relied upon the Hon'ble Supreme Court stated that in an action for passing off on the basis of unregistered trade mark, generally in deciding the question of deceptive similarity, seven factors are required to be taken into consideration which, however, would not be applicable in an action for infringement of a registered mark. It is submitted that it cannot be doubted that the degree of resemblance between the marks phonetically or otherwise are similar inasmuch as the nature of the product in respect of which they are using as trade marks are also similar. The judgment of a Single Bench of the Delhi High Court in Walter Bushnell Pvt. Ltd. v. Miracle Life Sciences reported at (2014) 59 PTC 339 (Del) is cited for the proposition that where there is no allegation that the defendant has challenged the registered trade mark of the plaintiff and there is no materials on record to show that it is a generic name, the Court must recognize that a registered trade mark holder is enjoying an exclusive and statutory rights which should be adequately protected. In the instant case, no application has been filed by the defendant before the Registrar for cancellation of the trade mark “PRO” adopted by the plaintiff. It was held in Walter (supra) that unless the trade mark challenged by the defendant is cancelled or ratified it is not the practice to infringe the same in an action for infringement of the trade mark.
12. The learned senior Counsel has also referred to the Paragraphs 35 and 36 of the said report in answer to the argument of Mr. Mukherjee, Senior Advocate that large number of parties are using the same trade marks. It was held in Paragraphs 35 and 36 that the defendants are required to establish that such third parties are actually using similar trade marks. The learned single Judge has quoted with approval the views expressed in Express Bottlers Service Pvt. Ltd. that to establish the plea of common use, the use by the other persons should be shown to be substantial. The mere use of the name is irrelevant because a registered proprietor is not expected to act on filing suits or proceedings against infringers who are of no consequence. Moreover, mere delay in taking action against infringers is not sufficient to hold that the registered proprietor has lost the mark intentionally unless it is positively proved that delay was due to intentional abandonment of the right over the registered mark.
13. The judgment of the Skyline (supra) was distinguished by submitting that the Hon'ble Supreme Court was considering an action for passing off and not an infringement of a trade mark. It is submitted that it was found that the plaintiff in the said case did not have the required approval or affiliation whereas the defendants are affiliated to statutory bodies. It was noticed in the said judgment in Paragraph 26 that the word “skyline” is being used by various companies/or organizations as also for describing different types of institutes/institutions. The voluminous record produced by the respondents before the Hon'ble Supreme Court also shows that in India as many as 117 companies including computer and software companies and institutions are operating by using the word “skyline” as part of their name/nomenclature.
14. Section 2(m) of the Act gives an inclusive definition of ‘mark’. ‘Mark’ includes amongst others ‘word’. Section 2(h) defines “deceptively similar”. It states that a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that the other mark as to be likely to deceive or cause confusion. Under Section 29 a registered trade mark is infringed, if -
(a) the mark is identical and is used in respect of similar goods or services; or
(b) the mark is similar to the registered trade mark and there is an identical or similarity of the goods or services covered by the trade mark; or
(c) the trade mark is identical and is used in relation to identical goods or services;
15. and that such use is likely to cause confusion on the part of the public or is likely to be taken to have an association with the registered trade mark.
16. This clause further lays down that in cases falling in category (c) above, there will be a legal presumption of likelihood of confusion on the part of the public.
17. The ingredients of Section 29(1) are as follows:-
1. The plaintiff's mark is registered.
2. The defendant's mark is identical with, or deceptively similar to the plaintiff's registered mark.
3. The defendant's use of the mark is in the course of trade in respect of goods/services covered by the registered trade mark.
4. The use by the defendant is in such manner as to render the use of the mark likely to be taken as being use as a trade mark.
5. The defendant's use of the mark is not by way of “permitted user” and accordingly unauthorized infringing use.
18. (See Venkateswaran on Trade Marks And Passing-Off, 5 Edition, 2010)
19. The function of a trade mark is to distinguish the goods of one person from others.
20. As was said by UPJOHN, J., “A man infringes the mark of another if he seizes upon some essential feature of the plaintiff's mark. That essential feature may be ascertained by the eye or by the ear in this sense, that goods bearing that mark may be likely to become known by a certain name……Furthermore evidence is admissible to establish what is or has become an essential feature, but evidence is not essential if the Court feels satisfied on inspection in coming to the conclusion that some particular feature is a distinguishing feature of the Mark allegedly infringed”. (Cluett Peabody & Co. Inc. v. McIntyre Hogg Marsh & Co. Ld.; 1958 RPC at 351)
21. In Hindustan Embroidery Mills Pvt. Ltd. v. K. Ravindra & Co.*, reported at 1974 (76) Bom LR 146 it was held that-
“It is not the practice to consider the validity of the registration of a trade mark on motion for interlocutory injunction taken out by the persons who has got the mark registered in his name. While a mark remains on the register (even wrongly), it is not desirable that others should imitate it.”
22. A trade mark is undoubtedly a visual device; but it is well-established law that the ascertainment of an essential feature is not to be by ocular test alone. Since words can form part, or indeed the whole, of a mark, it is impossible to exclude consideration of the sound or significance of those words. Thus it has long been accepted that, if a word forming part of a mark has come in trade to use to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader, for confusion is likely to result. It is sufficient to refer to the words of Lord Cranworth L.C, in Seixo v. Provezende (1866 LR 1 Ch. 192) ‘If the goods of a manufacturer have, from the mark or device he has used, become known in the market by a particular name, I think that the adoption by a rival trader of any mark which will cause his goods to bear the same name in the market, may be as much a violation of the rights of that rival as the actual copy of his device’. The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”.
23. The function of the trade marks is to identify the source of manufacture of goods. It is an indicia of origin. In the market the chief value of the trade mark is its power to stimulate sales. In law, the fundamental theory upon which the interest in the trade mark is protected is that a trade mark identifies the goods coming from a particular source, and that an infringing designation tends to divert customer from that source by falsely representing that other goods come from it. (See Ellora Industries v. Banarasi Dass Gupta; AIR 1980 Del 254). The defendant also cannot take advantage of prior user as available to them under Section 34 of the Act as it is an admitted position that the defendant has adopted mark “Pro-Active” in respect of footwear in May, 2004.
24. The coinage of the word “PRO” may not be an invented word. The word is found in the dictionary. However, challenge to registration of the word mark “PRO” in this proceeding is not permissible.
25. Turning to the two marks, it is obvious that the letter “PRO” is prominently present in the two marks except for the use of the word “ACTIVE” in the infringing mark. On the first impression, it is obvious that there is every likelihood of deception or confusion by the user of the mark of the respondent. It is now well-settled that the Court while considering likelihood of deception or confusion must make allowance for imperfect recollection. Until the removal of the trade mark from the Register, there is presumption about the validity of the trade mark. Deception can be caused even without the word as prefix or suffix. Every word can be a trade mark. It is often said that an ordinary purchaser is not gifted with the powers of observation of a sherlock holmes. The question of deception or confusion has to be approached from the point of view of an unwary purchaser. The marks must be looked at from the first impression of a person of average intelligence and imperfect recollection and must be compared as a whole microscopic examination being impermissible. The statute does not require actual deception or confusion to found an action based on infringement. (See The The Hearst Corporation…Plaintiff; v. Dalal Street Communications Ltd.…Defendants.; Cal LT 1995 (2) HC 346 and Wockhardt Limited… v. Aristo Pharmaceuticals Limited….; 1999 PTC (19) 210)
26. There is no dispute that the plaintiff is the proprietor of the word mark “PRO” and the matching label mark as above mentioned. The plaintiff is also having a copyright in the label. In view of the aforesaid and in absence of any application for rectification of the trade marks whether the word “PRO” is of common use or that the shoes are sold only in the retail shops of the defendant or that there are other manufacturers who are using the mark or a part of the word mark “PRO” is immaterial and inconsequential. As has been noticed by Justice I.P Mukerji in G.A No. 1968 of 2012 that the documents shown to the Court the registered marks were prefixed by the word “PRO” by itself is not the registered mark of any other person so is the case here. It is well-settled that if two marks are similar and one of them was registered, the registered proprietor of the mark could bring an action to restrain an unregistered mark from using the mark. Furthermore, if there was visual and phonetical similarity, no further evidence is required.
27. In the instant case, the mark of the defendant is deceptively similar to the mark of the plaintiff. It is likely to create confusion. Moreover, it appears that the defendant has used florescent to highlight the word “PRO”. The word “ACTIVE” in conjunction with the word “PRO” does not make much difference when the mark as a whole is considered. The defendant needs to explain the adoption of the word “PRO” in its product since the fact remains that the plaintiff is using the said word mark much before the defendant inasmuch as the plaintiff is the registered owner of the word mark “PRO”. In Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia reported at (2004) 3 SCC 90 it was held that “the law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.”
28. In view of the aforesaid, I am prima facie of the view that the petitioner is entitled to an interim protection. There shall be an order in terms of Prayer (a) of the Notice of Motion. There shall also be an order in terms of Prayer (h) of the Notice of Motion to confine to symbolic possession only. The defendant will furnish to the Receiver an inventory of the stock with the above trade mark today and the stock on the date the inventory is furnished by them. The Receiver will cross check the inventory, on a random basis.
29. However, the defendant will be entitled to sell the above products by obliterating the word “PRO” from the shoes. In that event they will furnish a fresh inventory to the Receiver of the entire stock of the subject shoes with regard to which this exercise has been done. The Receiver will be at liberty to cross check as above and thereafter the defendant will be permitted to sell the changed product.
30. The Receiver may engage a specialized agency for verifying the inventory furnished by the defendant, at the cost of the plaintiff.
31. Mr. Robiprasad Mukherjee, Advocate, member of the Bar Library Club is appointed as a Receiver at an initial remuneration of 1500 GMs to be paid by the plaintiff.
32. The Receiver is to file a report by the adjourned date Affidavit-in-opposition be filed by March 27, 2015, reply thereto if only by April 10, 2015. The matter shall appear under the heading “Motion Adjourned” on April 20, 2015.
33. Urgent xerox copy of this order, if applied for, be given to the parties on usual undertaking.