Supreme Court of India
T.V. VENUGOPALversusUSHODAYA ENTERPRISES LTD. AND ANR.
- Citation
- 2011 INSC 176
- Decided
- 3 March 2011
- Disposal
- Disposed off
- Bench
- DALVEER BHANDARI
Holding
The appellant’s use of the mark "Eenadu" in Andhra Pradesh is fraudulent, creates consumer confusion, and infringes the respondent’s goodwill, warranting an injunction restraining such use.
Summary
The appellant, a Karnataka‑based incense‑stick manufacturer, adopted the mark "Eenadu" for its products and sold them in Andhra Pradesh. The respondent, a prominent Telugu newspaper and media group, claimed that the mark had acquired extraordinary reputation and goodwill in the state and that the appellant’s use amounted to passing‑off and copyright infringement. The trial court and the High Court initially granted a limited injunction restraining the appellant from using "Eenadu" only in Andhra Pradesh, but the appellant appealed and the High Court later made the injunction absolute. The Supreme Court examined the nature of the mark, its secondary meaning, the likelihood of consumer confusion, and the appellant’s intent, concluding that the use was fraudulent, would erode the respondent’s goodwill, and would mislead consumers. Accordingly, the Court upheld the injunction restraining the appellant from using the mark "Eenadu" in Andhra Pradesh and dismissed the appeals.
Issues considered
- The respondent’s mark "Eenadu" has acquired secondary meaning and extraordinary reputation in Andhra Pradesh.
- Whether the appellant’s use of the mark "Eenadu" for incense sticks constitutes passing‑off or infringement of copyright.
- Whether the appellant can be considered an honest concurrent user of the mark.
- Whether an injunction should be limited to Andhra Pradesh or made absolute across India.
Legislation cited
- Copyright Act, 1957s. 45(1)
- Limitation Act, 1963s. 22
- Trade Marks Act, 1958s. 159(4), s. 21, s. 46
- Trade Marks Rules, 1959s. 24(3)
Subjects
passing offtrademark infringementgoodwillsecondary meaningconsumer confusioninjunctionfraudulent usecopyright infringement
Judgment
[2011] 4 S.C.R. 1000
A T.V. VENUGOPAL
v.
USHODAYA ENTERPRISES LTD. AND ANR.
(Civil Appeal Nos.6314-6315 of 2001)
MARCH 03, 2011
B
[DALVEER BHANDARI AND K.S. RADHAKRISHNAN,
JJ.]
Intellectual Property - Passing-off in trade mark -
C Infringement of copyright - Appellant is sole proprietor of a
Karnataka based firm carrying on manufacture of incense
sticks (agarbathis), which adopted the trade mark 'Eenadu' and
started selling its product in the State of Andhra Pradesh -
Respondent company, engaged in the business of publishing
D a newspaper in Telugu entitled as 'Eenadu' and other
businesses in the State of Andhra Pradesh, filed a suit for
infringement of copyrights and passing-off trade mark -
Whether the appellant should be permitted to sell his product
with the mark 'Eenadu' in the State of Andhra Pradesh - Held:
E The respondent company's mark 'Eenadu' has acquired
extraordinary reputation and goodwill in the State of Andhra
Pradesh - 'Eenadu' means literally the products or services
provided by the respondent company in the State of Andhra
Pradesh - In this background, the appellant cannot be
F referred or termed as an honest concurrent user of the mark
'Eenadu' - Adoption of the words 'Eenadu' is ex facie
fraudulent and ma/a fide from the very inception - By adopting
the mark 'Eenadu' in the State of Andhra Pradesh, the
appellant clearly wanted to ride on the reputation and goodwill
G of the respondent company - Permitting the appellant to sell
his product with the mark 'Eenadu' in the State of Andhra
Pradesh would definitely create confusion in the minds of the
consumers because the appellant is selling Agarbathies
marked 'Eenadu' designed or calculated to lead purchasers
H 1000
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1001
AND ANR.
to believe that its product Agarbathies are in fact the products A
of the respondent company - No one can be permitted to
encroach upon the reputation and goodwill of other parties -
This approach is in consonance with protecting the proprietary
rights of the respondent company.
B
The appellant is the sole proprietor of a Karnataka
based firm carrying on manufacture of incense sticks
(agarbathis), which adopted the trade mark 'Eenadu' and
started selling its product in the State of Andhra Pradesh.
The word 'Eenadu' means 'this land' in Kannada, C
Malayalam and Tamil languages and 'today' in Telugu
language. The respondent company, which was engaged
in the business of publishing a newspaper in Telugu
entitled as 'Eenadu' and other businesses in the State of
Andhra Pradesh, filed a suit for infringement of copyrights
0
and passing-off trade mark. The respondent company
contended that the use of the word 'Eenadu' by the
appellant amounted to infringement of their copyright and
passing-off in trade mark. The trial court partially decreed
the suit of the respondent company by injuncting the E
appellant from using the words 'Eenadu' in the State of
Andhra Pradesh. The appellant was not injuncted from
using the words 'Eenadu' in the entire country other than
in the State of Andhra Pradesh. The appellant filed appeal
before the High Court. The respondent company also
F
filed an appeal praying that the order of injunction to be
made absolute and not be confined to the State of Andhra
Pradesh. A Single Judge of the High Court dismissed the
appeal filed by respondent company while allowing the
appeal filed by the appellant. The respondent company G
filed Letters Patent Appeal before the Division Bench of
the High Court which was allowed, thereby decreeing the
original suit filed by the respondents in 1999. Hence the
present appeals.
Disposing of the appeals, the C~urt H
1002 SUPREME COURT REPORTS [2011] 4 S.C.R.
•
A HELD: 1.1. The respondent company's mark
'Eenadu' has acquired extra-ordinary reputation and
goodwill in the State of Andhra Pradesh. 'Eenadu'
newspaper and TV are extremely well known and almost
household words in the State of Andhra Pradesh. The
B word 'Eenadu' may be a descriptive word but has
acquired a secondary or subsidiary meaning and is fully
identified with the products and services provided by the
respondent company. [Para 100] [1053-G-H; 1054-A]
C 1.2. The appellant is a Karnataka based company
which started manufacturing its product in Bangalore in
the name of 'Ashika' and started selling its product in the
State of Andhra Pradesh in 1995. The appellant started
using the name 'Eenadu' for its Agarbathi and used the
same artistic script, font and method of writing the name
0
which obviously cannot be a co-incidence. The appellant
company after adoption of name 'Eenadu' accounted for
90% of sale of their product Agarbathi. [Para 101] [1054-
B]
E 3. On consideration of the totality of facts and
circumstances of the case, the following findings and
conclusions are arrived at:
a) The respondent company's mark 'Eenadu' has
F acquired extraordinary reputation and goodwill in the
State of Andhra Pradesh. The respondent company's
products and services are correlated, identified and
associated with the word 'Eenadu' in the entire State of
Andhra Pradesh. 'Eenadu' means literally the products or
G services provided by the respondent company in the
State of Andhra Pradesh. In this background the
appellant cannot be referred or termed as an honest
concurrent user of the mark 'Eenadu';
b) the adoption of the words 'Eenadu' is ex facie
..
H fraudulent and mala fide from the very inception. By
•
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1003
AND ANR.
adopting the mark 'Eenadu' in the State of Andhra A
Pradesh, the appellant clearly wanted to ride on the
reputation and goodwill of the respondent company;
c) permitting the appellant to carry on his business
would in fact be putting a seal of approval of the court 8
on the dishonest, illegal and clandestine conduct of the
appellant;
d) permitting the appellant to sell his product with
the mark 'Eenadu' in the State of Andhra Pradesh would
definitely create confusion in the minds of the consumers C
because the appellant is selling Agarbathies marked
'Eenadu' as to be designed or calculated to lead
purchasers to believe that its product Agarbathies are in
fact the products of the respondent company. In other
words, the appellant wants to ride on the reputation and D
goodwill of the respondent company. In such a situation,
it is the bounden duty a,nd obligation of the court not
only to protect the goodwill and reputation of the
respondent company but also to protect the interest of
the consumers; E
e) permitting the appellant to sell its product in the
State of Andhra Pradesh would amount to encouraging
the appellant to practise fraud on the consumers;
F
f) permitting the appellant to carry on his business
in the name of 'Eenadu' in the State of Andhra Pradesh
would lead to eroding extra-ordinary reputation and
goodwill acquired by the respondent company over a
passage of time;
G
g) the appellant's deliberate misrepresentation has
the potentiality of creating serious confusion and
deception for the public at large and the consumers have
to be saved from such fraudulent and deceitful conduct
of the appellant; H
1004 SUPREME COURT REPORTS [2011] 4 S.C.R.
A h) permitting the appellant to sell his product with
the mark 'Eenadu' would be encroaching on the
reputation and goodwill of the respondent company and
this would constitute invasion of proprietary rights vested
with the respondent company and
8
i) honesty and fair play ought to be the basis of the
policies in the world of trade and business. [Para 102]
[1054-C-H; 1055-A-H; 1056-A]
1.4. The law is consistent that no one can be
C permitted to encroach upon the reputation and goodwill
of other parties. This approach is in consonance with
protecting proprietary rights of the respondent company.
[Para 103] (1056-B]
D Daimler Benz Aktiegesellschaft and another v. Hybo
Hindustan AIR 1994 Delhi 239; Ruston & Hornsby Ltd. v. The
Zamindara Engineering Co. 1969 (2) SCC 727; Laxmikant
V. Patel v. Chetanbhai Shah and Another 2002 (3) SCC 65;
.. Satyam lnfoway Ltd. v. Sifynet Solutions (P) Limited 2004 (6)
E SCC 145; Ramdev Food Products (P) Limited v. Arvindbhai
Rambhai Patel and Others 2006 (8) SCC 726; Midas
Hygiene Industries (P) Ltd. and another v. Sudhir Bhatia and
others (2004) 3 SCC 90; Madhubhan Holiday Inn v. Holiday
Inn Inc. 100 (2002) DLT 306 (DB); Mahendra & Mahendra
F Paper Mills Limited v. Mahindra & Mahindra Limited (2002)
2 SCC 147; Bata India Limited v. Pyare Lal & Company,
Meerut City & Ors. AIR 1985 All 242; N.R. Dongre and others
v. Whirlpool Corporation and another (1996) 5 SCC 714;
Godfrey Philips India Limited v. Gimar Food & Beverages (P)
G Limited (2004) 5 SCC 257; Info Edge (India) Private Limited
and another v. Shailesh Gupta and another 98 (2002) DLT
499; Kamal Trading Co., Bombay and Others v. Gillette UK.
Limited [1988] IPLR 135; Honda Motors Company Limited
v. Charanjit Singh & Others (101 (2002) DLT 359); Mis.
H Bengal Waterproof Limited Vs. Mis. Bombay Waterproof
• T.V. VENUGOPAL v. USHODAYA ENTERPRISES
LTD. AND ANR.
1005
Manufacturing Company and Another (1997) 1 SCC 99; A
Heinz Italia and another v. Dabur India Limited (2007) 6 SCC
1; Ford Motor Company of Canada Limited and another v.
Ford Service Centre 2009 (39) PTC 149; Prakash Roadline
Limited v. Prakash Parcel Service (P) Ltd. 48 (1992) Delhi
Law Times 390 - referred to. B
Taylor Mary Campbell v. Secretary of Health and Human
Services 69 Fed. Cl. 775 (2006) [US Court of Federal
Claims]; Lamilem Badasa v. Michael B. Mukasey 540 F.3d
909 [US Court of Appeals]; Reddaway & Co. and Another c
v. Banham & Co. and Another 1895-99 All ER 133; Reckitt
& Colman Products Ltd. v. Borden Inc. and others 1990 (1)
ALL ER 873; Harrods Limited v. R. Harrod Limited (1924) ,
RPC 74; Harrods Limited v. Harrodian School Limited (1996)
RPC 697; Office Cleaning Services Limited v. Westminster D
Office Cleaning Association 1944 (2) All ER 269; Taittinger
and others v. Allbev Limitd and others (1994) 4 All ER 75 -
referred to.
Case Law Reference:
E
AIR 1994 Delhi 239 referred to Para 29, 76
69 Fed. Cl. 775 (2006) referred to Para 37
540 F.3d 909 referred to Para 37
F
1895-99 All ER 133 referred to Para 61
1990 (1) ALL ER 873 referred to Para 63
1969 (2) sec 121 referred to Para 64
2002 (3) sec 65 ·referred to Para 65 G
2004 (6) sec 145 referred to Para 66
2006 (8) sec 726 referred to Para 67, 95
(1924) RPC 74 referred to Para 68 H
1006 SUPREME COURT REPORTS [2011] 4 S.C.R.
•
A (1996) RPC 697 referred to Para 69, 73, 77
(2004) 3 sec 90 referred to Para 70
(2002) DLT 306 (DB referred to Para 71
B (2002) 2 sec 147 referred to Para 74
AIR 1985 All 242 referred to Para75
(1996) 5 sec 714 referred to Para 79
(2004) 5 sec 257 referred to Para 80
c
98 (2002) DLT 499 referred to Para 81
1944 (2) All ER 269 referred to Para 82
(1994) 4 All ER 75 referred to Para 87
D
1988 IPLR 135 referred to Para 89
(2002) DLT 359 referred to Para 90
(1997) 1 sec 99 referred to Para 93
E (2001) 6 sec 1 referred to Para 94
2009 (39) PTC 149 referred to Para 96
(1992) DLT 390 referred to Para 97
F CIVIL APPELLATE JURISDICTION : Civil Appeal No.
6314-6315 of 2001.
From the Judgment & Order dated 15.06.2001 of the High
Court of Andhra Pradesh at Hyderabad in LPA Nos. 12 & 13
of 2001.
G
Pratibha M. Singh, Kapil Wadhwa, Abhinav Mukherjee for
the Appellant.
C.A. Sundaram, Neelima Tripathi, G.V.S. Jagannadha
H Rao, Rohini Musa, Abhishek Gupta, K.V. Mohan, Zafar lnyat,
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD:1007
AND ANR.
Md. Niyazuddin, Anandh Kannan for the Respondents. A
The Judgment of the Court was delviered by
DALVEER BHANDARI, J. 1. These appeals are directed
against the judgment delivered by a Division Bench of High
8
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.
c
3. The appellant is the sole proprietor of a firm carrying
on business inter alia as manufacturers of and dea.lers in
incense sticks (agarbathis) in the name and style of Ashika
Incense Incorporated at Bangalore.
4. The appellant started his business in the year 1988 and D
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'.
E
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.
F
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 G
same description in Telugu besides the name and address of "·
the appellant. The panel on one side of the carton mentions the 1
name, address, contents and another side contains 'Eenadu'
in Devnagari, Tamil and Malayalam.
H
1008 SUPREME COURT REPORTS [2011] 4 S.C.R.
•
A 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
B 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
C 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
D 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
Court of Second Additional Chief Judge, City Civil Court,
Hyderabad. The respondent company therein claimed that they
E 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
f 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.
G
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
H absolute monopoly could either be claimed or vest in any single
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1009
AND ANR. [DALVEER BHANDARI, J.]
proprietor in respect of the entire spectrum of goods and/or A
services and there have been other traders and manufacturers
who have been using the word 'Eenadu' to distinguish their
merchandise from similar merchandise of others.
12. The appellant also asserted that in Hyderabad one co- B
operativ~ 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 c
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 D
injunction re.straining 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 E
permitted the appellant to dispose off their finished products
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.
F
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.
G
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 H
1010 SUPREME COURT REPORTS [2011] 4 S.C.R.
•
A 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.
B 16. Aggrieved by the said order of the learned Single
Judge, the respondent company filed Letters Patent Appeals
before the Division Bench of the High Court. The High Court
vide impugned order allowed its appeals, decreeing the O.S.
No.555 of 1999.
c 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
D 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.
E
18. The appellant also submitted that the courts below
have not properly appreciated the distinction between the
existence of a copyright and its infringement.
F 19. According to the appellants, the respondent company
was aware of the appellant's business since at least 27.2.1995
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.
G 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
H
• T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1011
AND ANR. [DALVEER BHANDARI, J.]
Malayalam. A
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. B
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 c
reputation of another person.
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 D
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 E
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 F
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 G
which case it would never constitute an action of
passing-off.
5. Again, if the said name is descriptive of the product
H
1012 SUPREME COURT REPORTS [2011] 4 S.C.R.
•
A 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
B 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.
C 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
0
section 159(4) of the 1999 Act, which specifically provides that
any legal proceedings pending in any court at the
commencement of this Act would be governed by the old Act.
Section 159(4) of the 1999 Act is reproduced as under:-
E "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
F 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,
G 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
H
• T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1013
AND ANR. [DALVEER BHANDARI, J.]
be either confusion arising due to get up of products, confusion A
as to.sponsorship/affiliation of source or confusion arising out
of the use of identical/deceptively similar trademarks.
25. Learned counsel for the appellant also submitted that
dilution is a completely different concept, namely, if there is B
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. c
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 D
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 E
following:-
a) The traditional likelihood of confusion test applies
to passing off.
F
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. G
d) Standard of distinctiveness required to protect a
mark from dilution is very high.
e) Not every trade mark can be protected against H
1014 SUPREME COURT REPORTS [2011) 4 S.C.R.
•
A dilution.
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
B 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
C only marks which have been protected across product category
are marks which can easily be termed even in the common
parlance as well-known marks. Such marks such as Bata,
Volvo, Benz, Mahindra & Mahindra and Tata etc.
D 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.
E 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
F 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
G favour of the respondent company (plaintiff) for 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 :-
H
•T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1015
AND ANR. [DALVEER BHANDARI, J.]
1. Time/Times Time Magazi'ne, Time Education, Times A
London, Times of India, Navbharat Times,
Hindustan Times, Times Now .
2. Today India Today, Punjab Today, Today's Tea,
Today's Contraceptive
B
3. Marvel Marvel Comics, Marvel Detergent
4. Sun, Surya, Oil, Lights & Bulbs, Tobacco
Su raj
5. Metro Metro Shoes, Delhi Metro, Metro Walk
Malls c
6. Maruti Oil, Cars
7. Taj Hotels (Taj Hotels), Tea (Wah! Taj)
8. Citi Citi Bank, City Mall
9. Mustang Motel, Cars, Trailers
D
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, E
Law Officer of the plaintiff, who has stated that the literal
meaning of the word 'Eenadu' is 'Today'.
32. According to the deposition off>W2, N. Swami, Artist:
the meaning of the word 'Eenadu' is 'Today'. F
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, G
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 H
1016 SUPREME COURT REPORTS [2011] 4 S.C.R.
•
A the word 'Eenadu' literally means "Today" or "This Day" 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 :-
B
'Eenadu' Turmeric powder - even the script is the
same
'Eenadu' Cooperative Bank
c 'Eenadu' Match Sticks - even the script is the same
'Eenadu' Playing Cards
'Eenadu' Ayurvedic Bath Soaps
D 'Eenadu' Dresses
'Eenadu' Chilly Powder - even the script is the
same
'Eenadu' Washing Powder
E
'Eenadu' Coffee - even the script is the same
'Eenadu' Telugu Feature Film
'Eenadu' Tobacco - same script
F
'Eenadu' Hotel
'Eenadu' Marble Estate
'Eenadu' Feature Film (The said film by UTV
G 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
H music launch of this film was also featured in the
•
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD:1017
AND ANR. [DALVEER BHANDARI, J.]
newspaper of the respondents dt. 14.9.09. This film A
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, 8
Eeneeru Kannada (This day is Kannada, This
water is Kannada).
36. The appellant submitted that it is clear that 'Eenadu'
is a term which is used in the ordinary Telugu language and in
Kannada and the same is acknowledged by the respondent C
company itself as is evident from the wide publicity given to the
film in the respondent company's newspaper.
37. The appellant further submitted that the evidence relied
upon by the respondent company in order to allege that D
'Eenadu' is a reputed and distinctive mark, is a compilation of
documents handed over before this court during the course of
arguments on 23.3.10. In order to show that 'Eenadu' is a
household name, an extract from Wikipedia printed on 13.4.09
was submitted by the respondent company before this court. E
In fact, all the other internet print-outs annexed by the
respondent company are based on Wikipedia itself. It is the
submission of the appellant that it is now an established
position, internationally in law that Wikipedia does not have any
evidentiary value in the court proceedings. The same has been F
held by the US Court of Federal Claims in Taylor Mary
Campbell v. Secretary of Health and Human Services 69 Fed.
Cl. 775 (2006) and by the US Court of Appeals in Lamilem
Badasa v. Michael B. Mukasey 540 F.3d 909. As against the
Wikipedia evidence, the actual evidence on record reveals the
following:- G
a) 'Eenadu' has a specific meaning in Telugu
language and also has a meaning in Kannada
language and possibly even in Malayalam;
H
1018 SUPREME COURT REPORTS [2011] 4 S.C.R.
•
A b) 'Eenadu' has been used by several parties in the
same script without any objection whatsoever from
the respondent company (barring 2 ex-parte
injunctions).
c) 'Eenadu' means "Today" or "This Day".
B
d) The respondent company itself has acquiesced to
3rd party usage of the mark (including 'Eenadu'
feature film by UTV).
c e) The respondent company's submission that this
court ought to ignore the concrete documentary
evidence and testimony and instead rely upon
extracts from the Wikipedia to prove that 'Eenadu'
is a household name, is not liable to be entertained.
D
38. Thus, 'Eenadu' does not enjoy the distinctiveness which
the respondent company claim and in any event such
distinctiveness does not span across all classes of goods and
services.
E 39. The respondent company has argued before this court
that the descriptive nature of the mark has to be determined
with respect to the appellant's goods. This approach according
to the appellant is completely erroneous. While determining the
nature of the mark - for the purpose of registration or for the
F purpose of passing-off/infringement, the first inquiry which the
court ought to carry out is to determine whether the applicant's/
plaintiffs mark is invented, arbitrary/suggestive, descriptive or
generic. The nature of the mark is always determined with
respect to the plaintiffs/applicant's goods. For example, if a
G person applies for a trademark called "Extra Strong", the
Registrar of trade mark has to examine whether the mark is
descriptive or laudatory for the goods for which it is applied,
i.e., the applicant's goods. The inquiry does not depend on the
person opposing the use of the said mark. Thus, to hold that
H
• T.V. VENUGOPAL v. USHODAYA ENTERPRISES 1019
LTD. AND ANR. [DALVEER BHANDARI, J.]
the nature of the mark has to be determined by the nature of A
the appellant's goods is stating the proposition in the reverse.
40. In the present case, the plaintiff/respondent company
was conscious that 'Eenadu' is a descriptive mark and it is for
this reason that in the plaint, the plaintiff (respondent) company
has pleaded a secondary meaning with respect to their mark 8
'Eenadu'. If the plaintiffs case is based on 'Eenadu' being a
distinctive mark, a suggestive mark and a well known mark,
then there is no question of pleading secondary meaning to its
mark. It is only with respect to descriptive marks that secondary
meaning needs to be pleaded and considered by this court. C
41. The argument of the respondent company is that
'Eenadu' is not a generic or descriptive mark but a suggestive
mark. The difference between categorization as generic,
descriptive or suggestive is a follows:- o
* A generic mark can never be a trademark
* A descriptive mark can become a trademark if it
acquires secondary meaning
E
* A suggestive mark is inherently distinctive
42. The line between suggestive marks and descriptive
marks is very thin. Various commentaries including McCarthy
have laid down the imagination test to determine as to whether
a mark is descriptive or suggestive. When this test is applied F
to the mark 'Eenadu' for a newspaper, it is clear that the same
is descriptive in nature inasmuch as it means 'Today', i.e. news
for today. It does not require any imagination at all. Thus in the
imagination test, if the mark describes a characteristic of the
product - in the case of 'Eenadu' the newspaper, it refers to G
the characteristic of the newspaper, i.e., today's news. 'Eenadu'
would therefore, be an expression which immediately describes
a newspaper. In fact with respect to its Agarbathies, 'Eenadu'
would be a completely arbitrary term. However, With respect to
H
1020 SUPREME COURT REPORTS [2011) 4 S.C.R.
A newspapers, this is a descriptive term.
43. The appellant submitted that the entire object of
including the 4th Schedule in the Trademark Rules is that marks
are to be registered for the goods and services for the purpose
for which they are used. Non-use of a mark entails rectification
B under section 46 of the 1958 Act. Thus, the entire object of
trademarks is to confer monopoly of a particular individual or
entity with respect to a mark for a particular category of goods
or category of services. It is only in exceptional cases that a
mark is protected across all product categories. If that was not
C the position, then every trademark owner whose mark enjoys
a reputation in whatever limited field and for specific goods/
services, would be able to claim monopoly for the mark with
respect to all 42 classes of goods and services. This could
never have been the intention of the Legislature. Even while
D establishing the criteria for the marks which are well-known, the
legislature has thought it fit to deal with the reputation of such
well-known marks by taking into consideration factors like
section of the public, relevant geographical area etc. Thus,
every trade mark is not entitled to protection across all
E categories as every trade mark does not automatically become
a "well-known mark". If this was not the case, then there would
come a time when most words would get monopolized across
products and services which would not conform to the intention
behind the Law of Trade Marks.
F
44. Every mark with a reputation cannot be determined as
a well-known mark as reputation by itself does not escalate the
mark into the position of a well-known mark. The reputation of
a mark can be restricted to a particular territory, to a particular
category of goods or services, to a particular category of
G population, to a particular linguistic section of public etc.
45. The appellant submitted that in most of the cases
where absolute protection has been granted, extending it
beyond the goods and services in which the plaintiff deals with,
H the mark or name has been an extremely distinctive mark. They
•
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1021
AND ANR. [DALVEER BHANDARI, J.]
have either invented the mark or marks which are derived from A
surnames or marks are used across categories of products.
The defendant's products may be confused from the other
products originating from the plaintiff, but the plaintiff has to be
dealing with more than one products or services with respect
to the said mark/name. B
46. In the present case, the evidence on record has
established that the plaintiff/respondent company has only dealt
with mark 'Eenadu' for newspapers. The television channel is
known as ETV where the word 'Eenadu' is not used for the
same. The evidence itself establishes the same. Further it is C
pertinent to note that:
* There is not a single document showing that the
respondent company is referred to as 'Eenadu'
Margdarshi's goods; D
* Priya is also· a mark of pickles which is
manufactured by the respondent company;
* 'Eenadu' pickles (if any) are not available in the local
market; E
* ETV is the shortcut name for the 'Eenadu'
Television;
* The respondent company does not manufacture F
incense sticks;
* That 'Eenadu' has been used to convey the literal
meaning as "Today".
47. The appellant submitted that in the background of this G
evidence emanating from the plaintiff's main witness, it is
evident that 'Eenadu' is not a distinctive mark. It is in fact a
descriptive mark. At best, a secondary meaning may accrue
in its favour with respect to only newspapers and nothing more.
Descriptive words which have been used only for one category H
1022 SUPREME COURT REPORTS [2011] 4 S.C.R. •
A of goods cannot claim across the board protection. 'Eenadu'
is not like Volvo or Kirloskar or Harrods or Benz.
48. 'Eenadu' would fall in the category of marks like Shell,
Safeguard, Flexgrip, Imperial, Skyline and Financial Times,
Heat Piller, One Day Drycleaners, lnstea, Kesh Nikhar, Whipp
8
Toppings. All these words have not been granted protection
across the board.
49. The respondent company has argued before this court
that the appellant's adoption is dishonest in view of the similar
C scripts being used by the defendant. The script being used by
the appellant is a standard block script in the Telugu language.
The perusal of all the third party use of the mark 'Eenadu' would
reveal that almost every party uses the same script. Thus, there
is no dishonesty in adoption of the same as the script is
D commonly used in Telugu language. Even the feature film which
has been released in 2009 has used the same script. There is
no dishonesty in the adoption of the mark 'Eenadu' or the script
'Eenadu'. The appellant went through the process of applying
for a Search as prescribed under the Copyright Act. The
E appellant obtained a No-Objection in accordance with Section
45 of the Copyright Act and Rule 24(3) of the Trade Mark Rules,
1959.
50. The mark 'Eenadu' meaning DAILY or TODAY, the
appellant genuinely adopted the same to signify Daily use of
F Agarbathi, which is in fact used on a daily basis by persons
performing puja. Thus, the appellant does have a valid and
acceptable explanation for the adoption. It is submitted that for
the appellant's goods, it is an arbitrary mark.
G 51. The appellant submitted that in order to establish the
appellant's bona tides, the appellant Is ready and willing to
change the script and to prefix the word "Ashika" in order to
distinguish itself from the respondent company and to ensure
that there is no confusion as to source.
H
•
H
1024 SUPREME COURT REPORTS [2011] 4 S.C.R.
••
A chance of any confusion.
54. Mr. R.A. Sundaram, learned Senior Advocate argued
on behalf of the respondent company. He submitted that
'Eenadu' is not a common Telugu word meaning "Today" and
is not a common word. He submitted that 'Eenadu' has
B acquired secondary meaning and referred to and relied on the
trial court findings in that respect. He submitted that the
appellant failed to note that 'Eenadu' Group is inter alia a
publisher of a newspaper which is the second largest regional
daily circulating in India and is the largest in Andhra Pradesh.
c
55. Mr. Sundaram submitted that the appellant is a
Bangalore based company which started manufacturing its
products in Bangalore under the name "Ashika" and had started
selling its products in Andhra Pradesh in 1995. The appellant
D started using the name 'Eenadu' for its Agarbathies and used
same artistic script, font and method of writing the name cannot
be a co-incidence. The appellant is a Karnataka company after
adoption of the name 'Eenadu' accounted for 90% of the sale
of their product Agarbathies. The appellant was restrained from
E using the word 'Eenadu' in the State of Andhra Pradesh, their
sales have dropped by 10 times although they continued to sell
the product under the name "Ashika". The appellant glossed
over the fact of being manufacturer of Agarbathies as is
inexplicable as to why they had applied for registration of name
F 'Eenadu' not just for Agarbathies but inasmuch as 34 classes
of the Trade Marks Act for goods which they do not even
produce or do not have any intention to produce which would
itself show the intention that they can trade on the respondent
company's household name and goodwill and reputation.
According to the respondent company, all these facts clearly
G show that adoption of name 'Eenadu' was by no means
innocent but was intended to capitalize and derive benefit on
the goodwill and reputation of the respondent company which
is impressible.
H 56. Mr. Sundaram submitted the basic underlying fallacy
• T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1025
AND ANR. [DALVEER BHANDARI, J.]
. is that since after all the readers of a newspaper are literate A
and, therefore, would be able to make out that the Agarbathies
are by the· name "Ashika Eenadu" or that it comes from a
different source, overlooks completely that it is the purchaser
of the Agarbathies and not the purchaser of newspaper that we
1
are concerned with. The goodwill sought to be cashed in is the B
name 'Eenadu" by the appellant who is selling Agarbathies and
the person so deceived is not the purchaser of the newspaper
but the purchaser of the Agarbathies. To say that all the
purchasers of Agarbathies are illiterate people is a basic fallacy
since the purchasers of Agarbathies will transcend all classes c
of people in the society. The entire submission, therefore,
overlooks the basic fact that the purchaser of the Agarbathies
would be deceived into believing that the said Agarbathies also
come from the House of 'Eenadu' and thereby they would be
deceived as to the source of the product, and this cashing in D
on the goodwill and reputation of the respondent company is
impressible in law.
57. The respondent company's reply to the appellant's
contention that 'Eenadu' is not a household name since it only
deals with newspaper is complete fallacy because the group E
is known as "Eenadu Margadarshi Group" and the meaning of
'Eenadu' in various publications is stated to be the respondent
company's group. Furthermore, it also overlooked that in actual
fact there are various products which are also being produced
and sold by the respondent company under the business name F
of 'Eenadu'. It is also relevant to mention that the 'Eenadu' TV
Channel (also known as ETV) is one of the most popular
channels and, therefore, the word 'Eenadu' has come to be
completely associated with the respondent company group and
in fact is a household name. He has referred to the findings of G
the Trial Court, the High Court and that of the learned Single
Judge and submitted that such findings are not unreasonable
so as to require interference under section 136 of the
Constitution.
H
1026 SUPREME COURT REPORTS [2011] 4 S.C.R.
•
A 58. Mr. Sundaram submitted that 'Eenadu' is not a generic
name, but in fact would be a 'fancy' name outside the State of
Andhra Pradesh and within the State of Andhra Pradesh it is
a name which is not in common use, and therefore, would be
a 'fancy' name. In any event, 'Eenadu' is not generic in the Trade
B Mark's sense of the word since it is not the use of the product
name itself. What is meant by generic for Trade Mark law is
that when you call a cake a cake or a shoe a shoe. When a
shoe is called a cake or a cake is called a shoe, it is neither
descriptive nor generic. On the contrary, it is 'fancy'. The name
c 'Eenadu', therefore, for any of the products of the respondent
company would not be a generic name at all. The appellant
overlooks that his complaint as to name being generic can only
arise qua product using generic or descriptive name. It is
nobody's case that 'Eenadu' is descriptive of Agarbathi.
D 59. All the cases, i.e., Newseek, Ovenchips, MaltedMilk,
Shredded Wheat etc. were cases where the appellant wanted
exclusivity of the name which was descriptive of their product
and the respondent company who was manufacturing a similar
product objected to the exclusivity on the ground that the name
E was descriptive of the product in question. In this case, for the
application of the judgments the following must arise:-
are the appellant and the respondent company
dealing in the name product? This is not so.
F is the word 'Eenadu' descriptive of the respondent
company's product (i.e. Agarbathies)? This is no
so.
60. Mr. Sundaram while dealing with the scope of passing
G off action submitted that the law of passing off can be
summarized 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 appellant in
such an action has to prove in order to succeed. These are
H
• T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1027
AND ANR. [DALVEER BHANDARI, J.]
there in number. A
a) 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 B
of a brand name or a trade description, or the
individual features of labeling or packaging) under
which his particular goods or services are offered
to the public, such that the get-up is recognized by
the public as distinctive specifically to the
appellant's goods or services.
c
b) He must demonstrate a misrepresentation by the
respondent company 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 D
the goods or services of the appellant and the
source of such goods or services is the appellant
even if the appellant does not make such products.
c) He must demonstrate that he suffers or, in a quia
E
timet action, that he is likely to suffer damage by
reason of the erroneous belief engendered by the
respondent company's misrepresentation that the
source of the respondent company's goods or
service is the same as the source of those offered
F
by the appellant.
d) Alternatively, the appellant must show that the
description or confusion in the public is that the
source of the respondent company's product that
they are buying is the appellant. G
61. Learned counsel placed reliance on the following
passage from a well-known case Reddaway & Co. and
Another v. Banham & Co. and Another 1895-99 All ER 133
H
1028 SUPREME COURT REPORTS [2011] 4 S.C.R.
•
A which reads as under:-
"The name "Glenfield" had become associated with the
starch manufactured by the plaintiff, and the defendant,
although he established his manufactory at Glenfield, was
restrained from using that word in connection with his
B
goods in such a way as to deceive. Where the name of a
place precedes the name of an article sold, it prima facie
means that this is its place of production or manufacture.
It is descriptive, as it strikes me, in just the same sense
as "camel hair" is descriptive of the material of which the
c plaintiffs belting is made. Lord Westbury pointed out tha1
the term "Glenfield" had acquired in the trade a secondal)
signification different from its primary one, that ir
connection with the word starch it had come to mean starct
which was the manufacture of the plaintiff. In Massam v
D Thorley's Cattle Food Co. just referred to, James L.J. said
''The defendant was actually manufacturing starct
at Glenfield, having gone thither for the purpose 01
enabling him to say that he was manufacturing it a1
E Glenfield. The House of Lords said the mere fac1
that he was really carrying on his manufacture at
Glenfield, and was not therefore telling a lie, did not
exempt him from the consequence of the fact that
his proceedings were intended and calculated to
F produce on the mind of the purchasers the belief
that his article was the article of the plaintiffs."
62. The House of Lords was justified in observing that
fallacy lies in overlooking the fact that a word may acquire in a
trade a secondary signification differing from its primary one,
G and that if it is used to persons in the trade who will understand
it, and be known and intended to understand it in its secondary
sense, it will none the less be ci falsehood that in its primary
sense it may be true. A man who uses language which will
convey to persons reading or hearing it a particular idea which
H
•
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1029
AND ANR. [DALVEER BHANDARI, J.]
is false, and who knows and intends this to be the case, is A
surely not to be absolved from a charge of falsehood because
in another sense which will not be conveyed and is not intended
to be conveyed it is true. In the present case the jury have found
that there was ample evidence to justify it, that the words "camel
hair" had in the trade acquired a secondary signification in B
connection with belting, that they did not convey to persons
dealing in belting the idea that it was made of camel's hair, but
that it was belting manufactured by the plaintiffs. They have
found that the effect of using the words in the manner in which
they were used by the defendants would be to lead purchasers c
to believe that they were obtaining goods manufactured by the
plaintiffs, and thus both to deceive them and to injure the
plaintiffs. On authority as well as on principle, the court granted
relief to the plaintiffs.
63. Mr. Sundaram also placed reliance on Reckitt & D
Colman Products Ltd. v. Borden Inc. and others - 1990 (1)
ALL ER 873 where the court has dealt with general law
applicable to passing off of action. In that case the court
observed thus:-
E
"The basic underlying principle of such an action was
stated in 1842 by Lord Langdale M.R. in Perry v. Truefitt
(1842) 6 Beav. 66, 73 to be: "A man is not to sell his own
goods under the pretence that they are the goods of
another man ...... ". Accordingly, a misrepresentation F
achieving such a result is actionable because it constitutes
an invasion of proprietary rights vested in the plaintiff.
However, it is a prerequisite of any successful passing off
action that the plaintiffs goods have acquired a reputation
in the market and are known by some distinguishing G
feature. It is also a prerequisite that the misrepresentation
has deceived or is likely to deceive and that the plaintiff is
likely to suffer damage by such deception. Mere confusion
which does not lead to a sale is not sufficient. Thus, if a
customer asks for a tin of black shoe polish without H
1030 SUPREME COURT REPORTS [2011) 4 S.C.R.
•
A specifying any brand and is offered the product of A which
he mistakenly believes to be that of B, he may be confused
as to what he has got but he has not been deceived into
getting it. Misrepresentation has played no part in his
purchase".
B
64. He also relied on the judgment of this court in R1Jston
· u Hornsby Ltd. v. The Zamindara Engineering Co. -1969 (2)
sec 727 wherein the court observed as under:-
"The distinction between an infringement action and a
c passing off action is important. Apart from the question as
to the nature of trade mark the issue in an infringement
action is quite different from the issue in a passing off
action. In a passing off action the issue is as follows :
D "Is the defendant selling goods so marked as to be
designed or calculated to lead purchasers to
believe that they are the plaintiffs goods?"
But in an infringement action the issue is as follows:
E "Is the defendant using a mark which is the same
as or which is a colourable imitation of the plaintiffs
registered trade mark ?"
65. He also relied on Laxmikant V. Patel v. Chetanbhai
F Shah and Another - 2002 (3) SCC 65. This court observed
as under:-
"A person may sell his goods or deliver his services such
as in case of a profession under a trading name or style.
With the lapse of time such business or services
G associated with a person acquire a reputation or goodwill
which becomes a property which is protected by courts.
A competitor initiating sale of goods or services in the
same name or by imitating that name results in injury to
the businass of one who has the·property in that name. The
H law does not permit any one to carry on his business in
•
T.V. VENUGOPAL v. USHODAYA ENTER,PRISES LTDj031
AND ANR. [DALVEER BHANDARI, J.]
such a way as would persuade the customers or clients in A
believing that he goods or services belonging to someone
else are his or are associated therewith. It does not matter
whether the latter person does so fraudulently or otherwise.
The reasons are two. Firstly, honesty and fair play are, and
ought to be, the basic policies in the world of business. B
Secondly, when a person adopts or intends to adopt a ·
name in connection with his business or services which
already belongs to someone else it results in confusion
and has propensity of diverting the customers and clients
of someone else to himself and thereby resulting in injury." c
66. Mr. Sundaram also placed reliance on a judgment of
this court in Satyam lnfoway Ltd. v. Sifynet Solutions (P)
Limited - 2004 (6) SCC 145. The relevant passage is
reproduced as under:-
D
"The next question is would the principles of trade mark
law and in particular those relating to passing off apply?
An action for passing off, as the phrase "passing off' itself
suggests, is to restrain the defendant from passing off its
goods or services to the public as that of the plaintiffs. It E
is an action not only to preserve the reputation of the
plaintiff but also to safeguard the public. The defendant
must have sold its goods or offered its services in a
manner which has deceived or would be likely to deceive
the public into thinking that the defendant's goods or F
services are the plaintiffs. The action is normally available
to the owner of a distinctive trademark and the person
who, if the word or name is an invented one, invents and
uses it. If two trade rivals claim to have individually invented
the same mark, then the trader who is able to establish G
prior user will succeed. The question is, as has been aptly
put, who gets these first? It is not essential for the plaintiff
to prove long user to establish reputation in a passing off
action. It would depend upon the volume of sales and
extent of advertisement."
H
1032 SUPREME COURT REPORTS [2011] 4 S.C.R.
•
A 67. Mr. Sundaram also relied on Ramdev Food Products
(P) Limited v. Arvindbhai Rambhai Patel and Others - 2006
(8) sec 726 as under:-
"A trade mark is the property of the manufacturer. The
purpose of a trade mark is to establish a connection
B
between the goods and the source thereof which would
suggest the quality of goods. If the trade mark is
registered, indisputably the user thereof by a person who
is not otherwise authorised to do so would constitute
infringement. Section 21 of the 1958 Act provides that
c where an application for registration is filed, the same can
be opposed. Ordinarily under the law and, as noticed
hereinbefore, there can only be one mark, one source or
one proprietor. Ordinarily again right to user of a trade
mark cannot have two origins. The first respondent herein
D is a rival trader of the appellant-Company. It did not in law
have any right to use the said trade mark, save and except
by reason of the terms contained in the MOU or continuous
user. It is well-settled that when defences in regard to right
of user are set up, the onus would be on the person who
E has taken the said plea. It is equally well-settled that a
person cannot use a mark which would be deceptively
similar to that of the registered trade mark. Registration
of trade marks is envisaged to remove any confusion in
the minds of the consumers. If, thus, goods are sold which
F are produced from two sources, the same may lead to
confusion in the minds of the consumers. In a given
situation, it may also amount to fraud on the public. A
proprietor of a registered trade mark indisputably has a
statutory right thereto. In the event of such use by any
G person other than the person in whose name the trade
mark is registered, he will have a statutory remedy in
terms of Section 21 of the 1958 Act. Ordinarily, therefore,
two people are not entitled to the same trade mark, unless
there exists an express licence in that behalf."
H
•
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1033
AND ANR. [DALVEER BHANDARI, J.]
68. He also relied on Harrods Limited v. R. Harrod Limited A
- (1924) RPC 74 where the court observed as under:-
"......... it seems to me to be quite clear that where there
is fraud the Court can interfere and there is fraud where
you find a particular name taken by a defendant, a well 8
known fancy name, which could not be taken for a
legitimate purpose, and a name which is taken, to use Lord
Justice Buckley's words, for the purpose of posing as
being some person whom you are not.
In Aerators Limited v. Tollitt (LR. (1902) 2 Ch., C
· p.319), Mr.Justice Farwell, said this, that you can
interfere where the use of the particular name is
calculated to deceive, even though it does not point
to intentional fraud, and it is a question of fact in
each case as to whether or not the names were so D
alike as to induce the belief that the companies are
identical. So that, where there is fraud, the court can
interfere, and where the names are so alike as to
be calculated to deceive it can interfere. Further it
may draw the inference that there is fraud where E
there is an attempt to pose as being a particular
business firm when you are not, and are not entitled
to use their name."
69. Mr. Sundaram also placed reliance on Harrods Limited
v. Harrodian School Limited (1996) RPC 697. In this case the F
court held that the manifold services and activities for which the
plaintiffs are known, and the wide field of recognition of the
name "Harrods", would lead to an assumption that, the plaintiffs
are in some way are connected, associated or mixed-up with
the school which bears their name in its adjectival form. The G
court also observed that Erosion of distinctiveness of a brand
name had been recognized as a form of damage to the
goodwill of a business with which the name is connected in a
number of cases, but unless care was taken this could mark
an unacceptable extension of the law of passing off. H
1034 SUPREME COURT REPORTS [2011] 4 S.C.R.
A 70. Learned counsel for the respondent company also
relied on a judgment of this Court in the case of Midas Hygiene
Industries (P) Ltd. and another v. Sudhir Bhatia and others
(2004) 3 SCC 90. The court observed that the law on the
subject is well settled. In cases of infringement either of trade
B mark or of copyright, normally an injunction must follow. Mere
delay in bringing action is not sufficient to defeat grant of
injunction in such cases. The grant of injunction also becomes
necessary if it prima facie appears that the adoption of the
mark was itself dishonest.
c 71. Mr. Sundaram also relied on a judgment of the Delhi
High Court in the case of Madhubhan Holiday Inn v. Holiday
Inn Inc. 100 (2002) DLT 306 (DB) (on which one of us, Dalveer
Bhandari, J. was the author). The Division Bench of the High
Court observed as under:
D
"... the adoption of the words "Holiday Inn" by the
appellants is ex facie fraudulent and mala fide from the
very inception. The words "Holiday Inn" have been adopted
by the appellant to ride on the global reputation of the
E respondent. The appellant was actuated by bad faith and
dishonest motive. In the facts and circumstances, the
learned Single Judge was fully justified in granting the
injunction and decreeing the suits in order to protect the
commercial goodwill and to ensure that the global business
F reputation of the respondent is not exploited by the
appellants in a clandestine manner."
72. Learned counsel for the respondent company also
submitted that where a trade/business name has acquired a
reputation such as it has become a household name. In such
G a case anyone who uses the identical name albeit in a different
field of business altogether would be guilty of passing off by
cashing in on the reputation and goodwill of the business of the
plaintiff and would be restrained.
H 73. Mr. Sundaram also placed reliance on the judgment
• T.V. VENUGOPAL v. USHODAYA ENTERPRISES 1035
LTD. AND ANR. [DALVEER BHANDARI, J.]
of Harrodian School Limited (supra). The court observed as A
under:
"The absence of any common field of activity: This is of
particular significance in the present case. The judge
correctly directed himself as to the law; he cannot be
8
faulted in the way in which he applied it. It is not merely
that the plaintiffs have never run a school and have no
established reputation for doing so; or even that the nature
of the parties' respective businesses are as dissimilar as
can well be imagined. It is rather that the commercial
reputation for excellence as a retailer which the plaintiffs C
enjoy would be regarded by the public as having no
bearing upon their ability to run a school. Customers of the
plaintiffs would be surprised to learn that Harrods had
ventured into the commercial theatre; they would, I think,
be incredulous if they were told that Harrods had opened D
a preparatory school."
74. The respondent company also placed reliance on a
judgment of this Court in the case of Mahendra & Mahendra
Paper Mills Limited v. Mahindra & Mahindra Limited (2002) E
2 SCC 147 wherein this Court observed as under:
"Judging th~ case in hand on touchstone of the principles
laid down in the aforementioned decided cases, it is clear
that the plaintiff has been using the word "Mahindra" and
"Mahindra & Mahindra" in its companies/business F
concerns for a long span of time extending over five
decades. The name has acquired a distinctiveness and a
secondary meaning in the business or trade circles.
People have come to associate the name 'Mahindra' with
a certain standard of goods and services. Any attempt by G
another person to use the name in business and trade
circles is likely to and in probability will create an
impression of a connection with the plaintiffs' group of
companies. Such user may also effect the plaintiff
prejudicially in its business and trading activities. H .
1036 SUPREME COURT REPORTS [2011) 4 S.C.R.
•
A Undoubtedly, the question whether the plaintiffs' claim of
'passing-off action' against the defendant will be accepted
or not has to be decided by the Court after evidence is
led in the suit. Even so far the limited purpose of
considering the prayer for interlocutory injunction which is
B intended for maintenance of status quo, the trial Court
rightly held that the plaintiff has established a prima facie
case and irreparable prejudice in its favour which calls for
passing an order of interim injunction restraining the
defendant-company which is yet to commence its business
c from utilising the name of 'Mahindra' or 'Mahindra &
Mahindra' for the purpose of its trade and business.
Therefore, the Division Bench of the High Court cannot be
faulted for confirming the order of injunction passed by the
learned single Judge."
D 75. Mr. Sundaram also relied on a judgment of this court
in the case of Bata India Limited v. Pyare Lal & Company,
Meerut City & Ors. AIR 1985 All 242] the Allahabad High Court
observed that considering the plea of passing-off or enabling
others to pass-off mattresses, sofa cushions and other articles
E associating them with the name of "Bata" in any manner or form
held that:
"The name 'Bata' was well known in the market and the
user of such a name is likely to cause not only deception
F in the mind of an ordinary customer but may also cause
injury to the plaintiff Company. The fact that the plaintiff was
not producing form was not enough to hold that there could
be no passing-off action in respect of the user of the name
'Bata' to the products marketed by the defendants. The use
of the name or mark 'Bata' by the defendants is indicative
G
of their intent."
76. Learned counsel for the respondent company also
relied on a judgment of Delhi High Court in the case of Diam/er
Benz Aktiegese/lschaft (supra) wherein the Court observed as
H under:
•
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1037
AND ANR. [DALVEER BHANDARI, J.]
" ......... The boxes in which the defendant sells its A
undergarments for men, and the representation thereon is
of a man with his legs separated and hands joined
together above his shoulder, all within a circle, indicate, the
strong suggestion of the link between the three pointed ~
star of "Mercedes Benz" car and the undergarment's sold B
by the defendant. In my view, this cannot be considered
to be a "honest concurrent user" by the defendant of the
above said symbol."
The Court also observed in the said case that:
c
"There are marks which are different from other marks.
There are names which are different from other names.
There are names .and marks which have become
household words. '.''Benz" as name of a Car would be
known to every family that has ever used a quality car. The D
name "Benz" as applied to a car, has a unique place in
the world. There is hardly one who is conscious of
existence of the cars/automobiles, who would not
recognize the name "Benz" used in connection with cars.
Nobody can plead in India, where "Mercedes Benz" cars E
are seen on roads, where "Mercedes" have collaborated
with Tatas, where there are Mercedes Benz Tata trucks
have been on roads in very large number, (known as
Mercedes Benz Trucks, so long as the collaboration was
there), who can plead that he is unaware of the word F
"Benz" as used with reference to car or trucks.
In my view, the Trade Mark law is not intended to protect
a person who deliberately sets out to take the benefit of
somebody else's reputation with reference to goods,
especially so when the reputation extends world wide. By G
no stretch of imagination can it be said that use for any
length of time of the name "Benz" should be not objected
to."
H
1038 SUPREME COURT REPORTS [2011) 4 S.C.R.
•
A The Court further observed as under:
"However, if despite legal notice, any one big or small,
continues to carry the illegitimate use of a significant world
wide renowned name/ mark as is being done in this case
despite notice dated 09-12-1989, there cannot be any
B
reason for not stopping the use of a world reputed name.
None should be continued to be allowed to use a world
famed name to goods which have no connection with the
type of goods which have generated the world wide
reputation.
c
In the instant case, "Benz" is a name given to a very high
priced and extremely well engineered product. In my view,
the defendant cannot dilute, that by user of the name "Bent'
with respect to a product like under-wears."
D
77. Mr. Sundaram placed reliance on Harrods Limited
(supra) where the Court observed as under:
"Messrs. Harrods Limited, a long established and
well known Company whose business included a banking
E department but who were precluded by their Articles of
Association from carrying on a moneylenders business
brought an action against R. Harrod Limited, a Company
registered in August, 1923, with the object of carrying on
the business of a registered moneylender. The plaintiffs
F applied for an interlocutory injunction "to restrain the
Defendant Company, its servants and agents until
judgment or further order from carrying on business under
the name R. Harrod Limited or under any name comprising
the word "Harrod" likely to mislead the public into the belief
G that the Defendant Company was connected with the
Plaintiff Company or that the business of the Defendant
Company was the same as or in any way connected with
the business of the Plaintiff Company."
78. Learned counsel for the respondent company
H
• T.V. VENUGOPAL v. USHODAYA ENTERPRISES 1039
LTD. AND ANR. [DALVEER BHANDARI, J.]
submitted that the scope of passing-off action is wider than in A
an infringement of trademark or copyright action. Therefore, in
an action of passing-off, an injunction can be granted even
against a registered trademark holder.
79. Learned counsel for the respondent company also B
relied on a judgment of this Court in the case of N.R. Dongre
and others v. Whirlpool Corporation and another (1996) 5
sec 714. In this case this Court affirmed the concurrent
findings of the single .Judge, as affirmed on appeal by the
division bench of the Delhi High Court and observed that:
c
"... . . . . .. adopting the mark 'Whirlpool' when business in
washing machines was being carried out earlier in other
names, which at this stage, is supportive of the plea of
unfair trading activity in an attempt to obtain economic
benefit of the reputation established by Plaintiff 1, whose D
name is associated with the mark 'Whirlpool' .......... "
80. Mr. Sundaram also submitted that common words with
strong primary meaning retain the said meaning and protection
would then be granted only qua the product for which such E
common word is used viz. Sun TV, Moon, Earth etc. In this
connection learned counsel for the respondent company relied
on a case of this Court in the case of Godfrey Philips India
Limited v. Gimar Food & Beverages (P) Limited (2004) 5
sec 257 where this court observed as under: F
"Without going into the question whether the conclusion
arrived at by the Division Bench that the trade mark is
descriptive is correct or not, it appears to us, and as is
conceded by both parties before us, that the enunciation
of principle of law with regard to the protection available G
even in respect of the descriptive trade mark was wrong.
A descriptive trade mark may be entitled to protection if it
has assumed a secondary meaning which identifies it with
a particular product or as being from a particular source.
" H
1040 SUPREME COURT REPORTS [2011) 4 S.C.R.
A 81. Learned counsel for the respondent company also
relied on a judgment of Delhi High Court in the case of Info
Edge (India) Private Limited and another v. Shai/esh Gupta
and another 98 (2002) DLT 499 where the Court observed that:
"It was sought to be submitted by the counsel appearing
B
for the defendant that the word 'Naukri' cannot assume a
significance of a trademark, as the same is generic. The
word 'Naukri', would be a descriptive word as it denotes
and describes the nature of work and business offered by
the plaintiff. The plaintiff has chosen to use the domain
c name 'Naukri.Com', which is descriptive of the business,
the plaintiff carries on i.e. it gives information to its
subscribers about the availability of jobs and employment
in various establishments, concerns and offices and the
manner in which request for employment could be made
D and, therefore, it is a service offered by the plaintiff relating
to job opportunity and situation and giving guidance
thereto and, therefore, the same is a descriptive word. It
is also a settled law that the distinction between the
generic word and descriptive word is very thin and such
E word could also assume a secondary meaning by its long
user by a person, who establishes his reputation in the
market.
If a product of a particular character or composition is
F marketed in a particular area or place under a descriptive
name and gained a reputation there under, that name
which distinguished it from competing products of different
composition, the goodwill in the name of those entitled to
make use of it there was protected against deceptive use
there of the name of competitors. In Erven Wamink by and
G
Ors. v. J Townend & Sons (Hull) Ltd. and Ors. reported
in (1979) 2 All ER, it was held that whether the name
denoted a product made from ingredients from a
particular locality or whether the goodwill in the name was
the result of the product being made from particular
H
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1041
AND ANR. [DALVEER BHANDARI, J.]
ingredients regardless of their provenance, since it was the A
reputation that the product itself had gained in the market
by reason of its recognisable and distinctive qualities
which had generated the relevant goodwill. In the said
case, the trademark was the name of a spirit.:based
product called ADVOCAAT. The said product had gained 8
a reputation and goodwill for that name in the English
market and the defendants were seeking to take
advantage of that name by misrepresenting that their wine-
based product was of the same type as ADVOCAAT."
82. Mr. Sundaram placed reliance on a judgment of House
c
of Lords in the case of Office Cleaning Services Limited v
Westminster Office Cleaning Association 1944 (2) All E R
269, where the court observed that the word 'office cleaning'
was held to be a descriptive word, for it is a descriptive of the
business they carry on. It was held that the plaintiff could assume D
or establish monopoly on the said word only when they show
that they have acquired a secondary or subsidiary meaning. The
aforesaid legal principle is well-settled and even the counsel
for the defendant did not dispute the aforesaid position.
E
83. In Halsbury's Laws of England, Volume 48 Fourth
edition at page 190, it is stated that it is possible for a word or
1
phrase, which is wholly descriptive of the goods or services
concerned, to become so associated with the goods or services
of a particular trader that its use by another trader is capable F
of amounting to a representation that his goods or services are
those of the first trader and that although the primary meaning
of the words is descriptive, they have acquired a secondary
meaning as indicating the products of a particular trader. ·
84. In McCarthy on Trademarks and Unfair Competition G
Vol. 2 3rd Edition in para 12.5 (2) it is stated that in order to
obtain some form of relief on a "passing off' claim, the user of
a generic term must prove some false or confusing usage by
the newcomer above and beyond mere use of generic name.
H
1042 SUPREME COURT ~REPORTS [2011] 4 S.C.R.
•
A 85. The contention of the defendant is that adjectives are
normally descriptive words and nouns are generic word.
However, McCarthy has said that the said "part of speech" test
does not accurately describes the case law results. therefore,
such a criteria cannot be accepted as a safe and sound basis
s to ascertain as to whether a particular name is generic or
descriptive. Besides, even assUfning that the said word is
generic yet if it is found by the 'court that such a mark has
attained distinctiveness and is associated with the business of
the plaintiff for considerable time and thereafter the defendant
c adopts a similar word as one of his two marks to induce
innocent internet users to come to the website of the defendant,
which establishes dishonest intention and bad faith, would the
court still be not granting injunction to protect the business of
the plaintiff? The answer to the said question has to be an
emphatic 'No". User of similar word by a competitor coupled
0
with dishonest intention and bad faith would empower a court
to restrain such user/misuser to do equitable justice to the
aggrieved party.
86. Learned counsel for the respondent company also
E submitted that the use of the word by another would result in
diminishing the distinctiveness of the word qua the good and
reputation of the plaintiff.
87. Mr. Sundaram also placed reliance on Taittinger and
F others v. Allbev Limitd and others (1994) 4 All E R 75. The
relevant passages are reproduced as under:
"......... Further it cannot be right that the larger the scale
of the activities of a trader suing in passing off, the less
protection it will receive from the Court because of a
G comparison with the scale of the activities of a defendant
who trades on a smaller scale. The question is whether the
· relevant activities of the defendants are on such a small
scale leading to such a small injury that it can be ignored.
On the evidence of the defendants' sales, I find it
H impossible to say that is the case here.
• T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1043
AND ANR. [DALVEER BHANDARI, J.]
But in my judgement the real injury to the champagne A
houses' goodwill comes under a different head and
although the judge refers to Mr. Sparrow putting the point
in argument, he does not deal with it specifically or give a
reason for its undoubted rejection by him. Mr. Sparrow had
argued that if the defendants continued to market their B
product, there would take place a blurring or erosion of the
uniqueness that now attends the word champagne, so that
the exclusive reputation of the champagne houses would
be debased. He put this even more forcefully before us.
He submitted that if the defendants are allowed to continue c
to call their product Elderflower Champagne, the effect
would be to demolish the distinctiveness of the word
champagne, and that would inevitably damage the goodwill
of the champagne houses.
In Advocaat case [1980] RPC 31 at first instance Goulding D
J. held that one type of damage was 'a more gradual
damage to the plaintiffs' business through depreciation of
the reputation that their goods enjoy.' He continued:
Damage of [this] type can rarely be susceptible of positive
proof. In my judgement, it is likely to occur if the word E
'Advocaat' is permitted to be used of alcoholic egg drinks
generally or of the defendants' product in particular.
In the House of Lords in that case Lord Diplock referred
to that type of damage to goodwill as relevant damage, F
which he described as caused 'indirectly in the
debasement of the reputation attaching to the name
"advocaat. ... "
In Vine Products Ltd. v. Mackenzie & Co. Ltd. Cross J.,
[1969] RPC 1 commenting with approval on the decision G
of Danckwerts J. in Bollinger v. Costa Brava Wine Co. Ltd.
(No. 2) said:
[Danckwerts J.] thought, as I read in his judgment, that if
people were allowed to call sparkling wine not produced H
1044 SUPREME COURT REPORTS [2011] 4 S.C.R. •
A in Champagne 'Champagne,' even though preceded by an
adjective denoting the country of origin, the distinction
between genuine Champagne and 'champagne type'
wines produced elsewhere would become blurred; that the
word 'Champagne' would come gradually to mean no
B more than 'sparkling wine'; and that the part of the plaintiffs'
goodwill which consisted in the name would be diluted and
gradually destroyed.
That passage was referred to approvingly by Gault J. in
Wineworths Group Limited v. Comite lnterprofessionel du
c Vin de Champagne [1992] 2 NZLR 327 In that case the
sale of Australian sparkling wine under the name
champagne was held to constitute passing off. The New
Zealand Court of Appeal upheld the decision of Jeffries
J. who had held in C.l.V.C. v. Wineworths:
D
By using the word champagne on the label the defendant
is deceptively encroaching on the reputation and goodwill
of the plaintiffs. [1991] 2 NZLR 432
Jeffries J. had no doubt that if relief was not granted the
E
plaintiffs would most certainly suffer damage if the word
was used on all or any sparkling wine sold in New Zealand.
He thought the ordinary purchaser in New Zealand without
special knowledge on wines was likely to be misled. Gault
J. after agreeing with Jeffries J. on deception said (at
F p.343):
I find the issue of damage or likely damage to the goodwill
with which the name 'Champagne' is associated equally
obvious in light of the finding that there is in fact an
G established goodwill in New Zealand. I have no doubt that
erosion of the distinctiveness of a name or mark is a form
of damage to the goodwill of the business with which the
name is connected. There is no clearer example of this
than the debasing of the name 'Champagne' in Australia
H as a result of its use by local wine makers.
• T.V. VENUGOPAL v. USHODAYA ENTERPRISES
LTD. AND ANR. [DALVEER BHANDARI, J.]
1045
By parity of reasoning it seems to me no less obvious that A
erosion of the distinctiveness of the name champagne in
this country is a form of damage to the goodwill of the
business of the champagne houses. There are undoubtedly
factual points of distinction between the New Zealand case
and the present case, as Mr. Isaacs has pointed out, and B
he placed particular reliance on the fact that in the New
Zealand case as well as in Bollinger v. Costa Brava Wine
Co. Ltd. (No. 2), the Court held that there was a deliberate
attempt to take advantage of the name champagne,
whereas in the present case the judge found no such c
specific intention. In general it is no doubt easier to infer
damage when a fraudulent intention is established. But that
fact does not appear to have played any part in the
reasoning on this particular point either of Jeffries J. or of
Sir Robin Cooke P., who thought the case exemplified the' D
principle that a tendency to impair distinctiveness might
lead to an inference of damage to goodwill [1992] 2 NZLR
327, or of Gault J.; nor in logic can I see why it should. It
seems to me inevitable that if the defendants, with their not
insignifican~ trade as a supplier o! drinks to Sainsbury and •E
other retail outlets, are permitted to use the name*''·
Elderflnwer Champagne, the goodwill in the distinctive
name champagne will be eroded with serious adverse
consequences for the champagne houses.
In my judgement therefore the fifth characteristic identified F
in Advocaat case is established. I can see no exceptional
feature to this case which would justify on grounds of public
poli9y witht\olding from the champagne houses the ordinary
rerriedy of an injunction to restrain passing off. I would
therefore grant an injunction to restrain the defendants from G
selling, offering for sale, distributing and describing,
whether in advertisements or on labels or in any other way,
any beverages, not being wine produced in Champagne,
under or by reference to the word champagne. That
injunction, I would, emphasise, does not prevent the sale H
1046 SUPREME COURT REPORTS [2011] 4 S.C.R.
A of the defendants' product, provided it is not called
champagne."
88. Learned counsel for the respondent company also
submitted that the protection qua common field of activity has
8 now expanded and been interpreted to mean extending to other
product lines than what is manufactured by the plaintiff and
hence common field of activity is not restricted to same or
similar products but extend to all other products. The test of
common field of activity now accepted is that of "common class
of consumers". The reason for this is the likelihood of such
C consumers identifying the Defendant's goods as originating
from the same source as the plaintiff. The question therefore
would be, whether from the factual situation, an inference can
be drawn that a purchaser of the Defendant's product could
assume such product as originating from the plaintiff.
D
89. He also relied on Kamal Trading Co., Bombay and
Others v. Gillette UK. Limited (1988] IPLR 135 wherein it has
been observed that:
"........ the plaintiffs have not established any of the
E
conditions required for grant of interim relief. It was
submitted that the goods manufactured by the plaintiffs and
the defendants are different in nature; the plaintiffs
-manufacture blades, while the defendants manufacture
"tooth brushes". The goods of the plaintiffs and the
F defendants are not available in the same shop and the
customers of these goods are different. The goods sold
by the plaintiffs are blades and fall in class 8, while those
of the defendants are tooth brushes which fall in class 21.
Relying on these circumstances, it was merit in this..:
G submission. In the first instance, the assumption of the
learned counsel that the class of customers for purchase
of safety blades and tooth brushes are different and these
goods are not available in the same shop is wholly
misconceived. We take judicial notice of the fact that these
H goods are available in every shop including a small shop
•
TV. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1047
AND ANR. [DALVEER BHANDARI, J.]
and each and every person is required to purchase these A
. .. "
goods........
90. Mr. Sundaram also relied on Honda Motors Company
Limited v. Charanjit Singh & Others (101 (2002) DLT 359)
wherein it has been observed that:
B
"The case of the plaintiff is in fact based on passing off
action and not for infringement of the trade mark. It has
never been the case of the plaintiff that the two sets of
goods are identical. The concept of passing off, which is
a form of tort has undergone changes with the course of C
time. The plaintiff now does not have to be in direct
competition with the defendant to suffer injury from the use
of its trade name by the defendants."
The court further observed that: -
D
"In the present case the plaintiff's mark HONDA has
acquired a global goodwill and reputation. Its reputation is
for quality products. The name of HONDA is associated
with the plaintiffs especially in the field of automobiles and
power equipments on account of their superior quality and E
high standard. The plaintiffs business or products under
the trade mark HONDA has acquired such goodwill and
reputation that it has become distinctive of its products and
the defendants' user of this mark for their product "Pressure
Cooker" tends to mislead the public to believe that the F
defendants business and goods are that of the plaintiff.
Such user by the defendants has also diluted and debased
the goodwill and reputation of the plaintiff.
As observed above, the concept of passing off is a tort G
and with the passage of time, with the developing case law
it has changed and now the two traders need not
necessarily operate in the same field so as to suffer injury
on account of the goods of one trader being passed off
as those of the other.
H
1048 SUPREME COURT REPORTS [2011] 4 S.C.R.
•
A With the changed concept of passing off action, it is now
not material for a passing off action that the plaintiff and
the defendant should trade in the same field. I find that
some business are truly international in character and the
reputation and goodwill attached to them cannot in fact be
B held being international also. The plaintiff's business is of
international character and obviously the reputation and
goodwill attached to its trade mark HONDA is also of
international repute. The plaintiffs trade mark HONDA,
which is of global repute, is used by the defendants for a
c product like pressure cooker, to acquire the benefit of its
goodwill and reputation so as to create deception for the
public who are likely to buy defendant's product believing
the same as coming from the house of HONDA or
associated with the plaintiff in some manner. By doing so,
it would dilute the goodwill and reputation of the plaintiff
D
rand the wrong committed by the defendants would certainly
be an actionable wrong and the plaintiff is within its rights
to ask for restraint against the defendants from using its
mark HONDA for their products."
E 91. From the above discussions, the following two
situations arise:
i. Where the name of the plaintiff is such as to give
him exclusivity over the name, which would ipso
F facto extend to barring any other person from using
the same. viz. Benz, Mahindra, Caterpillar, Reliance,
Sahara, Diesel etc.
ii. The plaintiffs adopted name would be protected if
it has acquired a strong enough association with
G the plaintiff and the defendant has adopted such a
name in common field of activity i.e. the purchasers
test as to whether in the facts of the case, the
manner of sale, surrounding circumstances etc.
would lead to an inference that the source of
H product is the plaintiff.
•
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1049
AND ANR. [DALVEER BHANDARI, J.]
92. Learned counsel for the respondent company also A
submitted that once there is a dishonest intention to adopt the
mark a mere delay in bringing an action will not be defeated
because in case of continuing tort fresh period of limitation
begins to run every moment of the time during which the breach
continues. B
93. Mr. Sundarain relied on a case of this court in Mis.
Bengal Waterproof Limited Vs. Mis. Bombay Waterproof
Manufacturing Company and Another (1997) 1 SCC 99
wherein it has been observed that:
c
"......... It is now well settled that an action for passing off
is a common law remedy being an action in substance of
deceit under the Law of Torts. Wherever and whenever
fresh deceitful act is committed the person deceived would
naturally have a fresh cause of action in his favour. Thus D
every time when a person passes off his goods as those
of another he commits the act of such deceit. Similarly
whenever and wherever a person commits breach of a
register~d trade mark of another he commits a recurring
act of breach or infringement of such trade mark giving a E
recurring and fresh cause of action at each time of such
infringement to the party aggrieved. . .. .. . . .. "
F
In cases of continuous causes of action or recurring
causes of action bar of Order 2 Rule 2 Sub-rule (3) cannot
be invoked. In this connection it is profitable to have a look
at Section 22 of the Limitation Act, 1963. It lays down that G
'in the case of a continuing breach of contract or in the
case of a continuing tort, a fresh period of limitation begins
to run at every moment of the time during which the branch
or the tort, as the case may be, continues. As act of
passing off is an act of deceit and tort every time when H
1050 SUPREME COURT REPORTS [2011] 4 S.C.R.
•
A such tortuous act or deceit is committed by the defendant
the plaintiff gets a fresh cause of action to come to the court
by appropriate proceedings. Similarly infringement of a
registered trade mark would also be a continuing wrong
so long as infringement continues. Therefore, whether the
B earlier infringement has continued or a new infringement
has taken place cause of action for filing a fresh suit would
obviously arise in favour of the plaintiff who is aggrieved
by such fresh infringements of trade mark or fresh passing
off actions alleged against the defendant. Consequently,
c in our view even on merits the learned Trial Judge as well
as the learned Single Judge were obviously in error in
taking the view that the second suit of the plaintiff in the
present case was barred by Order 2 Rule 2 Sub-rule (3),
CPC."
D 94. Learned counsel for the respondent company also
placed reliance on another judgment of this Court in the case
of Heinz Italia and another v. Dabur India Limited (2007) 6
sec 1 wherein this court observed that:
E "....... it has been repeatedly held that before the use of
a particular mark can be appropriated it is for the plaintiff
to prove that the product that he is representing had earned+.
a reputation in the market and that this reputation had been
sought to be violated by the opposite party. In Com
F Products case (supra) it was observed that the principle
of similarity could not to be very rigidly applied and that if
it could be prima facie shown that there was a dishonest
intention on the part of the defendant in passing off goods,
an injunction should ordinarily follow and the mere delay
in bringing the matter to Court was not a ground to defeat
G
the case of the plaintiff. It bears reiteration that the word
"Glucon-D" and its packaging had been used by Glaxo
since 1940 whereas the word "Glucose-D" had been used
for the first time in the year 1989."
H 95. Mr. Sundaram further placed reliance on another
• T.V. VENUGOPAL v. USHODAYA ENTERPRISES
LTD. AND ANR. [DALVEER BHANDARI, J.]
1051
judgment of this Court in Ramdev Food Products (P) Limited A
(supra), wherein it has been held that:
"Acquiescence is a facet of delay. The principle of
acquiescence would apply where: (i) sitting by or allow
another to invade the rights and spending money on it; (ii) 8
it is a course of conduct inconsistent with the claim for
exclusive rights for trade mark, trade name, etc.
In Power Control Appliances and Ors. v. Sumeet
Machines Pvt. Ltd. (1994] 1 SCR 708, this Court stated:
c
Acquiescence is sitting by, when another is invading the
rights and spending money on it. It is a course of conduct
inconsistent with the claim for exclusive rights in a trade .
mark, trade name etc. It implies positive acts; not merely
silence or inaction such as is involved in laches." D
The court further observed that:
"The defence of acquiescence, thus, would be satisfied
·when the plaintiff assents to or lay by in relation to the acts
of another person and in view of that assent or laying by E
and consequent acts it would be unjust in all the
circumstances to grant the specific relief."
96. Mr. Sundaram, counsel for the respondent company
also submitted that use of a similar mark(s) by third parties is F
not a defense to an illegal act of passing-off. He relied on a
judgment of Delhi High Court in Ford Motor Company of
Canada Limited and another v. Ford Service Centre 2009 (39)
PTC 149, wherein the Court observed that:
"... do not find any merit in the plea of defendant of two G
others, outside India using FORD in relation to other
business. Their case is not before this Court for
adjudication and even if the plea of dilution was to be
available in an infringement action, no case of dilution in
India is made out. Recently the Division Bench of this Court H
1052 SUPREME COURT REPORTS [2011) 4 S.C.R.
•
A in Pankaj Goel v. Dabur India Limited 2008 (38) PTC 49
(Delhi) held that merely because others are carrying on
business under similar or deceptively similar trademark or
have been permitted to do so by the plaintiff, cannot offer
a licence to the world at large to infringe the trademark of
B the plaintiff. It was further held that even otherwise, the use
of similar marks by a third party cannot be a defence to
an illegal act of passing off. In Castro/ Limited v. A.K.
Mehta 1997 (17) PTC 408 DB it was held that a
concession given in one case does not mean that other
c parties are entitled to use the same. Also, in Prakash
Roadline v. Prakash Parcel Service 1992 (2) Arbitration
Law Reporter 174 it has been held that use of a similar
mark by a third party in violation of plaintiffs right is no
defence."
D 97. Learned counsel for the respondent company also
placed reliance on Prakash Roadline Limited v. Prakash Parcel
Service (P) Ltd. 48 (1992) Delhi Law Times 390 the Delhi High
Court held that:
E "......... Merely because no action is taken against certain
other parties, it does not mean that the plaintiff is not entitled
to take action against the defendant. The other parties may not
be affecting the business of the plaintiff. They may be small-
time operators who really do not matter to the plaintiff.
F Therefore, the plaintiff may not chose to take any action against
them. On the contrary the plaintiff feels danger from defendant
in view of the fact that the defendant's promoters are the ex
Directors/employees of the plaintiff who are fully in the know of
the business secrets of the plaintiff. Therefore, the mere fact
that the plaintiff has not chosen to take any action against such
'·G
other parties cannot disentitle the plaintiff from taking the
present action. This contention is, therefore, prima-facie without
any merit and is rejected."
98. Lastly, learned counsel for the respondent company
H
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD1053
AND ANR. [DALVEER BHANDARI, J.]
submitted that in any one of the following circumstances the A
plaintiff would be entitled to injunctive relief even qua a common
word:
a. If the factors for justifying absolute protection as per
'absolute protection for common words' have been 8
made out then it would ipso facto entitle the plaintiff
to protection against the world at large.
b. The protection would be given against any particular
defendant if the plaintiff's name has acquired a
secondary meaning and the defendant uses the C
name in a common field of activity, i.e. where there
are common purchasers. However, the court may
decline to grant the relief if such name is descriptive
of the defendant's product and not just a name
unconnected with the defendant's product. D
c. The protection would be granted qua a defendant
with relation to even an unrelated product where the
tests of dishonest adoption are satisfied and the
defendant will be restrained from cashing in or E
profiting from the plaintiff's name.
99. We have heard the detailed and comprehensive
arguments advanced by the learned counsel for the parties. We
place on record our appreciation for the able assistance
provided by the learned counsel for the parties in this case. We F
have also carefully examined relevant decided Indian, English
and American cases.
100. The respondent company's mark 'Eenadu' has
acquired extra-ordinary reputation and goodwill in the State of G
Andhra Pradesh. 'Eenadu' newspaper and TV are extremely
well known and almost household words in the State of Andhra
Pradesh. The word 'Eenadu' may be a descriptive word but
has acquired a secondary or subsidiary meaning and is fully
identified with the products and services provided by the H
1054 SUPREME COURT REPORTS [2011) 4 S.C.R.
A respondent company.
101. The appellant is a Karnataka based company which
has started manufacturing its product in Bangalore in the name
of 'Ashika' and started selling its product in the State of Andhra
B Pradesh in 1995. The appellant started using the name
'Eenadu' for its Agarbathi and used the same artistic script, font
and method of writing the name which obviously cannot be a
co-incidence. The appellant company after adoption of name
'Eenadu' accounted for 90% of sale of their product Agarbathi.
C 102. On consideration of the totality of facts and
circumstances of the case, we clearly arrive at the following
findings and conclusions :
a) The respondent company's mark 'Eenadu' has
D acquired extraordinary reputation and goodwill in
the State of Andhra Pradesh. The respondent
company's products and services are correlated,
identified and associated with the word 'Eenadu'
in the entire State of Andhra Pradesh. 'Eenadu'
means literally the products or services provided by
E
the respondent company in the State of Andhra
Pradesh. In this background the appellant cannot be
referred or termed as an honest concurrent user of
the mark 'Eenadu';
F b) The adoption of the words 'Eenadu' is ex facie
fraudulent and mala fide from the very inception. By
adopting the mark 'Eenadu' in the State of Andhra
Pradesh, the appellant clearly wanted to ride on the
reputation and goodwill of the respondent company;
G
c) Permitting the appellant to carry on his business
would in fact be putting a seal of approval of the
court on the dishonest, illegal and clandestine
conduct of the appellant;
H d) Permitting the appellant to sell his product with the
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1055
AND ANR. [DALVEER BHANDARI, J.]
mark 'Eenadu' in the State of Andhra Pradesh A
would definitely create confusion in the minds of the
consumers because the appellant is selling
Agarbathies marked 'Eenadu' as to be designed
or calculated to lead purchasers to believe that its
product Agarbathies are in fact the products of the s
respondent company. In other words, the appellant
wants to ride on the reputation and goodwill of the
respondent company. In such a situation, it is the
bounden duty and obligation of the court not only to
protect the goodwill and reputation of the c
respondent company but also to protect the interest
of the consumers;
e) Permitting the appellant to sell its product in the
State of Andhra Pradesh would amount to
encouraging the appellant to practise fraud on the D
consumers;
f) Permitting the appellant to carry on his business in
the name of 'Eenadu' in the State of Andhra
Pradesh would lead to eroding extra-ordinary E
reputation and goodwill acquired by the respondent
company over a passage of time;
g) Appellant's deliberate misrepresentation has the
potentiality of creating serious confusion and
deception for the public at large and the consumers
F
have to be saved from such fraudulent and deceitful
conduct of the appellant.
h) Permitting the appellant to sell his product with the
mark 'Eenadu' would be encroaching on the G
reputation and goodwill of the respondent company
and this would constitute invasion of proprietary
rights vested with the respondent company.
H
1056 SUPREME COURT REPORTS [2011] 4 S.C.R. •
A i) Honesty and fair play ought to be the basis of the
policies in the world of trade and business.
103. The law is consistent that no one can be permitted
to encroach upon the reputation and goodwill of other parties.
This approach is in consonance with protecting proprietary
8
rights of the respondent company.
104. Consequently, the appeals are disposed of in terms
of the aforesaid observations and directions.
c 105. In the facts and circumstances of this case, the parties
are directed to bear their own costs.
B.B.B. Appeals disposed of.
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