REPORTABLE
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDICTION
CIVIL APPEAL NOS.6314-15 OF 2001
T.V. Venugopal ` ... Appellant
Versus
Ushodaya Enterprises Ltd. & Another ... Respondents
J U D G M E N T
Dalveer Bhandari, J.
1. These appeals are directed against the judgment
delivered by a Division Bench of High Court of Andhra Pradesh
in Letter Patent Appeal Nos. 12 and 13 of 2001 on 15.06.2001.
2. Brief facts which have been given by the appellant are
recapitulated as under.
3. The appellant is the sole proprietor of a firm carrying on
business inter alia as manufacturers of and dealers in incense
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sticks (agarbathis) in the name and style of Ashika Incense
Incorporated at Bangalore.
4. The appellant started his business in the year 1988 and
adopted the mark `Ashika's Eenadu'. According to the
appellant the word `Eenadu' in Kannada language means `this
land'. In Malayalam and Tamil language it conveys the same
meaning. In Telugu language it means `today'.
5. In consonance with the above meaning the appellant
devised an artistic label comprising a rectangular carton in
bottle green background with sky-blue border and in the
centre, in an oval tricolour, the word `Eenadu' is written.
6. According to the appellant, in the year 1993 he honestly
and bona fidely adopted the trade mark `Eenadu' meaning `this
land' in Kannada. In the said label the other expressions used
are `Ashika's original' and the firm's logo printed in red against
yellow background. The other panel of the carton contains the
same description in Telugu besides the name and address of
the appellant. The panel on one side of the carton mentions
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the name, address, contents and another side contains
`Eenadu' in Devnagari, Tamil and Malayalam.
7. The appellant applied for registration of trade mark on or
about 10.02.1994 of the said label bearing application No.
619177. The appellant made an application to the Registrar of
the Trade Marks for a certificate under proviso to Section 45(1)
of the Copyright Act, 1957. The Registrar issued a certificate
on 7.3.1996. Thereafter, an application for registration for
copyright was made by the appellant on 14.3.1997.
8. The appellant's product, incense sticks (agarbathies)
were well received in the market and according to him, when
he filed the appeal before this Court, his annual business was
about rupees eleven crores per annum.
9. The respondent company, who was engaged in the
business of publishing a newspaper in Telugu entitled as
`Eenadu', served a cease and desist notice on the appellant
which was replied by the appellant on 8.3.1995. The
respondent company in the year 1999 filed a suit for
infringement of copyrights and passing-off trade mark in the
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Court of Second Additional Chief Judge, City Civil Court,
Hyderabad. The respondent company therein claimed that
they have been in the business of publishing a newspaper,
broadcasting, financing and developing a film city.
10. It was contended by the respondent company that the
use of the word `Eenadu' by the appellant amounted to
infringement of their copyright and passing-off in trade mark.
According to the respondent company, the business of the
appellant and the respondent company was different and there
is no commonality or casual connection between the two
businesses.
11. The appellant states that the word `Eenadu' is a well
known and well understood word appearing in all the South
Indian languages. It means `today' in Telugu. In Tamil,
Malayalam and Kannada it means `this land'. Therefore, no
absolute monopoly could either be claimed or vest in any
single proprietor in respect of the entire spectrum of goods
and/or services and there have been other traders and
manufacturers who have been using the word `Eenadu' to
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distinguish their merchandise from similar merchandise of
others.
12. The appellant also asserted that in Hyderabad one co-
operative bank exists in the name of `Eenadu Cooperative
Bank Ltd.' and their services are advertised as `Eenadu
Deposits', a shop also exists in Vijayawada by the name
`Eenadu Men's Wear' and a film titled `Eenadu' in Malayalam
and Telugu was produced some time over a decade back. The
appellant contended that detergent powder, playing cards, hair
oil, coffee powder, tea powder, papad etc. are being sold with
the mark `Eenadu'.
13. The Second Additional Chief Judge, City Civil Court,
Hyderabad on 24.11.1999 had granted an ex-parte ad interim
injunction restraining the appellant from using the expression
`Eenadu' and the same was confirmed on 27.12.1999.
Thereafter, the appellant, aggrieved by the said order, moved
the High Court of Andhra Pradesh at Hyderabad. The High
Court suspended the interim injunction. The High Court
permitted the appellant to dispose off their finished products
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to the tune of Rs.1 crore and also permitted the appellant to
produce goods that were in the process of manufacture to the
tune of Rs. 78 lakhs.
14. Meanwhile, the trial court on 24.7.2000 partially decreed
the suit of the respondent company. The appellant was not
injuncted from using the words `Eenadu' in the entire country
other than in the State of Andhra Pradesh.
15. The appellant, aggrieved by the order of the City Civil
Judge filed an appeal before the High Court of Andhra
Pradesh. The respondent company also filed an appeal
against the order of City Civil Judge praying that the order of
injunction to be made absolute and not be confined to the
State of Andhra Pradesh. The learned Single Judge disposed
of both the appeals by a common judgment/order dated
29.12.2000. The appeal filed by the respondent company was
dismissed and the appeal filed by the appellant was allowed.
16. Aggrieved by the said order of the learned Single Judge,
the respondent company filed Letters Patent Appeals before
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the Division Bench of the High Court. The High Court vide
impugned order allowed its appeals, decreeing the O.S. No.555
of 1999.
17. The appellant also aggrieved by the impugned judgment
filed appeals and submitted that the courts below were not
justified in granting relief which was not specifically prayed for
in the plaint. The appellant further submitted that the High
Court erred in holding that the copyrights of the respondent
company were infringed in the absence of a prayer for
infringement of copyrights. According to the appellant the
Division Bench of the High Court erred in holding that they
were passing-off the copyrights when the Copyright Act, 1957
does not provide for such a remedy.
18. The appellant also submitted that the courts below have
not properly appreciated the distinction between the existence
of a copyright and its infringement.
19. According to the appellants, the respondent company
was aware of the appellant's business since at least 27.2.1995
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and there has been a gross delay in filing of the suit and
because of inordinate delay in approaching the court, the
respondent company is not entitled to any relief.
20. The appellant further submitted that whether an action
for passing-off could be maintained and injunction granted
when a mark is used consisting of the word `Eenadu', which is
a common word. The word `Eenadu' literally means `Today' in
Telugu and `this land/our land' in Kannada, Tamil and
Malayalam.
21. The appellant contended that the businesses of the
appellant and the respondent company are entirely different
and there is no question of passing-off of the goods of the
appellant as that of the respondent company.
22. The respondent company denied all the averments of the
appellant and submitted the following propositions.
1. The essence of an action of passing-off is an attack
on or dilution or benefitting from the goodwill and
reputation of another person.
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2. If such goodwill or reputation arises out of the use
of a name in respect of a particular product and the
goodwill and reputation is restricted only to such
product and unknown outside such product then
the use of such name by another person with
respect to a totally different product would not
affect the goodwill and reputation so as to
constitute an action of passing-off
3. If, however, the goodwill and reputation is
sufficiently wide and the name is associated with
the source in a more general way rather than
restricted only to a given product then the use of
such name by another trader for even a totally
different product could amount to a passing-off.
4. The exception to the three above propositions would
be if such name is a generic name for the product
being manufactured by the rival trader in which
case it would never constitute an action of passing-
off.
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5. Again, if the said name is descriptive of the product
of the rival trader, it would then amount to passing-
off only if it is established that it has become a
household name of such a nature as to have
acquired a strong secondary meaning and it being
associated substantially with the first trader, in
which case alone it would amount to a passing-off.
The standard of proof of such a case would be
higher than the standard of proof of first three
propositions.
23. Mr. Mukul Rohtagi, learned senior counsel and Mrs.
Prathiba Singh, learned counsel arguing on behalf of the
appellant submitted that in the instant case the suit was in
fact governed by Trade & Merchandise Marks Act, 1958 and
not by the Trade Marks Act, 1999 which came into force w.e.f.
15.9.2003. It was submitted that this case is covered under
section 159(4) of the 1999 Act, which specifically provides that
any legal proceedings pending in any court at the
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commencement of this Act would be governed by the old Act.
Section 159(4) of the 1999 Act is reproduced as under:-
"159. (4) Subject to the provisions of section
100 and notwithstanding anything
contained in any other provision of this
Act, any legal proceeding pending in any
Court at the commencement of this Act
may be continued in that court as if this
Act had not been passed."
Thus, none of the concepts of well-known marks, dilution etc.
as statutorily applicable under the 1999 Act, have any
application in this case. It is submitted that the present case,
as decided by all the courts below, is a case of passing off and
not of dilution.
24. In reply to the submission of the respondent company,
learned counsel for the appellant submitted that the passing
off test is the test of likelihood of confusion. Such confusion
should be either confusion arising due to get up of products,
confusion as to sponsorship/affiliation of source or confusion
arising out of the use of identical/deceptively similar
trademarks.
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25. Learned counsel for the appellant also submitted that
dilution is a completely different concept, namely, if there is
confusion, there is no dilution. The concept of dilution steps
in when in fact the consumer is not being confused but the
plaintiff's mark is being diluted in some form or the other.
McCarthy, a well-known author on Trademarks and Unfair
Competition clearly states the same in the said publication.
Reliance is being placed at para 24.70 wherein it has been
observed that "the dilution doctrine is concerned with granting
protection to trademarks beyond that provided by the classic
`likelihood of confusion' tests."
26. According to the appellant, the principle of dilution
requires that the consumer in fact should not be confused but
a well-known mark, in the absence of confusion, is being
diluted. In the United States of America, dilution is protected
by a specific statute called the Federal Anti Dilution Act, 1996.
The discussion on dilution in McCarthy establishes the
following:-
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a) The traditional likelihood of confusion test applies to
passing off.
b) If a mark is a well-known mark, then the argument of
dilution is to be considered in the absence of
confusion.
c) Dilution is a doctrine which should be strictly applied.
d) Standard of distinctiveness required to protect a mark
from dilution is very high.
e) Not every trade mark can be protected against
dilution.
f) If a mark enjoys a regional reputation it does not
deserve protection under the law of dilution.
g) A reputation on a national scale, especially while
testing the mark for unrelated goods, is required to be
protected under dilution.
27. Learned counsel for the appellant submitted that under
the traditional law of passing off or under the law of dilution,
the only marks which have been protected across product
category are marks which can easily be termed even in the
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common parlance as well-known marks. Such marks such as
Bata, Volvo, Benz, Mahindra & Mahindra and Tata etc.
28. It was submitted that the case pleaded by the respondent
company (plaintiff) is one of confusion and passing off and not
of dilution. The standard for establishing dilution are
completely different. There is neither a pleading in the present
case alleging dilution, nor any evidence in support of dilution.
The standards for recognizing dilution have not been
confirmed by any court of law in India and while deciding the
present case in the courts below the threshold of dilution was
never applied.
29. In India, the law on dilution has developed through case
law going back to the Benz's case decided by the Delhi High
Court in Daimler Benz Aktiegesellschaft and another v.
Hybo Hindustan AIR 1994 DELHI 239. However, `Eenadu'
cannot claim the distinctiveness or the reputation which is
enjoyed by a mark like Benz or Harrods. `Eenadu' is a very
ordinary word commonly used in Telugu language and to vest
a monopoly in favour of the respondent company (plaintiff) for
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such a common word on the ground of dilution would result in
conferring an undue monopoly to a generic/descriptive word.
There are several marks which are used in the ordinary
language for different types of products, such as :-
1. Time/Times Time Magazine, Time Education,
Times London, Times of India,
Navbharat Times, Hindustan Times,
Times Now
2. Today India Today, Punjab Today, Today's
Tea, Today's Contraceptive
3. Marvel Marvel Comics, Marvel Detergent
4. Sun, Surya, Oil, Lights & Bulbs, Tobacco
Suraj
5. Metro Metro Shoes, Delhi Metro, Metro
Walk Malls
6. Maruti Oil, Cars
7. Taj Hotels (Taj Hotels), Tea (Wah! Taj)
8. Citi Citi Bank, City Mall
9. Mustang Motel, Cars, Trailers
30. The learned counsel for the appellant submitted that
`Eenadu' is a common word used in Telugu language. This has
been fully established by the evidence on record.
31. He referred to the deposition of Jagannadharao, PW1, Law
Officer of the plaintiff, who has stated that the literal meaning of
the word `Eenadu' is `Today'.
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32. According to the deposition of PW2, N. Swami, Artist, the
meaning of the word `Eenadu' is `Today'.
33. Learned counsel for the appellant referred to deposition
of PW5, R. Kumaraswamy, Advocate who has stated that
literal meaning of the word `Eenadu' is `Today'.
34. The learned counsel referred to the deposition of PW6,
T.V. Venugopal, the appellant herein. He has stated that the
word `Eenadu' was specifically given for the purpose of `daily'
prayer.
35. The learned counsel for the appellant submitted that the
word `Eenadu' literally means "Today" or "This Day" and hence
is not an invented word but is a generic/descriptive word used
in common parlance. This is further proved by the fact that
the word `Eenadu' has been used by several parties for various
products which include :-
- `Eenadu' Turmeric powder - even the script is the
same
- `Eenadu' Cooperative Bank
- `Eenadu' Match Sticks - even the script is the same
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- `Eenadu' Playing Cards
- `Eenadu' Ayurvedic Bath Soaps
- `Eenadu' Dresses
- `Eenadu' Chilly Powder - even the script is the same
- `Eenadu' Washing Powder
- `Eenadu' Coffee - even the script is the same
- `Eenadu' Telugu Feature Film
- `Eenadu' Tobacco - same script
- `Eenadu' Hotel
- `Eenadu' Marble Estate
- `Eenadu' Feature Film (The said film by UTV
Production uses the word `Eenadu' in the same script
as used by the respondent - (This particular film has,
in fact, been featured for a review in the respondent's
own newspaper dated 15.8.09 & 27.8.09 and copies of
the same are attached. The music launch of this film
was also featured in the newspaper of the respondents
dt. 14.9.09. This film has at least 2 songs with the
word `Eenadu'. One of the songs in the film called
"Eenadu Eesamaram" which means "This Day, This
War".
- A famous Kannada song - Eenadu Kannada, Eeneeru
Kannada (This day is Kannada, This water is
Kannada).
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36. The appellant submitted that it is clear that `Eenadu' is a
term which is used in the ordinary Telugu language and in
Kannada and the same is acknowledged by the respondent
company itself as is evident from the wide publicity given to
the film in the respondent company's newspaper.
37. The appellant further submitted that the evidence relied
upon by the respondent company in order to allege that
`Eenadu' is a reputed and distinctive mark, is a compilation of
documents handed over before this court during the course of
arguments on 23.3.10. In order to show that `Eenadu' is a
household name, an extract from Wikipedia printed on
13.4.09 was submitted by the respondent company before this
court. In fact, all the other internet print-outs annexed by the
respondent company are based on Wikipedia itself. It is the
submission of the appellant that it is now an established
position, internationally in law that Wikipedia does not have
any evidentiary value in the court proceedings. The same has
been held by the US Court of Federal Claims in Taylor Mary
Campbell v. Secretary of Health and Human Services 69
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Fed. Cl. 775 (2006) and by the US Court of Appeals in
Lamilem Badasa v. Michael B. Mukasey 540 F.3d 909. As
against the Wikipedia evidence, the actual evidence on record
reveals the following:-
a) `Eenadu' has a specific meaning in Telugu language
and also has a meaning in Kannada language and
possibly even in Malayalam;
b) `Eenadu' has been used by several parties in the same
script without any objection whatsoever from the
respondent company (barring 2 ex-parte injunctions).
c) `Eenadu' means "Today" or "This Day".
d) The respondent company itself has acquiesced to 3rd
party usage of the mark (including `Eenadu' feature
film by UTV).
e) The respondent company's submission that this court
ought to ignore the concrete documentary evidence
and testimony and instead rely upon extracts from the
Wikipedia to prove that `Eenadu' is a household name,
is not liable to be entertained.
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38. Thus, `Eenadu' does not enjoy the distinctiveness which
the respondent company claim and in any event such
distinctiveness does not span across all classes of goods and
services.
39. The respondent company has argued before this court
that the descriptive nature of the mark has to be determined
with respect to the appellant's goods. This approach
according to the appellant is completely erroneous. While
determining the nature of the mark - for the purpose of
registration or for the purpose of passing-off/infringement, the
first inquiry which the court ought to carry out is to determine
whether the applicant's/plaintiff's mark is invented,
arbitrary/suggestive, descriptive or generic. The nature of the
mark is always determined with respect to the
plaintiff's/applicant's goods. For example, if a person applies
for a trademark called "Extra Strong", the Registrar of trade
mark has to examine whether the mark is descriptive or
laudatory for the goods for which it is applied, i.e., the
applicant's goods. The inquiry does not depend on the person
21
opposing the use of the said mark. Thus, to hold that the
nature of the mark has to be determined by the nature of the
appellant's goods is stating the proposition in the reverse.
40. In the present case, the plaintiff/respondent company
was conscious that `Eenadu' is a descriptive mark and it is for
this reason that in the plaint, the plaintiff (respondent)
company has pleaded a secondary meaning with respect to
their mark `Eenadu'. If the plaintiff's case is based on
`Eenadu' being a distinctive mark, a suggestive mark and a
well known mark, then there is no question of pleading
secondary meaning to its mark. It is only with respect to
descriptive marks that secondary meaning needs to be pleaded
and considered by this court.
41. The argument of the respondent company is that
`Eenadu' is not a generic or descriptive mark but a suggestive
mark. The difference between categorization as generic,
descriptive or suggestive is a follows:-
* A generic mark can never be a trademark
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* A descriptive mark can become a trademark if it
acquires secondary meaning
* A suggestive mark is inherently distinctive
42. The line between suggestive marks and descriptive
marks is very thin. Various commentaries including
McCarthy have laid down the imagination test to determine
as to whether a mark is descriptive or suggestive. When
this test is applied to the mark `Eenadu' for a newspaper, it
is clear that the same is descriptive in nature inasmuch as
it means `Today', i.e. news for today. It does not require
any imagination at all. Thus in the imagination test, if the
mark describes a characteristic of the product - in the case
of `Eenadu' the newspaper, it refers to the characteristic of
the newspaper, i.e., today's news. `Eenadu' would therefore,
be an expression which immediately describes a newspaper.
In fact with respect to its Agarbathies, `Eenadu' would be a
completely arbitrary term. However, with respect to
newspapers, this is a descriptive term.
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43. The appellant submitted that the entire object of
including the 4th Schedule in the Trademark Rules is that
marks are to be registered for the goods and services for the
purpose for which they are used. Non-use of a mark entails
rectification under section 46 of the 1958 Act. Thus, the
entire object of trademarks is to confer monopoly of a
particular individual or entity with respect to a mark for a
particular category of goods or category of services. It is
only in exceptional cases that a mark is protected across all
product categories. If that was not the position, then every
trademark owner whose mark enjoys a reputation in
whatever limited field and for specific goods/services, would
be able to claim monopoly for the mark with respect to all
42 classes of goods and services. This could never have
been the intention of the Legislature. Even while
establishing the criteria for the marks which are well-
known, the legislature has thought it fit to deal with the
reputation of such well-known marks by taking into
consideration factors like section of the public, relevant
geographical area etc. Thus, every trade mark is not
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entitled to protection across all categories as every trade
mark does not automatically become a "well-known mark".
If this was not the case, then there would come a time when
most words would get monopolized across products and
services which would not conform to the intention behind
the Law of Trade Marks.
44. Every mark with a reputation cannot be determined as
a well-known mark as reputation by itself does not escalate
the mark into the position of a well-known mark. The
reputation of a mark can be restricted to a particular
territory, to a particular category of goods or services, to a
particular category of population, to a particular linguistic
section of public etc.
45. The appellant submitted that in most of the cases
where absolute protection has been granted, extending it
beyond the goods and services in which the plaintiff deals
with, the mark or name has been an extremely distinctive
mark. They have either invented the mark or marks which
are derived from surnames or marks are used across
25
categories of products. The defendant's products may be
confused from the other products originating from the
plaintiff, but the plaintiff has to be dealing with more than
one products or services with respect to the said
mark/name.
46. In the present case, the evidence on record has
established that the plaintiff/respondent company has only
dealt with mark `Eenadu' for newspapers. The television
channel is known as ETV where the word `Eenadu' is not
used for the same. The evidence itself establishes the same.
Further it is pertinent to note that:
7 There is not a single document showing that the
respondent company is referred to as `Eenadu'
Margdarshi's goods;
7 Priya is also a mark of pickles which is
manufactured by the respondent company;
7 `Eenadu' pickles (if any) are not available in the
local market;
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7 ETV is the shortcut name for the `Eenadu'
Television;
7 The respondent company does not manufacture
incense sticks;
7 That `Eenadu' has been used to convey the literal
meaning as "Today".
47. The appellant submitted that in the background of this
evidence emanating from the plaintiff's main witness, it is
evident that `Eenadu' is not a distinctive mark. It is in fact a
descriptive mark. At best, a secondary meaning may accrue in
its favour with respect to only newspapers and nothing more.
Descriptive words which have been used only for one category
of goods cannot claim across the board protection. `Eenadu' is
not like Volvo or Kirloskar or Harrods or Benz.
48. `Eenadu' would fall in the category of marks like Shell,
Safeguard, Flexgrip, Imperial, Skyline and Financial Times,
Heat Piller, One Day Drycleaners, Instea, Kesh Nikhar, Whipp
Toppings. All these words have not been granted protection
across the board.
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49. The respondent company has argued before this court
that the appellant's adoption is dishonest in view of the similar
scripts being used by the defendant. The script being used by
the appellant is a standard block script in the Telugu
language. The perusal of all the third party use of the mark
`Eenadu' would reveal that almost every party uses the same
script. Thus, there is no dishonesty in adoption of the same
as the script is commonly used in Telugu language. Even the
feature film which has been released in 2009 has used the
same script. There is no dishonesty in the adoption of the
mark `Eenadu' or the script `Eenadu'. The appellant went
through the process of applying for a Search as prescribed
under the Copyright Act. The appellant obtained a No-
Objection in accordance with Section 45 of the Copyright Act
and Rule 24(3) of the Trade Mark Rules, 1959.
50. The mark `Eenadu' meaning DAILY or TODAY, the
appellant genuinely adopted the same to signify Daily use of
Agarbathi, which is in fact used on a daily basis by persons
28
performing puja. Thus, the appellant does have a valid and
acceptable explanation for the adoption. It is submitted that
for the appellant's goods, it is an arbitrary mark.
51. The appellant submitted that in order to establish the
appellant's bona fides, the appellant is ready and willing to
change the script and to prefix the word "Ashika" in order to
distinguish itself from the respondent company and to ensure
that there is no confusion as to source.
52. The appellant submitted that as long as the product is
distinguishable from the product of the respondent company,
the appellant prays that the injunction ought to be modified
and the appellant ought to be permitting to adopt the carton
which it has proposed to use before this court. It is incorrect
that the trade made application for registration of the trade
mark was subsequent to the issuance of the notice. The
appellant submitted that the respondent company has not
been able to establish bona fide conduct. This is established
from the following facts:-
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a. According to the appellant, the mark `Eenadu' has
been permitted by the respondent company to be in
common use because the respondent company did
not take action against all those who had been
using the mark `Eenadu'.
b. According to the respondent company, the appellant
stopped using the mark after caution notice was
sent to the appellant in 1995 and then commenced
using it in 1999. In 1995 the respondent company
gave a notice restricting the grievance to Copyright.
The grievance was restricted to a Disclaimer. After
1995 when the sales of the appellant began to
increase from sales of two crores to the sales of
approximately ten crores, then the suit was filed by
the respondent company on a false plea in the
plaint and obtained an ex-parte injunction.
53. The appellant submitted that the case law is clear that
confusion as to source applies only when the source is not
clearly stated. The appellant in the impugned carton has used
30
the word Agarbathi along with the word `Eenadu'. However,
Ashika's Eenadu completely distinguishes itself from the
respondent company. A carton being proposed to be adopted
by the appellant which would completely eliminate any remote
chance of any confusion.
54. Mr. R.A. Sundaram, learned Senior Advocate argued on
behalf of the respondent company. He submitted that
`Eenadu' is not a common Telugu word meaning "Today" and
is not a common word. He submitted that `Eenadu' has
acquired secondary meaning and referred to and relied on the
trial court findings in that respect. He submitted that the
appellant failed to note that `Eenadu' Group is inter alia a
publisher of a newspaper which is the second largest regional
daily circulating in India and is the largest in Andhra Pradesh.
55. Mr. Sundaram submitted that the appellant is a
Bangalore based company which started manufacturing its
products in Bangalore under the name "Ashika" and had
started selling its products in Andhra Pradesh in 1995. The
appellant started using the name `Eenadu' for its Agarbathies
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and used same artistic script, font and method of writing the
name cannot be a co-incidence. The appellant is a Karnataka
company after adoption of the name `Eenadu' accounted for
90% of the sale of their product Agarbathies. The appellant
was restrained from using the word `Eenadu' in the State of
Andhra Pradesh, their sales have dropped by 10 times
although they continued to sell the product under the name
"Ashika". The appellant glossed over the fact of being
manufacturer of Agarbathies as is inexplicable as to why they
had applied for registration of name `Eenadu' not just for
Agarbathies but inasmuch as 34 classes of the Trade Marks
Act for goods which they do not even produce or do not have
any intention to produce which would itself show the intention
that they can trade on the respondent company's household
name and goodwill and reputation. According to the
respondent company, all these facts clearly show that
adoption of name `Eenadu' was by no means innocent but was
intended to capitalize and derive benefit on the goodwill and
reputation of the respondent company which is impressible.
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56. Mr. Sundaram submitted the basic underlying fallacy is
that since after all the readers of a newspaper are literate and,
therefore, would be able to make out that the Agarbathies are
by the name "Ashika Eenadu" or that it comes from a different
source, overlooks completely that it is the purchaser of the
Agarbathies and not the purchaser of newspaper that we are
concerned with. The goodwill sought to be cashed in is the
name `Eenadu" by the appellant who is selling Agarbathies
and the person so deceived is not the purchaser of the
newspaper but the purchaser of the Agarbathies. To say that
all the purchasers of Agarbathies are illiterate people is a basic
fallacy since the purchasers of Agarbathies will transcend all
classes of people in the society. The entire submission,
therefore, overlooks the basic fact that the purchaser of the
Agarbathies would be deceived into believing that the said
Agarbathies also come from the House of `Eenadu' and thereby
they would be deceived as to the source of the product, and
this cashing in on the goodwill and reputation of the
respondent company is impressible in law.
33
57. The respondent company's reply to the appellant's
contention that `Eenadu' is not a household name since it only
deals with newspaper is complete fallacy because the group is
known as "Eenadu Margadarshi Group" and the meaning of
`Eenadu' in various publications is stated to be the respondent
company's group. Furthermore, it also overlooked that in
actual fact there are various products which are also being
produced and sold by the respondent company under the
business name of `Eenadu'. It is also relevant to mention that
the `Eenadu' TV Channel (also known as ETV) is one of the
most popular channels and, therefore, the word `Eenadu' has
come to be completely associated with the respondent
company group and in fact is a household name. He has
referred to the findings of the Trial Court, the High Court and
that of the learned Single Judge and submitted that such
findings are not unreasonable so as to require interference
under section 136 of the Constitution.
58. Mr. Sundaram submitted that `Eenadu' is not a generic
name, but in fact would be a `fancy' name outside the State of
34
Andhra Pradesh and within the State of Andhra Pradesh it is a
name which is not in common use, and therefore, would be a
`fancy' name. In any event, `Eenadu' is not generic in the
Trade Mark's sense of the word since it is not the use of the
product name itself. What is meant by generic for Trade Mark
law is that when you call a cake a cake or a shoe a shoe.
When a shoe is called a cake or a cake is called a shoe, it is
neither descriptive nor generic. On the contrary, it is `fancy'.
The name `Eenadu', therefore, for any of the products of the
respondent company would not be a generic name at all. The
appellant overlooks that his complaint as to name being
generic can only arise qua product using generic or descriptive
name. It is nobody's case that `Eenadu' is descriptive of
Agarbathi.
59. All the cases, i.e., Newseek, Ovenchips, MaltedMilk,
Shredded Wheat etc. were cases where the appellant wanted
exclusivity of the name which was descriptive of their product
and the respondent company who was manufacturing a
similar product objected to the exclusivity on the ground that
35
the name was descriptive of the product in question. In this
case, for the application of the judgments the following must
arise:-
- are the appellant and the respondent company dealing
in the name product? This is not so.
- is the word `Eenadu' descriptive of the respondent
company's product (i.e. Agarbathies)? This is no so.
60. Mr. Sundaram while dealing with the scope of passing off
action submitted that the law of passing off can be
summarized in one short general proposition - no man may
pass off his goods as those of another. More specifically, it
may be expressed in terms of the elements which the appellant
in such an action has to prove in order to succeed. These are
there in number.
a) He must establish a goodwill or reputation attached
to the goods or services which he supplies in the
mind of the purchasing public by association with
the identifying `get-up' (whether it consists simply of
a brand name or a trade description, or the
36
individual features of labeling or packaging) under
which his particular goods or services are offered to
the public, such that the get-up is recognized by the
public as distinctive specifically to the appellant's
goods or services.
b) He must demonstrate a misrepresentation by the
respondent company to the public (whether or not
intentional) leading or likely to lead the public to
belief that the goods or services offered by him are
the goods or services of the appellant and the
source of such goods or services is the appellant
even if the appellant does not make such products.
c) He must demonstrate that he suffers or, in a quia
timet action, that he is likely to suffer damage by
reason of the erroneous belief engendered by the
respondent company's misrepresentation that the
source of the respondent company's goods or
service is the same as the source of those offered by
the appellant.
37
d) Alternatively, the appellant must show that the
description or confusion in the public is that the
source of the respondent company's product that
they are buying is the appellant.
61. Learned counsel placed reliance on the following passage
from a well-known case Reddaway & Co. and Another v.
Banham & Co. and Another 1895-99 All ER 133 which
reads as under:-
"The name "Glenfield" had become associated
with the starch manufactured by the plaintiff,
and the defendant, although he established
his manufactory at Glenfield, was restrained
from using that word in connection with his
goods in such a way as to deceive. Where the
name of a place precedes the name of an
article sold, it primb facie means that this is
its place of production or manufacture. It is
descriptive, as it strikes me, in just the same
sense as "camel hair" is descriptive of the
material of which the plaintiff's belting is
made. Lord Westbury pointed out that the
term "Glenfield" had acquired in the trade a
secondary signification different from its
38
primary one, that in connection with the
word starch it had come to mean starch
which was the manufacture of the plaintiff. In
Massam v. Thorley's Cattle Food Co. just
referred to, James L.J. said:
"The defendant was actually
manufacturing starch at
Glenfield, having gone thither
for the purpose of enabling him
to say that he was
manufacturing it at Glenfield.
The House of Lords said the
mere fact that he was really
carrying on his manufacture at
Glenfield, and was not
therefore telling a lie, did not
exempt him from the
consequence of the fact that
his proceedings were intended
and calculated to produce on
the mind of the purchasers the
belief that his article was the
article of the plaintiffs."
62. The House of Lords was justified in observing that fallacy
lies in overlooking the fact that a word may acquire in a trade
a secondary signification differing from its primary one, and
that if it is used to persons in the trade who will understand it,
and be known and intended to understand it in its secondary
39
sense, it will none the less be a falsehood that in its primary
sense it may be true. A man who uses language which will
convey to persons reading or hearing it a particular idea which
is false, and who knows and intends this to be the case, is
surely not to be absolved from a charge of falsehood because
in another sense which will not be conveyed and is not
intended to be conveyed it is true. In the present case the jury
have found that there was ample evidence to justify it, that the
words "camel hair" had in the trade acquired a secondary
signification in connection with belting, that they did not
convey to persons dealing in belting the idea that it was made
of camel's hair, but that it was belting manufactured by the
plaintiffs. They have found that the effect of using the words in
the manner in which they were used by the defendants would
be to lead purchasers to believe that they were obtaining goods
manufactured by the plaintiffs, and thus both to deceive them
and to injure the plaintiffs. On authority as well as on
principle, the court granted relief to the plaintiffs.
40
63. Mr. Sundaram also placed reliance on Reckitt & Colman
Products Ltd. v. Borden Inc. and others - 1990 (1) ALL ER 873
where the court has dealt with general law applicable to passing
off of action. In that case the court observed thus:-
"The basic underlying principle of such an
action was stated in 1842 by Lord
Langdale M.R. in Perry v. Truefitt (1842) 6
Beav. 66 , 73 to be: "A man is not to sell his
own goods under the pretence that they are
the goods of another man......". Accordingly, a
misrepresentation achieving such a result is
actionable because it constitutes an invasion
of proprietary rights vested in the plaintiff.
However, it is a prerequisite of any successful
passing off action that the plaintiff's goods
have acquired a reputation in the market and
are known by some distinguishing feature. It is
also a prerequisite that the misrepresentation
has deceived or is likely to deceive and that the
plaintiff is likely to suffer damage by such
deception. Mere confusion which does not lead
to a sale is not sufficient. Thus, if a customer
asks for a tin of black shoe polish without
specifying any brand and is offered the product
of A which he mistakenly believes to be that of
B, he may be confused as to what he has got
but he has not been deceived into getting it.
Misrepresentation has played no part in his
purchase".
41
64. He also relied on the judgment of this court in Ruston &
Hornsby Ltd. v. The Zamindara Engineering Co. - 1969 (2)
SCC 727 wherein the court observed as under:-
"The distinction between an infringement action and
a passing off action is important. Apart from the
question as to the nature of trade mark the issue in
an infringement action is quite different from the
issue in a passing off action. In a passing off action
the issue is as follows :
"Is the defendant selling goods so marked
as to be designed or calculated to lead
purchasers to believe that they are the
plaintiff's goods?"
But in an infringement action the issue is as
follows:
"Is the defendant using a mark which is
the same as or which is a colourable
imitation of the plaintiff's registered trade
mark ?"
65. He also relied on Laxmikant V. Patel v. Chetanbhai
Shah and Another - 2002 (3) SCC 65. This court observed
as under:-
"A person may sell his goods or deliver his
services such as in case of a profession
under a trading name or style. With the
42
lapse of time such business or services
associated with a person acquire a
reputation or goodwill which becomes a
property which is protected by courts. A
competitor initiating sale of goods or
services in the same name or by imitating
that name results in injury to the business
of one who has the property in that name.
The law does not permit any one to carry on
his business in such a way as would
persuade the customers or clients in
believing that he goods or services belonging
to someone else are his or are associated
therewith. It does not matter whether the
latter person does so fraudulently or
otherwise. The reasons are two. Firstly,
honesty and fair play are, and ought to be,
the basic policies in the world of business.
Secondly, when a person adopts or intends
to adopt a name in connection with his
business or services which already belongs
to someone else it results in confusion and
has propensity of diverting the customers
and clients of someone else to himself and
thereby resulting in injury."
66. Mr. Sundaram also placed reliance on a judgment of this
court in Satyam Infoway Ltd. v. Sifynet Solutions (P)
Limited - 2004 (6) SCC 145. The relevant passage is
reproduced as under:-
"The next question is would the principles of
trade mark law and in particular those
43
relating to passing off apply? An action for
passing off, as the phrase "passing off" itself
suggests, is to restrain the defendant from
passing off its goods or services to the
public as that of the plaintiff's. It is an
action not only to preserve the reputation of
the plaintiff but also to safeguard the
public. The defendant must have sold its
goods or offered its services in a manner
which has deceived or would be likely to
deceive the public into thinking that the
defendant's goods or services are the
plaintiff's. The action is normally available
to the owner of a distinctive trademark and
the person who, if the word or name is an
invented one, invents and uses it. If two
trade rivals claim to have individually
invented the same mark, then the trader
who is able to establish prior user will
succeed. The question is, as has been aptly
put, who gets these first? It is not essential
for the plaintiff to prove long user to
establish reputation in a passing off action.
It would depend upon the volume of sales
and extent of advertisement."
67. Mr. Sundaram also relied on Ramdev Food Products (P)
Limited v. Arvindbhai Rambhai Patel and Others - 2006 (8)
SCC 726 as under:-
"A trade mark is the property of the manufacturer.
The purpose of a trade mark is to establish a
connection between the goods and the source
thereof which would suggest the quality of goods. If
the trade mark is registered, indisputably the user
44
thereof by a person who is not otherwise authorised
to do so would constitute infringement. Section 21
of the 1958 Act provides that where an application
for registration is filed, the same can be opposed.
Ordinarily under the law and, as noticed
hereinbefore, there can only be one mark, one
source or one proprietor. Ordinarily again right to
user of a trade mark cannot have two origins. The
first respondent herein is a rival trader of the
appellant-Company. It did not in law have any right
to use the said trade mark, save and except by
reason of the terms contained in the MOU or
continuous user. It is well-settled that when
defences in regard to right of user are set up, the
onus would be on the person who has taken the
said plea. It is equally well-settled that a person
cannot use a mark which would be deceptively
similar to that of the registered trade mark.
Registration of trade marks is envisaged to remove
any confusion in the minds of the consumers. If,
thus, goods are sold which are produced from two
sources, the same may lead to confusion in the
minds of the consumers. In a given situation, it may
also amount to fraud on the public. A proprietor of a
registered trade mark indisputably has a statutory
right thereto. In the event of such use by any person
other than the person in whose name the trade
mark is registered, he will have a statutory remedy
in terms of Section 21 of the 1958 Act. Ordinarily,
therefore, two people are not entitled to the same
trade mark, unless there exists an express licence
in that behalf."
68. He also relied on Harrods Limited v. R. Harrod
Limited - (1924) RPC 74 where the court observed as under:-
45
".........it seems to me to be quite clear that
where there is fraud the Court can interfere
and there is fraud where you find a particular
name taken by a defendant, a well known
fancy name, which could not be taken for a
legitimate purpose, and a name which is
taken, to use Lord Justice Buckley's words, for
the purpose of posing as being some person
whom you are not.
In Aerators Limited v. Tollitt (L.R. (1902) 2 Ch.,
p.319), Mr.Justice Farwell, said this, that you
can interfere where the use of the particular
name is calculated to deceive, even though it
does not point to intentional fraud, and it is a
question of fact in each case as to whether or
not the names were so alike as to induce the
belief that the companies are identical. So
that, where there is fraud, the court can
interfere, and where the names are so alike as
to be calculated to deceive it can interfere.
Further it may draw the inference that there is
fraud where there is an attempt to pose as
being a particular business firm when you are
not, and are not entitled to use their name."
69. Mr. Sundaram also placed reliance on Harrods Limited
v. Harrodian School Limited (1996) RPC 697. In this case
the court held that the manifold services and activities for
which the plaintiffs are known, and the wide field of
recognition of the name "Harrods", would lead to an
assumption that, the plaintiffs are in some way are connected,
46
associated or mixed-up with the school which bears their
name in its adjectival form. The court also observed that
Erosion of distinctiveness of a brand name had been
recognized as a form of damage to the goodwill of a business
with which the name is connected in a number of cases, but
unless care was taken this could mark an unacceptable
extension of the law of passing off.
70. Learned counsel for the respondent company also relied
on a judgment of this Court in the case of Midas Hygiene
Industries (P) Ltd. and another v. Sudhir Bhatia and
others (2004) 3 SCC 90. The court observed that the law on
the subject is well settled. In cases of infringement either of
trade mark or of copyright, normally an injunction must
follow. Mere delay in bringing action is not sufficient to defeat
grant of injunction in such cases. The grant of injunction also
becomes necessary if it prima facie appears that the adoption
of the mark was itself dishonest.
71. Mr. Sundaram also relied on a judgment of the Delhi
High Court in the case of Madhubhan Holiday Inn v.
47
Holiday Inn Inc. 100 (2002) DLT 306 (DB) (on which one of
us, Dalveer Bhandari, J. was the author). The Division Bench
of the High Court observed as under:
"... the adoption of the words "Holiday
Inn" by the appellants is ex facie fraudulent
and mala fide from the very inception. The
words "Holiday Inn" have been adopted by the
appellant to ride on the global reputation of
the respondent. The appellant was actuated
by bad faith and dishonest motive. In the facts
and circumstances, the learned Single Judge
was fully justified in granting the injunction
and decreeing the suits in order to protect the
commercial goodwill and to ensure that the
global business reputation of the respondent is
not exploited by the appellants in a clandestine
manner."
72. Learned counsel for the respondent company also
submitted that where a trade/business name has acquired a
reputation such as it has become a household name. In such
a case anyone who uses the identical name albeit in a different
field of business altogether would be guilty of passing off by
cashing in on the reputation and goodwill of the business of
the plaintiff and would be restrained.
48
73. Mr. Sundaram also placed reliance on the judgment of
Harrodian School Limited (supra). The court observed as
under:
"The absence of any common field of activity:
This is of particular significance in the present
case. The judge correctly directed himself as
to the law; he cannot be faulted in the way in
which he applied it. It is not merely that the
plaintiffs have never run a school and have no
established reputation for doing so; or even
that the nature of the parties' respective
businesses are as dissimilar as can well be
imagined. It is rather that the commercial
reputation for excellence as a retailer which
the plaintiffs enjoy would be regarded by the
public as having no bearing upon their ability
to run a school. Customers of the plaintiffs
would be surprised to learn that Harrods had
ventured into the commercial theatre; they
would, I think, be incredulous if they were told
that Harrods had opened a preparatory
school."
74. The respondent company also placed reliance on a
judgment of this Court in the case of Mahendra & Mahendra
Paper Mills Limited v. Mahindra & Mahindra Limited
(2002) 2 SCC 147 wherein this Court observed as under:
"Judging the case in hand on touchstone of
the principles laid down in the aforementioned
decided cases, it is clear that the plaintiff has
49
been using the word "Mahindra" and
"Mahindra & Mahindra" in its
companies/business concerns for a long span
of time extending over five decades. The name
has acquired a distinctiveness and a
secondary meaning in the business or trade
circles. People have come to associate the
name 'Mahindra' with a certain standard of
goods and services. Any attempt by another
person to use the name in business and trade
circles is likely to and in probability will create
an impression of a connection with the
plaintiffs' group of companies. Such user may
also effect the plaintiff prejudicially in its
business and trading activities. Undoubtedly,
the question whether the plaintiffs' claim of
'passing-off action' against the defendant will
be accepted or not has to be decided by the
Court after evidence is led in the suit. Even so
far the limited purpose of considering the
prayer for interlocutory injunction which is
intended for maintenance of status quo, the
trial Court rightly held that the plaintiff has
established a prima facie case and irreparable
prejudice in its favour which calls for passing
an order of interim injunction restraining the
defendant-company which is yet to commence
its business from utilising the name of
'Mahindra' or 'Mahindra & Mahindra' for the
purpose of its trade and business. Therefore,
the Division Bench of the High Court cannot
be faulted for confirming the order of
injunction passed by the learned single
Judge."
75. Mr. Sundaram also relied on a judgment of this court in
the case of Bata India Limited v. Pyare Lal & Company,
50
Meerut City & Ors. AIR 1985 All 242] the Allahabad High
Court observed that considering the plea of passing-off or
enabling others to pass-off mattresses, sofa cushions and
other articles associating them with the name of "Bata" in any
manner or form held that:
"The name `Bata' was well known in the
market and the user of such a name is likely to
cause not only deception in the mind of an
ordinary customer but may also cause injury
to the plaintiff Company. The fact that the
plaintiff was not producing form was not
enough to hold that there could be no passing-
off action in respect of the user of the name
`Bata' to the products marketed by the
defendants. The use of the name or mark
`Bata' by the defendants is indicative of their
intent."
76. Learned counsel for the respondent company also relied
on a judgment of Delhi High Court in the case of Diamler
Benz Aktiegesellschaft (supra) wherein the Court observed
as under:
"... ... ...The boxes in which the defendant sells
its undergarments for men, and the
representation thereon is of a man with his
legs separated and hands joined together
above his shoulder, all within a circle, indicate,
the strong suggestion of the link between the
three pointed star of "Mercedes Benz" car and
51
the undergarment's sold by the defendant. In
my view, this cannot be considered to be a
"honest concurrent user" by the defendant of
the above said symbol."
The Court also observed in the said case that:
"There are marks which are different from
other marks. There are names which are
different from other names. There are names
and marks which have become household
words. "Benz" as name of a Car would be
known to every family that has ever used a
quality car. The name "Benz" as applied to a
car, has a unique place in the world. There is
hardly one who is conscious of existence of the
cars/automobiles, who would not recognize
the name "Benz" used in connection with cars.
Nobody can plead in India, where "Mercedes
Benz" cars are seen on roads, where
"Mercedes" have collaborated with Tatas,
where there are Mercedes Benz Tata trucks
have been on roads in very large number,
(known as Mercedes Benz Trucks, so long as
the collaboration was there), who can plead
that he is unaware of the word "Benz" as used
with reference to car or trucks.
In my view, the Trade Mark law is not intended
to protect a person who deliberately sets out to
take the benefit of somebody else's reputation
with reference to goods, especially so when the
reputation extends world wide. By no stretch
of imagination can it be said that use for any
length of time of the name "Benz" should be
not objected to."
52
The Court further observed as under:
"However, if despite legal notice, any one big or
small, continues to carry the illegitimate use of
a significant world wide renowned name/ mark
as is being done in this case despite notice
dated 09-12-1989, there cannot be any reason
for not stopping the use of a world reputed
name. None should be continued to be allowed
to use a world famed name to goods which
have no connection with the type of goods
which have generated the world wide
reputation.
In the instant case, "Benz" is a name given to a
very high priced and extremely well engineered
product. In my view, the defendant cannot
dilute, that by user of the name "Benz" with
respect to a product like under-wears."
77. Mr. Sundaram placed reliance on Harrods Limited
(supra) where the Court observed as under:
"Messrs. Harrods Limited, a long
established and well known Company whose
business included a banking department but
who were precluded by their Articles of
Association from carrying on a moneylenders
business brought an action against R. Harrod
Limited, a Company registered in August,
1923, with the object of carrying on the
business of a registered moneylender. The
plaintiffs applied for an interlocutory
injunction "to restrain the Defendant
Company, its servants and agents until
judgment or further order from carrying on
53
business under the name R. Harrod Limited or
under any name comprising the word "Harrod"
likely to mislead the public into the belief that
the Defendant Company was connected with
the Plaintiff Company or that the business of
the Defendant Company was the same as or in
any way connected with the business of the
Plaintiff Company."
78. Learned counsel for the respondent company submitted
that the scope of passing-off action is wider than in an
infringement of trademark or copyright action. Therefore, in
an action of passing-off, an injunction can be granted even
against a registered trademark holder.
79. Learned counsel for the respondent company also relied
on a judgment of this Court in the case of N.R. Dongre and
others v. Whirlpool Corporation and another (1996) 5
SCC 714. In this case this Court affirmed the concurrent
findings of the single Judge, as affirmed on appeal by the
division bench of the Delhi High Court and observed that:
"... ... ...adopting the mark `Whirlpool' when
business in washing machines was being
carried out earlier in other names, which at
this stage, is supportive of the plea of unfair
trading activity in an attempt to obtain
economic benefit of the reputation established
54
by Plaintiff 1, whose name is associated with
the mark `Whirlpool'. ... ... ..."
80. Mr. Sundaram also submitted that common words with
strong primary meaning retain the said meaning and
protection would then be granted only qua the product for
which such common word is used viz. Sun TV, Moon, Earth
etc. In this connection learned counsel for the respondent
company relied on a case of this Court in the case of Godfrey
Philips India Limited v. Girnar Food & Beverages (P)
Limited (2004) 5 SCC 257 where this court observed as under:
"Without going into the question whether the
conclusion arrived at by the Division Bench
that the trade mark is descriptive is correct or
not, it appears to us, and as is conceded by
both parties before us, that the enunciation of
principle of law with regard to the protection
available even in respect of the descriptive
trade mark was wrong. A descriptive trade
mark may be entitled to protection if it has
assumed a secondary meaning which identifies
it with a particular product or as being from a
particular source. ... ... ..."
81. Learned counsel for the respondent company also relied
on a judgment of Delhi High Court in the case of Info Edge
(India) Private Limited and another v. Shailesh Gupta
55
and another 98 (2002) DLT 499 where the Court observed
that:
"It was sought to be submitted by the counsel
appearing for the defendant that the word
'Naukri' cannot assume a significance of a
trademark, as the same is generic. The word
'Naukri', would be a descriptive word as it
denotes and describes the nature of work and
business offered by the plaintiff. The plaintiff
has chosen to use the domain name
'Naukri.Com', which is descriptive of the
business, the plaintiff carries on i.e. it gives
information to its subscribers about the
availability of jobs and employment in various
establishments, concerns and offices and the
manner in which request for employment
could be made and, therefore, it is a service
offered by the plaintiff relating to job
opportunity and situation and giving guidance
thereto and, therefore, the same is a
descriptive word. It is also a settled law that
the distinction between the generic word and
descriptive word is very thin and such word
could also assume a secondary meaning by its
long user by a person, who establishes his
reputation in the market.
If a product of a particular character or
composition is marketed in a particular area or
place under a descriptive name and gained a
reputation there under, that name which
distinguished it from competing products of
different composition, the goodwill in the name
of those entitled to make use of it there was
protected against deceptive use there of the
name of competitors. In Erven Warnink by
56
and Ors. v. J Townend & Sons (Hull) Ltd.
and Ors. reported in (1979) 2 All ER, it was
held that whether the name denoted a product
made from ingredients from a particular
locality or whether the goodwill in the name
was the result of the product being made from
particular ingredients regardless of their
provenance, since it was the reputation that
the product itself had gained in the market by
reason of its recognisable and distinctive
qualities which had generated the relevant
goodwill. In the said case, the trademark was
the name of a spirit-based product called
ADVOCAAT. The said product had gained a
reputation and goodwill for that name in the
English market and the defendants were
seeking to take advantage of that name by
misrepresenting that their wine-based product
was of the same type as ADVOCAAT."
82. Mr. Sundaram placed reliance on a judgment of House of
Lords in the case of Office Cleaning Services Limited v.
Westminster Office Cleaning Association 1944 (2) All E R
269, where the court observed that the word 'office cleaning'
was held to be a descriptive word, for it is a descriptive of the
business they carry on. It was held that the plaintiff could
assume or establish monopoly on the said word only when
they show that they have acquired a secondary or subsidiary
meaning. The aforesaid legal principle is well-settled and even
57
the counsel for the defendant did not dispute the aforesaid
position.
83. In Halsbury's Laws of England, Volume 48 Fourth edition
at page 190, it is stated that it is possible for a word or phrase,
which is wholly descriptive of the goods or services concerned,
to become so associated with the goods or services of a
particular trader that its use by another trader is capable of
amounting to a representation that his goods or services are
those of the first trader and that although the primary
meaning of the words is descriptive, they have acquired a
secondary meaning as indicating the products of a particular
trader.
84. In McCarthy on Trademarks and Unfair Competition Vol.
2 3rd Edition in para 12.5 (2) it is stated that in order to
obtain some form of relief on a "passing off" claim, the user of
a generic term must prove some false or confusing usage by
the newcomer above and beyond mere use of generic name.
58
85. The contention of the defendant is that adjectives are
normally descriptive words and nouns are generic word.
However, McCarthy has said that the said "part of speech" test
does not accurately describes the case law results. therefore,
such a criteria cannot be accepted as a safe and sound basis
to ascertain as to whether a particular name is generic or
descriptive. Besides, even assuming that the said word is
generic yet if it is found by the court that such a mark has
attained distinctiveness and is associated with the business of
the plaintiff for considerable time and thereafter the defendant
adopts a similar word as one of his two marks to induce
innocent internet users to come to the website of the
defendant, which establishes dishonest intention and bad
faith, would the court still be not granting injunction to
protect the business of the plaintiff? The answer to the said
question has to be an emphatic 'No". User of similar word by a
competitor coupled with dishonest intention and bad faith
would empower a court to restrain such user/misuser to do
equitable justice to the aggrieved party.
59
86. Learned counsel for the respondent company also
submitted that the use of the word by another would result in
diminishing the distinctiveness of the word qua the good and
reputation of the plaintiff.
87. Mr. Sundaram also placed reliance on Taittinger and
others v. Allbev Limitd and others (1994) 4 All E R 75. The
relevant passages are reproduced as under:
"... ... ...Further it cannot be right that the
larger the scale of the activities of a trader
suing in passing off, the less protection it will
receive from the Court because of a
comparison with the scale of the activities of a
defendant who trades on a smaller scale. The
question is whether the relevant activities of
the defendants are on such a small scale
leading to such a small injury that it can be
ignored. On the evidence of the defendants'
sales, I find it impossible to say that is the
case here.
But in my judgement the real injury to the
champagne houses' goodwill comes under a
different head and although the judge refers to
Mr. Sparrow putting the point in argument, he
does not deal with it specifically or give a
reason for its undoubted rejection by him. Mr.
Sparrow had argued that if the defendants
continued to market their product, there would
take place a blurring or erosion of the
uniqueness that now attends the word
60
champagne, so that the exclusive reputation of
the champagne houses would be debased. He
put this even more forcefully before us. He
submitted that if the defendants are allowed to
continue to call their product Elderflower
Champagne, the effect would be to demolish
the distinctiveness of the word champagne,
and that would inevitably damage the goodwill
of the champagne houses.
In Advocaat case [1980] RPC 31 at first
instance Goulding J. held that one type of
damage was 'a more gradual damage to the
plaintiffs' business through depreciation of the
reputation that their goods enjoy.' He
continued: Damage of [this] type can rarely be
susceptible of positive proof. In my judgement,
it is likely to occur if the word 'Advocaat' is
permitted to be used of alcoholic egg drinks
generally or of the defendants' product in
particular.
In the House of Lords in that case Lord
Diplock referred to that type of damage to
goodwill as relevant damage, which he
described as caused 'indirectly in the
debasement of the reputation attaching to the
name "advocaat. ..."
In Vine Products Ltd. v. Mackenzie & Co.
Ltd. Cross J., [1969] RPC 1 commenting with
approval on the decision of Danckwerts J. in
Bollinger v. Costa Brava Wine Co. Ltd. (No. 2)
said:
[Danckwerts J.] thought, as I read in his
judgment, that if people were allowed to call
sparkling wine not produced in Champagne
'Champagne,' even though preceded by an
61
adjective denoting the country of origin, the
distinction between genuine Champagne and
'champagne type' wines produced elsewhere
would become blurred; that the word
'Champagne' would come gradually to mean no
more than 'sparkling wine'; and that the part
of the plaintiffs' goodwill which consisted in
the name would be diluted and gradually
destroyed.
That passage was referred to approvingly by
Gault J. in Wineworths Group Limited v.
Comite Interprofessionel du Vin de
Champagne [1992] 2 NZLR 327 In that case
the sale of Australian sparkling wine under the
name champagne was held to constitute
passing off. The New Zealand Court of Appeal
upheld the decision of Jeffries J. who had held
in C.I.V.C. v. Wineworths:
By using the word champagne on the label the
defendant is deceptively encroaching on the
reputation and goodwill of the plaintiffs. [1991]
2 NZLR 432
Jeffries J. had no doubt that if relief was not
granted the plaintiffs would most certainly
suffer damage if the word was used on all or
any sparkling wine sold in New Zealand. He
thought the ordinary purchaser in New
Zealand without special knowledge on wines
was likely to be misled. Gault J. after agreeing
with Jeffries J. on deception said (at p.343):
I find the issue of damage or likely damage to
the goodwill with which the name 'Champagne'
is associated equally obvious in light of the
finding that there is in fact an established
goodwill in New Zealand. I have no doubt that
62
erosion of the distinctiveness of a name or
mark is a form of damage to the goodwill of the
business with which the name is connected.
There is no clearer example of this than the
debasing of the name 'Champagne' in Australia
as a result of its use by local wine makers.
By parity of reasoning it seems to me no less
obvious that erosion of the distinctiveness of
the name champagne in this country is a form
of damage to the goodwill of the business of
the champagne houses. There are undoubtedly
factual points of distinction between the New
Zealand case and the present case, as Mr.
Isaacs has pointed out, and he placed
particular reliance on the fact that in the New
Zealand case as well as in Bollinger v. Costa
Brava Wine Co. Ltd. (No. 2), the Court held
that there was a deliberate attempt to take
advantage of the name champagne, whereas in
the present case the judge found no such
specific intention. In general it is no doubt
easier to infer damage when a fraudulent
intention is established. But that fact does not
appear to have played any part in the
reasoning on this particular point either of
Jeffries J. or of Sir Robin Cooke P., who
thought the case exemplified the principle that
a tendency to impair distinctiveness might lead
to an inference of damage to goodwill [1992] 2
NZLR 327, or of Gault J.; nor in logic can I see
why it should. It seems to me inevitable that if
the defendants, with their not insignificant
trade as a supplier of drinks to Sainsbury and
other retail outlets, are permitted to use the
name Elderflower Champagne, the goodwill in
the distinctive name champagne will be eroded
with serious adverse consequences for the
champagne houses.
63
In my judgement therefore the fifth
characteristic identified in Advocaat case is
established. I can see no exceptional feature to
this case which would justify on grounds of
public policy withholding from the champagne
houses the ordinary remedy of an injunction to
restrain passing off. I would therefore grant an
injunction to restrain the defendants from
selling, offering for sale, distributing and
describing, whether in advertisements or on
labels or in any other way, any beverages, not
being wine produced in Champagne, under or
by reference to the word champagne. That
injunction, I would, emphasise, does not
prevent the sale of the defendants' product,
provided it is not called champagne."
88. Learned counsel for the respondent company also
submitted that the protection qua common field of activity has
now expanded and been interpreted to mean extending to
other product lines than what is manufactured by the plaintiff
and hence common field of activity is not restricted to same or
similar products but extend to all other products. The test of
common field of activity now accepted is that of "common class
of consumers". The reason for this is the likelihood of such
consumers identifying the Defendant's goods as originating
from the same source as the plaintiff. The question therefore
64
would be, whether from the factual situation, an inference can
be drawn that a purchaser of the Defendant's product could
assume such product as originating from the plaintiff.
89. He also relied on Kamal Trading Co., Bombay and
Others v. Gillette U.K. Limited [1988] IPLR 135 wherein it
has been observed that:
"... ... ..the plaintiffs have not established any
of the conditions required for grant of interim
relief. It was submitted that the goods
manufactured by the plaintiffs and the
defendants are different in nature; the
plaintiffs manufacture blades, while the
defendants manufacture "tooth brushes". The
goods of the plaintiffs and the defendants are
not available in the same shop and the
customers of these goods are different. The
goods sold by the plaintiffs are blades and fall
in class 8, while those of the defendants are
tooth brushes which fall in class 21. Relying
on these circumstances, it was merit in this
submission. In the first instance, the
assumption of the learned counsel that the
class of customers for purchase of safety
blades and tooth brushes are different and
these goods are not available in the same shop
is wholly misconceived. We take judicial notice
of the fact that these goods are available in
every shop including a small shop and each
and every person is required to purchase these
goods. ... ... ..."
65
90. Mr. Sundaram also relied on Honda Motors Company
Limited v. Charanjit Singh & Others (101 (2002) DLT
359) wherein it has been observed that:
"The case of the plaintiff is in fact based on
passing off action and not for infringement of
the trade mark. It has never been the case of
the plaintiff that the two sets of goods are
identical. The concept of passing off, which is a
form of tort has undergone changes with the
course of time. The plaintiff now does not have
to be in direct competition with the defendant
to suffer injury from the use of its trade name
by the defendants."
The court further observed that:
"In the present case the plaintiff's mark
HONDA has acquired a global goodwill and
reputation. Its reputation is for quality
products. The name of HONDA is associated
with the plaintiff's especially in the field of
automobiles and power equipments on
account of their superior quality and high
standard. The plaintiff's business or products
under the trade mark HONDA has acquired
such goodwill and reputation that it has
become distinctive of its products and the
defendants' user of this mark for their product
"Pressure Cooker" tends to mislead the public
to believe that the defendants business and
goods are that of the plaintiff. Such user by
the defendants has also diluted and debased
the goodwill and reputation of the plaintiff.
66
As observed above, the concept of passing off
is a tort and with the passage of time, with the
developing case law it has changed and now
the two traders need not necessarily operate in
the same field so as to suffer injury on account
of the goods of one trader being passed off as
those of the other.
With the changed concept of passing off action,
it is now not material for a passing off action
that the plaintiff and the defendant should
trade in the same field. I find that some
business are truly international in character
and the reputation and goodwill attached to
them cannot in fact be held being international
also. The plaintiff's business is of international
character and obviously the reputation and
goodwill attached to its trade mark HONDA is
also of international repute. The plaintiff's
trade mark HONDA, which is of global repute,
is used by the defendants for a product like
pressure cooker, to acquire the benefit of its
goodwill and reputation so as to create
deception for the public who are likely to buy
defendant's product believing the same as
coming from the house of HONDA or
associated with the plaintiff in some manner.
By doing so, it would dilute the goodwill and
reputation of the plaintiff and the wrong
committed by the defendants would certainly
be an actionable wrong and the plaintiff is
within its rights to ask for restraint against the
defendants from using its mark HONDA for
their products."
67
91. From the above discussions, the following two situations
arise:
i. Where the name of the plaintiff is such as to give
him exclusivity over the name, which would ipso
facto extend to barring any other person from using
the same. viz. Benz, Mahindra, Caterpillar,
Reliance, Sahara, Diesel etc.
ii. The plaintiff's adopted name would be protected if it
has acquired a strong enough association with the
plaintiff and the defendant has adopted such a
name in common field of activity i.e. the purchasers
test as to whether in the facts of the case, the
manner of sale, surrounding circumstances etc.
would lead to an inference that the source of
product is the plaintiff.
68
92. Learned counsel for the respondent company also
submitted that once there is a dishonest intention to adopt the
mark a mere delay in bringing an action will not be defeated
because in case of continuing tort fresh period of limitation
begins to run every moment of the time during which the
breach continues.
93. Mr. Sundaram relied on a case of this court in M/s.
Bengal Waterproof Limited Vs. M/s. Bombay Waterproof
Manufacturing Company and Another (1997) 1 SCC 99
wherein it has been observed that:
"... ... ...It is now well settled that an action for
passing off is a common law remedy being an
action in substance of deceit under the Law of
Torts. Wherever and whenever fresh deceitful
act is committed the person deceived would
naturally have a fresh cause of action in his
favour. Thus every time when a person passes
off his goods as those of another he commits
the act of such deceit. Similarly whenever and
wherever a person commits breach of a
registered trade mark of another he commits a
recurring act of breach or infringement of such
trade mark giving a recurring and fresh cause
of action at each time of such infringement to
the party aggrieved. ... ... ..."
... ... ...
69
... ... ...
In cases of continuous causes of action or
recurring causes of action bar of Order 2 Rule
2 Sub-rule (3) cannot be invoked. In this
connection it is profitable to have a look at
Section 22 of the Limitation Act, 1963. It lays
down that 'in the case of a continuing breach
of contract or in the case of a continuing tort,
a fresh period of limitation begins to run at
every moment of the time during which the
branch or the tort, as the case may be,
continues. As act of passing off is an act of
deceit and tort every time when such tortuous
act or deceit is committed by the defendant the
plaintiff gets a fresh cause of action to come to
the court by appropriate proceedings. Similarly
infringement of a registered trade mark would
also be a continuing wrong so long as
infringement continues. Therefore, whether the
earlier infringement has continued or a new
infringement has taken place cause of action
for filing a fresh suit would obviously arise in
favour of the plaintiff who is aggrieved by such
fresh infringements of trade mark or fresh
passing off actions alleged against the
defendant. Consequently, in our view even on
merits the learned Trial Judge as well as the
learned Single Judge were obviously in error in
taking the view that the second suit of the
plaintiff in the present case was barred by
Order 2 Rule 2 Sub-rule (3), CPC."
94. Learned counsel for the respondent company also placed
reliance on another judgment of this Court in the case of
70
Heinz Italia and another v. Dabur India Limited (2007) 6
SCC 1 wherein this court observed that:
"... .... it has been repeatedly held that before
the use of a particular mark can be
appropriated it is for the plaintiff to prove that
the product that he is representing had earned
a reputation in the market and that this
reputation had been sought to be violated by
the opposite party. In Corn Products case
(supra) it was observed that the principle of
similarity could not to be very rigidly applied
and that if it could be prima facie shown that
there was a dishonest intention on the part of
the defendant in passing off goods, an
injunction should ordinarily follow and the
mere delay in bringing the matter to Court was
not a ground to defeat the case of the plaintiff.
It bears reiteration that the word "Glucon-D"
and its packaging had been used by Glaxo
since 1940 whereas the word "Glucose-D" had
been used for the first time in the year 1989."
95. Mr. Sundaram further placed reliance on another
judgment of this Court in Ramdev Food Products (P) Limited
(supra), wherein it has been held that:
"Acquiescence is a facet of delay. The principle
of acquiescence would apply where: (i) sitting
by or allow another to invade the rights and
spending money on it; (ii) it is a course of
conduct inconsistent with the claim for
exclusive rights for trade mark, trade name,
etc.
71
In Power Control Appliances and Ors. v.
Sumeet Machines Pvt. Ltd. [1994] 1 SCR
708, this Court stated:
Acquiescence is sitting by, when
another is invading the rights and
spending money on it. It is a course
of conduct inconsistent with the
claim for exclusive rights in a trade
mark, trade name etc. It implies
positive acts; not merely silence or
inaction such as is involved in
laches."
The court further observed that:
"The defence of acquiescence, thus, would be
satisfied when the plaintiff assents to or lay by
in relation to the acts of another person and in
view of that assent or laying by and
consequent acts it would be unjust in all the
circumstances to grant the specific relief."
96. Mr. Sundaram, counsel for the respondent company also
submitted that use of a similar mark(s) by third parties is not
a defense to an illegal act of passing-off. He relied on a
judgment of Delhi High Court in Ford Motor Company of
Canada Limited and another v. Ford Service Centre 2009
(39) PTC 149, wherein the Court observed that:
"... do not find any merit in the plea of
defendant of two others, outside India using
FORD in relation to other business. Their case
72
is not before this Court for adjudication and
even if the plea of dilution was to be available
in an infringement action, no case of dilution
in India is made out. Recently the Division
Bench of this Court in Pankaj Goel v. Dabur
India Limited 2008 (38) PTC 49 (Delhi) held
that merely because others are carrying on
business under similar or deceptively similar
trademark or have been permitted to do so by
the plaintiff, cannot offer a licence to the world
at large to infringe the trademark of the
plaintiff. It was further held that even
otherwise, the use of similar marks by a third
party cannot be a defence to an illegal act of
passing off. In Castrol Limited v. A.K. Mehta
1997 (17) PTC 408 DB it was held that a
concession given in one case does not mean
that other parties are entitled to use the same.
Also, in Prakash Roadline v. Prakash Parcel
Service 1992 (2) Arbitration Law Reporter 174
it has been held that use of a similar mark by
a third party in violation of plaintiff's right is
no defence."
97. Learned counsel for the respondent company also placed
reliance on Prakash Roadline Limited v. Prakash Parcel
Service (P) Ltd. 48 (1992) Delhi Law Times 390 the Delhi
High Court held that:
"... ... ... Merely because no action is taken
against certain other parties, it does not mean
that the plaintiff is not entitled to take action
against the defendant. The other parties may
not be affecting the business of the plaintiff.
They may be small-time operators who really
73
do not matter to the plaintiff. Therefore, the
plaintiff may not chose to take any action
against them. On the contrary the plaintiff
feels danger from defendant in view of the fact
that the defendant's promoters are the ex
Directors/employees of the plaintiff who are
fully in the know of the business secrets of the
plaintiff. Therefore, the mere fact that the
plaintiff has not chosen to take any action
against such other parties cannot disentitle
the plaintiff from taking the present action.
This contention is, therefore, prima-facie
without any merit and is rejected."
98. Lastly, learned counsel for the respondent company
submitted that in any one of the following circumstances the
plaintiff would be entitled to injunctive relief even qua a
common word:
a. If the factors for justifying absolute protection as
per `absolute protection for common words' have
been made out then it would ipso facto entitle the
plaintiff to protection against the world at large.
b. The protection would be given against any
particular defendant if the plaintiff's name has
acquired a secondary meaning and the defendant
74
uses the name in a common field of activity, i.e.
where there are common purchasers. However, the
court may decline to grant the relief if such name is
descriptive of the defendant's product and not just a
name unconnected with the defendant's product.
c. The protection would be granted qua a defendant
with relation to even an unrelated product where
the tests of dishonest adoption are satisfied and the
defendant will be restrained from cashing in or
profiting from the plaintiff's name.
99. We have heard the detailed and comprehensive
arguments advanced by the learned counsel for the parties.
We place on record our appreciation for the able assistance
provided by the learned counsel for the parties in this case. We
have also carefully examined relevant decided Indian, English
and American cases.
100. The respondent company's mark `Eenadu' has acquired
extra-ordinary reputation and goodwill in the State of Andhra
75
Pradesh. `Eenadu' newspaper and TV are extremely well
known and almost household words in the State of Andhra
Pradesh. The word `Eenadu' may be a descriptive word but
has acquired a secondary or subsidiary meaning and is fully
identified with the products and services provided by the
respondent company.
101. The appellant is a Karnataka based company which has
started manufacturing its product in Bangalore in the name of
`Ashika' and started selling its product in the State of Andhra
Pradesh in 1995. The appellant started using the name
`Eenadu' for its Agarbathi and used the same artistic script,
font and method of writing the name which obviously cannot
be a co-incidence. The appellant company after adoption of
name `Eenadu' accounted for 90% of sale of their product
Agarbathi.
102. On consideration of the totality of facts and
circumstances of the case, we clearly arrive at the following
findings and conclusions :
76
a) The respondent company's mark `Eenadu' has
acquired extraordinary reputation and goodwill
in the State of Andhra Pradesh. The
respondent company's products and services
are correlated, identified and associated with
the word `Eenadu' in the entire State of Andhra
Pradesh. `Eenadu' means literally the
products or services provided by the
respondent company in the State of Andhra
Pradesh. In this background the appellant
cannot be referred or termed as an honest
concurrent user of the mark `Eenadu';
b) The adoption of the words `Eenadu' is ex facie
fraudulent and mala fide from the very
inception. By adopting the mark `Eenadu' in
the State of Andhra Pradesh, the appellant
clearly wanted to ride on the reputation and
goodwill of the respondent company;
c) Permitting the appellant to carry on his
business would in fact be putting a seal of
77
approval of the court on the dishonest, illegal
and clandestine conduct of the appellant;
d) Permitting the appellant to sell his product
with the mark `Eenadu' in the State of Andhra
Pradesh would definitely create confusion in
the minds of the consumers because the
appellant is selling Agarbathies marked
`Eenadu' as to be designed or calculated to
lead purchasers to believe that its product
Agarbathies are in fact the products of the
respondent company. In other words, the
appellant wants to ride on the reputation and
goodwill of the respondent company. In such
a situation, it is the bounden duty and
obligation of the court not only to protect the
goodwill and reputation of the respondent
company but also to protect the interest of the
consumers;
e) Permitting the appellant to sell its product in
the State of Andhra Pradesh would amount to
78
encouraging the appellant to practise fraud on
the consumers;
f) Permitting the appellant to carry on his
business in the name of `Eenadu' in the State
of Andhra Pradesh would lead to eroding extra-
ordinary reputation and goodwill acquired by
the respondent company over a passage of
time;
g) Appellant's deliberate misrepresentation has
the potentiality of creating serious confusion
and deception for the public at large and the
consumers have to be saved from such
fraudulent and deceitful conduct of the
appellant.
h) Permitting the appellant to sell his product
with the mark `Eenadu' would be encroaching
on the reputation and goodwill of the
respondent company and this would constitute
invasion of proprietary rights vested with the
respondent company.
79
i) Honesty and fair play ought to be the basis of
the policies in the world of trade and business.
103. The law is consistent that no one can be permitted
to encroach upon the reputation and goodwill of other parties.
This approach is in consonance with protecting proprietary
rights of the respondent company.
104. Consequently, the appeals are disposed of in terms
of the aforesaid observations and directions.
105. In the facts and circumstances of this case, the
parties are directed to bear their own costs.
..................................................J.
(Dalveer Bhandari)
.................................................J.
(K.S. Panicker Radhakrishnan)
New Delhi;
March 3, 2011
