The Karnataka High Court, Bengaluru, recently heard an appeal filed by M/s Sasken Technologies Limited against the order dated 20.01.2021 passed in I.A. No. 1, 2 and 3 in O.S.No. 6500/2020 passed by the VIII Additional City Civil Judge (CCH-10). In Sasken Technologies Ltd vs I Star Skill Development (P) Ltd & Anr.
Misc First Appeal No. 3951/2021, the plaintiff had approached the district court for an interim injunction to restrain the defendants from using “SALESKEN”, which was deceptively similar to their registered mark SASKEN. The City Civil Judge had refused to grant an injunction in favour of the plaintiff. Hence, the aggrieved plaintiff had filed the present appeal even though OS No. 6500/2020 was not yet conclusively decided, and only the IA for interim injunction was disposed of.
Background:
The Plaintiff company was originally incorporated in 1989 in India as ASIC Technologies Pvt Ltd. In 2000, the plaintiff changed its name to SASKEN Communication Technologies Pvt. Ltd. Ever since the year 2000, they have been using the name SASKEN for technological and allied services, including hardware designing, software development, device testing, and application development and has in the past three decades earned the goodwill of a wide range of customers, many of which are reputed Fortune 500 companies. The plaintiff is a global leader in digital transformation services and has offices in Japan, USA, Germany, Finland, UK, China, Mexico and India. The plaintiff’s mark “SASKEN” is registered in several classes in India and foreign jurisdictions and has been registered since 2000, with continuous use since then.
In July 2020, the plaintiff came across the use of the mark SALESKEN by the defendant companies through a newspaper article. Further investigation revealed that the defendants had registered the mark in class 42 on 16.08.2019 on a proposed to-be-used basis for technological services. The plaintiff also learned that Defendant no. 2 had even included the word SALESKEN in its corporate name, i.e. SALESKEN TECHNOLOGIES PVT. LTD. Defendants 1 and 2 also operated a website called www.salesken.ai to offer technological services using artificial intelligence and data analytics. As such, the plaintiff averred that there is considerable overlap in the area of operation as well as the nature of services rendered by the defendants and the plaintiff to confuse the minds of the customers due to the deceptive similarity of the words SASKEN and SALESKEN which are visually and phonetically similar and are offering similar services to identical customer base.
The plaintiff, therefore, filed O.S. No. 6500/2020 before the VIII City Civil Judge Bengaluru and sought an ad interim injunction against the use of SALESKEN by the Defendants. The defendants, on their part, entered appearance and denied all the allegations of the plaintiff. They clarified that their mark SALESKEN was registered in 2019 after due process by the competent authorities, and there is no room for confusion as the plaintiff is providing technological services while the defendant provides sales support services to enhance sales by use of Data analytics and Artificial Intelligence. Also, the fact that the suffix KEN is used in both SASKEN and SALESKEN does not make the words phonetically identical. The customer base, as well as the nature of services, was different according to the defendant, and as such, there is no room for confusion between the two marks. As such, the defendant argued that the suit filed by the plaintiff was not maintainable. Both parties relied on a plethora of cases in support of their respective stance.
Decision of the Court
Based on the averments of both the parties, the trial court considered the issue in the light of the decided cases. It held that while the case was being admitted for hearing, the plaintiff had failed to make a prima facie case for the grant of ad-interim injunction. As such, although the case was admitted for hearing, no interim injunction was granted to restrain the use of the mark SALESKEM by the Defendants herein.
Aggrieved by the decision of the Trial court, the plaintiff filed the instant appeal vide Miscellaneous First Appeal bearing no. 3951/2021(IPR) before the Karnataka High Court, Bengaluru. Once again, the plaintiff reiterated the need for an ad-interim injunction against the Defendants to stop them from using the deceptively similar name SALESKEN and its derivatives and formative marks, which was riding on the goodwill earned by the plaintiff over the past three decades of using the mark SASKEN.
The court examined the issue at hand in detail in light of the decided case laws cited by both the parties and the trademark registrations furnished by both parties. Moreover, as explained by the plaintiff, SASKEN is derived from “SAS” for “Silicon Automation System” and “KEN” meaning “Knowledge”.
On the other hand, the defendant explained that SALESKEN is an acronym for “SYSTEM for APPROPRIATE LEAD ENGAGEMENT in SALES using KNOWLEDGE ENHANCING NUGGETS.
The court relied on the judgement of the Supreme Court as cited by the parties with respect to their respective stance and observed that in the matter of Cadilla Health Care Limited vs Cadilla Pharmaceuticals Ltd. 2001 (2) SCR 743, the Apex Court held that in deciding the issue of confusion the court must keep in mind the class of purchasers who are likely to purchase the goods bearing the marks, on their education and intelligence and the degree of care they will exercise in the purchase and use of the goods bearing the said marks. The same was also reiterated in examining the issue of confusion between Peter Scott whisky and Scotch Whisky in the matter of Khoday Distilleries Limited vs The Scotch Whisky Association & Ors 2008 (10 ) SCC 723.
The court further cited the Apex court’s judgement in Laxmikant Patel vs Chetan Bhai Shah 2002 (3) SCC 65 wherein the Supreme Court clarified that injunction is necessary only if there is a probability of confusion among the marks in the ordinary course of business. Similarly, in Midas Hygiene Industries Ltd vs Sudhir Bhatia 2004 28 PTC 121 SC, the Supreme Court opined that an injunction is necessary if there is a threat of infringement and passing-off action. But there, the names LAXMAN REKHA and MAGIC LAXMAN REKHA were practically identical, and as such, the facts do not match the present case.
Further, in T.V. Venugopal vs Ushodaya Enterprises 2011 (4) SCC 45, the Supreme Court considered in detail the test of a common field of activity to a common class of customers in respect of common services offered by the plaintiff and the defendant. It held that only in case of such overlap of class of customers and services is there a likelihood of injury to the rights of the party who holds prior registration of the deceptively similar mark. However, in the instant case, no common class of services is being catered to a common class of customers as per the material put on record by both parties. As such, there is no cause of injury to the Appellant herein.
Thus, on examining the records placed before the court, the Hon’ble Judge reiterated that the logo, number of letters, and the manner in which SASKEN and SALESKEN are written are completely different. Further, the court held that as per Section 28(3) read with Sections 30 and 31 of the Trademarks Act, a registered owner of a trademark cannot be restrained from the use of the registered trademark by any other trademark owner till the matter is conclusively decided by the appropriate forum before which the dispute is pending adjudication. As such, given that the visual depiction of the plaintiff’s mark shows a red coloured prism with SASKEN written in capital letters and the mark of the defendant has ‘salesken’ written in the lower case along with a square logo predominantly in black colour with a red colour tick mark in the left part of the black square. As such, there is no possibility of causing any confusion in the pictorial representation or the phonetic sound of the words.
Based on the foregoing deliberations, the court dismissed the instant appeal, and no interim injunction was granted against the defendants, even by the Appellate Court. The court also held that during a hearing for the grant of a temporary injunction, the court could not hold a mini-trial and pre-empt the outcome of the dispute in the interim injunction stage.
Authors: Manisha Singh and Puja Tiwari
First Published by: Mondaq Here