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.

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.

(2018) 75 PTC 314

DELHI HIGH COURT

SINGLE BENCH

GILLETTE COMPANY LLC — Appellant

Vs.

TIGAKSHA METALLICS PRIVATE LTD AND ANR — Respondent

( Before : Rajiv Sahai Endlaw, J. )

Civil Suit (Comm) No. 153 of 2017

Decided on : 09-07-2018

  • Civil Procedure Code, 1908 (CPC) – Order 39 Rule 1, Order 39 Rule 2, Order 39 Rule 4

Counsel for Appearing Parties

Sudhir Chandra, Adv., Prathiba M Singh, Adv., Vikram Grover, Adv., Siddhanth Sharma, Adv., Devanshu Khanna, Adv., Rahul Chitnis, Adv., R. Sudhinder, Adv., Ranjit Shetty, Adv., Akanksha, Adv., Sandeep Sethi, Adv., Akansha, Adv.

Cases Referred

  • Allied Blenders & Distillers Pvt. Ltd. Vs. Shree Nath Heritage Liquor Pvt. Ltd., (2014) 211 DLT 346
  • Bhatia Plastics Vs. Peacock Industries, (1995) AIR(Del) 144
  • Carlsberg India Pvt. Ltd. Vs. Radico Khaitan Ltd., (2012) 186 DLT 368
  • Corn Products Vs. Shangrila Foods, (1960) AIR(SC) 142
  • Godfrey Phillips India Ltd. Vs. Dharampal Satyapal Ltd., (2012) 51 PTC 251
  • Hindustan Liver Ltd. Vs. Pioneer Soap Factory, (1983) 3 PTC 211
  • Hindustan Pencils Pvt. Ltd. Vs. Indian Stationery, (1989) 1 ILR(Del) 115
  • Hitachi Ltd. Vs. Ajay Kumar Aggarwal, (1996) ILR(Del) 359
  • J.C. Eno Ltd. Vs. Vishnu Chunilal Co., (1940) 42 BLR 924
  • J.K. Oil Industries Vs. Adani Wilmar Limited, (2010) 42 PTC 639
  • Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories, (1965) AIR(SC) 980
  • Kellogg Company Vs. Pravin Kumar Bhadabhai, (1996) 16 PTC 187
  • Laxmi Kant V. Patel Vs. Chetan Bhai Shah, (2002) 3 SCC 65
  • Midas Hygiene Industries P. Ltd. Vs. Sudhir Bhatia, (2004) 28 PTC 121
  • National Sewing Thread Co. Ltd. Vs. James Chadwick, (1953) AIR(SC) 357
  • Prathiba M. Singh Vs. Singh and Associates, (2014) SCCOnLine(Del) 1982
  • Shree Nath Heritage Liquor Pvt. Ltd. Vs. Allied Blender & Distillery Pvt. Ltd., (2015) 221 DLT 359
  • Sm Dyechem Vs. Cadbury, (2000) 5 SCC 573
  • Takkar (India) Tea Company Vs. Soongachi Tea Industries Pvt. Ltd., (2010) 44 PTC 90
  • United Biotech Pvt. Ltd. Vs. Orchid Chemicals & Pharmaceuticals Ltd., (2012) 4 RAA 677

JUDGMENT/ORDER

Rajiv Sahai Endlaw, J—Ias No.2502/2017 (of plaintiff u/O XXXIX R-1&2 CPC) & 3523/2017 (of defendants u/O XXXIX R-4 CPC)

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  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 27th 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:

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  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;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 16 th 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 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 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 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) 3 PTC 211, Bhatia Plastics Vs. Peacock Industries, (1995) AIR Delhi 144 and J.C. Eno Ltd. Vs. Vishnu Chunilal Co., (1940) 42 BomLR 924); (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 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. Enohas been concurred with in Hitachi Ltd. Vs. Ajay Kumar Aggarwal, (1996) ILR(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, (1989) 1 ILR(Delhi) 115; (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:

(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., (2012) 186 DLT 368 (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, (1965) AIR 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.

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 plaintiff; reliance is place on United Biotech Pvt. Ltd. Vs. Orchid Chemicals & Pharmaceuticals Ltd., 2012 4 RAA 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., (2014) 211 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 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 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 wellestablished 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, Issue2, September 1989 reports (i) brand name memorability might 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 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 “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 “WATERCARE”, “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.”

17. The Division Bench of this Court while dismissing the appeal against the aforesaid judgment, vide judgment Shree Nath Heritage Liquor Pvt. Ltd. Vs. Allied Blender & Distillery Pvt. Ltd., (2015) 221 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 Corn Products v. Shangrila Foods, (1960) AIR SC 142 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) HypernymsThe 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 itFor example, Spoon is a hyponym of cutlery. Contrasted with hypernym.”(ii) SynonymsThe 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 madnessii. Synonymy with different emotionsThis 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 StylesThis 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 collocationsThis 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 primafacie 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 Harry Reynolds v. Laffeaty s Ld, Dodwell & Coy, Ld, and S Guiterman & Coy, Ld, 1958 RPC 387 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 SCCOnLine(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., (2014) 211 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 preconceived 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 “Pr gnanz” 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, (1953) AIR 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.

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