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Section 17 in The Trade Marks Act, 1999
The Trade Marks Act, 1999
Section 15 in The Trade Marks Act, 1999
Section 30(2)(a) in The Trade Marks Act, 1999
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Madras High Court
M/S.Aravind Laboratories vs Modicare on 5 July, 2011

DATED: 05-07-2011

CORAM:

THE HONOURABLE MR. JUSTICE V.RAMASUBRAMANIAN

O.A.Nos.518 & 519 of 2010

in

C.S.No.460 of 2010

M/s.Aravind Laboratories,

No.3/7, Valluvar Salai,

Ramapuram,

Chennai-600 089 Represented

by its Partner Mr.T.Devanathan .. Applicant in both OAs/Plaintiff

vs.

Modicare,

Ali Towers, 2nd Floor,

Greams Road,

Thousand Lights,

Chennai-600 006,

Tamil Nadu, India. .. Respondent in both OAs/Defendant

For Applicant/Plaintiff in both OAs : Mrs.Gladys Daniel

For Respondent/Defendant in both OAs : Mr.Satish Parasaran

C O M M O N O R D E R

Pending suit for infringement of a registered trade mark and passing off, the plaintiff has come up with

(i) O.A.Nos.518 of 2010 praying for an interim order of injunction restraining the respondent from manufacturing, selling, advertising and offering their products for sale using the trade mark Daily Dazzler in any media and using the same in nail polish, nail glitter, invoices, letter heads and visiting cards or any other cosmetics and by using any other trade mark which is in any way visually, phonetically or deceptively similar to the applicant's trade mark EYETEX DAZLLER or in any manner infringing the applicant's registered trade mark Nos.1261112 and 1261117 in Class 3; and (ii) O.A.No.519 of 2010 praying for an interim order of injunction restraining the respondent from manufacturing, marketing, distributing, offering or advertising or using the mark Daily Dazzler or similar sounding names in the course of their business and passing off their nail polish or other cosmetic products using the trade mark Daily Dazzler as and for the EYETEX DAZLLER goods of the applicant.

2. I have heard Mrs.Gladys Daniel, learned counsel for the applicant/ plaintiff and Mr.Satish Parasaran, learned counsel for the respondent/ defendant.

3. The plaintiff is the manufacturer and marketer of cosmetics for the past 75 years. One of the cosmetics marketed by the plaintiff is Kajal, which is applied on the eyes. The plaintiff conceived and adopted the word "EYETEX DAZLLER" as one of its trade marks and got registration of the same in respect of the Nail Polish and Nail Glitters under Class 3. Apart from the trade mark "EYETEX DAZLLER", the plaintiff is also the proprietor of several trade marks, whose details are as follows: S. No.

TRADE MARK

APPLN. REGD. NO.

DATE

CL.

1

EYETEX [Label]

124824

91146

3

2

EYETEX Bindi Kumkum [Label]

176769

102056

3

3

EYETEX KUMKUM [Label]

231497

92765

3

4

EYETEX

271583

42471

3

5

EYETEX (Label)

271584

42471

3

6

EYETEX (Telugu Character)(word)

296909

61474

3

7

EYETEX (Devanagari Character)(word)

296910

61474

3

8

EYETEX (Kannada Characters)(word)

296913

61474

3

9

EYETEX (Tamil Characters)(word)

296914

61474

3

10

EYETEX (Malayalam Character)

296915

61474

3

11

EYETEX (Word Per Se)

303087

21975

3

12

EYETEX (Label)

412736

11383

3

13

EYETEX (Label)

412737

11383

3

14

EYETEX Kumkum

412738

11383

3

15

EYETEX Kumkum (LABEL)

412748

11383

3

16

EYETEX Kumkum (Label)

412749

11383

3

17

EYETEX Kumkum (Label)

412754

11383

3

18

EYETEX POORNIMA (Word Per Se)

527083B

32990

3

19

EYETEX DIVYAA Kumkum

527084

32990

3

20

EYETEX DIVYAA

527085B

32990

3

21

EYETEX POORNIMA Kumkum (L)

1261111

11404

3

22

EYETEX DAZLLER

1261112

11404

3

23

EYETEX POORNIMA Kumkum (L)

1261113

11404

3

24

EYETEX PALLAVI Kumkum (L)

1261114

11404

3

25

EYETEX POORNIMA Kumkum (L)

1261115

11404

3

26

EYETEX PALLAVI (Word Per Se)

1261116

11404

3

27

EYETEX DAZLLER (Word Per Se)

1261117

11404

3

4. It is the claim of the plaintiff that in April 2010, an advertisement issued by the defendant appeared in a magazine, which indicated that they were marketing a nail polish with the trade mark "Daily Dazzler". Therefore, complaining that the defendant is guilty of infringement and passing off, the plaintiff has come up with the above suit and the applications for injunction.

5. The plaintiff has filed as document No.1 series, the copies of the cartons in which their products are sold with the label which contain the words "EYETEX DAZLLER" written in an artistic manner. The plaintiff has also filed the certificates of registration of their trade marks bearing Nos.1261112 and 1261117, as document Nos.2 and 3. These documents disclose that the plaintiff has obtained registration of the word "EYETEX DAZLLER" in respect of Nail Glitter and Nail Polish under Class 3 with effect from 14.01.2004 and had also obtained registration of a device which includes the words "EYETEX DAZLLER". The advertisement issued by the defendant in a magazine titled "New Woman" is filed as document No.4. Document No.4 shows the picture of a bottle in which the nail enamel marketed by the defendant is displayed. It contains the words "Daily Dazzler". Therefore, based on these documents, the plaintiff complains that there is infringement and passing off.

6. In addition to the above documents, the plaintiff also filed copies of sales invoices from the year 2003 to 2010, as additional set of documents, in the course of hearing of the applications, to show that they have actually been using the trade mark "EYETEX DAZLLER" in relation to their Nail Glitters.

7. In response to the averments contained in the application for injunction, the respondent/defendant has filed a counter affidavit contending as follows:

(a) that the defendant is part of the Modi Group of Companies founded in 1932, involved in the business of home care and personal care products, including cosmetics; (b) that the defendant markets all its products through direct marketing and not through retail outlets;

(c) that the defendant manufactures and markets its products under various trade marks, including the mark "Essensual 20", which is used extensively in respect of Hand and Body Lotions, Lipsticks, Lip Pencils, Lip Gloss, Foundation, Base Makeup, Powder, Blush, Eye Shadow, Eye Pens and Eye Pencils ever since the year 2000; (d) that the defendant's turnover during the financial year 2009-2010 was over Rs.50.00 crores, out of which, a sum of Rs.4.72 crores was generated by the sale of the products under the brand name/trade mark "Essensual 20"; (e) that the defendant is the registered proprietor of the marks ESSENSUAL (No.782714), ESSENSUAL 20 TFC (No.1354408), ESSENSUAL 20 THE FRENCH COLLECTION(No.1351239), ESSENSUAL AROMA (No.1041035), ESSENSUAL SPORTS (No.1029340) and ESSENSUAL WOMAN (No.1029342) in Class 3 and that the mark 'ESSENSUAL 20 DAILY DAZZLER' is another extension of the mark "Essensual 20"; (f) that the Nail Enamels manufactured by the defendant are primarily intended to add glitter to the nails and to make them attractive and impressive;

(g) that therefore the defendant honestly adopted the name "Daily Dazzler" in respect of its "Essensual 20" nail enamels;

(h) that "Daily Dazzler" variant of "Essensual 20" Nail Enamel was introduced by the respondent in August 2009;

(i) that the defendant also offers other variants of "Essensual 20" Nail Enamels, such as The French Collection (TFC), Show Off, Style n Shine;

(j) that no person can claim any monopoly over the English word "Dazzle";

(k) that while the trade mark used by the plaintiff is "EYETEX DAZLLER", the mark adopted by the defendant is "Essensual 20 Daily Dazzler" and hence, the broad and essential features are different; (l) that the channels of marketing are different for the plaintiff and the defendant, since the defendant does direct marketing; and

(m) that while the plaintiff's product is priced at Rs.40/-, the defendant's product is priced at Rs.100/- and hence, there is no possibility of deception or confusion.

8. The defendant filed the following documents in the first instance:

(i) print outs of the website pages of different manufacturers or marketers of the Nail Polish and Nail Glitters to show that many of them use the word "Dazzle" as descriptive of their products; (ii) the trade mark applications filed by the defendant for their mark "Essensual 20" and their variants;

(iii) sample invoices evidencing the sale of "Essensual 20 Nail Enamel  Daily Dazzler", for the period 2009-2010;

(iv) the advertisements and write ups in respect of the defendant's products;

(v) the business manual of the defendant;

(vi) the price list of the defendant's products; and

(vii) advertisement of the mark "Dazzler" in the Trade Marks Journal.

9. In addition to the above documents, the defendant also filed one set of additional documents, which are as follows:

(i) the examination report in respect of the trade mark No.1261117 of the plaintiff;

(ii) notice given to the plaintiff by the Trade Marks Registry;

(iii) journal publication of the plaintiff's trade mark;

(iv) trade mark No.231497 of the plaintiff; and

(v) Chartered Accountant's certificate showing the sales turnover and promotional expenses of the defendant's products for the year 2001 to 2010.

10. Subsequently, the defendant filed another set of documents, which are as follows:

(i) trade mark application No.550019 filed by a third party for the mark "Dazzle";

(ii) the examination report in respect of the trade mark No.550019;

(iii) the trade mark application No.971504 filed by a third party;

(iv) trade mark application No.925947 filed by another third party;

(v) examination report in respect of TM No.925947; and

(vi) the trade mark application of the defendant bearing No.1835528, for the "Daily Dazzlers".

11. From the pleadings and the documents, it is clear (i) that the plaintiff is the "registered proprietor" of the device mark "EYETEX Dazller" bearing Trade Mark No.1261112 with effect from 14.1.2004 in respect of nail glitters, nail polish and other beauty specialities in relation to nail; (ii) that the plaintiff is the "registered proprietor" of the word mark "EYETEX DAZLLER" bearing Trade Mark No.1261117 with effect from 14.1.2004 in respect of nail glitters, nail polish; and (iii) that the plaintiff is actually using the registered marks, as seen from the invoices from 2003 to 2010, filed as additional documents.

12. Therefore, by virtue of the provisions of Section 28 (1) of the Trade Marks Act, 1999 and by virtue of the decision of the Apex Court in Midas Hygiene Industries (P) Ltd vs. Sudhir Bhatia {2004 (3) SCC 90}, the plaintiff is entitled to an order of injunction restraining the defendant from committing infringement of the registered trade mark, provided I find infringement and I also find that the defence set up by the defendant, does not fall under any of the exceptions contained in Sections 30, 33, 34 and 36. In other words, we have to see (i) if the action of the defendant falls within the purview of any of the sub-sections of Section 29, so as to constitute infringement or (ii) if the defence set up by the defendant falls under any one or more of the exceptions. Alternatively, I should find passing off.

13. The contents of the counter affidavit filed by the defendant, which I have extracted in para 7 above, would show that their defence could be classified into the following:- (i) The defence arising out of Section 17.

(ii) The defence arising out of Section 30(2)(a) and

(iii) The defence arising out of Section 35

DEFENCE UNDER SECTION 17:

14. Admittedly, the registration obtained by the plaintiff is in respect of the whole of the mark "EYETEX Dazller". Though the plaintiff has also obtained registration of the word "EYETEX" separately, they have not chosen to obtain registration for the word "Dazller" separately. Section 15(1) of the Act, enables the proprietor of a trade mark who claims to be entitled to the exclusive use of any part of the trade mark separately, to apply both for the registration of the whole as well as for the registration of the parts, as separate trade marks. But each of those marks should satisfy all the conditions necessary for its registration as an independent trade mark. Under Section 17(1) of the Act, if a trade mark consists of several matters, its registration would confer on the proprietor, the exclusive right to the use of the trade mark taken as a whole. But it is conditioned by sub-section (2) of Section 17, to the following effect:- (a) If the trade mark contains any part which is neither the subject matter of a separate application nor registered separately as a trade mark, then the registration shall not confer any exclusive right in the matter forming only a part of the whole of the registered trade mark. (b) If the trade mark contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration shall not confer any exclusive right in the matter forming only a part of the whole of the registered trade mark.

15. On the basis of the above provision, it is pointed out by the defendant that the Trade Mark No.1261112, registered in favour of the plaintiff, is a device mark containing not only the words "EYETEX Dazller", but also the words "Nail Glitter" along with the picture of two nail polish bottles and the sketch of a lady showing her fingers. The other mark viz., Trade Mark No.1261117, registered in favour of the plaintiff is only a word mark, again containing two words viz., (i) EYETEX and (ii) DAZLLER.

16. Apart from the above two registered marks, the plaintiff has also obtained registration of as many as 25 marks, all of which contain the word "EYETEX", either independently or in combination with other words such as "Kumkum", "Poornima", "Divyaa", "Pallavi" etc. Therefore, it is clear that though the plaintiff has obtained independent registration of the word "EYETEX", the plaintiff did not obtained registration of the word "DAZLLER", separately.

17. As a matter of fact, the defendant filed three sets of additional documents, in the course of hearing of the above applications. Some of these additional documents show that if an attempt had been made by the plaintiff to have the word "DAZLLER" separately registered, it would have met with stiff resistence from the Registry. One of the documents filed by the defendants is the copy of the "Examination Report" of the Registrar of Trade Marks, in respect of the trade mark application No.1261117, filed by the plaintiff. In paragraph 1 of the said report, the Registrar raised an objection that the mark directly referred to the quality of the goods. In the Annexures to the Report, the Registrar had also pointed out that there were conflicting marks, either already existing on the Register or pending consideration. One set of conflicting marks pointed out in the Report, related to the word "EYETEX", registered in favour of the plaintiffs themselves. The other set of conflicting marks pointed out in the Report, related to the word "Dazzle". Three companies by name Cherie Cosmetics Pvt. Ltd., Vasu Pharmaceuticals Pvt Ltd., and Pacific International, had applied for registration of the very same word "DAZZLE" under Application Nos. 550019, 925947 and 971504, respectively under Class 3 itself. These applications were pending with the Registry on 21.1.2004 when the plaintiff had applied for the registration of their mark "EYETEX DAZLLER". Therefore, after holding a hearing on 8.4.2004, the Registrar of Trade Marks appears to have accepted the trade mark of the plaintiff, under Application No.1261117, with a condition that it is "to be associated with registered T.M.Nos.231497, 271583 and 412748".

18. Thus it is clear that the Registrar of Trade Marks had raised an objection with regard to the word "DAZZLE" on the ground that it was descriptive and also on the ground that there were three applications pending as on the date of application of the plaintiff. The Registrar also raised an objection with regard to the word "EYETEX" on the ground that the plaintiffs themselves had registration for the word "EYETEX". Ultimately, the issue was resolved by granting registration to the whole of the mark "EYETEX DAZLLER".

19. Therefore, it is clear that the plaintiff could not have obtained registration for the word "DAZLLER" independently, if they had taken recourse to Section 15(1) of the Act. This is fortified by another set of documents filed by the defendant viz., (i) the Trade Mark Applications bearing Nos.550019, 971504 and 925947 and (ii) the Examination Reports in respect of these three applications. These documents would show-- (i) that Cherie Cosmetics Pvt. Ltd., applied for registration of the word "DAZZLE" way back on 29.4.1991 under Application No.550019, but withdrew the application after the Registrar raised an objection that the mark had a direct reference to the nature and quality of the goods; (ii) that one Jivan Narayandas Rathi applied for registration of the word "DAZZLE" way back on 20.11.2000 under Application No.971504, but abandoned the application and (iii) that one Vasu Pharmaceuticals Pvt Ltd., applied for registration of the word "DAZZLE" way back on 19.5.2000 under Application No.925947, but abandoned the application after the Registrar raised an objection that the mark was descriptive.

20. Therefore, it is clear that the registration of the trade mark in favour of the plaintiff was granted as a whole (i.e., as EYETEX DAZLLER) and that one of the constituent parts of the registered mark viz., the word "DAZLLER" is not registered separately. Even the attempt made by others to get the word "DAZZLE" registered, met with stiff resistence from the Registry on the ground that the word was descriptive. Therefore, it is anybody's guess today as to whether the plaintiff could have obtained registration for the word "DAZLLER" separately, in terms of Section 15(1).

21. Once it is seen that the word "DAZLLER" is not separately registered in favour of the plaintiff and that even the attempt made by others to appropriate the word 'dazzle' failed, then the prescription in Rule 17(2)(a)(ii) would come into operation. Consequently, the defendant's use of the word "DAZLLER", as part of the mark "Daily Dazzler" cannot be held to be an act of infringement.

22. In one of the earliest cases which arose under the Trade Marks Act,1940 before the Supreme Court in The Registrar of Trade Marks vs. Ashok Chandra Rakhit Ltd {AIR 1955 SC 558}, a question arose as to whether the proposal of the Registrar for the disclaimer of the word "Shree" in respect of a composite mark containing a word as well as a device, was justified or not. It is relevant to note at this stage that the Registrar had the power under the old Act, to require the proprietor of a mark to disclaim any part of the mark. The real purpose of requiring a disclaimer, as pointed out by the Apex court in that case, was to define the rights of the proprietor under the registration so as to minimise, even if it cannot wholly eliminate, the possibility of extravagant and unauthorised claims being made on the score of registration of the trade marks. But this provision for disclaimer was omitted and a general proposition was incorporated in Section 17(2) of the 1999 Act. Therefore, while considering the validity of the disclaimer, the Supreme Court made certain interesting observations in paragraph 8 of its decision, which reads as follows:- "8. The third thing to note is that the avowed purpose of the Section is not to confer any direct benefit on the rival traders or the general public, but to define the rights of the proprietor under the registration. The registration of a trade mark confers substantial advantages on its proprietor as will appear from the Sections grouped together in Chapter IV under the heading "Effect of Registration". It is however a notorious fact that there is a tendency on the part of some proprietors to get the operation of their trade marks expanded beyond their legitimate bounds. An illustration of an attempt of this kind is to be found in In Re : Smokeless Powder Co's Trade Mark. Temptation has even led some proprietors to make an exaggerated claim to the exclusive use of parts or matters contained in their trade marks in spite of the fact that they had expressly disclaimed the exclusive use of those parts or matters. Reference may be made to Greers Ltd vs. Pearman and Corder Ltd, commonly called the "Banquet" case.".

23. Again in paragraph 14 of the same decision, the Supreme Court held as follows:-

"14. It is true that where a distinctive label is registered as a whole, such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole. As said by Lord Esher in Pinto vs. Badman 'the truth is that the label does not consist of each particular part of it, but consists of the combination of them all' ".

24. In paragraph 9-082 of the Kerly's Law of Trade Marks and Trade Names (14th Edition-South Asian Edition 2007), it is stated as follows:-

"Where a trade mark is registered subject to a disclaimer of the right to the exclusive use of a specified element of the registered mark, the rights conferred by registration are restricted accordingly. It follows that an objection based upon an earlier registration cannot succeed where the only resemblance between the marks in issue is an element for which protection has been disclaimed". Therefore, on the basis of the above judgment of the Supreme court and on the foundation of Section 17(2)(a)(ii) of the 1999 Act, a defence is raised by the defendant that the use of the word "Dazzler", which is not registered separately, would not amount to infringement.

25. But relying upon certain observations of the Apex court in Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel [AIR 2006 SC 3304], Ms.Gladys Daniel, learned counsel for the plaintiff contended that in an action for infringement, such a dichotomy is not permissible. It was held in the said judgment, as follows:- "80. There are three elements in the said trade mark viz., 'Ramdev', 'Masala' and the 'horse'. The deception could be as regards the prominent features of the said trade mark.

81. Section 15 of the 1958 Act, in our considered opinion, is not attracted in the instant case. By reason of the said provision, registration of trade mark in regard to the exclusive use is permissible both in respect of the whole trade mark as also the part thereof separately. Where such separate trade mark in regard to a part of it is applied for, the applicant must satisfy the conditions applying to and have all the incidents of an independent trade mark. Sub-section (3) of Section 15 of the 1958 Act provides for a case where the proprietor of several trade marks claimed registration in respect of the same goods or description of the goods which while resembling each other in the material particulars thereof yet differ in respect of the matters provided for therein. We are not, in this case, concerned with such a legal question.

82. In Ashok Chandra Rakhit Ltd (AIR 1955 SC 558), whereupon reliance has been placed by Mr.Nariman, this Court was concerned with a proprietary mark of 'Shree'. It was claimed that the mark 'Shree' was a trade mark apart from the device as a whole and it was an important feature of its device. The respondents were carrying on business in the name and style of Shree Durga Charan Rakshit. It was in the peculiar factual background obtaining therein, this Court, referred to the decision of Lord Esher in Pinto vs. Badman {8 RPC 181} to say that where a distinctive label is registered as a whole such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole. This Court in the aforementioned factual backdrop opined: "....This, as we have already stated, is not quite correct, for apart from the practice the Registrar did advert to the other important consideration, namely, that on the evidence before him and the statement of counsel it was quite clear that the reason for resisting the disclaimer in this particular case was that the Company thought, erroneously no doubt but quite seriously, that the registration of the trade mark as a whole would in the circumstances of this case, give it a right to the exclusive use of the word "Shree" as if separately and by itself it was also its registered trade mark and that it would be easier for it to be successful in an infringement action than in a passing off action. It was precisely the possibility of such an extravagant and untenable claim that called for a disclaimer for the purpose of defining the rights of the respondent company under the registration...." (Emphasis supplied).

83. The said decision has no application to the fact of this case.

84. Mr.Nariman is also not correct in contending that only a label has been registered and not the name 'Ramdev'. Definition of 'mark' as contained in Section 2(j) of the 1958 Act also includes name, signature, etc."

26. Again in para 86 of the report in Ramdev Food Products, the Supreme Court held as follows:-

"86. The right conferred in terms of Section 28 of the 1958 Act although is required to be read with Sections 15 and 17 thereof but it is difficult to accept that each part of the logo was required to be separately registered. Section 28 of the 1958 Act confers an exclusive right of using trade mark to a person who has got the trade mark registered in his name. Such right is, thus, absolute. Sub-section (3) of Section 28 raises a legal fiction for the purposes specified therein but we are not concerned therewith in the instant case. Sub-section (2) of Section 29 inter alia provides for the defences".

27. It is seen from the above observations that in Ramdev Food Products, the Supreme Court not only took note of the decision in Ashok Chandra Rakhit {AIR 1955 SC 558}, referred to in para 18 supra, but also took note of Sections 15 and 17 and compared them with Sections 28 and 29. Therefore, it is contended by the learned counsel for the plaintiff that Sections 15(1) and 17(2), cannot be pressed into service by the defendant.

28. But unfortunately,the above contention of the learned counsel for the defendant, cannot be accepted for a variety of reasons. They are as follows:-

Reason No.1:

(i) It is seen from the narration of facts contained in paragraph 3 of the decision in Ramdev Food Products, that what was registered as a trade mark bearing Trade Mark No.447700 on 3.1.1986 was only the word "Ramdev". Again it is seen from paragraph 9 of the said decision, that the reliefs sought by the appellant company before the City Civil Court, Ahmedabad in C.S.No.828 of 2000 was only for an injunction restraining the defendants therein from in any manner using the trade mark "Ramdev" in their label, packing materials etc. Paragraph 10 of the decision shows that the applications for interim injunction covered both infringement as well as passing off. From paragraph 12 of the decision, it is seen that one of the principal defences raised by the respondents in that case was that the appellant had no exclusive right to use "Ramdev" apart from the label as a whole. (ii) If the facts of the case in Ramdev Food Products, as reflected from paragraphs 3 to 12 are carefully analysed, before coming to para 80 of the decision, it will be clear that the whole dispute revolved around the word "Ramdev". Apart from the word "Ramdev", the trade mark contained two more elements, as per para 80 of the said decision. They were (i) the word "Masala" and (ii) the device of a horse. Though para 3 of the decision refers to the registration of the trade mark "Ramdev" alone under Trade Mark No. 447700, the later paragraphs refer to the registration of several other marks. It is not known whether the other trade marks, whose registration numbers are found in paragraph 9 of the decision, were registered as composite marks or as device marks. (iii) In any case, when the essential part of the trade mark which became the subject matter of dispute in that case was the word "Ramdev", the defence taken under Sections 15 and 17 was frivolous and hence the Supreme Court rejected the same. To put it differently, the trade mark comprised of 3 elements viz., (1) Ramdev (2) Masala and (3) horse, as seen from para 80 of the said decision. A combined reading of the other paragraphs containing the facts of the case would show that the mark "Ramdev" itself was registered. Therefore, it became a prominent feature and an essential part of the whole mark, which cannot be permitted to be hijacked, by taking recourse to Sections 15 and 17. In para 73 of the report, the Supreme Court indicated that what was registered was a logo wherein the words "Ramdev" and "Masala" were prominent. The attempt of the respondents therein, was not to copy the other word "Masala" or the device of a horse. Their attempt was to hijack the word "Ramdev" itself. This is why the Supreme Court made the observations extracted in para 86 above. Therefore, the decision in Ramdev, cannot be understood as one laying down any law contrary to statutory provisions. Reason No.2:

(i) The decision in Ramdev, appears to have arisen under the 1958 Act, as seen from the discussion from paragraphs 26 onwards. But the case on hand has arisen under the 1999 Act. Sections 17 and 29 underwent sweeping changes under the 1999 Act. Under Section 17 of the 1958 Act, the registration of a mark was made subject to disclaimers. Consequently, if any disclaimer was recorded, while registering a mark, the disclaimed portion cannot be considered, for the purpose of infringement. Therefore, it follows as a corollary that every part of the mark was entitled to protection, if no disclaimer was recorded in respect of the same. In other words, the whole of the mark as well as every part thereof in respect of which there was no disclaimer, was entitled to protection, under the old Act. But under the 1999 Act, the power to incorporate a disclaimer was taken away from the Registrar/Tribunal and was made part of Section 17. The objects and reasons for inserting a new Section 17, is stated as follows:- "Objects and Reasons-Clause 17. - This clause which deals with the effect of registration of parts of a mark seeks to omit the provision relating to requirement of disclaimer and to explicitly state the general proposition that the registration of a trade mark confers exclusive right to the use of the trade mark taken as a whole and not separately to each of its constituent parts, if any." (ii) Therefore, in cases arising under 1958 Act, the exclusive right to the use of a trade mark conferred by Section 28(2), depends upon the question as to whether or not, any disclaimer was incorporated in the certificate of registration. On the other hand, if the case arises under the 1999 Act, the exclusive right to the use of the mark, in terms of Section 28(2), is made subject to the limitations incorporated in Section 17(2) itself. In other words, the exclusive right conferred by section 28 (2) was circumscribed under the old Act, by man made restrictions (in the form of disclaimer imposed by Regisrar). But it is now circumscribed by statutory restrictions under the 1999 Act. Therefore, the strong reliance placed by the learned counsel for the plaintiff upon the decision in Ramdev Food Products, is of no use. (iii) Therefore, a registered proprietor of a trade mark cannot succeed in an action for infringement, in respect of that element or part of the trade mark, for which protection is unavailable either on account of a disclaimer incorporated in the Certificate itself or on account of the statutory prescription contained in section 17 (2)(a). (iv) Since the power of the Tribunal under Section 17 of the 1958 Act, to insist upon the proprietor disclaiming any right to the exclusive use of any part of the trade mark has been taken away and a general prohibition incorporated under Section 17 (2) of the new Act, the decision of the Supreme Court in Ramdev Food Products, has to be understood in the context of the new Act.

29. Ms.Gladys Daniel, learned counsel for the plaintiff relied upon an unreported decision of the Delhi High Court in Procter and Gamble vs. Joy Creators in C.S.No.2085 of 2008 dated 21.2.2011. In that case, the plaintiff had registration in respect of the trade marks OLAY, OLAY TOTAL EFFECTS and TOTAL EFFECTS, in respect of make up base, skin moisturising cream, lotions and gels etc. The defendant before the Delhi High Court filed an application for registration of a label containing the mark "JOY ULTRA LOOK TOTAL EFFECTS". The plaintiff filed a notice of opposition and upon finding that the defendant was committing infringement, the plaintiff also filed the suit in question. But unfortunately, the defendants remained ex parte after filing the written statement. Therefore, the Delhi High Court proceeded to pronounce a judgment on merits, ex parte. While doing so, the Delhi High Court held in para 16 of its decision that the words "TOTAL EFFECTS" are an essential and integral component of the plaintiff's registered trade mark OLAY TOTAL EFFECTS and that the defendants had virtually lifted 2 out of the 3 words comprising the registered trade mark. Consequently the Court granted an ex parte decree.

30. But with great respect, I cannot follow the said decision of the Delhi High Court for two reasons viz., (i) that it was an ex parte decision and (ii) that there is no discussion in the said decision about the impact of Sections 15 (1) and 17(2) of the Act.

31. It is next contended by the learned counsel for the plaintiff that it is not open to the defendant to canvass the validity of the registration of the mark, in a suit for infringement. In support of the said contention, she relied upon the decision of the Division Bench of this Court in S.A.P. Balraj v. S.P.V. Nadar & Sons [AIR 1963 Madras 12], where it was held: "In the context of Section 23 and Section 24, it is clear that the validity of a registered trade mark cannot be canvassed in a suit for injunction resulting from an alleged infringement of a trade mark. The person aggrieved must adopt, in such a case, the special procedure provided in Section 46 read with Section 72 of the Act for modification or cancellation of the registered trade mark. Where such a special proceeding is already pending in another Court, it is not proper in the interests of justice for the Court dealing with the suit for injunction to express any opinion upon the merits of the controversy regarding validity of the trade mark."

32. But the said contention arises out of a misunderstanding of the first defence raised by the defendant. The defendant is not challenging the validity of the registration. The defendant is merely pointing out that the protection available under Section 28(1), is circumscribed by Section 17(2) read with Section 28(2). Therefore, it is not correct to say that a defence under Section 17(2) would tantamount to an objection to the validity of the registration itself.

33. Ms.Gladys Daniel, learned counsel for the plaintiff next relied upon a Division Bench judgment of the Delhi High Court in Mohd. Rafiq v. Modi Sugar Mills [AIR 1972 Delhi 46], wherein it was held in para-11 as follows:- "11. Mr.Anand on behalf of the respondent has pointed out that the present is not a case wherein the word "SUN" is sought to be registered as a trade mark for the first time. On the contrary the above trade mark has been on the register for a long time. The appellants, it is submitted seek to get the trade mark removed from the register. The approach in such a case, according to Mr.Anand, has to be different from that in a case wherein the word in question is sought to be registered as trade mark for the first time. Reference in this context is made to the following observations on page 225 In the matter of Burroughs Welcome and Co.'s Trade Marks and In the matter of The Patents Designs and Trade Marks Act, 1883 to 1888, (1904) 21 RPC 217: "The Court when it has had to deal with a question of fact of this sort, long after the date of the registration, has laid down a rule that in such a case the presumption ought to be in favour of the persons who have had that registered Trade Mark for a length of time and the onus of proof as to what was the user of the word, and what it was understood as conveying at the date of registration, ought to be thrown upon the persons who seek, after such a lapse of time, to say that the Trade Mark ought not to have been registered. But I should be very sorry if it was supposed from what I am saying that I in any way mean to suggest that this sort of presumption in favour of the Trade Mark, which has been registered for such a long period, ought to be allowed to overmaster the plain evidence showing that the Trade Mark having regard to the state of things at the date of the registration, ought not to have been registered. I take it, if you had something registered as a Trade Mark, which the evidence showed clearly ought not to have been registered at the date when it was, that no presumption would justify us in keeping such a Trade Mark on the Register." But the above case arose out of an application under Section 107 of the Trade and Merchandise Marks Act, 1958 for rectification of the Register. In that case, the trade mark "SUN" was registered in 1954. When a suit was instituted by the registered proprietor in 1962 against an infringer, the infringer filed an application under Section 107 for rectification, in 1963. The prayer for rectification was rejected by the single Judge and an appeal went before the Division Bench. While dismissing the appeal, the Division Bench observed that the benefits that accrued over a period of 7 years, to the registered proprietor, cannot be easily taken away. Therefore, the said decision is of no assistance to the plaintiff, in as much as the defendant is not challenging the validity of the registration of the trade mark of the plaintiff. Hence, I hold that the claim of infringement, in respect of the word "DAZLLER" has to fail, in the light of Sections 15 (1) and 17 (2) of the Act.

34. But the suit on hand is not merely one of infringement, but is also an action for passing off. Therefore, even if the plaintiff cannot succeed in their claim for infringement, in view of Sections 15 (1) and 17 (2)(a)(ii), the plaintiff can still complain of passing off, as pointed out by the Supreme Court in Godfrey Phillips India Ltd vs. Girnar Food & Beverages Pvt. Ltd {1998 (9) SCC 531}. In that case, the Supreme Court pointed out in para 6 that even on disclaimer, a passing off action would lie.

35. In paragraph 15-033 at page 441 of Kerly's Law of Trade Marks and Trade Names, it is pointed out that "a claimant may fail to make out a case of infringement of a trade mark for various reasons and may yet show that by imitating the mark claimed as a trade mark or otherwise, the defendant has done what is calculated to pass off his goods as those of the claimant". This is why a claim in passing off is generally added as a second string to actions for infringement. Therefore, I would now test the claim of passing off separately.

36. To succeed in an action for passing off, the plaintiff must satisfy the "classical trinity" of (i) reputation (or goodwill) (ii) misrepresentation and (iii) damage, as has been held consistently by various Courts. Alternatively, the plaintiff should satisfy at least "the extended form" typified by 3 decisions viz., (i) Bollinger vs. Costa Brava Wine {1960 R.P.C. 16} (ii) Vine Products vs. Mackenzie {1969 R.P.C. 1} and (iii) Warnink vs. Townend {1980 R.P.C. 31, HL}. These decisions are popularly referred to as Champagne, Sherry and Advocaat cases. Lords Diplock and Fraser in Advocaat formulated general propositions of the law of passing off to take account of its "extended form". The 5 characteristics of this form, as formulated by Lord Diplock, are (1) a misrepresentation (2) made by a trader in the course of trade (3) to prospective customers of his or ultimate consumers of goods or services supplied by him (4) which is calculated to injure the business or goodwill of another (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of a trader by whom the action is brought (or in a quia timet action) will probably do so.

37. After referring to the shift from "classic form" to the "extended form" and the swing of judicial opinion between these two forms, the learned Authors of Kerly's Law of Trade Marks and Trade Names, 14th Edition (London 2005, South Asian Edition 2007) gave a summary of the current approach in paragraph 15-013 at page 434 as follows:- "The present position may be summarised as follows:-

(1) for passing off in its classic form, the classical trinity, as expounded in Jif and other cases, should normally be applicable and be applied;

(2) for passing off in its extended form, one can apply either the classical trinity or the Advocaat tests. Judicial preference seems to vary. In Parma Ham (1991 R.P.C. 351 at 369), the Court of Appeal welcomed the reversion in Jif to the classical trinity. Subsequently, the Court of Appeal has been content to utilise the Advocaat tests in Elderflower Champagne (1993 F.S.R. 64) and Chocosuisse; (3) there is nothing inherently wrong in applying the Advocaat tests to cases of passing off in its classic form (In Bristol Conservatories Ltd vs. Conservatories Custom Built Ltd (1989 R.P.C. 455 at 466, Ralph Gibson L.J., observed that the probanda formulated by Lords Diplock and Fraser would not, e.g., allow for cases of so-called "reverse" passing off (see below at para.15-129), but doing so might raise the suspicion that the case falls into Lord Diplock's "undistributed middle". The modern trend is to use the classical trinity. See, for example, the view of Nourse L.J., in Parma Ham: "Although those speeches of Lord Diplock and Lord Fraser are of the highest authority, it has been my experience, and it is now my respectful opinion, that they do not give the same degree of assistance in analysis and decision as the classical trinity of (1) a reputation (or goodwill) acquired by the plaintiff in his goods, name, mark etc., (2) a misrepresentation by the defendant leading to confusion (or deception), causing (3) damage to the plaintiff (At 568). See also similar views expressed by Millett L.J., in Harrods Ltd vs. Harrodian School Ltd (1996 R.P.C. 697 at 711)".

38. The 5 tests forming part of the extended form as propounded by Lord Diplock was relied upon by the Supreme Court in Cadila Health Care Ltd vs. Cadila Pharmaceuticals Ltd {2001 (5) SCC 73} and in Heinz Italia vs. Dabur India Ltd {2007 (6) SCC 1}. In para 16 of its decision in Heinz Italia, the Supreme Court also pointed out that "before the use of a particular mark can be appropriated, it is for the plaintiff to prove that the product that he is representing had earned a reputation in the market and that this reputation had been sought to be violated by the opposite party".

39. The case on hand does not pass either the test of classical trinity or the test of common law cause of action in its extended form. Admittedly, the registration of the trade mark viz., EYETEX DAZLLER under Trade Mark Nos.1261112 and 1261117 was obtained by the plaintiff only with effect from 14.1.2004. The details of the sales turnover and the details of advertisement and promotional expenditure indicated in paragraphs 9 and 10 of the plaint, relate to all the products of the plaintiff. Admittedly, the plaintiff has registration for about 27 trade marks as seen from para 6 of the plaint. The common denominator in all the 27 marks, is the word "EYETEX". No details are available in the plaint about the sales turnover and promotional expenditure relating to the two trade marks in question. But after this lacuna was pointed out by the defendant in their counter affidavit, the plaintiff filed a reply affidavit. In para 16 of the reply affidavit, the plaintiff has claimed that the turnover in respect of 'Dazller' alone was Rs.51,87,58,664/- from the year 2000 and that the advertisement expenditure was Rs.7,65,67,081/- from the year 2000. I am unable to accept these figures for the following reasons:- (i) As on date, these figures are not supported by documents.

(ii) The plaintiff has claimed in para 8 of the plaint and para 16 of the reply affidavit that the mark "Dazller" has been in use since 2000. But the earliest sales invoice filed in the additional typed set of documents, is of the year 2003. The Certificates of Registration filed as plaint document Nos.2 and 3, show that the word mark as well as the device mark have been registered only as of 14.1.2004. Though the plaintiff appears to have claimed "user" since 2000, even in their application to the Registrar, no material is placed before me to establish such user since 2000. (iii) Prima facie, the claim made in para 16 of the reply affidavit that the sales turnover and advertisement expenditure in respect of "Dazller" alone worked out to Rs.51,87,58,664/- and Rs.7,65,67,081/- respectively, does not match the figures provided in paragraphs 9 and 10 of the plaint. For instance, the total advertisement and promotional expenditure for the period from 2000-2001 upto 2008-2009 indicated in para 10 of the plaint, works out to approximately about Rs.11.50 crores. Without any supporting documents, it is hard to believe that out of the total advertisement and promotional expenditure of Rs.11.50 crores incurred by the plaintiff for promoting various products with 27 trade marks, for the entire period from 2000-2001 to 2008-2009, the plaintiff spent more than Rs.7.65 crores on one product alone, as claimed in para 16 of the reply affidavit, especially when it is not their claim that of all the products promoted by the plaintiff, this is the premium product. Therefore, one of the constituents of the classical trinity viz., "reputation" is not established before me.

40. The additional documents filed by the plaintiff are sales invoices for the period from 2003 to 2010. But these invoices merely show that the product of the plaintiff bearing the trade mark in question is in the market from 2003. They do not show anything more, to indicate either the acquisition of goodwill or the acquisition of reputation of the particular product.

41. Similarly, the plaintiff's case will not also pass the test of "damage to goodwill". It is specifically pleaded by the defendant that the marketing channels of the plaintiff's product and the defendant's product are different. In para 10 of the counter affidavit, the defendant has claimed that the products of the plaintiff are marketed through retail shops, while the defendant's products are sold directly to customers through designated consultants. In para 16 of the reply affidavit, the plaintiff has not disputed the claim made by the defendant that the channels of distribution are different. All that the plaintiff says is that the channels of distribution is irrelevant in an infringement action. But I have already pointed out that in view of Sections 15 (1) and 17 (2), the claim of infringement is bound to fail. However, I have started testing the claim of passing off. Therefore I have to now see if channels of distribution is a factor to be taken into account in an action of passing off.

42. Judicial opinion points out that channels of distribution is recognised as one of the tests in an action for passing off, though not in an action for infringement. In Cadila Health Care Ltd (cited supra), the Supreme Court laid down the following tests in para 35 of the report:- "(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 hence similar in idea.

(c) The nature of the goods in respect of which they are used as trade marks.

(d) The similarity 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, on their education and intelligence and a 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".

43. Again in Mahendra & Mahendra Paper Mills Ltd vs. Mahindra & Mahindra Ltd {2002 (2) SCC 147}, the Supreme Court pointed out in paragraph 16 that broadly speaking, the 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. The very expression "Trade Channels" is used in para 16 of the decision in Mahendra. Therefore, in the light of the fact that the plaintiff and the defendant have different channels for marketing their products and also in the light of the other factors indicated in the previous paragraphs, I am of the prima facie view that the plaintiff cannot succeed even in their claim of passing off. DEFENCE UNDER SECTION 30(2)(a):

44. The second defence taken by the defendant is traceable to Section 30(2)(a). Under this Section, a trade mark is not infringed, where its use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services.

45. Admittedly, the trade mark is used on nail polish and nail glitters. The word "dazzle", in common parlance denotes bewildering brightness. What the plaintiff seeks to convey through the word "Dazller" is that the nails would get bewildering brightness, if this nail polish is applied. Therefore, it is clear that "the intended purpose" of the product is to provide attractive brightness to the nails. It is this intended purpose, which is conveyed by the word "Dazller", used as a part of the whole mark viz., EYETEX DAZLLER.

46. Interestingly, the Indian Enactment viz., the Trade Marks Act, 1999, makes a deviation in this regard from the Trade Marks Act, 1994 of England. The 1994 Act of England sought to make new provision for registered trade marks, implementing European Union Council Directive No.89/104/EEC of 21st December, 1988 to approximate the laws of the Member States relating to trade marks and to make provision in connection with Council Regulation 40/1994 on the Community Trade Mark and to give effect to the Madrid Protocol and certain provisions of the Paris Convention. Section 11(2) of The 1994 Act of England, reads as follows:- "(2) A registered trade mark is not infringed by --

(a) the use by a person of his own name or address,

(b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or (c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts),

provided the use is in accordance with honest practices in industrial or commercial matters."

47. Section 30 (1) and (2)(a) of the Indian Trade Marks Act, 1999, reads as follows:-

"30. Limits on effect of registered trade mark. -- (1) Nothing in Section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use -- (a) is in accordance with honest practices in industrial or commercial matters, and

(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.

(2) A registered trade mark is not infringed where -

(a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services."

48. A comparative reading of Section 11 (2) of the English Trade Marks Act, 1994 and Section 30(1) and (2) of the Indian Trade Marks Act, 1999 would show that the requirement that the use of the trade mark should "be in accordance with honest practices" is stipulated in the Indian Act only under sub-section (1) of Section 30 and not under sub-section (2). In other words, to fall under Section 30(1), a person should satisfy two requirements viz., (i) that his use is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark and (ii) that the use is in accordance with honest practices. But to fall under Section 30(2)(a), it is enough if the defendant establishes that the use was to indicate the kind, quality, quantity, intended purpose, value etc. There is no additional requirement under Section 30(2)(a), that the use is in accordance with honest practices. On the contrary, under Section 11(2) of the English Act, 1994, even the use of indications concerning the kind, quality, quantity and intended purpose should be in accordance with honest practices.

49. When common English words such as glitter, bright, dazzle, sparkle etc., are used as part of a trade mark, on products whose intended purpose is to give brightness/shine, then the protection available to the proprietor of such a mark, is likely to get diluted. Fry L.J., said in Eno vs. Dunn {(1890) L.R.15 App. Cas. 252}, as follows:- "It is said that the words "fruit-salt" have never been used in collocation except by Mr.Eno. Be it so ...... I cannot help regarding the attempt on Mr.Eno's part as an instance of that perpetual struggle which it seems to me is going on to enclose and to appropriate as private property, certain little strips of the great open common of the English language. That is a kind of trespass against which I think Courts ought to set their faces".

50. This is why Section 9(1)(b) of the Trade Marks Act, 1999, prohibits the registration of trade marks which consist exclusively of indications, which may serve in the trade, to designate the kind, quality, quantity, intended purpose etc. It is true that under Section 32, a registered trade mark cannot be declared invalid merely on the ground that it was registered in breach of Section 9(1), if after registration, the mark has acquired a distinctive character in relation to the goods for which it was registered. This is why I pointed out in Health and Glow Retailing Pvt. Ltd vs. Dhiren Krishna Paul {2007 (35) PTC 474}, that the objections relating to the descriptive nature of the mark are available at the pre-registration stage and that they cannot be raised in an action for infringement (post registration). The said view was also quoted with approval by the Delhi High Court in Ashland Licensing and Intellectual Property LLC vs. Savita Chemicals Ltd {2010 (44) PTC 220 (Del.)}.

51. But the trade marks in question comprise of two words viz., "EYETEX" and "DAZLLER". While the word "EYETEX" appears to have attained distinctiveness, in view of its usage for the past 75 years from 1946, the word "DAZLLER" is not shown to have acquired distinctiveness or secondary meaning. As I have pointed out elsewhere, the word "DAZLLER" is said to be used from 2000. But the earliest invoice is of the year 2003 and the registration is with effect from 2004. Therefore, there is nothing on record to show that the word "DAZLLER" has acquired a distinctiveness or secondary meaning, so as to surpass the realm of being a descriptive term. It was pointed out by the European Court of Justice in Case C-108/97 Windsurfing Chiemsee Produktions  und Vertriebs GmBH vs. Boots  und Segelzubehor Walter Huber & Franz Attenberger {(1999) E.C.R. 1-2779; (2000) Ch. 523, ECJ}, that the corollary of a mark having acquired a distinctive character through use was that the mark "has gained a new significance and its connotation, no longer purely descriptive, justifies its registration as a trade mark".

52. A descriptive mark is defined by McCarthy, on the following lines, based upon the decision of the 7th Circuit in G.Helleman Brewing Co. Vs. Anheuser-Busch Inc. (873 F.2d.985): "A word, picture, or other symbol that directly describes something about the goods or services in connection with which it is used as a mark. Such a term may be descriptive of a desirable characteristic of the goods; the intended purpose, function, or use of the goods, the size or color of the goods; the class of users of the goods; or the end effect upon the user. The issue of descriptiveness is usually tested from the view point of the hypothetical customer who has that basic amount of knowledge about the product which is conveyed by advertising and promotion currently available in the marketplace".

53. However, relying upon the judgment of the Delhi High Court in M/s. Kala Niketan v. M/s. Kala Niketan [AIR 1983 Delhi 161], the learned counsel for the plaintiff contended that the word "Dazller" is not descriptive. The relevant portions of the judgment of the Delhi High Court in the said case, read as follows:-

16. It is settled law that if a trade name merely describes the goods or their characteristics then ordinarily the plaintiff cannot prevent others from using it. A trade name is opposed to a merely descriptive name. In Office Cleaning Services Limited vs. Westminster Window and General Cleaners Limited, (1946) 63 RPC 39 at p. 43, Lord Simonds said:- 'It comes in the end, I think, to no more than this, that where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The Court will accept comparatively small differences as sufficient to avert confusion. A greater decree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of the words descriptive of the articles to be sold or to the services rendered". Are the words 'Kala Niketan' descriptive of the Sarees ? is, therefore the question that falls for determination.

17. The test whether the words are descriptive has been laid down in Corpus Juris Secundum Volume 87 in paragraph 34 at page 271 as follows:-

"The true test in determining whether a particular name or phrase is descriptive is whether, as it is commonly used, it is reasonably indicative and descriptive of the thing intended. In order to be descriptive within the condemnation of the rule, it is sufficient if information is afforded as to the general nature or character of the article, and it is not necessary that the words or marks used shall comprise a clear, complete, and accurate description. The meaning which should be given is the impression and signification which are conveyed to the public, whether words or marks claimed as public, whether words or marks claimed as trade marks are descriptive or whether they are suggestive or arbitrary and fanciful must be decided with respect to the articles to which they are applied and the mark must be considered as a whole".

18. The word 'Niketan' according to Bhargava's Standard Illustrated Dictionary of the Hindi Language means "dwelling, habitation, house, place, residence, mansion". This word 'Niketan" is not indicative in any way of the goods in question i.e., Sarees. It does not afford any information as to the general nature or character of the Sarees. The word 'Kala' according to the abovementioned Dictionary, inter alia, means: "brilliance, grandeur, fraud, trick, sport, play, supernatural power, somersault, art, craft, technics, fine arts". According to the learned counsel for the defendant, the word 'Kala" suggests Sarees with artistic designs".

54. There is no quarrel with the proposition of law indicated by the Delhi High Court in Kala Niketan. As a matter of fact, para 16 of the decision of the Delhi High Court, begins with the accepted statement of law that if a trade name describes the goods or their characteristics, then ordinarily the plaintiff cannot prevent others from using it. Having said that, the Delhi High Court examined on facts as to whether any of the two words viz., "Kala" and "Niketan" was descriptive of the product in question viz., Sarees. Therefore, applying the very same test, what I have to see ultimately is whether the word "DAZLLER" is descriptive of the product nail polish and nail glitter. If so done, it is clear that the word "DAZLLER" is a derivative of the word "Dazzle" which indicates the intended purpose of the product viz., nail polish and nail glitters, within the meaning of Section 30(2)(a) of the Act.

55. As pointed by me in paragraphs 17 to 21 above, the attempt made by the plaintiff to have the word "Dazller" registered even as part of the whole mark, was resisted by the Registry and ultimately the whole mark was registered as such. I have also pointed out that the attempt made by three other parties to have the word "Dazler" registered, met with stiff opposition from the Registry on the ground that the word was descriptive. While one of them withdrew his application, the other two abandoned their applications. Therefore, the fact that the word "Dazller" is descriptive and that it denotes the intended purpose of the product, is not my personal view but the view expressed by the Registry itself even at the earliest point of time. Hence, the defence in terms of Section 30(2)(a) has to be upheld. DEFENCE UNDER SECTION 35:

56. Under Section 35, any bona fide description by a person, of the character or quality of his goods or services, would not entitle the proprietor of a registered trade mark to interfere with the same. Therefore, it is contended by the defendant that the word "DAZLLER" is descriptive of the quality of the goods and that therefore, the protection under Section 35 is available to them.

57. However, I do not think that the defendant should be allowed to raise this defence, for the simple reason that the defendant has also applied for registration of the trade mark "DAILY DAZZLERS", under application No. 1835528. Though the defendant has taken refuge under the plea that their application is for a composite mark comprising of two words viz., "DAILY" and "DAZZLERS", I think what is sauce for the goose should be sauce for the gander too.

58. In any case, the word "DAZZLE" does not appear to indicate the quality of the goods viz., nail polish and nail glitters. It only indicates the intended purpose of the goods. Quality of a product is different from its intended purpose. For instance, the intended primary purposes of water, are to quench the thirst and to clean up things. But the quality of water may differ from place to place. Therefore, there is a vast difference between the 'quality of a product' and its 'intended purpose'. Hence I do not accept the defence under Section 35. CONCLUSION:

59. In fine, I uphold the defence pleaded by the defendant in terms of Sections 17(2) and 30 (2) of the Act and hold that there is no infringement. I also hold that there is no passing off, by applying the tests prescribed in the classic form as well as extended form. Consequently, the plaintiff is not entitled to the interim injunctions sought for. Therefore, both the applications for injunction are dismissed. However, there will be no order as to costs.

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