TMI Blog2010 (11) TMI 1060X X X X Extracts X X X X X X X X Extracts X X X X ..... h 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 trademarks and also reference has been made to large amounts spent towards advertisements. The relevant paras of the plaint are pa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... en taken from the books and records maintained by the Plaintiff in the ordinary course of business and have been verified to be correct. 3. The defendant is selling its edible oil/Sunflower seeds oil under the trademark Sundrop and since this edible oil also contains an antifoaming agent, which in turn, retards the absorption of oil during the process of frying food stuffs, therefore, the packaging also contains the expression WITH LOW ABSORB TECHNOLOGY . 4. Two basic issues arise for decision in the present appeal along with incidental and related issues. The first issue is on the aspect of infringement i.e. whether the appellant's registration gives it exclusive right to use the subject trademarks LOSORB and LO-SORB and consequently whether an action for infringement is maintainable if a person such as the respondent uses 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 wo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of the expression Sugar Free as a trademark with respect to all other products which were not artificial sweeteners assuming that the plaintiff may have distinctiveness with respect to its trademark for artificial sweeteners. The relevant paras of the judgment Cadila Healthcare Ltd. (supra) which contain the ratio are para Nos. 8 to 11 and 14 which read as under: 8. In our view, at this juncture i.e. at the interim stage, even assuming distinctiveness claimed by the appellant in its favor qua its artificial sweetener, the appellant has rightly been declined an injunction by the learned Single Judge since it is evident and has indeed been found by the learned Single Judge that the use of the term Sugar Free by the respondent 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 distinctivene ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s read as follows: 9. Absolute grounds for refusal of registration .- (1) The trademarks- (a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person; (b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service; (c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established 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 pr ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , both in written, as well as spoken English, for example, - hands-free (for mobile phones) and fat free (for food articles) and thus cannot be permitted exclusive use for only the appellant's product. 11. The appellant has relied upon the case of Godfrey Philips India Ltd. (supra) wherein it was held that a descriptive trademark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or has been from a particular source. It is also relevant to mention here the judgment of Home Solutions (supra) was also relied upon by the respondents, wherein it was 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 t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... and with which we respectfully agree, the appellant in the facts of the present case can have no exclusive ownership rights on the trademark LOW ABSORB . The expression LOW ABSORB is quite clearly a common descriptive expression/adjective. The expression LOW ABSORB is not a coined word and at best it is a combination of two popular English words which are descriptive of the nature of the product as held by the Division Bench in Cadila Healthcare Ltd. (supra) case that such 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... cancelled being violative of the applicable provisions of the Act. Our belief is further confirmed by the provision of Section 31(1) which clearly states that registration is only prima facie evidence of the validity of registration. It is only when cancellation proceedings achieve finality of the same being finally dismissed can it be said that a mark for which ordinarily there is an absolute 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 canc ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s what should be the meaning of the expression distinctiveness in the situation when the trademark is a word mark of descriptive nature. When a trademark, which is a word mark, is arbitrarily adapted and is such having no co-relation to the goods in question, then in such a case distinctiveness is achieved by normal and ordinary use of 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... a'. It would be a moot point, to be decided after trial, that what is the extent of sales relatable to LOW ABSORB only (and even for the registered marks LOSORB and LOSORB ) and not because of the trade marks Sweekar 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of one person from those of others and may include shape of goods, their packaging and combination of colours; and (i) in relation to Chapter XII (other than Section 107), a registered 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... fringement of the trademark in the manner provided by this Act. (2) The exclusive right to the use of a trademark given under Sub-section (1) shall be subject to any conditions and limitations to which the registration 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 t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... to a material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... or defendant's trademark is prima facie tanable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the farming of the issue in order to enable the party concerned to apply to the Appellate Board for rectification 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... r framing the issues in order to enable the defendant to apply to the Appellate Board for rectification of the register. Even in the circumstances where the court stays the suit for three months and permits a party to apply for cancellation/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 t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... se, we find that the injunction application was disposed of at a stage when the defendant filed an application for vacation of the injunction and no written statement of the defendant was on record. As already 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... are in fact clear indications of designation of the kind, quality, intended purpose or other characteristics 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 th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s upon and is decided on its own 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... strar before registration, if it is proved 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 f ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... by use ought to be as available 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 b ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 word mark is in fact a mere tweak of a descriptive word indicative of the kind, quality, inte ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ive 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 there is ordinarily an absolute ground for refusal of registration of the trademark. There is no malafides of the respondent as alleged by the appe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 entitled (if there is no earlier judgment which has achieved finality in cancellation proceedings) to consider the validity of registration for the purpose of passing an interlocutory order including of grant or ..... X X X X Extracts X X X X X X X X Extracts X X X X
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