Suit for injunction to protect the registered trademark

Section 29 of Trademarks Act, 1999 describes the suit for injunction. In my view, the defendant cannot be said to have committed the tort of passing off if the test set out above are applied to the facts obtaining in the instant case. The defendant’s trademark “BELLS WHIP TOPPING” when looked at in the setting in which the trademark is affixed, which has a picture of a cake on the cover, leaves no doubt in my mind that there is not even a slightest attempt to deceive by the defendant. The defendant on the packaging has prominently alluded to the fact that the product is being sold by it as “Bell’s” non-dairy “Whip Topping”. Therefore, merely because it uses on its packaging a color scheme comprising of red, blue and white colors would not, to my mind, be sufficient to constitute a tort of passing off.

As regards the similarity in the handling instructions and the directions for use of the product, which form part of the packaging, I tend to agree with the learned counsel for the defendant that the plaintiffs have not placed any evidence on record to show that it has a copyright in the said handling instructions/directions for use of the product. Though the instructions and the directions may have an element of similarity, unless the plaintiff is able to adduce evidence to support its claim, which, as stated above, it did not produce i.e., it is the originator of those instructions; it cannot seek any rights in respect of the same.

Let me also deal with some of the other submissions made on behalf of the plaintiffs. The argument of Mr. Gupta that the sales shown by the defendant is only Rs 1.7 crores, that too, in the year 2002-03 which is not supported by requisite evidence, cannot in my view ensure to the benefit of the plaintiffs at the final stage because the onus of proof with respect to distinctiveness of the mark lay on the plaintiff, which in my opinion, it has not been able to discharge. The other submission of Mr. Gupta that the defendant shall not be able to obtain registration of its trademark in view of the provisions of Section 11 of the Trade Marks Act is also predicated on a finding that the plaintiffs’ mark is “well-known” in the trade.

Priority of use alone shall not suffice for the purposes of Section 11 of the Trade Marks Act, given the facts and circumstances of this case, and my observations made herein above on “distinctiveness” achieved by the plaintiffs’ trademark. On the issue of validity of presumption arising under Section 31 of the Trade Marks Act in favor of the plaintiffs in view of its trademark having been registered has already been answered by me while examining the scheme of the Trade Marks Act. This submission does not need any further elaboration.

In view of the observations above, my answers to the issues framed are as follows:

• In so far as issue No. 1 is concerned my opinion is as follows: While it cannot be denied that the plaintiff has a proprietary right in the trademark “RICH’S WHIP TOPPING” in relation to goods referred to in the plaint. And these rights obtain both with respect to those conferred upon the plaintiff under the Trade Marks Act as well as under common law. The rights of the plaintiffs do not extend to a part of the trademark, i.e., “WHIP TOPPING”. Rights in the entire or “whole” does not necessarily translate into a right in a “part” of the trademark -as in this case.
• The issue is answered accordingly. As regards issue Nos. 2 and 3 are concerned the plaintiff has not been able to discharge its onus with respect to trademark “RICH’S WHIP TOPPING” with obvious emphasis on “WHIP TOPPING has acquired secondary distinctive meaning and, therefore, trans border reputation. The plaintiffs on their own accord having accepted the limitation both in USA and New Zealand with respect to the exclusive right to use the word “TOPPING” and “WHIP TOPPING” – both of which form part of its registered trademark “RICH’S WHIP TOPPING”. Similarly, in India the plaintiff has accepted disclaimer in respect of letter “S” and the word “Topping” once again as part of its trademark “RICH’S WHIP TOPPING”. Consequently, both the issues are found against the plaintiffs.
• Issue Nos. 4 & 5 are answered against the plaintiff and in favor of the defendant in as much as neither the defendant’s mark “BELLS WHIP TOPPING” nor the defendant’s packaging and/or trade dress is deceptively or confusingly similar to the plaintiffs trademark “RICH’S WHIP TOPPING” or its packaging or even its trade dress.
• Issue Nos. 7 to 10 is also answered in favor of the defendant and against the plaintiffs. The word “WHIP TOPPING” which forms a part of the plaintiffs mark is not a coined word but is both generic and descriptive of the product. The words have not acquired a secondary meaning.
• In view of the observations above, the issue No. 6 is also answered against the plaintiff. The plaintiffs are hence not entitled to any damages as claimed or at all.
• In so far as issue No. 11 and 12 are concerned, I am of the view that both these issues have to be found in favor of the plaintiff. The plaintiff is not guilty of concealment in view of the fact that the document pertaining to disclaimer of letter “S” and the word “Topping” had been filed. Even though it is conceded, and I must say, quite fairly by the learned senior counsel for the plaintiff that the pleadings do not allude to the aspect of the disclaimer, this, in my view, may have been oversight, which cannot be termed as an act of concealment. In any event, as submitted by Mr. Gupta, this cannot determine the outcome of the proceeding in the final analysis. Since, in any event, every issue has been determined on merits this issue has really been relegated to the background. Accordingly, I find the issue in favor of the plaintiff and against the defendant.
• As regards whether the suit is barred on account of delay and latches and acquiescence, I am of the view that the said issue has to be once again found in favor of the plaintiff and against the defendant. The reason for the same being that there is nothing put on record by way of evidence by the defendant to suggest that the plaintiffs assertion, that it came to know of the defendant’s use of, what it claims as infringing trademark, i.e., “BELLS WHIP TOPPING”, only in April, 2003 as false. The plaintiffs alacrity from then on is documented in the cease and desist notice dated 23.04.2003 issued to the defendant. The reply to the said notice was received by the plaintiff undisputed on 13.05.2003 (Ex D4). The instant suit was filed in March, 2004. Therefore, while there may have been some delay, and perhaps some degree of latches in not coming to the court at the earliest, it most certainly is not a case of acquiescence. It would also perhaps be useful to cull out the distinction between acquiescence and laches.

Acquiescence to my mind would mean conscious acceptance of an inimical state of affairs. The meaning of the word “acquiescence” would perhaps also depend on the context in which it is used.  “Acquiescence-the word, it has been said, implies acceptance or approval, active assent, active consent, assent, assent or consent, consent, also knowledge, and power to contract.” Black’s Law Dictionary , “Acquiescence conduct recognizing the existence of a transaction, and intended, in some extent at least, to carry the transaction, or permit it to be carried, into effect.” It would also perhaps be useful to cull out the distinction between acquiescence and laches as stated in the Black’s Law Dictionary “Acquiescence and laches are cognate but not equivalent terms. The former is a submission to, or resting satisfied with, an existing state of things, while latches implies a neglect to do that which the party ought to do for his own benefit or protection. Hence laches may be evidence of acquiescence. Latches imports a merely a passive assent, while acquiescence implies active assent.  “Acquiescence” relates to inaction during performance of an act while “laches” relates to delay after act is done.” Accordingly, this issue is found in favor of the plaintiff and against the defendant. In view of the discussions above, I am of the opinion that the prayers sought in the suit deserves to be rejected. The suit is dismissed. It is ordered accordingly.

For Trademark Registration in Cochin -> Click here.