REPORTABLE

IN THE SUPREME COURT OF INDIA

CIVIL APPELLATE JURISDICTION

CIVIL APPEAL NOS.6314-15 OF 2001

T.V. Venugopal ` ... Appellant

Versus

Ushodaya Enterprises Ltd. & Another ... Respondents

J U D G M E N T

Dalveer Bhandari, J.

1.These appeals are directed against the judgment

delivered by a Division Bench of High Court of Andhra Pradesh

in Letter Patent Appeal Nos. 12 and 13 of 2001 on 15.06.2001.

2.Brief facts which have been given by the appellant are

recapitulated as under.

3.The appellant is the sole proprietor of a firm carrying on

business inter alia as manufacturers of and dealers in incense

sticks (agarbathis) in the name and style of Ashika Incense

Incorporated at Bangalore.

4.The appellant started his business in the year 1988 and

adopted the mark ‘Ashika’s Eenadu’. According to the

appellant the word ‘Eenadu’ in Kannada language means ‘this

land’. In Malayalam and Tamil language it conveys the same

meaning. In Telugu language it means ‘today’.

5.In consonance with the above meaning the appellant

devised an artistic label comprising a rectangular carton in

bottle green background with sky-blue border and in the

centre, in an oval tricolour, the word ‘Eenadu’ is written.

6.According to the appellant, in the year 1993 he honestly

and bona fidely adopted the trade mark ‘Eenadu’ meaning ‘this

land’ in Kannada. In the said label the other expressions used

are ‘Ashika’s original’ and the firm’s logo printed in red against

yellow background. The other panel of the carton contains the

same description in Telugu besides the name and address of

the appellant. The panel on one side of the carton mentions

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the name, address, contents and another side contains

‘Eenadu’ in Devnagari, Tamil and Malayalam.

7.The appellant applied for registration of trade mark on or

about 10.02.1994 of the said label bearing application No.

619177. The appellant made an application to the Registrar of

the Trade Marks for a certificate under proviso to Section 45(1)

of the Copyright Act, 1957. The Registrar issued a certificate

on 7.3.1996. Thereafter, an application for registration for

copyright was made by the appellant on 14.3.1997.

8.The appellant’s product, incense sticks (agarbathies)

were well received in the market and according to him, when

he filed the appeal before this Court, his annual business was

about rupees eleven crores per annum.

9.The respondent company, who was engaged in the

business of publishing a newspaper in Telugu entitled as

‘Eenadu’, served a cease and desist notice on the appellant

which was replied by the appellant on 8.3.1995. The

respondent company in the year 1999 filed a suit for

infringement of copyrights and passing-off trade mark in the

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Court of Second Additional Chief Judge, City Civil Court,

Hyderabad. The respondent company therein claimed that

they have been in the business of publishing a newspaper,

broadcasting, financing and developing a film city.

10.It was contended by the respondent company that the

use of the word ‘Eenadu’ by the appellant amounted to

infringement of their copyright and passing-off in trade mark.

According to the respondent company, the business of the

appellant and the respondent company was different and there

is no commonality or casual connection between the two

businesses.

11.The appellant states that the word ‘Eenadu’ is a well

known and well understood word appearing in all the South

Indian languages. It means ‘today’ in Telugu. In Tamil,

Malayalam and Kannada it means ‘this land’. Therefore, no

absolute monopoly could either be claimed or vest in any

single proprietor in respect of the entire spectrum of goods

and/or services and there have been other traders and

manufacturers who have been using the word ‘Eenadu’ to

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distinguish their merchandise from similar merchandise of

others.

12.The appellant also asserted that in Hyderabad one co-

operative bank exists in the name of ‘Eenadu Cooperative

Bank Ltd.’ and their services are advertised as ‘Eenadu

Deposits’, a shop also exists in Vijayawada by the name

‘Eenadu Men’s Wear’ and a film titled ‘Eenadu’ in Malayalam

and Telugu was produced some time over a decade back. The

appellant contended that detergent powder, playing cards, hair

oil, coffee powder, tea powder, papad etc. are being sold with

the mark ‘Eenadu’.

13.The Second Additional Chief Judge, City Civil Court,

Hyderabad on 24.11.1999 had granted an ex-parte ad interim

injunction restraining the appellant from using the expression

‘Eenadu’ and the same was confirmed on 27.12.1999.

Thereafter, the appellant, aggrieved by the said order, moved

the High Court of Andhra Pradesh at Hyderabad. The High

Court suspended the interim injunction. The High Court

permitted the appellant to dispose off their finished products

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to the tune of Rs.1 crore and also permitted the appellant to

produce goods that were in the process of manufacture to the

tune of Rs. 78 lakhs.

14.Meanwhile, the trial court on 24.7.2000 partially decreed

the suit of the respondent company. The appellant was not

injuncted from using the words ‘Eenadu’ in the entire country

other than in the State of Andhra Pradesh.

15.The appellant, aggrieved by the order of the City Civil

Judge filed an appeal before the High Court of Andhra

Pradesh. The respondent company also filed an appeal

against the order of City Civil Judge praying that the order of

injunction to be made absolute and not be confined to the

State of Andhra Pradesh. The learned Single Judge disposed

of both the appeals by a common judgment/order dated

29.12.2000. The appeal filed by the respondent company was

dismissed and the appeal filed by the appellant was allowed.

16.Aggrieved by the said order of the learned Single Judge,

the respondent company filed Letters Patent Appeals before

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the Division Bench of the High Court. The High Court vide

impugned order allowed its appeals, decreeing the O.S. No.555

of 1999.

17.The appellant also aggrieved by the impugned judgment

filed appeals and submitted that the courts below were not

justified in granting relief which was not specifically prayed for

in the plaint. The appellant further submitted that the High

Court erred in holding that the copyrights of the respondent

company were infringed in the absence of a prayer for

infringement of copyrights. According to the appellant the

Division Bench of the High Court erred in holding that they

were passing-off the copyrights when the Copyright Act, 1957

does not provide for such a remedy.

18.The appellant also submitted that the courts below have

not properly appreciated the distinction between the existence

of a copyright and its infringement.

19.According to the appellants, the respondent company

was aware of the appellant’s business since at least 27.2.1995

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and there has been a gross delay in filing of the suit and

because of inordinate delay in approaching the court, the

respondent company is not entitled to any relief.

20.The appellant further submitted that whether an action

for passing-off could be maintained and injunction granted

when a mark is used consisting of the word ‘Eenadu’, which is

a common word. The word ‘Eenadu’ literally means ‘Today’ in

Telugu and ‘this land/our land’ in Kannada, Tamil and

Malayalam.

21.The appellant contended that the businesses of the

appellant and the respondent company are entirely different

and there is no question of passing-off of the goods of the

appellant as that of the respondent company.

22.The respondent company denied all the averments of the

appellant and submitted the following propositions.

1.The essence of an action of passing-off is an attack

on or dilution or benefitting from the goodwill and

reputation of another person.

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2.If such goodwill or reputation arises out of the use

of a name in respect of a particular product and the

goodwill and reputation is restricted only to such

product and unknown outside such product then

the use of such name by another person with

respect to a totally different product would not

affect the goodwill and reputation so as to

constitute an action of passing-off

3. If, however, the goodwill and reputation is

sufficiently wide and the name is associated with

the source in a more general way rather than

restricted only to a given product then the use of

such name by another trader for even a totally

different product could amount to a passing-off.

4.The exception to the three above propositions would

be if such name is a generic name for the product

being manufactured by the rival trader in which

case it would never constitute an action of passing-

off.

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5.Again, if the said name is descriptive of the product

of the rival trader, it would then amount to passing-

off only if it is established that it has become a

household name of such a nature as to have

acquired a strong secondary meaning and it being

associated substantially with the first trader, in

which case alone it would amount to a passing-off.

The standard of proof of such a case would be

higher than the standard of proof of first three

propositions.

23.Mr. Mukul Rohtagi, learned senior counsel and Mrs.

Prathiba Singh, learned counsel arguing on behalf of the

appellant submitted that in the instant case the suit was in

fact governed by Trade & Merchandise Marks Act, 1958 and

not by the Trade Marks Act, 1999 which came into force w.e.f.

15.9.2003. It was submitted that this case is covered under

section 159(4) of the 1999 Act, which specifically provides that

any legal proceedings pending in any court at the

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commencement of this Act would be governed by the old Act.

Section 159(4) of the 1999 Act is reproduced as under:-

“159. (4) Subject to the provisions of section

100 and notwithstanding anything

contained in any other provision of this

Act, any legal proceeding pending in any

Court at the commencement of this Act

may be continued in that court as if this

Act had not been passed.”

Thus, none of the concepts of well-known marks, dilution etc.

as statutorily applicable under the 1999 Act, have any

application in this case. It is submitted that the present case,

as decided by all the courts below, is a case of passing off and

not of dilution.

24.In reply to the submission of the respondent company,

learned counsel for the appellant submitted that the passing

off test is the test of likelihood of confusion. Such confusion

should be either confusion arising due to get up of products,

confusion as to sponsorship/affiliation of source or confusion

arising out of the use of identical/deceptively similar

trademarks.

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25.Learned counsel for the appellant also submitted that

dilution is a completely different concept, namely, if there is

confusion, there is no dilution. The concept of dilution steps

in when in fact the consumer is not being confused but the

plaintiff’s mark is being diluted in some form or the other.

McCarthy, a well-known author on Trademarks and Unfair

Competition clearly states the same in the said publication.

Reliance is being placed at para 24.70 wherein it has been

observed that “the dilution doctrine is concerned with granting

protection to trademarks beyond that provided by the classic

‘likelihood of confusion’ tests.”

26.According to the appellant, the principle of dilution

requires that the consumer in fact should not be confused but

a well-known mark, in the absence of confusion, is being

diluted. In the United States of America, dilution is protected

by a specific statute called the Federal Anti Dilution Act, 1996.

The discussion on dilution in McCarthy establishes the

following:-

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a)The traditional likelihood of confusion test applies to

passing off.

b)If a mark is a well-known mark, then the argument of

dilution is to be considered in the absence of

confusion.

c)Dilution is a doctrine which should be strictly applied.

d)Standard of distinctiveness required to protect a mark

from dilution is very high.

e)Not every trade mark can be protected against

dilution.

f)If a mark enjoys a regional reputation it does not

deserve protection under the law of dilution.

g)A reputation on a national scale, especially while

testing the mark for unrelated goods, is required to be

protected under dilution.

27.Learned counsel for the appellant submitted that under

the traditional law of passing off or under the law of dilution,

the only marks which have been protected across product

category are marks which can easily be termed even in the

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common parlance as well-known marks. Such marks such as

Bata, Volvo, Benz, Mahindra & Mahindra and Tata etc.

28.It was submitted that the case pleaded by the respondent

company (plaintiff) is one of confusion and passing off and not

of dilution. The standard for establishing dilution are

completely different. There is neither a pleading in the present

case alleging dilution, nor any evidence in support of dilution.

The standards for recognizing dilution have not been

confirmed by any court of law in India and while deciding the

present case in the courts below the threshold of dilution was

never applied.

29.In India, the law on dilution has developed through case

law going back to the Benz’s case decided by the Delhi High

Court in Daimler Benz Aktiegesellschaft and another v.

Hybo Hindustan AIR 1994 DELHI 239. However, ‘Eenadu’

cannot claim the distinctiveness or the reputation which is

enjoyed by a mark like Benz or Harrods. ‘Eenadu’ is a very

ordinary word commonly used in Telugu language and to vest

a monopoly in favour of the respondent company (plaintiff) for

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such a common word on the ground of dilution would result in

conferring an undue monopoly to a generic/descriptive word.

There are several marks which are used in the ordinary

language for different types of products, such as :-

1.Time/Times Time Magazine, Time Education,

Times London, Times of India,

Navbharat Times, Hindustan Times,

Times Now

2.Today India Today, Punjab Today, Today’s

Tea, Today’s Contraceptive

3.Marvel Marvel Comics, Marvel Detergent

4.Sun, Surya,

Suraj

Oil, Lights & Bulbs, Tobacco

5.Metro Metro Shoes, Delhi Metro, Metro

Walk Malls

6.Maruti Oil, Cars

7.Taj Hotels (Taj Hotels), Tea (Wah! Taj)

8.Citi Citi Bank, City Mall

9.Mustang Motel, Cars, Trailers

30.The learned counsel for the appellant submitted that

‘Eenadu’ is a common word used in Telugu language. This has

been fully established by the evidence on record.

31.He referred to the deposition of Jagannadharao, PW1, Law

Officer of the plaintiff, who has stated that the literal meaning of

the word ‘Eenadu’ is ‘Today’.

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32.According to the deposition of PW2, N. Swami, Artist, the

meaning of the word ‘Eenadu’ is ‘Today’.

33.Learned counsel for the appellant referred to deposition

of PW5, R. Kumaraswamy, Advocate who has stated that

literal meaning of the word ‘Eenadu’ is ‘Today’.

34.The learned counsel referred to the deposition of PW6,

T.V. Venugopal, the appellant herein. He has stated that the

word ‘Eenadu’ was specifically given for the purpose of ‘daily’

prayer.

35.The learned counsel for the appellant submitted that the

word ‘Eenadu’ literally means “Today” or “This Day” and hence

is not an invented word but is a generic/descriptive word used

in common parlance. This is further proved by the fact that

the word ‘Eenadu’ has been used by several parties for various

products which include :-

-‘Eenadu’ Turmeric powder – even the script is the

same

-‘Eenadu’ Cooperative Bank

-‘Eenadu’ Match Sticks – even the script is the same

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-‘Eenadu’ Playing Cards

-‘Eenadu’ Ayurvedic Bath Soaps

-‘Eenadu’ Dresses

-‘Eenadu’ Chilly Powder – even the script is the same

-‘Eenadu’ Washing Powder

-‘Eenadu’ Coffee – even the script is the same

-‘Eenadu’ Telugu Feature Film

-‘Eenadu’ Tobacco – same script

-‘Eenadu’ Hotel

-‘Eenadu’ Marble Estate

-‘Eenadu’ Feature Film (The said film by UTV

Production uses the word ‘Eenadu’ in the same script

as used by the respondent – (This particular film has,

in fact, been featured for a review in the respondent’s

own newspaper dated 15.8.09 & 27.8.09 and copies of

the same are attached. The music launch of this film

was also featured in the newspaper of the respondents

dt. 14.9.09. This film has at least 2 songs with the

word ‘Eenadu’. One of the songs in the film called

“Eenadu Eesamaram” which means “This Day, This

War”.

-A famous Kannada song – Eenadu Kannada, Eeneeru

Kannada (This day is Kannada, This water is

Kannada).

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36.The appellant submitted that it is clear that ‘Eenadu’ is a

term which is used in the ordinary Telugu language and in

Kannada and the same is acknowledged by the respondent

company itself as is evident from the wide publicity given to

the film in the respondent company’s newspaper.

37.The appellant further submitted that the evidence relied

upon by the respondent company in order to allege that

‘Eenadu’ is a reputed and distinctive mark, is a compilation of

documents handed over before this court during the course of

arguments on 23.3.10. In order to show that ‘Eenadu’ is a

household name, an extract from Wikipedia printed on

13.4.09 was submitted by the respondent company before this

court. In fact, all the other internet print-outs annexed by the

respondent company are based on Wikipedia itself. It is the

submission of the appellant that it is now an established

position, internationally in law that Wikipedia does not have

any evidentiary value in the court proceedings. The same has

been held by the US Court of Federal Claims in Taylor Mary

Campbell v. Secretary of Health and Human Services 69

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Fed. Cl. 775 (2006) and by the US Court of Appeals in

Lamilem Badasa v. Michael B. Mukasey 540 F.3d 909. As

against the Wikipedia evidence, the actual evidence on record

reveals the following:-

a)‘Eenadu’ has a specific meaning in Telugu language

and also has a meaning in Kannada language and

possibly even in Malayalam;

b)‘Eenadu’ has been used by several parties in the same

script without any objection whatsoever from the

respondent company (barring 2 ex-parte injunctions).

c)‘Eenadu’ means “Today” or “This Day”.

d)The respondent company itself has acquiesced to 3

rd

party usage of the mark (including ‘Eenadu’ feature

film by UTV).

e)The respondent company’s submission that this court

ought to ignore the concrete documentary evidence

and testimony and instead rely upon extracts from the

Wikipedia to prove that ‘Eenadu’ is a household name,

is not liable to be entertained.

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38.Thus, ‘Eenadu’ does not enjoy the distinctiveness which

the respondent company claim and in any event such

distinctiveness does not span across all classes of goods and

services.

39.The respondent company has argued before this court

that the descriptive nature of the mark has to be determined

with respect to the appellant’s goods. This approach

according to the appellant is completely erroneous. While

determining the nature of the mark – for the purpose of

registration or for the purpose of passing-off/infringement, the

first inquiry which the court ought to carry out is to determine

whether the applicant’s/plaintiff’s mark is invented,

arbitrary/suggestive, descriptive or generic. The nature of the

mark is always determined with respect to the

plaintiff’s/applicant’s goods. For example, if a person applies

for a trademark called “Extra Strong”, the Registrar of trade

mark has to examine whether the mark is descriptive or

laudatory for the goods for which it is applied, i.e., the

applicant’s goods. The inquiry does not depend on the person

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opposing the use of the said mark. Thus, to hold that the

nature of the mark has to be determined by the nature of the

appellant’s goods is stating the proposition in the reverse.

40.In the present case, the plaintiff/respondent company

was conscious that ‘Eenadu’ is a descriptive mark and it is for

this reason that in the plaint, the plaintiff (respondent)

company has pleaded a secondary meaning with respect to

their mark ‘Eenadu’. If the plaintiff’s case is based on

‘Eenadu’ being a distinctive mark, a suggestive mark and a

well known mark, then there is no question of pleading

secondary meaning to its mark. It is only with respect to

descriptive marks that secondary meaning needs to be pleaded

and considered by this court.

41.The argument of the respondent company is that

‘Eenadu’ is not a generic or descriptive mark but a suggestive

mark. The difference between categorization as generic,

descriptive or suggestive is a follows:-

* A generic mark can never be a trademark

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* A descriptive mark can become a trademark if it

acquires secondary meaning

* A suggestive mark is inherently distinctive

42.The line between suggestive marks and descriptive

marks is very thin. Various commentaries including

McCarthy have laid down the imagination test to determine

as to whether a mark is descriptive or suggestive. When

this test is applied to the mark ‘Eenadu’ for a newspaper, it

is clear that the same is descriptive in nature inasmuch as

it means ‘Today’, i.e. news for today. It does not require

any imagination at all. Thus in the imagination test, if the

mark describes a characteristic of the product – in the case

of ‘Eenadu’ the newspaper, it refers to the characteristic of

the newspaper, i.e., today’s news. ‘Eenadu’ would therefore,

be an expression which immediately describes a newspaper.

In fact with respect to its Agarbathies, ‘Eenadu’ would be a

completely arbitrary term. However, with respect to

newspapers, this is a descriptive term.

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43.The appellant submitted that the entire object of

including the 4

th

Schedule in the Trademark Rules is that

marks are to be registered for the goods and services for the

purpose for which they are used. Non-use of a mark entails

rectification under section 46 of the 1958 Act. Thus, the

entire object of trademarks is to confer monopoly of a

particular individual or entity with respect to a mark for a

particular category of goods or category of services. It is

only in exceptional cases that a mark is protected across all

product categories. If that was not the position, then every

trademark owner whose mark enjoys a reputation in

whatever limited field and for specific goods/services, would

be able to claim monopoly for the mark with respect to all

42 classes of goods and services. This could never have

been the intention of the Legislature. Even while

establishing the criteria for the marks which are well-

known, the legislature has thought it fit to deal with the

reputation of such well-known marks by taking into

consideration factors like section of the public, relevant

geographical area etc. Thus, every trade mark is not

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entitled to protection across all categories as every trade

mark does not automatically become a “well-known mark”.

If this was not the case, then there would come a time when

most words would get monopolized across products and

services which would not conform to the intention behind

the Law of Trade Marks.

44.Every mark with a reputation cannot be determined as

a well-known mark as reputation by itself does not escalate

the mark into the position of a well-known mark. The

reputation of a mark can be restricted to a particular

territory, to a particular category of goods or services, to a

particular category of population, to a particular linguistic

section of public etc.

45.The appellant submitted that in most of the cases

where absolute protection has been granted, extending it

beyond the goods and services in which the plaintiff deals

with, the mark or name has been an extremely distinctive

mark. They have either invented the mark or marks which

are derived from surnames or marks are used across

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categories of products. The defendant’s products may be

confused from the other products originating from the

plaintiff, but the plaintiff has to be dealing with more than

one products or services with respect to the said

mark/name.

46.In the present case, the evidence on record has

established that the plaintiff/respondent company has only

dealt with mark ‘Eenadu’ for newspapers. The television

channel is known as ETV where the word ‘Eenadu’ is not

used for the same. The evidence itself establishes the same.

Further it is pertinent to note that:

· There is not a single document showing that the

respondent company is referred to as ‘Eenadu’

Margdarshi’s goods;

· Priya is also a mark of pickles which is

manufactured by the respondent company;

· ‘Eenadu’ pickles (if any) are not available in the

local market;

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· ETV is the shortcut name for the ‘Eenadu’

Television;

· The respondent company does not manufacture

incense sticks;

· That ‘Eenadu’ has been used to convey the literal

meaning as “Today”.

47.The appellant submitted that in the background of this

evidence emanating from the plaintiff’s main witness, it is

evident that ‘Eenadu’ is not a distinctive mark. It is in fact a

descriptive mark. At best, a secondary meaning may accrue in

its favour with respect to only newspapers and nothing more.

Descriptive words which have been used only for one category

of goods cannot claim across the board protection. ‘Eenadu’ is

not like Volvo or Kirloskar or Harrods or Benz.

48.‘Eenadu’ would fall in the category of marks like Shell,

Safeguard, Flexgrip, Imperial, Skyline and Financial Times,

Heat Piller, One Day Drycleaners, Instea, Kesh Nikhar, Whipp

Toppings. All these words have not been granted protection

across the board.

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49.The respondent company has argued before this court

that the appellant’s adoption is dishonest in view of the similar

scripts being used by the defendant. The script being used by

the appellant is a standard block script in the Telugu

language. The perusal of all the third party use of the mark

‘Eenadu’ would reveal that almost every party uses the same

script. Thus, there is no dishonesty in adoption of the same

as the script is commonly used in Telugu language. Even the

feature film which has been released in 2009 has used the

same script. There is no dishonesty in the adoption of the

mark ‘Eenadu’ or the script ‘Eenadu’. The appellant went

through the process of applying for a Search as prescribed

under the Copyright Act. The appellant obtained a No-

Objection in accordance with Section 45 of the Copyright Act

and Rule 24(3) of the Trade Mark Rules, 1959.

50.The mark ‘Eenadu’ meaning DAILY or TODAY, the

appellant genuinely adopted the same to signify Daily use of

Agarbathi, which is in fact used on a daily basis by persons

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performing puja. Thus, the appellant does have a valid and

acceptable explanation for the adoption. It is submitted that

for the appellant’s goods, it is an arbitrary mark.

51.The appellant submitted that in order to establish the

appellant’s bona fides, the appellant is ready and willing to

change the script and to prefix the word “Ashika” in order to

distinguish itself from the respondent company and to ensure

that there is no confusion as to source.

52.The appellant submitted that as long as the product is

distinguishable from the product of the respondent company,

the appellant prays that the injunction ought to be modified

and the appellant ought to be permitting to adopt the carton

which it has proposed to use before this court. It is incorrect

that the trade made application for registration of the trade

mark was subsequent to the issuance of the notice. The

appellant submitted that the respondent company has not

been able to establish bona fide conduct. This is established

from the following facts:-

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a.According to the appellant, the mark ‘Eenadu’ has

been permitted by the respondent company to be in

common use because the respondent company did

not take action against all those who had been

using the mark ‘Eenadu’.

b.According to the respondent company, the appellant

stopped using the mark after caution notice was

sent to the appellant in 1995 and then commenced

using it in 1999. In 1995 the respondent company

gave a notice restricting the grievance to Copyright.

The grievance was restricted to a Disclaimer. After

1995 when the sales of the appellant began to

increase from sales of two crores to the sales of

approximately ten crores, then the suit was filed by

the respondent company on a false plea in the

plaint and obtained an ex-parte injunction.

53.The appellant submitted that the case law is clear that

confusion as to source applies only when the source is not

clearly stated. The appellant in the impugned carton has used

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the word Agarbathi along with the word ‘Eenadu’. However,

Ashika’s Eenadu completely distinguishes itself from the

respondent company. A carton being proposed to be adopted

by the appellant which would completely eliminate any remote

chance of any confusion.

54.Mr. R.A. Sundaram, learned Senior Advocate argued on

behalf of the respondent company. He submitted that

‘Eenadu’ is not a common Telugu word meaning “Today” and

is not a common word. He submitted that ‘Eenadu’ has

acquired secondary meaning and referred to and relied on the

trial court findings in that respect. He submitted that the

appellant failed to note that ‘Eenadu’ Group is inter alia a

publisher of a newspaper which is the second largest regional

daily circulating in India and is the largest in Andhra Pradesh.

55.Mr. Sundaram submitted that the appellant is a

Bangalore based company which started manufacturing its

products in Bangalore under the name “Ashika” and had

started selling its products in Andhra Pradesh in 1995. The

appellant started using the name ‘Eenadu’ for its Agarbathies

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and used same artistic script, font and method of writing the

name cannot be a co-incidence. The appellant is a Karnataka

company after adoption of the name ‘Eenadu’ accounted for

90% of the sale of their product Agarbathies. The appellant

was restrained from using the word ‘Eenadu’ in the State of

Andhra Pradesh, their sales have dropped by 10 times

although they continued to sell the product under the name

“Ashika”. The appellant glossed over the fact of being

manufacturer of Agarbathies as is inexplicable as to why they

had applied for registration of name ‘Eenadu’ not just for

Agarbathies but inasmuch as 34 classes of the Trade Marks

Act for goods which they do not even produce or do not have

any intention to produce which would itself show the intention

that they can trade on the respondent company’s household

name and goodwill and reputation. According to the

respondent company, all these facts clearly show that

adoption of name ‘Eenadu’ was by no means innocent but was

intended to capitalize and derive benefit on the goodwill and

reputation of the respondent company which is impressible.

31

56.Mr. Sundaram submitted the basic underlying fallacy is

that since after all the readers of a newspaper are literate and,

therefore, would be able to make out that the Agarbathies are

by the name “Ashika Eenadu” or that it comes from a different

source, overlooks completely that it is the purchaser of the

Agarbathies and not the purchaser of newspaper that we are

concerned with. The goodwill sought to be cashed in is the

name ‘Eenadu” by the appellant who is selling Agarbathies

and the person so deceived is not the purchaser of the

newspaper but the purchaser of the Agarbathies. To say that

all the purchasers of Agarbathies are illiterate people is a basic

fallacy since the purchasers of Agarbathies will transcend all

classes of people in the society. The entire submission,

therefore, overlooks the basic fact that the purchaser of the

Agarbathies would be deceived into believing that the said

Agarbathies also come from the House of ‘Eenadu’ and thereby

they would be deceived as to the source of the product, and

this cashing in on the goodwill and reputation of the

respondent company is impressible in law.

32

57.The respondent company’s reply to the appellant’s

contention that ‘Eenadu’ is not a household name since it only

deals with newspaper is complete fallacy because the group is

known as “Eenadu Margadarshi Group” and the meaning of

‘Eenadu’ in various publications is stated to be the respondent

company’s group. Furthermore, it also overlooked that in

actual fact there are various products which are also being

produced and sold by the respondent company under the

business name of ‘Eenadu’. It is also relevant to mention that

the ‘Eenadu’ TV Channel (also known as ETV) is one of the

most popular channels and, therefore, the word ‘Eenadu’ has

come to be completely associated with the respondent

company group and in fact is a household name. He has

referred to the findings of the Trial Court, the High Court and

that of the learned Single Judge and submitted that such

findings are not unreasonable so as to require interference

under section 136 of the Constitution.

58.Mr. Sundaram submitted that ‘Eenadu’ is not a generic

name, but in fact would be a ‘fancy’ name outside the State of

33

Andhra Pradesh and within the State of Andhra Pradesh it is a

name which is not in common use, and therefore, would be a

‘fancy’ name. In any event, ‘Eenadu’ is not generic in the

Trade Mark’s sense of the word since it is not the use of the

product name itself. What is meant by generic for Trade Mark

law is that when you call a cake a cake or a shoe a shoe.

When a shoe is called a cake or a cake is called a shoe, it is

neither descriptive nor generic. On the contrary, it is ‘fancy’.

The name ‘Eenadu’, therefore, for any of the products of the

respondent company would not be a generic name at all. The

appellant overlooks that his complaint as to name being

generic can only arise qua product using generic or descriptive

name. It is nobody’s case that ‘Eenadu’ is descriptive of

Agarbathi.

59.All the cases, i.e., Newseek, Ovenchips, MaltedMilk,

Shredded Wheat etc. were cases where the appellant wanted

exclusivity of the name which was descriptive of their product

and the respondent company who was manufacturing a

similar product objected to the exclusivity on the ground that

34

the name was descriptive of the product in question. In this

case, for the application of the judgments the following must

arise:-

-are the appellant and the respondent company dealing

in the name product? This is not so.

- is the word ‘Eenadu’ descriptive of the respondent

company’s product (i.e. Agarbathies)? This is no so.

60.Mr. Sundaram while dealing with the scope of passing off

action submitted that the law of passing off can be

summarized in one short general proposition - no man may

pass off his goods as those of another. More specifically, it

may be expressed in terms of the elements which the appellant

in such an action has to prove in order to succeed. These are

there in number.

a)He must establish a goodwill or reputation attached

to the goods or services which he supplies in the

mind of the purchasing public by association with

the identifying ‘get-up’ (whether it consists simply of

a brand name or a trade description, or the

35

individual features of labeling or packaging) under

which his particular goods or services are offered to

the public, such that the get-up is recognized by the

public as distinctive specifically to the appellant’s

goods or services.

b) He must demonstrate a misrepresentation by the

respondent company to the public (whether or not

intentional) leading or likely to lead the public to

belief that the goods or services offered by him are

the goods or services of the appellant and the

source of such goods or services is the appellant

even if the appellant does not make such products.

c)He must demonstrate that he suffers or, in a quia

timet action, that he is likely to suffer damage by

reason of the erroneous belief engendered by the

respondent company’s misrepresentation that the

source of the respondent company’s goods or

service is the same as the source of those offered by

the appellant.

36

d)Alternatively, the appellant must show that the

description or confusion in the public is that the

source of the respondent company’s product that

they are buying is the appellant.

61.Learned counsel placed reliance on the following passage

from a well-known case Reddaway & Co. and Another v.

Banham & Co. and Another 1895-99 All ER 133 which

reads as under:-

“The name “Glenfield” had become associated

with the starch manufactured by the plaintiff,

and the defendant, although he established

his manufactory at Glenfield, was restrained

from using that word in connection with his

goods in such a way as to deceive. Where the

name of a place precedes the name of an

article sold, it primâ facie means that this is

its place of production or manufacture. It is

descriptive, as it strikes me, in just the same

sense as “camel hair” is descriptive of the

material of which the plaintiff's belting is

made. Lord Westbury pointed out that the

term “Glenfield” had acquired in the trade a

secondary signification different from its

37

primary one, that in connection with the

word starch it had come to mean starch

which was the manufacture of the plaintiff. In

Massam v. Thorley's Cattle Food Co.

just

referred to, James L.J. said:

“The defendant was actually

manufacturing starch at

Glenfield, having gone thither

for the purpose of enabling him

to say that he was

manufacturing it at Glenfield.

The House of Lords said the

mere fact that he was really

carrying on his manufacture at

Glenfield, and was not

therefore telling a lie, did not

exempt him from the

consequence of the fact that

his proceedings were intended

and calculated to produce on

the mind of the purchasers the

belief that his article was the

article of the plaintiffs.”

62.The House of Lords was justified in observing that fallacy

lies in overlooking the fact that a word may acquire in a trade

a secondary signification differing from its primary one, and

that if it is used to persons in the trade who will understand it,

and be known and intended to understand it in its secondary

38

sense, it will none the less be a falsehood that in its primary

sense it may be true. A man who uses language which will

convey to persons reading or hearing it a particular idea which

is false, and who knows and intends this to be the case, is

surely not to be absolved from a charge of falsehood because

in another sense which will not be conveyed and is not

intended to be conveyed it is true. In the present case the jury

have found that there was ample evidence to justify it, that the

words “camel hair” had in the trade acquired a secondary

signification in connection with belting, that they did not

convey to persons dealing in belting the idea that it was made

of camel's hair, but that it was belting manufactured by the

plaintiffs. They have found that the effect of using the words in

the manner in which they were used by the defendants would

be to lead purchasers to believe that they were obtaining goods

manufactured by the plaintiffs, and thus both to deceive them

and to injure the plaintiffs. On authority as well as on

principle, the court granted relief to the plaintiffs.

39

63.Mr. Sundaram also placed reliance on Reckitt & Colman

Products Ltd. v. Borden Inc. and others – 1990 (1) ALL ER 873

where the court has dealt with general law applicable to passing

off of action. In that case the court observed thus:-

“The basic underlying principle of such an

action was stated in 1842 by Lord

Langdale M.R. in Perry v. Truefitt (1842) 6

Beav. 66 , 73 to be: “A man is not to sell his

own goods under the pretence that they are

the goods of another man..….”. Accordingly, a

misrepresentation achieving such a result is

actionable because it constitutes an invasion

of proprietary rights vested in the plaintiff.

However, it is a prerequisite of any successful

passing off action that the plaintiff's goods

have acquired a reputation in the market and

are known by some distinguishing feature. It is

also a prerequisite that the misrepresentation

has deceived or is likely to deceive and that the

plaintiff is likely to suffer damage by such

deception. Mere confusion which does not lead

to a sale is not sufficient. Thus, if a customer

asks for a tin of black shoe polish without

specifying any brand and is offered the product

of A which he mistakenly believes to be that of

B, he may be confused as to what he has got

but he has not been deceived into getting it.

Misrepresentation has played no part in his

purchase”.

40

64.He also relied on the judgment of this court in Ruston &

Hornsby Ltd. v. The Zamindara Engineering Co. – 1969 (2)

SCC 727 wherein the court observed as under:-

“The distinction between an infringement action and

a passing off action is important. Apart from the

question as to the nature of trade mark the issue in

an infringement action is quite different from the

issue in a passing off action. In a passing off action

the issue is as follows :

“Is the defendant selling goods so marked

as to be designed or calculated to lead

purchasers to believe that they are the

plaintiff's goods?”

But in an infringement action the issue is as

follows:

“Is the defendant using a mark which is

the same as or which is a colourable

imitation of the plaintiff's registered trade

mark ?”

65.He also relied on Laxmikant V. Patel v. Chetanbhai

Shah and Another – 2002 (3) SCC 65. This court observed

as under:-

“A person may sell his goods or deliver his

services such as in case of a profession

under a trading name or style. With the

41

lapse of time such business or services

associated with a person acquire a

reputation or goodwill which becomes a

property which is protected by courts. A

competitor initiating sale of goods or

services in the same name or by imitating

that name results in injury to the business

of one who has the property in that name.

The law does not permit any one to carry on

his business in such a way as would

persuade the customers or clients in

believing that he goods or services belonging

to someone else are his or are associated

therewith. It does not matter whether the

latter person does so fraudulently or

otherwise. The reasons are two. Firstly,

honesty and fair play are, and ought to be,

the basic policies in the world of business.

Secondly, when a person adopts or intends

to adopt a name in connection with his

business or services which already belongs

to someone else it results in confusion and

has propensity of diverting the customers

and clients of someone else to himself and

thereby resulting in injury.”

66.Mr. Sundaram also placed reliance on a judgment of this

court in Satyam Infoway Ltd. v. Sifynet Solutions (P)

Limited – 2004 (6) SCC 145. The relevant passage is

reproduced as under:-

“The next question is would the principles of

trade mark law and in particular those

42

relating to passing off apply? An action for

passing off, as the phrase "passing off" itself

suggests, is to restrain the defendant from

passing off its goods or services to the

public as that of the plaintiff's. It is an

action not only to preserve the reputation of

the plaintiff but also to safeguard the

public. The defendant must have sold its

goods or offered its services in a manner

which has deceived or would be likely to

deceive the public into thinking that the

defendant's goods or services are the

plaintiff's. The action is normally available

to the owner of a distinctive trademark and

the person who, if the word or name is an

invented one, invents and uses it. If two

trade rivals claim to have individually

invented the same mark, then the trader

who is able to establish prior user will

succeed. The question is, as has been aptly

put, who gets these first? It is not essential

for the plaintiff to prove long user to

establish reputation in a passing off action.

It would depend upon the volume of sales

and extent of advertisement.”

67.Mr. Sundaram also relied on Ramdev Food Products (P)

Limited v. Arvindbhai Rambhai Patel and Others – 2006 (8)

SCC 726 as under:-

“A trade mark is the property of the manufacturer.

The purpose of a trade mark is to establish a

connection between the goods and the source

thereof which would suggest the quality of goods. If

the trade mark is registered, indisputably the user

43

thereof by a person who is not otherwise authorised

to do so would constitute infringement. Section 21

of the 1958 Act provides that where an application

for registration is filed, the same can be opposed.

Ordinarily under the law and, as noticed

hereinbefore, there can only be one mark, one

source or one proprietor. Ordinarily again right to

user of a trade mark cannot have two origins. The

first respondent herein is a rival trader of the

appellant-Company. It did not in law have any right

to use the said trade mark, save and except by

reason of the terms contained in the MOU or

continuous user. It is well-settled that when

defences in regard to right of user are set up, the

onus would be on the person who has taken the

said plea. It is equally well-settled that a person

cannot use a mark which would be deceptively

similar to that of the registered trade mark.

Registration of trade marks is envisaged to remove

any confusion in the minds of the consumers. If,

thus, goods are sold which are produced from two

sources, the same may lead to confusion in the

minds of the consumers. In a given situation, it may

also amount to fraud on the public. A proprietor of a

registered trade mark indisputably has a statutory

right thereto. In the event of such use by any person

other than the person in whose name the trade

mark is registered, he will have a statutory remedy

in terms of Section 21 of the 1958 Act. Ordinarily,

therefore, two people are not entitled to the same

trade mark, unless there exists an express licence

in that behalf.”

68.He also relied on Harrods Limited v. R. Harrod

Limited – (1924) RPC 74 where the court observed as under:-

44

“………it seems to me to be quite clear that

where there is fraud the Court can interfere

and there is fraud where you find a particular

name taken by a defendant, a well known

fancy name, which could not be taken for a

legitimate purpose, and a name which is

taken, to use Lord Justice Buckley’s words, for

the purpose of posing as being some person

whom you are not.

In Aerators Limited v. Tollitt (L.R. (1902) 2 Ch.,

p.319), Mr.Justice Farwell, said this, that you

can interfere where the use of the particular

name is calculated to deceive, even though it

does not point to intentional fraud, and it is a

question of fact in each case as to whether or

not the names were so alike as to induce the

belief that the companies are identical. So

that, where there is fraud, the court can

interfere, and where the names are so alike as

to be calculated to deceive it can interfere.

Further it may draw the inference that there is

fraud where there is an attempt to pose as

being a particular business firm when you are

not, and are not entitled to use their name.”

69.Mr. Sundaram also placed reliance on Harrods Limited

v. Harrodian School Limited (1996) RPC 697. In this case

the court held that the manifold services and activities for

which the plaintiffs are known, and the wide field of

recognition of the name “Harrods”, would lead to an

assumption that, the plaintiffs are in some way are connected,

45

associated or mixed-up with the school which bears their

name in its adjectival form. The court also observed that

Erosion of distinctiveness of a brand name had been

recognized as a form of damage to the goodwill of a business

with which the name is connected in a number of cases, but

unless care was taken this could mark an unacceptable

extension of the law of passing off.

70.Learned counsel for the respondent company also relied

on a judgment of this Court in the case of Midas Hygiene

Industries (P) Ltd. and another v. Sudhir Bhatia and

others (2004) 3 SCC 90. The court observed that the law on

the subject is well settled. In cases of infringement either of

trade mark or of copyright, normally an injunction must

follow. Mere delay in bringing action is not sufficient to defeat

grant of injunction in such cases. The grant of injunction also

becomes necessary if it prima facie appears that the adoption

of the mark was itself dishonest.

71.Mr. Sundaram also relied on a judgment of the Delhi

High Court in the case of Madhubhan Holiday Inn v.

46

Holiday Inn Inc. 100 (2002) DLT 306 (DB) (on which one of

us, Dalveer Bhandari, J. was the author). The Division Bench

of the High Court observed as under:

“… the adoption of the words “Holiday

Inn” by the appellants is ex facie fraudulent

and mala fide from the very inception. The

words “Holiday Inn” have been adopted by the

appellant to ride on the global reputation of

the respondent. The appellant was actuated

by bad faith and dishonest motive. In the facts

and circumstances, the learned Single Judge

was fully justified in granting the injunction

and decreeing the suits in order to protect the

commercial goodwill and to ensure that the

global business reputation of the respondent is

not exploited by the appellants in a clandestine

manner.”

72.Learned counsel for the respondent company also

submitted that where a trade/business name has acquired a

reputation such as it has become a household name. In such

a case anyone who uses the identical name albeit in a different

field of business altogether would be guilty of passing off by

cashing in on the reputation and goodwill of the business of

the plaintiff and would be restrained.

47

73.Mr. Sundaram also placed reliance on the judgment of

Harrodian School Limited (supra). The court observed as

under:

“The absence of any common field of activity:

This is of particular significance in the present

case. The judge correctly directed himself as

to the law; he cannot be faulted in the way in

which he applied it. It is not merely that the

plaintiffs have never run a school and have no

established reputation for doing so; or even

that the nature of the parties’ respective

businesses are as dissimilar as can well be

imagined. It is rather that the commercial

reputation for excellence as a retailer which

the plaintiffs enjoy would be regarded by the

public as having no bearing upon their ability

to run a school. Customers of the plaintiffs

would be surprised to learn that Harrods had

ventured into the commercial theatre; they

would, I think, be incredulous if they were told

that Harrods had opened a preparatory

school.”

74.The respondent company also placed reliance on a

judgment of this Court in the case of Mahendra & Mahendra

Paper Mills Limited v. Mahindra & Mahindra Limited

(2002) 2 SCC 147 wherein this Court observed as under:

“Judging the case in hand on touchstone of

the principles laid down in the aforementioned

decided cases, it is clear that the plaintiff has

48

been using the word "Mahindra" and

"Mahindra & Mahindra" in its

companies/business concerns for a long span

of time extending over five decades. The name

has acquired a distinctiveness and a

secondary meaning in the business or trade

circles. People have come to associate the

name 'Mahindra' with a certain standard of

goods and services. Any attempt by another

person to use the name in business and trade

circles is likely to and in probability will create

an impression of a connection with the

plaintiffs' group of companies. Such user may

also effect the plaintiff prejudicially in its

business and trading activities. Undoubtedly,

the question whether the plaintiffs' claim of

'passing-off action' against the defendant will

be accepted or not has to be decided by the

Court after evidence is led in the suit. Even so

far the limited purpose of considering the

prayer for interlocutory injunction which is

intended for maintenance of status quo, the

trial Court rightly held that the plaintiff has

established a prima facie case and irreparable

prejudice in its favour which calls for passing

an order of interim injunction restraining the

defendant-company which is yet to commence

its business from utilising the name of

'Mahindra' or 'Mahindra & Mahindra' for the

purpose of its trade and business. Therefore,

the Division Bench of the High Court cannot

be faulted for confirming the order of

injunction passed by the learned single

Judge.”

75.Mr. Sundaram also relied on a judgment of this court in

the case of Bata India Limited v. Pyare Lal & Company,

49

Meerut City & Ors. AIR 1985 All 242] the Allahabad High

Court observed that considering the plea of passing-off or

enabling others to pass-off mattresses, sofa cushions and

other articles associating them with the name of “Bata” in any

manner or form held that:

“The name ‘Bata’ was well known in the

market and the user of such a name is likely to

cause not only deception in the mind of an

ordinary customer but may also cause injury

to the plaintiff Company. The fact that the

plaintiff was not producing form was not

enough to hold that there could be no passing-

off action in respect of the user of the name

‘Bata’ to the products marketed by the

defendants. The use of the name or mark

‘Bata’ by the defendants is indicative of their

intent.”

76.Learned counsel for the respondent company also relied

on a judgment of Delhi High Court in the case of Diamler

Benz Aktiegesellschaft (supra) wherein the Court observed

as under:

“… … …The boxes in which the defendant sells

its undergarments for men, and the

representation thereon is of a man with his

legs separated and hands joined together

above his shoulder, all within a circle, indicate,

the strong suggestion of the link between the

three pointed star of "Mercedes Benz" car and

50

the undergarment's sold by the defendant. In

my view, this cannot be considered to be a

"honest concurrent user" by the defendant of

the above said symbol.”

The Court also observed in the said case that:

“There are marks which are different from

other marks. There are names which are

different from other names. There are names

and marks which have become household

words. "Benz" as name of a Car would be

known to every family that has ever used a

quality car. The name "Benz" as applied to a

car, has a unique place in the world. There is

hardly one who is conscious of existence of the

cars/automobiles, who would not recognize

the name "Benz" used in connection with cars.

Nobody can plead in India, where "Mercedes

Benz" cars are seen on roads, where

"Mercedes" have collaborated with Tatas,

where there are Mercedes Benz Tata trucks

have been on roads in very large number,

(known as Mercedes Benz Trucks, so long as

the collaboration was there), who can plead

that he is unaware of the word "Benz" as used

with reference to car or trucks.

In my view, the Trade Mark law is not intended

to protect a person who deliberately sets out to

take the benefit of somebody else's reputation

with reference to goods, especially so when the

reputation extends world wide. By no stretch

of imagination can it be said that use for any

length of time of the name "Benz" should be

not objected to.”

51

The Court further observed as under:

“However, if despite legal notice, any one big or

small, continues to carry the illegitimate use of

a significant world wide renowned name/ mark

as is being done in this case despite notice

dated 09-12-1989, there cannot be any reason

for not stopping the use of a world reputed

name. None should be continued to be allowed

to use a world famed name to goods which

have no connection with the type of goods

which have generated the world wide

reputation.

In the instant case, "Benz" is a name given to a

very high priced and extremely well engineered

product. In my view, the defendant cannot

dilute, that by user of the name "Benz" with

respect to a product like under-wears.”

77.Mr. Sundaram placed reliance on Harrods Limited

(supra) where the Court observed as under:

“Messrs. Harrods Limited, a long

established and well known Company whose

business included a banking department but

who were precluded by their Articles of

Association from carrying on a moneylenders

business brought an action against R. Harrod

Limited, a Company registered in August,

1923, with the object of carrying on the

business of a registered moneylender. The

plaintiffs applied for an interlocutory

injunction “to restrain the Defendant

Company, its servants and agents until

judgment or further order from carrying on

52

business under the name R. Harrod Limited or

under any name comprising the word “Harrod”

likely to mislead the public into the belief that

the Defendant Company was connected with

the Plaintiff Company or that the business of

the Defendant Company was the same as or in

any way connected with the business of the

Plaintiff Company.”

78.Learned counsel for the respondent company submitted

that the scope of passing-off action is wider than in an

infringement of trademark or copyright action. Therefore, in

an action of passing-off, an injunction can be granted even

against a registered trademark holder.

79.Learned counsel for the respondent company also relied

on a judgment of this Court in the case of N.R. Dongre and

others v. Whirlpool Corporation and another (1996) 5

SCC 714. In this case this Court affirmed the concurrent

findings of the single Judge, as affirmed on appeal by the

division bench of the Delhi High Court and observed that:

“… … …adopting the mark ‘Whirlpool’ when

business in washing machines was being

carried out earlier in other names, which at

this stage, is supportive of the plea of unfair

trading activity in an attempt to obtain

economic benefit of the reputation established

53

by Plaintiff 1, whose name is associated with

the mark ‘Whirlpool’. … … …”

80.Mr. Sundaram also submitted that common words with

strong primary meaning retain the said meaning and

protection would then be granted only qua the product for

which such common word is used viz. Sun TV, Moon, Earth

etc. In this connection learned counsel for the respondent

company relied on a case of this Court in the case of Godfrey

Philips India Limited v. Girnar Food & Beverages (P)

Limited (2004) 5 SCC 257 where this court observed as under:

“Without going into the question whether the

conclusion arrived at by the Division Bench

that the trade mark is descriptive is correct or

not, it appears to us, and as is conceded by

both parties before us, that the enunciation of

principle of law with regard to the protection

available even in respect of the descriptive

trade mark was wrong. A descriptive trade

mark may be entitled to protection if it has

assumed a secondary meaning which identifies

it with a particular product or as being from a

particular source. … … …”

81.Learned counsel for the respondent company also relied

on a judgment of Delhi High Court in the case of Info Edge

(India) Private Limited and another v. Shailesh Gupta

54

and another 98 (2002) DLT 499 where the Court observed

that:

“It was sought to be submitted by the counsel

appearing for the defendant that the word

'Naukri' cannot assume a significance of a

trademark, as the same is generic. The word

'Naukri', would be a descriptive word as it

denotes and describes the nature of work and

business offered by the plaintiff. The plaintiff

has chosen to use the domain name

'Naukri.Com', which is descriptive of the

business, the plaintiff carries on i.e. it gives

information to its subscribers about the

availability of jobs and employment in various

establishments, concerns and offices and the

manner in which request for employment

could be made and, therefore, it is a service

offered by the plaintiff relating to job

opportunity and situation and giving guidance

thereto and, therefore, the same is a

descriptive word. It is also a settled law that

the distinction between the generic word and

descriptive word is very thin and such word

could also assume a secondary meaning by its

long user by a person, who establishes his

reputation in the market.

If a product of a particular character or

composition is marketed in a particular area or

place under a descriptive name and gained a

reputation there under, that name which

distinguished it from competing products of

different composition, the goodwill in the name

of those entitled to make use of it there was

protected against deceptive use there of the

name of competitors. In Erven Warnink by

55

and Ors. v. J Townend & Sons (Hull) Ltd.

and Ors. reported in (1979) 2 All ER, it was

held that whether the name denoted a product

made from ingredients from a particular

locality or whether the goodwill in the name

was the result of the product being made from

particular ingredients regardless of their

provenance, since it was the reputation that

the product itself had gained in the market by

reason of its recognisable and distinctive

qualities which had generated the relevant

goodwill. In the said case, the trademark was

the name of a spirit-based product called

ADVOCAAT. The said product had gained a

reputation and goodwill for that name in the

English market and the defendants were

seeking to take advantage of that name by

misrepresenting that their wine-based product

was of the same type as ADVOCAAT.”

82.Mr. Sundaram placed reliance on a judgment of House of

Lords in the case of Office Cleaning Services Limited v.

Westminster Office Cleaning Association 1944 (2) All E R

269, where the court observed that the word 'office cleaning'

was held to be a descriptive word, for it is a descriptive of the

business they carry on. It was held that the plaintiff could

assume or establish monopoly on the said word only when

they show that they have acquired a secondary or subsidiary

meaning. The aforesaid legal principle is well-settled and even

56

the counsel for the defendant did not dispute the aforesaid

position.

83.In Halsbury's Laws of England, Volume 48 Fourth edition

at page 190, it is stated that it is possible for a word or phrase,

which is wholly descriptive of the goods or services concerned,

to become so associated with the goods or services of a

particular trader that its use by another trader is capable of

amounting to a representation that his goods or services are

those of the first trader and that although the primary

meaning of the words is descriptive, they have acquired a

secondary meaning as indicating the products of a particular

trader.

84.In McCarthy on Trademarks and Unfair Competition Vol.

2 3rd Edition in para 12.5 (2) it is stated that in order to

obtain some form of relief on a "passing off" claim, the user of

a generic term must prove some false or confusing usage by

the newcomer above and beyond mere use of generic name.

57

85.The contention of the defendant is that adjectives are

normally descriptive words and nouns are generic word.

However, McCarthy has said that the said "part of speech" test

does not accurately describes the case law results. therefore,

such a criteria cannot be accepted as a safe and sound basis

to ascertain as to whether a particular name is generic or

descriptive. Besides, even assuming that the said word is

generic yet if it is found by the court that such a mark has

attained distinctiveness and is associated with the business of

the plaintiff for considerable time and thereafter the defendant

adopts a similar word as one of his two marks to induce

innocent internet users to come to the website of the

defendant, which establishes dishonest intention and bad

faith, would the court still be not granting injunction to

protect the business of the plaintiff? The answer to the said

question has to be an emphatic 'No". User of similar word by a

competitor coupled with dishonest intention and bad faith

would empower a court to restrain such user/misuser to do

equitable justice to the aggrieved party.

58

86.Learned counsel for the respondent company also

submitted that the use of the word by another would result in

diminishing the distinctiveness of the word qua the good and

reputation of the plaintiff.

87.Mr. Sundaram also placed reliance on Taittinger and

others v. Allbev Limitd and others (1994) 4 All E R 75. The

relevant passages are reproduced as under:

“… … …Further it cannot be right that the

larger the scale of the activities of a trader

suing in passing off, the less protection it will

receive from the Court because of a

comparison with the scale of the activities of a

defendant who trades on a smaller scale. The

question is whether the relevant activities of

the defendants are on such a small scale

leading to such a small injury that it can be

ignored. On the evidence of the defendants'

sales, I find it impossible to say that is the

case here.

But in my judgement the real injury to the

champagne houses' goodwill comes under a

different head and although the judge refers to

Mr. Sparrow putting the point in argument, he

does not deal with it specifically or give a

reason for its undoubted rejection by him. Mr.

Sparrow had argued that if the defendants

continued to market their product, there would

take place a blurring or erosion of the

uniqueness that now attends the word

59

champagne, so that the exclusive reputation of

the champagne houses would be debased. He

put this even more forcefully before us. He

submitted that if the defendants are allowed to

continue to call their product Elderflower

Champagne, the effect would be to demolish

the distinctiveness of the word champagne,

and that would inevitably damage the goodwill

of the champagne houses.

In Advocaat case [1980] RPC 31 at first

instance Goulding J. held that one type of

damage was 'a more gradual damage to the

plaintiffs' business through depreciation of the

reputation that their goods enjoy.' He

continued: Damage of [this] type can rarely be

susceptible of positive proof. In my judgement,

it is likely to occur if the word 'Advocaat' is

permitted to be used of alcoholic egg drinks

generally or of the defendants' product in

particular.

In the House of Lords in that case Lord

Diplock referred to that type of damage to

goodwill as relevant damage, which he

described as caused 'indirectly in the

debasement of the reputation attaching to the

name “advocaat. …”

In Vine Products Ltd. v. Mackenzie & Co.

Ltd. Cross J., [1969] RPC 1 commenting with

approval on the decision of Danckwerts J. in

Bollinger v. Costa Brava Wine Co. Ltd. (No. 2)

said:

[Danckwerts J.] thought, as I read in his

judgment, that if people were allowed to call

sparkling wine not produced in Champagne

'Champagne,' even though preceded by an

60

adjective denoting the country of origin, the

distinction between genuine Champagne and

'champagne type' wines produced elsewhere

would become blurred; that the word

'Champagne' would come gradually to mean no

more than 'sparkling wine'; and that the part

of the plaintiffs' goodwill which consisted in

the name would be diluted and gradually

destroyed.

That passage was referred to approvingly by

Gault J. in Wineworths Group Limited v.

Comite Interprofessionel du Vin de

Champagne [1992] 2 NZLR 327 In that case

the sale of Australian sparkling wine under the

name champagne was held to constitute

passing off. The New Zealand Court of Appeal

upheld the decision of Jeffries J. who had held

in C.I.V.C. v. Wineworths:

By using the word champagne on the label the

defendant is deceptively encroaching on the

reputation and goodwill of the plaintiffs. [1991]

2 NZLR 432

Jeffries J. had no doubt that if relief was not

granted the plaintiffs would most certainly

suffer damage if the word was used on all or

any sparkling wine sold in New Zealand. He

thought the ordinary purchaser in New

Zealand without special knowledge on wines

was likely to be misled. Gault J. after agreeing

with Jeffries J. on deception said (at p.343):

I find the issue of damage or likely damage to

the goodwill with which the name 'Champagne'

is associated equally obvious in light of the

finding that there is in fact an established

goodwill in New Zealand. I have no doubt that

61

erosion of the distinctiveness of a name or

mark is a form of damage to the goodwill of the

business with which the name is connected.

There is no clearer example of this than the

debasing of the name 'Champagne' in Australia

as a result of its use by local wine makers.

By parity of reasoning it seems to me no less

obvious that erosion of the distinctiveness of

the name champagne in this country is a form

of damage to the goodwill of the business of

the champagne houses. There are undoubtedly

factual points of distinction between the New

Zealand case and the present case, as Mr.

Isaacs has pointed out, and he placed

particular reliance on the fact that in the New

Zealand case as well as in Bollinger v. Costa

Brava Wine Co. Ltd. (No. 2), the Court held

that there was a deliberate attempt to take

advantage of the name champagne, whereas in

the present case the judge found no such

specific intention. In general it is no doubt

easier to infer damage when a fraudulent

intention is established. But that fact does not

appear to have played any part in the

reasoning on this particular point either of

Jeffries J. or of Sir Robin Cooke P., who

thought the case exemplified the principle that

a tendency to impair distinctiveness might lead

to an inference of damage to goodwill [1992] 2

NZLR 327, or of Gault J.; nor in logic can I see

why it should. It seems to me inevitable that if

the defendants, with their not insignificant

trade as a supplier of drinks to Sainsbury and

other retail outlets, are permitted to use the

name Elderflower Champagne, the goodwill in

the distinctive name champagne will be eroded

with serious adverse consequences for the

champagne houses.

62

In my judgement therefore the fifth

characteristic identified in Advocaat case is

established. I can see no exceptional feature to

this case which would justify on grounds of

public policy withholding from the champagne

houses the ordinary remedy of an injunction to

restrain passing off. I would therefore grant an

injunction to restrain the defendants from

selling, offering for sale, distributing and

describing, whether in advertisements or on

labels or in any other way, any beverages, not

being wine produced in Champagne, under or

by reference to the word champagne. That

injunction, I would, emphasise, does not

prevent the sale of the defendants' product,

provided it is not called champagne.”

88.Learned counsel for the respondent company also

submitted that the protection qua common field of activity has

now expanded and been interpreted to mean extending to

other product lines than what is manufactured by the plaintiff

and hence common field of activity is not restricted to same or

similar products but extend to all other products. The test of

common field of activity now accepted is that of “common class

of consumers”. The reason for this is the likelihood of such

consumers identifying the Defendant’s goods as originating

from the same source as the plaintiff. The question therefore

63

would be, whether from the factual situation, an inference can

be drawn that a purchaser of the Defendant’s product could

assume such product as originating from the plaintiff.

89.He also relied on Kamal Trading Co., Bombay and

Others v. Gillette U.K. Limited [1988] IPLR 135 wherein it

has been observed that:

“… … ..the plaintiffs have not established any

of the conditions required for grant of interim

relief. It was submitted that the goods

manufactured by the plaintiffs and the

defendants are different in nature; the

plaintiffs manufacture blades, while the

defendants manufacture “tooth brushes”. The

goods of the plaintiffs and the defendants are

not available in the same shop and the

customers of these goods are different. The

goods sold by the plaintiffs are blades and fall

in class 8, while those of the defendants are

tooth brushes which fall in class 21. Relying

on these circumstances, it was merit in this

submission. In the first instance, the

assumption of the learned counsel that the

class of customers for purchase of safety

blades and tooth brushes are different and

these goods are not available in the same shop

is wholly misconceived. We take judicial notice

of the fact that these goods are available in

every shop including a small shop and each

and every person is required to purchase these

goods. … … …”

64

90.Mr. Sundaram also relied on Honda Motors Company

Limited v. Charanjit Singh & Others (101 (2002) DLT

359) wherein it has been observed that:

“The case of the plaintiff is in fact based on

passing off action and not for infringement of

the trade mark. It has never been the case of

the plaintiff that the two sets of goods are

identical. The concept of passing off, which is a

form of tort has undergone changes with the

course of time. The plaintiff now does not have

to be in direct competition with the defendant

to suffer injury from the use of its trade name

by the defendants.”

The court further observed that:

“In the present case the plaintiff's mark

HONDA has acquired a global goodwill and

reputation. Its reputation is for quality

products. The name of HONDA is associated

with the plaintiff's especially in the field of

automobiles and power equipments on

account of their superior quality and high

standard. The plaintiff's business or products

under the trade mark HONDA has acquired

such goodwill and reputation that it has

become distinctive of its products and the

defendants' user of this mark for their product

"Pressure Cooker" tends to mislead the public

to believe that the defendants business and

goods are that of the plaintiff. Such user by

the defendants has also diluted and debased

the goodwill and reputation of the plaintiff.

65

As observed above, the concept of passing off

is a tort and with the passage of time, with the

developing case law it has changed and now

the two traders need not necessarily operate in

the same field so as to suffer injury on account

of the goods of one trader being passed off as

those of the other.

With the changed concept of passing off action,

it is now not material for a passing off action

that the plaintiff and the defendant should

trade in the same field. I find that some

business are truly international in character

and the reputation and goodwill attached to

them cannot in fact be held being international

also. The plaintiff's business is of international

character and obviously the reputation and

goodwill attached to its trade mark HONDA is

also of international repute. The plaintiff's

trade mark HONDA, which is of global repute,

is used by the defendants for a product like

pressure cooker, to acquire the benefit of its

goodwill and reputation so as to create

deception for the public who are likely to buy

defendant's product believing the same as

coming from the house of HONDA or

associated with the plaintiff in some manner.

By doing so, it would dilute the goodwill and

reputation of the plaintiff and the wrong

committed by the defendants would certainly

be an actionable wrong and the plaintiff is

within its rights to ask for restraint against the

defendants from using its mark HONDA for

their products.”

66

91.From the above discussions, the following two situations

arise:

i.Where the name of the plaintiff is such as to give

him exclusivity over the name, which would ipso

facto extend to barring any other person from using

the same. viz. Benz, Mahindra, Caterpillar,

Reliance, Sahara, Diesel etc.

ii.The plaintiff’s adopted name would be protected if it

has acquired a strong enough association with the

plaintiff and the defendant has adopted such a

name in common field of activity i.e. the purchasers

test as to whether in the facts of the case, the

manner of sale, surrounding circumstances etc.

would lead to an inference that the source of

product is the plaintiff.

67

92.Learned counsel for the respondent company also

submitted that once there is a dishonest intention to adopt the

mark a mere delay in bringing an action will not be defeated

because in case of continuing tort fresh period of limitation

begins to run every moment of the time during which the

breach continues.

93. Mr. Sundaram relied on a case of this court in M/s.

Bengal Waterproof Limited Vs. M/s. Bombay Waterproof

Manufacturing Company and Another (1997) 1 SCC 99

wherein it has been observed that:

“… … …It is now well settled that an action for

passing off is a common law remedy being an

action in substance of deceit under the Law of

Torts. Wherever and whenever fresh deceitful

act is committed the person deceived would

naturally have a fresh cause of action in his

favour. Thus every time when a person passes

off his goods as those of another he commits

the act of such deceit. Similarly whenever and

wherever a person commits breach of a

registered trade mark of another he commits a

recurring act of breach or infringement of such

trade mark giving a recurring and fresh cause

of action at each time of such infringement to

the party aggrieved. … … …”

… … …

68

… … …

In cases of continuous causes of action or

recurring causes of action bar of Order 2 Rule

2 Sub-rule (3) cannot be invoked. In this

connection it is profitable to have a look at

Section 22 of the Limitation Act, 1963. It lays

down that 'in the case of a continuing breach

of contract or in the case of a continuing tort,

a fresh period of limitation begins to run at

every moment of the time during which the

branch or the tort, as the case may be,

continues. As act of passing off is an act of

deceit and tort every time when such tortuous

act or deceit is committed by the defendant the

plaintiff gets a fresh cause of action to come to

the court by appropriate proceedings. Similarly

infringement of a registered trade mark would

also be a continuing wrong so long as

infringement continues. Therefore, whether the

earlier infringement has continued or a new

infringement has taken place cause of action

for filing a fresh suit would obviously arise in

favour of the plaintiff who is aggrieved by such

fresh infringements of trade mark or fresh

passing off actions alleged against the

defendant. Consequently, in our view even on

merits the learned Trial Judge as well as the

learned Single Judge were obviously in error in

taking the view that the second suit of the

plaintiff in the present case was barred by

Order 2 Rule 2 Sub-rule (3), CPC.”

94.Learned counsel for the respondent company also placed

reliance on another judgment of this Court in the case of

69

Heinz Italia and another v. Dabur India Limited (2007) 6

SCC 1 wherein this court observed that:

“… …. it has been repeatedly held 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. In Corn Products case

(supra) it was observed that the principle of

similarity could not to be very rigidly applied

and that if it could be prima facie shown that

there was a dishonest intention on the part of

the defendant in passing off goods, an

injunction should ordinarily follow and the

mere delay in bringing the matter to Court was

not a ground to defeat the case of the plaintiff.

It bears reiteration that the word "Glucon-D"

and its packaging had been used by Glaxo

since 1940 whereas the word "Glucose-D" had

been used for the first time in the year 1989.”

95.Mr. Sundaram further placed reliance on another

judgment of this Court in Ramdev Food Products (P) Limited

(supra), wherein it has been held that:

“Acquiescence is a facet of delay. The principle

of acquiescence would apply where: (i) sitting

by or allow another to invade the rights and

spending money on it; (ii) it is a course of

conduct inconsistent with the claim for

exclusive rights for trade mark, trade name,

etc.

70

In Power Control Appliances and Ors. v.

Sumeet Machines Pvt. Ltd. [1994] 1 SCR

708, this Court stated:

Acquiescence is sitting by, when

another is invading the rights and

spending money on it. It is a course

of conduct inconsistent with the

claim for exclusive rights in a trade

mark, trade name etc. It implies

positive acts; not merely silence or

inaction such as is involved in

laches.”

The court further observed that:

“The defence of acquiescence, thus, would be

satisfied when the plaintiff assents to or lay by

in relation to the acts of another person and in

view of that assent or laying by and

consequent acts it would be unjust in all the

circumstances to grant the specific relief.”

96.Mr. Sundaram, counsel for the respondent company also

submitted that use of a similar mark(s) by third parties is not

a defense to an illegal act of passing-off. He relied on a

judgment of Delhi High Court in Ford Motor Company of

Canada Limited and another v. Ford Service Centre 2009

(39) PTC 149, wherein the Court observed that:

“… do not find any merit in the plea of

defendant of two others, outside India using

FORD in relation to other business. Their case

71

is not before this Court for adjudication and

even if the plea of dilution was to be available

in an infringement action, no case of dilution

in India is made out. Recently the Division

Bench of this Court in Pankaj Goel v. Dabur

India Limited 2008 (38) PTC 49 (Delhi) held

that merely because others are carrying on

business under similar or deceptively similar

trademark or have been permitted to do so by

the plaintiff, cannot offer a licence to the world

at large to infringe the trademark of the

plaintiff. It was further held that even

otherwise, the use of similar marks by a third

party cannot be a defence to an illegal act of

passing off. In Castrol Limited v. A.K. Mehta

1997 (17) PTC 408 DB it was held that a

concession given in one case does not mean

that other parties are entitled to use the same.

Also, in Prakash Roadline v. Prakash Parcel

Service 1992 (2) Arbitration Law Reporter 174

it has been held that use of a similar mark by

a third party in violation of plaintiff's right is

no defence.”

97.Learned counsel for the respondent company also placed

reliance on Prakash Roadline Limited v. Prakash Parcel

Service (P) Ltd. 48 (1992) Delhi Law Times 390 the Delhi

High Court held that:

“… … … Merely because no action is taken

against certain other parties, it does not mean

that the plaintiff is not entitled to take action

against the defendant. The other parties may

not be affecting the business of the plaintiff.

They may be small-time operators who really

72

do not matter to the plaintiff. Therefore, the

plaintiff may not chose to take any action

against them. On the contrary the plaintiff

feels danger from defendant in view of the fact

that the defendant's promoters are the ex

Directors/employees of the plaintiff who are

fully in the know of the business secrets of the

plaintiff. Therefore, the mere fact that the

plaintiff has not chosen to take any action

against such other parties cannot disentitle

the plaintiff from taking the present action.

This contention is, therefore, prima-facie

without any merit and is rejected.”

98.Lastly, learned counsel for the respondent company

submitted that in any one of the following circumstances the

plaintiff would be entitled to injunctive relief even qua a

common word:

a.If the factors for justifying absolute protection as

per ‘absolute protection for common words’ have

been made out then it would ipso facto entitle the

plaintiff to protection against the world at large.

b.The protection would be given against any

particular defendant if the plaintiff’s name has

acquired a secondary meaning and the defendant

73

uses the name in a common field of activity, i.e.

where there are common purchasers. However, the

court may decline to grant the relief if such name is

descriptive of the defendant’s product and not just a

name unconnected with the defendant’s product.

c.The protection would be granted qua a defendant

with relation to even an unrelated product where

the tests of dishonest adoption are satisfied and the

defendant will be restrained from cashing in or

profiting from the plaintiff’s name.

99.We have heard the detailed and comprehensive

arguments advanced by the learned counsel for the parties.

We place on record our appreciation for the able assistance

provided by the learned counsel for the parties in this case. We

have also carefully examined relevant decided Indian, English

and American cases.

100.The respondent company’s mark ‘Eenadu’ has acquired

extra-ordinary reputation and goodwill in the State of Andhra

74

Pradesh. ‘Eenadu’ newspaper and TV are extremely well

known and almost household words in the State of Andhra

Pradesh. The word ‘Eenadu’ may be a descriptive word but

has acquired a secondary or subsidiary meaning and is fully

identified with the products and services provided by the

respondent company.

101.The appellant is a Karnataka based company which has

started manufacturing its product in Bangalore in the name of

‘Ashika’ and started selling its product in the State of Andhra

Pradesh in 1995. The appellant started using the name

‘Eenadu’ for its Agarbathi and used the same artistic script,

font and method of writing the name which obviously cannot

be a co-incidence. The appellant company after adoption of

name ‘Eenadu’ accounted for 90% of sale of their product

Agarbathi.

102. On consideration of the totality of facts and

circumstances of the case, we clearly arrive at the following

findings and conclusions :

75

a) The respondent company’s mark ‘Eenadu’ has

acquired extraordinary reputation and goodwill

in the State of Andhra Pradesh. The

respondent company’s products and services

are correlated, identified and associated with

the word ‘Eenadu’ in the entire State of Andhra

Pradesh. ‘Eenadu’ means literally the

products or services provided by the

respondent company in the State of Andhra

Pradesh. In this background the appellant

cannot be referred or termed as an honest

concurrent user of the mark ‘Eenadu’;

b) The adoption of the words ‘Eenadu’ is ex facie

fraudulent and mala fide from the very

inception. By adopting the mark ‘Eenadu’ in

the State of Andhra Pradesh, the appellant

clearly wanted to ride on the reputation and

goodwill of the respondent company;

c) Permitting the appellant to carry on his

business would in fact be putting a seal of

76

approval of the court on the dishonest, illegal

and clandestine conduct of the appellant;

d) Permitting the appellant to sell his product

with the mark ‘Eenadu’ in the State of Andhra

Pradesh would definitely create confusion in

the minds of the consumers because the

appellant is selling Agarbathies marked

‘Eenadu’ as to be designed or calculated to

lead purchasers to believe that its product

Agarbathies are in fact the products of the

respondent company. In other words, the

appellant wants to ride on the reputation and

goodwill of the respondent company. In such

a situation, it is the bounden duty and

obligation of the court not only to protect the

goodwill and reputation of the respondent

company but also to protect the interest of the

consumers;

e) Permitting the appellant to sell its product in

the State of Andhra Pradesh would amount to

77

encouraging the appellant to practise fraud on

the consumers;

f) Permitting the appellant to carry on his

business in the name of ‘Eenadu’ in the State

of Andhra Pradesh would lead to eroding extra-

ordinary reputation and goodwill acquired by

the respondent company over a passage of

time;

g) Appellant’s deliberate misrepresentation has

the potentiality of creating serious confusion

and deception for the public at large and the

consumers have to be saved from such

fraudulent and deceitful conduct of the

appellant.

h) Permitting the appellant to sell his product

with the mark ‘Eenadu’ would be encroaching

on the reputation and goodwill of the

respondent company and this would constitute

invasion of proprietary rights vested with the

respondent company.

78

i) Honesty and fair play ought to be the basis of

the policies in the world of trade and business.

103. The law is consistent that no one can be permitted

to encroach upon the reputation and goodwill of other parties.

This approach is in consonance with protecting proprietary

rights of the respondent company.

104. Consequently, the appeals are disposed of in terms

of the aforesaid observations and directions.

105. In the facts and circumstances of this case, the

parties are directed to bear their own costs.

………….….…….…………………… ..J.

(Dalveer Bhandari)

…………….…….……………………. .J.

(K.S. Panicker Radhakrishnan)

New Delhi;

March 3, 2011

79