In a trademark battle over the use of the word ‘Eenadu’ between a Karnataka firm selling Agarbathis (incense sticks) and the newspaper group in Andhra Pradesh, the Supreme Court stated last week that allowing to sell Agarbathis with the same name would “definitely create confusion in the minds of the consumers.”
The Agarbathis, marked ‘Eenadu’, are calculated to lead purchasers to believe that its Agarbathies are in fact the products of the newspaper company, the court stated in its judgment in the case, T V Venugopal vs Ushodya Enterprises Ltd. Upholding the judgment of the high court, the Supreme Court stated that the Agarbathi firm wanted to ride on the reputation and goodwill of the other company in Andhra Pradesh. “In such a situation, it is the bounden duty of the court not only to protect the goodwill and reputation of the Andhra company but also to protect the interest of the consumers. The consumers have to be saved from such fraudulent and deceitful conduct,” the judgments said.
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDICTION
CIVIL APPEAL NOS. 6314- 15 OF 2001
T.V. Venugopal Versus Ushodaya Enterprises Ltd. & Another
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 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 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 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 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 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 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.
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.
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 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.
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:-
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 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 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, Oil, Lights & Bulbs, Tobacco Suraj
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’.
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 17
– `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).
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 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 3rd 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.
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 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 22
* 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.
43. The appellant submitted that the entire object of including the 4th 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 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 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:
