Calcutta High Court
Orient Papers Industries Ltd vs Jayanta Lamp Industries Pve. Ltd on 25 April, 2011
Author: Bhaskar Bhattacharya
Bench: Bhaskar Bhattacharya
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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. 426 of 2011
A.P.O.T. No. 71 of 2011
Orient Papers Industries Ltd.
Versus
Jayanta Lamp Industries Pve. Ltd.
For the Appellant: Mr. Anindya Kr. Mitra,
Ms. Mousumi Bhattarcharjee.
For the Defendant: Mr. Pratap Chatterjee,
Mr. Ranjan Bachawat,
Mr. Debnath Ghosh,
Mr. P. Sinha.
Heard on: 21.03.2011
Judgment on: 25th April, 2001.
Bhaskar Bhattacharya, J.:
This appeal under Clause 15 of the Letters Patent is at the instance of a defendant in a suit for damages alleging passing off and is directed against order dated January 21, 2011, passed by a learned Single Judge of this Court by which His Lordship allowed an application for injunction restraining the appellant from using the mark "Orient" or any colourable imitation thereof in respect of the item of electric lamps till the disposal of the suit.
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Being dissatisfied, the defendant has come up with the present appeal. The respondent before us, viz. one Jayanta Lamp Industries Pvt. Ltd. filed in the Original Side of this Court a suit being C.S. No.259 of 2009 against the appellant, viz. Orient Papers & Industries Ltd. and thereby praying for a decree for permanent injunction restraining the defendant, its group of companies, directors, servants, agents, assigns, dealers and retailers and each of them, from in any way using the trademark ORIENT or any other mark deceptively similar thereto in respect of lamps of any description and also for permanent injunction restraining them from in any way passing off the lamps of the plaintiff by manufacturing, causing to manufacture, selling, advertising lamps bearing the trademark, "ORIENT" or any other mark deceptively similar thereto in respect of lamps of any description and also for a decree of Rs.11 lakh as damages.
The case made out by the respondent in the aforesaid suit may be summed up thus:
The plaintiff is the owner of the mark ORIENT and holds registrations and applications for the mark ORIENT in different classes as mentioned below:
REGISTREATIONS Registration Class Registration Date Mark Goods No. 476093 11 30/07/1987 ORIENT Electric bulbs for sale in the (Label) state of West Bengal 690934 11 18/12/1995 Electric lamps ORIENT 3 (word) 1300733 09 05/08/2004 ORIENT Electronic goods, apparatus (Label) and appliances and parts, fittings and accessories thereof, computers, data processing equipments, computer hardware, computer peripherals, printers, battery, chocks, starters, switch, electrical wiring accessories, electric plugs, lamps holder, electronic ballast, electronic chocks.
APPLICATION Application Class Date Goods No. 1502478 11 08/11/2006 Electric lighting and fittings, electric lamps i.e. Tube lights, night lamps, bulbs, CFL, discharge tube lamps, auto lamps, spotlight, lighting installation for vehicles, electrical fans.
a) The products manufactured and sold by the plaintiff are of high quality and by reason of its extensive user, publicity and large sales, the mark ORIENT has acquired tremendous goodwill and reputation in favour of the plaintiff in respect of lamps of diverse descriptions. Trades and customers associates identify the mark ORIENT with the plaintiff and none else in respect of lamps of diverse descriptions. 4
b) Due to the excellent quality and extensive publicity and the sale of the products, the mark ORIENT has acquired tremendous reputation amongst the trade and public in respect of lamps and the members of the public and trade identify the products of the plaintiff with the said mark, which has now become a household name associated directly with the plaintiff.
c) The defendant/company is an old and established company engaged in the business of manufacture and marketing of papers of diverse kinds and quality, cement and fans. From the website of the defendant under the headings "Home" and "Product", it is evident that the defendant is engaged in the business of papers, cement and fans only. The defendant is the proprietor of the unit known as Orient Fans. The defendant used the trademark ORIENT in respect of fans being "devices for ventilation".
d) In or about March, 2008, the plaintiff had come across lamps under the trademark ORIENT originating from the defendant. Soon thereafter, the plaintiff caused to serve a cease and desist notice dated March 28, 2008 on the defendant and thereby directing the defendant to desist forthwith from using of the trademark of ORIENT in any form whether alone or in combination with other marks in respect of lamps.
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e) The defendant replied to the said notice and contended that it is the adopter and user of the mark ORIENT since 1946 and the said trademark is registered in favour of the defendant under No.106065. It was further alleged that the defendant also holds registration under No.635755 in Oman and Kenya and the registrations are pending in certain other countries. It was further alleged that the defendant enjoyed substantial reputation and goodwill throughout India and abroad in respect of the trademark ORIENT and also held a further registration under No.1397541 which covered lighting devices including lamps and other lighting accessories and there was no justification for the plaintiff for the adoption of the trademark of the trademark ORIENT identical to the mark Orient of the defendant.
f) The plaintiff thereafter caused online searches to verify the statements of the defendant but the online search report containing information with respect to trademark No.1397541 revealed that the registration covered the goods "electrical circuit protection devices like MCRS, LT/HT switch gears, console boxes for switch gears" and no reference is found in the report to any lighting devices, such as, lamps and lighting accessories in the said registration as was sought to be claimed by the defendant in the proceeding before the Trademark Authorities.
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g) The trademark No.106065 in class 11 stood in the name of the Calcutta Electric Manufacture Co. Ltd. as it appeared from the website of the trademark and was shown as rectification field. The plaintiff has filed a rectification application against the aforesaid trademark No.106065 in class 11 on or about July 22, 2009 of the said registration number covering fans, refrigerators electric bulbs, electric heaters and stoves.
h) The grievance of the plaintiff is only with respect to electric bulbs and, therefore, by the said rectification application, the plaintiff sought deletion of the item "electric bulbs" from the aforesaid registration of the defendant.
i) The plaintiff also filed rectification application against the trademark No.635755 in class 11 of the defendant which is still pending. The said registration is in respect of fans, refrigerators, electric bulbs, electric heaters, stoves and as the grievance of the plaintiff is only with respect to electric bulbs and, therefore, in the said rectification application, the plaintiff has sought deletion of the item electric bulbs.
j) The defendant has filed its counter and evidence in the said proceeding and has stated on oath that the trademark ORIENT was used in respect of lamps for the first time in the month of October, 2007.
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k) The plaintiff is an old continuous and extensive user of the mark ORIENT in respect of bulbs, lamps and like products, and enjoyed reputation of high order for many years throughout the country and in the year 2001, the plaintiff came across the use of the mark ORIENT in respect of lamps by a local trader in Chennai, namely, Ramesh Electrical. When the plaintiff complained to the police authority, the owner of the said firm settled the matter with the plaintiff by furnishing an undertaking dated June 14, 2001.
l) The word ORIENT is a common word and used by many in respect of different products. The word ORIENT ordinarily means the Countries of Asia, especially of eastern Asia and the fact that the word ORIENT forms part of the corporate name of the defendant and that it is the trademark of the defendant in respect of cement, paper and electric fans cannot prevent others from using the common word in respect of other goods.
m) No trader can take away a common word from the dictionary as its own but can only claim registration and exclusive right in the said word in respect of the products for which the trademark is used and registered.
n) The defendant has passed off and/or attempted to pass off its lamps as the lamp of the plaintiff by the use of the mark ORIENT. 8 On the basis of the aforesaid averments, the plaintiff came up with an application for temporary injunction restraining the defendant from passing off the lamps by the use of the mark ORIENT or any colourable imitation thereof.
The aforesaid application was contested by the defendant by filing written objection thereby denying the material allegations made in the application for injunction and the defence of the defendant may be summed up thus:
(i) The petitioner cannot get any relief for alleged infringement of any of its trademarks by reason of the following facts:
a) The defendant is the owner of the registered trademark "Orient"
being trademark No.635755 with effect from 3rd August, 1994 in class 11 in respect of fans, refrigerator, electric bulbs, electric heaters and stoves.
b) The Calcutta Electrical Manufacturing Company Limited was the registered proprietor of the trademark "Orient" bearing registration No.106065 on and with effect from 14th February, 1945 in class 11 in respect of fans, refrigerators, electric bulbs, electric heaters and stoves.
c) The said trademark was assigned in favour of Orient General Industries Limited, the predecessor in interest of the defendant in writing on 11th August, 1954 by the said the Calcutta 9 Electrical Manufacturing Company Limited. Thereafter, pursuant to an order passed by this Hon'ble Court dated 3rd October, 1994 and by an order dated 21st February, 1995 passed by the Hon'ble High Court of Orissa, a Scheme of Amalgamation by and between the defendant and the said Orient General Industries Limited was sanctioned whereby and where under, all the properties and assets of Orient General Industries Limited including its trademark stood vested in the defendant.
d) By reason of the aforesaid fact, the defendant and/or its predecessor-in-interest, viz. the Orient General Industries Limited became the proprietor of the said trademark "Orient".
e) The trademark bearing registration No.635755 was associated with trademark bearing registration No.106065 as will appear from the document itself.
f) The Plaintiff has also accepted that the defendant is the registered proprietor in respect of trademark bearing Nos.106065 and 635755 and has, therefore, applied for rectification of the Register in respect of such trademark.
g) In such circumstances, the Plaintiff is not entitled to any relief on account of infringement of trademark by reason, inter alia, of the provisions contained in Section 28(3) of the Trademark Act, 10 1999 and the provisions contained in Section 29(1) (2) and (4) thereof.
(ii) The plaintiff is not entitled to any relief on the ground of passing off as against the defendant by reason of the following facts :
a. The Calcutta Electrical Manufacturing Co. Ltd. was the registered proprietor of the trademark "Orient" in respect of fans and electric bulbs since 1945 and thereafter, the Orient General Industries Limited, the predecessor in interest of the defendant, became the registered proprietor of the said marks since 1954, and the said Orient General Industries Limited was merged with the defendant with effect from 1st March, 1995 and as such, the defendant was entitled all the benefits of the registration of the mark "Orient" bearing NO.106065 on and with effect from 14th February, 1945 and/or in any event on and with effect from 11th August, 1954.
b. The plaintiff not having shown or claimed any user of the mark "Orient" prior to 14th February, 1945 and/or 11th August, 1954 cannot make any claim on account of passing off as against the defendant.
c. Orient General Industries Limited and the defendant are and were, at all material times, under the same management and in fact, the said Orient General Industries Limited was a subsidiary 11 of the defendant which was earlier known Orient Paper Mills Ltd. The defendant and Orient General Industries Ltd has the mark "Orient" as a prominent part of their name and trading style prior to and/or since 1954 and Orient General Industries Limited, the predecessor in interest of the defendant has used the mark "Orient" in respect of fans extensively and continuously since 1954. By reason of the relationship between the defendant and the said Orient General Industrial Ltd, the said use of the mark "Orient" in respect of fans amounted to use by the defendant of the mark "Orient" in respect of fans. Orient General Industries Ltd initially produced and marketed fans only under the mark "Orient" exclusively. Thereafter, upon developing different models of fans Orient General Industries Ltd and/or the defendant to distinguish the different models, manufactured and sold different models of fans under the mark "Orient" alone and/or under the mark "Orient" in the packaging in conjunction with other marks on the packaging like "Orient PSPO", "Summer King", "New Breeze", "Summer Coll", "Deluxe", "Hurricane", "Tornado", "Summer Delite", "Summer Breeze", "Sumer Pride", "Arista", "Victoria", "Subaris", "Alexandria". The mark "Orient" appears alone or as "Orient PSPO" on the body of the fans sold by it. The same will show that the mark "Orient" is used extensively by the defendant and is the main trademark of 12 the defendant and was also used extensively by Orient General Industries Ltd. By reason of continuous publicity of the mark "Orient" by the defendant and Orient General Industries Ltd, both in the print and electronic media, the said mark has become well-known and distinctive of the defendant and acquired a secondary reputation as indicated herein. d. The defendant has also used the mark "Orient" alone and/or with the word "Gold" in respect of cement manufactured and sold by it over the last 25 years. Advertisement and sales promotion expenses incurred by Orient General Industries Limited and the defendant in respect of the mark "Orient" for fans, for more than the last three decades will show that advertisement and sales promotion expenses of over Rupees 100 crore have been incurred by the defendant in this regard. e. The total sales of fans by the defendant and/or its predecessor in interest, Orient General Industries Limited using the mark "Orient" as indicated above for the last three decades amounting to over Rupees 3590 crore would appear from the Schedule which was annexed to the affidavit.
f. The shares of the defendant are listed on the Bombay Stock Exchange and the National Stock Exchange and are dealt with regularly. The shares of the defendant have been dealt with in 13 the Calcutta Stock Exchange on or prior to the 1950s and its daily quotations are reflected under the name "ORIENT PAPER"
in the print media.
g. By reason of the aforesaid, the word "Orient" as used by the defendant has acquired a secondary meaning and is equated with the defendant and has come to signify the business of and of products manufactured and sold by the defendant. Such reputation in respect of the mark "Orient" has been acquired by the defendant by reason of extensive and continuous use of the mark "Orient" in respect of diverse products all over India prior to 1954 and/or in any event since 1954. In any event, the defendant and/or its predecessor-in-interest viz. its subsidiary Orient General Industries Limited has been using the mark "Orient" in respect of fans which are cognate and/or allied goods to electric bulbs and lamps since 1954 onwards continuously and extensively and have acquired tremendous goodwill and reputation in respect thereof as would be evident from the statements made hereinabove. Use of mark "Orient" in respect of fans tantamount to use of the said mark by the defendant in respect of all cognate or allied goods which includes electric lamps and electric bulbs. Fans are also sold through common trading channels and have common customers. Electric lights and lamps have been sold as part of fans since a long time. 14 h. The mark "Orient" has been adopted by the defendant as part of its trading style prior to use of the mark "Orient" as claimed by the Plaintiff and/or in any event, the defendant has and/or Orient General Industries Limited as erstwhile subsidiary of the defendant has used the mark "Orient" in respect of fans prior to the alleged use of the mark "Orient" in respect of electric bulbs and lamps by the petitioner.
i. Further the use of the mark "Orient" by the defendant in respect of fans, in law also amounts to use of the said mark in respect of electric bulbs and lamps as the same are cognate and allied goods.
j. In such circumstances, the defendant has adopted the mark "Orient" which has acquired a secondary meaning i.e. it is equated with all products of the defendant and/or in any event, is the prior user of the mark "Orient" in respect of other goods including cognate and allied goods i.e. fans and as such, the plaintiff cannot claim to be the prior user of the mark "Orient" in respect of electric lamps or bulbs and/or CFL lamps and FTL lights or claim any relief on account of passing off. Instead, by reason of the above, the defendant and/or its predecessor-in- interest i.e. Orient General Industries Limited was the prior user of the mark "Orient" and/or in law is entitled to be treated as 15 the prior user of the mark "Orient" for electric lamps and bulbs as also CFL lamps, GLS bulbs and FTL lights.
k. The purported claim of the Plaintiff as the prior user of the mark "Orient" is also without basis for the following reasons: The plaintiff filed an affidavit-in-reply to the aforesaid application thereby virtually repeating and reiterating the plaint case and assertion.
As pointed out earlier, the learned Single Judge by the order impugned herein has disposed of the application for injunction by passing an order of injunction against the appellant.
Being dissatisfied, the defendant has come up with the present appeal. After hearing the learned counsel for the parties and after going through the materials on record, we find that the law relating to the grant of injunction alleging passing of is now well settled. In proceedings alleging passing off, the Court is required to answer the question whether there is such similitude between the two names as that one is in the ordinary course of human affairs likely to be confused 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 16 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 aforesaid right which would result in deception, he should be restrained in an action of passing off.
At the same time, when a person decides to espouse a trade name consisting of a word of common or generic use, some risk of uncertainty in this regard is inescapable. In such cases, the Courts, in one hand, will not readily infer that the use of such a word by a rival in the business as part of the trade name of the latter would likely to cause confusion, but at the same time, have also the duty to protect the right of individuality accrued to the first user and will rather acknowledge even a small variation from the trade name used by the 17 former at the instance of the latter as sufficient to overcome the allegation of passing off.
At this stage, we may appropriately refer to the decision of the Supreme Court in the case of M/s. Satyam Infoway Ltd. vs. M/s. Sifynet Solutions Pvt. Ltd., reported in AIR 2004 SC 3540 where the Supreme Court made following observations in paragraph 13 of the judgement in dealing with the case of passing off:
"The next question is would the principles of trade mark law and in particular those relating to passing off apply? An action for passing off, as the phrase "passing off¨ itself suggests, is to restrain the defendant from passing off its goods or services to the public as that of the plaintiff's. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its services in a manner which has deceived or would be likely to deceive the public into thinking that the defendant's goods or services are the plaintiff's. The action is normally available to the owner of a distinctive trademark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The question is, as has been aptly put, who gets these first? It is not essential for the plaintiff to prove long user to establish reputation in a passing off action. It would depend upon the volume of sales and extent of advertisement."
(Emphasis supplied) 18 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 granting injunction.
The first question before us is which one of the parties, is the prior user of the word "orient".
In the case before us, the plaintiff itself has admitted that the defendant uses the word "orient" in its trade name even prior to the use of the said word by the plaintiff but the case made out by it is that the defendant's field of activities were different and not in the field of manufacture of the electric lamp. The plaintiff has admitted that the defendant uses its trade name "orient" in the business of sale of electric fan, cement etc. We have gone through the records of the case and we find that of the two, the defendant is the prior user of the word "orient" in its trade name and trade articles which are, of course, not in the field of manufacture of electric lamp. However, when the basis of an action for injunction and damages is on the allegation of passing off by the alleged wrongful use of the word "orient" by the defendant, if it appears that the defendant is the prior user of the said word, even though in different fields of articles, in our opinion, no order of injunction can be passed restraining the prior user of the word from using the same even in respect of the specific goods manufactured subsequently by the defendant. 19
It is now settled law, that in the field of passing off, it is not necessary that the nature of the business conducted by the defendant must be of the similar nature as that of the plaintiff and a prior user of a trade mark or trade name may get an order of injunction restraining the defendant from carrying on a different type of business in the same name as that of the plaintiff (Sony Kabushiki Kaisha Vs. Mahaluxmi Textile Mills reported in (2009) 4 ICC 391 (CAL) (FB).
Therefore, in this case, when the plaintiff started its lamp manufacturing business by taking the name of "orient", the defendant could successfully file an action for injunction alleging passing off against the plaintiff but for not filing such action, it, at this stage, may not get the relief of injunction against the plaintiff from using its trade name "orient" because of the delay amounting to acquiescence; however, for that reason, the Court will never grant an injunction in favour of the plaintiff against the defendant from using its own trade name which it is using prior to the user by the plaintiff. In an action of passing off based on adoption by the defendant of the name alone and no other distinctive features of the plaintiff, the first question that a Court will ask the plaintiff is, are you the prior user of the word you are complaining to the user of the defendant? If the answer is in the negative, the Court will refuse injunction as the first ingredient of the action for passing off, viz. prior user by the plaintiff, is absent. 20
We can view the scenario from a different angle. In an action for injunction, the plaintiff must come with clean hand. If the Court finds that it is the plaintiff who, while commencing its own business of lamp, adopted the trade name of another who had a substantial fame in the market, may not in the field of sale of lamp but in field of sale of fan, such a plaintiff, in our opinion, should not get an order of injunction, at least against the said prior user of the mark, although it may get an order of injunction against a third party if such a third party being a subsequent user of the mark starts even a different type of business if other necessary ingredients of passing off are satisfied.
Apart from the above aspect, we have seen that the turnover of the business of the plaintiff is much less than that of the defendant and even the getup of the articles manufactured by the defendant are different from that of the plaintiff and it is also not the case of the plaintiff that the getup or any other distinctive feature of the goods manufactured by the defendant is similar to that of the plaintiff apart from the trade name. Thus, the prayer of the plaintiff to restrain the defendant by injunction from selling its EFL and fluorescent tube light only on the ground of use of the trade name "orient", is not tenable in the eye of law when apart from the trade name, no other distinctive features of the plaintiff's good has been adopted by the defendant.
We now propose to deal with the decisions cited by Mr. Chatterjee, the counsel for the plaintiff/respondent.
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In the case of Vishnudas Trading as Vishnudas Kishandas, Vs. Vazir Sultan Tobacco Co. Ltd., Hyderabad and another reported in AIR 1996 SC 2275, the respondent Company got registration of its brand name "charminar" under the broad classification 'manufactured tobacco'. According to the respondent, so long such registration remained operative, the respondent company was entitled to claim exclusive use of the said brand name in respect of articles made of tobacco coming under the said broad classification 'manufactured tobacco'. Precisely for the said reason, when the appellant made application for registration of quiwam and zarda under the same brand name "charminar", such prayer of registration was not allowed. The appellant, therefore, made application for rectification of the registration made in favour of the respondent company so that the said registration is limited only in respect of the articles being manufactured and marketed by the respondent company, namely, cigarettes. Such prayer was granted but on appeal the High Court set aside the order of rectification. The Supreme Court allowed the appeal by holding that the rectification of the registration by limiting or confining the registration of trade mark of the Respondent Company to particular goods, namely, cigarettes, in the facts and circumstances of the case, could not be held as illegal or unjustified. By relying upon the said decision, Mr. Chatterjee tried to convince us that his client, although a subsequent user of the trade name "orient", is entitled to an order of injunction in respect of the particular item of manufacture, viz. lamp against the defendant, the prior user of the trade name "orient".
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We find that the Supreme Court while deciding the aforesaid case made the following observations at paragraph 48 of the judgement:
"It has already been indicated that the controversy in the instant appeals, is only confined to the propriety and validity of the order of rectification of the registration of trade mark made in favour of respondent company and it is not necessary to address on the questions of infringement of trade marks, passing off, defensive registration etc. In that view of the matter various decisions cited at the bar dealing with the likely prejudice to be suffered by a trader or manufacturer enjoying registration of trade mark in the event, similar or deceptively similar trade mark is allowed to other trader or manufacturer in respect of similar goods or goods marketed through common trade channel need not be taken into consideration for the disposal of these appeals. As in the facts and circumstances of the case, the rectification of the trade marks registered in favour of the respondent company since allowed by the Assistant Registrar of Trade Marks was valid and also justified, such order in our view, should not have been interfered with in appeal. We, therefore, allow these appeals, set aside the impugned judgments of the High Court and restore the order of rectification passed by the Assistant Registrar of Trade Marks, Madras. By way of abundant caution, it is expressly made clear that we have not expressed any opinion on the claim of registration of the trade mark "charminar" in favour of the appellant for quiwam and zarda being manufactured and traded by the appellant. In the facts of the case, there will however be no order as to costs."
(Emphasis supplied by us).
23Thus, the said decision does not apply to a case of passing off. In the case of M/s. Sona Spices Pvt. Ltd vs. M/s. Soongachi Tea Industries Pvt. Ltd. reported in MIPR 2007(1) 36, a case before a learned Single Judge of the Delhi High Court, the plaintiff had been manufacturing and selling Sona Spices for a considerable period of time and had got a trademark registered in the name of "Sona" for Spices. The plaintiff started manufacturing and selling tea under its trademark "Sona" sometime in the year 1993. The defendant had registered trademarks in respect of "Sona" for tea since 1983 about 10 years earlier. According to the plaintiff, since the plaintiff was prior user of trade name and trademark "Sona", the defendant should not pass off its tea as that of the plaintiff nor could the defendant infringe the trademark of the plaintiff. The said suit was filed by the plaintiff in which an ad interim injunction to the same effect had been prayed for. The Plaintiff (Sona Spices Pvt. Ltd) had filed suit against defendant (Soongachi Tea Industries Pvt. Ltd.) for permanent injunction restraining the defendant form using the trademark "Sona" or "Sona" logo or any other similar trade mark or trade name so as to infringe the plaintiff's trademark registration.
The defendant (M/s. Soongachi Tea Industies Pvt. Ltd. filed a separate suit against the Sona Spices Pvt Ltd. for permanent injunction restraining Sona Spices from using its registered trademark in respect of tea or other beverage in infringement of its trademark.
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The learned Single Judge of the Delhi High Court made following observations in paragraphs 13 to 15 of the judgement:
"I am not satisfied that the plaintiff has made out a prima facie case for interference. Even though the plaintiff may be entitled to say that its use of the trademark "Sona" can extend beyond Spices to other cognate and allied goods such as Tea, the fact remains that the plaintiff has utilized this trademark for manufacture of Tea prior to 1993 as per its own averment. On the other hand, the Defendant has been manufacturing and marketing Sona Tea since some time in 1978-79 and in any case since it got the "Sona" trademark registered on 23rd June, 1983, which is good ten years before the user of the trade name "Sona" in respect of Tea by the plaintiff. Despite this, the Plaintiff has taken absolutely no step to prtect its interest in respect of the trademark "Sona" in regard to the manufacture and sale of Tea.
Another reason why I am of the view that the Plaintiff has not been able to make out a prima facie case for grant of an interim injunction is that the sale figures projected by the Plaintiff are quite insubstantial in comparison to the sale figures of the Defendant in respect of the Sona Tea. According to the Defendant, it has now reached a sale figure of Rs. 12 crores per annum and this averment has not been denied by the Plaintiff. The Plaintiff does not claim to have such substantial sales of Sona Tea.
For the above reasons, I am of the view that the Plaintiff has not made out any prima facie case for interference while the 25 Defendant has made out a prima facie case for grant of an interim injunction as prayed for."
We find that the actions were based on allegation of passing off by the plaintiff against the defendant for using its trade name "Sona" while the defendant brought the action for violation of its registered trademarks "Sona" and also alleging passing off in the field of Tea. In the case before us, it is a case of mere passing off as both the plaintiff and the defendant are the holders of registered trademark "Orient" in the field of Lamp and the applications for rectifications are pending at the instances of both the parties. We respectfully agree with the learned Judge of the Delhi High Court that the plaintiff in that case should not get an order of injunction against the defendant from using its registered trademark "Sona" by taking aid of the principle of passing off because of its inaction for 14 years and the sale-proceeds are insubstantial in comparison to that of the defendant and even in this case, as pointed out by us earlier, if the defendant prays for injunction against the plaintiff alleging passing off in respect of the sale of lamp, the same should be refused on the ground of delay amounting to acquiescence. But the principles laid down in the Delhi Case cannot be availed of by the plaintiff in this case because the Court in that case took note of the fact that the sale of M/s. Soongachi Tea Industries Pvt. Ltd was much higher than Sona Spices, the plaintiff. In the case before us which is based purely on the allegation of passing off and the name alone is the subject-matter of dispute, the plaintiff, in our opinion, is not entitled to the benefit of passing off once it is found that the defendant is the prior user of the name. We have already 26 pointed out that it is not the case of the plaintiff that the defendant apart from the trade name "Orient" has adopted any other distinctive features of the plaintiff's goods. We have also pointed out that the sale of the goods of the plaintiff is insignificant in comparison to that of the defendant. Thus, the said Delhi decision is of no avail to the respondent before us. Moreover, in the Delhi Case, the counter-suit of the defendant, M/s. Soongachi Tea Products Pvt. Ltd., was based not only on the ground of passing off but also for infringement of its trademark.
In the case of Provident Financial PLC and another Vs. Halifax Building Society reported in 1994 FSR 81, the plaintiff was a company named as The Halifax Insurance Co. Ltd, incorporated in the year 1966 and acquired a fame in the field of motor insurance underwriter under the trade name "Halifax". The defendant was an old building society dealing with the business of building and house contents insurance from the early twenties in the twentieth century. Both of them applied for registration of the mark "Halifax". The plaintiff's mark was registered while the application of the defendant was advertised. In an action for infringement as well as passing off, the Court of chancery division was of the view, as the defendant had not yet entered into the field of motor insurance, but merely started survey for entering the field, it was a fit case for granting an order of status quo till the disposal of the proceedings to prevent confusion in the field of motor insurance. In the case before us, the defendant has already started the manufacture of CFL and its sale is much higher than that of the plaintiff in the 27 field of bulb manufactured by it and thus, the balance of convenience and inconvenience is in the present case in favour of refusing the injunction. We have already pointed out that the defendant in this case is the prior user of the name "Orient" and its business turnover is much more than that of the plaintiff. Thus, the plaintiff in the absence of adoption of any other distinctive features of the goods of the plaintiff by the defendant is not entitled to get an order of injunction for restraining the prior user of the trade name when it was the plaintiff who took the risk of adopting the defendant's name at the commencement of its business of lamp being fully conscious that the defendant is a well-known name in the business of fan, a field, the name of which is uttered together by the common people with that of lamp. Thus, the principle laid down in the case of "Halifax" which arises out of an action for both infringement of trademark and passing off has no application to the case before us, which is case of passing off alone and the plaintiff is not the prior user of the word "Orient".
In the case of Sterwin A. G. Vs. Brocades (Great Britain) Ltd. reported in 1979 RPC 481, the medicinal compounds named "Denol" belonged to the plaintiff while that of the defendant was "De-nol" in liquid form. The products of the defendant were meant for the treatment of gastric and duodenal ulcers and were introduced in the market long before the arrival of the plaintiff's product which was used for suppression of the menstrual cycle. The plaintiff brought a quia timet action apprehending confusion and deception on the news of introduction of "De-nol" in solid form. In the aforesaid context it was held that in relation to 28 the two products there had been no confusion and there was no likelihood of confusion because the Doctors and the pharmacists were trained to take very great care in their work and in doubt, to check before acting. According to the Court, if the defendant's product was marketed in solid form, a real likelihood of confusion would arise and the plaintiff's course of action with regard to the choice of mark was, therefore, reasonable. Consequently, it was held that the plaintiff was entitled to judgement, but, since, there was no immediate market threat, the case was found to be an inappropriate case for injunctive relief. With great respect, we fail to appreciate, if the product of the defendant in liquid form did not create any confusion "because the Doctors and the Pharmacists were well-trained", how there can be scope of confusion if "De-nol" was marketed in solid form although the same would pass through the same well-trained hands of the Doctors and Pharmacists. At any rate, we do not find any reason to restrain the defendant, a well-known company in the field of electric fan from manufacturing their CFL and fluorescent tube simply because the plaintiff in the past without the protest of the defendant adopted its same trade name and started manufacturing bulb, the sale proceeds of which is in inconsequential in comparison to that of the products of the defendant, from manufacturing the CFL and fluorescent tube in its trade name notwithstanding the fact it is the prior user of the trade name and apart from the trade name there is no other allegation of adopting any distinctive features of the products of the plaintiff. The balance of convenience and inconvenience is also in favour of refusing such prayer. The plaintiff itself is the cause of confusion, if at all, because it adopted the trade 29 name of the defendant and started manufacturing electric bulb notwithstanding the fact that the defendant was the registered trade mark holder in class 11 in respect of fans, refrigerators, electric bulbs, electric heaters and stoves. Thus, the plaintiff now cannot take advantage of its own wrong against the person wronged although the defendant at the same time may not be entitled to get injunction against the plaintiff at this stage for its inaction. We, therefore, find that the case of "Denol" does not help the plaintiff in any way.
We have already pointed out that the law relating to passing off enables a prior user of a trademark to get an order of injunction restraining a subsequent user of the same name in respect of a different type of business under certain circumstances (Sony Kabushiki Kaisha) (supra)), but it does not approve grant of injunction against a prior user of the same name at the instance of a subsequent user in respect of a different business when apart from trade name, no other distinctive features of the product of the subsequent user has been alleged to have been adopted by the prior user.
We, therefore, find that the learned Single Judge in granting the order of injunction against the defendant did not follow the well-settled principles which were required to be followed in this type of a case and it is a clear case of wrong exercise of discretion causing irreparable injury to the defendant being restrained from manufacturing and selling EFL and fluorescent tube lights in its own trade name in spite of the fact that it is the prior user of the name and apart from 30 name, no case has been made out that the defendant had adopted any other distinctive features of the goods sold by the plaintiff. Moreover, as pointed out earlier, the business turnover of the defendant is much higher than that of the plaintiff.
We, thus, allow this appeal by setting aside the order impugned and hold that the application for injunction filed by the plaintiff in the trial Court is liable to be dismissed and consequently, we dismiss the same.
In the facts and circumstances, there will be, however, no order as to costs.
(Bhaskar Bhattacharya, J.) I agree.
(Sambuddha Chakrabarti, J.) Later:
After this order is passed, the learned counsel appearing on behalf of the respondent prays for stay of operation of our aforesaid order. 31
In view of what have been stated above, we find no reason to stay our order. Prayer is refused.
Photostat certified copy of this order be made available to the parties by tomorrow.
(Bhaskar Bhattacharya, J.) I agree.
(Sambuddha Chakrabarti, J.)