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Hindustan Lever Ltd. Vs. Poineer Soap Factory - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtDelhi High Court
Decided On
Case NumberInterim Application No. 215 of 1983 and Suit No. 81 of 1983
Judge
Reported in24(1983)DLT237
ActsCode of Civil Procedure (CPC), 1908 - Order 39, Rules 1 and 2
AppellantHindustan Lever Ltd.
RespondentPoineer Soap Factory
Advocates: Anoop Singh,; Manmohan Singh,; H.P. Singh,;
Cases ReferredCorn Products Refinding Co. v. Shangrila Food Products
Excerpt:
the case focused on the suit filed for perpetual injunction under order 39 rules 1 and 2 of the civil procedure code, 1908 -it was requested that the mark 'suraj' being equivalent to the word 'sun' would have to be considered deceptively similar - the evidence on record showed that there was likelihood of defendant's product being passed off as that of plaintiff - in view of the said fact, it was ruled that the defendant would be restrained from using the offending the mark 'suraj' till final decision of suit - - 256924000.00 .it is well advertised and advertisement expenses for that year alone were to the tune of rs. for the decision of the application i am satisfied that mark 'suraj' being equivalent in english to the trade mark 'sun' is to be considered deceptively similar......relation to soap continuously and regularly and are also manufacturing and selling their sunlight soap registered under various numbers in the trade marks register. it is alleged that their sale of sunlight soap for the year 1981 is rs. 256924000.00 . it is well advertised and advertisement expenses for that year alone were to the tune of rs. 15,05,000.00 . (5) the grievance of the plaintiff is that the defendants have started manufacturing and marketing a soap under the trade mark suraj. it is pleaded that the word suraj is the vernacular translation of the mark sun and is an infringement of the plaintiff's registered trade marks. it is alleged that the defendants' soap suraj is being passed off and is likely to be passed off as the soap of the plaintiff. it is further submitted that.....
Judgment:

Charanjit Talwar, J.

(1) This is a suit filed by Hindustan Lever Limited against Poincer Soap Industries and its partner/proprietor, Shri N. K. Bansal, for perpetual injunction, infringement of trade mark, passing off and rendition of accounts, etc.

(2) It is the case of the plaintiff that it is the leading soap manufacturer of India. It is registered proprietor of eleven trade marks. One of them is Sun word parse under No. 147011 in Glass 3 in respect of bleaching preparations and other substances for laundry use, detergents (not for use in industrial process) and soaps. This trade mark has been renewed since 19th January, 1951, from time to time and is subsisting on the Register of Trade Marks. The other trade mark is Sunlight with the device of rays of sun under No 87107 in Glass 3 in respect of soaps and substances for laundry use. This mark is also subsisting and has been renewed from time to time from 9th October, 1943. Other trade marks are Sun Silk, Sunshine, Sun BEAM. Four of the trade mark labels with the word Sunlight are in respect of soaps and substances of laundry use. Sunlight word per sc, it is averred, is the registered trade mark of the plaintiff under No. 87099.

(3) The plaintiff claims that all the trade marks have been renewed from time to time and are valid and subsisting.

(4) It is the further case of the plaintiff that they are using their trade mark Sun in relation to soap continuously and regularly and are also manufacturing and selling their Sunlight soap registered under various numbers in the Trade Marks Register. It is alleged that their sale of Sunlight soap for the year 1981 is Rs. 256924000.00 . It is well advertised and advertisement expenses for that year alone were to the tune of Rs. 15,05,000.00 .

(5) The grievance of the plaintiff is that the defendants have started manufacturing and marketing a soap under the trade mark SURAJ. It is pleaded that the word Suraj is the vernacular translation of the mark Sun and is an infringement of the plaintiff's registered trade marks. It is alleged that the defendants' soap Suraj is being passed off and is likely to be passed off as the soap of the plaintiff. It is further submitted that besides infringement of the trade marks, the defendants have marked, designed and labelled their soap Suraj with Sun device similar in get up so that their soap is passed off as soap of the plaintiff.

(6) By this application the plaintiff seek ad interim injunction restraining the defendants from using the offending mark SURAJ.

(7) The defendants in their reply to this application have not denied that they are marketing their soap under the mark Suraj with the Sun device. Their case, however, is that their trade-mark Suraj has no similarity whatsoever with the trade mark of the plaintiff and thus the defendants are not infringing the plaintiff's registered trade marks. It is further denied that the soap Suraj is being passed of or is likely to be passed off as the soap of the plaintiff. The plea of the defendants is that the application seeking grant of injunction is false, mala fide and thus liable to be dismissed.

(8) In support of his contention Mr. Anoop Singh, learned counsel .for the plaintiff, relied on T.G. Balaji Chettiar v. Hindustan Lever Ltd., : AIR1967Mad148 . In the said case infringement of trade marks of the present plaintiff by the appellant Balaji Chettiar, a manufacturer of soaps, was the subject-matter of the appeal. The appellant therein had filed three applications before the Registrar of Trade Marks for registration of trade mark 'surian' on the ground that he had been carrying on buginesi of manufacture and sale of soaps using that mark for a very long time. The said applications were contested by M/s. Hindustan Lever Limited and, after hearing, were rejected by the Assistant Registrar of Trade Marks, Madras. It was found by him that the mark 'Surian' is the translation in Tamil of the word Sun and is, thereforee, deceptively similar to the mark of the Hindustan Lever Limited and as such the prohibition of Section 12(1) and Section 11(a) of the Trade and Merchandise Marks Act was applicable. Upholding this finding it was observed by Madras High Court that there was no doubt that a Tamil knowing purchaser not conversant with English would consider Surian mark soap as the product of the respondent (Hindustan Lever Limited). Thus there was danger of the appellant's soap with Surian marks being dumped into the market and passed off as the Sunlight Soaps manufactured by the respondent. Ramamurti,J. noticed the decision of the Hyderabad High Court in which the application of a proprietor of a soap factory for registration of his trade mark Prabhat Soap was refused on the ground that Prabhat in Hindi language means Sun. In the Hyderabad case (Bala krishanyya v. Registrar of Trade Marks for Hyderabad ILR (1954) Hyd 694) also the opposition to the registration was by Lever Brothers, plaintiff herein. The ground in the said case was that the use of the word Prabhat the Hindi equivalent of the English word Sunlight would cause deception and confusion in the market. Reliance was on these very registered trade marks which are the subject-matter of this suit.

(9) Mr. Anoop Singh further relied upon J. 0. Eno Ltd. v. Vishnu Chemical Co. Air 194 Bom 3, in support of his contention that the use of infringing marks not only in the same language but the use of those words in any other language being likely to deceive, is liable to be restrained. That was a case of passing offaction. The plaintiffs were the manufacturer of saline under the names 'Eno' and 'Fruit Salt'. The defendants were manufacturing and marketing a saline 'Falaxar' which word was equivalent in Marathi to the mark of the plaintiffs It was held that the plaintiffs had the right to the exclusive use of the words 'Eno' and 'Fruit Salt' in connection with their saline and that no one had a right to use those words in any language in connection with similar goods as that was likely to cause deception. The defense that an educated person knowing both Marathi and English would read the whole of the offending label and thus would not to be deceived, was rejected. Blackwell J. observed 'But unfortunately the world is full not of careful but of careless persons and of people who frequently arc not careful to read the whole of every thing that they ought to read and in my opinion looking at the general get up of the Exhibit (E) and seeing the word (Falaxar) thereon, even an educated person might be misled into thinking that he was getting the plaintiffs' fruit salt'.

(10) It was urged by Mr. Anoop Singh that even in cases where there is similarity of idea between the registered trade mark and offending trade mark, an action for passing off was maintainable. For this proposition he cited Corn Products Refinding Co. v. Shangrila Food Products, : [1960]1SCR968 .

(11) Another case cited on behalf of the plaintiff is reported in (1901) 18 R.P.G. 181 In the matter of the Application of Pomril Ld., for Registration of a Trade Mark. In the said case the company who were the registered proprietors of a Trade Mark 'Pomril' for cider, applied for registration of a mark consisting of a representation of the cut side of half an apple, cut vertically, with the word 'Pomril' across it. The Comptroller of trade marks required the company to obtain the consent of the owners of another trade mark 'Apple Brand' registered for ciders. That mark comprised inter alias the Words 'Apple Brand' and further the representation of an apple, As the consent was not obtained the application was refused. The company thereupon appealed to the Board of Trade who referred the appeal to the Court. While dismissing the appeal it was held that the proposed mark was likely to lead to the word 'Apple' or the words 'Apple Brand' being associated with the goods sold under it and, thereforee, was likely to deceive.

(12) Mr. K.K. Mehra, learned counsel for the defendants contended that under the scheme of the Act, while deciding the question of similarity between the two marks, the marks have to be considered as a whole. He urged that the translation of the mark by itself without there being similarity in the get-up and design, cannot be taken to be an infringement. He sought to distinguish the cases cited by Mr. Anoop Singh. His argument was that in Balaji Chettiar's case (supra) registration was refused because on evidence it was found that the offending trade mark 'Surian' had actually led to deception and confusion because of the similarity in the design and get up. He urged that in J .C. Eno's case (supra) it had been proved that the get up of the offending mark 'Falaxar' was similar to the mark of the plaintiffs therein. In the present case he urged that the except for the translation of the word ''Sun' in Hindi, there is no similarity. The label of the plaintiff is yellow and blue whereas the defendant's label is red in colour with white background. The sun-rays shown on the defendant's label are not portrayed on the plaintiff's label. He contended that at any rate there was no evidence that a washing soap with the mark 'Sun' had been marketed by the plaintiff. He further contended that there was no evidence that the soap being marketed by the defendant has been passed off as that of the plaintiff.

(13) At this stage I am not called upon to decide the entire case on merits. It is the plaintiff's case that the defendant's soap is being or is likely to be passed off as that of the plaintiff. Whether infact there has been any deception caused by the defendant's product is to be decided after the parties have led their evidence. While deciding this application under Order 39 Rules I and 2 of the Code of Civil Procedure all that I have to see is whether prima facie the commodity concerned is likely to deceive the customers of the goods in question. Admittedly, the product is the same, i.e., washing soap. Suraj is the Hindi translation of the English word 'Sun'. For the time being thereforee I have to assess whether there is scope for confusion in the minds of the public with regard to the two marks. Applying the ratio of the cases referred to earlier prima facie the plaintiff has been able to make out a case in its favor. For the decision of the application I am satisfied that mark 'Suraj' being equivalent in English to the trade mark 'Sun' is to be considered deceptively similar. It is the case of the plaintiff that its sale of its product 'Sunlight', as per Annexure 'L', lor the year 1981 alone was Rs.256824000.00 . This sale is likely to be affected because there is likelihood of the defendant's product being passed off as that of the plaintiff. The balance of convenience, thereforee, also demands that defendant be restrained from using the offending mark 'Suraj' till the final decision of the suit.

(14) In the result, this application is allowed and the defendant is restrained from using the offending mark 'Suraj' till the final disposal of the suit. No order as to costs.

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