TMI Blog2010 (7) TMI 1146X X X X Extracts X X X X X X X X Extracts X X X X ..... l of the application. The defendants were further restrained from marketing any goods or allowing any goods to be marketed under the impugned trademark through their distributors or other agents or from advertising the same in any manner whatsoever. 3. The appellants/defendants had filed IA No. 217/2009 (under Order 39 Rule 4, CPC) for vacating the said ex parte order dated 16.12.2008. The respondents/plaintiffs had subsequently filed IA No. 2769/2009 (Under Section 124(1)(ii) of the Trade Marks Act, 1999 (hereinafter referred to as 'the said Act') praying that the proceedings in the suit be stayed till the final disposal of the rectification proceedings which the respondents/plaintiffs had initiated before the trademark authorities for cancellation/rectification of the registration of the trademark 'SKINCLINIQ' in favour of the appellants/defendants. 4. The learned single Judge, by virtue of the impugned order dated 09.04.2009, disposed of all the three said applications. The respondents'/plaintiffs' application under Order 39 Rules 1 and 2, CPC (IA No. 15425/2008) was allowed and the ex parte order dated 16.12.2008 was made absolute till the disposal ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ants/defendants were engaged in the same business and a presumption cold be raised with regard to their knowledge of the respondents'/plaintiffs registered trademark and consequently, he felt that the action of the appellants/defendants in adopting the mark 'CLINIQ' was not above board. According to him, there was not much distinction between the letter Q or QUE which appeared in the word 'CLINIQ' used by the appellants/defendants and the word 'CLINIQUE' used by the respondents/plaintiffs. The learned single Judge also observed that 'CLINIQ' as used by the appellants/defendants was spelt differently from the normal word 'CLINIC' and that the whole object behind this different spelling was to somehow create an association with the respondents/plaintiffs trademark. The learned single Judge also raised a doubt as regards the appellants/defendants action in using the expression Made in India by Gufic Bio Science Ltd. . According to the learned single Judge, this expression suggested that the appellants/defendants were making 'STRETCH NIL' in India under a licence from the respondents/plaintiffs. The learned single Judge also obse ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 17-12-1998 DERMACLINIQ 3 Cosmetics Toilet Preparation 4. 821802 05-10-1998 DERMACLINIQ 5 Pharmaceutical Medical Preparation 5. 878515 27-09-1999 SKINCLINIQ STRETCH NIL (Label) 3 Cosmetics Toilet Preparation 6. 878512 27-09-1999 SKINCLINIQ STRETCH NIL (Label) 5 Pharmaceutical Medical Preparation 9. The respondent No. 1, on the other hand, is the registered proprietor in India of the trademark 'CLINIQUE', by itself, and a series of marks featuring the word 'CLINIQUE', the particulars of which are as under: Registration Date of Registration Trade Mark Class Goods 378364 13.7.1981 CLINIQUE 3 Cosmetics creams, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ants had not taken the defence available under Section 30(2)(e) of the said Act nor had the appellants/defendants considered the respondents'/plaintiffs' registration and the only plea taken was that the trademarks were completely different. This contention was repelled by Mr. Sandeep Sethi, the learned senior Counsel appearing on behalf of the respondents. However, in the course of the arguments, the said learned Counsel agreed that the Section 124 issue be not gone into in this appeal and the same be considered only from the standpoint of injunction. It is, therefore, to be seen as to whether the respondents have been able to make out a prima facie case of injunction for an infringement action under Section 29 of the said Act or not. It is obvious that if we are to examine the question of grant of injunction de hors the issue pertaining to Section 124 the said Act, it will have to be presumed that the appellants'/defendants' mark 'SKINCLINIQ' is unregistered. Because if we do not so presume, considerations under Section 28(3) as also those arising under Section 30(2)(e) of the said Act would have to be gone into. But, that cannot be done because Mr. Sudhir ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... He further submitted that, in fact, the class of people using the two products is also different. He further submitted that the style, manner of writing and the colour combination of the two trademarks are entirely different. The label marks, which are employed by the appellants/defendants are also entirely different to those employed by the respondents/plaintiffs. There is also no denying, as was observed by the learned single Judge himself, that the appellant has been in the business since 1999 and has been marketing its products 'STRETCH NIL SKINCLINIQ' since then as would be apparent from the numerous advertisements which appeared in the magazines from time to time. Mr. Sudhir Chandra submitted that when the trademarks, which are to be compared, are not identical, then the test of deceptive similarity that would have to be employed in a case of infringement would be the same as that in a case of passing off. He submitted that employing those tests, it cannot be said that the appellants'/defendants' trademark 'SKINCLINIQ' is deceptively similar to the respondents'/plaintiffs' trademarks 'CLINIQUE'. 13. Mr. Sandeep Sethi, the learned se ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f the suffix 'INDIA' would be a sufficient warning that the engine sold was not a 'RUSTON' engine manufactured in England. However, the Supreme Court held that the mark 'RUSTON' had been infringed not only by the use of 'RUSTAM', but also by the mark 'RUSTAM INDIA'. The Supreme Court felt that the word 'RUSTAM' was deceptively similar to the word 'RUSTON' and that the fact that the word 'INDIA' was added to the respondent's trademark was of no consequence and the appellant was entitled to succeed in its action for infringement of the trademark. While coming to this conclusion, the Supreme Court succinctly brought out the distinction between an infringement action and a passing off action. It observed that in a passing off action, the issue is whether the defendant is selling goods so marked as to be designed or calculated to lead the purchasers to believe that they are the plaintiffs goods. However, in an infringement action, the question is whether the defendant is using a mark which is the same as or which is a colourable imitation of the plaintiffs registered trademark. The Supreme Court observed: 7. In an ac ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... CO' in the appellants mark. Apart from that, the two marks were identical. The Supreme Court further observed that the said syllable 'CO' was not, in their opinion, such as would enable the buyers in our country to distinguish the one mark from the other. The Supreme Court also held: It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole. 18. Importantly, the Supreme Court also observed that: ...the idea of the two marks is the same. The marks convey the ideas of glucose and life giving properties of vitamins. The Aquamatic case Harry Reynolds v. Laffeaty's Ld. 1958 R.P.C. 387 is a recent case where the test of the commonness of the idea between two marks was applied in deciding the question of similarity between them. Again, in deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them. 19. In Amar Singh Chawal Wala ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word Gluco Biscuits in one and Glucose Biscuits on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs' goods, he might easily mistake the defendants' wrapper for the plaintiffs' if shown to him some time after he had seen the plaintiffs'. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Homes. We have therefore no doubt that the defendants' wrapper is deceptively similar to the plaintiffs' which was registered. We ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... egistered mark 'CLINIQUE'. When we do that, we do not find any overall structural or phonetic similarity. We cannot separate the mark 'SKINCLINIQ' into its component parts 'SKIN' and 'CLINIQ' and then compare the component 'CLINIQ' with the respondents mark 'CLINIQUE'. If such a splitting up cannot be done, then we do not see any phonetic, visual or overall structural similarity in the two marks, 'CLINIQUE' and 'SKINCLINIQ', so as to reach to the conclusion that 'SKINCLINIQ' is deceptively similar to 'CLINIQUE'. The word 'Clinic' by itself means a place where some kind of treatment is provided. So, perhaps, it could be said that the word 'CLINIQUE' conveys the idea of some kind of treatment. To a certain extent, it may be said that the mark 'CLINIQUE' and the mark 'SKINCLINIQ' do convey a common idea of treatment. However, as pointed out above, while comparing the marks, we have to examine not only the commonness of the idea between the two marks, but also the overall visual, structural and phonetic similarity of the marks. Taking an overall view of the marks, we feel tha ..... X X X X Extracts X X X X X X X X Extracts X X X X
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