Alphavector India Pvt. Ltd. v. M/S Sach Industries & Ors.

10. The plaintiff has placed, on record, photographs of the bicycles of the plaintiff and the defendants which reflect the use of the marks “NINETY ONE” by the plaintiff and “NINETY NINE” by the defendants, on the body of the bicycles, both in numerals as well as in words, thus: Plaintiff‟s mark Defendants‟ mark

11. Neither the plaintiff, nor the defendants, have any registration in the mark “91” or “99” per se, whether in numerals or in words. The plaintiff alleges that, by use of the mark “99” as well as “NINETY NINE” on bicycles, the defendants have infringed the plaintiff‟s registered marks, in each of which “91” is the dominant part, and also passed off their goods as goods which are either manufactured by the plaintiff or associated with the plaintiff.

12. Predicated on these allegations, the plaintiff has, by the present suit, sought injunctive reliefs against the defendants from using the impugned “99” mark, whether in words or in numerals, along with reliefs of delivery-up, rendition of accounts, costs and damages.

13. I.A. 16353/2022, filed with the plaint, seeks interlocutory injunction against the defendants as well as all others acting on their behalf using the impugned mark, pending disposal of the suit. Rival submissions Submissions of Mr. Aditya Gupta

14. Mr. Aditya Gupta, learned Counsel for the plaintiff, has drawn my attention to the pictures of the bicycles manufactured by the plaintiff and the defendants. He points out that “91” and “99”, in numerals, are predominantly figuring on the seat of the bicycles. Side by side, he submits that on the cross bars of the bicycles, the marks “NINETY ONE” and “NINETY NINE”, are prominently printed. The lettering and font in which the defendants have printed their “NINETY NINE” mark is, submits Mr. Gupta, identical to the lettering and font of the “NINETY ONE” mark of the plaintiff, resulting in every likelihood of confusion in the purchaser mistaking the bicycles of the defendants for those of the plaintiff.

15. Mr. Gupta submits that, by using the mark “99”, in which the first numeral “9” is common to the mark of the plaintiff, the intent of the defendants to confuse prospective customers is apparent. The possibility of such confusion, he submits, stands enhanced when comparing the marks as written in words, as each mark starts with “NINETY”. The formative similarity between the numerals “1” and “9” read with the usage, by the defendants, of the mark “NINETY NINE” in letters and font identical to that used by the plaintiff, he submits, discloses a clear intent to confuse the customer who, given the nature of the goods on which the marks are used, has every likelihood of being so confused.

16. Mr. Aditya Gupta has drawn my attention to the written communications from the plaintiff, to the defendant, in which the plaintiff called upon the defendant to cease and desist from using the allegedly infringing “99” marks. He submits that, though the defendants undertook to stop using the marks, they continued to do so, resulting in the plaintiff being constrained to approach this Court.

17. Mr. Aditya Gupta has also drawn attention to the Facebook post of the defendants, in which they have represented their “99” marks both in numerals as well as in word format. He has also drawn my attention to invoices raised by the defendants, which refer to the brand as “NINETY NINE” only in word format.

18. In these circumstances, Mr. Aditya Gupta submits that a clear case of possibility of confusion, by the use of the defendants of the mark “99”, in numerals and in word form, on bicycles, is made out. He also asserts the plea of infringement, stating that, in view of the registration held by the plaintiff in various marks in which “91” is the dominant part, the use of “99” by the defendants infringes the registered trade marks of the plaintiff.

19. Mr. Aditya Gupta submits that the only defence that the defendants have sought to urge in response to the case that the plaintiff has attempted to set up, is that of priority of user. He points out that the defendants have relied, in this context, on certain invoices, which are placed from pages 17 to 58 of the documents filed by the defendants. Mr. Gupta submits that these documents cannot be relied upon, as they are fabricated. He has, in particular, drawn my attention to Invoice No. 20 dated 7th April 2018, placed on record by the defendants, with their written statement, the relevant part of which appears thus: “ ”

20. The very same invoice, submits Mr. Gupta, was filed by the defendants with the affidavit of user, filed before the Ld. Registrar of Trade Marks, in support of their application seeking registration of the “ONLY99” mark. When one compares the invoice filed with the said affidavit of user with the invoice placed on record by the defendants before this Court with the written statement, he submits that a startling difference becomes apparent. Invoice No. 20 dated 7th April 2018, as filed by the defendants with the affidavit of user submitted to the registration of the “ONLY99” mark, looks like thus:

21. Between these two documents, which are copies of the same invoice, Mr. Aditya Gupta points out that “ ” logo, which is present on the body of the invoice as filed before the Registrar of Trademarks, is absent in the invoice as filed before this Court. The reason for this, he submits, is to be found in para 4 of the written statement filed by the defendants by way of response to the plaint, in which it is stated thus:

22. Mr. Gupta submits that while, in para 4 of the written statement, the defendants have stated that the trade mark “ ”, was adopted by them only in June 2020, the invoice dated 7th April 2018, filed with the affidavit of user in support of the application seeking registration of the “ONLY99” mark, contained, at the upper left corner, the mark. It was apparently to tide over this discrepancy, submits Mr. Gupta, that the defendants, in the Invoice No. 20 dated 7th April 2018, filed with the written statement before this Court, effaced the “ ” logo from the invoice.

23. Similar discrepancy, he submits, is to be found in respect of Invoice No. 2 dated 1st April 2019. The copy of the invoice as filed by the defendants with the user affidavit filed before the Registrar of Trade Marks for registration of the “Only99” mark contains the “ ” logo whereas in the very same invoice as filed before this Court, the “ ” logo is conspicuously absent. The relevant part of the said invoices may be represented as under: Copy of invoice as filed before the Registrar of Trade Marks Copy of invoice as filed before this Court with the written statement.

24. A third discrepancy, to which Mr. Gupta has drawn my attention, is with respect to Invoice No. BT[3] dated 1st April 2014, which uses the mark “Sachin99” in the description of goods covered by the invoice. He submits that the invoice contains a column for a GSTIN No. and also refers to the rate of GST (percentage), relating to the goods covered by the invoice, as 5.5%. GST (Goods and Services Tax), he submits, was introduced in India only w.e.f. 1st July 2017 and there is, therefore, no explanation as to how an invoice of 1st April 2014 contains a space for entering the GSTIN No. and also referred to the GST percentage relating to the goods. This invoice, too, therefore, submits Mr. Gupta, is fabricated.

25. Mr. Gupta submits that a defendant who has resorted to fabrication of invoices to support its case, and has placed on record, before this Court, tampered documents, cannot seek succour. He placed reliance on the recent decision of this Bench in Armasuisse v. The Trade Mark Registry[1].

26. Mr. Gupta has also drawn my attention to screenshots from the Facebook posts of the defendants, filed by the plaintiff under cover of an index dated 9th April 2022. He submits that the documents figuring from pages 1 to 51 of the documents filed with the said index, reveal that, till 21st June 2021, the defendants were only using the marks “Sachin”, “Zipper”, etc. while advertising their products on their Facebook page, with no “99”, whether in words, in numerals or figuring. Suddenly, he submits, with reference to the documents filed from page 52 onwards with the said index, the defendants started 2023/DHC/000019 using the “99” both in numerals as well as in words from 18th July

2021.

27. In this context, Mr. Aditya Gupta has placed especial reliance on the following Facebook posts of the defendants dated 18th July 2021:

28. Mr. Aditya Gupta points out that, along side the pictorial caption in the said post, the defendants have entered, as an accompanying message, “Born to shine 99 comes at your door step”. This, submits Mr. Gupta, indicates that the “99” mark had merely reached the door steps of the prospective customers on 18th July 2021, so that all assertions of prior user of the “99” mark, whether in conjunction with “only” or “Sachin”, are bereft of merit. He submits that no Facebook posts of the defendants prior to 18th July 2021, contain “99”, whether in words or in numerals, whereas every Facebook post, after 18th July 2021, prominently contains the “99” both in words as well as in numerals.

29. Mr. Gupta also points out that, in their application for registration of the device mark “ ”, the defendants claimed user of the mark since 17th June 2021. Mr. Gupta further submits that the claim of prior user is an afterthought, introduced only before this Court in the response filed to the plaint instituted by the plaintiff. He points out that the defendants instituted a suit against the plaintiff before the District Court, Ludhiana, for a restraint against the plaintiff from obtaining an injunction against the defendants from using the “99” marks but that, in the said suit, there was no claim of prior user. He has also pointed out that, in the reply dated 7th June 2021, filed by the defendants to the legal notice of the plaintiff, the defendants did not plead prior user.

30. Mr. Gupta has also placed reliance on various decisions to support the plea of deceptively similarity, including Kirorimal Kashiram Marketing & Agencies v. Shree Sita Chawal Udyog Mill[2]. However, as Mr. Puri, learned Counsel for the defendants, has not chosen to advance any submission on the aspect of similarity, it is not necessary for this Court to refer to the said decisions.

31. Responding to the submissions of Mr. Gupta, Mr. V.K.Puri, appearing for the defendants, has restricted his defence to the aspect of prior user. Mr. Puri as drawn my attention to para 4 of the written statement filed by way of response to the plaint, in which it is specifically pleaded that the defendants had, in 2006, coined, conceived and adopted the trade mark “Sachin 99” and, in 2018, the trade mark “Only99”. These, as also the impugned trade mark “99” submits Mr. Puri, are part of the “99 Family of Trademarks”. As such, Mr. Puri submits that the defendants are prior user of the “99” marks, albeit in conjunction with “Only” and “Sachin”. By dint of priority of user, Mr. Puri seeks vacation of the ad interim interlocutory injunction (2010) 44 PTC 293 granted by this Court on 11th October 2022.

32. Mr. Puri has drawn my attention to the fact that, while applying for registration of the “Only99” mark, the defendants had claimed user since 7th April 2018. He has also relied on an invoice No. 561, and other such invoices of 2008 which, according to him, do reflect user of the mark “Sachin99”. He has also drawn my attention to Invoice No. RT144 dated 5th May 2017, Invoice No. 717, dated 27th December 2017 and Invoice No. 128 dated 11th August 2017 in which, in the description of goods covered by the invoice, “Only99” figures.

33. Apropos the discrepancy between Invoice No. 2 dated 1st April 2019 and Invoice No. 20, dated 7th April 2018, as filed by the user affidavit before the Registrar of Trademarks and as filed with the written statement before this Court, Mr. Puri submits that the defendants had directed its IT officials to efface, from the copy of the invoice, as filed before this Court, the logo, in order to avoid contempt action, or any adverse observations from this Court.

34. In any event, as, in his submission, the defendants have the benefit of priority of user of “99”, there can be no question of any further continuance, against them, of the ad interim injunction granted by this Court.

35. In brief submissions advanced by way of rejoinder, Mr. Aditya Gupta submits that the acknowledgement, by the defendant, of the fact that they had instructed their officials to remove, the “ ” logo from the copies of Invoice No. 2 and Invoice No. 20, as filed before this Court, indicates that tampered documents have been placed on record before this Court, which itself disentitles the defendants to any relief. He submits that a defendant who resorts to such machinations with respect to documents placed on record, cannot enjoy any credibility whatsoever, and that all the invoices that they have placed on record are liable to be rejected as a whole even on this ground.

36. In order to further bolster the submission of sharp practices having been adopted by the defendants, Mr. Gupta points out that while, in the application for registration of the “Only99” mark, the defendants claimed user w.e.f. 7th April 2018, Invoice No. 717 dated 27th December 2017, on which Mr. Puri placed reliance, reflected user of “Only99” prior to 7th April 2018. This itself indicates that the claim of priority of user, as urged by the defendants, is completely unbelievable.

37. Mr. Gupta submits that, in any event, there is no explanation as to how the “ ” logo figures in the invoices issued prior to June 2020, when the “NINETY NINE” mark was claimed to have been coined by the defendants only in the said month. Mr. Gupta also submits that the explanation, by the defendants, regarding GST rates figuring in invoices raised more than three years prior to introduction of GST in India is also too facile to merit acceptance.

38. For all these reasons, Mr. Gupta exhorts this court to confirm the ad interim order dated 11th October 2022 passed by this Court and, consequently, to allow I.A. 16353/2022 and dismiss I.A. 21448/2022. Analysis Re: priority of user

39. Mr. Puri has not chosen to address any submission on the aspect of infringement and has restricted his defence to the claim of priority of user. According to Mr. Puri, the defendants have been using the mark “99”, albeit with the suffix “Only” or “Sachin”, much prior to 2020, when the plaintiff claims to have commenced using the “91” marks on its bicycles. In support of his plea of priority of user, Mr. Puri has relied on (i) para 4 of the written statement filed by way of response to the plaint, (ii) the application for registration of the “only 99” word mark, filed by the defendants with the Registry of Trade Marks, in which user was claimed w.e.f. 7th April 2018, (iii) certain hand-written invoices of 2008, in which the description of the product contains the mark “Sachin 99” and (iv) Invoices No. RT144 dated 5th May 2017, No. 717, dated 27th December 2017 and No. 128 dated 11th August 2017, in which the description of the goods covered by the invoices contained the mark “Only99”.

40. I am unable to accept the plea of priority of user, as advanced by Mr. Puri, for the following reasons:

(i) Though, in para 4 of the written statement, it is stated that the defendants adopted the trademark “Only99” in 2018, the first of the three invoices on which Mr. Puri relies on evidence prior user of the “Only99” mark is dated 5th May 2017.

(ii) Invoice No. 2 dated 1st April 2019 and Invoice No. 20, dated 7th April 2018, as filed by the defendants with the written statement, do not contain the “ ” logo, whereas the copies of the very same invoices, as filed by the defendants with the Registry of Trade Marks in support of the user affidavit acccompanying the application for registration of the “Only99” trade mark, contained the said logo. The submission of Mr. Puri, in this regard, is truly disquieting. Mr. Puri‟s contention is that the invoices did, indeed, contain the “ ” logo, but that in order to avoid adverse orders from this Court, the defendants had instructed their IT personnel to efface, from the copies of the invoices as filed before this Court, with the written statement, the “ ”. This is an extremely serious matter and may invite penal action. The invoices clearly stand denunded of credibility even on this sole ground.

(iii) Besides, Mr. Aditya Gupta points out, in their written statement, the defedants have averred that the “ ” mark was devised by the defendants only in June 2020. It defeats comprehension, therefore, as to how the said mark could figure on the body of invoices dated 7th April 2018 and 1st April 2019.

(iv) The defendants have also placed on record, invoice dated

1st April 2014, and other invoices of like dates, which reflect entries relating to GST percentage and also contains a space for entering the GSTIN No. As Mr. Aditya Gupta points out, GST was introduced only w.e.f. 1st July 2017. Mr. Puri‟s explanation, in this regard, that the entry of the GST percentage was owing to certain peculiarities in the software used by the defendants, is completely unsubstantiated either by pleadings or material.

(v) Mr. Puri has advanced no submission by way of response to the contention of Mr. Aditya Gupta that, in all Facebook posts of the defendants prior to 18th July 2021, there is no reference to “99” and that, in all posts, starting 18th July 2021, “99”, both in words as well as in numerals, figure.

(vi) There is also, prima facie, substance in Mr. Gupta‟s reliance on the posting, in the Facebook post dated 18th July 2021 of the defendants, which reads “Born to shine 99 comes at your doorstep”. This, too, indicates that “99” was used by the defendants, for their products, only on or after 18th July 2021. To this, too, no explanation is forthcoming from Mr. Puri.

(vii) Equally, there is substance in the reliance, by Mr. Gupta, on the suit instituted by the defendants in Ludhiana against the plaintiff, as well as the defendants‟ reply dated 7th July 2021 to the plaintiff‟s legal notice, in neither of which any plea of priority of user was raised.

41. Weighed in the balance, therefore, the invoices, which are the only documents relied upon by Mr. Puri to substantiate the claim of priority of user, do not inspire confidence. Barring the invoices, Mr. Puri has not adverted to any material which indicates sale, purchase or any other transactions of goods bearing the mark “99”, with or without any suffix or prefix, prior to 2020. The Facebook posts of the defendants, the suit instituted by the defendants against the plaintiff in Ludhiana and the reply dated 7th July 2021, by the defendants to the plaintiff‟s legal notice, suggests, to the contrary, that user, by the defendants, of “99” never took place on or before 18th July 2021 at the earliest. Prima facie, therefore, the plea of priority of user, as urged by Mr. Puri, does not merit acceptance. Re: infringement

42. Apropos the aspect of deceptive similarity, though Mr. Puri has not sought to contest the submissions of Mr. Gupta on the point, even on merits, the submissions commend acceptance. Both “91” and “99”, whether used in words or in numerals, are arbitrary when used in respect of cycles and cannot be treated as descriptive. As an arbitrary mark, “91” or “NINETY ONE” is entitled to greater protection under the Trade Marks Act. The defendants have no explanation as to why they have chosen to use the mark “99”. The mark “99”, when used on a bicycle, is clearly deceptively similar to the mark “91” especially as the first digit of both numbers, “9” is the same. Additionally, the placement of the respective marks on the cycles is also similar, to the extent that the manner in which the defendants have written “NINETY NINE”, on the cross bar of their bicycles, is clearly deceptively similar to the writing “NINETY ONE” on the cross bar of the plaintiff‟s bicycle.

43. Viewed from anything but arm‟s length distance, it is practically impossible to distinguish the “NINETY NINE” lettering printed on the crossbar of the defendant‟s bicycle from the “NINETY ONE” lettering on the crossbar of the plaintiff‟s. The difficulty is compounded by the fact that the first word of six letters and the last two letters of the second word, viz. “NINETY..NE” are the same. It is a matter of common experience that, in such a case, where the marks are in a slanted form on the cross-bar of the bicycles, the eye would not notice the “O” in one case and “NI” in the other.

44. There is also, prima facie, substance in Mr Aditya Gupta‟s submission that the selection, by the defendant, of a two digit number in the nineties is not a mere coincidence, but is intended to confuse an average customer, of imperfect recollection, between the “99” bicycle of the defendants and the “91” bicycle of the plaintiff.

45. Two important principles, which do not emanate directly from the Trade Marks Act but are obviously enunciated in furtherance of its objectives and to ensure its proper implementation, have evolved over a period of time. These are that (i) where there is clear imitation with an intent to deceive, the Court must not bend backwards to presume that the intent is not successful, and (ii) where there is intent to deceive, the Court must pay greater attention to the similarities between the competing marks, and avoid searching, instead, for dissimilarities. The former owes itself to the exhortation of Lord Lindley, LJ in Slazenger & Sons v. Feltham & Co.[3] and the latter to the words of Justice Kekewich in Munday v. Carey[4].

46. Lindley, LJ, observed, in Slazenger[3], thus: "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?"

47. Kekewich, J. spoke thus, in Munday[4]: "Where you see dishonesty, then even though the similarity were less than it is here, you ought, I think, to pay great attention to the items of similarity, and less to the items of dissimilarity." (1889) 6 RPC 531 (1905) R.P.C. 273

48. Suffice it to state that both these principles have been applied by this Court in a plethora of judgments, with which I do not deem it necessary to burden this decision.

49. Applying these principles, the similarities between the plaintiff‟s “91”/“NINETY ONE” marks and the defendants‟ “99”/“NINETY NINE” marks are too many to ignore. The defendants are, prima facie, culpable of having infringed the plaintiff‟s “91” marks, as well as having sought to pass off their bicycles, by using the “99”/“NINETY NINE” marks in a manner which would confuse the customer of average intelligence and imperfect recollection into believing the defendants‟ bicycles to be the plaintiff‟s.

50. For the aforesaid reasons, the interim order dated 11th October 2022 is made absolute pending disposal of the suit.

51. I.A. 16353/2022 stands allowed accordingly.

52. I.A. 21448/2022 is dismissed. I.A. 19344/2022 (under Order XXXIX Rule 2A of CPC)

53. List this application for hearing and disposal on 24th February

2023.

C. HARI SHANKAR, J. FEBRUARY 1, 2023