Kerala High Court
Tractors And Farm Equiptment Ltd. vs K.S. Sunil Kumar on 24 August, 2005
Author: K.P. Balachandran
Bench: K.P. Balachandran
JUDGMENT R. Bhaskaran, J.
1. This appeal is filed by the plaintiff in O.S. No. 27 of 2002 on the file of the District Court, Ernakulam. The suit was for declaration that the expression "INSTA POWER" is a descriptive term having direct reference to the words "INSTANT POWER" and the respondent cannot claim any monopoly over the said two words asserting any exclusive right and for a permanent prohibitory injunction restraining the defendant and their men from issuing threats to the plaintiff either directly or indirectly against the use of the expression "INSTA POWER" and threatening for legal action and interfering with the plaintiffs use of the expression "AMCO INSTA POWER" in any manner. There is also a claim for liquidated damages of Rs. 1,00,000 on account of the interference of the plaintiffs business. The trial Court has dismissed the suit finding that the words "INSTA POWER" was being used by the defendant for his products since 1998. The plaintiff was using "AMCO" as its trade mark and in the brochure of the plaintiffs "AMCO INSTA POWER" batteries and advertisements the word "AMCO" was not prominently written. But "INSTA POWER" was written in bright prominent letters. It was likely that public would be deceived. The defendant has already applied for registration of the words "INSTA POWER" Therefore, the threats and notices could not be said to be without any basis and the plaintiff is not entitled to succeed in the suit.
2. The averments in the plaint omitting unnecessary details are as follows. The plaintiff is a leading and well reputed manufacturer of Tractors and Farm Equipments for the last several decades. The plaintiff has started a division called TAFE Power Source Division to manufacture and market tubular and flat batteries having applications to UPS, Inverters, Telecommunication equipments etc. The plaintiff has obtained ISO 9002 and 14001 certification. Amco Batteries Limited is an associate company of the plaintiff. The said Amco batteries is the registered proprietor of the trademark AMCO registered under No. 261840 dated 8.1.1970 and 400669 dated 29.1.1983 in respect of Lead Acid storage batteries, electrical batteries etc. The plaintiff and Amco Batteries Limited are members of Amalgamations Group. Amco Batteries Limited have granted a licence in favour of the plaintiff to use the trade mark AMCO. In the course of business, the plaintiff have bona fide adopted a trade mark INSTA POWER for their tubular, flat and automotive batteries. The said trade mark was adopted by the plaintiff in the month of December, 2000 and they have advertised in the news papers in January, 2001. The plaintiff is using the trade mark in conjunction with the registered trade mark AMCO and its logo. Therefore, the plaintiff is using a composite mark AMCO INSTA POWER and not the word INSTA POWER per se. The trade mark INSTA POWER is a descriptive word having the meaning-instant power. The term INSTA is an abbreviation of the word instant. The batteries used for UPS and Inverters are meant for supply of instant power when there is a power cut. Therefore, the plaintiff adopted the said trade mark INSTA POWER for their tubular, flat and automotive batteries for UPS and inverters etc. The plaintiff have expended large amounts towards their literature, business, promotional activities etc. The product of the plaintiff are of high quality and have a reputation and goodwill. While So, the plaintiff received a legal notice issued by the defendant. It is stated in the notice that the defendant is a renowned manufacturer of storage batteries and that they are the true owners of the trade mark INSTA POWER and the defendant has applied for registration of trade mark in 1998. Therefore, the plaintiff was called upon to give up the use of the trade mark INSTA POWER failing which legal action was proposed against the plaintiff. According to the plaintiff, the issuance of the notice is a threat coming under Section 120 of the Trade and Merchandise Marks Act, 1958. The plaintiff is not using INSTA POWER alone but AMCO INSTA POWER and there is no likelihood of confusion or deception. The defendant has not obtained registration of trade mark INSTA POWER. The defendant cannot claim any proprietary right over a generic expression. There are several other manufacturers who are using the word INSTA POWER. The defendant has also preferred a private complaint before the Additional Chief Judicial Magistrate, Ernakulam. The matter is now under investigation by the police authorities. The suit is filed on the basis of the above allegations.
3. In the written statement, the defendant has stated that he has adopted the trade mark "Insta Power" since 2.2.1998 and his application for registration of trade mark is pending before the Registrar of Trade Marks, Chennai, vide application Mo. 823424 dated 15.10.1998. Even if the plaintiff is using a composite trade mark viz. "AMCO Insta-Power", the same is in violation of the rights of the defendant over his trade mark "Insta Power". The plaintiff is only a subsequent user of trade mark "Insta Power". The suit is not maintainable under Section 120 of the Trade and Merchandise Marks Act, 1958.
4. The following issues were framed by the trial Court.
1. Whether the suit is maintainable?
2. Whether the plaintiff is entitled to get a decree for declaration as prayed for?
3. Whether the plaintiff is entitled to get a decree for injunction as prayed?
4. Whether the plaintiff is entitled to get damages? If so, what is the quantum and who is liable?
5. Reliefs and costs?
On the issue regarding maintainability, it was found that the suit was maintainable. On the merits of the case, the trial Court found that the plaintiff was not entitled to use the trade mark "INSTA POWER" as a composite trade mark with the registered trade mark "AMCO". Under Section 58 of the Trade and Merchandise Marks Act, 1958, the plaintiff is not entitled to add or to alter the registered trade mark "AMCO". The defendant is the first user of the trade mark INSTA POWER. The plaintiff has started using the word only from 2001 onwards. For invoking the remedy under Sectoin 27(2) of the Trade and Merchandise Marks Act, with respect to passing off there is no necessity that the trade marks should be registered. The application of the defendant is pending before the Registrar of Trade Marks. As can be seen from Exts. Al and A2, the word AMCO was written in the top left corner in small size and the word INSTA POWER written in bright prominent letters so as to easily see the trade mark INSTA POWER. There is possibility of the public being deceived. The plaintiff is not entitled to get a prohibitory declaration as prayed for. The claim for damages was also found against.
5. In this appeal, it is contended that INSTA POWER is a descriptive term whereas the word "INSTA" is only an abbreviation for INSTANT and nobody can claim any exclusive right on such abbreviation. Insta power is not a word invented by the defendant. Insta power is a bona fide description having character and quality of the goods viz., batteries for UPS inverters etc. to give instant power supply. The trial Court has gone wrong in ignoring Section 34 of the Trade and Merchandise Marks Act, 1958. The Court below; went wrong in stating that the remedy availed by defendant is legal and it is not a groundless threat. The Court below has gone wrong in stating that the plaintiff has no consistent case. It is also contended in the memorandum of appeal that the damages prayed for should have been granted by the trial Court.
6. The learned counsel for the appellant contended that the trial Court has gone on a tangent while applying the provisions contained in Section 58 of the Trade and Merchandise Marks Act, 195.8 to the facts of this case. According to the learned senior counsel the only question which should have been considered by the trial Court was whether the word "INSTA POWER" is a generic word and whether the plaintiff has got a cause of action to file a suit under Section 120 of the Act.
7. The learned counsel for the respondent on the other hand pointed out that Section 120 of the Act contemplates a suit for declaration to the effect that the threats are unjustifiable and an injunction against the continuance of the threat. But in the plaint, the declaration sought is that the word "INSTA POWER" is a descriptive term and respondent cannot claim any monopoly over the said two words. It is also contended that the Registrar of Trade Marks is a competent authority to give registration and since the matter is pending before the Registrar, the trial Court was justified in not entering a finding on that aspect.
8. The points that arise for consideration in this appeal are (1) whether the plaintiff was justified in filing a suit under Section 120 of the Trade and Merchandise Marks Act, and (2) whether the trial Court has gone wrong in dismissing the suit on the finding that when the plaintiff uses the words "AMCO INSTA POWER", there is every likelihood of the consumers being deceived and the plaintiff was not entitled to use the words "INSTA POWER' along with "AMCO" under Section 58 of the Act.
Point No. 19. The learned counsel for the respondent is justified in submitting that under Section 120 of the Trade and Merchandise Marks Act, 1958, a declaration to be sought is against unjustifiable threats and continuance of the threats whereas in the present case the declaration sought is that the expression INSTA POWER is a descriptive term. But the injunction can be granted only if the 'Court prima facie finds that the word INSTA POWER cannot be claimed as a monopoly for the defendant. The learned senior counsel appearing for the appellant argued that INSTA POWER is a short form of instant power and it is not an invented word by the defendant. He relied on the decision of the Madras High Court in Nestle's Products (India) v. P. Thankaraja, . The point for consideration in that case was whether 'Instea' is an invented word. In that case, registration was granted to M/s. Alvitone laboratories for the trade mark "INSTEA". The Madras High Court set aside the order of the Assistant Registrar granting registration. It was found that "INSTEA" is a condensation expression "instant tea" and the grant registration to this word-mark would make alvitone as its owner ,a monopolist of a part of the ordinary vocabulary in which traders transact business with themselves and their customers. In B.C.W.C.S. (P) Ltd. v. I.C.W. Co-op Society Ltd. 1999 (1) KLT 322, P.K. Balasubramanyan, J., as His Lordship then was, held that the words Indian Coffee House is a generic name used by all Co-operative Societies of the ex-employees of the Coffee Board who function independent of each other. Though it might be true that the Indian Coffee House run by the ex-employees of the Coffee Board might have earned a name and good will due to the services rendered by them in their catering establishments, that by itself would not enable the plaintiff to prevent other ex-employees of the Coffee Board or any other owner of a catering establishment to run their establishment under the name "Indian Coffee House". Indian Coffee House is not a registered trade mark. It was therefore, held that the plaintiff Co-operative Society failed to prove the facts and the elements which would enable it to get a decree as sought for in the plaint.
10. In J.R. Kapoor v. Mieronix India 1994 PTC 260 : 1994 (Suppl) SCC 215, the question for consideration was whether the word 'micro' is a common or general name descriptive of the products which are sold or of the technology by which the products are manufactured and as such the user of the products are not likely to be misguided or confused in view of the facts that the words 'tel' and 'nix' in the trade names of the appellant and respondent are phonetically totally dissimilar. In that case both the plaintiff and the defendant are manufacturers of various electrical and electronic goods, cable T.V., ariel boosters etc. The defendant was one of the partners of the firm, viz, M/s. Mironix India along with the respondent-plaintiff. The firm had a registered trade mark, viz, 'MICRONIX' and logo. After the firm was dissolved, the defendant started his own business with trade name 'MICROTEL' and M as his logo. The contention of the plaintiff was that the trade name 'MICROTEL' and logo 'M' there was similarity in words and letters and the mark 'MICROTEL' of the defendant and the mark 'MICRONIX' of the plaintiff. Though the trial Court as well as the High Court had granted an injunction, the Supreme Court set aside the order of injunction holding that the word 'micro' is a common or general name descriptive of the products which are sold or of technology by which the products are manufactured and the users of such products are therefore not likely to be misguided or confused by the said word. Subsequently, the Delhi High Court also adopted the same view in Micronix India v. J.R. Kapoor 2002 (26) PTC 593.
11. The Madras High Court in Indo-Pharma Pharmaceutical Words Ltd. v. Citadel Fine Pharmaceuticals Ltd. AIR 1998 Madras 347 : 1998 PTC (18) 775(Mad)(DB), found that the trade mark "Enerjex" and the trade mark "Enerjase" are totally dissimilar. The word 'energy' is commonly used and the trade mark "Enerjase: is not infringement of the word "Enerjex". The Punjab and Haryana High Court in Bharat Enterprises (Indi) v. C. Lall Gopi Industrial Enterprises held that "Heat Pillar" is a generic word for room heaters and no manufacturer can have exclusive right to use these words and temporary injunction against defendant cannot be granted. In McCain International Limited v. Country Fair Foods Limited 1982 PTC 156, it was held that the words "Oven Chips" constituted an expression which is an ingenious and apt description of the contents namely potato chips prepared for cooking in the oven and the expression oven chips is apt and appropriate to describe a produce rather than a manufacturer. The plaintiffs are not entitled to any monopoly on those words and the defendants cannot be prevented from using those words.
12. Exts. A4 and A5 contain brochures, pamphlets, leaflets, literatures of various parties using the trade mark INSTA POWER or INSTA as prefix for their products. We find various business undertakings using the word INSTA like Insta Cash, Insta Wonderz, Insta Power Systems and a search in the googlie web shows that all over the world the word 'INSTA' is used in connection with various products. Therefore, there is force in the contention of the plaintiff/appellant that INSTA POWER is a generic word and it cannot be a monopoly. We do not want to give a declaration as prayed for since the question of registration of the trade mark is pending before the competent authority and what we have stated here is only for the purpose of granting an injunction to the plaintiff.
13. As held by the Madras High Court in Exxon Corporation v. Exxon Packing Systems Pvt. Ltd. (DB), the legal notice threatening action against use of specific trade mark is a sufficient cause for filing a suit under Section 120(1) of the Trade and Merchandise Marks Act. Subsequently, the Madras High Court in Mehta Unani Pharmacy & Co. v. Amrutanjan Limited, Madras 2002 (2) CTMR 58 : 2002 (25) PTC 475 (MadXDB) held that the advertisement in newspapers to anybody who manufactures or sells or markets the vapourising ointment under the trade mark 'COLDRUB' with action gave rise to a cause of action for filing a suit as the threat was against any manufacturer or seller. In the light of the above discussion, we are of opinion that the plaintiff was justified in filing a suit for injunction under Section 120 of the Act. A declaration that the threat is unjustifiable is understood in a suit for injunction against continuing the threat of legal action and even if there is no specific prayer for a declaration to the effect that such threats are unjustifiable a decree for injunction could be granted under Section 120 of the Act. This point is therefor found in favour of the appellant.
Point No. 214. The trial Court has relied on Section 58 of the Trade and Merchandise Marks Act for holding that the plaintiff is not entitled to add anything to its registered trade mark AMCO. The trade mark AMCO is a registered trade mark of Amco Batteries Limited. As per the averments in the plaint batteries used in UPS and inverters which are manufactured and marketed by the plaintiff are Amco Batteries. The plaintiff is using a composite mark AMCO INSTA POWER and not the word INSTA POWER per se. The plaintiff has no registered trade mark of AMCO and Section 58 has no application in the case. The AMCO Batteries with trade mark AMCO had its own reputation. The consumers of this product are not likely to be misled and it cannot be said that they cannot discriminate between AMCO INSTA POWER and mere INSTA POWER. The defendant has not obtained any registration of the trade mark INSTA POWER and if it is a generic word it could be used by any other manufacturer and the plaintiff cannot be threatened with any legal action. Therefore, this point also is found in favour of the appellant.
In the result, the appeal is allowed and the Judgment and decree of the trial Court are set aside and the suit is decreed restraining the defendant and their men, servants and agents from issuing any threat to the plaintiff either directly or indirectly against the use of the expression INSTA POWER as the trade mark of the plaintiff. We also make it clear that the findings and observations in this Judgment are without prejudice to the right of the parties to agitate their case before the competent authority for registration of trade marks. Though there is a case of damages, nothing was argued before us with regard to the same and that prayer is not allowed. In the circumstances of the case, the parties shall bear their costs in this appeal.