Topic: Micronix India vs Mr. J.R. Kapoor - Micronix case - Deceptive similarity trademarks

Micronix India vs Mr. J.R. Kapoor
Equivalent citations: 2003 IVAD Delhi 524, 105 (2003) DLT 239 - Bench: J Kapoor – date of judgment: 15 May, 2003

JUDGMENT

J.D. Kapoor, J.

1. The short controversy involved in this suit is whether the trademark `MICROTEL' used by the defendant is deceptively similar to the trade mark `MICRONIX' of which the plaintiff is the registered proprietor and as such amounts to infringement of its trademark. Second objection is with regard to the identical use of logo. Logo `M' is being used by the plaintiff. The defendant is also using the same logo though on the well of the letter M the word `I' appears. Third grievance is with regard to the two labels used by the defendant which according to the plaintiff are deceptively similar as according to the plaintiff cartons, labels being used by it are having unique colour scheme, placement which are literary work and therefore use of the identical labels and cartons amounts to infringement of copyright. Fourth grievance is use of the identical name of firm of the plaintiff by the defendant. Plaintiff's firm's name is MICRONIX INDIA whereas defendant has adopted the name MICROTELEMATIX which according to the plaintiff amounts to passing off action.

2. In order to show underlying intention of the defendant to encash upon the reputation and goodwill of the trademark which is being used for electronic items as well as logo on the label and deceptively similar name of the plaintiff, the plaintiff has referred to the following background which is like this:-

3. Both the parties entered into a partnership business under the name and style of M/s MICRONIX INDIA in 1977. However, they pulled on well for more than 14-15 years but parted their ways sometime on 14.2.1992 by way of compromise. By virtue of the said compromise, the defendant retired from the partnership business and upon dissolution of the firm, all the assets, liabilities, goodwill, running business, Trade name, Trade mark etc were taken over by the continuing partners. A sum of Rs.1 lakh and some machineries came to the share of the defendant. The plaintiff firm, when defendant was one of its partners, got the trademark MICRONIX registered in respect of electrical, electronics apparatus and instruments, T.V.tuners, T.V.Boosters etc. on 19.11.1986. However, after the retirement of defendant from partnership in 1992, other two continuing partners became subsequent proprietors of trade mark, logo and label.

4. That due to adoption of deceptively similar trademark and cartons by the defendant in respect of same business, goods being sold at the same time, a great confusion has arisen in the market as most of the business of the plaintiff is now being diverted to the defendant which is causing irreparable loss and injury in terms of plaintiff's name and reputation. Hence this suit.

5. At the outset, it is pertinent to mention that by way of ad interim injunction defendant was restrained from adopting the trademark MICROTEL, Logo M and the label in respect of electronic items vide order dated 15.9.1993 passed by learned Single Judge. Feeling aggrieved, the defendant approached the Division Bench but failed to reverse the decision. Feeling dissatisfied, the defendant approached the Supreme Court and succeeded in vacating the injunction. While vacating the injunction and allowing the appeal of the defendant, the Supreme Court made it clear that observations made in the order were only for deciding whether defendant should be restrained from using the trademark, logo and cartons at interim stage and the High Court will not be precluded from coming to a different conclusion at the final hearing on perusing the entire evidence before it.

6. While vacating the stay, the Supreme Court observed that micro-chip technology being the basis of many of the electronic products, the word "micro" has much relevance in describing the products and therefore no one can claim monopoly over the use of the said word. Anyone producing any product with the use of micro chip technology would be justified in using the said word as a prefix to his trade name and thus who are familiar with the use of electronic goods know fully well and are not likely to be misguided or confused merely by the prefix `micro' in the trade name. Thus, in the nutshell, the Supreme Court has held that once it is found that the word `micro' is a common or general name descriptive of the products which are sold or of the technology by which the products are manufactured, the users of such products are not likely to be misguided or confused by the said word. The dissimilarities pointed out by the Supreme Court in the trade name, logo, as well as cartons or labels were like this:-

" In the first instance, the respondent's trade name `MICRONIC' is in black and white in slimmer letters and they are ensconced in designs of elongated triangle both above and below the said name. On the other hand, the appeallant's trade name 'MICROTEL' is in thick bold letters in red colour without any design around. As regards the logo, the respondent's logo consists of the word `M' in a slim letter in `I' sporting a dot on it and drawn in the well of `M'. Below the letter `M' in small letters is written the word `MICRONIX' and all these letters and words are written in white in a black square in north-south direction. As against this, the appellant's logo is one letter, viz., `M' which is drawn in bold broad letter with its left leg slimmer than all other parts which are in thick broad brush. The letter has white lines drawn across it which is in blue colour. There is no other letter nor is it set against any background. We are, therefore, unable to see how the visual effect of both the logos will be the same on the mind of the buyers. This being the case, we are of the view that there is not even the remotest chance of the buyers and users being misguided or confused by the two trade names and logos. Same is the case with the carton which merely reproduces both the trade names and the logos.

The learned counsel for the respondent-plaintiff contended that on the carton the same address, viz., "New Delhi -110 020", has been given by the appellant. We are unable to understand how anybody can claim monopoly in the said address. He also tried to show us that there was a similarity in the words and letters in the two cartons inasmuch as the respondent-plaintiff's carton mentioned the words "MODEL TB-212 (INDOOR TYPE)" while the appellant has also mentioned the words "MODEL MT-212 (Indoor Unit)",. Hence, he submitted that there was a resemblance to the extent of the word "MODEL' and the figure "212". On a perusal, we do not find any such resemblance between the two descriptions. He then submitted that whereas the respondent-plaintiff had mentioned the words "Best for Colour Black & White Tvs and FM Radios" with a black rectangular background of the word `White' before the words "For Colour/Black & White Tvs and FM Radios". Again, we do not find that the manner in which the said words are written by both the parties on their respective cartons are likely to misguide or confuse the buyers. This is apart from the fact that whereas the respondent-plaintiff's carton is in black and white the appellant's carton is fully in colour."

7. As is obvious, Mr.Sudhanshu Batra, learned counsel for the defendant has adopted the same line of reasoning and defense as propounded by the Supreme Court in the aforesaid order and summed it up with the following contentions:-

i) That the trade name and the logo used by the defendant gives entirely different picture than that of the plaintiff.

ii) That the mere look of the Booster manufactured by the plaintiff and that by the defendant is altogether different and there is not an iota of scope for confusion arising out of any similarity much less deceptive similarity in the product.

iii) That the labels, background and the colour combination are in no way identical or even remotely similar and therefore the question of confusion as to the source and original does not arise.

iv) Similarly because the trademark of the plaintiff is a registered trade mark does not mean that registered owner has monopoly over each and every letter or word unless the mark as a whole is by sound or look deceptively similar and further unless the similarities in style of letters or colour combination or background are such which give an impression of near similarity or even remote similarity to an unwary customer or illiterate or unintelligent customers though in this case goods are purchased by literate, knowledgeable people, neither does it amount to infringement of registered mark nor that of copyright.

8. Pitted against this defense, Mr. A.K. Goel, learned counsel for the plaintiff has tried to buttress its case with vehemence on the following premises:-

i) Defendant agreed at the time of dissolution of partnership firm by way of compromise deed not to use the plaintiff's trademark, copyright, design and name of the firm for which he was awarded compensation of Rs.1 lakh with some machines.

ii) The dishonest intention of the defendant is demonstrated from the use of word `R' encircled in red showing that he is the registered proprietor of the trademark MICROTEL which is not true and which is an offence under Trade and Merchandise Act.

iii) The dishonesty is further projected in the address given by the defendant on the label as the defendant has shown their address as "New Delhi" whereas they are manufacturing the Booster at Gurgaon.

iv) That the trademark has to be seen as a whole and not by splitting the words and therefore in the instant case the word `MICRO' cannot be separated while determing the similarities between the two trademarks.

v) That the words MICRONIX and MICROTEL are similar not only in sound and look and there will be every likelihood of confusion as to the similarities of trademark merely by using the prefix MICRO.

vi) Plaintiff has a statutory monopoly by way of registered trademark as the said registration is without any disclaimer. Defendant's trademark comprises not only of eight letters but also first five are identical and this gives an impression that mark as a whole is not only deceptively similar but identical also.

vii) That in the word `Booster', every letter of it used by the defendant is exactly similar as to the style of the word used by the plaintiff and this word cannot be designed without copying plaintiff's label and since it is an artistic work it comes within the mischief infringement of copyright.

viii) Similarly logo M used by the defendant is exactly similar to the plaintiff's logo not only in letter but in style also.

ix) Similarly the use of logo M in the name of its firm MICROTEL amounts to infringement of registered trade mark of the name of the plaintiff firm MICRONIX India.

9. In support of these contentions, learned counsel for the plaintiff has placed reliance upon the decision of the Supreme Court in Cadila Health Care Ltd Vs. Cadila Pharmaceutical Ltd 2001 PTC 541 (SC) wherein appellant was registered owner of the trademark " Falcigo" whereas the infringing respondent adopted the trademark "Falcitab". The Supreme court while agreeing with the earlier judgment of the Supreme Court in Corn Products Refining Co Vs. Shangrila Food Products Ltd. held that in deciding a question of similarity

between two marks, the marks have to be considered as a whole.

10. Another case referred by the Supreme Court is Amritdhara Pharmacy Vs Satya Deo Gupta where the respondent had applied for the registration of the trade name "lakshmandhara" in respect of a medicinal preparation for the alleviation of various ailments which was opposed by the appellant whose trade name was "Amritdhara". While agreeing that the use of the word "dhara" which literally means `current or stream' is not by itself decisive of the matter, Supreme Court held that what is to be considered is the overall similarity of the composite words having regard to the circumstance that the goods bearing the two names are medicinal preparations of the same description. It was further held that a critical comparison of the two names may disclose some points of difference but an unwary customer of average intelligence and imperfect recollection would be deceived of the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. The trade mark is the whole thing-the whole word has to be considered. Reference was also made to an English decision Willian Bailey (Birminghan) Ltd's application (1935) 52 RPC 136 wherein a view was taken that "it is not right to take a part of the word and compare with a part of the other word; one word must be considered as a whole and compared with the other word as a whole as it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word."

11. It is the cardinal principle that it is not the dissimilarities which are to be taken into consideration while deciding or determining the question of infringement of a trademark or passing off a mark. It is the similarities one should search for as even deceptive similarities give rise to confusion as to source and origin. If the similarities are paramount, the offence of infringement or passing off as the case may be becomes complete. Registered proprietor of a trade mark has been given a statutory protection by virtue of Section 28 of the Trade Marks & Merchandise Act from the use of either the identical trade mark or deceptively similar trademark.

12. The words "deceptively similar" used in the provisions of law have utmost significance as these words connote that even if similarities are not identical or akin still their deceptive nature which can be perceived either through sound or look, that is `visually' or `phonetically', can lead to the inference that underlying intention or object of the infringer is to encash upon the reputation and goodwill of the prior user of the trademark as the element of confusion involves the state of mind of a customer who on seeing a mark comes to the conclusion that it differs from the mark of the goods which he had been purchasing for long. Such a confusion can be deduced even from imperfect recollection.

13. Examining the case of the plaintiff on the anvil of aforesaid tests, I come to the following conclusions:-

i) That neither visually nor phonetically MICRONIX and MICROTEL have any similarity though name of both the trademarks starts with the word `MICRO'. Micro is a generic term as it refers to state of art technology and cannot be monopolised by any person as both the parties are in same trade using micro technology as in every electronic and electrical items, micro chips are used and that is why both the articles cannot be confused as to their source or origin by use of word `MICRO' as a prefix to the mark or trade name. Thus use of the word "MICRO" in MICROTEL and MICRONIX as prefix does not involve the element of deceptive similarities in respect of electronic goods and goods with micro-chip technology. The word or prefix `MICRO' cannot be monopolised as there are international and national trade names in respect of technology where microchips are used. The prominent instance is Microsoft.

ii) Even from the look the style and colour combination and get up of both the trademarks are entirely different and there is not even a remotest similarity.

iii) As regards the labels they are visually different. In other words there is not even remotest possibility of confusion much less by unwary and illiterate customers as the plaintiff mark MICRONIX is written in black and red in slimmer letters which elongated below and above the name MICRONIX while on the other hand MICROTEL is written in bold letters in red colour without any design.

iv) The logo `M' of the plaintiff is in slimmer letters and has letter `I' at the well of `M' whereas the logo used by the defendant does not have letter 'I' over it. The comparison of logo M shows that as a whole the logo used by the plaintiff and that of the different are altogether of different type and have no similarity either in style or in colour combination etc.

v) So far as the letters of the word "BOOSTER" and the word `R' are concerned these have such similarities which in spite of trademark being little different because of microchip technology which are definitely deceptive and confusing. Style and design of the word was not possible had it not been copied from the style of plaintiff's.

14. Upshot of aforesaid discussion is that the defendant can be injuncted only from using the word "BOOSTER" in the same style as being used by the plaintiff and in no other respect. Suit is decreed to the aforesaid extent only. Decree sheet be drawn up according.