Delhi High Court
M/S Mex Switchgears Pvt Ltd vs M/S Omex Cables Industries & Anr. on 3 August, 2018
Author: C.Hari Shankar
Bench: C.Hari Shankar
*IN THE HIGH COURT OF DELHI AT NEW DELHI
+ FAO(OS) 267/2017 & CM No.36340/2017
% Reserved on : 17th May, 2018
Date of decision : 3rd August, 2018
M/S MEX SWITCHGEARS PVT LTD . .... Appellant
Through : Mr. Shailen Bhatia, Mr. Amit
Jain, Ms. Ekta Nayyar and Ms.
Neelam Pathak, Advs.
versus
M/S OMEX CABLES INDUSTRIES & ANR.. Respondents
Through : Nemo
CORAM:
HON'BLE THE ACTING CHIEF JUSTICE
HON'BLE MR. JUSTICE C.HARI SHANKAR
JUDGMENT
GITA MITTAL, ACTING CHIEF JUSTICE
1. The appellant before us had filed CS(OS) No.2247/2015, Mex Switchgears Pvt. Ltd. v Omex Cables Industries &Anr. against the respondents before the Original Side of this court.
2. In the plaint, the plaintiff claimed that it has an exclusive right over the word 'MEX', both by virtue of trademark registration and the presence of the word 'MEX' in its corporate name. It has further been claimed by the plaintiff that it has attained an enviable reputation and goodwill for its trademark 'MEX'.
FAO(OS) No. 267/2017& CM No. 36340/2017 Page 1 of 323. It is submitted that the plaintiff has successfully contested several oppositions in the trademark registry from time to time on the basis of its prior adoption and use of the trademark 'MEX' including by way of a suit preferred by the appellant/plaintiff against one Mr. Gopal Krishan using the trademark 'MAX Standard' as well as corporate name 'MAX Standards Switchgears Pvt. Ltd.' In this case, vide order dated 22nd February, 1992, the plaintiff was granted an ad interim injunction against the defendant. This injunction was confirmed by way of the judgment dated 25th February, 2014 reported at 2014 (58) PTC 136 in CS(OS)No.1299/2013, Mex Switchgears Pvt. Ltd. v. Max Switchgears Pvt. Ltd.
4. The appellant/plaintiff had filed CS(OS)No.2247/2015 against Omex Cables Industries Pvt. Ltd. complaining of infringement of its registered trademark 'MEX'; its corporate name; its copyright as well as passing off their goods as those of plaintiff by the defendant seeking the following prayers :
"a) An Order for permanent injunction restraining the Defendants, its officers, as the case may be, its servants, agents, dealer, distributors and all others acting for and on its behalf from manufacturing, exporting, selling, offering for sale, exhibiting, advertising, directly or indirectly dealing with electrical goods such as switchgear, switches, wires and cables and other cognate / allied goods under the trade mark OMEX or any other identical/deceptively similar trade mark to the Plaintiff's trade mark MEX amounting to infringement of registered trade mark No.211055 in class 9, and others.
b) An Order for permanent injunction restraining the Defendants, its officers, as the case may be its servants, agents, dealers, distributors and all others, acting for and on FAO(OS) No. 267/2017& CM No. 36340/2017 Page 2 of 32 its behalf from manufacturing, exporting, selling, offering for sale, exhibiting, advertising, directly or indirectly dealing in electrical goods such as switchgear, switches, wires and cables and other cognate/allied goods under the trade mark OMEX or any other identical/deceptively similar trade mark to the Plaintiff's trade Mark MEX or from doing any other thing as is likely to lead to confusion or deception thereby resulting in passing off the Defendant's goods as those of the Plaintiff.
c) An order for permanent injunction restraining the Defendants, its officers, as the case may be, its servants, agents, dealers, distributors and all others, acting for and on its behalf from manufacturing, exporting, selling, offering for sale, exhibiting, advertising, directly or indirectly dealing in electrical goods such as switchgear, switches, wires and cables and other cognate/allied goods under the trade mark OMEX or any other identical/deceptively similar trade mark as part of the trade name which is in violation of rights of the Plaintiff acquired by the first adoption of word MEX as integral part of the corporate name of the Plaintiff.
d) An order for permanent injunction restraining the Defendants, its proprietor, partners as the case may be, its servants, agents, dealers, distributors and all others acting for and on its behalf from manufacturing, exporting, selling, offering for sale, advertising, exhibiting, directly or indirectly dealing in electrical goods, switchgear, switches, wires and cables etc. and other cognate/allied goods under the trade mark OMEX or any other identical/deceptively similar trade mark to the Plaintiff's trade mark MEX amounting to infringement of Copyright of the Plaintiff in the artistic work titled as MEX.
e) An Order for delivery up of all material including labels, blocks, dies, strips, cartons, stationery, literature or any other printed matter bearing the impugned label for the purpose of destruction and / or erasure.FAO(OS) No. 267/2017& CM No. 36340/2017 Page 3 of 32
f) For an Order of Damages caused to reputation and goodwill of the Plaintiff on account of use of the trade mark MEX by the Defendants."
5. In the plaint, it is the case of the plaintiff that through its predecessor, it is the first adopter and user of the trademark 'MEX' since the year 1960 for electrical switchgears, switches, ignition switches, electric capacitators, electric meters, starting devices for electric motors etc. and various other electric goods. The plaintiff had also stated that it was using the trademark 'MEX' on CFL bulbs, kitkats, fuses, distribution boxes, circuit breakers wires and cable miniature circuit breaker (MCBs), control panels for meters and submersible pumps etc.
6. The plaintiff claimed that 'MEX' is an integral part of the corporate name of the plaintiff company since its incorporation in the year 1979. Prior thereto, Mr. Jai Krishan Saini, the Managing Director of the plaintiff had a partnership firm in the name and style of Mex Electro Corporation which firm had adopted the trademark 'MEX' in 1960.
7. The plaintiff has stated that it is the registered proprietor of various trademarks relating to 'MEX' under classes 7, 9 and 11 for various goods, details of which are elaborated in Para 5 of the plaint and some of which are: the trademark 'MEX'(label) registered for electric switchgears and switches under Class 9 as on 31stAugust 1962 bearing registration no. 211055; the trademark 'MEX' registered for ignition switches, electric capacitators, electric plugs, electric FAO(OS) No. 267/2017& CM No. 36340/2017 Page 4 of 32 distribution boards, electric meters and electric circuit breakers included in Class 9 as on 28th July 1979 bearing registration no.351897; the trademark 'MEX'registered for electric motor (not for land vehicles) and parts thereof included in Class 7 as on 4th August 1988, used since 1stApril 1960, bearing registration no. 495452; the trademark 'MEX'registered for gas stoves and parts thereof under Class 11 as on 20thJune 1983 bearing registration no. 406916.
The plaintiff is also stated to have obtained registrations of its trade mark 'MEX'in Nepal under Classes 7 and 11.
8. The plaintiff has also claimed that it holds copyright registration of the artistic work titled 'MEX' under No.A-57322/99 and claims entitlement to seek relief of infringement under the Copyright Act, 1957 as well.
9. So far as the usage is concerned, in para 9 of the plaint, it has been claimed that the plaintiff has been continuously and uninterruptedly using the trademark 'MEX' since 1960 and by reason of exclusive use for such long and continuous period, a valuable and exclusive goodwill and reputation has accrued to the trademark 'MEX'; that due to high quality of the plaintiff's goods, state of art technology employed in manufacture of goods, the plaintiff's trademark 'MEX' has attained unimpeachable reputation; the public and members of the trade associate the trademark 'MEX' with the plaintiff and no one else.
10. In para 12 of the plaint, the plaintiff has set out figures of the sales turnover of its goods under the trademark 'MEX' from 1960-61 at `83,036 which has gone up to `25,12,74,542 in 2013-14.
FAO(OS) No. 267/2017& CM No. 36340/2017 Page 5 of 3211. Similarly, the plaintiff has also claimed that it had widely advertised its goods under the trademark 'MEX' so that the trademark has become distinctive of and exclusively identified and associated with the plaintiff. The details of advertisements done and publicity expenses are set out in para 13 of the plaint which show that in 1960- 61, `8,190 were incurred on advertisement expenses which are stated to have been increased to `63,27,094 in the year 2013-14.
12. It is further stated in the plaint in para 14 that the plaintiff has attained enviable reputation and goodwill for its trademark 'MEX', that the trademark 'MEX' is associated exclusively with the goods of the plaintiff. Thus, on account of long, continuous and extensive user of the trademark 'MEX', the trademark 'MEX' denotes and connotes the goods manufactured by the plaintiff and of none else, the trademark 'MEX' is associated with the goods of the plaintiff exclusively; the public and trade persons associate the trade mark 'MEX' exclusively with the goods of the plaintiff. Due to adoption of trademark 'MEX' in 1960, the trademark 'MEX' has come to be exclusively associated with the plaintiff; that the plaintiff has made efforts to popularize its goods under the trademark 'MEX' throughout the length and breadth of the country. More than five decades of perseverance, hard work, perspiration, honesty, sustained good quality and fair pricing of the plaintiff has led to the creation of an enviable reputation for the trademark 'MEX'. People have come to believe that any produce manufactured by the plaintiff bearing the trademark 'MEX' would be of excellent quality and material. The trademark 'MEX' of the plaintiff qualifies to be a well known trademark. Thus, FAO(OS) No. 267/2017& CM No. 36340/2017 Page 6 of 32 the plaintiff is entitled to relief of injunction against any misuse of its trademark/tradename. The goods manufactured and sold by the plaintiff under the trademark 'MEX' have been tested and approved by various government departments.
13. The plaintiff claims to have been extremely vigilant about protecting its rights and interests in its trademark 'MEX'. Some illustrative examples have been set out in the plaint with supporting documents filed on the record of the suit. Whenever deceptively similar trademarks were advertised by the trademark registry, the appellant claims to have opposed the same from time to time and succeeded in its opposition on the basis of its prior adoption and extensive use. In this regard, details of an opposition to a similar trademark advertised by one Nand Lal Laxmichand Asrani and Kishor Nand Lal Asrani trading as M/s Nand Lal & Company who had filed an application for registration of trademark MAX in class 9 bearing application no.328028 in respect of similar goods have been provided. In those proceedings, the Assistant Registrar of Trade Marks, Bombay upheld the contention of the plaintiff under Section 12(1) and Section 11 of the Trade Marks Act, 1999. In other words, the Registrar came to the conclusion that the impugned trademark would be deceptively similar to that of the plaintiff's. However, he disallowed the opposition on the ground that the applicant therein could avail of the benefit of sub-section 3 of Section 12 of the Act.
14. The present plaintiff (opponent therein) then filed an appeal against this order of the Assistant Registrar which appeal was numbered as Misc.Pet.No.300/1987. An order dated 8th December, FAO(OS) No. 267/2017& CM No. 36340/2017 Page 7 of 32 1998 was passed by a ld. Single Judge of the Bombay High Court wherein it was held as under :
"The Assistant Registrar proceeded on the assumption that there has been a concurrent user of the said respondents mark from the year 1968. Here again the Registrar is wrong ........ the Assistant Registrar of Trade Marks has gone to the extent of saying that the petitioners acquiesced in the user of the mark by the respondents. There is no substance in this finding."
15. A suit similar to the present suit filed against the respondents was filed by the plaintiff against one Mr. Gopal Krishan who was using the trademark Max Standard as well as corporate name Max Standard Switchgears Pvt. Ltd. This suit was filed before the ld. District Judge, Delhi. By an order dated 22nd February, 1992, the ld. Additional District Judge passed a detailed order granting an injunction in favour of the plaintiff against the defendant therein from using the trademark 'MAX'. This suit was compromised and a decree of permanent injunction was passed in favour of the plaintiff/appellant against the defendant therein.
16. So far as the litigation against the present respondent Omex Cables Industries is concerned, the suit was registered, on the Original Side, as CS(OS)No.2247/2015, titled MEX Switchgears Pvt. Ltd. v. Omex Cables Industries &Anr.
17. Along with the suit, the plaintiff filed an application for interim injunction being I.A.No.15312/2015 (under Order XXXIX Rules 1 & 2 of the CPC) which was dismissed by the ld. Single Judge by the order FAO(OS) No. 267/2017& CM No. 36340/2017 Page 8 of 32 dated 17th July, 2017, aggrieved whereby the appellant has filed the present appeal.
18. So far as the actions of the defendant are concerned, the appellant has stated in paras 19 and 20 of the plaint that the plaintiff's attention was drawn to the use of trademark OMEX by the defendant no.1, which was identical or in any case deceptively similar to the trademark 'MEX' of the plaintiff. In the suit, the plaintiff had arrayed Omex Cables and Industries as defendant no.1 which is stated to have its office at 1/536, H-5, Street No.4A, Friends Colony, Industrial Area, G.T. Road, Delhi-110095. It is stated that the adoption of the trade mark by the Defendant firm is recent. The appellant has impleaded as the defendant no. 2 M/s K.K. Electricals having its office at #14, Raddy Raman Street, 1st Floor, Chennai-600079 which claims to be an authorized dealer of the defendant no.1. The exact constitution of the defendant no.1 firm is not described for want of knowledge.
19. It is specifically stated in para 20 of the plaint that the word OMEX GOLD under Application No. 1351498 in class 9 was advertised in Trade Marks Journal No.1338-1. The plaintiff had filed an opposition against the same which was pending under No.DEL- 228156. The plaintiff contended that the defendant no.1 had dishonestly adopted the trademark/trade name OMEX which was visually, phonetically as well as structurally similar to the well known trade mark 'MEX' of the plaintiff which would create an impression that the defendant firm and the products being under such name had some connection with the plaintiff company. The plaintiff had also contended that the defendant no.2 had been extensively selling goods FAO(OS) No. 267/2017& CM No. 36340/2017 Page 9 of 32 bearing the trademark OMEX at the same shops where the plaintiff goods such as switches, MCBs bearing the trade mark 'MEX' are sold and that the addition of the word GOLD as a suffix does not make any difference. The appellant has categorically claimed the first and prior adopter and user of the trademark 'MEX' since1960 and that its rights merit protection for the reason that the mark 'MEX' denotes and connotes the goods of the appellant.The adoption of the trade mark by the defendant was with dishonest motive to create mischief and to deceive the purchasing public that its products are somehow connected with the plaintiff company or that the goods bearing the trademark OMEX originates from the same source as those bearing the trademark 'MEX' i.e. the plaintiff.
20. In para 23, the plaintiff has specifically complained of infringement of its registered trademark and violation of the common law rights vested in the plaintiff in the said trademark.
21. In para 24 of the plaint, extensive submissions with regard to the illegal activities of the defendants which have caused immense loss to the plaintiff's image, reputation and goodwill have been made.
22. So far as the name is concerned, the plaintiff has pointed out that 'MEX' is an essential and important component of its corporate name M/s Mex Switchgears Pvt. Ltd. The addition of the letter 'O' to the trademark 'MEX' by the defendants in their trade name makes no difference at all; that the use of the word OMEX in the trade name by the defendant no.1 would cause grave deception and confusion to the public; that the trademark OMEX has been used on identical goods being sold through the same trade channel is bound to cause FAO(OS) No. 267/2017& CM No. 36340/2017 Page 10 of 32 tremendous confusion and deception.The triple identity test of identical goods, identical trade marks and identical trade channels are fully satisfied in the present case and that the defendants have sought to adopt the trademark OMEX with the sole object to seek illegal profits by passing off its inferior goods as the goods of the plaintiff. As such, the plaintiff has brought, against the defendant, the present action, alleging infringement as well as passing off.
23. The respondents filed a joint written statement disputing the contentions of the plaintiff claiming that they had adopted the trademark OMEXGOLD and were using the same since 1995. So far as sale figures are concerned, the same are set out in para 8. The defendants have set out the sale figures for the year 2003-04 of `2,22,120. The plaintiff has disclosed the sales to the tune of `8,90,54,431.
24. The defendants have also claimed that other people are using the word 'MEX'as trade mark with prefix and suffix in relation to their business in Class 9 of the Trade Marks Act. However, the defendants do not disclose that these persons have identity of the product and trade channel in which they are trading as the plaintiff.
25. The defendants do not dispute the averment of the plaintiff that the opposition of the plaintiff to their application for registration is pending and that it has not been able to secure the registration of its trademark.
26. We had called for the record of the suit of CS(OS)No 2247/2015 which has been received and perused by us.
FAO(OS) No. 267/2017& CM No. 36340/2017 Page 11 of 3227. It is necessary to note that the notice on appeal was issued to the respondents on the 10th of October 2017. Despite service, there was no appearance on behalf of the respondents on the 31 st of January 2018 or 27th February, 2018 or on 17th May, 2018.
28. So far as the present case is concerned, certain findings in the pronouncements of the ld. Single Judge in the judgment reported at 2014 (58) PTC 136 (Del), MEX Switchgears Pvt. Ltd. v. Max Switchgears Pvt. Ltd.may be extracted. So far as the factual aspects regarding plaintiff is concerned, the ld. Single Judge had noted as follows :
"17. Before dealing with the defences raised by the defendant, it appears from the record that the plaintiff company through its predecessor has been using the trade mark MEX since the year 1960 in respect of electrical switchgears of various kinds, electrical meters, starting devices for electric motors and various other electrical goods. The plaintiff is also using the trade mark MEX in respect of CFL bulbs, fuses, distribution boxes, circuit breakers wires and cables miniature circuit breaker etc.
18. The plaintiff is a registered proprietor of trade mark MEX in various trade marks, the details of which are mentioned in para 5 of the plaint in classes 7, 9 and 11 in respect of the registered goods mentioned above as well as other large number of specification of goods mentioned in the said para. The plaintiff has also given the details of expenses on advertisement and sale figures of the goods under the trade mark MEX in pars 12 and 13 of the plaint from the year 1960 to 2011-2012.
19. The trade mark of the plaintiff has been protected from time to by various courts including the Bombay High Court FAO(OS) No. 267/2017& CM No. 36340/2017 Page 12 of 32 as well as District Court, Delhi. The details of the said protections are given in paras 15 and 16 of the plaint.
xxx xxx xxx
21. The goods of the plaintiff are admittedly sold in every nook and corner of India. The said fact has not been denied by the defendant during the course of hearing. The plaintiff states that the defendant's predecessor or the defendant ought not to have used the trade mark MAX in relation to same goods as well as part of their corporate name as on the date of adoption they were fully aware about the goodwill and reputation of the plaintiff.
xxx xxx xxx
Infringement of Trade Mark
24. It is the admitted position that the plaintiff is a registered proprietor of the trade MEX in respect of large number of goods i.e. electric switchgears, switches, ignition switches, electric capacitators, electric meters, starting devices for electric motors etc. and various other electric goods. The trade mark MEX is registered in various classifications of goods falling in classes 7, 9 and 11 including electric distribution boards, electric meters and electric circuit breakers. The registration of the plaintiff is not denied by the defendant. The defendant has not stated that the defendant has challenged the validity of the trade mark of the plaintiff. It is also the admitted position that the plaintiff and its predecessor have been using the trade mark MEX since 1960. The mark MEX is also dominant part of their corporate name."
(Emphasis supplied) The above findings support the case of the appellant in the present case.
FAO(OS) No. 267/2017& CM No. 36340/2017 Page 13 of 32Plea of Infringement of a registered trademark
29. Let us examine the plaintiffs claim resting on registration of its trademark. In this regard, reference may usefully be made to Section 28 and 29 of the Trade Marks Act, 1999, which read as follows :
"28. Rights conferred by registration--
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
29. Infringement of registered trade marks -
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in FAO(OS) No. 267/2017& CM No. 36340/2017 Page 14 of 32 relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of--
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which--
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair FAO(OS) No. 267/2017& CM No. 36340/2017 Page 15 of 32 advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising--
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or FAO(OS) No. 267/2017& CM No. 36340/2017 Page 16 of 32
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly."
30. Section 28 deals with "Rights conferred by registration". Exclusive rights to use the trade mark in relation to goods or service in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided in the law stand granted by virtue of Section 28. Consequences of infringement of a registered trademark stand laid down under Section 29 of the Trade Mark Act. Under sub-section 5 of Section 29, a registered trademark is infringed by a person if he uses such registered trademark as a trade name or part of his trade name or name of his business concern or part of the name of his business concern dealing with goods or services in respect of which the trade mark is registered.
31. A joint reading of Sections 28 and 29 of the statute discloses that a registered trademark is infringed by a person, who, not being a registered proprietor thereto uses it in the course of trade mark which is identical or deceptively similar in relation to the goods or services which are identical or similar to that in respect of which the trademark is registered without the permission of the trademark owner.
32. It is trite that upon registration of a trademark, the registered proprietor, under Section 28, gets the exclusive right to the use of such trademark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person FAO(OS) No. 267/2017& CM No. 36340/2017 Page 17 of 32 using the trademark which is the same or deceptively similar to this trademark, he can protect the trademark by action of infringement in which he can obtain an injunction. (Ref. AIR 1986 SC 137, : 1986 (6) PTC 71 (SC), American Home Products v. Mac Laboratories; AIR 1971 SC 898 : PTC (Suppl) (1) 586 (SC), National Bell Co. v. Metal Goods Mfg. Co.)
33. In order to test a case of infringement of a trademark, only trademarks are to be compared by the court and in case registration stands granted in favour of the plaintiff, he acquires valuable rights by reason of the registration. While judging the question as to whether the defendant has infringed the trademark by colourable imitation of the mark or not, the court has to consider the overall impression of the mark in the minds of general public and not by merely apportioning dissimilarities.
34. In the present matter, it is not disputed that the defendant is using the trademark OMEX for the same goods as those of the plaintiff as a registration of trademark 'MEX'. There is therefore, a statutory protection so far as the use of the trademark 'MEX' in respect of the goods are concerned. So far as the plaintiff's claim of infringement of the trademark is concerned, the question which has to be considered is as to whether the mark of 'OMEX' is deceptively similar to the registered trademark 'MEX'of the plaintiff which he is entitled to protect by a granting of an injunction in his favour.
35. In this regard, reference may usefully be made to the pronouncement of the Supreme Court in AIR 1970 SC 146 : PTC (Suppl) (1) 258 (SC), K.R. Chinna Krishna Chettiar v. Sri Ambal& FAO(OS) No. 267/2017& CM No. 36340/2017 Page 18 of 32 Co. In this case, the Supreme Court had held that an ocular comparison is not always the decisive test. The resemblance between two marks must be considered with reference to the ear as well as to the eye. In this case, the Registrar held that the sound of "AMBAL" does not so nearly resemble the sound of "ANDAL" in spite of certain letters being common to both the marks, as to be likely to cause confusion or deception. The Registrar thus found that the marks were not deceptively similar. In appeal, both, the ld. Single Judge and the Division Bench of the High Court, found that the marks were deceptively similar. The Supreme Court had dismissed the appeal and held that there were striking similarity and affinity of sound between the words and there was a real danger of confusion between the two marks.
36. In AIR 1963 SC 449, Amritdhara Pharmacy v. Satyadeo Gupta, the Supreme Court had occasion to hold that the trademark "Laxmandhara" deceptively similar to the trademark "Amritdhara".
37. Mr. Shailen Bhatia, ld. counsel for the appellant had, before the ld. Single Judge, placed reliance on a pronouncement rendered by one of us (Gita Mittal, J.) reported at 2007 (35) PTC 28 (Del), IZUK Chemical Works v. Babu Ram Dharam Prakash which was concerned with the complaint by the plaintiff who was using the trademark 'Moonstar' while the defendant had adopted the trademark 'Superstar'. The appellant had additionally also relied upon the judgement reported at AIR 1935 All 7, Thomas Bear and Sons (India) Ltd. v. Pravag Narain; ILR 1973 1 Del 393, Atlas Cycle Industries Ltd. v. Hind Cycles Ltd.; 2006 (32) PTC 434 (Madras) FAO(OS) No. 267/2017& CM No. 36340/2017 Page 19 of 32 (DB), Devi Pesticides Pvt. Ltd. c. Shiv Agro; 2003 (27) PTC 63 (Delhi), Shaw Wallace and Co. Ltd v. Superior Industries Ltd; AIR 1970 SC 146, KR Chinna Krishma Chettiar v. Sri Ambal& Co.; 2007 (35) PTC 714 (Bom), Encore Electronics v. Anchor Electronics & Electricals; 2008 (38) PTC 49 (Delhi) (DB), Pankaj Goel v. Dabur India Ltd.
38. We find no consideration of the principles laid down in these judgments by the learned Single Judge.It is most significant that the learned Single Judge has not recorded any finding that the trademark adopted by the defendant is not deceptively similar to that of the plaintiff which the court was bound to do so. Instead has proceeded tangentially in the matter on a complete misconception, as set out above.
Delay, if any - effect thereof
39. The defendants have claimed that they started their business in 1995. The ld. Single Judge has held that the plaintiffs had delayed in moving the court and therefore, stood disentitled for interim relief. In this regard, the ld. Single Judge has referred to the fact that the appellant had filed an opposition to the defendants application for registration of the trademark in the year 2006 and held that this fact established that the plaintiffs were aware that the defendants were using the mark OMEX GOLD and that it had filed the suit only in the year 2015. In support of this finding, the ld. Single Judge had placed reliance on the pronouncement of this court reported at AIR 1992 Del 302, Shri Gopal Engineering & Chemical Works v. M/s POMX FAO(OS) No. 267/2017& CM No. 36340/2017 Page 20 of 32 Laboratory and 2008(38) PTC 185 (Del), Warner Bros Entertainment Inc &Anr. v. Harinder Kohli &Ors. Placing reliance on the above judgments, the learned Single Judge held that where there is delay in moving the court, the plaintiff would stand disentitled for interim relief and that while dealing with applications under Order XXXIX Rules 1 & 2, delay in approaching the court would be fatal.
40. In reaching this finding, the ld. Single Judge has noted as follows:
"29. From the plaint itself, it is clear that the defendant had filed an application for registration of its trademark in the year 2006 and was opposed by the plaintiff and this shows that the plaintiff was aware that the defendants were using the mark OMEXGOLD, yet the plaintiff has come up before this Court only in the year 2015. The plaintiff tried to explain the delay by stating that it did not find any goods of the defendants in the market and so was unaware. The plaintiff, in its replication averred that it had genuine hope to succeed before the Registrar when he had filed opposition application to the Registrar of the Trademarks against the defendants and had stated that defendants never disclosed that it has been using the trademark since long and was also not aware that the defendants were in the market and selling the goods under the mark OMEXGOLD and, therefore, it did not file the suit earlier. Even if we presume that plaintiff was not aware that the defendants were in market in the year 1995 it however became aware of this fact in the year 2006 when the defendants applied for the registration of its mark and when it moved an application opposing the said registration. The defendants, on the other hand, has placed on record the document showing its sales since the year 2003 and 2004 and the various other documents filed on record by the defendants shows that it has been using the said trade mark in the year 2006 when it had applied for the registration of the said mark. The delay in filing the present FAO(OS) No. 267/2017& CM No. 36340/2017 Page 21 of 32 suit as well as the application, in the circumstances of this case, also disentitles the plaintiff for discretionary relief more so, when the plaintiff has concealed in his plaint the fact that the defendants had applied for the registration of the mark and it had filed the opposition application."
(Emphasis supplied)
41. This finding of the ld. Single Judge however, completely overlooks the fact that the application of the defendant for registration of the mark has not succeeded so far.
42. In this regard, we may note that the cause of action for filing the suit has been explained by the plaintiff in para 27 of the plaint in the following terms:
"27. That the cause of action arose in June 2015 when the plaintiff received information about the availability of the goods of the Defendants bearing the impugned trade mark. The Opposition under No.DEL-228156 against the application of the Defendant under number 1351498 in class 9 for the trade mark OMEXGOLD was filed in 2006 but at that stage, the goods of the Defendant were not available or seen by the Plaintiff. Now, the Plaintiff has received a price list of the Defendant's goods where the trade mark OMEX is written in bold letters and word Gold is so small that it is not easily discernible. The Plaintiff has recently seen the goods of the Defendant bearing the impugned trade mark. The Defendant is continuing to use the trade mark OMEX on electrical goods such as wires and cables. The Defendant is also using the word OMEX as an essential and important ingredient of its trade name. Thus, the cause of action has again accrued in favour of the Plaintiff in the month of June, 2015 when the Plaintiff has been apprised of the details of the Defendant No.1 and its alleged dealer Defendant No.2. The cause of action is a continuous one and continues to subsist till such time as the FAO(OS) No. 267/2017& CM No. 36340/2017 Page 22 of 32 Defendants are registered by an Order of this Hon'ble Court."
(Emphasis by us)
43. Thus the plaintiff had categorically stated in para 27 of the plaint that the defendants had no presence in the market and that the plaintiff had approached the court immediately upon learning of the fact that the defendants were selling the goods through the defendant no.2.
There is no material to the contrary on record.
44. The plea of the defendants that they were selling since 1995 is not supported by any other averment in the written statement wherein even sale figures are mentioned from the year 2003 without any details as to where the sales were effected. There is no figure or document supporting any sale of the products of the defendant and use of the trade namerelating to the publicity having been effected. Several documents have been filed on record which manifest that the plaintiff's mark was being extensively advertised in well known newspapers as well as its corporate name.
45. In any case, delay if any, is not fatal in a case of infringement inasmuch as in every infringement of the registered trademark is a recurring cause of action. We may extract the extensive enunciation of law on the subject which was discussed in para 24 of Mex Switchgears Pvt Ltd v Max Switchgears Pvt. Ltd., which reads as follows :
"e) In the case of Midas Hygiene Industries Pvt. Ltd. vs. Sudhir Bhatia and others, 2004 (Vol.28) PTC 121, relevant para-5 of the said judgment is as under:FAO(OS) No. 267/2017& CM No. 36340/2017 Page 23 of 32
"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 bringing 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."
f) In the case of Swarn Singh vs. Usha Industries (India) and Anr., AIR 1986 Delhi Page No.343 (DB) 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 aground 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....."
g) In the case of Hindustan Pencils Pvt. Ltd. Vs. M/s India Stationery Products Co., AIR 1990 DELHI 19 it was held as under :
"................. It was observed by Romer, J. in the matter of an application brought by J.R. Parkingnon and Co. Ltd., (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 FAO(OS) No. 267/2017& CM No. 36340/2017 Page 24 of 32 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."
h) In the case of M/s. Bengal Waterproof Lim. Vs. M/s. Bombay Waterproof Manufacturing Co. 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 he commits the act of such deceit. Similarly whenever and wherever 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."
46. We are unable to accept the plea of the defendants with regard to the claimed user and cannot grant the benefit thereof to the defendant. The opposition to the application of the defendants for FAO(OS) No. 267/2017& CM No. 36340/2017 Page 25 of 32 registration of the trademark is pending even on date. Even if, we are to accept the defendant's claim from the sales figures, the same would not be fatal in an action for infringement in view of the aforementioned settled law.
47. It is also important to note that there is not an iota of assertion by the defendants or evidence to establish that the plaintiff was aware about the defendants user, if at all either from 1995 or from 2003-05 when it has claimed knowledge.
48. It is well settled that in an action for infringement of a registered trademark, the plaintiff must make out a case that the use of the defendants mark is meant to deceive and whether the similarity between the plaintiffs and defendants mark is so close, either phonetically or visually or structurally in order to constitute infringement of the plaintiff's trademark.
49. It has been stated in para 56 of Mex Switchgears Pvt Ltd. v. Max Switchgears Pvt. Ltd.that "if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get up packing and other writing or marks on the goods or on the packets, in which he offers his goods for sale show marked differences, or indicate clearly a trade origin, different from that on the registered proprietor of the mark, would be immaterial".
50. In the present case, the plaintiff has placed extensive material manifesting the creation of the trademark 'MEX'by its predecessor in interest of the plaintiff company; its continued use as part of the name of the partnership firm since 1960 and incorporation of the company by the same name in the year 1979 as well as use of the trademark FAO(OS) No. 267/2017& CM No. 36340/2017 Page 26 of 32 since 1960. The plaintiff has established the fact that it has registrations of the mark 'MEX'with the Registrar of Trade Marks in different classes of goods including the goods under which the defendant is trading under the mark OMEX.
51. The defendant has adopted the plaintiff's trademark 'MEX'and merely prefixed 'O' to the same. It has also adopted the word "GOLD" after OMEX.
52. Mr.Shailen Bhatia has drawn our attention to the several attempts made by the respondent No.1 to seek registration of alleged trademarks, which are deceptively similar to the trademark 'MEX' of the plaintiff. The following details of applications for registration of such deceptively similar trademarks filed by the respondent No.1 have been placed before us:
S.NO APPLICATIONNO./CLA TRADE GOODS/SERVIC . SS MARKS/STATU ES S /USER CLAIMED i. 1351498 IN OMEX GOLD WIRE AND CABLES CLASS 9 OPPOSED 01.04.1995 I. 1367412 IN OMX ELECTRONICS AND ELECTRICALS CLAS 9 OPPOSED APPARATUS AND INSTRUMENTS 01.04.2002 INCLUDING WIRE AND CABLES INCLUDED IN CLAS 9.
II. 2170156 IN OMEXI ELECTRICAL AND
ELECTRONICS
FAO(OS) No. 267/2017& CM No. 36340/2017 Page 27 of 32
CLASS 9 OPPOSED APPARATUS &
INSTRUMENTS
01.04.2009 INCLUDING WIRE
AND CABLES.
IV. 1223076 IN OMEX ELECTRICAL P.V.C.
WIRES AND
CLASS 9 OBJECTED CABLES OF ALL
SIZES AND
PROPOSED TO ACCESSORIES.
BE USED
53. Mr.Bhatia has placed that the respondent No.1 has given different users in different applications attempting to come as close as possible to the trademark 'MEX' of the plaintiff. If the trademark 'OMEX' complained of in the plaint was popular, there was no occasion for the respondent No.1 to seek registration of a trademark 'OMEX'.
54. We, therefore, find substance in the contention of the appellant that the learned Single Judge has overlooked material evidence on record and the well-established legal principles on the issue. The plaintiff's opposition filed in 2006 to the respondent No.1's application for registration of the trademark 'OMEXGOLD' of the respondent No.1 is pending even on date in the absence of any material to support sales by the respondents of the goods under such trademark. We are also of the view that the learned Single Judge has erred in holding that the respondent No.1 has been using the trademark since 1995. Given the assertions of the plaintiff in para 27 of the plaint, there is no material to hold that there was delay in the plaintiff approaching the court disentitling it to the relief.FAO(OS) No. 267/2017& CM No. 36340/2017 Page 28 of 32
Passing off
55. So far as the essential characteristics of an action of passing off are concerned, the same have been succinctly set out in the pronouncement in Reckitt &Coleman Properties Ltd. v. Borden Inc, 1991 (1) All ER 873 (HL), also famously known as the Jif Lemon case. In this decision of the House of Lords, Lord Oliver affirmed the three-part test of reputation and goodwill; misrepresentation and damages and held thus:
"...The law of passing off can be summarised in one short general proposition - no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get- up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must FAO(OS) No. 267/2017& CM No. 36340/2017 Page 29 of 32 demonstrate that he suffers or, in a quiatimet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff..."
56. In the present case, the appellants have established that the disputed trademark has become distinctive of their goods and that the trademark has acquired such reputation and goodwill, which is liable to be protected by the courts. It has been so held by the learned Single Judge of this Court in the judgment reported as 2014 (58) PTC 136 (Del), Mex Switchgears Pvt. Ltd. v. Max Switchgears Pvt. Ltd.
57. The defendants have adopted the trademark so as to persuade the customers for believing and as a result of the mis-representation that there is likelihood of the confusion and deception of the public squarely resulting in damage to the plaintiff. The defendants are also in the same area of business activity and trade. The test in Reckitt & Coleman is satisfied, entitling the plaintiff to grant of interim protection against passing off its goods.
58. An examination of the written statement would show that the respondent No.1 has produced miniscule scale figures only since 2003. As compared to the volume and business of the appellant, even on the date of filing of the suit, the respondent No.1's sales had not crossed the figure of `1 crore annually.
59. We were also unable to sustain the finding of the learned Single Judge that the appellant is guilty of concealment of material facts. Merely filing of the opposition to an application for registration of a trademark would not entitle an inference that the appellant was aware FAO(OS) No. 267/2017& CM No. 36340/2017 Page 30 of 32 of the situation of the respondents. In para 29 of the impugned judgment, the learned Single Judge has erred in holding that filing of an application for registration of the trademark in the year 2006 would by itself establish that 'the defendants were using the trademark 'OMEXGOLD'. Mere filing of an application for registration of the trademark does not by itself establish carrying of a trade using the trademark in question.
Conclusion
60. The findings returned by the learned Single Judge in Mex Switchgears Pvt. Ltd. v. Max Switchgears Pvt. Ltd. squarely apply to the present case.
61. In the present case, the appellant has made out a prima facie case that the trademark 'OMEXGOLD' is deceptively similar to the registered trademark 'MEX' of the appellant. The addition of the letter 'O' to 'MEX' by the respondents makes no difference at all. The malafide intent of the respondents is writ large in the face of their attempts to secure registration of not only 'OMEX'; but also 'OMEXI'; 'OMEXGOLD'; 'QMEXI', as noted hereinabove.
Result
62. In the present case, we have no option but to interfere with the impugned judgment in as much as the same has erred on facts and failed to consider the well-settled principles of law.
63. In view thereof, the order dated order dated 17th July, 2017 in I.A.No.15312/2015in CS(OS) No. 2247/2015 is hereby quashed.
FAO(OS) No. 267/2017& CM No. 36340/2017 Page 31 of 32I.A. No. 15312/2015 shall stand allowed.
64. As a result, the defendants, their servants, agents, dealers, distributors and any others person acting for and on its behalf are restrained from using the mark OMEX or any other deceptively similar trade mark which may amount to infringement of plaintiff's registered trade mark as well as passing of their goods as that of the plaintiff and from doing any other thing which is likely to create confusion and deception that the goods of the defendants have any connection with the plaintiff.
65. The appeal is allowed in the above terms.
No order as to costs CM No. 36340/2017
66. In view of the order passed in the appeal, this application is disposed of as having been rendered infructuous.
ACTING CHIEF JUSTICE C.HARI SHANKAR, J AUGUST 03, 2018 FAO(OS) No. 267/2017& CM No. 36340/2017 Page 32 of 32