The case of Devi Pesticides Private Ltd. vs. Shiv Agro Chemicals Industries is a notable decision concerning trademark infringement and passing-off within the agrochemical industry. The dispute arose when Devi Pesticides Private Ltd. (the plaintiff), a company engaged in the manufacture and sale of fertilizers and flowering stimulants under the trademark "BOOM PLUS," alleged that Shiv Agro Chemicals Industries (the defendant) was selling similar products under the trademark "SUPER BOOM," resulting in confusion among consumers, particularly illiterate farmers.

• Factual Background:
  • The plaintiff, Devi Pesticides Private Ltd., has been in the business of manufacturing fertilizers and flowering stimulants since 1985 and has been using the trademark "BOOM PLUS" since 1987.
  • The trademark "BOOM PLUS" was registered under Trademark No. 473179 in Class 1 on June 5, 1987, and the registration has been periodically renewed.
  • Additionally, the plaintiff has four other registered trademarks associated with "BOOM PLUS."
  • The plaintiff's products are well-established in the market, with significant annual sales of approximately one crore rupees, supported by regular advertising expenditure.
  • In July 2004, the plaintiff discovered that the defendant, Shiv Agro Chemicals Industries, was marketing fertilizers and flowering stimulants under the trademark "SUPER BOOM."
  • The plaintiff claimed that "SUPER BOOM" was deceptively similar to "BOOM PLUS" and could cause confusion among the target consumers, who were mostly farmers with limited literacy.
• Procedural Background:
  • The plaintiff filed a suit for permanent injunction against the defendant before the Madras High Court, seeking to restrain the defendant from infringing its registered trademark "BOOM PLUS" and from passing off its goods as those of the plaintiff.
  • Along with the suit, the plaintiff filed two applications for interim injunction in O.A. Nos. 904 and 905 of 2004 in C.S. No. 862 of 2004.
  • The defendant filed a counter affidavit contesting the plaintiff's claims, asserting that the word "BOOM" was generic and commonly used in the agrochemical industry and that there was no similarity or likelihood of confusion between "BOOM PLUS" and "SUPER BOOM."
  • The learned Single Judge dismissed both applications for interim injunction on April 26, 2005, concluding that there was no visual or phonetic similarity between the two marks.
  • Aggrieved by the order, the plaintiff preferred appeals before the Division Bench of the Madras High Court.
• Issues Involved:
  • Whether the use of "SUPER BOOM" by the defendant was deceptively similar to "BOOM PLUS" and amounted to passing off?
• Submissions of Parties:
  • The plaintiff contended that it had established substantial goodwill and reputation associated with its registered trademark "BOOM PLUS" since 1987.
  • It argued that the defendant's use of "SUPER BOOM" was phonetically similar to "BOOM PLUS" and could cause confusion, particularly among the targeted consumers who were mostly illiterate farmers.
  • The plaintiff also relied on its status as a prior user and owner of a registered trademark to assert exclusive rights under Section 28 of the Trademarks Act, 1999.
  • It was further submitted that the addition of the word "SUPER" did not distinguish the defendant's mark from the plaintiff's.

The defendant countered that "BOOM" was a common and descriptive term used widely in the industry and lacked distinctiveness. It argued that the defendant's mark "SUPER BOOM" was visually and structurally different from "BOOM PLUS," and the two marks would not cause any confusion. The defendant further submitted that it had been using "SUPER BOOM" in the market for several months and had its independent goodwill.

Discussion on Judgments Cited:
The plaintiff relied heavily on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, where the Supreme Court emphasized that phonetic similarity is a significant factor in determining trademark infringement, particularly when the goods are intended for consumption by illiterate or semi-literate people. The Court held that in cases of medicinal products or products used by ordinary people, the test of likelihood of confusion must be applied stringently.

The court also referred to Durga Dutt Sharma v. N.P. Laboratories, AIR 1965 SC 980, where it was held that if there is clear imitation or deceptive similarity, further evidence of actual confusion is not required. Another precedent considered was Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65, where the Supreme Court held that if prima facie facts support the claim of infringement or passing off, an injunction should ordinarily be granted to protect the plaintiff's goodwill and proprietary rights.

Reasoning and Analysis of Judge: The Division Bench analyzed the phonetic similarity between "BOOM PLUS" and "SUPER BOOM" and found that the dominant part of both marks was "BOOM," which could lead to consumer confusion, especially among the rural population. The court emphasized that phonetic similarity alone could suffice to establish infringement and passing off when the target consumers were illiterate farmers.The court noted that the plaintiff's mark "BOOM PLUS" was a registered trademark since 1987, whereas the defendant's use of "SUPER BOOM" was recent and unregistered. The court rejected the defendant's argument that "BOOM" was a generic term, emphasizing that a registered trademark enjoys statutory protection and cannot be diluted merely by adding a prefix such as "SUPER."

The court observed that the products of both parties were identical (fertilizers and flowering stimulants) and shared common marketing channels, increasing the likelihood of confusion. The court further invoked Section 29(5) of the Trademarks Act, 1999, which clarifies that using a registered trademark as part of a trade name or business name also constitutes infringement.The court held that the Single Judge erred in disregarding the phonetic and conceptual similarities between the marks and failed to appreciate the likelihood of deception.

Final Decision:
The Division Bench allowed the appeals, set aside the order of the learned Single Judge, and granted interim injunctions in favor of the plaintiff. The defendant was restrained from using the trademark "SUPER BOOM" or any other deceptively similar mark until the disposal of the suit.

Law Settled in this Case:
The judgment reaffirmed that phonetic similarity is a critical determinant in trademark infringement and passing off actions, particularly where the target consumers are from vulnerable sections of society such as farmers or the unlettered public. The decision clarified that a registered trademark holder has statutory rights to prevent the use of deceptively similar marks, even if the defendant appends common adjectives like "SUPER" to the infringing mark.The judgment highlighted that Section 29(5) of the Trademarks Act, 1999, widens the scope of infringement to include situations where the registered trademark is used as part of the business name or trade name.The court emphasized that the balance of convenience and irreparable injury in trademark disputes must be weighed carefully, especially when prior user rights and consumer protection are involved.

Case Title: Devi Pesticides Private Ltd. Vs Shiv Agro Chemicals Industries
Date of Order: 18 April 2006
Case No.: C.S. No. 862 of 2004
Neutral Citation: (2006) 2 MLJ 834, 2006 (32) PTC 434 (MAD)
Name of Court: Madras High Court
Name of Judge: Justice P. Sathasivam, Justice J.A.K. Sampathkumar.

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Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539