Delhi High Court
Gold Star Co. Ltd. vs Gold Star Industries Ltd. And Ors. on 1 December, 1994
Equivalent citations: 1995IAD(DELHI)369, 57(1995)DLT658, 1995(33)DRJ188
JUDGMENT Usha Mehra, J.
(1) By this application M/s Gold Star Co. Ltd., plaintiff had sought an ex parte interlocutory order, inter alia, on the grounds that the plaintiff is a registered proprietor of the trade mark "Gold Star" in respect of electric washing machines, electric pumps included in class-7 and electric mixing machines, elevator and escalator vide Trade Mark No.333391 of 10th February,1978. Similarly, vide Trade Mark No.333392 of 10th February, 1978 in Class-9, plaintiff's trade mark is registered in respect of Television, radio, transistor, tape recorder etc. Vide Trade Mark No.333393 in Class-11 as of 10th February,1978 in respect of electric fans, refrigerators, air conditioner etc. Vide Trade Mark No.3333963 as of 10th February,1978 in respect of television, radio, transistors, tape recorder etc. included in Class-9, plaintiff also applied for registration of trade mark "Gold Star" vide Trade Mark Registry No.33339 dated 10th February,1978 in Class-14 in respect of electrical clocks and vide No.333397 in Class-11 in respect of refrigerators, air conditioners, electric toaster etc. Registered trade mark of the plaintiff "Gold Star" has been renewed from time to time. The trade mark "Gold Star" of the plaintiff is known all over the world. This trade mark of the plaintiff is registered in almost 100 countries of the world. Plaintiff's goods are of quality and have international market. In India, the plaintiff could not import goods because of import restrictions. But parts were imported and re-assembled in India and then sold in the market. Plaintiff has also been negotiating collaboration with Greysham International Pvt.Ltd. Plaintiff offered technical know- how to the said company in respect of washing machine in India. Pursuance to the said agreement which is duly approved by the Government of India, plaintiff sent a washing machine to the said Greysham International Pvt.Ltd. Plaintiff has also exported and sold Tv parts under the trade mark "Gold Star" to India from 1982 onwards. Plaintiffs had been advertising their goods under the trade mark "Gold Star" in generals in India. Because of the quality of the plaintiff's product, plaintiffs are getting offers from Indian manufacturers for collaboration and for giving their know-how. Plaintiff's trade mark "Gold Star" has achieved reputation, goodwill and name in India. Caution notice was issued to the public in India through the media not to buy the products, other than that of the plaintiff under the trade mark "Gold Star". It was somewhere in November,1986 that plaintiff found in the newspaper that the defendants had adopted the trade mark "Gold Star" and were using the same in respect of their product washing machines, for which the plaintiff is the registered proprietor. In this advertisement they also stated that they would be introducing geysers, heat covectors and hot cases. Notice was served on the defendant. Instead of complying with the said notice, defendants filed a suit in December,1986 against the plaintiff seeking declaration to the effect that the threat given by the plaintiff in its notice dated 12th November,1986 was unjustified and further that the Court should declare the defendant herein (plaintiff in that suit) to be the owner and proprietor of the trade mark "Gold Star" and restrain the present plaintiff from interfering in any manner with the business of this defendant (plaintiff before that Court).
(2) That defendant's use of plaintiff's registered trade mark "Gold Star" in respect of their product namely, washing machines is in fact an infringement of the plaintiff's trade mark. Similarly, use of the trade mark "Gold Star" in respect of fans is also infringement of plaintiff's registered trade mark. It amounts to passing of defendant's goods as that of the plaintiff. Not only the defendants are passing of their goods as plaintiff's goods under the trade mark "Gold Star" but the defendants have also incorporated plaintiff's registered trade mark "Gold Star" in their trading style which is deceptively similar to that of the plaintiff's trading style Gold Star Co. Ltd. Because of passing of their goods under the name of plaintiff's registered trade mark "Gold Star" and also of the trading style, which is deceptively similar, an impression has been created in the mind of public that product of the defendant are in fact that of the plaintiff or that the defendant has become associate of the plaintiff, which fact is not true. At places the defendants have used the letter "R" in a circle over the trade mark "Gold Star" which denotes that their trade mark "Gold Star" is also registered, which fact again is not true. Because of the use, by defendant, the registered mark of the plaintiff "Gold Star" and its trading style, reputation and business of the plaintiffs have suffered. It is in this background that relief of interlocutory order has been sought (3) This application has been contested by the defendants mainly on the grounds that the defendant No.1 has been engaged in manufacturing and sale of electric apparatus including washing machines, mixers, heat covectors and fans, since April,1984. It has been continuously and extensively using the trade mark "Gold Star" since 1984 without any encumbrance. The suit suffers from delay, laches and acquiesence, hence, liable to be dismissed. Moreover, the trade mark "Gold Star" is not distinctive of either the plaintiff's goods or plaintiff's business in India. There has been no use or any bonafide intention on the part of the plaintiff to use the trade mark "Gold Star". Continuous period of more than five years has elapsed after the registration of this trade mark by the plaintiff and it has not been used by them, therefore, plaintiffs are not entitled to any relief. Rectification or removal of registered trade mark has already been filed by the defendants. The defendants have established independent right to use the trade mark "Gold Star" on account of continuous user since 1984. On the other hand plaintiff has no manufacturing or sale activity in India and, therefore, not entitled to the relief. Plaintiff in fact is guilty of violating the provisions of law, therefore, also not entitled to discretionary relief. In fact no case of infringement of any kind has been made out nor the question of passing of has been established. The suit is liable to be stayed under Section 10 of the Code of Civil Procedure, because of the earlier suit instituted by the defendant in the Court of District Judge, Delhi. Plaintiff had no bonafide intention to use the trade mark "Gold Star" in India at the time of obtaining the registration and a continuous period of five years or more has elapsed during which there has been no actual user of the alleged trade mark "Gold Star" on the part of the plaintiff. Since, the plaintiffs have never used the trade "Gold Star" in India, therefore, there is no violation of the goodwill and reputation of the plaintiffs in India.
(4) In the replication, the plaintiffs have denied that the defendants had been using the trade mark in India since 1984. Moreover, tillthe rectification as decided, it gives no right to the defendants to use the registered trade mark of the plaintiffs. To the plaintiff's knowledge the defendant had been using the trade mark "Domestic House Queen" "Dhobin" as their trade mark in respect of washing machine manufactured by them.
(5) I have heard the counsel for the parties and perused the record. Admittedly, the plaintiff is the registered proprietor of the trade mark "Gold Star" in the following electric goods, namely :-
I)Trade mark No.333391 Gold Star as of 10.2.1978in class 7 in respect of electric washing machines,electric pumps included in class 7 and electric mixing machines, elevator and escalator. ii) Trade mark No.333392 Gold Star as of 1.2.1978 in class 9 in respect of television, radio, transistor, tape recorder, cassette tape recorder, amplifier, speaker, electric cable, telephone set, calculator, integrated machines and computer, all being goods included in class 9. iii) Trade mark No.333393 in class 11 as of 10.2.1978 in respect of electric fans, refrigerators, air conditioners, electric ice cream stocker, (Refrigerating appratur) and electric show case (regrigerating apparatus). iv) Trade mark No.333396B Gs Gold Star label asw of 10.2.1978 in respect of television, radio, transistor, tape recorders, cassette tape recorder, amplifier, speaker, electric cable, switch board, television set, calculator, integrated circuit, tranceiver electronic cash register, vending machines, and computer all being goods a in cluded in class 9.
(6) It is also an admitted fact on record, that the defendants have adopted the registered trade mark and the trading style of the plaintiff for its electric goods namely washing machines, geysers, heat convectors and had been using the letter "R" on its trade mark "Gold Star Industries". This is apparent from the cash memo and bills issued by the defendants. It is also an admitted fact that the plaintiffs have applied for registration of the trade mark "GOLD STAR" in respect of the following vide application numbers given below:
I)No.333394 Gold Star dated 10.2.1978 in class 14 in respect of electrical clocks and ii) No.333397 Jgs and Crown Device In class 11 in respect of refrigerators, air conditioners, electric toaster, electric stove, electric rice cooker, electric ice cream stocker, electric show case (refrigerating apparatur).
(7) In view of this admitted position, we have to see the defense raised by the defendants. It is a settled principle of law that the person who is a registered trade mark proprietor has preferential right over the use of the said trade mark as against others. The defendants are aware of the fact that the plaintiff is a registered proprietor of trade mark "Gold Star" in respect of washing machines, grinder, mixer etc. falling in class 7 to 11, still is contesting the suit primarily on the ground that (i) the plaintiff has not been selling its products in India under the trade mark "Gold Star", (ii) rectification proceedings are pending and (iii) the registered trade mark has not been used for five years or more. Therefore, relief sought by the plaintiff suffers from delay, laches and acquiesence.
(8) In order to appreciate relevant contention of counsel for the parties, relevant provisions of the Trade & Merchandise Act,1958 (in short the Act) are reproduced as under :
"18.Application for registration- (1)Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar int he prescribed manner for the registration of his trade mark either in Part Ja or in Part B of the register."
"21.OPPOSITIONto registration- (1) Any person may, within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration."
"28.RIGHTSconferred by registration- (1) Subject to the other provisions of this Act,the registration of a trade mark in Part A or Part B of the register shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act."
"29.INFRINGEMENTof trade marks.- (1) A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, use in the course of a trade mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (2)In an action for infringement of a trade mark registered in Part B of the register an injunction or other relief shall not be granted to the plaintiff if the defendant establishes to the satisfaction of the court that the use of the mark of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered and some person having the right, either as registered proprietor or as registered user, to use the trade mark."
"30.ACTSnot constituting infringement- (1) Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of the right to the use of a registered trade mark- (a)where a trade mark is registered subject to any conditions or limitations,the use of the trade mark in any manner in relation to goods to be sold or otherwise traded in, in any place, or in relation to goods to be exported to any market, or in any other circumstances to which, having regard to those conditions or limitations, the registration does not extend; (b)the use by a person of a trade mark in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk of which they form part, the registered proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark; (c)the use of a trade mark by a person in relation to goods adapted to form part of, or to be necessary to, other goods in relation to which the trade mark has been used without infringement of the right given by registration under this Act or might for the time being be so used, if the use of the trade mark is reasonably necessary in order to indicate that the goods are so adapted,and neither the purpose nor the effect of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods; (d)the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act. (2) Where the goods bearing a registered trade mark are lawfully acquired by a person, the sale of or other dealings in those goods byt hat person or by a person claiming under or through him is not an infringement of the trade mark by a person claiming under or through him is not an infringement of the trade mark by reason only of the trade mark having been assigned by the registered proprietor to some other person after the acquisition of those goods."
"31.REGISTRATIONto be prima facie evidence of validity- (1)In all legal proceedings relating to a trade mark registered under this Act (including applications under Section 56), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof."
(9) MR.MANMOHAN Singh counsel for the plaintiffs contended that by virtue of Sections 28,29 & 31 of the Act, the plaintiffs being registered proprietor of the trade mark has got exclusive right to use the same. Registration of this trade mark is a prima facie proof of plaintiff's exclusive right. The use of this trade mark by defendants is nothing but an infringement of the plaintiff's right.
(10) Section 29 of the Act indicates as to under what circumstances a registered trade mark is infringed. The exception are carved out in sub- section (2) of Section 29, i.e. if the defendant establishes to the satisfaction of the Court that the use of the mark of which the plaintiff complains is not likely to deceive or cause confusion in the mind of the public i.e.,the buyer. Therefore, in order to fall under Sub-section (2) of Section 29, the burden was heavy on the defendant to prove that the trade mark being used by them has not been deceptively similar to that of the plaintiffs.
(11) The defense as set up by the defendant prima facie does not fall or covered in the exception carved out either under sub-section (2) of Section 29 or section 30 of Act. On the contrary defendant in no uncertain words admitted that they have been using this registered trade mark of the plaintiff for its products in class 7 to 11. Further attention was drawn to the provisions of Section 30 of Act which also provides extents when action would not constitute infringement.
(12) SUB-SECTION (2) of Section 30 lays down that when the goods bearing a registered trade mark are lawfully acquired by a person, the sale of or other dealings in those goods by such a person is not an infringement of the trade mark. But that is not the case in hand. Therefore, relying on these provisions, Mr.Singh contended that once a trade mark is registered and in use, it is a prima facie proof of its validity. It entitles the plaintiff to take action for the infringement of its use by defendant for its products which are deceptively similar to that of the plaintiff.
(13) SUB-SECTION (3) of Section 46 of the Act indicates that if the non user of the Trade mark was due to any restrictions of import and the registered proprietor could not use the said trade mark on account of that bar, then in such an eventuality, the defendant cannot claim any relief under the provisions of clause (b) of Sub-section (1) or Sub-section (2) of Section 46 of the Act. The import restriction in such a case would amount to 'special circumstances' in that trade and the non user cannot be said due to any intention not to use the same or not to use the trade mark in relation to the goods for which the trade mark was got registered. Therefore, the case of plaintiff falls under the exception as laid down in sub- section (3) of Section 46. Sub-Section (3) of Section 46 of the Act is reproduced as under:-
"46.REMOVALfrom registered and imposition of limitations on ground of non use (1) xxxxxx (2) xxxxxx (3) An applicant shall not be entitled to rely for the purpose of clause (b) of sub-section (1) or for the purpose of sub-section (2) on any non- use of a trade mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates."
(14) It is the case of the defendant that after the registration of the trade mark "Gold Star", the plaintiff has not been using the said trade mark for its products in India for its goods falling under class 7 to 11 though plaintiff may have been selling its goods under this Trade mark all over the world. This argument has been refuted and attention was drawn to the fact that the plaintiffs had been bringing knock down parts in India and after reassembling the same those were sold in Indian market under the trade name "Gold Star". Therefore, prima facie, it cannot be said that the plaintiff intentionally wanted to abandon or not to use the trade mark in relation to its goods under the trade mark "Gold Star". The plaintiff has in fact pleaded that he could not bring the finished goods to India due to the import restrictions. But at the same time had been bringing parts in "knock down condition" and after assembling selling the same in Indian market. The fact that the the plaintiff could not bring its finished goods due to import restrictions is mentioned in para 8 of the application. Whereas, in reply to this para, defendants have merely denied the averments. Mere denial is no denial of the facts alleged. The assertion by defendant that import of such goods even in "knock down condition" amounted to violation of the Indian law does not mean denial of the use of the trade mark. To this the plaintiff relied on letter dated 12.12.86 issued by Ministry of Industry, Govt. of India, addressed to Reserve Bank of India. This shows that Govt. of India approved collaboration of plaintiff with Greysham International Pvt.Ltd. for manufacturing washing machines under the trade mark "Gold Star". This fortifies the contention of Mr.Manmohan Singh that plaintiff at no stage had any intention to abandon its trade mark or intention not to use this trade name or style.
(15) On the other hand conduct of the defendant, according to Mr.Manmohan Singh has been fraudulent and dishonest. They have been passing of their goods under the registered trade mark "Gold Star" of the plaintiff. Besides they have been deceiving the public by using the letter "R" on top of the bills and cash memos in order to convey to the public, as if their trade mark was also registered. This is nothing but a breach and infringement of the right of the plaintiffs. Section 81 of the Act lays down the penalty for falsely representing a trade mark as registered. Section 81 of the Act which is reproduced as under provides that no person has a right to represent that his trade mark is registered when it is not to be true :-
81.PENALTYfor falsely representing a trade mark as registered- (1) No person shall make any representation- (a) with respect to a mark not being registered trade mark, to the effect that it is a registered trade mark; or (b) with respect to a part of a registered trade mark not being a part separately registered as a trade mark, to the effect that it is separately registered as a trade mark; or (c) to the effect that a registered trade mark is registered in respect of any goods in respect of which it is not in fact registered; or (d) to the effect that the registration of a trade mark gives an exclusive right to the use thereof in any circumstances in which, having regard to the use thereof in any circumstances in which, having regard to limitations entered on the register, the registration does not in fact give the right. (2)If any person contravenes any of the provisions of sub-section (1) he shall be punishable with imprisonment for a term which may extend to six months, or with fine which may extend to five hundred ruppes, or with both. (3)For the purpose of this section, the use in India in relation to a trade mark of the word "registered", or of any other expression referring whether expressely or impliedly to registration, shall be deemed to import a reference to registration in the register, except- (a) where that word or other expression is used in direct association with other words delineated in characters at least as large as those in which that word or other expression is delineated and indicating that the reference is to registration as a trade mark under the law of a country outside India being a country under the law of which the registration referred to is in fact in force; or (b)where that other expression is of itself such as to indicate that the reference is to such registration as is mentioned in clause (a); or (c) where that word is used in relation to a mark registered as a trade mark under the law of a country outside India and in relation solely to goods to be exported to that country."
since the defendant had contravened provision of Section 81, therfore, they are liable to be punished under this provisions of the Act, Mr.Singh contended that this Court has ample power to restrain the defendants from infringing the registered trade mark of the plaintiff and passing of its goods under the trade mark and trading style of the plaintiff. The mere fact that the plaintiff could not use its registered trade mark due to the import restrictions would not disentitle him from the relief which is permissible under sub-section (3) of Section 111 of the Act. In this regard reliance can be placed on the decision of this Court in the case of M/s Avis International Ltd. Vs. M/s Avi Footwear Industries Air 1991 Delhi page 22. In almost similar circumstances, this Court rejected the defense put up by defendant. In that case, Court dealt at length various provisions of the Act and the fact that in that case also defendant had applied for rectification of the trade mark because of non user by the plaintiff. Therefore, defense taken was that during the pendency of the rectification proceedings no relief be granted. The court while repelling these arguments concluded "that the statutory monopoly which has been conferred upon the plaintiffs in connection with use of the mark Avis for footwear has to have primary precedence over any other consideration in relation to grant or non-grant of an injunction especially when the matter is at interlocutory state, and is yet to be tried, and it cannot be foreseen as to whether the defendants who seek rectification of the plaintiff's mark, on account of non-user would be liable to prove their case. The statutory registration establishes prima facie case in favor of the plaintiffs".
(16) Relying on these observations it can be said that mere pendency of the rectification proceedings would not disentitle the plaintiff from relief sought, particularly when plaintiff is proprietor of registered trade mark in respect of washing machines. The trade mark was registered vide registration No.333391 "Gold Star" as on 10th February,1978 in class 7. What would happen to the rectification proceedings nobody can predict. As of today,prima facie evidence establishes plaintiff's exclusive right regarding trade mark "Gold Star" in respect of washing machine etc. Plaintiff cannot be deprived the fruit of registered trade mark nor can the defendant be allowed to use the trade mark of the plaintiff for passing of its goods. The plaintiff has an international market and is a registered trade mark proprietor in about 100 countries. Because of the quality of its goods it has acquired an international reputation and goodwill. Therefore, prima facie if the defendants are allowed to use the trade mark of the plaintiff it would adversely affect the business sof the plaintiff, internationally as well as in India. In fact the "Gold Star" is a household word for quality products all over the world and associated with the plaintiff. In the words of Mahinder Narain, J. in the case of Daimler Benz Akitegeselischaff V. Hybo Hindustan "the trade mark law is not intended to protect a person who deliberately sets out to take benefit of somebody else's reputation with reference to goods, especially so when the reputation extends world wide. If despite of legal notice,any one continues to carry the illegitimate use of a world wide renowned name/mark as is being done in this case, there cannot be any reason for not stopping the use of a world reputed name." therefore, relying on these observations it can be said that plaintiff's trade mark is world wide renowned name for the electric goods falling in class 7 to 11. The defendant cannot be allwoed to carry on the use of this significant world wide renowned name of the plaintiff. Relying on the decision of Supreme Court in the case of M/s Power Control Appliances & Ors. V. M/s Sumeet Machines Pvt. Ltd. , it can be said that there can be only one trade mark, one source and one proprietor. It can not have two origins. Hence on the basis of admitted facts that the plaintiff is the registered proprietor of the trade mark "Gold Star" for its products falling in class 7 to 11 inclusive of the washing machines, the defendant cannot be permitted to use the same trade name for its electric products.
(17) Filing of of the rectification proceedings is not a valid defense for infringement of the trade mark. Therefore, the denial of injunction once the infringement of the trade mark is established, would amount to putting a premium on the illegal action of the defendant.
(18) MR.MANGLA, however, placed reliance on the decision of this Court in the case of R.J.Reynods Tobacco Company V. I.T.C. Limited 1987 (1) Arbitration Law Reporter page 156 to stress that if a trade mark has remained non user, then plaintiff cannot claim any relief. The facts of that case were that an American Company, registered proprietor of the trade mark "NOW" in nearly 80 countries of the world, challenged the use of the trade mark by the defendant. Similar defense was taken by that defendant, that the plaintiff though the registered proprietor of the trade mark, but in fact has not been using the same in India ever since its registration in 1975. The court declined to grant injunction on the ground that the plaintiff therein got the trade mark registered during the import ban, knowing fully well that it could not sell its products in India and had in fact not sold for number of years. But that is not the case in hand. Plaintiff herein has specifically pleaded that he imported parts, got them reassembled and sold under its trade mark in Indianmarket. The factum of importing parts, reassembling and selling has not been denied. Only defense taken that it was violative of law. Secondly, plaintiff entered into collaboration in 1986 with Indian Company which has been approved by the Govt. of India. These two facts repell the arguments of Mr.Mangla that plaintiff had no intention to use this trade mark at the time of registration. Nor the judgment quoted above by Mr.Mangla apply to the facts of this case.
(19) He also placed reliance on the decision of this Court in the case of Usha Intercontinental & Ors. Vs. Usha Television Ltd., 1986 (1) Arbi.L.R. 36 and the decision of Calcutta High Court in the case of Kabushiki Kaisha Toshiba (Toshiba Corporation) Vs. Toshiba Appliances Co. & ors, 1994 Patents & Trade Mark Cases 53. The observations of this Court in the case of Philips Morris Belgium S.A. Vs. Golden Tobacco Co.Ltd. Air 1986 Delhi 145 would apply to the facts of this case. It was held therein that the non-user of the trade mark by the company due to the import restriction imposed by the Government of India would constitute 'special circumstances' within the meaning of Section 46(3) of the Act justifying non-user of the trade mark. Similarly , in this case ban imposed by the Govt. of India would constitute 'special circumstance' for non user of the trade mark. If the plaintiff, had no intention to use the trade mark, it would not have entered into collaboration agreement nor the Government of India would have approved the same. Therefore, prima facie it cannot be said that the plaintiff when got its trade mark registered had no intention to use it. Hence plaintiff cannot be deprived of the fruits of its registration. Prima facie, the acts of the plaintiff as observed above falls under sub Section 3 of Section 46 of the Act. As already observed above, the mere fact that the rectification proceedings are pending is no ground to decline the interlocutory order as held by this Court in M/s Avis International Ltd. (supra).
(20) Reliance by Mr.Mangla on the decision of Calcutta High /Court in the case of M/s J.N.Nichols (Vimto) Ltd.Vs. Rose & Thistle & anr., 1994 Calcutta 43 is misplaced because that was a case where the plaintiff because of the ban imposed could not use the registered trade mark for its products. But in the case in hand the plaintiff had been bringing the knock down parts of its products, reassembled the same in India and sold in the market under the trade name of "Gold Star". Relying on the observations of Umesh Chandra Banerjee, J. in the case of M/s J.N.Nichols (Vimto)Ltd. (supra) it can be said that the use of the trade mark does not postulates actual sale of the goods. 'Use' can be in any form or way and does not necessarily mean and imply actual physical sale. Even mere advertisement without having even the existence of the goods can be said to be an use of the mark.
(21) It has been the case of the plaintiff herein that he had been advertising his goods under the trade mark "Gold Star" in journals and in newspapers which are being circulated in India. This shows that the plaintiff had been advertising its goods which according to the observation of the Calcutta high Court would amount to use. If that be so then, prima facie, it cannot be said that there was no user of the trade mark for a long period.
(22) MR.MANGLA has not been able prima facie to prove that defendant had been using this trade mark prior to the registration of this trade mark by the plaintiff. On the contrary, as per defendant's own admission, it has been using the plaintiff's trade mark "Gold Star" in respect of washing machines since 1984. Whereas the plaintiff's trade mark was registered in 1978. Therefore, on this account also defendant has no defense. In fact this Court, in the case of Shri Swaran Singh Trading Appliances Emp. Vs. M/s Usha Industries (India), New Delhi, held that in case the use in respect of certain items had been concurrent the defendant can be allowed to use the impugned trade name in conjunction with another word. But that is not the case pleaded or prima facie proved. It is nobody's case that the use of this trade mark "Gold Star" by the defendant was concurrent. Relying on the above observation, Manmohan Singh contended that defendant has been using for its product his trade mark "Gold Line" for washing machine etc. The plaintiff has no objection if the defendant uses that trade mark "Gold Line" for its products.
(23) As regards the decision relied by Mr.Mangla in the case of Kabushiki Kaisha Toshiba (supra), there also the Court concluded that the plaintiff had no malafide intention at the time of registration to use the mark in relation to its goods. But in the present case, from the facts which have come on record, it cannot be prima facie said that the plaintiff had no intention not to use this trade mark when got it registered. On the contrary approval given by the Government of India way back in 1986 for the plaintiff to come in collaboration with Indian Company for the product of his goods in India, shows that plaintiff had the intention to have its products sold in Indian market.
(24) Taking all these factors into consideration, I am of the view that not only the prima facie case is in favor of the plaintiff, but the balance of convenience is also in favor of the plaintiff. By permitting the defendant to have the concurrent use of the trade mark of the plaintiff, would amount to allowing the illegal activities of the defendant. If the injunction is not granted it would amount to depriving the plaintiff of its exclusive statutory right.
(25) For the reasons stated above, defendants are restrained from using the trade mark "Gold Star" for its products washing machines, mixers, grinders, geysers, ovans, hot plates, electrical cooking appliances, fans, and other such appliances which are similar or cognate goods for which plaintiffs hold its registration No.333391, 333392, 333393, 3, 333396B. However, if the defendants are so advised, they can adopt any other label or trade mark for its products.