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TMI Blog2013 (10) TMI 501X X X X Extracts X X X X X X X X Extracts X X X X ..... that the defendant was agreeable to change the mark "TOLD MOM" as well as the label then being used by it for selling rum and sought time to suggest alternative names and labels. When further time for the said purpose was sought on 20th December, 2010, the defendant was restrained from using the name "TOLD MOM" and the label which it was then using and to which objection was taken in the plaint. No settlement could however be reached between the parties. The defendant ultimately proposed to change the name of its product from "TOLD MOM" to "TALL MOM" but which proposal was rejected by the plaintiff as recorded in the order dated 19th September, 2012. 3. Arguments on the application of the plaintiff for interim relief and of the defendant under Order 39 Rule 4 of the Civil Procedure Code (CPC), 1908 were commenced on 8th January, 2013, when upon enquiry, whether any evidence was required to be led in the suit, both counsels after consideration stated that the suit itself can be disposed of without any further evidence. Accordingly, arguments were heard on the suit itself. The defendant in the course of the said arguments filed an affidavit which was taken on record and considered. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... /mark "TOLD MOM" in respect of wine, spirit, liquor, whisky, rum, vodka, brandy, scotch and other alcoholic beverages included in Class 33 of the Trademark Rules, 2002; (xii) that on enquiry, the plaintiff also learnt that the defendant had only made minor amendments to the label and the label being used by the defendant was still an imitation of the label of the plaintiff; (xiii) that upon the defendant refusing to comply with the further cease and desist notice of the plaintiff, the suit was filed. 5. The defendant has contested the suit by filing a written statement, pleading: (a) that the mark "TOLD MOM" and the "TOLD MOM Label" of the defendant does not infringe or violate the common law or statutory rights of the plaintiff in the mark "Old Monk" and its label and the suit is actuated by trade rivalry; (b) that the defendant company since its incorporation in the year 1997 is one of the fastest growing company and has inter alia entered into a technical alliance with M/s Ian Macleod Distillers Ltd., a leading Scotland based Scotch company, for bottling of imported Scotch and has a vast distribution network in North India owning more than 3000 retail outlets in the States ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... and registration whereof had not been opposed by the plaintiff - examples of Old Tom, Old Mull, Old Monarch, Old Magic, Old Marc, Old Mcdonald etc. have been given - this evidences the fact that the word 'Old' apart from being publici juris, generic and descriptive is also common to the trade; (k) that even the Registrar of Trademarks while examining the trademark application of the defendant for registration of the mark 'TOLD MOM' filed in Classes 32 & 33 had not cited the plaintiff's Trademark 'OLD MONK' as a possible conflicting mark; (l) that the plaintiff's mark comprises of descriptive and generic words - both the words 'Old' and 'Monk' are dictionary words of common parlance; (m) that a comparison of the plaintiff's 'OLD MONK Label' and the defendant's 'TOLD MOM Label' shows dissimilarity in the shape of the bottle, colour of the label, shape of the label, font size, background behind the name, picture on the label (with the label of the plaintiff showing the profile of a bald man and the label of the defendant showing the profile of an old lady with a crown and spectacles) etc.; (n) that there are dissimilarities also in the products sold under the plaintiff's and the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... efendant has referred to / argued: (i) To paras No.65 to 68 and 72 to 77 of Khoday Distilleries Limited (Now known as Khoday India Limited) Vs. The Scotch Whisky Association (2008) 10 SCC 723 laying down that when and how a person is likely to be confused is a very relevant consideration; where the class of buyers is quite educated and rich, the test to be applied is different from the one where the product would be purchased by the villagers, illiterate and poor; that ordinarily alcoholic beverages would be purchased by their brand name and when the product is to be purchased both by villagers and town people, the test of a prudent man would have to be applied. It was further held that the test to be applied in a country like India may be different from the test in England, United Sates of America or Australia; (ii) Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980 as relied upon in Giani Gurcharan Singh Vs. Madhusudhan Singh 2011 (45) PTC 533 (Del) laying down that in an action based upon infringement, if the mark used by the defendant is visually, phonetically or otherwise so close to the registered trademark of the plaintiff that it is ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... r the plaintiff also drew attention to para No.6 of the said judgment holding the statutory protection is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by showing that something outside the actual mark itself distinguishes his goods from those of the registered proprietor); (vi) Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 but in which case also there was no registered trademark; (vii) The senior counsel for the defendant under instructions also offered the undertaking of the defendant not to sell the goods under the trademark 'TOLD MOM' and 'TOLD MOM Label' outside the State of Punjab and / or otherwise than through the Country Liquor Vends; (viii) Attention was invited to Section 29(2) of the Trademarks Act and it was contended that the present case would at best fall in Sub-clause (b) thereof, as of similarity to registered trademark and identity or similarity of goods covered by the registered trademark and not in Sub-clause (c) providing for identity with the registered trademark and identity of the goods and it was contended that the presumption under Section 29(3) of likely confusion on the part of the p ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 3.04[4][e], opining that confusion means more than a call to the mind and it is argued that merely because 'TOLD MOM' may remind of 'OLD MONK' is no reason to hold 'TOLD MOM' to be capable of causing confusion; and (xv) Toho Company Ltd. Vs. Sears, Roebuck & Co., 645 Federal Reporter, 2d Series 788 where the United States Court of Appeals, Ninth Circuit held that garbage bag seller's use of 'Bagzilla' and slogan 'monstrously strong bags' posed no likelihood of confusing consumers by suggesting that the trash bags were made, sponsored or endorsed by creators of 'Godzilla' character. 9. The counsel for the plaintiff in rejoinder has highlighted / argued: (i) that the defendant, on the impugned label describes its rum as "rare old rum"; (ii) Class 33 under the Trademarks Rules covers alcoholic beverages, whether they are country liquor or IMFL; (iii) that the defendant's application for registration of its trademark is for the entire country and not for the State of Punjab only; (iv) that the claim of the defendant, of its product as 'rare old rum' instead as 'country liquor' amounts to a false trade description within the meaning of Section 2(1)(i) of the Trademarks Act; (v) T ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... re him and cannot retain in his mind every detail of the mark which he has once seen and will have a general recollection of the nature of the trademark; (IV) Pepsico, Inc. Vs. Pure Water Beverages 2011 (47) PTC 147 (Del.) (Aquafina Vs. Aquafine) Where the test of essential features of the mark / label was applied; (V) Devi Pesticides Private Ltd. Vs. Shiv Agro Chemicals Industries 2006 (32) PTC 434 (Mad.) (DB) (Super Boom Vs. Boom Plus) holding that where the similarity is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is imitation, no further evidence is required to establish that the plaintiff's rights are violated; and (VI) K.R. Chinna Krishna Chettiar Vs. Ambal & Co., Madras PTC (Suppl) (1) 258 (SC) (Ambal Vs. Andal) laying down that nobody can abstract the name and use a phonetically equivalent of it and escape the charge of piracy of the mark pleading that the visual aspect of his mark is different from that of the plaintiff and further holding the name 'ANDAL' to be not ceasing to be deceptively similar to the name 'AMBAL' because it was used in conjunction with a pictorial device. 10. I have considered the rival subm ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... which it is a derivative of; (iv) though the possibility of the doctors erring between the two drugs could not be ruled out but the method of intake of the two drugs could not be ignored -- while plaintiff's product 'LOPRIN' was to be taken orally and was sold as a pill, the defendant's product 'LOPARIN' was to be intramuscularly injected with the aid of a syringe; (v) while the plaintiff's product 'LOPRIN' was for long term preventive usage, generally for life, the defendant's product 'LOPARIN' belonged to the Life Saving Medicines Category given to the patients in critical hours of vascular complications; (vi) the two were thus prima facie completely different kind of drugs directed to remedy different situations; (vii) a patient who had been using 'LOPRIN' for long period of time, under no circumstance, was likely to mistake 'LOPARIN' injection for 'LOPRIN' tablets; (viii) the defendant's product 'LOPARIN' being an injection was not capable of self administration, without proper training and was typically used in Intensive Cardiac Care Units under special medical supervision; (ix) that the defence of the defendant of having bona fide coined 'LOPARIN' adopting 'LO' from the cate ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the rum of the defendant presently falls in the category of Country Liquor and the rum of the plaintiff falls in the category of IMFL would in my opinion be in infringement of the trademark of the plaintiff and affecting the rights of the plaintiff as the proprietor of the registered trademark. It is for this reason only that the undertaking offered by the defendant not to sell the goods under its trademark "TOLD MOM" and "TOLD MOM Label" outside the State of Punjab and/or otherwise than through the Country Liquor Vends is not found to be sufficiently protecting such rights if found of the plaintiff. The use by the defendant of the trademark "TOLD MOM" if found to be similar or deceptively similar to the trademark "OLD MONK" of the plaintiff is likely to affect the goodwill attached to the trademark of the plaintiff. A trademark which distinguishes the goods of one person from those of the other is infringed not only when a average consumer thereof is led into buying the goods of the latter presuming the same to be of the former but also when such consumer by consuming the goods of the latter, under the impression that they are of the former forms an impression/opinion of the quali ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ther strange name for alcohol, can be to ride piggyback on the goodwill of the product of the plaintiff, of which there is no dispute, has large sales over several decades. 19. According to the defendant, the sale price of the products of the plaintiff and defendant is Rs.260/- and Rs.110/- respectively. Though the difference is of slightly more than double but hardly any, if one were to go by the price range of the said products. It is not as if the defendant's product is selling for tens of rupees as compared to the plaintiff's product of hundreds of rupees. There is plethora of research on the internet indicating that price is a key determinant for access to alcohol and that young people, binge drinkers and heavy drinkers prefer cheaper drinks and those groups are especially responsive to price. Studies have consistently shown that lower socio-economic groups and people with limited disposable income (young people, indigenous groups and heavy drinkers) are more directly impacted by the price of alcoholic products and spirits are twice as price sensitive as wine and beer. A study titled Evidence for the Effectiveness and Cost-Effectiveness of Interventions to Reduce Alcohol-Rela ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n, which is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity. It was emphasized that English to the mass of Indian people is a foreign language. 22. Applying the said test, I find a very close phonetic similarity between "OLD MONK" and "TOLD MOM". Those in the know of English language in India are unlikely to pronounce "MONK" as "MANK" as has been contended by the senior counsel for the defendant. If "MONK" is pronounced as "MONK" only, the possibility of "TOLD MOM" being confused for "OLD MONK" is found to be of a high possibility. The addiction of 'T' and replacement of 'NK' with 'M' does not make much of a difference since no stress is placed on the syllables 'T' & 'NK' in the words 'TOLD' & 'MONK' respectively while pronouncing the same. 23. The distinction carved out by the senior counsel for the defendant, of identical and similar marks under Section 29 of the Act also in my view has to take colour from the nature of the product and its consumers. The same two marks may be described as similar if the consumers thereof are highly discernable and identical if they are not. The same is the position with respect to i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... . Arvindbhai Rambhai Patel (2006) 8 SCC 726. 26. I may also add that the Supreme Court in K.R. Chinna Krishna Chettiar supra has held phonetic similarity even in the absence of ocular/visual similarity to be enough to disentitle the offending mark from registration. 27. Though in some of the judgments the tests to be applied in the case of passing-off and in the case of infringement of trademark has blurred, with the Division Bench of this Court in Gufic Ltd. Vs. Clinique Laboratories LLC 2010 (43) PTC 788 (Del) holding that the tests of deceptive similarity in the case of infringement is the same as in the case of passing-off action, where the marks are not identical but in my humble opinion the said test in the case of infringement is to be confined only to comparison of the marks and the factors of pricing, trade channels etc., which in a passing-off action, in spite of similarity of marks may deprive the plaintiff of an injunction, can have no applicability in a infringement action once similarity is established. Though paragraph 4 of Ruston & Hornsby Ltd. supra appears to suggest so but an uncertainty has arisen owing to the language used in paragraph 91 of Ramdev Food Produ ..... X X X X Extracts X X X X X X X X Extracts X X X X
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