Jagan Nath Prem Nath v. Bhartiya Dhoop Karyalaya
AIR 1975 DELHI 149
The Appellant was the manufacturer and dealer of ‘agarbattis’ under a registered trademark comprising the numerals ‘555’. Respondent was the registered user of trademark ‘Rajkamal’ in respect of agarbattis. The numerals ‘555’ did not appear anywhere in his registered trademark. However, the Respondent subsequently added the numerals ‘555’ in his own mark.
Appellant filed a suit for infringement of trade mark as well as passing off against the Respondent. Subsequent to the institution of the suit, the Respondent had applied to the Registrar of Marks under Section 28 of the Trade and Merchandise Marks Act, 1958 (hereinafter ‘the Act’) for rectification of the registered trade mark of the Appellant by either deleting the numerals ‘555’ or by disclaiming the rights for the exclusive user of the numerals.
• Appellant has the exclusive right to use the trademark ‘555’ in relation to the goods in respect of which the trademark is registered.
• The Respondent’s registered mark or device mark does not contain the numerals. This prima facie establishes that the Respondent has added the numerals deliberately, as these numerals have come to be associated in the mind of the public with a particular quality of agarbattis made by the Appellant.
• Appellant is not the only manufacturer of agarbattis with the numerals ‘555’ in his trademark. Two other trademarks, viz., ‘Kasturi Agarbati 555’ and ‘Anand Darbar Batti 555’ are also registered on record. This indicates that the numerals ‘555’ have come to be regarded in the trade as denoting superior quality of the product of the manufacturer and the Appellant cannot establish any exclusive right over the use of the numerals.
• Where a distinct label is registered as a whole, such a registration does not confer any exclusive statutory right on the proprietor to use any particular word or name contained therein, apart from the mark as a whole.
• The registered label of the Appellant was a composite label and the numerals were only in the corner along with the words ‘highly perfumed’. The numerals, therefore, do not form a distinctive part of the trademark.
• Balance of Convenience is in favour of the Respondent.
Observations made by the Hon’ble Court:
i. Whether the Appellant can claim exclusive right over the numerals ‘555’ when other manufacturers also use the same numerals in their registered trademarks?
Yes. The Hon’ble Court interpreted Section 28 (3) of the Act and held that even though the Appellant may not be in a position to enforce any right against the other two registered holders of the trade mark using the numerals ‘555’, Appellant is entitled, to enforce all his rights against every third person (including the Respondent) who is not a registered holder of the trade mark.
ii. Whether the mark or the label can be dissected, apart from the mark as a whole, to hold that the Respondent has caused an infringement of the Appellant’s trademark?
Yes. The Hon’ble Court cited the case of M/s. Atlas Cycle Industries Ltd. Vs. Hind Cycle Ltd.; (1973) ILR 1 Delhi 393 to elucidate that in an action for infringement of a trademark, there could be two possibilities:
(a) that the Defendant’s mark is identical to the Plaintiff’s mark; or
(b) that the Defendant’s mark is deceptively similar.
First is a clear case of infringement. In the second case, it must be ascertained whether the mark is likely to deceive or cause confusion in relation to the goods in respect of which the Plaintiff got his mark registered.
It is important to find out the distinguishing or essential feature of the trade mark already registered and the main feature or the main idea underlying the trade mark.
The Appellant does not need to prove that the whole of his registered trade mark has been copied. It is enough if he shows that the Defendant’s mark is similar to the Plaintiff’s mark as it would be remembered by persons possessed of an average memory with its usual imperfections or that its essential particular or the distinguishing or essential feature has been copied.
The Hon’ble Court found numeral ‘555’ to be the essential feature of the Plaintiff’s trade mark to the extent that the use of the same in respect of identical goods
iii. Whether the balance of convenience is in favour of the Respondent?
No. The numerals ‘555’ are a subsequent addition to the Respondent’s trademark and as such not prima facie bona fide. Moreover, as the Appellant is the registered holder of the trade mark with numerals ‘555’ he has a better right to restrain the Respondent from using it vide section 28(1) of the Act. The question of balance of convenience is relevant only when at least the two parties are on the same level and their rights are about equal, which is not the case here.
Author: Aadhya, National Law University, Odisha