Delhi High Court
Dharam Pal Satya Pal vs Janta Sales Corporation on 4 April, 1990
Equivalent citations: 1990(2)ARBLR91(DELHI), 41(1990)DLT612
JUDGMENT Santosh Duggal, J.
(1) The plaintiff, a partnership firm having its registered office at Ansari Road, Darya Ganj, New Delhi, claims to be engaged in the manufacture and sale, inter alia, of Chewing Tobacco (Zafrani Zarda) and established in this trade since the year 1979. They state to have adopted the trade mark "RAJNI", in respect of Zafrani Zarda in the year 1980, and having used the same extensively since then, in the course of trade, and as such to have acquired enviable reputation with the purchasing public so much so that the said trade mark has come to be exclusively identified as the goods of the plaintiff's manufacture.
(2) The assertion further is that the plaintiff has established large and extensive sales of their product, under the aforesaid trade mark, during the past years, having spent huge amounts on publicity, as per figures detailed in the plaint. It is contended that by virtue of prior adoption and extensive user, the plaintiff has acquired exclusive rights to this trade mark "RAJNI" and that the adoption and/or user of an identical and/or deceptively similar mark by anybody else in relation to Zafrani Zarda or any other cognate or allied goods is bound to cause confusion and deception amounting to passing off. They further claim that the goods carrying the trade mark "RAJNI" are packed in containers with a distinctive design and unique get up, lay out, colour combination and arrangement and that the work relating to the said containers amounts to original artistic work in which the plaintiff holds valid copyright, under registration Nos. A-29946/80, A-30078/80, A-29897/80 and A-29888/89 and thus protected against infringement of this copyright.
(3) The present suit has been brought against the defendant M/s. Janta Sales Corporation, Industrial Area Jodhpur, Rajasthan, on the allegation of the plaintiff having found out that this defendant is engaged in the manufacture and sale of, inter alia, Paan Masala and has adopted an identical mark "RAJANI" in respect of the said goods. Feeling aggrieved by the adoption and use of this mark on behalf of the defendant, which is characterised as dishonest, mala fide, tainted and solely with a view to trade upon the reputation of the plaintiff and its trade mark of "RAJNI", and pass off their goods as that of the plaintiff, it is alleged that use of the mark "RAJANI" on the part of the defendant is bound to cause deception in the mind of unwary class of purchasers. The allegation further is that goods of the defendant were inferior to that of the plaintiff and the defendant has no justification for adoption of the mark in respect of Zafrani Zarda or any other cognate or allied goods, and use of this mark on the part of defendant violates the plaintiff's legal and vested rights, adding that the defendant has not only adopted an identical trade mark, but has also reproduced various features of plaintiff's artistic containers constituting infringement of the copyright. It is pleaded that the goods manufactured by the defendant, namely. Paan Masala and those by the plaintiff, namely. Chewing Tobacco are cognate and allied goods, both the goods being manufactured by the same manufacturers; sold by the same shopkeepers; and displayed side by side.
(4) Alleging that the plaintiff came to know about use of the impugned trade mark on the part of the defendant in the month of July 1989 and further alleging that it was selling, and offering for sale, its goods under the impugned trade mark within the territorial jurisdiction of this court; a decree for permanent injunction is sought against the defendants, restraining them by themselves or through their servants, agents, representatives, dealers or anybody else acting for and on their behalf from manufacturing, selling, offering for sale, directly dealing or indirectly in Paan Masala or any other goods of cognate or allied nature under the trade mark "RAJANI" or any other mark as may be deceptively similar to the plaintiff's mark "RAJNI" or from doing any other act as may lead to confusion or deception amounting to passing off and from marking their Paan Masala in tin containers with the impugned trad mark "RAJANI" or any other tin container that may be colourable imitation or substantial reproduction of "RAJANI" Zafrani Zarda tin container of the plaintiff, as also for rendition of accounts, and an order for destruction of the impugned material is sought by means of a decree of this Court.
(5) This order disposes of plaintiff's application for temporary injunction to the same effect till the disposal of the suit. An interim order was passed ex parte when the suit was brought, restraining the defendant form using the trade mark "RAJNI" on containers of chewing Paan Masala till further orders.
(6) Defendants have put in appearance after service of notice of the suit as well as the present application and interim order and has filed a detailed written statement, controverting the allegations made by the plaintiff in this suit. The user of the trade mark "RAJANI" in respect of Paan Masala marketed in tin containers is not denied but the allegation that this was by way of any intention to infringe the trade mark of the plaintiff is vehemently repudiated, pleading that the defendant adopted the trade mark in the year 1984-85 and that goods of the plaintiff were not at all available or seen in the market particularly in the district of Rajasthan where the defendants are having their maximum sale. They plead to have adopted trade mark "RAJANI" for their goods getting the idea from a Serial of the same name which was being telecast, during that period on the Doordarshan. It is contended that there is nothing distinctive about the mark "RAJNI", inasmuch as it was an ordinary Hindu dictionary word having different meanings, and the defendants are having their own design colour scheme on the tin containers and using device of available figure on the packing cartons, which feature distinguishes totally defendant's goods from those of the plaintiff's.
(7) PLAINTIFF'S assertion about having acquired reputation or goodwill in this trade mark is also refuted by pointing out that it stands falsified from the sale figures given by the plaintiff, which reveal that there was no also of the plaintiff's goods under this trade mark in the year 1985-86, when the defendant adopted the trade mark "RAJANI" in 1985-86, which they claim to have done after carrying out extensive survey in the market and after verifying that no goods including Paan Masala were being marketed with the trade mark "RAJANI" which name they adopted from he T. V. serial. The defendant has thus totally repudiated the allegations of passing off, and infringement of copyright, by asserting that the cartons used by the defendant are entirely different from the one used by the plaintiff, with a distinctive trading style, containing their complete address, and other features that distinguish them from that of the plaintiff.
(8) It is further asserted that the goods manufactured and marketed by the defendant, namely, Paan Masala cannot be considered as cognate and allied a goods with that of the Zafrani Zarda, the goods of the plaintiff, inasmuch as both are being used by different persons for different purposes and that these two sets of goods are entirely different from each other and even classified under separate heads, in the Schedule provided to the Trade and Merchandise Act, 1948 inasmuch as chewing tobacco of the plaintiff falls in class 34 whereas Paan Masala of the defendant falls in class 31.
(9) PLAINTIFF'S prayer for a decree for permanent injunction and other ancillary reliefs is thus vehemently resisted, adding also a challenge to this Court's jurisdiction, on the plea that the defendant is not carrying on any business or sale of the impugned goods in the Union Territory of Delhi.
(10) At the time of hearing, after setting out the facts briefly, Mr. Praveen Anand, arguing for the plaintiff, pointed out that on defendant's own admission, adoption of trade mark "RAJANI" by them took place in 1985. with no denial about plaintiff's assertion of having adopted this trade mark for their chewing tobacco in the year 1980 and thus plaintiff's claim of prior user is established. While conceding that the plaintiff cannot base a claim for an action for infringement, in the absence of registration; he argued that the two marks being phonetically very similar, though spelt differently, makes the present a clear case of passing off, and that coupled with the fact that the goods are cognate and allied, inasmuch as both the chewing tobacco and Paan Masala are manufactured by the same manufaturer, sold to the same set to whole-sale dealers and ultimately sold at the same retail outlet, and thus passing though a common trading channel, and further that the class of customers is the same, making the present to be a case to which the test of confusion and likelihood of deception fully applies; for which an action for passing off shall undisputably lie to prevent the mischief created by the defendant's adoption of a trade name identical to that of the plaintiff.
(11) Mr. Anand laid emphasis, with the help of the case law, to which I propose to advert a little later, on the fact that the test of confusion to the consuming public is the ultimate test, and that actual intention to deceive need not be proved and that mere possibility of such a deception was enough to enable the plaintiff to lay an action for passing off.
(12) MR.MANGLA countered Mr. Anand's argument in this respect by contending that before the plaintiff can succeed in a passing off action, there are three essential ingredients to be satisfied; firstly that the plaintiff's trade mark should be distinctive; secondly that it has reputation in the market, and thirdly use by the defendant of the impugned trade mark was likely to create confusion to the public and substantial damage to the plaintiff. He argued that "RAJANI" was not a distinctive mark nor could be treated to be an invented word, as it was an ordinary Hindi dictionary word, having more than one meaning, and thus the first test was not satisfied. He contended that similarly plaintiff's own sale figures a set out in paragraph 4 of the plaint reveal that their sales were 'nil' for the year 1985, at which point of time the defendants came into the market with this trade mark, and thus it cannot be said even by any stretch of reasoning that the defendant could have been attracted by plaintiff's trade mark when this was to all intents and purposes, a discarded trade mark, and that the defendant otherwise also has been able to give an acceptable explanation that they have adopted this trade mark on the basis of a T.V. serial being telecast during those days with the same spelling. He further added that the defendant's plea is fortified from the fact that their tin containers carry a device of a female figure. He therefore argued that not only that the plaintiff has not been able to establish prima facie that they have any goodwill or reputation in this trade mark since 1985 but otherwise also, because of defendant's design, colour scheme and get up of tin containers being entirely different, no case of infringement of the copyright is also made out because under section 14(b) of the Copy Right Act read with clause (m) of Section 2 defining what amounted to infringement of a copyright, unless there was a reproduction of the artistic work claimed by the plaintiff, and that reproduction is any material form, there cannot be an infringement of a copyright.
(13) On a resume of the respective contentions canvassed by learned counsel for the parties, I find the most striking feature of this case to be the fact that the trade name adopted by the defendant, is phonetically so similar to that of the plaintiff that it becomes on face of it, a case of near identical trade mark, a little difference in spelling, notwithstanding. I also find considerable force in the contention of Mr. Anand, that the goods marketed by the plaintiff under the trade mark "RAJNI" are in the category of cognate and allied goods, to that of the defendants for the obvious reason that the plaintiff's goods consists of 'chewing tobacco' (Zafrani Zarda) whereas defendant's goods are Paan Masala. There is a clear assertion in the plaint that both the goods are manufactured by the same manufacturers, are sold by the same shopkeepers, and are displayed side by side. This contention has prima facie to be conceded, for the purpose of disposal of this application, keeping in view particularly the nature and character of the two commodities.
(14) The plaintiff has gone on record by-further asserting in the plaint that chances of confusion and deception have been enhanced in view of the fact that the 'Paan' sellers use both Paan Masala as well as chewing tobacco as an ingredient of 'Paan' and that the trade channel and class of customers is the same in respect of both the items and the consumers are persons which include illiterate persons.
(15) This contention that the goods are consumed commonly by same set of persons, is also reinforced by the fact that there are certain manufacturers marketing Paan Masala with chewing tobacco, which fact is substantial by plaintiff by placing on record, some pouches; one that of Paan Paan Parag Masala with chewing tobacco, and another under the trade name 'Ghutka' a product of Jay Pee Company, which is also shown to be a blend of Paan Masala and Zarda. He has further shown from some of the samples produced by him that goods under the trade mark Paan Parag are marketed as Paan Masala indivudually, as also blended with chewing tobacco, and thus it cannot be successfully argued by learned counsel for the defendant that the two goods are different or consumed by different sets of persons and that these cannot be treated as cognate or allied inasmuch as there are not only common manufacturers, common whole-sellers, common retailers namely, Paan vendors and other retail dealers, but also common customers, consuming both the Paan Masala and the chewing tobacco in blended form, as evidenced by the pouches of Paan Prag and Ghutka, referred to above.
(16) The question of rights and liabilities of the parties in suchlike situations is not a virgin territory, and there have been cases coming up before Court where on given facts, the interests of a manufacturer with prior user have been protected. One of the recent cases that came up before this Court was in the matter of Creative Handicrafts v. Sadana Electric Co. and am (LA. No. 3344 of 1988 in Suit No. 1347 of 1988), decided on July 19, 1988 where the plaintiff was manufacturer of T.V. sets being marketed under the name of "CHOICE" whereas the defendant had adopted the same trade name for domestic appliances manufactured by them, such as sewing machines fans, exhaust fans, electric iron, geysers, water filter etc. The Court allowed the prayer of the plaintiff therein for issue of temporary injunction restraining the defendant from selling the aforesaid goods excepting sewing machine pressure cookers and water filters which were not electric items under the name and style of 'CHOICE' during the pendency of the suit for the reason that they were held to be cognate and allied goods, on the basis that they had the same trade channel, and even being sold in the same shops. That case was itself based on a Division Bench decision of this Court in the case of M/s.Jugmug Electric & Radio Co. v .M/s. Telerad Private Ltd. ILR(1978) I Delhi 667.
(17) Mr. Mangla has no doubt referred to a number of judgments mostly of this Court where the prayer for injunction was declined, rejecting the contention as to goods being cognate or allied, A reference to those cases reveals that they were mostly decided on facts; for instance in the case of Johnson & Johnson and another v. Christine Modern (India) Pvt. Ltd. and another, 1987 (1) Arbitration Law Reporter Ii, there was no resemblances either phonetically, visually or otherwise and the packings of the plaintiff as compared to that of the defendant in that case were found to be very much different, and quite distinct. The case before the Punjab and Haryana High Court in the matter of Punjab State Co-operative Supply & Marketing Federation Ltd., vs. Sona Spices Private Ltd. 1987(2) Arbitration Law Reporter 15, had been decided after evidence had been recorded, and it was only then held that the trade marks used by the parties were visually and phonetically dis-similar. I further find that the decision in the case of Choice T.V. which in turn relied upon a Division Bench judgment in the case of M/s. Telerad Pvt. Ltd. was given inspite of reliance being placed by counsel for the defendant, on number of other cases, namely. Nestle's Products Ltd. and other v. Milk made Corpn. and another, London Rubber Co. Ltd. v. Durex Products Incorporated and another, , and M/s. Perry & Co. Ltd. Madras v. M/s. Perry & Co., Usilampatti Madurai , holding that the goods in question should be of the same category or of the same nature before an injunction could be issued, I need not go into them again, as the learned Judge in the case of 'CHOICE' T.V. held all those cases, as having been decided on their own facts, which conclusion I respectfully endorse, after a perusal of all those Judgments.
(18) Mr. Anand has placed reliance on certain judgments of Courts in England where action for passing off has been held to be maintainable even in respect of goods which were even not seemingly of allied category. For instance it was held in the case reported as Lego System Aktieselskab and Another v. Lego M. Lemeistrich Ltd., Fleet Street Reports (1983) page 154 that once it is shown that the plaintiff had acquired high reputation in the trade mark (Lego in the case) which were trading in toys and construction kits, there could be no limitation in respect of parties' field, and activities so far as passing off action was concerned and in case there was likelihood of a person being misled that the goods marketed by the defendant were products of the plaintiff or connected with them, injunction should issue. The contention as to actual damages being proved as an essential ingredient for getting relief was also rejected, although defendant's activity consisted of manufacturing of irrigation equipment including garden sprinklers for the reason that both sets of goods were made of coloured plastic material and it was held on the basis of judgment in the case of Advocate that as a necessary ingredient to found a cause of action in passing off. there was no limitation as to the relation of field of activity of the defendant to that of the plaintiff.
(19) Golden Jet Trade Mark's 1979 R.P.C. 19, was a case of objections filed by a famous manufacturer of motor vehicles (Mercedes Benz) to the application for registration of a device, similar to theirs by a manufacturer of garments was upheld, on the view that there was possibility of assumption being raised that there was connection between the applicant and objecting and that confusion was likely on their showing that they had been using their trade mark on other goods also, such as signs, doors handles, mats, ash trays by way of promotional and other advertising material and sometime on T-shirts etc. (20) In yet another case, L.R.C. International Limited and another v. Lilla Edets Sales Company Limited, 1983 Rpc 560, an action of passing off held to a maintainable by a manufacturer of household gloves and plastic pants for babies, employing the trade mark "Marigold" against a party that had adopted the said trade mark for toilet tissues and prayer for interlocutory injunction to restrain this passing off was allowed upholding the contention that the goods were sold through the same shops on the same counter and bought by house-wives and also taking into consideration the plea that the plaintiffs planned to extend the area of their operations by going in future in to manufacture of toilet tissues also and they were thus entitled to protection. In this case, the plea that when placed side by side, the respective trade marks could be observed to be not exactly similar was also rejected, on the view that where there is general similarity in details, particularly when the marks are not seen side by side, and when those similarities are striking then the party adopting the trade mark or trading style at a later point of time has to be restrained, and that it was not possible to imagine that confusion would not in fact result.
(21) In the matter of Australian Wine Importers' Trade Mark, 1889 Reports of Patent, Design and Trade Mark Cases 311, the right of the company using the trade mark "GOLDEN FLIECE" for spirits manufactured by them, to restrain a company from adoption and user of this trade mark for wines manufactured by them, was un held when the words were found to be similar and the device was also same on the view that "wine and spirit were the same", and that the two sets of goods were of the same description, Argument that the goods did not fall in the same classification was also rejected, for the reason that the courts should not lay too much stress on the classification of framers of the rule and that real test was if the goods are found to be near in line, having likelihood or possibility of deception to the consumer, to the effect that they could be the products of the same manufacturer, who had earlier adopted the trade mark, in respect of the goods which are cognate or allied in nature.
(22) The Supreme Court in the case of Ruston and Hornby Ltd. v Zamindara Engineering Co., , also un held the right of a prior user of a trade mark to seek a restraint order against another manufacturer who adopted the near similar trade mark on the goods similar to those being manufactured by the plaintiff therein on the principle of likelihood of confusion or deception arising from similarity of marks, even in a passing off action. The facts of that case makes the present one, to be almost identical, inasmuch as the plaintiff's trade mark there was spelt as "RUSTON" whereas that of the defendant's spelt as "RUSTAM". The test held applicable for a passing off action was laid down as under : "IS the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods ?"
(23) It was held that a manufacturer was not entitled to represent his goods as the goods of another, and that even though it may not be a case of deliberate intention to deceive or fraud but in the trade mark on get-up of the prior user of a trade mark has become distinctive and that there was possibility of confusion between them and the goods of the latter manufacturer, then action would lie. On facts, it was found to be a case where there was deceptive resemblance between "RUSTON" and "RUSTAM", and that use of this bare word constituted infringement, and that even though the defendant there had shown that they were using the name also as "RUSTAM INDIA" even then this addition was held to be not sufficient, to distinguish the goods from that of the plaintiff.
(24) On the basis of this authority alone, the plaintiff here has prima facie case to succeed, because that matter was decided on the basis of phonetic as well as visual similarity of the trade name alone, and the added material was not held to be making any difference, though it was quite conspicuous inasmuch as whereas the plaintiff's trade mark was "RUSTON", the defendant had shown that they were using the mark as "RUSTAM INDIA". This therefore defeats the arguments advanced by Mr. Mangla on the basis of certain authorities that if there was added material, that ought to be considered as sufficient to distinguish, and then the action for passing off would not lie.
(25) The case of Australian Wine Importers' Trade Mark (supra) also defeats arguments of the defendant that the goods of the plaintiff fall under different classification in the schedules to Trade & Merchandise Marks Rules 1959 as against that of the defendant.
(26) Even in the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, , relied upon by Mr. Mangla the action for passing off was held to be maintainable on the facts of that case, inspite of plea of added material being there, though an observation was added that on the facts of a given case, it may be possible for the defendant to establish that the said material was sufficient to distinguish his goods from that of the plaintiff.
(27) The essence of the matter thus is that the fact that a comparative view of the goods or packed containers when placed side by side. makes them distinguishable or not, is not the determining factor; particularly when the trade marks or trade name for which the right is claimed vis-a-vis the impugned trade mark entails phonetical or visual similarity. This is the ratio of the judgment in the case of Ruston and Hornby Ltd. (supra). In another case before this Court, in an identical situation, in a passing of action, where the trade mark claimed by the party was "NIREX" (1984 I.P.L.R. 70 Nirex Industries (P) Ltd. v. Mamchand Footwear and another), for soles and soling for shoes and chapels made of rubber sheets, as against the defendant's trade mark, for chapels of similar material under the name "MIREX" application for interlocutory injunction was allowed, on the view that this was a clear case where the defendant tried to copy the trade mark of the plaintiff.
(28) The principles of safeguarding the interest of a manufacturer with a prior user have been highlighted by the Supreme Court in the case of Parle Product (P) Ltd. v. J.P. & Co. Mysore, , to the effect that the objective was to protect the goods of one being mistaken as for the other by virtue of similarities in design or trade mark or trading style and to come to that conclusion, it was not a good principle to place them side by side to find out if there are any differences in design or not and that it would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with One to accept the other if offered to him. It was also held in this case that the actual or deliberate intention to deceive need not be there and the likelihood of confusion or deception was the guiding principle. It has also been held in a number of case that the trade mark for which the distinction or right was staked need not have been in the market for a long time or at an extensive scale and that all that was required to be proved was that it has become a vendible article and even a single sale prior to time than the defendant would be enough.
(29) This was the view very succinctly outlined in the case of M/s. L.D. Malhotra Industries v. M/s. Ropi Industries, decided by this Court on 28th October 1975, reported as 1976 (1) Delhi 278, holding that a trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade and that the trader who adopts such a mark is entitled to protection directly, the article having assumed a vendible character is launched upon the market and that the test was the likelihood of confusion or deception and it may not be necessary to prove that there was intention to deceive or cause confusion. It was emphasised that the crux of the matter is not intention of the defendant in taking a certain name but the probable effect of such action on the minds of the public however innocent may be his intention he will be restrained from trading under a name so much like that under which the plaintiff who was first in the field trades, that the public are very likely to be deceived into systematic, and not mere occasional confusion and that it is its probable effect on ordinary public, unwary purchasers and incautious persons which has to be considered and that the essence of a trade mark is the association that it bears in the mind of a potential buyer of the goods to which it is applied.
(30) Same view was reiterated by this Court in another case, namely, M/s Amar Soap Factory v. M/s Public Gram Udyog Samiti 1985 (1) 2nd 960== 28 (1985) Dlt (SN) 17.
(31) The proposition enunciated in the case of M/s L.D. Malhotra Industries (supra) was cited with approval and fully endorsed by a Division Bench of this Court in this case of Century Trader v. Roshan Lal Duggar & Co. and others, , where it was held that prior user was the guiding test and further that the proof of damage was unnecessary in a passing off action and that it was enough to prove that there is likelihood of an offending trade mark invading the right of another already in the market, and on that being shown a case for injunction is made out.
(32) In view of the above, plaintiff's prayer for interim injunction against the defendant has to be considered on the mere ground that it is established even at this stage by abundant material placed on record by means of bills orders or goods receipts etc. that the plaintiff had adopted this trade mark "RAJNI" for their goods Zafrani Zarda (chewing tobacco) in the year 1980, and though there may have been intermittant break, but the sales have been fairly impressive. In terms of figures and date supplied; in the year 1981-82 the sale was of Rs. 2,95,512.62 and in 1987-88 of Rs. 7,01,889.76 and spread to almost all parts of the country, and two bills of orders even from dealers in Rajasthan have also been shown. On the strength of the decisions noticed above, the plea about prior user and the goods being of cognate and allied nature with common trade channels and common customers, entailing likelihood of confusion is held as prima facie established.
(33) The judgments relied upon by the learned counsel for the defendant have been mostly on the basis of their own facts, and after evidence was recorded but the principle that protection extends even to allied goods was recognised in those cases. For instance, in the case before the Andhra Pradesh High Court relating to cigarettes and biris, reported in 1978 I.P.L.R 133, Sayed Nlzamuddin v. Golden Tobacco Co. Pvt. Ltd. it was held that in an action for passing off, goods not only of the same kind which the plaintiff manufactures are protected but also goods which are allied or cognate in nature, where the facts in a particular case show that there is likelihood of deception, namely, that the consumer would think that the goods of the defendant are the manufacture of products of the plaintiff. That matter was was decided against the plaintiff, on the view that substantial damage must be shown to have been suffered by the plaintiff or likely to be suffered as a result of this confusion or deception but with all respects this view cannot prevail here for reasons of the clear principles enunciated by a Division Bench of this Court in the case of Century Traders (supra) holding that : "ACTUAL damage or actual fraud need not be proved."
(34) The judgment in the case of Camlin Pvt. Ltd. v. M/s National Pencil Industries, of a learned Single Judge of this Court, reported as , stands superseded by a Division Bench reported as 1986 (2) Arbitration Law Reporter 285, where it was held that where the two cartons in respect to background and general get up are similar and possibility of deception or mistake was great, the respondent was liable to be restrained from using the same colour scheme as used by the petitioner and it was also held that there was likelihood of great confusion between the two words "FLORA" and "ELORA". On the same principle, it can be unhesitatingly held that there is manifest similarity in the trade mark of the plaintiff namely "RAJNI" with that of the defendant "RAJANI" and the plaintiffs have succeeded in prima facie establishing that the two marks/names are not so dis-similar as not to entail any likelihood of confusion or deception.
(35) The plea of the defendant about this Court having no territorial jurisdiction cannot non-suit the plaintiff at this stage, for the reason; as held in the case of The Tata Oil Mills Co. Ltd. v. Hansa Chemical Pharmacy, 2nd (1979) Ii Delhi 236, the question of territorial jurisdiction should not deter the Court from considering the application for temporary injunction and that this is not such a question which wholly takes away jurisdiction of the Court to entertain the application. This Court also held in the case of Niraj Pvt. Ltd. (supra) that mere averment of the plaintiff in the plaint that the goods were being sold by the defendant in Delhi was enough at this stage for the Court to assume territorial jurisdiction. The Bombay High Court expressed the same view in this case of Institute Indo-Portuguese and others v. Dr. Theotonio Barges and others, , and the same view expressed by a Single Judge of this Court in the case of Kissan Industries v. Punjab Food Corporation, 19841.P.L.R. 131.
(36) The jurisdiction of the Court at this stage is also protected by section 62(2) of the Copy Right Act, because the plaintiff is also alleging infringement or their registered copyright. I may add however that reference to Copy Right Act is being made only for the purpose of jurisdiction because plaintiff's averments are the only relevant factor is this stage but on facts tentatively on a comparison of tin containers of the parties, I am of the Prima facie view that the design and the colour scheme and get up of the defendants containers cannot be treated as a reproduction of the design, colour scheme and get up of the plaintiff's containers as there are enough distinguishing features in the two designs inasmuch as the defendant's contains a floral outline and the figure of a female, beside their name prominently being displayed. I am holding action for passing off prima facie maintainable only in view of the phonetical and visual similarity in the trade-name, namely, "RAJNI" of which the plaintiffs are established prior user, and they have also succeeded in establishing that they have fairly spread sales since 1980. that the two goods are of cognate and allied nature in the sense that these are manufactured by the same manufacturers, and pass through the same trade channels. inasmuch as the whole-sellers or retailers are bound to be the common, and even the consuming public can be the same, and there is every likelihood of confusion, as anybody can reasonably hold the belief the plaintiff, who are the established user of this trade mark since 1980 in one category of goods may have gone into the manufacturer of the allied goods bearing the same trade name. and this is enough to lay prima facie a base for an action for passing off.
(37) As a result, I think it a fit case where the defendants have to be restrained from using or continuing to use the trade mark "RAJNI" or any other phonetically or visually similar trade name for their goods, namely, Paan Masala or any other allied or cognate goods. They are accordingly restrained, during the pendency of this suit, from selling or offering for sale, directly or indirectly dealing in Paan Masala or any other goods of cognate or allied nature under the Trade mark "RAJANI" or any other mark as may be deceptively similar to the plaintiff's trade mark "RAJNI" or from doing any other act as may lead to confusion or deception amounting to passing off, and from marketing their Paan Masala with the impugned trade mark "RAJANI" or any other tin container, that may be colourable imitation or substantial reproduction of "RAJNI" Zafrani Zarda tin container of the plaintiff.
(38) However, to maintain balance in the interests of the two parties, it is considered expedient to allow the defendants six month's time to dispose of their existing stocks but they shall confine this disposal and sale to the territory of Rajasthan and shall surrender their left overstocks with the impugned trade mark to plaintiff on the expiry of six months.
(39) Any view expressed in this order is tentative, and for the disposal of this application, and without prejudice to the respective contentions of the parties on which the final out-come of the case on merits shall depend.