K.P. James v. Dr. K.K. Johny and Others

IN THE HIGH COURT OF KERALA AT ERNAKULAM PRESENT : THE HONOURABLE MR. JUSTICE K.PADMANABHAN NAIR FRIDAY, THE 11TH APRIL 2008 / 22ND CHAITHRA 1930 RFA.No. 476 of 2007() --------------------OS.9/2000 of FIRST ADDL.DISTRICT COURT, THRISSUR .................... ## APPELLANT/IST DEFENDANT ---------------------------------------- K.P.JAMES, S/O.PAVUNNY, RESIDING AT KALAN HOUSE, NELLAI P.O., MUKUNDAPURAM TALUK, THRISSUR DISTRICT. BY ADV. SRI.V.CHITAMBARESH (SR.) SRI.SAIGI JACOB PALATTY ## RESPONDENTS: PLAINTIFFS/2ND DEFENDANT ------------------------------------- 1. DR.K.K.JOHNY, S/O.K.P.KOCHUVAREED VAIDYAN, M/S.J & J KALAN PHARMACY, NELLAI P.O., THRISSUR. 2. KURNTHOTTAM AYURVEDIC AGENCIES, T.D.ROAD, KOCHI-35, REPRESENTED BY ITS PARTNER SHABI MOHAN, S/O.MOHAN DAS. 3. KATHIR VELU, PROPRIETOR, M/S.SRI SHANBA PRINT PACK, 13-B-3/10, P.K.N.ROAD, SIVAKASI - 626 189. R1 & R2 BY ADV. SRI.G.SREEKUMAR SRI.A.L.GEORGE THIS REGULAR FIRST APPEAL HAVING BEEN FINALLY HEARD ON 04/04/2008, THE COURT ON 11/04/2008 DELIVERED THE FOLLOWING: ## **K. PADMANABHAN NAIR ,J. -------------------------------------------------** ## **R.F.A.No.476 of 2007** **------------------------------------------------Dated, this the 11[th] day of April, 2008** ## **JUDGMENT** **First defendant in O.S.No.9/2000 on the file of First Additional District Court, Thrissur is the appellant. Appeal is filed against a decree passed by the court below by which the appellant was restrained from passing off the goods manufactured by him by name 'Kerala Kesamrutham' as goods manufactured by the first respondent/plaintiff by name 'Kesamrutham' and from using the logos, labels and cartons which are deceptively similar to the one used by the first respondent/plaintiff. For the sake of convenience the parties will be referred to as arrayed in the plaint.** **2. First respondent originally filed a suit before the District Court, Ernakulam as O.S.No.39/2000. The suit was filed on 25.10.2000. The appellant appeared and raised a contention that the courts at Ernakulam had no jurisdiction to entertain the suit. By order dated 24.11.2000 the District Court, Ernakulam accepted the contention and held that the suit was not maintainable before the District Court, Ernakulam. The plaint was returned for presentation before the proper** RFA No.476/2007 2 **court. Accordingly plaintiff filed the suit before the District Court, Thrissur on 25.11.2000 and numbered as O.S.No.9/2000.** **3. Material averments in the plaint are as follows: First plaintiff is an Ayurvedic Doctor and also the proprietor of M/s.J.J.Kalan Pharmacy, Nellai which is engaged in the manufacture and trade of ayurvedic, sidha and unani drugs and medicinal preparations which includes all types of hair oils, cosmetics, preparations for hair, other cosmetic and toilet preparations for a long time. In the course of said business he had conceived and adopted the trade mark 'Kesamrutham' both in English and Malayalam and the logos from the year 1983. He obtained drug licence on 12.9.1993. He also applied for registration of logo bearing the picture of cini actress Smt. Charmila under Classes 3 and 5 and trade mark 'Kesamrutham' both in English and Malayalam. The applications were accepted for registration by the Registrar of Trade Marks. The total local sales turnover and export sales turnover for the year 1996-97 were Rs.4,35,120.50 and Rs.7,210/- respectively. During the year 1999-2000 the total local sales turnover and export sales turnover were Rs.17,45,580.23 and Rs.30,32,002/- respectively. First plaintiff** RFA No.476/2007 3 **was using the trade mark and logos with a view to indicate that such goods are manufactured by him and also to show that he was doing business under the said labels, trade marks and logos. Trade marks and logos are distinctive of the goods manufactured by the first plaintiff. He had also spent considerable amount for promoting the sale of goods manufactured by him and spent considerable amount for publicity and advertisement. In the year 1999-2000 he spent more than Rs.1,48,695/- for advertisement and sales promotion. The unwary purchasers and consumers refer and identify the first plaintiff's business and goods manufactured by him under the trade mark and logos By the constant use of the trade mark and logos they have become very distinct of the first plaintiff's business and the goods only and with none else. On 23.10.2000 the first plaintiff came to know that first defendant is making hasty plans to commence business using trade marks and logos of his business. Goods manufactured by the first defendant were identical and deceptively similar to that of the first plaintiff. With ulterior motives he had started using the trade style and trade mark 'Kesamrutham' both in English and Malayalam and logos which are mere copies of the first plaintiff's trading style, trade marks and** RFA No.476/2007 4 **logos. The first defendant is imitating and copying the first plaintiff's trade mark and logos and the trade mark and logos used by the first defendant are deceptively similar to the one used by the first plaintiff. First defendant is creating confusion in the market and public are misled to think that the goods/products of first defendant are the goods/products of first plaintiff. On 23.10.2000, 17,000 packets and labels of deceptively similar items were delivered to the premises of the first plaintiff mistakenly by the second defendant who is the proprietor of M/s.Sri Shenba Print Pack, Sivakasi. First plaintiff made enquiries with the agent of the second defendant and understood that all those items were supplied at the instance of the appellant/first defendant who placed orders with the second defendant at Sivakasi for manufacturing and printing of infringed labels and cartons with a mala fide intention to create confusion in the market. A perusal of the infringed cartons shows that the first defendant obtained drug licence in the year 2000. Since the second defendant is manufacturing and printing infringed labels and cartons he is also made a party to the suit. Hence the suit for a decree of permanent prohibitory injunction restraining the first defendant, his servants, employees or agents or any one** RFA No.476/2007 5 **claiming through or under him from in any manner of passing off trade/business as that of first plaintiff using the trade mark Kesamrutham both in English and Malayalam and the logos as seen in the label and packet in combination of colours, cyan and yellow and also for a decree of permanent prohibitory injunction restraining the second defendant from manufacturing, printing and supplying of infringed labels and cartons to the first defendant which are deceptively similar to that of the cartons used by the first plaintiff.** **4. Appellant/first defendant filed a written statement contending that the averment that the first plaintiff honestly conceived and adopted the trade mark Kesamrutham both in English and Malayalam and logo is incorrect. There are several manufacturers of ayurvedic preparations who are manufacturing and selling hair tonic under the same name 'Kesamrutham'. It was contended that first defendant's brother Shri Varghese was manufacturing and selling hair tonic by name 'Kesakalpam' in a carton and first plaintiff had imitated that carton. It was also contended that it was the appellant who started manufacturing of Kesakalpam in the year 1984 which was subsequently transferred to his brother.** RFA No.476/2007 6 **The cartons used by the first plaintiff itself is an imitation. He is not the first user. The name Kesamrutham being used in the market even before 1970 and hence it become a common property. The averment that the first plaintiff had applied for registration of the trade mark and logo was denied. The averment that the first plaintiff obtained the drug licence in the year 1983 was not admitted. The further averment that the first plaintiff was exporting Kesamrutham to various Gulf countries was not admitted. The figures given in the plaint are not the sales turnover of 'Kesamrutham'. The averment that the first plaintiff is using the trade name and logo and hence it become distinctive was denied. First plaintiff had not been using the trade name and logo as alleged. The trade mark and logo of the first plaintiff is not distinctive as claimed by him. The averment that he was doing extensive business and manufacture was also denied. First plaintiff was not actually using the trade mark and logo as alleged by him in respect of the goods manufactured by him. The averment that the first plaintiff spent considerable amounts and and efforts for promoting the sales of the goods manufactured by him using the trade mark and logo was denied. The further averment that the unwary purchasers and consumers refer and** RFA No.476/2007 7 **identify the first plaintiff's goods/products under that trade mark and logo is incorrect and hence denied. The further averment that due to continuous and extensive user of the trade mark and logo they have become distinct of the first plaintiff's business and the goods only and with none else was not correct. It was contended that the trade mark and logos of the first defendant is neither identical nor deceptively similar to the trade mark and logo used by the first plaintiff. The word 'Kesamrutham' is a descriptive word meant to describe the nature of the product and also the word of common use. So many manufacturers are selling their products under the name 'Kesamrutham' much prior to the starting of the business of the first plaintiff. The first plaintiff had started manufacturing only in the year 1996. The name of the product of the appellant/first defendant is 'Kerala Kesamrutham' and not 'Kesamrutham' and the name of the establishment is 'Kalans Products' and that name is also printed on the top and bottom of carton. There are other dissimilarities also. The cartons produced by the first plaintiff claiming to be that of his is not the carton which he has actually marketing his products. The averment that trade mark and logo used by the first defendant are deceptively similar to the trade mark and** RFA No.476/2007 8 **logo of the first plaintiff is absolutely incorrect. The first defendant is having his own independent trading style, trade mark and logo and he had not adopted the identical and deceptively similar trade style, trade mark and logo of the first plaintiff. On 23.10.2000 the bundles containing of first defendant's carton, viz., Kesakalpam and labels as also the bundles containing cartons of first plaintiff arrived by bus at Thrissur. A person was entrusted with the bundles for delivery to the first plaintiff as well as first defendant. He was not the person who used to do it in usual course. The residence and business of the first plaintiff are located in the same compound and that is situated ahead of the first defendant's residence. The driver of the mini metadore van who brought the bundles went first to the first plaintiff's house for delivery, he enquired the first plaintiff as to where the first defendant was staying. With a mischievous motive the first plaintiff took delivery of the parcel of the first defendant misrepresenting the facts to the driver though the name and address of the first defendant was clearly shown in the bundle. The averment that those cartons and labels were mistakenly delivered by the first plaintiff was denied. Those labels and cartons are not deceptively similar to the cartons** RFA No.476/2007 9 **and labels being used by the first plaintiff. First defendant has not ordered for manufacturing and printing any infringed labels or cartons. He has no intention to create confusion in the market and consuming public and not thinking that the goods manufactured by the first defendant are the goods manufactured by the first plaintiff. The licence number of first defendant is 36/25/D/2000. Hence he prayed for dismissal of the suit.** **5. Second defendant who was the manufacturer of the cartons had filed a written statement contending that he was an unnecessary party to the suit. It was contended that most of the averments in the plaint are not against him. He was not aware of the imitation and copying of plaintiff's trade style, trade mark and logo by the first defendant. The averments that the trade mark and logo used by the first defendant is deceptively similar to that of first plaintiff's trade mark and logo and that the first defendant had copied the first plaintiff's well established trading style, trade mark and logo with a view to enrich himself unjustly were denied. It was further contended that he had never used the offending trade mark and logo. The** RFA No.476/2007 10 **second defendant is the proprietor of M/s.Sri Shenba Print Pack, Sivakasi. The averment that the second defendant is assisting the first defendant to pass off his goods as that of the first plaintiff was denied. In the written statement it is admitted that the second defendant was printing labels and cartons for the first plaintiff from 1995 onwards. The labels of Kesamrutham were first printed in the year 1995. The colour combination of labels are combination of cyan and yellow with photo of cine actress Charmila. Second defendant was not having sales tax registration during 1995-96. So the entire transaction with the first plaintiff was done through Sri Devipala Colour Galaxy and another who had Central Sales Tax registration. The colour combination was of 45% cyan with colour majantha and this colour combination was selected and suggested by the first plaintiff. The ratio of colours to be mixed to get that colour was also suggested by the first plaintiff. The colour combination suggested by the first plaintiff was printed by the second defendant. The first plaintiff required two types of cartons and labels for his product Kesamrutham, one was for export purpose and another was for local sales in India. The cartons for export purpose were printed with combination of cyan colour with a** RFA No.476/2007 11 **yellow border on the top side and the picture of cine actress Charmila was also printed on the cartons and labels. In addition to English and Malayalam words some Arabic words are also printed. Below the word 'hair tone' the word 'export quality' is printed. In the cartons printed for local sales in the place of 'export quality' it is printed as 'for sale in India only' and in two sides of cartons and labels instead of combination of cyan, green colour was used. The details are printed in yellow colour. In addition to English and Malayalam, Tamil words are also printed. Instead of the picture of Charmila the photo of another model was printed. So from 1995 onwards second defendant has been printing two types of cartons and labels for 'Kesamrutham', one for export and other for local sales. Few days prior to 28.10.1998 the first defendant approached the second defendant and requested to print cartons and labels for a product named 'Kesakalpam' in the same colour combination used by the first plaintiff for export quality. Although the indications and instructions were copied from first plaintiff's cartons and labels the name of the product, address of the manufacturer, picture of the models were different. There were several differences. So the second defendant printed the cartons and labels as demanded by the** RFA No.476/2007 12 **first defendant. During the second week of August, 2000 the first defendant again approached the second defendant to print labels and cartons for his product, Kalans Products 'Kerala Kesamrutham' in the above colour combination and the films for printing cartons and labels were bought by the first defendant from Kerala. First defendant requested the second defendant to print labels and cartons in the same colour used by the first plaintiff for 'Kesamrutham' for export quality. One of the major difference is that the yellow margin on the top side of the carton was a little wider. All the other colour combinations were same. Since the first plaintiff had no particular right over the said colour, the second defendant printed the labels and cartons as requested by the first defendant. It was further contended that the first plaintiff never informed the second defendant that the colour combination is his private property. Printing of labels and cartons for the first defendant in the above colour combination was started in October, 1998 only. Labels and cartons of 'Kerala Kesamrutham' was printed in the month of August, 2000. During October, 2000 also he supplied the cartons and labels of 'Keralakalpam'. Unfortunately those bundles were delivered to the first plaintiff and first plaintiff** RFA No.476/2007 13 **accepted the same. Second defendant is entitled to get the cost of those products. It was further contended that both the bundles were addressed to Nellai and both the parties are called as 'Kalans' and the person who took the goods delivered both parcels to the first plaintiff. It was further contended that even though the colour combination is a product of first plaintiff, he has no right to question the second defendant for printing the same to the first defendant. So he also prayed for dismissal of the suit.** **6. First plaintiff filed a replication. It was reiterated that the word 'Kesamrutham' is not a generic word. It is a combination of two words - 'kesam' and 'amrutham'. First plaintiff had got exclusive right over the word 'Kesamrutham'. He also obtained registration under the Patents Act, 1970 for preparation of 'Kesamrutham'. Father of the first plaintiff was manufacturing a preparation by name 'Kesamrutham'. So the first plaintiff has got exclusive right over it. First plaintiff obtained drug licence on 30.3.1983. He obtained drug licence to manufacture 'Kesamrutham' in the year 1984 and from the year 1984 onwards the preparation by name 'Kesamrutham' was sold in a commercial basis in Kerala. From 1995 onwards** RFA No.476/2007 14 **the first plaintiff marketed his business by advertising in weeklies and magazines within India and also out of India. The colour code, style and trade mark for the preparation of 'Kesamrutham' was registered in the name of first plaintiff under the provisions of Trade Mark and Merchandise Act. The word 'Kesamrutham' was also registered with effect from 20.12.1998. He had obtained the certificates on 9.3.2001. First defendant did not obtain any registration. The documents produced by the first defendant are fabricated for the purpose of suit. In the cartons marketed by the first defendant the word 'Kerala' is printed in a very small letters and no ordinary person can read the same. It is with the intention to mislead the general public. First defendant is not having an independent trading style and logo and he is imitating and copying that of the first plaintiff. The colour combination and labels are combination of cyan and yellow but it is usually called as combination of colour cyan. Technically speaking this combination of cyan is also called as majantha. The contention that the first plaintiff had no particular right over the trade mark is denied.** **7. On the side of the plaintiffs PWs 1 to 5 were** RFA No.476/2007 15 **examined. Exts.A1 to 109 proved and marked. MOs. 1 to 16 identified. On the side of the defendants DWs.1 and 2 were examined. Exts.B1 to B78 proved and marked and B MOs.11 to 44 identified. Trial court found that the suit is maintainable and the products manufactured by the first defendant is deceptively similar to that of the first plaintiff and passed a decree of permanent prohibitory injunction restraining the first defendant, his servants, employees or agents or any one claiming through or under him from in any manner of passing off trade/business as that of the first plaintiff by the first defendant by using the trade mark 'Kesamrutham' both in English and in Malayalam and the logos as seen in the labels and packets in combination of colours, cyan and yellow. It is also directed to surrender the unused cartons. Challenging that decree and judgment the first defendant has filed this appeal.** **8. Learned counsel appearing for the appellant/first defendant strenuously argued that the finding of the court below that the suit is maintainable is illegal and perverse. It is argued that the suit was filed by two plaintiffs, but during the pendency of the suit the alleged trade mark was assigned to a private limited company which is an entirely different** RFA No.476/2007 16 **entity. It is argued that that company is not a party to the proceedings. It is further argued that the plaintiffs have no subsisting interest in the matter and hence the trial court ought to have dismissed the suit on that simple ground.** **9. The suit was filed by Dr. K.K.Johny, Proprietor of M/s.J & J Kalan Pharmacy, Nellai and Kurunthottam Ayurvedic Agencies, rep. by its partner. The suit was originally filed before the District Court, Ernakulam on 25.10.2000. By order dated 24.11.2000 the plaint was returned and same was presented before the First Additional District Court, Thrissur on 25.11.2000 and numbered as O.S.No.9/2000. It was admitted by the plaintiffs that the first plaintiff is the owner of proprietary concern and the same was converted as a private limited company with four directors. The plaintiffs filed I.A.No.1935/2005 to implead the company as the third plaintiff. The name and address of the third plaintiff sought to be impleaded is as follows:M/s.J & J Kalan Pharmacy (P) Limited, Nellai P.O., Thrissur District, rep. by Director Dr.K.K.Johny, Aged 58, S/o.Kalan Kochuvareed Vaidyan, Nellai P.O., Thrissur Dt. That application was rejected on the ground that if the same is allowed it will cause much prejudice** RFA No.476/2007 17 **to the defendants. So, according to the appellant/first defendant it is admitted by the original plaintiffs that they have no subsisting interest over the subject matter of the suit and the company which claims that it is using the trade name and logos is not before the court. It is argued that even if a decree is granted to the original plaintiffs, the assignee plaintiff will not be in a position to execute the same.** **10. The first plaintiff claims exclusive right over the trade mark, label and logo. The second plaintiff was impleaded as he was the distributor of the products manufactured by the first plaintiff. He did not make claim over the trade mark, label and logo. Learned counsel for the respondents/plaintiffs relying on a Division Bench decision of this Court reported in Cherukutty v. Velappu (1987 (1) KLT 565) argued that the dismissal of the application filed by the plaintiffs does not make any difference in this case. It is argued that this is not a case of an individual assigning his rights under the Trade mark to a stranger company, but it is a case in which a proprietary concern itself was converted as a private limited company and the person who is authorised to conduct the case as the principal officer is none other than the original first plaintiff himself. It is also argued that it is not** RFA No.476/2007 18 **necessary to implead the assignee in all cases and if the original plaintiffs are able to protect the interest of the same they can be allowed to prosecute the proceedings.** **11. Ext.A92 is the certificate of incorporation of M/s. J & J Kalan Pharmacy and Ext.A100 is the memorandum of articles. A reading of Ext.A92 shows that the proprietary concern run by the first plaintiff was converted as a company with effect from 19.5.2003. Ext.A100 is the memorandum of articles of association of M/s.J & J Kalan Pharmacy. There are only four subscribers and directors. First plaintiff, his wife, his brother and sister-in-law are the directors of the company.** **12. Learned counsel for the appellant/defendant relying on the decisions reported in State Trading Corporation of India Ltd. v. CTO and others (AIR 1963 SC 1811); Tata Engineering and Locomotive Co. Ltd. v. State of Bihar (AIR 1965 SC 40) and Raghu Lakshminarayanan v. Fine Tubes ((2007) 5SCC103) has argued that a juristic person can be a company within the meaning of the provisions of the Companies Act, 1956 or a partnership within the meaning of the provisions of the Partnership Act, 1932 or an association of persons which ordinarily would mean a body of persons which is not incorporated under any statute. It is further argued that** RFA No.476/2007 19 **a proprietary concern however stands absolutely on a different footing. It is also argued that a person may carry on business in the name of a business concern, but he being proprietor thereof, would be solely responsible for conduct of its affairs and a proprietary concern is not a company. It is true that a proprietary concern is different from a company in many respects. But, in this case the name of the proprietary concern itself was M/s.J & J Kalan Pharmacy. A reading of Ext.A100 shows that the name of the private limited company is also the same . So the evidence in this case shows that a business concern of the first plaintiff which was a proprietary concern itself was converted into a private limited company. In Narayanan's 'Trade Marks and Passing-off' (III Edition) the learned author had considered this aspect. In page 625 it was discussed as follows:** **“Where a limited company is formed to take over an established business lawfully carried on, it can include as part of its name the name of that business. No element of suspicion of fraud attaches to the man who has established a business under his own name if he turns that business into a limited company and applies to that limited company his own name with the word “Limited”, the reason for doing so being to retain the goodwill which he has** RFA No.476/2007 20 ## **gained for that name.”** **So the evidence on record shows that an individual who was doing business of manufacturing and marketing 'Kesamrutham' for a long period converted that proprietary concern into a private limited company using the very same name.** **13. There is yet another aspect. In this case plaintiffs filed I.A.No.1935/2005 to implead the private limited company. Trial court dismissed that application. Challenging that order the plaintiffs filed W.P.(C) No.21028/2005 before this Court. A learned Single Judge of this Court took a view that the plaintiffs had no contention that they are not competent or cannot secure interest on the private limited company and the proposed plaintiff had no contention that the interest of the private limited company in the subject matter of the suit will not be properly prosecuted or secured by the original plaintiffs. The learned Judge relied on the decision reported in Cherukutty's case (supra) in which it was held that it is not mandatory that the assignee should be substituted himself in the place of assignor and if the assignee has confidence in the assignor he may remain in the background and allow the assignor to continue in the proceedings.** RFA No.476/2007 21 **14. In this case the first plaintiff himself is the director who is the principal officer to conduct the case for the private limited company which was formed during the pendency of the suit. It is actually the trade name of the first plaintiff that is being sought to be protected. So the mere fact that the petition filed by the company was dismissed is not a ground to dismiss the suit on the ground of maintainability. I hold that the non-impleadment of the company is not fatal.** **15. Learned counsel for the plaintiffs has argued that the finding of the trial court on the question of maintainability was also in favour of plaintiffs. So the respondents can support the finding without filing an appeal or cross-appeal in this matter. It is argued that the respondents are entitled to canvass the correctness of the decision of the trial court in I.A.No.1935/2005 in this appeal and is entitled to argue that trial court ought to have allowed that petition. I have absolutely no doubt in my mind that the reasons stated by the learned District Judge for dismissing I.A.No.1935/2005 were neither legal nor proper. But, in view of my finding that even without the proposed plaintiff the suit is maintainable, I am not set aside the order passed by the trial court dismissing I.A. I hold that the finding of the trial court in the suit is** RFA No.476/2007 22 ## **maintainable and perfectly correct.** **16. The next question arising for consideration is whether the finding of the court below that the first defendant is passing off his goods as that of the first plaintiff and the products marketed by the first defendant are deceptively similar to that of the first plaintiff is correct. As I have already stated, the suit was filed on 25.10.2000. On that day first plaintiff was not the owner of the disputed registered trade mark. In the suit he filed a replication on 19.6.2001. In the further pleadings he had averred that he had obtained registration of trade mark. Exhibits A93 to 98 are the trade mark certificates of the first plaintiff. Exhibit A93 is for the trade name 'Kesamrutham' with logo in English with Hindi letters in Class 5. It was obtained for all types of Ayurvedic, Sidha drugs and medicinal preparations included in Class 5. Application was filed on 10.1.2000 and Exhibit A93 trade mark was issued on 9.3.2001. In Exhibit A93 first plaintiff had claimed that he was using the trade mark from 30.3.1983. Exhibit A94 is also the trade mark and logo in English with Hindi letters for 'Kesamrutham' in Class 3. That application was filed on 10.1.2000 and the certificate was issued on 9.3.2001. In Exhibit A94 also first plaintiff had claimed that** RFA No.476/2007 23 **he was using the trade mark and logo with effect from 30.3.1983. Exhibit A95 is also a trade mark with logo for 'Kesamrutham' in Class 5 with Arabic letters also. That application was filed on 10.1.2001 and the certificate was issued on 9.3.2001 and the user date noted is 30.3.1983. Exhibit A96 is a similar trade mark with logo for 'Kesamrutham' in Class 3 with Arabic letters. That application was filed on 10.1.2001 and the certificate was issued on 9.3.2001. Exhibit A97 is the trade name for 'Kesamrutham' in Class 5. Exhibit A98 is the trade name for 'Kesamrutham' in Class 3. Both these certificates show that the applications were filed on 28.12.1998 and the certificates were issued on 9.3.2001. In Exhibits A97 and A98 also the user date was stated as 30.3.1983. So the evidence on record clearly establishes that the first plaintiff is the owner of the registered trade mark on the date of filing of the suit. Evidence on record also shows that first plaintiff obtained drug licence in the year 1983. Exhibit A2 is specifically for preparation of 'Kesamrutham' and its formula, combination, etc., approved on 12.9.1984. So the materials on record show that first plaintiff had obtained necessary licenses for manufacturing ayurvedic products and the formula,** RFA No.476/2007 24 **combination, method of preparation of 'Kesamrutham', etc., are narrated in Exhibit A2 as early as in 12.9.1984. The case of the first plaintiff was that he started manufacturing and marketing the hair oil from 1983 but he started marketing the same in a large scale in the year 1996. So, at any rate, from 1996 onwards first plaintiff is manufacturing and marketing 'Kesamrutham' in India as well in Foreign countries. Exhibit A79 is the original export licence and Exhibit A8 is the ExportImport Code number issued by the Reserve Bank of India. He had also obtained sales tax registration for manufacturing the product. He had also produced documents to show that he was exporting products from 1998 onwards. The second defendant who is supplying cartons and labels to the first defendant as well as first plaintiff had admitted in his written statement that he started supplying cartons and labels to the first plaintiff from the year 1995 onwards and he supplied the disputed cartons and labels to the first defendant from August, 2000 only. Exhibit B20 licence produced by the first defendant shows that he had obtained licence for manufacturing drugs only from 17.7.2000.** **17. According the first defendant the first plaintiff has not invented this trade mark, but he himself had copied down** RFA No.476/2007 25 **the same from Exhibit B9. Exhibit B9 is an advertisement appeared in Mathrubhoomi daily dated 14.10.1984 which was for a product by name 'Kesakalpam'. According to the first defendant he started manufacturing the same from the year 1983 and subsequently permitted his brother Varghese to use that name. Exhibit B9 does not show the actual words used, colour combination, etc., of the carton. It only contains the photographs of two Cine Artists, without any particulars. No carton of Exhibit B9 product was also produced. It is very difficult to accept the contention of the first defendant that first plaintiff imitated Exhibit B9. According to the first plaintiff he himself designed the name, label, carton, etc. He gave evidence to that effect also. In this connection the written statement filed by the second defendant is very relevant. The case put forward by the first plaintiff was that first defendant started manufacturing and marketing of the product by name 'Kerala Kesamrutham' only from the year 2000 and he came to know about the same accidently when a parcel containing the cartons and logos addressed to the first defendant was mistakenly delivered to him. The fact that a parcel meant to be delivered to the first defendant was taken delivery of by the first plaintiff is admitted by the first** RFA No.476/2007 26 **defendant also. It is also admitted by him that that was sent by the second defendant from Sivakashi. He contended that though his name and address were clearly written in the bundle, the first plaintiff with a mischief motive took delivery of the same. So the averment in the pliant that the second defendant was manufacturing and supplying the cartons, and labels, etc., to the first defendant was admitted by him. Second defendant, who is the manufacturer and supplier of cartons, labels, logos, etc., for the first defendant and first plaintiff had admitted certain facts in his written statement which are very crucial for deciding the matter in issue. In paragraph 11 of the written statement second defendant had admitted that he was printing labels and cartons for the first plaintiff from 1995 onwards. The labels of Kesamrutham were first printed in the year 1995. The colour combination of labels are combination of cyan and yellow with photographs of Cine Artist Charmila. Second defendant had produced a copy of the label and carton along with his written statement. He had also admitted that the colour combination was suggested and selected by the first plaintiff. It was further admitted that the first plaintiff required two types of cartons and labels for his products; one for sale in India and the another** RFA No.476/2007 27 **type for export. It was stated that there are slight variations in both these cartons. It was stated that from 1995 onwards second defendant was printing two types of cartons and labels for Kesamrutham of the first plaintiff; one for export and the other for sale in India. It was further stated that few days before 28.10.1998 first defendant approached the second defendant and requested him to print cartons and labels for the product Kesakalpam in the same colour combination used by the first plaintiff for his product, Kesamrutham. It was also admitted that the indications and instructions are copied from the first plaintiff's cartons, labels, etc. But it was contended that the name of product, address of the manufacturer, picture of the models were different. The stand taken by the second defendant was that as there were several differences, he started printing of the cartons, labels, etc., for the first defendant also. It was stated that during the second week of August, 2000 first defendant again requested him to print labels and cartons for his product, 'Kalan's' product, Kerala Kesamrutham'. It was stated that the colour combination and the films for printing cartons and labels were brought by the first defendant from Kerala. It was admitted that the first defendant requested the second** RFA No.476/2007 28 **defendant to print labels and cartons in the same colour combination used by the first plaintiff for his product 'Kesamrutham'. It was stated that one of the major differences was that the width of the yellow margin on the top side of the carton of the first plaintiff was more. All other colour combinations were same. According to the second defendant he undertook to print cartons and labels for the first defendant only because the first plaintiff has no particular right over the said colour combination. He again reiterated that he started printing labels, cartons, etc., for the first plaintiff from October, 1998, but the cartons and labels for 'Kerala Kesamrutham' of the first defendant were printed only from August, 2000. The only justification of the second defendant for doing such an illegal act was that the first plaintiff had no special right over that word and logo though the colour combination, etc., used by the first defendant were exactly similar as that of the first plaintiff. It was further admitted that a parcel addressed to the first defendant containing cartons, labels, etc., of Kalan's Kesakalpam were sent to Thrissur on 23.10.2000. So the admissions made by the second defendant show that he started printing of labels, cartons, etc., for Kesamrutham for the first plaintiff from 1995** RFA No.476/2007 29 **onwards. He was supplying two types of cartons. It was also admitted by the second defendant that from August 2000 cartons, labels, etc., for marketing 'Kerala Kesamrutham' were also printed and supplied to the first defendant. First defendant had no case that the second defendant colluded with the first plaintiff. It is true that after filing the written statement second defendant did not contest the case. But that will not take away the effect of admissions made by him in his written statement. First defendant must be fastened with the knowledge of the contents of the written statement filed by the second defendant. He had not taken any steps to examine second defendant. So the admissions made by the second defendant, who printed and supplied the cartons, labels, etc., to the first plaintiff as well as the first defendant, alone are sufficient to hold that first defendant was manufacturing and marketing products which are identical or deceptively similar to the products of the first plaintiff.** **18. It is argued that there were materials to show that at least from 1969 onwards ayurvedic products with some medicinal value were available in the market with the same name and hence the first plaintiff is not entitled to claim any exclusive right. Reliance is placed on Exhibits B16 and B17** RFA No.476/2007 30 **advertisements which appeared in the Dakshina Bharati daily dated 25.4.1970 and 28.2.1969 respectively. Exhibits B16 and B17 show that an ayurvedic pharmacy in Thiruvananthapuram was marketing a product by name Kesamrutham. P.W.2 examined in the case is the son of the proprietor of that pharmacy. He deposed that no such products were manufactured or marketed by his pharmacy. Even assuming that such a product was available from the year 1969 that will not take away the right of the first plaintiff, who is the owner of a registered trade mark. It is argued that there are various other persons who are manufacturing and marketing the product by name 'Kesamrutham'. He produced a number of bottles also. All those bottles were purchased and produced after the institution of the suit. Relying on the inscriptions in the labels, learned counsel for the first defendant has argued that these products are available in the market long prior to the manufacturing of the product by the first plaintiff. Even accepting the contention of the first defendant that others are marketing the products with the same name is not sufficient to hold that those products were manufactured from the date shown in the cartons. As rightly pointed out by the counsel for the first plaintiff, there is no evidence to show from what** RFA No.476/2007 31 **date onwards these products are being manufactured. In the absence of material to show that from what date onwards these articles were available, it is not possible to accept the contention of the first defendant that such articles were available in the market long prior to the manufacturing of Kesamrutham by the first plaintiff. Exhibit A1 is the licence obtained by the first plaintiff for manufacturing ayurvedic medicines. Exhibit A2 is the formula for manufacturing Kesamrutham which was obtained on 12.9.1984. He is the owner of the registered trade mark also. So even accepting the contention that others are also using the same name, that is not a ground to dismiss the suit.** **19. Learned counsel for the first defendant has argued that the word 'Kesamrutham' is a generic word which is descriptive in nature of the product and the first plaintiff cannot claim any exclusive right. As I have already stated, the first plaintiff had obtained certificate under the Trade Marks Act. So long as that certificate stands, he has got a right to prevent others from passing off their products as that one manufactured by him. It is also to be noted that kesam means hair and amrutham means elexier, something which makes a person immortal. But when these two words are put together,** RFA No.476/2007 32 **it becomes a meaning less word. So it is not a generic word as contended by the counsel for the first defendant. First plaintiff gave evidence to the effect that it was he who suggested the word and designed the logos and labels. That aspect is admitted by the second defendant also. So there is absolutely no merit in the contention raised by the first defendant that the word 'Kesamrutham' is a generic word.** **20. Evidence of P.W.1 shows that he obtained licence for manufacturing Kesamrutham in the year 1984. Apart from the oral evidence, there was no material available on record to show that he was manufacturing and marketing the products in a large scale till 1994. Exhibits A7 to A75(a) show that from 1995 onwards first plaintiff is doing substantial business and he is spending a lot of amount for advertisement, etc. The details of the business turn over is given in the plaint. He has also produced the trading and loss account and the Balance Sheet for the period ended 31.3.1998 and 31.3.1999 (Exhibits A4 and A5). He had produced documents to show that he was exporting Kesamrutham to various countries.** **21. Learned counsel for the first defendant has strenuously argued before me that a comparison of the logos, cartons, labels, etc., of the first plaintiff with that of the first** RFA No.476/2007 33 **defendant will show that they are entirely different. I have carefully compared these two cartons. The cartons used by the first plaintiff contains the word 'Kesamrutham' in English and Malayalam. The colour combination is cyan and majantha. In the carton intended for export, it contains the photograph of Cine Artist Charmila and those cartons mentioned for sale in India it contains the photograph of another model. A comparison of the cartons used by the first defendant with that of the first plaintiff shows that yellow boarder at the top is little bit wider in the carton of the first defendant. In the carton of the first defendant before the word 'Kesamrutham' in English and Malayalam the words 'Kalans products' and 'Kerala' are written in very small letters. It contains the photograph of Cine Artist Kavya Madhavan. In all other respects, both cartons are similar and identical.** **22. Learned counsel for the first defendant relied on the decisions reported in J.R. Kapoor v. Micronix India (1994 Supp. (3) SCC 215), M/s. Bharat Enterprises (India) v. C. Lall Gopi Industrial Enterprises (AIR 1999 P & H 231), M/s.Panacea Biotec Ltd. v. M/s. Recon Ltd. (AIR 1997 Del. 244) in support of his argument.** RFA No.476/2007 34 **In J.R. Kapoor's case (supra) the Apex Court held that the word 'micro' is a part of micro-chip technology and no one can claim monopoly over the word 'micro'. It was also held that since there was no phonetic or visual resemblance between the words 'tel' and 'nix', the trade name 'Micronics' and 'Microtel' are not similar. In that case even the visual impression was different. One is in black and white in slimmer letters and the word 'microtel' is in thick bold letters in red colour without any design around. In M/s. Bharat Enterprises (India)'s case (supra), a learned Single Jude of the Punjab and Haryana High Court took a view that the word 'heat-pillar' is generic word for room heaters and no manufacturer can have exclusive right. In M/s. Panacea Boitec's case (supra) the plaintiff had adopted the trade mark 'nimulid' as a short form of the word 'nimesulide', which is the name of a basic drug. A learned Single Judge of the Delhi High Court took a view that no distinctiveness or exclusiveness can be claimed by the manufacturer of that drug.** **23. The principles laid down in the aforesaid decisions can have no application to the facts of this case. A mere perusal of the cartons used by the first defendant and that of first plaintiff shows that both parties are using the word** RFA No.476/2007 35 **'Kesamrutham' in the same colour combination, etc. In the case of the first defendant, in the carton before the word 'Kesamrutham' it is written as 'Kalan's products Kerala' in very small letters. It will not attract an unwary customer. In a case of passing off goods, the intention to defraud need not be established. The question arising for consideration is whether an unwary customer is likely to be misled by the appearance of the product marked by the appellant. Normally, a customer who goes to the shop may not critically examine the product.** **24. In Parle Products v. J.P. & Co. Mysore (AIR 1972 SC 1359) the Apex Court held as follows:** **“In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. It is of no use to note on how many points there is similarity and in how many others there is absence of it”.** RFA No.476/2007 36 **25. In Roche & Co. v. G. Manners & Co. (AIR** **1970 SC 2062) it was held as follows:** **“The marks must be compared as whole. It is not right to take portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accumstomed to the existing trade mark”.** **26. In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73) a three Judges Bench of the Supreme Court had considered the test to determine the deceptive similarity. It was held as follows:** **“Broadly stated, in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered:** **(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.** **(b) The degree of resembleness between the marks, phonetically similar and** RFA No.476/2007 37 ## **hence similar in idea.** **(c) The nature of the goods in respect of which they are used as trade marks.** **(d) The similarly in the nature, character and performance of the goods of the rival traders.** **(e) The class of purchasers who are likely to buy the goods bearing the marks they require, their education and intelligence and the degree of care they are likely to exercise in purchasing and/or using the goods.** **(f) The mode of purchasing the goods or placing orders for the goods.** **(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.** **Weightage to be given to each of the** **aforesaid factors depending upon facts of each case and the same weightage cannot be given to each factor in every case”.** **27. So the oral and documentary evidence adduced in this case shows that at least from 1995 onwards the first** RFA No.476/2007 38 **plaintiff was marketing the product Kesamrutham. Exhibits A97 and A98 shows that he applied for registration of the trade mark in the year 1998. First defendant started manufacturing Kesamrutham and marketing the same in identical or deceptively similar carton or label as used by the first plaintiff from August 2000 onwards.** **28. The learned counsel for the first defendant has argued that the first defendant has obtained registered trade marks for the cartons and logos owned by him and hence the first plaintiff is not entitled to any relief. The certificate produced shows that the first defendant applied for registration only on 5.3.2003 and the certificate was issued only on 22.2.2008 after filing this appeal. It is trite law that the first defendant also is a holder of a registered trade mark is not an answer or defence in an action against passing off.** **29. The evidence discussed above clearly establishes that the findings of the court below that the first defendant is passing off his goods as that of the first plaintiff and first plaintiff is entitled to get a decree of permanent prohibitory injunction are perfectly correct and does not call for any** RFA No.476/2007 39 **interference. The appeal is without any merit and the same is only to be dismissed. Appellant is given two months time to surrender the unused cartons and labels of the offending trade mark.** **In the result, appeal is dismissed.** **I.A.No.3476 of 2007 shall stand dismissed.** ## **K. PADMANABHAN NAIR, JUDGE.** **vsv**