Delhi High Court
Wwf International vs Mahavir Spinning Mills Ltd. on 7 October, 1994
Equivalent citations: 1994IVAD(DELHI)730, 56(1994)DLT271, 1993(31)DRJ413, 1995 A I H C 4095, (1994) 56 DLT 271 (1994) 31 DRJ 413, (1994) 31 DRJ 413
JUDGMENT P.K. Bahri, J.
(1) I have heard arguments in detail for deciding these two applications, one filed by the plaintiff seeking grant of interin injunction till the disposal of the suit and the other filed by the defendant for vacation of exparte injunction order granted by this court on July 11, 1994.
(2) Due to devastating pollution and uncontrolled exploitation of the natural resources made available to human being on this planet, the plaintiff organization came up with the keen object of conservation of natural environment, various species of plants and animals which were on the verge of extinction or are being endangered with the massive growth of human world population. It had global representation of 23 affiliate and 5 associate national organizations and it interacts with various Government departments dealing with such subjects and particularly it works in close harmony with World Conservation Union.
(3) It is averred in the plaint that Wwf International-plaintiff is involved in more than 11000 Conservation Projects spread out in 130 countries. In order to raise funds all over the world for carrying out its conservation objects the plaintiff has been selling various range of products of different material all over the world including India. The plaintiff is stated to have, through its affiliate Wwf of India had opened a shop operating in India at New Delhi for selling paper, products, nature educational material among other camping material including audio visual presentation. It is averred in the plaint that the plaintiff is the owner and holder of the world copyright in respect of 'PANDA' device and in India the word 'PANDA' and the device of 'PANDA' separately stand registered in various classes of goods in the name of the plaintiff. The plaintiff has given particulars of such registration in para 7 of the plaint and in para 5 of the replication. It is claimed by the plaintiff that on account of its philanthropic activities logo of Wwf with device of 'PANDA' has achieved a worldwide reputation and logo/mark/name Wwf Panda device associated with the plaintiff is known globally with the goods/services which they are providing to various beneficiaries in a number of countries world over including India. It is pleaded that the name/logo/mark 'PANDA' with Panda artistic device is known all over the world and has achieved the goodwill and unique reputation and the same being looked upon with respect and regard all over the world including India.
(4) It is further pleaded in the plaint that since its year of inception in September 1961 the plaintiff's activities had increased and it has invested Us Dollars 525 millions and its activities have increased manifold in 130 countries all over the world. Plaintiff is stated to be having income from the royalties by licensing its logo 'PANDA' and other trademark in world over since 1987. It was pleaded that Sir Peter Scot who was Vice President of Iucn and later on its Chairman had conceived artistic work, namely, drawing representing 'PANDA' and assigned its artistic work to Wwf International vide deed dated May 20, 1973 and the symbol/logo of Panda was conceived and adopted to show its major cause and concern over immediate conservation of endangered life of great giant Panda of of Republic of China and at the same time for strong recognizable symbol world over in all language barriers and thus, furry giant black and white animal Chi-Chi who was kept in London Zoo and her appealing black patched eyes logo /. symbol stand as a symbol for conservation movement as a whole.Plaintiff, thus, claims exclusive right to reproduce the said artistic features of such design.
(5) It is averred that the defendant has adopted and used identical name and trade mark 'PANDA' and similar type of Panda artistic device in respect of the threads manufactured and marketed by it. It is averred that by adopting the said trade mark 'PANDA' with Panda artistic device the defendant has infringed the plaintiff's copyright of Panda artistic device and Panda trade mark. It is alleged that defendant by offering his goods under the said trade mark 'PANDA' with artistic device has tendency to mislead the customers that the source of the goods being sold by the defendant is none other than the plaintiff and in this way the defendant is trying to take undue profits on the basis of the reputation of the plaintiff with regard to the said trade mark and artistic device of PANDA. It is alleged that by deceiving the general public the defendant is giving bad name to the plaintiff as the defendant is guilty of passing off their business and goods as business and goods of the plaintiff.
(6) It is, however, .on the other hand pleaded by the defendant that it has been using the said trade mark 'PANDA' with device of 'PANDA' for the last seven years and thus, the plaintiff is quility of laches and thus, is not entitled to any relief of temporary injunction. It is pleaded that the plaintiff is not entitled to any relief of passing off inasmuch as the plaintiff is not registered proprietor of trade mark 'PANDA' either in word or in device form in relation to the goods in which the defendant deals and that the plaintiff has never carried on business or traded in thread or any other cognate or allied goods under the said trade mark,and thus, the plaintiff doors not enjoy any reputaion of the said mark in relation to threads and thus, the plaintiff does not have any statutory or legal right in the word TANDA' or device Panda for threads.
(7) It is further pleaded that the word 'PANDA' being name of animal cannot be said to be the exclusive property of any particular organization and the degree of exclusivity in respect of said word 'PANDA' that can be acquired is highly limited and particularly it would be limited to the goods in relation to which it is registered and nothing more. It is further averred that in fact, plaintiff has no commercial logo and the word Panda in relation to. any goods whatsoever and more particularly in respect of the threads in India prior to 1987 and it is only in the year 1993 that the plaintiff claims to have entered into an agreement with Bata India Limited and whereas the defendant has been using the trade mark 'PANDA' since 1987 with regard to threads being produced and sold by the defendant. It is also pleaded, by the defendant that in fact, the. plaintiff's trade mark Panda device does not have any reputation in relation to threads in India and the plaintiff being a non-profit organisation the customers do not establish any natural connection between the plaintiff and any products owing to the nature of the plaintiff's activities.
(8) In the rejoinder the plaintiff controverter the pleas of the defendant and reiterated that the plaintiff has world wide reputation in the goods being sold under the licenses granted by the plaintiff to various parties for manufacturing and selling goods of various types throughout the world including India under the trade mark 'PANDA' and the artistic device PANDA.
(9) The learned counsel for the defendant in his usually fair and forthright contentions stated that he does not dispute the propositions that a particular plaintiff can have trans-border reputation in the trade mark and that such a trade mark having, world wide reputation also enables such owners of trademark to injunct any other person from using such trade mark for cognate and allied goods. He has also mentioned that the defendant does not proposes to use the artistic device of 'PANDA' in any manner. However, he has contended that the defendant has every right to use 0the name/mark 'PANDA' as it is a name of ananimal, for the threads being manufactured and sold by the defendant.
(10) The learned counsel for the defendant has vehemently argued that the present Is a suit seeking injunction on the basis of passing off the goods and infringement of copyright and this is not a suit based on infringement of any trade mark and in order to obtain injunction the plaintiff has to show, prima fade, that plaintiff has any reputation in the goods being marketed by the plaintiff under any particular trade mark and that there is likelihood of any confusion being caused in the minds of the customers with regard to the source of the goods being marketed by the dependant that those goods are coming from the source of the plaintiff. He has argued that there cannot be any trade mark in the name of the animal Panda which is name of the animal for all types of goods. He has argued that the name Panda has been registered by the plaintiff only in respect of clothings and not in respect of the threads and as a matter of fact, the plaintiff is not having any commercial business and has no reputation in its commercial activities and rather has only some reputation being a world wide organisation for protecting endangered species or for preserving the environment. So, he has argued that the injunction already granted should be vacated and application for the plaintiffs seeking interim injunction should be dismissed. He has also pointed out that in any case the plaintiff has come to the court belatedly inasmuch as defendant has been using this trade mark in India in respect of- its products since 1987 while the suit has been filed in 1994.
(11) The learned counsel for the plaintiff, on the other hand, has pointed that the plaintiff has got registered trade mark TANDA' for variety of goods all over the world and .the word 'PANDA' is now being widely associated with the name of the plaintiff and the adoption of the name 'PANDA' by the defendant is not honest inasmuch as the defendant was not even aware that Panda was special animal which was only found in China whereas in reply to the notice issued to the defendant, the defendant was miss naming this animal as Polar BEAR. He has argued that the defendant has dishonestly used this trade name Panda in order to take advantage of the world wide reputation of the plaintiff. He has further argued that the plaintiff has been marketing various types of goods including clothes under the trade mark Panda through various manufacturers of goods of different kinds and the plaintiff has been earning huge royalty by allowing the other parties to use the trade mark Panda belonging to the plaintiff. He has argued that threads are cognate and allied goods vis-a-vis the clothing and thus, there is every possibility of general public being misled in thinking that the goods being marketed by the defendant belong to the plaintiff and thus, the defendant would be having undue enrichment on. the reputation enjoyed by the plaintiff in the aforesaid trade mark PANDA.
(12) He has argued that delay in filing the action in the present case is not fatal inasmuch as the interests of the general customers at large are involved and moreover the defendant has failed to show, prima facie, that defendant has been using this trade mark Panda since 1987. He has pointed out that the documents placed by the defendant only show that defendant has started using this trade mark Panda in respect of its products since 1991.
(13) It is established from the documents filed by the plaintiff that the plaintiff has registered trade mark in the name of Panda pertaining to clothing. The plaintiff has furnished the figures for the years 1987 to 92 showing that the plaintiff has been earning huge royalties by licencing the logo Panda and other trade marks in different countries The plaintiff has also shown, prima facie, that in different parts of India also some shops have been opened including at Delhi for selling the clothes having the trade mark PANDA. It is not necessary that plaintiff should itself manufacture and market the goods under a particular trade mark. In case the plaintiff has got registered a particular trade mark for a particular item and got the goods marketed under the said trade mark on giving licenses to other persons, it is the reputation of the plaintiff which is built up in the aforesaid trade mark and it cannot be said that the plaintiff would not be deemed to have any reputation in goods being marketed under the trade mark PANDA.
(14) In 18 Rpc 181 in the matter of The Application of Pomeril Ltd. for registration of trade mark, the facts, in brief, were that the company was having a registered trade mark 'POMRIL' for cider and applied for registration of mark consisting of a representation of the cut side of half an apple, cut vertically, with the word 'POMRIL' across it. There was another trade mark already registered under the words 'APPLE BRAND' for bottled cider. It was held that the proposed mark was likely to lead to the word 'APPLE' or the words 'APPLE BRAND' being associated with the goods sold under it and, therefore, was likely to deceive. While discussing the matter, the court observed that where a person has already registered the word Star or any other word, no one else can come and put on the register in respect of the same goods a device being a repivsentation of a Star if the registration of that device would probably has an effect of the word Star and the name Star becoming associated with the goods. Reference is made by the learned counsel for the plaintiff to Metro Playing Card Co. Vs Wazir Chand Kapoor, . In the said case, the plaintiff was manufacturing and selling the playing cards. Plaintiff had got registered the trade mark consisting of the device of a tractor and the word tractor for his plaYing cards. The defendant also was dealing in the plaYing cards and he adopted the trade mark FERGuson in relation to the playing cards and was marketing the same under that name also using the device of a tractor on the back of the playing cards. The court held that there is every likelihood of common persons being deceived in thinking that the goods being supplied by the defendant are corning from the plaintiff. It was held that it was a case fit for grant of injunction as the defendant was infringing the trade mark of the plaintiff.
(15) He has also referred to James Chadwick & Bros.Ltd. Vs The National Sewing Thread Co.Ltd., . In the said case the plaintiff was using the trade mark Eagle in respect of sewing machine thread by showing the representation of Eagle and another trade mark only in the representation of Eagle without any writing. The defendant had at first tried to use the Eagle Brand but later on while applying for registration it wanted to have the Voucher Brand registered with the representation of EAGLE. It was held that the question which arises for consideration is whether trade mark sought to be registered by the defendant does contain a similar or identical, distinguishing or essential features. If it does and if the trade mark conveys the same idea of Eagle and if an unwary purchaser is accepting the goods of the defendant as answering the requisition for Eagle goods, then, undoubtedly the trade mark of the defendant is one which would be likely to deceive or cause confusion. The trade mark being used by the plaintiff shows that Panda having green colour background. The trademark of the defendant also shows two Pandas having green background and the word Panda written predominently on the trade mark. If it is to be held that the plaintiff has a commercial reputation in the goods being marketed under the trade mark Panda obviously the unwary customers while buying the goods under the said mark could be easily deceived by the trade mark of the defendant indicated above that the goods are coming from the source of the plaintiff.
(16) Reference has been made by counsel for the plaintiff to Swaran Singh Trading as Appliances Emporium Vs M/s.Usha Industries (India) New Delhi & Anr., . It was held in this judgment that the right of user of registered trade mark could not be lost by delay. The general principles governing grant of injunctions in other types of cases may not hold good while dealing with the cases of infringement of the statutory right and normally delay in seeking relief might not non-suit the proprietor of the registered trade mark. Reliance is placed on M/s.Hindus- tan Pencils Private Limited Vs M/s. India Stationery Products Co.. . In this judgment, it was laid down that if the defendant acts fraudulently with the knowledge that he is violating the plaintiff's right then in that case even if there is inordinate delay on the part of the plaintiff in taking action against the defendant the re heat of injunction is not to be denied.
(17) Reference is also made to Ofrex Limited Vs Rapesco Limited, 63 Rpc 371. This was a case of infringement of trade mark and also for injunction restraining passing off. Plaintiff manufactured office requisites including stapling machines and staples and marketed the same under Rapid No.50 and Rapid No.60. The defendant marketed the goods under the trade mark Ofrex 50/60. It was held that this was a case of passing off.
(18) The learned counsel for the plaintiff also brought to my notice a judgment of this court in Rawal Industries (P) Ltd. Vs Duke Enterprises & Others, 1983 (8) Iplr 121. In the said case, the plaintiff was registered proprietor of trade mark Duke in respect of oil seals or suspension rubber brushes for automobiles. The defendant started using the trade mark Duke Enterprises for marketing Pvc insulated automobile cables. The court held that use of the same mark by the defendant on the cables was likely to cause confusion and deception and there was a trade connection between the plaintiff's goods and the goods of the defendant. In the present case also, there is trade connection between the clothing in which the plaintiff has the registered mark of Panda and the threads being marketed by the defendant under the trade mark PANDA. So, there is every likelihood of causing confusion and deception in the minds of the unwary purchasers.
(19) Counsel for the defendant, on the other hand, sought some support from judgment in Sears Roebuck & Co. Vs Happy House (TV) Mfg.Co.Pvt.Ltd. & Ors., 1992 Ptc 59. In the cited case, the plaintiff has been running retail stores chain in America under the trade mark SEARS. Plaintiff was carrying on business abroad and had no physical presence in India nor it held any registration of trade mark Sears in India and an action was brought in India for restraining the defendant from using the trade, mark SEARS. The defendant had started marketing televisions under the trade mark SEARS. The court held that unless the evidence is brought before the court showing reputation and goodwill of the plaintiff in India as a manufacturer of televisions and substantial evidence of the reputation and goodwill of the plaintiff as a retail store in India, the injunction cannot be granted. This judgment dealt with totally different facts. In the present case the plaintiff, prima facie, has established that it has registered trade mark in the name of Panda with regard to the garments in India and it had been giving the licenses to different manufacturers for manufacturing the garments under the trade mark Panda in India. The question is where the use of trade mark has been made by A licensee from a licensor in India, can the licensor protect his trade mark by an action of passing off?
(20) In the case of Caprihans (India) Private Ltd. Vs Registrar of Trade Marks & Others, 1976 (80) Cwn 222, the Calcutta High Court observed at page 230 as follows:- "A tall events, even independently of the Ostrich case, under no principle or precedent can it be held that at common law use by the licensee of an unregistered trade mark is not use by the licensor or that such use will invalidate a passing off action or disentitle the licensor to protection of his trade mark."
So even if the plaintiff itself is not manufacturing and marketing the goods by it self even then the plaintiff as a licensor of trade mark not debarred from bringing an action of passing off against the defendant when, prima facie, the plaintiff has shown that its licensee has been marketing the goods in trade mark Panda in India. Mere fact that the plaintiff has never manufactured any products in this country does not prevent it from acquiring the goodwill here in its trade mark. It is no doubt true that an action for passing of relates to the business and it must be established that the plaintiff has a reputation or goodwill of his business in this country. The foundation for the action for passing off is the protection of goodwill and so, one must prove the existence of goodwill in this country before obtaining a relief of passing off. The principle of law of passing off has been also made applicable to non-trading business or non-profit making bodies as well.
(21) The learned counsel for the plaintiff has referred to a judgment in the case of Daimler Benz Aktiegesellschaft & Anr. Vs Eagle Flask Industries Ltd., in I.A.No.5817/93 in Suit No-1379/93 decided on November 10, . This case pertains to the trade mark 'Mercedes Benz'. The 'Mercedes' trade mark has a worldwide reputation and the defendant had started using the said trade mark for its thermo flask. The court held that the trade mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else reputation with reference to goods especially so when the reputation extends worldwide. The injunction was granted.
(22) Counsel for the defendant has argued that the trade mark 'PANDA' registered in the name of the plaintiff has not led to any worldwide reputation. So, the trade mark Panda can be used by any other person in any other field. There is no merit in this contention. The plaintiff admittedly has a worldwide reputation in a particular field of activity i.e. protection of endangered species of animals and in order to generate money for its various international projects the plaintiff had entered into commercial field by taking out registration of trade mark in the name of Panda which mark is associated with the plaintiff-organization in its known field to exploit the trade mark commercially. So, at least the plaintiff has built up commercial reputation in this country in the trade mark Panda after getting it registered for clothes and the defendant had obviously with a view to cash on the reputation of the plaintiff built up in the said trade mark, prima facie, had adopted the said trade mark and almost similar design for marketing its threads which are cognate or allied goods to the clothing. Plaintiff, prima facie, has a strong case and the balance of convenience is also in favor of the plaintiff to restrain the defendant from using even the name Panda for selling the threads under the said trade mark.
(23) In Dharam Pal Satya Pal Vs Janta Sales Corporation, , the plaintiff was marketing Zafrani Zarda under the trade mark RAJNI. The defendant started having the same trade mark for Pan Masala. The court held that there is every likelihood of confusion as anybody can reasonably hold the belief that the plaintiff, who is the established user of this trade mark in one category of goods may have gone into the manufacture of the allied goods bearing the same trade name and this is enough as prima facie a base for an action for passing off.
(24) The learned counsel for the defendant has referred to Penguin Practice enumerated in United Kingdom. Trade Mark Handbook Volume 1. I have gone through the principles pertaining to Penguin Practice but I have failed to understand how any of the principles enumerated therein are applicable to the facts of the present case.
(25) In view of the above discussion, I hold that the plaintiff is entitled to the relief of interim injunction till the disposal of the suit.
(26) I allow the application of the plaintiff and confirm the interim injunction already granted till the disposal of the suit and dismiss the application of the defendant seeking vacation of the ex-parte injunction granted to the plaintiff.