TMI Blog2001 (3) TMI 1062X X X X Extracts X X X X X X X X Extracts X X X X ..... ) case set out in the plaint is as under: M/s Godfrey Phillips carries on business of manufacturing and selling various brands of tea. Since 1988 a new adopted brand SUPER CUP was advertised and marketed by them and for the said purpose they incurred large expenditure. Their expenditure has progressively increased from ₹ 27 lacs in 1988-89 to ₹ 285 lacs in the year 1995-96. Similarly the sale figures also increased in this period from ₹ 13 lacs to ₹ 1,898 lacs and the total quantity sold from 23 tons to 2184 tons. M/s Godfrey Phillips came to know in December, 1995 that defendant/appellant-M/s Girnar Food 'Girnar Food') was advertising and offering for sale by using packages bearing similar or deceptively looking trademark SUPER CUP TEA by wrongfully and dishonestly copying and adopting Godfrey Phillips's trademark. M/s Girnar' Food had attempted to derive unfair benefit from M/s Godfrey Phillips' goodwill and reputation gathered from the superior quality, goodwill and reputation pertaining to the trademark SUPER CUP. On January 11, 1996, M/s Godfrey Phillips issued a cease and desist notice to M/s Godfrey Phillips issued a cease an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e mark TEA CITY LABEL. The defendant's trademark was GIRNAR and SUPER CUP TEA was their brand name which was used Along with their registered trade mark GIRNAR and it is the use of GIRNAR and other features which distinguishes their goods from those of the plaintiff's using SUPER CUP. 5.In the replication while reiterating the contents of the plaint and filling supporting affidavits and documents, the plaintiff did not deny the disclaimer issued by them for the words SUPER CUP but pleaded that in an action for passing off, the plea of disclaimer qua registration is of no relevance. 6. The learned Single Judge recorded the following findings:- (a) That the legal position is that when the trade mark consists of words or device descriptive or laudatory of the goods prima facie not distinctive in relation to the goods to which it are applied no right of property can be said to have been acquired in the trademark so as to entitle the holder to seek restraint on others from the use of it on similar goods. The words which are descriptive of goods are not prima facie considered distinctive. It is required to be established by evidence that the mark as a result of sufficie ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he work 'Super Cup Tea' and the device of cup and saucer was added alongside the trade mark Girnar; (i) That no plausible Explanation was given from the defendant's side for adopting SUPER CUP with the device of cup and saucer; (j) That the basic features of the two marks have deceptive similarities or likely to consumers/customers and the trade; (k) That the defendant cannot be said to have acted honestly in the absence of a plausible Explanation; (l) That it is a reasonable inference that the sole object of the defendants is either actually misleading the public or taking undue advantage of the goodwill in the trade of the plaintiff; (m) That the defendant's action are calculated me lead persons to believe that the goods of the defendant are the goods of the plaintiffs; (n) A strong prima facie case has been made out by the plaintiff and the balance of convenience is also in favor of the plaintiff. Simultaneous use by Godfrey Phillips M/s Girnar Food of the mark SUPER CUP is bound to lead to confusion in the trade cause irreparable loss to the business and goodwill of the plaintiff. plaintiff was using the trade mark since 1989 and defe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ER or Cup is claimed. The word SUPER is laudatory of the Cup and not tea. SUPER CUP, Therefore, is an invented expression. Godfrey Phillips have admitted in appeal that the word SUPER CUP is laudatory of the cup and SUPER CUP is not an invented expression and if SUPER CUP was an invented expression, there is no Explanation why another application was filed for SUPER CUP on 19.4.1996. (ii) The learned Single Judge erred in holding that the plaintiffs' trade mark was SUPER CUP. That the trade mark of the plaintiff is Tea City Label with the descriptive words SUPER CUP and SUPER. (iii) The trade mark of the defendant is not SUPER CUP but GIRNAR with device of snow covered mountain and with the descriptive words SUPER CUP TEA. (iv) Neither the plaintiff nor defendant are thus entitled to claim proprietary rights in the use of the wholly descriptive and laudatory words SUPER CUP TEA . The plaintiffs' tea in fact is sold as Tea City Sup. or Tea City Super Cup and not as Super Cup per se and learned Single Judge erred in not considering this fact. (d) The findings of the learned Single Judge are flawed as the rival GIRNAR label and Tea City label were not ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y the early morning cuppa sipped in bed on awakening, prior to washing and dressing. She assumed me that Monsieur le Landgrave drank forty cups every morning. (i) It is thus submitted that the cup in English language is synonym with tea and consequently the word such as 'Cup' or 'Super Cup' refers to the tea and not to the cup. Word 'Super Cup' cannot acquire secondary meaning under any circumstances or for any amount of user and in any event the appellant is a prior user for the word 'Super' being used by it since 1979 and the device of Cup from 2.2.1979 for HILTOP RED CUP and device of Cup of GIRNAR green pouch from 23.21983. (j) The defendants/appellants used the word SUPER of the plaintiffs/respondents for tea many years prior to the date when the plaintiffs came on to the scene. Learned counsel for the appellant has relied upon the device of cup and the user of the word SUPER by it much prior to the user of the plaintiff/respondent. (k) The learned Single Judge erred in holding that no plausible Explanation was given by the defendants as to why it had adopted the device of cup saucer and adopted the SUPER CUP in July, 1995. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... was held to be descriptive of guitar strings and the word Super denoted excellence. The above judgment held that the mere joinder of the 2 descriptive words does not give the joint word the necessary element of distinctiveness to enable registration. (o) He has also relied upon McCarthy Vol.I. 1994 Edition where it is observed that SUPER BLEND and SUPER GEL were held to be descriptive marks. He has in particular relied upon at Page 11.10 of McCarthy wherein it has been held as follows:- Use of the laudatory prefix Super often will be taken by customers merely as a description of the alleged superior quality or strength of the product. For example, the composite term SUPERHOSE ! for hydraulic hose was held merely descriptive as a whole, the Board noting that addition of an exclamation mark cannot elevate an otherwise descriptive term to the status of a distinctive trademark. (p) Learned counsel for the appellant further submitted that the learned Single Judge failed to see that the burden in a passing off action is heavy in case of use of descriptive words and if a trader chooses a well-known adjective like CLASSIC then the burden of proof on such a plaintiff is hea ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rences in such a case will be sufficient to avert confusion. He has also relied upon Salaried Persons Postal Loans Ltd. Vs Postal Salaried Loans of Glasgow 1966 RPC 24 to contend that if traders chose to name themselves or their business by purely descriptive name, the user by someone else in the same line could not be complained off unless it was shown that these were being used so as to injure the plaintiff. (q) Learned counsel for the appellant further submitted that the learned Single Judge has erred in holding that in an action for passing off. disclaimer in respect of a trade mark or a part of the trade mark is wholly irrelevant or is of no consequence. He has submitted that these observations of the learned Single Judge cannot be derived from the judgment of Shree case. Apart from the disclaimer which was not disclosed in the notice or the plaint, the plea of the acquisition of secondary meaning was brought out for the first time by Mr. Ramamurthy in his Affidavit in Reply after reading Mr. Harendra Shah's Affidavit dated 3rd August, 1996. The disclaimer is of relevance inasmuch as the disclaimed matter cannot be considered to be per se distinctive and SUPER CUP ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... as given or proved nor a single trader had given evidence of deception or confusion. The defendants are not new entrants to the trade and when the marks circulated side by side in the same trade where deception is alleged it is very material to note that no one appears to have been misled. Relying on American Cyanamide Case 1975 RPC 513, the learned counsel for the appellant contended that in the present case damages would be an adequate remedy if the plaintiff succeeds. He also relied on affidavits from two traders of Poland seeking the balance supply of the order placed for Girnar Super Cup Tea. 9. The Learned Senior Counsel for the plaintiff/respondent-M/s Godfrey Phillips, Shri Ashok Desai submitted in reply as under: (a) Super Cup was adopted as a trade mark in the year 1988 Along with several other brands such as MADHUBAN, SYMPHONY, UTSAV, SAMOVAR, SWAN LAKE and SUPER CUP. The words 'Tea City' on these brands were not the distinguishing feature and the plaintiff has regarded SUPER CUP as a trade mark since word 'Tea City' is an umbrella or house mark which appears on all its tea products. The application for advertising in Trade Marks Journal dated 16.12 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... and thereafter inherently distinctive. The two type of invoices produced by the plaintiff/respondent show that the mark has an independent identity. Some of the invoices show the user of the traders trading Tea City Super Cup , Tea City Utsav or Tea City Swan Lake . The term Tea City has a neutral meaning and Super Cup is the distinguishing element forming the basis of the orders and recognition in the market. Reliance has been placed upon The Legal and General Assurance Vs Daniel Ors. 1968 RPC 253; Globe Super Parts Vs Blue Super Flame: AIR 1986 Delhi 245; Super Seals India Vs Mantri Brothers 1986 PTC 341; Charan Dass Vs Bombay Crockery Store 1984 PTC 102 Computervision Corporation Vs Computer Vision Ltd. 1975 RPC 171. Reliance has also been placed upon the leading case of Reddaway Vs Banham (1896) 13 RPC 218 to contend that where the trade mark was descriptive, the courts had looked at the evidence to see its adequacy for the acquisition of such secondary meaning. There was no suppression as disclaimer was not relevant for an infringement action according to the proviso to Section 17 of the Trade Merchandise Marks Act, 1958 and the law laid down by the Supreme Court ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... facts is concerned, it has been contended that only if relevant documents were kept back then an inference of suppression could be drawn. It was also submitted that reliance on McCain Oven Chips case by the appellant is not justified as the user in that case was for only 18 months so as to prevent the acquisition of a secondary meaning and it is further submitted that correspondence with Registrar of Trade Marks is not relevant in a suit for passing off. Learned counsel for the respondent has also contended that reliance on Cadbury's decision to seek comparison of labels by the appellant was not justified because in that case the rival products were totally different, i.e., potato wafers and chocolates and they were also different in packaging and presentation and that is one of the reasons while the injunction and that is one of the reasons while the injunction was declined. Finally learned counsel for the respondent has submitted that reliance upon Horlicks Milk Malted case other cases was not justified because in none of the cases was there any evidence of acquisition of a secondary meaning. 10. In so far as the decision s relied upon by the learned counsel for the resp ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... eliminate, the possibility of extravagant and unauthorised claims being made on the score of registration of the trade marks. (d) In so far as Charan Das Vs Bombay crockery Store 1984 PTC 102 case is concerned, it is submitted that the defendant was a stockist and selling agent of plaintiff's stove and could not have pleaded ignorance of the user of the trade mark of the plaintiff for 20 years. Colour scheme of both the cartons and get-up were also same. The design of Stove was registered as a Design and the get-up and colour scheme was registered under the Copyright Act and the plaintiffs were the Registered Proprietors of the trade marks. The aforesaid decision thus could not apply to the facts of the present case because the trademark of the appellant was not confined to Super Cup but the entire label with the word GIRNAR and snow covered mountain and its own distinctive get-up of red yellow. (e) In so far as PERFECTION Case 26 RPC 837 in concerned, it was based on a no-contest by the defendant and no damages were awarded to the plaintiff. (f) In so far as the judgment in Globe Super Parts Vs Blue Super Flame Industries AIR 1986 Delhi 245 Case is concerned, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nces in the present case. (j) In so far as J.K. Jain Others Vs Ziff-Davies Inc. 2000 PTC 244 (DB) Case is concerned, this was a case of an ex-licensee who was held estopped from challenging the ownership of the respondents or stating that the marks were descriptive. In fact no where did the Appellate Court hold that there was an acquisition of secondary meaning for the words P.C. MAGAZINES etc. Thus the aforesaid decision is clearly inapplicable to the facts of the present case. (k) In so far as the judgment in Munday Vs Carey 1905 22 10 RPC Case is concerned, it is stated that the judgment was passed after evidence was fully led and it was a rank case of dishonesty. (l) In so far as Tavener Rutledge Ld. Vs specters Ld. 1959 RPC 483 case is concerned, judgment was delivered after the entire evidence was led and the action was for infringement of trademark copyright and passing off. The rival boxes wee identical in so far as words, devices and placements were concerned. Consequently the aforesaid judgment could not apply in a case like the present one where there were considerable differences in the rival products. (m) In so far as Slazenger Sons Vs Feltham C ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ning and never became distinctive exclusively or otherwise of the preparation of the plaintiff. (d) In so far as S.P. Chengalvaraya Naidu (deceased) Vs Jagannath AIR1994SC853 regarding suppression of facts relied upon by the appellant is concerned, it is submitted by the learned counsel for the respondent that only if the relevant documents are kept back would the principle stated in the above case apply. In the present case, disclaimer was not a relevant factor in so far as a passing off action is concerned. The aforesaid decision, Therefore could have no application to the facts of the present case. 12. The two questions which are crucial to the determination of the appeal arising from the interim application are: (i) Whether the words 'Super Cup' adopted by the plaintiff/respondent are descriptive in nature and the word 'Super' is laudatory of the Cup and not of tea? and (ii) Whether the defendant has given a plausible Explanation for adoption of 'Super Cup' by it as a part of its mark. In case the answer to the first question is against the plaintiff and the words 'Super Cup' are held to be descriptive and the word 'Super to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... mbrella brand of its various tea products and the mark of the plaintiff said to be violated is 'Super-Cup'. In fact the perusal of the various brands of tea marketed under the common name 'Tea City' by the plaintiff such as Symphony, Madhuban, Swan Lake and Samovar justifies the plea of the plaintiff that Tea City is the umbrella brand and the product whose trade mark has been said to be infringed bears the relevant mark 'Super Cup' which is required to be considered by us. 17. It is not disputed by the respondent/plaintiff, that the word 'Super in isolation cannot acquire a secondary meaning. Consequently the meaning assigned in common parlance to 'Cup' assumes significance. Similarly the effect of the conjoint use of 'Super' and 'Cup' also has to be considered. In this respect it is the meaning commonly ascribed to a cup especially with reference to the product in question, i.e. tea, which has to be considered by us. By perusing the various meanings relied upon by the learned counsel for the appellant/defendant before us, the conclusion is inescapable that the word 'Cup' in its various manifestations such as 'Cupp ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Cup' the requisite distinctiveness affording protection by an injunction even against passing off. Similarly McCarthy Vol.1 (1994 Edition) at P.11 39 has listed the marks Super Blend for motor oil and Super Gel for shaving gel as descriptive marks. In our view the instance of Super Blend for motor oil held to be descriptive is relevant for the present case because while Super Blend cannot be held to be as direct a reference to the concerned product as Gel is for shaving, yet it was nevertheless held to be descriptive. By a similar analogy a cup qua tea is also clearly descriptive. The learned counsel for the respondent has strongly relied upon observations in Abercombie Fitch Co. Vs Hunting World Inc. 189 USPQ to contend that the trade marks are classified as descriptive, suggestive, arbitrary or fancy and Super Cup is at best suggestive and not descriptive. Reliance has further been placed on McCarthy on Trademarks Unfair Competition at Para 11.62 where it is observed that a mark which merely suggested some quality or ingredient of goods was suggestive in character and a suggestive mark is distinguishable from descriptive ones and is entitled to protection without any n ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he nature of the plaintiff's services without Having to exercise his imagination, are relevant and applicable, to the facts of the present case as a customer on seeing the word 'Super Cup' would immediately and readily perceive an excellent cup of tea. Learned counsel for the appellant has strongly relied upon the judgment in Reddaway co. Vs Banham (1986) 13 RPC 218 to contend that where the trademark was descriptive, the Courts have looked into the evidence to see its adequacy for the acquisition of such a secondary meaning. In our view, the above judgment is not applicable to the facts of the present case because the judgment itself starts with the words Mylord, I believe that this case turns upon a question of fact . The decision in the above case turned on a letter written by the defendant who had written that in case he puts the words 'Camel Hari Belting', he would be able to pass of his goods as that of Reddaway, the plaintiff. Furthermore the respondent-Banham was in the employment of the plaintiff-Reddaway and started his own manufacturing company. This was another factor which led to the above judgment. The Jury had also found that the effect of usin ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... be laudatory of the computer or vice-versa. In the said case apart from the fact that the defendant's issued capital was just 100 pounds as compared to the sale of the plaintiffs which was at the level of 1,20,000/- pounds sterling, the defendants were not even in production when the suit was filed. Furthermore the words 'Computer' and 'Vision' were joined to create the joint word 'Computervision ' whereas in the present case the words 'Super' and 'Cup' are separate though used in a conjoint manner. The above decision accordingly cannot apply because in the present case, we have found the words 'Super Cup' to be descriptive and laudatory of tea and hence not entitled to protection. In so far as Legal Genera Assurance Society Ltd. Vs Daniel Others 1968 RPC (9) 253 Case is concerned, it had been found proved that the plaintiffs were known as 'Legal and General' and the manner in which the defendant had adopted his mark as 'Legal General Enquiry Bureau' indicated clearly that the last two words 'Enquiry Bureau' were not prominently rendered so as to cause confusion so as to have the defendants perceived ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... #39; as a part of its mark. The burden in such a case of proving passing off is obviously heavy on the plaintiff when well-known adjectives such as 'Super' are chosen as per the law laid down in Classic Case 1915 R.P.C (C.A.) W.N. SHARPE LD Vs SOLOMON BROS LD. In the above case it was held that words such as good' best and super fing are Incapable of being adapted and cannot have a secondary matching which point only to the goods of the appellant. Applying the law laid down in the above case if the word super fing was held to be descriptive and not capable of assuming a secondary meaning, then in our view 'Super Cup' would also suffer from the lack of capacity of having a derivative meaning. In this connection, the findings in the Cellular Clothing Co. Vs Maxton Murray XVI 1899 RPC 397 are relevant wherein it has been held that it should almost be made impossible to obtain the exclusive right to use of a word or term which is in ordinary use in English language and is descriptive only. It is not in dispute that the word 'Super' is descriptive. Merely by adding 'Cup' the conjoint phrase 'Super-Cup' cannot cease to be descriptive a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... atures for tea producers as a part of their trade dress/mark. In this view of the matter it is evident that the 'Cup' whether used visually or as a 'word' clearly denotes 'tea' in the marketplace. Thus in view of the fact that the plaintiff started marketing its 'Super' Cup' tea in 1988, the user of the word 'Super' for tea by the defendant since 1979 is significant, particularly when the combination of the word 'Super Cup' has been held not to have acquired a secondary meaning. 19. We are of the view that while the Trial Court did notice that the words 'Super Cup' were prominently displayed by the defendant yet it has not given due weight to the fact that the word 'Girnar' used by the defendant/appellant was substantially larger than the words 'Super Cup' tea. In our view this itself was a significant factor, which while considering the totality of the concerned mark, would show that no consumer was likely to be misled, particularly where the marks were said to be circulating side by side. The visual depiction of the two competing cartons is also substantially different. The word 'Girnar' and a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... other visual parameters of the competing products, are in our view sufficient prima facie to constitute differences which avert and avoid confusion between the plaintiff and the defendant's products. 20. In view of the above discussion, the finding of the learned Single Judge that the plaintiff's product displays the mark 'Super Cup' prominently and 'Tea City' does not occupy a prominent position is unassailable and is required to be sustained, Consequently we do affirm the view taken by the learned Single Judge that the plaintiff's mark in question is 'Super Cup'. However, the further and consequential conclusion of the learned Single Judge that the word 'Super' does not refer to the character or quality of the tea, in our view, cannot be sustained on account of the foregoing discussion and our finding that the word 'Cup' refers to a 'Cup' of tea' any word 'Super Cup' was, Therefore, laudatory of tea. This conclusion of the learned Single Judge cannot, Therefore be sustained. 21. Accordingly, since the terms 'Super Cup' has now been held be us to be descriptive and laudatory of the goods of the p ..... X X X X Extracts X X X X X X X X Extracts X X X X
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