FAO (OS) No. 352/2010. Case: Marico Limited Vs Agro Tech Foods Limited. High Court of Delhi (India)

Case NumberFAO (OS) No. 352/2010
CounselFor Appellant: Sudhir Chandra Agarwal and Sandeep Sethi, Sr. Advs., Rahul Chaudhry, Sumit Wadhwa and Amritesh Mishra, Advs. and For Respondents: V. P. Singh, Sr. Adv. and Dhruv Anand, Adv.
JudgesSanjay Kishan Kaul and Valmiki J.Mehta, JJ.
IssueTrademarks Act, 1999 - Sections 9, 9(1), 12, 28, 29, 30, 30(2), 31, 31(1), 31(2), 32, 35, 57, 107, 124, 124(1), 124(5); Emblems and Names (Prevention of Improper Use) Act, 1950
Citation2010 (174) DLT 279, 2010 (44) PTC 736 (Del)
Judgement DateNovember 01, 2010
CourtHigh Court of Delhi (India)

Judgment:

Valmiki J. Mehta, J.

The present appeal has been filed with a prayer to set aside the order passed by the learned Single Judge of this court on 23.4.2010 disposing of an application for injunction filed by the appellant/plaintiff in a suit for infringement of trademark, passing off, dilution etc., and by which order the learned Single Judge dismissed the injunction application of the plaintiff. By the impugned order, the learned Single Judge also allowed the application of the respondent/defendant for vacation of the injunction and vacated the ex parte interim order dated 28.8.2009. By the impugned order the learned Single judge has held that no case for infringement is made out on account of the use of the expression "LOW ABSORB" by the respondent-defendant which was alleged to be deceptively similar to the registered trademarks "LOSORB" and "LO-SORB" of the appellant-plaintiff. The learned Single Judge also held that use of the expression "LOW ABSORB" by the defendant will not amount to passing off although the plaintiff also claimed a right in the unregistered trademark "LOW ABSORB".

The relevant facts of the case are that appellant-plaintiff got registered the Trademarks "LOSORB" and "LO-SORB" for different products in class-29 viz Oil, Ghee etc. effective from 28.05.2001. The appellant claimed that it coined the word marks which have been registered by it. The registered marks were used in relation to edible oil inasmuch as the edible oil contained an ingredient/anti foaming agent by which less or low oil was consumed by the product made by use of the edible oil. The edible oil sold also used the trademarks "Sweekar" & "Saffola" besides the subject registered trademarks "LOSORB" and LO-SORB". The appellant in the plaint has referred to its extensive sales of the product by using of the registered trademarks and also reference has been made to large amounts spent towards advertisements. The relevant paras of the plaint are paras 11 and 12 which read as under:

"11. Given below are the sales figures for the edible oil on which LOW ABSORB and/or LOSORB marks(s) were used for the period October 2001-Quarter I of FY 2010:

The above figures have been taken from the books and records maintained by the Plaintiff in the ordinary course of business and have been verified to be correct.

12. The Plaintiff has incurred huge amounts in promoting its edible oil bearing trademarks LOW ABSORB and/or LOSORB and in popularizing the said trademarks. Given below are the sales promotional figures incurred by the Plaintiff in advertising its edible oil bearing the aforesaid trademark(s) for the period October, 2005-March, 2009:

The above figures have been taken from the books and records maintained by the Plaintiff in the ordinary course of business and have been verified to be correct."

The defendant is selling its edible oil/Sunflower seeds oil under the trademark "Sundrop" and since this edible oil also contains an anti-foaming agent, which in turn, retards the absorption of oil during the process of frying food stuffs, therefore, the packaging also contains the expression "WITH LOW ABSORB TECHNOLOGY".

Two basic issues arise for decision in the present appeal along with incidental and related issues. The first issue is on the aspect of infringement i.e. whether the appellant?s registration gives it exclusive right to use the subject trademarks "LOSORB" and "LO-SORB" and consequently whether an action for infringement is maintainable if a person such as the respondent uses a trademark which is deceptively similar or nearly identical or identical to the registered trademarks. Included in this first issue is the aspect of whether registration only confers prima facie validity and thereby does not prevent the court from denying the injunction in spite of registration. Further, assuming that registration is final would the appellant be entitled to the reliefs of injunction with regard to its claims of infringement once the respondent lays out a valid defence under the applicable provisions of the Trademarks Act, 1999 (hereinafter referred to as the "Act") which inter alia, include Section 30(2) (a) and Section 35 thereof i.e. the use of the words by the respondent, which words are claimed by the appellant as its trademarks are statutorily permissible as the use is only in a descriptive manner. The second issue is the issue with regard to claim of the appellant pertaining to passing off and the issue is whether the respondent?s user of the expression "LOW ABOSORB TECHNOLOGY" in relation to its edible oil product amounts to passing off the goods of the appellant which uses the unregistered trademark "LOW ABSORB". We also would like to state that on quite a few aspects of "passing of" and "infringement" there will be commonality of the ratios and thus dovetailing on these common aspects.

PASSING OF ACTION

Since, the second issue is now almost entirely covered by a decision of a Division Bench of this Court reported as Cadila Healthcare Ltd. Vs. Gujrat Co-operative Milk Marketing Federation Ltd & Ors,2009 41 PTC 336: we shall therefore deal with it first. We are consciously using "almost entirely" because there is one major difference in the case of Cadila Healthcare Ltd. (supra) and the present case on the issue of passing off being that the products in the case of Cadila Healthcare Ltd. of the two parties were different, but in the present case the products are identical. The Division Bench in the judgment of Cadila Healthcare Ltd. (supra) was concerned with a passing off an action with respect to the trademark "Sugar Free" which was used by the plaintiff therein with respect to an artificial sweetener acting as a substitute for natural sugar and the defendant was selling a frozen desert with the Trademark "Amul" and describing its product as "Sugar Free". The Division Bench has held that expression "Sugar Free" is basically a descriptive and generic expression. The Division Bench has further held that it cannot be said to be a coined word. The Division Bench in effect has held that there cannot an exclusive ownership granted to a person with respect to expression "Sugar Free", i.e., there cannot be claim of exclusive user of the expression "Sugar Free" as a trademark with respect to all other products which were not artificial sweeteners assuming that the plaintiff may have distinctiveness with respect to its trademark for artificial sweeteners. The relevant paras of the judgment Cadila Healthcare Ltd. (supra) which contain the ratio are para Nos.8 to 11 and 14 which read as under:

8. In our view, at this juncture i.e. at the interim stage, even assuming distinctiveness claimed by the appellant in its favor qua its artificial sweetener, the appellant has rightly been declined an injunction by the learned Single Judge since it is evident and has indeed been found by the learned Single Judge that the use of the term Sugar Free by the respondent is not in the trademark sense but as a common descriptive adjective. The learned Single Judge has found and in our view rightly that the

respondent has not used the expression in a trademark sense but only in a descriptive sense in the following passage: -

54. It is important to be borne in mind that use of a descriptive expression as a trademark by a trader, irrespective of the said trademark having acquired a secondary meaning and distinctiveness in relation to the trader's products, does not entitle such trader from precluding other traders from using the said expression for the purposes of describing the characteristic features of their products. I have no hesitation in stating, albeit without prejudice to the rights and interests of the plaintiff in the present suit, that by adopting such a purely descriptive and laudatory expression 'Sugar Free' as its trademark, the plaintiff must be prepared to tolerate some degree of confusion which is inevitable owing to the wide spread use of such trademark by fellow competitors. Simply because the plaintiff claims to be using the expression 'Sugar Free' as a trademark much prior to the launch of the defendant's product Pro Biotic Frozen Dessert in the market does not give this Court a good ground for imposing a blanket injunction on the defendant from using the expression 'Sugar Free', especially when the defendant intends to use this expression only in its descriptive sense and not as a trademark, and even otherwise, when the use of this expression is widespread in relation to foods and beverages

We fully agree with and reaffirm the said finding.

9. We are unable to hold that the appellants trademark Sugar Free? is a coined word; at best it is a combination of two popular English words. The mere fact that the appellants product cannot be directly consumed or eaten and merely is an additive does not detract from the descriptive nature of the trademark. Once a common phrase in the English language which directly describes the product is adopted by a business enterprise, such adoption naturally entails the risk that others in the field would also be entitled to use such phrases provided no attempt is made to ride on the band wagon of the appellants indubitably market leading product Sugar Free?. In this connection, merely because the attributes of sugar free? can be described by other phrases cannot detract from the common usage of the phrase Sugar Free? as denoting products which do not contain sugar and any trader which adopts such mark in the market place, does so with the clear knowledge of the possibility of other traders also using the said mark. That is precisely the reason for the denial of protection to such marks by refusing registration as envisaged by Sections 9, 30 and 35 of the Act. The said Sections read as follows: -

"9. Absolute grounds for refusal of registration.(1) The trademarks

(a) which are devoid of any distinctive character, that is to say, not capable of...

To continue reading

Request your trial
4 practice notes
4 cases

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT