The Madras High Court has held that where the claim is one of passing off, and the registered mark carries a disclaimer denying exclusive rights over the disputed word element, the plaintiff must independently prove the elements of passing off, especially goodwill/ reputation and misrepresentation. Mere similarity between the word elements is not sufficient. If the plaintiff fails to establish protectable goodwill/reputation and fails to show that the defendant’s packaging or conduct amounts to a misrepresentation that the goods have a common origin, the passing off action must fail.
Accordingly, the three issues were decided in favour of Godrej Agrovet (defendant) and against the plaintiffs, and the Court found it unnecessary to adjudicate the remaining issues on merits. The suit was dismissed, and the plaintiffs were directed to pay Rs. 5 lakhs as costs to the defendant towards lawyer’s fees and other expenses.
A Single Judge Bench of Justice Senthilkumar Ramamoorthy noted that the trade mark journal advertisements relating to the plaintiffs’ registrations carried a common disclaimer: “Registration of this Trade Mark shall give no right to the exclusive use of the word ‘Yummies’.” The Bench therefore examined whether, despite that disclaimer, the plaintiffs could still obtain relief in passing off.
The Bench drew a clear distinction between infringement and passing off. It observed that in infringement, once deceptive similarity is established from the perspective of a consumer of average intelligence and imperfect recollection, the inquiry ends; but in passing off, the plaintiffs must establish the classical trinity, namely misrepresentation leading to injury to reputation and goodwill.
After considering the packaging of both sides, the Bench recorded that the plaintiffs had not pleaded that the defendant had adopted an identical or deceptively similar colour scheme or that the packaging as a whole was deceptively similar. On comparison, the Bench was unable to conclude that the defendant had held out, intentionally or otherwise, that its products had a common origin with those of the plaintiffs.
On goodwill and reputation, the Bench observed that the plaintiffs had asserted both in the plaint, but the supporting evidence was weak. The invoices relied on were photocopies; no evidence was adduced regarding turnover from sale of goods bearing the plaintiffs’ mark in the period preceding institution of the suit; and the only advertisement evidence was a photocopy from a trade journal. The Bench held that, even if those exhibits were taken into account, it was unable to find that the plaintiffs had established goodwill or reputation.
The Bench further held that, on the facts, there was no misrepresentation by the defendant. It expressly stated that while mala fide intent to misrepresent is not necessary, misrepresentation as a matter of fact must still be shown, and the plaintiffs had failed to make out any of the elements of the classical trinity.
Briefly, suit was filed by T.T. Krishnamachari & Co. and T.T. Healthcare Ltd. against Godrej Agrovet Limited seeking reliefs for passing off in relation to the defendant’s use of the mark “YUMMIEZ”, which the plaintiffs alleged was deceptively similar to their mark “YUMMIES.” The reliefs claimed included permanent injunction, delivery up for destruction, damages of Rs. 10.05 lakhs and costs. The plaintiffs pleaded that FRYUMS was adopted in the early 1980s for ready-to-fry snacks, and YUMMIES was adopted around 1987 for ready-to-eat snacks and used continuously thereafter. They also stated that the first plaintiff obtained registration of FRYUMS YUMMIES on 11.08.1987 in Class 29, with a disclaimer as to the word “YUMMIES,” but contended that by long, extensive and continuous use, YUMMIES had acquired a secondary meaning.
The plaintiffs further stated that they became aware in February 2007 that the defendant had launched ready-to-cook snacks under the mark “YUMMIEZ.” Their case was that they were prior users and that customers of average intelligence and imperfect recollection would assume that the defendant’s goods originated from them, thereby affecting their goodwill and reputation. The defendant’s case was that it had independently and honestly adopted the label mark comprising the house mark GODREJ and the word YUMMIEZ in or about June 2006, together with a distinct design, layout, get-up and colour scheme for ready-to-cook food products. It also relied on the disclaimer attached to the plaintiffs’ registration and contended that the plaintiffs had no exclusive right over the word “YUMMIES” and no protectable goodwill or reputation sufficient to maintain a passing off action.
Appearances:
Advocates Arun C. Mohan and Swabhhi Tyagi, for the Plaintiffs
Madhan Babu and P. Vishnu Manoharan, for the Defendants
