Fed. Cl. 775 (2006) and by the US Court of Appeals in Lamilem Badasa v. Michael B. Mukasey 540 F.3d 909.
Supreme Court of India
T.V. Venogopal vs Ushodaya Enterprises Ltd. & Anr. on 3 March, 2011
Bench: Dalveer Bhandari, K.S. Panicker Radhakrishnan
1. These appeals are directed against the judgment delivered by a Division Bench of High Court of Andhra Pradesh in Letter Patent Appeal Nos. 12 and 13 of 2001 on 15.06.2001.
2. Brief facts which have been given by the appellant are recapitulated as under.
3. The appellant is the sole proprietor of a firm carrying on business inter alia as manufacturers of and dealers in incense 2
sticks (agarbathis) in the name and style of Ashika Incense Incorporated at Bangalore.
4. The appellant started his business in the year 1988 and adopted the mark `Ashika's Eenadu'. According to the appellant the word `Eenadu' in Kannada language means `this land'. In Malayalam and Tamil language it conveys the same meaning. In Telugu language it means `today'.
5. In consonance with the above meaning the appellant devised an artistic label comprising a rectangular carton in bottle green background with sky-blue border and in the centre, in an oval tricolour, the word `Eenadu' is written.
6. According to the appellant, in the year 1993 he honestly and bona fidely adopted the trade mark `Eenadu' meaning `this land' in Kannada. In the said label the other expressions used are `Ashika's original' and the firm's logo printed in red against yellow background. The other panel of the carton contains the same description in Telugu besides the name and address of the appellant. The panel on one side of the carton mentions 3
the name, address, contents and another side contains `Eenadu' in Devnagari, Tamil and Malayalam.
7. The appellant applied for registration of trade mark on or about 10.02.1994 of the said label bearing application No. 619177. The appellant made an application to the Registrar of the Trade Marks for a certificate under proviso to Section 45(1) of the Copyright Act, 1957. The Registrar issued a certificate on 7.3.1996. Thereafter, an application for registration for copyright was made by the appellant on 14.3.1997.
8. The appellant's product, incense sticks (agarbathies) were well received in the market and according to him, when he filed the appeal before this Court, his annual business was about rupees eleven crores per annum.
9. The respondent company, who was engaged in the business of publishing a newspaper in Telugu entitled as `Eenadu', served a cease and desist notice on the appellant which was replied by the appellant on 8.3.1995. The respondent company in the year 1999 filed a suit for infringement of copyrights and passing-off trade mark in the 4
Court of Second Additional Chief Judge, City Civil Court, Hyderabad. The respondent company therein claimed that they have been in the business of publishing a newspaper, broadcasting, financing and developing a film city.
10. It was contended by the respondent company that the use of the word `Eenadu' by the appellant amounted to infringement of their copyright and passing-off in trade mark. According to the respondent company, the business of the appellant and the respondent company was different and there is no commonality or casual connection between the two businesses.
11. The appellant states that the word `Eenadu' is a well known and well understood word appearing in all the South Indian languages. It means `today' in Telugu. In Tamil, Malayalam and Kannada it means `this land'. Therefore, no absolute monopoly could either be claimed or vest in any single proprietor in respect of the entire spectrum of goods and/or services and there have been other traders and manufacturers who have been using the word `Eenadu' to 5
distinguish their merchandise from similar merchandise of others.
12. The appellant also asserted that in Hyderabad one co- operative bank exists in the name of `Eenadu Cooperative Bank Ltd.' and their services are advertised as `Eenadu Deposits', a shop also exists in Vijayawada by the name `Eenadu Men's Wear' and a film titled `Eenadu' in Malayalam and Telugu was produced some time over a decade back. The appellant contended that detergent powder, playing cards, hair oil, coffee powder, tea powder, papad etc. are being sold with the mark `Eenadu'.
13. The Second Additional Chief Judge, City Civil Court, Hyderabad on 24.11.1999 had granted an ex-parte ad interim injunction restraining the appellant from using the expression `Eenadu' and the same was confirmed on 27.12.1999. Thereafter, the appellant, aggrieved by the said order, moved the High Court of Andhra Pradesh at Hyderabad. The High Court suspended the interim injunction. The High Court permitted the appellant to dispose off their finished products 6
to the tune of Rs.1 crore and also permitted the appellant to produce goods that were in the process of manufacture to the tune of Rs. 78 lakhs.
14. Meanwhile, the trial court on 24.7.2000 partially decreed the suit of the respondent company. The appellant was not injuncted from using the words `Eenadu' in the entire country other than in the State of Andhra Pradesh.
15. The appellant, aggrieved by the order of the City Civil Judge filed an appeal before the High Court of Andhra Pradesh. The respondent company also filed an appeal against the order of City Civil Judge praying that the order of injunction to be made absolute and not be confined to the State of Andhra Pradesh. The learned Single Judge disposed of both the appeals by a common judgment/order dated 29.12.2000. The appeal filed by the respondent company was dismissed and the appeal filed by the appellant was allowed.
16. Aggrieved by the said order of the learned Single Judge, the respondent company filed Letters Patent Appeals before 7
the Division Bench of the High Court. The High Court vide impugned order allowed its appeals, decreeing the O.S. No.555 of 1999.
17. The appellant also aggrieved by the impugned judgment filed appeals and submitted that the courts below were not justified in granting relief which was not specifically prayed for in the plaint. The appellant further submitted that the High Court erred in holding that the copyrights of the respondent company were infringed in the absence of a prayer for infringement of copyrights. According to the appellant the Division Bench of the High Court erred in holding that they were passing-off the copyrights when the Copyright Act, 1957 does not provide for such a remedy.
18. The appellant also submitted that the courts below have not properly appreciated the distinction between the existence of a copyright and its infringement.
19. According to the appellants, the respondent company was aware of the appellant's business since at least 27.2.1995 8
and there has been a gross delay in filing of the suit and because of inordinate delay in approaching the court, the respondent company is not entitled to any relief.
20. The appellant further submitted that whether an action for passing-off could be maintained and injunction granted when a mark is used consisting of the word `Eenadu', which is a common word. The word `Eenadu' literally means `Today' in Telugu and `this land/our land' in Kannada, Tamil and Malayalam.
21. The appellant contended that the businesses of the appellant and the respondent company are entirely different and there is no question of passing-off of the goods of the appellant as that of the respondent company.
22. The respondent company denied all the averments of the appellant and submitted the following propositions.
1. The essence of an action of passing-off is an attack on or dilution or benefitting from the goodwill and reputation of another person.
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2. If such goodwill or reputation arises out of the use of a name in respect of a particular product and the goodwill and reputation is restricted only to such product and unknown outside such product then the use of such name by another person with respect to a totally different product would not affect the goodwill and reputation so as to constitute an action of passing-off
3. If, however, the goodwill and reputation is sufficiently wide and the name is associated with the source in a more general way rather than restricted only to a given product then the use of such name by another trader for even a totally different product could amount to a passing-off.
4. The exception to the three above propositions would be if such name is a generic name for the product being manufactured by the rival trader in which case it would never constitute an action of passing- off.
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5. Again, if the said name is descriptive of the product of the rival trader, it would then amount to passing- off only if it is established that it has become a household name of such a nature as to have acquired a strong secondary meaning and it being associated substantially with the first trader, in which case alone it would amount to a passing-off. The standard of proof of such a case would be higher than the standard of proof of first three propositions.
23. Mr. Mukul Rohtagi, learned senior counsel and Mrs. Prathiba Singh, learned counsel arguing on behalf of the appellant submitted that in the instant case the suit was in fact governed by Trade & Merchandise Marks Act, 1958 and not by the Trade Marks Act, 1999 which came into force w.e.f. 15.9.2003. It was submitted that this case is covered under section 159(4) of the 1999 Act, which specifically provides that any legal proceedings pending in any court at the 11
commencement of this Act would be governed by the old Act. Section 159(4) of the 1999 Act is reproduced as under:- "159. (4) Subject to the provisions of section 100 and notwithstanding anything
contained in any other provision of this Act, any legal proceeding pending in any Court at the commencement of this Act may be continued in that court as if this
Act had not been passed."
Thus, none of the concepts of well-known marks, dilution etc. as statutorily applicable under the 1999 Act, have any application in this case. It is submitted that the present case, as decided by all the courts below, is a case of passing off and not of dilution.
24. In reply to the submission of the respondent company, learned counsel for the appellant submitted that the passing off test is the test of likelihood of confusion. Such confusion should be either confusion arising due to get up of products, confusion as to sponsorship/affiliation of source or confusion arising out of the use of identical/deceptively similar trademarks.
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25. Learned counsel for the appellant also submitted that dilution is a completely different concept, namely, if there is confusion, there is no dilution. The concept of dilution steps in when in fact the consumer is not being confused but the plaintiff's mark is being diluted in some form or the other. McCarthy, a well-known author on Trademarks and Unfair Competition clearly states the same in the said publication. Reliance is being placed at para 24.70 wherein it has been observed that "the dilution doctrine is concerned with granting protection to trademarks beyond that provided by the classic `likelihood of confusion' tests."
26. According to the appellant, the principle of dilution requires that the consumer in fact should not be confused but a well-known mark, in the absence of confusion, is being diluted. In the United States of America, dilution is protected by a specific statute called the Federal Anti Dilution Act, 1996. The discussion on dilution in McCarthy establishes the following:-
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a) The traditional likelihood of confusion test applies to passing off.
b) If a mark is a well-known mark, then the argument of dilution is to be considered in the absence of confusion.
c) Dilution is a doctrine which should be strictly applied. d) Standard of distinctiveness required to protect a mark from dilution is very high.
e) Not every trade mark can be protected against dilution.
f) If a mark enjoys a regional reputation it does not deserve protection under the law of dilution. g) A reputation on a national scale, especially while testing the mark for unrelated goods, is required to be protected under dilution.
27. Learned counsel for the appellant submitted that under the traditional law of passing off or under the law of dilution, the only marks which have been protected across product category are marks which can easily be termed even in the 14
common parlance as well-known marks. Such marks such as Bata, Volvo, Benz, Mahindra & Mahindra and Tata etc.
28. It was submitted that the case pleaded by the respondent company (plaintiff) is one of confusion and passing off and not of dilution. The standard for establishing dilution are completely different. There is neither a pleading in the present case alleging dilution, nor any evidence in support of dilution. The standards for recognizing dilution have not been confirmed by any court of law in India and while deciding the present case in the courts below the threshold of dilution was never applied.
29. In India, the law on dilution has developed through case law going back to the Benz's case decided by the Delhi High Court in Daimler Benz Aktiegesellschaft and another v. Hybo Hindustan AIR 1994 DELHI 239. However, `Eenadu' cannot claim the distinctiveness or the reputation which is enjoyed by a mark like Benz or Harrods. `Eenadu' is a very ordinary word commonly used in Telugu language and to vest a monopoly in favour of the respondent company (plaintiff) for 15
such a common word on the ground of dilution would result in conferring an undue monopoly to a generic/descriptive word. There are several marks which are used in the ordinary language for different types of products, such as :-
1. Time/Times Time Magazine, Time Education, Times London, Times of India,
Navbharat Times, Hindustan Times,
Times Now
2. Today India Today, Punjab Today, Today's Tea, Today's Contraceptive
3. Marvel Marvel Comics, Marvel Detergent
4. Sun, Surya, Oil, Lights & Bulbs, Tobacco Suraj
5. Metro Metro Shoes, Delhi Metro, Metro Walk Malls
6. Maruti Oil, Cars
7. Taj Hotels (Taj Hotels), Tea (Wah! Taj)
8. Citi Citi Bank, City Mall
9. Mustang Motel, Cars, Trailers
30. The learned counsel for the appellant submitted that `Eenadu' is a common word used in Telugu language. This has been fully established by the evidence on record.
31. He referred to the deposition of Jagannadharao, PW1, Law Officer of the plaintiff, who has stated that the literal meaning of the word `Eenadu' is `Today'.
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32. According to the deposition of PW2, N. Swami, Artist, the meaning of the word `Eenadu' is `Today'.
33. Learned counsel for the appellant referred to deposition of PW5, R. Kumaraswamy, Advocate who has stated that literal meaning of the word `Eenadu' is `Today'.
34. The learned counsel referred to the deposition of PW6, T.V. Venugopal, the appellant herein. He has stated that the word `Eenadu' was specifically given for the purpose of `daily' prayer.
35. The learned counsel for the appellant submitted that the word `Eenadu' literally means and hence is not an invented word but is a generic/descriptive word used in common parlance. This is further proved by the fact that the word `Eenadu' has been used by several parties for various products which include :-
- `
- `Eenadu' Hotel
- `Eenadu' Marble Estate
- `Eenadu' Feature Film (The said film by UTV Production uses the word `Eenadu' in the same script as used by the respondent - (This particular film has, in fact, been featured for a review in the respondent's own newspaper dated 15.8.09 & 27.8.09 and copies of the same are attached. The music launch of this film was also featured in the newspaper of the respondents dt. 14.9.09. This film has at least 2 songs with the word `Eenadu'. One of the songs in the film called "Eenadu Eesamaram" which means "This Day, This War".
- A famous Kannada song - Eenadu Kannada, Eeneeru Kannada (This day is Kannada, This water is Kannada).
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