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Rich Products Corporation and Anr. Versus Indo Nippon Food Ltd.

2010 (2) TMI 1255 - DELHI HIGH COURT

CS (OS) No. 246/2004 - Dated:- 19-2-2010 - Rajiv Shakdher, J. For the Appellant: Ajay K Gupta, Sr. Adv., Brijesh and V. Mohini, Advs For the Respondents: S.K. Bansal, Ranjit Kumar Rana and Anand Vikas Mishra, Advs. JUDGMENT Rajiv Shakdher, J. 1. The plaintiffs have instituted the present suit seeking various reliefs against the defendant, however, at its core is the relief of permanent injunction sought by it, whereby it seeks to prevent the defendant from using the word mark "WHIP TOPPING& .....

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passing off or infringement of copyright in so far as trade dress, packaging and instructions are concerned, which according to the plaintiffs, are identical and/or similar to its own product. Consequential orders in the form of preliminary decree to render accounts, as also final decree for payment of money found due and payable, and of rendition of accounts is sought as well. Finally, a decree for delivering to the plaintiffs custody of all such products, packing material, boxes, cartons, lab .....

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10.09.2008 passed in FAO(OS) No. 355/2007 disposed of the appeal with a direction, based on submissions of counsels for both parties, that the suit be put up for disposal by resorting to methodology of filing affidavit of evidence sans cross-examination. Accordingly, the court by its order dated 10.11.2008 framed the following issues: (i) Whether the plaintiff is the proprietor of the Trademark "RICH'S WHIP TOPPING " in relation to its goods as mentioned in the plaint both under th .....

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tively similar to the trademark of the defendants, 'BELLS WHIP TOPPING' and amounts to infringement, and passing off the plaintiff's impugned product? OPP (v) Whether the defendant's packaging is confusingly similar to the tradedressing of the plaintiffs 'packaging' OPP (vi) Whether the plaintiff is entitled to damages against the defendants and if so, in what sum? OPP (vii) Whether the trademark of the plaintiff is not a coined word? OPD (viii) Whether the trademark of t .....

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he plaintiff? OPD (xiii) Relief 3. Following the procedure laid down by the Division Bench, affidavits of witnesses was filed by both parties. This exercise was completed on 19.08.2009; whereupon was listed in the category of finals for hearing, and accordingly, heard on the basis of evidence placed on record. 4. The case set up by the plaintiffs, both in the plaint and the affidavit of evidence filed by their witnesses in support of averments made therein, is as follows: 4.1 The plaintiff No. 1 .....

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im a miracle cream made from soya bean; a wholly "non-dairy" product. 4.2 The plaintiffs called the miracle cream RICH'S WHIP TOPPING. Being a non-dairy topping it spawned various non-dairy products including Rich's Bettercreme Icing and Filling, Rich's on Top non-dairy dessert, frozen eclairs and cream puffs, coffee Rich; which incidentally is claimed as the first frozen non-dairy creamer. 4.3 The plaintiffs it appears discovered another new product by the name of "Fr .....

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re than 75 countries including, Australia, Belgium, Canada, Colombia, China, Holland, Israel, Italy, Japan, Mexico, South Africa, Thailand, United Kingdom, Vietnam and of course India. 4.4 plaintiff No. 2, i.e., Rich Graviss Products Pvt. Ltd. was incorporated on 16.08.1994 as a result of a joint venture initiated by plaintiff No. 1; for an avowed purpose of manufacturing products under the trademark of plaintiff No. 1, based on the technical know-how provided by the plaintiff No. 1. In lieu the .....

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imer with respect to the letter 'S' and word 'Topping'. It is further averred that "RICH'S WHIP TOPPING", has enjoyed brisk and consistent sale in countries all over the world, since 1945. In particular, in India the sales have increased exponentially from a figure of approximately ₹ 2. Icrores in the year 1997-98, to 15.6 crores in the year 2002-03. It is averred that the plaintiff No. 1 also maintains two websites being www.richs.com and www.whiptopping.com. .....

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perative w.e.f 27.06.2005. 5.2 It is further averred that the plaintiffs became aware only in April, 2003, that the defendant, was selling its product under the infringing mark "WHIP TOPPING", in packaging carrying an identical trade dress with similar user instructions. 5.3 The plaintiffs being aggrieved issued a cease and desist notice dated 23.04.2003 to the defendant. The defendant, however, refuted the plaintiffs contention vide their reply dated 13.05.2003. The defendant thereupo .....

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(PW1) has adverted with respect to: the worldwide market reputation of its trademark "RICH'S WHIP TOPPING"; which is an invention made under aegis of its founder Robert E. Rich in the year 1945; the trade mark "WHIP TOPPING" is registered in USA and Taiwan, in the form of proof exhibits PW1/5 and PW1/6 are cited; and lastly, the trademark "RICH'S WHIP TOPPING" is registered in USA, Pakistan, Thailand and Malaysia; reliance in this regard is placed on exhibit .....

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served, dried and cooked fruits and vegetables; jellies; jams; fruit sauces; eggs, milk and milk products; edible oils and fats. PW1 has also alluded to the fact that because of tremendous goodwill and reputation acquired by its trademark "RICH'S WHIP TOPPING" and the distinctive packaging adopted for its products in the form of a unique trade dress composed of red, blue and white colours it has, over the years, acquired immense brand value. 6.3 It is also claimed by PW1 that the s .....

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the effect that the defendant by using a deceptively similar mark and/or packaging, to that of the plaintiffs, is in fact riding on the plaintiffs' goodwill and reputation. It is thus claimed that the defendant's action amount to, not only an infringement of the plaintiffs' trademark, but also amount to, committing a tort of passing off. PW1 has also proved the cease and desist notice dated 23.04.2003 (Ex. P3) issued to the defendant in that regard, as also the reply of the defendant .....

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In this regard invoices being Ex. PW2/3 to PW2/9 have been proved. PW2 has also deposed that plaintiffs maintain two websites being www.richs.com and www.whiptopping.com wherein it is claimed that information is available with regard to plaintiffs' product including product marketed under trademark "whip topping"/ "rich's whip topping". 8. Mr Priyakant Himatlal Shah (PW3), who is a consultant with plaintiff No. 2, has adverted to the effect that plaintiff No. 2 was i .....

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e mark "BELLS WHIP TOPPING" is similar to plaintiff No. 1 trademark "WHIP TOPPING" which forms part of the registered trademark of plaintiff No. 1 in India. PW3 has further stated that 'WHIP TOPPING' on its own is registered in countries such as USA, Italy, France, Saudi Arabia, China etc. 9. Mr Pankaj Jain (PW4), who is the National Culinary Manager of plaintiff No. 2 has proved exhibit PW4/2 in order to establish its product under the trademark "RICH'S WHIP .....

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ed by plaintiff No. 1. In this regard PW5 has proved the audited balance sheets and profit & Loss accounts for the year 1999-2000, 2002-2003 and 2003-2004. PW5 has specifically adverted to the fact that in so far as India is concerned the sales of "RICH'S WHIP TOPPING" has increased from ₹ 49.85 lacs (approximately) to ₹ 19 crores in the year 2003-04. In this regard reliance is placed on the volume and revenue statement of plaintiff No. 2 (Ex. PW5/4) as also on the .....

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ere also proved. Reliance in this regard is placed on exhibits PW5/11 to PW5/17. 11. Mr V. Seetharaman (PW6) has deposed that based on the Power of Attorneys (Ex. PW3/1 and PWl/29) he has signed and verified the plaint on behalf of plaintiff No. 1 and 2 in his capacity as the constituted attorney. 12. Mr Prithvi Raj Chaudhary (PW7), who is a partner in M/s Modern Marketing Company has adverted to the effect that his firm had been distributing the product manufactured by plaintiff No. 2 under the .....

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der the brand name of "BELLS WHIP TOPPFNG" had created confusion, in as much as, he verily believed that plaintiff No. 2 had adopted another trademark by the name of "BELLS WHIP TOPPFNG". 13. Mr Shikhil Nagpal (PW8), who is the Operational Manager of Everbake Bakers Pvt. Ltd, has deposed that they had been in the business since the year 2000. He has also testified that the plaintiffs trademark "RICH'S WHIP TOPPING" along with its trade dress comprising of red, b .....

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domain name www.whiptopping.com, and lastly, in the use of the expression of 'whip topping' either by itself or in combination with other marks or as suffix or even as prefix. The defendant's stand is that they have been using the expression "BELLS WHIP TOPPFNG" honestly and openly in the course of their trade since 1995. It is averred, over the years the defendant has built for itself a valuable reputation and goodwill in trademark/label. Resultantly, the defendant, it is .....

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cream and Ultra Heat Treated Desserts, Custards and Sauces etc. It is averred that research in these areas has been carried out in association with world renowned companies like G.C. Hann & Co., Germany, Danisco Culator, Denmark, Orana A/S, Denmark, Stock Germany etc. It is also claimed that defendant has the state-of-the-art manufacturing and packaging machines. It claims to cater to renowned multi-national companies such as Britannia Industries Ltd., Perfetti India Ltd, Candica (India) Lt .....

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the word 'Topping' is concerned; therefore, there can be no infringement much less a commission of tort of passing off by the defendant in using the trade mark "BELLS WHIP TOPPING". This, according to the defendant, is more so in view of the fact that 'WHIP TOPPING' is a descriptive expression which alludes to the character and quality of the product itself and hence, cannot be protected till it can be demonstrated that it has acquired a "secondary meaning". T .....

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s by various manufacturers all over the world, and hence is "publici juris". In this regard example of other manufacturers, which have used the word mark 'whip topping' in respect of their products, have been referred to in the written statement. For the sake of convenience they are extracted herein below: S.No. Name of the Company Product 1 Lego Foods Co. Ltd. Lego non-dairy Whip Topping 2 Kraft Foods Cool Whip Whipped Topping 3 Flavor Right Foods,Columbus, Ohio 43216, USA Fla .....

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be protected. The defendant has refuted the charge of infringement and passing off as it has claims the use of the word/expression 'Whip Topping' in conjunction with 'BELLS' has over the years had distinctiveness associated with the products manufactured by the defendant. The packaging and the presentation of the colour scheme also being different both visually and in presentation, there is no deception or confusion as alleged or at all in the defendant's use of the expressio .....

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laid to the defendant's mark in the pleadings by adverting to the following actions of the defendant which according to him trenched upon both the statutory as well as common law right of the plaintiff.: (i) first, the use of words/expression "WHIP TOPPING" in the defendant's mark resulted in the infringement of the plaintiffs mark "RICH'S WHIP TOPPING"; (ii) second, the adoption by the defendant of a similar packaging /trade dress; (iii) third, the infringement .....

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tered) is; deceptively similar to the plaintiffs registered trademark, (ii) plaintiff No. 1 as far back as on 1945 was responsible for inventing a "non-dairy" product which is capable of being whipped into foam for use in desserts, salads and confectionaries items e.t.c, which resulted in the product acquiring the name 'whip topping'. In short it is the invention in which plaintiff No. 1 has legal rights. (iii) In the country of its invention, i.e., U.S.A. 'Whip Topping' .....

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eafter in the Distt. Court being suit No. 53/2004 in March, 2004. This was followed by the defendant making an application for registration of its mark only on 29.05.2003. In the defendant's application user is claimed from 1995. (iv) The plaintiffs have rights both in the composite as well as a part of the trade mark, i.e., in both "RICH'S WHIP TOPPING" as well as in "WHIP TOPPING". The defendant's use of the infringing mark is violative of the plaintiffs' pr .....

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(2001) 5 SCC 73; Parle Products (P) Ltd v. S.P. & Co. (1972) 1 SCC 618; Lever v. Goodwin 1887 (4) RPC 492; Spalding (AG) & Bros, v. AW Gawage (1915) 32 RPC 273 and Parker-Knoll Limited v. Knoll International Limited 1962 RPC 243. 17.1 In support of his submission that the definition of "trade mark" given under Section 2(1)(m) to 2(1)(zb) in the Trade Marks Act would bring within its ambit even colour combinations/ trade dress, the following judgments are cited: Smith Kline & .....

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5 SC 558, and the judgment of this Court, in the case of Cadbury India Ltd. and Ors. v. Neeraj Food Products 2007 (35) PTC 95 (Del). 18. Mr Gupta further contended that the registration of mark, 'Rich's Whip Topping' constituted a prima facie evidence of its validity, and since the plaintiff was the first one to obtains its registration it ought to be protected against the infringing mark adopted by the defendant. For this purpose reliance was placed on provisions of Section 31 of th .....

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Mark was not available to the defendant for the reason that it protects word marks which describe the character and quality of goods, that is, are used in adjectible sense. In the instant case, the learned Counsel submitted that the word mark 'whip topping' comprises of two words whip and topping, both of which are nouns. 21. It was contended that trademark "WHIP TOPPING" is not descriptive since it relate to a non-dairy product. The learned Counsel went on to submit that the w .....

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no absolute bar to registration of a descriptive trademark. It was contended that as a matter of fact, registration of descriptive trademark is saved under the provisions of Section 36 of the Trade Marks Act, provided: it is not shown that after the registration of the trademark third parties have been using the descriptive mark in a manner that it has become well-known and its use is widely established. 21.1 With particular reference to the defendant it was submitted that even though the defen .....

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nder the provisions of Section 36 of the Trade Marks Act. 22. It was contended that the defendant's use of the infringing mark either in 1995 or anytime thereafter is neither bonafide nor honest and in any event concurrent use of a mark similar to that of the plaintiff cannot be deemed as honest. A mark, according to Mr Gupta, can have only one proprietor. Reliance in this regard was placed on the judgment of the Supreme court in the case of Power Control Appliances v. Sumeet Machines (P) Lt .....

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recourse to the following arguments: The word or mark 'whip topping' is generic as it describes the product. For this purpose reliance is placed on the plaintiffs' own affidavit of evidence and documents where 'whip topping' has been described as a product. It was submitted by Mr Bansal that no trademark right can exist or can be acquired in relation to a product if it cannot be described in any other manner, even though, it has acquired secondary significance through use an .....

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ot when 'whip toping' is independently used in conjunction with a prefix or suffix. It was further submitted that a descriptive trademark could be protected only on proof of secondary significance. The standard of proof with regard to which is of a high order and/or nature, and in ascertaining similarity in respect of descriptive trademarks even small differences in the rival and competing product are enough to obviate the charge of similarity. It was submitted that ordinarily descriptiv .....

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the expiry of the patent the name and description given to the product is not permitted to be used as a trademark. 25.1 Mr Bansal submitted that the plaintiff itself has been using the expression 'whip topping' in a generic and/or descriptive manner. The learned Counsel has cited examples where 'whip topping' has been used conjointly with the word 'Rich's' and also disjunctively. Mr Bansal contended that a close perusal of the trademark on the packaging would show tha .....

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o. 1366892 in class 30. 26. Mr Bansal contended that the expression "WHIP TOPPFNG" is common to trade and hence, publici juris. It has been used world over by various companies and businesses. In this regard examples of Logo, Kraft, Flavor Right, Eligin Dairy, Momingstar Foods, Hanan Foods etc. were referred to. Mr Bansal contended that the product by itself cannot be the trademark and in this regard laid stress on the distinction between the definition of a 'mark' provided in .....

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According to Mr Bansal the remedy of infringement is a statutory remedy, which is controlled and limited by the provisions of the statute and based on the mark found in on the register of trademark authority. Reliance in this regard was placed on the provisions of Section 2(1)(w) of the Trade Marks Act. Mr Bansal went on to contend that infringement is subject to statutory conditions as contained in Section 27, 28(2), 30, 35 and 37 of the Trade Marks Act. Mr Bansal further contended that the rig .....

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e presumption in favour of a registered mark which is subject to rebuttal. Therefore, in an infringement action a court can determine the validity of a registered mark which need not be left to be ascertained or enquired into, in a rectification proceeding. It was contended that there was no deceptive similarity as alleged or at all between the impugned trade mark and that of the plaintiff in the usage of the impugned mark by the defendant. For this purpose he referred to the essential features .....

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quot;whip topping". According to Mr Bansal there was no likelihood of confusion. The reason being, the consumers of the goods in issue are urban and well-educated; the trademark/labels are different and not similar; no instances of confusion is cited despite the fact that the defendant has been in business since 1995; the plaintiff has not acquired any distinctiveness in respect of the expression 'WHIP TOPPING'; the plaintiff has accepted disclaimers in India as well as any other ju .....

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no pleadings which would establish the right and authorship or originality in the trade dress or the art work; there is only a bald averment with respect to plaintiffs' claim of the copyright in the trade dress and the artistic work. The plaintiff has no right in the colours red, blue and white; the trade dress of the plaintiff is undoubtedly different from that of the defendant. Similar submissions were also made vis-a-vis the instructions on the labels used by the plaintiff. 30. Based on t .....

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. St. Regis Publication Inc. 531F2d 11,188 U.S.P.Q 612; Abercrombie and Fitch Co. v. Hunting World, Incorporated 1976 WL152702(CA.2(N.Y)), 189U.S.P.Q. 759; Bharat Enterprises (India) v. C. Lall Gopi Industrial Enterprises and Ors. 1999 PTC (19) 598; Canadian Shredded Wheat Co. Ltd. v. Kellogg Co. of Canada Ltd and Anr. AIR 1938 PC 143; Mc Cain International Ltd. v. Country Fair Foods Ltd. and Anr. 1981 RPC 69; Beer Nuts, Inc. v. King Nut Company, Federal Reporter, 2nd Series; James v. Soulby 188 .....

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f proprietary rights in not only its registered trademark "RICH'S WHIP TOPPING" but also in a part of its mark, i.e., 'WHIP TOPPING'. In addition the plaintiff claims of proprietary rights in trade dress/packaging, which according to it, consists of a unique colour combination of the colours red, blue and white as also in the "instructions for use" set out in the packaging for the product. In order to decide the aforesaid issues, which, according to me are the hea .....

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the registration referred to in (i) above came with a disclaimer. The disclaimers made is with respect to the letter 'S' and the word 'topping"; (iv) the plaintiff has applied for renewal of registration mentioned in (i) above which is pending consideration with the Trade Mark Authority; (v) the plaintiff has also in its possession a registration certificate dated 28.03.2007, once again issued with respect to the trademark "RICH'S WHIP TOPPING" which is operative .....

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stly, the certificate issued by New Zealand company's office, w.e.f 12.11.1991 which is valid till 12.11.2010, in respect of mark and device and the descriptor "RICH'S WHIP TOPPING" is subject to the limitation that registration of the said mark shall not give plaintiff No. 1 the exclusive right to use the word 'Whip Topping'. (See document at page 14 of the defendant's compilation) 32. The position, therefore, in so far as India is concerned is that, the plaintiffs .....

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.2 To analyse this submission it may be relevant to refer to certain provisions of Trade Marks Act. The word 'mark' has been defined in Section 2(1)(m) of Trade Marks Act. The definition is inclusive. It brings within its ambit a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. As against this, the word 'trademark' which is defined in Section 2(1)(zb), broadly has the fol .....

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kely to deceive or cause confusion. A registered trademark is defined in Section 2(1)(w) as one which is actually on the register and remains in force. 32.4 Section 17 of the Trade Marks Act confers on the proprietor of a registered trade mark which consists of several matters, exclusive right to use the trade mark when taken as a 'whole'. Sub-section (2) of Section 17 makes it clear that notwithstanding anything contained in Sub-section (1) of Section 17; where a trade mark contains (a) .....

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tered. 32.5 Sub-section (2) of Section 27 of the Trade Marks Act preserves a right in a person who is a proprietor of a mark to bring an action for passing off as well. 32.6 The rights conferred by registration of a mark are encapsulated in Section 28 of the Trade Marks Act. Section 28 provides that subject to other provisions of the Trade Marks Act the registration of the mark shall confer on the owner exclusive right of use of the trademark in relation to the goods or services in respect of wh .....

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ht to exclusive use of a registered mark conferred upon the owner of such a mark is subject to conditions and limitations to which the registration is subjected to. In the context of the present case in my view Sub-section (2) of Section 28 of the Trade Marks Act would bring within its ambit any disclaimers which are set out at the time of registration of the mark. 32.7 Section 29 of Trade Marks Act sets out as to what would constitute an infringement of a trade mark. Sub-sections (2) and (4) of .....

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tion (4) of Section 29 on the other hand covers a situation where rival trade marks are identical but goods and services are dissimilar. Even in such a situation an infringement occurs provided additional condition provided in Clause (c) of Sub-section (4) is fulfilled, which is, that the registered mark has a reputation in India and the use of the mark without due cause would tantamount to taking "unfair advantage" or, would be detrimental to the distinctive character or repute of the .....

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; of a registered trademark for it to be termed as infringement of a registered mark within the meaning of the Trade Marks Act. 32.8 Section 30 of the Trade Marks Act provides that nothing in Section 29 of the Trade Marks Act shall be construed as preventing the 'use' of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided: (a) the use is in accordance with honest practices in industrial or commercial matters; (b) it .....

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llenged on the ground that it was not registrable trade mark under Section 9 except on evidence of distinctiveness and that such evidence was not submitted to the Registrar before the registration. 32.10 Section 33 of the Trade Marks Act gives statutory recognition to the defence of acquiescence where an owner of a registered trade mark allowed continuous user of a rival mark for a period of five years. 32.11 Similarly, Section 34 of the Trade Marks Act saves the right of an owner of a trade mar .....

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its own name or place of his business or of the name or name of the place of business of his predecessor in business or is used in a bonafide manner to describe the character or quality of his goods or services. 32.13 Section 36 of the Trade Marks Act saves the use of a name or description of an article as a trade mark or as a part of a trade mark only till such time it is proved that after the date of registration there has been a 'well known' and 'established' use of the said w .....

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Trade Marks Act is indicative of the following broad scheme of the Trade Marks Act; (i) Statutory rights and remedies with respect to an action for infringement of a registered trade mark are governed strictly by the provisions of the Trade Marks Act. (ii) Notwithstanding the rights and remedies provided under the Trade Marks Act, the Act itself saves common law right of passing off. [See Sub-section (2) of Section 27]. (iii) The rights conferred on a proprietor of a registered trade mark even .....

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rar of Trade Marks nor is it registered separately. (vi) A registered proprietor may be able to protect a "part" of a registered trade mark if he is able to show it is not common to trade or that it has obtained a "distinctive character". (vii) The presumption of validity of a registered mark under Section 31 of the Trade Marks Act (eventhough rebuttable) applies to "whole" or entirety of mark. The presumption of validity does not ipso facto get attracted to a part .....

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red trade mark. (ix) The defendant, can resort to the defence of honest use in accordance with the practices of the industry or commercial trade as long as the use is not such which takes either unfair advantage or is detrimental to the distinctive character or repute of the registered mark. (x) A registered mark is not infringed where the use of the registered mark is only to indicate the kind, quality, quantity, value, intended purpose or geographical origin or even the time of production of g .....

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registered mark contains within it words, which is, a name or description of an article or substance or services then the right in it ceases the moment the use becomes 'well known' and 'established'. It is important to note that the test of 'well known' and 'established' use as provided in Section 36 of the Trade Marks Act in respect of a name of description of an article, which forms part of a trade mark, is not confined to the use in the country or by the defend .....

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bsence of cogent evidence the presiding officer, i.e., the Judge may resort to an ocular test with regard to the similarities in the registered trade mark and the infringing mark. 35. In the instant case it is quite evident that the plaintiff has a registration in his favour in respect of mark "RICH'S WHIP TOPPING" and not "WHIP TOPPING". This is a position which obtains even in other jurisdictions such as the USA and New Zealand, a fact which is evident from the document .....

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in a part of the trade mark, that is, 'WHIP TOPPING" unless it is able to demonstrate that it is not common to trade or has attained a distinctive character. 35.1 In my view, in order to come to a conclusion whether or not a given mark achieved distinctiveness the evidence placed on record will have to be appraised keeping the following in mind:- First, does the mark remind the consumer of the trade origin. In other words, does the trade origin get related to the propounder of the mark .....

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t that use of the words 'WHIP TOPPING' brings to mind the product manufactured by the plaintiffs. PW7 who is the distributor of plaintiff No. 2 has laconically stated that the infringing mark has created confusion. Being a distributor of plaintiff No. 2 his evidence cannot be given much weight. Similarly, PW8 has extolled the virtues of the plaintiffs product as having a greater shelf life, and the fact that the trade dress of the plaintiffs' packaging is 'eye catching' and e .....

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#39;. The suffix 'BELLS' by itself, even if one were to apply the test of the fading memory of a consumer, does not persuade me to hold that there is any similarity, much less an identity, with the plaintiffs' registered trade mark, which is "RICH'S WHIP TOPPING". Therefore, in one sense it is not necessary in the instant case for the defendant, in my view, to bring its case under the provisions of Section 30, 35 or 36 of the Trade Marks Act. 36. Since lengthy submissio .....

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r concern with description or observable things or qualities (see New Shorter Oxford English Dictionary, Edition 1993 at page 644). Whether a word or expression is 'generic' or 'descriptive' or both is dependent on the facts and circumstances arising in a particular case. It is quite possible that a word or expression which is 'generic', i.e., which refers to a genus or a class is also descriptive as the word by itself characterize the qualities of the product. The line d .....

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a liquid rich in droplets or particles of the dispersed phase that forms a separate (especially upper) layer in an emulsion or suspension when it is allowed to stand or is centrifuged (see New Shorter Oxford English Dictionary, Edition 1993 at page 543). The words "Whip Topping", when juxtaposed would, in my view, be representative of toppings or garnishes for food items which have cream like quality. Therefore, it is, in my opinion, both 'generic' as well as 'descriptive& .....

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ected, provided it has attained secondary distinctive meaning by its extensive use and publicity. In other words use is a question of degree. What one needs to ask oneself is whether the descriptive mark has become the trade mark. The defendant can ward off a challenge in respect of a mark in which the plaintiff claims proprietorship rights and seeks to enforce his rights whether on the basis of the registration or otherwise; on the ground that the trade mark is a descriptive word or consists of .....

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he world wide turnover of its product, which included the sales in India, the amount spent on promotional material and the extensive publicity received over the years in newspapers and journals both in India and abroad. I have already observed hereinabove the use of the mark by itself does not translate into distinctiveness. The distinctiveness should be of an order which displaces the "primary descriptive meaning" of the word. The evidence placed before me falls well short of this sta .....

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'; the New Zealand company office has excluded the use of the words "WHIP TOPPING". Even in India the plaintiffs have of their own accord disclaimed their right to the letter 'S' and the word 'Topping'. In these circumstances, I am not persuaded to hold that the use of the words "WHIP TOPPING" by the defendant in its trade mark "BELLS WHIP TOPPING" would infringe either the statutory rights vested in the plaintiffs' registered trade mark &quo .....

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nability of this argument. The example most commonly used, which comes to my mind, is that of a 'soap'. Can 'soap' be used by itself as a mark? The answer in my opinion is clearly in the negative since it describes the product; however, it nevertheless is a noun. 39. Consequently, this brings me to the submission of the plaintiffs that the defendant's use of the infringed mark constitutes passing off. In this connection, let me reiterate the well known parameters of what cons .....

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mployment of deception. Mere confusion will not suffice; (ii) intent is not a necessary as long as the unwary consumer is deceived; and (iii) the act of the tort should injure the goodwill not just his reputation. The cause of action for passing off are premised on the 'classical trinity' form or the extended form. A "classical form" of passing off is one where a person seeks to trade his goods as those originating from another; thus injuring such person's individual busine .....

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caat case') and Reckitt Colman Products Ltd v. Borden (1990) R.P.C 341 H.L] 39.1 In my view, the defendant cannot be said to have committed the tort of passing off if the test set out above are applied to the facts obtaining in the instant case. The defendant's trade mark "BELLS WHIP TOPPING" when looked at in the setting in which the mark is affixed, which has a picture of a cake on the cover, leaves no doubt in my mind that there is not even a slightest attempt to deceive by .....

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d to agree with the learned Counsel for the defendant that the plaintiffs have not placed any evidence on record to show that it has a copyright in the said handling instructions/directions for use of the product. Though the instructions and the directions may have an element of similarity, unless the plaintiff is able to adduce evidence to support its claim, which, as stated above, it did not produce i.e., it is the originator of those instructions; it cannot seek any rights in respect of the s .....

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submission of Mr Gupta that the defendant shall not be able to obtain registration of its mark in view of the provisions of Section 11 of the Trade Marks Act is also predicated on a finding that the plaintiffs' mark is "well-known" in the trade. Priority of use alone shall not suffice for the purposes of Section 11 of the Trade Marks Act, given the facts and circumstances of this case, and my observations made hereinabove on "distinctiveness" achieved by the plaintiffs&# .....

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e plaintiff has a proprietary right in the trade mark "RICH'S WHIP TOPPING" in relation to goods referred to in the plaint. And these rights obtain both with respect to those conferred upon the plaintiff under the Trade Marks Act as well as under common law. The rights of the plaintiffs do not extend to a part of the trade mark, i.e., "WHIP TOPPING". Rights in the entire or "whole" does not necessarily translate into a right in a "part" of the trade ma .....

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rd "TOPPING" and "WHIP TOPPING" - both of which form part of its registered trade mark "RICH'S WHIP TOPPING". Similarly, in India the plaintiff has accepted disclaimer in respect of letter 'S' and the word 'Topping' once again as part of its trade mark "RICH'S WHIP TOPPING". Consequently, both the issues are found against the plaintiffs. (iii) Issue Nos. 4 & 5 are answered against the plaintiff and in favour of the defendant in .....

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ptive of the product. The words have not acquired a secondary meaning. (v) In view of the observations above, the issue No. 6 is also answered against the plaintiff. The plaintiffs are hence not entitled to any damages as claimed or at all. (vi) In so far as issue No. 11 and 12 are concerned, I am of the view that both these issues have to be found in favour of the plaintiff. The plaintiff is not guilty of concealment in view of the fact that the document pertaining to disclaimer of letter ' .....

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issue has really been relegated to the background. Accordingly, I find the issue in favour of the plaintiff and against the defendant. (vi) As regards whether the suit is barred on account of delay and latches and acquiescence, I am of the view that the said issue has to be once again found in favour of the plaintiff and against the defendant. The reason for the same being that there is nothing put on record by way of evidence by the defendant to suggest that the plaintiffs' assertion, that .....

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latches in not coming to the court at the earliest, it most certainly is not a case of acquiescence. It would also perhaps be useful to cull out the distinction between acquiescence and laches. See Bihar Tubes Ltd v. Garg Ispat Ltd. CS(OS) No. 1633/2009 dated 26.10.2009. 13. ...Acquiescence to my mind, would mean conscious acceptance of an inimical state of affairs. The meaning of the word "acquiescence" would perhaps also depend on the context in which it is used. In the present conte .....

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