MANU/DE/0292/1996

Equivalent Citation: 64(1996)DLT52, 1996(39)DRJ470, 2003(39)DRJ470, 1996(16)PTC699(Del)

Equivalent Citation : 1996 (39)DRJ 470 ,2003 (39)DRJ 470

(1996)2ArbLR597Delhi

IN THE HIGH COURT OF DELHI

IA No. 8444 of 1994 in Suit No. 2115 of 1994

Decided On: 13.09.1996

Appellants:Roshan Lal Oil Mills Ltd.

Vs.
Respondent: Assam Company Ltd.

Hon'ble Judges/Coram:
Dr. M.K. Sharma, J.

Counsels:
For Appellant/Petitioner/plaintiff: Shri S.K. Bansal and Shri Bhagwati Prasad, Advs

For Respondents/Defendant: Shri B. S. Banerjee and Shri Mitul Roy, Advs.

Case Note:
Trade and Merchandise Marks Act, 1958 -Infringement and passing off--
plaintiff registered proprietor of Trade mark 'JUMBO LABEL' with device of
Aeroplane in respect of EDIBLE OILS coming in class 29--Defendant also using
Trade mark JUMBO LABEL' but with device of Elephant in respect of its
product TEA falling in class 30--There cannot be monopoly in the use of
trademark in respect of goods falling in different classes--Two marks also
visually dissimilar--Device used also different--No chance of deception--Ad-
interim injunction refused.

JUDGMENT

Dr. M.K. Sharma, J.

1. The plaintiff has instituted a suit for perpetual injunction restraining infringement of
trade mark, passing off and rendition of accounts in respect of the trade mark of the
plaintiff 'JUMBO LABEL' with device of Aeroplane in relation to edible oils (Mustard Oil).
The main relief sought for in the suit is for a permanent injunction restraining the
defendant, its servants, agents and others working on its behalf from manufacturing,
marketing, selling or offering for sale or otherwise dealing in Tea or any other allied
and cognate goods under the trade mark 'JUMBO LABEL' or any other trade mark
which may be deceptively similar to the plaintiff's trade mark 'JUMBO LABEL'.

2. In the suit the plaintiff has also filed an application under Order 39 Rules 1 & 2 of
the Code of Civil Procedure seeking for an ad interim injunction restraining the
defendants in the aforesaid terms from manufacturing the aforesaid articles under the
trade mark 'JUMBO LABEL' which may be identical and/or deceptively similar to the

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plaintiff's trade mark.

3. This court, while issuing summons to the defendants considered it fit to issue only a
notice to the defendants on the injunction application and did not grant any ad interim
injunction as prayed for by the defendants at that stage. Now the said injunction
application has come up for consideration and final disposal.

4. In order to appreciate the points and issues urged by the Counsel for the parties it is
necessary to delineate and recapitulate certain facts giving rise to the suit.

5. It is stated that the plaintiff is the proprietor of the trade mark 'JUMBO LABEL' with
device of aeroplane in relation to edible oils (Mustard Oil) and is registered in class 29
from 7.5.1980 in respect of edible oils. The plaintiff adopted the said trade mark in
respect of aforesaid goods from April 1973, and has been continuously using the same
till date. The business carried on by the plaintiff is very extensive and the aforesaid
trade mark 'JUMBO LABEL' with device of aeroplane has become distinctive and
associated with business of the plaintiff. The plaintiff has given vide publicity to the
said trade mark and in view of the same the said trade mark came to acquire a unique
reputation and enviable goodwill among the public and trade.

6. The defendants are engaged in the business of processing, offering for sale and
marketing tea and has adopted the trade mark 'JUMBO LABEL' with device of elephant
in respect of its product tea. The user of identical and/or deceptively similar trade mark
by the defendants of 'JUMBO LABEL' in relation to the same good or goods of the same
and cognate description is in clear and flagrant violation of the plaintiff's legal, vested
and statutory rights. According to the plaintiff the initial knowledge of the plaintiff of
the defendant using identical and/or deceptively similar trade mark was in the month
of August, 1994.

7. The defendants contested the suti by filing a written statement contending inter
alias that the trade mark of the defendant is entirely different to that of the plaintiff as
also the goods which are of different description. According to the defendants 'JUMBO
LABEL' is commonly used in all trades and is descriptive of the goods having no trade
mark value, and Therefore, the plaintiff is not entitled to claim exclusive use of the
word 'JUMBO LABEL' which is common to trade and publicity juris. According to the
defendant the trade mark of the defendant consists of 'JUMBO LABEL' containing a
device of elephant which is being used from 1977 to mean an elephant with the word
'JUMBO LABEL' which is a dictionary word and has no connection or relevance to the
meaning or impression of a 'JUMBO' aeroplane conveyed by the trade mark of the
plaintiff.

8. It is stated that the defendant has been openly using the said trade mark for a long
time and there could be no confusion or deception on the part of any one as the two
trade mark cannot be said to be either visually or phonetically similar, and also as the
goods dealt with by the plaintiff and defendants are dissimilar.

9. The principles governing the law of infringement and passing off and its distinction
and similarity is no longer rest integra in view of the decisions of the Supreme Court
and the High Court in K. B. Chinna Krishna Chettiar v. Sri Ambal & Co. and another
MANU/SC/0303/1969 : [1970]1SCR290 , Ruston & Hornby Ltd. v. Zamindara
Engineering Co. MANU/SC/0304/1969 : [1970]2SCR222 . K. R. Chinnikrisha Chetty v.
K. Venkatesa Mudaliar and another MANU/TN/0139/1974 : AIR1974Mad7 . East End
Hosiery Mills Pvt. Ltd. v. M/s. Agarwal Textile Mills MANU/WB/0002/1971 :

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AIR1971Cal3 .

10. The principle governing the grant of injunction in the matter of trade mark is also
by now well settled by the decisions of the Supreme Court and the High Courts, which
in my opinion, need no reiteration.

11. Learned Counsel for the plaintiff also drew my attention to the various provisions
of the Trade & Merchandise Marks Act and on the basis thereof as also on the basis of
the decisions of the Supreme Court and this court the Counsel submitted that although
the device might be different, yet the use of the very word 'JUMBO' can also amount to
a similarity which might cause deception or confusion in the minds of customers and
purchasers of these article which are purchased from the market by all classes of
persons including the illiterate persons. In support of his submission the learned
Counsel relied upon the decision of the Supreme Court in K. B. Chinna Krishna Chettiar
v. Sri Ambal & Co. and another (supra), Ruston & Hornby Ltd. v. Zamindara
Engineering Co. (supra), and of Bombay High Court in M/s. Eagle Potteries Pvt. Ltd. v.
M/s. Eagle Flask, Industries Pvt. Ltd. and in Kirloskar Diesel Reacon Pvt. Ltd. v.
Kirloskar Proprietary Ltd. (1996 (1) Arb. LR 636, and of this Court in Roshan Lal Oil
Mills Ltd. v. Shakti Industries 1995 PTR 140.

12. On the other hand the contentions of the defendant are that the word 'JUMBO' is
commonly used and descriptive in nature. The word 'JUMBO' with device of elephant
used by the defendant and 'JUMBO' with device of aeroplane used by the plaintiff, both
are descriptive words and Therefore, there cannot be a case of passing off or an
infringement in the present case. According to the defendants the colour combination
and lettering of both the trade marks are different and they are also different in design
and layout and the goods are also different and not allied goods. He also relied upon
various decisions of the Supreme Court in F. Hoffman Lr. Roche & Co. Ltd. v. Geoffery
Manners & Co. MANU/SC/0302/1969 : [1970]2SCR213 , where the words 'Dropovit'
and 'Protovit' were held to be not deceptively similar. The learned Counsel also relied
upon the decision of the Supreme Court in the case of J. R. Kapoor v. Micronix India
1994 PTC 260, where the words 'MICROTEL' and 'MICRONIX' were also held to be not
deceptively similar.

13. Learned Counsel for the defendants also drew my specific attention to a decision of
the Privy Council in Thomas Bear and Sons. v. Prayag Narayan and another
MANU/PR/0017/1940, wherein it was held that there cannot be a monopoly in the use
of a trade mark in respect of different goods. The same principle came to be reiterated
by the Supreme Court in a recent decision in Vishnudas Trading v. The Wazir Sultan
MANU/SC/0583/1996 : AIR1996SC2275 . He also relied upon the decision of this court
in Nestle's Products Ltd. v. M/s. Milkmade Corporation and another
MANU/DE/0199/1972 : AIR1974Delhi40 , wherein, it was held that in absence of trade
connection the use of same and similar words cannot constitute infringement of trade
mark. He also relied upon the decisions of Calcutta High Court in S. M. Chopra and
Sons v. Rajendra Prasad Srivastava MANU/WB/0060/1988 : AIR1988Cal326 , wherein
the concerned words were "RAJA" & "MAHARAJA" and it was held that they are not
deceptively similar and also in Rustom Ali Molla v. Bata Shoes Company
MANU/WB/0037/1957 : AIR1957Cal120 , where it was held that a person acquiring
exclusive right to a mark in connection with particular good cannot prohibit use to that
mark in different goods.

14. I have given my thoughtful consideration to the submissions made by the Counsel
for the parties. The question that arises for my consideration is whether the words
'JUMBO LABEL' with device of aeroplane and 'JUMBO' with device of elephant could be

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said to be descriptive and common in the business parlance and/or whether these two
words are deceptively similar to each other. The two words although have a common
word 'JUMBO', but they do not look to be similar. The average or ordinary purchaser
would be able to know the difference between the two when he goes to the market to
buy the said product. From the visual point of view as shown to me by the learned
counsel for the defendants during the course of arguments the two trade marks as
used by them in their respective goods appear to be also visually dissimilar and
Therefore, the decision of the Supreme Court relied upon by the learned counsel for
the plaintiff are not applicable. The two decisions of Bombay High Court in Eagle Flask
Industries Ltd. (supra) and Kirloskar Diesel (supra) and the decision of this court in
Roshan Lal Oil Mills (supra) are also distinguishable on the facts and circumstances of
the case, inasmuch, as in the present case goods in question are different and fall in
different class and the device used by both are also different and visually the two
marks are different.

15. In my opinion could be said that there is an innocent resemblance of the word
'JUMBO' between the two trade marks but it cannot be said that the defendants have
deceptively copied the trade mark in its letter and its essential features. It appears to
me the trade mark of the plaintiff denotes 'JUMBO' aeroplane whereas that of the
defendant denotes 'JUMBO' elephant. The idea is to convey superpower or strength in
strength in edible oils and tea respectively and, Therefore, it cannot be said that there
is an imitation by the defendant of the plaintiff's trade mark and that the defendant is
using the same with the sole object of diverting the business of plaintiff.

16. In this connection I may appropriately refer to the decision in the case of Coca
Cola Company of Canada Ld. v. Pepsi Cola 1942 (59) RPC 127. In that case the
question was whether the word 'COLA' was descriptive and commonly adopted in
naming of beverages. It was held that 'Cola' was descriptive and commonly used by
the manufacturers of non-alcoholic drinks. It was held that :

"The distinguishing feature of the mark Coca Cola was Coca and not Cola.
For the same reason the distinguishing feature of the mark Pepsi Cola was
Pepsi and not Cola. It was not likely that any one would confuse word Pepsi
with coca."

17. On analysis of all decisions placed before me including the decision in Vishnu Das
Trading (supra) wherein it is stated by the Supreme Court that if a trader or
manufacturer trades in one or some articles coming under a broad classification, such
trader or manufacturer cannot be permitted to enjoy monopoly, and applying the said
principles of law to the facts of the present case, I am prima facie of the opinion that
issuance of interim injunction at this stage is not called for in the present case.
Accordingly, the application filed by the plaintiff and registered as I.A. 8444/1994
stands dismissed. It is made clear that the findings arrived at by me herein are my
tentative and prima facie opinion and shall not be treated as my final and conclusive
opinion on the merits of the case.

18. I.A. dismissed.

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