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TMI Blog2010 (11) TMI 1060X X X X Extracts X X X X X X X X Extracts X X X X ..... SORB" by the respondent-defendant which was alleged to be deceptively similar to the registered trademarks "LOSORB" and "LO-SORB" of the appellant-plaintiff. The learned Single Judge also held that use of the expression "LOW ABSORB" by the defendant will not amount to passing off although the plaintiff also claimed a right in the unregistered trademark "LOW ABSORB". 2. The relevant facts of the case are that appellant-plaintiff got registered the Trademarks "LOSORB" and "LO-SORB" for different products in class-29 viz Oil, Ghee etc. effective from 28.05.2001. The appellant claimed that it coined the word marks which have been registered by it. The registered marks were used in relation to edible oil inasmuch as the edible oil contained an ingredient/anti foaming agent by which less or low oil was consumed by the product made by use of the edible oil. The edible oil sold also used the trademarks "Sweekar" & "Saffola" besides the subject registered trademarks "LOSORB" and LO-SORB'. The appellant in the plaint has referred to its extensive sales of the product by using of the registered ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s a trademark which is deceptively similar or nearly identical or identical to the registered trademarks. Included in this first issue is the aspect of whether registration only confers prima facie validity and thereby does not prevent the court from denying the injunction in spite of registration. Further, assuming that registration is final would the appellant be entitled to the reliefs of injunction with regard to its claims of infringement once the respondent lays out a valid defence under the applicable provisions of the Trademarks Act, 1999 (hereinafter referred to as the "Act") which inter alia, include Section 30(2)(a) and Section 35 thereof i.e. the use of the words by the respondent, which words are claimed by the appellant as its trademarks are statutorily permissible as the use is only in a descriptive manner. The second issue is the issue with regard to claim of the appellant pertaining to passing off and the issue is whether the respondent's user of the expression "LOW ABOSORB TECHNOLOGY" in relation to its edible oil product amounts to passing off the goods of the appellant which uses the unregistered trademark "LOW ABSORB". We also ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... dent is not in the trademark sense but as a common descriptive adjective. The learned Single Judge has found and in our view rightly that the respondent has not used the expression in a trademark sense but only in a descriptive sense in the following passage: - 54. It is important to be borne in mind that use of a descriptive expression as a trademark by a trader, irrespective of the said trademark having acquired a secondary meaning and distinctiveness in relation to the trader's products, does not entitle such trader from precluding other traders from using the said expression for the purposes of describing the characteristic features of their products. I have no hesitation in stating, albeit without prejudice to the rights and interests of the plaintiff in the present suit, that by adopting such a purely descriptive and laudatory expression "Sugar Free" as its trademark, the plaintiff must be prepared to tolerate some degree of confusion which is inevitable owing to the wide spread use of such trademark by fellow competitors. Simply because the plaintiff claims to be using the expression "Sugar Free" as a trademark much prior to the launch of the defend ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... blished practices of the trade, shall not be registered: Provided that a trademark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trademark. 30. Limits on effect of registered trademark. (1) Nothing in Section 29 shall be construed as preventing the use of a registered trademark by any person for the purposes of identifying goods or services as those of the proprietor provided the use- (a) is in accordance with honest practices in industrial or commercial matters, and (b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trademark. (2) A registered trademark is not infringed where- (a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services; 35. Saving for use of name, address or description of goods or services.-Nothing in this Act shall entitle the proprietor or a registered user of a registered trademark t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s held that ?the expression "HOMESOLUTIONS" is inherently incapable of becoming distinctive of any single person with respect of any single product or service. It is generic and publici juris. It describes the nature of services offered." Thus, in our view, the mark "Sugar Free" is inherently incapable of becoming distinctive of the product of the appellant and hence the ratio of Godfrey Philips would thus not be applicable. Even if it is assumed that the mark of the appellant has become distinctive qua the artificial sweetener, however, the protection to the mark qua the product artificial sweetener cannot be extended to all the food products of any competitor in the market. We also affirm and reiterate the view taken by the learned Single Judge that the appellant's product is a sweetener/sugar substitute, and sweeteners are generally understood in their functional sense, that is, in terms of utility when added to foods and beverages. To an average consumer, a sweetener is known to exist only when added to food and beverages, and its own identity gets merged in the food and beverages to which it is added. Thus, the expression "Sugar Free" whe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... uch adoption naturally entails the risk that others in the field would also be entitled to use such phrases. Low Absorb is not an unusual syntax and the same can almost be said to be a meaningful part sentence or phrase in itself. The expression "LOW ABSORB" surely and immediately conveys the meaning of the expression that something which absorbs less, and when used with respect to edible oil, it is descriptive in that it refers to less oil being absorbed or low oil being absorbed. Similar to the expression "Sugar Free" being not an unusual juxtaposition of two English words the expression "LOW ABSORB" equally is not an unusual juxtaposition of words in that the same can take away the descriptive nature of the expression. The expression "LOW ABSORB" is used in the functional sense for the character of the product viz edible oil. With respect to the unregistered trademark "LOW ABSORB" we are of the firm opinion that in essence the expression "LOW ABSORB" only describes the characteristic of the product edible oil and ordinarily/ normally incapable of being distinctive. We are also of the view that it is high time that thos ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... solute ground for refusal of registration that it has acquired a distinctive character i.e. a secondary meaning or is a well known trademark. Section 124 of the Act is also relevant in this regard. Sub-Section 5 of Section 124 clearly provides that in spite of registration, the Court before which an action is filed seeking protection of the trademark is not precluded from making any interlocutory order it thinks fit in spite of the registration and also the fact that the suit may have to be stayed till decision of the rectification/cancellation proceedings before the Registrar/Appellate Board filed in terms of Section 57 of the Act. This aspect of Section 124(5) and related aspects are dealt in details in the following portions of this judgment. The facts of the present case are not such that a cancellation proceeding has been dismissed and that which dismissal has obtained finality and it cannot be said that the validity of registration has been finally tested. 7. An important aspect with respect to the issue of passing of is that the respondent is selling its product with a prominent trademark "Sundrop" and which appears on the packaging of the respondent in a very pro ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f the trademark with respect to the goods and it has been repeatedly held that such trademark is entitled to the highest degree of protection. However this is not and cannot /should not be so for a trademark which is a descriptive word mark. Some colour has to be taken for the word "distinctive" as found in the proviso to Section 9 from the expression "well known trademark" which follows the distinctiveness aspect as found in the said proviso. Courts should ordinarily lean against holding distinctiveness of a descriptive trademark unless the user of such trademark is over such a long period of time of many many years that even a descriptive word mark is unmistakably and only and only relatable to one and only source i.e. the same has acquired a secondary meaning. A case in point is the use of "Glucon-D" for 60 years in the recent judgment in the case of Heinz Italia and Anr. v. Dabur India Ltd. (2007) 6 SCC 1. A period of 60 years is indeed a long period of time and thus distinctiveness of the descriptive word mark used as a trademark was accepted, albeit in a tweaked form of the normal descriptive word "Glucose'. Therefore, when the descripti ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ot; and "Saffola'. We, therefore, at this stage of interim injunction reject the case of the appellant that it has achieved such distinctiveness that it can claim the benefit of the proviso to Section 9 with respect to the subject word mark which is a descriptive trademark. 9. The result of the aforesaid is that the learned Single Judge was justified in declining the relief of injunction on the ground of passing off. Additionally as stated by us above, in the facts of the present case there is no question of claiming any exclusive ownership right in the expression "LOW ABSORB" and therefore, consequently, their arises no question of successfully maintaining a passing of action on that basis. There are also other added factors and circumstances, as narrated above, to hold that there is no question of passing of in the present case. INFRINGEMENT ACTION 10. That takes us to the main issue which was argued in the present case being the first issue of whether the appellant by virtue of the registrations has got an exclusive right to use the expressions "LOSORB" and "LO-SORB" and is thereby entitled to prevent anyone else from using any trade mar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d trademark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trademark or collective mark; Section 2(2)(c) to the use of a mark,- (i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods; (ii) in relation to services, shall be construed as a reference to the use of the mark as or part of any statement about the availability, provision or performance of such services; Section 9. Absolute grounds for refusal of registration.- (1 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... stration is subject. (3) Where two or more persons are registered proprietors of trademarks, which are identical with or nearly resemble reach other, the exclusive right to the use of any of those trademarks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trademarks but each of those persons have otherwise the same rights as against other persons (not being registered proprietor. Section 29. Infringement of registered trademarks. - (1) A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trademark in relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark. (2) A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, use ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ark was not duly authorised by the proprietor or a licensee. (8) A registered trademark is infringed by any advertising of that trademark if such advertising- (a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters, or (b) is detrimental to its distinctive character, or (c) is against the reputation of the trademark (9) Where the distinctive elements of a registered trademark consists of or include words, the trademark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly. Section 30. Limits of effect of registered trademark.- (1) Nothing in Section 29 shall be construed as preventing the use of a registered trademark by any person for the purposes of identifying goods or services as those of the proprietor provided the use- Xxxxxxx (2) A registered trademark is not infringed where- (a) the use in relation to goods or services indicated the kind, quality, quantity, intended purposes, value, geographical origin, the time of production of goods or rendering of services or other characteristics of goods ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ation of the register. (2) If the party concerned proves to the court that he has made any such application as is referred to in Clause (b) (ii) of Sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings. (3) If no such application as aforesaid has been made within the time specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trademark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case. (4) The final order made in any rectification proceedings referred to in Sub-section (1) or Sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trademark. (5) The stay of a suit for the infringement of a trademark under this section shall not preclude the court from making nay interlocutory order (including any order granting an injunctio ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... /rectification, the court can pass any interlocutory order as it thinks fit under Sub-Section 5 of Section 124. In view of the co-relation between Section 28 and different Sub-sections of Section 124, it becomes clear that the entitlement to claim invalidity of registration on the ground of the expression "if valid" as found under Section 28 only arises if the defendant in his written statement in a suit alleging infringement of a registered trademark takes up the plea with respect to registration of trademark being "invalid" or has already applied for cancellation of the registered trademark before the suit alleging infringement is filed. Section 29 entitles an action being filed for infringement of a registered trademark against an identical, nearly identical or deceptively similar trademark used in relation to the same goods in respect of which the trademark is registered or to similar goods. In case, the trademark is not identical and the goods are also not the same for which the trademark is registered, an infringement action will only lie if the conditions of Sub-Section 4 of Section 29 are satisfied being of the registered trademark having a reputation ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y discussed hereinabove, the stage of challenging the validity of registration by the defendant arises only when the written statement is filed, because it is only in the written statement that the plea of the registration being invalid would be taken up in furtherance of the expression "if valid" as found in Section 28 and also similar language as found in Section 124(1)(a). This also flows from the fact that under Section 31(1) registration is only a prima facie evidence of validity and not conclusive evidence. Registration would only be a conclusive evidence of validity if the rectification/cancellation proceedings filed for cancellation of the registered trademark do not finally succeed. We are, therefore of the view that in the facts of the present case since the issue of invalidity of registration is to be taken up only in a written statement for an issue to be framed with respect thereto in terms of Section 124(1)(a)(ii) and the written statement was yet to be filed when the impugned order was passed, where such an issue would/could be raised, the learned Single Judge was justified in looking into the aspect of prima facie validity of the registration of the tradem ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s of the goods of which the trademark is applied. The registrations being prima facie invalid no action for infringement would thus lie. On the issue of acquiring distinctiveness subsequent to the making of the application for registration, we have already dilated at length in the earlier part of this judgment while dealing with the issue of passing off that it cannot be said that the mark "LOW ABSORB" has acquired a secondary meaning by user of a few years. We will now examine the issue whether the expressions "LOSORB" or "LO-SORB" have achieved a secondary meaning even if "LOW-ABSORB" may not have. On this aspect one immediately feels that it is an aspect of concern with respect to the claim of the plaintiff that if partly tweaked descriptive words and expressions of English language are claimed to be coined words, the same would result in a grave and absurd situation because a non-tweaked word being a completely descriptive word will in fact be deceptively similar to the tweaked descriptive English language word or expression of which registration is obtained. Meaning thereby that because of success in getting registered a minor modificat ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... facts including but not limited to the trade mark, goods in question, customers, use and all other factors and their intense co-relation in each case. 16. Thus, looking at the issue of entitlement of the learned Single Judge to question the validity of the registration of the trademark for the purpose of deciding the interlocutory application, we find that the same was also justified because firstly no evidence was filed of distinctiveness of the trademarks at the time of registration since the same did not exist because admittedly the applications were filed for registration of the trademarks on a "proposed to be used basis" and secondly so far as the evidence of user we have already held that the user in the facts of the present case is not such as to confer distinctiveness amounting to a secondary meaning for the word marks which are in fact just a tweaked form of ordinary descriptive words in not an unusual syntax. 17. One final issue remains to be examined, while deciding the issue of infringement. The issue is whether the evidence of distinctiveness though was not filed at the time of registration, yet evidence of distinctiveness by use post registration can be lo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... roved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration. Section 32. Protection of registration on ground of distinctiveness in certain cases.- Where a trade mark is registered in breach of Sub-section (1) of Section 9, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration and before commencement of any legal proceedings challenging the validity of such registration, acquired a distinctive character in relation to the goods or services for which it is registered. The aforesaid emphasized portions of the three sections clearly bring out the different situations which are envisaged in the three different provisions and obviously there is no conflict between any of the three provisions. As per the proviso to Section 9(1) of the Act, ordinarily, evidence to make the trademark distinctive by use has to be on the date of the application. The provision of Section 31(2) provides for an additional/bonus period so to say, to entitle the registration of the mark, and this bonus period is from the date of the application to the ac ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ble on the date of the filing of the application for registration, however, there is a relaxation by extending this period which ordinarily is only up to the date of the application to the actual date of registration by virtue of Section 31(2). The evidence to show distinctiveness of the trademark even post registration is available only in proceedings where the trademark is sought to be declared invalid i.e., in the cancellation proceedings under Section 57 of the Act. Therefore, it is not possible to argue and contend that even though no evidence was filed of distinctiveness by use of the trademark up to the date of registration, yet evidence can be looked into on distinctiveness by use post the date of registration of the trademark up to the date a suit is filed for infringement proceedings. The evidence in the period post registration of the trademark can only be looked into in proceedings to declare the trademark invalid under Section 57 of the Act and not in a civil suit in a civil court where infringement action of a registered trademark is filed. In the facts of the present case to justify the validity of the registration of the trademark at best evidence of distinctivenes ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... is aspect is also considered by us hereinafter. It has been contended on behalf of the respondent that respondent is selling its edible oil in a package which clearly shows its trademark as "Sundrop". The respondent states that it is not using the expression "LOW ABSORB TECHNOLOGY" as a trademark and the same is only being used as a descriptive expression, and as a part of a sentence, with respect to the product in question, namely, edible oil. The appellant, however, counters to say that the expression "LOW ABSORB TECHNOLOGY" is being used as a trademark. We have already referred to the fact that the trademark "Sundrop" is used by the respondent in a very prominent manner in its packaging by the respondent and that undoubtedly is the trademark of the respondent. The defendant is using the expression "LOW ABSORB" not independently but only as a part of a sentence which reads on the packaging as "WITH LOW ABSORB TECHNOLOGY". 19. Our conclusion is that we have in fact totally failed to appreciate the argument as raised on behalf of the appellant. Surely, when rights are claimed over a word mark as a trademark and which wor ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... HNOLOGY" because that is only a descriptive use by normal English words in the English language indicative of the kind, quality, intended purpose of characteristic of the goods. There is no use of the expression "bonafide" in Section 30(1)(a) as is found in Section 35, and we do not propose to import in Section 30(2)(a) the expression "bonafide" because the subject matters of the two Sections i.e. Section 32(a) and Section 35 are though common on certain limited aspects, however the two sections do in fact operate in separate fields. Also looking at the issue in another way, "bonafide" aspect can in a way be said to be very much included in Section 30(1)(a) because the use of words which indicate their relation to the goods for the kind, quality, intended purpose or other characteristics etc. of the goods, is clearly only a bonafide user of the same and which "bonafideness" does not have to be additionally proved. In fact, there is ordinarily not only no lack of bonafides in using the normal descriptive word, and on the contrary there is in fact malafides of a plaintiff in adopting otherwise a descriptive word mark and for which adoption ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... and held the entitlement of a Court to issue directions to ensure that there is no confusion in the public with respect to two separate products which are sold under identical or deceptively similar trademarks. Of course, in this case of Cadila Healthcare Ltd. use by the respondent/defendant was not as a trademark but only in the descriptive sense, and yet, to avoid confusion to the public, directions were issued. Similar would be the entitlement of a Court a fortiorari when two parties use same or deceptively similar descriptive word marks as trademarks. CONCLUSIONS 21. The following conclusions thus emerge: (i) A mark which is sought to used as a trade mark, if, is one falling under Section 9(1)(a) to (c), then the same ordinarily ought not to be afforded protection as a trade mark. (ii) Before the marks which fall under Section 9(1)(a) to (c) are given protection as a trade mark, the distinctiveness must of an undisturbed user of a very large/considerable number of years, with the emphasis being on discouragement on appropriation of such marks which fall under Section 9(1)(a) to (c). (iii) A civil court in a suit filed for infringement of a registered trade mark is entit ..... 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