# T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD. AND ANR

- **Citation:** [2011] 4 S.C.R. 1000
- **Court:** Supreme Court of India
- **Decided:** 2011-03-03
- **Case number:** Civil Appeal Nos.6314-6315 of 2001
- **Source:** https://unisonlegal.in/judgment/supreme-court-of-india/t-v-venugopal-v-ushodaya-enterprises-ltd-and-anr-27513
- **Pages:** 57

## Headnote

A
B
[2011] 4 S.C.R. 1000
T.V. VENUGOPAL
v.
USHODAYA ENTERPRISES LTD. AND ANR.
(Civil Appeal Nos.6314-6315 of 2001)
MARCH 03, 2011
[DALVEER BHANDARI AND K.S. RADHAKRISHNAN,
JJ.]
Intellectual Property - Passing-off in trade mark -
C Infringement of copyright - Appellant is sole proprietor of a
Karnataka based firm carrying on manufacture of incense
sticks (agarbathis), which adopted the trade mark 'Eenadu' and
started selling its product in the State of Andhra Pradesh -
Respondent company, engaged in the business of publishing
D a newspaper in Telugu entitled as 'Eenadu' and other
businesses in the State of Andhra Pradesh, filed a suit for
infringement of copyrights and passing-off trade mark -
Whether the appellant should be permitted to sell his product
with the mark 'Eenadu' in the State of Andhra Pradesh - Held:
E The respondent company's mark 'Eenadu' has acquired
extraordinary reputation and goodwill in the State of Andhra
Pradesh - 'Eenadu' means literally the products or services
provided by the respondent company in the State of Andhra
Pradesh - In this background, the appellant cannot be
F referred or termed as an honest concurrent user of the mark
'Eenadu' - Adoption of the words 'Eenadu' is ex facie
fraudulent and ma/a fide from the very inception - By adopting
the mark 'Eenadu' in the State of Andhra Pradesh, the
appellant clearly wanted to ride on the reputation and goodwill
G of the respondent company - Permitting the appellant to sell
his product with the mark 'Eenadu' in the State of Andhra
Pradesh would definitely create confusion in the minds of the
consumers because the appellant is selling Agarbathies
marked 'Eenadu' designed or calculated to lead purchasers
H
1000
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1001
AND ANR.
to believe that its product Agarbathies are in fact the products A
of the respondent company - No one can be permitted to
encroach upon the reputation and goodwill of other parties -
This approach is in consonance with protecting the proprietary
rights of the respondent company.
B
The appellant is the sole proprietor of a Karnataka
based firm carrying on manufacture of incense sticks
(agarbathis), which adopted the trade mark 'Eenadu' and
started selling its product in the State of Andhra Pradesh.
The word 'Eenadu' means 'this land' in Kannada,
C
Malayalam and Tamil languages and 'today' in Telugu
language. The respondent company, which was engaged
in the business of publishing a newspaper in Telugu
entitled as 'Eenadu' and other businesses in the State of
Andhra Pradesh, filed a suit for infringement of copyrights
0
and passing-off trade mark. The respondent company
contended that the use of the word 'Eenadu' by the
appellant amounted to infringement of their copyright and
passing-off in trade mark. The trial court partially decreed
the suit of the respondent company by injuncting the
E
appellant from using the words 'Eenadu' in the State of
Andhra Pradesh. The appellant was not injuncted from
using the words 'Eenadu' in the entire country other than
F
in the State of Andhra Pradesh. The appellant filed appeal
before the High Court. The respondent company also
filed an appeal praying that the order of injunction to be
made absolute and not be confined to the State of Andhra
Pradesh. A Single Judge of the High Court dismissed the
appeal filed by respondent company while allowing the
appeal filed by the appellant. The respondent company
G
filed Letters Patent Appeal before the Division Bench of
the High Court which was allowed, thereby decreeing the
original suit filed by the respondents in 1999. Hence the
present appeals.
Disposing of the appeals, the C~urt
H
•
1002
SUPREME COURT REPORTS
[2011] 4 S.C.R.
A
HELD: 1.1. The respondent company's mark
'Eenadu' has acquired extra-ordinary reputation and
goodwill in the State of Andhra Pradesh. 'Eenadu'
newspaper and TV are extremely well known and almost
household words in the State of Andhra Pradesh. The
B word 'Eenadu' may be a descriptive word b

## Text

_Characters 0–39,996 of 101,522. This is a partial read: ask again with offset=39996 for what follows._

A
B
[2011] 4 S.C.R. 1000
T.V. VENUGOPAL
v.
USHODAYA ENTERPRISES LTD. AND ANR.
(Civil Appeal Nos.6314-6315 of 2001)
MARCH 03, 2011
[DALVEER BHANDARI AND K.S. RADHAKRISHNAN,
JJ.]
Intellectual Property - Passing-off in trade mark -
C Infringement of copyright - Appellant is sole proprietor of a
Karnataka based firm carrying on manufacture of incense
sticks (agarbathis), which adopted the trade mark 'Eenadu' and
started selling its product in the State of Andhra Pradesh -
Respondent company, engaged in the business of publishing
D a newspaper in Telugu entitled as 'Eenadu' and other
businesses in the State of Andhra Pradesh, filed a suit for
infringement of copyrights and passing-off trade mark -
Whether the appellant should be permitted to sell his product
with the mark 'Eenadu' in the State of Andhra Pradesh - Held:
E The respondent company's mark 'Eenadu' has acquired
extraordinary reputation and goodwill in the State of Andhra
Pradesh - 'Eenadu' means literally the products or services
provided by the respondent company in the State of Andhra
Pradesh - In this background, the appellant cannot be
F referred or termed as an honest concurrent user of the mark
'Eenadu' - Adoption of the words 'Eenadu' is ex facie
fraudulent and ma/a fide from the very inception - By adopting
the mark 'Eenadu' in the State of Andhra Pradesh, the
appellant clearly wanted to ride on the reputation and goodwill
G of the respondent company - Permitting the appellant to sell
his product with the mark 'Eenadu' in the State of Andhra
Pradesh would definitely create confusion in the minds of the
consumers because the appellant is selling Agarbathies
marked 'Eenadu' designed or calculated to lead purchasers
H
1000
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1001
AND ANR.
to believe that its product Agarbathies are in fact the products A
of the respondent company - No one can be permitted to
encroach upon the reputation and goodwill of other parties -
This approach is in consonance with protecting the proprietary
rights of the respondent company.
B
The appellant is the sole proprietor of a Karnataka
based firm carrying on manufacture of incense sticks
(agarbathis), which adopted the trade mark 'Eenadu' and
started selling its product in the State of Andhra Pradesh.
The word 'Eenadu' means 'this land' in Kannada,
C
Malayalam and Tamil languages and 'today' in Telugu
language. The respondent company, which was engaged
in the business of publishing a newspaper in Telugu
entitled as 'Eenadu' and other businesses in the State of
Andhra Pradesh, filed a suit for infringement of copyrights
0
and passing-off trade mark. The respondent company
contended that the use of the word 'Eenadu' by the
appellant amounted to infringement of their copyright and
passing-off in trade mark. The trial court partially decreed
the suit of the respondent company by injuncting the
E
appellant from using the words 'Eenadu' in the State of
Andhra Pradesh. The appellant was not injuncted from
using the words 'Eenadu' in the entire country other than
F
in the State of Andhra Pradesh. The appellant filed appeal
before the High Court. The respondent company also
filed an appeal praying that the order of injunction to be
made absolute and not be confined to the State of Andhra
Pradesh. A Single Judge of the High Court dismissed the
appeal filed by respondent company while allowing the
appeal filed by the appellant. The respondent company
G
filed Letters Patent Appeal before the Division Bench of
the High Court which was allowed, thereby decreeing the
original suit filed by the respondents in 1999. Hence the
present appeals.
Disposing of the appeals, the C~urt
H
•
1002
SUPREME COURT REPORTS
[2011] 4 S.C.R.
A
HELD: 1.1. The respondent company's mark
'Eenadu' has acquired extra-ordinary reputation and
goodwill in the State of Andhra Pradesh. 'Eenadu'
newspaper and TV are extremely well known and almost
household words in the State of Andhra Pradesh. The
B word 'Eenadu' may be a descriptive word but has
acquired a secondary or subsidiary meaning and is fully
identified with the products and services provided by the
respondent company. [Para 100] [1053-G-H; 1054-A]
C
1.2. The appellant is a Karnataka based company
which started manufacturing its product in Bangalore in
the name of 'Ashika' and started selling its product in the
State of Andhra Pradesh in 1995. The appellant started
using the name 'Eenadu' for its Agarbathi and used the
0 same artistic script, font and method of writing the name
which obviously cannot be a co-incidence. The appellant
company after adoption of name 'Eenadu' accounted for
90% of sale of their product Agarbathi. [Para 101] [1054B]
E
3. On consideration of the totality of facts and
circumstances of the case, the following findings and
conclusions are arrived at:
a) The respondent company's mark 'Eenadu' has
F acquired extraordinary reputation and goodwill in the
State of Andhra Pradesh. The respondent company's
products and services are correlated, identified and
associated with the word 'Eenadu' in the entire State of
Andhra Pradesh. 'Eenadu' means literally the products or
G services provided by the respondent company in the
State of Andhra Pradesh. In this background the
appellant cannot be referred or termed as an honest
concurrent user of the mark 'Eenadu';
b) the adoption of the words 'Eenadu' is ex facie
H fraudulent and mala fide from the very inception. By
..
•
T.V. VENUGOPAL v. USHODAYA ENTERPRISES L TD.1003
AND ANR.
adopting the mark 'Eenadu' in the State of Andhra
A
Pradesh, the appellant clearly wanted to ride on the
reputation and goodwill of the respondent company;
c) permitting the appellant to carry on his business
would in fact be putting a seal of approval of the court 8
on the dishonest, illegal and clandestine conduct of the
appellant;
d) permitting the appellant to sell his product with
the mark 'Eenadu' in the State of Andhra Pradesh would
definitely create confusion in the minds of the consumers
C
because the appellant is selling Agarbathies marked
'Eenadu' as to be designed or calculated to lead
purchasers to believe that its product Agarbathies are in
fact the products of the respondent company. In other
words, the appellant wants to ride on the reputation and
D
goodwill of the respondent company. In such a situation,
it is the bounden duty a,nd obligation of the court not
only to protect the goodwill and reputation of the
respondent company but also to protect the interest of
the consumers;
E
e) permitting the appellant to sell its product in the
State of Andhra Pradesh would amount to encouraging
the appellant to practise fraud on the consumers;
f) permitting the appellant to carry on his business
in the name of 'Eenadu' in the State of Andhra Pradesh
would lead to eroding extra-ordinary reputation and
goodwill acquired by the respondent company over a
passage of time;
g) the appellant's deliberate misrepresentation has
the potentiality of creating serious confusion and
deception for the public at large and the consumers have
to be saved from such fraudulent and deceitful conduct
of the appellant;
F
G
H
..
A
8
1004
SUPREME COURT REPORTS
[2011] 4 S.C.R.
h) permitting the appellant to sell his product with
the mark 'Eenadu' would be encroaching on the
reputation and goodwill of the respondent company and
this would constitute invasion of proprietary rights vested
with the respondent company and
i) honesty and fair play ought to be the basis of the
policies in the world of trade and business. [Para 102]
[1054-C-H; 1055-A-H; 1056-A]
1.4. The law is consistent that no one can be
C permitted to encroach upon the reputation and goodwill
of other parties. This approach is in consonance with
protecting proprietary rights of the respondent company.
[Para 103] (1056-B]
D
Daimler Benz Aktiegesellschaft and another v. Hybo
Hindustan AIR 1994 Delhi 239; Ruston & Hornsby Ltd. v. The
Zamindara Engineering Co. 1969 (2) SCC 727; Laxmikant
V. Patel v. Chetanbhai Shah and Another 2002 (3) SCC 65;
Satyam lnfoway Ltd. v. Sifynet Solutions (P) Limited 2004 (6)
E SCC 145; Ramdev Food Products (P) Limited v. Arvindbhai
Rambhai Patel and Others 2006 (8) SCC 726; Midas
Hygiene Industries (P) Ltd. and another v. Sudhir Bhatia and
others (2004) 3 SCC 90; Madhubhan Holiday Inn v. Holiday
Inn Inc. 100 (2002) DLT 306 (DB); Mahendra & Mahendra
F Paper Mills Limited v. Mahindra & Mahindra Limited (2002)
2 SCC 147; Bata India Limited v. Pyare Lal & Company,
Meerut City & Ors. AIR 1985 All 242; N.R. Dongre and others
v. Whirlpool Corporation and another (1996) 5 SCC 714;
Godfrey Philips India Limited v. Gimar Food & Beverages (P)
G Limited (2004) 5 SCC 257; Info Edge (India) Private Limited
and another v. Shailesh Gupta and another 98 (2002) DLT
499; Kamal Trading Co., Bombay and Others v. Gillette UK.
Limited [1988] IPLR 135; Honda Motors Company Limited
v. Charanjit Singh & Others (101 (2002) DLT 359); Mis.
H Bengal Waterproof Limited Vs. Mis. Bombay Waterproof
•
T.V. VENUGOPAL v. USHODAYA ENTERPRISES
1005
LTD. AND ANR.
Manufacturing Company and Another (1997) 1 SCC 99;
A
Heinz Italia and another v. Dabur India Limited (2007) 6 SCC
1; Ford Motor Company of Canada Limited and another v.
Ford Service Centre 2009 (39) PTC 149; Prakash Roadline
Limited v. Prakash Parcel Service (P) Ltd. 48 (1992) Delhi
Law Times 390 - referred to.
B
Taylor Mary Campbell v. Secretary of Health and Human
Services 69 Fed. Cl. 775 (2006) [US Court of Federal
Claims]; Lamilem Badasa v. Michael B. Mukasey 540 F.3d
909 [US Court of Appeals]; Reddaway & Co. and Another c
v. Banham & Co. and Another 1895-99 All ER 133; Reckitt
& Colman Products Ltd. v. Borden Inc. and others 1990 (1)
ALL ER 873; Harrods Limited v. R. Harrod Limited (1924) ,
RPC 74; Harrods Limited v. Harrodian School Limited (1996)
RPC 697; Office Cleaning Services Limited v. Westminster
D
Office Cleaning Association 1944 (2) All ER 269; Taittinger
and others v. Allbev Limitd and others (1994) 4 All ER 75 -
referred to.
Case Law Reference:
E
AIR 1994 Delhi 239
referred to
Para 29, 76
69 Fed. Cl. 775 (2006)
referred to
Para 37
540 F.3d 909
referred to
Para 37
1895-99 All ER 133
referred to
Para 61
F
1990 (1) ALL ER 873
referred to
Para 63
1969 (2) sec 121
referred to
Para 64
2002 (3) sec 65
· referred to
Para 65
G
2004 (6) sec 145
referred to
Para 66
2006 (8) sec 726
referred to
Para 67, 95
(1924) RPC 74
referred to
Para 68
H
•
1006
SUPREME COURT REPORTS
[2011] 4 S.C.R.
A
(1996) RPC 697
referred to
Para 69, 73, 77
(2004) 3 sec 90
referred to
Para 70
(2002) DLT 306 (DB
referred to
Para 71
B
(2002) 2 sec 147
referred to
Para 74
AIR 1985 All 242
referred to
Para75
(1996) 5 sec 714
referred to
Para 79
(2004) 5 sec 257
referred to
Para 80
c
98 (2002) DLT 499
referred to
Para 81
1944 (2) All ER 269
referred to
Para 82
(1994) 4 All ER 75
referred to
Para 87
D
1988 IPLR 135
referred to
Para 89
(2002) DLT 359
referred to
Para 90
(1997) 1 sec 99
referred to
Para 93
E
(2001) 6 sec 1
referred to
Para 94
2009 (39) PTC 149
referred to
Para 96
(1992) DL T 390
referred to
Para 97
F
CIVIL APPELLATE JURISDICTION : Civil Appeal No.
6314-6315 of 2001.
From the Judgment & Order dated 15.06.2001 of the High
Court of Andhra Pradesh at Hyderabad in LPA Nos. 12 & 13
G of 2001.
Pratibha M. Singh, Kapil Wadhwa, Abhinav Mukherjee for
the Appellant.
C.A. Sundaram, Neelima Tripathi, G.V.S. Jagannadha
H Rao, Rohini Musa, Abhishek Gupta, K.V. Mohan, Zafar lnyat,
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD:1007
AND ANR.
Md. Niyazuddin, Anandh Kannan for the Respondents.
A
The Judgment of the Court was delviered by
DALVEER BHANDARI, J. 1. These appeals are directed
against the judgment delivered by a Division Bench of High
8
Court of Andhra Pradesh in Letter Patent Appeal Nos. 12 and
13 of 2001 on 15.06.2001.
2. Brief facts which have been given by the appellant are
recapitulated as under.
3. The appellant is the sole proprietor of a firm carrying
on business inter alia as manufacturers of and dea.lers in
incense sticks (agarbathis) in the name and style of Ashika
Incense Incorporated at Bangalore.
c
4. The appellant started his business in the year 1988 and
D
adopted the mark 'Ashika's Eenadu'. According to the
appellant the word 'Eenadu' in Kannada language means 'this
land'. In Malayalam and Tamil language it conveys the same
meaning. In Telugu language it means 'today'.
5. In consonance with the above meaning the appellant
devised an artistic label comprising a rectangular carton in
bottle green background with sky-blue border and in the centre,
in an oval tricolour, the word 'Eenadu' is written.
6. According to the appellant, in the year 1993 he honestly
and bona fidely adopted the trade mark 'Eenadu' meaning 'this
land' in Kannada. In the said label the other expressions used
E
F
are 'Ashika's original' and the firm's logo printed in red against
yellow background. The other panel of the carton contains the
G
same description in Telugu besides the name and address of
"·
the appellant. The panel on one side of the carton mentions the
1
name, address, contents and another side contains 'Eenadu'
in Devnagari, Tamil and Malayalam.
H
1008
SUPREME COURT REPORTS
[2011] 4 S.C.R.
A
7. The appellant applied for registration of trade mark on
or about 10.02.1994 of the said label bearing application No.
619177. The appellant made an application to the Registrar of
the Trade Marks for a certificate under proviso to Section 45(1)
of the Copyright Act, 1957. The Registrar issued a certificate
B on 7 .3.1996. Thereafter, an application for registration for
copyright was made by the appellant on 14.3.1997.
8. The appellant's product, incense sticks (agarbathies)
were well received in the market and according to him, when
C he filed the appeal before this Court, his annual business was
about rupees eleven crores per annum.
9. The respondent company, who was engaged in the
business of publishing a newspaper in Telugu entitled as
'Eenadu', served a cease and desist notice on the appellant
D which was replied by the appellant on 8.3.1995. The
respondent company in the year 1999 filed a suit for
infringement of copyrights and passing-off trade mark in the
Court of Second Additional Chief Judge, City Civil Court,
Hyderabad. The respondent company therein claimed that they
E have been in the business of publishing a newspaper,
broadcasting, financing and developing a film city.
10. It was contended by the respondent company that the
use of the word 'Eenadu' by the appellant amounted to
f
infringement of their copyright and passing-off in trade mark.
G
According to the respondent company, the business of the
appellant and the respondent company was different and there
is no commonality or casual connection between the two
businesses.
11. The appellant states that the word 'Eenadu' is a well
known and well understood word appearing in all the South
Indian languages. It means 'today' in Telugu. In Tamil,
Malayalam and Kannada it means 'this land'. Therefore, no
H absolute monopoly could either be claimed or vest in any single
•
T.V. VENUGOPAL v. USHODAYA ENTERPRISES L TD.1009
AND ANR. [DALVEER BHANDARI, J.]
proprietor in respect of the entire spectrum of goods and/or
A
services and there have been other traders and manufacturers
who have been using the word 'Eenadu' to distinguish their
merchandise from similar merchandise of others.
12. The appellant also asserted that in Hyderabad one coB
operativ~ bank exists in the name of 'Eenadu Cooperative Bank
Ltd.' and their services are advertised as 'Eenadu Deposits',
a shop also exists in Vijayawada by the name 'Eenadu Men's
Wear' and a film titled 'Eenadu' in Malayalam and Telugu was
produced some time over a decade back. The appellant c
contended that detergent powder, playing cards, hair oil, coffee
powder, tea powder, papad etc. are being sold with the mark
'Eenadu'.
13. The Second Additional Chief Judge, City Civil Court,
Hyderabad on 24.11.1999 had granted an ex-parte ad interim
D
injunction re.straining the appellant from using the expression
'Eenadu' and the same was confirmed on 27.12.1999.
Thereafter, the appellant, aggrieved by the said order, moved
the High Court of Andhra Pradesh at Hyderabad. The High
Court suspended the interim injunction. The High Court
E
permitted the appellant to dispose off their finished products
to the tune of Rs.1 crore and also permitted the appellant to
produce goods that were in the process of manufacture to the
tune of Rs. 78 lakhs.
14. Meanwhile, the trial court on 24.7.2000 partially decreed
the suit of the respondent company. The appellant was not
injuncted from using the words 'Eenadu' in the entire country
other than in the State of Andhra Pradesh.
15. The appellant, aggrieved by the order of the City Civil
Judge filed an appeal before the High Court of Andhra Pradesh.
The respondent company also filed an appeal against the order
F
G
of City Civil Judge praying that the order of injunction to be
made absolute and not be confined to the State of Andhra
H
1010
SUPREME COURT REPORTS
[2011] 4 S.C.R.
A Pradesh. The learned Single Judge disposed of both the
appeals by a common judgment/order dated 29.12.2000. The
appeal filed by the respondent company was dismissed and
the appeal filed by the appellant was allowed.
B
16. Aggrieved by the said order of the learned Single
c
Judge, the respondent company filed Letters Patent Appeals
before the Division Bench of the High Court. The High Court
vide impugned order allowed its appeals, decreeing the O.S.
No.555 of 1999.
17. The appellant also aggrieved by the impugned
judgment filed appeals and submitted that the courts below
were not justified in granting relief which was not specifically
prayed for in the plaint. The appellant further submitted that the
High Court erred in holding that the copyrights of the
D respondent company were infringed in the absence of a prayer
for infringement of copyrights. According to the appellant the
Division Bench of the High Court erred in holding that they were
passing-off the copyrights when the Copyright Act, 1957 does
not provide for such a remedy.
E
18. The appellant also submitted that the courts below
have not properly appreciated the distinction between the
existence of a copyright and its infringement.
F
19. According to the appellants, the respondent company
was aware of the appellant's business since at least 27.2.1995
and there has been a gross delay in filing of the suit and
because of inordinate delay in approaching the court, the
respondent company is not entitled to any relief.
G
H
20. The appellant further submitted that whether an action
for passing-off could be maintained and injunction granted when
a mark is used consisting of the word 'Eenadu', which is a
common word. The word 'Eenadu' literally means 'Today' in
Telugu and 'this land/our land' in Kannada, Tamil and
•
•
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1011
AND ANR. [DALVEER BHANDARI, J.]
Malayalam.
A
21. The appellant contended that the businesses of the
appellant and the respondent company are entirely different and
there is no question of passing-off of the goods of the appellant
as that of the respondent company.
B
22. The respondent company denied all the averments of
the appellant and submitted the following propositions.
1.
The essence of an action of passing-off is an attack
on or dilution or benefitting from the goodwill and c
reputation of another person.
2.
If such goodwill or reputation arises out of the use
of a name in respect of a particular product and the
goodwill and reputation is restricted only to such D
product and unknown outside such product then the
use of such name by another person with respect
to a totally different product would not affect the
goodwill and reputation so as to constitute an action
of passing-off
E
3.
If, however, the goodwill and reputation is sufficiently
wide and the name is associated with the source
in a more general way rather than restricted only to
a given product then the use of such name by
F
another trader for even a totally different product
could amount to a passing-off.
4.
The exception to the three above propositions
would be if such name is a generic name for the
product being manufactured by the rival trader in G
which case it would never constitute an action of
passing-off.
5.
Again, if the said name is descriptive of the product
H
A
B
1012
SUPREME COURT REPORTS
[2011] 4 S.C.R.
of the rival trader, it would then amount to passingoff only if it is established that it has become a
household name of such a nature as to have
acquired a strong secondary meaning and it being
associated substantially with the first trader, in
which case alone it would amount to a passing-off.
The standard of proof of such a case would be
higher than the standard of proof of first three
propositions.
C
23. Mr. Mukul Rohtagi, learned senior counsel and Mrs.
Prathiba Singh, learned counsel arguing on behalf of the
appellant submitted that in the instant case the suit was in fact
governed by Trade & Merchandise Marks Act, 1958 and not
by the Trade Marks Act, 1999 which came into force w.e.f.
0
15.9.2003. It was ·submitted that this case is covered under
section 159(4) of the 1999 Act, which specifically provides that
any legal proceedings pending in any court at the
commencement of this Act would be governed by the old Act.
Section 159(4) of the 1999 Act is reproduced as under:-
E
"159. (4) Subject to the provisions of section 100 and
notwithstanding anything contained in any other
provision of this Act, any legal proceeding pending
in any Court at the commencement of this Act may
be continued in that court as if this Act had not
F
been passed."
Thus, none of the concepts of well-known marks, dilution etc.
as statutorily applicable under the 1999 Act, have any
application in this case. It is submitted that the present case,
G as decided by all the courts below, is a case of passing off and
not of dilution.
24. In reply to the submission of the respondent company,
learned counsel for the appellant submitted that the passing off
test is the test of likelihood of confusion. Such confusion should
H
•
•
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1013
AND ANR. [DALVEER BHANDARI, J.]
be either confusion arising due to get up of products, confusion
A
as to.sponsorship/affiliation of source or confusion arising out
of the use of identical/deceptively similar trademarks.
25. Learned counsel for the appellant also submitted that
dilution is a completely different concept, namely, if there is
B
confusion, there is no dilution. The concept of dilution steps in
when in fact the consumer is not being confused but the
plaintiff's mark is being diluted in some form or the other.
McCarthy, a well-known author on Trademarks and Unfair
Competition clearly states the same in the said publication. c
Reliance is being placed at para 24.70 wherein it has been
observed that "the dilution doctrine is concerned with granting
protection to trademarks beyond that provided by the classic
'likelihood of confusion' tests."
26. According to the appellant, the principle of dilution
D
requires that the consumer in fact should not be confused but
a well-known mark, in the absence of confusion, is being
diluted. In the United States of America, dilution is protected
by a specific statute called the Federal Anti Dilution Act, 1996.
The discussion on dilution in McCarthy establishes the
E
following:-
a)
The traditional likelihood of confusion test applies
to passing off.
b)
If a mark is a well-known mark, then the argument
of dilution is to be considered in the absence of
confusion.
F
c)
Dilution is a doctrine which should be strictly
applied.
G
d)
e)
Standard of distinctiveness required to protect a
mark from dilution is very high.
Not every trade mark can be protected against
H
A
B
1014 SUPREME COURT REPORTS
[2011) 4 S.C.R.
dilution.
If a mark enjoys a regional reputation it does not
deserve protection under the law of dilution.
g)
A reputation on a national scale, especially while
testing the mark for unrelated goods, is required to
be protected under dilution.
27. Learned counsel for the appellant submitted that under
the traditional law of passing off or under the law of dilution, the
C only marks which have been protected across product category
are marks which can easily be termed even in the common
parlance as well-known marks. Such marks such as Bata,
Volvo, Benz, Mahindra & Mahindra and Tata etc.
D
28. It was submitted that the case pleaded by the
respondent company (plaintiff) is one of confusion and passing
off and not of dilution. The standard for establishing dilution are
completely different. There is neither a pleading in the present
case alleging dilution, nor any evidence in support of dilution.
E The standards for recognizing dilution have not been confirmed
by any court of law in India and while deciding the present case
in the courts below the threshold of dilution was never applied.
29. In India, the law on dilution has developed through case
law going back to the Benz's case decided by the Delhi High
F Court in Daimler Benz Aktiegesellschaft and another v. Hybo
Hindustan AIR 1994 DELHI 239. However, 'Eenadu' cannot
claim the distinctiveness or the reputation which is enjoyed by
a mark like Benz or Harrods. 'Eenadu' is a very ordinary word
commonly used in Telugu language and to vest a monopoly in
G favour of the respondent company (plaintiff) for such a common
word on the ground of dilution would result in conferring an
undue monopoly to a generic/descriptive word. There are
several marks which are used in the ordinary language for
different types of products, such as :-
H
•
•
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1015
AND ANR. [DALVEER BHANDARI, J.]
1.
Time/Times
Time Magazi'ne, Time Education, Times
London, Times of India, Navbharat Times,
Hindustan Times, Times Now
.
2.
Today
India Today, Punjab Today, Today's Tea,
Today's Contraceptive
3.
Marvel
Marvel Comics, Marvel Detergent
4.
Sun, Surya,
Oil, Lights & Bulbs, Tobacco
Su raj
5.
Metro
Metro Shoes, Delhi Metro, Metro Walk
Malls
6.
Maruti
Oil, Cars
7.
Taj
Hotels (Taj Hotels), Tea (Wah! Taj)
8.
Citi
Citi Bank, City Mall
9.
Mustang
Motel, Cars, Trailers
30. The learned counsel for the appellant submitted that
'Eenadu' is a common word used in Telugu language. This has
been fully established by the evidence on record.
A
B
c
D
31. He referred to the deposition of Jagannadharao, PW1,
E
Law Officer of the plaintiff, who has stated that the literal
meaning of the word 'Eenadu' is 'Today'.
32. According to the deposition off>W2, N. Swami, Artist:
the meaning of the word 'Eenadu' is 'Today'.
F
33. Learned counsel for the appellant referred to
deposition of PW5, R. Kumaraswamy, Advocate who has
stated that literal meaning of the word 'Eenadu' is 'Today'.
34. The learned counsel referred to the deposition of PW6,
G
T.V. Venugopal, the appellant herein. He has stated that the
word 'Eenadu' was specifically given for the purpose of 'daily'
.· prayer.
35. The learned counsel for the appellant submitted that
H
1016
SUPREME COURT REPORTS
[2011] 4 S.C.R.
A the word 'Eenadu' literally means "Today" or "This Day" and
hence is not an invented word but is a generic/descriptive word
used in common parlance. This is further proved by the fact that
the word 'Eenadu' has been used by several parties for various
products which include :-
B
c
D
E
F
G
H
'Eenadu' Turmeric powder - even the script is the
same
'Eenadu' Cooperative Bank
'Eenadu' Match Sticks - even the script is the same
'Eenadu' Playing Cards
'Eenadu' Ayurvedic Bath Soaps
'Eenadu' Dresses
'Eenadu' Chilly Powder - even the script is the
same
'Eenadu' Washing Powder
'Eenadu' Coffee - even the script is the same
'Eenadu' Telugu Feature Film
'Eenadu' Tobacco - same script
'Eenadu' Hotel
'Eenadu' Marble Estate
'Eenadu' Feature Film (The said film by UTV
Production uses the word 'Eenadu' in the same
script as used by the respondent - (This particular
film has, in fact, been featured for a review in the
respondent's own newspaper dated 15.8.09 &
27.8.09 and copies of the same are attached. The
music launch of this film was also featured in the
•
•
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD:1017
AND ANR. [DALVEER BHANDARI, J.]
newspaper of the respondents dt. 14.9.09. This film
A
has at least 2 songs with the word 'Eenadu'. One
of the songs in the film called "Eenadu
Eesamaram" which means 'This Day, This War".
A famous Kannada song - Eenadu Kannada,
8
Eeneeru Kannada (This day is Kannada, This
water is Kannada).
36. The appellant submitted that it is clear that 'Eenadu'
is a term which is used in the ordinary Telugu language and in
Kannada and the same is acknowledged by the respondent
C
company itself as is evident from the wide publicity given to the
film in the respondent company's newspaper.
37. The appellant further submitted that the evidence relied
upon by the respondent company in order to allege that
D
'Eenadu' is a reputed and distinctive mark, is a compilation of
documents handed over before this court during the course of
arguments on 23.3.10. In order to show that 'Eenadu' is a
household name, an extract from Wikipedia printed on 13.4.09
was submitted by the respondent company before this court.
E
In fact, all the other internet print-outs annexed by the
respondent company are based on Wikipedia itself. It is the
submission of the appellant that it is now an established
position, internationally in law that Wikipedia does not have any
evidentiary value in the court proceedings. The same has been
F
held by the US Court of Federal Claims in Taylor Mary
Campbell v. Secretary of Health and Human Services 69 Fed.
Cl. 775 (2006) and by the US Court of Appeals in Lamilem
Badasa v. Michael B. Mukasey 540 F.3d 909. As against the
Wikipedia evidence, the actual evidence on record reveals the
following:-
G
a)
'Eenadu' has a specific meaning in Telugu
language and also has a meaning in Kannada
language and possibly even in Malayalam;
H
A
B
•
1018
SUPREME COURT REPORTS
[2011] 4 S.C.R.
b)
'Eenadu' has been used by several parties in the
same script without any objection whatsoever from
the respondent company (barring 2 ex-parte
injunctions).
c)
'Eenadu' means "Today" or "This Day".
d)
The respondent company itself has acquiesced to
3rd party usage of the mark (including 'Eenadu'
feature film by UTV).
c
e)
The respondent company's submission that this
court ought to ignore the concrete documentary
evidence and testimony and instead rely upon
extracts from the Wikipedia to prove that 'Eenadu'
is a household name, is not liable to be entertained.
D
38. Thus, 'Eenadu' does not enjoy the distinctiveness which
the respondent company claim and in any event such
distinctiveness does not span across all classes of goods and
services.
E
39. The respondent company has argued before this court
that the descriptive nature of the mark has to be determined
with respect to the appellant's goods. This approach according
to the appellant is completely erroneous. While determining the
nature of the mark - for the purpose of registration or for the
F purpose of passing-off/infringement, the first inquiry which the
court ought to carry out is to determine whether the applicant's/
plaintiffs mark is invented, arbitrary/suggestive, descriptive or
generic. The nature of the mark is always determined with
respect to the plaintiffs/applicant's goods. For example, if a
G person applies for a trademark called "Extra Strong", the
Registrar of trade mark has to examine whether the mark is
descriptive or laudatory for the goods for which it is applied,
i.e., the applicant's goods. The inquiry does not depend on the
person opposing the use of the said mark. Thus, to hold that
H
•
T.V. VENUGOPAL v. USHODAYA ENTERPRISES 1019
LTD. AND ANR. [DALVEER BHANDARI, J.]
the nature of the mark has to be determined by the nature of A
the appellant's goods is stating the proposition in the reverse.
40. In the present case, the plaintiff/respondent company
was conscious that 'Eenadu' is a descriptive mark and it is for
this reason that in the plaint, the plaintiff (respondent) company
8
has pleaded a secondary meaning with respect to their mark
'Eenadu'. If the plaintiffs case is based on 'Eenadu' being a
distinctive mark, a suggestive mark and a well known mark,
then there is no question of pleading secondary meaning to its
mark. It is only with respect to descriptive marks that secondary
meaning needs to be pleaded and considered by this court.
C
41. The argument of the respondent company is that
'Eenadu' is not a generic or descriptive mark but a suggestive
mark. The difference between categorization as generic,
descriptive or suggestive is a follows:-
o
*
A generic mark can never be a trademark
*
A descriptive mark can become a trademark if it
acquires secondary meaning
E
*
A suggestive mark is inherently distinctive
42. The line between suggestive marks and descriptive
marks is very thin. Various commentaries including McCarthy
have laid down the imagination test to determine as to whether
a mark is descriptive or suggestive. When this test is applied
F
to the mark 'Eenadu' for a newspaper, it is clear that the same
is descriptive in nature inasmuch as it means 'Today', i.e. news
for today. It does not require any imagination at all. Thus in the
imagination test, if the mark describes a characteristic of the
G
product - in the case of 'Eenadu' the newspaper, it refers to
the characteristic of the newspaper, i.e., today's news. 'Eenadu'
would therefore, be an expression which immediately describes
a newspaper. In fact with respect to its Agarbathies, 'Eenadu'
would be a completely arbitrary term. However, With respect to
H
1020
SUPREME COURT REPORTS
[2011) 4 S.C.R.
A newspapers, this is a descriptive term.
43. The appellant submitted that the entire object of
including the 4th Schedule in the Trademark Rules is that marks
are to be registered for the goods and services for the purpose
for which they are used. Non-use of a mark entails rectification
B under section 46 of the 1958 Act. Thus, the entire object of
trademarks is to confer monopoly of a particular individual or
entity with respect to a mark for a particular category of goods
or category of services. It is only in exceptional cases that a
mark is protected across all product categories. If that was not
C the position, then every trademark owner whose mark enjoys
a reputation in whatever limited field and for specific goods/
services, would be able to claim monopoly for the mark with
respect to all 42 classes of goods and services. This could
never have been the intention of the Legislature. Even while
D establishing the criteria for the marks which are well-known, the
legislature has thought it fit to deal with the reputation of such
well-known marks by taking into consideration factors like
section of the public, relevant geographical area etc. Thus,
every trade mark is not entitled to protection across all
E categories as every trade mark does not automatically become
a "well-known mark". If this was not the case, then there would
come a time when most words would get monopolized across
products and services which would not conform to the intention
behind the Law of Trade Marks.
F
44. Every mark with a reputation cannot be determined as
a well-known mark as reputation by itself does not escalate the
mark into the position of a well-known mark. The reputation of
a mark can be restricted to a particular territory, to a particular
category of goods or services, to a particular category of
G population, to a particular linguistic section of public etc.
45. The appellant submitted that in most of the cases
where absolute protection has been granted, extending it
beyond the goods and services in which the plaintiff deals with,
H the mark or name has been an extremely distinctive mark. They
•
T.V. VENUGOPAL v. USHODAYA ENTERPRISES LTD.1021
AND ANR. [DALVEER BHANDARI, J.]
have either invented the mark or marks which are derived from
A
surnames or marks are used across categories of products.
The defendant's products may be confused from the other
products originating from the plaintiff, but the plaintiff has to be
dealing with more than one products or services with respect
to the said mark/name.
B
46. In the present case, the evidence on record has
established that the plaintiff/respondent company has only dealt
with mark 'Eenadu' for newspapers. The television channel is
known as ETV where the word 'Eenadu' is not used for the
same. The evidence itself establishes the same. Further it is
C
pertinent to note that:
*
*
*
*
*
*
There is not a single document showing that the
respondent company is referred to as 'Eenadu'
Margdarshi's goods;
D
Priya is also· a mark of pickles which is
manufactured by the respondent company;
'Eenadu' pickles (if any) are not available in the local
market;
E
ETV is the shortcut name for the 'Eenadu'
Television;
The respondent company does not manufacture
F
incense sticks;
That 'Eenadu' has been used to convey the literal
meaning as "Today".
47. The appellant submitted that in the background of this
G
evidence emanating from the plaintiff's main witness, it is
evident that 'Eenadu' is not a distinctive mark. It is in fact a
descriptive mark. At best, a secondary meaning may accrue
in its favour with respect to only newspapers and nothing more.
Descriptive words which have been used only for one category
H
1022
SUPREME COURT REPORTS
[2011] 4 S.C.R.
A of goods cannot claim across the board protection. 'Eenadu'
is not like Volvo or Kirloskar or Harrods or Benz.
48. 'Eenadu' would fall in the category of marks like Shell,
Safeguard, Flexgrip, Imperial, Skyline and Financial Times,
8 Heat Piller, One Day Drycleaners, lnstea, Kesh Nikhar, Whipp
Toppings. All these words have not been granted protection
across the board.
49. The respondent company has argued before this court
that the appellant's adoption is dishonest in view of the similar
C scripts being used by the defendant. The script being used by
the appellant is a standard block script in the Telugu language.
The perusal of all the third party use of the mark 'Eenadu' would
reveal that almost every party uses the same script. Thus, there
is no dishonesty in adoption of the same as the script is
D commonly used in Telugu language. Even the feature film which
has been released in 2009 has used the same script. There is
no dishonesty in the adoption of the mark 'Eenadu' or the script
'Eenadu'. The appellant went through the process of applying
for a Search as prescribed under the Copyright Act. The
E appellant obtained a No-Objection in accordance with Section
45 of the Copyright Act and Rule 24(3) of the Trade Mark Rules,
1959.
50. The mark 'Eenadu' meaning DAILY or TODAY, the
appellant genuinely adopted the same to signify Daily use of
F Agarbathi, which is in fact used on a daily basis by persons
performing puja. Thus, the appellant does have a valid and
acceptable explanation for the adoption. It is submitted that for
the appellant's goods, it is an arbitrary mark.
G
51. The appellant submitted that in order to establish the
H
appellant's bona tides, the appellant Is ready and willing to
change the script and to prefix the word "Ashika" in order to
distinguish itself from the respondent company and to ensure
that there is no confusion as to source.
•
•
H
1024
SUPREME COURT REPORTS
[2011] 4 S.C.R.
A chance of any confusion.
54. Mr. R.A. Sundaram, learned Senior Advocate argued
on behalf of the respondent company. He submitted that
'Eenadu' is not a common Telugu word meaning "Today" and
is not a common word. He submitted that 'Eenadu' has
B acquired secondary meaning and referred to and relied on the
trial court findings in that respect. He submitted that the
appellant failed to note that 'Eenadu' Group is inter alia a
publisher of a newspaper which is the second largest regional
daily circulating in India and is the largest in Andhra Pradesh.
c
55.