M/s J.K.Oil Indus. v. M/s Ganpati Food Products & ors.

Honble Mr. Justice Janak Raj Kotwal, Judge Appearance: For the appellant/petitioner(s) : Mr. Sunil Sethi, Sr. Adv. with Mr. Ankesh Chandel, Adv. For the respondent(s): Mr. Aditya Gupta, Adv. and Mr. Raja Mohit Bucha, Adv.

(i) Whether to be reported in Press, Journal/Media: Yes/No

(ii) Whether to be reported in Journal/Digest: Yes/No

1. This appeal arises in a suit for infringement of Trade Mark under sections 134 and 135 of the Trade Marks Act, 1999 (hereinafter to be referred as the Act) against the order dated 14.08.2017 passed by the court of learned District Judge, Jammu, whereby appellants application for grant of temporary injunction has been dismissed.

2. Heard Mr. Sunil Sethi, learned Senior Advocate appearing on behalf of the appellant and Mr. Aditya Gupta, Advocate appearing on behalf of the respondents. CIMA No. 280/2017 Page 2 of 22

3. The appellant (plaintiff) claims to be a partnership firm, dealing in the business of processing and marketing of Mustard(edible) oil, Vanspati oil and Refined oil and to have adopted and using the word/mark/device/brand/lebel TAJ MAHAL and device of TAJ MAHAL as a trade mark in relation to their goods and business in the said goods. The respondent (defendant) No. 1 has also entered the business of manufacturing the similar goods, whereas the respondent No. 2 is marketing the products being manufactured by respondent No. 1. It is contended by the appellant that respondents have adopted and started using or intend to use, in relation to their goods and business, the trade mark bearing the word/mark Mumtaz Mahal Label.

4. In the suit filed by the appellant inter alia permanent injunction is sought against the respondents restraining them and all others acting for and on their behalf from using, selling, soliciting, exporting, displaying, advertising or by any mode or manner dealing in or using the impugned mark Mumtaz Mahal Label (word/mark Mumtaz Mahal). It is contended by the appellant in the plaint filed before the trial court that the impugned trade mark/label adopted and being used by the respondents is identical with and deceptively similar to the appellants registered trade mark and copyright in each and every respect including phonetically, visually, structurally, in its basic idea and in its essential features. The goods and business of the respondents are also same/similar/allied/cognate nature to that of CIMA No. 280/2017 Page 3 of 22 the appellant. It is alleged that the respondents dishonestly and fraudulently adopted trade mark Mumtaz Mahal Label, with the word MAHAL identical to appellants trade mark TAJ MAHAL and is creating confusion and deception in the market. In fact the impugned trade mark as a whole is highly deceptively similar to appellants trade mark TAJ MAHAL Label. It is contended further that respondent No. 1 is not proprietor of the impugned trade mark Mumtaz Mahal Label and has no right to use the same in any manner.

5. Respondent No. 1 in his written statement before the trial court, while not denying that the respondents are using Mumtaz Mahal as trade mark for their business, have contended that there is not even iota of similarity between their Trade Mark and that of the appellant. It is contended further that the word Mahal is no sense creates any kind of confusion with regard to the brand and in no way is misleading with regard to the trade mark of the appellant. The depiction of art work on the brand of the appellant is that of TAJ MAHAL and on the brand of answering respondents is that of Mumtaz Mahal who happens to be a lady. The allegation of visual, structural, phonetically or artistic similarity between the two trade marks/label has been denied and it is contended in this behalf that there is no similarity in the description of the two brands and the two brands are distinguishable by name and graphically. The respondent No. 1, CIMA No. 280/2017 Page 4 of 22 however, has admitted that he has started manufacturing of brand Mumtaz Mahal after it got the permission to do so in the month of March, 2017 and the AGMARK certification from competent authority. He has applied for registration of said trade mark with the competent authority.

6. Learned trial court in the impugned order, while dismissing the application for temporary injunction has taken the view that an average customer would perceive the appellants mark in its overall effect as representing TAJ MAHAL Sarson oil with the sketch of TAJ MAHAL, whereas the consumers would perceive the green format the letters Mumtaz Mahal Mustard oil with a sketch/portrait of Mumtaz Mahal with a representation of oil in bowl and seeds. Learned trial court has thus held that there is no likelihood of confusion in respect of the two marks as both the marks are different in their representation and even phonetic and there was no deceptive similarity between the two resulting in infringement of appellants trade mark.

7. Learned Senior Advocate, Mr. Sunil Sethi, appearing on behalf of the appellant submitted that the learned trial court has fallen in error in appreciating the inherent deceptive similarity in the Trade Mark being used/proposed to be used by the respondents with the registered Trade Mark of the appellant and in that learned trial court has failed to appreciate the controversy in its true and correct perspective. Learned counsel argued that targeted CIMA No. 280/2017 Page 5 of 22 consumer and the nature of the goods are important factors to be kept in mind while deciding grant of relief in a suit for injunction based on deceptive similarity between the two trade marks. Learned counsel contended that 80 per cent of the targeted consumer of the appellants goods is rural based. The basic idea behind the use of brand name by the respondents and the existence of word Mahal in the two trade marks creates a deceptive similarity between the registered trade mark of the appellant and the trade name being used by the respondents. There is every possibility of the consumers in general and rural consumers in particular being mislead that the appellant has started another brand by the name of Mumtaz Mahal. Learned senior counsel argued that position would have been different had there been no similarity in the goods being manufactured/marketed by the appellant on one hand and respondents on the other. Learned counsel urged that the respondents have selected the impugned word mark dishonestly and fraudulently to create confusion and deception in the mark. Learned counsel relied upon Supreme Court judgments in Parle Products (P) Ltd. V J. P. and Co. Mysore, (1972) 1 SCC

618 and Cadila Health Care Limited v Cadila Pharmaceutical Limited, AIR 2001 SC 1952: (2001) 5 SCC 73.

8. Learned counsel for the respondents, Mr. Aditya Gupta per contra supported the impugned order. Learned counsel CIMA No. 280/2017 Page 6 of 22 argued that the two word marks cannot be said to be identical as they are altogether two different terms. Learned counsel argued further that there is no visual or phonetically similarity between two marks and possibility of any confusion or deception is ruled out by the different labels in which the word marks are being used by the two sides. Learned counsel emphasized the glaring difference between the portrait of Taj Mahal in the label adopted by the appellant and portrait of a queen in the label adopted by the respondents and clear distinction in the colour combination of the two. Learned counsel relied upon F. Hoffmann-LA Roche and Co. Ltd. v Geoffrey Manner and Co. Pvt. Ltd, 1969 (2) SCC 716 as also Parle Product (P) Ltd. supra.

9. The annexure B to this appeal would show that the registered Trade Mark of the appellant firm is the word mark TAJ MAHAL. The copies of the labels/get-up packing comprising of the word marks and other writings, marks, devices and features being used by the two sides are available on the pleadings of the parties and originals were produced by learned respondents in the course of arguments. The main features of the two labels/get-up packings have been noticed. The label being used by the appellant comprises of the word mark Taj Mahal, which is slightly styled by artistic modifications by alphabets word Sarson Oil is written below the word mark at the top of the label. In the center there is portrait of the Taj Mahal with its CIMA No. 280/2017 Page 7 of 22 inverted reflection below it. The portrait is followed by words Taj Mahal Sarson Ka Teil in Hindi. At the bottom, there is the name of the manufacturer. On the other hand, the label being used by the respondent No. 1 starts with inscription Eat Pure, Live Healthy at its top. This is followed by portrait of a queen in the upper half of the label. The portrait at its bottom coincides with word mark Mumtaz Mahal, which is slightly styled by artistic modification of the alphabets. The word mark is followed below it by inscription of AGMARK, which is further followed by inscription Mustard Oil written on a red ribbon. At the bottom of the label, there is a bowl of oil and a longitudinal bowl containing oil seeds in and in front of it. The colored labels produced by learned counsel for respondents, would show that in general impression the label being used by appellant is in reddish background whereas that being used by the respondent No. 1 is in greenish background.

10. The main grievance of the appellant is that the Mark adopted and being used/proposed to be used by the respondents is identical with and deceptively similar to the registered Trade Mark of the appellant, phonetically, visually, structurally, in its basic idea and essential features and, therefore, there is likelihood of confusion being created to the consumers in the market. The appellant has, therefore, sought to make out a case of infringement of registered Trade Mark under section 29(1) of the Act. Section 29(1) is reproduced: CIMA No. 280/2017 Page 8 of 22

29. Infringement of registered trade marks-(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (underlining by me)

11. The terms deceptively similar is defined in clause (h) of section 2(1) of the Act. Clause (h) is reproduced: (h) deceptively similar- A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. (underlining by me)

12. Principles governing the resolution of disputes relating to identity and deceptive similarity of trade marks have been laid down by the Supreme Court from time to time. In Corn Products Refining Company v Shangrila Food Products Limited, AIR 1960SC 142, the registered trade mark Glucovita of therein appellant was pitted against therein respondents mark Gluvita, which they had applied for its registration. Dealing with the question as to whether there was likelihood of confusion between the two marks, which was the view taken by Desai, J. of the Bombay High Court in that case, the Supreme Court observed as follows:

19. We think that the view taken by Desai, J., is right. It is well known that the question whether the two marks are CIMA No. 280/2017 Page 9 of 22 likely to give rise to confusion or not is a question of first impression. It is for the court to decide that question. English cases proceeding on the English way of pronouncing an English word by Englishmen, which it may be stated is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity. It cannot be overlooked that the word is an English word which to the mass of the Indian people is a foreign word. It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole. So considered, we are inclined to agree with Desai, J., that the marks with which this case is concerned are similar. Apart from the syllable 'co' in the appellant's mark, the two marks are identical. That syllable is not in our opinion such as would enable the buyers in our country to distinguish the one mark from the other.

13. In AmritDhara Pharmacy v SatyaDeo, AIR 1963 SC 449, the respondents therein had applied for registration of trade name Lakshmandhara in respect of a medicinal preparations for the alleviation of various ailments. This was opposed by therein appellant whose earlier registered trade name was AmritDhara in respect of a similar medicinal preparation. The question, which arose was whether the name Lakshmandhara was likely to deceive the public or cause confusion to the trade. Supreme Court in this has observed: It will be noticed that the words used in the sections and relevant for our purpose are "likely to deceive or cause confusion." The Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case must depend on its own particular facts, and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion. On an application to register, the Registrar or an opponent may object that the trade mark is not registerable by reason of cl. (a) of s. 8, or CIMA No. 280/2017 Page 10 of 22 sub-s. (1) of s. 10, as in this case. In such a case the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause Confusion. In cases in which the tribunal considers that there is doubt as to whether deception is likely, the application should be refused. A trade mark is likely to deceive or cause confusion by the resemblance to another already on the Register if it is likely to do so in the course of its legitimate use in a market where the two marks are assumed to be in use by traders in that market. In considering the matter, all the circumstances of the case must be considered. As was observed by Parker, J. in Pianotist Co. s Application (1), 'which was also a case of the comparison of two words- "You must take the two words. You must Judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks (1) (1906)

23 R. P. C. 774,777. For deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be. adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks,that it differs from the mark on goods which' he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. (See Kerly on Trade Marks, 8th edition, p. 400.) CIMA No. 280/2017 Page 11 of 22

14. In regard to the facts of that case, Supreme Court in Amritdhara Pharmacys case supra noticed that the two names Amritdhara and Lakshmandhara are in use in respect of the same description of goods, namely, a medicinal preparation for alleviation of various ailments. Such medicinal preparation will be purchased mostly by the people, who instead of going to a doctor wish to purchase a medicine for quick alleviation of their suffering, both villagers and townsfolk, literate as well as illiterate. Supreme Court, while referring to earlier judgment in Corn Products Refining Co (supra) that the question has to be approached from the point of view of a man of average intelligence and imperfect recollection, opined that to such a man the structure and phonetic similarity of two names, Amritdhara and Lakshmandhara is likely to deceive or cause confusion. Supreme Court observed in this case that overall similarity of the said two composite words should be considered and held that an ordinary Indian villagers or towns man would go more by similarity of the two names in the context of widely known medicinal preparation which he wants for his ailments. Supreme Court in this case, while agreeing that the word dhara is not by itself decisive of the mater observed: We agree that the use of the word 'dhara' which literally means 'Current or stream' is not by itself decisive of the matter. What we have to consider here is the overall similarity of the composite words, having regard to the circumstance that the goods bearing the two names are medicinal preparations of the same description. We are CIMA No. 280/2017 Page 12 of 22 aware that the admission of a mar is not to be refused, because unusually stupid people, "fools or idiots", may be deceived. A critical comparison of the two names may disclose some points of difference. but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with. a similar name. The trade mark is the whole thing the whole word has to be considered a the case of the application to register 'Erectiks' (opposed by the proprietors of the trade mark 'Erector') Farwell, J. said in William Bailey (Birmingham) Ltd.8 Application (1) : "I do not think it is right to take a part of the word and compare it with a part of the- other Word; one word must 'be considered as a whole and compared with the other word as a whole................ I think it is a dangerous method to adopt to divide the word up, and seek to distinguish a portion of it from a portion of the other word".

15. In Durga Dutt v Navaratna Laboratories, AIR 1965 SC 980, Supreme Court has pointed out: In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendants mark is so close either visually, phoneticly or otherwise and the court reaches the .conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get- up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that CIMA No. 280/2017 Page 13 of 22 the added matter is sufficient to distinguish his goods from those of the plaintiff.

16. Supreme Court in Durga Dutt's case has held also that 'where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion in relation to goods in respect of which it is registered '. ''The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiffs mark. The purpose of the comparison is for determining whether the essential features of the plaintiffs trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade.

17. In F. Hoffmann-LA Roche and Co. Ltd. v Geoffrey Manner and Co. Pvt. Ltd, 1969(2) SCC 716, relied upon by the learned counsel for the respondents, the dispute related to therein appellants registered mark Protovit with therein respondents mark Dropovit. The question that came up for the consideration for the Supreme Court was whether the word Dropovit is CIMA No. 280/2017 Page 14 of 22 deceptively similar to the word Protovit and in other words, whether the respondents mark so nearly resembles the mark of the appellant as to be likely to deceive or cause confusion. Supreme Court in this case referred to the test for comparison of by the two word marks were formulated by Lord Parker in Pionotist Co. (supra), and held further that: It is also important that the marks must be compared as wholes. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. Thus in Layroma case Lord Johnston said': "...... we are not bound to scan the words as we would in a question of comparatioliterarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop."

18. In order to decide whether the word "DIROPOVIT" is deceptively similar to the word "PROTOVIT", Supreme Court in F. Hoffmann-LA Roche and Co. Ltd. noticed that each of the two words must, therefore, be taken as a whole word. Each of the two words consists of eight letters, the last three letters are common, and in the uncommon part the first two are consonants, the next is the same vowel 'o', the next is a consonant and the fifth is again a common vowel o. The combined effect is to produce an alliterationIf greater regard is paid to the 'uncommon element in these two words, it is difficult to hold that CIMA No. 280/2017 Page 15 of 22 one will be mistaken for or confused with the other. The letters 'D' and 'P' in "DROPOVIT" and the corresponding letters 'P' and 'T' in "PROTOVIT" cannot possibly be slurred over in pronunciation and the words are so dissimilar that there is no reasonable probability of confusion between the words either from the visual or phonetic point of view.

19. In Parle Products (P) Ltd. v. J. P. and Co. Mysore, (1972) 1 SCC 618, which has been cited by learned counsel on each side, the appellant therein were registered owners of trade mark, Gluco used for sale of their half pound biscuits. Another registered trade mark being used by them was a wrapper inter alia printed on it Parles Gluco Biscuits used for sale of their said biscuits. It was alleged by the appellants that therein respondents were manufacturing, selling and offering for a sale biscuits in a wrapper, which according to them was deceptively similar to their registered trade mark. Supreme Court in this case has held in para 9 of the reporting: 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. In this case we find that the CIMA No. 280/2017 Page 16 of 22 packets are practically of the same size, the color scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word "Gluco Biscuits" in one and "Glucose Biscuits" on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in ,our opinion who has a look at one of the packets to-day may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs goods, he might easily mistake the defendants' wrapper for the plaintiffs if shown to. him some time after he had seen the plaintiffs'. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendants' wrapper is deceptively similar to the plaintiffs' which was registered. We do not think it necessary to refer to the decisions referred to at the Bar as in our view each case will have to be, judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it.

20. In Cadila Health Care Limited v Cadila Pharmaceutical Limited, AIR 2001 SC 1952: (2001) 5 SCC 73, a learned three- Judge Bench of the Supreme Court referred with approval to the principles laid down in various decisions of the Court including Corn Products Refining Company, Amritdhara Pharmacy, DurgaDutt Sharma, F. Hoffman-Law Roche and Co. Ltd. (supra). Learned Bench also examined and expressed disagreement with the decision in S.M. Dyechem Ltd. Vs. CIMA No. 280/2017 Page 17 of 22 Cadbury (India) Ltd. (2000) 5 SCC 573,where in a passing off action the registered trade mark of plaintiff, 'Piknik' was pitted against the use of a mark, 'Picnic' by the defendant on the allegation that the defendant's mark was deceptively similar.

21. In S. M. Dyechem Supreme Court sought to examine the difference in the two marks 'Piknic' and 'Picnic.' by applying three tests;''1) is there any special aspect of the common feature which has been copied? 2) mode in which the parts are put together differently i.e. whether dissimilarity of the part or parts is enough to make the whole thing dissimilar and 3) whether when there are common elements, should one not pay more regard to the parts which are not common, while at the same time not disregarding the common parts?'' and came to the conclusion that, seeing the manner in which the two words were written and the peculiarity of the script the above three dissimilarities have to be given more importance than the phonetic similarity or the similarity in the use of the word 'Picnic' for 'Piknik'.

22. In regard to the view taken in S. M. Dyechem, Supreme Court in Cadila Health Care Limited held: ''With respect, we are unable to agree that the principle of phonetic similarity has to be jettisoned when the manner in which the competing words are written is different and the conclusion so arrived at is clearly contrary to the binding precedent of this Court in Amritdharas case (supra) where the phonetic similarity was applied by judging the two competing marks. Similarly, in Durga Dutt Sharmas case CIMA No. 280/2017 Page 18 of 22 (supra), it was observed that in an action for infringement, the plaintiff must, no doubt, make out that the use of the defendants mark is likely to deceive, but where the similarity between the plaintiffs and the defendants mark is so close either visually, phoneticly or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiffs rights are violated''.

23. Now coming to the case on hand, as indicated above, as per the documents produced as Annexure P-I to the plaint in the suit (Annexure-B to the memorandum of appeal) the registered trade mark of appellant-Firm (plaintiff) is the word mark in two words, TAJ MAHAL alone. The said word mark is being depicted by the appellant-Firm as their trade mark (brand name) on the labels and the packing of the goods, which the Firm is dealing in, description whereof is given in para 9 hereinabove. It is not shown that any other writing, mark, device or feature depicted in the label/packing has also been got registered as trade mark by the appellant. It is, nonetheless, noticed that, whereas all the alphabets of the trade mark, as it has been registered, are in capital letters, those depicted on the label/packing are small letters except alphabets T and M. On the other hand, the mark being used by the respondents is also in two words, Mumtaz Mahal with first alphabet of both the words in capital letter. This mark is being used on a label/packing having various other writings, marks, devices and features, which are also indicated in para No. 9 (supra). CIMA No. 280/2017 Page 19 of 22

24. It is not denied that the word mark TAJ MAHAL is registered trade mark of the appellant, whereas the word mark Mumtaz Mahal being used by the respondents is not registered. It is also not denied that the goods and the business, the two sides are dealing in, are of identical nature and, therefore, it cannot be denied also that the nature of the customers, who are likely to purchase these goods, would also be the same.

25. The question, thus, raised before the trial court in the suit filed by the appellant would be, primarily, whether the word mark, Mumtaz Mahal adopted by the respondents in relation to their goods and trade is identical with or deceptively similar to the registered trade mark TAJ MAHAL of the appellant-Firm as alleged by them, which amounts to infringement of their registered trade mark under section 29(1) of the Act.

26. Comparison of the appellants registered trade mark TAJ MAHAL with the word mark Mumtaz Mahal adopted by respondents, in my considered view does not make out a prima facie case of the two being identical to each other. They are rather two different terms. The submissions made by learned Senior Advocate appearing on behalf of the appellant at bar, however, were focused on the assertion that the word mark Mumtaz Mahal adopted by the respondents was deceptively similar to the registered trade mark TAJ MAHAL of the appellant and was likely to deceive and cause confusion in the CIMA No. 280/2017 Page 20 of 22 minds of the customers, who were mostly rural based. It was urged by the learned Senior Advocate that the word mark adopted by the respondents so nearly resembles the trade mark of the appellant, both visually and phonetically, and has been adopted dishonestly and fraudulently to deceive and confuse the customers, who are accustomed to use the brand of oils being manufactured and marketed by the appellant.

27. Under section 2(1)(h) of the Act a mark shall be deemed to be deceptively similar to another mark, if it so nearly resembles that other mark as is likely to deceive or cause confusion. It is very well settled that the similarity between two marks may be visual or phonetic or otherwise and if such a similarity is likely to cause confusion or deceive the customers, the similarity would be held as deceptive similarity.

28. On visual comparison, the two word marks, that is, TAJ MAHAL, as it has been got registered by the appellant and Mumtaz Mahal as adopted by the respondents, cannot be said to be visually similar so as to make out a prima facie case of deceptive similarity on that score. Phonetic similarity between the two word marks, however, cannot be completely ruled out, mainly because of the word MAHAL/Mahal, which is common in both. But, as it is well settled, what is to be considered is the overall similarity of the composite words and not to take out one word or a part of word from the registered CIMA No. 280/2017 Page 21 of 22 trade mark for comparison with the similar word or part of word in the impugned word mark. On overall comparison it would not be possible to take a view at this stage that the phonetic similarity of the composite words in the appellants registered trade mark and the word mark adopted by the respondents is too close to deceive the customers, in absence of any evidence or material to show that the deception is taking place and/or the sale of the appellant has actually declined after the product of the respondents has come in the market under the word mark adopted by them. That apart, it is important to note that the two word marks are being used by the two sides in altogether different label and get-up packing and, unless the evidence proves otherwise, normally there is little possibility of a customer, who is accustomed to purchase TAJ MAHAL brand, to get confused or deceived by looking at or being offered the product manufactured/marketed by the respondents. The label and get-up packing of the two brands is too distinct and distinguishable to obviate a prima facie case of possibility of deception or confusion to be caused to the customers accustomed to purchase the goods manufactured by the appellant. Question, however, would be as to whether in the facts and circumstances of the case possibility of deception and confusion is also there or not, which can be determined only on the basis of the evidence to be led by the parties. CIMA No. 280/2017 Page 22 of 22

29. For all that said and discussed above, learned trial court cannot be said to have committed any error of law and fact in refusing temporary injunction in the case and the appeal is therefore, dismissed.

30. Dismissal of the appeal, however, will have no bearing with the decision in the matter of registration of the trade mark of respondent No. 1 by the competent authority. (Janak Raj Kotwal) Judge Jammu: 12.12.2017 Rakesh This judgment is being pronounced by me in terms of Rule 138(3) of the J&K High Court Rules. (Dhiraj Singh Thakur) Judge Jammu: 12.12.2017