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HIGH COURT OF DELHI
CS(COMM) 707/2023
NILKAMAL CRATES AND CONTANERS & ANR. ..... Plaintiffs
Through: Ms. Anju Agrawal, Dr. Mohan Dewan, Mr. Rahul Maratha, Mr. D. Pawar, Mr. B. Ghosh, Mr. Vardhman Jain and Mr. M.K. Bhargava, Advs.
Through: Mr. Satish Kumar, Mr. Sreejan Pankaj and Mr. Anil Kumar Sahu, Advs.
JUDGMENT
06.11.2023
1. Plaintiff 1 is the proprietor of various trademarks, registered under the Trade Marks Act, 1999, of which, for the purposes of the dispute at hand, one need only refer to the word mark NILKAMAL, registered w.e.f. 22 January 1999 and the device marks registered w.e.f. 6 December 2010 and registered w.e.f. 9 May 1996. Vide License Agreement dated 1 September 1998 Plaintiff 1 authorised Plaintiff 2 to manufacture, package, supply and render services of goods as mentioned in Schedule 1 of the license agreement. Plaintiff 2 is thus the licensee of Plaintiff 1 and is continuously using the trademark NILKAMAL.
2. The plaintiffs are using the aforesaid marks for, among other things, plastic moulded chairs. The plaintiffs claim user of the marks since 1999.
3. The plaintiffs are aggrieved by the use, by the defendants, of the mark NILKRANTI and the logo. The defendants, too, admittedly, uses the impugned marks for plastic moulded chairs.
4. Consequent to issuance of notice in this application, a reply has been filed by Mr. Satish Kumar.
5. I have heard Ms. Anju Agrawal and Mr. Satish Kumar at some length on this application.
6. To a query from the court as to how NILKAMAL and NILKRANTI could be treated as phonetically similar, Ms. Aggarwal emphasises the common prefix “NIL”. She submits that the defendants have clearly acted malafide, as is apparent from the deceptive similarity between the logo that they have adopted and the pre-existing logo of the plaintiffs.
7. Where the defendants are thus making a conscious attempt to copy the plaintiffs, she submits that an absolute inunction ought to be issued against the defendants using the mark NILKRANTI, whether as a word mark or as a logo. She submits that it would be perfectly open to the defendants to use “KRANTI” with any other prefix other than “NIL” and that, by employing the “NIL” prefix, seen in conjunction with the similarity between the logo that the defendants have chosen to adopt vis-à-vis the plaintiffs’ logo, the defendants’ intention to come as close to the plaintiffs as possible is evident. Without expressly citing it, Ms. Agrawal is, thereby, invoking the principle laid down by lord Justice Lindley in Slazenger & Sons v. Feltham & Co.1: "One must exercise one's common sense, and, if you are driven to the conclusion that what is intended to be done is to deceive if possible, I do not think it is stretching the imagination very much to credit the man with occasional success or possible success. Why should we be astute to say that he cannot succeed in doing that which he is straining every nerve to do?"
8. Ms. Agrawal has also placed reliance on the judgment of the Hon’ble Supreme Court in Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd[2], specifically citing para 16 of the said decision, which reads thus:
16. The plaintiffs cannot, therefore, claim a monopoly over the prefix “NIL” so as to injunct all others from using “NIL” as a prefix for the marks in respect of plastic moulded chairs or any other item or furniture for that matter.
17. Effect of registration of parts of a mark. – (1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole. (2) Notwithstanding anything contained in sub-section (1), when a trade mark— (a) contains any part—
(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.
17. The marks have, therefore, to be compared as a whole mark. Thus compared, there is no phonetic similarity between NILKAMAL and NILKRANTI. Para 16 of the decision in Cadila Health Care Ltd., in fact, would militate against the stand that Ms. Agarwal seeks to canvass, rather than support it.
18. Ms. Agarwal has drawn my attention to the Pianotist test, which has been emphasized in the said decision and which reads thus: “You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks”
19. If we apply the Pianotist test to the present case, it cannot be said that the marks NILKAMAL and NILKRANTI, seen as word marks, are so deceptively similar that a consumer of average intelligence and imperfect recollection is likely to confuse one for the other, or even to believe an association between the two within the meaning of Section 29(2)(b)8 of the Trade Marks Act.
29. Infringement of registered trade marks. – (1) 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. (2) 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 because of – (a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark,
20. As has been held by the Supreme Court in Amritdhara Pharmacy v. Satya Deo Gupta[9], a consumer who perceives the marks as whole marks does not vivisect or dissect them into their individual components. The consumer of average intelligence and imperfect recollection, who has first come across the mark NILKAMAL is likely to remember the NILKAMAL mark as a whole mark, and not in its individual components “NIL and “KAMAL”.
21. Seen thus, there is no similarity between NILKAMAL and NILKRANTI. In fact, the latter half of the two marks “KAMAL” and “KRANTI”, individually have their own distinct etymological connotations in vernacular, with the one meaning a lotus and the other a revolution.
22. There is really no reason why the court should presume a consumer of average intelligence and imperfect recollection to be likely either to confuse NILKAMAL with NILKRANTI or to believe NILKRANTI to have some association with NILKAMAL, a mark which he has seen some time past.
23. No case for interdicting the defendants from using the mark NILKRANTI as a word mark, therefore, exists. is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. AIR 1963 SC 449
24. However, insofar as the rival device marks are concerned, the plaintiffs possess a registration for the device mark. When the device marks and are compared, there is stark similarity between the two. In each case, the word NILKAMAL and NILKRANTI are written in similar blue letters. The words “Nilkamal” and “Nilkranti” and both underlined. The “n figures” over the name NILKAMAL and NILKRANTI ( and ) are also similar to each other, though the central lotus and “H” figures may differ. In each case, the word has been encased in an elliptical border.
25. A consumer of average intelligence and imperfect recollection who has come across the plaintiffs’ device mark affixed on a chair, at one point of time and, at a later point of time, comes across the defendants’ device mark, also affixed on a similar chair, has every likelihood of being confused between the two, or at least on believing that they are two marks belonging to the same person and are, therefore, associated.
26. The mere fact that, within the upper “n”, the plaintiffs’ mark has the figure of a lotus whereas the defendants’ have the figure “H” does not, in my view, make any substantial difference. When viewed as overall marks, the average consumer is not likely to remember such minute details of the two marks. The overall impression that the marks would convey in the eyes of such a consumer would definitely be confusing, in my prima facie view.
27. Mr. Satish Kumar sought to place reliance on the fact that the registrations for the device marks and was granted to the plaintiff by inserting a disclaimer, disclaiming all rights to exclusivity in respect of user of the letter “N”. As I have already held in Pernod Ricard India Pvt. Ltd. v. A.B. Sugars Ltd.10, the only effect of such a disclaimer is that the plaintiff cannot seek an injunction against infringement, by claiming exclusivity over the disclaimed part. In other words, had the plaintiffs’ claim been that the defendants’ mark was deceptively simlar to the plaintiffs only because of the common “N” motif, the plaintiffs would have had no case, as “N” was specifically disclaimed while obtaining registration for the device mark.
28. That, however, is not the case. Seen as overall whole marks, I am prima facie satisfied that the device mark is deceptively similar to the plaintiffs’ device mark.
29. I must record, here, that Mr. Satish Kumar, very fairly, on instructions, assured that his client would cease using the device mark and would, if it chose to adopt any other device mark, ensure that it is not confusingly or deceptively similar to the and device marks of the plaintiffs.
30. In view of the aforesaid discussion, though I find no deceptively similarity between NILKRANTI and NILKAMAL as word marks, I do find the device to be deceptively similar to the device mark. In view thereof, I do not deem it necessary to enter into the aspect of passing off.
31. The present application is, therefore, disposed of in the following terms:
(i) The prayer of the plaintiffs to restrain the defendants from using NILKRANTI as a word mark, either for chairs or for any other item, is rejected.
(ii) However, the defendants shall stand restrained from using the device mark, or any other device mark which is confusingly or deceptively similar to the device marks and of the plaintiffs.
(iii) It is clarified that the defendants would be at liberty to use “NILKRANTI” in any other manner which does not infringe the and device marks of the plaintiffs.
(iv) Insofar as the chairs which have been inventorised and seized by the local Commissioner pursuant to the orders passed by this Court are concerned, the defendants would be at liberty to dispose of the chairs, but after removing, from the chairs, the infringing labels.
(v) Any such removal of labels and disposal of chairs shall take place in the presence of the representatives of the plaintiffs. In case any such removal is to be undertaken, details thereof shall be placed on record before this Court, by the defendants, on affidavit.
(vi) The defendants shall place on record the figures of stock and sales of chairs affixed with the infringing device mark, manufactured and sold by them since the inception of use of the mark.
32. IA 19600/2023 stands disposed of accordingly.
C. HARI SHANKAR, J.