supra) the Apex Court has quoted and considered the law
on passing off at paragraphs 88 to 90 and those are as
under :-
"ESSENCE OF PASSING OFF ACTION
88. In a case of this nature, the test for determination of
the dispute would be the same where a cause of action for
passing off arises. The deceptively similar test, thus, would
be applicable herein.
89. The doctrine of passing off is a common law remedy
whereby a person is prevented from trying to wrongfully
utilise the reputation and goodwill of another by trying to
deceive the public through ’passing off’ his goods.
90. In Kerly’s Law of Trade Marks and Trade Names’
Supplement pages 42 and 43, paragraph 16-02, the
concept of passing off is stated as under:-
"The law of passing-off can be summarised in one short
general proposition no man may pass off his goods as
those of another. More specifically, it may be expressed in
terms of the elements which the plaintiff in such an
action has to prove in order to succeed. These are three
in number.
Firstly, he must establish a goodwill or reputation
attached to the goods or services which he supplies in the
mind of the purchasing public by association with the
identifying ’get-up’ (whether it consists simply of a brand
name or a trade description, or the individual features of
labelling or packaging) under which his particular goods
or services are offered to the public, such that the get-up
is recognised by the public as distinctive specifically of
the plaintiff’s goods or services.
Secondly, he must demonstrate a misrepresentation by
the defendant to the public (whether or not intentional)
leading or likely to lead the public to belief that the
goods or services offered by him are the goods or
services of the plaintiff.
Thirdly, he must demonstrate that he suffers or, in a
quick time action, that he is likely to suffer damage by
reason of the erroneous belief engendered by the
defendant’s misrepresentation that the source of the
defendant’s goods or service is the same as the source of
those offered by the plaintiff..."
20) The observations made by the Apex Court in
the cases cited supra show that few basic things need to
be established for getting the relief which the plaintiff
wants. If provision of section 29(2) of the Act is compared
with the definition of term "deceptively similar" given in
section 2(h) of the Act, it can be said that the definition
itself is incorporated in section 29(2) of the Act in effect.
The definition given in section 2(h) runs as under :
"2. (h)"deceptively similar",-- A mark shall be deemed
to be deceptively similar to another mark if it so
nearly resembles that other mark as to be likely to
deceive or cause confusion".
21) The definition shows that the trade mark if it is
the word it should be so nearly resembling to the trade
mark of defendant that possibility of deception or causing
confusion in the mind of purchaser is created.
22) The question whether the word mark used by
the plaintiff and the defendants nearly resemble or they
do not resemble cannot be answered by generalizing the
things. The approach needs to be different for different
kinds of goods. In the case reported as AIR 1982 Delhi
308 (Essco Sanitations v. Mascot Industries) the factors
which can be considered to determine whether particular
trade mark is deceptively similar to another trade mark or
not, are enumerated and they are as under :-
(i) the nature of marks;
(ii) the degree of resemblance between the marks
(phonetic, visual as well as similarity in idea);
(iii) the nature of goods in respect of which they are used
or likely to be used as trade marks;
(iv) the similarity in the nature, character and purpose of
the goods of the rival traders;
(v) the class of purchasers who are likely to buy the
goods bearing the marks, their level of eduction and
intelligence, and the degree of care they are likely to
exercise in purchasing the goods;
(vi) the mode of purchase of the goods or placing orders
for the goods; and,
(vii) any other surrounding circumstances.
23) There cannot be uniform criteria, factors and so
each case needs to be decided on the basis of facts and
circumstances of that case.
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
BENCH AT AURANGABAD
Appeal from Order No.111 of 2015
Shri. Swami Samarth Agencies,
Versus
Mauli Chemicals Industries
CORAM: T.V. NALAWADE, J.
DATE : 8th FEBRUARY 2016
Citation:AIR 2016(NOC)388 Bom
1) Appeal is admitted. Notice after admission,
made returnable forthwith. By consent, heard for final
disposal.
2) The appeal is filed against the order made on
Exhibit 5 by District Judge-1 Newasa, District
Ahmednagar in Trade Mark Suit No.1/2015. In the suit
filed by the present respondent, Chemical Industry,
against the appellants, order of temporary injunction of
following nature is made:-
"The defendants are hereby restrained, by
themselves or through their servants, agents or
through anybody else on their behalf, from using
the trade mark "JAL DROP" or any other trade
mark identical or deceptively similar to the
plaintiff's registered trade mark "JEEVAN DROP"
till final decision of the suit."
Initially ex-parte order of temporary injunction was made
and it is confirmed on merits, after hearing both sides.
3) The suit is filed by present respondent under
section 134(2) of the Trade Marks Act 1999 (hereinafter
referred to as "the Act"). The plaintiff is a manufacturer
of chemical substance, Sodium Hypochlorite Solution.
This substance can be used as drinking water disinfectant.
It is the case of the plaintiff that it is in the business of
manufacturing and marketing of this substance for more
than two decades. It is contended that in the month of
August 1996 the plaintiff conceptualized and adopted the
trade mark "JEEVANDROP". It is contended that
application for registration of the trade mark was made on
30-8-1996 in Class 5 of the goods of the Act and the trade
mark has been registered.
4) It is the case of the plaintiff that it has been
using the word "JEEVANDROP" as trade mark and it is
also using artistic logo having this word. The plaintiff has
given the picture of logo in the plaint. It is the case of the
plaintiff that it has been selling the aforesaid product in
bottles in Maharashtra, Gujarat and Goa since more than
2 decades.
5) It is the case of the plaintiff that under the
agreement deed dated 29-5-2012 it had appointed
defendant No.2, Shri. Swami Samarth Agencies, as its sole
distributor for Maharashtra region. It is contended that
this agreement came to an end on 29-5-2014. It is
contended that the plaintiff has spent huge amount on the
publicity of the aforesaid brand name. It is the case of the
plaintiff that defendants have no right to use the aforesaid
trade mark or similar trade mark in view of the reputation
and good will earned by the plaintiff.
6) It is the case of the plaintiff that in the month of
October 2014 the plaintiff came across an application
made by the wife of defendant No.2, Smt. Jyoti Wani for
registration of trade mark "JALDROP" in class 5 and so
the plaintiff took objection to the registration and gave
notice to the said lady about the objection. It is contended
that initially Smt. Jyoti contended that logo was created by
her and it was her design but subsequently she withdrew
the application.
7) It is the case of the plaintiff that in the month of
March 2015 it came across a product of defendant No.1 in
the market by name "JALDROP" and he noticed that the
label of the bottle was similar to the label of the plaintiff 's
brand "JEEWANDROP". It is contended that as per
information of the plaintiff, defendant No.3 has applied for
registration of trade mark "JALDROP" in Class 5 and this
trade mark is deceptively similar to the trade mark
"JEEVANDROP" of the plaintiff. It is contended that the
defendant Nos.2 and 3 are marketing the product
"JALDROP" of defendant No.1 and they are acting
together. Defendant No.2 Ratnakar is said to be a cousin
brother of defendant No.3 Smt. Seema.
8) With the plaint, plaintiff has produced
specimen labels of his own product and the product of
defendant No.1. It is the case of the plaintiff that there is
infringement of his trade mark "JEEVANDROP" due to the
use of trade mark "JALDROP" and it is substantially
similar to the trade mark of plaintiff. It is contended that
by adopting the trade mark "JALDROP" with dishonest
intention defendants want to deceive the people and they
want to make the people believe that "JALDROP" product
is also a product of plaintiff. It is contended that the
defendants are trying to trade upon the reputation and
good will of plaintiff by using such deceptive trade mark.
9) It is the case of the plaintiff that in the past,
defendant No.2 was distributor of the plaintiff and he has
misused his position by passing off the product
"JALDROP" as the product of the plaintiff. It is the case of
the plaintiff that he has not consented for using trade
mark "JALDROP" by the defendants. In the suit, relief of
injunction is claimed on the basis of registration of trade
mark "JEEVANDROP" and another relief is claimed to
prevent the defendants from passing off their goods as
that of the plaintiff. Damages of rupees one lac are also
claimed.
10) Defendant Nos.1 to 3 filed joint written
statement. Amongst other contentions they have made
following specific contentions in the written statement
and also in the say offered to Exhibit 5 :-
(I) That, the word "JEEVAN" used by the plaintiff is
descriptive in nature and it has dictionary meaning and it is
the word used for water disinfectant. That, the word "DROP" is
used as drops of chemical which act as disinfectant and the
name and description signifies the purpose for which the
product is to be used.
(II) That, till the year 2004 the plaintiff had not used this
trade mark and that can be seen from the journal published in
the year 2004 where the plaintiff has mentioned that it
proposes to use the aforesaid trade mark.
(III) that the word "JEEWANDROP" does not involve
innovation and it is combination of dictionary words.
(IV) That, only the word "JEEWANDROP" is registered as trade
mark and no artistic logo as such or device of drop in the
background is registered as trade mark and so the trade mark
of the defendants is distinctively different.
(V) That the defendant No.3 has applied for registration of
trade mark "JALDROP" both as word and also device with two
different logos. Two different logos having such word marks
are submitted for registration and those marks are assigned to
defendant No.2 by defendant No.3 under a deed of assignment
dated 4-8-2012 and the Deeds are submitted in the office of the
Registrar under the Act. Thus the words and the logos are not
similar to the registered trade mark of the plaintiff and they
are not likely to create confusion in the minds of purchasers of
any kind.
(VI) that due to difference in the trade marks and also other
things about the goods of defendant there is no question of
passing off the goods of the defendants as the goods of the
plaintiff.
(VII) that the defendant No.2 has his own network of
distribution though he had worked as sole distributor of the
plaintiff. Defendant No.2 had used his own network and he had
spent on publicity and he had taken initiative for increase of
the sale of the product of the plaintiff. When the agreement
between the plaintiff and defendant No.2 came to an end, the
plaintiff did not extend the contract and then defendant No.2
took steps to introduce such product under the name of
"JALDROP" as there was demand for such product in the
market. Due to the sale of the product of the defendants there
is possibility that the sales of the plaintiff are affected but this
is not due to the passing off the goods of the defendants as the
goods of plaintiff. Due to increase in sale of product of the
defendant, plaintiff is frustrated and he has taken the steps
like filing the suit against the defendants to prevent them from
selling their product.
11) The defendants have admitted in their written
statement that Jyoti Wani had applied for registration of
trade mark but it is described as "Su Jeevan Drop". It is
their case that when the plaintiff filed objection, there was
settlement between the parties and then Jyoti withdrew
her application filed for registration.
12) It is the case of the defendants that they are
manufacturing and selling sodium hypochlorite solution
under the name and trade mark "JALDROP". It is their
contention that their trade mark is totally different in
words, in colour combination and in the material
mentioned on the label. It is contended that the adoption
of the trade mark by the defendants is honest and their
trade mark is original and it is conceived by defendant
No.3. The defendants have given points of differences
between their trade mark and the trade mark of the
plaintiff in the written statement.
13) On the basis of physical verification of the
bottles of the plaintiff and the defendants, the trial Court
observed that the size, shape etc. of the bottles are
similar. It is observed that the colours of the bottles are
exactly similar and the manner in which the words are
printed on the labels are similar. The trial Court has
observed that the defendants have attempted to make
little bit difference in design, the logo and the background
colour but due to such difference the overall similarity is
not removed and there is intention to deceive. The
circumstance that in the past wife of defendant No.2 had
attempted to register similar trade mark is considered
against the defendants. It is held by the trial Court that
the plaintiff has already earned reputation and good will
in the market by using the trade mark "JEEVANDROP"
and it is observed that the defendants are trying to cause
harm to this reputation and good will.
14) From the pleadings in the plaint and the reliefs
claimed it can be said that the action of the plaintiff is for
infringement of registered trade mark and also for passing
off the goods by defendant by using the trade mark and
label which, according the plaintiff, are deceptively similar
to that of the plaintiff. It is not disputed that there is
identity of goods. In the written statement, the
defendants have admitted that in the past the defendant
No.2 was the sole distributor of the plaintiff for
Maharashtra region. It is also not disputed that sales of
the plaintiff must have come down due to introduction of
the similar product by the defendants in the market. In
view of these circumstances, the provisions of sections 27,
28 and 29 of the Act need to be used. Relevant parts of
the sections for the present purpose are sections 27(1),
(2); 28(1) and 29(1),(2),(3) and (9) and they are as under :-
"27. No action for infringement of unregistered trade
mark.-- (1) No person shall be entitled to institute any
proceeding to prevent, or to recover damage for, the
infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of
action against any person for passing off goods or services
as the goods of another person or as services provided by
another person, or the remedies in respect thereof."
"28. Rights conferred by registration.-- (1) Subject to
the other provisions of this Act, the registration of a trade
mark shall, if valid, give to the registered proprietor of the
trade mark the exclusive right to the use of the trade mark
in relation to the goods or services in respect of which the
trade mark is registered and to obtain relief in respect of
infringement of the trade mark in the manner provided by
this Court."
"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) it 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,
is likely to cause confusion on the part of the public, or
which is likely to have an association with the registered
trade mark.
(3) In any case falling under cause (c) of sub-section (2),
the Court shall presume that it is likely to cause confusion
on the part of the public.
(9) Wheres the distinctive elements of a registered trade
mark consist of or include words, the trade mark may be
infringed by the spoken use of those words as well as by
their visual representation and reference in this section to
the use of a mark shall be construed accordingly.
15) Both the sides have placed reliance on some
reported cases. For the respondent - plaintiff learned
counsel has placed reliance on the following reported
cases :-
(1) AIR 1972 SC 1359 (Parle Products (P) Ltd. v. J.P.
and Co. Mysore);
(2) AIR 1970 SC 146 (K.R. Chinna Krishna Chettiar v.
Ambal and Co.);
(3) (2007) 6 SCC 1 (Heinz Italia v. Dabur India Ltd.)
(4) AIR 1965 SC 980 (Kaviraj Pandit Durga Dutt
Sharma v. Navaratna Pharmaceutical Laboratories)
(5) AIR 2006 SC 3304 (Ramdev Food Products Pvt.
Ltd. v. Arvindbhai Rambhai Patel)
(6) AIR 1984 Bom. 218 (Hiralal Prabhudas v. Ganesh
Trading Company);
13 AO 111 of 2015
(7) 1997 (PTC) 17 (Chimanlal Narsaji Suhan v Parasmal
Mithalal Parmar);
(8) AIR 1997 Delhi 172 (Kishor Zarda Factory v. J.P.
tobaccos);
(9) 1990 PTC 16 (M./s Richardson Vicks Inc. v. M/s
Vikas Pharmaceuticals);
(10) 1995-PTC-209 (M/s Murari Lal Harish Chander
Jaiswal v. M/s Raj Zarda Works)
(11) 1983-PTC-127 (J.P. Coats Ltd. v. Gian and Co.);
(12) 1983-PTC-34 (Prince Rubber Industries v. K.S.
Rubber Industries);
(13) 1985-PTC-167 (Richardson Vicks Inc. v. Medico
Laboratories);
(14) 1999-PTC-(19) 507 (Cox Distillery v. McDowell & Co.
Ltd.)
(15) 1999 IVAD Delhi 967 (Allied Nippon Ltd. v M/s
Allied Motors)
(16) 1997 (3) Mh.L.J. 914 (Burroughs Wellcome (India)
Ltd. v. Uni-sole Pvt. Ltd.)
(17) 2009 (2) Mh.L.J. 302 (Deccan Bottling and Distilling
Industries Pvt. Ltd. v. Brihan Maharashtra Sugar
Syndicate Ltd., Nasik)
(18) AIR 1963 SC 449 (Amritdhara Pharmacy v Satya
Deo Gupta)
(19) 1984 PTC 66 (Glaxo Operations UK Ltd. v.
Samrat Pharmaceuticals).
16) The cases on which reliance was placed by both
the sides are mostly on the provisions of the Trade Marks
Act 1958. Not much change has taken place in the
provisions of this old Act due to introduction of the Act of
1999. It can be said that in view of the interpretation of
the terms, definitions done by the Hon'ble Apex Court the
definitions are made more illustrative and exhaustive in
the new Act. Provision of section 29 of the new Act is
more exhaustive in nature than the old section and it
illustrates as to how there may be infringement of
registered trade mark.
17) In the case of Parle Product (cited supra) the
Apex Court has quoted and considered the observations
made by it in previous case reported as AIR 1965 SC 980
(Durga Dutt v. Navratna Pharmaceuticals Laboratories).
The observations are in para 7 of the report and they are
as under :-
"While an action for passing off is a Common Law remedy
being in substance an action for deceit, that is, a passing
off by a person of his own goods as those of another, that is
not the gist of an action for infringement. The action for
infringement is a statutory remedy conferred on the
registered proprietor of registered trade mark for the
vindication of the exclusive right to the trade mark in
relation to those good (vide Section 21 of the Act). The use
by the defendant of the trade mark of the plaintiff is not
essential in an action for passing off, but is the sine qua
non in the case of an action for infringement."
"In an action for infringement, the plaintiff must, no doubt,
make out that the use of the defendant's mark is likely to
deceive, but where the similarity between the plaintiff's
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 plaintiff's rights are
violated. Expressed in another way, if the essential
features of the trade mark 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 in which he offers his goods for sale show marked
differences or indicate clearly a trade origin different from
that of the registered proprietor of the mark would be
immaterial; whereas in the case of passing off, the
defendant may escape liability or he can show the added
matter is sufficient to distinguish his goods from those of
the plaintiff."
18) The case of Heinz Italia v. Dabur India (cited
supra) involved use of both the Trade Mark Act and Copy
Right Act and facts of the reported case were more clear
and different. In the present matter product is different
and due to its nature, different approach is required.
19) In the case of Ramdev Food Products (cited
supra) the Apex Court has quoted and considered the law
on passing off at paragraphs 88 to 90 and those are as
under :-
"ESSENCE OF PASSING OFF ACTION
88. In a case of this nature, the test for determination of
the dispute would be the same where a cause of action for
passing off arises. The deceptively similar test, thus, would
be applicable herein.
89. The doctrine of passing off is a common law remedy
whereby a person is prevented from trying to wrongfully
utilise the reputation and goodwill of another by trying to
deceive the public through ’passing off’ his goods.
90. In Kerly’s Law of Trade Marks and Trade Names’
Supplement pages 42 and 43, paragraph 16-02, the
concept of passing off is stated as under:-
"The law of passing-off can be summarised in one short
general proposition no man may pass off his goods as
those of another. More specifically, it may be expressed in
terms of the elements which the plaintiff in such an
action has to prove in order to succeed. These are three
in number.
Firstly, he must establish a goodwill or reputation
attached to the goods or services which he supplies in the
mind of the purchasing public by association with the
identifying ’get-up’ (whether it consists simply of a brand
name or a trade description, or the individual features of
labelling or packaging) under which his particular goods
or services are offered to the public, such that the get-up
is recognised by the public as distinctive specifically of
the plaintiff’s goods or services.
Secondly, he must demonstrate a misrepresentation by
the defendant to the public (whether or not intentional)
leading or likely to lead the public to belief that the
goods or services offered by him are the goods or
services of the plaintiff.
Thirdly, he must demonstrate that he suffers or, in a
quick time action, that he is likely to suffer damage by
reason of the erroneous belief engendered by the
defendant’s misrepresentation that the source of the
defendant’s goods or service is the same as the source of
those offered by the plaintiff..."
20) The observations made by the Apex Court in
the cases cited supra show that few basic things need to
be established for getting the relief which the plaintiff
wants. If provision of section 29(2) of the Act is compared
with the definition of term "deceptively similar" given in
section 2(h) of the Act, it can be said that the definition
itself is incorporated in section 29(2) of the Act in effect.
The definition given in section 2(h) runs as under :
"2. (h)"deceptively similar",-- A mark shall be deemed
to be deceptively similar to another mark if it so
nearly resembles that other mark as to be likely to
deceive or cause confusion".
21) The definition shows that the trade mark if it is
the word it should be so nearly resembling to the trade
mark of defendant that possibility of deception or causing
confusion in the mind of purchaser is created.
22) The question whether the word mark used by
the plaintiff and the defendants nearly resemble or they
do not resemble cannot be answered by generalizing the
things. The approach needs to be different for different
kinds of goods. In the case reported as AIR 1982 Delhi
308 (Essco Sanitations v. Mascot Industries) the factors
which can be considered to determine whether particular
trade mark is deceptively similar to another trade mark or
not, are enumerated and they are as under :-
(i) the nature of marks;
(ii) the degree of resemblance between the marks
(phonetic, visual as well as similarity in idea);
(iii) the nature of goods in respect of which they are used
or likely to be used as trade marks;
(iv) the similarity in the nature, character and purpose of
the goods of the rival traders;
(v) the class of purchasers who are likely to buy the
goods bearing the marks, their level of eduction and
intelligence, and the degree of care they are likely to
exercise in purchasing the goods;
(vi) the mode of purchase of the goods or placing orders
for the goods; and,
(vii) any other surrounding circumstances.
23) There cannot be uniform criteria, factors and so
each case needs to be decided on the basis of facts and
circumstances of that case. In the case reported as 1969
(2) SCC 716 (F. H. Roche And Co. v. G. Manner And Co.)
on which reliance was placed by the learned counsel for
the appellants, question had arisen as to whether the
word "Dropovit" was deceptively similar to the word
"Protovit". It was held that there was no similarity
between two words. It was held that terminal syllable
"VIT" was both descriptive and common in the trade and it
appears in almost all vitamin preparations. It was held
that the word "Dropovit" can be treated as invented word
because this word is not descriptive if considered in
entirety. It was held that there was difference in the
pronunciation of the aforesaid two words and so they were
wholly dissimilar.
24) The word “JEEWANDROP” from the present
matter can be dissected in two parts viz. "Jeevan" and
"drop". "Jeevan" is dictionary word used both in Marathi
and Hindi and its meaning is "life" for both Marathi and
Hindi language. The word "drop" is also dictionary word
though in English and it is used to describe small portion
of liquid (not necessarily water). On the other hand, the
word "JALDROP" can be dissected in two parties viz "Jal"
and "drop". The word "Jal" is dictionary word for both
Marathi and Hindi language and its meaning is water.
Thus there is no similarity in the two words like "Jal" and
"Jeevan" in appearance, in pronunciation or in meaning.
25) In the present matter record is produced by
the appellants to the effect that the word "Jeevan" has
been used separately and also in combination with other
words including English word for many years in class 5
of the goods. Recently for similar product of water
disinfectant, trade mark is registered as “NIRMAL JIVAN
DROPS DRINKING WATER DISINFECTANT". This
application was made by the proprietor of this trade mark
on 19-5-2011 though it was registered in the year 2015. It
is registered as water disinfectant and in the background
of the words there are drops falling in pool of water.
26) Both the plaintiff and defendants are selling
chemical substance (Sodium Hypochlorite Solution). They
have not invented this substance and they are not
claiming that they have discovered the property like
“disinfectant”. They claim to be manufacturer but anybody
can manufacture and market such chemical substance by
giving own name to the substance and by describing it as
water disinfectant. The manner of use of the substance is
also not different as few drops of this substance are
required to be used as disinfectant for particular quantity
of water.
27) For the purpose of proving the infringement of
registered trade mark, it was necessary for the plaintiff to
show that there is over all similarity. It can be said that
there are more dissimilarities than the similarities. Idea
behind the two products may be the same but that cannot
make much difference in the matters involving such
substance.
28) If the bottles of the plaintiff and the defendant
are seen one after the other, it can be said that the bottles
of the defendants are appearing sky blue in colour due to
colour used on the labels. Bottles of the plaintiff are
appearing white. On the bottles of the plaintiff the word
'JEEVANDROP" is used in English in blue colour and the
word is overlapped by device, a drop of water. On the
other hand, the defendant has used the drop of water as
alphabet "O" in the word "drop". This drop is appearing
as falling in pool of water. No such pool of water is in
existence on the label of the plaintiff. The plaintiff has
described the substance as "Drinking Water Disinfectant"
and the defendant has described the substance as "Unique
Water Disinfectant". On the bottles of the plaintiff there is
a blue colour strip at bottom and on it the aforesaid
description of the substance is written but such strip has
green colour on the bottles of the defendants. Names of
manufacturers are different and on the bottles of the
defendant the name of agency marketing the product is
also there when there is no such name on the bottles of
the plaintiff. Manufacturer of the bottle of plaintiff is
shown from Newasa (Maharashtra) and the manufacturer
of the defendant is shown from Ahmedabad (Gujarat).
Trade mark of the plaintiff is shown as registered by mark
"R". As against the trade mark of the defendant, the words
"TM" are written to show that the trade mark is under
process of registration. The bottles of the defendant show
that there is certification obtained of ISO and its number
is written on the bottles of the defendant. No such
certificate is obtained by the plaintiff. Only on one bottle
of the defendant, which was shown to be manufactured on
31-12-2014, there is blue strip at the bottom over which
the description of the substance is given and on this bottle
the word "JALDROP" was written in blue colour when on
other bottles this word is written in red colour by the
defendant. In the para of cause of action of the plaint, the
plaintiff has contended that he learnt about the product of
the defendant in March 2015 and cash memo of a bottle of
year 2015 is produced by plaintiff. Learned counsel
appearing for the defendants made submission that the
defendants are not manufacturing or marketing the
bottles like the bottle shown to be manufactured on 31-12-
2014. Written undertaking is also filed in that regard.
When plaintiff has registered the word "JEEVANDROP" as
trade mark and it is not as a devise and when there are
aforesaid circumstances, it is not possible to infer that
there is infringement of the registered trade mark of the
plaintiff.
29) In view of the law already quoted, the defence
of difference in trade mark is more forceful in passing off
action. The defendant has shown that the matter on his
label is different from the matter appearing on the label
of the plaintiff. It is already observed that appearance of
the bottle of the defendant is different and the appearance
is sufficient to distinguish the goods of the defendant from
the goods of the plaintiff. Further for giving the relief in
action of passing off, misrepresentation needs to be made
out by the plaintiff. The aforesaid circumstances do not
make out the case of calculated misrepresentation. It is
already observed that a simple chemical substance is
being sold by both sides by giving different names. The
aforesaid circumstances show that the defendants have
their own network of distribution and sale when on the
bottles of the plaintiff even name of distributor is absent.
In such a case, prospective purchaser is not illiterate
person. The customer would purchase the chemical
substance, sodium hydrochloride solution as it is to be
used as drinking water disinfectant. Like ALAM or
potassium permanganate such substance can be ordered.
The name of the manufacturer or even distributor would
not make much difference for the purchaser. Thus, there
is no requirement of possibility of misrepresentation for
selling such product.
30) The learned counsel for the plaintiff,
respondent submitted that the trial Court has used the
discretion and so it is not desirable for the appellate Court
to interfere in such order. This submission is not
acceptable in the present case as the trial Court has not
considered the aforesaid peculiar circumstances of the
present matter. This Court holds that interference is
warranted in the present matter. Granting of temporary
injunction in such case is serious matter and it prevents
the manufacturer from manufacturing the substance and
from marketing it. Such action comes in the way of fair
competition. It appears that the trial Court was influenced
due to circumstance like registration of trade mark by
plaintiff and the circumstance that in the past defendant
No.2 was working as distributor in respect of the same
product of the plaintiff. There is clear possibility that the
plaintiff has got frustrated as his sale must have come
down after removal of defendant No.2 from his own
business. The defendants have every right to manufacture
and sell such substance. No strong prima facie case is
made out by the plaintiff for getting relief of temporary
injunction. It appears that the trial Court had granted ex
parte relief on the basis of aforesaid contentions even
when there was no record with the plaintiff to show the
loss sustained by him and to make out the case of
deceptive similarity. In view of the peculiar facts and
circumstances of the present case, this Court holds that
no relief of temporary injunction can be granted in favour
of the plaintiff. In the result, following order :-
31) The appeal is allowed. The order made by the
trial Court on temporary injunction application is set
aside. The application is rejected. Interim relief is vacated.
Civil Applications are disposed of.
32) The learned counsel for original plaintiff
submitted that interim relief has been in existence for
about five months and he wants to challenge the decision
of this Court. He wants extension of interim relief.
33) Interim relief is to continue for the period of
one month from today.
Sd/-
(T.V. NALAWADE, J. )
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