Dismissed

Sasken Technologies Ltd. v. iSTAR Skill Development Pvt. Ltd.

Karnataka HC28 Nov 2023MFA/3951/2021

Case brief

AI extract

What is this about?

The High Court dismissed an appeal under Order 43 Rule 1(r) CPC challenging the trial court's refusal to grant interim injunctions restraining trademark infringement and passing off. The court found that the marks 'SASKEN' and 'salesken' were neither identical nor deceptively similar phonetically or visually, and that the appellant failed to establish a prima facie case for injunction.

What did the court decide?

Appeal dismissed; no interim injunction granted against the respondents; no order as to costs.

Sasken Technologies Ltd. Vs iSTAR Skill Development… — Intellectual Property | Karnataka HC (2023)

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IN THE HIGH COURT OF KARNATAKA AT BENGALURU

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DATED THIS THE 28^TH DAY OF NOVEMBER, 2023

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BEFORE

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THE HON'BLE MR. JUSTICE V. SRISHANANDA

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MISCELLANEOUS FIRST APPEAL No.3951/2021(IPR)

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BETWEEN

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SASKEN TECHNOLOGIES LTD., A COMPANY INCORPORATED UNDER THE PROVISIONS OF THE COMPANIES ACT, 1956 HAVING REGISTERED OFFICE AT No.139/25, DOMLUR LAYOUT RING ROAD, DOMLUR POST BENGALURU -560 071 REPRESENTED BY ITS AUTHORISED SIGNATORY MR B RAMKUMAR

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...APPELLANT

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(By SRI MADHUKAR D AND SRI MANISH BIALA, ADVOCATES)

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AND

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1 . iSTAR SKILL DEVELOLPMENT PVT. LTD., A COMPANY INCORPORATED UNDER THE PROVISIONS OF THE COMPANIES ACT, 1956 HAVING ITS REGISTERED OFFICE AT NO.3699/A, 9^TH CROSS HAL 2^ND STAGE, INDIRANAGAR BENGALURU -560 008

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2 . SALESKEN TECHNOLOGIES PVT. LTD. A COMPANY INCORPORATED UNDER

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THE PROVISIONS OF THE COMPANIES ACT, 2013 HAVING ITS REGISTERED OFFICE AT 63/1, MAKAM PLAZA, 3^RD MAIN ROAD 18^TH CROSS, MALLESHWARAM BENGALURU -560 055

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…RESPONDENTS

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(BY SRI DHYAN CHINNAPPA, SENIOR COUNSEL ALONGWITH SRI M.V.SUNDARARAMAN AND NEERAJ SASTRY, ADVOCATES FOR C/R1 AND R2)

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THIS MISCELLANEOUS FIRST APPEAL IS FILED UNDER ORDER 43 RULE 1(r) READ WITH SECTION 151 OF THE CODE OF CIVIL PROCEDURE, 1908, AGAINST THE ORDER DATED 20.01.2021 PASSED ON I.A. NOs.1,2 AND 3 IN O.S.NO.6500/2020 ON THE FILE OF THE XVIII ADDITIONAL CITY CIVIL JUDGE, BENGALURU CITY (CCH.NO.10), DISMISSING I.A.Nos.1 TO 3 FILED UNDER ORDER 39 RULE 1 AND 2 READ WITH SECTION 151 OF CPC.

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THIS MISCELLANEOUS FIRST APPEAL HAVING BEEN HEARD AND RESERVED FOR JUDGMENT, COMING ON FOR 'PRONOUNCEMENT OF JUDGMENT' THIS DAY, THE COURT DELIVERED THE FOLLOWING:-

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JUDGMENT

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This Miscellaneous First appeal is filed by the plaintiff challenging the validity of the Order dated 20.01.2021 passed in O.S.No.6500/2020 on the file of the XVIII Additional City Civil Judge, Bengaluru, (CCH-10), whereby,

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I.A.Nos.1 to 3 filed by the plaintiff under Order XXXIX Rule 1 and 2 r/w Section 151 of the Code of Civil Procedure, came to be dismissed.

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For the sake of convenience, parties are referred to as plaintiff and defendants as per their original ranking before the Trial Court.

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Plaintiff filed a suit in O.S.No.6500/2020 with the following prayer:

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” WHEREFORE, the Plaintiff above-named most humbly

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prays that this Hon'ble be pleased to pass a judgment and decree as follows in favour of the Plaintiff.

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A. Permanent injunction restraining the Defendants, their employees, officers, representatives, servants, agents, and all other persons claiming through or under the Defendants, from infringing upon the Plaintiff's registered trademarks using the mark 'SALESKEN', or any other word or mark which is deceptively similar to that of the Plaintiff's registered trademarks 'SASKEN' and its variants;

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B. Permanent injunction restraining the Defendants, its employees, officers, representatives, servants, agents, and all other persons claiming through or

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under them, from, in any manner whatsoever, passing off their goods and services as those of the Plaintiff by adopting and/or using a deceptively similar mark to the of the Plaintiff's mark 'SASKEN' and its variants in any manner whatsoever,

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C. Permanent injunction restraining the Defendants, their officers, servants, agents and all other persons claiming through or under them from, in any manner whatsoever, passing off their services as that being provided by the Plaintiff by using the domain name 'www.salesken.ai' or any other domain using the mart 'salesken', or any other word or mark that is deceptively similar to the Plaintiffs trademark 'SASKEN' and its variants.

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D. Mandatory injunction directing the Defendants, their employees, officers, representatives, servants, agents, and all other persons claiming through or under the Defendants, to immediately and forthwith surrender to the Plaintiff for destruction, all printed matter, publications, advertising materials, including brochures, pamphlets, stationery, and any other materials bearing the mark "salesken" or any other word or mark that is deceptively similar to that of the Plaintiff's trademark 'SASKEN' and its variants.

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E. Directing the Defendants to render honestly and faithfully true accounts of the profit that Defendants have derived by promoting its business and services using Identical/deceptively similar mark as that of the Plaintiff's registered trademarks "SASKEN" and its variants, and direct payment of such profits to the Plaintiff by way of damages for infringing and passing off the trade mark of the Plaintiff;

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F. Grant the costs of these proceedings;

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G. Grant any such other and further reliefs as this Hon’ble Court may deem fit in the circumstances of the case, in the interest of justice and equity.”

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Plaintiff laid the claim in respect of suit relief by contending that plaintiff is a registered Company providing vast number of services pertaining to product engineering and digital transformation to enterprises across the world involved in industries such as semiconductor, automotive, industrials, consumer electronics, enterprise devices, satellite communications, transportation industries etc. Plaintiff being a Public Limited Company, its shares are listed on the National Stock Exchange of the country and is

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represented by its authorized signatory Mr.Deepak Mahapatra. It is further contended that defendant No.1 is also a Company incorporated under the Companies Act, 1956, and having its registered office in Bengaluru. Defendant No.2 is a Private Limited Company incorporated under the provisions of Companies Act and has its registered office at Bengaluru.

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Plaintiff contended that plaintiff was originally incorporated in India in the year 1989 as ASIC Technologies Pvt. Ltd., In the year 2000, plaintiff changed its name to ‘SASKEN’ Communication Technologies Pvt. Ltd., and has been using the word “SASKEN” in its name and for its products and services ever since the year 2000. Plaintiff having involved in several technological and allied services, including hardware designing, software development, device testing, and application development for a period of three decades has earned goodwill and has got a wide range of customer base including 100 of customers who are ‘Fortune 500’ companies in the world

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and plaintiff is a global leader in digital transformation services. Plaintiff is having operations spread across three continents, with its offices at Japan, United States of America, Germany, Finland, United Kingdom, China, Mexico and India.

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It is further contended that, plaintiff’s name “SASKEN” is a distinctive mark that is well known in the field of technological and allied services for several years and therefore, they have been able to earn a goodwill among its customers. The trade mark of the word “SASKEN” and its various variants registered by plaintiff in

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India are as under:

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Sl.No.	Trade Mark	App./ Reg.No.	Class	Date
1.	SASKEN MAKE THE RIGHT CONNECTION	979752	9	27.12.2000
2.	SASKEN COMMUNICATION TECHNOLOGIES LIMITED	1257468	42	26.12.2003
3.	SASKEN COMMUNICATION TECHNOLOGIES LIMITED	1271810	16	10.03.2004

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4.	SASKEN	2987847	9 & 16	17.06.2015
5.		2987848	42	17.06.2015
6.		3736103	09, 38, 42	24.01.2018

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7. Plaintiff obtained registration certificate in respect of

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its trade marks in India and it also registered trade mark

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containing words “SASKEN” in various countries detailed as

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under:

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Sl.No	Trade Mark	App./ Reg.No.	Date	Class	Country
1.		W201800798 IR 1424537	07.04.2020	09, 38, 42	Finland
2.		1424537 IR 1424537	14.02.2019	09, 38, 42	Germany
3.		2018-263528 IR 1424537	13.02.2020	09, 38, 42	Japan
4.		IR 1424537	19.03.2019	09, 38, 42	United Kingdom
5.		79241447 6060892 IR 1424537	26.05.2020	09.38.42	United states of America
6.	SASKEN COMMUNICAT ION TECHNOLOGI ES LIMITED	002042596	1.02.2002	09,16,38, 42	European Union
7.		002040269	05.07.2002	09, 16,	European Union
8.	SASKEN	3838173	28.09.2004	9, 16, 37 42	United States of

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					America
9.	SASKEN	1982003	10.01.2001	9	China
10.	SASKEN	1784793	10.01.2001	42	China
11.	SASKEN COMMUNICAT ION TECHNOLOGI ES LIMITED	1982059	10.01.2001	9	China
12.	SASKEN COMMUNICAT ION TECHNOLOGI ES LIMITED	1784790	10.01.2001	42	China
13.	SASKEN COMMUNICAT ION TECHNOLOGI ES LIMITED	1760897	10.01.2001	16	China
14.	SASKEN COMMUNICAT ION TECHNOLOGI ES LIMITED	1759396	10.01.2001	38	China
15.	SASKEN	1760898	10.01.2001	16	China
16.	SASKEN MAKE THE RIGHT CONNECTION AND DEVICE	1917696	15.01.2001	09	China

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Plaintiff has in its three decades operation, steadily

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grown among the top companies in India and abroad providing a number of technological services to its clients. The annual turnover of the plaintiff for the financial year 2019-20 was INR 527,97,11,000 (Rupees five hundred and twenty seven crores ninety seven lakhs and eleven thousand).

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It is further contended that in July 2020, plaintiff found out through newspaper article that certain technological services were being offered in the market by the name “salesken” which bears the marked visual, structural as well as phonetic similarity to the plaintiff’s trademark “SASKEN”. Upon further enquiry, the plaintiff was shocked to find out that the defendant No.1 has obtained registration for the word “salesken” with the Trademark Registry under class 42, with effect from 16.08.2019 and defendant No.1 stated that the word “salesken” is proposed to be used by it in class 42 which pertains to technological services and obtained registration of the mark by suppressing the existence of the plaintiff’s trade mark, which is phonetically and visually similar to the word “salesken”, and also, by suppressing the fact that plaintiff was already in the business of providing technological services to its clients under the name “SASKEN” for more than 20 years. The form TM-A dated 16.08.2019 filed by the defendant No.1 before the Registrar of Trademarks, Chennai, seeking registration for

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the word “salesken” is produced as a document by the plaintiff along with plaint.

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Plaintiff came to know that a company has been incorporated on 28.02.2019 under the name “SALESKEN TECHNOLOGIES PRIVATE LIMITED” which is defendant No.2, and defendant No.1 and 2 were associated with Mr.Sreeraman Vaidyanathan and Ms.Surga Sudharmma Thailakan Ezhavappadi as promoters. The plaintiff found out that there is a website with address www.salesken.ai for offering certain technological services using artificial intelligence and data analytics for the purpose of improving the performance of its clients in sales. It is also contended that goods and services are classified in India for the purpose of trademark registration as per the International Classification of goods and services (hereinafter referred to as ‘NICE Classification’ for short) published by the World Intellectual property Organization (‘WIPO’ for short) by virtue of Rule 20 of the Trademark

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Rules, 2017. As per the said classification, Class 42 reads as under:

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“Scientific and technological services and research and design relating thereto; industrial analysis, industrial research and industrial design services; quality control and authentication services; design and development of computer hardware and software”.

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The plaintiff being a multinational company its with offices across the world was offering services in several disciplines under the broad spectrum of “technological services” as aforesaid which includes the research and development of products, performing data analytics for the betterment of the business of its clients, using Artificial Intelligence (AI) and Machine Learning (ML) for creating solutions for its clients and therefore, registration of the word “salesken” and obtaining the trademark has thus resulted in interfering with the established business of the plaintiff and sought for decreeing of the suit as referred to supra.

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Upon service of suit summons, defendants entered appearance and filed written statement denying the plaint averments in toto and maintained that it is catering to the needs of its clients in a separate and exclusive area. Therefore, plaintiff’s suit is not maintainable.

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Defendants also contended that the registration of the word “salesken” by the competent authorities is based on requirement of law to be followed and therefore, it is the malafide conduct of the plaintiff in filing the suit and same needs to be dismissed with exemplary costs.

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Defendants maintained that the mark “salesken” is a registered trade mark and defendants have got statutory right to use the said mark especially under the right bestowed by Section 28(3) r/w Sections 30 and 31 of the Trademark Act and plaintiff having initiated the proceedings before the Intellectual Property Appellate Board in relation to defendants trade mark viz., “salesken”, further proceeding in the suit needs to be

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stayed. Defendants also maintained that areas of operation of business of plaintiff and defendants are totally dissimilar and therefore, the Trademark of the plaintiff and defendants would not have any bearing or connection with each other and therefore, suit of the plaintiff is vexatious and based on imaginary cause of action and sought for dismissal of the suit.

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Defendants further contended that there is no similarity in the trademark of plaintiff and defendants either in visual or in phonetic or in the structure except the letters ‘KEN’ and therefore, suit of the plaintiff is to be dismissed. It is also contended that letters “KEN” appears in several trademarks and therefore, plaintiff cannot maintain the suit against defendants and sought for dismissal of the suit. Plaintiff, inter alia filed three applications seeking an order of injunction vide I.A.Nos.1 to 3. The applications are opposed by the defendants by filing written objections.

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The learned Trial Judge heard the parties in detail on

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the applications filed by the plaintiff and opposed by the defendants and by the Order dated 20.01.2021, dismissed all the three applications filed under Order XXXIX Rule 1 and 2 r/w Section 151 of the Code of Civil Procedure. The prayers in I.A.Nos.1 to 3 are as under:

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Prayer in I.A.No.1/2020

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“For reasons sworn to in the accompanying affidavits, the Applicant-Plaintiff most humbly pray that this Hon'ble Court be pleased to grant an interim order restraining the Defendants, their officers, servants, agents, and all other persons claiming through or under them, in any manner whatsoever from infringing upon the Plaintiffs' registered trademarks by using the mark ' salesken ', or any other word or mark which is deceptively similar to that of the Plaintiff's registered trademarks 'SASKEN' and its variants, as part of their trade name or in any other manner whatsoever, pending the disposal of the instant suit, in the interests of justice and equity.

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WHEREFORE, in light of the urgency pleaded, it is humbly prayed that this Hon'ble Court may be pleased to pass an ad-interim ex-parte order (by dispensing with the issuance of prior notice to the Defendants) in terms of the prayer above.”

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Prayer in I.A.No.2/2020

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“For reasons sworn to in the accompanying affidavits, the Applicant-Plaintiff most humbly prays that this Hon'ble Court be pleased to grant an interim order restraining the Defendants, their officers, servants, agents, and all other persons claiming through or under them, in any manner whatsoever, passing off their services as that of the services of the Plaintiff using the mark ' salesken', or any other word or mark which is deceptively similar to that of the Plaintiff's registered trademarks 'SASKEN' and its variants, as part of their trade name or in any other manner whatsoever, pending the disposal of the instant suit, in the interests of justice and equity

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Prayer in I.A.No.3/2020

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through or under them, in any manner whatsoever, passing off their services as that of the services of the Plaintiff by using the domain name www.salesken.al or any other domain name incorporating marks that are deceptively similar to that of the Plaintiff's registered trademarks 'SASKEN and its variants, pending the disposal of the instant suit, in the interests of justice and equity.

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WHEREFORE, In light of the urgency pleaded, it is humbly prayed that this Hon'ble Court may be pleased to pass an ad-interim ex-parte order (by dispensing with the issuance of prior notice to the Defendants) in terms of the prayer above.”

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The applications are supported by the affidavits of

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the authorized signatory of the plaintiff (Assistant Vice President-Legal) who is authorized signatory of the plaintiff wherein, reiterating the contents of the plaint, plaintiff maintained that they are entitled for an order of injunction against the defendants.

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In the objection statement of the defendants, the contents of the written statement were reiterated and

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contended that defendants had employed 100 employees who are inter alia depending on salaries paid to them and defendants business and turnover is entirely dependent on reputation and goodwill of the name “salesken” and niche area of the business is associated with and they have got high ratings in www.g2.com and therefore, sought for dismissal of injunction applications.

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On behalf of parties, following judgments were relied on by the parties:

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Decisions relied on by the counsel for plaintiff:

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“1. (2004)3 SCC 90 – Midas Hygiene Industries Pvt.Ltd., Vs.Sudhir Bhotia & ors.

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2. ILR (2014)3 DEL 1734 – Abbott Healthcare Pvt.Ltd., Vs.Raj Kumar Prasad and others.

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3. 2014 SCC Online DEL 23 – Dabur India Limited Vs. Real Drinks (P) Ltd and others

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4. (1996) 5 SCC 74- N.R.Dongre & Others Vs. Whirlpool Corporation & another

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5. (2002) 3 SCC 65 – Lakshmikant V Patel Vs. Chetanbhai Shah and Anr.

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6. 2013 SCC Online Bom 895 – Som Distilleries and Breweries Ltd. Vs. SABMiller Ltd

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7. (1997) 3 SCC 443 – Tayabbhai M. Bagasarwalla & Anr.Vs. Hind Rubber Industries Pvt. Ltd

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8. (2003) 7 SCC 375 – In the case of Anil Panjwani.

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9. WP.No.1035/2009 of Bombay High Court between RB.Upadhyay Vs. State Commission for Consumer Disputes.

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10. (2007)8 SCC 449 -Prestige Lights Ltd. Vs. State Bank of India.

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11. (2017) SCC Online Bom 7237 – Pidilite Industries Ltd. Vs. Poma Ex Products.

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12. (2016) 2 SCC 683 – S.Syed Mohideen Vs. P.Sulochana Bai.

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13. Judgment of Delhi High Court in CS(COMM) 174/2019 between Peps Industries Pvt. Ltd. Vs. Kurlon Ltd.

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14. (2007) 1 Delhi 409 M/s Ansul Industries Vs. M/s. Shiva Tobacco Company.

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15. (1969) 2 SCC 131 – K.R.Chinna Krishna Chettiar Vs. Shri Ambal & Co.

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16. (2002) 2 SCC 147 – Mahendra & Mahendra Paper Mills Ltd. Vs. Mahindra & Mahindra Ltd.

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17. (2009) SCC Online Cal. 531 - Sony Kabushiki Kaisha Vs. Mahalaxmi Textile Mills.

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18. (2010) SCC Online Del 3806 – Marico Ltd.Vs. Agro Tech Foods Ltd.

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19. (1954) SCC Online Cal 228 – H.D.Corporation Vs. Dy.Registrar of Trademarks.

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20. 1961 KLJ 177 – Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories.

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21. (2004) 5 SCC 257 – Godfrey Philips India Ltd. Vs. Girnar Food and Beverages Pvt. Ltd.

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22. ILR (2002) 1 Delhi 220 – Info Edge (India) Pvt. Ltd. &Ors. Vs. Shailesh Gupta & Ors.”

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The counsel for the defendants has relied on the following decisions:

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1. (2008) 10 SCC 723 – Khoday Distilleries Ltd. Vs. The Scotch Whisky Association & Ors.

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2. (2001) 2 SCR 743 – Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd.

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3. (2016) 67 PTC 271 – Reliance Industries Ltd. Vs. Concord Enviro Systems Pvt. Ltd.

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4. 1994 Supp(3) SCC 215 – JR.Kapoor Vs.Micronix India.

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5. (2020) 82 PTC 501 – Bharat Biotech Inter national Ltd. Vs.Optival Health Solutions Pvt. Ltd. And ors.

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6. ILR (2010) II Delhi 85 – Cadila Health Care Ltd. Vs. Gujarat Co-operative Milk Marketing Federations Ltd. & Ors.

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7. MANU/DE/1862/2020 8. MANU/KA/2583/2019 9. (2018) 9 SCC 183 – Nandhini Deluxe. Vs. Karnataka Co-operative Milk Producers Federation Ltd.

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10. ILR 2002 KAR 407 – Smt.Lakshmamma Vs. K.S.Sheshamma

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11. ILR 1995 KAR 1705 – M.D.Nanaiah Vs. K.Nagaraju.

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12. 1995 Supp (4) SCC 465 - Modern Food Industries India Ltd. Vs. Sachidanand Dass & another.

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13. (1992) 4 SCC 167 – State of Jammu & Kashmir Vs. Mohd. Yaqoob Khan

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14. ILR 2017 KAR 68 – Karnataka Rajya Rashtreeya Grameena Udyoga Khatri Yojane Naukarana Sangha(R) and others Vs.Dr.Sri.K.Radhakrishna Reddy and others.”

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On considering the rival contentions of the parties, Trial Court formulated the following points for consideration:

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1. Whether the plaintiff has made out a prima facie case for grant of ad-interim temporary injunction as prayed in IA.No.1?

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2. Whether the plaintiff proves that the balance of convenience lies in their favour?

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3. Whether the plaintiff will be put to irreparable loss and hardship if an order of an-interim injunction is not granted?

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4. What order?”

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Based on the material placed by the parties, the learned Trial Judge, considered the arguments put forth on behalf of the parties, and in the light of the principles of law enunciated in the decisions relied on by the parties, the learned Trial Judge concluded that plaintiff has not made out a prima facie case for grant of injunction as prayed and dismissed all the three applications.

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Being aggrieved by the same, plaintiff has filed the present appeal.

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Reiterating the grounds urged in the appeal memorandum, Sri Manish Biala, Advocate, contended that the learned Trial Judge has misconstrued the scope and

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object of Order XXXIX Rule 1 and 2 of CPC in dismissing the applications, having regard to the facts and circumstances found in the case on hand, whereby, plaintiff is put to great hardship and injury and sought for allowing the appeal.

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He further contended that the word “SASKEN” and “salesken” are practically similar both in phonetic as well as in design whereby right of the plaintiff per se has been infringed by the defendants. Therefore, contention of the plaintiff was well within the scope and ambit of the rights of the plaintiff insofar as seeking an order of injunction against defendants. The Trial Court having not been able to properly appreciate the rival contentions of the parties dismissed the applications of plaintiff in the impugned order and the same has resulted in miscarriage of justice and sought for allowing the appeal.

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Per contra, Sri Dhyan Chinnappa, learned Senior Counsel representing the defendants supported the

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impugned judgment by contending that the area of operation of plaintiff and defendants are altogether different.

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He further contended that clientele of plaintiff and defendants are altogether different and the marks are also totally dissimilar and therefore, the contention of the plaintiff that their business has been affected by usage of the registered trade mark “salesken” by defendants at no stretch of imagination can be countenanced in law and sought for dismissal of the appeal.

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In support of their arguments, appellant and

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respondents have relied on the following judgments:

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1. “Amritdhara Pharmacy Vs.Satya Deo Gupta; AIR 1963 SC 449

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2. K.R.Chinnakrishna Setty Vs. Sri Ambal; 1972 SCC Online Karnataka 157

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3. Micro Hitech Industries Vs. Uttam Goutam Appliances; ILR 2017 KAR 4699

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4. Lakshmikant Patel Vs. Chetanbhai Shah (2002) 3 SCC 65

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5. Midas Hygiene Vs.Sudhir Bhatia 2004(28) PTC 121 (SC)

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6. T.V.Venugopal Vs. Ushodaya Enterprises; (2011) 4 SCC 85

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7. Khoday Distilleries Ltd. V. The Scotch Whisky Association and others –(2008) 10 SCC 723

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8. Cadila Health Care Ltd. V. Cadila Pharmaceuticals Ltd. – (2001) 2 SCR 743

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9. Reliance Industries Ltd. V. Concord Enviro Systems Pvt. Ltd.

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10. J.R.Kapoor v. Micronix India – 1994 Supp (3) SCC 215

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11. Bharat Biotech International Ltd. V. Optival Health Solutions Pvt.. Ltd. And other – (2020) 82 PTC 501.

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12. Cadila Health Care Ltd. V. Gujrat Co-operative Milk Marketing Federation Ltd. And others – ILR (2010) II DELHI 85.

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13. Judgment of the High Court of Delhi in CS (Comm) 217/2020 reported in MANU/DE/1862/2020

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14. Judgment of the Karnataka High Court in R.F.A.No.1462/2012 reported in MANU/KA/2583/2019.

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15. Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Milk Producers Federation Ltd. –(2018) 9 SCC 183

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16. S.Syed Mohideen v. P. Sulochana Bai –(2016) 2 SCC 683.

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17. Skyline Education Institute (India) Pvt. Ltd. V. S.L.Vaswani and Anr. – (2010) 2 SCC 142.

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18. ITC Limited v. CG Foods (India) Pvt. Ltd. -2021 (88) PTC 178 (Karn)”

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This Court, perused the entire material on record meticulously, in view of the rival contentions of the parties. On such meticulous perusal of the material on record, the following points would arise for consideration:

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(i) Whether the plaintiff has made out a prima facie case that the trade mark of the plaintiff and defendants are similar and therefore, right of the plaintiff has been infringed by use of the word “salesken” by the defendants and thereby entitled for an order of injunction?

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(ii) Whether refusal to grant injunction in favour of plaintiff has resulted in hardship and irreparable injury to the plaintiff?

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(iii) What Order?

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The list of authorities furnished on behalf of the parties and principles stated therein has been taken note of by this Court. In the case on hand, a memo came to be

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filed on 20.11.2023 giving the details of trademarks of the

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appellant and trademarks of respondent, as under:

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Trademarks of the Appellant

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Sl. No.	Trade Mark and Application No.	Date of filing	Date of grant	Page No. of the Trial Court Record.
1	SASKEN MAKE THE RIGHT CONNECTION 979752	27.12.2000	25.07.2008	68
2	SASKEN COMMUNICATION TECHNOLOGIES LIMITED 1257468	26.12.2003	14.12.2007	69
3	SASKEN COMMUNICATION TECHNOLOGIES LIMITED 1271810	10.03.2004	25.03.2008	71
4	SASKEN 2987847	17.06.2015	14.11.2017	73-74
5	SASKEN 2987848	17.06.2015	13.12.2017	75-76
6	SASKEN 3736103	24.01.2018	12.04.2019	77-78

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Trademarks of the Respondent

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Sl. No.	Trade Mark and Application No.	Date of filing	Date of grant	Page No. of the Trial Court Record.
1	salesken 979752	16.08.2019	15.02.2020	364

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The trade mark of the appellant is depicted as under:

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The trade mark of the respondent is depicted as under:

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Having regard to the scope of the appeal as is contemplated under Order XLIII Rule 1 CPC, this court analyzed the material on record. In the first place, the material on record would sufficiently establish that plaintiff has been carrying on the business on and from 1989 initially as ‘ASIC Technologies Limited’ and over a period of time, changed its name to ‘SASKEN Communications Technologies Private Limited’ and has been using the word SASKEN in its name, products and services. The service provided by the plaintiff is in the field of technological and allied services including hardware designing, software

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development, device testing and application development. Plaintiff has also earned sufficient good will in the said field

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and has got a good number of clientele.

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The material on record also shows that the products and technological innovations carried on by the plaintiff have been recognized and plaintiff is having 70 patents to its credit. Plaintiff clientele includes hundreds of Prestigious Fortune 500 companies and therefore, plaintiff claims that it is a global leader in digital transformation services. The material on record also prima facie disclose that SASKEN is a distinctive trade mark and is well recognized in the field and it has been recognized in several classes in the field including class 42. The word SASKEN and its variants registered by the plaintiff in India and abroad has therefore, resulted in plaintiff enjoying proprietary rights. Plaintiff being the registered trade mark owner of SASKEN, cannot allow anybody else to misuse the said trade mark or any trademark similar to the trade mark registered by the plaintiff. Pleadings also

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establish prima facie that on 01.07.2020, plaintiff noticed that first defendant obtained registration of the word ‘salesken’ with the Trade Mark Registry under Class 42 with effect from 16.08.2019. It is the contention of the plaintiff that first defendant has suppressed the plaintiff’s mark ‘SASKEN’ which is practically similar to the word ‘salesken’ both phonetically and virtually. It is also the allegation of the plaintiff that defendant is catering to its services to the customers who are in need of technological services. It is also contended that the website address of the first defendant viz., www.salesken.ai is offering technological services using Artificial Intelligence and Data analytics and therefore, sought action against the first defendants.

¶194

The contentions urged on behalf of the plaintiff is flatly refuted by the first defendant by contending that the mark ‘salesken’ and its logo is coined by the first defendant with sufficient background. The etymology for coining of the word ‘salesken’ is derived by the services

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offered by defendant inasmuch as ‘System for Appropriate Lead Engagement in Sales using Knowledge Enhancing

¶197

Nuggets’. It was emphatically denied by the first defendant that product and services of ‘salesken’ exactly resemble the product and services offered by the plaintiff, and that plaintiff and defendant are operating in two different and distinct areas whereby absolutely there is no confusion in the mind of the customers who are desirous of obtaining necessary services offered by plaintiff and defendant. First defendant further contended that as ‘salesken’ Artificial Intelligence models are customised for

¶198

the specific sales pitch of the customer data set. Therefore, it is not offering general services to the customers at large and therefore, there is no iota of truth in the action sought to be initiated against the defendant by the plaintiff and sought for dismissal of the appeal.

¶199

From the above rival contentions, it is crystal clear that dispute surrounds around the usage of the trademark ‘SASKEN’ and that of ‘salesken’.

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¶201

As could be seen from the written arguments furnished on behalf of the appellant, the word ‘SASKEN’ has been coined by using the word ‘SAS’ from ‘Silicon Automation System’ and ‘KEN’ meaning ‘Knowledge’. Whereas, as referred to supra, the word ‘salesken’ was coined meaning ‘System for Appropriate Lead Engagement in Sales using Knowledge Enhancing Nuggets’.

¶202

The test which has to be carried out when an injunction remedy is sought for by the plaintiff by contending that the word ‘SASKEN’ and ‘salesken’ are similar and thereby the defendant is required to be refrained from using the word ‘salesken’ is, whether both the marks are identical or similar whereby injunction can be granted against the defendant.

¶203

In the case on hand, on the first look of both the marks referred supra, the phonetics, number of letters and visual depiction of the marks are altogether different and there is no similarity.

¶204

¶205

As per Section 28(3) r/w Sections 30 and 31 of the Trade Marks Act provides as a statutory right to use a trademark and another trademark holder cannot injunct a person who has registered his trademark ordinarily. Moreover, with regard to registration of Trademark is pending before the appropriate forum. Till said dispute is decided finally, defendant can make use of its trademark.

¶206

However, if the plaintiff seeks an order of injunction against the defendant from using a trademark, he has to make out a case that the trade mark used by the plaintiff and defendant is identical or almost similar to each other. When the said test is applied as referred to supra, the trade mark registered by the plaintiff as ‘SASKEN’ and ‘salesken’ used by the defendant are neither identical nor almost similar so as to create confusion among the general public.

¶207

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In the light of the above legal requirements, when the trademarks of appellant and respondent are compared, it is crystal clear that neither the alphabets nor the design nor phonetics thereof are similar to each other. In the appellant’s mark, there is a red coloured prism like mark clearly visible and word ‘SASKEN’ is made to appear in capital letters. Whereas, in the case of the mark of the respondent, it is a black coloured square with a red coloured right mark on the left hand side and alphabets are small letters and alphabets also contain combination of black and red colour. In ‘salesken’, ‘sales’ is made in black colour and ‘ken’ in red colour.

¶209

As such, either on the first look or on detailed analysis, the two marks are neither identical nor near to similarity in any manner.

¶210

Hon’ble Apex Court had an occasion to deal with the similarity aspects in the case of Cadila Health Care Limited supra, wherein, Their Lordships were required to decide

¶211

¶212

the similarity between Peter Scot Whisky and Scotch Whisky . The Apex Court, while deciding the said case has ruled that, Court has to consider that “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.”

¶213

Similar was the opinion of the Apex Court in the case of Khoday supra. Further, there cannot be any dispute as to principles of law enunciated in the judgment of the Apex Court in the case of Lakshmikant V Patel, Midas Hygiene Industries Pvt.Ltd., and T.V.Venugopal supra.

¶214

In Lakshmikant V Patel’s case, their Lordships of the Apex Court ruled that ‘injunction would be necessary if there is a probability of confusion in the business’.

¶215

In the case of Midas Hygiene Industries Pvt.Ltd., their Lordships held that ‘injunction is a must if there is a threat of infringement and passing of action’.

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The facts involved in Midas Hygiene Industries Pvt.Ltd. are totally different from the facts involved in the present case inasmuch as, in the case of Midas Hygiene Industries Pvt.Ltd., two words namely, ‘Laxman Rekha’ and ‘Magic Laxman Rekha’ resembled each other except for the word ‘Magic’.

¶218

So also, in the case of T.V.Venugopal referred to supra, the Apex Court while dealing with the ‘law of action of passing of’, took into consideration the test of common field of activity to common class of consumers and ruled that if the two trademarks are affecting the common class of customers in respect of common services offered by plaintiff and defendant, there is always an injury to the reputation and good will of the rights earlier registered trademark holder and trade mark holder.

¶219

In the case on hand, prima facie material would reveal that there is no common class of customers in

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respect of the services offered by plaintiff and defendant. Any further opinion at this juncture by this Court having regard to the scope of Order XLIII of CPC with regard to the minute details as is argued by the parties, would definitely affect the rights of the parties during the trial one way or the other.

¶222

It is settled principles of law and requires no emphasis that Courts while dealing with application for grant of temporary injunctions cannot hold a mini trial and bestow its attention to the minute details in the case of the parties. All that this Court has to bear in mind is that there is a serious dispute and a triable issue made out by the plaintiff and till such issue is decided, is there a serious injury caused to the rights of the plaintiff which becomes irreversible by the time the suit is finally decided and whereby there is an irreparable loss occasioned to the plaintiff in refusing to grant of injunction.

¶223

In the case on hand, having regard to the fact that the registered trade mark of the plaintiff and registered

¶224

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trade mark of the defendant, on the first look does not resemble each other either on the phonetics or on the visuals. As such, this Court is of the considered opinion that the plaintiff has failed to make out a case for granting an order of temporary injunction by exercising powers vested in this Court under Order XLIII Rule 1 of CPC.

¶226

The learned Trial Judge has rightly appreciated the material on record and has rightly dismissed the request of the plaintiff to injunct the defendant from using the trademark ‘salesken’.

¶227

52. In view of the foregoing discussion, the following:

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ORDER

¶229

(i) Appeal is hereby dismissed .

¶230

(ii) It is made clear that the observations made by this Court during the course of this Order is only for the purpose of disposal of the present appeal and shall not affect the rights of the parties during trial, one way or the other.

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(iii) No order as to costs.

¶232

Sd/JUDGE

¶233

kcm

Sasken Technologies Ltd. v. iSTAR Skill Development Pvt. Ltd.

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Sasken Technologies Ltd. v. iSTAR Skill Development Pvt. Ltd.

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