TMI Blog2011 (6) TMI 937X X X X Extracts X X X X X X X X Extracts X X X X ..... rk or label which is deceptively or confusingly similar to the Plaintiffs' Trade Mark AQUAFINA. 4. Further in I.A. No. 15435/2009, the Court appointed Mr. Vipin Nair as a Local Commissioner and directed him to visit the premises of the Defendants to comply with the following directions: 1. If, on visiting the site, the local commissioner discovers any infringing products of the Defendants under the mark/label AQUAFINE or any other mark, which is identical or deceptively and confusingly similar to the Plaintiffs, mark AQUAFINA, he shall seize the same and make out an inventory. 2. Any moulds, dyes, packaging, labels, price list pamphlets, brochures, posters and bill books, etc. which carry the mark/label AQUAFINE, which is identical or deceptively and confusingly similar to the Plaintiffs' mark AQUAFINA, shall also be seized and taken into custody and an inventory for the same shall also be made. 5. The Local Commissioner visited the site of the Defendants and has inter alia made the following inventory: PARTICULARS QUANTITY Bottle Jar 20 liters Capacity (a) Empty Jars 30 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of bottled AQUAFINA manufactured by the Plaintiffs for the cases sold to retail outlets are as follows? YEAR RAW MM CASES VALUE (In Crores) 2002 4.7 MM 55.5 2003 7.2 MM 81.1 2004 7.6 MM 85.4 2005 10.6 MM 123.3 2006 12.3 MM 153.3 (vi) The trade mark AQUAFINA as well as the label AQUAFINA of the Plaintiffs have been regularly protected against any act of infringement and third party use as apparent from following orders? S. No Suit No. and Title Impugned Mark/label Favorable Order Current Status of the Suit 1. Suit No. 33/02 PepsiCo Inc. Vs. Vijay Kumar AQUAFINA Ex-parte interim injunction dated 07.01.2002 Settled and decreed ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... (ix) Since the Plaintiffs. are carrying business within the jurisdiction of this Court, therefore, the Plaintiff has invoked the territorial jurisdiction under Section 134 of the Trade Marks Act, 1999. 7. Packaging used by the parties is reproduced hereunder for comparison: 8. CASE of THE DEFENANTS (a) The Defendants are carrying on their business within the state of Goa and in a few adjoining districts of Karnataka hence the present suit has been filed without the jurisdiction. (b) The Defendants have been using the mark AQUAFINE since the year 1992. Earlier the said mark AQUAFINE was being used by Aquafine Industries which was later on taken over by the Defendants. The mark was duly registered in February, 2008 and at that time No. opposition was filed by the Plaintiffs. The Plaintiffs have filed the present suit suppressing the aforementioned facts. (c) There is No. similarity in the mark AQUAFINE either visually or phonetically with the trader mark of the Plaintiffs. (d) The Defendant's label AQUAFINE is not similar to the label of the Plaintiffs. (e) At No. point of time, the Plaintiffs have objected to the said mark being used by the Defendan ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... by the Defendants in respect of M/s. Aquafine Industries disclosing the details of incorporation/inception. The details of its members/ partners/promoters are also not available on record. No. sale figures/assessment order/order forms have been placed by the Defendants in order to establish that M/s. Aquafine Industries was carrying on the business or using the trade mark AQUAFINE in relation to the packaged drinking water. It is also not clear as to when the entity was formed or whether it has been doing any business or not. M/s. Aquafine Industries is also not a party in the present suit. No. details have been disclosed by the Defendants by way of affidavit/documents or pleading. There is also No. document to show the assignment of the trade mark AQUAFINE by M/s. Aquafine Industries in the name of the Defendant No. 1 firm as alleged by the Defendants. The Defendants have also not filed even a single document of their own firm as alleged showing the user of the mark since 1992 nor they have placed any public advertisement of the Defendants which could have attributed knowledge on the part of the Plaintiff to file the present suit at an earlier point of time. The Defendants have fi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... armacy v. Satyadeo Gupta AIR 1963 SC 449 wherein trade marks 'Amritdhara' and 'Lakshmandhara' were held to be deceptively similar. (b) Corn Products Refining Company v. Shangrila Food Products Ltd. AIR 1960 SC 142 wherein trade marks 'Glucovita' and 'Gluvita' were held to be deceptively similar. (c) K.R. Chinna Krishna Chettiar v. Shri Ambal and Company, Madras and Anr. AIR 1970 SC 146 wherein the trade marks Sri Ambal and Sri Andal were held to be deceptively similar. (d) Ruston Hornsby Ltd. v. The Zamindara Engineering Company AIR 1970 SC 1649 wherein the trade marks Ruston and Rustam were held to be deceptively similar. In view of the settled law, there is No. force in the submission of the learned Counsel for the Defendants that the two trade marks are different and the same is rejected. 17. The third contention of the Defendants that the packaging used by the Defendants is not similar is also without any merit as the question raised by the Defendants have been decided by the various Courts at many occasions. Some of the cases are referred as under: (a) In Anglo-Dutch Paint, Colour and Varnish Works Pvt. Ltd. v. India Trading ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nts of their product as and for the product of the Plaintiff's on the basis of copy of the distinctive get up and colour scheme of the collapsible tubes and the cartons by them. The Defendants are not entitled to represent their goods as being the goods of the Plaintiffs. The two marks Vicco and Cosmo used by the Plaintiffs and Defendants respectively are No. doubt different and the mark Cosmo by itself is not likely to deceive but the entire get up and the colour scheme of the tube and the carton adopted by the Plaintiffs and the Defendants are identical in every detail and are likely to confuse and deceive the customer easily. The get up and the colour scheme of the Plaintiff, adopted in every detail by the Defendants for their tube and carton cannot be said to have been adopted by the Defendants unintentionally. (c) In the case of Sodastream v. Thorn cascade Co Ltd. 1982 RPC 459, the Plaintiffs were marketing the gas cylinders of grey colour under their trade mark 'Sodastream' and the Defendants having also been marketing their black colour cylinders under their own trade mark' Thorn Cascade., the proposals of the Defendants to refill the grey colour gas ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... with the identity of the manufacturing of the capsules as long as the capsules contained the same substance and had the same effect. 18. The Local Commissioner appointed in the matter has filed his report dated 10.12.2009 which shows that the label/packaging used by the Defendants are almost identical to that of the Plaintiffs. The Defendants on the other hand have not been able to assign any reason as, to how they designed the packaging and from where they got it. The conduct of the Defendants rather shows that design of packaging prepared by the Defendants has been copied by placing the packaging of the Plaintiffs. Therefore, the Plaintiffs have prime facie shown that the packaging used by the Defendants is slavish copy of the Plaintiffs' packaging. 19. The next contention of the Defendants is that the trade mark is registered. Mere registration is not enough to prove the use of the trade mark. It is the admitted position that the application for registration of the trade mark AQUAFINE was filed by the Defendants after the registration of the trade mark was already granted in favour of the Plaintiffs. The registration relied upon by the Defendants gives No. advantage t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... shall he deemed to affect the right of action against any person for passing off the goods as goods of another person or the remedies in respect thereof. Thus it is manifest that Section 28 of the Act and all other provisions come within the overriding sway of Section 27(2) of the Act. Similarly Section 33 of the Act also saves vested rights of a prior user. It lays down that nothing in the Act shall entitle a registered proprietor of a trade mark to interfere with the use of the trade mark by a prior user of the same. Thus the right created by Section 28(1) of the Act in favor of a registered proprietor of a trade mark is not an absolute right and is subservient to other provisions of the Act namely Sections 27(2), 33, etc. Neither Section 28 nor any other provision of the Act bars an action for passing off by. an anterior user of a trade mark against a registered user of the same. In other words registration of a trade mark does not provide a defense to the proceedings for passing off as under Section 27(2) of the Act a prior user of a trade mark can maintain an action for passing off against any subsequent user of an identical trade mark including a registered user thereof. Agai ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... (d) shows that the proprietor of a registered trade mark cannot file an infringement action against a proprietor of an identical or a similar trade mark. While Sections 28(3) and 30(1)(d) on the one hand deal with the rights of registered proprietors of identical trade marks and bar action of infringement against each other, Section 27(2) or the other hand deals with the passing off action. The rights of action under Section 27(2) are not affected by Section 28(3) and Section 30(1)(d). Therefore, registration of a trade mark under the Act would be irrelevant in an action for passing off. Registration of a trade mark in fact does not confer any new right on the proprietor thereof than what already existed at common law without registration of the mark. The right of goodwill reputation in a trade mark was recognised at common law even before it was subject of statutory law. Prior to codification of trade mark law there was No. provision in India for registration of a trade mark. The right in a trade mark was acquired only by use thereof. This right has not been affected by the Act and is preserved and recognised by Sections 27(2) and 33. (33) The law of 'passing off as it ha ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t equity without registration. It does however, facilitate a remedy which may he enforced and obtained thorough out the State and it established the record of facts a fleeting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is superior to priority in registration.? The above said decision referred has been upheld by the Supreme Court which held that the suit for passing off on the basis of prior user against the registered proprietor is maintainable. 20. Thus, it is a clear case of res ipsa loquitur (where the things speak for themselves). In case one examines the two marks of the parties and the packing material used by the Defendants, the conclusion is very simple that the same is stolen property and stolen property can not become rightful property in any manner. 21. In view of the abovesaid facts, No. case is made out by the Defendants for vacation of the interim order. The ex parte ad interim injunction granted on 30.11.2009 is confirmed. 22. ..... X X X X Extracts X X X X X X X X Extracts X X X X
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