Delhi District Court
A Suit For Permanent Injunction ... vs Gift Pack & on 3 June, 2016
IN THE COURT OF SH. SANJAY KUMAR, ADDITIONAL
DISTRICT JUDGE-02, WEST, DELHI.
CS No. 11/14
M/s. Ozone Overseas Pvt. Ltd.
vs.
Mr. Vinodbhai Kacharabhai Talpara
ORDER
03.06.2016
1. A suit for permanent injunction restraining the defendant from infringement of Copyright, Passing off, delivery up, rendition of account etc. filed by M/s. Ozone Overseas Pvt. Ltd. (hereinafter referred to as 'plaintiff company') against Mr. Vinodbhai Kacharabhai Talpara, Proprietor of M/s. Indian Enterprises Mahadevwadi, Opposite Sitaram Mfg. 6, Umakant Pandit Ugyod Nagar, Rajkot-360004, Gujrat (hereinafter referred to as 'defendant company').
2. The suit is accompanied with an application under Order 39 Rule 1 & 2 CPC for ad-interim injunction. The plaintiff company seeks interim injunction for restraining the defendant company, their agents, servants, dealers, representatives and all other persons acting on their behalf from manufacturing, selling, offering for sale, advertising and/or dealing in any manner of door closure or any other goods under the impugned mark/label OZONE or any other mark/label deceptively similar to the plaintiff's trademark CS No. 11/14 Page No. 1/43 OZONE amounting to passing off the defendant's goods as that of the plaintiff and infringement of plaintiff's copyright in artwork of label OZONE.
3. In brief, the facts are that plaintiff company is a limited company and vide board resolution Sh. Amit Sehgal being Director filed the present suit as authorized vide Board Resolution of the plaintiff company. It is stated that plaintiff company carrying on old and established business of manufacture, sale and export of inter-alia doors and windows, metal building materials, fittings of metals for building, furniture, hardware items, hinges, locks and baluster fittings, door closing devices, door closures and floor springs, grills and railings of metal, guard railing of metal, safes of all kinds, parts, fittings and accessories thereof.
4. It is stated that the plaintiff has honestly and bonafidely adopted the Trademark OZONE in a special style and in a particular manner since 1999. The same has been used continuously, extensively and openly without any hindrance from any corner on the above said all the goods in India and abroad. The plaintiff company is owner of the registered trademark O-ZONE having registration number 858064 w.e.f. 26.05.1999 in respect of locks of all kinds, common metals and their alloys, metal building materials, ironmongery, small items of metal hardware, pipes and tubes of metal, safes, goods of common metal, kitchen sinks, hinges, door closers, parts and fittings thereof included in Class 6. The said Trademark was advertised in Trademark journal no. 9998 (SPL2). The registration is valid, subsisting CS No. 11/14 Page No. 2/43 and in full force. The said registered trademark has been assigned by the plaintiff's sister concern M/s. Jaycee overseas Inc. in favour of the plaintiff.
5. It is stated that the plaintiff company is owner of the registered trademark O-ZONE having registration number 858065 w.e.f. 26.05.1999 in respect of household or kitchen utensils and containers, plastic bottles, glassware and pressure cookers included in Class 21. The said Trademark was advertised in Trademark journal no. 9998 (SPL1). The registration is valid, subsisting and in full force. The said registered trademark has been assigned by the plaintiff's sister concern M/s. Jaycee overseas Inc. in favour of the plaintiff.
6. It is stated that the plaintiff company is owner of the registered trademark O-ZONE having registration number 858063 w.e.f. 26.05.1999 in respect of hand tools and implements, cutlery, parts and fittings included in Class 8. The said Trademark was advertised in Trademark journal no. 9998 (SPL2). The registration is valid, subsisting and in full force. The said registered trademark has been assigned by the plaintiff's sister concern M/s. Jaycee overseas Inc. in favour of the plaintiff.
7. It is stated that the plaintiff company is owner of the registered trademark O-ZONE having registration number 858062 w.e.f. 26.05.1999 in respect of scientific, electric and electronic apparatus and instruments, life saving and teaching apparatus and instruments, apparatus for recording, CS No. 11/14 Page No. 3/43 transmission of sound images, computers, cash registeres, calculating machine, electric wires and cables and electrical accessories, parts and fittings thereof included in Class 9. The said Trademark was advertised in Trademark journal no. 1343. The registration is valid, subsisting and in full force. The said registered trademark has been assigned by the plaintiff's sister concern M/s. Jaycee overseas Inc. in favour of the plaintiff.
8. It is stated that the plaintiff company is owner of the registered trademark O-ZONE having registration number 858061 w.e.f. 26.05.1999 in Class 11. The said Trademark was advertised in Trademark journal no. 1343. The registration is valid, subsisting and in full force. The said registered trademark has been assigned by the plaintiff's sister concern M/s. Jaycee overseas Inc. in favour of the plaintiff.
9. It is stated that the plaintiff company is owner of the registered trademark OZONE having registration number 1184700 dated 21.03.2003 in respect of appliances for heating, cooling, cooking, lighting, air circulating, air ventilating included in Class 11. The said Trademark was advertised in Trademark journal no. 1328 (S-1). The registration is valid, subsisting and in full force.
10. It is stated that the plaintiff company is owner of the registered trademark OZONE having registration number 1334470 dated 25.01.2005 in respect of glass and glassware solid, tempered, toughened included in Class 21. The said CS No. 11/14 Page No. 4/43 Trademark was advertised in Trademark journal no. 1329 (S-
1). The registration is valid, subsisting and in full force.
11. It is stated that the plaintiff company is owner of the registered trademark OZONE TUFF having registration number 1334469 dated 25.01.2005 in Class 21. The said Trademark was advertised in Trademark journal no. 1347. The registration is valid, subsisting and in full force.
12. It is stated that the trademark OZONE is represented in a special style, get up, design, font, writing style, colour combination etc. and the same is an original art work and the copyright vests in such art work of label OZONE. The said art work of label OZONE has been prepared by Mr. Sanjiv Bhati for the plaintiff in the year 2000 on taking consideration. Thus the plaintiff is the owner of the copyright of art work in label OZONE.
13. It is stated that the word OZONE is the most imminent features of the trading style of the plaintiff company i.e. OZONE OVERSEAS PVT. LTD. and such imitation of any identical or deceptively similar mark as the plaintiff's trademark OZONE shall always associate the impugned mark with the plaintiff concern only.
14. It is stated that the plaintiff has spent enormous amount of money, time and labour in building up the trademark OZONE. The plaintiff's trademark OZONE has been vastly advertised through various medias including advertisement in newspapers, magazines etc. As a result of CS No. 11/14 Page No. 5/43 extensive sale of the said goods under the trademark OZONE coupled with publicity in the past years, the trademark OZONE of plaintiff company has acquired enviable reputation and goodwill and is synonymous exclusively with the plaintiff company.
15. It is stated that the trademark OZONE is vital and important identity of the plaintiff company as it is an integral part of the trading style/corporate name and the same is being used by plaintiff company since the year 1999. It is stated that any abridgment or accretion to the word OZONE by any third party will create an impression in the minds of the innocent purchasers that the goods or products under the trademark OZONE of the third party are manufactured, distributed or dealt with by the plaintiff company.
16. It is stated that use in any manner of any mark identical or deceptively similar to the plaintiff's trademark OZONE will seriously affect the reputation and goodwill gained by the plaintiff company over the years through investments of huge money, sales promotion and labour and it will certainly cause confusion amongst the public or members of trade and will cause difficulty to them in discerning the source of the product. The plaintiff has vast consumer base of its products under the trademark OZONE which reflect confidence and credit amongst the public and members of trade of the plaintiff's products under the trademark OZONE.
CS No. 11/14 Page No. 6/4317. It is stated that in the first week of May, 2010, the plaintiff came to know about the defendant's impugned mark CELLOZONE. Then the plaintiff issued legal notice dated 08.05.2010 inter-alia called upon the defendant to desist from using impugned mark CELLOZONE. The defendant sent frivolous reply dated 11.06.2010 whereby refused to comply the legal notice and informed about registration of the impugned mark CELLOZONE. As the defendant has got registration of deceptively similar mark/label CELLOZONE on the basis of false claim and by misleading to the Registrar of Trademarks, the plaintiff filed rectification application dated 02.08.2010 before the Registrar of Trademarks for canceling the registration of the defendant's impugned mark/label CELLOZONE.
18. It is stated that the plaintiff could not find the defendant's product under the impugned mark/label CELLOZONE on that time and therefore, did not immediately rush to the Hon'ble Court. However the plaintiff in the last week of December 2013 came to know that the defendant's door closures under the mark/label CELLOZONE are being sold in Chabri Bazar Delhi and other parts of Delhi including within jurisdiction of this Hon'ble Court in clandestine manner without issuing sale invoice. It has also come in the plaintiff's notice that the defendant is advertising its impugned products under the mark/label CELLOZONE on the website www.indiamart.com which is easily accessible by the public of Delhi including public residing within jurisdiction of this Hon'ble Court and the defendant's products are purchased through the said website.
CS No. 11/14 Page No. 7/4319. It is stated that defendant company with malafide intention to make illegal profit has adopted and used deceptively similar mark/label CELLOZONE (hereinafter referred to as 'impugned mark'). The defendant company has no right to use the impugned mark/label CELLOZONE or any other mark deceptively similar to the plaintiffs trademark OZONE. The plaintiff company is prior user and registered proprietor of its well known trademark OZONE and as such use of the impugned mark/label CELLOZONE by the defendant would cause eventual erosion of the distinctive character of the plaintiff's trademark OZONE and would also cause heavy financial loss to the plaintiff's business under the trademark OZONE and irreparable loss and injury to the goodwill and reputation of the plaintiff's trademark and its business under the trademark OZONE.
20. It is stated that the defendant has adopted and used the impugned mark/label CELLOZONE which is structurally, phonetically and visually similar to the plaintiff's registered trademark OZONE, in respect of similar/allied/cognate goods. The impugned label CELLOZONE of the defendant has been prepared by keeping the plaintiff's label OZONE as a model or guide. The defendant has reproduced the plaintiff's trademark/label OZONE on its packaging and selling the inferior quality products and caused confusion or deception amongst unwary purchasers and members of trade. The adoption and use of the impugned mark by the defendant is dishonest and malafide and and making illegal profits. Therefore, defendant is guilty of passing off its inferior goods.
CS No. 11/14 Page No. 8/4321. It is stated that the buyers with ordinary average intelligence are bound to be mislead in purchasing the defendant's inferior products under the impugned mark of defendant company. The plaintiff company suffer from gross irreparable loss and injury to its goodwill and reputation apart from heavy financial loss. The plaintiff has already suffered enormous loss financially as well as to its name and reputation due to unlawful and illegal activities of the defendant and the same will be perpetuated unless the defendant is restrained immediately and permanently from using the impugned mark CELLOZONE.
22. It is stated that the plaintiff has no source to know the quantum of profits earned by the defendant by selling the goods under the impugned mark CELLOZONE which can only be ascertained after rendition of accounts of the defendant at the final stages.
23. The defendant company filed detailed written statement and reply to the interim application. The Preliminary Objections taken that the defendant company is having its office at Umakant Pandit Udognagar, Behind Balkrishna Engineering, Gulabwadi, Rajkot 4 (Gujarat) and manufacturing and marketing Door Closer under the trademark CELLOZONE registered under Class 06 having registration no. 1416916 since 01.07.2005. It is stated that trademark CELLOZONE being highly distinctive mark of the defendant has acquired unique reputation in the minds of purchasing public and the members of the trade on account of quality products, extensive use and vast publicity.
CS No. 11/14 Page No. 9/4324. It is stated that the trademark CELLOZONE during the course of time, has become a very well known mark and as such the reputation which has accrued to the said registered trademark is not only confined to the goods for which the defendant has used the said trademark but also extends to all other goods including those as are cognate or allied in nature and/or goods of the same description. The defendant's company trademark has become high distinctive on account of the nature and character of the mark and also long use thereof.
25. It is stated that the valuable common law rights that have accrued, the defendant holds statutory rights by virtue of registration of the trademark CELLOZONE (Label) under registration no. 1416916 in respect of Door Closer included in Class 06 under the provisions of Trademarks Act, 1999 and the registration is still valid and subsisting. The defendant company has statutory right to use the trademark CELLOZONE.
26. It is stated that the trademark CELLOZONE is neither identical nor similar to the plaintiff's alleged mark OZONE. Defendant's aforesaid label mark is visually, structurally, phonetically and conceptually entirely different and distant. The mark CELLOZONE has been honestly and bonafidely adopted by the defendant and openly, continuously, extensively, exclusively and uninterruptedly used since 01.07.2005. It is further stated that goods under the registered label mark CELLOZONE have been identified CS No. 11/14 Page No. 10/43 and recognized by the esteemed customers of the defendant as the quality products originating from the defendant only and none else and same commands substantial reputation and goodwill and is exclusively associated with the goods of the defendant company.
27. It is stated that the defendant's mark CELLOZONE in no manner similar to the getup, design, layout, colour combination, font, writing style, etc. or the plaintiff's label OZONE as alleged. The plaintiff's cannot claim any right on the word OZONE as the same is barred under Section 13 (a) of Trademarks Act, 1999. Ozone is a single molecule of three atoms of Oxygen and is denoted as O3. Hence, the plaintiff's registration of the mark OZONE is barred under Section 13
(a). The plaintiff cannot claim any exclusive right to use the mark OZONE or prevent others from use of such a word.
28. It is stated that OZONE is a dictionary word. Any person is entitled to use the mark as part of their trademark. Both the marks are visually, phonetically and structurally different. There are large numbers of person using trademark containing the mark ZONE or OZONE. There are large number of marks registered containing ZONE or OZONE as part of the trademark. The feature of ZONE and OZONE is common to the trade. The plaintiff does not have any exclusive right on such common feature. It is further stated that large number of personnel are employed by the defendant in the course of its business activity for selling and promoting the goods under the mark CELLOZONE and such persons will be adversely affected if any injunction is passed against the defendant company.
CS No. 11/14 Page No. 11/4329. On merits all the averments are denied. It is stated that plaintiff company has not filed any document to show use of the mark OZONE. Even the copies of alleged bills and promotion do not indicate the word OZONE. It is stated that as per provisions of Section 9 of the Trademarks Act, the mark deserves to be rectified. It is further stated that registrations are liable for cancellation under Section 47 and 57 of Trademarks Act and after search it has been found that as per record of Registrar of Trademarks, large number of prior marks and other marks which have ZONE and/or OZONE as part of the trademark. Therefore, trademark of plaintiff company was liable to be rejected under Section 11 of the Trademarks Act.
30. It is stated that the plaintiff company was called upon to name the shop or place where sample was obtained from Chawri Bazar, Delhi, otherwise adverse inference be drawn against the plaintiff company as the statement is not only false statement but also mislead the court. Defendant relied on the preliminary objections as a part of written statement and reply.
31. Plaintiff filed replication to the written statement and rejoinder to the reply to application under Order 39 Rule 1 & 2 CPC and reiterated the averments made in the plaint and application.
32. I have heard Sh. A.K. Goel, Ld. Counsel for the plaintiff and Sh. P.C. Arya, Ld. Counsel for the defendant and perused the record.
CS No. 11/14 Page No. 12/4333. Ld. Counsel for the plaintiff relied on the following judgments in support of his submissions:
(1). Indian Shaving products Ltd. & Anr. vs. Gift Pack & Anr., 1998 PTC (18).
(2). Pearl Retail Solutions Pvt. Ltd. vs. Pearl Education Society, 2014 (58) PTC 26 (Del).
(3). Frito-Lay India & Ors. vs. Radesh Foods & Anr., 2009 (40) PTC 37 (Del.) (4). RSPL Health Private Limited vs. Deep Industry, 2015 (61) PTC 438 (Del).
5. Win-Medicare Pvt. Ltd. vs. Galpha Laboratories Ltd. & Ors., 2016 (65) PTC 506 (Del).
6. Senge Himalayan Ceramics vs. Shri Ram & Company, 2016 (65) PTC 193 (Del).
7. Pankaj Goel vs. Dabur India Ltd., 2008 (38) PTC 49 (Del.) (DB)
8. Pankaj Goel vs. Dabur India Limited, Order dated 17.11.2008 in Special Leave to Appeal (Civil) No. 26742/2008.
9. Exxon Mobil Corporation & Anr. vs. Pankaj Sukhia & Anr., Order passed by Hon'ble High Court in CS (OS) 2059/2014 dated 16.07.2014.
34. Ld. Counsel for the defendant relied on the following judgments in support of his submissions:
(1). Ultra Home Construction Pvt. Ltd. vs. Purushottam Kumar Chaubey, 2016 SCC OnLine Del : (2016) 227 DLT 320 (DB).CS No. 11/14 Page No. 13/43
(2). Tech Plus media Private Ltd. vs. Jyoti Janda and Ors., decided by Mr. Justice Rajiv Sahai Endlaw of Delhi High Court on 29.09.2014.
(3). Pankaj Goel vs. Dabur India Ltd., 2008 (38) PTC 49 (Del) (DB).
(4). Yonex Kabushiki Kaisha vs. Phillips International and Anr., decided by Hon'ble High Court of Delhi on 20.08.2007 in IA No. 5947/2004 in CS (OS) No. 983/2004.
(5). P.M. Dissels Pvt. Ltd. vs. Thukral Mechanical Works, AIR 1988 Delhi 282.
(6). Rana Steels vs. Ran India Steels Pvt. Ltd., 2008 (37) PTC 24 (Del.).
(7). Smt. Harbans Kaur vs. Gurmarg Appliances Pvt. Ltd. & Ors., MANU/DE/4420/2009.
(8). Sau. Pritikiran Rajendra Katole vs. Sau.Harsha Ravindra Katole, MANU/MH/2115/2013.
(9). A. Habeebur Raliman Sons vs. Rajender Trading as Rajender and Sons, MANU/TN/4284/2010.
(10). Goenka Institute of Education and Research vs. Anjani Kumar Goenka and Anr., MANU/DE/2229/2009.
CS No. 11/14 Page No. 14/43(11). London Rubber Co. Ltd. vs. Durex Products, MANU/SC/0134/1943.
(12). S.K. Sachdeva & Anr. vs. Shri Educare Limited & Anr., 2016 (65) PTC 614 (Del) (DB).
(13). Canon Kabushiki Kaisha vs. B. Mahajan & Ors., 2007 (97) DRJ 140.
(14). Skyline Education Institute (India) Private Limited vs. S.L. Vaswani and Another, (2010) 2 SCC 142.
(15). IHHR Hospitality Pvt. Ltd. vs. Bestech India Pvt. Ltd., 2012 SCC OnLine Del 2713: AIR 2013 Del 32.
(16). Three-N-Products Private Limited vs. Emami Limited and Emami Limited vs. Three-N-Products Private Limited, MANU/WB/0011/2010.
(17). Marc Enterprises Pvt. Ltd. vs. Five Star Electricals (India) and Anr., MANU/DE/0377/2008.
(18). M/s Power Control Appliances and Others vs. Sumeet Machines Pvt. Ltd. With Sumeet Research and Holdings vs. Sumeet machines and Another, (1994) 2 SCC 448.
(19). Ranbaxy Laboratories Limited vs. Intas Pharmaceuticals Ltd. And Ors., MANU/DE/3170/2011.
CS No. 11/14 Page No. 15/43(20). S.P. Chengalvaraya Naidu (dead) by L.Rs. vs. jagannath (dead) by L.Rs. and others, MANU/SC/0192/1994.
(21). Commissioner of Central Excise vs. Primella Sanitary Products Pvt. Ltd., 2005 (31) PTC 196 (SC).
(22). Ozone Spa Pvt. Ltd. vs. Ozone Club, MANU/DE/0151/2010. (23). Senor Laboratories Ltd. v. Jagsonpal Pharmaceuticals Ltd. (Division Bench), 1998 SCC OnLine Del 496 : AIR 1999 Del 102. (24). F.Hoffmann-la-Roche & Co. Ltd. vs. Geoffrey
Manner & Co. Pvt. Ltd., MANU/SC/0302/1969.
(25). GUFIC Ltd. v. Clinique Laboratories, LLC, 2010 SCC OnLine Del 2322.
(26). S.M. Chopra & Sons vs. Rajendra Prosad Srivastava, 1988 SCC OnLine Cal 13 : AIR 1988 Cal 326.
(27). Hindustan Sanitaryware and Industries Ltd. vs. Champion Ceramic, MANU/DE/0094/2011.
(28). Mandali Ranganna and Others vs. T. Ramachandra and Others, (2008) 11 SCC 1.
CS No. 11/14 Page No. 16/43(29). Pawan Deep Singh Bahl vs. Princep Supply Agency CF, 2013 SCC OnLine Del 4920.
(30). P.P. Jewellers Pvt. Ltd. & Anr. vs. P.P. Buildwell Pvt. Ltd., 2010 SCC OnLine Del 932: (2010) 169 DLT 35 (DB).
(31). Wander Ltd. And Another vs. Antox India P. Ltd., 1990 (Supp) SCC 727.
(32). Dabur India vs. Alka Ayurvedic, 2009 (112) DRJ
241. (33). Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73.
(34). J & P Coats Ltd. vs. Popular Thread Mills, 1996 (39) DRJ (DB).
(35). BDA Private Ltd. vs. Paul P. John & Anr., 2008 SCC OnLine Del 799: (2008) 152 DLT 405.
(36). Victory Transport Co. Pvt. Ltd. vs. The District Judge, Ghaziabad & others, 1981 SCC OnLine All 581:
AIR 1981 All 421: (1981) 7 ALR (SUM 148) 165.
35. I have considered the respective submissions of both the Counsels and also gone through the catena of judgments cited by both the parties. After going through the judgments of Hon'ble Delhi High Court in two recent cases has crystallized the law in the present facts and CS No. 11/14 Page No. 17/43 circumstances of the case. The judgments are Win-
Medicare Pvt. Ltd. (Supra) and Senge Himalayan Ceramics (Supra) considering most of the judgments referred by both the parties. It is admitted case of the parties that the present case is for the passing off. Further, in order to appreciate the respective contentions of the parties, a detailed scrutiny is required of the respective trade marks/labels/packaging of the products of both the parties. The scanned copy of both the labels and trademarks is placed as under:
36. In the judgment of Senge Himalayan Ceramics (Supra), Hon'ble Delhi High Court held and observed the concept of prior user passing off and grant of injunctions against the registered property. It has been observed in para CS No. 11/14 Page No. 18/43 no. 35 and 36 of the judgment that :
"35. Even the test of confusion and deception in order to prove the case of passing off has been very well discussed in case of Laxmikant V. Patel v. Chetanbhat Shah and Another, report in (2002) 3 SCC 65: 2002 (24) PTC 1 (SC), wherein the Supreme Court while considering a plea of passing off and grant of ad interim injunction held in no uncertain terms that a person may sell his goods or deliver his services under a trading name or style which, with the passage of time, may acquire a reputation or goodwill and may become a property to be protected by the Courts. It was held that a competition initiating sale of goods or services in the same name or by imitating that name causes injury to the business of one who has the property in that name. It was held that honesty and fair play are and ought to be the basic policy in the world of business and when a person adopts or intends to adopt a name which already belongs to someone else, it results in confusion, has the propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.
It was also held in Laxmikant v. Patel (supra) that the principles which apply to trademark are applicable to trade name also. Para 10 of the aforesaid judgment reads as under:
"The law does not permit anyone to carry on his business in such a way as would persuade the customers or clients in believing that his goods or services belonging to someone else are his or are associated therewith. It does not matter whether the 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 or diverting the customers and clients of someone else to himself and thereby resulting in injury."
In this case, the Supreme Court further observed that:
"Where there is probability of confusion in business, an CS No. 11/14 Page No. 19/43 injunction will be granted even though the defendants adopted the name innocently."
36. As far as prior user is concerned, in the very recent judgment delivered by the Supreme Court in the case of Neon Laboratories Ltd. v. Medical Technologies Ltd. And Ors., 2015 (64) PTC 225 (SC), the same aspect has been dealt with wherein by referring to another decision of the Supreme Court in S. Syed Mohideen v. P. Sulochana Bai 2015 (7) SCALE 136, prior to the Neon's case (supra) it was held as under:
"The 'first in the market' test has always enjoyed preeminence. We shall not burden this judgment by referring to the several precedents that can be found apposite to the subject. In the interest of prolixity we may mention only N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714: 1996 (16) PTC 583 (SC) and Milmet Oftho Industries v. Allergan Inc. (2004) 12 SCC 624. In Whirpool, the worldwide prior user was given preference nay predominance over the registered trademark in India of the defendant. In Milmet, the marks of pharmaceutical preparation were similar but the prior user worldwide had not registered its mark in India whereas its adversary had done so. This Court approved the grant of an injunction in favour of the prior user. Additionally, in the recent decision in S. Syed Mohiden vs. P. Sulochana Bai (2015) 7 SCALE 136, this Court has pithily underscored that the rights in a passing-off action emanate from common law and not from statutory provisions, nevertheless the prior user's rights will override those of a subsequent user even though it had been accorded registration of its trademark. Learned Counsel for the Defendant-
Appellant has endeavoured to minimize the relevance of Whirpool as well as Milmet by drawing the distinction that those trademarks had attained world-wide reputation.
However, we think that as world shrinks almost to global village, the relevance of the transnational nature of a trademark will progressively diminish into insignificance. In other words, the attainment of valuable goodwill will have ever increasing importance. At the present stage, the argument in favour of the Defendant-Appellant that we find holds more water is that in both Milmet and Whirpool, as distinct from the CS No. 11/14 Page No. 20/43 case before us, the prior user of the successful party predated the date of application for registration of the competing party.
The question to examine, then, would be whether prior user would have to be anterior to the date of application or prior to the user by the Defendant- Appellant. In other words, the question before the Court would remain whether the situation on the date of app0lication for registration alone would be relevant, or whether the developments in the period between this date and the date of grant of registration would have any bearing on the rights of the parties. All these considerations will be cast into a curial cauldron to be appreciated by the Court before which the suit is being contested. In these premises, we cannot conclude that a prima facie case has not been disclosed by the Plaintiff-Respondents."
37. In the case of Win-Medicare Pvt. Ltd. (Supra), it has been held and observed in para 26 and 27 that :
"26. It is rightly mentioned in McCarthy on Trade Marks and Unfair Competition about the anti-dissection Rule, particularly, in para 23.15 which is reproduced here as under:
"23.15 Comparing Marks: Differences v. Similarities [1] The Anti-Dissection Rule [a] Compare composites as a Whole Conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their component parts for comparison. This is the "anti-dissection" rule. The rationale for the rule is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the CS No. 11/14 Page No. 21/43 mark as a whole, not by its component parts. However, it is not a violation of the anti-dissection rule to view the component parts of conflicting composite marks as preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole. Thus, conflicting marks must be compared in their entireties. A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parties thereof, that is important. As the Supreme Court observed: "The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety."
The anti-dissection rule is based upon a common sense observation of customer behavior: the typical shopper does not retain all of the individual details of a composite mark in his or her mind, but retains only an overall, general impression created by the composite as a whole. It is the overall impression created by the mark from the ordinary shopper's cursory observation in the marketplace that will or will not lead to a likelihood of confusion, not the impression created from a meticulous comparison as expressed in carefully weighed analysis in legal briefs.
CS No. 11/14 Page No. 22/43In litigation over the alleged similarity of marks, the owner will emphasize the similarities and the alleged infringer will emphasize the differences. The point is that the two marks should not be examined with a microscope to find the differences, for this is not the way the average purchaser views the marks. To the average buyer, the points of similarity are more important that minor points of difference. A court should not engage in "technical gymnastics" in an attempt to find some minor differences between conflicting marks. However, where there are both similarities and differences in the marks, there must be weighed against one another to see which predominate.
The rationale of the anti-dissection rule is based upon this assumption: "An average purchaser does not retain all the details of a mark, but rather the mental impression of the mark creates in its totality. It has been held to be a violation of the anti-dissection rule to focus upon the "prominent" feature of a mark and decide likely confusion solely upon that feature, ignoring all other elements of the mark. Similarly, it is improper to find that one portion of a composite mark has no trademark significance, leading to a direct comparison between only that which remains."
27. The Division Bench of this Court comprising of A.K. Sikri, J. and Rajiv Sahai Endlaw, J., delivered a CS No. 11/14 Page No. 23/43 judgment in the case of United Biotech (P) Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd., 2012 (5) PTC 433 (Del.) (DB) in which law pertaining to anti-dissection rule as well as the test of deceptively similarity have been dealt with in great detail. The Division Bench has also laid down the rules of comparison in para 32 of the judgment. Two rival trade marks in the matter decided by the Division Bench were ORZID and FORZID and it was held that two trademarks are visually and phonetically similar and would cause deception in the minds of the consumer in relation to medicine. The relevant paras of this judgment reads as under:
"30. The law on this aspect, where the Courts are called upon to consider the deceptive similarity between the two marks is firmly engraved in a series of judgments pronounced by the Courts in the last half century or more. Many are cited by the learned counsel for the appellant, note whereof is taken above. Judgment of Supreme Court in the case of Cadila Health Care Limited (supra), which deals with pharmaceutical preparations, is a milestone on law relating to drugs. Application of the principles laid down in this judgment can be found in scores of subsequent, judgments of this Court and other High Courts. The position which emerges from the reading of all these judgments can be summarized in the following manner:
In such case, the central issue is as to whether the Defendant's activities or proposed activities amount to CS No. 11/14 Page No. 24/43 a misrepresentation which is likely to injure the business or goodwill of the plaintiff and cause damage to his business or goodwill. Lto extend this use to answer this, focus has to be on the aspect as to whether the defendant is making some representation in course of trade to prospective customers which is calculated to injure the business of goodwill of the plaintiff thereby causing damage to him. In the process, difference between the confusion and deception is to be understood. This difference was explained by Lord Denning in "Difference : Confusion & Deception" in the following words:
"Looking to the natural meaning of the words, I would make two observations: first, the offending mark must 'so nearly resemble' the registered mark as to be 'likely' to deceive or cause confusion. It is not necessary that it should be intended to deceive or intended to cause confusion. You do not have to look into the mind of the user to see what he intended. It is its probable effect on ordinary people which you have to consider. No doubt if you find that he did intend to deceive or cause confusion, you will give him credit for success in his intentions. You will not hesitate to hold that his use of it is likely to decide or cause confusion. But if he had no such intention, and was completely honest, then you will look carefully to see whether it is likely to deceive or cause confusion before you find him guilty of infringement.CS No. 11/14 Page No. 25/43
Secondly, 'to deceive' is one thing. To 'cause confusion' is another. The difference is this: when you deceive a man, you tell him a lie. You make a false representation to him & thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but you still do it, & so you deceive him. But you may cause confusion without telling him a lie at all, & without making any false representation to him. You may indeed tell him the truth, the whole truth & nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because be has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so."
31. While examining the question of misrepresentation or deception, comparison has to be made between the two trademarks as a whole. Rules of Comparison was explained by Justice Parker in the following words:
"You must take the two words. You must judge of them, both by their look & by their sound. You must consider the goods to which they are to be applied. You must consider the nature & kind of customer who would be likely to busy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trademark for the goods of the respective owners of the marks. If, considering all those circumstances, you CS No. 11/14 Page No. 26/43 come to the conclusion that there will be confusion - that is to say, not necessarily that one man will be injured & the other will gain illicit benefit, but that there will be conclusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case."
32. Following Rules of Comparison can be culled out from various pronouncements of the Courts from time to time.
I. Meticulous Comparison not the correct way.
II. Mark must be compared as a whole.
III. First Impression.
IV. Prima Facie view not conclusive.
V. Structural Resemblance.
VI. Similarity in Idea to be considered.
33. In this process, first, plaintiff is required to prove the following:
(i) The business consists of, or includes selling a class of goods to which the particular trade name applies;
(ii) That the class of goods is clearly defined & is distinguished in the public mind from other goods;
(iii) Because of the reputation of the goods, there is goodwill in the name;
(iv) The Plaintiff is a member of the class selling the CS No. 11/14 Page No. 27/43 goods is the owner of goodwill which is of substantial value;
(v). He has suffered or is likely to suffer damage.
34. While comparing the few marks in order to see as to whether there is likelihood of confusion or not, following words of wisdom of the Supreme Court in Laxmikant V. Patel v. Chetanbhai Shah and Another, (2002) 3 SCC 65: 2002 (24) PTC 1 (SC) also need to be kept in mind:
"10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by limitating that name results in injury to the business of one who has the property in that name. 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 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 CS No. 11/14 Page No. 28/43 and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."
35. We would like to quote from the following passage from the book "The Modern Law of Trade Marks" authored by Christopher Morcom, butterworths 1999, which finds approval by the Supreme Court in Ramdev Food Products Ltd. (supra):
"The concept of distinguishing goods or services of the proprietor from those of others was to be found in the requirements for a mark to be registrable. Essentially, whatever the wording used, a trade mark or a service mark was an indication which enabled the goods or services from a particular source to be identified and thus distinguished from goods or services from other sources. In adopting a definition of 'trade mark' which simply describes the function in terms of capability of 'distinguishing the goods or services of one undertaking from those of other undertakings' the new law is really saying precisely the same thing."
37. The perusal of the judgment of the learned Single Judge would further demonstrate that 'Anti-dissection Rule' is discussed and applied holding that such a dissection is generally not permissible and can be applied only in exceptional cases. After taking note of the law on subject, the dissection of marks as suggested by the appellant is termed as 'artificial one'.
CS No. 11/14 Page No. 29/43We would do nothing but to extract the said discussion from the impugned order as we are in agreement with the same.
"23. No fault can also be found with the approach of the IPAB in comparing the two completing marks as a whole. That is in fact the rule and the dissection of a mark is an exception which is generally not permitted. The anti dissection rule is based upon a common sense observation of customer behaviour as explained in McCarthy on Trade Marks and Unfair Competition [J Thomas McCarthy, IV Ed., Clark Boardman Callaghan, 2007] under the sub-heading "Comparing Marks:
Differences and Similarities'. The treatise further states:
"23.15 .... The typical shopper does not retain all of the individual details of a composite mark in his or her mind, but retains only an overall, general impression crated by the composite as a whole. It is the overall impression created by the mark from the ordinary shopper's cursory observation in the marketplace that will or will not lead to a likelihood of conclusion, not the impression created from a meticulous comparison as expressed in carefully weighed analysis in legal briefs."
"In litigation over the alleged similarity of marks, the owner will emphasize the similarities and the alleged infringer will emphasize the differences. The point is that the two marks should not be examined with a microscope to find the differences, for this is not the way the average purchaser view the marks. To the CS No. 11/14 Page No. 30/43 average buyer, the points of similarity are the more important that minor points of difference. A court should not engage "technical gymnastics" in an attempt to find some minor differences between conflicting marks. However, where there are both similarities and differences in the marks, there must be weighed against one another to see which predominate."
24. The dissection of the marks as suggested by learned counsel for UBPL is an artificial one. He wanted 'ZID' which was the generic part of the marks to be substituted by some other word like 'TIS' or 'BES' and then the two marks to be compared. This submission is based on the decision in Astrazeneca UK Limited where 'Mero' was identified as the generic part of the mark derived from the active pharmaceutical ingredient. In the first place, no such submission appears to have been made before the IPAB. Secondly, the type of dissection suggested, i.e. separating 'FOR' and 'ZID' and then replacing 'ZID' with 'another word 'TIS' before comparing the marks does not appear to be permissible in law. As already noticed it is not just the generic part 'ZID' that is common to both marks. The further prefix 'OR' too is common. In other words, 'ORZID' is common to both marks. No parallel can there be drawn with the facts in Astrazeneca UK Limited. A person of average intelligence and imperfect recollection seeking to buy CEFTAZIDIME injection would hardly undertake any 'dissection' exercise, much less in the manner CS No. 11/14 Page No. 31/43 suggested by learned counsel for UBPL, to discern the fine distinction between the marks. Also, unlike a consumer durable product, the variations in the size of font, colour scheme, trade dress of the label for a medicine would not make much of a difference. In the considered view of the Court, the IPAB has applied the correct test in coming to the conclusion that FORZID is deceptively similar to ORZID."
38. A perusal from the bare eye of both the trademarks established that plaintiff uses OZONE in a particular distinctive and unique manner. The "O" has been designed as an artwork by the plaintiff company. Further, the plaintiff also uses this in his various bills filed on the record. On the other hand, the defendant's trademark CELLOZONE contains exactly the similar font as of plaintiff's trademark OZONE and has reversed the direction of unique design of "O" instead of right side tilted towards left and word CELL is attached to it. The documents filed by the defendant shows that none of his bill for years together mentioned the CELLOZONE trademark on a single bill. Therefore, defendant prima-facie has not able to show any documentary proof that defendants are independent, distinctive user of the trademark CELLOZONE. Prima-facie it appears from the above said documents filed in the court and the product label and package produced during the course of arguments that mark CELLOZONE is deceptively similar to the mark of plaintiff OZONE. Therefore, defendant is guilty of dishonesty for using the deceptively similar trademark of plaintiff in the identical products of Door Closers. The Door Closer being used, CS No. 11/14 Page No. 32/43 purchased and utilized by the Carpenters, generally infer of average intelligence so keeping in view their level of intelligence and nature of the product door closers, there is every likelihood of deception of trademark OZONE and CELLOZONE. Not only this, there would be likelihood of deception in the trade members as well.
39. Admittedly, the alleged use of the trademark CELLOZONE by the defendant is subsequent to the documented/registered use of trademark OZONE by the plaintiff for about 7 years prior to the defendant. The sale products of the plaintiff under the above said trademark for the year 2000-2001 was Rs.73.44 lacs and grew up to Rs.2,945.92 lacs by the year 2006 when the defendant allegedly started using the trademark. Further when the defendant got registered CELLOZONE trademark, the plaintiff has huge investment towards promotional expenses alone since 1999. It is apparent that the plaintiff has propriety of adoption/use of the trademark OZONE with unique feature and well accustomed with the customers, trade members and public at large on the day defendant adopted and commenced use in relation to the identical goods i.e. Door Closers. The defendant being involved in the same trade, ought to have been aware of the trade of the plaintiff and its Door Closer products available in the market under the trade name OZONE, which is clear as per the documents filed by plaintiff i.e. bills dated 21.01.2005, 22.01.2005, 24.01.2005, 28.01.2005. It is clear that adoption of a deceptively similar trademark and use of deceptively similar trade dress dishonestly shown the malafide intention of the defendant.
CS No. 11/14 Page No. 33/43The very adoption is tainted with dishonesty, no amount of use can cleanse the dishonesty. Therefore, there is no doubt that defendant knowingly adopted and used a deceptively similar mark CELLOZONE on an identical trade dress and packaging with distinctive feature of the plaintiff trademark in relation to identical products 'Door Closers'.
40. I do not find any substance in the contention of Ld. Counsel for the defendant that the registration of plaintiff's trademark is 'O-ZONE' for item for the Class 6 since year 1999 and also for Class 11 products. Similarly, the trademark 'OZONE' having "O" in a distinctive and unique matter for Class 21 products. It is pertinent to mention here that it is admitted case of the defendant that he has been manufacturing the Door Closers and adopted later impugned trademark/label CELLOZONE having all the unique features of trademark of plaintiff. It is further pertinent to mention here that as per document filed on record, the defendant himself admitted that there are two other trademarks apart from CELLOZONE adopted by the defendant company for hydraulic Door Closures i.e. 'Honest' and 'Keyo Poland'. There is no plausible reason explained when there are already two trademarks are being used by the defendant then why deceptively similar trademark of the plaintiff company adopted by the defendant company. The copy of trade marks of defendant company is placed on the next page:
CS No. 11/14 Page No. 34/4341. The defendant has no right to use the plaintiff's trademark in any manner in relation to its impugned goods and business or for any other specifications of goods and business whatsoever being in violation of the plaintiff's right. The use by defendant by its impugned adoption and user of impugned trademark is violative of the plaintiff's right in its CS No. 11/14 Page No. 35/43 said trademark OZONE with the word "CELL" in the similar font and size also. Therefore, there is a prima-facie case of passing off and enabling efforts to pass off their goods and business as that of the plaintiff. Further, the defendant was well aware of the plaintiff's right, goodwill, reputation, benefits and user etc. with a unique feature in the trademark of plaintiff OZONE. In these circumstances, prima-facie it is established that the defendant has adopted the impugned trademark dishonestly fraudulently and out of positive greed with a view to take advantage and to trade upon the established goodwill, reputation and proprietary rights of the plaintiff.
42. The defendant also raises the objection regarding the delay in filing of the present legal action against the defendant. Admittedly, the legal notice served upon the defendant on 08.05.2010 and present suit has been filed on 04.01.2014. In this regard there are catena of judgments cited by the parties. I have considered them. In the case of Pankaj Goel (Supra), Hon'ble Delhi High Court relying on the judgment of Amritdhara Pharmacy has held that :
"........... In any event, passing off is a recurring cause of action and delay a defence in equity would not be available if the Defendant's conduct is fraudulent - as is in the present case. Consequently in the present facts, delay and so-called concurrent use, if any, cannot be a ground for refusing interim injunction."
43. In the case of Win Medicare Pvt. Ltd. (supra), Hon'ble Delhi High Court has held that :
CS No. 11/14 Page No. 36/43"41. Now, with regard to question of delay, defendants submit that they have been using the mark in question since the year 2006 and the present suit was filed after eight years and the plaintiff had the knowledge about the use, thus there is delay in bringing an action. Thus, the plaintiff is not entitled to discretionary relief of injunction. There is no clinching, cogent and clear evidence available on record to show that the plaintiff was definitely aware about such user.
42. The issue of delay and acquiescence has been considered by Courts in various matters. Some of them are referred to as under:
a) In the case of Midas Hygiene Industries Pvt. Ltd.
v. Sudhir Bhatia and others, reported in 2004 (28) PTC 121, relevant para 5 of the said judgment reads as under:
"5. The law on the subject is well settled. In cases of infringement either of Trade Mark or of Copyright normally an injunction must follow. Mere delay in brining action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest."
b) In the case of Swarn Singh v. Usha Industries (india) and Anr., reported in AIR 1986 Delhi 343 (DB):
1986 (6) PTC 287 (Del) it was held as under:
"There is then the question of delay. Learned counsel for the respondents had urged that the delay is fatal to the grant of an injunction. We are not so satisfied. A delay in the matter of seeking an injunction may be a ground for refusing an injunction in certain circumstances. In the present case, we are dealing with a statutory right based on the provisions of the trade and Merchandise Marks Act, 1958. An exclusive right is granted by the registration to the holder of a registered trade mark. We do not think statutory rights can be lost by delay. The effect of a registered mark is so clearly defined in the statute as to be not capable of being misunderstood. Even if there is some delay, the exclusive right cannot be lost. The registered mark cannot be reduced to a nullity."
c) In the case of Hindustan Pencils Pvt. Ltd. v. M/s. India Stationery Products Co., reported in AIR 1990 CS No. 11/14 Page No. 37/43 Delhi 19: 1989 (9) PTC 61 (Del), it was held as under:
"29. If an action is taken by the registered owner and no interim injunction is granted, the effect is that goods bearing the infringing mark or spurious goods would continue to be sold in the market. After a number of years when the case is finally disposed of, after trial, and the plaintiff succeeds and gets a permanent injunction then, possibly, the plaintiff may also be compensated by his being awarded damages or an account of profits. In that sense the non-grant of the interim injunction would not ultimately, prejudice the plaintiff for he may be compensated with payment of money but during this period when the defendant is allowed to continue to infringe the intellectual property it is the consumer or the purchaser who alone suffers and who ultimately cannot be compensated. Therefore, in order to curb the menace of manufacture, production and sale of spurious goods and the blatant violation of intellectual property it will be proper for the Court to take into consideration the interest of the general public. In this regard reference may usefully be made to the following observations of McCarthy at page 346, para 30.21, which deals with the protection of third parties:
"Some Courts also consider the necessity of protecting third parties. In trade mark infringement cases, "third parties" means the buying public. If the equities are closely balanced, the right of the public not to be deceived or confused may turn the scales in favour of a preliminary injunction."
30. It would appear to be difficult to accept that relief of temporary injunction would not be granted, because of the delay on, the part of the plaintiff, even though the Courts feels, at that point of time, that, ultimately permanent injunction will have to be granted."
31. Even though there may be some doubt as to whether laces or acquiescence can deny the relief of a permanent injunction, judicial opinion has been consistent in holding that if the defendant acts fraudulently with the knowledge that he is violating the plaintiffs rights then in that case, even if there is an inordinate delay on the part of the plaintiff in taking action against the defendant, the relief of injunction is not denied. The defense of laces or inordinate delay is a CS No. 11/14 Page No. 38/43 defense in equity. Inequity both the parties mud's come to the Court with clean hands. An equitable defense can be put up by a party who has acted fairly and honestly. A person who is guilty of violating the law or infringing or usurping somebody else's right cannot clarify the continued misuse of the usurped right. It was observed by Romer, J. in the matter of an application brought be J.R. Parkington and Co. Ld., (1946) 63 RPC 171 at page 181 that "in my judgment, the circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user. If the user in its inception was tainted it would be difficult in most cases to purify it subsequently". It was further noted by the learned Judge in that case that he could not regard the discreditable origin of the user as cleansed by the subsequent history. In other words, the equitable relief will be afforded only to that party who is not guilty of a fraud and whose conduct shows that, there had been, on his part, an honest concurrent user of the mark in question. If a party, of no apparent or a valid reason, adopts, with or without modifications, a mark belonging to another, whether registered or not, it will be difficult for that party to avoid an order of injunction because the Court may rightly assume that such adoption of the mark by the party was noting honest one. The Court would be justified in concluding that the defendant, in such an action, wanted to cash in on the plaintiffs name and reputation and that was the sole, primary or the real motive of the defendant adopting such a mark. Even if, in such a case, there may be an inordinate delay on the part of the plaintiff in bringing a suit for injunction, the application of the plaintiff for an interim injunction cannot be dismissed on the ground that the defendant has been using the mark for a number of years. Dealing with this aspect Harry D. Nims in his "The Law of Unfair Competition and Trade Marks", Fourth Edition, Volume Two at page 1282 noted as follows:
"Where infringement is deliberate and willful and the defendant acts fraudulently with knowledge that he is violating plaintiffs rights, essential elements of estoppels are lacking and in such a case the protection CS No. 11/14 Page No. 39/43 of plaintiffs rights by injunctive relief never is properly denied. "The doctrine of estoppels can only be invoked to promote fair dealings".
d) In the case of M/s. Bengal Waterproof Limited vs. M/s. Bombay Waterproof Manufacturing Company and Another, reported in AIR 1997 SC 1398, it was held as under:
"20. ... It is now well settled that an action for passing off is a common law remedy being an action in substance of deceit under the Law of Torts. Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another be commits the act of such deceit. Similarly whenever and whereever a person commits breach of a registered trade mark of another he commits a recurring act of breach or infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. It is difficult to agree how in such a case when in historical past earlier suit was disposed of as technically not maintainable in absence of proper relief, for all times to come in future defendant of such a suit should be armed with a license to go on committing fresh acts of infringement and passing off with impunity without being subjected to any legal action against such future acts."
44. Now applying the law laid down by Hon'ble Supreme Court and Hon'ble High Court in the present case, I find that there is no ground on the account of delay and acquiescence for refusing the interim injunction.
45. Ld. Counsel for the defendant submitted that this court has no territorial jurisdiction to try and entertain the present case. The plaintiff has its registered office at Delhi whereas the defendant is having its registered office at Rajkot, Gujarat. He further submitted that plaintiff company has been trading all over India including Ahmadabad in CS No. 11/14 Page No. 40/43 Gujarat. He relied on judgment of Ultra Home Construction Pvt. Ltd. (Supra). On the other hand, Ld. Counsel for the plaintiff company submits that according to the judgment, plaintiff case filed in Sl. No.1 category because plaintiff has no branch office or registered office at Rajkot. Secondly, defendant company has been dealing in the trade on Internet as well and accessible to all over India and world. He submitted that as per judgment of Hon'ble Supreme Court in Indian Performing Rights Society Ltd. vs. Sanjay Dalia (2015) 10SCC 161.
46. In order to consider respective submissions, the para 14 of the judgment of Ultra Home Construction Pvt. Ltd. (Supra) is highlighted as under:
"14. It is evident from the above observations that the interpretation given to the expression "carries on business" in the context of a defendant under section 20 of the Code has also been employed in the context of a plaintiff under the said sections 134 (2) and 62 (2). Thus, in addition to the places where suits could be filed under section 20 of the Code, the plaintiff can also institute a suit under the Trade marks Act, 1999 and the Copyright Act 1957, as the case may be, by taking advantage of the provisions of section 134 (2) or section 62 (2), respectively. Both the latter provisions are in pari materia. Under these provisions four situations can be contemplated in the context of the plaintiff being a corporation (which includes a company). First of all, is the case where the plaintiff has a sole office. In such a case, even if the cause of action has arisen at a different place, the plaintiff can institute a suit at the place of the sole office. Next is the case where the plaintiff has a principal office at one place and a subordinate or branch office at another place and the cause of action has arisen at the place of the principal office. In such a case, the plaintiff may sue at CS No. 11/14 Page No. 41/43 the place of the principal office but cannot sue at the place of the subordinate office. The third case is where the plaintiff has a principal office at one place and the cause of action has arisen at the place where its subordinate office is located. In this eventuality, the plaintiff would be deemed to carry on business at the place of his subordinate office and not at the place of the principal office. Thus the plaintiff could sue at the place of the subordinate office and cannot sue (under the scheme of the provisions of section 134 (2) and 62 (2) at the place of the principal office. The fourth case is where the case of action neither arises at the place of the principal office nor at the place of the subordinate office but at some other place. In this case, the plaintiff would be deemed to carry on business at the place of its principal office and not at the place of the subordinate office. And, consequently, it could institute a suit at the place of its principal office but not at the place of its subordinate office. All these four cases are set out in the table below for greater clarity:
S. No. Place of Place of Place where Place where plaintiff's plaintiff's cause of plaintiff can Principal office Subordinat action additionally (Sole office in e/Branch arose sue under s. no.1) office section 134 (2) and section 62 (2) 1 A -- C A 2 A B A A 3 A B B B 4 A B C A
47. Now applying the principle in the present case, admittedly plaintiff company is having registered office at Delhi. There is no branch office in Rajkot where defendant company is situated. The defendant company has no other registered office in Gujarat where plaintiff company is also trading. Hence, as per above discussed table, plaintiff's case falls in category 1. Therefore, the Court at Delhi has territorial jurisdiction.
CS No. 11/14 Page No. 42/4348. On the basis of above observation and discussion, in the present facts and circumstances of the case, the plaintiff has made out a strong prima-facie case and plaintiff is the prior user of the trademark. Balance of convenience also lies in favour of the plaintiff and against the defendant as plaintiff has invested huge amount in acquiring goodwill and reputation in the trade. Therefore, plaintiff is also bound to suffer irreparable loss and injury due to deceptive impugned trademark of the defendant. Hence, the application under Order 39 Rule 1 & 2 read with Section 151 CPC is allowed accordingly. Thereby, the defendant company, their agents, servants, dealers, representatives and all other persons acting on their behalf are restrained from manufacturing, selling, offering for sale, advertising and/or dealing in any manner of door closer or any other goods under the impugned mark/label OZONE or any other mark/label deceptively similar to the plaintiff's trademark OZONE amounting to passing off the defendant's goods as that of the plaintiff and infringement of plaintiff's copyright in artwork of label OZONE, till the decision of the main suit.
49. Nothing expressed herein above shall tantamount to expression of opinion on the merits of the case. Announced in the open court today the 3rd June, 2016.
(Sanjay Kumar) ADJ-02,West/Delhi 03.06.2016 CS No. 11/14 Page No. 43/43