The “Eenadu” dispute: Secondary meaning constitutes the crux

Lex Orbis
Manisha Singh Nair
[email protected]

In a very recent judgment, the Supreme Court of India decided against an incense stick company from using the mark “Eenadu” in the course of its trade, noting that it had clearly attempted to utilise the reputation and goodwill of the Respondents.

The Appellant is the sole proprietor of a firm carrying on business as a manufacturer of and dealer in incense sticks (agarbathis) in the name and style of Ashika Incense Incorporated of Bangalore. It had started its business in 1988 and had adopted the mark “Ashika Eenadu”. The Respondent company is Ushodaya Enterprises, which publishes a newspaper in Telugu, 'Eenadu'.

In 1999, Ushodaya Enterprises filed a suit for infringement of copyright and passing-off trademark and the appellant was restrained from using the expression “Eenadu”. Aggrieved, the appellant moved its case to the High Court of Andhra Pradesh at Hyderabad. The case was subsequently decided by a single judge and then later by a Division Bench of the Andhra Pradesh High Court. The present case came before The Supreme Court as an appeal from this decision.

The Appellant contended that the lower courts had acted erroneously by not appreciating the distinction between the existence of a copyright and its infringement. It argued that Ushodaya had been aware of the appellant's business since February 27 1995 and had delayed approaching the court, and as such it was not entitled to the relief. Further, the Appellant brought notice to the question whether an action for passing-off could be maintained and injunction granted for use of the word “Eenadu”, which according to it is a common word literally meaning “today” in Telugu, and “this land/our land” in Kannada, Tamil and Malayalam. The Appellant further contended that its business and Ushodaya's are entirely different.

Ushodaya Enterprises, denying all of the Appellant's averments stated thus:

- The essence of an action of passing-off is an attack on or dilution or benefiting from the goodwill and reputation of another person.

- If the goodwill and reputation enjoyed by a certain mark is sufficiently wide and the name is associated with the source in a more general way rather than restricted only to a given product, then the use of such name by another trader for even a totally different product could amount to a passing-off.

- A generic mark does not constitute an action of passing off.

- In the case of a descriptive mark, an action of passing off would arise if it can be established that it has become a household name of such a nature as to have acquired a strong secondary meaning and it is associated substantially with the first trader using the mark.

The Appellant said that concepts like well-known marks, dilution, etc. as statutorily applicable under the 1999 Act had no application in this case. It therefore stated that this case as decided by all the courts below, is a case of passing off and not of dilution. The Appellant further stressed that dilution is a completely different concept from passing-off, in as much as there is no confusion in dilution. “Eenadu” being a common word cannot be said to be enjoying the reputation of marks like “Harrods” and “Benz”, and granting a monopoly in favor of Ushodaya for such a common word on the ground of dilution would amount to vesting a monopoly to a generic/descriptive word. It was further submitted that the mark “Eenadu” is descriptive rather than distinctive. A secondary meaning may accrue in its favour with respect to only newspapers and nothing more.

Ushodaya Enterprises submitted that “Eenadu” is not a common Telegu word meaning “today” and has acquired a secondary meaning. Further, the Appellant had failed to note that “Eenadu” Group is inter alia a publisher of the second largest regional daily circulating in India and the largest in Andhra Pradesh. Moreover, the fact that the Appellant company had started selling its products in Andhra Pradesh in 1995 with the name “Eenadu” for agarbathies, using the same artistic script, font and method of writing the name as that of the Respondent companies' was too much of a coincidence. It was contended that “Eenadu” is not a generic name and in fact would be a “fancy” name outside of the state of Andhra Pradesh.

Ushodaya Enterprises referred to a plethora of previous case laws in order to make the law of passing-off clearer. One such case is that of Reckitt & Colman Products LTd. V. Borden Inc. and others where it was held that the underlying principle of an action for passing off is that, “a man is not to sell his own goods under the pretence that they are the goods of another man”. Regarding the question of delay which the Appellant had raised, Ushodaya submitted that mere delay in bringing an action will not be defeated once there is a dishonest intention to adopt the mark because in case of continuing tort, fresh period of limitation begins to run every moment of the time during which the breach continues.

The Court observed that the Respondent company's mark “Eenadu” has acquired extra-ordinary reputation and goodwill in the state of Andhra Pradesh. The said word, although descriptive, has acquired a secondary or subsidiary meaning and is fully identified with the Ushodaya's products and services. Against such background, the Appellant cannot be said to have an honest intention to use the mark. The Court articulated that allowing the Appellant to sell his product under the mark “Eenadu” would definitely cause confusion in the minds of the consumers who would believe that the Appellant's products are in fact the products of the Respondents, and as such would lead to eroding the extraordinary reputation and goodwill that the Respondent Company had acquired over a passage of time.