India: Bombay High Court on the test to be applied in Passing-Off cases

Source: www.bombayhighcourt.nic.in

Recently, the Division Bench of Bombay High Court in Ansari Bilal Ahmadlal Mohd. V. Shafeeque Ahmed Mohammed Sayeed held that ‘in case of passing off the test to be applied is of a person of average intelligence and imperfect recollection. The device, label mark has to be seen in its entirety and after taking into consideration the facts of the case, a decision has to be arrived at as to whether the mark of the Appellant is deceptively similar to the Respondent’s one.’

Brief Facts

Ø  In 1993, Mohammad Sayeed Gulam Husaain Attarwale (hereinafter referred to as the ‘Respondent’s Father’), independently created a distinctive label i.e. ‘SUKOON OIL’ and ‘NAGEENA SUKOON OIL.’ The Respondent’s father was using the label since 1993. ‘SUKOON OIL’ used as a pain-relieving massage oil was, manufactured and marketed under the said distinctively designed label and mark. The Respondent’s father in the name and style of M/s. Nageena Ayurvedic Pharmacy carried out the said business.

Ø  Shafeeque Ahmed Mohammed Sayeed (hereinafter referred to as ‘the Respondent’) has been running the said pharmacy business, after the death of his father, Mohammad Sayeed Gulam Husaain Attarwale, in 2000.

Ø  In July 2016, the Respondent discovered that JBM Herbal Pharmacy (hereinafter referred to as ‘the Appellant’) is also selling products under the mark ‘SUKOON’ in Mumbai.

Ø  The Appellant was also engaged in the manufacturing, marketing and selling a similar Ayurvedic/Unani medicine under the Trademark ‘SUKOON’ and under the deceptively similar label bearing the word ‘HEENA’ written and depicted in similar manner to the word ‘NAGEENA’, the Respondents’ label.

Ø  The Respondent filed a suit for infringement of registered trademarks being a label mark of ‘SUKOON OIL’ and infringement of copyright in ‘SUKOON’ label, before the Learned Single Judge Bench of the Bombay High Court. 

Ø  The Learned Single Judge Bench after carefully listening to the contentions of the parties as well as considering the statement of year-wise purchases and sales from the year 2002-2003 to 2014-2015, granted interim relief to the Respondent in Notice of Motion dated October 26, 2016.  

Ø  Being aggrieved by the order of the Learned Single Judge, an appeal was filed by the Appellant before Learned Division Bench of the Bombay High Court. 

Appellant’s Contentions

Ø  The Appellant contended that the calligraphy used by the Appellant Company is of different style compared to that of the Respondent Company. The differences pointed out by the Appellant were:

o   The Respondent’s label display lungs, whereas the label of Appellant display full skeleton.

o   Representation is different.

o   Respondent’s label is totally different from that of Appellant,

o   In no manner both the bottles i.e. bottle of Appellant and Respondent is likely create confusion,

o   The word ‘SUKOON’ reflects the nature of the product,

o   The word ‘SUKOON’ written in one of the bottles of the Appellant is different in fonts, color, and style as compare to the bottle of the Respondent.

Ø  It contended that since the two trademarks are entirely different, the Respondent could not seek protection on the ground of usage of the word ‘SUKOON’, as the same is not even registered at the behest of the Respondent.

Ø  It is submitted that the word ‘SUKOON’ on the product is being used in the descriptive sense and not as a trademark.

Ø  On the claim of passing off, the Appellant took protection under Section 35 of the Trade Marks Act, 1999, since the expression used by them is bonafide expression of character and quality of its own goods. It also submitted that the Respondent has failed to make out a prima-facie case of passing off.

Ø  It submitted that the word ‘SUKOON’ is used in association with ‘HEENA’, which is distinctive in nature. Further, the Appellant states that it is using the word ‘HEENA’ since the year 2012.

Ø  It was further submitted by the Appellants, that the registration of the label mark titled ‘SUKOON OIL’ was on the condition that the Appellants put a disclaimer that registration of the mark shall give no right to the exclusive use of the device of lungs and the independent use of the word OIL and the letters N, A, and P. Therefore, ‘SUKOON’ Trademark is not distinctive with the ayurvedic preparation of Respondent and is not exclusively associated with the Respondent.  

Ø  It submitted that there is nothing distinctive in the label mark of the Respondent. The registration of the Respondent is a device mark. Color combination of Respondent's label and Appellant's label are entirely different. The design and description of the words are entirely different and dissimilar; therefore, there is no question of the Appellant carrying his trade transaction with the product ‘HEENA SUKOON OIL’ with a deceptively similar label as of the Respondent, which is sold in the market as ‘NAGEENA SUKOON OIL’.

Ø  It submitted that there is an error on the part of the Learned Single Judge in allowing the Notice of Motion. It has suffered a grave loss and injury due to restrictive orders passed by the learned Single Judge of this Court, which has affected his business.

Respondent’s Contention

Ø  According to the Respondent, in 1993, his father, Mohammad Sayeed Gulam Husaain Attarwale (hereinafter referred to as the ‘Respondent’s Father’), independently created a distinctive label i.e. ‘SUKOON OIL’ and ‘NAGEENA SUKOON OIL.’ The Respondent’s father was using the label since 1993. ‘SUKOON OIL’ used as a pain-relieving massage oil was, manufactured and marketed under the said distinctively designed label and mark. The Respondent’s father in the name and style of M/s. Nageena Ayurvedic Pharmacy carried out the said business.

Ø  On February 12, 1994, the Respondent’s father applied for Trademark registration of ‘SUKOON’ label. However, on June 4, 2000 the Respondent’s father had expired.

Ø  After the Respondent’s father expired, the Respondent has been running the pharmacy and manufacturing labels. Again, on August 17, 2005, the Respondent applied for registration of Trademark ‘SUKOON’ label. The said Trademark was registered in Class 05. The Respondent also stated that he is registered proprietor of word mark ‘NAGEENA.’

Ø  The Respondent states that by manufacturing, selling and/or offering for sale the impugned product, the Appellant is violating Respondents’ valuable, intellectual and intangible proprietary rights contained in the registered Trademark ‘SUKOON’ label and/or its essential ingredients i.e. word ‘SUKOON.’

Ø  It is stated that Appellant has deliberately adopted the impugned Trademark with malafide intention of passing off their product as and for that of the Respondent.

Ø  It contended that the Appellant is applying wrong test in trying to establish that there is no deceptive similarity. The label of the Respondent is an essential prominent feature, which is ‘SUKOON’. It has also applied separately for registration of the word ‘SUKOON’ and is using the mark since 1993.

Ø  It further submitted that the Learned Single Judge has gone through the entire record and after taking into consideration the material placed on record and submissions advanced, has reached the conclusions mentioned in the order.  

Court ’s Decision

Ø  The Learned Division Bench of the Bombay High Court (hereinafter referred to as ‘the Court’) threw light on the observations of the Learned Single Judge. It noted that the statement of year-wise purchases and sales from the year 2002-2003 to 2014-2015 submitted by the Respondent showed that, the sale of the product had risen considerably from INR 29,208/- in 2002-2003 to the extent of INR 1.52 Crores in the year 2014-2015. It also took note that the Learned Single Judge had even described in detail the discrepancies in labels of both the parties.

Ø  The Court stated that the Respondent has obtained the registration of the mark, hence prima-facie the Respondent has established that the Appellant has been using the label marks on his products, ‘HEENA SUKOON OIL’, which is deceptively similar to the Respondent's product known and styled as ‘NAGEENA SUKOON OIL’.

Ø  The Court held that ‘during the course of hearing it was submitted that majority of consumers of these products are laborers from Bhiwandi area. The test to be applied in the case is of a person of average intelligence and imperfect recollection. The device, label mark has to be seen in its entirety and after taking into consideration the facts of the case, a decision has to be arrived at as to whether the mark of the Appellant is deceptively similar to the Respondent's one.’

Dismissing the appeal, the Court noted that the Respondent has made out a strong prima-facie case of passing off. In addition, there is no arbitrariness in the view adopted by the Learned Single Judge. The Learned Single Judge has dealt with the issues in a reasonable and judicious manner.

For the knowledge of the reader, the details of the status of various Trademarks of the Respondent as per the records of the Trademark Registry is given below: