Hindustan Sanitaryware & Industries Ltd (Appellant) v
Champion Ceramic, was an appeal against an order passed by
Additional District Judge in Suit No. 107/2003 whereby the judge
had dismissed the application filed by the appellant under Order 39
Rule 1 & 2 of Civil procedure Code (CPC) read with Section 151
CPC. The learned Additional District Judge while dismissing the
application of the appellant observed that while the contentions of
the appellant that there was some phonetic similarity between
"HINDWARE" and "HIMWARE" was correct, however,
when the two marks are compared in entirety, then the similarities
Before the Delhi High Court, Hindustan Sanitaryware contended
that the learned Additional District Judge had erred in not
appreciating the relative scope, ambit and difference between an
infringement action based on registered trademark and passing off
action .It was also submitted by Hindustan Sanitaryware that the
essential feature of their registered trademark is
'HINDWARE" while the trademark of the respondent is
'HIMWARE', the essential feature of both the trade marks in
question are not only phonetically similar but also similar ocular
comparison, further the goods involved in question were also same
On the other hand, Champion Ceramic, supporting the judgment
delivered by the Additional District Judge, relied on Sec17 of
Trade Mark Act, 1999 read along with Section 29 of the Act and
contended that it was apparently clear that the contentions of the
appellant were not sustainable in law because as per Section 17,
for the purpose of infringement, the entire trademark of the
appellant in toto has to be considered for the purpose of
considering if there is violation thereof or not. Further, they
submitted that the trademark of the appellant if read in whole
makes it clear that the trademark 'HIMWARE' in no way
infringes the trademark of the appellant and therefore prayed that
the order of the learned district judge was completely legal and
Upon a strict consideration of the facts and contentions in the
case, the Delhi High Court referred to a judgment of the Division
Bench in Gufic Ltd and Anr. V Clinique Laboratories,
wherein the court had laid out the following principles:
The test of deceptive similarity in the case of infringement is
the same as in passing off action ,where the marks are not
The question has to be approached from the point of view of a
man of average intelligence and imperfect recollection
In comparing the marks ,it is overall structural and phonetic
similarity of the two marks that is to be seen and not by splitting
them into their component parts and to consider the etymological
The trademark is the whole thing - the whole word has to be
considered and in comparing the two marks, it is also to be seen
whether both convey the same idea.
In this particular case the court had found that the marks
"CLINIQUE" and "SKINCLINIQ" were not similar
when compared as a whole and that it was wrong to compare them by
separating them into two component parts.
The Court in the present case while concurring with the judgment
of the Additional District Judge held that where
"HINDWARE" and "HIMWARE" was concerned they
were taken from the word sanitaryware and neither Hindustan
Sanitaryware nor Champion Ceramic could be permitted to monopolize
such word. Additionally, when the two marks are compared in
entirety, it is apparent that they are distinct. Also, being
considered from the point of view of a man of imperfect
recollection and average intelligence, it did not get proved that
the trademark of the respondent was deceptively similar to that of
the appellant. Therefore, the appeal was dismissed.
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