Greaves Cotton Limited v. Mohammad Rafi

1. Whether Reporters of local papers may be allowed to see the judgment? Yes

2. To be referred to the Reporter or not? Yes

3. Whether the judgment should be reported Yes in Digest? V.K. JAIN, J

1. This is a suit for permanent & mandatory injunction, damages, rendition of accounts and delivering up of infringing material. The plaintiff company is engaged in the manufacture of a wide range of industrial products including diesel engines, generating sets, agro equipments, construction equipments and road construction 2011:DHC:3131 equipments. It is claimed that the word/mark „GREAVES‟ is an essential and prominent feature of plaintiff‟s trade name, corporate name and business style and the trademark „GREAVES‟ is the surname of the founder of the plaintiff‟s predecessor „GREAVES COTTON AND COMPANY LIMITED‟. Other groups companies of the plaintiff are Greaves Leasing Finance Limited, Greaves Midwest Engineering Company Limited, Crompton Greaves Limited, Dee Greaves Limited, Piaggio Greaves Vehicles Limited and Greaves Farymann Diesel GMBH. It is also alleged that „GREAVES‟ is the principal trademark of the plaintiff company and is exclusively associated with the products, business and activities of the plaintiff company and its subsidiary/associate companies. The plaintiff company holds the following registrations in its favour:

┌───────────────────────────────────────────────────────────────────────────────────────────┐
│ Sl.No. Trademark           Goods                             Class                        │
├───────────────────────────────────────────────────────────────────────────────────────────┤
│ 1.     Greaves        Care Machines and machine tools,         7                          │
│        (Label)             motors (except for vehicles),                                  │
│                            machine couplings and belting                                  │
│                            (except for vehicles), large size                              │
│                            agricultural          implements,                              │
│                            incubations (diesel generating                                 │
│                            sets)                                                          │
│ 2.       Greaves   Engines Diesel oil engines (for use in      7                          │
│          (Label)           motor land vehicle) and parts and                              │
│                            fittings thereof                                               │
│ 3.       Greavespart (with Diesel oil engines (for use in     12                          │
│ CS(OS)No. 395/2008                                         Page 2 of 28                   │
│                                                                           2011:DHC:3131   │
│          an artistic logo of   motor land vehicle) and parts and                          │
│          Phoenix inside a      fittings thereof                                           │
│          geometric device)                                                                │
│ 4.       Greaves     Limited   Unwrought and partly wrought             6                 │
│          (with an artistic     common metals and their alloys,                            │
│          logo of Phoenix       metallic pipes and tubes, cables                           │
│          inside a geometric    and wires (non-electric) and parts                         │
│          device)               thereof                                                    │
│ 5.       Greaves Engines       Diesel oil engines (for use in           12                │
│                                motor land vehicle) and parts and                          │
│                                fittings thereof                                           │
│ 6.       Greaves               Parts of internal combustion             7                 │
│                                engines for water crafts, diamond                          │
│                                drill    bite,   diamond    drilling                       │
│                                machines,      diamond    grinding                         │
│                                wheels and parts included in                               │
│                                Class 7 or internal combustion                             │
│                                engines, motor driven centrifugal                          │
│                                pumping sets, diesel driven pump                           │
│                                sets and steam traps.                                      │
│ 7.       Greavespart           Diesel oil engines (for use in           7                 │
│                                motor land vehicle) and parts and                          │
│                                fittings thereof                                           │
│ 2.          The plaintiff company has set out the sales figures                           │
└───────────────────────────────────────────────────────────────────────────────────────────┘

8. These issues are interconnected and can be decided together. In his affidavit by way of evidence, the defendant No.1 Mr. Mohammad Rafi (DW-1) has stated that his products are entirely different and are not in any manner related or connected with the consumer class of the plaintiff company. He further stated, that the term „GREAVES‟ itself is not sufficient to make the mark „GREAVES INDIA‟ deceptive and confusing. He also stated that he is also making motor pumps in the name of „POWER FLOW‟ and he has already applied for registration of the trademark „GREAVES INDIA‟. He claimed that he has stopped sale and marketing of products under the trade name GREAVES INDIA after the injunction. In his cross examination, he admitted that he used to manufacture and trade in self priming pump, monobloc pump, jet pump, shallow well pump, coupling pump, high head pumps, diesel pumps under the trade name „GREAVES INDIA‟, though he stopped using the aforesaid mark after injunction by this Court.

9. PW-1 Mr. Vinod Kumar Agarwal, who is the only witness produced by the plaintiff company has stated in his affidavit by way of evidence that „GREAVES‟ is the principal trademark of the plaintiff and is exclusively associated with its product and its business activities. He has further stated that the goods manufactured by the plaintiff under the trademark „GREAVES‟ are offered for sale in every part of the country and also exported to several other countries. According to him, the plaintiff company besides other products also manufactures engines, sold under the model name MK-12, MK-20 & MK-25. MK-12, according to the witness, is a pump being assembled with various models of None Self Priming pumps (monobloc and coupled) and is also being used with many other applications whereas MK- 20 is a single cylinder, air cooled engine, being assembled with various models of Non Self Priming pumps (monobloc). According to him MK-25 is a single cylinder, air cooled engine and this engine is also being coupled with Self Priming Pumpset and is being used for other applications as well. He has stated that the plaintiff company had sale of Rs. 18637 lac, Rs. 22356 lac, Rs. 21167 lac, Rs. 1988[5] lac for MK 12 Pumps, Rs. 3424 lac, Rs. 4126 lac, Rs. 3925 lac, Rs. 6628 lac for MK 25 and Rs. 2675 lac, Rs. 4936 lac, Rs. 6711 lac, Rs. 6348 lac for MK-20 Pump for the years 2003- 04, 2004-05, 2005-06 & 2006-07 respectively. According to him the plaintiff company incurred advertising expenditure of Rs. 9.09 lac, Rs. 23.54 lac, Rs. 36.47 lac, Rs. 48.13 lac & Rs.51.74 lac for the years 2002-03, 2003-04, 2004-05, 2005-06 & 2006-07. He has further stated that the defendant No.1 in his application seeking registration of trademark „GREAVES INDIA‟ has claimed use of the aforesaid mark in respect of self priming pumps monobloc pump, jet pump, shallow well pump, coupled pump, high head coupled pump, diesel pump, which are exactly of the same type as are the pumps of the plaintiff company.

10. Section 28 of Trade Marks Act, 1999 gives to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. The action for infringement is, thus, a remedy provided by Trade Marks Act to the registered proprietor of a registered trade mark in case there is an invasion of the statutory right provided to him for use of that trade mark in relation to the goods for which the trade mark has been registered in his name. Section 29(1) of Trade Marks Act, 1999 provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

11. It is also a settled proposition of law, which was reiterated by Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, PTC (Suppl) (2) 680 (SC), that if the defendant resorts to colourable use of a registered trade mark such an act of the defendant would give rise to an action for passing off as well as for infringement. In an action based upon infringement of a registered trade mark if the mark used by the defendant is visually, phonetically or otherwise so close to the registered trade mark of the plaintiff that it is found to be an imitation of the registered trade mark, the statutory right of the owner of the registered trade mark is taken as infringed. In such a case, if it is found that the defendant has adopted the essential features of the registered trade mark of the plaintiff, he would be liable even if he is able to establish that on account of packaging, get up and other writings on his goods or on the container in which the goods are sold by him, it is possible to clearly distinguish his goods from the goods of the plaintiff. On the other hand in a case of passing off if it is shown that on account of these factors it is very much possible for the purchaser to identify the origin of the goods and thereby distinguish the goods of the defendant from the goods of the plaintiff, the defendant may not be held liable. In Corn Products Refining Co. vs. Shangrila Food Products Ltd. 1960 (1) SCR 968, the Supreme Court observed that the question whether two competing marks are so similar as to be likely to deceive or cause confusion is one of first impression and it is for the court to decide it. The question has to be approached from the point of view of a man of average intelligence and imperfect recollection. In Parle Products (P) Ltd. v. J.P. & Co., Mysore, AIR 1972 SC 1359, Supreme Court inter alia observed as under:- According to Karly‟s Law of Trade Marks and Trade Names (9th Edition Paragraph 838) “Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with the one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. It would be too much to expect that persons dealing with trademarked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own. It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.

12. It is not necessary that in order to constitute infringement, the impugned trademark should be an absolute replica of the registered trademark of the plaintiff. When the mark of the defendant is not identical to the mark of the plaintiff, it would be necessary for the plaintiff to establish that the mark being used by the defendant resembles his mark to such an extent that it is likely to deceive or cause confusion and that the user of the impugned trademark is in relation to the goods in respect of which the plaintiff has obtained registration in his favour. It will be sufficient if the plaintiff is able to show that the trademark adopted by the defendant resembles its trademark in a substantial degree, on account of extensive use of the main features found in his trademark. In fact, any intelligent person, seeking to encash upon the goodwill and reputation of a well-established trademark, would make some minor changes here and there so as to claim in the event of a suit or other proceeding, being initiated against him that the trademark being used by him, does not constitute infringement of the trademark, ownership of which vests in some other person. But, such rather minor variations or distinguishing features would not deprive the plaintiff of injunction in case resemblance in the two trademarks is found to be substantial, to the extent that the impugned trademark is found to be similar to the registered trademark of the plaintiff. But, such malpractices are not acceptable and such a use cannot be permitted since this is actuated by a dishonest intention to take pecuniary advantage of the goodwill and brand image which the registered mark enjoys, it is also likely to create at least initial confusion in the mind of a consumer with average intelligence and imperfect recollection. It may also result in giving an unfair advantage to the infringer by creating an initial interest in the customer, who on account of such deceptive use of the registered trademark may end up buying the product of the infringer, though after knowing, either on account of difference in packaging etc. or on account of use of prefixes or suffixes that the product which he is buying is not the product of the plaintiff, but is the product of the defendant.

13. As held by the Supreme Court in Amritdhara Pharmacy v. Satyadeo Gupta, AIR 1963 SC 449, whether a trade name is likely to deceive or cause confusion by its resemblance to another mark already registered is a matter of first impression and the standard of comparison to be adopted in judging the resemblance is from the point of view of a man of average intelligence and imperfect recollection. What is important to keep in mind that the purchaser does not have both the marks lying side by side for comparison and, therefore, chances of deception are rather strong.

14. In a case based on infringement of a registered trademark, the plaintiff need not prove anything more than the use of its registered trademark by the defendant. In such a case, even if the defendant is able to show that on account of use of other words by him in conjunction with the registered word/mark of the plaintiff, there would be no confusion in the mind of the customer when he come across the product of the defendant and/or that on account of the packaging, get up and the manner of writing trademark on the packaging, it is possible for the consumer to distinguish his product from that of the plaintiff, he would still be liable for infringement of the registered trademark.

15. In K.R. Chinna Krishna Chettiar vs. Shri Ambal and Co., Madras and Anr., AIR 1970 SC 146, the respondents were the two registered trademarks. The first mark consisted of a label containing a device of a goddess Sri Ambal seated on a globe floating on water enclosed in a circular frame with the legend "Sri Ambal parimala snuff" at the top of the label, whereas the other mark consisted of expression "Sri Ambal". The appellant before Supreme Court was seeking registration of a label containing three panels. The first and the third panels contained equivalents of the words "Sri Andal Madras Snuff", whereas the central panel contained the picture of goddess Sri Andal and the legend "Sri Andal". Sri Andal and Sri Ambal are separate divinities. The question before the Court was whether the proposed mark of the appellant was deceptively similar to the respondents‟ mark. Noticing that the word Ambal was an essential feature of the registered trademarks, the Court was of the view that the name Andal proposed to be used by the appellant did not cease to be deceptively similar because it was used in conjunction with a pictorial device. Supreme Court referred to the case of De Cordova and Ors. v. Vick Chemical Coy. (1951) 68 R.P.C.103 where Vick Chemical Coy were the proprietors of the registered trade mark consisting of the word "Vaporub" and another registered trade mark consisting of a design of which the words "Vicks Vaporub Salve" formed a part. The defendants advertised their ointment as 'Karsote vapour Rub" and the Court held that the defendants had infringed the registered marks. The view taken by Lord Radcliffe that “a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features" was affirmed by the Supreme Court. The appeal was accordingly dismissed by Supreme Court, despite the fact that the words Ambal and Andal had distinct meanings.

16. The learned Counsel for the plaintiff has relied upon Ruston & Hornsby Ltd. vs. Zamindara Engineering Co. PTC (Suppl.) (1) 175 (SC) and KSB Aktiengesellschaft & Ors. vs. KSB Global Limited 2011 (45) PTC 103 (Del.) whereas the Counsel for the defendant has relied upon K.Narayanan & Anr. vs. S.Murali (2008) 10 SSC 479. In the case of K.R.Narayanan (supra), it was held that a mark ought to be registered, before a person can claim its infringement, and a proposed registration, which may or may not be granted, does not confer a cause of action to the person who has applied for its registration. I fail to appreciate how this judgment can be of any help to the defendant No.1 when the mark “GREAVES” and “GREAVES (Label)” are already registered in favour of the plaintiff company in various classes including Class 7, which includes centrifugal pump sets and diesel driven pump sets. In KSB Aktiengessellschaft (supra), the plaintiff company was using “KSB” as part of its corporate name. Plaintiff No. 2 in that case was also exporting goods under the trademark “KSB” and/or under the trade name “KSB” & Logo. The defendant was using “KSB” as a part of its trade name. It was contended on behalf of the defendant that no infringement was made out on its part as it was using the words “Global Limited” as suffix to the word “KSB”. The contention was however, rejected by this court noticing that the parties were in similar line of business and holding the rival marks were deceptively similar. The Court felt that a lay consumer could by association relate the origin of defendant‟s goods to that of the plaintiff.

17. In Ruston & Hornsby Ltd. (supra), the appellant was registered proprietor of trade mark “RUSTON” in Class 7 in respect of the diesel internal combustion engines. The respondent was found using the trademarks “RUSTAM” and „RUSTAM INDIA”. The High Court held that use of the word “RUSTAM” by the respondent constituted infringement of “RUSTOM INDIA” on the ground that the plaintiffs products were manufactured in England whereas the defendant was manufacturing them in India and the suffix “INDIA” would be a sufficient warning that the engines sold was not a “RUSTON” engine manufactured in England. Setting aside the decision of the High Court, Supreme Court held that if the respondent trade mark „RUSTOM” was deceptively similar to that of the appellant‟s trade mark “RUSTON”, the mere addition of word “INDIA” to the respondent‟s trade mark was of no consequence and the appellant was entitled to succeed in its action for infringement of trade mark.