Jayshree Vasan Vs Vimla Shah

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921-NMSL644-16.DOC

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ATUL

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IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO. 644 OF 2016

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IN

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SUIT NO. 145 OF 2016

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…Plaintiff

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Jayshree Vasan…Plaintiff
Versus
Vimla Shah…Defendant

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Mr. Rashmin Khandekar, with Mrs. Bhagwati Trivedi, & Ms. Sana
Khan, i/b Bhagwati & Co., for the Plaintiff.
Ms. Kalpita Ghosh, i/b Intralegal, for the Defendant.

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CORAM:G.S. PATEL, J
DATED:19th October 2016

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PC:-

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1.This order will dispose of the Plaintiff’s Notice of Motion for
injunction in a passing off action. The Plaintiff’s mark is Violett.
She claims that the Defendant is passing off her mark by using a
rival mark Violet.

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2.I will state straight away that I do not believe that there is any
merit at all in the submission made by Ms. Ghosh for the Defendant
that the two marks are visually, phonetically and structurally
sufficiently distinct from each other. I do not think that this is at all
true. The pronunciation of the two words is the same and the fact

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19th October 2016

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that the Defendant uses a stylized label with a flower device over the
letter “I” makes very little difference. Both marks are used in
relation to ladies’ garments. The Plaintiff says that she uses her
mark Violett for fashion wear, and this, the Defendant says is
another point of distinction, for the Defendant uses her mark only
for what is described as ladies’ intimate wear. Mr. Khandekar for the
Plaintiff says that this makes no difference at all; for, as according to
him, it is the Defendant’s own case on Affidavit that there is existing
confusion between the two marks. Mr. Khandekar submits that this
confusion speaks to the essence of an action in passing off.

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3.The only question, therefore, according to him, is which of
these two marks is prior in point of time, that is to say, which of the
two marks shows prior user. Both marks are unregistered. Both
parties have sought registration. The Plaintiff’s application is
opposed by the Defendant. Both applications are pending.

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4.Mr. Khandekar points out that there was a Partnership Deed
dated 20th June 2007 between the Plaintiff and one Mr. Vishwanath
Shetty.1 In this, the two parties agreed to carry on the business in
partnership in the name and style of M/s. V.J. Inc. They agreed to
do so using the trade mark Violett. The business proposed was to
deal in garments and clothing accessories. It is the Plaintiff’s case
that it was she who conceived and adopted this mark in relation to
this business.

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1. Plaint, Exhibit “A”, pp. 20–24.

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5.Mr. Khandekar relies first on a set of four invoices,2 all of
August 2007 in the name of the partnership firm. These do not,
however, refer to the mark at all. From October 2007, however, the
Plaintiff has done business using this mark Violett and there are
invoices showing this.3 These invoices are all of October 2007.
There is also the fact that the Plaintiff has a certified statement of
sales from 2007-2008 for the goods under this mark. By 2013-2014,
these sales were nearly Rs. 23.5 lakhs.4

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6.Mr. Khandekar says that the Plaintiff had her shop premises
at Chembur redesigned and invoices in the name of Violett were
issued by the Interior Designer Firm, Ethique.5 These invoices are
dated 7th and 27th September 2007. I will straightaway deal with a
dispute raised by the Defendant that the address on these invoices is
shown as being above D’Mart, Kanjur Marg, an establishment that
did not open till 9th December 2013.6 The answer to this in
Rejoinder is that the Plaintiff obtained this invoice on request only
for the purposes of this Suit by which time D’Mart had been
established.7

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7.There is also annexed to the Plaint material in the form of
advertising which shows that the mark Violett used by the Plaintiff

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2 . Plaint, Exhibit “B”, pp. 25–27.

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3 . Plaint, Exhibit “D”, pp. 29–36.

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4 . Plaint, Exhibit “C”, p. 28.

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5 . Plaint, Exhibits “E” and “F”, pp. 37–38. 6 . Notice of Motion Paper book, p. 636.

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7 . Notice of Motion Paper book, p . 653.

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since November 2007.8 There is additional material of this period as
well.9

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8.When the Plaintiff applied for registration in 2012,10 this was
opposed by the Defendant.11 The grounds of opposition are
interesting. Here, the Defendant admits having adopted the mark in
November 2010, but while saying on the one hand that the
Plaintiff’s mark is not distinctive nor capable of registration, the
Defendant admits that it is deceptively similar to the Defendant’s
own mark Violet. The Defendant claims that the Plaintiff’s mark is
identical with the Defendant’s mark. Mr. Khandekar would have it
that this ends any prospect the Defendant might have had of
contending that the two marks are dissimilar. He points out that the
Defendant does not, however, stop at that, for she goes on to say
that the confusion is inevitable. The Plaintiff has also listed a large
number of material well prior to October 2010 evidencing her use of
her mark Violett.12

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9.The Defendant filed an Affidavit in Reply with a very large
two-volume compilation as also a Written Statement.

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10.While the Defendant claims to be more popular and to have
made several attempts to popularize her mark, she has stated in

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8. Plaint, Exhibit “G”, pp. 39.
9. Plaint, Exhibit “I”, pp. 48–49.
10. Plaint, Exhibits “J” and “K”, pp. 50–51.
11. Plaint, Exhibit “L”, pp. 52–56.
12. Notice of Motion Paper book, pp. 641–642.

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paragraph 35 of her Affidavit in Reply13 that in 2012 one of her
patrons asked her whether she had opened a branch in Chembur.
The Defendant’s own outlet is at Ghatkopar. The Defendant
assured her client that she has no franchise anywhere in Mumbai.
Over time, other customers made the same enquiry and the
Defendant says that she then realized “that there was another outlet
using a deceptively similar name trying to usurp the said trade
marks reputation and goodwill”. The Defendant asked her son to
visit the Plaintiff and to cease and desist.

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11.This is confirmed in the Plaintiff’s first cease and desist
notice of 26th August 2015.14 In this, the Plaintiff confirms that she
had told the Defendant’s son, when he asked the Plaintiff to stop
using her own trade mark, that it was the Defendant who should
stop. A formal cease and desist notice was actually sent to the
Plaintiff by the Defendant on 3rd September 2015.15 In this again,
the Defendant says in paragraph 5 that confusion is being caused by
the Plaintiff's use of her mark Violett.

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12.I believe Mr. Khandekar’s submission that the only test is of
prior user and that once confusion is demonstrated, an injunction
must follow is only partly accurate. This is, after all, an action in
passing off; i.e., a tortious action in deceit. The essence of this must
be, as the expression suggests, that knowing the Plaintiff’s mark to
be in existence, the Defendant adopted a rival, confusing mark; and
that the attempt by the Defendant is to ‘pass off’ her goods as those

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13. Notice of Motion Paper book, pp. 14–15.
14. Plaint, Exhibit “Q”, p. 104.
15. Plaint, Exhibit “R”, pp. 105–106.

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of the Plaintiff. As Denning LJ said in Parker Knoll v Knoll
International Limited:16

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“Secondly, ‘to deceive’ is one thing. To ‘cause confusion’
is another. The difference in this: When you deceive a
man, you tell him a lie. You make a false
representation to him and thereby cause him to
believe a thing to be true which is false. You may not
do it knowingly, or intentionally, but still you do it, and
so you deceive him. But you may cause confusion
without telling him a lie at all, and without making any
false representation to him. You may indeed tell him
the truth, the whole truth and nothing but the truth,
but still you may cause confusion in his mind, not by
any fault of yours, but because he has not the
knowledge or ability to distinguish it from the other
pieces of truth known to him or because he may not
even take the trouble to do so.”

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13.It is difficult to see how, from the materials before me, the
Defendant could possibly be said to be ‘telling a lie’, even
unintentionally. To say that a Plaintiff need not prove deceit is one
thing. It is quite another thing to say that the element of deceit is
wholly alien and unnecessary to a course of action in passing off.
Confusion may result from a multitude of causes, not one of them
deceitful. I cannot possibly overlook the fact that the confusion in
this case was in reverse: there is material to show that persons
mistook the Plaintiff’s goods for the Defendant’s, not vice versa. In
fact, that is the whole of the evidence before me at this stage. It was

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16. [1962] RPC 265.

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the Defendant who first asserted the rights to exclusivity and sent
her son off to parley with the Plaintiff and to demand that she, the
Plaintiff, cease use of her mark. There is no evidence that anyone
took the Defendant’s goods to be those of the Plaintiff, and that is
the confusion that the Plaintiff must show. She does not. This,
therefore, leaves only the question of prior use, and that is,
therefore, the sole foundation of the Plaintiff’s case. It is, in my
view, an entirely unstable and unsure foundation for an injunction in
passing off.

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14.In any case, both parties use marks that sound very much like
an ordinary word depicting a colour or a shade, one that is also the
name of a flower, and used a female name. This use carries an
attendant risk of close imitators.

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15.I am not convinced that on these materials a sufficient prima
facie case is made out for the grant of an injunction. The Notice of
Motion is dismissed, with costs.

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16.I must record my appreciation for the admirable restraint and
compactness of arguments on both sides. Ms. Ghosh in particular
had a very great material at hand but accurately focussed her
attention to only the relevant portions of it.

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(G. S. PATEL, J.)

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Jayshree Vasan v. Vimla Shah

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Jayshree Vasan v. Vimla Shah

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