Delhi High Court
Amir Chand Om Parkash vs Monga Perfumery & Floor Mills on 1 May, 1996
Equivalent citations: 1996IIIAD(DELHI)210, 1997(1)ARBLR509(DELHI), 63(1996)DLT113, 1996(37)DRJ636
Author: N.G. Nandi
Bench: N.G. Nandi
JUDGMENT N.G. Nandi, J.
(1) In the suit alleging infringement of registered trade mark Mahavir Chhap with device of Hanuman or Bajrang Ball and plaintiffs copyright in respect of Dhoopbatti and Aggarbati under the impugned label/carton Jai Bajrang Bali Delux Dhoop by I A 340/90 the plaintiff prays for relief under Order 39 Rules 1 and 2 Cpc in respect of plaintiffs trade mark and copyright pending the hearing and disposal of the suit. By I A No. 1522/92 also the plaintiff has prayed for the same relief.
(2) The case of the plaintiff shortly stated is that the plaintiff is a registered proprietor of the trade mark Mahavir Chhap with device of Hanumanji under registration No. 14958 dated 26.4.1943 in class-3 inrespect of Dhoop BATI; that in the year 1941 the plaintiff adopted the trade mark Mahavir Chhap so as to indicate its connection in the course of trade with the goods of its manufacture and sale as a proprietor thereof; that the plaintiff adopted a distinctive label of the trade mark Mahavir Chhap with device of Hanumanji for the purpose of marking its products in the market since the year 1982. The distinctive lable of the plaintiff entitled Mahavir Delux Dhoop with device of Hanumanji, is registered under No.A-45929/84 under the provisions of Copyright Act, 1957; that the registration of the plaintiff under the Trade and Merchandise Marks Act as well as Copyright Act arc valid, subsisting and effective all over India; that defendant is engaged in the business of manufacturing and marketing of Dhoop Batti and Agarbatti; that the defendant has adopted an identical to and/or deceptively similar label of 'JAI Bajrang BALI' with device of Hanuman/Bajrang Bali and Hanuman Chhap Dhoop NO.1 with device of Hanuman in respect of Dhoop and Agarbatti for its manufacture and sale; that the defendant has also adopted an identical to and/or deceptively similar label of Jai Bajrang Bali with device of Hanuman/Bajrang Bali as of plaintiffs' registered copyright No.A- 45929/84 in all respects with deceptively similar matters and also in the same manner and fashion. The trade mark Jai Bajrang Bali and Asli Hanuman Chhap is equivalent to plaintiffs' trade mark Mahavir Chhap with device of Hauman/Bajrang Bali and therefore, the idea suggested by the defendant's mark the conveyed by the plaintiffs registered trade mark and copyright is the same; that the adoption of the trade mark Jai Bajrang Bali and Asli Hanuman Chhap and the device thereof on the part of the defendant is malafide, dishonest, tained and solely with a view to trade upon the reputation of the plaintiffs well known and registered trade mark and copyright Mahavir and device of Hanuman/Bajrang Bali thereof. That the adoption by the defendant of the above mentioned trade marks and its labels to cause confusion and deception and to pass off their goods and business as and for the goods of the plaintiff and to create an impression as its goods Dhoop Batti and Aggarbatti under the trade mark Jai Bajrang Bali and Asli Hanuman Chhap with device of Hanuman/Bajrang Bali have also originated from the plaintiff or are connected with the plaintiff in one or the other manner. That the defendant has full knowledge about the registration, reputation and status of the trade mark Mahavir with device of Hanuman/Bajrang Bali thereof belonging to the plaintiff. That the goods manufactured by the plaintiff and the goods manufactured by the defendant are the goods of the same description and are sold and offered for sale by the same firm, shops and counters. The class of customers and the trade channel for. the goods of the plaintiff as well as the defendant are the same. That the use of the trade mark of Asli Hanuman Chhap and Jai Bajrang Bali with device of Hanuman/Bajrang Bali on the part of the defendant for the goods Dhoop Batti and Aggarbatti is bound to cause confusion and deception in the minds of unwary class of purchasers. In substance the say of the plaintiff is that the defendant has infringed the registered trade mark and the copyright of the plaintiff by using an identical to and/or deceptively similar trade mark Jai Bajrang Bali and Asli Hanuman Chhap with device of Hanuman/Bajrang Bali and the use of the label/carton in the same fashion and the manner with similar distinctive matters.
(3) As against this the say of the defendant is that the suit of the plaintiff neither for infringement nor for passing off is maintainable. That the plaintiff is not holding any registration of the trade mark Mahavir Chhap as alleged in the plaint. The registration No. 14958 was granted in favour Late Amir Chand trading as Amir Chand Om Prakash. That the plaintiff has not pleaded any case of assignment and, therefore, the action is not maintainable. That the trade mark registered under No.14958 has never been used in the course of trade as such. That the plaintiff has no title to sue the defendant. That the-trade mark Mahavir Chhap is not distinctive of plaintiffs goods or business. That the registration No.14958 is not valid and is liable to be expugned from the register under the provisions of Section 45 read with Section 56 of the Trade & Merchandise Marks Act, 1958. That the artistic logo was registered without any bonafide intention on the part of the plaintiff to use the same and, in fact, there has been no bonafide use of the said mark in relation to vend able goods. That the defendant's use of trade mark Jai Bajrang Bali in relation to Doop is not likely to cause confusion or deception. That the defendant has a right to use the said trade mark and the defendant is the proprietor of the trade mark Bajrang Bali which has continuously and extensively been used in the course of trade since the year 1965. That the false claims have been made concerning the adoption and use of the trade mark Mahavir CHHAP. That the plaintiff has falsely and fraudulently annexed photocopy of a new label with the copyright "registration certificate No.A- 45929/84, whereas the label which is registered is the one which is page-36 of the documents filed by the plaintiff. That the suit is not maintainable on account of delay, laches and acquissance. That the defendant is using the trade mark Asli Hanuman Chhap and the device of Hanuman Ji in respect of Dhoop and Agarbati since 1965. The trade mark Jai Bajrang Bali and the device of Hanuman Ji in the new label is also being used by the defendant since 1986. That on plaintiff own say the knowledge of the defendant user has become known to the plaintiff in May, 1987 and the present suit is filed after nearly three years and the plaintiff is not entitled to any relief of injunction. That the suit of the plaintiff is liable to be stayed under the provisions of Section 111 of the Trade & Merchandise Marks Act, 1958 in view of the rectification petition filed by the defendant for the removal of trade mark No. 14958 from the Register. In substance the defendant has denied the plaintiffs right to the relief.
(4) It is suggested from the copy of the registration issued by the Trade Marks Registry under the Trade & Merchandise Marks Act suggesting the registration of the plaintiffs mark Mahavir with the photograph depicted of Lord Hanumanji with writing below the photograph "Sudandhi Uttam Dhoop Batti", below that "Mahavir Chhab". The registration of the plaintiffs label under the Copyright Act is also suggested by the copy of the registration produced at page-32 issued by the Office of the Copyrights. The registration of the plaintiffs label under the Copyrights Act is suggested as A-45929/84 whereas the registration of the plaintiffs mark under the registration is suggested at No. 14958.Thus the registration of the plaintiffs mark under the Trade & Merchandise Marks Act and the registration of the plaintiff label under the Copyrights Act are prima facie suggested. Page-35 is the plaintiffs label bearing mark Mahavir with the picture of Lord Hanuroan with writing below the photograph reading "DE- Luxe DHOOP". The label of the defendant is produced' at page-37 Ex.P-l which also suggests the depiction of the photograph of Lord Hanuman with the writing below the photograph 'JAI Bajrang Bali Deluxe DHOOP'. The defendants label is produced at page-38 EX.P-2 wherein the picture of Lord Hanuman is printed in flying posture. Keeping the mark of the plaintiff Mahavir produced at pages-35 and 36 and the mark of the defendant at page- 37 Ex.P-1, together, it is prima facie suggested that the picture depicted of Lord Hanuman in both the marks is deceptively similar not only that but the colour scheme of both the marks is the same except that the plaintiffs mark is somewhat bright in colour whereas the defendant's mark is in some what faint shade. Both the marks at pages 35-36 of the plaintiff and page-37 Ex.P-l of the defendant tally in materials in particular and in both the marks the writing 'De-luxe Dhoop' is suggested. Thus the defendant has copied even the writing employed in the mark of the plaintiff the and it prima facie appears that the mark, the colour' scheme and the writing used by the defendant in its mark is distinctively similar to that of the plaintiffs mark and likely to cause confusion to unwary customers. It prima facie appears taking both the marks together that the impugned label and the marks of the defendant is colourable imitation or almost substantial similar so as to cause confusion in the minds of the purchasers. It may be appreciated that the goods/material Dhoop Batti and Agarbatti are used for worship of the God and the Goddess and the class of purchasers would be the women also including illiterate women and domestic servants and the. likelihood of the confusion deception would be more sin case of these class of customers, since the Court has to keep in view the average customers of these classes.
(5) In the decision reported B.K. Engineering Co. Delhi Vs. U.B.H.I Enterprises (Regd.), Ludhiana and another, the Division Bench of this Court while granting the temporary injunction to the plaintiff observed that the Competition must remain free. This is the life blood of free enterprise system. Yet it is essential that "TRADING must not only be honest but must not even unintentionally be unfair. If it is shown that a product or a business of a trader has acquired distinctive character the law will restrain a competitor from using that other's name. A line must be drawn som where between honest and dishonest trading between fair and unfair competition."
(6) One of the arguments advanced on behalf of the defendant is that the plaintiff has delayed the filling of the suit and that the plaintiff would not be entitled to the relief of injunction. It is averred in the plaint that the plaintiff for the first time came to know in or about May, 1987 that the defendant is manufacturing and selling Dhoop Batti and Agarbatti with device of Hanuman Ji or Bajrang Bali with identical to or deceptively similar to the plaintiffs registered trade mark and copyright Mahavir Chhap or Mahavir Delux Dhoop with device of Hanumanji or Bajrang Bali or fraudlently and imitation threof. It has been submitted by Mr. Ghiraya, counsel for the plaintiff that the plaintiff entered into the correspondence with the defendant in December, 1987 and because disturbances in Punjab specially in Amritsar the suit could not be filedearlier. That is why the plaintiff has explained the delay to which the argument of the defendant is twofolds; firstly that the suit could have been filed in Delhi High Court soon after the knowledge of the plaintiff as there were no disturbances in Delhi at that time; secondly that the plaintiff has allowed the defendant to grow in the trade and thereby acquiesced.
(7) It may be appreciated that as regards the grant of the relief of permanent injunction it has been consistently held in the various judicial pronouncements of this Court and other High Courts that if the defendant has fraudlently with the knowledge has been violating the plaintiffs rights then in that case, even if there is a delay on the part of the plaintiff in taking action against the defendant, the relief of injunction cannot be denied. Where there is an honest, user by the defendant then inordinate delay or the laches may defeat the claim of damages or rendition of accounts but the relief of injunction should not be refused. Thus on the principle of that it is the interest of the general public, which is third party in such cases, which has to be protected in case of delay of laches, as distinct from the case of acquiescence, the main prejudice may be caused to the defendant is that by reasons of the plaintiffs inaction, by not taking step at an earlier point of time, the defendant has been able to establish his business by using the infringed mark, Thus the delay or laches may in a given case disentitle the plaintiff to the relief of damages or rendition of accounts but as far as the relief of injunction is concerned the same, despite the delay or laches could be granted to the plaitiff if other requirements in this regard are satisfied. I am of the view that the relief of interim injunction, in this application cannot be refused solely on the ground of delay or laches even assuming that be so.
(8) It has been contended on behalf of the defendant that the suit of the plaintiff is liable to be stayed under Section 111 of the Trade and Merchandise Marks Act. Section 111 of the Trade and Merchandise Marks Act deals with the stay of proceedings where the validity of registration of the trade mark is questioned. Sub-section (5) thereof provides that the stay of the suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing accounts to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit. On behalf of the plaintiff reliance has been placed in the decision in the case of Metropol India (P) Ltd. Vs. Praveen Industries India Ptc 1996 (16) 77 wherein it is held that "the suit for the infringement of the trade mark would be liable to be stayed on account of the pendency of the proceedings for rectification of the trade marks. The stay of the suit, however, does not preclude the Court from granting interim relief in the suit". In the instant case accepting the assertion of the defendant that the proceedings for the cancellation of the plaintiff trade marks are pending, under Section 111 of the Trade & Merchandise Marks Act would not preclude this Court from granting interim relief in the suit for infringement of the trade mark Suffice it to say that sub-section 5 of Section 111 of the Trade & Merchandise Marks Act enables the Court to grant interim relief in the suit for infringement of trade mark even when the plaintiffs mark is sought to be cancelled by the defendant.
(9) The plaintiff has placed reliance on the decision in the case of Vijay Foam & Co. Vs. V.K. Bajaj & Co. 1994-PTC-19 by this Court wherein the learned Single Judge after considering the judgments for and against grant of injunction in the case of infringement of registered trade mark, wherein the points argued by the learned counsel for the plaintiff and the defendant in. this case are also covcred,and held that the registered proprietor of the trade mark is entitled to the relief of interim injunction taking into consideration sub-section (5) of Section 111 of the Trade & Merchandise Marks Act and the contentions with regard to the delay and laches in filing the suit by the plaintiff.
(10) TH.C above discussion would reveal that the plaintiff has been able to show prima facie that he is proprietor of the registered trade mark Mahavir under the Trade & Merchandise Marks Act and the also the registration of the label under the Copyright Act and the adoption of the mark with the impugned label and the mark of the defendant prima facie appears to be the colourable imitation and it is deceptively similar in all material particulars and the colour scheme is also so similar as to cause confusion in the minds of the purchasers since the purchasers would be ladies which may also include illiterate laides in urban as well as rural areas and also the domestic servants which would constitute special class of customers in relation to Dhoopbatti and Agarbatti and having regard to the colour combination, get up, and the words/writing on the cartons, label used by the defendant prima facie appears to be distinctly similar to that of the plaintiffs mark and label and likely to cause confusion in the course of trade particularly with regard to the class of purchasers as aforestated. It need hardly be said that besides protecting the proprietor of the registered trade mark and the registered owners of the Copyright, third party purchasers also need to be protected whose interest should be of permanent consideration when the goods of the registered proprietor of the trade mark are sought to be pass off by the person dealing in the same or allied products.
(11) The irreparable injury would be caused to plaintiff if injunction is refused whereas no injury would be caused to the defendant since the plaintiff is the proprietor of the registered trade mark and the sufferer would be the third party/purchasers also. The balance of connivance also requires that the defendant be restrained by a suitable injunction since the refusal to grant injunction would render the suit infructous even when the plaintiff is registered proprietor of the mark and the defendant prima facie appears to have been passing off his goods as that of the plaintiff by infringing the trade mark of the plaintiff and copying the mark and the label as aforestated.
(12) In the above prima facie view of the matter the defendant is restrained in terms of Para-23 of these applications pending hearing and disposal of the suit. In the result both the applications are disposed of accordingly.
(13) The above observations shall not be construed to mean expression of opinion on the contentions in the suit. .1st