- 1 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 IN THE HIGH COURT OF KARNATAKA, DHARWAD BENCH DATED THIS THE 14TH DAY OF FEBRUARY, 2025 BEFORE THE HON'BLE MR. JUSTICE HANCHATE SANJEEVKUMAR REGULAR FIRST APPEAL NO.100359 OF 2017 (IPR) BETWEEN: M/S. SHANKAR RICE INDUSTRIES, REPRESENTED BY SRI. T.K. NAGARAJ SHETTY, S/O. KRISHNAIAH SHETTY, SIRA ROAD, TUMAKURU-572106. …APPELLANT (BY SRI V.SHIVARAJ HIREMATH, ADVOCATE) AND: M/S. SRI. BALAJI RICE MILL, BENGALURU ROAD, BALLARI-583101, REPRESENTED BY ITS PARTNER, SRI. J.K. GOVINDANARAYANA SARDA. …RESPONDENT (BY KUMARI. RANJITA ALAGAWADI, ADVOCATE FOR SMT. Y. MALATHI REDDY, ADVOCATE FOR SRI Y. LAKSHMIKANT REDDY, ADVOCATE) THIS REGULAR FIRST APPEAL IS FILED UNDER SECTION 96 READ WITH ORDER 41 RULE 1 READ WITH SECTION 151 OF CPC., PRAYING TO SET ASIDE THE JUDGMENT AND DECREE DATED 24.07.2017 PASSED IN O.S.NO.7/2012 ON THE FILE OF THE PRINCIPAL DISTRICT JUDGE, BALLARI, AS ILLEGAL AND AGAINST THE PROVISION OF LAW AND ETC., THIS REGULAR FIRST APPEAL, COMING ON FOR ORDERS, THIS DAY, THE COURT DELIVERED THE FOLLOWING: R Digitally signed by MALLIKARJUN RUDRAYYA KALMATH Location: HIGH COURT OF KARNATAKA - 2 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 ORAL JUDGMENT (PER: THE HON'BLE MR. JUSTICE HANCHATE SANJEEVKUMAR) This appeal is filed by the defendant challenging the judgment and decree dated 24.07.2017 passed in O.S No.7/2012 by the Court of Principal District Judge, Ballari (for short, ‘Trial Court’), thereby, the suit for permanent injunction is decreed with costs. 2. For the purpose of convenience, ranking of the parties is referred to as per their status before the trial Court. 3. It is the case of plaintiff that plaintiff’s firm is a registered partnership firm carrying on business for a long time under the name and style of “KITCHEN KING” together with the pictorial device of “KING” from 1st January 1990 and have been regularly in the course of trade using in connection with the above products sold by plaintiff under the above trademark and brand name. It is the pleading of plaintiff that for the purpose of identity, recognition and have distinctive business relationship with reference to all kinds of customers. Plaintiff has coined the name and brand of rice and has been marketing the same as “KITCHEN KING” brand in the market, effective - 3 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 from the year 1990. The plaintiff for its business, marketing the commodity in bags, packets cartons etc., by having a pictorial representation of “KING” and selling rice products under the name and style of “KITCHEN KING” brand. 4. Further pleaded that the plaintiff has reproduced pictorial resemblance of device of “KING” on its bags and packets and letter heads, bill books and other stationary of the plaintiff’s firm. The very same pictorial representation of “KING” and the brand name “KITCHEN KING” is displayed prominently in all its marks either in the print form or in the nature of water mark. It is claimed by plaintiff that the plaintiff has established a good reputation in business carrying throughout India. The word “KITCHEN KING” has become synonymous with plaintiff firm and its business is thriving. Thereafter, the Trade Mark Authority has given trade mark on 10.11.2000 to the plaintiff firm and also in respect of artistic work, the word “KITCHEN KING” a copyright is also granted. The registered trademark has been renewed and extended up to 10.11.2020. The plaintiff’s product is being sold in gunny bags and plastic bags and very prominently displaying label “KITCHEN KING” with - 4 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 registration number and artistic impression of device of “KING” is encircled on bags and is being sold in the market. 5. When this being the fact, the defendant with malafide intension in a deceptive manner is also selling rice in gunny bags and plastic bags with the word “Kitchen King” displayed on its bags and has infringed the word “Kitchen King”. It is pleaded that purchasers and customers are getting deceived and fooled and wrongly purchasing the goods marketed and sold by the defendant under identical trade mark of “Kitchen King”. Defendant has copied the trademark of plaintiff with a view to enrich themselves by creating confusion in the mind of customers. The defendant is not entitled to represent its goods as the goods of somebody else and therefore, the business of defendant by marketing its commodity on the same name is solely based on deception. The laymen on seeing or receiving the product of defendant would assume that he has purchased the products of plaintiff. The plaintiff has acquired a right in the distinctive mark by using it since from longer time and conduct of defendant in marketing its products is calculated or likely to deceive or mislead the public and it will also cause confusion among - 5 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 public. Therefore pleaded that great hardship and prejudice will be caused to plaintiff firm, if defendant is not restrained from using trademark of plaintiff. Therefore, filed the suit for permanent injunction by restraining defendant not to use the brand name of “Kitchen King” and pictorial device of “KING” for marketing activities. 6. After service of summons, defendant appeared through his counsel and filed written statement. The defendant has denied allegations made in the plaint. It is pleaded that defendant has registered trademark under the Act of Patent Registration Act in the name and style of “EVERYDAY” and selling rice product under this name. The plaintiff has contended that he is selling this product in Karnataka as well as in Tamilnadu under the trademark of “KITCHEN KING” belonging to plaintiff is false. The word “KITCHEN KING” with emblem of “KING” picture and other product is the emblem with picture of “BUTLER” and colour of bag is totally different with that of plaintiff bag and defendant has not copied or used the trademark and emblem of plaintiff for their products. It is further pleaded that defendant was running the business for last 30 years in market and having a reputed name and - 6 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 registered with all required departments. The defendant denied all the pleadings of the plaint. It is pleaded that the defendant is not aware of registration of trademark as “KITCHEN KING” under the Trade and Merchandise Marks Act 1958 in 2000. The business of defendant is going on by using the name of “Kitchen King” from last 30 years. It is pleaded that there is no intention to duplicate the trademark of plaintiff by defendant as alleged. 7. Further defendant has taken contention that he is having its registered office at Tumkur and suit is not maintainable at Ballari. The defendant has further pleaded that defendant firm is registered under Sales Tax, Firm Registration and Factory Registration and various other registrations required to run the business. The suit is filed by plaintiff is only with an intension to cause harm and loss to defendant and thus pleaded that the suit is not maintainable. Hence, prays to dismiss the suit. 8. Upon considering the pleadings of both parties, the Trial Court has framed the following issues: - 7 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 1. Whether the plaintiff is a registered Trade mark holder of the rice products under the name “KITCHEN KING” with device of a KING under copyright Act, 1957 as per the certificate No.62348/2002? 2. Whether the plaintiff further proves that the defendant is conducting business by user of the word “KITCHEN KING” and by display of the pictorial device of BUTTLER and has used the same in the nature of brand name, heading, labeling the same on the bag? 3. Whether the plaintiff further proves that the brand name being used by the defendant is deceptively similar to that of his brand and thereby he has infringed plaintiff’s right? 4. Whether the plaintiff is entitled for the damages to the tune of Rs.1,00,000/- as claimed? 5. Whether the plaintiff is entitled to the reliefs sought for? 6. What decree or order? 9. To prove this case, the plaintiff firm has examined its partner and accountant as PW.1 and PW.2 and got marked documentary evidence as Ex.P1 to Ex.P27. Defendant firm has examined its special power of attorney holder as DW.1 and got marked documentary evidence as Ex.D1 to Ex.D4. - 8 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 10. The Trial Court, after appreciating the evidence on record, has decreed the suit, thereby granted decree of permanent injunction against the defendants as prayed for, by restraining defendant his men, agents, assignees and all such other persons claiming interest through defendant are restrained permanently from selling rice and other related rice items by using the trademark “Kitchen King” and artistic work/logo “KING” in any manner or identical of the said trademark and artistic work as per Ex.P3 and Ex.P16. Further the Trial Court has decreed that the defendant or any person claiming through him are restrained permanently from using the word “KITCHEN KING” and device of “KING” as shown at Ex.P16 on their rice bags or stationary or in any manner using deceptively similarly marked as that of plaintiff. Further the Trial Court has decreed that the defendant to surrender entire bill books, labels, bags bearing artistic work and trademark of plaintiff which is kept for using to sell his rice products under the brand name “Kitchen King”. Further directed the defendant to pay nominal token damages of Rs.1,00,000/- to the plaintiff and also directed the defendant to furnish statement of accounts from the date of suit disclosing the profits earned till - 9 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 date by using the depiction as per Ex.P16 the Registered Trade Mark of the plaintiff. Further the defendant is directed to withdraw its products under the packing as per Ex.P17 from the market and goods circulated and surrender the rice bags used in deceptive bag at Ex.P17 as that of the plaintiff writing with the defendant for its destruction. 11. The Trial Court assigned reasons in decreeing the suit by holding issue Nos.1 to 4 in the Affirmative and issue No.5 partly in the affirmative, for the reasons that the plaintiff firm is a partnership firm and doing business in rice, broken rice and rice brawn and marketing in the name and style of Sri. Balaji Rice Mill having registered trademark “KITCHEN KING” brand, and “KING” as device. The Trial Court after appreciating evidence on record has held that the plaintiff as per Ex.P-2, P-3, P-4, and P-5, proved brand name “KITCHEN KING” and trademark device “KING”. Further, the Trial Court assigned reasons that the plaintiff has obtained certificate from the competent authorities and registered the brand name as “KITCHEN KING” with pictorial device “KING” from the year 1990. It is held that the defendant has not - 10 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 obtained registration certificate of “Kitchen King” from the competent authorities and whatever the defendant is using the name as “Kitchen King” for marketing and doing business is deceptive in nature. 12. Further, the Trial Court has assigned reason that though defendant is using the word “Kitchen King” in normal narrative words and the plaintiff is using the name as “KITCHEN KING”, but the phonetic pronunciation of both is same, which is deceptive in nature to deceit the customers. Therefore, the Trial Court has formed opinion that using the word as “Kitchen King” by the defendant with different pictorial background of picture of “BUTLER”, but the pronunciation of both is same and similar in nature which is having element of malafideness on part of the defendant, thus, it is deceptive in nature. Though the defendant has taken plea that their commodity is being sold out under the brand name “EVERYDAY” but he has not produced any documentary evidence in this regard, therefore, disbelieved the case of the defendant. Further, the Trial Court assigned reason that since it is proved that the plaintiff is doing - 11 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 business by creating brand name as “KITCHEN KING” having pictorial logo “KING” for thirty years and the plaintiff is flourishing in business, therefore, the defendant with all their intention to market their product by using the word “Kitchen King” as the phonetic pronunciation “KITCHEN KING” and “Kitchen King” normal way are creating confusion in the mind of the customers, because the customers go by phonetic pronunciation. Therefore, has formed opinion that the act of the defendant using the name of “Kitchen King” is deceptive in nature, which is causing hardship to the plaintiff. Further, it is observed that though the rice bags of the defendant in which their commodity is hold up and sending to the market are different, but using the same as “Kitchen King” creates confusion and making to believe the customers that it is original product of “Kitchen King”. Therefore, on all these reasons the Trial Court has decreed the suit as above stated. 13. Being aggrieved by decreeing the suit, the defendant has filed present appeal by raising various grounds. - 12 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 GROUNDS RAISED IN THE APPEAL: 14. The defendant has raised many grounds and important/prominent grounds are that to determine whether or not there has been a violation of copy right is to see if the reader, spectator or the viewer after having read or seen both the works would be clearly of the opinion and get unmistakable impression that the subsequent work appears to be a copy of the first. Further, it is ground that the wordings used “KITCHEN KING” and “Kitchen King”, are in different styles and are not synonyms one and also pictorial device “KING” used by the plaintiff and the “BUTLER” is used by the defendant, are different. Therefore, there is no element of any deceptive on part of the defendant and which is wrongly appreciated by the Trial Court. Further, raised ground that the plaintiff is doing business at Ballari and defendant is having registered firm at Tumkur and doing business from Tumkuru only. Therefore, there is no synonymity or similarity between the two bags of plaintiff and defendant, therefore, the Trial Court is wrong in coming to conclusion that the act of the defendant is deceptive in - 13 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 nature. Further, raised ground that the defendant is having registered firm at Tumkuru, therefore, the suit filed in the Court at Ballari jurisdiction is not maintainable, for want of territorial jurisdiction. 15. Further, raised ground that the plaintiff might have obtained registration of trademark and copy right, but the defendant did not know this and with all his genuinity, the defendant is using the word “Kitchen King”. Therefore, in this regard, when the Trial Court had come to conclusion that the defendant has duped the minds of customers, but there is no specific issue framed by the Trial Court and without framing the issue has erroneously held that the defendant has committed act of deceitfulness. Further, raised ground that it is not the case of plaintiff that by misusing their trademark, the defendant is making profit and thereby sustained loss, but it is the plaintiff’s case that by using their trademark the defendant is selling inferior quality rice. When this being the fact, the Trial Court ought to have tested the rice product of the defendant whether it is inferior quality or superior quality independently that of the plaintiff’s - 14 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 production. But the Trial Court only by going through the gunny bags and plastic bags of plaintiff’s and defendant’s though they are in different colours and different style of writing. Hence in this regard, the appreciation of evidence made by the Trial Court is not correct. Therefore, on all these grounds prays to allow the appeal and set aside the judgment and decree passed by the Trial Court. 16. Heard arguments from both sides and perused the material placed on records. 17. Upon hearing the parties, the points that would arise for my consideration are as follows: i. Whether, under the facts and circumstances involved in the case, the plaintiff proves that the plaintiff is registered trademark holder of the rice products under the name “KITCHEN KING” with pictorial device of “KING” under the Trade and Merchandise Marks Act, 1958 and Copy Right Act, 1957? ii. Whether, under the facts and circumstances involved in the case, the - 15 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 plaintiff proves that the defendant is conducting business by using the word “Kitchen King” by depicting the pictorial device of “BUTLER” and has used the same in brand name, heading and labeling on the bag, thus, defendant has intention of deceiving the plaintiff thus selling of the product of rice under the name and style of “Kitchen King” though with pictorial device “BUTLER”, is amounting to commission of deceitful act by the defendant and thus thereby the defendant infringed the plaintiff’s right? iii. Whether, the damages imposed on the defendant of Rs.1,00,000/- requires any interference? iv. Whether, the judgment and decree passed by the Trial Court requires interference? 18. Learned counsel for the appellant/defendant submitted that the defendant is also trader of rice having registered trademark at Tumkuru, but not at Ballari, whereas the plaintiff’s firm is carrying its business from Ballari. Therefore, the defendant has not committed any act of - 16 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 violation of patent and trademark. The defendant is using the name as “Kitchen King” is different from the plaintiff’s brand name “KITCHEN KING”. The plaintiff’s name “KITCHEN KING” and the defendant’s name is normal as “Kitchen King”, both are fragmently different in nature with bare eyes and also the gunny bags and plastic bags of both the plaintiff and defendant are different and having different colours. Therefore, in any manner the defendant’s commodity is packed and selling in gunny bags under the name and style as “Kitchen King” is different and is not amounting to act of commission of deception. Further, submitted that the plaintiff’s pictorial background is “KING”, but the defendant pictorial background is “BUTLER”. Therefore, both the pictures of background are different and there is no synonymity in both the pictures. Hence, it is not amounting to any act of deceitfulness by the defendant. Further, submitted that when the Trial Court had come to conclusion that the defendant had committed act of deceitful but to prove this aspect there is no issue framed by the Trial Court. Further, the plaintiff has failed to prove in what way the - 17 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 defendant has committed an act of deceitfulness in selling the commodity, therefore, the Trial Court has not appreciated evidence on record correctly. Hence, prays to allow the appeal. 19. On the other hand, learned counsel for the plaintiff/respondent submitted that the defendant is using the word “Kitchen King” similar to the word “KITCHEN KING”. Though the style of writing is different, but the phonetic pronunciation is same which creates confusion in the minds of the customers, therefore it is amounting to deceiving the plaintiff and in the mind of customers there is impression of the word “Kitchen King”, but not impression of pictorial devices. Therefore, the plaintiff is using the word "KITCHEN KING” and the defendant is using the word “Kitchen King” in normal narrative manner, but the phonetic pronunciation is one and the same and similar, which creates impression on the customers on the phonetic pronunciation, but not pictorial device. Hence, it is amounting to deceiving the customers as well as the plaintiff. Therefore, submitted though there may be different pictorial devices, but the - 18 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 plaintiff is using the pictorial device as “KING” and the defendant is using the pictorial device as “BUTLER”. But the marketing psychology is using the same phonetic pronunciation which creates impression of the customers that they are using the commodity of the plaintiff, but really they are using the rice product of defendant, which is inferior quality. Therefore, submitted that the Trial Court has appreciated evidence on record perfectly, which needs no interference by this Court. Therefore, prays to dismiss the appeal. 20. Learned counsel for the plaintiff/respondent places reliance of the judgments of Hon’ble Supreme Court and High Courts as follows: 1. RUSTON & HORNSBY LTD., VS. THE ZAMINDARA ENGINEERING CO. reported in 1970 AIR 1649 (Ruston’s case) 2. PARLE PRODUCTS (P) LTD., Vs. J. P. & CO. MYSORE reported in 1972 AIR 1359 (Parle products case) - 19 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 3. K.R. CHINNA KRISHNA CHETTIAR VS. SRI AMBAL & CO. reported in 1970 AIR 146 (K.R. Chinna Krishna Chettiar’s case) 4. CADILA HEALTHCARE LIMITED VS. CADILA PHARMACEUTIALS LIMITED reported in AIR 2001 SC 1952 (Cadila Healthcare’s case) 5. THE INDIAN HOTELS COMPANY LTD. VS. ASHWAJEET GARG & ORS in CS (OS) No.394/2012 of Delhi High Court (Ashwajeet Garg’s case) 21. Upon considering the evidence of PW-1 who is accountant of the plaintiff’s firm and the documentary evidence at Ex.P-1/copy of partnership deed, it is proved that the plaintiff’s firm is running under the name and style as M/s. Sri. Balaji Rice Mill, Bengaluru road, Ballari. Ex.P-2/certificate of registration of trademark, Ex.P-3/certificate of registration No.969718 in class-30 (certificate of trademarks for use in legal proceedings only) and Ex.P-4/extracts from register of copyrights, which prove the fact that the plaintiff’s firm has obtained registration of - 20 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 the trademark under the name “KITCHEN KING” and also obtained copyright for using the pictorial device “KING” under the provisions of the Trade and Merchandise Marks Act, 1958 and Copy Right Act, 1957. 22. On the other hand, though the defendant is claiming that its firm is selling the commodity under the name “EVERYDAY”, but has not produced any evidence. It is proved from the evidence that from the year 1990 the plaintiff’s firm is selling and marketing and doing the business of rice, broken rice and rice brawn by getting registration of trademark as “KITCHEN KING” and obtaining certificate under the Copy Right Act, 1957 for using the logo of “KING”. It is the contention of the defendant that he is not knowing such obtaining registration from the competent authorities, but the plaintiff is selling and doing business in the market by using the name “KITCHEN KING” and pictorial device as “KING”. Ex.P-16 is the rice bag of the plaintiff, Ex.P-17 is rice bag of defendant and Ex.D-2 is also the bag of the defendant, which is similar to the rice bag produced at Ex.P-17. Though these Ex.P-16, P-17 and D-2 are in different - 21 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 colours, but the name used is similar as “Kitchen King”. The plaintiff is using the name as “KITCHEN KING”, but the defendant is using the name as “Kitchen King” in normal letters. Though the pictorial devices are different as the plaintiff has obtained copy right of trademark as “KING” and the defendant is using the pictorial device as “BUTLER”, but use of the very same word “Kitchen King”, phonetically pronunciation is same for both “Kitchen King” used by the plaintiff and the defendant. Exs.D-3/certified copy of registration certificate and D-4/firm registration certificate, prove that they have got registered the firm under the name and style as M/s. Shankar Rice Industries. But the defendant is using the same word “Kitchen King” which creates same impression in the mind of the customers of phonetic pronunciation. 23. But the use of the very same word “Kitchen King” phonetically pronunciation is same for both “Kitchen King” and ‘KITCHEN KING’ used by the plaintiff and defendant. Exs.D-3 and 4 are the registration certificates of the defendant which prove that they have got registered the - 22 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 firm under the name and style mentioned as M/s. Shankar Rice Industries. But defendant is using the same word “Kitchen King” which creates same impression in minds of the customers on phonetic pronunciation. 24. Section 2(h) of the Trade Mark Act, 1999 reads as follows: “(h) deceptively similar”—A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;’ 25. Section 2(i) of the Trade Mark Act, 1999 reads as follows: (i) “false trade description” means— (I) a trade description which is untrue or misleading in a material respect as regards the goods or services to which it is applied; or (II) any alteration of a trade description as regards the goods or services to which it is applied, whether by way of addition, effacement or otherwise, where that alteration makes the description untrue or misleading in a material respect; or (III) any trade description which denotes or implies that there are contained, as regards the goods to which it is applied, more yards or metres than there are contained therein standard yards or standard metres; or - 23 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 (IV) any marks or arrangement or combination thereof when applied— (a) to goods in such a manner as to be likely to lead persons to believe that the goods are the manufacture or merchandise of some person other than the person whose merchandise or manufacture they really are; (b) in relation to services in such a manner as to be likely to lead persons to believe that the services are provided or rendered by some person other than the person whose services they really are; or (V) any false name or initials of a person applied to goods or services in such manner as if such name or initials were a trade description in any case where the name or initials— (a) is or are not a trade mark or part of a trade mark; and (b) is or are identical with or deceptively similar to the name or initials of a person carrying on business in connection with goods or services of the same description or both and who has not authorised the use of such name or initials; and (c) is or are either the name or initials of a fictitious person or some person not bona fide carrying on business in connection with such goods or services, and the fact that a trade description is a trade mark or part of a trade mark shall not prevent such trade description being a false trade description within the meaning of this Act;” - 24 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 26. Here, the plaintiff is using the Trade Mark as “KITCHEN KING” in capital letters whereas, the defendant is also using the same word “Kitchen King” but in normal letters. Though the letters used by both plaintiff and defendant are different, as the plaintiff is using in capital letters but the defendant is using in normal letters. But the phonetic pronunciation is one and the same and similar. Whether it amounts to deceptively similar is to be considered in this background. As stated above, deceptively similar means a mark shall be deemed to be deceptively similar to another mark, if it so, mere resemblance that other mark has to be likely to deceive or cause confusion. The act of making deceive and confusion are psychological effect. Before coming to form opinion or coming to conclusion, whether defendant has committed act of deceivingness and making confusion in the minds of customers, the element of animus is to be considered while choosing and using the words of products. Here, using of the letters “KITCHEN KING” and “Kitchen King” are different in style of letters but the phonetic pronunciation is one and the same and - 25 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 identical. In this way, the similarity in taking benefit of phonetic pronunciation is amounting to deceptively similar to another mark and it merely resemblance to other mark. In order to say that both the Trademarks are deceptively similar in nature, then, what the customer will get impression in his mind is to be taken into consideration especially when the phonetic pronunciation is same. Therefore, in this regard I place reliance on the judgment of the Hon’ble Apex Court in Ruston’s1 case (supra) at paragraph Nos.4, 5 and 6 it is held as follows: “4. It very often happens that although the defendant is not using the trade mark of the plaintiff, the get up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiff's mark the get up of the defendant's goods may be so different from the get up of the plaintiff's goods and the prices also may be so different that there “would be no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the: defendant is improperly using the plaintiff's mark. 5. The action for infringement is a statutory right. It is dependent upon the validity of the registration and subject to other 1 AIR 1970 SC 1649 - 26 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 restrictions laid down in ss. 30, 34 and 35 of the Act. On the other hand the gist of a passing off action is that A is not entitled to represent his goods as the goods of B but it is not necessary for B to prove that A did this knowingly or with any intent to deceive. It is enough that the get-up of B's goods has become distinctive of them and that there is a probability of confusion between them and the goods of A. No case of actual deception nor any actual damage need be proved. At’ common law the action was not maintainable unless there had been fraud on As part. In equity, however, Lord Cottenham, L.C., in Millington v. Fox(1) held that it was immaterial whether the defendant had been fraudulent or not in using the plaintiff's trade mark and granted an injunction accordingly. The common law courts, however, adhered to their view that fraud was necessary until the Judicature Acts, by fusing law and equity, gave the equitable rule the victory over the common law rule. 6. The two actions, however, are closely similar in some respect, As was observed by the Master of the Rolls in Saville Perfumery Ltd. V. June Perfect Ltd.(2). “The Statute- law relating to infringement of trade marks is based on the same fundamental idea as the law relating to passing-off. But it differs from that law in two particulars, namely (I) it is concerned’ only with one method of passing-off, namely, the use of a trade mark, and (2) the statutory protection is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor. Accordingly, in considering the question of infringement the Courts have held, and it is now expressly provided by the Trade Marks Act, 1938, Section 4, that infringement takes place not merely by exact imitation but by the - 27 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 use of a mark so nearly resembling the registered mark as to be likely to deceive.” 27. Further, the Hon’ble Apex Court in Parle Products2 case (supra) at paragraph Nos.6, 7 and 8 it is held as follows: “6...The expression “deceptively similar” has now been defined under Section 2(d) of the Act of 1958 thus “A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.” It is to be noted that although there was no such provision in the definition section of the Act of 1940 s. 21(1) of the said Act was to the same effect. The Indian Trade Marks Act of 1940 was based on the English Trade Marks Act, 1938 and Section 21 of the Act of 1940 was more or less similar to s.4 of the English Act of 1938. 7. To decide the question as to whether the plaintiffs' right to a trade mark has been infringed in a particular case, the approach must not be that in an action for passing off goods of the defendant as and for those of the plaintiff. According to this Court in Durga Dutt v. Navaratna Laboratories (1): “While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the 2 AIR 1972 SC 1359 - 28 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 vindication of the exclusive right to the use of the trade mark, in relation to those goods (vide s. 21 of the Act). The, use, by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement.” 8. According to Karly's Law of Trade Marks and Trade Names (9th Edition paragraph 838): “Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side .lmo (1) [1965] 1 S.C.R. 737.754 for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore tile same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade- marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own.” - 29 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 28. Further, Apex Court in K.R. Chinna Krishna Chettiar’s3 case (supra) at paragraph Nos.6, 7 and 8 it is held as under: “6. The vital question in issue is whether, if the appellant's mark is used in a normal and fair manner in connection with the snuff LI 3Sup.CI/69-5 and if similarly fair and normal user is assumed of the existing registered marks, will there be such a likelihood of deception that the mark ought not to be allowed to be registered (see In the matter of Broadhead's Application (1) for registration of a trade mark). It is for the court to decide the question on a comparison of the competing marks as a whole and their distinctive and essential features. We have no doubt in our mind that if the proposed mark is used in a normal and fair manner the mark would come to be known by its distinguishing feature “Andal”. There is a striking similarity and affinity of sound between the words “Andal” and “Ambal”. Giving due weight to the judgment of the Registrar and bearing in mind the conclusions of the learned Single Judge and the Divisional Bench, we are satisfied that there is a real danger of confusion between the two marks. 7. There is no evidence of actual confusion, but that might be due to the fact that the appellant's trade is not of long standing. There is no visual resemblance between the two marks, but ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. There is a close affinity of sound between Ambal and Andal. 3 AIR 1970 (1) SC 146 - 30 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 8. In the case of Coca-Cola Co. of Canada v. Pepsi-Cola Co. of Canada Ltd.(2), it was found that cola was in common use in Canada for naming the beverages. The distinguishing feature of the mark Coca Cola was coca and not cola. For the same reason the distinguishing feature of the mark Pepsi Cola was Pepsi and not cola. It was not likely that any one would confuse the word Pepsi with Coca. In the present case the word “Sri” may be regarded as in common use. The distinguishing feature of the respondent's mark is Ambal while that of the appellant's mark is Andal. The two words are deceptively similar in sound.” 29. Further Apex Court in Cadila Healthcare’s4 case (supra) at paragraph Nos.16 and 17 has held as follows: “16. The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of Section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of 4 AIR 2001 SC 1952 - 31 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 the shop assistant ministering to that person's wants.’ It is also important that the marks must be compared as wholes. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. Thus in Lavroma case Lord Johnston said: “we are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop. ” On the facts of that case this Court came to the conclusion that taking into account all circumstances the words “Protovit” and “Dropovit” were so dissimilar that there was no reasonable probability of confusion between the words either from visual or phonetic point of view. 17. Our attention was drawn to a recent judgment of this Court in S.M. Dyechem Ltd. vs. Cadbury (India) Ltd. (2000) 5 SCC 573 where in a passing off action, the plaintiff, which was carrying on the business under the mark of “Piknik”, filed a suit for injunction against the defendant which was using the mark of “Picnic” for some other chocolates sold by it. On the allegation that the defendant's mark was deceptively similar, the trial court had issued an injunction which was reversed by the High Court. On appeal, the decision of the High Court was affirmed.” - 32 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 30. In the decision of Delhi High Court, in Ashwajeet Garg’s5 case (supra) at paragraph Nos.14, 16, 17, 20, 21 and 22 it is held as follows: “14. Under section 28 of the Trade Marks Act, 1999 (hereinafter referred to as "The Act"), the registration of a mark gives the registered proprietor the exclusive right to use the registered mark and the use of an "identical" or "deceptively similar" mark by another without any permission/authority amounts to infringement of the registered mark under Section 29 of the Act.” “16. The Supreme Court of India in the case of A MERICAN HOME PRODUCTS V. M AC LABORATORIES ; AIR 1986 SC 137 laid down that when a person gets his trade mark registered, he acquires valuable rights by reason of such registration. Registration of his trade mark give him the exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person using a mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain injunction. (See also NATIONAL BELL CO. VERSUS METAL GOODS M FG. C O.; 1971 AIR SC 898).” “17. The Supreme Court of India in the case of LAXMIKANT VERSUS PATEL VS CHETANBHAT SHAH & ANR.; (2002) 3 SCC 65, laid down that the law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the 5 CS (OS) No.394/2012 - 33 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury. The Supreme Court further laid down that even in cases of honest adoption the injunction must follow in cases where there is probability of confusion in business.” “20. The Division Bench of the Bombay High Court in the case of ENCORE ELECTRONICS LTD. V ANCHOR ELECTRONICS AND ELECTRICALS PVT. LTD. 2007 (35) PTC 714 while dealing with the issue of deceptive similarity between two trademarks "Encore" and "Anchor" held as under: "9. The phonetic similarity between "Anchor on the one hand and "Encore" on the other, is striking. The two marks are phonetically, visually and structurally similar. The overall impression conveyed by a mark as a whole, has to be assessed in evaluating whether the mark of the Defendant is deceptively similar to the mark of the Plaintiff. Phonetic similarity constitutes an important index of whether a mark bears a deceptive or misleading similarity to another. The phonetic structure indicates how the rival marks ring in the ears. Courts in a country such as ours whose culture is enriched by a diversity of languages and scripts have to consider how the rival marks are spelt and pronounced in languages in which they are commonly used. Counsel for the Defendant submits before the Court that while "Encore" is a word of French origin, "Anchor" is a word of English usage and the pronunciation of the two words must differ. The submission misses the point. The - 34 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 case before the Court is not about how an Englishman would pronounce "Anchor‟ or a Frenchman would pronounce "Encore". The Court must consider the usage of words in India, the manner in which a word would be written in Indian languages and last but not least, the similarity of pronunciation if the rival marks are used. The manner in which the "a‟, as in "anchor‟ is pronounced by an Englishman or Notting Hill may well appear to be discerning traveller to be distinct from a Frenchman’s pronunciation of the "e in "encore‟ on a fashionable by lane near Champs Elysees. That is no defence to an action in our Courts for passing off. For the ordinary consumer in Ahmedabad and her counterpart in Mumbai shopping streets, the "a in "anchor‟ and the "e in "encore‟ are perilously and deceptively similar. The Court must assess the make up of an Indian consumer and, associated with that, the cultural traits that underlie the spelling and pronunciation of words. The case of the Plaintiff is that in Gujarati as well as in Hindi, there is no even a subtle distinction between the manner in which "Anchor‟ and "Encore" would be pronounced and we find merit in the submission. The overall impact in terms of phonetical usage is one of striking similarity. The test is not whether a customer who wishes to buy the product of the Plaintiff is likely to end up buying the product of the Defendant. The test is whether the ordinary customer is likely to be led to believe that "Encore‟ is associated with the mark and the trading style of the Plaintiff. The phonetical, visual and structural get up of the two words is so strikingly similar as to lead to a likelihood of deception. The question of deception is a matter for the Court to determine, particularly at the interlocutory stage.” “21. The key factors to be kept in mind while comparing rival marks for deceptive similarity, as laid down by the Division Bench of the Bombay High Court in ANCHOR - 35 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 ELECTRONICS AND ELECTRICALS PVT. LTD. (SUPRA), is that phonetic similarity constitutes an important index of whether a mark bears a deceptive or misleading similarity to another. The phonetic structure indicates how the rival marks when pronounced appear to the ears of the person hearing the words. Our country is enriched by a diversity of languages and scripts and keeping the aspect of such diversity in mind, the courts have to consider how the rival marks are spelt and pronounced in languages in which they are commonly used. What is important for consideration is the usage of words in India, the manner in which a word would be written in Indian languages and the similarity of pronunciation if the rival marks are used. What the Court must assess is the general profile of the Indian consumer and, associated with that, the cultural traits that underlie the spelling and pronunciation of words. The test as laid down is not whether a customer who wishes to buy the product of the Plaintiff is likely to end up buying the product of the Defendant. The test is whether the ordinary customer is likely to be led to believe that the product of the Defendant is associated with the mark and the trading style of the Plaintiff.” “22. The Supreme Court of India in the case of K. R. CHINNA KRISHNA CHETTIAR V. SRI. AMBAL & CO. AND ANR. AIR 1970 SC 146, comparing the rival marks Ambal and Andal, held that the resemblance between the two marks must be considered with reference to the ear as well as the eye. The Supreme Court while relying upon the decision in the case of DECORDOVA V. VICK CHEMICAL COY., 1951-68 RPC 103 held that a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features.” - 36 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 31. Upon considering the principle of law laid down as above discussed, the parameters are to be taken into consideration in order to determine whether use of “Kitchen King” by defendant to that of “KITCHEN KING” of plaintiff is deceptively similar. Both could be compared to each other whether they resemble in letters or marks or signs or phonetically similar sound of pronunciation is to be considered. The letters in both “KITCHEN KING” and “Kitchen King” may be different in using capital and normal letters, but the similarity is in using the phonetic pronunciation while using in common parlance pronunciation from mouth to ear and ear to mouth and so on. When upon making comparison of both these letters if both sounds are same and similar phonetic pronunciation which could be stated precisely that it is deceptively similar coming within definition of Section 2(h) of the Trade Mark Act, 1999 (correspondingly Section 2(d) of the Trade and Merchandise Marks Act, 1958). 32. It is proved that plaintiff is in the market field by using the Trade Mark “KITCHEN KING” from the year 1990 and the defendant by using the same words although in a - 37 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 different letters but having in mind that both phonetic pronunciation are one and the same and similar, which creates confusion in the mind of the customer is definitely amounting to deceptively similar. Therefore, in this regard though the defendant is having registered firm and is running operations of marketing from Tumkuru, but the commodity in the bag of the plaintiff containing the rice items is having marketing throughout south India. Therefore, in this way, it is proved that the defendant is using the similar words which is similar in phonetic pronunciation is amounting to deceptively similarity attracting the definition under Section 2(h) of the Trade Mark Act, 1999. 33. Therefore, when it is proved that the defendant has used the word “Kitchen King” which is similarly deceptive to the word “KITCHEN KING”, therefore, in this way the plaintiff’s right is infringed. Therefore, taking action against the infringed right is a statutory right given to the plaintiff. Thus, in this way it is proved that the defendant has used the brand name of the plaintiff “Kitchen King” which is deceptively similar. Therefore, the trial Court has rightly - 38 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 come to conclusion that the right of the plaintiff is infringed by the defendant by using the method of committing the tort of deceptive similarity. Therefore, I answer point No.1 and 2 in ‘affirmative’. 34. The Trial Court has framed issue No.3 putting burden on the plaintiff that the plaintiff proves that defendant is having element of using the word “Kitchen King” deceptively similar to the brand of the plaintiff and it is proved by the evidence above discussed. The defendant is using the bill books, invoices of selling the rice product under the name as “Kitchen King”. Therefore, it is proved that the defendant knowing fully well that the plaintiff’s commodity is marketed under the Trade mark as “KITCHEN KING”. Therefore, with all malafide intention, the defendant has also used the word “Kitchen King” for confusing the customers when phonetic pronunciation is same for both products. Here, it is not the case of the plaintiff that the defendant is selling inferior quality but the plaintiff’s case is that the defendant is using the same word “Kitchen King” as of plaintiff. Thus, causing loss to the plaintiff is proved. - 39 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 Therefore, the Trial Court is correct in awarding nominal damages of Rs.1,00,000/- to the plaintiff payable by the defendant. Therefore, in this regard, though there may be a difference in using letters, marks, signs, pictures, those are visual in nature. But when the same letters are used making a similar sound and a phonetic pronunciation is also amounting to deceptive similarity. Therefore, even if, not only using the same words makes the same phonetic pronunciation and even though in case, one of the letters are different but the phonetic pronunciation is found to be similar, then also if there is any difference in picture device or difference in some letters but sounds a similar phonetic pronunciation, it is amounting to deceptive similarity and thus, in this way the defendant has infringed the right of plaintiff. Therefore, the trial Court is justified in awarding nominal damages of Rs.1,00,000/- to the plaintiff. Accordingly, I answer point No.3 in the ‘affirmative’. Since there is no merit found in the grounds urged by the appellant, in the appeal memo and also the submissions made by the counsel for the appellant and defendants, - 40 - NC: 2025:KHC-D:3097 RFA No. 100359 of 2017 therefore, judgment and decree passed by the trial Court need not be interfered with. Therefore, the appeal is liable to be dismissed. Hence, I proceed to pass the following: ORDER i) The appeal is dismissed. ii) The judgment and decree dated 24.07.2017 passed in O.S.No.7/2012 by the Court of Prl. District Judge, Ballari, is hereby confirmed. iii) No order as to costs. iv) Draw decree accordingly. Sd/- (HANCHATE SANJEEVKUMAR) JUDGE PMP para 1 to 11 SRA para 11 to 22 RKM para 23 to end List No.: 2 Sl No.: 1