TRADE MARK:: ” determination of similarity depends on whether a consumer with ordinary intellect would be able to distinguish the goods on the basis of the marks. Held use of TALVAR results in an association with SWORD in the minds of the consumer. Additionally, Justice Endlaw opined that the presence of ZORRIK, which is phonetically and visually distinct from WILKINSON, does not save the respondents because it is not perceived to affect the association of SWORD and TALVAR. Further, the court also relied on the wording of Section 2(1)(zb)(ii) of the Trade Marks Act, 1999, which defines a trademark to include marks “…whether with or without any indication of the identity of that person…”. In the paradigm of similarity, the court extended this provision to render irrelevant the existence of a phonetic difference between ZORRIK and WILKINSON.

IN THE HIGH COURT OF DELHI AT NEW DELHI
%                                         Date of decision: 9th July, 2018
+                               CS(COMM) 153/2017

      THE GILLETTE COMPANY LLC                                  ..... Plaintiff
                         Through:
                            Mr. Sudhir Chandra & Mrs. Prathiba
                            M. Singh, Sr.Advs. with Mr. Vikram
                            Grover, Mr. Siddhanth Sharma & Mr.
                            Devanshu Khanna, Advs.
                          Versus
    TIGAKSHA METALLICS PRIVATE LTD. & ANR ...Defendants
                  Through: Mr. Rahul Chitnis, Mr. R. Sudhinder,
                            Mr. Ranjit Shetty & Ms. Akanksha,
                            Advs. for D-1.
                            Mr. Sandeep Sethi, Sr.Adv. with Mr.
                            Ranjit Shetty, Mr. R. Sudhinder &
                            Ms.Akansha, Advs. for D-2.
HEAD NOTE::;
TRADE MARK:: " determination of similarity depends on whether a consumer with ordinary intellect would be able to
 distinguish the goods on the basis of the marks. Held use of TALVAR results in an association with SWORD in the 
minds of the consumer. Additionally, Justice Endlaw opined that the presence of ZORRIK, which is phonetically and 
visually distinct from WILKINSON, does not save the respondents because it is not perceived to affect the association 
of SWORD and TALVAR. Further, the court also relied on the wording of Section 2(1)(zb)(ii) of the Trade Marks Act, 1999,
 which defines a trademark to include marks “…whether with or without any indication of the identity of that person…”. 
In the paradigm of similarity, the court extended this provision to render irrelevant the existence of a phonetic
 difference between ZORRIK and WILKINSON.


CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

IAs No.2502/2017 (of plaintiff u/O XXXIX R-1&2 CPC) & 3523/2017 (of
defendants u/O XXXIX R-4 CPC)

1.    The plaintiff has instituted the present suit against the two defendants

namely Tigaksha Metallics Private Limited and Supermax Personal Care

Pvt. Ltd., for permanent injunction restraining the defendants from infringing




the trade marks                     /              / WILKINSON SWORD
LEMON SPLASH of the plaintiff by adopting the marks TALVAR and




CS(COMM) 153/2017                                                  Page 1 of 36
              and/or the device of a sword and/or deceptive variation/s of the
plaintiff‟s trade marks and from thereby passing off their goods as that of the
plaintiff and for ancillary reliefs of delivery, rendition of accounts, damages,
etc.

2.     The suit came up before this Court first on 27 th February, 2017, when
while issuing summons of the suit, the defendants were restrained from
producing/manufacturing and/or from releasing the already manufactured
and packed goods under the trade mark „TALVAR‟ or the device mark
„TALVAR‟ with the sword.

3.     The two defendants, besides filing their written statement, have also
filed application aforesaid under Order XXXIX Rule 4 of the Code of Civil
Procedure, 1908 (CPC). Replication has been filed by the plaintiff to written
statement of defendant No.2.

4.     The senior counsel for the plaintiff and the senior counsel for the
defendant No.2 were heard on 20th March, 2017 and orders reserved.

5.     The plaintiff, in the plaint has pleaded the following comparative
packaging of the plaintiff and the defendant‟s products:




CS(COMM) 153/2017                                                    Page 2 of 36
 CS(COMM) 153/2017   Page 3 of 36
       and has further pleaded the following commonalities therein:

      a)     Use of „TALVAR‟ being literal translation of the word
      „SWORD‟ which forms a prominent part of the plaintiff‟s registered



      trade marks                     /                      / WILKINSON
      SWORD LEMON SPLASH;

      b)     Use of a double-edged sword device along with the word
      „TALVAR‟ which is conceptually and visually similar to depiction of
      the    sword    in   the    plaintiff‟s   registered    trade    marks




CS(COMM) 153/2017                                                 Page 4 of 36
                          /                 / WILKINSON SWORD LEMON
      SPLASH;

      c)     Manner of use of the word „TALVAR‟ along with the device of



      double-edged sword device i.e.                        which is conceptually



      similar to the plaintiff‟s                       /             ;




      d)     Representation of TALVAR i.e.                         in slant/italics



      which is similar to                       ;




      e)     The    plaintiff‟s    registered       marks                               /




                       / WILKINSON SWORD LEMON SPLASH and the



      defendant‟s mark                  / TALVAR are being used in respect of
      identical products i.e. safety razor blades;




CS(COMM) 153/2017                                                        Page 5 of 36
        f)     Use of the word „TALVAR‟ which also appears on the
       packaging of products bearing the plaintiff‟s registered trade marks
       viz. tagline „‟TALVAR KI DHAAR‟.

6.     It is further pleaded by the plaintiff, (i) that its first registration of the




mark                          in Class 8 is of as far back as on 16th June, 1962




and of the mark                            in Class 3 of 11th July, 1996 and in
Class 21 of 7th February, 1997; (ii) that the plaintiff, for the first time in
December, 2016 came across products of the defendant under the impugned
mark; (iii) that the defendants, apart from the word „TALVAR‟, have also
adopted the device of double-edged sword to their product; (iv) that
dishonesty and mala fide is writ large from the defendants copying the
concept and the manner of representation of the plaintiff‟s trademark of
device of double-edged swords placed across the expression „WILKINSON
SWORD‟; the defendants have also adopted a literal translation of
„SWORD‟ viz. „TALVAR‟, solely on account of the fact that majority of the
Indian consumers seek plaintiff‟s product as „do talvar wale blades / talvar
blade‟ and the products under the trade marks of the plaintiff are offered for
sale under the tagline "TALVAR KI DHAAR"; (v) that the plaintiff‟s search
through records of the trademark registry also revealed that the defendant
No.2 has filed applications for registration of „TALVAR‟ in Class 8, on 16th
June, 2016, on proposed to be used basis; (vi) that the defendants, being in
the same line of business, were aware of the mark and reputation of the
CS(COMM) 153/2017                                                        Page 6 of 36
 plaintiff; (vii) that the defendants adoption and use of            which are
deceptively similar to the plaintiff‟s registered trade marks, in relation to
identical goods/products, tantamounts to infringement of plaintiff‟s statutory
rights and leads to the defendants passing off their goods as that of the
plaintiff.

7.     The defendant No.1 has contested the suit by filing a written
statement, merely pleading that it adopts the contents of the written
statement of the defendant No.2.

8.     The defendant No.2 has contested the suit pleading, (a) that the
defendants manufacture and sell their shaving blades under various trade
marks including „ZORRIK‟; the defendants have coined various trade marks
comprising the word „ZORRIK‟ namely „ZORRIK PLATINUM‟, „ZORRIK
STAINLESS‟ and now „ZORRIK TALVAR‟; (b) that the defendants have
been selling the blades under the trade name „ZORRIK‟ for more than 50
years; (c) that the plaintiff used the word sword in combination with the
words „SUPER STAINLESS‟ and „SUPER PLATINUM‟; the defendants
use the word in combination of the „SUPER PLATINUM‟ and „SUPER
STAINLESS‟ and have been doing so for years, without any instance of
confusion or deception; (d) that in or about June, 2016, the defendants
conceived and invented the trade mark „TALVAR‟ and the device of
„TALVAR‟ with a sword, for their razor blades; (e) that the trade mark
„SWORD‟ is neither the registered trade mark of the plaintiff nor is
„TALVAR‟ a registered trade mark of the plaintiffs; in fact, „SWORDS‟ is
registered in the name of one Favourite Universal Abrasives Private Limited
CS(COMM) 153/2017                                                  Page 7 of 36
 and „SWORD‟ is registered in the name of KDN Tools Private Limited; the
plaintiff has concealed from the Court that they are not registered proprietor
of the word or device of „SWORD‟; (f) that the defendant No.2, on 16th June,
2016 also applied for registration of the trade mark „TALVAR‟ and device
mark „TALVAR with a sword‟, in Class 8; (g) that since the razor blade
under the trade mark „ZORRIK TALVAR with a sword‟ was launched in
June, 2016, the defendants have acquired a very high reputation and
goodwill for its razor blades and have between June, 2016 and February,
2017 sold razor blades bearing the trade mark „ZORRIK TALVAR with a
sword‟ worth more than Rs.6.87 crores and spent more than Rs.2 crores
towards advertisement; (h) that the target market of the plaintiff and the
defendants is totally different and the question of confusion or deception
does not arise; the price of the product of the plaintiff is much higher than
that of the defendants; (i) that the plaintiff‟s claim that representations
„WILKINSON SWORD‟ (device and word) constitute original artistic works
under the Copyright Act, 1957 is without any basis, as the plaintiff has not
shown the acquisition of rights from the artist who created the artwork; (j)
that the plaintiff always uses the trade mark „SWORD‟ in conjunction with
the word „WILKINSON‟; on the contrary, the defendants used the trade
mark „TALVAR‟ in conjunction with their house mark „ZORRIK‟; thus, the
products are easily distinguishable to a layman; (k) that the representation of
the swords (containing a fist guard) used in the device of the plaintiff is
different from the representation of the sword (without any fist guard) used
in the device of the defendant; (l) that the two trade marks are distinct from
each other; (m) that the consumers of the blades are barbers, who are experts
in the field and are able to distinguish between the two; and, (n) that the

CS(COMM) 153/2017                                                   Page 8 of 36
 plaintiff has approached the Court more than six months, after the defendants
have been using the mark.

9.    The senior counsel for the plaintiff argued, (I) that the defendants, in
para 51 of the affidavit in reply to the application under Order XXXIX Rules
1&2 of the CPC, have denied that the products bearing the plaintiff‟s trade
mark „WILKINSON SWORD‟ (device or word) are sold with the tagline
"TALVAR KI DHAAR" or that the expression „TALVAR‟ is identified with
the products emanating from the plaintiff; attention is invited to the dangler
of the plaintiff‟s product / packaging and on which the words in Hindi
„TALVAR KI DHAAR‟ are found; (II) that the same shows the falsity of the
defence of the defendants; (III) that the mala fides of the defendants are also
evident from the fact that the defendant No.2 also applied for registration of
a mark infringing the '7 O‟CLOCK' mark/brand of the plaintiff and which,
on opposition by the plaintiff, was withdrawn; (IV) that „TALVAR‟ is the
equivalent of the word „SWORD‟; (V) that this Court has in the past granted
injunctions against such translated marks; an example is given of Sun : Suraj,
Peacock : Mayur cases and of Eno : Falaxar case of the Bombay High Court;
(Hindustan Liver Ltd. Vs. Pioneer Soap Factory 1983 PTC 211, Bhatia
Plastics Vs. Peacock Industries AIR 1995 Del 144 and J.C. Eno Ltd. Vs.
Vishnu Chunilal Co. 1940 XLII Bom. LR 1924); (VI) that the test is what is
the idea conveyed by the mark; (VII) that in any case, the plaintiff, besides
on the basis of infringement, has also sued on the basis of passing off; (VIII)
that the word „TALVAR‟ is also used in the radio advertisement of the
product of the plaintiff; (IX) attention is invited to para 10 of Laxmi Kant V.
Patel Vs. Chetan Bhai Shah (2002) 3 SCC 65; (X) what is to be seen is,
whether the mark used by the defendants is similar to the association/link in
CS(COMM) 153/2017                                                   Page 9 of 36
 the minds of the customers with respect to the plaintiff‟s mark; (XI) that the
barbers, who are admitted to be the customers of the plaintiff as well as the
defendants, refer to the product of the plaintiff as „TALVAR‟; (XII) that
though „SUN‟ used as a mark had no relationship to soap but „SWORD‟ has
a direct relationship to a blade; (XIII) attention was drawn to the judgment
dated 30th May, 2014 of the Division Bench of this Court in FAO(OS)
No.241/2014 titled Procter & Gamble Manufacturing (Tianjin) Co. Ltd.
Vs. Anchor Health & Beauty Care Pvt. Ltd.; (XIV) that the present is not a
case of similarity between two marks but of the two marks being the same;
(XV) that adoption by the defendants of the mark „TALVAR‟ is not honest;
(XVI) that there is no delay in the plaintiff approaching the Court but even
otherwise, delay is immaterial; reliance is placed on Midas Hygiene
Industries P. Ltd. Vs. Sudhir Bhatia 2004 (28) PTC 121 (SC); (XVII) that
J.C. Eno supra has been concurred with in Hitachi Ltd. Vs. Ajay Kumar
Aggarwal ILR 1996 1 Delhi 359; (XVIII) that a lis of the present kind is not
merely a private lis between two parties, inasmuch as the interest of the
consumers is also relevant; reliance is placed on Hindustan Pencils Pvt. Ltd.
Vs. Indian Stationery ILR (1989) I Delhi; (XIX) CD of the radio
advertisement of the plaintiff was handed over and attention was drawn to
page 196 of Part III file being the dangler hanging outside the barber‟s shop
of the products of the plaintiff.

10.   Per contra, the senior counsel for the defendant No.2, (A) highlighted
the following differences in the packaging:




CS(COMM) 153/2017                                                  Page 10 of 36
       (i)     while the bulk packaging of the product of the plaintiff is in
      white and blue colour, the bulk packaging of the product of the
      defendants is in red colour;

      (ii)    similarly, the unit packaging of the product of the plaintiff is in
      white and blue colour, while the unit packaging of the product of the
      defendants is largely in red colour with a small portion in white
      colour;

      (iii)   while the mark of the plaintiff has two swords across with each
      other, the mark of the defendants has a single sword;

      (iv)    while the mark of the plaintiff, in addition to the swords, has the
      word „WILKINSON‟, the mark of the defendants, in addition to the
      single sword, has the word „ZORRIK‟;

      (v)     the unit price of the product of the plaintiff is Rs.27/-, the unit
      price of the product of the defendant is Rs.16/- only;

(B)   that the test of deception, similarity and likelihood of confusion is not
satisfied; (C) that the barber, who deals with a blade multiple times in a day,
knows the difference; (D) that the defendants are not a start up and are the
second largest manufacturer/seller of the product in the world, having a
turnover of Rs.603 crores; (E) that the plaintiff‟s mark is a label mark and
not a word mark with a disclaimer for sword; (F) that the plaintiff has no
right of registration to exclusive use of the word „SWORD‟; (G) that the
entire case of the plaintiff is of the mark of the defendants having the word
„TALVAR‟, the Hindi equivalent of the word „SWORD‟ but the plaintiff has
no exclusive right to the word „SWORD‟; (H) reliance is placed on
Carlsberg India Pvt. Ltd. Vs. Radico Khaitan Ltd. 186 (2012) DLT 368
CS(COMM) 153/2017                                                     Page 11 of 36
 (DB) to contend that the two marks do not satisfy the essential features test
laid down by the Supreme Court in SM Dyechem Vs. Cadbury (2000) 5
SCC 573; (I) that the entirety of the mark has to be seen and merely parts of
the mark cannot be compared; (J) reliance is placed on Takkar (India) Tea
Company Vs. Soongachi Tea Industries Pvt. Ltd. 2010 (44) PTC 90 (Del),
where „GOLD LEAF‟ was not held to be deceptively similar to „SONA‟; (K)
that translated word per se is not an infringement; reliance is placed on J.K.
Oil Industries Vs. Adani Wilmar Limited 2010 (42) PTC 639 (Del), where
merely on account of appearance of the word „KING‟ on both the marks, no
case of infringement or passing off was held to be made out; (L) reliance was
placed on Kellogg Company Vs. Pravin Kumar Bhadabhai 1996(16) PTC
187 (Del) (DB), where from the mere writing of the word „Aims Aristo Corn
Flakes‟ at about the same place on a carton more or less the same size as that
of the appellant, no infringement of „Kellog‟s Corn Flakes‟ was found; (M)
attention was drawn to Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna
Pharmaceutical Laboratories AIR 1965 SC 980 laying down the test of
passing off; (N) reliance was placed on paras 12 & 14 of the judgment dated
10th March, 2017 of the Division Bench of this Court in FAO(OS)(COMM)
77/2016 titled Britannia Industries Ltd. Vs. ITC Limited to contend that for
grant of relief on the basis of passing off, it has to be established that the
mark has become distinctive and that in these days a difference in names is
enough to warn the public that they are getting one trader‟s goods and not
the other‟s; (O) that the plaintiff cannot insist that none else can claim its
blade to be as sharp as the edge of a sword; (P) that the plaintiff could not
have got the word „TALVAR‟ registered.


CS(COMM) 153/2017                                                  Page 12 of 36
 11.    The senior counsel for the plaintiff, in rejoinder (i) drew attention to
page 168 of Part III file being the registration in Class 8 of the mark




                     to contend that there is no disclaimer with respect to the
word „SWORD‟ and the disclaimer was only to the word „WILKINSON‟;
(ii) drew attention to page 174 of Part III file being the registration of the




mark                        in Class 21 and which contains disclaimer with
respect to „SWORD AND PICTURE‟; (iii) drew attention to page 176 to



demonstrate the registration of the device mark                      is also in
Hindi, Marathi, Bengali, Telugu, Gujarati, Kannada, Tamil and other
languages and contended that transliteration is definitely infringement; (iv)
contended that „SWORD‟ is definitely a prominent part of the mark of the
plaintiff; (v) that the defendants have not furnished any explanation for
adoption of „TALVAR‟; (vi) that the defendants having themselves applied
for registration of „TALVAR‟, cannot be permitted to argue that it is a
descriptive word; attention in this regard is drawn to Procter & Gamble
Manufacturing (Tianjin) Co. Ltd. supra; (vii) that „SWORD‟ is not
descriptive of razor alone and can be descriptive of knife also; (viii) that
however „SWORD‟, owing to the long user by the plaintiff, has become
descriptive of the product of the plaintiff; (ix) that the defendants, by using
the word „TALVAR‟, are conveying the same idea as with the mark of the


CS(COMM) 153/2017                                                   Page 13 of 36
 plaintiff; reliance is place on United Biotech Pvt. Ltd. Vs. Orchid Chemicals
& Pharmaceuticals Ltd. 2012 (4) R.A.A. 677 (Del) and Godfrey Phillips
India Ltd. Vs. Dharampal Satyapal Ltd. 2012 (51) PTC 251 (Del).

12.   I have considered the continuation / discontinuation of the interim
order already granted to the plaintiff.

13.   Each case has to be decided on its own facts and peculiar features,
though of course keeping in mind the principles enunciated in the judgments
cited by the counsels and noted above. For the last over more than fifty
years the Courts have been grappling with issues of similarity, deceptive
similarity in matters relating to infringement / passing off of trade marks.
The test applied by the Courts since the beginning has been of the way a
consumer with ordinary intellect would perceive the two marks and whether
such a consumer would be able to distinguish the goods under the two or is
likely to be taken for a ride owing to similarity / deceptive similarity.
However, in the last over 50 years, there have been sweeping scientific
advances in the study of the human mind and the way it works.
Unfortunately however, the Courts, in deciding such cases, have not taken
the benefit of the said scientific advancement, in arriving at the conclusion
about the perception of a consumer with ordinary intellect.

14.   In Allied Blenders & Distillers Pvt. Ltd. Vs. Shree Nath Heritage
Liquor Pvt. Ltd. 211 (2014) DLT 346, an attempt was made by me in that
regard. The claim in the said case was of infringement of trade / label mark
„OFFICER‟S CHOICE‟ by adoption of trade / label mark „COLLECTOR‟S
CHOICE‟. Though on first blush, the possibility of confusing the two marks
appeared to be remote, but having recently read the book "Thinking, Fast

CS(COMM) 153/2017                                                 Page 14 of 36
 and Slow" by Daniel Kahneman, a Professor of Psychology and a Nobel
Laureate, on the subject of how the human mind thinks and how we make
choices, and in Chapter-4 titled "The Associative Machine" of which the
learned author had dealt with „the association of idea‟ and on the basis of
research conducted found that most of the work of associative thinking is
silent, hidden from any conscious selves, I forayed further into, how memory
works or is formed, particularly in relation to trade marks and held:

      "18. My research has revealed:

      A.     The International Journal of Research in Marketing 22
      (2005) 27-44 in an article titled "Distinctive Brand Cues and
      Memory for Product Consumption Experiences" researching on
      consumer experiential learning from a memory perspective,
      referring to "brand image" as the role of brand names as cues
      that retrieve or signal product attributes, benefits, effect, or
      overall quality, reports (i) that the brand itself is not a memory
      target but a cue that might facilitate recall or inference of
      previously learned brand associations; (ii) although in most
      choice environments the brand cues, (name, logo, packaging,
      design etc.) are available           and easy to discriminate
      perceptually, consumers still have to rely on memory to
      associate these brand cues with the results of prior learning of
      product quality; (iii) prior learning could have resulted in
      episodic memory traces of specific consumption experiences,
      but more likely in abstractions or summary evaluations, which
      are generally easier to remember than specific information; (iv)
      consumers need to recall exactly which prior experience went
      with each brand; (v) the consumers typically buy and consume
      products in a category sequentially, not simultaneously; (vi)
      memory for brand quality may be impeded by significant delays
      between consumption experiences and subsequent purchase
      occasions when retrieval is attempted; (vii) the result may be
      considerable confusion in memory between various brand
      experiences; (viii) it is likely that a brand name is not
      represented in memory by a single conceptual node but by

CS(COMM) 153/2017                                                   Page 15 of 36
       multiple nodes, i.e., brand elements have distributed
      representations; (ix) the presence of any one of two similar
      brand cues in the choice environment will activate the common
      nodes - thus the presence of more common nodes will lead to
      more activation of consumption experiences that really belong
      to other brands causing confusion about memory targets even
      when there is no confusion or misidentification of the brands in
      question; (x) consumers‟ memory representations of a brand
      typically include many associations such as semantic
      associations suggested by the brand name; (xi) example is given
      of consumption of one brand activating a particular meaning
      which becomes associated with that brand‟s consumption
      experience and it is reported that if another brand activates
      overlapping semantic association, that will also become
      associated with the second brand‟s experience leading to a
      consumer, though not confused about the identities of the two
      brands at the time of purchase being still confusing the specific
      consumption experiences that occurred with the two brands;
      (xii) similarity (versus distinctiveness) of brand cues might
      increase confusion in the recall of experiential targets,
      similarity in brand names and cues leads to overlapping
      associations and memory interference when consumers attempt
      to learn and remember quality differences; (xiii) that when
      products are purchased and consumed sequentially over an
      extended period of time, it becomes very difficult for consumers
      to learn and remember quality differences between well-
      established brands and lower-priced copycats; (xiv) similarity
      in brand name leads consumers to mistakenly think that they
      have had a satisfactory prior consumption experience with a
      copycat brand, when that particular experience may have
      actually occurred with the other brand which has been copied;
      and, (xv) consumer confusion may originate not at the level of
      misidentification of the brand per se, but at the level of
      confusing the experiences or benefits provided by each brand.

      B.    Another article titled "The Influence of Brand Name‟s
      Association Set Size and Word Frequency on Brand Memory"
      published in the Journal of Consumer Research Vol.-16, Issue-
      2, September 1989 reports (i) brand name memorability might
CS(COMM) 153/2017                                                  Page 16 of 36
       be inhibited if the brand name is associated with a broad
      network of pre-existing concepts because the target name
      becomes lost in a sea of associated concepts that inhibit or
      interfere with its retrieval; (ii) due to the close semantic
      association between the concept "American" and "United
      States", consumers exposed to an advertisement for American
      Airlines might attribute the advertisement to United Airlines;
      (iii) mounting theoretical and empirical evidence suggests that
      the probability of retrieving any particular concept diminishes
      as the association set size of the concept increases; and, (iv)
      high frequency words can be processed readily with little effort
      and therefore receive limited processing time, suggesting
      relatively nondistinctive processing during encoding i.e. little
      effort is made to integrate, specify or restrict the brand
      information; upon exposure to such words, a broad spectrum of
      the heterogeneous concepts comprising the association set will
      be activated and unselectively encoded in memory together with
      the brand word; in turn these diverse concepts of the
      association set, which later may be used as retrieval cues, are
      likely to cue retrieval of concepts unrelated to the brand name,
      interfering with brand name retrieval - thus when brand names
      consist of high frequency words, memory for brand information
      may be poorer for those brands with a large rather than a small
      association set.

      C.     Yet another article titled "The Relation between Positive
      Brand Emotions and Recall" published in Online Journal of
      Communication and Media Technologies (Volume: 4 - Issue: 1
      - January 2014) dealing with advertisement memory and
      emotions to brands describes (i) brand memory and
      advertisement memory is a kind of mental storage that
      consumers apply to while making decisions about brands and
      buying; (ii) „recall‟ is physiological factor that plays key role in
      human life related to every thing and is a human internal
      process and reports that the historical knowledge and
      experiences have significant impacts on current thinking; (iii)
      recall has start up function for customer behavior and decision
      process; (iv) newly learnt thing is integrated with old
      knowledge and thus recall of a newly learnt thing is always
CS(COMM) 153/2017                                                    Page 17 of 36
       associated with old knowledge; and (v) the advertisement and
      other communication applications create recall networks.
      D.     Another article titled "Conceptualizing and Measuring
      Brand Salience" published in 2004 in Volume 4(4): 327-342 of
      Marketing Theory Journal reports (i) that since the 1980‟s,
      theories of how humans encode, store and retrieve information
      have permeated marketing thought and theory development; (ii)
      one of the theories most widely adopted into marketing is that of
      the Associative Network Theories of memory; (iii) under this
      theory     memory       consists    of    nodes     that    hold
      information/concepts; if two pieces of information are
      „associated‟, connections are conceptualized as existing
      between them, making up a network of associated information;
      (iv) when a customer is exposed to the brand in a specific
      context, links in memory between the brand name and specific
      concepts can be created or reinforced; this network of
      information linked to the brand name constitutes what has been
      referred to as the brand‟s image or as brand knowledge; these
      linked concepts can be retrieved when the brand name is used
      as the retrieval cue and /or cues to retrieve the brand name
      when stimulated in a buying condition; (v) just because the
      brand is known or recognized as a member of the category does
      not mean it will come to mind in buying situations, as retrieval
      is dependent on the cue and the accessibility of the linked
      information; (vi) any brand name association can potentially
      act as a cue for accessing the brand name; (vii) the impact of
      cues on retrieval is largely subconscious and often unnoticed by
      buyers; (viii) the importance buyers place on brand choice is
      typically low and therefore there is little motivation to go
      beyond the easily accessible on any one occasion; and (ix) these
      factors combine with the influence of other brands to influence
      retrieval of any specific item and this makes retrieval from
      memory a highly variable and unpredictable outcome at any
      one occasion.

      E.    Yet another article titled "Branding the Brain: A
      Critical Review and Outlook" published in the Journal of
      Consumer Psychology (2012) also under the head of

CS(COMM) 153/2017                                                  Page 18 of 36
       "Remembered Value and Learning" opines (i) Remembered
      Value Refers to how different brand associations are encoded,
      consolidated, and retrieved in the consumer's memory - parts
      of these processes happen on an unconscious level; (ii)
      remembered value consists of explicit memory and implicit
      memory of prior consumption experience; and, (iii) the retrieval
      stage is an active and dynamic relearning process rather than
      the mere replay of previously acquired information."

15.   On the basis of the aforesaid research, it was concluded that the
customer‟s / consumer‟s memory is likely to mix "Officer" with "Collector",
and the possibility of trademark "Officer‟s Choice" of the plaintiff being
remembered / recalled as "Collector‟s Choice" could not be ruled out since
Collector is the highest point of officialdom / authority in a district and with
whom nearly every citizen of that district comes in contact with or knows of.

16.   It was further held as under:

      "20. I am therefore of the view that the possibility of a
      customer / consumer of the alcoholic product of the plaintiff
      remembering the product of the plaintiff as Collector‟s Choice
      cannot be ruled out. Not only so, even if the customer
      remembers the mark "Officer‟s Choice", he can be easily
      fooled into buying a superior product of the same manufacturer
      or another product of the same manufacturer and is likely to
      again be fooled by the association between "Officer" and
      "Collector". It is perhaps for this reason only that similarity
      has been found between "AQUA-CARE" and "WATER-
      CARE", "ARISE" and "AWAKE", "BEAUTY-REST" and
      "BEAUTY SLEEP", "BLUE THUNDER" and "BLUE
      LIGHTNING", "CITY GIRL" and "CITY WOMAN", "BLUE
      CROSS/BLUE SHIELD" and "THE CURE FOR THE BLUES"
      as listed in para 23:29 of Volume 3 of McCarthy on
      Trademarks & Unfair Competition, Fourth Edition relied upon
      by the senior counsel for the plaintiff."


CS(COMM) 153/2017                                                    Page 19 of 36
 17.   The Division Bench of this Court while dismissing the appeal against
the aforesaid judgment, vide judgment reported as Shree Nath Heritage
Liquor Pvt. Ltd. Vs. Allied Blender & Distillery Pvt. Ltd. 221 (2015) DLT
359 inter alia held as under:

      "16. Turning to the effect of disclaimer with respect to
      trademark infringement, it is pertinent to note at this point that
      only two registrations of the respondent, i.e. registrations No.

489582 and 538927, have the word ‘Choice’ disclaimed. The respondent has several trademark registrations, albeit some of which are labels, for alcoholic beverages and a host of other goods, for ‘Officer’s Choice’ without any disclaimer.

17. A disclaimer in a trademark does not travel to the market place. Hence, for the purpose of comparison of two marks, the disclaimed portion can also be considered. Therefore, the marks in the two registrations of the respondent with a disclaimer can be considered as a whole even for infringement.

18. Concerning the rules of anti-dissection and comparing dominant part, it is possible for both parts of a composite trademark to be dominant. In the instant case, while the first part of the respondent’s trademark (Officer’s) is dominant, we need not decide the nature of the second part of the respondent’s mark (Choice) since the second part is identical in the appellant’s mark. Furthermore, even in the label registrations of the respondent, at least the word mark ‘Officer’s Choice’ is an essential feature of the labels as consumers would refer to the respondent’s product by the word mark. Hence, we proceed with comparing the first part of the two trademarks in question.

19. The words ‘Officer’ and ‘Collector’ are phonetically different. However, Courts have applied the test of similarity in the idea, i.e. semantic similarity, of two marks in deciding the question of deceptive similarity between them. In the decision reported as MANU/SC/0115/1959 : AIR 1960 SC 142 Corn Products v. Shangrila Foods the Supreme Court held that ‘Gluvita’ was likely to cause confusion with the mark ‘Glucovita’ as both conveyed the same idea of glucose and life giving properties of vitamins.

20. The Canadian Law of Trademarks and Unfair Competition by Harold G. Fox notes that “trademarks may differ in their various component elements and yet the idea or impression left on the mind may be such that they amount to confusing marks.”

21. Similarly, P. Narayanan in the Law of Trade Marks and Passing off states that “regarding word marks it is necessary to take into account the meanings conveyed by the words or the ideas suggested by them, for words are remembered not only by their sound and appearance but also by the ideas suggested by them.”

22. Sun, for soaps, because Surian is nothing more than the Tamil translation of the English word Sun, and would thus be considered deceptively similar to the previously existing mark.

23. That takes us to the heart of the debate. How can similarity in an idea be created?

24. It is pertinent here to refer to a study which can be found in the International Journal of Research in Marketing [22 (2005) 27-44] in an article titled Distinctive Brand Cues and Memory for Product Consumption Experiences. Researching on consumer experiential learning from a memory perspective, and referring to ‘brand image’ and the role of brand names as cues that retrieve or signal product attributes, benefits, effect, or overall quality, the conclusion of this study demonstrated that the conceptual background behind the brand name is what triggers the recollection of memory in a consumer, and not the brand name in itself. The study revealed that, when five brands of the same type of product : ‘Orange Juice’, were named on the basis of a shared conceptual background (all five being named after different islands in the Caribbean : ‘Bahamas’, ‘Bermuda’, ‘Aruba’, ‘Dominica’ and ‘Barbuda’), the consumers’ ability to distinguish the various brand names was found to be poorer due to this shared conceptual background. Further, when the various brand names did not share the same conceptual background, the rate of recollection of the correct brand names by a consumer was higher. In other words, if the consumer is asked which brand he preferred, if all brands share the same conceptual background, then he would first remember that the product he liked was named after some Caribbean island, and would then need to exercise his brain to recall which island his favourite brand was named after.

25. Since this discussion pertains to similarity between Word Marks, a semantic understanding of how commonness of idea is conveyed through the use of words is relevant here. As discussed in The Application of Semantic Field Theory to English Vocabulary Learning by Chunming Gao and Bin Xu, Theory and Practice in Language Studies, Vol. 3, No. 11, pp. 2030-2035, Nov. 2013, words in the semantic field can be said to create a sense relation, and in semantics, there are broadly three sense relations: ‘Hypernyms’, ‘Synonyms’ and ‘Antonyms’.

26. Whereas hypernyms create the relation of inclusion, synonyms that of equivalence, antonyms that of opposite relations. Since antonyms by definition, convey the opposite sense relation of the word, it falls outside the purview of this discussion.

27. We thus need to expand the concepts of hyponymy and synonymy.

(i) Hypernyms The Oxford English dictionary defines a Hypernym to mean “A word with a broad meaning constituting a category into which words with more specific meanings fall; a subordinate.

For example, colour is a hypernym of red”

It further defines a hyponym as:

“A word of more specific meaning than a general or super-ordinate term applicable to it For example, Spoon is a hyponym of cutlery. Contrasted with hypernym.”

(ii) Synonyms The Oxford English dictionary defines a synonym to mean:

“A word or phrase that means exactly or nearly the same as another word or phrase in the same language.

For example, shut is a synonym of close; the east was a synonym for the Soviet Empire;

and a person or thing so closely associated with a particular quality or idea that the mention of their name calls it to the mind: For example the Victorian age is a synonym for sexual puritanism.”

28. When it comes to giving a clear, precise and correct definition of synonymy, many difficulties arise. There are numerous approaches with numerous definitions of synonyms and types of synonyms, because there are different ways in which synonyms may differ. It would be imprecise to define synonymy as identity of meaning since there are no two terms with completely identical meaning. However, the general understanding of synonymy can be stated to be the phenomenon of two or more different linguistic forms with the same meaning.

29. Synonymy could be classified into absolute synonymy and relative synonymy. Absolute synonyms refer to words with the exact same meaning in all context, and thus are considered by several academicians to be a logical impossibility, given that words cannot be interchangeable in all possible contexts (since that, itself, would entail infinite possibilities), and given further, that two words being absolute synonyms would normally result in the language rendering one of them obsolete over the passage of time.

30. Relative synonyms, on the other hand refer to words or phrases which are relatively similar, in that they are similar in certain contexts, while not in others. Such synonymy could be further classified into such categories as following:

“i. Synonymy with different degrees Words that constitute this type of semantic field have same extended meanings, yet different in degrees. For example, anger, rage and fury are all about the emotional excitement induced by intense displeasure, while anger is used normally without definite degree of intensity; rage focuses on a loss of self-control; and fury empathizes a rage so violent that it may approach madness ii. Synonymy with different emotions This type of synonymy is mainly formed by words with basically same meaning yet with different emotions. For example, a philanthropist and do-gooder can be mean both charity and sympathy, while philanthropist usually means charitable persons who aid people in sufferings and donate for the poor yet do-gooders refer to those unrealistic humanists who dream of doing good recklessly and vainly. Another example, Statesman and politician both mean people who take part in social politics, while Statesman refers to those who could do well in controlling and governing the state yet politician mainly means people who play political tricks for their own interests. In both of the examples, the formers are all commendatory; and the latter’s derogatory. iii. Synonymy with Different Styles This type of semantic field mainly consists of the words with relatively same meaning yet with different styles. American linguist Martin Joos (1962) lists five different styles of words in his book Five Clocks as frozen, formal, consultative, casual and intimate. According to these five styles, we can label the word Horse with five different tags, charger is frozen, steed is formal, horse is consultative, nag is casual and plug is intimate. iv. Synonymy with different collocations This type of synonymous semantic field is formed by words with relatively same meaning yet different collocations. For example, the words that could indicate the meaning of accuse are charge, rebuke, reproach and accuse itself, while the propositions that collocate with them are different. That is to say, accuse collocates with ‘of’, charge collocates with ‘with’, rebuke collocates with ‘ for’ and reproach with ‘ for’ or ‘with’.”

31. In the market research study referred to above, Island A and Island B, both in the Caribbean, are simply hyponyms of the broader hypernym (Islands in the Caribbean). So a consumer with imperfect recollection would recall the correct name of his preferred brand, if they do not share the same conceptual background or hyponym. This is because sharing a hyponym in the form of a conceptual background as the basis of naming various brands, would create the same idea in the mind of the consumer impairing his ability to recall his preferred brand name. Similarly, when various brand names are synonyms of each other, for example, men’s perfumes being called Macho, Tough, Stud and Rugged while each of these words may not mean the same in every context, in the context of men’s perfumes, they convey the same idea as that of masculinity. As per the findings of the study referred to above, the similar brand name recollection impairment could be observed in such a case as well. Thus, from the findings of the study provided above, coupled with the legal position on ascertaining similarity of marks based on the ideas conveyed by them, we may arrive at the conclusion that marks containing words with the same sense relation (or falling in the same semantic field, or conveying the same or similar idea in the mind) as that of previously existing marks are likely to be considered so similar as to be refused registration or deemed to constitute infringement of the previously existing trademark.

32. However, it is important to create a parameter within which marks conveying similar ideas should be accorded protection under trademark law. This is because if protection is accorded to the sense relation of a word, it raises a slippery slope as to what extent such monopoly over the sense relations be extended under trademark law. For example, in contrast with five brands of Orange juice named after islands of the Caribbean would naming a brand of orange juice after any other island X (which is not in the Caribbean) would also be prohibited in stating that island X is a hyponym of the broader hypernym ‘Island’? Similarly, would trademark protection of synonyms extend to all synonyms of the word, such that men’s perfumes cannot be named after any word which is synonymous to the word ‘Tough’ (such as dangerous or risky)?

33. Thus, a restrictive application needs to be made for protecting words which share the sense relation, in that, protection should be accorded only to those sense relations of the word where the context in which they are applied to the brand name, is the same, which causes similar ideas to be conveyed in the minds of the consumers. In this regard, one may also briefly discuss the concept of contextual correlation of semantic similarity, articulated by authors George A Miller (Dept. of Psychology, Princeton University, Princeton, New Jersey) and Walter G Charles (Dept. of Psychology, Oregon State University, Corvallis, Oregon) and in the book Language and Cognitive Processes, [1991, 6(1) 1-28], under the chapter titled ‘Contextual correlates of semantic similarity, where they observe an inverse linear relationship between the similarity of word meanings and the difference in contexts in which they are used and conclude:

“… on an average, for words of the same language drawn from the same syntactic and semantic categories, the more often two words can be substituted into the same context the more similar in meaning they are judged to be.”

34. In the aforementioned two examples one observes that the similarity in idea conveyed by the word marks, through hyponymy or synonymy, can only be said to occur when the hyponymy or synonymy exists in a given context. Thus, when brands of orange juice are named after various islands of the Caribbean they convey a similar idea, which is likely to be only in the context of enjoying a glass of orange juice on a beach at one such tropical island. Similarly, when Men’s perfumes are named after synonyms of the word Tough, the commonness of idea is created only when the words are synonymous in the context of masculinity, and not when any word which is synonymous to Tough, in a different context (such as dangerous, or risky) is used.

…….

42. Philosophers and scientists have long believed that similar ideas are associated in the brain and this association plays an important role at the time of retrieval of information. This concept of association of ideas has been explained by philosophers such as David Hume and John Stuart Mill.

43. David Hume in An enquiry concerning human understanding introduced the notion that there could be principles of connection amongst ideas and mentioned three principles of connection namely, resemblance, contiguity in time or place, and cause or effect.

44. In the 19th century, John Stuart [see Mill in Stanford Encyclopedia of Philosophy (‘Mill’)] used Hume’s idea that there could be principles of connection amongst ideas stated by and developed a theory of association to explain how the human mind associates ideas.

45. Mill’s theory of associative memory proposes that if ‘f and g’ are regularly presented in experience as standing in relation to ‘R’, then the habit forms in the mind, that if we have an impression or idea off then it is accompanied with the idea of ‘g’. ‘R’ in Mill’s theory is the connection amongst ideas stated by Hume earlier.

……

48. The book Cognitive Psychology, Solso Et. Al, Ed. VIII talks about various theories of how knowledge is stored in the human mind. The crux of each of these theories is that similar words, concepts and items that are linked by association are grouped together in the brain.

49. For instance, the Set-Theoretical Model deals with semantic concepts. Illustratively, under this theory, a fruit would be a semantic concept and types of fruits such as banana would be grouped along with other fruits under the concept of fruit in the human mind. Even under this theory, one can prima- facie say that the words ‘Officer’ and ‘Collector’ can be grouped under the concept of ‘Person holding an office of Authority’ and/or ‘Collector’ may also be stored under the concept of ‘Officer’.

50. It would be interesting to note that the United States Patent and Trademark Office Trademark Trial and Appeal Board in a trademark cancellation proceeding (H. Sichel Sohne, GmbH v. John Gross & Co., 204 USPQ 257), applied the concept of similarity of meanings of marks while holding the marks ‘Blue Nun’ and ‘Blue Chapel’ deceptively similar, observed as under:–

“…we are particularly aware of the close relationship between nun and chapel. In view of the fact that the prayer activity and meditation in the daily life of a nun very frequently takes place in a rather small edifice or structure known as a chapel we must conclude that the words nun and chapel are more closely allied to each other… “

Retrieving information from human memory:

51. Finding information in the organized long term memory store is aided by retrieval cues. (See Introduction to Psychology, Clifford T. Morgan et al, Ed. VII). This book explains the concept of retrieval with the following example:

“Suppose, for example, you are learning German. Some German words will at the time you encode them be readily associated with English words; Hund, the German word for dog reminds you of the English word Hound. When you later see the German word Hund, you can easily recall its English meaning because you generated the retrieval cue Hound which you encoded along with the target word Hund.”

52. These cues need not directly elicit the brand name but may instead simply enhance the likelihood of a particular brand, or set of brands, being elicited (Conceptualizing and Measuring brand salience, Romaniuk and Sharp, Marketing Theory Vol. 4(4):327-342).For example, in the present case, the cue could be ‘Person holding an office of authority’.

53. Another factor to bear in mind regarding retrieval of information from human memory is the process of reconstruction of information or the generation of false memories. Cognitive Psychology, Solso et al, Ed. VIII, explains this process in the following experiment:

“…Students read (or have read to them) the following list: Rest, Nap, Sheets, Night, Snooze, Bed, Doze, Pillow, Dream, Snore, Awake, Tired, Wake, Blanket, Slumber, Nap, Yawn, Drowsy… The researchers found… that participants recalled many of the words accurately but a large number of them recalled the word Sleep… The semantically similar and strongly associated words in the list created the false memory of having read (or heard) the word Sleep.”

…….

58. According to the study on Distinctive Brand cues and memory for product consumption experiences, Warlop et al, brands that share semantic associations, like in the present case, which the study refers to as ‘undifferentiated brands’ are likely to be confused by consumers.

59. Admittedly, the labels and get up of the two products are dissimilar. However, the study on Distinctive Brand cues and memory for product consumption experiences notes that:

“i. cue formed from the meaning of the brand is much stronger than the cue formed by the packaging of the product of the brand. Therefore, if the meaning of the brands is similar/same, then the difference in packaging may still lead to confusion.

ii. there is a likely consumer belief that brand names identify different choice alternatives uniquely, while packaging colours and shape often do not.”

60. McCarthy on trademarks and Unfair Competition also emphasizes the importance of impact of similarity in meaning and states that “mental impact of similarity in meaning maybe so pervasive so as to outweigh any visual or phonetic differences that is the psychological imagery evoked by the respective marks may overpower the respective similarities or differences in appearance and sound.”

61. A similar view was taken by the United States Patent and Trademark Office Trademark Trial and Appeal Board while deciding trademark cancellation proceedings in the decision reported as 204 USPQ 257 H. Sichel Sohne, GmbH v. John Gross & Co., wherein it held that “the fact that the marks have aural and optical dissimilarity is not necessarily controlling on the issue of likelihood of confusion in the marketplace where the marks convey the same general idea or stimulate the same mental reaction…That is, similarity in meaning or significance alone is sufficient to indicate a likelihood of confusion, especially where, as in the present case, the marks are coined or arbitrary.”

62. According to Kerly’s Law of Trademarks and Trade names, Ed. XV:

“Variations in details might well be supposed by customers to have been made by the owners of the trademark they are already acquainted with for reasons of their own.”

…….

67. According to Mill, the anticipation of the pleasure from consuming a product in the future acts as a cause for bodily motion to bring about that pleasure. Therefore, once a consumer associates the respondent’s ‘Officer’s Choice’ product with pleasure, the consumer shall, in anticipation of pleasure, once again select ‘Officer’s Choice’. Through repeated consumption that leads to a good experience, the meaning of the respondent’s ‘Officer’s Choice’ shall for the individual consumer become associated with the good experience.

68. As noted in Distinctive Brand cues and memory for product consumption experiences, associations in memory tend to decay over time, leading to forgetting as well as recall of the wrong targets. In addition, memory for brand quality may be impeded by significant delays between consumption experiences and subsequent purchase occasions when retrieval is attempted.

69. This was also held in the decision reported as [1958] RPC 387 Harry Reynolds v. Laffeaty’s Ld, Dodwell & Coy, Ld, and S Guiterman & Coy, Ld, by the High Court of Justice – Chancery Division:

“I think the ordinary member of the public seeing an “Aquamatic” water pistol one day and a “Watermatic” water pistol months afterwards would be more likely to be confused, and I propose to grant an injunction and ancillary relief accordingly.”

70. Therefore, the likelihood of confusion between similar marks increases with increase in passage of time and sequential consumption of the products.

…….

74. In this case, it is apparent from the appellant’s reply to the Trademarks Examiner that the appellant was aware of the respondent’s trademark.

75. The appellant in its reply to the examination report issued by the Trademarks Office stated as follows:

“We would like to further submit that some of the names/marks like “OFFICER’S CHOICE” & “MINISTER” which have become customary in the current language have also been accepted by the Learned Examiners in the past so why not our mark be accepted and advertised.”

76. On the facts above the possibility of appellant’s dishonest intention in adopting the impugned mark cannot be ruled out at this stage.”

18. I need say no more, as the principles aforesaid are found to squarely cover the controversy at hand as well. The limitations laid down by the Division Bench to the applicability of the test do not apply to the present situation.

19. Suffice it is to only mention another similar attempt made in Prathiba M. Singh Vs. Singh and Associates 2014 SCC OnLine Del 1982, where it was inter alia held as under:

“15. …..

(A)(iii) I clarify that such a direction has been deemed necessary because my own experience shows that human mind tends to assume / read the second / following word to be, what it is used to seeing reading with the first one. Thus, a human, used to seeing / reading another „Singh‟ after the first „Singh‟ may presume / read the second word also to be „Singh‟ on seeing / reading the first word „Singh‟, particularly in the context of legal profession. Similarly a human used to seeing / reading „Associates‟ after „Singh‟ may presume „Associates‟ to be following „Singh‟, unless cautioned of the possibility of the second word being different i.e. „Singh‟.

(A)(iv) To make sure that the aforesaid phenomenon and experience is not confined to the undersigned, I looked up and found the experts to have defined the same as “Priming” and which is defined as an implicit memory effect in which exposure to one stimulus influences a response to another stimulus. The seminal experiments on the said subjects appear to be of Meyer and Schvaneveldt who found that people were faster in deciding that a string of letters is a word when the word followed an associatively or semantically related word and subsequent research has led to priming, now being understood to be of many sorts. The said works report that priming can occur following perceptual, semantic or conceptual stimulus repetition and that its effect can be very salient and long lasting and unconscious, affecting word choice on a word-stem completion test, long after the words have been consciously forgotten. Keith E. Stanovich and Richard F. West in their Paper “On Priming by a Sentence Context” published in the Journal of Experimental Psychology have reported associative priming as a word that has a high probability of appearing with the prime and is associated with it and frequently appear together and context priming as where the context speeds up processing for stimuli that are likely to occur in that context and reported that these latter words are processed more quickly than if they had been read alone. Similarly John A. Bargh, Mark Chen and Laura Burrows in their Paper “Automaticity of Social Behaviour: Direct Effects of Trait Construct and Stereotype Activation on Action” published in the Journal of Personality and Social Psychology have reported that attention to a response increases the frequency of that response, even if the attended response is undesired.

(A)(v) The phenomenon is also described by some as „Word Association‟ meaning “stimulation of an associative pattern by a word” or “the connection and production of other words in response to a given word done spontaneously”. Derren Brown, a psychologist has predicted people‟s word associations and has opined that humans find it very difficult to disassociate words. Another author on the basis of psycholinguistic studies has reported that words are not stored in our mental lexicon as single items, but forming clusters with related concepts. Yet others have reported that our brains use some kind of connections between lexical items and that it associates words with others.

A(vi) I have in Allied Blenders & Distillers Pvt. Ltd. Vs. Shree Nath Heritage Liquor Pvt. Ltd. 211 (2014) DLT 346 dealt with the subject of the importance of „word association‟ in the context of trade names. Sigmund Freud also in his textbook „A General Introduction to Psychoanalysis‟ as translated by G. Stanley Hall, in the IVth Lecture contained in Part One thereof titled „A Psychology of Errors‟, has authored that misreading consists in a complete substitution; one substitutes another word for the word to be read and there need be no connection in meaning between the text and the product of the misreading; instance has been given of war times when it is very common for everyone to read into everything which contains a similar word structure, the names of the cities, generals and military expressions which are constantly buzzing around us. Another learned author Sara Brody in the book titled “Teaching Reading : Language, Letters and Thought” (2nd Edn., 2001) edited by her, has cited certain works which have found that comprehension is influenced by the misconceptions and pre- conceived misunderstandings that readers posses before beginning to read a passage and that when readers‟ prior knowledge conflicts with material written in a text, readers tend to misread the text to make it fit their previously formed schemata, whether they are accurate or not.

A(vii) The phenomenon is also described by some schools as “Prägnanz” which says that we tend to order our experience in a manner that is regular, orderly, symmetric, and simple. As per the said school, elements of objects tend to be perceptually grouped together and that as individuals perceive the world, they eliminate complexity and unfamiliarity so that they can observe a reality in its most simplistic form and that eliminating extraneous stimuli helps the mind create meaning. This is also described as reproductive thinking i.e when a person is given several segments of information, he/she deliberately examines the relationships among its parts, analyzes their purpose, concept and totality and reaches the “aha!” moment, using what is already known. Certain other researchers have classified such phenomenon under the law of past experience implying that visual stimuli are categorized according to past experience and have reported that if two objects tend to be observed within close proximity, the objects are more likely to be perceived together.”

20. As far as the contention of the senior counsel for the defendant No.2, qua distinction between two marks owing to the word „WILKINSON‟ in the mark of the plaintiff and the word „ZORRIK‟ in the mark of the defendants is concerned, the Division Bench in judgment aforesaid has also held that since OFFICER‟S CHOICE and COLLECTOR‟S CHOICE were found to convey the same meaning and deceptively similar, the impact of the differences in trade dress was unlikely to rule out consumer confusion between the two products.

Mention may also be made of Section 2(1)(zb)(ii) of the Trade Marks Act, 1999 inter alia defining a „trade mark‟ as meaning a mark capable of distinguishing the goods of one person from those of others for the purpose of indicating or so to indicate a connection in the course of trade between the goods and some person having the right to use the mark, whether with or without any indication of the identity of that person. It is thus clear that mere disclosure of the identity of the defendant along with the use by the defendant of the impugned mark would be irrelevant. Else, the Legislature in Section 2(1)(zb) of the Act would not have used the words “…whether with or without any indication of the identity of that person…”. The Senior counsel for the plaintiff, in this context, also referred to National Sewing Thread Co. Ltd. Vs. James Chadwick AIR 1953 SC 357.

21. I am thus of the view that the interim order already in force should continue during the pendency of the suit. The balance of convenience has been found in favour of the plaintiff owing to the use by the plaintiff of the mark, of which infringement/passing off is averred, being much prior to that of the defendants, with the defendants having commenced use barely eight months prior to the grant of the ex-parte injunction. However, it is made clear that in the event of the plaintiff failing in the suit, the plaintiff shall be required to restitute to the defendant No.2 the loss, if any suffered by the defendant No.2 owing to the interim injunction.

22. The defendant No.2 to, within six weeks file an affidavit with advance copy to the counsel for the plaintiff assessing the said damages and the plaintiff shall be entitled to file an affidavit in response thereto and the counsels may at the stage of framing issues, seek framing of the issue on the said aspect as well.

23. IA No.2502/2017 of plaintiff under Order XXXIX Rules 1&2 of the CPC is thus allowed by making the ex-parte ad-interim order dated 27th February, 2017 absolute during the pendency of the suit and IA No.3523/2017 of defendants under Order XXXIX Rule 4 of the CPC is dismissed.

CS(COMM) 153/2017

24. List on 25th July, 2018.

RAJIV SAHAI ENDLAW, J.

Add a Comment

Your email address will not be published. Required fields are marked *