Lifestyle Equities C.V. & Ors. v. Royal County of Berkshire Polo Club Ltd. & Ors.

(v) Reliance is also sought to be placed on an order passed by the Second

Board of Appeal in case R. 1374/2012-2, dated 25.07.2013 between the parties titled Lifestyle Equities CV vs. Royal County of Berkshire Polo Club Limited which dealt with an application filed by the defendants herein which sought to register its trade device under various classes. The order went on to record that the signs in issue are having visual, phonetic and conceptual similarities and are identical in nature with respect to the goods concerned.

11. Learned senior counsel for the defendants has stated as follows:-

(i) It is pleaded that horse is a common feature in a lot of marks as it portrays strength and beauty. Plaintiffs cannot claim exclusivity to a horse device. It has also stated that the plaintiffs are mere pirates. Their device is a copy of the device used by Ralph Lauren and Denver.

(ii) It is pleaded that the device, namely, a polo player on a horse is juris publici. Plaintiffs cannot claim any exclusive use of a polo playing player.

(iii) Further, it has been pleaded that there are various differences in the device used by the plaintiffs and the defendants. The figures of the horse are different. The defendant‟s horse is only half a horse. The font used is different. The writing appears at a different place. Reliance is placed on section 35 of the Trademarks Act, 1999.

(iv) It is further pleaded that the defendants are a prestigious polo club in

England. Prince Charles is also a member of the Club. Whereas the plaintiffs are not a polo club. Being a polo club the defendant is entitled to use the device of polo playing player.

(v) It is reiterated that what is registered is the full logo and not the figure of the horse. A false representation is being made that the figure of the horse is registered. Use of the horse would not amount to deceptive similarity. Reliance is placed on the judgment of this Court in Intex Technologies (India) Ltd. and Ors. vs. AZ Tech (India) and Ors. 2017 (70) PTC 118. Similarly, it is stated that the trade dress is different.

(vi) It is also pleaded that the use by the defendant of the impugned device is bona fide and has started two years ago.

12. The first issue that arises is as to whether the trademark used by the defendants are deceptively similar to the registered mark of the plaintiffs. In this context, reference may be had to the judgment of the Supreme Court in Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 where the Supreme Court held as follows:-

16. ……It is important that the marks must be compared as wholes. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. Thus in Lavroma case Lord Johnston said: we are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop." On the facts of that case this Court came to the conclusion that taking into account all circumstances the words Protovit and Dropovit were so dissimilar that there was no reasonable probability of confusion between the words either from visual or phonetic point of view. xxx

19. With respect, we are unable to agree that the principle of phonetic similarity has to be jettisoned when the manner in which the competing words are written is different and the conclusion so arrived at is clearly contrary to the binding precedent of this Court in Amritdharas case (supra) where the phonetic similarity was applied by judging the two competing marks. Similarly, in Durga Dutt Sharmas case (supra), it was observed that: In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendants mark is likely to deceive, but where the similarity between the plaintiffs and the defendants mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiffs rights are violated.”

13. Reference may also be had to the judgment of the Supreme Court in the case of Amritdhara Pharmacy v. Satya Deo Gupta, (supra). That was a case in which the respondent had applied for registration of the trade name „Lakshmandhara‟. The appellant stated that the word „Amritdhara‟ was already registered as a trade name and filed its objections. The Supreme Court held as follows: “7. Let us apply these tests to the facts of the case under our consideration. It is not disputed before us that the two names 'Amritdhara' and 'Lakshmandhara' are in use in respect of the same description of goods, namely, a medicinal preparation for the alleviation of various ailments. Such medicinal preparation will be purchased mostly by people who instead of going to a doctor wish to purchase a medicine for the quick alleviation of their suffering, both villagers and townsfolk, literate as well as illiterate. As we said in Corn Products Refining v. Shangrila Food Products Ltd. [1960]1SCR968, the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the two names 'Amritdhara' and 'Lakshmandhara' is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of the two composite words 'Amritdhara' and 'Lakshmandhara'. We do not think that the learned Judges of the High Court were right in saying that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or even consider meanings of the composite words as 'current of nectar' or 'current of Lakshman'. He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a persons educated in the Hindi language would go by the etymological or ideological meaning and, see the difference between 'current of nectar' and 'current of Lakshman'. Current of Lakshman in a literal sense has no meaning to give it meaning one must further make the inference that the 'current or stream' is as pure and strong as Lakshman of the Ramayana. An ordinary Indian villager or townsmen will perhaps know Lakshman, the story of the Ramayana being familiar to him, but we doubt if he would etymologine to the extent of seeing the so called ideological difference between 'Amritdhara' and 'Lakshmandhara'. He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailments.

8. We agree that the use of the word 'dhara' which literally means 'current or stream' is not by itself decisive of the matter. What we have to consider here is the overall similarity of the composite words, having regard to the circumstance that the goods bearing the two names are medicinal preparations of the same description. We are aware that the admission of a mark is not to be refused, because unusually stupid people, "fools or idiots", may be deceived. A critical comparison of the two names may disclose some points of difference, but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. The trade mark is the whole thing - the whole word has to be considered. In the case of the application to register 'Erectiks' (opposed by the proprietors of the trade mark 'Erector') Farwell,

9. Nor do we think that the High Court was right in thinking that the appellant was claiming a monoploy in the common Hindi word 'dhara'. We do not think that is quite the position here. What the appellant is claiming is its right under s. 21 of the Act, the exclusive right to the use of its trade mark, and to oppose the registration of a trade mark which so nearly resembles its trade mark that it is likely to deceive or cause confusion.”

14. The Supreme Court in Ramdev Food Products (P) Ltd. vs. Arvindbhai Rambhai Patel and Others, (2006) 8 SCC 726 held as follows:- “91. Although the defendant may not be using the actual trade mark of the plaintiff, the get-up of the defendant's goods may be so much like the plaintiff's that a clear case of passing-off could be proved. It is also possible that the defendant may be using the plaintiff's mark, the get-up of the defendant's goods may be so different from the get-up of the plaintiff's goods and the prices also may be so different that there would be no probability of deception to the public. However, in an infringement action, an injunction would be issued if it is proved that the defendant is improperly using the plaintiff's mark. In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the court will not enquire whether the infringement is such as is likely to deceive or cause confusion. The test, therefore, is as to likelihood of confusion or deception arising from similarity of marks, and is the same both in infringement and passing-off actions. (See Ruston & Hornsby Ltd. v. Zamindara Engg. Co. [(1969) 2 SCC 727] )”

15. Similarly, reference may also be had to the judgment of the Division Bench of this court in the case of United Biotech Pvt. Ltd. v. Orchid Chemicals Ltd. & Ors. (supra). In that case, the Division Bench was dealing with a case where the appellant had got registration of the trade mark FORZID in class 5. The respondent objected to this and filed an application for removal of the aforesaid mark on the ground that the said trade mark FORZID was deceptively similar to an earlier registered trade mark ORZID (lebel mark) standing registration in the name of respondent No.1 in class 5. IPAB allowed the rectification of the application with the direction to the appellant from the register. In those facts the Division Bench held as follows: “22. The argument was that as per sub-Section (1) of Section 17 of the Act, the exclusive right of the registered proprietor is to use the trademark "taken as a whole" and not "in part" which the respondent was trying to claim. It was argued that from the reading of the latter part of sub-Section(2) of the aforesaid provision. It was made abundantly clear that the registration would not confer any right in the matter forming only art of the whole of the trade mark was registered and the IPAB had ignored the words "not" and "in" occurring in this petition thereby committing a grave error. Relying upon the judgment in the case of Aravind Laboratories Vs. Modicare (decided on 05.07.2011), which is a Single Bench judgment of the Madras High Court. It was argued that the objects & reasons behind insertion of Section of the Trade Mark Act, 1999 were to omit the provision relating to requirement of disclaimer under Section 17 of the Trade and Merchandise Marks Act, 1958 and to explicitly state the general proposition that the registration of a trade mark confers exclusive right to the use of the trade mark taken as a whole and not separately to each of its constituent part. To buttress this submission, reference was made to Section 15 of the Act which permits a proprietor of a trade mark to apply for parts of a trade mark, if he claims to be entitled to the exclusive use of any part thereof separately. It was argued that since this was not done by the respondent in the instant case, it was permissible for the respondent to claim statutory right in the word "ORZID" (perse)…… …….

25. The entire arguments are on the wrong premise and it proceeds on the basis of common feature of the two marks suffix "ZID" and since the respondent has registration and trade mark "ORZID", it cannot bare a part of it, i.e., "ZID". What has been seen in a case like this is as to whether the mark "FORZID" is deceptively similar to "ORZID". That is the test which is to be applied and in a process, it is to be seen as to whether the two marks are structurally and phonetically similar and would cause deception in the minds of consumers. When we judge the matter from this angle, we find ourselves in agreement with the view taken by IPAB as well as the learned Single Judge. Although the mark "ORZID" is a label mark, the word mark "ORZID" is an essential feature which has been covered by the registration. Therefore, the learned counsel for the respondent appears to be right in his submission on this aspect, which is predicated on the Supreme Court decision in Ramdev Food Products Ltd. (supra). Following dicta on the said decision is pertinent:

82. In Ashok Chandra Rakhit Ltd. (supra), whereupon reliance has been placed by Mr. Nariman, this Court was concerned with a proprietary mark of 'Shree'. It was claimed that the mark 'Shree' was a trade mark apart from the device as a whole and it was an important feature of its device. The respondents were carrying on business in the name and style of Shree Durga Charan Rakshit. It was in the peculiar factual background obtaining therein, this Court, referred to the decision of Lord Esher in Pinto v. Badman [8 RPC 181] to say that where a distinctive label is registered as a whole such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole. This Court in the aforementioned factual backdrop opined: This, as we have already stated, is not quite correct, for apart from the practice the Registrar did advert to the other important consideration, namely, that on the evidence before him and the statement of counsel it was quite clear that the reason for resisting the disclaimer in this particular case was that the Company thought, erroneously no doubt but quite seriously, that the registration of the trade mark as a whole would, in the circumstances of this case, give it a right to the exclusive use of the word "Shree" as if separately and by itself it was also its registered trade mark and that it would be easier for it to be successful in an infringement action than in a passing off action. It was precisely the possibility of such an extravagant and untenable claim that called for a disclaimer for the purpose of defining the rights of the respondent company under the registration. (Emphasis supplied) …….

26. We find that the learned Single Judge rightly held that when a label mark is registered, it cannot be said that the word mark contained therein is not registered. We, thus, are of the opinion that although the word "ORZID" is a label mark, the word "ORZID" contained therein is also worthy of protection. The learned Single Judge has rightly observed that the judgment of the Supreme Court in Ramdev Food Products Ltd. (supra) is the complete answer. This aspect is considered and the argument of the appellant is rejected in the following words:

27. On whether the OCPL could successfully ask for rectification for UBPL's word mark FORZID notwithstanding that OCPL held registration only for a label mark, the judgment of the Supreme Court in Ramdev Food Products Ltd. v. Arvindbhai Rambhai Patel: AIR 2006 SC 3304 is a complete answer. The Court there referred to an earlier decision in Registrar of Trade Marks v. Ashok Chandra Rakhit: AIR 1955 SC 558, which concerned the proprietary mark 'Shree' which formed part of the device as a whole and was an important feature of the device. The Supreme Court observed that registration of a trade mark as a whole would give the proprietor "a right to the exclusive use of word "Shree" as if separately and by itself." Therefore it would not be correct for UBPL to contend that the registration held by OCPL does not cover the word mark ORZID."

16. The above judgment of the Division Bench was followed by Calcutta High Court in the case of Shambhu Nath & Brothers and Ors. Vs. Imran Khan, MANU/WB/0951/2018 where the Court held as follows:- “58. In Pidilite Industries Limited v. Jubilant Agri & Consumer Products Ltd. reported at 2014 (57) PTC 617 (Bom): 2014 (2) ABR 142, Section 17(1) of the Act came up for consideration. It is stated:— “It is true that the registration of a composite mark confers upon the registered proprietor a monopoly over the trademark taken as a whole. It is not the plaintiff's contention that the registration of a composite mark confers upon the registered proprietor exclusivity over each and every constituent part thereof (no matter how minuscule or insignificant it may be in relation to the mark considered as a whole). The Court therefore has to examine the mark as a whole. As a part of this evaluation process, the Court is required to determine what is/are the prominent and/or essential features of the mark taken as a whole. The protection and/or exclusivity will be conferred on these features and not on insignificant trivia. This Court has therefore at the outset after considering the relevant factors prima facie come to the conclusion that the word „MARINE‟ forms a prominent and/or essential feature of the registered trademark (considered as a whole). If the Defendant's arguments are accepted, the consequences will be startling. Composite marks will become useless. The same will be infringed with impunity by the simple expedient of using a trademark which has, as its essential or prominent feature(s), the essential and prominent feature of the registered mark with the addition of other matter. The mandate of Section 17(1) will be totally frustrated.” “The argument advanced by the counsel for the defendant in that as per Section 17(1) of the Act, the exclusive right of the registered proprietor is to use the trademark “taken as a whole” and not “in part” which the plaintiff is trying to claim. A recent judgment of the Division Bench of this Court in the case of Unitech Biotech Pvt. Ltd. (supra) has very explicitly taken care of the aforesaid issue. The contention raised by the counsel for the appellant in the said case was that the registration of respondent's trademark was in respect of label mark „ORZID‟ and it is only the label which needs to be protected by virtue of Section 17 of the Act. Dismissing such contention raised by the counsel for the appellant, the Court observed that the essential feature of the mark is also protected if the mark is registered as a whole. After placing reliance on the judgment of Hon'ble Supreme Court in the case Ramdev Food v. Arvindbhai Rambhai reported at (2006) 8 SCC 726: AIR 2006 SC 3304, the Division Bench of this Court observed in Paragraphs 24 and 25 as under:— “The entire arguments are on the wrong premise and it proceeds on the basis of common feature of the two marks suffix “ZID” and since the respondent has registration and trade mark „ORZID‟, it cannot bare a part of it, i.e., “ZID”. What has been seen in a case like this is as to whether the mark “FORZID” is deceptively similar to “ORZID”. That is the test which is to be applied and in a process, it is to be seen as to whether the two marks are structurally and phonetically similar and would cause deception in the minds of consumers. When we judge the matter from this angle, we find ourselves in agreement with the view taken by IPAB as well as the learned Single Judge. Although the mark “ORZID” is a label mark, the word mark “ORZID” is an essential feature which has been covered by the registration. Therefore, the learned counsel for the respondent appears to be right in his submission on this aspect, which is predicated on the Supreme Court decision in Ramdev Food Products Ltd. (supra).” …….

64. In Three-N-Products Pvt. Ltd. (supra), it is held that the registration of a device or label would entitle the proprietor to protection against use of such device or label by a rival in trade if the rival's use is identical or similar to the registered trade mark and the use is in connection with identical or similar goods or services covered by such registered trade mark and if it appears to court that the rival's mark is likely to cause confusion or is likely to have an association with the registered mark. The identity or similarity of the marks has to be assessed on the basis of the entirety of the mark as registered. If a device mark is pitted against another device mark or a word mark is pitted another word mark, the tests would be simpler. It has been held that if the owner can establish exclusivity aliunde, the owner can assert the exclusivity and the registered owner is entitled to protection of its goodwill in such prominent feature as in an action for passing off unless the registered owner seeks to rely on Section 17(2)(b) of the Act in respect of a distinctive matter not common to the trade. In such context, in Paragraph 36 of the said judgment, the plaintiff's claim of infringement based on its “AYUR” mark as part of its device registration was found to be unacceptable. The said Paragraph reads:—

17. Similarly, the learned Single Judge of this court in Stiefel Laboratories, Inc. & Anr. vs. Ajanta Pharma Ltd., 2014 (59) PTC 24 (Del.) held as follows:- “29. In the case of Indian Hotels Company Limited versus Ashwajeet Garg & Others (CS (OS) 394 of 2012 Order dated 01.05.2014), I had the occasion of considering various judicial pronouncements and culling out the following legal principles for determining the deceptive similarity of marks: i. Action for infringement is a statutory remedy conferred on the registered proprietor of a registered trademark. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories: AIR 1965 SC 980 ii. Registration of trademark gives the proprietor the exclusive right to the use of the trademark in connection with the goods in respect of which it is registered. American Home Products v. Mac Laboratories: AIR 1986 SC 137 iii. If the essential features of the trademark of the Plaintiff have been adopted by the Defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets shows marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial. American Home Products v. Mac Laboratories: AIR 1986 SC 137 …… vii. Resemblance between the two marks must be considered with reference to the ear as well as the eye. K.R. Chinna Krishna Chettiar v. Sri. Ambal & Co. and Anr.: AIR 1970 SC 146 viii. The rival marks have to be compared as a whole. The two competing marks must be judged both by their look and by their sound. All the surrounding circumstances must be considered. Amritdhara Pharmacy versus Satyadeo Gupta: AIR 1963 SC 449 ix. Where the similarity between the Plaintiffs and the Defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the Plaintiffs rights are violated. Kehsav Kumar Aggarwal Versus M/s. NUT Ltd. 2013 (199) DLT x. Competing marks have to be compared keeping in mind an unwary purchaser of average intelligence and imperfect recollection. Amritdhara Pharmacy versus Satyadeo Gupta: AIR 1963 SC 449 xi. 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 marked differences in the design and get up…”

14. It is clear that the rival marks have to be compared as a whole. The two marks have to be compared keeping in mind an unwary purchaser of an average intelligence and imperfect recollection. The marks have not to be placed side by side to find out if there are material differences in design and get up. In the present case, in my opinion prima facie, the impugned logo mark has broad similarities with that of the plaintiffs. An average consumer with imperfect recollection is likely to get confused and is likely to be deceived into accepting the impugned mark as that of the plaintiffs. The manner of depiction of the impugned logo mark is strikingly similar to that of the plaintiffs and is bound to lead to confusion. Further the parties are using the said mark for the same product, i.e. Fragrances.

15. The plea of the defendants that the plaintiffs cannot claim exclusively the polo player device is misplaced. There can be no dispute that the polo player device is an essential and significant feature of the mark of the plaintiffs. The defendants have used a device that is deceptively similar to the essential features of the plaintiff‟s logo mark.

16. Regarding the trade dress the relevant comparison of the trade dress is as follows:- Plaintiffs' Fragrance Product Defendants' Impugned Product Images of Rival Trade Dress Men‟s Collection Men‟s Collection Women‟s Collection Women‟s Collection

17. It would be wrong to say that there are striking similarities in the impugned trade dress used by the defendants when compared to the trade dress used by the plaintiffs. The colour combinations used are different. Merely because the length and circumference of the bottle has some commonality would not per se prima facie manifest that an average consumer would get confused by looking at the trade dress. Hence, it is not possible to grant any relief to the plaintiffs on the plea that there is a commonality of the trade dress being used by the defendants.

18. I may also deal with the submissions of learned senior counsel for the defendant. First, it has been pleaded that a horse device is publici juris and the plaintiffs are pirates and have copied the features from Ralph Lauren and Denver. In my opinion, the plea is misplaced. Ralph Lauren and Denver has not in any manner objected to the use of the said device/the concerned logo mark by the plaintiffs. Plaintiffs have been using the mark since 1982. The mark has also been used in the fragrance sector since 2012. Pursuant to an application filed in 1992 the mark was registered in class 25. It is also registered in class 3,9,18 and 24 pursuant to an application filed in 2006. There are more than a dozen such registrations in favour of the plaintiffs. The defendants themselves have applied for registration of the impugned logo mark with the polo player device. There is no merit in the said plea of the learned senior counsel for the defendants.

19. The next argument raised was about difference in the figures of the horse, difference of font being used. The plea is again misplaced as noted by me above. It is quite clear that the device being used by the defendants is structurely similar to that of the plaintiffs. What is sought to be protected is an essential and prominent feature of the mark. A comparison of the two marks would make it manifest that the mark of the defendants is deceptively similar to that of the plaintiffs and relates to the same goods. It is likely to cause confusion. The mark of the defendants as a whole is deceptively similar to the mark of the plaintiffs. The polo player device is an essential feature of the label mark of the plaintiffs and cannot be separated and compared separately as sought to be urged.

20. Regarding the fact that the defendant No.1 is a prestigious polo club and hence is using the phrase Royal County of Berkshire Polo Club, the learned counsel for the plaintiffs had clearly stated that here was no objection to the name being used by the defendants, namely, Royal County of Berkshire, Polo Club. What is being objected to is the logo mark being used by the defendants which is deceptively similar to that of the plaintiffs.

21. There is no merit in the said pleas of learned senior counsel for the defendants. Plaintiffs have made out a prima facie case. Balance of convenience is also in favour of the plaintiffs inasmuch as the defendants had started use of the impugned trade mark in May, 2018 whereas the plaintiffs had filed the suit in July, 2018. At the initial stage when the matter was heard on 23.07.2018 injunction was not granted to the plaintiffs as a submission had been made by the defendants in court that the mark being used by the defendants is a registered device in India whereas actually there was no registration under class 3 in favour of the defendants.

22. Accordingly, the defendants, its agents, affiliates, distributors etc. are restrained from selling or dealing or advertising any product which uses the impugned logo mark which is currently being used by the defendants or any other mark which is deceptively similar to the plaintiffs‟ logo mark.

23. This application is disposed of, as above.

JUDGE MAY 06, 2019