Gujarat High Court
Ashvinkumar Babulal Patel vs Shree Sardar Patel Sevadal on 28 March, 2024
NEUTRAL CITATION
C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024
undefined
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/APPEAL FROM ORDER NO. 250 of 2023
With
CIVIL APPLICATION (FOR STAY) NO. 1 of 2023
In R/APPEAL FROM ORDER NO. 250 of 2023
FOR APPROVAL AND SIGNATURE:
HONOURABLE MR. JUSTICE DEVAN M. DESAI
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1 Whether Reporters of Local Papers may be allowed NO
to see the judgment ?
2 To be referred to the Reporter or not ? NO
3 Whether their Lordships wish to see the fair copy NO
of the judgment ?
4 Whether this case involves a substantial question NO
of law as to the interpretation of the Constitution
of India or any order made thereunder ?
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ASHVINKUMAR BABULAL PATEL
Versus
SHREE SARDAR PATEL SEVADAL
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Appearance:
JAY J JANI(9303) for the Appellant(s) No. 1
MR TEJAS S TRIVEDI(5692) for the Appellant(s) No. 1
KAMAL J UPADHYAYA(7469) for the Respondent(s) No. 1
NISHITH P ACHARYA(9308) for the Respondent(s) No. 1
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CORAM:HONOURABLE MR. JUSTICE DEVAN M. DESAI
Date : 28/03/2024
CAV JUDGMENT
1. By way of present Appeal from Order, the appellant- original defendant has challenged the order dated 19.10.2023 Page 1 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined passed by the 3rd learned Additional District Judge, Mahesana below Exhibit-5 in Trade Mark Suit No.02 of 2022, whereby Exhibit-5 Application has been allowed.
2. Heard learned advocates for the respective parties.
3. Upon the consent and request of the learned advocates for the respective parties, the present Appeal from Order is taken up for final hearing.
4. The brief facts are summarized as under:
4.1 The respondent-original plaintiff has filed a suit against the appellant being Trade Mark Suit No.2/2023 before 3rd learned Additional District Judge, Mahesana inter alia praying for declaration, permanent and perpetual injunction for passing off action of trade mark label mark and its label and for other reliefs. The respondent-original plaintiff is a Trust registered under the provisions of Bombay Public Trust Act, 1950.
4.2 Plaintiff is inter alia engaged in the services of social and religious activities like medical services, blood camp, Page 2 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined ambulance services, legal services, security service for the protection of property and individuals personal and social services rendered by other to meet the need of individual under the name and style of SPG .
4.3 Plaintiff has started using said Trademark / label mark SPG, along with colour combination since 2007, exclusively and uninterruptedly, openly, continuously and extensively throughout India, as a sole and an exclusive proprietor in respect of their various types of services.
4.4 The defendant is also engaged in and providing services of social and religious activities like free blood camp, legal services, security services for the protection of property and individual personal and social services rendered by others to meet the need of individual under the name and style of SPG .Page 3 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024
NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined 4.5 The defendant has deliberately launched its services under impugned Trademark in label only after the services being passed off by the defendant as the services of the plaintiff. Defendant has imitated the Trademark / label mark SPG along with same colour combination, label and packaging which is confusingly, structurally and visually identical and/ or ditto to ditto same to the plaintiff's label mark.
Defendant is required to be restrained immediately by way of temporary injunction to use impugned Trademark / label mark SPG with similar colour combination, get-up and trade dress along with device.
SUBMISSIONS OF LEARNED ADVOCATE FOR THE APPELLANT.
5. Learned advocate for the appellant has submitted that the plaintiff-trust being legal entity, cannot be the creator of the logo. The plaintiff-Trust has failed to plead or show the name of the natural person who created the logo. Prima facie, the respondent/ plaintiff failed to establish the proprietorship / Page 4 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined ownership of the trade / devise mark, as against the defendant. It is further submitted that mark must have been used in relation to goods or services for the purpose of indicating a connection in the course of the trade between the goods or services and some person having the right as a proprietor. Section 2(1)(zb)(ii) has been relied upon and the same is reproduced as under:
"2. Definitions and interpretation.--
(1) In this Act, unless the context otherwise requires,-- (zb) "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark;"
5.1 It is further submitted that the respondent is claiming registration of the trademark in Class 45 i.e. for services.
"Service" is also defined under Section 2(1)(z) of the Act.
Service of any description made available to the potential user must be 'in connection with business of any industrial or commercial matter'. Section 2(1)(z) has been referred to and the Page 5 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined same is hereby reproduced as under:-
"2. Definitions and interpretation.-- (1) In this Act, unless the context otherwise requires,--
(z) "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;"
Plaintiff does not fall within the scope of Section 2(1) (2b)
(ii) or Section 2(1)(z) of the Trade Mark Act (hereinafter referred to as 'the Act'). The plaintiff is doing charitable activities as can be seen from the documents produced by plaintiff.
5.2. It is further submitted that the Memorandum of Association of Trust clearly provides that the "objects of the Trust" are not at all either in the nature of "business of any industrial or commercial matters" or "in the course of the trade", and it is purely charitable in nature as covered and defined under Section 9 read with Section 2(13) of the Gujarat Public Trust Page 6 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined Act, 1950. The same is reproduced as under:-
"9. Charitable Purposes:- For the purposes of this Act, a charitable purpose includes-
(1) relief of poverty or distress, (2) education (3) medical relief and (4) the advancement of any other object of general public utility, but does not include a purpose which relates-
(a) exclusively to sports, or
(b) exclusively to religious teaching or worship
2. Definitions. In this Act unless there is anything repugnant in the subject or context,-
13 "Public trust" means an express or constructive trust for either a public religious or charitable purpose or both and includes a temple, a math, a wakf, [a dharmada] or any other religious or charitable endowment and a society formed either for a religious or charitable purpose or for both and registered under the Societies Registration Act, 1860 (XXI of 1860);"
5.3 It is further submitted that the plaintiff has no prima facie case with regard to "trademark" and applicability of the provisions of the Act. The plaint is signed by one Laljibhai D. Patel claiming himself to be authorized person and member of the plaintiff-Trust. In the so-called Minutes of Meeting in the discussion of the agenda, one line is stated to the effect that "authority may be given to Laljibhai Patel to create trademark logo of the Trust and to do ancillary activities thereof." Agenda does not include agenda to even give authority to Laljibhai to Page 7 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined file present suit for passing off the trademark. Meeting is held by one "Shri Sardar Patel Sewadal (SPG) at Jetpur in Saurashtra Region" and it is nowhere pleaded that said group or Trust is in any way connected with the plaintiff-Trust, which is having registration and activities limited in Mehsana Region. It is further submitted that the plaintiff suppressed the Public Trust Record of the plaintiff-Trust maintained by the Charity Commissioner, wherein it is clearly stated that that name of said Laljibhai Patel has been removed as Trustee vide Entry No.2 of Change Report No.172. Laljibhai is removed as a Trustee w.e.f.
20.07.2008.
5.4 It is further submitted that the identical devise / trademark was applied for registration vide application dated 02.01.2016 vide No. 3148977 by the plaintiff-Trust. Vide order dated 13.02.2019, Trade Mark Registrar passed an order that the trademark applied for is objectionable under Section 9 and 11 of the Act. The application is accordingly refused. Above order is never challenged and attained finality. The devise applied vide Page 8 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined above application and the devise in question are identical and similar as under:
Trademark Application No. Trademark lis in suit, 3148977 (Refused) (as alleged in plaint) TM Application/ Registration No. 5318058 5.5. It is further submitted that again very Plaintiff applied for the same / identical three different labels as under:
TM Application No. Status User Detail 5293255 Objected Proposed to be used 20.01.2022 5293325 Refused Proposed to be used 20.01.2022 5318058 Registered 27.03.2007 07.02.2022
5.6. It is further submitted that the plaintiff himself produced evidences that number of other association / Trust / group of Patidar Community are using identical / similar devise Page 9 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined trademark which comprises "SPG", the abbreviation of 'Sardar Patel Group'. The name derived from the name of legendary freedom fighter of India, who was belonging to Patidar Community. Therefore, as per Section 30(1)(a) of the Act also even a registered trademark owner cannot restrain any other one from using the label as it is in accordance with honest practice.
It is further submitted that after the hearing of the interim injunction application was concluded by the Court below, the matter was kept for order. Plaintiff got one of its three trademark applications registered with the Trademark Registry on 08.10.2023. Plaintiff produced the above registration certificate / detail on the record before the Court below on 16.10.2023 and without giving any opportunity of hearing to the appellant on the above additional material, the learned Judge passed the impugned order on 19.10.2023.
5.7. It is further submitted that the fundamental ingredients known as 'Trinity Test' for the action of passing off namely (1) goodwill and reputation; (2) mis-representation and deception; Page 10 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024
NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined and (3) damages, are missing in the present case. The plaintiff has not provided any sales turnover or such commercial or trade or business or industrial activity under the trademark which qualifies a "goodwill and reputation" in the trade. Further, when both the marks are in existence, there must be evidence of actual confusion, which is also missing in the present case. It is further submitted that the plaintiff has not prayed for any prayer of infringement. However, the Court below has considered the registration of the trademark belatedly produced by the Plaintiff on record and also granted the relief of infringement of the trademark against the Appellant. It is further submitted that the plaintiff was aware about the adoption and use of the disputed trade mark/ label mark/ logo by the defendant prior to the year 2021 however, plaintiff did not initiate any action within time. Both the parties are in charitable activities. SUBMISSIONS OF LEARNED ADVOCATE FOR RESPONDENT.
6. It is submitted by the learned advocate for the respondent that defendant who is using and utilizing the identical, Page 11 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined phonetically similar trademark/label as of the plaintiff's trademark and thereby violating the Intellectual Property Rights of the plaintiff vested in the prior used trademark . 6.1. The plaintiff has filed trademark applications for registration of Trademark / label mark SPG in respect of its various services under the provisions of the Trademarks Act, 1999.
Sr. Mark Class Application No. 1 45 3148977 2 45 5293255 3 45 5293325 Page 12 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined 4 45 5318058
6.2. It is further submitted that by virtue of long and continuous use, plaintiff has become sole proprietor and thereby enjoying exclusive rights to use Trademark / label mark SPG, along with colour combination and label under the provisions of the Trade Marks Act, 1999. Thus, services provided under identical and/or deceptively similar mark in label is obviously with intention to pass off the services as that of the plaintiff and the defendant knowingly launched their services under identical and/or deceptively similar Trademark / label mark SPG with a view to attacking on plaintiff's popular Trademark / label mark SPG, which is already exists in the market. 6.3 It is further submitted that the defendant has also filed trademark application before the trademark registry i.e. Trademark Application No. 5247973. Plaintiff trust has also Page 13 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined lodged Police Complaint under Section 472, 473, 476 and 120 (B) of the Indian Penal Code, 1860 against the present defendant before Mehsana 'B' Division Police Station. Before the pronouncement of the order i.e. on 08.10.2023, the plaintiff has been granted with the trademark registration certificate qua the Trademark Application. No. 5318058.
6.4 The concept of passing off has undergone changes in the course of time. At first it was restricted to the representation of one person's goods as those of another. Later it was extended to business and services. Subsequently it was further extended to professions and non-trading activities. Today it is applied to many forms of unfair trading and unfair competition where the activities of one person cause damage or injury to the goodwill associated with the activities of another person or group of persons.
6.5 The plaintiff's mark is used by the defendants for the very product, to acquire the benefit of its goodwill and reputation so Page 14 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined as to create deception for the public who are likely to buy defendant's product believing the same as coming from the house of the plaintiff or associated with the plaintiff in some manner. By doing so, it would dilute the goodwill and reputation of the plaintiff and the wrong committed by the defendant would certainly be an actionable wrong and the plaintiff is within its rights to ask for restraint against the defendant from using its similar mark.
6.6. The plaintiff, though an unregistered proprietor of the trademark but being a prior user of the mark, has lawful right and remedy to restrain the subsequent adopter of the trademark. Registration and/or applied for registration is no defence to a passing off action and nor the Trade Marks Act, 1999 affords any bar to a passing off action. The passing off action has to be considered independent remedy under the provisions of the Trade Marks Act, 1999.
6.7. In support of his submissions, learned advocate for the Page 15 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined respondent has placed upon the following decisions;
(i) Laxmikant V. Patel Vs Chetanbhat Shah & Anr, reported in 2002 (3) SCC 65.
(ii) Special Civil Application No. 14290 of 2015; Nishant Construction Pvt. Ltd. Vs. Ratnaakar Estate Developer Pvt. Ltd.
(iii) Medicure Hygiene and Anr. Vs. Medicare Hygiene Pvt. Ltd. and Anr. reported in 2013 (53) PTC 425 (Guj.).
(vi) Midas Hygiene Industries (P) Ltd. Vs. Sudhir Bhatia reported in 2004 (3) SCC 90.
(v) Ruston and Hornby Ltd. Vs. Zamindara Engineering Co. reported in 1969 (2) SCC 727.
(vi) Keshav Kumar Aggarwal Vs. M/s. NIIT Ltd. reported in 2013 (199) DLT 242.
(vii) Alka Gupta Vs. Narendra Kumar Gupta reported in AIR 2011 SC 9.
(ix) Premlata @ Sunita Vs. Naseeb Bee & Ors. reported in 2022 Supreme (SC) 238.
(x) Duncuns Agro Industries Ltd. Vs. Somabhai Tea Processors Pvt. Ltd. reported in PTC (Suppl) (2) 839 (Guj.).
(xi) Neon Laboratories Ltd. Vs. Medical Technologies Ltd. and Ors. reported in 2016 SCC (2) 672.
(xii) Parle Products Private Vs. J P and Company, Mysore reported in 1972 AIR SC 1359.
(xiii) Sanjay Kapur Vs. Dev Agri Farms Pvt. Ltd. reported in 2014 PTC (59) 93.
(Xiv) Automatic Electric Limited vs R.K. Dgawan & Anr. reported in 1999 77 DLT 292.
(xv) T.V. Venugopal Vs. Ushodaya Enterprises Ltd. & Another reported in 2011 4 SCC 85.
(xvi) Vikram Stores and Anr. Vs S.N. Perfumery Works and Anr. reported in AIR 2008 Guj 65.
(xvii) Swaran Singh vs Usha Industries (India) And Anr. reported in AIR 1986 Delhi 343.
(xviii) T.V. Venugopal Vs. Ushodaya Enterprises Ltd. & Another reported in 2011 4 SCC 85.
6.8. It is an admitted position that the plaintiff is using the trademark since 27.03.2007 while, defendant, in his trademark application dated 15.12.2021 has mentioned in column of use as "proposed to be used".
Page 16 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024
NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined 6.9. The plaintiff is very well known trust and social service provider having wide setup and networking, which has become very famous and acquired tremendous reputation and goodwill amongst general public, consumers and ultimate customers for the quick and effective services.
6.10 The defendant was previously one of the trustees of the plaintiff trust and he was serving as a trustee from the year 2004 upto 2020. The defendant thereafter, was terminated from the plaintiff trust in the year 2020. The defendant was well within the knowledge about the goodwill and reputation of the trademark / device mark of SPG of the plaintiff trust. In the year 2016, plaintiff trust had authorized defendant along with other trustees to file a Trademark Application for and on behalf of plaintiff trust. However, on 13th February 2019, the said application was refused by the Trademark Registry. The plaintiff started using Trademark / label mark SPG along with colour combination since 2007, exclusively and uninterruptedly, openly, continuously and extensively throughout India, as a sole Page 17 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined and an exclusive proprietor in respect of their various types of services.
6.11 It is further submitted that if the defendant is allowed to use trademark in label of the plaintiff, it will damage the image of plaintiff in the market and it will further cause irreparable loss to the goodwill and reputation of the plaintiff. It is further submitted that the learned trial Court has rightly granted injunction application of the plaintiff. The learned trial Court has considered the material placed before him and thereafter, came to the conclusion that the defendant is required to be restrained by order of injunction.
7. I have considered the submissions canvassed by the learned advocates for the parties and also considered the papers placed on record during the course of hearing.
8. The suit of the plaintiff is for passing off action and the prayers, which are sought for in injunction application is to restrain defendant from passing off services by providing Page 18 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined services under the trademark label mark SPG and its label as that of the plaintiff's Trademark label mark SPG and its label containing device and colour combination. From the injunction application, it can be culled out that the plaintiff is engaged in the services of social and religious activities like Medical Services, Blood Camp, Ambulance Services, Legal Services and Security Services for the protection of property and individual personal and social services. Plaintiff is a registered trust being registered under the Bombay Public Trust Act, 1940. The defendant was one of the trustees of the plaintiff-trust from the year 2004 upto 2020. In the year 2020, the defendant was terminated from the plaintiff trust from the post of trustee.
9. It is noteworthy to mention that since 2007, the plaintiff has been using the said Trademark / label mark SPG along with the colour combination since 2007.
10. The suit is not for the infringement of a registered Page 19 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined trademark. The question in a suit for passing off action would be whether plaintiff has established prima facie that they have been using the questioned Trademark / label mark SPG, prior to the use of defendant's Trademark / label mark SPG . From the documents placed on record, it is evidently clear that plaintiff's trade mark/ label mark SPG and defendants's trademark/label mark SPG are similar in the write up, get up, colour combination. The admitted fact which is on record is that the defendant was one of the trustees of the plaintiff till 2020 and during the tenure as a trustee on behalf of the plaintiff trust, the application for registration of the trademark / label mark was filed in the year 2016 by the defendant. However, the said application came to be rejected by the Trademark Registry on 13.02.2019 for the reasons assigned by the Trademark Registry in the order. The following is the comparison chart of the respective Trademark / label mark of plaintiff logo / device and Page 20 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined defendant's logo / device.
Plaintiff's Device Respondent Device In both the logo / device. Colour combination is red and blue and on the top "Sardar Patel Group" has been mentioned in white colour and "SPG" has been mentioned slanting style in black colour. A hand holding fire lamp is also found in the Center. Prima facie, it can be seen that the defendant is using identical trademark/ label mark SPG along with colour combinations to deceive the public and to create a confusion amongst the public at large. Both the parties are in charitable activities.
11. In the present case, the defendant has not been able to establish that the defendant is using the said Trademark / label mark SPG prior to plaintiff's trademark/label mark SPG. In the Page 21 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined written statement, case of defendant is that defendant was doing social activities related to Welfare of Patidar Samaj by creating logo / label SPG in the year 2004 and defendant is the creator and inventor of the disputed logo / label. However, to substantiate his prior use of the disputed logo / label mark, there is no mention on record that he has invented or created the disputed logo in the year 2004. To nullify such defence, it would be appropriate to refer Trademark Application No.5247973 dated 15/12/2012, which specifically mentions that the defendant has not yet commenced his activities and in the column of user detail, defendant has stated " proposed to be used"
12. Thus, there is no evidence, which can lead to a conclusion that the defendant was prior user of the disputed Trademark / logo.
13. The next question, raised by learned advocate for the appellant that the mark must have been used in relation to goods or services for the purpose of indicating a connection in the Page 22 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined course of trade between the goods or services. A similar issue came up before the Bombay High Court in the case of International Association of Lions Club versus National Association of Indian Lions and others. reported in Manu/MH/0455/2006, wherein, the Bombay High Court has observed in paragraph Nos.8 and 9, which are reproduced hereinabove;
"8. I have considered the rival contentions between the parties. Insofar as the question of establishment of the reputation of the plaintiffs is concerned, the same is established beyond any doubt. The plaintiffs are the internationally well known organisation and are conducting activities on a very large scale. The plaintiffs have got large number of clubs in India and large number of people are their members and the club is closely associated with the plaintiffs and plaintiffs activities in India including the City of Bombay carried on a very large extent. The plaintiffs have thus acquired a huge reputation in the word Lion, Lioness and Leos in association with their names namely Lions Club of International. The plaintiffs have equally acquired a huge reputation in the emblem with picture of Lions on both sides. The Lion emblem is also well known in India. By virtue of the fact that the plaintiffs are carrying out its activities in social sector and even in charity sector the plaintiffs name and the emblem is associated with the plaintiffs and its activities. Thus, in my opinion, the question that whether the plaintiffs have acquired a reputation or not in the word Lion, Lioness and Leo must be answered in favour of the plaintiffs. The plaintiffs also advertised the said word Lion, Lioness and Leos in relation to their activities in various newspapers and in pamphlets and posters. It is thus without any doubt clear that the reputation of the plaintiffs in the word Lion, Lioness and Leo and Leos has been the very huge reputation and, therefore, the plaintiffs are entitled to protect the same. Insofar as the contention of the defendants is concerned that the plaintiffs are not entitled to protection of a service mark because it is not in relation to any Page 23 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined trade or well of goods and it is in relation to only the charity and services, in my opinion, the said submission must be rejected. In the case of The British Diabetic Association v. The Diabetic Society and Ors. (supra), Justice Walker of Chancery Division has held as under:
In the end the second issue comes down to a short, though not simple question of fact. The following are the main background matters that 1 bear in mind in approaching it. (1) The business activities of the two charities are such that members of the public are most likely to come into contact with them by recommendation. Such recommendation will often be by word of mouth, whether in a hospital outpatients' department or a doctor's surgery, or in the course of a telephone call. Any half-
recollection of a name may lead to a mistake, or may lead to reference to the telephone book or some other directory (which may or may not lead to a mistake). On any view the name is not particular importance.
(2) The Association is a large and long-established charity wit a loyal membership and a genuinely nationwide coverage. None of these factors gives it any right to a monopoly, but together they do mean that its reputation and goodwill are substantial. There is a likelihood of confusion with any other charity which aims to carry out similar activities on a nationwide basis, unless the two "charities' names are adequately differentiated. In determining whether the differentiation is adequate, I am entitled to take the Association's size, age and reputation into account. (3) There is a limited range of descriptive names for a charity providing advice and help to diabetics in the United kingdom (though Charity, Council, Federation, Fellowship, Institution and Trust are all possibilities). I have to take that into account, and accept that some risk of confusion may be inevitable (as it will be with the Foundation). But the defendants are not entitled (in the words of Oliver, L.J.) to make confusion worse confounded and Mr. Bennett indicated in cross-examination that he would have no qualms or objections about continuing, if he lawfully could, to ask for the Society to be considered for legacies whose destination was in any doubt Approaching the question in the way, I note that Mr. Pumfrey accepts that the Association still has a reputation and goodwill in its name as it was until 1954 ("Diabetic Association") as well as in its present name. The prefix "British" Page 24 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024
NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined can therefore be put on one side, and the crucial issue is whether the single word "Society" is sufficiently differentiated from "Association", Unlike the words ("Services" and "Association") considered in the Office Cleaning case, the two crucial words in this case are very similar in derivation and meaning, and not wholly dissimilar in form. There may be background circumstances in which the small difference between the two words might be sufficient-it is, as the authorities emphasise, a question of fact to be decided in all the circumstances of the particular case - but in the end I have reached the clear conclusion that it is not a sufficient differentiation in this case. For the Society to continue to use its existing name would in my judgment be deception, even if unintended, calculated to damage the Association's reputation and goodwill. The Delhi High Court has taken a similar view in the case of WWF International v. Mahavir Spinning Mills Ltd. MANU/DE/0649/1994 : 1994 (14) PTC 250 (Del) in para 22 which reads as under:
22. So even if the plaintiff itself is not manufacturing and marketing the goods by itself even then the plaintiff as a licensor of trade mark is 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 to protector 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. And in the case of The International Association of Lions Club v. Indian Lions Club and Ors., (supra) this Court has held as under:
It appears from the affidavit filed on behalf of the defendants that the members of the defendants were members of the plaintiff Club previously, they were dissatisfied with the work of the plaintiff Club in Mumbai and they therefore left their membership and they have formed their own club. It goes without saying that there is definite similarity in the name of the plaintiffs and the name of the defendants. If the defendants' organisation has come into existence because of the dissatisfaction with the working of the plaintiffs and if it was not the intention of the defendants to pass off their Page 25 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined organisation as an associate of the plaintiffs, then there was no justification for the defendants to use 'Lion' in the name of their club. If their Club came into existence because of the dissatisfaction with the plaintiffs, then they would have tried to distance themselves from the plaintiffs and they would have adopted a name which cannot even remotely be connected to the plaintiffs. There was at all justification for using word 'Lion' in the name of their Club when everybody knows that the Lions Club is an international organisation in existence for last several decades. In my opinion, therefore, the use of the word 'Lion; in the name of the organisation of the defendants shows their intention to pass off their organisation as that of the plaintiffs. In this view of the matter therefore, in my opinion, the plaintiffs are entitled to ad-interim order in terms of prayer Clauses (a) and (b). It is accordingly granted. At this stage, the learned Counsel for the defendants requested that the operation of this order should be stayed. It is however to be seen that by order dated 16th March 2001, adinterim order in terms of prayer Clause
(a) has already been granted because a statement was made by the defendants that the defendants will not take any steps to get renewal of their domain name. As the ad-interim order in terms of prayer Clause (a) is operating for nearly a month now, I see no justification for grant of this request. Notice of Motion is therefore disposed of.
9. In the light of the aforesaid judgments, it is not possible to accept the contention of the learned Counsel for the defendants that the plaintiffs are entitled to an injunction on the basis of a passing off only if they are carrying on business in relation to goods and not in relation to services. In my opinion, the plaintiffs are entitled to the injunction of passing off even if the plaintiffs are not trading in the goods in the market and are merely rendering services. I am also of the further opinion that the plaintiffs are distributing the goods such as calendars, diaries, booklets, etc. and while doing so they are using the mark Lion, Lioness, Leo or Leos and emblem. Merely because they are not doing so for profit does not mean that the plaintiffs are not entitled to protect their mark and this emblem. In that light of the matter, the contention of the learned Counsel for the defendants that the plaintiffs are not entitled to injunction by virtue of the fact that the plaintiffs are not trading in the goods cannot be accepted and accordingly the same is rejected."
14. I am in complete agreement with the view expressed by the Bombay High Court. I am of the view that the plaintiff is Page 26 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined entitled to a relief of injunction as prayed for.
15. Regarding the authority to file a suit by Laljibhai claiming himself to be an authorized person of the plaintiff trust and regarding the maintainability of the suit on the basis of the Minutes of Meeting dated 12-1-2022, such questions can be gone into after a full fledged trial and at the stage of interlocutory stage, such issues cannot be gone into. The Court has not to go into a mini trial at the stage of deciding injunction application. And such questions are left open for trial.
16. The registration of Mark in the Trademark Registry would be irrelevant in an action for passing off. In passing off action, what is to be considered is who is the prior user of the trademark / label, since the prior use is a decisive factor. In the present case, it was found that plaintiff was a prior user and had created goodwill over the same for a long continuous period. On the basis of prior use, the trademark / Label of SPG has acquired a distinctiveness and was associated in the minds of general Page 27 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined public as the services of plaintiff. Thus, plaintiff has prima facie established it's case. And similarly the trinity test for the action of passing off can be tried during trial.
17. In the present case, the learned trial Court has prima facie considered the documents placed on record and has come to a conclusion that the plaintiff has established that they are using the said Trademark / label Trademark / label mark SPG since 2007. This being a finding of fact, this Court cannot interfere with the finding of fact, which is in consonance with the documents available on record. More particularly, in absence of any contrary evidence to disturb the findings of fact, I am of the view that no interference is required in the order passed by the learned trial Court.
18. The appellate Court will not reassess the material and seek to reach a conclusion different from one reaches by the Court below solely on the ground that if it has considered the matter at the trial stage, it would have come to a contrary conclusion. If the discretion has been exercised by the learned trial Court Page 28 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined reasonably and in a judicial manner, the fact that the Appellant Court would have taken a different view may not justify interference with trial Court's exercise of discretion.
19. The decisions relied upon by the learned advocate for the appellant are not applicable to the present set of facts.
20. Thus, in the totality of the facts and circumstances of the case, I do not find any reason to interfere in the finding of fact, which has been arrived at by the learned trial Court in granting injunction against defendant. Thus, this Appeal from Order is dismissed. No order as to costs.
21. The learned trial Court shall decide the suit purely on merits and without being influenced by the observations made hereinabove. The defendant may request the learned trial Court for expeditious hearing of the suit, if so advised.
22. Accordingly, connected Civil Application also stands disposed of.
(D. M. DESAI,J) RINKU MALI Page 29 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024 NEUTRAL CITATION C/AO/250/2023 CAV JUDGMENT DATED: 28/03/2024 undefined FURTHER ORDER:-
1. Learned advocate for the appellant has requested for stay of the order for a period of three weeks. It is submitted that the interim protection was continued during the pendency of the present Appeal from Order.
2. Learned advocate for the respondent has objected.
3. In view of the above, request is accepted. The interim protection shall continue for a period of three weeks.
(D. M. DESAI,J) RINKU MALI Page 30 of 30 Downloaded on : Mon Apr 01 20:41:26 IST 2024