Johnson and Johnson v. Christine Hoden India (P.) Ltd., AIR 1988 Del 249
Bench: S.S. CHADHA AND Y.K. SABHARWAL, JJ.
Decided on: December 4, 1987.
Author of the judgement: SABHARWAL, J
Advocate of the plaintiff: Shri Anoop Singh
- Cadbury Schweppes Pty v. Pub Squash Co. Pty, (1981) 1 All ER 213.
- Lakhbir Singh v. Bakhat Singh, AIR 1973 Delhi 225
- Munday v. Carey (1905) 22 RPC 273
- Hoffimann La Roche and Co. Ltd. v. Geoffrey Manners and Co. (P) Ltd., AIR 1970 SC 2062
- John Walker and Sons Ltd. Co. v. Henry Ost and Company Ltd., 1970 RPC 489
- Reddaway v. Banham (1896) AC 199
- Lever v. Goodwin (1887) 4 RPC 492
- Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980
- B.K. Engineering Co. Delhi v. U.B.H.I. Enterprises (Regd.) Ludhiana, AIR 1985 Delhi 210
- Globe Super Parts v. Blue Super Flame Industries reported in AIR 1986 Delhi 245
- Charan Dass v. Bombay Crockery House, 1984 PTC 102
- McCain International Ltd. v. Country Fair Foods Limited, 1981 RPC 69
- Re : Burberrys v. J.C. Cording and Co. Ltd, reported in (1909) 26 RPC 693
- Ellora Industries, Delhi v. Banarasi Dass Goela, AIR 1980 Delhi 254
Brief Facts and procedural history:
- The appellants are plaintiffs in the original suit (hereinafter referred to as ‘Plaintiffs’).
- Plaintiff No. 1 is a Corporation organised under the laws of New Jersey, U.S.A.
- Plaintiff No. 2 is a Company incorporated under the Companies Act, 1956.
- Plaintiffs’ trademark is ‘STAYFREE’. The plaintiffs have brought a passing off action. According to the plaint, since June 1978 plaintiff No. 1 has permitted plaintiff No. 2 to use the said trade mark ‘STAYFREE’ in respect of sanitary napkins manufactured by them and since then they have used the said mark in respect of sanitary napkins manufactured and marketed by them in India under a licence granted by plaintiff No. 1. The plaintiffs claim that the mark ‘STAYFREE’ has acquired a wide reputation and goodwill in India and has come to the associated by the traders and members of Public in India exclusively with the plaintiffs.
- Plaintiff No. 1 applied for registration of the trademark ‘STAYFREE’ on Date 18th December 1980 in respect of sanitary napkins and personal hygiene products used in menstruation claiming user since 1978. The application was advertised in the Trade Marks Journal on 16th Aug. 1984. On 26th November 1984 defendant No. 1 filed a notice of opposition to the said application. The said proceedings are pending.
- It has been further averred in the plaint that since June 1978 the plaintiffs have adopted polyethene packs having a distinctive colour scheme of blue, pink and white getup which is easily recognisable by the customers. On the packing, the mark ‘STAYFREE’ has been prominently displayed and the catchy legend ‘NO BELTS; NO PINS; NO STRINGS’ is printed. It is claimed that in or about February 1986 the plaintiff learnt that the defendants have also used the marks ‘STAYFREE’ in respect of sanitary napkins and have substantially copied the plaintiffs’ pack and the mark ‘STAYFREE’.
- According to the plaintiffs, the defendant No. 1 also adopted their packing which has a deceptively similar getup and colour scheme as that of the packing of the plaintiffs viz. blue, yellow and white combination. They further claimed that the defendants have fraudulently and blatently adopted the same wordings viz. ‘No Belts, No Pins, No Strings’ with the whole aim and intention to trade upon the enviable reputation and goodwill acquired by plaintiff No. 2 in respect of their goods and to make dishonest and illegal gains. The suit is pending.
- During the pending the disposal of the suit the plaintiffs by an application under O. 39, Rr. 1 and 2 read with S. 151, C.P.C. sought temporary injunction restraining the defendants, their servants and agents from in any manner using the mark ‘STAYFREE’ or the impugned legend ‘No Pins, No Belts, No Strings’ on any packing for sale of sanitary napkins. The respondents are defendants in the original suit (hereinafter referred to as ‘the defendant’). In opposition to the claim made by the plaintiffs, various preliminary objections have been raised by the defendants in their reply.
- The defendants opposed the application for grant of temporary injunction primarily on four points.
- Their trademark is ‘Comfit Always’ and not ‘Stayfree’.
- The word ‘STAYFREE’ is a common descriptive word for the product and is incapable of distinguishing the goods;
- The words ‘STAYFREE’ is a common dictionary word and was in existence much before either of the plaintiffs came into existence and lastly that there is no likelihood of any confusion or deception.
Arguments of the plaintiff:
- The use of the mark ‘STAYFREE’ by the defendants is likely to deceive the customers and general public and
- The mark ‘STAYFREE’ is distinctive of the goods of the plaintiffs and that the conclusion of the learned single Judge on both these points is not sustainable.
- The intention of the defendants in using the word ‘STAYFREE’ is dishonest and, therefore, it is a fit case for grant of an order of restraint against them.
- By use of the word ‘STAYFREE’, the defendants enable the traders, which generally are Chemists and General Merchants who sell these goods, to tell a lie or to make a false representation to the ultimate customer. In such an event the defendants are liable to be restrained.
Arguments of the defendant:
- Their trademark is ‘COMFIT ALWAYS’ and not ‘STAYFREE’. According to the learned counsel the dictionary meaning of the word ‘STAY’ is anything that props or supports or steadies or holds.
- The word ‘FREE’ has often been used in combination with various other words such as duty, graft, salt, tax, trouble and such like words (American Heritage Dictionary of English Language and Webster II; New Riverside University Dictionary; Collins Cobuild English Language Dictionary). The argument is that customer is being conveyed a message that she will not be required to use any support if she uses their Napkin.
- By use of word ‘STAYFREE’, even the plaintiffs are conveying a message to the customers. In the advertisement of the plaintiffs the figure of a lady is shown and at the bottom, it reads “STAYFREE……. because that is the way you ought to be”
- The Plaintiffs being not the owners of the trademark ‘STAYFREE’; there being no valid licence in favour of plaintiff No. 2 and that the trade mark of the plaintiffs is ‘Johnsons and Johnsons’ and not ‘STAYFREE’.
- Another argument on which great stress was laid and various judgements and dictionaries were referred was that the word ‘STAYFREE’ is descriptive and not distinctive. Defendants say that the word ‘STAYFREE’ cannot be exclusively appropriated by the plaintiffs. They cannot have a monopoly on the use of the word ‘STAYFREE’. It is a common English word, defendants urge.
It is always a question of fact in each case whether the deception or confusion is likely to be caused or not by use of the impugned mark. In so far as the facts and circumstances of the present case are concerned it is the admitted case of the parties that the average customers are literate and semi-literate ladies. It is no doubt true that the defendants along with the word “Beltless” have used the words “STAYFREE” on its packing at seven places but the getup, colour scheme and the other essential features are altogether different.
It is well established that the marks must be compared as a whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trademark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trademark.
Nobody has any right to represent his goods as the goods of somebody else. Actual deception is not required to be proved. It is the tendency to mislead or confuse that forms the gist of passing off action and the plaintiffs need not establish fraud nor that anyone was actually deceived or that he actually suffered damage.
The main question is not the intention of the defendant in using certain words but the probable effect of such action on the minds of the customers. In the end, the court has to trust to its own perception into the mind of the reasonable man. In the words of Lord Scarman “balance is to be maintained between the protection of a plaintiffs’ investment in his product and the protection of free competition”. On which side the balance lies is to be seen in the facts and circumstances of each case.
In the totality of circumstances, prima facie, it is difficult for anyone to take the goods of the defendants thinking that they are the goods of the plaintiffs. There is no likelihood of deception or confusion to the ultimate customer, namely, literate or semiliterate ladies. Customer will be able to distinguish two marks.
Prior to 1985 defendants were not manufacturing beltless Napkins and, therefore, there was no question of their using the word ‘STAYFREE’ at that time. Defendants say that if their intentions were dishonest then they would not have waited from 1978 to 1985 to use the words ‘STAYFREE’. According to defendants when they started manufacturing beltless sanitary napkins they thought of conveying a message to the customers that by use of their beltless sanitary napkins the customers would be ‘STAYFREE’ of any external support. According to defendants, it is a very appropriate and neat and apt description of the product.
It cannot be said that the word ‘STAYFREE’ is an invented word. The word ‘STAYFREE’, it cannot be doubted is a combination of two English words, namely, ‘STAY’ and ‘FREE’. Whether it is a coined word or only a dictionary word would be considered during the trial of the suit. I may, however, add here that according to the learned counsel for the defendants the word ‘STAYFREE’ is an ordinary English word like ‘CAREFREE’ ‘STAYFREE’ ‘TROUBLEFREE’ and TAX-FREE etc.
The result is that I would confirm the order of the learned single Judge and dismiss the appeal leaving the parties to bear their own costs.