Holyland Marketing Pvt. Ltd. v. Vijay Pal Vineet Kumar and Co. and Ors.

1. This is a petition under Section 571 of the Trade Marks Act, 1999, seeking rectification of the Register of Trade Marks by removal, therefrom, of the device mark, registered in favour of Respondent 1 vide Certificate No. 1494360 dated 18th March 2017, with effect from 17th May 2016. The status page of the said mark, as

57. Power to cancel or vary registration and to rectify the register. – (1) On application made in the prescribed manner to the High Court or to the Registrar by any person aggrieved, the Registrar or the High Court, as the case may be, may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto. (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the Registrar, and the Registrar or the High Court, as the case may be, may make such order for making, expunging or varying the entry as it may think fit. available on the website of the Registrar of Trade Marks, indicates that Respondent 1 was claiming user since 1st April 2007. The impugned mark, as it presently stands, is valid till 17th May 2026.

2. The petitioner is the holder of a registration for the device mark, vide certificate no. 530145 dated 11th May 2006, with effect from 23rd July 2001.

3. The petitioner’s mark is registered in Class 30 in respect of Monosodium Glutamate (MSG), whereas Respondent 1’s mark is registered in respect of “Monosodium Glutamate Citric Acid, Mitta Soda and Chemical Substances for Preserving Foodstuffs” in Class 1.

4. Ms. Rhea Chawla, learned Counsel for the petitioner, points out, at the outset, that the registration of the impugned mark in favour of Respondent 1 is in the wrong class, as the category of goods in respect of which the mark stands registered in favour of Respondent 1 falls within Class 30 of the NICE Classification, and not Class 1. Classes 1 and 30 of the Nice Classification, it may be noted, read thus: “Class 1 - Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry. Class 30 - Coffee, tea, cocoa; sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.”

5. Section 57 of the Trade Marks Act empowers the Court to make, expunge or vary the entry relating to the registration of the impugned trade mark in the register of trade marks. As such, even if the impugned mark has been registered in favour of Respondent 1 under a wrong class, it would not make out a case for expunction of the registration; at the highest, the Court would appropriately have to direct the Registrar to reconsider the application for registration of the impugned mark under the appropriate class.

6. However, Ms Chawla has advanced a second submission which goes to vitiate the impugned registration in toto.

7. Ms. Chawla submits that the impugned mark of Respondent 1 is deceptively similar to the mark of the petitioner. The respondent’s mark is “Golden Queen” whereas the petitioner’s mark is “Golden Crown”. Both the marks are used on packages with nearly identical trade dresses. Ms. Chawla further submits that the textual material on the two packs is also nearly the same. In fact, she submits that the text in Mandarin, on the face of the two packs, is identical and that the text on the reverse of the two packs is also nearly identical and, further, laid out in a similar fashion, in two vertical yellow bars on a green background.

8. That the submissions of Ms. Chawla, regarding similarity of trade dress, are correct, is apparent from a bare glance at the front and the rear of the rival packages. Ms. Chawla has provided, to the Court, physical copies of the two packages, and the Court has itself taken photographs of the front and the rear of the two packages, which may be placed one below the other, as under: Petitioner Respondent 1 Face of Rear of the Packs

9. Though I confess not to knowing Mandarin, it is apparent from a glance at the text, in Mandarin, on the face of the two packages, that the text is identical. The trade dress of the two packages is also, at a bare glance, nearly identical. Respondent 1 has adopted a colour combination and a lay out of the various images on the front as well as the rear of the packages, which is deceptively similar to the trade dress and lay out of the package of the petitioner. The only difference is that the face of the petitioner’s pack shows two lions, whereas the face of the respondent’s pack shows two antelopes. However, one has to strain to note the difference.

10. The text and lay out on the rear of the two packages is also similar and it is clear that Respondent 1 has adopted the text used by the petitioner, merely making certain cosmetic and inconsequential changes.

11. The name adopted by the Respondent 1 is also deceptively similar to that of the petitioner. One cannot ignore the link between a queen and her crown. The mark of the petitioner is Golden Crown, whereas the mark of Respondent 1 is Golden Queen. Eschewing from consideration the common, and somewhat laudatory, “Golden” part of the two marks, the remaining parts of the two marks, “Queen” and “Crown”, convey cognate ideas. There is, therefore, also an element of idea infringement between the two marks, as they communicate similar or nearly similar ideas. One is reminded of the judgement of the Division Bench of this Court in Shree Nath Heritage Liquor Pvt Ltd v. Allied Blenders & Distillers Pvt Ltd[2], which held the marks “Officer’s Choice” and “Collector’s Choice”, when used for whisky, on the ground that “Collector” and “Officer” were hyponyms of the hypernym “persons holding office”, and “choice” was a common laudatory epithet.

12. The two packs, as well as the rival marks, viewed holistically, clearly fall within the mischief of Section 11(1)(b)3 of the Trade Marks Act, 1999. The marks of the plaintiff and defendant are deceptively similar, whether one compares the marks GOLDEN CROWN and GOLDEN QUEEN or the design of the packs, which are registered as device marks in favour of the petitioner and Respondent 1, of the trade dresses of the rival packs. There is, in fact, a conscious attempt, on the part of Defendant 1, to adopt a trade dress, for its 221 (2015) DLT 359: 2015 (63) PTC 551

11. Relative grounds for refusal of registration. – (1) Save as provided in Section 12, a trade mark shall not be registered if, because of – ***** (b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. packing, which is as similar to the plaintiff’s pack as possible. Where such a nefarious design is apparent, the following exordium of Lord Lindley, in Slazenger & Sons v. Feltham & Co.[4] would apply: “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?”

13. The petitioner has, to its credit, priority both of registration and of user. As such, the impugned mark of Respondent 1 was ineligible for registration, being hit by Section 11(1)(b) of the Trade Marks Act.