N.M. Jamdar JUDGMENT
N.M. Jamdar, J.
1. MESO Private Limited, the Appellant-Plaintiff, manufactures and sells of various cosmetic products, including two perfumes with trademarks Legend and Flirt. The Liberty Group, the Respondents-Defendants, launched two perfumes with names Legend and Flirt. This led to MESO filing a Trade Mark suit in this Court and moving for an injunction to restrain Liberty from selling these perfumes. The learned Single Judge initially granted an ex parte ad-interim order of injunction, which was subsequently vacated. Being aggrieved, MESO approached with this appeal seeking a grant of an injunction against Liberty Group regarding these two products. We are not inclined to grant an injunction as prayed for. The factual backdrop and the reasons are as follows.
2. Ultima Cosmetic Private Limited conceived of the trademark Legend in July-August 1988 regarding cosmetics, essential oils, perfumes, perfumery etc. Ultima applied for registration of a trademark on 8 August 1988. Ultima got the trademark Legend registered under No. 495609 in Class-3 as referred to in the Trade Marks Act and the Rules.
3. Shebro Manufacturing Company, a partnership firm, conceived of trademark Flirt regarding soaps, essential oils, cosmetics, perfumery etc. Shebro registered the trademark Flirt under No. 636720 of Class-3 on 12 August 1994.
4. MESO was incorporated on 11 September 1992 as Mercantile Essential Oil Company (India) Private Limited. Its name was changed to MESO Private Limited on 16 October 1998.
5. On 28 June 2016, Shebro assigned the trademark Flirt to MESO. Ultima assigned the trademark Legend to MESO on 14 January 2019.
6. MESO sells the bottles of perfumes with names Legend and Flirt, and the bottles are packed in boxes bearing the respective trademarks with the house mark: Devon.
7. Respondent-Defendants Liberty Group was established in the year 1954. It manufactured and marketed footwear and lifestyle products and fashion accessories for a diverse class of consumers. Defendant No. 2 Liberty Lifestyle is not a legal entity, and it is a brand introduced by the Liberty Group (Liberty) for its various lifestyle products. Liberty has a presence through branch offices, distributors, multi-brand outlets and exclusive stores. It exports its products to various countries.
8. Liberty Group ventured into the luxury lifestyle products and in October 2018 introduced a new brand: Liberty Lifestyle. Wide publicity was given to that Liberty Lifestyle was planning to launch new Eau de Perfume range of 12 perfumes including perfumes with marks Legend and Flirt. It was to be sold on e-commerce websites like Amazon, Flipkart, and www.libertylifestyle.co.in., their website.
9. MESO wrote to Liberty Lifestyle on 3 November 2018 stating that they came across an article on 18 October 2018 publicizing the launch of the perfumes Legend and Flirt and called upon them to cease using the marks Legend and Flirt or any other marks identical to or deceptively similar to the MESO's trademarks. Liberty Lifestyle replied, stating that it was using the names Legend and Flirt for its products but claimed that they are commonplace, generic and dictionary words also used by others.
10. MESO filed Com IP Suit (L) No. 551 of 2019 in this Court on 26 April 2019 joining Liberty Lifestyle as Defendant No. 2 and Liberty Shoes Ltd. as Defendant No. 1 since, according to MESO, Defendant No. 1 through Defendant No. 2 appears to have ventured in lifestyle marketing. MESO took out Notice of Motion (L) No. 1184/2019 seeking relief that pending the hearing and final disposal, Liberty, their servants and agents be restrained by an order of injunction from manufacturing, packing, marketing, selling or using, in relation to essential oils, perfumes and perfumery compounds, cosmetics or any other goods in Class-3 of the Fourth Schedule of the Trade Marks Act, 1999 and Rules framed, the marks Legend or Flirt or any other mark identical to or deceptively similar to or containing the MESO's trademarks registered under Nos. 495609 and 636720 in Class 3, or any part thereof, to infringe the same. According to MESO, the trademarks Legend and Flirt are registered under Class-3, and MESO is entitled to an injunction to restrain Liberty Lifestyle from manufacturing, packing, marketing or selling the cosmetic goods in Class-3 of marks Legend and Flirt.
11. MESO moved the Notice of Motion for urgent relief by mentioning the matter before the learned Single Judge (S.J. Kathawala, J.) on 26 April 2019 at 11.00 a.m. and requested the learned Single Judge to take up the matter immediately. The learned Single Judge took the Notice of Motion on the same date. MESO had moved the Notice of Motion without giving notice to Liberty. According to MESO, if prior notice would have been given to Liberty, the goods would have been hidden by Liberty, to the surface at some later date and, therefore, an ex parte order was sought. The learned Single Judge accepted the explanation of MESO to move without notice to Liberty and considered the application for an injunction.
12. The learned Single Judge after considering the arguments observed that a prima facie case was made out by MESO since it had acquired statutory rights of marks Legend and Flirt. It was observed that the rival marks are identical and/or deceptively similar and the same are being used in respect of identical goods namely the perfumes. The learned Single Judge accepted the submission of MESO that there was no reason for Liberty to adopt identical trademarks for identical products and that it was not a matter of mere coincidence. The learned Single Judge observed that it was inconceivable that Liberty could ever have bona fide adopted the marks Legend and Flirt. He also opined that the adoption and use of these marks were deliberate and dishonest. The learned Single Judge issued an ex parte ad-interim order and restrained Liberty from manufacturing, packing, marketing, selling or using the goods in Class-3 of Fourth Schedule under the marks Legend and Flirt. The Court Receiver was appointed to take custody of the goods and was directed to keep the same in his safe custody. The order was directed not to be uploaded till the execution of the order by the Court Receiver. The order of injunction was to operate till 3 May 2019. Leave was granted to Liberty to apply for a variation of the order with advance notice to MESO.
13. Liberty moved the learned Single Judge for vacating the ex parte injunction by filing an affidavit on 2 May 2019. Liberty firstly contended that MESO is not a registered proprietor of Legend and Flirt and the assignment in its favour was doubtful. Liberty stressed upon extensive use of the generic words of Legend and Flirt by various parties and placed on record photographs of brands of perfumes which have used these two words Legend and Flirt. Liberty stated these two products are being sold under the well-known brand of Liberty associated with the Liberty Group for several years, and this Group has acquired a substantial reputation. It is stated that balance of convenience was in its favour and Liberty has spent a huge amount for promotion and advertisement of its perfumes and that the continuation of the injunction would cause substantial loss to Liberty.
14. The Notice of Motion was heard by the learned Single Judge K.R. Shriram, J. The learned Single Judge noted the earlier orders passed and the arguments. The learned Single Judge observed that the marks Legend and Flirt are commonplace marks and MESO was using them along with brand name DEVON. Liberty was using marks Legend and Flirt under its brand name LIBERTY. The learned Single Judge observed that there are various brands of perfumes whose products are available in the market in the name of Legend and Flirt with their brand names. The learned Single Judge concluded that ex parte ad-interim order in this suit could not be continued and vacated the same by order dated on 10 June 2019. The learned Single Judge directed Liberty to render accounts of sales and profits once in six months to MESO. MESO was given the right to inspect the accounts. The learned Single Judge discharged the Court Receiver and directed the Court Receiver to hand over the inventory to Liberty.
15. MESO has, therefore, approached us with this appeal being aggrieved by the order dated 10 June 2019 of vacating the ad-interim order and disposing of the notice of motion.
16. We have heard Dr. Virendra Tulzapurkar, learned Senior Advocate for Appellant-MESO and Dr. Abhinav Chandrachud learned Advocate for the Respondent-Liberty.
17. The learned Single Judge (Shriram, J) not only vacated the ad-interim order but dismissed the notice of motion as well. In these circumstances, the parties have addressed us on the grant of interim relief pending the suit instead of the grant of an ad-interim relief. The learned counsel also tendered submissions along with the relevant case-laws.
18. The trademarks Legend and Flirt are registered in the name of MESO. Legend is registered under No. 495609 and Flirt is registered under No. 636720. Both these trademarks (wordmarks) have been registered under Class-3. MESO does not sell these products in India but exports the same, and that is its primary revenue.
19. The learned Single Judge founded the rejection of the injunction primarily on the ground that Legend and Flirt are common words. The learned Single Judge also observed that MESO had sold the perfumes under its brand name DEVON while Liberty is selling the said products under its brand name LIBERTY. Further, the learned Single Judge observed that various other internationally renowned brands whose products would fall under Class-3 are in the market selling perfumes of marks Legend and Flirt. The learned Single Judge also posed a question as to whether MESO could have registered the marks Legend and Flirt.
20. In Appeal, MESO contends that since it is a registered proprietor of the marks Legend and Flirt, the infringement by Liberty is clear on the face of it. MESO contended that the registration of the marks Legend and Flirt relate to 1988 and 1994 and it is not the case of the Liberty that it has prior use. MESO further contends that the case of Liberty that the trademarks Legend and Flirt are common to trade is not tenable and there is no material placed on record to establish the defence of common to trade and that they are in substantial and extensive use and that they passed into realm of the generic to the extent that they can no longer be said to describe any particular purveyor or user. MESO relied upon the following cases to buttress the submission: Shree Nath Heritage Liquor Pvt. Ltd. and others v. Allier Blender and Distillers Pvt. Ltd.1; P.K. Overseas Pvt. Ltd. v. Bhagwati Lecto Vegetarians Exports Pvt. Ltd. MANU/DE/2716/2016 : 2016 (68) PTC 216 (Del); Pankaj Goel v. Dabur India Ltd. MANU/DE/2271/2008 : 2008 (38) PTC 49 (Del); Schering Corporation v. Killitch Co. (Pharma) Pvt. Ltd. 1994 (1) IPLR 1; Pidilite Industries Ltd. v. S.M. Associates MANU/MH/0021/2003 : 2004 (28) PTC 193; R.R. Oomerbhoy Pvt. Ltd. v. Court Receiver, High Court and others MANU/MH/0698/2003 : 2003 (27) PTC 580 (Bom); Corn Products Refining Co. v. Shangrila Food Products Ltd. MANU/SC/0115/1959 : AIR 1960 SC 142; and Charak Pharma Pvt. Ltd. v. Burnet Pharmaceuticals (Pvt.) Ltd. 2014 (57) PTC 538 (Bom).
21. It is, thus, the contention of MESO that if the defendant takes a defence of common to trade and fails to establish extensive use of the mark in question, the injunction should follow. To establish the plea of common to trade, the use by other persons has to be shown as substantial and extensive. The mere use of the name is irrelevant because the registered proprietor is not expected to go on filing suits and proceedings against the infringers, which is of no consequences. It contends that the defendant who sets up this defence of common to trade must not only show that it is in extensive use. Even at the interim stage, there must be a prima facie evidence to prove extensive use. Before the Court can accept that the marks in question are common to trade, basic essential ingredients must be satisfied, and the burden lies on the defendant to establish the same.
22. Liberty has, however, clarified that of common to trade is not its central defence but an ancillary one. Its main defence is that use of marks along with house mark/name does not result in the likelihood of confusion and, therefore injunction ought not to be issued.
23. First, we deal with the case of MESO in appeal that the learned Single Judge overlooked the fact Legend and Flirt are dictionary and common words, but they have no nexus with the perfumes. The trademarks Legend and Flirt are arbitrary in the sense they have no connection whatsoever with perfumes. It is contended that such arbitrary marks deserve the highest protection. We are not convinced that these words have no connection with perfumes. The dictionary meaning of 'Legend' is: a very famous person, especially in a particular field, who is admired by other people. 'Flirt' is a connotation of attraction between sexes. Human interactions are also founded on the olfactory senses. Perfumes are supposed to enhance the interaction. The perfumes are a product of complex chemistry. Popular literature is replete with the belief that perfumes contain pheromones which may enhance the attractiveness. These names suggest that the wearer of the perfumes will be perceived in a particular manner or will have certain desirable qualities. Thus, at this stage, MESO's contention that Legend and Flirt are arbitrary marks with no connection whatsoever with perfumes is difficult to accept as an absolute proposition.
24. The main contention of Liberty is that it is not infringing the marks Legend and Flirt because it is using these commonplace words along with its brand name, the house mark. Thus, use of its house name along with these marks, according to Liberty, constitute a valid defence as there is no likelihood of any confusion. If Liberty establishes this defence, then although the marks are registered in the name of MESO, the appeal will have to be dismissed.
25. Liberty seeks to base its defence on the language of section 29(2)(c) of the Trade Marks Act, 1999. It is fruitful to reproduce the relevant provisions of section 29, which read thus:
29. Infringement of registered trade marks.-- (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of--
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) ..
(5) ..
(6) ..
(7) ..
(8) ..
(9) ..
Section 29 of the Act of 1999 deals with infringement of trademarks. A registered trademark is infringed when a person not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with or deceptively similar to the registered trademark in relation to the goods and services for which the trademark is registered. Further, if the person uses the mark which is because of its identity with the registered trademark and similarity of good and services covered by such registered trademark and its identity with the registered trademark or likely to cause confusion on the part of the public or is likely to have an association with the registered trademark. Section 29(3) raises a presumption regarding the likely confusion on the part of the public if the usage by a person not a registered proprietor falls under clause (c) of sub-section (2) of section 29 of the Act of 1999.
26. Before enactment of the Act of 1999, the field was governed by the Trade Marks Act, 1940. Section 21 of the said Act of 1940 referred to a concept of 'likelihood to deceive or cause confusion' but, in a different context. In the case of Ruston & Hornsby Ltd. v. Zamindara Engineering Co. MANU/SC/0304/1969 : PTC (SUPP) (1) 175 SC, the Supreme Court had an occasion to consider the Section 21 of the Act of 1940. The Supreme Court observed that where the defendant's trademark was identical with the plaintiff's mark, it is unnecessary that the Court should enquire whether the infringement is likely to deceive or cause confusion. It is when the infringement is by way of the use of the mark not exactly as the registered mark but something similar to it. It observed that it is of the likelihood of confusion and deception arising from similarity of the marks is the same, both in infringement and passing-off. Under section 29(2)(c) of the Act of 1999, the concept of likely to cause confusion on the part of the public is even when two marks are identical. Importantly, section 29(3) though raises a presumption; it is a rebuttable presumption. We do not find from the language of section 29(3) that the presumption cannot be rebutted at the interim stage and must await a full trial. In the present case, based on the presumption, the learned single Judge had granted ad-interim relief, and upon rebuttal, it was vacated. Therefore, Liberty is right in contending that the concept of 'likely to cause confusion on the part of the public' is relevant as a defence against the action by a registered user of the mark.
27. The second facet of defence is regarding use of a mark along with House name by the registered owners and others. In Valvoline Cummins Ltd. v. Apar Industries Ltd.2, the Division Bench of the Delhi High Court observed that using the name of the company before the name of the product and mark differently by the plaintiff and the defendant thereof made the two products totally different. In another case of Peshawar Soap and Chemicals Ltd. v. Godrej Soaps Ltd. MANU/DE/0053/2001 : 2001 IIAD Delhi 452: 90 (2001) DLT 289, the Court held that using its house mark 'Godrej' along with the mark 'Nikhar' removed the likelihood of confusion. MESO has sought to distinguish these decisions submitting that in the case of Valvoline Cummins Ltd., the mark '4T Premium' was of a lubricant which was descriptive. It is contended that in the case of Peshawar Soap), the Court observed that expression Nikhar was descriptive of the product shampoo/soap. It is contended that the argument that the mark is used coupled with house name is not available in the present case. We are of the view that assuming the decisions in the cases of Valvoline Cummins and Peshawar Soap are based on different facts; a sequitur does not follow that the defence for the usage of a trademark along with house name with no likelihood of confusion, is not available in other cases.
28. This brings us to the core question as to whether using the words Legend and Flirt along with house mark Liberty is likely to cause confusion regarding the perfumes Legend and Flirt with house mark Devon used by MESO. Though there are various decisions on the law on the subject, the answer to this question will mainly depend on a specific set of facts and circumstance peculiar to each case. Further, we are considering the case at an interim stage.
29. To ascertain whether there is a likelihood of confusion in such matters, the Court must consider the mode of purchasing the goods, the class of consumers, surrounding circumstances and the degree of similarity. These factors would differ from case to case. The test of likelihood of confusion encompasses all factors relevant to the circumstances. The perception in the mind of the average consumer of the goods is the touchstone of the concept of the likelihood of confusion. Perception to be considered is of the average consumer of such products who is reasonably well informed and reasonably observant and circumspect.
30. We have been shown the wrappers of these perfumes. The wrapper of perfume marketed by MESO under the name Flirt has "FLIRT" printed on it in bold letters with "DEVON" also prominently written on the wrapper. Similar is the position with trademark Legend wherein "LEGEND" is written on the wrapper which also has "DEVON" written on the wrapper. Both these words 'legend' and 'Flirt' along with word "DEVON" appear on the same side of the wrapper. The wrappers of the perfumes marketed by Liberty also has words 'FLIRT and 'LIBERTY' written on the same side of the wrapper. The house names are clearly noticeable on these wrappers. The marks Legend or Flirt are, therefore, along with house name when the consumers notice these products. MESO is thus selling the products as Devon Legend and Devon Flirt, while liberty is selling them as Liberty Legend and Liberty Flirt.
31. Liberty has placed on record that the marks Legend and Flirt are being used along with respective house marks by various established brands. This fact has also been referred to by the learned Single Judge. In the reply filed before the learned Single Judge, Liberty has placed on record pictorial depiction of various companies which have used both the words Legend and Flirt along with their house marks. Mont Blanc is selling the product with product name "Mont Blanc Legend"; Azzaro Perfumes with "Chrome Legend"; De Rigo Vision with "Police Legend"; Sniff Perfumes with "I am Legend"; Empire Perfumes & Cosmetics with "Legend Black"; Yardley London with "Yardley London Gentleman Legend"; McNroe Consumer Products with "Wild Stone Legend"; Pierre Cardin with "Pierre Cardin Legend"; Mont Blanc Legend with "Legend Pour Femme"; Steve McQueen with "Steve McQueen Legend"; Michael Jordon with "Michael Jordon Legend Cologne"; Jafra with "Legend Hero"; and Jafra Legend with "Legend for Men".
32. Similarly, word Flirt is also used by renowned brand sellers. Flirt-Roll on Perfume use the said mark with "Flirt-Roll on Perfume"; Ramsons with "Flirt Eau de Parfum"; HNI with "B Flirt Perfume"; Eva Deo Spray, Flirt with "Eva Flirt"; Victoria's Secret with "Such A Flirt Body Mist"; Secret Temptation with "Flirt Deo Spray"; Perspective with "Flirt"; Pure romance with "flirt perfume"; EAU FLIRT by Harvey Prince with "Eau Flirt"; Victoria's Secret with "Pink Total Flirt Mist"; Omerta with "Desirable Pure Flirt"; Victoria's Secret with "Love to Flirt"; Ulric de Varens with "Mini Flirt"; and Victoria's Secret with "Such a Flirt Perfume". The Liberty has also placed the details of various third-party marks in respect of products in Class-3 both for Legend and Flirt. Thus it can be seen that words Legend and Flirt have been used regarding perfumes falling in Class-3 along with house names by various companies.
33. Liberty, in its reply, has asserted that its product is sold through its website www.libertylifestyle.co.in and is promoted through various social media platforms. They are sold through select Liberty outlets across the country and various e-commerce platforms like Amazon, Flipkart etc. If Liberty is selling the perfumes on its website, the consumers are fully aware that it is not a perfume under the house name Devon. Various online sellers give the option to search products by brand name, and adequate information is given, including the reviews to make an informed choice. The examples given by MESO of biscuits and fruit juice are not of premium lifestyle product and is not appropriate. It may be that in those products, the consumer do not specify the house name and only go by the mark; however, the choice and the selection of perfume is far more deliberate.
34. The average consumer of premium lifestyle product such as perfumes does not choose them causally. The average consumer's choice of perfume is influenced by the blends, diffusion, distillation and fragrance, concentration of perfume. Thus this product is not chosen with indifference. Various brands and houses aggressively build up associations with the house and brand names. Recommendations exchanged between average consumers are generally on the house names. A discerning consumer knows there could be various perfumes in the market with names Legend, Flirt, Gentlemen, but such consumer will first go by the name of the house or a group marketing such variants.
35. Therefore, the defence of Liberty that use of Legend and Flirt along with its house name will not cause confusion regarding the marks of MESO has to be accepted at this stage to sustain the order of refusal of an injunction. The learned single Judge has placed conditions on Liberty in respect of disclosure of accounts, which according to us are sufficient safeguards till the disposal of the Suit.
36. Because of this finding, the other aspects lose their relevance. For testing the validity of the registered trademark, the Act of 1999 lays down a procedure in a case where the defence of invalidating the trademark is raised. Liberty's argument that MESO is exporting its product and has zero sales in India is replied by MESO that section 56 of the Act of 1999, the export business in India constitutes user in India. According to Liberty, if MESO has no sales in India, there is no likelihood of confusion if Liberty sells the products with the names Legend and Flirt in India along with its house name. The learned Single Judge has referred to the aspect of MESO not having sales in India. We do not need to decide this aspect because of our finding that in this particular case there is no likelihood of confusion on the part of the public.
37. In the circumstances, we are not inclined to interfere with the impugned order. The appeal is dismissed. No costs.
1FAO(OS) 368 and 493/2014 decided on 6 July 2015.
2IA 16704/11 in CS(OS) 2597/11 decided on 25 November 2013
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