Calcutta High Court
K. C. Das Pvt. Ltd. & Anr vs K. C. Dass on 25 March, 2011
Equivalent citations: AIR 2011 CALCUTTA 136, (2011) 2 CAL HN 703
Author: Bhaskar Bhattacharya
Bench: Bhaskar Bhattacharya
1
IN THE HIGH COURT AT CALCUTTA
Civil Appellate Jurisdiction
(Original Side)
Present:
The Hon'ble Mr. Justice Bhaskar Bhattacharya
And
The Hon'ble Mr. Justice Sambuddha Chakrabarti
G.A. No. 3294 of 2009
A.P.O. No. 307 of 2009
C.S. No. 195 of 2008
K. C. Das Pvt. Ltd. & Anr.
Versus
K. C. Dass
For the Appellant: Mr. Pratap Chatterjee,
Mr. Ranjan Bachawat,
Mr. Sakya Sen,
Mr. Priyankar Saha,
Mr. Satyabrata Chakraborty.
For the Respondent: Mr. Gautam Chakraborty,
Mr. Ratnanko Banerji.
Heard on: 31.01.2011
Judgment on: 25th March, 2011.
Bhaskar Bhattacharya, J.:
2 This first appeal is at the instance of a plaintiff in a suit for injunction alleging infringement of trademark and also passing off and is directed against an order dated 30th October, 2009 passed by a learned Single Judge of this Court thereby refusing to pass an order of injunction restraining the respondent- defendant from carrying on business by using the mark "K.C. DASS" by overruling the plaintiff's allegation of infringing its registered trademark "K. C. DAS" and/or passing of the business of the defendant as that of the plaintiff.
Being dissatisfied, the plaintiff has come up with the present appeal. The case made out by the plaintiff in the suit may be summed up thus:
a) The plaintiff carried on business, inter alia, of manufacture and sale of sweetmeats under the name and style "K. C. Das" which has acquired worldwide fame and reputation and is a household name associated with sweets and other allied confectionery products.
b) By reason of widespread sale of different varieties of sweets and confectioneries, manufactured and invented by the plaintiff and/or their predecessor, under the brand name 'K.C. Das', the said name became associated exclusively with the plaintiff's product. The products of the plaintiff within a short span of time also acquired international goodwill and/or reputation.3
c) The plaintiff for the purpose of safeguarding its right in respect of its brand name 'K.C. Das', which has become associated exclusively with their products, has obtained registered trademark 'K.C. Das' in different classes detailed particulars whereof were given below:
Sl.No. Trademark Classes Registration No.
1. K. C. Das 1 863250
2. K. C. Das 3 854050
3. K. C. Das 4 854051 & 863253
4. K. C. Das 6 863255 & 854954
5. K. C. Das 7 854055 & 863256
6. K. C. Das 8 854056 & 863257
7. K. C. Das 9 854057
8. K. C. Das 10 854058
9. K. C. Das 11 854059 & 863260
10. K. C. Das 15 854060 & 863262
11. K. C. Das 19 863264
12. K. C. Das 21 863265 & 854073
13. K. C. Das 22 863266 & 854062
(Word Perse)
14. K. C. Das 23 863267
(Word Perse)
4
15. K. C. Das 24 863268
16. K. C. Das 26 863270 & 854066
17. K. C. Das 27 863271 & 854067
18. K. C. Das 28 854069
19. K. C. Das 29 854009 & 863273
20. K. C. Das 30 863274
21. K. C. Das 31 854071
22. K. C. Das 33 854074
23. K. C. Das 34 854075 & 863278
24. K. C. Das 42 1334462
d) It would appear from the aforesaid list that the plaintiff had also obtained registration of its trademark 'K. C. Das' in class 42 which includes, amongst others, the services specifically referred to in class 42 and also other services which have not been specifically classified.
e) On account of its continuous, extensive and uninterrupted use and extensive publicity, the trademark of the plaintiff has acquired not only a secondary meaning amongst the members common to the trade but also the people associated with the said mark 'K.C. Das' exclusively with that of the business of the plaintiff. The said mark has also been represented in a unique eye catching style which is written both in English and Vernacular and also in Hindi language. 5 The said name 'K. C. Das' written in a unique artistic manner is an original artistic work and the petitioner is the proprietor thereof.
f) In the month of August, 2008, it came to the knowledge of the plaintiff that a shop situated at 101, Bidhan Sarani, Kolkata, was being run under the name 'K. C. Dass' for the purpose of sale of readymade garments. The only distinction between the trade name used by the defendant is an addition of the letter 'S' to that of the plaintiff's registered mark 'K.C. Das' but the defendant has represented the mark in the same stylised form as that of the plaintiff's mark and as a result, the business carried on under the trade name 'K.C. Dass' by the defendant has resulted in not only infringement of the plaintiff's registered trademark but also in passing of their business as that of the plaintiff. The said mark of the defendant is phonetically, structurally, visually and deceptively similar to and/or identical with the mark of the plaintiff.
g) The plaintiff immediately caused two notices dated 30th August, 2008 and 18th September, 2008 to be issued calling upon the defendant to cease and desist from the use of the said trademark 'K.C. Dass'. The defendant, however, failed or neglected to comply with the directions as stated in the notice and hence, the suit was filed.
6On the basis of the aforesaid averments, the plaintiff came up with an application for injunction restraining the defendant from carrying on any business in the aforesaid trade name of the plaintiff or passing off the business of the defendant as that of the plaintiff to the people in general as indicated above.
The learned Single Judge by an order dated 24th September, 2008, passed an interim order but subsequently on 30th September, 2008, when the matter was taken up for hearing and the documents were disclosed by the counsel appearing on behalf of the respondent, varied the order by directing the respondent to maintain a separate account in respect of the sales effected till 12th November, 2008 with a direction to file affidavit.
Despite directions being given to file affidavit, the respondent instead of filing such affidavit, filed further application for dismissal of the suit on the ground that 'K. C. Dass' was non-existent. The learned Single Judge, however, dismissed such application.
Subsequently, the respondent filed their affidavit-in-opposition and the defence of the respondent may be summed up thus:
a) The name of 'K. C. Dass' was used for the first time in the year 1993 by a partnership firm formed by a deed of partnership dated 30th March, 1993 for sale of readymade garments.7
b) The said partnership firm initially carried on business under the name and style 'K. C. Dass' from 112, Bidhan Sarani, Kolkata, wherefrom the other businesses were also being carried on under the name and style of 'K. C. Dass & Co.' by a separate partnership firm alleged to have been constituted by a partnership deed dated 15th April, 1959. The newly constituted firm, namely, 'K. C. Dass' has subsequently shifted its place of business to 102, Bidhan Sarani, Kolkata and the said firm was further reconstituted on 15th July, 2004.
c) The partnership firm 'K. C. Dass' did not carry on business any longer as its business have alleged to be taken over by the company 'K. C. Das Fashions Pvt. Ltd.' on 17th March, 2008.
d) The plaintiff is not entitled to get any interim order as the plaintiff failed to prove any prima facie case.
As indicated earlier, the learned Single Judge, by the order dated 30th October, 2009 dismissed the application with a finding that there is no infringement of trademark as the plaintiff has not registered its mark for garments in class 24 and no infringement is proved as the product of the plaintiff is not similar. As regards the claim of the plaintiff that it is also registered under class 42 which is wide in terms, according to learned Single Judge, the question 8 of infringement of services has not been pleaded in the plaint although argued before the learned Single Judge and as such, no relief should be granted by way of interim order on the basis of pleadings on record.
As regards the allegation of passing off, the learned Single Judge was of the view that as the class of goods of the plaintiff and that of the defendant is different, there cannot be any confusion among the public in general and thus, the plaintiff was also not entitled to get any interim relief on the claim of passing off.
Being dissatisfied, the plaintiff has come up with the present appeal. Mr. Bachawat, the learned advocate appearing on behalf of the appellant, has, at the very outset, submitted before us that his client having registered the trademark under serial No.42 which deals with services, the learned Single Judge erred in law in holding that the plaintiff did not plead violation of services. Mr. Bachawat draws our attention to the specific averment made in the plaint alleging violation in respect of category of services rendered by the plaintiff.
As regards the allegation of passing off, Mr. Bachawat contends that the very same stylist way of writing 'K. C. Dass' itself indicates that the sole object of the defendant is to pass off his business as that of plaintiff. Mr. Bachawat contends that in order to get an order of injunction alleging passing off, it is not 9 necessary that the nature of business carried on by the defendant must be of the similar nature. Here specific allegation of the plaintiff is that by the name used by the defendant in the signboard of the business, the defendant has tried to pass off his business as that of plaintiff. Mr. Bachawat, therefore, prays for setting aside the order passed by the learned Single Judge and granting injunction as prayed for.
Mr. Chakraborty, the learned senior counsel appearing on behalf of the defendant, has, however, opposed the aforesaid contentions advanced by Mr. Bachawat and according to him, in the case before us, the learned Single Judge rightly held that the plaintiff has failed to prove violation of registered trademark inasmuch as the plaintiff has not registered its trademark in serial No.25 which is meant for readymade garments. Mr. Chakraborty submits that by selling readymade garments, no service is delivered to any customers and thus, registration in serial No.42 did not confer any right upon the plaintiff to get an order of injunction.
As regards the claim of passing off, Mr. Chakraborty submits that passing off can be alleged only in respect of goods and in this case as the goods sold by defendant is different in nature, there is no scope of any confusion among public and thus, the learned Single Judge rightly dismissed the said prayer. Mr. Chakraborty, therefore, prays for dismissal of the appeal. 10
Therefore, the questions that fall for determination in this appeal is whether the learned Single Judge in the facts of the present case was justified in refusing the prayer for injunction either on the ground of violation of registered trademark or for passing off.
As regards the allegation of violation of registered trademarks in serial no. 42, we find that the learned Single Judge overlooked the pleading of the plaintiff that specific allegation of violation of trademarks under the category "Services" was pleaded. Thus, it was a mistake on the part of the learned Single Judge in refusing to consider that aspect of the matter on a ground not tenable in the eye of law. Since, this Court is the first Appellate Court, in exercise of our power conferred under Order 41 Rule 24 read with Order 43 of the Code of Civil Procedure, we instead of remanding the matter, propose to consider the abovementioned aspect and consequently, invited the learned counsel for the parties to make appropriate submission on merit.
After hearing the learned counsel for the parties and after considering the materials on record, we are, however, of the view that in the case before us, the plaintiff is not entitled to get an injunction on the alleged violation of serial no.42 for the following reasons:
The word "service" is defined in Section 2 (z) of the Act in the following way:11
"''service'' means service of any description which is made available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising;"
In the case before us, the plaint allegation is that the defendant is running its business of sale of readymade garments in almost the same trade name of the plaintiff which is a registered mark under the heading service and thus, there is violation of registered trademarks under that serial 42. We have already pointed out that the plaintiffs' trademarks are not registered under serial no.25 for readymade garments and thus, there is no violation of that item. In our opinion, having regard to the definition of service indicated above, there is no scope of bringing the business of sale of readymade garment under the heading Service. The defendant in course of his business of sale of readymade garment is not alleged to have rendered any service to the customers or anyone else within the meaning of the definition of the word "service".
Therefore, in the facts of the present case, the plaintiff is not entitled to get any injunction on the alleged violation of registered trademarks under serial no.42. If a particular business falls within a specific heading, as in this case 12 under serial no.25, it is outlandish to suggest that the selfsame business will also come under the category of Service as a business in the nature of sale of readymade garment can in no case fall under that category. In order to bring the infringement within serial no.42, the plaintiff must clearly allege the nature of service rendered by the defendant in course of his business so that the defendant can effectively deal with such allegation and the Court can also come to a just conclusion after considering the allegations and the counter allegations.
The next question is whether the plaintiff is entitled to get an order of injunction on the alleged violation of passing off.
At the very outset, we keep it on record that we are quite alive to the position of law that the scope of investigation in an action for infringement of registered trademark varies a lot from the one for passing off. As pointed out by a Bench consisting of three Judges of the Apex Court in the case of Durga Dutta Sharma Vs. N. P. Laboratories, reported in A.I.R. 1965 SC 980, in the former type of cases, once it is established that the essential features of the trademark of the plaintiff has 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 of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that 13 the 'added matters' are sufficient to distinguish his goods from those of the plaintiffs.
In proceedings alleging passing off, the Court is required to answer the question whether there is such resemblance between the two names as that one is in the ordinary course of human affairs likely to be confounded with the other. It is, however, not necessary for the plaintiff to prove that the defendant in assuming the name complained of by it had any fraudulent intention. It is enough if the plaintiff proves that the act of the defendant in taking the name objected to by it is an injury to its right. The principle upon which the cases of this nature proceed is not that there is property in the word, but that it is a fraud on a person who has established a trade and carries it on under a given name by some other who assumes the same name with a slight alteration in such a way as to induce the people to deal with him in the belief that they are dealing with the person who has given reputation to the name.
We are also quite conscious of the position of law that a man is entitled to use his own name honestly and fairly and if he does not do anything more, he cannot be restrained even if some confusion arises. A man must be allowed to carry on business in his own name or that of his predecessor and if in the process, some confusion arises, that should not be a ground to restrain that man from carrying on his business in such name which is an inherent right of a man. But if that person oversteps that right and does anything in excess of his 14 aforesaid right which would result in deception, he should be restrained in an action of passing off.
Bearing in mind the aforesaid position of law, we now propose to consider whether the learned Single Judge in the facts of the present case was justified in refusing to grant injunction.
From the materials on record, we find that the plaintiff has in the field of business of sweetmeat and its allied products earned goodwill for quite a long time and even, prior to the formation of the partnership of the defendant. We find that the nature of goods sold by the defendant is no doubt different from the ones sold by the plaintiff but such fact is not a decisive factor although may be one of the relevant factors in considering the question of passing off in a given situation on allegation of passing off. But where the plaintiff alleges that even the style of writing the trade name of the plaintiff has been adopted by the defendant and such fact is proved only with the exception that one "s" has been added, we find a strong prima facie case of the plaintiff that by such deceptive act of the defendant, people in general would be deceived and they would think that the plaintiff has really started the business of selling readymade garments and being influenced by the reputation of the plaintiff, they would be tempted to purchase the goods sold by the defendant as the goods of the plaintiff which is a business of repute in other field.
15
We do not find any substance in the contention of Mr. Chakraborty that there cannot be any passing off if the goods sold by the defendant are different in nature. In this case, the allegation of the plaintiff is in substance that by the use of the same stylish mark of K. C. Das by adding one "s", the defendant is passing off their business as that of the plaintiff resulting in loss of reputation of the plaintiff.
Although the ground of delay was also put forward as a defence, we are not impressed by such submission because it is the case of the plaintiff that it was not aware of the existence of the defendant's business earlier and at the same time, no material has been placed before the Court to indicate that the plaintiff had such knowledge earlier and that the delay in the case has assumed the character of acquiescence so as to deprive the plaintiff of the right to get an order of injunction restraining the defendant from using the stylish way of writing its own trade name by adding one "s".
In the facts of the present case, we are of the view that by adopting the same stylish way of writing its trade name with that of the plaintiff the defendant has passed of its business as that of the plaintiff. If the defendant without adopting the said style simply carries on a business in its own name of "K. C. Dass", having regard to the nature of business carried on by the defendant which has no connection with that of the plaintiff, there might be some confusion but 16 that would not be sufficient to injunct the defendant from carrying on his business of sale of his readymade garment.
We, therefore, find that the learned Single Judge erred in law in overlooking the aforesaid aspect and consequently, rather permitted the defendant to adopt the same style of writing as that of the trade name of the plaintiff which has earned goodwill in the market.
We, thus, set aside the order passed by the learned Single Judge and allow the application by restraining the defendant from using the same style of writing the trade name as that of the plaintiff by adding one "s" in any part of their trade name "K, C. Das". We make it clear that the defendant without adopting the stylish font of the plaintiff would be entitled to carry on its business of sale of readymade garments in its own name by defusing the confusion indicated above; otherwise, the same will result in deception. Similarly, in their changed trade name, viz. 'K. C. Das Fashions Pvt. Ltd.', the defendant should not use the stylish font of the plaintiff.
The appeal is thus allowed to the extent indicated above. There will be, however, no order as to costs.
(Bhaskar Bhattacharya, J.) I agree.
17
(Sambuddha Chakrabarti, J) Later:
After this order is passed Mr. Banerji, appearing on behalf of the respondent herein prays for stay of operation of our aforesaid order. In view of our finding, we find no reason to stay our order. Prayer is refused.
Photostat certified copy of this judgment be made available to the parties by day after tomorrow.
(Bhaskar Bhattacharya, J.) I agree.
(Sambuddha Chakrabarti, J)