Common Order:

Original Application No.914 of 2008 is filed seeking an order of interim injunction restraining the respondents from in any manner passing off their goods as that of the applicants by using the offending trade mark Lacto.

2. Original Application No.915 of 2008 is filed seeking an order of interim injunction restraining the respondents from in any manner infringing the applicants trade mark Lacto.

3. Application No.1230 of 2009 is filed by the plaintiffs seeking to pass a decree in the suit as prayed for in prayers A and B contained in para 16 of the plaint.

4. The applicants would contend as follows:-

The applicant is a leading manufacturer of confectionary products. It a very reputed confectionary company involved in the said business since 1952. In the year 1958, the applicant conceived and adopted a distinctive trade mark Lacto Bon Bon when they introduced a premium confectionary with condensed milk as one of the ingredients. The applicant is the first to adopt Lacto as a part of their trade mark eversince 1958. The applicant has become the absolute owner of the trade mark Lacto. The trade and public in general associated the trade mark Lacto only with the applicants mark and none else. The applicant spent huge amounts by way of advertisements and sales promotional efforts in respect of the trade mark Lacto. The applicant is the absolute proprietor of the trade mark Lacto and the registered proprietor of the trade mark Lacto Super and Lactaire. The sales turnover figures of Lacto Bon Bon, Maha Lacto, Nu Lacto, Maha Maha Lacto and Super Maha Lacto have run into several crores. The trade mark Lacto has become synonymous with the products of the applicant and has acquired the secondary meaning to mean and refer the products of the applicant alone. Though the respondents are depicting Candyman, the dominant and eye-catching mark shown as Lacto is the exclusive intellectual property of the applicant. The respondent has indulged in unethical trade tactics in using the trade mark Lacto. The respondents are trying to enrich themselves at the cost of the applicants reputation, goodwill and popularity. Hence, the application for interim injunction as prayed for.

5. The first respondent, in its counter, has informed the court that the first respondent is only a contract manufacturer of toffee and candies. The first respondent also adopts the counter filed by the second respondent. The counter case of the second respondent reads as follows:-

The word Lacto is a common, generic and descriptive word. Therefore, the applicant cannot have any exclusivity over the same. There are several other traders using the word Lacto as part of the brand names of their confectionary products. In the product package, the applicant has chosen to refer their brand name as "Best Lacto in Town". Therefore, the applicant does not claim any exclusive right to the expression Lacto. Lacto Bon Bon is also a common and generic expression. There are several trade marks registered/applied for by different companies for trade marks with Lacto as prefix or suffix. Lacto means "relating to milk". Lacto Bon Bon denotes a type of milk candy. The trade mark Maha Lacto is not yet registered in the name of the applicant. The trade mark of the respondents Candyman Lacto Creme Center is totally different from the purported marks of the applicant viz., Lacto Super and Lactaire. Lacto is common to the trade and buyers as a non-distinctive character. The mark of the respondent is not similar to that of the applicant. The shape, configuration, colour scheme, get up and the lay out of the second respondents trade mark is completely different from the applicants one. The trade mark of the respondents Candyman Lacto Creme Center is a composite mark which is not phonetically or visually or structurally identical to that of the applicants trade mark Nutrine Lacto Super, Nutrine Maha Lacto and/or Lactaire. The second respondent has exclusively advertised the mark in magazines and journals. The adoption of the mark Lacto by the second respondent is honest and bona fide. Therefore, the second respondent has sought for dismissal of all the applications.

6. Contending that the second respondent has unambiguously admitted the fact that their trade mark is similar to that of the applicants in the application filed by the respondent seeking removal of the trade name/rectification of the registration before the Intellectual Property Appellate Board, Chennai, the applicant prays for a decree with respect to the prayer A and B the plaintiff.

7. But, the respondent has contended in the counter filed with respect to the said application to the effect that there was no admission of similarity of the trade mark adopted and used by the respondent and the applicant.

8. Application No.1230 of 2009:- It is found that that the second respondent in the application in O.R.A.Nos.26 and 27 of 2009 before the Intellectual Property Appellate Board, Chennai has contended that the use of the word Lacto by the applicant herein amounts to passing off as there are several manufacturers of sugar boiled toffees/candies selling under the trade mark Lacto as prefix/suffix. In the very same application, the second respondent has also averred to the fact that there are several manufacturers selling toffees/candies with trade mark contending Lacto as prefix or suffix, such as Lacto King, Candico Lacto, etc. Therefore, the registration of the mark Lacto Super is bound to cause confusion and deception amongst the trade and public.

9. The question is whether such a plea taken by the respondent herein before the Intellectual Property Appellate Board, Chennai would amount to a candid admission of the case of the respondent. In the considered opinion of this court, the applicant herein has conveniently discarded the relevant sentences found in the application filed by the respondents herein before the Intellectual Property Appellate Board, Chennai and approached the court seeking a decree on admission as if there was a candid admission of the case of the applicant. The cumulative reading of the stand taken by the respondent herein before the Intellectual Property Appellate Board, Chennai would go to show that the respondent has only pleaded that the registration of the trade mark Lacto Super is bound to cause confusion and deception among the trade and public as there are several manufacturers selling toffees and candies with the word mark Lacto as prefix or suffix. In such circumstances only the respondents herein have contended that the use of the word Nutrine by the applicant also would amount to passing off. It is found that the applicant has read the relevant sentence out of context and has come out with this application seeking to pass a decree as if there was candid admission by the respondents by misusing the process of law. Therefore, the application deserves dismissal.

10. O.A.Nos.914 and 915 of 2008:- The applicant has filed the suit claiming exclusive right in the trade mark Lacto. Though the applicant has claimed that they have been using the mark Lacto Bon Bon since 1958, no document has been filed to establish such a plea upto the year 1994. The applicant claims to be the registered proprietor of the mark Lacto Super and Lactaire. The fact remains that the second respondent applied for removal of the mark Lacto and the said application is pending disposal before the Intellectual Property Appellate Board, Chennai. Though the applicant has contended that the applicant is the registered proprietor of the trade mark Lacto Super, no document was produced to establish the use of the trade mark Lacto Super by the applicant right from the date of registration till today.

11. Learned Senior Counsel appearing for the applicant would contend that the word Lacto which forms part of the trade mark of many of the products of the applicant has been slavishly copied by the respondents to design their trade mark Candyman Lacto Creme Center.

12. Per contra, learned Senior Counsel appearing for the respondents would submit that the applicants trade mark Lactaire is not similar to the respondents trade mark Candyman Lacto Creme Center. The trade mark Lactaire does not contain the word Lacto and therefore, it is far fetched an argument to say that the part of the trade mark Lactaire was slavishly imitated by the respondents to depict their trade mark Candyman Lacto Creme Center.

13. As rightly pointed out by the learned Senior Counsel appearing for the respondents, the trade mark Lactaire does not rhyme with the trade mark Candyman Lacto Creme Center phonetically or visually or structurally.

14. The court cannot lose sight of the fact that the applicant has not got registration for the distinct mark Lacto Of course, after the dispute has arisen between the applicant and the respondents with respect to the use of the trade mark Lacto, it appears that the applicant has moved the trade mark Registry for registration of their trade mark. The second respondent has got a market capitalization of many a billion having transborder trade connections.

15. The learned Senior Counsel appearing for the applicant would submit that Lacto is not a common word used to describe the milk products. No evidence has been produced to show that the word Lacto, which is found a place in the trade marks of other Companies were in fact, used by those companies in trading their business. Per contra, the learned Senior Counsel appearing for the respondent would contend that the word Lacto is a common, generic and descriptive word to depict milk based products. Substantial materials have been produced to show that the word Lacto forms part of a number of trade marks used by many Companies all over the world and therefore, the applicant cannot claim exclusivity to the descriptive word Lacto.

16. Lacto means milk or milk based product as per the meaning found in various reputed dictionaries. Therefore, there is no difficulty to come to the conclusion that the word Lacto is descriptive of a milk product.

17. The respondents have produced google search results for the word Lacto with 12,50,000 entries for the word Lacto within 0.05 seconds. The print outs of websites of various Companies using the word Lacto in respect of confectionaries also have been filed on the side of the respondents to show that the mark Lacto has been liberally used prefixing or suffixing a combined trade mark. The pictures of various products other than toffees using the prefix Lacto have also been filed by the respondents to show that Lacto is a common, generic and descriptive word. No one can claim monopoly over a descriptive word unless it has acquired secondary meaning over a period of time on account of user.

18. In INDIAN SHAVING PRODUCTS LTD. v. GIFT PACK AND ANOTHER (1998 PTC (18) 698), it has been held as follows:-

"Thus it can be held without any hesitation that there is no bar and impediment in the use of a descriptive word by way of trade mark provided it is shown that it has become almost synonymous with the goods of the plaintiffs and thereby has lost its primary meaning."

19. In GODFREY PHILIPS INDIA LTD. v. GIRNAR FOOD & BEVERAGES (P) LTD. ((2004) 5 SCC 257 [LQ/SC/2004/566] ), it has been observed that a descriptive trade mark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or as being from a particular source.

20. There is no bar for claiming any monopoly over the descriptive word provided, the primary meaning of the said word is completely vaporized and the descriptive word is identified only with the product over which exclusivity is claimed. I fully agree with the above decision of the Delhi High Court.

21. The respondents have produced voluminous documents to establish that not only the other traders but the confectioners also are using the word Lacto to mean the milk based products. Therefore, in the considered opinion of the court, the public will not be confused or duped with the mark Lacto found in the trade mark of the second respondent and the applicant. As the word Lacto has been extensively used by various traders including confectioners, nobody can claim exclusivity to the word Lacto. It is to be noted here that the applicant has not registered the exclusive mark Lacto. It is only a part of the mark registered by the applicant. Only when a descriptive word is used by a trader to such an extent that the descriptive word is quite identified with the product of such a trader, he can claim monopoly over the product. On account of use and misuse of the word Lacto, the court finds that the public will never accord synonymy for the word Lacto with the product of the applicant. The primary meaning is ever attached with the word Lacto as it is liberally used by the trading community.

22. It is submitted by the learned Senior Counsel appearing for the applicant that the word Lacto was derived from Latin and it is not commonly used by the public.

23. As already pointed out, google search results for the word Lacto discloses 12,50,000 entries for the word Lacto within about 0.05 seconds. It speaks volumes of the common use of the word Lacto by people. The Supreme Court in KAVIRAJ PANDIT DURGA DUTT SHARMA v. NAVARATNA PHARMACEUTICAL LABORATORIES (PTC (SUPPL.)(2) 680(SC) = AIR 1965 SC 980 [LQ/SC/1964/275] ) has observed as follows:-

"In the first place, there was the intention on the part of the proprietor of the mark to indicate by its use the origin of the goods on which it was used. There was also indubitable evidence regarding the recognition of that mark as indicating origin on the part of that section of the public who buy these goods in the course of trade or for consumption. Thus the finding was that by reputation the mark had come to denote the goods of the respondent. Besides, the words were not a merely laudatory expression in relation to the goods, but descriptive though as such they would prima facie not be distinctive and the learned District Judge found that by such a long user the mark had become exclusively associated with the goods of the respondent in the market."

24. The applicant is the proprietor of the trade mark Lacto Super and Lactaire. The defendants trade mark is Candyman Lacto Creme Center. Lactaire is not similar or identical with the trade mark Candyman Lacto Creme Center. The mark Lacto has not been distinctively used by the applicant. It has been used with the suffix super. It has been established that many confectioners have been using the word Lacto either as a prefix or a suffix in their trade mark. The public will not be confused with Candyman Lacto Creme Center for Lacto Super. The materials produced would indicate that the applicant alone is not the only trader who has been using the word Lacto in the trade mark. Therefore, there will not be any confusion in the mind of the public or consumers to identify the source of the product with the trade mark Lacto Super, Lactaire and Lacto Candyman Creme Center. As per the above ratio laid down by the Supreme Court, the descriptive nature of the word should be completely obliterated and the same should be exclusively associated with the products of the trader who claims monopoly.

25. The learned Senior Counsel appearing for the applicant as well as the learned Senior Counsel appearing for the respondents cited the decision of the Supreme Court in CORN PRODUCTS REFINING CO. v. SHANGRILA FOOD PRODUCTS LTD. ((SUPREME COURT REPORTS) 1990 (1) 968). That was a case where the respondent Company made an application under the Trade Marks Act for registration of the mark Glucovita in respect of biscuits manufactured by it. The appellant Company had earlier obtained registration of its mark Glucovita in respect of dextrose a substance used as food. Of course, the Supreme Court has held therein that registration of the respondent Companys mark should be refused as it was quite similar to the mark of the appellant Company, approaching the issue from the point of view of the man of average intelligence and imperfect recollection. It has been observed therein, while taking a decision that the respondent Companys mark is quite similar to the appellant Companys mark, as follows:-

"The series of marks containing the common element or elements therefore only assist the applicant when those marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now in the present case the applicant, the respondent before us, led no evidence as to the user of marks with the common element. What had happened was that the Deputy Registrar looked into his register and found there a large number of marks which had either Gluco or Vita as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register."

26. Firstly, the said ratio has been laid down in an appeal which has arisen out of an application made under the Trade Marks Act seeking registration. The final order passed by the Registrar was put to challenge before the High Court and thereafter, the matter reached the Supreme Court. During the final hearing of the application before the Registrar of Trade Marks, the parties concerned had an opportunity to produce all the materials available with them to substantiate the point whether the mark which was registered by other traders was actually put to use by them. No material was produced before the Registrar of Trade Marks in that case to establish that the marks already registered by very many traders were actually used. In the instant case, we are at a stage of disposing of interlocutory applications. The parties are not expected to lead oral evidence to dispose of the interlocutory applications. Based on the prima facie material produced by the parties, an interlocutory application is decided by the court. Prima facie materials have been produced by the second respondent herein to establish that very many traders in the same business line of confectionary have been using the word Lacto while marketing their products. The court is satisfied with the materials produced by the respondents to come to a prima facie decision that the traders have been using the word Lacto in their trade mark. Therefore, the above observations made by the Supreme Court in the aforesaid decision will not apply to a case where interlocutory applications are decided by the court based on the prima facie materials produced for consideration.

27. The observation of Lord Hobhouse in PARSONS v. GILLESPIE ((1898) A.C. 239), followed in Mc.CAIN INTERNATIONAL LIMITED v. COUNTRY FOODS LIMITED AND ANOTHER (1892 PTC 156), the Supreme Court of Judicature, Court of appeal, reads as follows:-

"The plaintiffs then must show either that the term "Flaked Oatmeal" is not part of the common stock of language in the sense that is not a term of description, but is of an arbitrary or fanciful nature invented by the plaintiffs which the inventor may claim to have appropriated; or they must show that the term, being originally a description of the articles itself, has come to practice to denote goods made by the plaintiffs."

28. It is true that the applicant has produced documents to show that they have spent huge amount on advertisements and promotional activities and their sales turnover also has run into crores. Same degree of business profile is reflected in the business transaction produced by the second respondent. As the word Lacto is a common word found in the dictionary, the applicant cannot claim that the said word was invented by them. The fact remains that the word Lacto is just a description of a product. In the face of user of the word Lacto by very many traders, the word Lacto would not be associated with the only products emanated from the applicants. Therefore, the aforesaid decision is found applicable to the present case.

29. In J.R.KAPOOR v. MICRONIX (1994 SUPP.(3) SCC 215), a question arose whether the consumer of the electrical and electronic products are likely to be misguided and confused with the trade mark Microtel of the appellant and the trade mark Micronix of the respondent. The Supreme Court has observed that the word micro is a descriptive word of the product and therefore, no one can claim monopoly over the said word. The Supreme Court has gone a step further and observed that no one, who uses microchip technology, can be prevented from prefixing or suffixing the word micro which is a descriptive word. The same logic can be extended to the case on hand.

30. The word Lacto means milk or milk based product. Unless and until the exclusive word Lacto is registered by a trader, the word, being a descriptive one, can be capitalized by any trader to mean his product that it is milk based.

31. A descriptive mark is, of course, capable of registration as trade mark. Unauthorised use of the said mark would amount to infringement. But, to establish infringement of such a nature, distinctiveness of the descriptive word which was registered should be established. The user of the trade mark, which has descriptive connotation, should have reached such a level that mere reference to such a descriptive mark would immediately be associated with the product of the manufacturer. In other words, the descriptive term should have attained a secondary meaning and distinctiveness. In the instant case, distinctiveness could not be claimed as it is found that the applicant is not the only user of the word Lacto which is descriptive in nature. Inasmuch as other traders also have lavishly used the word Lacto, no secondary meaning of the word Lacto for the product of the applicant would have been registered in the minds of the consumers.

32. It is common knowledge that the trade mark Lacto King is used by Parrys confectionery. No action has been initiated as against Parrys Confectionary. The applicant, on its product package, has referred below its brand name, as "Best Lacto in Town". That Lacto/Lacto Bon Bon are common generic expression used in relation to milk candies is evident from the fact that the Indian Standards Institution (ISI), which lays down the standards of various products, has laid down the standard for Lacto Bon Bon vide IS:6360-1971 as far back in the year 1971. A copy of the said document has been produced by the second respondent for perusal. Lacto/Lacto Bon Bon is found a place in appendix B of the Prevention of Food Adulteration Rules 1955 which prescribe the standards of various articles of food. It implies that Lacto/Lacto Bon Bon is a common generic expression. Only after institution of the present suit, it appears that the applicant has chosen to file an application to register the word Lacto per se.

33. It is contended by the applicant that the respondent is using deceptively similar packaging with a view to deceive the children. Firstly, the trade mark Candyman Lacto Creme Center is not identical with the applicants trade mark Nutrine Maha Lacto. The outer wrapper of Nutrine Maha Lacto is of golden colour in combination with red colour whereas the outer wrapper of the respondents Candyman Lacto Creme Center is of majenta colour in combination with golden colour. The mark Maha Lacto is written in red colour in golden background. But, the mark Candyman Lacto Creme Center is written in blue, magenta and yellow colour combination in an oval device. The corporate mark Nutrine is written in golden colour within a red rectangle. But the umbrella mark Candyman is written in blue colour on top of the oval device. The bunny device written on top of the corporate name Nutrine and the particulars of the ingredients are found just above the fringes of the wrapper. Whereas the ingredients, address and other description is written on the fringes of the wrapper alongwith the corporate mark ITC in a triangle. The fringes of Nutrine Maha Lacto consist of golden colour and red colour in stripes. The fringes of Candyman Lacto Creme Centre consist of only golden colour. The inner wrapper of Nutrine Mahala Lacto consists of the corporate mark Nutrine with the bunny device. Whereas the inner wrapper of Candyman Lacto Creme Centre is plain white. The shape of the candy Nutrine Maha Lacto is somewhat rectangle. But, the shape of Candyman Lacto Creme Centre is somewhat oval. With the above differences in colour scheme, get up and lay out in package of the respondents Candyman Lacto Creme Centre from that of the plaintiffs one, there is no possibility for any confusion or deception amongst the minds of the traders or public.

34. In view of the above facts and circumstances, the court comes to the definite conclusion that the applicant, who has got no registration of the mark Lacto per se and has got registration of the said mark in combination of other words, failed to establish prima facie that the common, generic dictionary word Lacto has acquired a secondary meaning and consequent distinctiveness to mean only the product of the applicant. Further, it is established by the second respondent that the trade mark of the second respondent is not identical with the trade mark of the applicant. The colour scheme, get up and lay out found in the package of the second respondents product is not similar to that of the applicant. The applicant has failed to establish a prima facie case against the second respondent. If the common generic word Lacto is protected from its use by the respondents in the absence of acquisition of secondary meaning for the mark Lacto, much hardship will be caused to the respondents, whose trade mark is not similar to the trade mark of the applicant. The balance of convenience is found to be in favour of the second respondent.

35. In the result, all the three applications stand dismissed. There is no order as to costs.