Sanjib Banerjee, J.The parties jostle for more leg-space on the Ayurveda bandwagon as it chugs its way to the Occident with its load of mystique and oriental herbs and spices. The plaintiff asserts its exclusive right over the word mark "Ayur" on the strength of a black and white label registration showing the word "Ayur" in an unremarkable font with an elliptical band around it. Such label is registered in many classes. The word mark "Ayu" is registered in favour of the plaintiff in class 5 covering medicinal and like products. On the strength of the word "Ayur" being the most prominent part of the plaintiffs label registrations and its proprietary right to the word "Ayu", the plaintiff seeks to stop the defendants use of any trademark carrying any part of either word over which the plaintiff claims exclusivity.

2. Both parties are substantial. The plaintiffs impressive sales figures and advertisement expenses are matched by the defendants substantial reputation and noticeable presence in the market. The plaintiff complains of the defendants use of the marks "Ayucare", "Ayurcare", "Himani Ayurdhara" and "Himani Ayucare".

3. The plaintiffs marks are registered for divers goods in Australia, Nepal, New Zealand, South Africa, the United Arab Emirates and the United Kingdom. The plaintiffs complaint comes upon the defendants application for registration of its said marks in classes 3, 5 and 42 being published in the trademarks journals covering medicinal preparations, sanitary, cosmetic and beauty-care products.

4. The plaintiffs case is of infringement with an alternative case of passing off in the defendants use of its said marks. The petition begins with an assertion that the plaintiff carries on business of manufacture and sale of cosmetics, hair lotions, essential oils, shampoo and other products under the trademarks and names "Ayur" and "Ayu". At the third paragraph of the petition the plaintiff says that it (or its predecessor-in-interest) had applied for and obtained registration in various classes "for the protection for its trademark and name "Ayur"." Of the 19 registrations detailed in such paragraph one is that of "Ayur" in Hindi in class 16 for paper and paper articles, stationery and like products. "Ayur" is spelt in Hindi with a small "A", "Ya" with a long "U" and "Ra". In course of the hearing the plaintiff has also relied on an additional representation in re spect of the Hindi mark "Ayur" in class 3 for cosmetics, perfumery and like products.

5. The entire rendition in the petition is based on the assertion of the plaintiffs exclusivity over the word marks "Ayur" and "Ayu". The plaintiff claims adoption of the mark "Ayur" in 1984 and at the sixth paragraph details the copyright registrations in devices bearing the "Ayur" mark for a host of herbal cosmetic products.

6. The plaintiff claims at paragraph 9 of the petition that it has successfully enforced its rights in several cases "where the fame of "Ayur" trademarks has been recognised." The narration in the petition is drummed up in support of the plaintiffs exclusivity over the two word marks culminating in the finale of the assertion of the right at paragraphs 18, 19 and 20 in the following words:

18. That use of the trademark AYUR and "AYU" along with any prefix or suffix by the respondent is wrongful and illegal and in violation of the petitioners rights. The goods bearing the impugned trademark if allowed to be sold in the market will cause damage to the petitioners credibility and reputation. The respondent has no right to market and sell and cause to be marketed and sold the said products by copying the trademark of the petitioner.

19. The respondent is not entitled to use the trademark AYUR and AYU and anything in conjunction or by prefixing or suffixing any word to the trademark AYUR or AYU so as to pass off and suggest that it is the business of the petitioner or it is connected with the petitioner.

20. The respondent has passed off and is passing off and/or attempting to pass off its/their goods as and for the genuine goods of the petitioner under the trade mark "AYUR" or "AYU" by prefixing or suffixing any other word.

7. The defendant has used an opposition to the plaintiffs interlocutory petition being GA No. 2951 of 2007 and has also filed a vacating application by way of GA No. 3976 of 2007 seeking recalling of the ex parte ad interim order that the plaintiff obtained on September 19, 2007. The injunction that was granted in the plaintiffs favour on September 19, 2007 was in terms of prayer (b) of the plaintiffs petition which reads as follows:

b) Injunction restraining the respondent whether by themselves or their servants, agents and assigns or each of them or otherwise howsoever from using the mark Ayucare, Ayurcare, Himani Ayurdhara and Himani Ayucare or infringing the registered trademark of the petitioner or any other trade mark deceptively similar to the petitioners registered trademark Ayur;

8. The order dated September 19, 2007 was modified upon receipt of the defendants vacating application on September 28, 2007, by restricting the operation of the order in terms of prayer (b) of the plaintiffs petition within the territory of India and permitting the overseas or export business of the defendant to continue unaffected by the injunction.

9. In its affidavit the defendant says that the real object of the plaintiff or its predecessor-in-interest was to traffic in the trademark or name "Ayur" as would be evident from the various classes in which the plaintiff obtained registration without intending to or carrying on any business relating to the products covered by most of the classes. The defendant has denied the plaintiffs international reputation over the mark "Ayur" and says that even if "Ayur" is accepted as a word mark the plaintiff cannot seek its exclusive use.

10. The defendant has applied for registration of the word mark "Ayurcare" in class 5 and in class 3 and also applied for the word mark "Ayucare" in class 3 and class 42. Such applications have been opposed by the plaintiff on the basis of its registered device and word marks. On May 23, 2007 the defendants trademark attorneys wrote to the plaintiffs attorneys and asserted as follows:

In all the oppositions by your client you have relied upon the registered trademark AYUR of your clients in various classes. Kindly note that the word AYUR actually comes from the Sanskrit word AYUS meaning "life and longevity". In view of above and as our clients are persons aggrieved our clients may file rectification petition against the mark AYUR which is registered in various classes.

However, our clients are interested in the mark AYUCARE which is phonetically, structurally and visually different from your clients mark AYUR.

In view of above,

1. Our clients are prepared to give you undertaking that they will use the mark AYUCARE only and they will withdraw the applications for their mark AYURCARE....

2. You should allow our clients to use the mark AYUCARE and in view of above our clients undertake not to file any rectification petition against your clients registered trademark AYUR.

11. The plaintiffs trademark attorneys declined the offer and it was within months thereof that the present action for infringement and passing off was launched.

12. The plaintiff refers to the various provisions of the Trade Marks Act, 1999 to say that it is exclusively entitled to the word mark "Ayur" by virtue of the word being the only prominent feature of its device registrations and on the strength of the word or device marks predominantly containing the word "Ayur" having been registered in various countries which are parties to the Paris Convention. The plaintiff has handed over a copy of Notification No. S.O. 1041(E) of December 3, 1998 issued by the Ministry of Industry, Department of Industrial Development, entitled "Ratification of Paris Convention" where, u/s 131(1) of the Trade and Merchandise Marks Act, 1958, the Central Government declared various countries as convention countries and ratified the convention. Australia, New Zealand, the United Arab Emirates and the United Kingdom figure in the list appended to the notification and the plaintiff says that its registrations in the convention countries afford it exclusivity over the word mark "Ayur" in this country.

13. The plaintiff has relied on Rule 33 of the Trade Marks Rules, 2002 to show that it is possible for a word mark registration to be obtained in Hindi in this country for such word mark to be entitled to all protection in respect of its registration under the 1999 Act. Rule 33 records as follows:

33. Transliteration and translation. - Where a trade mark contains a word or words in scripts other than Hindi or English, there shall be endorsed on the application form and the additional representations thereof, a sufficient transliteration and translation to the satisfaction of the Registrar of each such word in English or in Hindi and every such endorsement shall state the language to which the word belongs and shall be signed by the applicant or his agent.

14. The plaintiff claims that it is entitled to the injunctions that it seeks on the strength of the plaintiffs combined rights in "Ayur" being the most prominent feature of its device registrations, the registration of word mark "Ayu" and the registration of the Hindi word mark "Ayur". The plaintiff says that the defendant manufactures similar products as those produced and marketed by the plaintiff and the use of the four marks by the defendant that the plaintiff complains of amounts to infringement.

15. In response to the defendants contention that when a trademark consists of several matters its registration shall not confer on the proprietor any exclusive right in the matter forming only a part of the whole of the trademark which has been registered, the plaintiff cites Section 29(9) of the 1999 Act to claim distinctiveness over the word "Ayur" and suggests that the spoken use or visual representation of "Ayur" and "Ayu" by the defendant amounts to infringement.

16. The plaintiff says that its rights over and in respect of "Ayur" have been recognised by various courts including the Delhi High Court in a judgment reported at 2001 (2) CTMR 514 Three-N-Products Private Ltd. Vs. Karnataka Soaps and Detergents Limited and Another, In the Delhi case it was held that the Hindi word "Ayur" was an invented word capable of exclusive appropriation by the plaintiff without proof of its having acquired secondary significance. The plaintiff had sued on the basis of its registered Hindi mark "Ayur" and at paragraph 12 of the report it was held:

12. As already noticed the word ("Ayur" written in Hindi) is an invented, meaningless new word which neither finds place in the Hindi language dictionary nor it is a common language word. Besides it has assumed secondary significance as denoting the goods of the plaintiff. Therefore a passing off action in respect of its misuser can be maintained by the plaintiff.

17. The judgment of a Single Judge of this Court in Three-N-Products Private Ltd. v. Karnataka Soaps & Detergents Limited and Anr. proceeded on the basis of the plaintiff having a registration in the word mark. That would be evident from the opening paragraph of the report and from paragraphs 3, 4, 5, 8 and 14 thereof. The reasoning is found at paragraph 16 of the report:

16. Now, in this context, from the facts and statement and also from the evidence produced before me the Court is looking into the aspect as to who is the senior user of the mark Ayur. It is stated in the petition that the mark Ayur has been used since 1984 by the petitioner and as a matter of fact the same had been used by the predecessor-in-interest of the petitioner, which was then a partnership firm. The sale figures from the year, 1984 till September, 2003 have been given. Similarly, the amounts of the advertisement expenses of the same period have also been given. It is stated that the said mark had been in use in relation to the products of the cosmetic goods particularly the soap. Therefore, in the petition, apart from the statement I do not find any evidence to support the user of the mark Ayur in the year, 1984. Significantly, this statement has been denied and disputed by the respondent. At the same time the respondent No. 1 has not produced any document as to actual user of the mark Ayur Care in relation to soap. Apart from bare statement and fact of registration of the mark there is no document to show that the use of the mark Ayur has been established. But in the affidavit-in-reply I find the petitioner has produced a document of sale of their soap with the mark Ayur on 23rd January, 2001. As such, I find that plaintiff at least has been able to prove use of the mark from 2001, whereas the defendant No. 1 has failed to do so. It is true that because of registration the respondent No. 1 is entitled to use the mark Ayur in relation to soap but mere factum of registration does not licence it to pass off their product with the mark Ayur. It is settled position of the law that for granting order of injunction in the case of passing off the essential things are who is the senior user, whether the two competing marks are used in the same product and whether there is any likelihood of confusion in the mind of the customers if both the marks are allowed to be used simultaneously. The word Ayur may be a generic and common word but it is held by judicial pronouncement of Delhi High Court that the mark Ayur of the plaintiff has acquired secondary significance. The defendant No. 1 initially did not use the mark Ayur, and without the said mark the defendant had a large volume of business with its own reputation. I do not find any reason as to why the respondent No. 1 has later on adopted the mark Ayur with this product of soap.

18. It would be profitable to notice the other decisions relied upon by the parties before returning to the above two cases cited by the plaintiff which may have a telling bearing on the subject matter of the present proceedings.

19. The plaintiff cites a judgment reported at Devi Pesticides Private Ltd. Vs. Shiv Agro Chemicals Industries, and places the discussion at the following passages at paragraphs 13 and 19 of the report:

13. ...It is well settled principle of law that any action for infringement and pass off where the similarity between the plaintiff and defendants trademark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is limitation, no further evidence is required to establish that the plaintiffs rights are violated. This is clear from the above decision.

19. From the materials placed, we are satisfied that the applicants have prima facie case in their favour, the needy users are illiterate farmers and common man, who eats the fruits and vegetables and whose interest has to be taken care of by this Court. The applicant being a prior user of the trademark since 1987, we are satisfied that if respondent is injuncted from use of applicants mark, no prejudice would be caused to them. On the other hand, if they are not so injuncted, irreparable loss and injury will be caused to the applicant. We are also satisfied that balance of convenience is in favour of the applicant. The learned Judge failed to consider the similarities in the marks and the resemblance in the phonetic, visual and the basic idea represented in the registered mark and the infringed mark. Further, the learned Judge failed to note that the design, appearance, label, etc. of the products are similar and as erroneously come to the conclusion that the word BOOM is a common word and the applicant cannot have coined the word. As rightly pointed out the registered trademark of the applicant since 1987 of the same word BOOM cannot be allowed to be used/ infringed by others by just prefixing SUPER for marketing their products as that of the applicant.

20. The plaintiff has referred to a judgment reported Parle Products (P) Ltd. Vs. J.P. and Co., Mysore, and relies particularly on the following passages from paragraph 9 of the report:

9. It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed sideF V. by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; ...After all, an ordinary purchaser is not gifted with the power of observation of a Sherlock Holmes....

21. The oft noticed judgment reported at Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories, is next placed where the plaintiff had sought an injunction on the basis of its registered trademarks "Navaratna" and "Navaratna Pharmaceutical Laboratories" against the defendants use of "Navaratna Kalpa" and "Navaratna Kalpa Pharmacy". The defendant in such suit had claimed in its written statement that "Navaratna" in its etymological sense meant Ayurvedic preparations of a particular composition and that the word had been adopted by several manufacturers of medicinal preparations. A second defence taken was that the defendant had sufficiently distinguished its products by using words in addition to "Navaratna". The Supreme Court found that the action was both for infringement and also for passing off by use of the same mark. The plaintiff in these proceedings relies on the dictum at paragraph 28 of the report which enunciates that in an action for infringement if the defendants mark is so close to the plaintiffs - whether visually, phonetically or otherwise - and the court reaches the conclusion that there is imitation, no further evidence is required to establish that the plaintiffs rights are violated. The Supreme Court dismissed the defendants appeal.

22. A judgment reported at (2002) 2 PTC 355 (Info Edge (India) Pvt. Ltd. and Anr. v. Shailesh Gupta and Anr.) is placed by the plaintiff for the discussion at paragraphs 28 and 30 of the report:

28. The defendant has employed minor mis-spelling of the plaintiffs mark, although it has another such mark available to it, which is also a registered domain name. Therefore, the said action indicates and establishes dishonest intention on the part of the defendant. That appears to have been done with bad faith in order to gain advantage of spelling error made by the internet user while attempting to enter into the plaintiffs internet address on their web-browser. The very purpose of having two registered domain names by the defendant only establishes the dishonest intention and bad faith on the part of the defendant. The real intention behind registering two domain names for the same purpose, of which one is deceptively similar to the domain name of the plaintiff, is to attract or induce the internet users to come to the website of the defendant first by mis-spelling the plaintiffs mark and domain name and, therefore, taking the said internet user to the domain name of the defendant, which is jobsourceindia.com. The defendants choice of slightly mis-spelt version of the plaintiffs domain name was deliberate in order to suit the business activities of the defendant and for the purpose of diverting traffic of the interest users to website unrelated to the plaintiff. The traffic of the internet users to the plaintiffs domain name is sought to be diverted to the domain name and website of the defendant by confusing the internet users as to sponsorship or affiliation with a website that defendant operates for commercial gain. Such intention is deceitful and dishonest, apart from being an action on bad faith.

30. Both the domain names "Naukri.Com" of the plaintiff and "Naukari.Com" of the defendant, depicting the nature and type of business activity they carry on are identical or confusingly similar trade mark or service marks. It is also a possibility for an internet user while searching for the website of the plaintiff to enter into the websites of the defendant through only a small mis-spelling of the domain name and, in fact, such incident has occurred in the case of the plaintiff itself vis-a-vis the defendant in proof of which a document is also placed on record. Such diversion of traffic with the sole intention of ulterior gain in the similar business activity by a competitor, requires protection. A court discharging equitable justice should come in aid and for protection of the honest user as opposed to a dishonest user acting on bad faith.

23. The plaintiff has also cited a judgment reported at Godfrey Philips India Ltd. Vs. Girnar Food and Beverages Pvt. Ltd., in which paragraph 3 and the Supreme Courts view at the beginning of paragraph 4 of the report are apposite:

3. The appellant filed an application in the suit for an interim injunction. This was allowed by the learned Single Judge. The respondent appealed before the Division Bench. The Division Bench allowed the appeal. It upheld the learned Single Judges view that the appellants products had displayed the mark "SUPER CUP" prominently and "TEA CITY" did not occupy a prominent position and rejected the respondents submission that the trade mark of the appellant was a composite one of "Tea City SUPER CUP". The Division Bench also upheld the Single Judges opinion that the appellants trade mark was "SUPER CUP". However, the Division Bench held that the words "SUPER" referred to the character or quality of the tea and was merely a laudatory word and the count "cup" referred to the cup of tea. Accordingly, the conclusion of the Division Bench was that the phrase SUPER CUP" was descriptive and laudatory of the goods of the appellant and, therefore, the appellant was not entitled to any order of injunction.

4. Without going into the question whether the conclusion arrived at by the Division Bench that the trade mark is descriptive is correct or not, it appears to us, and as is conceded by both parties before us, that the enunciation of the principle of law with regard to the protection available even in respect of the descriptive trade mark was wrong. 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. We, therefore, remand the matter back to the Division Bench of the High Court so that it may address its mind to this question without disturbing the other conclusions arrived at this stage....

24. According to the plaintiff, even if its case for infringement is not accepted at this interlocutory stage it would be entitled to an order of injunction for the defendants attempt at filching the plaintiffs goodwill and reputation in seeking to pass off its products as those of the plaintiff. The tests as to passing off as enumerated in the judgment reported at Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., have been relied upon:

35. Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered:

(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.

(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.

(c) The nature of the goods in respect of which they are used as trade marks.

(d) The similarity in the nature, character and performance of the goods of the rival traders.

(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.

(f) The mode of purchasing the goods or placing orders for the goods.

(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

25. The substance of the tests in a passing off action appears to be the courts perception of the degree of resemblance between the marks.

26. The plaintiff insists that upon there being no disclaimer of the word mark "Ayur" in the label registrations, the plaintiff is entitled to assert exclusivity over the word. A judgment reported at The Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd., has been cited in the context. In such case the Registrar of trademarks had rectified the register by inserting a disclaimer of the word "Shree", forming part of a device mark. The High Court reversed the Registrars order and the Registrar carried an appeal therefrom. The plaintiff here relies on paragraph 14 of the report and the observation there that in view of the statutory provision that when a registered mark contains several parts it would not confer exclusivity of the various parts on the proprietor, it would not imply that a disclaimer of a part would always be unnecessary.

27. J.C. Eno Limited Vs. Vishnu Chemical Co., is placed by the plaintiff to suggest that merely because a mark may describe the associated product it would not rob the word written in English of its exclusivity. The Bombay High Court held in a passing off action that the mark "Fruit Salt" was so well-known in the trade to belong exclusively to the plaintiffs saline that they were not merely descriptive of the product but had assumed distinctiveness. The plaintiff got the injunction against the defendants mark "Falaxar" upon the courts appreciation that the defendants mark was made up of "Fala" meaning fruit and "Kshar" meaning salt in Marathi.

28. The defendant has relied on a judgment reported at (1938) 55 RPC 125 : (1938) 1 All ER 618 (The Canadian Shredded Wheat Co., Ltd. v. Kellogg Co. of Canada, Ltd. and Anr.) for the principle that if the plaintiffs mark were descriptive it would ordinarily not be entitled to an injunction in a passing off action. The following passages from the report are apposite.

In the first place the Plaintiff claims an injunction to restrain the Defendants from infringing the registered trade marks consisting of the words "Shredded Wheat" by the use of the words "Shredded Wheat", or "Shredded Whole Wheat" or "Shredded Whole Wheat Biscuit" or any words only colourably differing therefrom. As to this claim their Lordships at this stage content themselves with observing that, if the Plaintiffs said trade marks are valid trade marks, there can in their opinion be no doubt that the Defendants by selling biscuits as shredded whole wheat biscuits do infringe those marks.

If the Plaintiff succeeds on the first claim, no injunction in respect of alleged passing off by the use of the words "Shredded Wheat" would be required. But in the event of the trade marks being held invalid the Plaintiff asks for an injunction to restrain the Defendants from (putting it shortly) by the use of the same words or any words only colourably differing therefrom, passing off Kelloggs biscuits as the Plaintiffs biscuits.

Their Lordships proceed to deal with these alternative claims, each of which as will be seen involves a consideration of the question of the aptness or capability of the words "Shredded Wheat" to distinguish the product or article manufactured by the Plaintiff from a similar product or article manufactured by anyone else, or their aptness or capability of indicating that goods to which they are applied are the exclusive manufacture of the Plaintiff. (Pages 140-141)

...But the onus on the person who attempts to establish this secondary meaning is a heavy one. If, in addition to being descriptive of the goods in connection with which it is used, it is in fact the name of the product of which those goods are composed, then it would seem to their Lordships that a state of affairs exists which makes it extremely difficult that the word should ever become indicative of origin, so as to render it capable of registration as a trade mark. The difficulty may sometimes be overcome in a case where the alleged trade mark is in fact a description of the goods, but is not recognised by the trade or the public as being such, and is taken by them as being a fancy name, e.g., where a chemical description not generally known to the public has been adopted, or where an unusual substance unknown to the public is being used in the manufacture. Where the words are purely descriptive and in common use it is even more difficult to conceive a case in which they could acquire a secondary meaning. (Page 142)

...It must be remembered that shredded wheat was not only the name given by the inventor to a new product which could be baked into a biscuit, but was also descriptive of the product both as to its composition and its appearance. It must also be remembered that for a lengthy period the Plaintiff enjoyed a legal monopoly of making and selling in Canada the product shredded wheat baked into biscuits, and that, with the negligible exception of some shredded wheat biscuits called muffets, the Plaintiff continued to be the sole maker of the product, baked or otherwise. In these circumstances it was inevitable that the words "shredded wheat" and "shredded wheat biscuits" should become associated in Canada with the goods of the Plaintiff, since many members of the public would get to know that the product shredded wheat was in fact the Plaintiffs product.

...But this is far from establishing the required meaning of distinctiveness, which must carry with it the feature that the goods distinguished are the goods manufactured by a particular person and by no other. A word or words to be really distinctive of a persons goods must generally speaking be incapable of application to the goods of anyone else.... (Page 145)

29. An unreported judgment of this Court delivered on May 2, 2008 in GA No. 1366 of 2008 : CS No. 124 of 2004 (Three-N-Products Private Ltd. v. ITC Limited) has been referred to by the defendant in the context of the principal "Ayur" mark asserted by the plaintiff:

The plaintiff has no registration over the word mark Ayur. "Ayur", in these days where ayurvedic products have become fashionable, has developed a secondary meaning or conveys a direct connection to Ayurveda. The word "Ayur", prima facie, may not be registrable and the plaintiff, it appears, is seeking to use its label registration where Ayur is prominently displayed to claim exclusivity over the word mark "Ayur" which would not be permissible.

It is true that there is no disclaimer as to the word "Ayur" in the plaintiffs label registrations. It also does not appear, without any affidavit having been called for from the defendant, that the word mark Ayur, as part of the three registrations obtained by the defendant, has any disclaimer. It is also not in doubt that that only because the defendants products have not been released in the market, an action for passing off would not be rejected. However, when it is a label registration which is sought to be made the basis of a passing off action against a word mark, a quia timet action without the benefit of the defendants packet or the manner of depiction of the defendants impugned mark would require a very high case to be brought by the plaintiff. (Pages 4-5)

30. The two causes of action of infringement and passing off in respect of the three marks of the plaintiff and the defendants use of the four marks complained of by the plaintiff, need to be taken separately. Infringement is the violation of the statutory right conferred on the proprietor upon registration. Passing off is a form of deceit, the nature and extent whereof, is not governed by statute.

31. The parties have relied on three principal provisions of the 1999 Act. The plaintiff has referred to Sections 28 and 29 of the 1999 Act repeatedly in asserting its exclusivity over the words "Ayur" and "Ayu". The defendant has stressed on Section 17 of the 1999 Act to contest the plaintiffs claim of exclusivity over the word "Ayur" and points to "Ayu" being lost in its "Ayucare" and "Himani Ayucare" brands. The three major sections provide as follows:

17. Effect of registration of parts of a mark.-(1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.

(2) Notwithstanding anything contained in Sub-section (1), when a trade mark-

(a) contains any part-

(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or

(ii) which is not separately registered by the proprietor as a trade mark; or

(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.

28. Rights conferred by registration.-(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.

(2) The exclusive right to the use of a trade mark given under Sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.

(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.

29. Infringement of registered trade marks.-(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-

(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

(3) In any case falling under Clause (c) of Sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.

(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.

(6) For the purposes of this section, a person uses a registered mark, if, in particular, he-

(a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;

(c) imports or exports goods under the mark; or

(d) uses the registered trade mark on business papers or in advertising.

(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.

(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising-

(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

(b) is detrimental to its distinctive character; or

(c) is against the reputation of the trade mark.

(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.

32. The registration of a device or label would entitle the proprietor to protection against the use of such device or label by a rival in trade if the rivals use is identical or similar to the registered trademark and the use is in connection with identical or similar goods or services covered by such registered trademark and it appears to court that the rivals mark is likely to cause confusion or is likely to have an association with the registered mark. If the two marks are identical and the goods and services covered by either mark are also identical, there is a presumption that arises in favour of the proprietor of the registered mark and, for interlocutory purposes, it may be enough to earn the plaintiff its injunction. If the two marks are identical and the goods and services are similar or if the two marks are similar and the goods and services are identical, the court has to weigh the likelihood of confusion or assess whether the defendants mark is likely to have an association with the plaintiffs registered mark.

33. The identity or similarity of the marks has to be assessed on the basis of the entirety of the mark as registered. The identity or similarity of the defendants mark with the plaintiffs as referred to in Clauses (a) and (b) of Sub-section (2) of Section 29 of the 1999 Act has to be read in the context of Section 17(1) of the. Even if Section 29 of the 1999 Act is seen to be tempered by Section 17 thereof, if a device mark is pitted against another device mark or a word mark is pitted against another word mark, the tests would be simpler than in the present case. It is not as inconceivable, however, as comparing apples and oranges in putting up a device mark to stop a word mark or vice versa but there are inherent complexities.

34. The right that the owner of a device or label mark obtains is, loosely speaking, somewhat similar to copyright. It is as much the writing or etching in a device or label, and the design and colour combination thereof, over which the registered proprietor gains rights as the manner of depiction thereof. It is possible that a registered mark is made up of several components which are distinctive and notwithstanding separate registrations in respect of such distinctive parts not having been obtained by the owner of the registered mark, such proprietor is entitled to cite one distinctive part as being inseparable from the registered whole or such distinctive part being the most outstanding attribute of the mark and thus assert a right over the distinctive part. But in view of Section 17(2)(a) of the 1999 Act, such assertion has to be as in passing off and may not be made in aid of a case of infringement. Section 17(2) and the world beyond the statute that is recognised in Section 27 of the 1999 Act has a combined effect of permitting the registered owner to claim exclusivity of a part of the whole of the registered mark, but only on a cause of action of passing off.

35. The words "the registration thereof shall not confer any exclusive right" towards the end of Section 17(2) have to be understood in the context. The import of such words is that the registration of the composite mark will not ipso facto confer any exclusive right as to the parts of the composite mark. But if the owner can establish exclusivity aliunde, the owner can assert the exclusivity. The registered owner is entitled to protection of its goodwill in such prominent feature as in an action for passing off unless the registered owner seeks to rely on Section 17(2)(b) of thein respect of a distinctive matter not common to the trade.

36. But it would appear that an infringement action may not be run on the basis of an unregistered part of the registered whole of a trademark. Alternatively, and even if it is assumed for arguments sake that Section 17(2)(a) of the 1999 Act does not altogether preclude a claim of exclusivity over a part of a registered mark, such part has to be registrable under the to qualify for protection. The word "Ayur", prima facie, does not appear to be capable of distinguishing the goods or services of a person from those of another as it seems to consist exclusively of an indication which may serve in the trade to designate the nature of the goods. The plaintiffs claim of infringement based on its "Ayur" mark as part of its device registrations is found to be unacceptable at the interlocutory stage.

37. The plaintiff has not emphasised so much on Clause (b) of Section 17(2) of the 1999 Act as on Clause (a) thereof. If a registered mark is capable of being broken in parts, the registered owner may not sue for infringement upon a part being copied by another. Section 17(2)(a) of thedoes not leave any gap. But Clause (b) disclaims only such matters as are common to the trade or are otherwise not distinctive and leaves room for a registered owner to cite some unique, distinctive matter being an element of the registered mark to claim exclusivity and pursue an action for infringement. It is more than likely that Clause (a) is more apposite for word marks and Clause (b) the more appropriate for device or label marks. It is an entirely different matter, however, that the word "Ayur" does not appear to be strong enough to slip through the window that Clause (b) provides.

38. In the Delhi case involving this plaintiff (Yashwant and Ors.) it was held that the Hindi word "Ayur" in the way it is spelt does not find place in the Hindi dictionary. The Delhi High Court held that the Hindi word "Ayur" spelt with a long "A" at the beginning has a connection with Ayurveda as the "Ayur" part of the Hindi word Ayurveda is spelt with a long "A" and "Ya" with a short "U". The defendant in the Delhi action sold footwear under the mark "Ayur" in Hindi spelt as the plaintiff spells its "Ayur" and imitated the artistic work of the plaintiff in the getup, layout and style used by the plaintiff. The analogy cannot be carried to the present case. The distinctiveness in the Hindi word "Ayur" used by the plaintiff is lost in its transliteration in English as "Ayur" in English can be said to be a transliteration of the peculiar "Ayur" in Hindi of the plaintiff or the generic "Ayur" of the Hindi word Ayurveda. Prima facie, there does not appear to be a case of infringement made out by the plaintiff in the defendants use of any of the defendants marks on the basis of the plaintiffs rights in respect of the Hindi mark "Ayur".

39. The plaintiff is on stronger ground in its assertion of its complaint of the use of the mark "Ayu" as part of one of the defendants brands. It has been recognised that the use of a prefix or a suffix by the defendant with the plaintiffs registered mark may not allow the defendant the right to use such mark. Of its two marks that include "Ayu", the defendant uses its stable mark "Himani" in conjunction with "Ayucare" and since the plaintiff complains of the use of the word "Ayu" as part of the mark "Himani Ayucare", it appears that there is sufficient bona fide attempt by the defendant to avoid confusion and to preclude association of its such mark with the plaintiff or its registered mark "Ayu". The use of "Ayu" by the defendant in such mark notwithstanding, prima facie, no case of infringement in respect of "Ayu" is made out by the plaintiff in respect of the defendants "Himani Ayucare" mark.

40. But the plaintiff is entitled to an injunction in the defendants use of the mark "Ayucare" on the strength of the plaintiffs registered word mark "Ayu" and the similar product as of the plaintiff sold by the defendant under the "Ayucare" mark. In using the word "Ayucare" without any distinguishing feature as in "Himani Ayucare", the defendant brings about a situation that is likely to cause confusion and is likely to associate the "Ayucare" product with the plaintiff or the plaintiffs products sold under the mark "Ayu".

41. The plaintiff has referred to the Paris Convention and its registration of the word "Ayur" or device containing the word "Ayur" in various convention countries. Under the International Convention for the Protection of Industrial Property (which is the full form of the Paris Convention), convention countries form a union for protection of industrial property. The basis of the union is equal treatment of nationals and residents of the convention countries. The general principle of the Paris Convention is that if a mark is well known in a convention country as being the mark of a person who is either a national of another convention country or is domicile in or has a real and effective industrial or commercial establishment in another convention country, the mark would be protected in the first-named convention country whether or not the owner carries on business or has any goodwill in the first-named country.

42. The plaintiff has understandably not proceeded to aver or establish the facts which would entitle the plaintiff to protection of its overseas marks in India under the Paris Convention. For a start, it does not appear that a national of a convention country can cite the registration of a mark in another convention country to establish his right in his home country. If the Paris Convention entitled a domicile in a country (as the plaintiff undoubtedly is a domicile of India by virtue of its registered office being in this country) to have a word or mark common in the home country to be accorded protection at home on the basis of its registration in another convention country, it would throw up an absurd result. The Paris Convention cannot be understood to permit a common Indian or Hindi word or mark registered in a convention country (as it would be an uncommon word in such country) to be made the basis for exclusivity over such common word or mark in India.

43. The judgment rendered in the Karnataka Soaps case in favour of this plaintiff does not throw any light on the matters in issue in the present interlocutory proceedings. The defendant in the Karnataka Soaps case did not bring it to the notice of the court that a word used in a registered device mark did not confer the attendant perquisites of registration on such word. The judgment proceeds on the basis of the registered word mark "Ayur" and since the defendant in the case seems to have missed the wood for the trees, the court was not called upon to discuss the distinction between a registered device and a word forming but a part of the registered device.

44. For obvious reasons, the judgement in the Karnataka Soaps case does not operate as res judicata as far as the present defendant is concerned. Inasmuch as a key matter in issue in the present proceedings that could have been urged by the defendant in the Karnataka Soaps case but was not alluded to, such decision cannot be said to be a binding precedent to govern the present matter. It must also be remembered that owners of the registered marks often test waters by bringing an action against a soft or even pliant opponent in a build-up to a larger fight. That is not to suggest that this plaintiff indulged in such practice in either the Yashwant or the Karnataka Soaps case, but only to call attention to the fact that a previous decision on the same mark involving a separate defendant may not always be a good guide in a subsequent matter.

45. The plaintiffs claim of infringement is not found good enough at this stage for any injunction to be granted in respect of any of the marks used by the defendant other than the mark "Ayucare". The considerations in respect of passing off would be different. Section 27 of the 1999 Act keeps the tort of passing off beyond the pale of the.

27. No action for infringement of unregistered trade mark.-(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.

(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.

46. As observed in the Pub Squash case Cadbury Schweppes Pty Ltd. and Ors. v. Pub Squash Co. Pty Ltd. (1981) RPC 429, the tort of passing off is no longer anchored in its early 19th century formulation, to the name or trademark or a product or a business. It is now recognised that the tort can encompass other descriptive material, such as slogans or visual images or advertisement campaigns that imply an association with the plaintiffs product, provided always that such descriptive material has become part of the goodwill of the product.

47. The classical trinity, as the Parma ham case Consorzio del Prosciutto di Parma v. Marks & Spencer plc [1991] RPC 353 tests in an action for passing off have now come to be known, are:

(1) that the claimants goods or services have acquired a goodwill in the market and are known by some distinguishing name, mark or other indicium;

(2) that there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant; and

(3) that the claimant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendants misrepresentation.

48. The Cadila tests laid down by the Supreme Court are no different in substance than the Parma ham classical trinity. By either set of tests, a case of passing off is founded on the twin planks of distinctiveness and resemblance. The mere resemblance of the defendants mark without the plaintiffs mark being distinctive or the lack of resemblance of the defendants mark despite the plaintiffs mark being distinctive would not meet a case of passing off.

49. The word "Ayur" hints at an association with Ayurveda. Whether or not the plaintiff uses any Ayurvedic component in any of its products manufactured under the registered device in which the word "Ayur" features prominently, the word conveys - in the context of the products manufactured by the plaintiff - a nexus with Ayurveda. The word "Ayur" in the plaintiffs marks may be perceived to refer to the composition of the products. The more descriptive a word, the closer the resemblance of the word to the efficacy or the nature of the associated product, the more remote will be the presumption as to its exclusivity and the more demanding it will be on the plaintiff to establish distinctiveness. For the owner of an unregistered word mark to claim exclusivity over the mark in the trade, the word must almost be incapable of application to the goods of any other trader. The plaintiffs "Ayur" word does not pass such high test.

50. The plaintiff has pressed its case of passing off primarily on the strength of the alleged goodwill in its unregistered word mark "Ayur" though the relevant prayer in the petition also seeks an order to protect the mark "Ayu" being passed off by the defendant. The averments as to passing off are scanty in paragraph 20 of the petition. Prima facie, "Ayur" does not seem to be distinctive of the plaintiffs products and no overwhelming case of secondary meaning and resultant association has been brought by the plaintiff.

51. There is no case made out by the plaintiff to prevent the defendants use of either "Himani Ayurdhara" or "Ayurcare" in connection with its products on the basis of the plaintiffs rights in the word "Ayur". "Himani Ayucare" is sufficiently different from the "Ayu" mark that the plaintiff asserts. Since it has been found that a case of infringement has been made out by the plaintiff in respect of the defendants use of the "Ayucare" mark on the strength of the registered "Ayu" in favour of the plaintiff, such mark is not considered as part of the passing off case put forth by the plaintiff.

52. The parties have produced the packets in which their rival products are packaged and it does not appear that the defendant has, deliberately or unwittingly, designed any of its products in the getup or packaging to be deceptively similar to or a colourable imitation of the plaintiffs. The considerations are different for brand "Ayucare" manufactured by the defendant as a prima facie case of infringement has been made out.

53. Notwithstanding the tentative finding that the plaintiff has not acquired any exclusivity over the word mark "Ayur", a case of passing off could still have been sustained if it was found that in the depiction of the word "Ayur" by the defendant there was any similarity with the plaintiffs manner of writing "Ayur" for the distinctiveness would than have passed on to the presentation rather than the word itself. But the unexceptional form in which the plaintiff writes its "Ayur" and the defendants dissimilar use of such word preclude an injunction being granted on the other facet of passing off.

54. There will be an order of injunction restraining the defendant from using the mark "Ayucare" simpliciter without using the distinguishing feature of "Himani" in conjunction therewith. The rest of the plaintiffs claim, notwithstanding the observations made herein, has to await the trial. As in the modified order of September 28, 2007, such injunction will be restricted to the manufacture, marketing and sale of the defendants "Ayucare" products in India. The remainder of the subsisting interim order stands vacated.

55. GA No. 2951 of 2007 and GA No. 3976 of 2007 are disposed of without any order as to costs.

56. Urgent certified photostat copies of this judgment, if applied for, be supplied to the parties upon compliance with all requisite formalities.

Later:

The plaintiff seeks a stay of operation of the order to the extent that it vacates the subsisting interim order. Such prayer is refused.