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2008 SCC OnLine Bom 1723 : (2009) 39 PTC 420

In the High Court of Bombay†

(BEFORE ROSHAN DALVI, J.)

Goldgem Overseas … Plaintiff;

Versus
Flawless Diamond (India) Ltd. … Defendant.
Notice of Motion No. 4657 of 2007 in Suit No. 3372 of 2007
Decided on December 19, 2008

Page: 422

The Judgment of the Court was delivered by

ROSHAN DALVI, J. ORAL:— The Plaintiff has sued the Defendant upon for
infringement of his registered trademark and for the act of passing off the said mark.
Both the parties are in the business inter alia of diamond jewellery. Both claim to use
the trademark “AUM” in respect of their products, which are jewellery items. The goods
of both the parties which essentially fall under the aforesaid mark are sold in retail
outlets. It is the case of the Plaintiff that there is identity of business, goods as well as
customers called “The Triple Identity”.
2. How and when both the parties came to use and apply the said mark are matters
of admitted facts and documented records which need to be noted at the outset:—
1. The Defendant has been in business of jewellery since last 17 years. He has
exhibited his products in various outlets and show- rooms.
2. The Plaintiff adopted the trademark “AUM” for his products since May, 2000.
3. The Plaintiff applied for and obtained registration of his trademark “AUM” in April
2003.
4. The parties had a certain meeting in April, 2006.
5. The Defendant applied for registration of his trademark on 2nd June 2006. His
trademark has yet not been registered. He has commenced use of the trademark
since the year 2006 itself. This is reflected in his annual report of the year 2006-
2007, which is absent in the annual report of the preceding year 2005-2006.
3. Upon these admitted facts Mr. Dhond on behalf of the Plaintiff contends that
since the Plaintiff's use of his trademark pre-dates that of the Defendant by six years
and his registration pre-dates the use by the Defendant by three years, the
Defendant's use is impermissible in law. The Plaintiff also contends that since the
Defendant had knowledge of the Plaintiffs registered trademark prior to his application
for registration of the same trademark, his registration cannot be granted and the use
by the Defendant of the mark even prior to the registration being granted is dishonest
and malafide, it having been made despite knowledge of the Plaintiffs mark. An
intriguing aspect has been shown by the Plaintiff to impute knowledge of the mark
upon the Defendant. In paragraph 14 of the plaint, the Plaintiff has contended that the
Defendant wanted to purchase the Plaintiff's mark, and

Page: 423
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therefore, parties had a meeting to settle the terms of purchase. The Defendant has
denied the purpose of meeting, but not the factum of the meeting. The Defendant
states that it was for business talks. The parties are competitors dealing in the same
product. They are unlikely to have business talks, the specifications of which are not
shown. The Defendant's Director's father is a Jain by Religion. He had taken Diksha as
per the tenets of Jainism.

4. He has been conferred the title of Acharya Maharaj. His name is Uttamchandji.
He is, therefore, known as Acharya Uttamchandji Maharaj, a fact set out by the Plaintiff
in the plaint itself. His initials are A.U.M. Regular business talks alone would not reveal
this intrinsic personal fact to the Plaintiff. Hence, the meeting averred by the Plaintiff
must be taken to be for the purpose which is also averred by him.
5. The meeting not withstanding, and not having fructified in any agreement or
settlement, the Defendant commenced his use of the mark “AUM” in that year itself as
evidenced by the aforesaid two annual reports - the first of which does not show the
mark and the second of which shows it on each page of the report as well as in colour
on the last cover page.
6. Since the Defendant's application for registration of his trademark is in June
2006, it is seen that it has been made after the admitted talks, business or otherwise,
in April 2006 and the use soon thereafter without waiting for the registration being
granted.
7. The trademark consists of the aforesaid three alphabets AUM as its most
prominent part. The Defendant's mark further shows the expression AUM in Sanscrit
script denoted by the number “3” in English. Below the said mark the Defendant
further uses the expression “Diamond Jewellery”. The Plaintiff's mark is in simple
alphabet font “AUM” below which in almost illegible print is the expression “Wear your
mystique”. The expression below the mark “AUM” is not a part of the Plaintiff's
registered trademark. The Plaintiff has not contended that that expression is used by
the Defendant or that it cannot be used. Only the word “AUM” is the mark craved by
both the parties. The Defendant's mark is not only visually, alphabetically,
Structurally, but also phonetically identical. It is only styled differently. The English
word is in cursive font. The Sanscrit version represented by the English number “3” is
a mere arithmetical figure. It is the phonetical expression of the Sanscrit term
alongside the English script.
8. Such being the facts, it would have to be seen whether the same mark “AUM”, if
used by the Plaintiff and by the Defendant as they have done, would constitute
infringement of the Plaintiff's registered trademark.
9. In the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceut ical
Laboratories, AIR 1965 SC 980 (V 52 C 157) at 990 : 2 Supp PTC 680 (SC). The
parameters of infringement action are laid down which have been followed since
making it the most settled preposition of the law relating

Page: 424

to the basics of the infringement actions. The relevant portions in paragraphs 28 and
29 of the judgment run thus:—

“28…………..In an action for infringement the Plaintiff must no doubt, make out
that the use of the Defendant's mark is likely to deceive, but where the similarity
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between the Plaintiff's and the Defendant's mark is so close either visually,
phonetically or otherwise and the Court reaches the conclusion that there is an
imitation, no further evidence is required to establish that the Plaintiff's rights are
violated. Expressed in another way, if the essential features of the trade mark of the
Plaintiff have been adopted by the Defendant, the fact that the get-up, packing and
other writing or marks on the goods or on the packets in which he offers his goods
for sale show marked differences, or indicate clearly a trade origin different from
that of the registered proprietor of the mark would be immaterial; whereas in the
case of passing off, the defendant may escape liability if he can show that the
added matter is sufficient to distinguish his goods from those of the Plaintiff.
29. Where the two marks are identical no further questions arise; for then the
infringement is made out. When the two marks are not identical, the Plaintiff would
have to establish that the mark used by the Defendant so nearly resembles the
Plaintiff's registered trade mark as is likely to deceive or cause confusion in relation
to goods in respect of which it is registered.”
10. Hence, since the Plaintiffs action in this case is based upon infringement of
registered trademark, the parameters to be considered by the Court are simple once
the imitation of the mark is seen. In this case the essential features of the Plaintiff's
mark are the letters “AUM” which are adopted by the Defendant. The further artistics
and visuals in the Defendant's trademark is of no consequence. There is no such
distinction between the two marks made out by the added matter as would be so
frequently different as to distinguish the Plaintiffs goods from that of the Defendants.
In fact the marks are identical, except for a different font visually. Even in another
script they are identical phonetically. They more than resemble the Plaintiff's mark.
Hence the action for infringement poses no difficulty.
11. The Plaintiffs action is also for passing off. That is a common law remedy under
the tort of deceit. For such an action even the use by the Defendant of the mark is not
essential. If the getup is the same, the action in tort would lie. However, in this case
as in many others since the action is for infringement as well as passing off the
imitations by the Defendant must be seen as much as the use of the mark. In the case
of Kaviraj Pandit (supra) the name Navratna Pharmaceutical Laboratories and Navratna
Pharmacy came up for consideration as to whether they were an imitation meant to
deceive. Though the words were descriptive, it was held that the phonetic expression
could be tending to deceive, if it was a sufficient imitation. It was explained how an
imitation of a mark can be considered in paragraph 29 thus:—

Page: 425

“This has necessarily to be ascertained by a comparison of the two marks-the

degree of resemblance which is neces sary to exist to cause deception not being
capable of definition by laying down objective standards. The persons who would be
deceived are, of course, the purchasers of the goods and it is the likelihood of their
being deceived that is the subject of consideration. The resemblance may be
phonetic, visual or in the basic idea represented by the Plaintiff's mark. The purpose
of the comparison is for determining whether the essential features of the Plaintiff's
trade mark are to be found in that use by the Defendant. The identification of the
essential features of the mark is in essence a question of fact and depends on the
judgment of the Court based on the evidence led before it as regards the usage of
the trade. It should, however, be borne in mind that the object of the enquiry in
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ultimate analysis is whether the mark used by the Defendant as a whole is

deceptively similar to that of the registered mark of the Plaintiff.”
12. Since the resemblance may be either visual or phonetic the mark “AUM” in
English as well as the phonetics in the Sanscrit script would both be covered as being
deceptively similar.
13. Similarly in the case of Amritdhara Pharmacy v. Satya Deo Gupta, 1963 S.C.
449 (V 50 C 63) at page 453 : 2 Supp PTC 1 (SC) the explanation of Parkar, J. In Re
Pianotist Co's application (1906) 23 RPC 774 was set out thus:
“You must take the two words. You must judge them, both by their look and by
their sound. You must consider the goods to which they are to be applied. You must
consider the nature and kind of customer who would be likely to buy those goods.
In fact you must consider all the surrounding circumstances; and you must further
consider what is likely to happen if each of those trade marks is used in a normal
way as a trade mark for the goods of the respective owners of the marks.”
14. For deceptive resemblance two important questions are : (1) who are the
persons whom the resemblance must be likely to deceive or confuse, and (2) what
rules of comparison are to be adopted in judging whether such resemblance exists?”
15. It was held that the two terms Amritdhara and Lakshmandhara had an overall
similarity. It would deceive or cause confusion in a man of average intelligence with
imperfect recollection who would not consider the etymology of the words, but go
merely by the similarity of the two names. Hence it was observed that even if a critical
comparison would disclose some points of differences in the two marks, it would be
the overall similarity of the concept which must be considered as the one tending to
deceive. The two words “AUM” being in nearly identical fonts as well as phonetically
identical lend themselves to confusion if not deception.
16. In the case of Parle Products Pvt. Ltd. v. J.P. & Co., Mysore, (1972) 1 SCC 618 :
1 Supp PTC 346 (SC) which was an infringement action, upon

Page: 426

considering the wrappers of two biscuit packets, the test of the propensity to deceive
was laid down by the Supreme Court. In that case two pictures depicting two scenes
of village life were meticulously examined by the High Court setting out points of
dissimilarity which could be undertaken not by a passing eye but by microscopic
examination of the wrappers of the product. The various intricate and even
insignificant aspects of dissimilarities were meticulously set out upon a scientific
comparison to see the dissimilarities which outnumbered the similarities. The Supreme
Court observed that the general getup of the two wrappers were more or less similar.
After setting out the dictum contained in Kerly's Law of Trade Marks and Trade Names
(9th edition, Paragraph 838). The Supreme Court held in paragraph 9 of the judgment
thus:—

“It is therefore clear that in order to come to the conclusion whether one mark is
deceptively similar to another, the broad and essential features of the two are to be
considered. They should not be placed side by side to find out if there are any
difference's in the design and if so, whether they are of such character as to prevent
one design from being mistaken for the other. It would be enough if the impugned
mark bears such an overall similarity to the registered mark as would be likely to
mislead a person usually dealing with one to accept the other if offered to him”.
“Anyone in our opinion who has a look at one of the packets today may easily
mistake the other if shown on another day as being the same article which he had
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seen before. If one was not careful enough to note the peculiar features of the
wrapper on the plaintiffs' goods, he might easily mistake the defendants' wrapper
for the plaintiffs' if shown to him some time after he had seen the plaintiffs'. After
all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock
Holmes”.
In this case also the two marks containing the same alphabets need not be
placed side by side. They must be considered with the view point of “the main idea
left on the mind” by both of them. As observed by Kerly, a person seeing one mark
and not having seen the two side by side could well be deceived that the diamond
jewellery is of the same seller. Persons seeing the marks would not be able to
remember the exact detail of the Defendant's imitation or the Plaintiff's simplicity
by the “General impressions or by some significant detail then by photographic
recollection of the whole”.
17. In the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5
SCC 73 : (2001) 21 PTC 300 (SC). The similarities between the names “Falcigo” and
“Falcitab” were considered - the dissimilarities, if any, to be ignored. It was observed
in that judgment that the phonetic expression is more important specially for drugs of
foreign companies bearing foreign names which are read and understood by the Indian
public of average knowledge by such expressions and pronunciations. Considering a
case of Amritdhara Pharmaceutical

Page: 427

Laboratories (supra) as also the case of Corn Products Refining Company v. Shangrila
Food Products Ltd., AIR 1960 SC 142 : 1 Supp PTC 13 (SC) which referred to two
products “Gluvita” and “Glucovita”, it was held that the phonetic expressions were
likely to deceive. Hence it was held that only the overall similarity of the composite
word is to be regarded. Considering the case of Kaviraj Pandit (supra) for the test of
comparison of two marks it was held that the mark, if copied phonetically, visually or
in its basic idea, can be successfully challenged.

18. Earlier cases which considered words such as Aristoc/Rysta in Aristoc Ltd. v.
Rysta Ltd., 962 RPC 65 being phonetically similar, the words “Picnic/Piknik” in S.M.
Dyecem Ltd. v. Cadbury (India) Ltd., (2000) 5 SCC 573 : (2000) 20 PTC 297 (SC), the
mark “Cherish/Cheri” in Indchemie Health Specialities Pvt. Ltd. v. Naxpar Labs Pvt.
Ltd., (2002) 24 PTC 341 (Bom) (DB) were similarly held to have the propensity to
confuse and deceive. In those judgments the factors required to be considered in an
action for passing off an unregistered trademark were exclusively set out.
19. Keeping the principles of comparison laid down in the aforesaid judgments in
mind the two marks should not be seen together. They should be merely visualised;
What would a prospective purchaser think when he sees the Defendant's posters after
seeing the Plaintiff's trademark? The purchaser is unlikely to discern the difference
merely because of the addition of the number “3”. He would confuse himself to think
that the diamonds advertised by the Defendant is the same as the diamonds
advertised by the Plaintiff. Since this is an infringement action, we are not concerned
with whose sales would increase and why. We are more concerned with the confusion
that would be caused in the minds of the purchasers to mistake the products of one
for that of another. It is that confusion which must be avoided by the Court. It may be
mentioned that though this is an action in passing off also, the main basis of the
Plaintiffs claim is upon infringement of a registered trademark. The two marks in this
case are unmistakably similar.
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20. It is contended on behalf of the Defendant that it contains a generic expression.

It is equivalent to term “God” which is incapable of registration as a Trademark. It
may be mentioned that that stage has long passed. Both the parties have sought to
register the mark and it does not allow for the Defendant to contend that he should
not have registered what he proceeded to do. Mr. Madon drew my attention to the case
of Rupee Gains Tele-Times Pvt. Ltd. v. Rupeea Times (01.09.1995 DEL. HC), (1995) 35
DRJ 30 : (1995) 15 PTC 384 (Del) with regard to generic words which is not applicable
in view of the conduct of both the parties in seeking to register their respective
Trademarks.
21. Mr. Madon contended that it is a class of persons who are the customers which
would largely matter in considering the deceptive angle. He drew my attention to the
case of Loreal India Pvt. Ltd. v. Henkel Marketing India Ltd., (2005) 6 C.R. 77, which
dealt with purchasers in cosmetics business. It was

Page: 428

observed in paragraph 22 of the judgment that the persons buying elitist products
were not expected to purchase them without reading the trademark prominently
displayed on the trade- dress and hence the Defendant could not seek to have such
Trade address as would lead to a possibility of confusion. However, in that case the
dissimilarities of the getup of the products were considered in the colour scheme of
the trade dress and the depiction of the Model on the label, an aspect which the
Supreme Court in the case of Parle Products (supra) had directed to desist from.

22. Mr. Madon argued that the class of customers who purchase diamond jewellery
would be the upper crust of the Society who would be required to pay large amounts
for purchase of a single item. They would be unlikely to be swayed by a mark or a
label depicting the name of another seller of the same products. He drew an analogy
for such purchase to the purchasers of cars and referred to the judgment of the
Supreme Court of Judicature - Court of Appeal of the Royal Courts of Justice in the
case of LANCER TRADE MARK APPLICATION, 1987 RCC 303. An application to register
“Lancer” as a Trademark was opposed by the owner of the earlier registration “Lancia”
- The Chancery Court initially observed at page 318 that the Motoring public was very
well informed and well able to distinguish the two marks. The reasoning given for such
exercise was that the vehicles were “expensive items and the potential purchaser will
study the market carefully before parting with the thousands of pounds which a new
car will cost”. It was observed that “the discerning buyer of the cars would
immediately pick out the differences between the two marks. Even the Appeal Court in
Appeal similarly observed at page 325 of the judgment. Its purchase will usually be
considered with some care, and will be assisted in a competitive market by an
abundance of brochure literature”.
23. Alas the purchase of diamond jewellery is a completely different ballgame.
There is no literature for understanding the quality and carats of the diamonds as is in
the case of the car industry. Diamonds are dicey. They are essentially only ornamental.
Their intrinsic value is not known to a majority of purchasers. The difference between
real diamonds and what are publicly called American diamonds is never apparent. It
cannot be ascertained and understood except by Gemologists. Semi- precious stones
such as zircons are much the same in appearance. In fact even cut glass may reflect
no difference to several uninformed though rich buyers. The purchaser may often
require to buy a tiny item as an important and lasting gift. Even purchase for oneself
would be for a life- time. The tarnishing of the diamonds may be a malaise which
would present itself much later. Unlike cars, a purchaser of diamonds would rather go
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by a brand name. The comparison merely on account of the class of customers

considering the monetary paying power would be a shallow perspective. The analogy
applied in the case of Lancer Trade Mark (supra) where buyers can and do discuss the
pros and cons of the models from the experience of previous users would not be
applicable in the case of diamonds which would be a

Page: 429

fine gift or a status symbol left in dark vaults where their shine may deteriorate with
age, if it is of any inferior quality.

24. Mr. Madon's analogy with the adoption of names in case of five-star hotel
business shown in the case of Bharat Hotels Limited v. Unison Hotels Limited, (2004)
28 PTC 404 (Delhi) is much in the same light. Several hotels with prefix “GRAND”,
came up for consideration. It was observed that when there was prior use of the said
word for a hotel chain or for another new hotel with or without the suffix, the Plaintiff
would be entitled to protection of his mark. In that case prior use was not seen and
the use of the words “The Grand” by the Defendant was held permissible as the
Plaintiff had not acquired distinctiveness or secondary meaning in respect of the name
of the hotel.
25. Considering the two marks, the registered trademark of the Plaintiff and the yet
unregistered trademark of the Defendant, Mr. Madon argued that at best the letters
“AUM” cannot be used by the Defendant. But the other distinct expression in the
trademark being the number “3”, which is the Sanskrit script of the word “AUM” and
the words diamond jewellery cannot be prohibited. The Plaintiff takes no exceptance to
the words diamond jewellery. However, the expression denoted by number “3” forms a
part of the entire getup of the Defendant together with its phonetics. Since no part of
it is yet registered and since registration would prima facie be seen to be likely to be
refused in view of the Plaintiff's registered mark, the entire of the expression would fall
within the mischief of an infringement action. The added matter which Mr. Madon
seeks to have excepted from the injunction order is, therefore, required to be
considered.
26. Halsbury's laws of England IV Edition Volume 48 in paragraph 89 lays down
precisely the parameters of such added matter thus:—
“89. Irrelevance of added matter; comparison with passing off. As the
registration of a trade mark gives an exclusive right to its use, it is no defence for a
defendant who has used the registered mark or its essential features to claim to
have added additional words or matter in order to negative confusion.
… The comparison is between what the defendant actually does (ignoring matter
added to the mark used by him) and any normal use of the plaintiffs mark
comprised within the registration. Thus, in these respects, infringement rights are
wider than rights in connection with passing off, where the comparison is between
what the defendant does as a whole and what the plaintiff has done as a whole”.
27. The Defendant has shown extensive sale in India and abroad for years even
prior to the use of the mark “AUM” by them as can be seen from the annual reports of
prior years produced by the Defendant. Though these represent their consolidated
turnover, in India and abroad, the Plaintiff's action is only with regard to their retail
trade in India in their various outlets and showrooms. The Defendant has prided itself
on the length of its business - the last 17 years- well before the

Page: 430
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Plaintiff set his foot into it. The Defendant has accordingly shown its worth in the
market even without the use of the mark “AUM”. Consequently upon the Defendant's
case itself the real necessity of the use of the mark is not seen. Indeed as has been
pointed out by the Plaintiff in paragraph 14 of the plaint itself, a fact which is not
disputed by the Defendant, that it is only case of the sentimental nexus between the
expression “AUM” and the name of the father of the Defendant's Director, that the
Defendant is keen on using the trademark since the year 2006.

28. It may be mentioned that the Plaintiff has strangely sought to sell his mark not
only to the Defendant, but to others as is his case in paragraph 17 of the plaint. It
may be that the Plaintiff only seeks to make money from his trademark already
registered not very long ago. One does not hear of cases of sale of trademark. Genuine
Trademarks, are used as one's own distinguishable mark in business. They are not
registered for sale. The Plaintiffs case however, is different. A lack of complete
bonafides is reflected. Paragraph 13 of the plaint shows that the “Plaintiff has been
time and again receiving “feelers” from various parties to purchase his trademark. This
is not what a trademark owner in any market normally expects. One wonders how only
the Plaintiff could make a sale of his own trademark.”
29. Nevertheless, a transaction of the kind between the Plaintiff and the Defendant
is prima facie seen to have transpired, given the above unique facts of this case. Since
that transaction has not materialised, stricto senso the Defendant's right to use the
Plaintiff's registered trademark is not established.
30. Mr. Madon contended that the Plaintiff is a small time businessman; the
Defendant is a big time settled diamond merchant. The sales of the parties are highly
unequal, the Defendant's being far more than that of the Plaintiff's. The export trade of
the Defendant is similarly large. The Plaintiff carries on business from his residence,
whereas the Defendant has various show-rooms and outlets aside from its registered
office. All these aspects could have been considered in an action for passing off
simplicitor, if the Plaintiff's trademark was not registered. Since the Plaintiffs action is
essentially on infringement of the trademark “AUM”, for prevention of the use of the
said trademark or any other deceptively similar name, mark, word or style on jewellery
products, the Defendant's admitted use brings his case within the mischief of the
Trademarks Act.
31. Hence, a case for grant of injunction is made out. The Notice of Motion is made
absolute in terms of prayer (b).
32. The Defendant shall not use the mark “AUM” or any other deceptively similar
mark, name, word or style as a part of the Defendant's jewellery products.
———
† Ordinary Original Civil Jurisdiction
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