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The Gillette Company and others Versus A.K. Stationery and others

2001 (8) TMI 1421 - DELHI HIGH COURT

IAs. 12520/99 and 3572/2000 in Suit No. 2732 of 1999 - Dated:- 3-8-2001 - A.K. Sikri, J. For the Appellant: Mr. R.K.P. Shankardass, Sr. Adv., Mr. Rajendra Kumar and Ms. Meghna Mishra, Advs For the Respondents:Ms. Pratibha M. Singh and Mr. Ameet Nayak, Advs. ORDER A.K. Sikri, J. 1. The plaintiff no.1 - Gillette Company incorporated in U.S.A. has filed this Suit for permanent injunction, rendition of accounts and damages under Section 27 and 105 of the Trade and Merchandise Marks Act, 1958 (herein .....

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ng a decree of permanent injunction restraining the defendants from using the trade mark "FLEXGRIP" upon or in relation to their writing instruments or other articles of stationery in violation of the plaintiffs, common law rights in the trade mark FLEXGRIP. The defendant no.1 is only a retail outlet which is trading in various stationery items and the defendant no.3 is Sales Office of the defendant no.1. It is infact the defendant no.2 - Sanghvi Writing Industries Limited. Mumbai whic .....

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t the trade mark 'PAPER MATE FLEXGRIP' and the defendants are using the word 'FLEXIGRIP' Along with the word 'EKCO' on its products i.e. 'EKCO FLEXGRIP'. 3. Along with the Suit, the plaintiff also filed Ia. 12520/99 under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure. While issuing summons to the defendants in the Suit, ex-parte injunction Order dated December 16, 1999 was granted restraining the defendants, their Directors, office .....

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f by this Order. 4. In support of plaintiffs case, Mr.R.K.K.Shankardass, learned counsel appearing for the plaintiff made the following submissions:- 1. The plaintiff no.1 is world renowned Company which is having world wide operations and its product are marketed and sold in various countries. It has many leading international brands in most products, including GILLETTE, PARK AVENUE, ...., ...., ORAL-B, BRAUN, DURACELL. In respect of its stationery products business under the trade mark 'FL .....

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ng. The details in this respect are given in para 9(iv) of the plaint. It has acquired global reputation and public recognition and sales figures are in millions of US $ every year. Advertising expenditure also runs in millions of uS $. The plaintiff's 'FLEXGRIP' enjoys spill over reputation and good-will in India also for the reasons mentioned in para 9(viii). In view of this reputation, use of same trade mark 'FLEXGRIP' by the defendants in respect of the same product is di .....

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rade mark 'FLEXGRIP' in respect of these very goods and thereby accepting the exclusive right of the plaintiffs to use the trade mark 'FLEXGRIP'. In view of this stand of the defendants in a competent Court of law in Germany it was not permissible for the defendants to take contrary stand when the case is filed in India. 5. It may be mentioned at this stage that in an action brought by the plaintiffs against the defendants before the Original Court at Frankfurt (Case no.3/12 O 13 .....

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er" or "Jotter Refill" is used. The defendant gives its sole undertaking to this Hon'ble Court to that effect. 4. Referring to page 90 of the documents filed by the plaintiff which is the price list of the various products of the defendant no.2 namely, ball point pen and pencils, it was submitted that the defendant no.2 was using the word 'FLEXGRIP' only in respect two of its products and in respect to all other products EKCO was being used. It further showed the price .....

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mark EKCO which were more than 20 in number. On the other hand, the reputation and goodwill of the plaintiffs was at stake by the defendants using the trade mark 'FLEXGRIP'. Learned counsel supported the aforesaid submissions and prayer to confirm the injunction Order by citing various judgments. Learned counsel heavily relied upon the article of Hon'ble Dr.Justice A.S.Anand, Chief Justice of India on "Intellectual Property Rights - The Indian Experience" - a paper presente .....

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or spill-over of international reputation, notwithstanding the fact that India is not a signatory to the Paris Convention and the patents law has not so far been amended in India after signing of GATT. In November 1993 the Delhi High Court restrained two local companies by separate orders of interim injunction from using BENZ and MERCEDES respectively. The restraint order in respect of BENZ involved a company in India engaged in sale of undergarments under trade mark VIP-BENZ in combination with .....

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ble imitation by all or anyone; whether they are persons, who make undergarments like the defendant, or anyone else. Such a mark is not up for grabs - not available to any person to apply upon anything or goods. That name which, is well known in India and worldwide, with respect to cars, as is its symbol a three-pointed star. Yet another observation in this case was: "In my view, the trade mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody .....

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by the Delhi High Court in October 1994 in the Whirlpool case. This was a passing off action instituted by Whirlpool Corpn. against an Indian company, seeking grant of an ad interim injunction preventing the defendant from passing off its goods as those of the plaintiffs by use of trade mark "WHIRLPOOL". One of the question before the Court was whether the plaintiff-who was not selling in India - could claim the benefit of transborder reputation in trade mark "WHIRLPOOL" so a .....

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ts washing machines for the purpose of maintaining passing off action in India. The Supreme Court upheld that decision. It would, thus be seen, that even where neither "the process" nor the "product" is directly in issue Indian courts have gone beyond the cold print of the stature and granted relief to protect world-wide reputation which a trade mark has acquired, even where the trade mark as such has not been registered in India. The rapidly growing international trade makes .....

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nd the provisions of the TRIPS Agreement are a step towards such international protection of intellectual property rights. Suitable laws which will protect such rights internationally and give adequate monetary compensation to the owner without creating any undue monopoly in the property can and are being formulated as standards for laws to be enacted by the different countries of the world. These standards reflect the experience of various countries of the world in protecting and enforcing such .....

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n business in this country. It is enough if they have got customers hers." 8. In the case of N.R. Dongre versus Whirlpool Corporation 1996 (16) PTC 476 Delhi the Court observed that: - ".... The court frowns upon any attempt by one traders to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country." 9. In N.R. Dongre versus Whirlpool Corporation 1996 (16) PTC 583 the Supreme Court held:- "Inju .....

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In view of the prior user of the mark by plaintiff no.1 and its transborder reputation extending to India, the trade mark of 'WHIRLPOOL' gives an indication of the origin of the goods as emanating from or relating to the Whirlpool Corporation plaintiff no.1. The High court has recorded its satisfaction that use of the 'WHIRLPOOL' mark by the defendants indicates prima facie an intention to pass off defendants' washing machines as those of the plaintiffs' or at least the l .....

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would cause no significant injury to the defendants who can sell their washing machines merely by removing the small metallic strip bearing the offensive trade mark/name which includes 'WHIRLPOOL'. On the other hand, refusal of the interlocutory injunction would cause irreparable injury to the plaintiffs' reputation and goodwill since the trade mark/name 'WHIRLPOOL'. is associated for with the plaintiff no.1 Whirlpool Corporation. These factors which have been relief on for .....

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Dongre (supra) as follows:- "The knowledge and awareness of a trade mark in respect of the goods of a trader is not necessarily restricted only to the people of the country where such goods are freely available but the knowledge and awareness of the same reaches even the shores of those countries where the goods have not been. When a product is launched and hits the market in one country, the cognizance of the same is also taken by the people in other countries almost at the same time by ge .....

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els beyond the confines of the geographical area in which it is sold. This has been made possible by development of communication systems, which transmit and disseminate the information as soon as it is sent from one place to another. Satellite Television is a major contributor of the information explosion. Dissemination of knowledge of a trade mark in respect of a product through advertisement in media amounts to use of the trade mark whether or not the advertisement is coupled with the actual .....

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eness of the goods of a foreign trader and its trade mark can be available at a place where goods are not being marketed and consequently not being used. The manner in which or the source from which the knowledge has been acquired is immaterial .... The Courts do not approve of any attempt by one trader to appropriate the mark of another trader, even though that trader may be a foreign trader and mostly uses his mark in respect of the goods available abroad i.e. outside the country where the app .....

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that he is buying the appellant's product the respondents as the subsequent adopter of the mark must be restrained from doing so. 12. In Central Industrial Alliance Ltd. versus Gillette U.K. Ltd. reported in 1998 (18) TC Bom. the Court observed as follows:- "In addition, it has to be remembered that in respect of a consumer article such as a safety razor blade publicity does not take place merely by advertisements in India. Such items are advertised in foreign newspapers and magazines a .....

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and another versus Gift Pact and another reported in 1998 (18) PTC 698 this Court observed as under:- "The world with the passage of time has become almost just like a city on account of the technical advancements in technology such as wireless, telephone, television, cinema, and computers so on and so forth, made by the people inhabiting this terrafirma. Similar advancements have been made in the means of transport such as railways, ships, airlines. These days if a product is launched in .....

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ying to magnify the otherwise trivial issue. Refuting the aforesaid submissions of the plaintiff, Ms.Pratibha M. Singh, learned counsel appearing on behalf of the defendants submitted that the plaintiff would not be entitled to any injunction and that the ex-parte injunction Order dated 16th December, 1999 obtained by the plaintiff was liable to be vacated. She paraphrased her submissions in the following manner:- 1. There was material concealment of fact by the plaintiff while obtaining the ex- .....

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s shows that the plaintiff was well aware since then that the defendant has been using the mark FLEXGRIP but has concealed this fact before this Court. In support of the submission that there is material misrepresentation and concealment of material facts, learned counsel quoted the following averment from the plaint: Para-21. "The cause of action first arose at New Delhi in favor of the plaintiffs in the last week of July, 1999, when they first learnt about the impugned use by the defendan .....

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be considered for deciding the issue on transborder reputation because the website printouts were admittedly taken a month prior to filing of the suit. These printouts refer to the mark FLEXGRIP as PAPERMATE FLEXGRIP ULTRA, PAPERMATE, ETC. The print outs of pages 8-12 are dated 28th July, 1999 and 23rd August, 1999 and the Suit has been filed in December 1999. The affidavits refer to PAPERMATE rather than FLEXGRIP. Reliance was placed upon the case of The Proctor and Gamble Company versus Satis .....

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d the same was descriptive. In M/s. Smithkline Beecham Plc. and others versus M/s. Hindustan Lever Limited and other reported in 1999 PTC 775 the plaintiff did not place on record any evidence of any use, reputation or goodwill in the 'S' bend feature of the plaintiff's tooth brush FLEX even internationally prior to Launch in India i.e. in June, 1996. The Court while observing that not a single advertisement was published in India or invoice prior to 1996 to show and indicate subsist .....

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uced which were circulated in India for several years and the goods were sold to Embassies and in the content of such evidence this court held that the said product achieved trans-border reputation. No such evidence has been placed in the present case at least prior to 1996 and even whatever evidence has been placed on record after 1996 the same does not establish that the plaintiffs achieved a trans-border reputation. In order to prove trans-border goodwill and reputation the plaintiffs have re .....

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o 1996 in any journal or magazine having wide circulation. In absence of same it is not possible to hold that the tooth brush of the plaintiff acquired any trans-border reputation and goodwill ...". 3. It was further submitted that the entire case of the plaintiff was in the realm of passing off and not infringement of trade mark inasmuch as there was no trade mark registered in favor of the plaintiff. In the case of passing off action what was required to be seen as to whether there will b .....

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92 Delhi 302 there was unexplained delay of 14 months in filing of the suit. This Court held that delay coupled with the concurrent use by the defendant till the alliance in favor of the defendant. In Peshawar Soap and Chemicals Ltd. versus Godrej Soap Ltd. reported in 2001 PTC 21 (Del.) the plaintiff was registered proprietor of the mark 'Kesh Nikhar' since 1963. The defendant adopted the mark 'Godresj Nikhar'. The plaintiffs obtained an ex-parte injunction against the defendant .....

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sly challenged would call for cancellation." 4. On the point of descriptive trade mark, learned counsel placed reliance upon the case of J.R.Kapoor versus Micronix India reported in 1994 PTC 260 (SC) wherein the competing trade marks were 'microtal' and 'micronix'. Supreme Court held that the word 'Micro is descriptive of microchip technology which is used in computers. Hence, there can be no monopoly on 'miere'. The suffixes 'tel' and 'nix' are s .....

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E' and the defendant used the said mark on their packaging for the same products. Division Bench of this Court held that the packaging of the two companies are different. There can be no 'passing-off' between the two products. The said mark being descriptive in nature, the Court refused in junction. In Lumley Life Ltd. and another versus IOOF of Victoria Friendly Society reported in (16) IPR 316. It was also submitted that the mark FLEXGRIP is a completely descriptive trade mark inas .....

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on dated 19th January, 1995 filed by the plaintiff for registration of this trade mark, the plaintiff has itself stated "proposed to be used" which shows that till 1995, that is the date of application, this trade mark has not been used by the plaintiff's in India. On the other hand, the defendant had produced documentary evidence (invoices filed at pages 5-116 of the defendants documents) to show that defendants had been using FLEXGRIP since 1993. 6. Explaining the circumstances i .....

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ement with Luxor Writing Instruments in India and it was only then that it decided to market their FLEXGRIP pens in India. At that point of time the plaintiff, in a completely malafide attempt filed an instant suit and sought an ex-parte injunction. The plaintiff has, Therefore, expressly and impliedly consented to the use of the mark FLEXGRIP by the defendant at least in so far as india is concerned. This conduct of the plaintiff disentitles the plaintiff to any injunction. The use by the defen .....

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of two of its stationery products and in respect of its all other products, only the word 'EKCO' is used. The plaintiff is challenging the use of the word 'FLEXGRIP' by the defendant on the ground that it is an invented word of the plaintiffs which has acquired trans-border reputation and good-will. The trade mark of the plaintiffs has been registered in various countries., However, application for its registration in India is still pending and has not been registered in the nam .....

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XGRIP' where at the plaintiffs are using the trade mark 'LUXOR PAPER MATE FLEXGRIP'. Therefore, it is not a case where the trade mark of the plaintiffs or the defendants consist of only one word, namely, 'FLEXGRIP'. In that eventuality position would have been different as it would have been a case of FLEX GRIP versus FLEXGRIP. However, when complete trade mark adopted by the two parties is compared in totality confusion seems to be unlikely. While taking this opinion one is .....

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t appear to be a case of creating confusions in the minds of the public. Here it would also be relevant to mention that the defendant no.2 is laos an established Company which has made strides in this particular trade, namely that of manufacturing and marketing pens and other writing instruments. It has been in the business for last number of years. Its products are many. It markets its products not only in India but in other counties as well. The defendant no.2 started manufacturing and marketi .....

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ark in India and prima facie gets protected by Section 33 of the Trade and Merchandise Marks Act, 1958. There is yet another aspect which assumes significance when are dealing with the application for interim injunction. The plaintiffs had filed a case against the defendant no.2 in German Court in the year 1997. Thus, it came to know in the year 1997 that the defendant no.2 was using the mark 'FLEXGRIP' in respect of its two products. Although action was filed in German Court, no steps w .....

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ase in the German Court way back in the year 1997.The aforesaid factor and consideration is a relevant one, is recognised by the Hon'ble Supreme Court in Wander Limited and another versus Antox India Pvt. Limited reported as the Supreme Court observed:- "Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are est .....

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must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weight one need against another and determine where the 'balance of convenience' lies." The interlocutory remedy is intended to preserved in status quo, the rights of parities which may appear on a prima facie case. The court also, in restraining a .....

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and its effect for the purpose of grant of ex parte restraint, the settled legal position is that while the delay in institution of a suit for an action for passing off may not be fatal, it is one of the important and relevant considerations before granting an ex party/interlocutory injunction. Reference in this regard is invited to 'THE LAW OF PASSING-OFF' by Christopher Wadlow. Learned Author while dealing with the motions of interlocutory relevance has observed as under:- "Delay .....

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ect on the plaintiff's rights at trial. Unlike many of the issues which can boundaries on motion, the existence of delay does not normally admit or much argument. Delay , if present, is Therefore a short, safe and simple basis for refusing relief. This means that applications for interlocutory injunctions in which there is significant delay are unlikely even to get as far as a hearing, and those that do are quite likely to be refused without going into the merits or the balance of convenienc .....

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gh that proprietor is a foreign proprietor and the mark has only been used by him in a foreign country. However, these principles are to be applied keeping in view the salient aspects of each case. When we are examining the case of interim injunction, the well recognised principles for grant or refusing to grant such injunction at this stage would have laos to be borne in mind. Keeping in mind the salient aspects of this case namely: 1. The present is a case falling in the realm of passing of an .....

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mark EKCO in respect of it s products and in view of the good-will it enjoys that word EKCO used along with FLEX GRIP would be sufficient to distinguish its product from that of the plaintiff. 6. The defendant no.2 is using the trade name EKCO FLEXGRIP in respect of two of its products only out of more than 20 products marketed by its. This use in respect of these two products is in India since 1993. 7. The plaintiffs have moved this Court much belatedly. Even after coming to know of the fact th .....

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produced sufficient material on record to claim trans-border reputation in respect of the product in questions and the observations of this Court in the cases of The Proctor and Gamble Company (supra) and M/s. Smithkline Beecham (supra) come handy for the defendant no.2 Various judgments cited by the plaintiffs are, Therefore, distinguishable and are not applicable to the fact s of the present case and on the other hand reliance placed by learned counsel for the defendant no.2 on various judgmen .....

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XI BOND'. The respondent Friendly Society, launched a product known as IOOF FLEXI BOND'. The Lumley brought action against the respondent for using the name FLEXI BOND alleging that it was used by the respondent with intention to mislead or deceive the public. Its action was however, dismissed by the Court mentioning various reasons, one of which was that the words 'FLEXI' and 'BOND were descriptive words and there combination does not change their descriptive character. I am .....

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