Rajiv Sahai Endlaw, J.

1. The application of the plaintiff for interim relief is for consideration. The plaintiff has instituted the suit for injunction to restrain infringement of its trade mark and for ancillary relief of delivery, rendition of accounts, damages, etc.

2. The trade mark of the plaintiff is Double Deer registered on 5th August, 1985 with respect to Rice for sale in the States of Punjab, Himachal Pradesh, Haryana, Jammu and Kashmir, Rajasthan, Gujarat, West Bengal, Tamil Nadu, Assam, Maharashtra and Union Territory of Delhi. The trade mark has been renewed from time to time and assigned from time to time. The plaintiff also holds a registration certificate dated 18th January, 1990 of its label showing two deer facing each other and with a Flag between them and with the name Double Deer Brand Special Dehraduni Basmati Rice written above them, also in respect of Rice for sale in the States of Tamil Nadu, Kerala, Andhra Pradesh, Karnataka and Union Territory of Pondicherry. Documents with respect to the aforesaid registrations have been filed before the Court.

3. The plaintiff claims to be engaged in the business of processing, marketing and exporting of Rice. The plaintiff claimed, through its predecessors in title to have adopted the word/brand/label Double Deer with devise of two deer as aforesaid as a trade mark as far back in the year 1966. Though it is admitted that from time to time changes in the artistic feature of the label have been made but the mark Double Deer with devise of two deer is stated to have been used continuously since the year 1966. The plaintiff also claims to have applied for registration of the aforesaid mark and label in Class 30 as well as in Class 42 including for export purposes and which applications for registration are stated to be pending. The registration of the art work as a copy right is also stated to be pending.

4. The defendant is stated to be engaged in the same trade/business as the plaintiff i.e. of manufacturing, marketing, processing of Rice. The defendant is pleaded to have adopted in relation to its aforesaid business the trade mark Deer with the devise of a single Deer. The plaintiff claiming infringement and passing off, instituted the present suit on learning of such action of the defendant from the application of the defendant for registration in Class 30 for export only, in the Trade Mark Journal on 16th October, 2006. The plaintiff also claims to have filed an opposition to the application of the defendant for registration. It is further pleaded that the inquiries of the plaintiff have revealed that the defendant has so far not started using the impugned trade mark but was found soliciting inquiries and having intention to commercially exploit the said trade mark. The counsel for the plaintiff has relied upon Izuk Chemical Works v. Babu Ram Dharam Prakash 2007 (35) PTC 28 (Delhi).

5. No ex parte interim relief though prayed was granted to the plaintiff. The defendant has filed the written statement pleading that its mark is completely different from that of the plaintiff; Deer is a generic and ordinary dictionary word and no monopoly or exclusive usage can be claimed in respect thereto. It is pleaded that the two marks are different because, while the plaintiff is Double Deer, the defendant is Deer, while the plaintiffs label consists of two Deer with a flag between them, the defendants label comprises of one Dear only; while the plaintiff prints its label on the corner of the bag of the rice along with the words M/s. Tirbeni Flour Mills, Rohtak (Haryana), the defendant prints its label in the middle of its rice bags and along with words Imported Aged Rice and Naturally Aromatic; that the fonts and style of the two labels and the colour combination of the two labels are entirely different. The defendant has also pleaded that the defendant till date has never sold even a single product with mark Deer in India and even exports made by the defendant with respect to the trade mark Deer were made in the year 1996 and no sale in the name or the mark of Deer has been made thereafter. It is pleaded that the mark of the defendant was for export purposes only and the suit of the plaintiff was thus not maintainable and no case of infringement or passing off was made out. It is further pleaded that the matter was under adjudication before the Registrar of Trade Marks and the plaintiff had instituted the present suit to harass the defendant.

6. The counsel for the plaintiff has argued that the defendant has with mala fide intention in its application for registration claimed user since 1985 though no documents have been filed before the Registrar of Trade Marks or before this Court showing user since then. I, however, do not find that this aspect requires adjudication at this stage since the defendant has not sought to defeat the prayer of the plaintiff for interim relief for the reason of delay by the plaintiff in approaching the Court. Moreover, the defendant in its written statement (supra) has itself stated that it has not used the mark challenged by the plaintiff at any point of time save for export purposes in the year 1996 only.

7. In my view, the essential feature of the trade mark of the plaintiff in the present case is Deer and the use of the word `Double or the use of two Deer on the label of the plaintiff in contradistinction to one on that of the defendant would not make the mark of the defendant different from that of the plaintiff. The goods with respect to which the mark is being used by plaintiff as well as the defendant are the same. The test to be applied in such cases is as to how the mark/label will be recalled in the mind of the consumer/patrons of the goods/services. The recall factor may also vary from goods to goods. While the recall factor may be very high/ precise in relation to goods of personal nature such as perfumes, toiletries, blades/razors, designer clothes, it is not so accurate in relation to other goods. In my view the goods in the present case, viz. rice are not such in relation to which the buyer is likely to remember that what he had liked/appreciated or bought on an earlier occasion, which can be anything from a month to a year, considering the shelf life of rice was a Double Deer or a Single Deer. The buyer who may have thus intended to purchase the rice of the plaintiff can easily be led into buying the rice of the defendant. The entire purport of this law is to prevent this from happening. A product such as rice is again not always bought by the consumer himself and the task may be delegated by one family member to the other or even to a domestic help. This is likely to increase the chances of deception/confusion. The test to be applied in relation to such goods has to be different from goods generally bought by the consumer themselves.

8. Though not referred to by the counsels, I have come across the order of another single judge of this court in Kirorimal Kashiram Marketing & Agencies Pvt. Ltd. v. Shree Sita Chawal Udyog 2008 (37) PTC 466 Del. [LQ/DelHC/2008/1427] on an application for interim relief filed in another suit filed by plaintiff against some other party. The mark of the defendant in that case was Golden Deer. Interim injunction was denied holding that the differences of two as against one deer, colour combination, shape etc. were features distinguishing the two marks.

9. The decision of the Intellectual Property Appellate Board in Kirorimal Kashiram Mktg. & Agencies Pvt. Ltd. v. Ravinder Kumar Khanna 2008 (37) PTC 654 [LQ/IPAB/2008/33] , again relating to the plaintiff has also come to my notice. Therein also the opposition of the plaintiff herein to the mark K.C. Double Deer Brand in respect of Cardamom was rejected inter-alia on the ground of Double Deer being ordinary English word to which none can claim monopoly and being incapable of distinguishing the goods of the plaintiff herein. It was also held there was no phonetic or visual resemblance in the two marks. Yet another reason was the difference in nature of goods with respect to which the two marks were to be used.

10. Ordinarily I would have followed the dicta of this court in the other case filed by plaintiff. However, I find, that the Division Bench of this court in Atlas Cycle Industries Ltd. v. Hind Cycles Ltd. ILR 1973 1 [LQ/AllHC/1972/479] Del 393 has held that the fact that there are some additional features in the defendants mark which show marked differences is immaterial in an action for infringement; even in passing off action the test is whether additional features in defendants mark are sufficient to distinguish the same from that of the plaintiff. The test is of reasonable probability of deception from the point of view of average purchaser. The further test laid down was of how such a purchaser would connect the trademark with the goods he would be purchasing - it is impossible that a man looking at a trademark would take every single feature of the trademark; the question would be what would be normally retained in his mind after looking at the trade norm, what are the salient features of the trademark which in future would lead him to associate the particular goods with that trademark. Emphasis was also laid on regard being given to surrounding circumstances and the main idea underlying the mark. It was further held that the test is practically the same in an action for passing off as in an action for infringement. The Division Bench held Royal Star to be an infringement of Easter Star for the reason that average consumer would remember/associate star only with the product of the plaintiff in that case.

11. In consonance with the above principles (i) in Amrit Dhara Pharmacy v. Satya Deo Gupta AIR 1963 SC 449 [LQ/SC/1962/200] Lakshman Dhara was found deceptively similar to Amrit Dhara, (ii) in K.R. China Krishna Chettiar v. Ambal & Co. AIR 1970 SC 146 [LQ/SC/1969/167] Sri Andal was found deceptively similar to Sri Ambal in spite of pictorial dissimilarity (iii) in De Cordova v. Vick Chemical Co. 68 RPC 103 Karsote Vapour Rub was held infringing Vick Vaporub Salve (iv) in Dev Pesticides Pvt. Ltd. v. Shiv Agro Chemical Industries 2006 (32) PTC 434 Mad. [LQ/MadHC/2006/1100] (DB) Super Boom was held infringing Boomplus and Boom flower (v) in Shaw Wallace & Co. Ltd. v. Superior Industrious Ltd. 2003 (27) PTC 63 Del. [LQ/DelHC/2003/702] Haywards 5000 was found infringing Hayawards 5000 Super Strong beer invoking the imperfect memory of an average consumer and invoking the test of the way/manner in which the mark would be remembered (vi) and finally in Izuk Chemical Works (Supra) use of Superstar was prima-facie found infringing Moonstar and device of star of the plaintiff in that case.

12. It is also recorded in the decision (Supra) of the Intellectual Property Appellate Board that there are more than a score trademarks comprising of the word or device or both Deer which have been either advertised or registered in favour of different proprietors. However, this court at this stage is not concerned with use by parties other than those to the suit and no material has been placed also in that regard. In any case that decision also does not record anyone else using the same with respect to rice; as the plaintiff is doing. The Board also while holding that there was resemblance decided against plaintiff herein because of use by other party therein for different goods and since long the same is not the case here.

13. Applying the principles above, the possibility of confusion/deception between Double Deer & Deer in relation to rice, is to be judged. Rice, traditionally, as far as at least this country is concerned was not a branded item. It was sold in terms of place of origin and quality. It is only recently that it has been branded. A large number of shops continue to sell rice as an unbranded item. So brand for rice is an exception rather than norm. It is in the light of this circumstance that the tests enumerated above of deception have to be applied. Brand for rice is normally not of importance or the criteria for the consumer. I feel that recall value for a person repeating purchase of rice of the plaintiff or purchasing the same for appreciation by word of mouth is Deer and not Double or Aromatic or other features on the label. In my view, the label or the get up or the colour combination on the bag/pouch of product such as rice is not of much significance and the distinguishing features on label/bags of plaintiff and defendant cannot come in the way of interim relief for plaintiff if otherwise found entitled thereto. A commodity such as rice is not stored in households in bags in which it is sold. The bag may not be seen otherwise than at time of purchase and not at all by the actual consumer of the family members. They would be concerned with Deer only and are likely to be deceived into buying Deer brand while wanting to buy Double Deer brand.

14. The counsel for the defendant urged that there could be no injunction with respect to a generic name as Deer. He has further argued that the defendant was not selling in India and was selling only in USA and as such the suit of injunction did not lie before this Court inasmuch as no activity was being carried on by the defendant within the jurisdiction of this Court. Lastly, it was contended that even though the defendant has already stated that it was not using the mark even for the export purposes, if any injunction is granted by this Court, the same will prejudice the Registrar of Trade Marks who is to decide the opposition filed by the plaintiff to the application of the defendant for registration.

15. As far as the last submission of the defendant is concerned, in my view, any order made on this application is on a prima facie view of the matter and is not a final adjudication and does not come in the way of the final decision of the suit and such a decision on a prima facie view of the matter cannot possibly in law affect or prejudice the Registrar of Trade Marks while performing his statutory function. I may, however, add that if this was the primary concern of the defendant, as it appears from the facts and the submissions, it was open to the defendant to give an undertaking before this Court not to use the trade mark till the decision of the opposition application. The defendant having not done that, cannot prevent the application of the plaintiff for interim relief from being adjudicated. The plaintiff who claims to be the registered owner and prior user of the trade mark with respect to the same goods, cannot be prevented from approaching the Court to restrain the defendant from using the trade mark during the pendency of the opposition application, if the defendants mark is found to be infringing the mark of the plaintiff. The Registrar of Trade Marks has no jurisdiction/power to, during the pendency of the application for registration or opposition thereto, restrain the applicant from using the mark. It is also found that application for registration and opposition thereto remain pending for long and if the argument of the counsel for the defendant is to be accepted that would tantamount to giving a license to any person by making an application to the Registrar Trade Marks, to infringe the trade mark of the plaintiff till the pendency of the application/opposition. The said argument of the defendant though rejected, nevertheless it is clarified that nothing contained in this order shall affect or prejudice the Registrar in taking an independent view in the exercise of his/her statutory functions, this order being only on the prima facie view of the matter.

16. By seeing the label and the mark of the plaintiff and the defendant, I am prima facie of the opinion that the mark/label of the defendant is deceptively similar to that of the plaintiff. The buyers of the goods are likely to retain in their memories the word deer or the pictures of the deer in association with the goods. The said buyers are likely to be confused by the two trade marks and I find the chances of the buyers distinguishing between the two marks to be minimal. Even otherwise in the present day retail explosion, when from time to time the manufacturers/sellers of goods come out with schemes to empty their shelves, the use of the expression double has become very common. The said word is normally used to denote as well as promote scheme where double the quantity is being offered at the prices much lower than double. The word double is also normally associated with strength and quality and the only impression which a consumer of Rice is likely to carry is that the Rice of the brand Double Deer is double in quantity or quality than that of the mark/label Deer and the consumer cannot be expected to differentiate. The customer is likely to believe both as originating from the same source and the consumer cannot be in the normal course of human behavior be expected to understand that the two are of different manufacturers having no connection whatsoever with each other.

17. In the face of the documents of the plaintiff of registration since 1985 and user since even prior thereto, I also find it hard to believe that the defendant who is engaged in the same trade did not know the mark/label of the plaintiff. If such knowledge is to be imputed to the defendant, then I do not find any reason for the defendant to adopt the mark adopted by it, but to take advantage of and ride on the popularity and goodwill of the plaintiff. The argument of the counsel for the defendant of a generic/dictionary word is also not found applicable in the present case. Firstly, majority of the trade marks have a dictionary meaning. Some surveys show 60% of the existing trade marks to be having a dictionary meaning. Secondly, the said argument is applicable to cases where the word has a close connection or connotation with the goods/services. I do not find any connection of a deer to Basmati Rice. In these circumstances, the adoption of the mark/label by the defendant to rice, does not show that the defendant by using the said mark/label is referring to the product in any manner whatsoever. The only reference which can be there is to the mark of the plaintiff. The conduct of the defendant is also not found bona-fide. The defendant in its application for registration claimed use of the mark since 1985 but in the written statement pleaded use only in 1996.

18. The registrations of the plaintiff are by reference to certain States only of the country. Even if the defendant were to contend that he does not intend to market in the same States as the plaintiff, in my view, the same would still not make any difference. The action of the plaintiff is for passing off also. With the advent of travel and communications, the state boundaries in terms of interstate trade and commerce are disappearing and today when there is frequent and large scale movement of natives from one State to the others, they travel with their preferences and prejudices and no mileage can be permitted to be drawn by one party to the trade mark and associated goodwill of the other, particularly, when no apparent reason is given or found for adoption by the other of similar/deceptively similar trade mark though in a different State. Similarly, the plea of the defendant that it intends to only export under the said mark/label does not find favour with me. Export, under Section 56 of theis use of the trade mark. There is no restriction on the plaintiff exporting its goods. If the plaintiff were to export its goods, the buyers in different countries are similarly, as in this country, likely to be confused by similar/deceptively similar trade marks.

19. The contention of the counsel for the defendant that this court would have no jurisdiction as the goods were meant for export only has no merit. The use by the defendant of a trade mark for export purposes is a use in the course of trade within the meaning of Section 29 of theand the plaintiff which claims to be carrying on business within the territorial jurisdiction of this Court is under Section 134 (2) of theentitled to invoke the jurisdiction of this Court against the defendant.

20. The elements of irreparable loss and injuries are also found in favour of the plaintiff and against the defendant. While it is the admitted position that the plaintiff is carrying on business using its trade mark, the defendant claims to have used it for export purposes only in the year 1996. The defendant has categorically stated that it has after 1996 not used the trade mark. The defendant is not likely to suffer any prejudice if restrained from using the same during the pendency of the suit.

21. The application of the plaintiff is accordingly allowed. The defendant is restrained from using the mark/label impugned in the present case or any other mark or label deceptively similar to that of the plaintiff during the pendency of suit.

Application allowed.