Bombay High Court Grants Interim Protection In Intellectual Property To RPG Enterprises Ltd. On Grounds Of Being Deceptively Similar Leading To Passing-Off

According to the Plaintiff, in the year 1979, the Plaintiff honestly adopted the distinctive and unique trade mark RPG, i.e. an acronym derived from the initials of its founder, Mr. Rama Prasad Goenka, a known industrialist. Over the subsequent years, the Plaintiff and its group companies, have adopted various stylized / formative trade marks incorporating the mark RPG in respect of their various products and services. It is the Plaintiff's case that it has been using the RPG Marks continuously, extensively and uninterruptedly in respect of its products and services, in the sense of a trade mark, trade name as well as trading style, and therefore, the mark RPG has become a source identifier of the Plaintiff and its goods / services thereunder. The Plaintiff has applied for and secured registration of several RPG / RPG formative marks in various classes under the Trade Marks Act, 1999. The Plaintiff has also secured copyright registration in respect of the artistic work in its RPG Logo. The Plaintiff claims to be the owner of various websites under the domain names, incorporating the trade mark RPG. The Plaintiff is also active on popular social media websites such as Facebook, YouTube, Twitter and LinkedIn and has a substantial following on its Facebook and Twitter pages. It is stated that the Plaintiff has effected large sales of its products and services bearing the RPG marks.

Plaintiff submits that the Defendants' marks, viz, RPG Opticals and RPG Pharmacy and are visually, structurally, phonetically identical with and/ or deceptively similar to the Plaintiff's prior RPG Marks in each and every aspect. Plaintiff further submitted that the adoption and/or use of the impugned marks by the Defendants, is likely to cause confusion and deception in the minds of the consumer and/or members of the relevant trade. Such consumers are likely to be misled into assuming that the services of the Defendants originate from the Plaintiff, when they do not, and/or that the services of the Defendants are in some way endorsed, licensed by, affiliated with and/or connected with the Plaintiff, when no such connection exists. the Defendants' use of RPG as a part of the impugned domain names (www.rpgpharmacy.com and www.rpgopticals.com) also amounts to infringement and passing off since the Plaintiff maintains various active websites under the domain names incorporating its prior and famous trade mark RPG, inter alia, www.rpggroup.com, www.rpg.in, www.rpglifesciences.com, www.kecrpg.com, www.rpgcables.com and www.raychemrpg.com.

Defendants countered that their marks are different from the Plaintiff's RPG Marks. Defendants' marks are logo marks whereas the Plaintiff's marks are 'word marks' and 'logo mark'; Defendants' impugned marks are combination of the words 'RPG' + "Opticals"/"Pharmacy". Defendant No. 1 and 2's impugned marks also include the taglines "PERFECT LOOK PERFECT VISION" and "YOUR HEALTH IS OUR WORLD", respectively. the Defendants have claimed that they are using the impugned marks in respect of services (i.e. 'RPG Opticals' in respect of the services falling in class 35 namely- advertisement, wholesale, retail of Optical lenses, sunglass, eyewear, eyeglasses, contact lens, ophthalmology, spectacles and other optical products, and 'RPG Pharmacy' in respect of the services falling in class 44 namely- pharmacy services, pharmacy advice, pharmacy dispensary services), that they are not manufacturing or supplying any goods under their trade marks and that the Defendants are not manufacturers, but only retailers. In contrast, the Plaintiff is manufacturing goods under its RPG Marks. The Defendants have filed their respective applications in classes 35 and 44 and the Plaintiff has no registration for the service category. The Defendants are using their marks 'RPG Opticals' and 'RPG Pharmacy' only as a trade name and they are not selling any goods under the mark RPG. The use by the Defendants of the expression RPG is found only in the trading name and hence the Plaintiff has to prove infringement, if any, under Section 29(5) of the Trade Marks Act, 1999.

Defendant relied upon the Supreme Court case of Nandhini Deluxe vs. Karnataka Co-operative MilkProducers Federation Ltd., 2018(9) SCC 183, wherein it was held that a proprietor of a trade mark cannot enjoy monopoly over the entire class of goods when he is not using the said trade mark in respect of certain goods falling under the same class. Plaintiff relied on Ruston and Hornsby Ltd. Vs. Zamindara Engineering Co, (1969) 2 SCC 727; Pidilite Industries Limited Vs. Jubilant Agri & Consumer Products Limited, 2014 (57) PTC 617 (Bom.), and Kantilal Premji Maru Vs. Madan Kumar, 2018 (75) PTC 81 (Bom.), to contend that while comparing the two rival marks the prominent and distinctive features of the marks are required to be compared. Plaintiff submitted that it is not a legal requirement that for setting up a case under Section 29(4) of the Act, the Plaintiff's trade mark must be recorded in the list of well-known trade marks and only then the Plaintiff can seek protection under Section 29(4). He relied upon the definition of well-known trade mark in Section 2(zg) and provisions contained in Sections 11(6), 11(7) and 29(4) of the Act to contend that the expression 'well-known' trade mark is not used in Section 29(4) of the Act and the said provision only uses the word 'reputation'. He submits that this Court is empowered to consider even at the interim stage, the well-known status of the Plaintiff's trade mark RPG, given the extensive evidence of use and promotion material filed by the Plaintiff in the present proceedings.

The court noted that,

"It is clear that RPG trade mark is used by the Plaintiff in different forms - trademark, part of corporate/trade name, domain name. Further, RPG is the house mark of the Plaintiff and is used by its group companies in respect of their business/ goods and/ or services. Further, the Plaintiff has business interest in diverse sectors of the economy and has extensive and diverse business operations under the RPG Marks, as has been shown in the plaint and supported by extensive evidence. It is thus prima facie established that the Plaintiff's RPG marks have acquired the status of a wellknown trade mark and the Plaintiff has immense reputation and goodwill in the said trade marks/names and the products offered thereunder. Considering the factors such as (i) the extent of knowledge of the RPG mark, and its recognition by the relevant public; (ii) the duration of the use of the RPG marks; (iii) the extent of the products in relation to which the RPG mark is being used; (iv) the extent and duration of advertising and promotion of the RPG mark; (v) the geographical extent of the trading area in which the RPG mark is used; (vi) the state of registrations of the RPG mark; (vii) the volume of business under the RPG marks; and (viii) successful enforcement against infringers/offenders before the Courts of law/registry, I am of the opinion that prima facie, the Plaintiff's RPG mark deserves protection as a well-known trade mark as the same has come to acquire a secondary meaning to connote to the public the goods and / or services emanating from the Plaintiff."

The court stated that ,"The principles in relation to the law of 'deceptive similarity' of trade marks are well settled by the Supreme Court and catena of judgments of various High Courts. Some of these principles can be summarized as follows: (i) Both at the stage of interim and final relief, the matter rests on first impression itself; (ii) Trade marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole; (iii) It is important to find out what is the distinguishing or essential feature of the Plaintiff's trade mark and what is the main feature or the main idea underlying that trade mark, and ascertain if the Defendants' trade mark contains the same distinctive or essential feature, or conveys the same idea; (iv) In deciding the question of similarity between the two marks, the approach must be from the point of view of a man of average intelligence and imperfect recollection; (v) Marks must be compared as a whole; (vi) The true test is whether the totality of the Defendants' trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark; (vii) While ascertaining the question of deceptive similarity, the Courts must not conduct a microscopic examination and both the visual and the phonetic tests must be applied; (viii) The nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances must also be considered."

The court observed that the Defendants' trade marks/labels/names are similar to the Plaintiff's registered trade marks. Further, applying the test, as to how a customer with an average mind of ordinary intelligence and imperfect recollection will look upon or react to the marks of the Defendants and what association he will form by looking at them and in what respect he would connect the marks to the services he was availing, the only answer is that a customer familiar with the Plaintiff and its trade mark/name RPG, seeing the name/mark of the Defendants and seeing it described as Pharmacy and Opticals, is likely to associate and connect the services/business of the Defendants as those of the Plaintiff.

The court said that Defendant No.2 is also the registered proprietor of its trade mark RPG Pharmacy in Class 44, against which the Plaintiff has filed Rectification Application. The said Rectification Application is presently pending. Since the Defendant No.2 has also secured registration of its trade mark label RPG Pharmacy, the use of that very trade mark label by the Defendant No.2 in respect of her pharmacy services would not amount to infringement of Plaintiff's registered trade marks as per Section 28(3) read with Section 30(2)(e) of the Trade Marks Act, 1999.

Regardless, the court noted that "Though the above provisions are clear, the same does not mean that the Court can never grant injunction in terms of infringement against another registered proprietor at an interim stage. As per the dicta of the Full Bench of our Court in the case of Lupin Ltd. (supra), a challenge to the validity of the registration of the trade mark can finally succeed only in rectification proceedings, however, there is no express or implied bar taking away the jurisdiction and power of the Civil Court to consider the challenge to the validity of the trade mark at the interlocutory stage by way of prima facie finding."

The court took note of the following judgments:

"Daimler Benz Aktiegesellschaft and Ors. vs. Hybo Hindustan reported in 1994 (14) PTC 287 (Del) 7. I see no reason why any trader in India should adopt the name "Benz", which is, as stated above, associated with one of the finest engineered cars in the world, and use the same name with respect to ordinary goods, in this case undergarments, particularly underwears."

"Kamal Trading Co., Bombay and Ors. vs. Gillette U. K. Limited reported in 1988 (8) PTC 1 (BOM) 2. The plaintiffs are a Company incorporated under the laws of the United Kingdom and are a subsidiary of the Gillette Company, U.S.A. The Gillette Company and its subsidiaries have been carrying on worldwide business in the manufacture and sale of safety razor blades, safety razors, shaving cream, shaving brushes, etc. since last over several years.… 9. Mr. Tulzapurkar very rightly submitted that the trade mark '7 O'CLOCK' had acquired worldwide reputation and any customer purchasing the goods with that mark would immediately connect the goods to the house of Gillets which are the registered owners of the mark '7 O'CLOCK'. It cannot be overlooked that it is not necessary for the plaintiffs to establish that in fact any customer was deceived, it is enough if it is shown that there is likelihood of deception. We have no hesitation in concluding that the user of the mark '7 O'CLOCK' by the defendant would clearly result in deceiving the customer with the impression that the tooth brushes come from the house of Gilletes."

The court noted that the Full Bench of our Court in Cipla Limited Vs. Cipla Industries Private Limited , 2017 (69) PTC 425 (Bom), held that use of a registered trade mark as corporate name or trading name or style is excluded from the purview of Section 29(1), 29(2) and 29(4) of the Trade Marks Act, 1999. The following observations of the Full Bench are relevant:

"26. Unless both the conditions are satisfied, Sub-Section (5) will not apply. The question before us is when the first condition of Sub- Section (5) is satisfied but the second is not satisfied, whether Sub- Section (4) can be invoked. In other words, the question is whether a person who is dealing with goods or services which are dissimilar to those for which the trade mark is registered, uses registered trade mark as a part of business/corporate name, such use will attract the mischief covered by Sub-Section (4). The plain language used by the Sub- Sections (4) and (5) answers the question. Sub-Section (4) provides that "A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which - (a) is identical with or similar to the registered trade mark, and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered..." Thus, the provision is attracted when a mark which is identical with or similar to registered trade mark is used in the course of trade in relation to goods or services which are not similar to those for which the trade mark is registered. Whereas Sub-Section (5) provides that "A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern..." . 27 The Sub-Section (4) uses the words "in the course of trade" and "in relation to goods or services" which are absent in Sub- Section (5). The Sub-Section (5) uses the words "......... if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern.." These words are conspicuously absent in the Sub-Section (4). The difference in the phraseology and language used in the two Sub- Sections makes it clear that Sub-Section (4) applies in "trade mark versus mark" situation. It applies when the mark is used in the course of trade in relation to goods and services. Sub-Section (5) applies to a "trade mark versus trade/corporate/business name" situation. It is a special provision which is different from Sub-Sections (1), (2) and (4). Thus, Sub-Sections (4) and (5) apply to different situations arising out of use of a mark. Sub-Section (5) does not make Sub-Section (4) otiose. The fact that the definition of the word "mark" includes "name" is of no consequence while interpreting Sub-Sections (4) and (5). If we hold that Sub-Section (4) will apply to those cases where the first condition of Sub-Section (5) is satisfied but second one is not satisfied, the requirement specifically incorporated in Sub-Section (4) of the mark being used in relation to goods and services will become redundant. A statute cannot be interpreted in such a manner. The use of trade mark as a part of corporate/business/trade name cannot be read into Sub- Section (4)." Hence, the requirements to attract infringement under Section 29(5) are not met in the present case and in so far as the use of the trading name 'RPG Pharmacy' and 'RPG Opticals' by the Defendant in respect of its services is concerned, the same would not amount to infringement of the Plaintiff's registered trade mark under Section 29(5) of the Act.

The court noted that it is a settled principle of law that in an action for passing off, to succeed, the Plaintiff must satisfy three important ingredients: a) Goodwill and reputation in the plaintiff's mark, b) Actual or likelihood of deception and confusion caused amongst the public by the defendant's use of the impugned trade mark, and c) Actual or likelihood of injury to the plaintiff by such use of the impugned trade mark by the defendant. The five guidelines as originally laid out by Lord Diplock in Erven Warnink v. Townend & Sons Ltd. (1979) AC 731, 742 (HL) (the "Advocate Case") were reduced to the above three by Lord Oliver in the case of Reckitt & Colman Products Ltd. v. Borden Inc (1990) 1 ALL E.R. 873 which is popularly known as "Jif Lemon" case. The Plaintiff has acquired goodwill and reputation in its RPG trade marks and the said RPG marks have in fact become well-known not only amongst the consumers and traders but the general public at large and have acquired secondary significance. The Plaintiff's use of RPG marks is much prior (about 37 years prior) to that of the Defendants'. Secondary significance has been acquired by the Plaintiff's said trade mark RPG by virtue of long, continuous and extensive use and promotion and also, given the Plaintiff's substantial involvement in diverse sectors of the economy, under the trade mark/ trade name RPG. Therefore, any use of "RPG" by the Defendants will inevitably lead to an association of the Defendants' services and business with those of the Plaintiff's. The Plaintiff has substantial business operations under the RPG Marks in pharmaceutical industry. Pharmaceutical products and pharmacy are very closely related. Thus, it is evident that the business activities relate to the same field, i.e. medical field and the Defendants' activities under the mark/name RPG Pharmacy overlap with the Plaintiff's business interests.

In Sunder Parmanand Lalwani and Ors. vs. Caltex (India) Ltd. (1968) 70 BOMLR 37, the Division Bench of the Bombay High Court while dealing with the question whether there was any probability of confusion between 'Caltex' watches and 'Caltex' petrol and various other oil products of the opponents, observed that although the goods were completely different and there was no trade connection between them still there was a likelihood of deception or confusion. The Court observed: "On the facts of this case, we have no hesitation in holding that a large number of persons, if they see or hear about the mark 'Caltex' in connection with watches, would be led to think that the watches were in some way connected with the opponents, or they would at least wonder whether they were in any way connected with the opponents. Persons seeing the mark attached to watches, which is a new class of goods, would assume, or are most likely to assume, that they originated from the proprietor of the mark, namely, the opponents"

In Mahendra & Mahendra Paper Mills Ltd. vs. Mahindra & Mahindra Ltd, (2002) 2 SCC 147, the Apex Court has held the following: "Without intending to be exhaustive some of the principles which are accepted as well settled may be stated thus: that whether there is a likelihood of deception or confusion arising is a matter for decision by the court, and no witness is entitled to say whether the mark is likely to deceive or to cause confusion; that all factors which are likely to create or allay deception or confusion must be considered in combination; that broadly speaking, factors creating confusion would be, for example, the nature of the market itself, the class of customers, the extent of the reputation, the trade channels, the existence of any connection in course of trade, and others. 19. We have, in the light of the above pronouncements, no difficulty in holding that the dissimilarity in some of the products in which the parties trade does not make any material difference insofar as the grant or refusal of injunction against the defendants in the facts and circumstances of this case are concerned." It is therefore clear that the principle that common field of activity is not essential to succeed in case of passing off, is well established. In the facts of the present case, the fact that the Plaintiff and Defendants' fields of activities are not identical is of no consequence. Such misrepresentation by the Defendants is certainly likely to cause damage to the Plaintiff.

In the case of S. Syed Mohideen v. P. Sulochana Bai, 2015 (7) SCALE 136 , the Supreme Court held: "23. The above were the reasonings from the provisions arising from the plain reading of the Act which gives clear indication that the rights of prior user are superior than that of registration and are unaffected by the registration rights under the Act. Secondly, there are other additional reasonings as to why the passing of rights are considered to be superior than that of registration rights. Thirdly, it is also recognized principle in common law jurisdiction that passing of right is broader remedy than that of infringement. Fourthly, It is also well settled principle of law in the field of the trade marks that the registration merely recognizes the rights which are already pre-existing in common law and does not create any rights"

In light of the above observations the court, pending the final disposal of the suit restrained the Defendant from manufacturing, marketing, trading, selling and/or using the RPG marks, logo, domain name or trade name, which are identical with or deceptively similar to the Plaintiff's prior, distinctive and reputed trade marks in any manner whatsoever.

Case Title :RPG Enterprises Limited v Riju Ghoshal and anr

Citation : 2022 LiveLaw (Bom) 100