V-GUARD INDUSTRIES LIMITED v. RAKESH MALHOTRA

## **IN THE HIGH COURT OF KERALA AT ERNAKULAM** ## **PRESENT:** **THE HONOURABLE MR.JUSTICE THOMAS P.JOSEPH** **FRIDAY, THE 5TH DAY OF JULY 2013/14TH ASHADHA, 1935** ## **FAO.NO. 179 OF 2013 ()** **-----------------------------------I.A. NO.1485 OF 2013 IN O.S. NO.12 OF 2013 SECOND ADDITIONAL DISTRICT COURT, ERNAKULAM** ## **APPELLANT(S)/PETITIONER/PLAINTIFF:-** **-----------------------------------------------------------** **M/S V-GUARD INDUSTRIES LIMITED, 33/2905 F, VENNALA HIGH SCHOOL ROAD, VENNALA KOCHI - 682 028, KERALA REPRESENTED BY THEIR VICE-PRESIDENT (MARKETING) MR.DEEPAK AUGUSTINE S/O.K.A.AUGUSTINE, AGED 40 YEARS RESIDING AT DOOR NO.27/28C NETHAJI NAGAR, EDAPPALLY NORTH P.O. ERNAKULAM - 682 024.** **BY ADVS.SRI.T.KRISHNAN UNNI (SR.) SRI.C.HARIKUMAR SRI.VIZZY GEORGE KOKKAT SMT.C.B.ANUROOPA** ## **RESPONDENT(S)/RESPONDENT/DEFENDANT:-** **-------------------------------------------------------------------** **MR.RAKESH MALHOTRA AGED 50 YEARS RESIDING AT D-4/32, DLF PHASE-1, GURGAON - 122 002 HARYANA STATE.** **R1 BY ADV. SRI.P.MARTIN JOSE R1 BY ADV. SRI.MATHEW A KUZHALANADAN** **THIS FIRST APPEAL FROM ORDERS HAVING BEEN FINALLY HEARD ON 05-07-2013, THE COURT ON THE SAME DAY DELIVERED THE FOLLOWING:** ## **THOMAS P.JOSEPH, J.** **==================================== F.A.O. No.179 of 2013 ==================================== Dated this the 05[th] day of July, 2013** ## **J U D G M E N T** This appeal arises at the instance of the appellant-plaintiff from the order dated 01.06.2013 on I.A. No.1485 of 2013 in O.S. No.12 of 2013 of the 2[nd] Additional District Court, Ernakulam. 2. The appellant is a public limited company and the registered owner of the trade mark “V-GUARD”. The appellant is engaged in the manufacture and sale of voltage stabilizers, electrical and electronic apparatus and instruments, water purifiers, mixers, fans, pumps, etc. under the said registered trade mark. The appellant obtained registration for the said trade mark with respect to the goods falling within Class 9 of Schedule IV of the Trade Mark Rules and many other goods and services (inclusive of 39 items). The appellant claimed that it has acquired wide reputation and goodwill to the said trade mark. The mark 'VGUARD' was first adopted and used by the predecessors of the appellant in the year, 1997 in relation to inverters and voltage stabilizers. Since then, the mark 'V-GUARD' was in extensive and continuous user, advertised and promoted across the country in **F.A.O. No.179 of 2013** -: 2 :- relation to inverters and voltage stabilizers as well as a variety of electronic, electrical, chronological and home appliances. The appellant has acquired substantial goodwill and reputation. Its trade mark is a 'well known trade mark' as defined in Sec.2(zg) of the Trade Marks Act, 1999 (for short, “the Act”). While so, the appellant was incorporated in the year, 1996 and acquired absolute right over the trade mark 'V-GUARD' effective from 01.08.2005 when the then Chairman and Managing Director of the company being assigned his exclusive right over the mark 'VGUARD' with all appurtenant goodwill in favour of the appellant for valuable consideration. Besides the common law right, the appellant's mark, 'V-GUARD' is also statutorily protected by virtue of the registration under the Act. The mark 'V-GUARD' is distinctive of the appellant's products alone and the consumers and traders are likely to identify and associate any mark depicted similarly/identically to that of 'V-GUARD' to that of the appellant alone in the market. The appellant commands a turn over of 993.62 crores and employs around 1900 personnel as part of its business activities (The appellant has given details of its turn over beginning from 1996-97 - sales turn over of Rs.60.03 crores and advertisement turn over of Rs.2.9 crores till 2011-12 as sales turn **F.A.O. No.179 of 2013** -: 3 :- over of Rs.993.62 crores and advertisement turn over of Rs.38.15 crores). 3. While so, during the month of March, 2013 the appellant noticed that the respondent is planning to launch, advertise, market and offer for sale of inverters, voltage stabilizers, batteries, electrical and electronic apparatus and instruments, water purifiers, mixers, fans, pumps, etc., under the trade mark 'LIVGUARD'. The respondent and his men were found circulating price lists and promotional materials of their products among the dealers using the said trade mark which is deceptively similar to that of the appellant's well known trade mark - 'VGUARD'. 4. On the above allegations, the appellant filed O.S. No.12 of 2013 in the court of learned Additional District Judge, Ernakulam and filed I.A. No.1485 of 2013 for an order of temporary injunction to restrain the respondent from using the trade mark, 'LIVGUARD'. On 11.04.2013 the learned Additional District Judge passed an ex parte interim order of injunction in favour of the appellant. 5. The respondent contended that he is a qualified Engineer and in the year, 1993, he realized the dire need in the **F.A.O. No.179 of 2013** -: 4 :- market for a moderately priced inverter given the power situation in the country and he innovated and came out with battery charged inverter which was then manufactured and sold under the brand 'LUMINOUS'. The product became an instant hit in the market and the SAR group subsequently diversified its product range under its well established and well-known 'LUMINOUS' brand to include inverters, batteries for residential and commercial usage, batteries and chargers for mobile phones, UPS, water purifiers, etc., and went on to become a group with a turnover in excess of `1000 crores within a period of 22 years between its inception in 1988 and 2011. In May, 2011 the respondent sold 74% shares in the flagship company, viz., Luminous Power Technologies Private Limited carrying out inverters, lead acid batteries, voltage stabilizers, solar products, home electrical products, such as wires, fans, MCB, switches, etc. Subsequent to the sale in 2011, the respondent and his companies are engaged in the business of mobile accessories, water purifiers, voltage stabilizers, real estate, green fuel, etc., under the LIV family series of trade marks. The 'LIV' series of brands have been inspired from the word 'LIVE' which has a positive characteristic and ring to it. The 'LIV' family of brands **F.A.O. No.179 of 2013** -: 5 :- include the followings: Livpure - for water purifiers, Livlife - for mobile accessories, Livguard - for mobile accessories, batteries, chargers, voltage stabilizers, pumps and consumer durables, etc., Livegreen - for real estate and green fuel and Live2eat - for food. All the above brands are not dictionary words and are trade marks coined by the respondent and given their distinctiveness. The respondent has applied for registration of the above trade marks and those applications are pending. The respondent has also given details of the 'LIV' based marks currently being used by SAR group of companies. It is further contended that the respondent has spent in the last 10 months a sum in excess of Rs.20 crores to promote and advertise the aforementioned LIV family series of trade marks including “Livguard” with the Cricket legend, Sachin Tendulkar being the Brand Ambassador for both Livpure and Livguard and the mark “Livguard” has been used commercially all over India since January, 2013 in relation to **F.A.O. No.179 of 2013** -: 6 :- batteries, chargers and other life style accessories and those trade marks are consequently identified and associated by consumers with the business of respondent's SAR group. 6. It is further contended that the trade mark of the appellant and respondent are distinct. There are a number of other entities all over the country using the word, 'GUARD' (which forms bulk of its mark) as a part of their trade mark for their stabilizers/UPS and to the best of respondent's knowledge the appellant have never objected to such use by any of them. The respondent has for eg., given the following brands as being used by other entities in the country: “GUARD, BODYGUARD, COMGUARD, VOLTGUARD, POWERGUARD, OHMGUARD, VANGUARD, B.G. BLUEGUARD, BLUEGUARD, SAGAR SAFEGUARD, SAFEGUARD, MASTEREGUARD, COLDGUARD, TECHNOGUARD, ENGERGYGUARD, N- GUARD, REALGUARD, ELISHA'S E.GUARD', etc”. 7. The respondent also stated that other entities are using the following as their trade marks, **F.A.O. No.179 of 2013** -: 7 :- “C-GUARD, E.GARD, E-GUARD, G-GUARD, I- GUARD, M-GUARD, U-GUARD, GUARD”, all of which are very close to the appellant's brand trade mark 'VGUARD' but no objection or action has been taken by the appellant against any of those entities. The respondent denied the various allegations contained in the affidavit in support of the application for injunction and claimed that if the order of ex parte interim injunction is confirmed he will be put to irreparable loss and injury. 8. To the counter affidavit of the respondent, the appellant has filed a reply affidavit wherein it denied the allegations that there are other entities in the country using the trade mark with 'Guard' as prefix or suffix. It also contended that it has taken action against the marks which are close to the trade mark V-GUARD (marks referred to in paragraph 7). 9. The learned Additional District Judge, after hearing the parties vacated the ex parte order of injunction and dismissed I.A. No.1485 of 2013 on the finding that the appellant was not able to show the existence of a prima facie case in its favour. The said order is under challenge. **F.A.O. No.179 of 2013** -: 8 :- 10. The learned Senior Advocate for the appellant has contended that though originally the view taken by the courts (see **S.M. Dyechem Ltd. v. Cadbury (India) Ltd.** ([2000] 5 SCC 573) was that in infringement of trade mark/passing of action, the dissimilarity of the two trade marks is to be taken into account, the view has changed and as held in **Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.** ([2001] 5 SCC 73), the courts are to look into the similarity of the words in the two expressions. It is contended that it is not a safe method to keep the two trade marks side by side to ascertain the similarity or dissimilarity as the case may be. The court must place itself in the arm chair of the ordinary customer who, with an imperfect recollection regarding the trade mark in his mind goes to the market to purchase goods and is deceived or confused by any deceptive similarity in the trade mark. The learned Additional District Judge has looked into the dissimilarity in the trade marks of the appellant and the respondent and has found that the appellant has not established a prima facie case rather than considering the similarity between the two expressions. It is also argued that though normally the appellate court is not required to interfere with the discretionary jurisdiction exercised by the trial **F.A.O. No.179 of 2013** -: 9 :- court, here is a case where the learned Additional District Judge has failed to exercise the jurisdiction in the proper way. Reliance is placed on the following decisions: ## **(a) Cadila Health Care Ltd. v. Cadila** **Pharmaceuticals Ltd** . ([2001] 5 SCC 73) - There, question was whether the trade mark 'Falcitab' of the respondent was deceptively similar to 'Falcigo', the trade mark of the appellant. The refusal to grant an order of temporary injunction was not interfered with by the Supreme Court. The Supreme Court directed expeditious disposal of the suit, explaining in paragraph 35 the factors to be considered by the trial court which is as under: 1) 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. 2) The degree of resemblance between the marks, phonetically similar and hence similar in idea. 3) The nature of the goods in respect of which they are used as trade marks. 4) The similarity in the nature, character and **F.A.O. No.179 of 2013** -: 10 :- performance of the goods of the rival traders. 5) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. 6) The mode of purchasing the goods or placing orders for the goods and 7) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. The Supreme Court in the above decision referred to several authorities on the point. Reference was made to _**National**_ ## _**Sewing Thread Co. Ltd. Chidambaram v. James Chadwick**_ _**and Bros. Ltd (**_ AIR 1953 SC 357) where it was held that the real question to decide is to see as to how a purchaser who must be looked upon as an average man of ordinary intelligence would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing. Reference was also made to _**Corn Products**_ **F.A.O. No.179 of 2013** ## -: 11 :- ## _**Refining Company v. Shangrila Food Products Limited,**_ (AIR 1960 SC 142). There observations made by the High Court that the allegations have to be considered as a whole was quoted with approval. Further reference was made to **Amritdhara Pharmacy v. Satya Deo Gupta** (AIR 1963 SC 449). There, the respondent had applied for the registration of the trade name "Lakshmandhara" in respect of a medicinal preparation for the alleviation of various ailments. That was opposed by the appellant whose trade name "Amritdhara" had already been registered in respect of similar medicinal preparation. The question was whether the name "Lakshmandhara" was likely to deceive the public or cause confusion to the trade. It was observed that for deceptive resemblance two important questions to be considered are: (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. It was held that the question has to be approached from the point **F.A.O. No.179 of 2013** ## -: 12 :- of view of a man of average intelligence and imperfect recollection and that to such a man the overall structural and phonetic similarity of the two names 'Amritdhara' and 'Lakshmandhara' was likely to deceive or cause confusion. The Supreme Court while deciding the said case opined that the use of the word 'dhara' which literally means 'current or stream' is not by itself decisive of the matter and that the overall similarity of the critical comparison of the two names are to be looked into. A critical comparison of the two trade names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the name of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. Yet another decision referred was **Durga Dutt Sharma v. N.P.Laboratories** (AIR 1965 SC 980) where the respondent manufactured medicinal products under the name and style, "Navaratna" while the appellant was carrying on business in preparation of Ayurvedic pharmaceutical products under the name and style, "Navaratna Kalpa". It was held that the purpose of comparison is for determining whether the essential features of ## **F.A.O. No.179 of 2013** ## -: 13 :- the plaintiff's trade mark are to be found in that used by the defendant and that the identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. In **F.Hoffmann-La Roche and Co. Ltd. v. Geofferey Manner and Co. Pvt. Ltd** . ([1969] 2 SCC 716) reference was made to the test for comparison of the two word marks formulated by Lord Parker, in _**Pianotist Co. Ltd's case (1906 (23) RPC 774)**_ . It is stated that one must take the two words and must judge of them, both by their look and by their sound. One must consider all the surrounding circumstances and further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. Another decision referred is **Aristoc Ltd. v. Rysta Ltd.** (1945 (62) RPC 65 at page 72) where it was observed that it is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused. There, the words in challenge were "Protovit" and "Dropovit". It was ultimately held that the two expressions are so dissimilar that there was no reasonable probability of confusion between the words either from visual or **F.A.O. No.179 of 2013** ## -: 14 :- phonetic point of view. Reference was also made to the decision in **S.M. Dyechem Ltd. v. Cadbury (India) Ltd** . (2000) 5 SCC 573) where the trade marks "Piknik" and "Picnic" were found dissimilar (according to the learned Senior Advocate, the decisions in **Aristoc Ltd. v. Rysta Ltd.** and **S. M. Dyechem Ltd. v. Cadbury (India) Ltd** were rendered at a time when the view of the Supreme Court was the dissimilarity in the two words are to be considered whereas in view of the decision in **Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.** it is not dissimilarity but the similarity in the words to be considered). **(b) Novartis A.G. v. Crest Pharma Pvt. Ltd. & Another** (2009 [41] PTC 57 (Delhi). There, the trade marks were SECEF of the plaintiff and CECEF of the defendant. It was held that the fact that there are other companies using similar trade mark as that of the plaintiff was not by itself decisive. **(c) Ruston & Hornsby Ltd. v. Zamindara Engineering Co** . (PTC (Suppl.) (1) (175) SC). There, the plaintiff's trade mark was RUSTON while the defendant introduced a suffix and used the trade mark RUSTAM INDIA. It was held that the expression 'RUSTAM INDIA' is deceptively similar to the RUSTON and that the plaintiff is entitled to initiate action for **F.A.O. No.179 of 2013** ## -: 15 :- infringement. In paragraph 7 it was held that in an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the court will not inquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact trade mark on the register but something similar to it (as alleged in the case on hand), the test of infringement is the same as in an action of passing off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off actions. **(d) Parle Products (P) Ltd. v. J.P. And Co., Mysore** (PTC [Suppl.[1] 346 (SC). This case concerned use of wrapper in connection with the sale of biscuits known as Parle's Gluco Biscuits printed on the wrapper. The trial court and High Court came to the conclusion that defendant's wrapper was not deceptively similar to that of the plaintiff. The Supreme Court found that the wrapper of the defendant is deceptively similar to that of the plaintiff. The Supreme Court in paragraph 9 of the decision observed that the two wrappers are not be placed side by side to find out whether there are any difference in the design and if so, whether they are of such a character as to prevent one **F.A.O. No.179 of 2013** ## -: 16 :- 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. **(e) Lloyd Schuhfabrik Meyer & Co. GmbH v.Klijsen Handel BV** (2000 FSR 77). In paragraph 28 of the judgment it is observed that the more similar the goods or services covered and the more distinctive the earlier mark, the greater will be the likelihood of confusion and that in determining the distinctive character of a mark and accordingly in assessing whether it is highly distinctive it is necessary to make a global assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking and thus to distinguish those goods or services from those of other undertakings. **(f) Laxmikant V.Patel v. Chetanbhat Shah & Another** (2002 [24] PTC 1 (SC). The plaintiff was running a studio in the name and style, “Muktajivan Colour Lab and Studio” with the words 'QSS' also written (which is the abbreviation of the words 'Quick Service Station'). The defendant started a studio about 4 k.ms away from that of the plaintiff in the name and **F.A.O. No.179 of 2013** ## -: 17 :- style, “Muktajivan Colour Lab and Studio”. It was held that where there is a probability of confusion in business, an injunction will be granted even though the defendant adopted the name innocently and that if the plaintiff's studio has already acquired wide reputation and goodwill, it makes no difference the studio of the defendant is situated 4 kms. away. In paragraph 15, it is observed that it is the word 'Muktajivan' the employment of which makes distinctive the business name of the plaintiff and it is the continued use of 'Muktajivan' in the business name of the plaintiff which has created a property therein linked with the plaintiff. An order of temporary injunction was granted under Rules 1 and 2 of order XXXIX of the Code of Civil Procedure. **(g) Mouknt Shivalik Breweries Ltd. & Anotherv. Gurom Enterprises & Another** (2010 [44] PTC 610 (Delhi). There, the trade mark of the plaintiff was THUNDER BOLT while that of the defendant was THUNDER NIGHT. After a survey of various decisions it was held in paragraph 27 of the decision that the use and adoption of the word THUNDER NIGHT by the defendants in relation to beer will infringe upon the proprietory rights of the plaintiffs in their trade mark THUNDER BOLT, the prefix THUNDER is common but the product is the same, viz., beer **F.A.O. No.179 of 2013** ## -: 18 :- and though the word THUNDER may be generic in nature and a common dictionary word, when applied in relation to beer is likely to create the impression that the effect and impact of the beer would be like thunder, i.e., loud and clear. 11. The learned Senior Advocate has a further contention that the appellant's trade mark is a 'well known trade mark' as defined in Sec.2(zg) of the Act. In that connection, reliance is placed on the decision in **Tata Sons Ltd. v. Manoj Dodia & Others** (2011 [46] PTC 244 (Delhi). In paragraph 5 of the decision it is held that a 'well known trade mark' is a mark which is likely to be known to the relevant general public and enjoys a comparatively high reputation amongst them. On account of advancement of technology, fast access to information, manifold increase in international business, international travel and advertising/publicity on internet, television, magazines and periodicals which now are widely available throughout the world, of goods and services during fairs/exhibitions, more and more persons are coming to know of the trade marks, which are well known in other countries and which on account of the quality of the products being sold under those names and extensive promotional and marketing efforts have come to enjoy trans- **F.A.O. No.179 of 2013** ## -: 19 :- border reputation. The doctrine of dilution which has recently gained momentus, particularly in respect of well known trade marks emphasises that use of a well known mark even in respect of goods or services, which are not similar to those provided by the trade mark owner, thought it may not cause confusion amongst the consumer as to the source of goods or services, may cause damage to the reputation which the well known trade mark enjoys by reducing or diluting the trade mark's power to indicate the source of goods or services. In paragraphs 9 and 10 it is observed that prohibition against use of a well known trade mark under Paris Convention was to apply only when the impugned use was in respect of identical or similar goods and that well known marks and trans-border reputation of brands was recognized by courts in India even before the act came into force. Paragraph 13 deals with the factors to be considered in determining whether a trade mark is a well known mark or not. The court needs to consider a number of factors including the extent of knowledge of the mark to, and its recognition by the relevant public, the duration of the use of the mark, the extent of the products and services in relation to which the mark is being used, the method, frequency, extent and duration of advertising and promotion of **F.A.O. No.179 of 2013** ## -: 20 :- the mark, the geographical extent of the trading area in which the mark is used, the state of registration of the mark, the volume of business of the goods or services sold under the mark, the nature and extent of the user of the same or similar mark by other parties, the extent to which the rights claimed in the mark have been successfully enforced, particularly before the courts of law and trade mark registry and actual or potential number of persons consuming goods or availing services being sold under that brand. 12. The learned Senior Advocate has also placed reliance on the decision in **Medivision Scan and Diagnostic Research Centre Pvt. Ltd. v. Medivision Ind Diagnostic Centre** (2004 KHC 661) to contend that where the reason stated by the trial court for denying injunction is erroneous, it is within the power of the appellate court to grant such injunction. In the reported case the reason stated by the trial court was that the parties could settle their disputes before the Registrar of trade mark. This Court held that the reason stated is erroneous and that the appellate court is justified in granting an order of injunction. 13. Responding to the above arguments, the learned Senior Advocate for the respondent would contend that in the expression 'GUARD' nobody could claim any exclusive right as it is **F.A.O. No.179 of 2013** ## -: 21 :- a generic word arising from the function of the product. It is contended that the appellant also admits that it has no particular right over the expression GUARD as is revealed from the reply affidavit. There is no structural or phonetic similarity between the two trade marks involved in this case so that the court below could arrive at a prima facie satisfaction that the trade mark of the respondent is deceptively similar to that of the appellant and is likely to deceive or confuse the customer. It is contended that unlike in the case of medicinal products, it is not an unwary or illiterate purchaser going to the market to purchase some stablizer or similar product with an imperfect recollection of the trade mark of the appellant and happen to be deceived or confused by the trade mark of the respondent. The learned Senior Advocate contended that the expression 'LIV' is coined by the respondent the generic work 'LIVE' and has been made use of with respect to all other products of the respondent as explained in the counter affidavit. My attention is also drawn to the various documents the respondent has produced in respect of the said contention. The learned Senior Advocate contended that the trial court has considered all relevant aspects in the matter and has refused to exercise its discretion in the matter of grant of ## **F.A.O. No.179 of 2013** ## -: 22 :- temporary injunction. In such a situation the appellate court is not required to interfere if it is of the view that had it considered the matter at the first instance it would have taken a different view of the matter. The appellate court cannot substitute its view for that of the trial court if the view taken by the trial court is also possible. The learned Senior Advocate has placed reliance on the following decisions in support of his argument. ## **(a) Wander Ltd. and Another v. Antox India P. Ltd.** (1990 [Suppl.] SCC 727). There, in paragraph 8 it was held that the point for consideration is whether a prima facie case is made out. The interlocutory remedy is intended to preserve in status quo the rights of parties which may appear on a prima facie case. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so (respondent in this case has a case that he is engaged in the business from 1993 onwards but according to the appellant, the product of the respondent with the trade mark 'Livguard' has not so far reached the customer) in which latter case considerations somewhat different **F.A.O. No.179 of 2013** ## -: 23 :- from those that apply to a case where the defendant is yet to commence his enterprise are attracted. (b) **Indo-Pharma Pharmaceutical v. Citadel Fine** **Pharmaceuticals** ([1998] 3 MLJ 214). There, the question considered was whether the trade mark 'ENERJASE' is deceptively similar to the word 'ENERGEX'. The question was answered in the negative. It was held that the product of the plaintiff being Allopathic is in the form of syrup and is packed in bottles and tins. The product of the defendant being Ayurvedic is in the form of capsules put in strips which are packed in small cardboard boxes (certain other details are also given in paragraph 55 of the decision). The word 'ENERJY/J' used as a prefix in both the trade names is the abbreviation of the generic term of the English word 'energy'. As such, it is descriptive in nature and common in usage. Nobody could claim an exclusive right to the use of the word 'ENERGY/J' as the constituent of any trade mark. The customer dealing with those medicinal preparations would certainly distinguish the names of the medicines by ignoring the word 'ENERJ' and by assigning weight to the suffix so as to associate the name with the manufacture. (c) **S.B.L. Ltd. v. Himalaya Drug Co.** (AIR 1998 Delhi **F.A.O. No.179 of 2013** -: 24 :- 126). There the question was whether the trade mark LIV-T is deceptively similar to the trade mark LIV-52. The answer was in the negative. In paragraph 30.1 the decision, **Amritdhara Pharmacy v. Satya Deo Gupta** was distinguished. It was held that Amritdhara and Lakshmandhara are likely to deceive or cause confusion because of the overall structural and phonetic similarity and that the goods were such as are largely sold to illiterate or badly educated persons. (d) **Astrazeneesa U.K. Limited and Another v. Orchid Chemicals and Pharmaceuticals Ltd** (ILR 2007 (1) Delhi 874). There the dispute concerned use of the expression 'MEROMER' in the trade mark of the defendant. In paragraph 16 of the decision it was held that nobody could claim exclusive right to use any word, abbreviation, or acronym which has become public juris and that the degree of resemblance between the marks is to be considered. (e) **Cipla Ltd. v. M.K. Pharmaceuticals** (2008) 36 PTC 166). There the dispute concerned use of the word NORFLOX. It was held that the expression NORFLOX is a generic name of medicines and it was within the right of the defendant to use the same. **F.A.O. No.179 of 2013** -: 25 :- **(f) Skyline Education Institue (India) (P) Ltd. v. Vaswani** ([2010] 2 SCC 142). There, the dispute concerned use of the expression 'skyline' with the name of educational institution of the defendant. The plaintiff was using the said word to describe its educational institutions. The learned Single Judge had opined that the word 'skyline' being neither invented nor a specific word has to be considered a generic word more particularly when thousands of persons and institutions are using the same as part of their trading name or business activities and that even prior user of the name 'Skyline' by the plaintiff would not confer upon it an exclusive right to use that name to the exclusion of others. In paragraph 14 of the decision the observations of the Division Bench agreeing with the opinion of the learned Single Judge is extracted. The Supreme Court held that if a student going to an educational institution is not a lay customer. If a student likes to go to St.Stephen's College in Delhi or wants to go to Sri Ram College of Commerce or Hindu College, he will got to those Colleges and not to others although there may be similarity of names of other colleges. In paragraph 19, the Supreme Court has observed that “High Court rightly considered and decided the appellant's prayer for temporary injunction and that unless the **F.A.O. No.179 of 2013** ## -: 26 :- Supreme Court came to the conclusion that the discretion exercised by the High Court in refusing to entertain the application for injunction is vitiated by an error apparent or perversity and manifest injustice has been done to it, there will be no warrant for exercise of power under Article 136 of the Constitution. **(g) P. Venkata Rao @ Sakthi Dass, Editor, Chandrabala Publications Pvt. Ltd. and Chandrabala Publications Pvt. Ltd. v. Chandamama India Limited** ([2011] 7 MLJ 209). There, the question was whether the words 'Chandamama' and 'Chandrabala' were deceptively similar? It was held that the words were totally different and even an ordinary person of average intelligence could easily identify the difference between the two trade names (of magazines). 14. Here there is no case and there is no reason also to think that the trade mark 'Livguard' is identical to the trade mark 'V-GUARD'. What I can understood from the allegations in the affidavit in support of the application for injunction is that according to the appellant, the trade mark intended to be used by the respondent is deceptively similar to that of the appellant. So far as the expression 'GUARD' is concerned it is a generic word **F.A.O. No.179 of 2013** ## -: 27 :- descriptive in nature as to the function of the product and in common use and either of the parties could not claim exclusive right over it. It is also not very much in dispute as detailed in the counter affidavit and extracted in paragraph 6 above that all over the country various entities are using the expression 'GUARD' to their trade mark as prefix or suffix. Hence merely for the reason of the respondent using the expression 'guard' in his trade mark, it cannot prima facie be said that the trade mark of the respondent is deceptively similar to that of the appellant. Nor could, prima facie, the respondent be restrained from using the expression 'guard' in his trade mark. 15. Then the question is whether trade mark 'Livguard' is deceptively similar to 'V-GUARD' structurally or phonetically? 16. So far as structural resemblance is concerned, the learned Senior Advocate for the appellant has invited my attention to Exts.A9 to A11 to contend that though the respondent now contends that his trade mark is 'Livguard' registration applied for is for the trade mark 'LIVGUARD' (in capital letters). It is seen so from Exts.A9 to A11. 17. In this connection the learned Senior Advocate for the respondent has submitted that the respondent will not use the **F.A.O. No.179 of 2013** ## -: 28 :- expression 'LIVGUARD' in the way mentioned in Exts.A9 to A11 (all letters in capital) and that the respondent will only use the trade mark 'Livguard' in the way shown in Ext.B5 (in small letters with the letter 'L' alone in capital). The submission is accepted and recorded. 18. So far as the structural similarity is concerned, The trade mark of the appellant 'V-GUARD' is inscribed in an oval background in red shade with a line around it and a Kangaroo over the oval background. In the case of the respondent, there is no such background. Only the letter 'L' is in capital. All other letters are small letters. The letter 'g' has a special look also. Prima facie, it appears to me that there is no structural similarity for the two trade marks. 19. What remains is whether prima facie, there is any phonetic similarity between the two expressions and that is likely to deceive or confuse the customers? 20. In this connection the learned Senior Advocate for the appellant has placed strong reliance on the decision in **Amritdhara Phamacy v. Satya Deo Gupta** (supra). But I must notice that the goods involved there were ayurvedic medicines largely sold to illiterate or badly educated persons and there was **F.A.O. No.179 of 2013** -: 29 :- the possibility of their being deceived or confused even with the use of the generic word 'dhara' in the two trade marks. 21. I must notice that so far as the product involved in this case is concerned, it is voltage stabilizers of the appellant while it is digital stabilizers for air conditioners of the respondent. Prima facie it is difficult to think that the goods are largely of the type sold to illiterate or badly educated people and that an unwary purchaser goes to the market with an imperfect recollection of the trade mark of the appellant and would stand deceived or confused by the trade mark of the respondent. The purchaser would have in his mind the stablizer or other product he is intending to purchase. Prima facie, there is no phonetic similarity for the two trade marks and the possibility of deception or confusion as pointed out by the learned Additional District Judge is too remote. 22. So far as the contention that trade mark of the appellant is a well known trade mark under Sec.2(zg) of the Act is concerned, Sec.11(8) of the Act states that where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade **F.A.O. No.179 of 2013** ## -: 30 :- mark for registration under the Act. The question whether the trade mark of the appellant is a 'well known trade' mark as understood in Sec.2(zg) is a matter for evidence. At any rate, I have concurred with the view expressed by the learned Additional District Judge that the trade mark of the respondent is not deceptively similar to the appellant, structurally or phonetically. 23. I must also notice the scope of interference by the appellate court with the discretionary jurisdiction exercised by the trial court. The High Court will not interfere with the exercise of discretion of the court at first instance and substitute its own discretion except where the discretion has been exercised by the trial court arbitrarily, capriciously or perversely or the trial court has ignored settled principles of law regulating the grant or refusal of interlocutory injunction and that an appeal against exercise of discretion is an appeal on principle. The appellate court will not reassess the material to reach a conclusion different from the one reached by the trial court if the one reached by the trial court was reasonably possible on the material. 24. The learned Senior Advocate for the appellant has **F.A.O. No.179 of 2013** ## -: 31 :- pointed out that while the Supreme Court in **Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.** (supra) has stated that the similarity of the two expressions alone is to be considered, the learned Additional District Judge has referred to the dissimilarity in the two expressions. My attention is drawn to paragraph 8 of the order. What I find in paragraph 8 of the order is not the view or finding of the learned Additional District Judge but the argument advanced by the party concerned. 25. On going through the order under challenge I find that the learned Additional District Judge has referred to the relevant facts and the law and found that the appellant has failed to establish a prima facie case and hence it is not necessary to consider the question of irreparable loss and injury or balance of convenience. Since the learned Additional District Judge has exercised the discretion not to grant temporary injunction based on the materials on record, question of interference by this court does not also arise. Resultantly, - (i) The appeal fails. It is dismissed. (ii) The submission made by the learned Senior Advocate **F.A.O. No.179 of 2013** -: 32 :- on behalf of the respondent that the respondent will not use the trade mark, 'LIVGUARD' (in capital letters) as shown in Exts.A9 to A11 and that the respondent will use only the trade mark 'Livguard' (only the letter 'L' in capital as shown in Ext.B3) is accepted and recorded. (ii) The trial court is directed to dispose of the suit as early as possible untrammelled by the observations contained in the impugned order or in this judgment as early as possible. All pending Interlocutory Applications will stand dismissed. ## **THOMAS P. JOSEPH, JUDGE.** vsv