M/s.Aravind Laboratories,No.3/7, Valluvar Salai,Ramapuram,Chennai-600 089 v. Modicare

4S.No.TRADE MARKAPPLN.REGD.NO.DATECL.26EYETEX PALLAVI (Word PerSe)12611161/14/04327EYETEX DAZLLER (Word PerSe)12611171/14/0434. It is the claim of the plaintiff that in April2010, an advertisement issued by the defendant appeared ina magazine, which indicated that they were marketing a nailpolish with the trade mark "Daily Dazzler". Therefore,complaining that the defendant is guilty of infringementand passing off, the plaintiff has come up with the abovesuit and the applications for injunction.5. The plaintiff has filed as document No.1 series,the copies of the cartons in which their products are soldwith the label which contain the words "EYETEX DAZLLER"written in an artistic manner. The plaintiff has also filedthe certificates of registration of their trade marksbearing Nos.1261112 and 1261117, as document Nos.2 and 3.These documents disclose that the plaintiff has obtainedregistration of the word "EYETEX DAZLLER" in respect ofNail Glitter and Nail Polish under Class 3 with effect from14.01.2004 and had also obtained registration of a devicewhich includes the words "EYETEX DAZLLER". Theadvertisement issued by the defendant in a magazine titled"New Woman" is filed as document No.4. Document No.4 showsthe picture of a bottle in which the nail enamel marketedby the defendant is displayed. It contains the words "Daily https://hcservices.ecourts.gov.in/hcservices/ 5Dazzler". Therefore, based on these documents, theplaintiff complains that there is infringement and passingoff.6. In addition to the above documents, the plaintiffalso filed copies of sales invoices from the year 2003 to2010, as additional set of documents, in the course ofhearing of the applications, to show that they haveactually been using the trade mark "EYETEX DAZLLER" inrelation to their Nail Glitters.7. In response to the averments contained in theapplication for injunction, the respondent/defendant hasfiled a counter affidavit contending as follows:(a) that the defendant is part of the Modi Group ofCompanies founded in 1932, involved in the business of homecare and personal care products, including cosmetics;(b) that the defendant markets all its productsthrough direct marketing and not through retail outlets; (c) that the defendant manufactures and markets itsproducts under various trade marks, including the mark"Essensual 20", which is used extensively in respect ofHand and Body Lotions, Lipsticks, Lip Pencils, Lip Gloss,Foundation, Base Makeup, Powder, Blush, Eye Shadow, EyePens and Eye Pencils ever since the year 2000;(d) that the defendant's turnover during the financialyear 2009-2010 was over Rs.50.00 crores, out of which, asum of Rs.4.72 crores was generated by the sale of the https://hcservices.ecourts.gov.in/hcservices/ 6products under the brand name/trade mark "Essensual 20";(e) that the defendant is the registered proprietor ofthe marks ESSENSUAL (No.782714), ESSENSUAL 20 TFC(No.1354408), ESSENSUAL 20 THE FRENCH COLLECTION(No.1351239), ESSENSUAL AROMA (No.1041035), ESSENSUALSPORTS (No.1029340) and ESSENSUAL WOMAN (No.1029342) inClass 3 and that the mark 'ESSENSUAL 20 DAILY DAZZLER' isanother extension of the mark "Essensual 20";(f) that the Nail Enamels manufactured by thedefendant are primarily intended to add glitter to thenails and to make them attractive and impressive;(g) that therefore the defendant honestly adopted thename "Daily Dazzler" in respect of its "Essensual 20" nailenamels;(h) that "Daily Dazzler" variant of "Essensual 20"Nail Enamel was introduced by the respondent in August2009; (i) that the defendant also offers other variants of"Essensual 20" Nail Enamels, such as The French Collection(TFC), Show Off, Style n Shine;(j) that no person can claim any monopoly over theEnglish word "Dazzle";(k) that while the trade mark used by the plaintiff is"EYETEX DAZLLER", the mark adopted by the defendant is"Essensual 20 Daily Dazzler" and hence, the broad andessential features are different; https://hcservices.ecourts.gov.in/hcservices/ 7(l) that the channels of marketing are different forthe plaintiff and the defendant, since the defendant doesdirect marketing; and(m) that while the plaintiff's product is priced atRs.40/-, the defendant's product is priced at Rs.100/- andhence, there is no possibility of deception or confusion.8. The defendant filed the following documents in thefirst instance:(i) print outs of the website pages of differentmanufacturers or marketers of the Nail Polish and NailGlitters to show that many of them use the word "Dazzle" asdescriptive of their products;(ii) the trade mark applications filed by thedefendant for their mark "Essensual 20" and their variants;(iii) sample invoices evidencing the sale of"Essensual 20 Nail Enamel – Daily Dazzler", for the period2009-2010;(iv) the advertisements and write ups in respect ofthe defendant's products;(v) the business manual of the defendant;(vi) the price list of the defendant's products; and(vii) advertisement of the mark "Dazzler" in the TradeMarks Journal.9. In addition to the above documents, the defendantalso filed one set of additional documents, which are asfollows: https://hcservices.ecourts.gov.in/hcservices/ 8(i) the examination report in respect of the trademark No.1261117 of the plaintiff;(ii) notice given to the plaintiff by the Trade MarksRegistry;(iii) journal publication of the plaintiff's trademark;(iv) trade mark No.231497 of the plaintiff; and(v) Chartered Accountant's certificate showing thesales turnover and promotional expenses of the defendant'sproducts for the year 2001 to 2010.10. Subsequently, the defendant filed another set ofdocuments, which are as follows:(i) trade mark application No.550019 filed by a thirdparty for the mark "Dazzle";(ii) the examination report in respect of the trademark No.550019;(iii) the trade mark application No.971504 filed by athird party;(iv) trade mark application No.925947 filed by anotherthird party;(v) examination report in respect of TM No.925947; and(vi) the trade mark application of the defendantbearing No.1835528, for the "Daily Dazzlers".11. From the pleadings and the documents, it is clear(i) that the plaintiff is the "registered proprietor" ofthe device mark "EYETEX Dazller" bearing Trade Mark https://hcservices.ecourts.gov.in/hcservices/ 9No.1261112 with effect from 14.1.2004 in respect of nailglitters, nail polish and other beauty specialities inrelation to nail; (ii) that the plaintiff is the"registered proprietor" of the word mark "EYETEX DAZLLER"bearing Trade Mark No.1261117 with effect from 14.1.2004 inrespect of nail glitters, nail polish; and (iii) that theplaintiff is actually using the registered marks, as seenfrom the invoices from 2003 to 2010, filed as additionaldocuments.12. Therefore, by virtue of the provisions of Section28 (1) of the Trade Marks Act, 1999 and by virtue of thedecision of the Apex Court in Midas Hygiene Industries (P)Ltd vs. Sudhir Bhatia {2004 (3) SCC 90}, the plaintiff isentitled to an order of injunction restraining thedefendant from committing infringement of the registeredtrade mark, provided I find infringement and I also findthat the defence set up by the defendant, does not fallunder any of the exceptions contained in Sections 30, 33,34 and 36. In other words, we have to see (i) if the actionof the defendant falls within the purview of any of thesub-sections of Section 29, so as to constituteinfringement or (ii) if the defence set up by the defendantfalls under any one or more of the exceptions.Alternatively, I should find passing off. 13. The contents of the counter affidavit filed by thedefendant, which I have extracted in para 7 above, would https://hcservices.ecourts.gov.in/hcservices/ 10show that their defence could be classified into thefollowing:-(i) The defence arising out of Section 17.(ii) The defence arising out of Section 30(2)(a) and(iii) The defence arising out of Section 35 DEFENCE UNDER SECTION 17:14. Admittedly, the registration obtained by theplaintiff is in respect of the whole of the mark "EYETEXDazller". Though the plaintiff has also obtainedregistration of the word "EYETEX" separately, they have notchosen to obtain registration for the word "Dazller"separately. Section 15(1) of the Act, enables theproprietor of a trade mark who claims to be entitled to theexclusive use of any part of the trade mark separately, toapply both for the registration of the whole as well as forthe registration of the parts, as separate trade marks. Buteach of those marks should satisfy all the conditionsnecessary for its registration as an independent trademark. Under Section 17(1) of the Act, if a trade markconsists of several matters, its registration would conferon the proprietor, the exclusive right to the use of thetrade mark taken as a whole. But it is conditioned by sub-section (2) of Section 17, to the following effect:-(a) If the trade mark contains any part which isneither the subject matter of a separate application norregistered separately as a trade mark, then the https://hcservices.ecourts.gov.in/hcservices/ 11registration shall not confer any exclusive right in thematter forming only a part of the whole of the registeredtrade mark.(b) If the trade mark contains any matter which iscommon to the trade or is otherwise of a non-distinctivecharacter, the registration shall not confer any exclusiveright in the matter forming only a part of the whole of theregistered trade mark.15. On the basis of the above provision, it is pointedout by the defendant that the Trade Mark No.1261112,registered in favour of the plaintiff, is a device markcontaining not only the words "EYETEX Dazller", but alsothe words "Nail Glitter" along with the picture of two nailpolish bottles and the sketch of a lady showing herfingers. The other mark viz., Trade Mark No.1261117,registered in favour of the plaintiff is only a word mark,again containing two words viz., (i) EYETEX and (ii)DAZLLER. 16. Apart from the above two registered marks, theplaintiff has also obtained registration of as many as 25marks, all of which contain the word "EYETEX", eitherindependently or in combination with other words such as"Kumkum", "Poornima", "Divyaa", "Pallavi" etc. Therefore,it is clear that though the plaintiff has obtainedindependent registration of the word "EYETEX", theplaintiff did not obtained registration of the word https://hcservices.ecourts.gov.in/hcservices/ 12"DAZLLER", separately.17. As a matter of fact, the defendant filed threesets of additional documents, in the course of hearing ofthe above applications. Some of these additional documentsshow that if an attempt had been made by the plaintiff tohave the word "DAZLLER" separately registered, it wouldhave met with stiff resistence from the Registry. One ofthe documents filed by the defendants is the copy of the"Examination Report" of the Registrar of Trade Marks, inrespect of the trade mark application No.1261117, filed bythe plaintiff. In paragraph 1 of the said report, theRegistrar raised an objection that the mark directlyreferred to the quality of the goods. In the Annexures tothe Report, the Registrar had also pointed out that therewere conflicting marks, either already existing on theRegister or pending consideration. One set of conflictingmarks pointed out in the Report, related to the word"EYETEX", registered in favour of the plaintiffsthemselves. The other set of conflicting marks pointed outin the Report, related to the word "Dazzle". Threecompanies by name Cherie Cosmetics Pvt. Ltd., VasuPharmaceuticals Pvt Ltd., and Pacific International, hadapplied for registration of the very same word "DAZZLE"under Application Nos. 550019, 925947 and 971504,respectively under Class 3 itself. These applications werepending with the Registry on 21.1.2004 when the plaintiff https://hcservices.ecourts.gov.in/hcservices/ 13had applied for the registration of their mark "EYETEXDAZLLER". Therefore, after holding a hearing on 8.4.2004,the Registrar of Trade Marks appears to have accepted thetrade mark of the plaintiff, under Application No.1261117,with a condition that it is "to be associated withregistered T.M.Nos.231497, 271583 and 412748". 18. Thus it is clear that the Registrar of Trade Markshad raised an objection with regard to the word "DAZZLE" onthe ground that it was descriptive and also on the groundthat there were three applications pending as on the dateof application of the plaintiff. The Registrar also raisedan objection with regard to the word "EYETEX" on the groundthat the plaintiffs themselves had registration for theword "EYETEX". Ultimately, the issue was resolved bygranting registration to the whole of the mark "EYETEXDAZLLER". 19. Therefore, it is clear that the plaintiff couldnot have obtained registration for the word "DAZLLER"independently, if they had taken recourse to Section 15(1)of the Act. This is fortified by another set of documentsfiled by the defendant viz., (i) the Trade MarkApplications bearing Nos.550019, 971504 and 925947 and (ii)the Examination Reports in respect of these threeapplications. These documents would show--(i) that Cherie Cosmetics Pvt. Ltd., applied forregistration of the word "DAZZLE" way back on 29.4.1991 https://hcservices.ecourts.gov.in/hcservices/ 14under Application No.550019, but withdrew the applicationafter the Registrar raised an objection that the mark had adirect reference to the nature and quality of the goods;(ii) that one Jivan Narayandas Rathi applied forregistration of the word "DAZZLE" way back on 20.11.2000under Application No.971504, but abandoned the applicationand (iii) that one Vasu Pharmaceuticals Pvt Ltd., appliedfor registration of the word "DAZZLE" way back on 19.5.2000under Application No.925947, but abandoned the applicationafter the Registrar raised an objection that the mark wasdescriptive.20. Therefore, it is clear that the registration ofthe trade mark in favour of the plaintiff was granted as awhole (i.e., as EYETEX DAZLLER) and that one of theconstituent parts of the registered mark viz., the word"DAZLLER" is not registered separately. Even the attemptmade by others to get the word "DAZZLE" registered, metwith stiff resistence from the Registry on the ground thatthe word was descriptive. Therefore, it is anybody's guesstoday as to whether the plaintiff could have obtainedregistration for the word "DAZLLER" separately, in terms ofSection 15(1).21. Once it is seen that the word "DAZLLER" is notseparately registered in favour of the plaintiff and thateven the attempt made by others to appropriate the word https://hcservices.ecourts.gov.in/hcservices/ 15'dazzle' failed, then the prescription in Rule 17(2)(a)(ii)would come into operation. Consequently, the defendant'suse of the word "DAZLLER", as part of the mark "DailyDazzler" cannot be held to be an act of infringement. 22. In one of the earliest cases which arose under theTrade Marks Act,1940 before the Supreme Court in TheRegistrar of Trade Marks vs. Ashok Chandra Rakhit Ltd {AIR1955 SC 558}, a question arose as to whether the proposalof the Registrar for the disclaimer of the word "Shree" inrespect of a composite mark containing a word as well as adevice, was justified or not. It is relevant to note atthis stage that the Registrar had the power under the oldAct, to require the proprietor of a mark to disclaim anypart of the mark. The real purpose of requiring adisclaimer, as pointed out by the Apex court in that case,was to define the rights of the proprietor under theregistration so as to minimise, even if it cannot whollyeliminate, the possibility of extravagant and unauthorisedclaims being made on the score of registration of the trademarks. But this provision for disclaimer was omitted and ageneral proposition was incorporated in Section 17(2) ofthe 1999 Act. Therefore, while considering the validity ofthe disclaimer, the Supreme Court made certain interestingobservations in paragraph 8 of its decision, which reads asfollows:-"8. The third thing to note is https://hcservices.ecourts.gov.in/hcservices/ 16that the avowed purpose of the Sectionis not to confer any direct benefit onthe rival traders or the generalpublic, but to define the rights of theproprietor under the registration. Theregistration of a trade mark conferssubstantial advantages on itsproprietor as will appear from theSections grouped together in Chapter IVunder the heading "Effect ofRegistration". It is however anotorious fact that there is a tendencyon the part of some proprietors to getthe operation of their trade marksexpanded beyond their legitimatebounds. An illustration of an attemptof this kind is to be found in In Re :Smokeless Powder Co's Trade Mark.Temptation has even led someproprietors to make an exaggeratedclaim to the exclusive use of parts ormatters contained in their trade marksin spite of the fact that they hadexpressly disclaimed the exclusive useof those parts or matters. Referencemay be made to Greers Ltd vs. Pearmanand Corder Ltd, commonly called the"Banquet" case.".23. Again in paragraph 14 of the same decision, theSupreme Court held as follows:-"14. It is true that where adistinctive label is registered as awhole, such registration cannot https://hcservices.ecourts.gov.in/hcservices/ 17possibly give any exclusive statutoryright to the proprietor of the trademark to the use of any particular wordor name contained therein apart fromthe mark as a whole. As said by LordEsher in Pinto vs. Badman 'the truth isthat the label does not consist of eachparticular part of it, but consists ofthe combination of them all' ". 24. In paragraph 9-082 of the Kerly's Law of TradeMarks and Trade Names (14th Edition-South Asian Edition2007), it is stated as follows:-"Where a trade mark is registered subject toa disclaimer of the right to the exclusive use ofa specified element of the registered mark, therights conferred by registration are restrictedaccordingly. It follows that an objection basedupon an earlier registration cannot succeed wherethe only resemblance between the marks in issueis an element for which protection has beendisclaimed".Therefore, on the basis of the above judgment of theSupreme court and on the foundation of Section 17(2)(a)(ii)of the 1999 Act, a defence is raised by the defendant thatthe use of the word "Dazzler", which is not registeredseparately, would not amount to infringement. 25. But relying upon certain observations of the Apexcourt in Ramdev Food Products Pvt. Ltd. v. ArvindbhaiRambhai Patel [AIR 2006 SC 3304], Ms.Gladys Daniel, learnedcounsel for the plaintiff contended that in an action for https://hcservices.ecourts.gov.in/hcservices/ 18infringement, such a dichotomy is not permissible. It washeld in the said judgment, as follows:- "80. There are three elements inthe said trade mark viz., 'Ramdev','Masala' and the 'horse'. The deceptioncould be as regards the prominentfeatures of the said trade mark.81. Section 15 of the 1958 Act, inour considered opinion, is notattracted in the instant case. Byreason of the said provision,registration of trade mark in regard tothe exclusive use is permissible bothin respect of the whole trade mark asalso the part thereof separately. Wheresuch separate trade mark in regard to apart of it is applied for, theapplicant must satisfy the conditionsapplying to and have all the incidentsof an independent trade mark. Sub-section (3) of Section 15 of the 1958Act provides for a case where theproprietor of several trade marksclaimed registration in respect of thesame goods or description of the goodswhich while resembling each other inthe material particulars thereof yetdiffer in respect of the mattersprovided for therein. We are not, inthis case, concerned with such a legalquestion.82. In Ashok Chandra Rakhit Ltd(AIR 1955 SC 558), whereupon reliance https://hcservices.ecourts.gov.in/hcservices/ 19has been placed by Mr.Nariman, thisCourt was concerned with a proprietarymark of 'Shree'. It was claimed thatthe mark 'Shree' was a trade mark apartfrom the device as a whole and it wasan important feature of its device. Therespondents were carrying on businessin the name and style of Shree DurgaCharan Rakshit. It was in the peculiarfactual background obtaining therein,this Court, referred to the decision ofLord Esher in Pinto vs. Badman {8 RPC181} to say that where a distinctivelabel is registered as a whole suchregistration cannot possibly give anyexclusive statutory right to theproprietor of the trade mark to the useof any particular word or namecontained therein apart from the markas a whole. This Court in theaforementioned factual backdrop opined:"....This, as we have alreadystated, is not quite correct, for apartfrom the practice the Registrar didadvert to the other importantconsideration, namely, that on theevidence before him and the statementof counsel it was quite clear that thereason for resisting the disclaimer inthis particular case was that theCompany thought, erroneously no doubtbut quite seriously, that theregistration of the trade mark as awhole would in the circumstances of https://hcservices.ecourts.gov.in/hcservices/ 20this case, give it a right to theexclusive use of the word "Shree" as ifseparately and by itself it was alsoits registered trade mark and that itwould be easier for it to be successfulin an infringement action than in apassing off action. It was preciselythe possibility of such an extravagantand untenable claim that called for adisclaimer for the purpose of definingthe rights of the respondent companyunder the registration...." (Emphasissupplied).83. The said decision has noapplication to the fact of this case.84. Mr.Nariman is also not correctin contending that only a label hasbeen registered and not the name'Ramdev'. Definition of 'mark' ascontained in Section 2(j) of the 1958Act also includes name, signature,etc."26. Again in para 86 of the report in Ramdev FoodProducts, the Supreme Court held as follows:-"86. The right conferred in terms ofSection 28 of the 1958 Act although isrequired to be read with Sections 15 and 17thereof but it is difficult to accept thateach part of the logo was required to beseparately registered. Section 28 of the1958 Act confers an exclusive right of usingtrade mark to a person who has got the trademark registered in his name. Such right is, https://hcservices.ecourts.gov.in/hcservices/ 21thus, absolute. Sub-section (3) of Section28 raises a legal fiction for the purposesspecified therein but we are not concernedtherewith in the instant case. Sub-section(2) of Section 29 inter alia provides forthe defences".27. It is seen from the above observations that inRamdev Food Products, the Supreme Court not only took noteof the decision in Ashok Chandra Rakhit {AIR 1955 SC 558},referred to in para 18 supra, but also took note ofSections 15 and 17 and compared them with Sections 28 and29. Therefore, it is contended by the learned counsel forthe plaintiff that Sections 15(1) and 17(2), cannot bepressed into service by the defendant.28. But unfortunately,the above contention of thelearned counsel for the defendant, cannot be accepted for avariety of reasons. They are as follows:-Reason No.1:(i) It is seen from the narration of facts containedin paragraph 3 of the decision in Ramdev Food Products,that what was registered as a trade mark bearing Trade MarkNo.447700 on 3.1.1986 was only the word "Ramdev". Again itis seen from paragraph 9 of the said decision, that thereliefs sought by the appellant company before the CityCivil Court, Ahmedabad in C.S.No.828 of 2000 was only foran injunction restraining the defendants therein from inany manner using the trade mark "Ramdev" in their label, https://hcservices.ecourts.gov.in/hcservices/ 22packing materials etc. Paragraph 10 of the decision showsthat the applications for interim injunction covered bothinfringement as well as passing off. From paragraph 12 ofthe decision, it is seen that one of the principal defencesraised by the respondents in that case was that theappellant had no exclusive right to use "Ramdev" apart fromthe label as a whole.(ii) If the facts of the case in Ramdev Food Products,as reflected from paragraphs 3 to 12 are carefullyanalysed, before coming to para 80 of the decision, it willbe clear that the whole dispute revolved around the word"Ramdev". Apart from the word "Ramdev", the trade markcontained two more elements, as per para 80 of the saiddecision. They were (i) the word "Masala" and (ii) thedevice of a horse. Though para 3 of the decision refers tothe registration of the trade mark "Ramdev" alone underTrade Mark No. 447700, the later paragraphs refer to theregistration of several other marks. It is not knownwhether the other trade marks, whose registration numbersare found in paragraph 9 of the decision, were registeredas composite marks or as device marks.(iii) In any case, when the essential part of thetrade mark which became the subject matter of dispute inthat case was the word "Ramdev", the defence taken underSections 15 and 17 was frivolous and hence the SupremeCourt rejected the same. To put it differently, the trade https://hcservices.ecourts.gov.in/hcservices/ 23mark comprised of 3 elements viz., (1) Ramdev (2) Masalaand (3) horse, as seen from para 80 of the said decision. Acombined reading of the other paragraphs containing thefacts of the case would show that the mark "Ramdev" itselfwas registered. Therefore, it became a prominent featureand an essential part of the whole mark, which cannot bepermitted to be hijacked, by taking recourse to Sections 15and 17. In para 73 of the report, the Supreme Courtindicated that what was registered was a logo wherein thewords "Ramdev" and "Masala" were prominent. The attempt ofthe respondents therein, was not to copy the other word"Masala" or the device of a horse. Their attempt was tohijack the word "Ramdev" itself. This is why the SupremeCourt made the observations extracted in para 86 above.Therefore, the decision in Ramdev, cannot be understood asone laying down any law contrary to statutory provisions. Reason No.2:(i) The decision in Ramdev, appears to have arisenunder the 1958 Act, as seen from the discussion fromparagraphs 26 onwards. But the case on hand has arisenunder the 1999 Act. Sections 17 and 29 underwent sweepingchanges under the 1999 Act. Under Section 17 of the 1958Act, the registration of a mark was made subject todisclaimers. Consequently, if any disclaimer was recorded,while registering a mark, the disclaimed portion cannot beconsidered, for the purpose of infringement. Therefore, it https://hcservices.ecourts.gov.in/hcservices/ 24follows as a corollary that every part of the mark wasentitled to protection, if no disclaimer was recorded inrespect of the same. In other words, the whole of the markas well as every part thereof in respect of which there wasno disclaimer, was entitled to protection, under the oldAct. But under the 1999 Act, the power to incorporate adisclaimer was taken away from the Registrar/Tribunal andwas made part of Section 17. The objects and reasons forinserting a new Section 17, is stated as follows:-"Objects and Reasons-Clause 17. -This clause which deals with the effectof registration of parts of a markseeks to omit the provision relating torequirement of disclaimer and toexplicitly state the generalproposition that the registration of atrade mark confers exclusive right tothe use of the trade mark taken as awhole and not separately to each of itsconstituent parts, if any."(ii) Therefore, in cases arising under 1958 Act, theexclusive right to the use of a trade mark conferred bySection 28(2), depends upon the question as to whether ornot, any disclaimer was incorporated in the certificate ofregistration. On the other hand, if the case arises underthe 1999 Act, the exclusive right to the use of the mark,in terms of Section 28(2), is made subject to thelimitations incorporated in Section 17(2) itself. In other https://hcservices.ecourts.gov.in/hcservices/ 25words, the exclusive right conferred by section 28 (2) wascircumscribed under the old Act, by man made restrictions(in the form of disclaimer imposed by Regisrar). But it isnow circumscribed by statutory restrictions under the 1999Act. Therefore, the strong reliance placed by the learnedcounsel for the plaintiff upon the decision in Ramdev FoodProducts, is of no use.(iii) Therefore, a registered proprietor of a trademark cannot succeed in an action for infringement, inrespect of that element or part of the trade mark, forwhich protection is unavailable either on account of adisclaimer incorporated in the Certificate itself or onaccount of the statutory prescription contained in section17 (2)(a). (iv) Since the power of the Tribunal under Section 17of the 1958 Act, to insist upon the proprietor disclaimingany right to the exclusive use of any part of the trademark has been taken away and a general prohibitionincorporated under Section 17 (2) of the new Act, thedecision of the Supreme Court in Ramdev Food Products, hasto be understood in the context of the new Act. 29. Ms.Gladys Daniel, learned counsel for theplaintiff relied upon an unreported decision of the DelhiHigh Court in Procter and Gamble vs. Joy Creators inC.S.No.2085 of 2008 dated 21.2.2011. In that case, theplaintiff had registration in respect of the trade marks https://hcservices.ecourts.gov.in/hcservices/ 26OLAY, OLAY TOTAL EFFECTS and TOTAL EFFECTS, in respect ofmake up base, skin moisturising cream, lotions and gelsetc. The defendant before the Delhi High Court filed anapplication for registration of a label containing the mark"JOY ULTRA LOOK TOTAL EFFECTS". The plaintiff filed anotice of opposition and upon finding that the defendantwas committing infringement, the plaintiff also filed thesuit in question. But unfortunately, the defendantsremained ex parte after filing the written statement.Therefore, the Delhi High Court proceeded to pronounce ajudgment on merits, ex parte. While doing so, the DelhiHigh Court held in para 16 of its decision that the words"TOTAL EFFECTS" are an essential and integral component ofthe plaintiff's registered trade mark OLAY TOTAL EFFECTSand that the defendants had virtually lifted 2 out of the 3words comprising the registered trade mark. Consequentlythe Court granted an ex parte decree. 30. But with great respect, I cannot follow the saiddecision of the Delhi High Court for two reasons viz., (i)that it was an ex parte decision and (ii) that there is nodiscussion in the said decision about the impact ofSections 15 (1) and 17(2) of the Act.31. It is next contended by the learned counsel forthe plaintiff that it is not open to the defendant tocanvass the validity of the registration of the mark, in asuit for infringement. In support of the said contention, https://hcservices.ecourts.gov.in/hcservices/ 27she relied upon the decision of the Division Bench of thisCourt in S.A.P. Balraj v. S.P.V. Nadar & Sons [AIR 1963Madras 12], where it was held:"In the context of Section 23 andSection 24, it is clear that thevalidity of a registered trade markcannot be canvassed in a suit forinjunction resulting from an allegedinfringement of a trade mark. Theperson aggrieved must adopt, in such acase, the special procedure provided inSection 46 read with Section 72 of theAct for modification or cancellation ofthe registered trade mark. Where such aspecial proceeding is already pendingin another Court, it is not proper inthe interests of justice for the Courtdealing with the suit for injunction toexpress any opinion upon the merits ofthe controversy regarding validity ofthe trade mark."32. But the said contention arises out of amisunderstanding of the first defence raised by thedefendant. The defendant is not challenging the validity ofthe registration. The defendant is merely pointing out thatthe protection available under Section 28(1), iscircumscribed by Section 17(2) read with Section 28(2).Therefore, it is not correct to say that a defence underSection 17(2) would tantamount to an objection to thevalidity of the registration itself. https://hcservices.ecourts.gov.in/hcservices/

2833. Ms.Gladys Daniel, learned counsel for theplaintiff next relied upon a Division Bench judgment of theDelhi High Court in Mohd. Rafiq v. Modi Sugar Mills [AIR1972 Delhi 46], wherein it was held in para-11 as follows:-"11. Mr.Anand on behalf of therespondent has pointed out that thepresent is not a case wherein the word"SUN" is sought to be registered as atrade mark for the first time. On thecontrary the above trade mark has beenon the register for a long time. Theappellants, it is submitted seek to getthe trade mark removed from theregister. The approach in such a case,according to Mr.Anand, has to bedifferent from that in a case whereinthe word in question is sought to beregistered as trade mark for the firsttime. Reference in this context is madeto the following observations on page225 In the matter of Burroughs Welcomeand Co.'s Trade Marks and In the matterof The Patents Designs and Trade MarksAct, 1883 to 1888, (1904) 21 RPC 217:"The Court when it has had to dealwith a question of fact of this sort,long after the date of theregistration, has laid down a rule thatin such a case the presumption ought tobe in favour of the persons who havehad that registered Trade Mark for alength of time and the onus of proof asto what was the user of the word, and https://hcservices.ecourts.gov.in/hcservices/ 29what it was understood as conveying atthe date of registration, ought to bethrown upon the persons who seek, aftersuch a lapse of time, to say that theTrade Mark ought not to have beenregistered. But I should be very sorryif it was supposed from what I amsaying that I in any way mean tosuggest that this sort of presumptionin favour of the Trade Mark, which hasbeen registered for such a long period,ought to be allowed to overmaster theplain evidence showing that the TradeMark having regard to the state ofthings at the date of the registration,ought not to have been registered. Itake it, if you had somethingregistered as a Trade Mark, which theevidence showed clearly ought not tohave been registered at the date whenit was, that no presumption wouldjustify us in keeping such a Trade Markon the Register."But the above case arose out of an application underSection 107 of the Trade and Merchandise Marks Act, 1958for rectification of the Register. In that case, the trademark "SUN" was registered in 1954. When a suit wasinstituted by the registered proprietor in 1962 against aninfringer, the infringer filed an application under Section107 for rectification, in 1963. The prayer forrectification was rejected by the single Judge and an https://hcservices.ecourts.gov.in/hcservices/ 30appeal went before the Division Bench. While dismissing theappeal, the Division Bench observed that the benefits thataccrued over a period of 7 years, to the registeredproprietor, cannot be easily taken away. Therefore, thesaid decision is of no assistance to the plaintiff, in asmuch as the defendant is not challenging the validity ofthe registration of the trade mark of the plaintiff. Hence,I hold that the claim of infringement, in respect of theword "DAZLLER" has to fail, in the light of Sections 15 (1)and 17 (2) of the Act. 34. But the suit on hand is not merely one ofinfringement, but is also an action for passing off.Therefore, even if the plaintiff cannot succeed in theirclaim for infringement, in view of Sections 15 (1) and 17(2)(a)(ii), the plaintiff can still complain of passingoff, as pointed out by the Supreme Court in GodfreyPhillips India Ltd vs. Girnar Food & Beverages Pvt. Ltd{1998 (9) SCC 531}. In that case, the Supreme Court pointedout in para 6 that even on disclaimer, a passing off actionwould lie. 35. In paragraph 15-033 at page 441 of Kerly's Law ofTrade Marks and Trade Names, it is pointed out that "aclaimant may fail to make out a case of infringement of atrade mark for various reasons and may yet show that byimitating the mark claimed as a trade mark or otherwise,the defendant has done what is calculated to pass off his https://hcservices.ecourts.gov.in/hcservices/ 31goods as those of the claimant". This is why a claim inpassing off is generally added as a second string toactions for infringement. Therefore, I would now test theclaim of passing off separately.36. To succeed in an action for passing off, theplaintiff must satisfy the "classical trinity" of (i)reputation (or goodwill) (ii) misrepresentation and (iii)damage, as has been held consistently by various Courts.Alternatively, the plaintiff should satisfy at least "theextended form" typified by 3 decisions viz., (i) Bollingervs. Costa Brava Wine {1960 R.P.C. 16} (ii) Vine Productsvs. Mackenzie {1969 R.P.C. 1} and (iii) Warnink vs. Townend{1980 R.P.C. 31, HL}. These decisions are popularlyreferred to as Champagne, Sherry and Advocaat cases. LordsDiplock and Fraser in Advocaat formulated generalpropositions of the law of passing off to take account ofits "extended form". The 5 characteristics of this form, asformulated by Lord Diplock, are (1) a misrepresentation (2)made by a trader in the course of trade (3) to prospectivecustomers of his or ultimate consumers of goods or servicessupplied by him (4) which is calculated to injure thebusiness or goodwill of another (in the sense that this isa reasonably foreseeable consequence) and (5) which causesactual damage to a business or goodwill of a trader by whomthe action is brought (or in a quia timet action) willprobably do so. https://hcservices.ecourts.gov.in/hcservices/

3237. After referring to the shift from "classic form"to the "extended form" and the swing of judicial opinionbetween these two forms, the learned Authors of Kerly's Lawof Trade Marks and Trade Names, 14th Edition (London 2005,South Asian Edition 2007) gave a summary of the currentapproach in paragraph 15-013 at page 434 as follows:-"The present position may besummarised as follows:-(1) for passing off in its classicform, the classical trinity, asexpounded in Jif and other cases,should normally be applicable and beapplied;(2) for passing off in itsextended form, one can apply either theclassical trinity or the Advocaattests. Judicial preference seems tovary. In Parma Ham (1991 R.P.C. 351 at369), the Court of Appeal welcomed thereversion in Jif to the classicaltrinity. Subsequently, the Court ofAppeal has been content to utilise theAdvocaat tests in Elderflower Champagne(1993 F.S.R. 64) and Chocosuisse;(3) there is nothing inherentlywrong in applying the Advocaat tests tocases of passing off in its classicform (In Bristol Conservatories Ltd vs.Conservatories Custom Built Ltd (1989R.P.C. 455 at 466, Ralph Gibson L.J.,observed that the probanda formulatedby Lords Diplock and Fraser would not, https://hcservices.ecourts.gov.in/hcservices/ 33e.g., allow for cases of so-called"reverse" passing off (see below atpara.15-129), but doing so might raisethe suspicion that the case falls intoLord Diplock's "undistributed middle".The modern trend is to use theclassical trinity. See, for example,the view of Nourse L.J., in Parma Ham:"Although those speechesof Lord Diplock and LordFraser are of the highestauthority, it has been myexperience, and it is now myrespectful opinion, that theydo not give the same degreeof assistance in analysis anddecision as the classicaltrinity of (1) a reputation(or goodwill) acquired by theplaintiff in his goods, name,mark etc., (2) amisrepresentation by thedefendant leading toconfusion (or deception),causing (3) damage to theplaintiff (At 568).See also similar views expressed byMillett L.J., in Harrods Ltd vs.Harrodian School Ltd (1996 R.P.C. 697 at711)".38. The 5 tests forming part of the extended form aspropounded by Lord Diplock was relied upon by the SupremeCourt in Cadila Health Care Ltd vs. Cadila Pharmaceuticals https://hcservices.ecourts.gov.in/hcservices/ 34Ltd {2001 (5) SCC 73} and in Heinz Italia vs. Dabur IndiaLtd {2007 (6) SCC 1}. In para 16 of its decision in HeinzItalia, the Supreme Court also pointed out that "before theuse of a particular mark can be appropriated, it is for theplaintiff to prove that the product that he is representinghad earned a reputation in the market and that thisreputation had been sought to be violated by the oppositeparty". 39. The case on hand does not pass either the test ofclassical trinity or the test of common law cause of actionin its extended form. Admittedly, the registration of thetrade mark viz., EYETEX DAZLLER under Trade MarkNos.1261112 and 1261117 was obtained by the plaintiff onlywith effect from 14.1.2004. The details of the salesturnover and the details of advertisement and promotionalexpenditure indicated in paragraphs 9 and 10 of the plaint,relate to all the products of the plaintiff. Admittedly,the plaintiff has registration for about 27 trade marks asseen from para 6 of the plaint. The common denominator inall the 27 marks, is the word "EYETEX". No details areavailable in the plaint about the sales turnover andpromotional expenditure relating to the two trade marks inquestion. But after this lacuna was pointed out by thedefendant in their counter affidavit, the plaintiff filed areply affidavit. In para 16 of the reply affidavit, theplaintiff has claimed that the turnover in respect of https://hcservices.ecourts.gov.in/hcservices/ 35'Dazller' alone was Rs.51,87,58,664/- from the year 2000and that the advertisement expenditure was Rs.7,65,67,081/-from the year 2000. I am unable to accept these figures forthe following reasons:-(i) As on date, these figures are not supported bydocuments.(ii) The plaintiff has claimed in para 8 of the plaintand para 16 of the reply affidavit that the mark "Dazller"has been in use since 2000. But the earliest sales invoicefiled in the additional typed set of documents, is of theyear 2003. The Certificates of Registration filed as plaintdocument Nos.2 and 3, show that the word mark as well asthe device mark have been registered only as of 14.1.2004.Though the plaintiff appears to have claimed "user" since2000, even in their application to the Registrar, nomaterial is placed before me to establish such user since2000.(iii) Prima facie, the claim made in para 16 of thereply affidavit that the sales turnover and advertisementexpenditure in respect of "Dazller" alone worked out toRs.51,87,58,664/- and Rs.7,65,67,081/- respectively, doesnot match the figures provided in paragraphs 9 and 10 ofthe plaint. For instance, the total advertisement andpromotional expenditure for the period from 2000-2001 upto2008-2009 indicated in para 10 of the plaint, works out toapproximately about Rs.11.50 crores. Without any supporting https://hcservices.ecourts.gov.in/hcservices/ 36documents, it is hard to believe that out of the totaladvertisement and promotional expenditure of Rs.11.50crores incurred by the plaintiff for promoting variousproducts with 27 trade marks, for the entire period from2000-2001 to 2008-2009, the plaintiff spent more thanRs.7.65 crores on one product alone, as claimed in para 16of the reply affidavit, especially when it is not theirclaim that of all the products promoted by the plaintiff,this is the premium product. Therefore, one of the constituents of the classical trinityviz., "reputation" is not established before me. 40. The additional documents filed by the plaintiffare sales invoices for the period from 2003 to 2010. Butthese invoices merely show that the product of theplaintiff bearing the trade mark in question is in themarket from 2003. They do not show anything more, toindicate either the acquisition of goodwill or theacquisition of reputation of the particular product. 41. Similarly, the plaintiff's case will not also passthe test of "damage to goodwill". It is specificallypleaded by the defendant that the marketing channels of theplaintiff's product and the defendant's product aredifferent. In para 10 of the counter affidavit, thedefendant has claimed that the products of the plaintiffare marketed through retail shops, while the defendant'sproducts are sold directly to customers through designated https://hcservices.ecourts.gov.in/hcservices/ 37consultants. In para 16 of the reply affidavit, theplaintiff has not disputed the claim made by the defendantthat the channels of distribution are different. All thatthe plaintiff says is that the channels of distribution isirrelevant in an infringement action. But I have alreadypointed out that in view of Sections 15 (1) and 17 (2), theclaim of infringement is bound to fail. However, I havestarted testing the claim of passing off. Therefore I haveto now see if channels of distribution is a factor to betaken into account in an action of passing off. 42. Judicial opinion points out that channels ofdistribution is recognised as one of the tests in an actionfor passing off, though not in an action for infringement.In Cadila Health Care Ltd (cited supra), the Supreme Courtlaid down the following tests in para 35 of the report:-"(a) The nature of the marks i.e., whetherthe marks are word marks or label marks orcomposite marks i.e., both words and labelworks.(b) The degree of resembleness between themarks, phonetically similar and hence similarin idea.(c) The nature of the goods in respect ofwhich they are used as trade marks.(d) The similarity in the nature,character and performance of the goods of therival traders.(e) The class of purchasers who are likelyto buy the goods bearing the marks they https://hcservices.ecourts.gov.in/hcservices/ 38require, on their education and intelligenceand a degree of care they are likely toexercise in purchasing and/or using the goods.(f) The mode of purchasing the goods orplacing orders for the goods.(g) Any other surrounding circumstanceswhich may be relevant in the extent ofdissimilarity between the competing marks".43. Again in Mahendra & Mahendra Paper Mills Ltd vs.Mahindra & Mahindra Ltd {2002 (2) SCC 147}, the SupremeCourt pointed out in paragraph 16 that broadly speaking,the factors creating confusion would be, for example, thenature of the market itself, the class of customers, theextent of the reputation, the trade channels, the existenceof any connection in course of trade, and others. The veryexpression "Trade Channels" is used in para 16 of thedecision in Mahendra. Therefore, in the light of the factthat the plaintiff and the defendant have differentchannels for marketing their products and also in the lightof the other factors indicated in the previous paragraphs,I am of the prima facie view that the plaintiff cannotsucceed even in their claim of passing off. DEFENCE UNDER SECTION 30(2)(a):44. The second defence taken by the defendant istraceable to Section 30(2)(a). Under this Section, a trademark is not infringed, where its use in relation to goodsor services indicates the kind, quality, quantity, intendedpurpose, value, geographical origin, the time of production https://hcservices.ecourts.gov.in/hcservices/ 39of goods or of rendering of services or othercharacteristics of goods or services.45. Admittedly, the trade mark is used on nail polishand nail glitters. The word "dazzle", in common parlancedenotes bewildering brightness. What the plaintiff seeks toconvey through the word "Dazller" is that the nails wouldget bewildering brightness, if this nail polish is applied.Therefore, it is clear that "the intended purpose" of theproduct is to provide attractive brightness to the nails.It is this intended purpose, which is conveyed by the word"Dazller", used as a part of the whole mark viz., EYETEXDAZLLER. 46. Interestingly, the Indian Enactment viz., theTrade Marks Act, 1999, makes a deviation in this regardfrom the Trade Marks Act, 1994 of England. The 1994 Act ofEngland sought to make new provision for registered trademarks, implementing European Union Council DirectiveNo.89/104/EEC of 21st December, 1988 to approximate the lawsof the Member States relating to trade marks and to makeprovision in connection with Council Regulation 40/1994 onthe Community Trade Mark and to give effect to the MadridProtocol and certain provisions of the Paris Convention.Section 11(2) of The 1994 Act of England, reads as follows:-"(2) A registered trade mark isnot infringed by --(a) the use by a person of his ownname or address, https://hcservices.ecourts.gov.in/hcservices/ 40(b) the use of indicationsconcerning the kind, quality, quantity,intended purpose, value, geographicalorigin, the time of production of goodsor of rendering of services, or othercharacteristics of goods or services,or(c) the use of the trade markwhere it is necessary to indicate theintended purpose of a product orservice (in particular, as accessoriesor spare parts),provided the use is in accordance withhonest practices in industrial orcommercial matters."47. Section 30 (1) and (2)(a) of the Indian TradeMarks Act, 1999, reads as follows:-"30. Limits on effect ofregistered trade mark. -- (1) Nothingin Section 29 shall be construed aspreventing the use of a registeredtrade mark by any person for thepurposes of identifying goods orservices as those of the proprietorprovided the use --(a) is in accordance with honestpractices in industrial or commercialmatters, and(b) is not such as to take unfairadvantage of or be detrimental to thedistinctive character or repute of thetrade mark.(2) A registered trade mark is not https://hcservices.ecourts.gov.in/hcservices/ 41infringed where -(a) the use in relation to goodsor services indicates the kind,quality, quantity, intended purpose,value, geographical origin, the time ofproduction of goods or of rendering ofservices or other characteristics ofgoods or services."48. A comparative reading of Section 11 (2) of theEnglish Trade Marks Act, 1994 and Section 30(1) and (2) ofthe Indian Trade Marks Act, 1999 would show that therequirement that the use of the trade mark should "be inaccordance with honest practices" is stipulated in theIndian Act only under sub-section (1) of Section 30 and notunder sub-section (2). In other words, to fall underSection 30(1), a person should satisfy two requirementsviz., (i) that his use is not such as to take unfairadvantage of or be detrimental to the distinctive characteror repute of the trade mark and (ii) that the use is inaccordance with honest practices. But to fall under Section30(2)(a), it is enough if the defendant establishes thatthe use was to indicate the kind, quality, quantity,intended purpose, value etc. There is no additionalrequirement under Section 30(2)(a), that the use is inaccordance with honest practices. On the contrary, underSection 11(2) of the English Act, 1994, even the use ofindications concerning the kind, quality, quantity andintended purpose should be in accordance with honest https://hcservices.ecourts.gov.in/hcservices/ 42practices.49. When common English words such as glitter, bright,dazzle, sparkle etc., are used as part of a trade mark, onproducts whose intended purpose is to givebrightness/shine, then the protection available to theproprietor of such a mark, is likely to get diluted. FryL.J., said in Eno vs. Dunn {(1890) L.R.15 App. Cas. 252},as follows:-"It is said that the words "fruit-salt" havenever been used in collocation except by Mr.Eno.Be it so ...... I cannot help regarding theattempt on Mr.Eno's part as an instance of thatperpetual struggle which it seems to me is goingon to enclose and to appropriate as privateproperty, certain little strips of the great opencommon of the English language. That is a kind oftrespass against which I think Courts ought toset their faces". 50. This is why Section 9(1)(b) of the Trade MarksAct, 1999, prohibits the registration of trade marks whichconsist exclusively of indications, which may serve in thetrade, to designate the kind, quality, quantity, intendedpurpose etc. It is true that under Section 32, a registeredtrade mark cannot be declared invalid merely on the groundthat it was registered in breach of Section 9(1), if afterregistration, the mark has acquired a distinctive characterin relation to the goods for which it was registered. Thisis why I pointed out in Health and Glow Retailing Pvt. Ltd https://hcservices.ecourts.gov.in/hcservices/ 43vs. Dhiren Krishna Paul {2007 (35) PTC 474}, that theobjections relating to the descriptive nature of the markare available at the pre-registration stage and that theycannot be raised in an action for infringement (postregistration). The said view was also quoted with approvalby the Delhi High Court in Ashland Licensing andIntellectual Property LLC vs. Savita Chemicals Ltd {2010(44) PTC 220 (Del.)}.51. But the trade marks in question comprise of twowords viz., "EYETEX" and "DAZLLER". While the word "EYETEX"appears to have attained distinctiveness, in view of itsusage for the past 75 years from 1946, the word "DAZLLER"is not shown to have acquired distinctiveness or secondarymeaning. As I have pointed out elsewhere, the word"DAZLLER" is said to be used from 2000. But the earliestinvoice is of the year 2003 and the registration is witheffect from 2004. Therefore, there is nothing on record toshow that the word "DAZLLER" has acquired a distinctivenessor secondary meaning, so as to surpass the realm of being adescriptive term. It was pointed out by the European Courtof Justice in Case C-108/97 Windsurfing ChiemseeProduktions – und Vertriebs GmBH vs. Boots – undSegelzubehor Walter Huber & Franz Attenberger {(1999)E.C.R. 1-2779; (2000) Ch. 523, ECJ}, that the corollary ofa mark having acquired a distinctive character through usewas that the mark "has gained a new significance and its https://hcservices.ecourts.gov.in/hcservices/ 44connotation, no longer purely descriptive, justifies itsregistration as a trade mark". 52. A descriptive mark is defined by McCarthy, on thefollowing lines, based upon the decision of the 7th Circuitin G.Helleman Brewing Co. Vs. Anheuser-Busch Inc. (873F.2d.985): "A word, picture, or other symbol that directlydescribes something about the goods or services inconnection with which it is used as a mark. Such a term maybe descriptive of a desirable characteristic of the goods;the intended purpose, function, or use of the goods, thesize or color of the goods; the class of users of thegoods; or the end effect upon the user. The issue ofdescriptiveness is usually tested from the view point ofthe hypothetical customer who has that basic amount ofknowledge about the product which is conveyed byadvertising and promotion currently available in themarketplace". 53. However, relying upon the judgment of the DelhiHigh Court in M/s. Kala Niketan v. M/s. Kala Niketan [AIR1983 Delhi 161], the learned counsel for the plaintiffcontended that the word "Dazller" is not descriptive. Therelevant portions of the judgment of the Delhi High Courtin the said case, read as follows:-16. It is settled law that if atrade name merely describes the goodsor their characteristics thenordinarily the plaintiff cannot prevent https://hcservices.ecourts.gov.in/hcservices/ 45others from using it. A trade name isopposed to a merely descriptive name.In Office Cleaning Services Limited vs.Westminster Window and General CleanersLimited, (1946) 63 RPC 39 at p. 43,Lord Simonds said:-'It comes in the end, I think, tono more than this, that where a traderadopts words in common use for histrade name, some risk of confusion isinevitable. But that risk must be rununless the first user is allowedunfairly to monopolise the words. TheCourt will accept comparatively smalldifferences as sufficient to avertconfusion. A greater decree ofdiscrimination may fairly be expectedfrom the public where a trade nameconsists wholly or in part of the wordsdescriptive of the articles to be soldor to the services rendered".Are the words 'Kala Niketan'descriptive of the Sarees ? is,therefore the question that falls fordetermination.17. The test whether the words aredescriptive has been laid down inCorpus Juris Secundum Volume 87 inparagraph 34 at page 271 as follows:-"The true test in determiningwhether a particular name or phrase isdescriptive is whether, as it iscommonly used, it is reasonablyindicative and descriptive of the thing https://hcservices.ecourts.gov.in/hcservices/ 46intended. In order to be descriptivewithin the condemnation of the rule, itis sufficient if information isafforded as to the general nature orcharacter of the article, and it is notnecessary that the words or marks usedshall comprise a clear, complete, andaccurate description. The meaning whichshould be given is the impression andsignification which are conveyed to thepublic, whether words or marks claimedas public, whether words or marksclaimed as trade marks are descriptiveor whether they are suggestive orarbitrary and fanciful must be decidedwith respect to the articles to whichthey are applied and the mark must beconsidered as a whole".18. The word 'Niketan' accordingto Bhargava's Standard IllustratedDictionary of the Hindi Language means"dwelling, habitation, house, place,residence, mansion". This word'Niketan" is not indicative in any wayof the goods in question i.e., Sarees.It does not afford any information asto the general nature or character ofthe Sarees. The word 'Kala' accordingto the abovementioned Dictionary, interalia, means: "brilliance, grandeur,fraud, trick, sport, play, supernaturalpower, somersault, art, craft,technics, fine arts". According to thelearned counsel for the defendant, the https://hcservices.ecourts.gov.in/hcservices/ 47word 'Kala" suggests Sarees withartistic designs".54. There is no quarrel with the proposition of lawindicated by the Delhi High Court in Kala Niketan. As amatter of fact, para 16 of the decision of the Delhi HighCourt, begins with the accepted statement of law that if atrade name describes the goods or their characteristics,then ordinarily the plaintiff cannot prevent others fromusing it. Having said that, the Delhi High Court examinedon facts as to whether any of the two words viz., "Kala"and "Niketan" was descriptive of the product in questionviz., Sarees. Therefore, applying the very same test, whatI have to see ultimately is whether the word "DAZLLER" isdescriptive of the product nail polish and nail glitter. Ifso done, it is clear that the word "DAZLLER" is aderivative of the word "Dazzle" which indicates theintended purpose of the product viz., nail polish and nailglitters, within the meaning of Section 30(2)(a) of theAct. 55. As pointed by me in paragraphs 17 to 21 above, theattempt made by the plaintiff to have the word "Dazller"registered even as part of the whole mark, was resisted bythe Registry and ultimately the whole mark was registeredas such. I have also pointed out that the attempt made bythree other parties to have the word "Dazler" registered,met with stiff opposition from the Registry on the ground https://hcservices.ecourts.gov.in/hcservices/ 48that the word was descriptive. While one of them withdrewhis application, the other two abandoned theirapplications. Therefore, the fact that the word "Dazller"is descriptive and that it denotes the intended purpose ofthe product, is not my personal view but the view expressedby the Registry itself even at the earliest point of time.Hence, the defence in terms of Section 30(2)(a) has to beupheld.DEFENCE UNDER SECTION 35:56. Under Section 35, any bona fide description by aperson, of the character or quality of his goods orservices, would not entitle the proprietor of a registeredtrade mark to interfere with the same. Therefore, it iscontended by the defendant that the word "DAZLLER" isdescriptive of the quality of the goods and that therefore,the protection under Section 35 is available to them. 57. However, I do not think that the defendant shouldbe allowed to raise this defence, for the simple reasonthat the defendant has also applied for registration of thetrade mark "DAILY DAZZLERS", under application No. 1835528.Though the defendant has taken refuge under the plea thattheir application is for a composite mark comprising of twowords viz., "DAILY" and "DAZZLERS", I think what is saucefor the goose should be sauce for the gander too. 58. In any case, the word "DAZZLE" does not appear toindicate the quality of the goods viz., nail polish and https://hcservices.ecourts.gov.in/hcservices/ 49nail glitters. It only indicates the intended purpose ofthe goods. Quality of a product is different from itsintended purpose. For instance, the intended primarypurposes of water, are to quench the thirst and to clean upthings. But the quality of water may differ from place toplace. Therefore, there is a vast difference between the'quality of a product' and its 'intended purpose'. Hence Ido not accept the defence under Section 35. CONCLUSION:59. In fine, I uphold the defence pleaded by thedefendant in terms of Sections 17(2) and 30 (2) of the Actand hold that there is no infringement. I also hold thatthere is no passing off, by applying the tests prescribedin the classic form as well as extended form. Consequently,the plaintiff is not entitled to the interim injunctionssought for. Therefore, both the applications for injunctionare dismissed. However, there will be no order as to costs. Sd/-V.R.S.J 05.07.2011 //Certified to be a true copy//Dated this the day of 2011. R.s/09.08.2011 COURT OFFICERFrom 25.09.2008 the Registry is issuing certified copies ofthe Order/Judgment Decree in this format.