G.S. Patel JUDGMENT
G.S. Patel, J.
1. This order will dispose of the Plaintiff's application for infringement and passing off. The Plaintiff claims that the Defendants' product, a boiled confectionary sweet, is sold under a mark that so closely resembles the mark used by the Plaintiff for its ice cream that the Plaintiff is entitled to an injunction on both causes of action, i.e., trademark infringement and passing off.
2. I disagree. My reasons follow.
3. To begin with, there is a very great deal of controversy about whether the Plaintiff does or does not have any entitlement to the mark in question. I have, however, for the purposes of this Notice of Motion, made it clear that I am not addressing this issue. It will be left open to the trial of the Suit. I will proceed further on the basis that the Plaintiff is indeed the proprietor of its mark at page 29 of the Plaint.
4. This is the mark "LONDON DAIRY", depicted in a stylised fashion. The two words are used separately. They are depicted on a device of a banner or ribbon. The colour scheme is unique. It uses a dark or navy blue for the distinctive font against a white background. The banner or ribbon has a gold border. Above the word "LONDON" is a stylised graphic or what appears to be the London Bridge.
5. It is not in dispute that this mark is used by the Plaintiff in respect of, and only of, ice-cream. This is a matter of some consequence, since it is the case of Mr. Tulzapurkar for the Defendants that the Plaintiff has not ever used this mark for any other product, and has admitted that it uses this mark only for ice-cream. The Defendants' mark is shown at Exhibit "P1" at page 225. This is the mark "LONDONDERRY". It is used as a single word. The colour scheme is entirely different. The Defendants' packet is a bright red. The letters are in white and in a different font. There is a pictograph of what appears to be a splendid pastoral scene with well-fed farm animals roaming hither and yon and a winsome milkmaid in a flowing dress and an apron. This pictorial is set in a half oval device. There is a sweeping line over it with some text. On one face of the wrapper though there is a dispute about it whether this is the front or the rear face; I believe it is the former is the Defendants' house mark "Parle".
6. Mr. Bhagat for the Plaintiff submits that these points of distinction are all irrelevant. For, he submits, there is absolutely no phonetic distinction between the two marks. They cannot possibly be pronounced differently. The Plaintiff has a registration in Class 30 which covers the goods, i.e., boiled confectionary sweets, for which the Defendants are using their mark.
7. The facts are not many. The Plaintiff has been in business since 1975 or thereabouts. It is a Dubai-based company. We are concerned here with a particular range of products, i.e., various flavours of ice-cream. According to the Plaintiff it is the registrant of the mark "LONDON DAIRY", the word per se since 2001. The word "LONDON" was specifically disclaimed even at the time. In 2007, the Plaintiff obtained registration for the label mark. There is another registration of 2005 for "LONDON DAIRY CAFE" in Class 42 (now Class 43). The word mark and the label mark are both registered in Class 30. In 2011 the Defendants applied for registration for the mark "LONDONDERRY". This is still pending registration. According to the Defendants, they began using the mark in 2011 and have used it continuously since.
8. The Plaintiff claims to be part of a group of companies that between them cover a wide range of products. It says its predecessor built a strong market share in various brands in various countries across the world. Annexed to the plaint are statements of global sales data of 'London Dairy' products........