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Marico Limited Versus Agro Tech Foods Limited

2010 (11) TMI 1060 - DELHI HIGH COURT

FAO (OS) No. 352/2010 - Dated:- 1-11-2010 - Sanjay Kishan Kaul and Valmiki J. Mehta, JJ. For the Appellant: Sudhir Chandra Agarwal and Sandeep Sethi, Sr. Advs., Rahul Chaudhry, Sumit Wadhwa and Amritesh Mishra, Advs. For the Respondents: V.P. Singh, Sr. Adv. and Dhruv Anand, Adv. JUDGMENT Valmiki J. Mehta, J. 1. The present appeal has been filed with a prayer to set aside the order passed by the learned Single Judge of this Court on 23.4.2010 disposing of an application for injunction filed by t .....

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se of the expression "LOW ABSORB" 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- .....

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marks "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 paras 11 and 12 which read as under: 11. Given below are the sales figures for the edible oil on which LOW ABSORB and/or LOSORB marks(s .....

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y the Plaintiff in the ordinary course of business and have been verified to be correct. 12. The Plaintiff has incurred huge amounts in promoting its edible oil bearing trademarks LOW ABSORB and/or LOSORB and in popularizing the said trademarks. Given below are the sales promotional figures incurred by the Plaintiff in advertising its edible oil bearing the aforesaid trademark(s) for the period October, 2005-March, 2009: FINANCIAL YEAR MONTHS TELEVISION ADVERTISEMENTS TOTAL (IN LAKHS) POS MATERI .....

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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 .....

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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 passin .....

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e is now almost entirely covered by a decision of a Division Bench of this Court reported as Cadila Healthcare Ltd. v. Gujrat Co-operative Milk Marketing Federation Ltd and Ors. 2009 (41) PTC 336: 2009 (8) AD (Delhi) 350 we shall therefore deal with it first. We are consciously using "almost entirely" because there is one major difference in the case of Cadila Healthcare Ltd. (supra) and the present case on the issue of passing off being that the products in the case of Cadila Healthca .....

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ugar Free". The Division Bench has held that expression "Sugar Free" is basically a descriptive and generic expression. The Division Bench has further held that it cannot be said to be a coined word. The Division Bench in effect has held that there cannot an exclusive ownership granted to a person with respect to expression "Sugar Free", i.e., there cannot be claim of exclusive user of the expression "Sugar Free" as a trademark with respect to all other product .....

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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 expressi .....

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nd 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 defendant's product Pro Biotic Frozen Dessert in the market does not give this Court a good ground for imposing a blanket injunction on the .....

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that the appellant's product cannot be directly consumed or eaten and merely is an additive does not detract from the descriptive nature of the trademark. Once a common phrase in the English language which directly describes the product is adopted by a business enterprise, such adoption naturally entails the risk that others in the field would also be entitled to use such phrases provided no attempt is made to ride on the band wagon of the appellant's indubitably market leading product & .....

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ation as envisaged by Sections 9, 30(2)(a) and 35 of the Act. The said Sections 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 .....

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ll-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 .....

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at of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services.! (emphasis supplied) Thus, it is clear that the mark or indication which serves to designate the quality of the goods of the appellant, which indeed the phrase "Sugar Free" does, would be an absolute ground for refusal of registration of a mark unless it h .....

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Baby Dry (supra) to claim that the expression "Sugar Free" is a coined word and is distinctive in nature. Apart from the fact that the law laid down in the case of Baby Dry is not binding on us, it is also relevant to notice that in the said case the court permitted the registration on the basis of the categorical findings that the expression "Baby Dry" was a syntactically unusual juxtaposition of two independent English words and was not a familiar expression in the English .....

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rein 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 .....

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cts 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 .....

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any other food product except the appellant's sugar substituted product labelled "Sugar Free". There cannot be any doubt that the word "Sugar Free" is not inherently distinctive and is clearly descriptive in nature. In fact, the word "Sugar Free" in essence clearly only describes the characteristics of the appellant's product and therefore, cannot afford it the protection sought in the plaint by restraining the respondent from using the phrase "Sugar Fr .....

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ge of the expression "Sugar Free" by the respondent may thus blunt the edge of claim of distinctiveness by the appellant. However, we make it clear that if any party enters into the domain of artificial sweeteners with the trademark "Sugar Free" the appellant may have a just cause in seeking restraint. 6. In view of the judgment of the Division Bench in the Cadila Healthcare Ltd. (supra), and with which we respectfully agree, the appellant in the facts of the present case can .....

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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 juxtapositi .....

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dible oil and ordinarily/ normally incapable of being distinctive. We are also of the view that it is high time that those persons who are first of the blocks in using a trade mark which is a purely descriptive expression pertaining to the subject product ought to be discouraged from appropriating a descriptive expression or an expression which is more or less a descriptive expression as found in the English language for claiming the same to be an exclusive trademark and which descriptive word m .....

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sion as a trademark. We are in this entire judgment for the sake of convenience only using the expression "descriptive expression" or "descriptive word" or "descriptive trademark" "descriptive" etc. but these expressions are intended to cover cases with respect not only to a descriptive word mark used as a trademark but to all word marks used as trademarks which refer to kind, quality, intended use or other characteristics etc of the goods, and also other .....

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t itself also contains provisions for cancellation of registered trademarks including Section 57 whereby registration obtained is 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 ordin .....

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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. .....

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trade channel same, it cannot be said that in the facts and circumstances of the case, there is a possibility of confusion, because there are more than enough differentiating features on the packaging so as to avoid any issue of the respondent passing of its goods as that of the appellant. For the sake of convenience the three packages in colour are reproduced below: Thus the conclusion of the above is that, even though the two respective products of the parties are identical viz edible oil, it .....

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art is what is the meaning to be ascribed to the expression "distinctive" as found in the proviso to Section 9 and the second aspect is whether the Trademark of the appellant has in fact become distinctive. The word "distinctive" is not directly defined in the Act. However meaning of distinctive is indicated in the definitions of "trade-mark" (Section 2(zb)) & "well known trade mark" (Section 2(zg). The word has been explained in a plethora of judgment .....

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ng 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 .....

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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 descriptive trademark is used only by one person undisturbed for a very long period of time, without anyone else attempting to use the trademark during this long period time, a case can be .....

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become distinctive then the original user of a descriptive trademark cannot ordinarily establish "distinctiveness". Ultimately everything will turn on the facts of each individual case and in some cases the facts may be wholly clear even at the interim stage of deciding an interlocutory application, in other cases (which are bound to be in a majority) a decision on distinctiveness can only be made after evidence is led by the parties. This is also so held by the Supreme Court in the &q .....

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ion "LOW ABSORB" that it can be said that the appellant has got such distinctiveness to claim exclusive monopoly of the same as a trademark keeping in mind the observations made above of discouraging appropriation of descriptive words and expressions. Also, the extent of sales i.e. value of sales can sometimes be deceptive in cases such as the present where the appellant also uses other trademarks such as "Sweekar" & "Saffola'. It would be a moot point, to be dec .....

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ark. 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 na .....

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learned senior counsels for the appellant placed reliance on the provisions of Section 2(h), (defining deceptively similar), Section 2(zb), (defining a trademark), Section 9 proviso (entitlement of registration of a descriptive trademark on it becoming distinctive), Section 29 (entitling action for infringement against a defendant for user of a deceptively similar trademark), Section 31 (registration being prima facie evidence of validity, and disentitlement to question registration in infringem .....

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n 9(1)(b), (which indicate disentitlement for registration of words which indicate kind, quality, intended purpose etc, of the goods), Section 28, (to contend that a right to infringement action is only if the registration is valid), Section 30(2)(a), and Section 35 (in support of the argument of entitlement of the respondent to use such words which describe the kind, quality and intended purposes etc of the goods although, the said word mark is also used as a trademark by the appellant, and als .....

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mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services 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 m .....

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nd 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) .....

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s 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. (2). A mark shall not be registered as a trademark if- (a) it is of such nature as to deceive the public or cause confusion. (b) It .....

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ry to obtain a technical result, or (c) the shape which gives substantial value of the goods. Explanation.- For the purposes of this section, the nature of goods or services in relation to which the trademark is used to proposed to be used shall not be a ground for refusal of registration. Section 28. Rights conferred by registration.- (1) Subject to the other provisions of this Act, the registration of a trademark shall, if valid, give to the registered proprietor of the trademark the exclusive .....

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le 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 .....

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d proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of- (a) its identify with the registered trademark and the similarly of the goods or services covered by such registered trademark or, (b) its similarly to the registered trademark and the identity or similarly of the goods or services covered by such registered trademark, or (c) its identity with the registered trademark and the identity of the goods or services covered by such registered t .....

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the registered trademark, and (b) is used in relation to goods or services which are not similar to those for which the trademark is registered, and (c) the registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark. (5) A registered trademark is infringed by a person if he uses such registered trademark, as his trade name or part of his trade name, or na .....

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exports goods under the mark, or (d) uses the registered trademark on business papers or in advertising. (7) A registered trademark is infringed by a person who applies such registered trademark 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 regi .....

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nce 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, g .....

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eeding as aforesaid a registered trademark shall not be held to be invalid on the ground that it was not a registrable trademark under Section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trademark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration Section 35. Saving for use of name, address or description of goods o .....

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k is questioned, etc.-(1) Where in any suit for infringement of a trademark - (a) the defendant pleads that registration of the plaintiff's trademark is invalid, or (b) the defendant raises a defence under Clause (e) of Sub-section (2) of Section 30 and the plaintiff pleads the invalidity of registration of the defendant's trademark. The court trying the suit (hereinafter referred to as the court) shall,- (i) if any proceedings for rectification of the register in relation to the plainti .....

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ion 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 allo .....

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ark. (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 injunction directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.' 13. A reading of the aforesaid sections taken together show that: A trademark is ordinarily used in relation to goods of a manufacturer. A trademark can be registered but ordinaril .....

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ttable presumption, see para 31 of N.R. Dongre v. Whirlpool Corp. 1995 (34) DRJ 109 (DB). The right conferred by registration for exclusive use of the trademark in relation to goods is if the registration is valid and which flows from the expression "if valid" occurring in Section 28. The expression "if valid" has been inserted for the purpose that post registration an aggrieved person is entitled to apply for cancellation under Section 57 of the Act even if no suit is filed .....

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e pending as on the date of filing of a suit for infringement if the court is satisfied with regard to the plea of invalidity of registration (this language of Section 124(1)(a)(i) co-relates to the expression "if valid" as occurring in Section 28) then the court may raise an issue in the suit and adjourn the case for three months after 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 .....

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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 .....

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use the registered trademark if the conditions mentioned in those sections are satisfied, meaning thereby, in spite of registration, and in spite of the statutory rights conferred by Sections 28 and 29, an owner of a registered trademark cannot sue for infringement if the use by the defendant of the trademark falls within the exceptions as carved out under various Sub-sections of Section 30 and Section 35. That this is so becomes absolutely clear from the expressions "nothing in Section 29 .....

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istics of the goods. Therefore there are two stages/tiers of defence in an infringement action. The first is for cancellation of registration in terms of Section 57. If the registration is cancelled obviously nothing will survive in the infringement action. The second tier is that even if the registration is valid there are still valid defences as enunciated in Sections 30 - 35 of the Act which will disentitle the plaintiff to relief in an action brought for infringement of a registered trade ma .....

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nction 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 .....

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tration 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 trademark and it cannot be the stand of the appellant that the plea of invalidity of registration cannot be looked into bec .....

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lidity of registration of trademark for deciding the interlocutory application and which is very much permissible and in fact so provided under Section 124(5). 15. Now let us examine the issue of prima facie validity of registrations of the appellant for deciding the aspect of grant of injunction in the facts of the present case. When we look at the facts in the present case, we find that when the application was filed for registration of the trademarks "LOSORB" and "LO-SORB" .....

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riptive expression "LOW ABSORB" which is not an unusual juxtaposition of words in the English language and no evidence existed before the Registrar of distinctiveness because the marks were sought to be registered not on proof of actual user so as to make the same distinctive on the date of filing of the application for registration but only on "proposed to be used" basis. The expression "LOW ABSORB" conveys the same meaning as "ABSORBS LOW". Such descript .....

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ion 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 wi .....

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word or expression of the English language, a person who gets registration can prevent a purely descriptive use of a normal word or expression as found in English language dictionary on the ground that it would be identical with or deceptively similar to a registered trademark- a position which is found in the present case. Such a position, in our opinion, cannot at all be countenanced and must be struck down with a heavy hand. When we see the facts and circumstances of the present case, we fin .....

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characteristic etc. of the goods and are not ordinarily entitled to registration. We have, while on the issue of passing off, already adverted to the aspect of whether the sales are related to the trade marks "LOSORB/LO-SORB" or to "Sweakar/Saffola", being a moot point. Having expounded on the law as above, we may again add that in a particular case, it is possible that a descriptive word mark on account of its such extensive user over a great length of time, when no other pe .....

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oined word would be entitled to trademark protection where the coined word is the result of joining of one or two or few normal non descriptive English words of the dictionary or one word out of the two or more words forming a coined word is an arbitrary adaption. As already stated, therefore, in trademarks matters, every case necessarily turns 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 inten .....

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o 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 regi .....

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9(1) of the Act, the language of Sections 31(2) and 32 seem to suggest that even if evidence is not filed of distinctiveness on account of use at the time of registration, evidence can still be looked into and filed in legal proceedings pertaining to infringement of a trademark. The issue is that whether there is conflict between the similar language employed in the proviso to Section 9(1) of the Act on the one hand and the language employed in Section 31(2) and Section 32 of the Act on the othe .....

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y, 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 dist .....

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ed 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, acquir .....

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rovides 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 actual date of registration. Meaning thereby, ordinarily, the evidence of the distinctiveness by use has to be on the date of the application, but Section 31(2) allows evidence of distinctiveness post the making of the application up to the date of registration. There is a hiatus between the date of the application and the date of registratio .....

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of making of the application, however, Section 31(2) relaxes the rigour of the proviso to Section 9(1) in that evidence of distinctiveness by use can be looked into of the period up to the actual date of registration. Therefore, there is no conflict between the proviso to Section 9(1) and Section 31(2). There is also no conflict between the proviso to Section 9(1) of the Act and the provision of Section 32. On the first blush there may appear to be conflict because Section 32 seems to apply to a .....

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red trademark which is filed under Section 57 of the Act. Therefore, the evidence with regard to the distinctiveness to justify registration, in terms of Section 32 can only be in the proceedings before the Registrar/Appellate Board in cancellation proceedings and not in the proceedings in the civil court where an infringement action is filed. Thus, a conjoint reading of the three provisions being the proviso to Section 9(1), Section 31(2) and Section 32 brings forth the position that ordinarily .....

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gs 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 und .....

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the suit was filed. We have already held above that in fact even if there is user up to 2009, yet, descriptive trademarks have not become prima facie distinctive at the stage of interim injunction. We have also adverted to the aspect of discouraging the entitlement of grant of distinctiveness to purely descriptive word marks. Therefore, the infringement action in this Court cannot be supported on the basis of evidence showing distinctiveness by user from 2005 to 2009 and that would be clearly b .....

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S TO INFRINGEMENT ACTION 18. Let us for the sake of argument now assume the registration to be valid, can it then be said that the appellant is entitled to grant of injunction for preventing the defendant from using the expression "LOW ABSORB TECHNOLOGY" in its packing under which the edible oil is sold and whether such use amounts to infringement of the registered trademarks of the appellant. We note the fact that the respondent was obviously not justified in using the expression &quo .....

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plaintiff's registration itself may not be valid and the defendant may have valid defences in terms of Section 30(2)(a) and Section 35 of the Act. This 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 us .....

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sion "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, intended purpose or other characteristics of the goods, it is n .....

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descriptive manner but as a trademark. If we permit such an argument to prevail then what will happen is that what cannot be directly done will be indirectly done i.e., whereas the appellant is not entitled to succeed in the infringement action because the use by the respondent is in furtherance of its statutory rights of the user of the words which are descriptive of the kind, quality, intended purpose or characteristic of the goods, yet, merely because the appellant states that the respondent .....

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e does arise the question of disentitlement of a defendant to use the trademark of the appellant inasmuch as any person who adopts a descriptive word mark does so at its own peril in that any other person will also be fully entitled to use the same in view of a specific statutory rights thereto, and there are various other statutory rights including that under Section 30(2)(a), and which is what is being done by the respondent in the facts of the present case and its rights being further stronge .....

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0(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 rel .....

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l of registration of the trademark. There is no malafides of the respondent as alleged by the appellant because the respondent is using the expression "LOW ABSORB" as part of a sentence in a descriptive manner and the respondent is also prominently using its own trademark "Sundrop", an aspect we have repeatedly referred to otherwise in this judgment. Merely because the respondent used "TM" earlier after the expression "LOW ABSORB TECHNOLOGY" is not such as .....

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is alleged. In the facts of the present case, we have already adverted to in detail the prominent use by the respondent of its independent trademark "Sundrop", and, the fact that the expression "LOW ABSORB" is being used only as part of the sentence which reads "WITH LOW ABSORB TECHNOLOGY". 20. We may however note that when two identical trademarks are used by two parties in the market, or that a use of a descriptive word by a defendant can be confused with the tra .....

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adila Healthcare Ltd. v. Diat Foods (India) decided on 29.9.2010, in which this Court (speaking through Sanjay Kishan Kaul, J) has relied upon another Division Bench judgment of this Court in the case of Goenka Institute of Education and Research v. Anjani Kumar Goenka and Anr. AIR 2009 (Delhi) 139: 160 2009 DLT 417 as also Section 12 of the Act 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 a .....

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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 infringe .....

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distinctiveness with respect to trade marks falling under Section 9(1)(a) to (c) should be the evidence of user evidencing distinctiveness as on the date of application for registration or at the best of evidence up to the date of registration. (v) In infringement actions the court is entitled to consider the evidence of distinctiveness up to the date of registration for the purpose of passing any interlocutory order and not evidence showing distinctiveness post registration. However, in cancel .....

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