.
Misrepresentation takes place when consumers or some of them, believe or are likely to believe that the defendants goods or services are associated or are from the same source as plaintiffs. When a representation is made so as to cause confusion about the source of goods / services, misrepresentation takes place. No one has a right to confuse consumers to make them believe that he is connected or associated with the plaintiff to take advantage of the faith in plaintiffs reputation. Misrepresentation infringes public rights and misleads them. A trader or a service provider should be fair in his dealings and not mislead or tell falsehoods about oneself. [Para 26]
Common law protects freedom of choice and rejects claim of monopoly over use of words and marks. While deciding question of misrepresentation or deception these two rights have to be balanced, depending upon facts of each case. This requires examination of nature and type of goods, services, area of business, location, extent of goodwill, class of consumers etc. There are cases where passing off claim has failed because goods I services are different or because of the nature of consumers possibility of confusion does not exist but in other cases inspite of difference in activities I good plaintiffs have succeeded. [Para 27]
Misrepresentation cannot exist in vacuum and is co-relatable to the extent, value and nature of 'goodiwill of the plaintiff. Greater the goodwill, greater is the need to protect and wider is the cover and the field of protection. Household, well known or popular marks are given greater protection, when they cause to represent quality and have become synonymous with the public to represent a particular source. Some marks are such that the public relates any product carrying the said name I mark would emanate from the said source. Such marks may be few but protective umbrella in such cases is wider and extensive. These are marks where line between the goods and the name is blurred. The mark starts to represent the source or the person than merely a particular or specific type of goods or services. Mahindra and Mahindra Paper Mills Ltd. v. Mahendra and Mahendra Ltd., AIR 2002 SC 117 : 2002 (24) PTC 12KSC), Ciba Geigy Ltd. v. Surinder Singh, 1998 PTC (18) 545(Del.), Daimler Benz v. Hybo Hindustan, AIR 1994 Delhi 239 : 1994 (14) PTC 287 (Del), Honda Motors co. Ltd. v. Charanjit Singh and Others, 101 (2002) DLT 359 : 2003 (26) PTC 1 etc. are all cases where products / goods were different but the marks involved were household names that have come to embody reputation of pre-eminent excellence and quality and therefore given broader protec¬tion. The mark NFVEA is recognized by all as a product of high quality and one which has international acceptance and recognition. The plaintiff who has developed and nurtured this mark to make it a household name and associate the name with products of high quality, is entitled to protection from third persons who want claim benefit of its reputation. The word NTVEA is a associated with the plaintiff right from the very beginning i.e. from 1905 or at least in India from 1943. [Para 28]
The initial adoption by the defendants is therefore fraudulent and wrongful. The explanation given for the said adoption by the defendants is rejected. It is quite clear that the defendants have deliberately, intentionally and wrongly adopted the mark I word NFVEA which belongs to and is owned by the plaintiff. The defendants have made a misrepresentation by adopting and using the word I mark Nivea International. They have tried to mislead by claiming business connection or asso¬ciation with the plaintiff. [Para 29]
Damage refers to injury and loss caused to the reputation or trade of the plaintiff. Injury is to the goodwill of the plaintiff and can take place by various modes like diversion of sales, misappropriation of business reputation or misappropriation of personality. Injury is suffered by erosion of the distinctiveness of the brand name and debasement of the reputation. Depreciation or gradual damage, erosion or delusion of plaintiffs name causes injury. When a defendant acts with the intention to deceive the public, there is reasonable possibility of injury. In the present case, as already stated above, is one of fraudulent adoption and therefore I accept the argument of the plaintiff that there is injury as the defendants had acted in the manner calculated to deceive. Damage /loss in the present case can be presumed as a natural consequence of misrepresentation. The present case is one of misappropriation of business repu¬tation of the plaintiffs by the defendants by using the mark NIVEA International. The present case is also one of erosion and delusion of exclusiveness, which the plaintiff enjoys in the mark NTVEA, a coined word created by the plaintiff. It is invasion of this right of the defendants which has caused injury to the plaintiff. Thus, the third trinity is also satisfied in the present case. [Para 33]
Copyright Act, 1957
Section 2(qq), 52
Copyright in 'Yakshagana' Ballet dance — Decree of injunction — In passing of decree, court is obliged to consider statutory provisions — It has to be noted as to what is a copyright and in respect of the same can not be claimed or otherwise the same lodged by conditions and subject to statutory limitation — When a fair dealing is made, inter alia, of a literary work for purpose of private use including research and criticism or review, whether of that work or any other work, the right in terms of the said Act cannot be claimed - Some performance or dance is carried out within purview of the said Clause, order of injunction shall not be applicable -Similarly, appellant being an education institution, if the dance is performed within the meaning of Clause (i) of sub-section (1) of Section 52, strictly, order of injunction shall not apply thereto — If such performance is conducted before a non-paying audience by the appellant, which is an institution if it comes within the purview of amateur club or society, the same would not constitute any violation of the said order of injunction.
A dramatic work may also come within the purview of literary work being a part of dramatic literature. The new Encyclopaedia Britannica (Vol-IV) 15th Edition, provides the following information about "Dramatic Literature. "Dramatic Literature: the texts of plays that can be read, as distinct from being seen and heard in performance." We must, however, notice that the provisions the Act make a distinction between the 'literary work' and 'dramatic work'. Keeping in view the statutory provisions, there cannot be any doubt whatsoever that copyright in respect of performance of 'dance' would not come within the purview of the literary work but would come within the purview of the definition of'dramatic work'. We, however, do not mean to suggest that any act of literary work will be outside the purview of the Will dated 18.6.1994 Our exercise in this behalf was only for the purpose of clarifying the provisions of the Act with reference to the findings arrived at by the High Court.
For the aforementioned reasons, we agree with Dr. Dhavan that paragraph 12 of the Will, namely, residuary clause shall apply in the instant case apart from thm areas which are otherwise covered by paragraph 11 of the Will. The residuary clause will apply because it is well settled that no part of the stay lies in limbo. It was also not a case where respondent in any manner whatsoever waived her right.
Decree for injunction is an equitable relief. The courts while passing a decree for permanent injunction would avoid multiplicity of proceedings. The court while passing such a decree, is obligated to consider the statutory provisions governing thm same. For the said purpose, it must be noticed as to what is a copyright and in respect of the matters the same cannot be claimed or otherwise the same is lodged by conditions and subject to statutory limitation.
The High Court, in our opinion, should have clarified that the appellants canl also take the statutory benefit of the provisions contained in clauses (a), (i) and (l) on sub-section (1) of Section 52 of the Act. Section 52 of the Act provides for certain acts] which would not constitute an infringement of copyright. When a fair dealing is made, inter alia, of a literary or dramatic work for the purpose of private use including research and criticism or review, whether of that work or of any other work, the right in terms of the provisions of the said Act cannot be claimed. Thus, if some performance or dance is carried out within the purview of the said clause, the order of injunction shall not be applicable. Similarly, appellant being an educational institution, if the dance is performed within the meaning of provisions of clause (if of sub-section (1) of Section 52 of the Act strictly, the order of injunction shall not apply thereto also. Yet again, if such performance is conducted before a non-paying audience by the appellant, which is an institution if it comes within the purview of amateur club or society, the same would not constitute any violation of the said order of injunction.
Copyright Act, 1957
Sections 13(4) & 60
In the instant case it appears that it has been submitted by RTB before the Delhi High Court that a licence is yet to be issued by the Government and there was no immediate threat for which interim order would be required. Based, inter alia, on this submission of RTB, the Delhi High Court refused to grant an interim order in favour of IPRS. In the order of the Delhi High Court, the pending proceeding before this Court has also been noticed. In our opinion, the action of the defendant in the present suit, i.e., IPRS, instituting the latter suit at Delhi High Court is a clear indication that they have initiated legal action against the appellant herein. [Para 36]
While we are convinced that a quia timet relief can be granted in favour of the appellant, having regard to the facts and circumstances of the instant case as discussed in detail above, we are also of the opinion that the same ought not to be in the nature of a relief which, if granted, would, in effect, allow the present suit itself, at the interlocutory stage. Therefore, although it may not be open to the plaintiff / ap¬pellant to invoke section 60 of the Copyright Act, 1957, and seek quia timet relief as contemplated under that provision of law, consequent to filing of the subsequent suit at Delhi High Court by IPRS, we are nevertheless of the prima facie opinion that in the facts and circumstances of the instant case, as discussed above, the appellant is entitled to a quia timet relief in the nature of an injunction restraining the respondent IPRS from initiating any proceeding against the plaintiff as well as the added defendants, under Chapter XIII of the Copyright Act, 1957, until disposal of the present suit. The impugned judgement and order stands modified accordingly. [Par 40]
Trade Marks Act, 1999
Section 115
HELD Police can act only on the sanction being accorded by the competent authority . Any opinion of the police is subservient to the opinion of the competent authority under the Act.
Civil Procedure Code, 1908
Order 39 Rules 1 & 2
Registration after following the procedure is in itself an injunction in rem against all persons from infringing or copying the same.
Appellant marketing nappies as 'Cozy Care' . Both 'Tiny Care' as well as 'Cozy Care' . When the trade mark registered is of a packed product being sold across the shelf and in such a case, no doubt if the trade marks, names and descriptions are exactly similar, even in such a case, the statutory injunction only requires to be formalised
As such, considering that there is a public notice and thereafter one becomes the registered proprietor of the trade mark or trade description, in law, the registration after following the procedure is in itself an injunction in rem against all persons from infringing or copying the same. That being so, the infringement or violation of the trade mark itself in its exact form or nearly similar would stand on a different footing. Hence, if a particular trade mark or trade description is violated and if it is clearly visible to the naked eye, when an action against the same is brought before a Civil Court seeking relief in that regard and in such a suit if an order of temporary injunction is sought, on the satisfaction of the court prima facie that the very mark itself or description itself has been infringed on the face of it, nothing more requires to be looked into before granting an order of injunction since it is merely an act of formalising the statutory injunction granted by way of registration and making it an injunction in personam by exercising the discretion available under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908. However, insofar as the injunctions being sought for in the case of infringements of a registered trade mark on the contention that the trade mark or description used by the defendant is deceptively similar, an element of common law remedy also creeps into the situation inasmuch as the infringement or violation would not be exactly similar but would be deceptively similar either visually or phonetically which would have to be decided based on evidence. But at the prima facie stage, the court examining that aspect should also be satisfied that though not similar, it is deceptively similar to the infringed mark. In such an event, though the court may initially come to a prima facie conclusion that there is a triable issue yet there are chances that ultimately on trial, there could be a possibility of the court coming to the conclusion that it is not deceptively similar based on the detailed consideration of the evidence available. That being so, in such a case, the view that it is a triable issue being-only a prima facie view, the next two aspects with regard to the balance of convenience and irreparable injury require a detailed consideration by the court since the rival claims would have to be balanced out, at that stage, keeping in view the ultimate result which may go one way or the other. Hence, in every individual case, a clear distinction will have to be drawn. For example, if a trade mark or description or name relating to a particular service, let us assume a courier service, is registered and if the infringe?-also starts another courier service or related service with a similar trade mark, description or name or even the case of'Laxman Rekha' and 'Magic Laxman Rekha' which was before the Hon'ble Supreme Court, a mere comparison is enough to grant an injunction since as noted above, in such case, the statute itself has injuncted any other person from using the same trade mark, description or name. On the other hand, if the trade mark registered is of a packed product being sold across the shelf and in such a case, no doubt if the trade marks, names and descriptions are exactly similar, even in such a case, the statutory injunction only requires to be formalised. However, if the product is packed and both the product as well as packing are deceptively similar inasmuch as if the owner of the trade mark contends that it is phonetically and visually similar and if the same is denied by the defendant I alleged infringer, in such an event the statutory right of registration would no doubt come to the aid of registered proprietor of a trade mark for indicating a triable issue and the act of injuncting by the court is not merely limited to formalising the statutory injunction but plaintiff would have to establish the other two aspects as well, namely, balance of convenience and irreparable injury to secure an order of temporary injunction. In such a case, all the three aspects of the matter would require detailed consideration by the court before either granting or refusing an order of injunction. [Para 15]
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