Case Name: Three-N-Products Private Limited (Plaintiff) v. Emami Limited (Defendant)
Judgment on: 29th January, 2010, Calcutta High Court
Facts: The plaintiff manufactures and sells cosmetic products under the trademark ‘Ayur’ and ‘Ayu’ registered in and outside India. The Defendant was marketing products like ‘Himani Ayurdhara’ and ‘Himani Ayucare’. The plaintiff had sought relief in the form of a declaration that the defendant is not entitled to use the plaintiff’s registered trademark ‘AYUR’ and ‘AYU’ alone or by prefixing or suffixing any other word or any mark deceptively similar in respect of any goods. Perpetual injunctions were also sought restraining the defendant from infringing the plaintiff’s registered trademark and trade name by way of such use, or from passing off defendant’ products and plaintiff’s. The plaintiff also asked that defendant be directed to obliterate upon oath the word ‘Ayur’ and ‘Ayu’ or ‘Ayucare’, ‘Ayurcare’ and ‘Himani Ayurdhara’ and ‘Himani Ayucare’ on labels, bills, or other packaging materials etc.
Arguments: As per the defendant, the word ‘Ayur’ is devoid of any distinctive character and hence incapable of distinguishing the plaintiff’s products from any other. Also, all the registrations obtained by the plaintiff in respect of the ‘Ayur’ mark have been of only a particular stylised representation of the word ‘Ayur’ within an elliptical device and not the word in general. Moreover, ‘Ayur’ being an abbreviation of ‘Ayurveda’ to signify that the products have ayurvedic qualities, and there being hundreds of ayurvedic products in the market, it is not feasible to allow the plaintiff to obtain exclusive proprietary right over ‘Ayurveda or Ayurvedic’.
Similarly, ‘Ayu’ denotes longevity in Bengali, Hindi and Sanskrit, and as such, cannot distinguish the plaintiff’s products from any other. While the plaintiff sold its products (having distinctive packaging compared to the plaintiff’s products) only outside India, the defendant did so both in India and abroad and enjoys more commercial success than the plaintiff, hence issues like passing-off does not arise. The defendant had also obtained registration of its ‘Ayucare’ product in the European Union without any objection whatsoever from any quarter with regard to such registration.
Judgment: The main point of interest lies in the Trial Judge’s reasoning for granting an order of injunction restraining the defendant from using the mark ‘Ayucare’ similiciter without using the distinguishing feature of ‘Himani’ in conjunction therewith (the rest of the plaintiff’s claim was to await further trial), but not allowing the infringement action in effect. S. 29(9) of the Trademark Act was relied upon to conclude that the plaintiff had only registration in the “label mark” of the words ‘Ayu’ or ‘Ayur’, and that the right that the owner of a device or label mark obtained is somewhat similar to copyright, it being as much the writing or etching in a device or label and the design and colour combination thereof over which registered proprietor gains rights in the manner of depiction thereof.
According to the Trial Judge, the words “the registration thereof shall not confer any exclusive right” appearing towards the end of S. 17(2) of the Act have to be understood in the context and the import of such words is that the registration of the composite mark will not confer any exclusive right as to the part of the composite mark.
On appeal, the Calcutta High Court also agreed to this decision and opined that in case a registered mark is made up of several distinct components, such proprietor is entitled to cite one distinctive part as being inseparable from the whole registered or such distinctive part and thus, can assert a right over the distinctive part. But as pointed out in Section 17 (2) (a) of the Act, such assertion has to be in conformity with the law of passing off and may not be made in aid of infringement. Based on this argument, the court held that the plaintiff cannot maintain an infringement action, since he was only alleging infringement of a part (the defining word Ayur) and not the exact mark (including similar depiction, style etc.)
The court was also of the view that the word “Ayu” or “Ayur” cannot be said to be the particular invented words of the plaintiff for denoting its goods bearing “no meaning”. The plaintiff cannot claim exclusive right over the word “Ayu” meaning “longevity” and similarly, over the word “Ayur” denoting its connection with Ayurveda. The lack of similarity between packaging and overall get-up of the goods also led the court to believe that defendant had no dishonest intention to pass off its goods as that of the plaintiff as would appear from the fact that it has further added the prefix “Himani” prior to the word “Ayu” or “Ayurcare”. With regard to passing off, the Trial Judge had held that usage of prefix “Himani” was sufficient to address confusion in the minds of the consumer and thus the defendant should not use only the word “Ayucare” without using the word “Himani”.
The court also said that even if somebody’s business is restricted to export sale alone but he’s a prior user and at the same time, earned fame in that trade name in a foreign country, then he has right to pray for injunction for restraining the defendant from passing off its goods as that of him, notwithstanding the fact that he has no sale of such product for the time being in this country. However, in such a case, the plaintiff must show that such goods sold in foreign countries has earned such a fame that although the people of India have not used such product, they would be eager to purchase the same under the impression that those are the famous goods of the plaintiff by merely hearing the name of such product.
The main reason this case has been pointed out before the Spicy IP readers is the possible debate that this decision can spark off regarding whether this restricted protection accorded to label marks consisting of more than one distinctive components is justified, especially in cases where the mark may consist of a single word which can be considered sufficient to distinguish between that mark and any other. Indeed, similar concern has been voiced by Mr. Mohan Vidhani, a respected patent attorney, who has kindly brought this decision to the notice of the Spicy IP team and is hoping, along with the team, for the readers to voice their usual incisive opinions on this issue.