Joyo Plastics v. Mayo World

S.C. Gupte, J.:— This Motion is taken out in a trade mark infringement and passing off suit. Though the Motion is shown for ad-interim reliefs, since the pleadings in the Motion are complete, with consent of Counsel for both parties, the Motion is taken up for final hearing.

2. The Plaintiff is engaged in the business of manufacturing and exporting household plastic products like bathroom accessories, kitchenware, utility products, containers, flasks, silicon cake mould products, etc. The Plaintiff is a registered proprietor of the trade mark “JOYO” in Class 21 for use upon or relation to its household plastic products. The Plaintiff claims to have conceived and adopted this trade mark in or about 1984. The registration of the trade mark “JOYO” in Class 21 is held by the Plaintiff as of 7 July 1994. The registration of the trade mark has been renewed from time to time and is valid as on this date. In addition to the word mark “JOYO” registered in Class 21, the Plaintiff also holds registration of word mark “JOYO” in Class 20 and label marks containing the word “JOYO” in Classes 8, 16, 20 and 21 of the Schedule to the Trade Marks Rules, 2002. These marks are hereinafter collectively referred to as “JOYO” marks.

3. The Defendants are also engaged in the business of manufacturing and marketing household products. The Defendants claim themselves to be part of a group known as ‘Arora Group of Companies’ consisting of firms and entities owned by members of Arora family. Whilst Defendant No. 1 is a trading concern and Defendant No. 2 is a manufacturer, Defendant No. 3 is the registered proprietor of the trade mark “MAYO” in Class 21 for household goods and utensils of which Defendants No. 1, 2, 4, 5 and 6 claim to be permitted users. Defendant No. 2 is also a registered proprietor of the design of its distinctive plastic buckets, sold under the trade mark “MAYO” as depicted in Exh.L1 and Exh.L3 of the Plaint.

4. Since the Defendants are registered proprietor/permitted users of the trade mark “MAYO”, the Plaintiff, at this stage, presses its Notice of Motion only for reliefs in the matter of passing off.

5. The gist of this passing off action is this. In December 2013, the Plaintiff claims to have conceived and adopted a new and original design for its plastic bucket having a distinctive shape, configuration and pattern. It is the Plaintiff's case that by virtue of a long and continuous use of this distinctive and original design along with “JOYO” marks, the particular buckets along with “JOYO” marks have come to be well known in the market as originating from, and exclusively associated with, the Plaintiff. The Plaintiff relies upon various sample invoices and brochures relating to the said buckets and the other range of products, together with statements of sales separately in respect of the buckets and the other range of products sold under “JOYO” marks. It is the grievance of the Plaintiff that some time in September 2015, the Plaintiff came across a similar bucket in the market containing identical features of design as the Plaintiff's bucket. The Plaintiff, in the premises, issued a caution notice in September 2015 in local newspapers cautioning the public about the use of the particular design as being in violation of the Plaintiff's rights under the law. The Plaintiff claims to have learnt upon investigation, in October 2015, that defendant No. 1 was manufacturing, marketing and selling these buckets under the trade mark “MAYO”. It is the case of the Plaintiff that the design of the impugned bucket is identical to the Plaintiff's design with the only alteration being the use of the trade mark “MAYO” in place of “JOYO” on the bucket. It is submitted by the Plaintiff that considering the similarity of all features of the product together with phonetic and visual proximity of the Defendants' mark “MAYO” with the Plaintiff's registered trade mark “JOYO”, there is a distinct possibility of confusion and deception in the mind of consumers and traders. It is the Plaintiff's case that such user of features of design coupled with the user of a similarly sounding trade mark “MAYO” amounts to passing off the Defendants' goods as those of the Plaintiff.

6. The gist of Defendants' defence is this. It is the case of the Defendants that Defendant No. 3 is the registered proprietor of trade mark “MAYO” in Class 21 in relation to plastic household and thermoware goods, kitchen utensils, containers, etc., which registration is valid and subsisting as of date. The Defendants are part of ‘Arora Group of Companies’, each of them engaged in different activities, namely, trading, manufacturing, distributing, etc. It is submitted that these are all family firms and entities who are either proprietor or permitted users of the registered trade mark “MAYO”. It is also case of the Defendants that they have also registered the design of their bucket under the Designs Act, 2000, and that all the Defendants are permitted users of this registered design and sell buckets of that design under the trade mark “MAYO”. It is submitted that the defendants conceived and adopted their trade mark “MAYO” in December 2009 from the name of their family deity “Ma Yogmaya” worshiped by the family since generations. The Defendants hold registration of this mark as of 17 January 2011, though user is claimed since 2009, and of the design as of 13 August 2015 for the buckets manufactured and sold by them. It is claimed by the Defendants that they have been manufacturing, distributing and selling “MAYO” range of products which are described in Exh.B1 to Exh.B10 of the Affidavit in Reply. The Defendants rely on random sample invoices of Defendants No. 2, 3, 4, 5 and 6, along with statements of turnovers of each of the Defendants certified by Chartered Accountants and copies of calenders, brochures, leaflets, etc. along with statements of advertisement and promotional expenses. It is the Defendants' case that right since the year 2009, the goods bearing the mark “MAYO” have been continuously and extensively available in the market along with the Plaintiff's goods. The Defendants claim that the rival products of the parties are present all over the market with equal prominence and visibility for the last many years. It is submitted that the rival marks of the parties, namely, “JOYO” and “MAYO” are phonetically and structurally as well as visually distinct and dissimilar. It is submitted that there is no special feature or element of design, either novel or distinctive of the Plaintiff's goods insofar as the buckets referred to by the Plaintiff are concerned; that there are several buckets of other manufactures in the market with similar circular shape with a ring in a different colour at the top rim of the bucket. It is submitted that on the other hand, it is the Defendants who have a novel and distinctive design of bucket with a unique squircle shaped neck, which is registered by the Defendants under the Designs Act; and that these buckets with their distinctive shape and pattern, by virtue of their extensive sales in the market through the years, have come to be known as originating from, and associated exclusively with, the Defendants.

7. Learned Counsel for the Plaintiff relies upon Judgments of this Court in Gorbatschow Wodka Kg…Plaintiff; v. John Distilleries Ltd.…Defendant. 2011 (47) PTC 100 (Bom.) and Faber-Castell Aktiengesellschaft Notice of Motion (L) No. 1824/15 Suit (L) 696/15, in support of his contention that a passing off claim lies in respect of an article which, by reason of its distinctive appearance or shape or pattern, has acquired a reputation and goodwill in the market and that this claim of passing off lies despite the fact that the rival trader holds a registration for the particular design. There is no quarrel with this proposition, but the point is whether the Plaintiff has made out the ingredients of a case of passing off in connection with the shape or design of its product coupled with the use of its mark. There are at least three ingredients, which ought to be made out by the Plaintiff for claiming an injunction in passing off in any such case. Firstly, it is necessary for the Plaintiff to show that the design adopted and used by the Plaintiff has novel or unique features, which are capable of distinguishing the Plaintiff's goods from those of other traders. Secondly, it is necessary for the Plaintiff to show that the Plaintiff has acquired sufficient reputation and goodwill in the distinctive appearance of the article so as to furnish him a cause of action in passing off. Thirdly, the Plaintiff needs to show that the presence of the Defendants' article of the same appearance as the Plaintiff's is likely to lead to deception and confusion in the minds of customers. I am afraid, none of these essential ingredients is made out by the Plaintiff at least at this prima facie stage.

8. As demonstrated by the Defendants in their Reply to the Notice of Motion, documents submitted therewith and specimens of goods produced in Court, the design used by the Plaintiff for its buckets is nothing but a commonly used circular shaped bucket with a separate and differently coloured stripe placed at the rim of the bucket with trade mark running along its inside and outside. The Defendants have produced photographs of similar buckets of other manufacturers and also specimens of these buckets in Court in support of their contention together with several design registration certificates of other manufacturers of similar shapes and features or patterns with some additional distinctive elements in each of them. These exhibits do indicate that there is no novelty or originality in the design of the bucket manufactured and sold by the Plaintiff.

9. Learned Counsel for the Plaintiff submits that it is no defence to a rival trader who either infringes a registered trade mark or passes off goods that others have been equally guilty of infringement or passing off. So also, it is submitted that mere registrations of designs or existence of similar shaped products in the market do not, at any rate, disclose the extent of reputation enjoyed by these other manufacturers in the market. Whilst this is so, the photographs as well as designs and specimens of products produced in the Court are not used to show reputation in the market of rival goods produced by others, but merely to show that there is no distinctive feature, or novel or original element in the design of the Plaintiff. The materials produced before the Court certainly demonstrate, at least at this prima facie stage, that there is no distinctive appearance or novel or original features, so far as the Plaintiff's goods are concerned.

10. Secondly, the Plaintiff has failed to establish, at this prima facie stage, that the Plaintiff has acquired sufficient reputation and goodwill for the alleged distinctive appearance of the article. On the Plaintiff's own showing, this particular bucket together with its shape and get-up was conceived by the Plaintiff in December 2013. The Plaintiff's sales of goods including buckets prior to December 2013 are of no avail in showing the Plaintiff's reputation or goodwill in the so called distinctive appearance of the article. The material produced in the Plaint certainly does not show that between December 2013 and August 2015, when the Defendants claim to have their design registered and started manufacturing their rival goods, the Plaintiff has acquired substantial reputation and goodwill in the appearance of the article, so as to furnish a cause of action in passing off. The Chartered Accountant's certificate produced by the Plaintiff is in respect of ‘better home buckets’ on the one hand and the total turnover of the Plaintiff on the other. There is nothing on record, save and except the brochure produced by the Plaintiff, to connect the particular shape and get-up of the particular bucket for which rights are claimed with ‘better home buckets’ referred to in the Chartered Accountant's certificate. At any rate, the alleged sales of ‘better home buckets’ between January 2014 and August 2015 are not sufficient to establish the Plaintiff's case of substantial reputation and goodwill in the distinctive features of the bucket, so as to entitle the Plaintiff to an interim injunction against a rival trader, particularly when the rival trader holds a registration in respect of his design.

11. Defendants also have established that they have extensively manufactured and sold rival goods bearing trade mark “MAYO”. The Defendants have established prima facie that the particular design of their bucket with a unique squircle shaped neck is a new and novel design distinct from the regular circular shaped bucket in the market. The Defendants hold registration for such design. Prima facie there is nothing to suggest that this design has been dishonestly adopted by the Defendants with a view to trade on the reputation and goodwill of the Plaintiff. Considering the existence of several rival goods, which have the same shape and design as the Plaintiff and also considering the fact that rival range of the products under trade marks “JOYO” and “MAYO” have been simultaneously and with same prominence present in the market, with no instance of deception or confusion actually placed on record, prima facie there is no case of any likelihood of deception or confusion on account of the shapes of rival goods or marks of the parties.

12. In the premises, there is no case made out for grant of any interim injunction. The requirements of justice may well be met, if the Defendants are asked to maintain accounts in respect of sales of their rival buckets. Hence, the following order is passed:

(i) The Defendants are directed to maintain separate accounts in respect of sales of their buckets, which are described in Exhibit L1 to L3 to the Plaint.

(ii) The prayers of interim injunction and receiver made in the Motion are rejected.

(iii) The Notice of Motion is disposed of accordingly.

(iv) There shall be no order as to costs.