Delhi High Court
Hyundai Corporation vs Rajmal Ganna on 14 September, 2007
Equivalent citations: 2007(35)PTC652(DEL)
Author: Gita Mittal
Bench: Gita Mittal
JUDGMENT Gita Mittal, J.
1. By this order I propose to dispose of IA No. 7907/2005 filed by the plaintiff under the provisions of Order 39 Rule 1 and 2 of the Code of Civil Procedure, 1908 seeking an injunction against the defendant prohibiting it from using the trade mark Hyundai in respect of which the plaintiff has asserted exclusive propriety rights.
2. M/s Hyundai Corporation is stated to be a corporation which is incorporated under the laws of Korea having its head office at Korea with liaison offices in various countries including India. The Hyundai Corporation, plaintiff herein claims to belong to the internationally famous Hyundai group of companies. Some of the other group companies include the Hyundai Heavy Industries Limited, Hyundai Motor Company, Hyundai Engineering and Construction Company Limited. It is contended that several of the Hyundai group companies are actively working in the Indian market and are engaged in the sale of various consumer products falling under various classes under the established trademark Hyundai. Apart from its manufacturing activities, it is contended that the Hyundai Group of companies is also engaged in the marketing of various goods including plant and machinery, steel, Chemicals, electrical and electronic product, ship, resource development information and tele communications etc by the trademark and name of Hyundai since 1976-77.
3. Apart from the above goods and products, the plaintiff and its associate group companies in India are stated to be carrying on its business with the trade name/trademark Hyundai in respect of motor vehicles, semi conductors, electronics and home appliances and various other goods in classes 7, 9, 11 and 12 besides other items and sectors. On account of the effort, networking promotional work, technical expertise and quality of goods, the plaintiffs have asserted long and continuous use of the trade mark and claimed that the same have acquired a trans border reputation. Hyundai as associated with the products of the plaintiff has acquired distinctiveness. Based on the plaintiffs sales-turnover in billions of rupees and expenditure of huge amounts on publicity and advertisement of its trade mark Hyundai, the plaintiffs claim tremendous reputation and goodwill attached with its products under this trademark in India as well as in other parts of the world.
4. So far as the word Hyundai is concerned, the plaintiff has contended that the same is a transliteration of a Chinese and Henkul word which in these languages means the 'present generation'. The plaintiff corporation and its associate group companies are allegedly using the trademark Hyundai since 1976. The plaintiff has pointed out that the word Hyundai has no obvious meaning and cannot be identically copied. This word being an invented word and on account of its association with the quality products of the plaintiff, is entitled to the highest degree of protection. This mark was registered as a trademark in the name of a Hyundai group of company in the republic of Korea in the year 1977. The trade mark HYUNDAI has also been registered in large number of countries across the world.
5. So far as its Indian registration is concerned, the plaintiff has claimed registration of the trademark Hyundai in international classes 7, 9, 11 and 12 in favor of the companies which form part of the Hyundai group of companies. These registrations are stated to be valid and subsisting even on date. Particulars of the status of registration in several countries all over the world has been placed before the court.
6. The suit has been necessitated as according to the plaintiff, it received information in the month of March-April, 2005 about the defendant's illegal trade activities of sale of such goods including televisions, antennas etc which are included in classes 9 and 11 and are the same as that of the plaintiff using the trademark 'Hyundai'. The plaintiff submits that as per its information, the same were being sold at various places through various channels in different parts of India in a clandestine manner. The defendant is alleged to have dishonestly and with malafide intention adopted not only an identical trade mark Hyundai for its products but is also stated to have adopted the boxes, pouches, cartons of Hyundai for its goods which include televisions, cables, audio, video, cable TVs, calculators, machines, stabilizers, installation of lighting, heating, cooking, refrigeration, ventilation etc. which are the goods covered in class 9 and 11 of the Trademark Act, 1999. The plaintiff has alleged infringement of its registered trade mark Hyundai and its copyright in the artistic work in the pouches, tins, boxes, cartons contending that the defendant was fully aware about the goodwill and reputation of the products and of the registered mark of the plaintiff. The submission is that the actions of the defendant are malafide and fraudulent with a view to create deception and confusion in the public at large; to trade upon the goodwill and trans border reputation of the plaintiff and to pass off bad quality goods as that of the quality products of the plaintiff to the unwary class of purchasers. The acts of the defendants were further revealed when a publication of the mark of the defendant was effected in the trademark journal and a search report of the trademark registry was conducted by the plaintiff. In these circumstances, the plaintiff has sought a decree for a perpetual injunction restraining infringement of the registered trademark Hyundai and for passing off its goods by the defendants as those of the plaintiff. A further order for rendition of accounts as to ascertain the profits earned by the defendant by use of the trade mark Hyundai has been sought and an order for delivery of all infringing goods bearing the trade mark Hyundai which have been manufactured by the defendant including advertising and publicity.
7. Along with the suit, the plaintiff has filed the present application under Order 39 Rule 1 and 2 of the Code of Civil Procedure, 1908 praying for an interim injunction from manufacturing, selling, offering for sale, advertising directly and indirectly dealing in goods bearing the trade mark "HYUNDAI" as and/or any other trade mark, as may be identical with and/or deceptively and confusingly similar to plaintiff's registered and well known trade mark "HYUNDAI" so as to pass off or enable others to pass off the defendant goods/product and/or business and/or service as and for the goods/products/business and service of the plaintiff and/or some way connected with the plaintiff. The plaintiff has also prayed for an order for recovery/withdrawal of the infringing goods from any third party/parties to whom the defendant or any of them have/has passed for commercial purpose.
8. This application has been vehemently opposed on behalf of the defendant who has contended that so far as the registered trademark which has been detailed in the plaint is concerned, they are not in favor of the plaintiff corporation and that the plaint fails to disclose any legal relationship between the plaintiff and the companies in whose favor the trademarks have been granted. It is further submitted that the registration of the trademark is in respect of goods which are not being manufactured by the defendant.
9. Mr. H.S. Phoolka learned senior counsel for the defendant submits that the defendant is using the trademark Hyundai since 1999 and that advertisement in the trademark journal in respect of its application for registration of the trademark Hyundai was published as back as on 1st December, 2005. The defendant has further asserted prior use of the trademark Hyundai over the specific goods which are being manufactured by it and on this basis, it is contended that the plaintiff cannot injunct the defendant from using the trademark in respect of the goods which are being manufactured by the defendants on grounds of being a prior user.
10. In support of these submissions, learned senior counsel has placed reliance on the judicial pronouncements reported at entitled Haryana Milk Food Limited v. Chambal Dairy Products; 2002 (25) PTC 438(Del) Caterpillar Inc v. Mehtab Ahmed and Ors.; Vishnu Das Trading as Vishnu Das Kishan Das v. Vazir Sultan Tobacco Co. Limited; 2003 (26) PTC 1 Honda Motor Co. Ltd. v. Charanjeet Singh and Ors.; 1962 (2) SCR 211 London Rubber Co. Ltd. v. Durex Products; 1988 PTC (18) 759 Relaxo Rubber Ltd. and Anr. v. Aman Cable Industries and Anr. And 133 (2006) DLT 34 Creative Travels Pvt. LTd. v. Creative Tours and Travels Pvt. LTd.; 2006 (32) PTC 275 Asia Pacific Breweries Ltd. v. Superior Industries Limited.; 1998 v. AD (Delhi) 453 Metro Plastic Industries (Regd.) v. Galazi Footwear.
11. The defendant has urged that the registration certificate pertaining to the registrations of the trademark Hyundai which have been placed on record by the plaintiff are in favor of M/s Hyundai Electronics Industries Co. which is the registered owner of the trademark. Several advertisements published in the trademark journal also show applications by this concern alone. The defendant points out that in India, the plaintiff is neither manufacturing nor selling any product under the trademark 'Hyundai'. It also does not own any exclusive propriety rights in respect of the trademark Hyundai. There is no registration of any trademark in the name of any of the companies who have been named in the plaint and consequently the plaintiff has no case for violation and/or infringement of trademark against the defendant. So far as the defendant is concerned, Mr. H.S. Phoolka, learned senior counsel has placed before the court that the defendant made an application on 12th August, 1999 for registration of the trademark Hyundai in respect of goods which fall under class 11. Mr. Phoolka, learned senior Counsel has urged that so far as the registrations are concerned, the plaintiff had no registration of the trademark in its favor prior to the filing of the suit. It is further submitted that the reliance placed on the registration in favor of other companies under the umbrella of the Hyundai group of companies does not create any exclusive propriety right in favor of the plaintiff and consequently the case of the plaintiff so far as infringement of the trademark is concerned, has to fail.
12. So far as the relief based on allegations of dishonest passing off by the defendant is concerned, learned senior Counsel appearing for the defendants has submitted that the same could have been established by positive facts and documents. It is contended that there are neither any pleadings nor have any documents been placed on the record which could support the bald averments of dishonest and deceptive passing off on the part of the defendants of its goods as those of the plaintiff.
13. Mr. H.S. Phoolka, learned senior Counsel for the defendant has objected that as per the plaint, the plaintiff is maintaining only a liaison office in Delhi and consequently the provisions of Section 134 of the Trademark Act, 1957 are neither attracted nor are satisfied. Consequently, this Court does not have the territorial jurisdiction to entertain and adjudicate upon the subject matter of the suit.
14. Detailed submissions have been made on law and fact by both sides and they have carefully read the pleadings as well as drawn my attention to all the documents which are on record. There is no dispute that the trademark in question is identical.
15. So far as the defendant's claim of prior user is concerned, I find that before this Court, the plaintiff has placed an advertisement dated 1st April, 1979 in the trademark journal of an application made by the Hyundai Motor Company. This application was made by this company on the 9th September, 1977 seeking the registration of the trademark on a proposed to use basis in respect of vehicles and apparatus for locomotion included in class 12. Another photocopy of an extract of the trademark journal number 782 dated 1st September, 1982 has been placed before this Court. In this issue of the trademark journal, the application of M/s Hyundai Motor Company dated 9th September, 1977 for use of the Hyundai-Pony trademark in respect of vehicles, apparatus has been advertised. My attention has also been drawn to the extract in the trademark journal No. 982 dated 1st May, 1990 wherein the application of Hyundai Electronics Industries Limited dated 21st June, 1985 for registration of the trademark Hyundai in respect of computer systems, TCBSMD, agitisers, semi- conductor chips and other products in class 9 was advertised.
16. Mr. H.S. Phoolka, learned senior Counsel for the defendant has drawn my attention to several advertisements which appeared to have been issued and circulated by the defendant in newspapers in the Kanadda language in Karnataka. It has been urged that from these advertisements which date back to 25th October, 1999, the defendant has adequately established that it is the prior user in respect of the trademark Hyundai in India.
17. On the other hand, Mrs. Pratibha Singh, learned Counsel representing the plaintiff has pointed out that perusal of these advertisements would show that the defendant has advertised televisions, antennas which include receivers and polorama dishes. In an advertisement dated 8th October, 1999, the defendant has stated that it is 'introducing' the Hyundai black and white televisions and had solicited dealership inquiries. All these facts clearly established that the advertisements were published before the defendant had introduced any products or had commenced sales of any products under the trademark Hyundai. Other advertisements dated 10th October, 1999 are also to the same effect.
18. It has also been pointed out that in some of the recent advertisements, the defendants had advertised sale of televisions under the trademarks "Samson", "Sonic" and "Santron". It has been urged that the trademark adopted by the defendant "Samson" is deceptively similar to the renowned trademark 'Samsung'; the trademark 'Sonic' is similar to the internationally well known trademark 'Sony' while 'Santron' is similar to the trademark 'Santro'. According to learned Counsel for the plaintiff, this establishes beyond any doubt the dishonest intention of the defendant to capitalize on internationally renowned trademarks which are enjoying tremendous reputation and are household names in the products which are manufactured and sold under such mark.
19. The plaintiff has disputed receipt of a letter dated 15th February, 2005 which has been placed by the defendant on record. This communication is addressed to Hyundai Electronics India Limited and as per the courier receipt has been sent to Noida. By this letter, it was urged on behalf of the defendant that it had informed the Hyundai Electronics India Limited that it was the authorized trademark owner of the Hyundai brand and that it had been making and selling under such brand name for many years. On the other hand, learned Counsel for the plaintiff has urged that no such letter was received by the plaintiff. It is also urged that from the letter dated 1st September, 2004 addressed by the defendant to the Registrar of Trademarks, the defendant had stated that it required a registration certificate "in order to take legal action against the infringers". According to Mrs. Singh, learned Counsel for the plaintiff, by such communication, the defendant admits the uniqueness and distinctiveness of the trademark Hyundai.
20. From a letter dated 26th September, 2000 which has been placed by the defendant on record and addressed by it to the Deputy Commissioner, of Commercial Taxes, Hubli, the contention of the plaintiff that the defendant was not trading or dealing till recently in these goods is evidenced inasmuch as even in this communication the defendant has requested the Deputy Commissioner to include the items which are "to be dealt by us". The items include purchaser of TV accessories, tubes, TV kits etc. for assembling, manufacturing, resale, dish antenna, cable wires etc. for sale and consumption; computer hardware, accessories computers stationeries, printers, UPS, Stabilizers etc for resale.
21. The advertisement which has appeared in the trademark journal in the issue dated 17th January, 2005 also shows that the application for registration made by the defendant has been made "on a proposed to be used basis". Therefore, the defendant's claim of long prior user is certainly not borne out from its application which was advertised in 2005 or the other documents filed by it.
22. I find from this application that the same is not restricted in terms of geographical boundaries whereas the trademark is proposed to be used in respect of goods sold by the defendant and consequently the defendant has sought registration of the trademark on a proposed national user of the same. The products in respect of which the defendant has stated that it would be using this trademark include "installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating".
23. The plaintiff has also placed before this Court the opposition filed by it with the trademark registry opposing the application for registration of the trademark filed by the defendant. The present plaintiff Hyundai Corporation has filed the opposition dated 21st July, 2005. It has been pointed out that the mark Hyundai consists of a transliteration of Chinese and Henkul characters meaning "present generation". The plaintiff has contended in its opposition that it is using the trademark Hyundai in India since 30th March, 1983 and the application of the Hyundai Corporation bearing No. 1317825 for goods in classes 2, 3, 4, 8, 10, 13, 14, 15, 18, 19, 20, 21, 23, 26, 27, 28, 29, 30-35, 37, 38, 39, 40, 41 and 42 was pending registration.
24. Before this Court, the plaintiff has placed a brochure of its several activities and its involvement in the manufacture, sale and distribution of goods under the trademark and trade name and style ``Hyundai'`. The list of the major products which are manufactured by the plaintiff includes all the products in respect of which the defendant is seeking registration of its trademark.
25. Before this Court, the plaintiff has filed an application being IA 11479/2006 praying for taking three registration certificates in favor of the plaintiff which are dated 1st and 6th December, 2005 on record. The application was filed after service of advance copy on learned Counsel for the defendant as back as on 15th April, 2006.
26. Learned senior ounsel appearing for the defendant has been heard on this application and on the certificates which have been placed along with by the plaintiff before this Court.
27. It appears that during the pendency of the present suit and as pointed out by the defendant, the plaintiff has been granted its applications dated 26th August, 2002 for registration of Hyundai in respect of goods in class 7 by the certificate dated 1st December, 2005 which includes the following:
Washing Machines Dish Washers, Machines for Dispensing and Manufacturing Beverages Machines for Preparing Popcorns, Grinding Machines, Electric Mixing Cum Gridning Machines for Kitchen Use, Food Processors and Hair Dryers, Sewing Machines, Electric Motors, Pumps, Diesel Engines, Incubators, Agricultural Dryers, Drying Machines, Spray Guns for Paints, Electric Generators, Mixers and Juicers and all Being Goods Included in Class 07 This registration is effective with effect from 26th August, 2002.
28. Similarly, the Registrar of Trademark has issued a certificate dated 6th December, 2005 granting registration of the trademark Hyundai to the plaintiff Hyundai Corporation in respect of goods in class 9 which include the following:
Scientific, Nautical, Surveying, Electrical and Electronics Apparatus and Instruments (Including Wireless), Photographic, Cinematographic, Optical, Weighing, Measuirng, Signaling, Checking (Supervision), Life-Saving and Teaching Apparatus and Instruments, Coin or Counter-Freed Apparatus, Talking Machines, Cash Registers, Calculating Machines, Fire-Extinguishing Apparatus, Audio Systems, Tv (Color, Black and White), Vcd, Dvd Players, Dvr, Facsimile M/C, Mobile Phones, (Cdma/Gsm), Telephone Instruments, Computers And Peripherals, Pdp, Camera and Camcorders all Being Goods Included in Class 09.
29. A third certificate dated 1st December, 2005 has been placed on record of registration of the trademark 'Hyundai' in respect of other goods under Class 11. It is noteworthy that the copy of the certificates placed on record by the plaintiff shows that these registrations are effective from 26th August, 2002.
30. Thus, the objection on behalf of the defendant to the effect that the plaintiff is placing reliance on registrations of trademark in the name of other firms requires to be considered from another angle. So far as the suit as laid before the court is concerned, the plaintiff had complained of infringement of the registered trade mark which stood in the name of the group companies. The plaintiff had also sought a relief against the defendant in respect of its complaint of dishoenst passing off by the defendant. In view of the pendency of the suit, certain facts and events have occurred which would have a material bearing on the case. This is the subsequent fact of registration of the trademark indifferent classes in favor of the plaintiff.
31. So far as facts which have occurred subsequent to the filing of this suit are concerned, it has been repeatedly held by the Apex Court that in appropriate cases, the courts must have regard to events as they present themselves at the time when it is hearing the proceedings before it and mould the relief in the light of these events. Ref : Hasmat Rai and Anr. v. Raghunath Prasad; Variety Emporium v. R.M. Mohammed Ibrahim Naina; Gulab Bai v. Nalin Narsi Vohra and Ors.
32. The principles in this behalf have been authoritatively laid down by the Apex Court in Ramesh Kumar v. Kesho Ram wherein the court has held that:
4. The normal rule is that in any litigation the rights and obligations of the parties are adjudicated upon as they obtain at the commencement of the lis. But this is subject to an exception. Wherever subsequent events of fact or law which have a material bearing on the entitlement of the parties to relief or on aspects which bear on the moulding of the relief occur, the court is not precluded from taking a 'cautious cognizance' of the subsequent changes of fact and law to mould the relief.
6. The submissions of learned Counsel are only partly correct. While it is true that a distinction must be made between pleading and proof, the further submissions that these must necessarily be in two successive sequential stages need not always be so and particularly when dealing with pleas of subsequent events in appeals and revisions. If the allegations of facts made in support of such a plea are denied then alone the question of their proof in an appropriate way arises. If those allegations of facts are admitted, there is no need to prove what is admitted or must be deemed to be admitted. There can be admissions by non-traverse. The High Court proceeded to accept the allegations as proved presumably in view of the fact that appellant's learned Counsel did not even appear, let alone challenge the allegations. But there might also be cases in which, having regard to the nature of the circumstances, the Court may insist upon proof independently of such admission by non-travers. When subsequent events are pleaded in the course of an appeal or proceedings of revision, the Court may, having regard to the nature of the allegations of fact on which the plea is based, permit evidence to be adduced by means of affidavits as envisaged in Rule 1 of Order 19, CPC. The Court may also treat any affidavit filed in support of the pleadings itself as one under the said provision and call upon the opposite side to traverse it. The Court, if it finds that having regard to the nature of the allegations, it is necessary to record oral evidence tested by oral cross examination, may have recourse to that procedure. It may record the evidence itself or remit the matter for an enquiry and evidence. All these depend upon the factual and situational differences characterising a particular case and the nature of the plea raised. There can be no hard and fast rule governing the matter. The procedure is not to be burdened with technicalities.
33. Therefore subsequent relevant factos are required to be taken into consideration. These principles have been reiterated in M. Meenakhsi and Ors. v. Metadin Agarwal (Dead) By LRs and Ors.; Pratap Rai Tanwani and Anr. v. Uttam Chand and Anr.
34. In Shipping Corporation of India v. Machado Bros. and Ors., the court held that if by a subsequent event, the original proceeding had become infructuous, ex debito justitiae, it will be the duty of the court to take such action as is necessary in the interest of justice which include disposing of the infructuous litigation. For this purpose it would be open to the parties concerned even to make an application under Section 151 of the Code to Civil Procedure to bring such subsequent facts to the notice of the court.
35. In 2004 (77) DRJ 434 Tee Cee Hosiery Works v. Grover Sons, the defendant had pleaded against grant of an injunction in favor of the plaintiff restraining the defendant/appellant from using the trade mark 'splash'. Pending appeal, the appellant/defendant became owner of the registered trademark 'splash'. In view of the subsequent fact of registration, it was held that the injunction order against the appellant deserve to be set aside.
36. In view of the manner in which the courts have permitted subsequent facts to be placed on record, it would appear that the courts have not strictly and always required such subsequent facts to be based on amendment of pleadings. In the case in hand, the plaintiff had brought the case on a plea of infringement of registered trademark but based on registrations in the names of Group companies. Now, the plaintiff in its own name has acquired proprietory rights by virtue of registration of the trademark in its own name in different classes effective from dates much prior to the filing of the suit.
37. In the reply filed by the defendants to the application for injunction of the plaintiff, it has been admitted that the plaintiff applied for registration of the trademark in respect of its goods on 26th August, 2002 which was published in journal No. 1328 (S-V). It has been submitted that the plaintiff has been issued registration certificate dated 1st December, 2005 in respect of goods in classes 7 and 11 and trademark registration certificate dated 6th December, 2005 for goods in class 9.
38. Mr. Phoolka, learned senior counsel submits that the trademark Hyundai stands registered in India in favor of M/s Hyundai Motor Company which is a member of the group companies of the Hyundai group of companies detailed in the plaint. Hyundai Motor company is mentioned in para 3 of the plaint and the registration of its trade mark where so stated. Hyundai Motor Company has made an application as back as on 9th September, 1977 to the Trademark Registry for registration of the trademark Hyundai in class 12 on a proposed to be used basis. This trademark and the details of the application of M/s Hyundai Motor Company were advertised in the trademark journal as back as on 1st April, 1979.
39. I find that the defendant has made applications to the Intellectual Property Appellate Board for removal of the trademark Hyundai which was registered in the name of the plaintiff by the Registrar of Trademarks which are pending. In this petition, the defendant has admitted that Hyundai is used by the Hyundai Electronics India Limited which is the registered proprietor of the trademark 'Hyundai' in class 9. It is also stated therein that the defendant had seen advertisements of the Hyundai Electronics India Limited stating that they were dealing with TV, cables, audio and video tapes etc. There is also admission of the registration of the trademark Hyundai in the name of the Hyundai Corporation the plaintiff herein. The Rectification Petition filed by the defendant is however dated 3rd May, 2006 long after filing of the present case.
40. By virtue of IA No. 11479/2006, the plaintiff has prayed for considering the registration which is the subsequent facts for the purposes of adjudication on his application under Order 39 Rule 1 and 2 of Code of Civil Procedure. Counsel for the parties have been heard on this aspect of registration. The learned senior counsel for the defendant has opposed the grant of injunction on several pleas of his hearing. In the light of the principles laid down by the Apex Court as noted hereinabove, it is evident that the fact of registration of the trademarks in favor of the plaintiff is admitted. Further inasmuch as counsels for the defendant has been heard on this application there would be no legal impediment even considering the facts stated in the application for the purposes of the present application.
41. Mr. H.S. Phoolka, learned senior Counsel for the defendant has urged that the plaintiff is disentitled to relief on the ground of delay in bringing the suit. He places reliance on 133 (2006) DLT 34 Creative Travels Pvt. Ltd. v. Creative Tours and Travels Pvt. Ltd. In this case, injunction was refused to the plaintiff as it had delayed taking action for restraint against the defendant for a period of 25 years. In these circumstances, the court was of the view that if the plea of the plaintiff is accepted, it would amount to a civil death of the defendant in as much as the defendant has built up a reputation and was doing a huge business of Rs. 100 crores without any objection by the plaintiff.
42. In 2004 (28) PTC 121 (SC) Midas Hygiene Industries Pvt Ltd. and Anr. v. Sudhir Bhatia and Ors., the Apex Court has held that the law on the subject is well settled. In cases of infringement either of trademark or copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases which also becomes necessary, if it prima facie appears that the adoption of the mark itself was dishonest.
43. This Court has occasion to consider such an objection based on delay on the part of the plaintiff which would disentitle it to the grant of relief in favor of the plaintiff. In the pronouncement reported at entitled Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co., it was held that if the defendants act fraudulently with the knowledge that he is violating the plaintiff's rights, then in that case, even if there is an inordinate delay on the part of the plaintiff in taking action against the defendant, the relief of injunction is not denied. It is only an honest and long concurrent use by the defendant and inordinate delay and laches on the part of the plaintiff, which may defeat the claim of damages or rendition of accounts, but the relief of injunction should not be refused. The court emphasised that the interest of the general public, which is the third party in such cases, has to be kept in mind.
44. Mrs. Pratibha Singh, learned Counsel appearing for the plaintiff has pointed out that the defendant had made an application to the Trademark Registry dated 12th August, 1999 for registration of the trademark Hyundai on a "proposed to be used" basis. This application by the defendant was not restricted by any geographical boundaries. The application of the defendant remained pending with the Trademark Registry and was advertised only on 17th January, 2005. The journal was made available to the public only in April, 2005. The plaintiff gained knowledge of the defendant having made such application only on or around the 17th January, 2005. The plaintiff not only filed its opposition to the application made by the defendant but also filed the present suit in September, 2005. It is urged that in these facts, there was possibly no delay inasmuch as the plaintiff had to take steps and conduct a search of the trademark registry and to obtain some information about the activities of the defendant. It is pointed out that from the search report, it was revealed that the defendant's application was advertised in goods in class 9.
45. Thus in the instant case where even according to the defendant, there is no long prior use by the defendant. In this case, as noticed above, it is well settled that delay would not defeat an action for infringement of trademark.
46. In the facts noticed hereinabove, it certainly cannot be held that there is delay in bringing the suit. The defendants application was advertised shortly before the suit based on a claim in respect of dishonest passing off and infringement of trademarks by the defendant. The registration of the trademark during the pendency of the suit based on applications pending at the time of its filing give further cause to the plaintiff. The principles laid down in the binding precedents noticed above certainly leave no option but to reject this objection of the defendant.
47. Courts have held that "the fundamental principles, which govern the law relating to infringement are the same as those govern the law of passing off". Action for passing off is brought by a user of the trademark when the trademark is not registered. The fact remains that the plaintiff alleged that it had suffered on account of similar goods being passed off by the defendants deceptively as that of the plaintiff. Action for infringement on the same principle lies if the trademark is registered. That being so, then to say cause of action to maintain a suit for infringement when suit for passing off is still pending is different, is not correct. Even if an amendment application was brought, the courts have held that the same would require to be favorably considered, as separate suits would lead to a multiplicity of proceedings between the parties, which should be avoided. In this behalf, the court placed reliance on the principles laid down in A Abdul Karim Sahib v. A Shanmugha Mugaliar and 1984 PTC 54 Anglo Dutch Colour and Varnishing Works Limited v. Indian Trading House.
48. Mr. H.S. Phoolka, learned senior Counsel appearing for the defendant has urged at great length that the defendant is not trading or manufacturing in goods which have any similarity with the goods of the plaintiff. I have noticed hereinabove the amended provision of Section 29 of the Trademark Act. Statutory recognition has been given to similarity or identity of the trademark irrespective of the field or the product in which the plaintiff and the defendant may be trading.
49. This Court's attention has been drawn also to the amendment which has been effected in the Trademark Act. It is pointed out that Section 29 of the Trademark Act was substantially amended and the amended provisions took effect and were notified in September, 2003. It would be useful to consider the relevant extract of Section 29 of the statute. It reads thus:
29. Infringement of registered trademarks:
xxxx xxxx xxxx (2) A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under Clause (c) of Sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.? Therefore, in view of the amended provisions of the statute upon the existence of the similarity of goods and similarity of trademark, there is a statutory presumption of deception under Section 29(3).
50. In the instant case, there is no dispute that the trademarks are identical. The plaintiff has prima facie made out the similarity of the goods as well. Consequently, the presumption under Section 29(3) would follow.
51. I find that the plaintiff has claimed that it is working as an umbrella company and several companies have been incorporated who all work as associates and a group of companies under the trademark and trade name Hyundai. The documents in support of this submission including the brochure of the plaintiff have been placed on record.
52. So far as an action of passing of was concerned, in order to decide the question of deceptive similarity of the trademark, the principles were laid down by the Apex Court in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. wherein the issue was a comparison of the marks 'Falicigo' and 'Falcitab' being deceptively similar. The court laid down the principles thus:
42. Broadly stated in an action for passing off on the basis of unregistered trademark generally for deciding the question of deceptive similarity, the following factors to be considered:
(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods, and
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
53. On these principles it is now necessary to deal with the principal objection on behalf of the defendant that the plaint is hopelessly deficient so far as making out a case for either infringement of trademark or action against the defendant for deceptive passing of its goods as those of the plaintiffs. The defendant has pointed out that the plaint gives no figures of the sale or details of any promotional expenditure which it may be incurring. In this behalf reliance is placed by the defendant on pronouncement of this Court reported at 1998 V AD (Delhi) 453 Metro Plastic Industries (Regd.) v. Galaxy Footwear. This case arose under the Designs Act, 1911 and the plaintiff claimed registration of its design. The suit was a composite one and combined the prayer for injunction. A further prayer was contained in respect of passing off by the defendant and rendition of accounts. The defendant had claimed prior published design and the Court had found that in this case, that another concern was using the trademark in respect of which the plaintiff had complained in the plaint. Consequently, it was held that the plaintiff had failed to make out a prima facie case.
54. In the plaint filed, the plaintiff has placed reliance on the registration of Hyundai in the name of the concerns which form the Hyundai Group of Companies. So far as the word Hyundai is concerned, the defendant's claim that the plaintiff cannot claim any exclusive propriety right in this behalf is misplaced.
55. So far as the principles of law are involved, the same have evolved over the years to include reputation which transcends physical boundaries by virtue of the reputation which is carried by the travellers i.e. by word of mouth as well as by advertisements and movement of goods.
56. In this behalf, it would be also useful to refer to another pronouncement on the same issue wherein the court recognized the fact that goodwill in a trademark today is not limited to a particular country as it transcends all physical boundaries and spreads the world over. Before goods are transported from one country to another, the goodwill and reputation of the trademark travels and same acquires an extremely high reputation even before the goods are made available in the other countries. Advertisements in newspapers, periodicals, magazines, the electronic media and even on the internet today have resulted in such spread of goodwill and reputation. This was recongnised in judicial pronouncement rendered in Kelvin Klein Inc. v. International Apparels Syndicate reported in 1996 PTC 16 at page 293.
57. It would be useful also to consider the principles which were laid down by a Division Bench of this Court in AIR 1995 Delhi 300 N.R. Dongre and Ors. v. Whirlpool Corporation and Anr., the court exhaustively considered the principles of trans-border reputation and held thus:
14. The knowledge and awareness of a trademark in respect of the goods of a trader is not necessarily restricted only to the people of the country where such goods are freely available but the knowledge and awareness of the same reaches even the shores of those countries where the goods have not been marketed. When a product is launched and hits the market in one country, the cognizance of the same is also taken by the people in other countries almost at the same time by getting acquainted with it through advertisements in newspapers, magazines, television. video films. cinema etc. even though there may not be availability of the product in those countries because of import restrictions or other factors. In today's world it cannot he said that a product and the trade mark under which it is sold abroad, does not have a reputation or goodwill in countries where it is not available. The knowledge and awareness of it and its critical evaluation and appraisal travels beyond the confines of the geographical area in which it is sold. This has been made possible by development of communication systems which transmit and disseminate the information as soon as it is sent or beamed from one place to another. Satellite Television is a major contributor of the information explosion. Dissemination of knowledge of a trade mark in respect of a product through advertisement in media amounts to use of the trade mark whether or not the advertisement is coupled with the actual existence of the product in the market.
58. This judgment was assailed before the Apex Court which upheld the judgment of the Division Bench in its judgment which has been reported at N.R. Dongre and Ors. v. Whirlpool Corporation and Anr. and it would be topical and instructive also to consider the observations of the Apex Court. The appellant who was the defendant before this Court had opposed the application for injunction of the plaintiff in respect of the trademark 'Whirlpool' in respect of its goods. The respondent had brought a suit alleging global presence, international and national reputation and also registration of this trademark in several countries. The respondent's trademark in India had lapsed on account of failure to get the same renewed at one point of time. The court held that the respondents had established long prior user of the trademark 'Whirlpool', trans-border reputation and goodwill extending to India to the use of that name; prior registration of the name even in India, no reliable evidence of the appellants having marketed their washing machines for any considerable length of time prior to grant of the interlocutory application and irreparable loss and injury to the respondents-plaintiff by the acts of the defendants. It was also held that there was no plausible explanation offered by the appellants for recently adopting the trademark Whirlpool which was supportive of the plea of unfair trading activity in an attempt to obtain economic benefit of the reputation established by the plaintiff-respondents whose name was associated with the trademark Whirlpool. The court also found support for the finding in favor of the respondents on account of its conduct in opposing the appellant's application for registration of the trademark as soon as it was notified and persisting with the same by filing an appeal against the registrar's order and also a petition for cancellation and removal of the trademark registration issued and by filing the suit without delay.
59. Trans-border or the international reputation acquired by a trademark has been held to justify an injunction in this country even though the plaintiff had not entered the Indian market so far.
60. In this behalf, it would be useful to notice the findings of the Apex Court in 2004 (28) PTC 585 (SC) Milment Optho Industries and Ors. v. Allergan Incorporation wherein the court laid down the principles thus:
10. In the present case, the marks are the same, they are in respect of pharmaceutical products. The mere fact that the Respondents have not been using the mark in India would be irrelevant if they were first in the world market. The Division Bench had relied upon material which prima-facie shows that the Respondents product was advertised before the Appellants entered the field. On the basis of that material the Division Bench has concluded that the Respondents were first to adopt the mark. If that be so then no fault can be found with the conclusion drawn by the Division Bench.
The Court held that in the present time, particularly in the field of medicines, the businesses are often of international character and that it was the duty of the court to ensure that public interest is in no way imperiled. It was to be borne in mind that nowadays, goods are widely advertised in newspapers, periodicals, magazines and other media which is available in the country. This results in a product acquiring a world wide reputation. The exception which was however drawn by the court was that such multinational corporations, who have no intention of coming to India or introducing the product in India should not be allowed to throttle an Indian company by not permitting to sell the product in India, if the Indian company has genuinely adopted the mark and developed the product and is first in the market. Thus, it is only an honest prior user which may be excepted to the general rule. It is certainly not so in the instant case wherein the defendant is not the prior user and has certainly attempted to encash on the reputation and goodwill acquired by the plaintiff.
61. It is noteworthy that in Milment Optho Industries(supra), the respondents trademark was not even registered with the Registrar of Trademarks in India.
62. An argument similar to that of the defendants in this case of prior user of the trademark in India by the defendant was rejected by this Court in the judgment reported at 2006 (32) PTC 133 (Del.) Austin Nichols and Co. and Anr. v. Arvind Behl and Anr. The court noticed the defendant's contention that the plaintiff did not have a presence in India prior to the defendant entering the Indian market. In this case, applying the law laid down by the Apex Court in N.R. Dongre and Ors. v. Whirlpool Corporation and Anr., the court held thus:
41. Applying the law laid down by the Supreme Court to the facts of the present case, it must be held that, `Blenders Pride' whisky manufactured by the Plaintiffs had a worldwide reputation, being available for sale in a large number of countries since 1973 onwards. It cannot be said that the product was unknown in India. The predecessor in interest of the Plaintiffs had an intention of directly exploiting the Indian market. In fact, they had applied for permission from the Government of India to manufacture 'Blenders Pride' whisky, which was granted, and they have been manufacturing 'Blenders Pride' whisky in India since 1995. The Plaintiffs are not using their worldwide reputation to throttle an Indian company by not permitting it to sell a particular product in India. The plaintiffs are only trying to defend their worldwide reputation in 'Blenders Pride' whisky.
On the contrary, it appears from the material on record that the Defendants manufactured 'Blenders Pride' whisky for a couple of months in 1993-94 only so as to be the first to enter the Indian market, and thereby gain an advantage over the Plaintiffs, and perhaps prevent them from manufacturing 'Blenders Pride' whisky in India. The admitted position is that after March, 1994, the Defendants did not manufacture 'Blenders Pride' whisky till some time in 2005, that is, for a period of almost eleven years. Without commenting on this conduct of the Defendants, I have no doubt that the conduct of the Plaintiffs has been completely bona fide and that their actions are only intended to protect and prevent damage to their reputation. The plaintiffs were the first in the world market with 'Blenders Pride' whisky and as held by the Supreme Court, even if they were not manufacturing 'Blenders Pride' whisky in India, it would be irrelevant, although such a situation has not arisen in the present case because the Plaintiffs are in fact manufacturing 'Blenders Pride' whisky in India.
47. In view of the above decisions and because of the huge advances made in information and communication technology over the years, I think it is too late for the Defendants to seriously urge that the regular sale of a product in one or more foreign countries would be unknown to persons living in India. I would, therefore, hold that the Plaintiffs having come out with 'Blenders Pride' whisky first in the international market were first past the post; even though the Defendants were the first do so in India. The fact that the product of the Plaintiffs was not manufactured or sold in India from 1973 (when it first entered the market) till 1995 when it became freely available in India, is of no consequence.
63. It has been strongly urged on behalf of the defendants, that the plaintiff has not placed any material on record either to show worldwide registrations of the plaintiff in different countries or their voluminous sales in or outside India or extensive advertisements in Indian or foreign magazines and that no case for grant of injunction on the basis of trans-border reputation was made out. In this behalf reliance was placed on the pronouncement of the Apex Court in 2006 (32) PTC 275 Asia Pacific Breweries Ltd. v. Superior Industries Ltd. I find that this judgment was rendered on the facts of this particular case.
64. It is today well settled that international and world wide reputation are indicators of the goodwill attached to a trademark. Courts have repeatedly accepted promotional activity in India as one of the factors which evidences the reputation of the plaintiffs products being sold under such trademark.
65. In the instant case the plaintiff has not only placed reliance on its international reputation but also on the fact that its trademarks are registered in India. The plaintiff has placed the particulars and advertisements of the companies which form part of the group for registration of trademark since 1979. It is an established business practice that companies and corporations work as a conglomoration of smaller group companies which are called sister concerns. The plaintiff has pointed out the various companies who are functioning under its umbrella who are legitimately permitted and are using the trademark and trade name Hyundai as part of their business. The defendants have vehemently disputed the factum of the presence of the plaintiff in India but does not dispute the global presence and reputation of these companies. Several registrations of the trademark Hyundai in the names of the various constituents of the Hyundai Group companies all over the world have been detailed in the plaint and in the application. These registrations pertain to periods which are several decades prior to that claimed by the defendant. There is no dispute to the global presence of the plaintiff in diverse products and that the trademark Hyundai is globally recognized as being associated with the plaintiff. In the light of the principles laid down in Milment Optho Industries (supra), it is the world wide priority which would be relevant. The plaintiff has prima facie established that the group is manufacturing and trading under the trademark in question much prior to the defendant. Therefore, in the light of the principles laid down by the Supreme Court in the binding judicial pronouncements noticed hereinabove, the very global presence and global reputation of the plaintiff and the goodwill which is associated with its trademark Hyundai would itself justify a prohibitory order against the defendants subject to certain other conditions noticed herein being satisfied.
66. Mrs. Pratibha Singh, learned Counsel for the plaintiff, has placed reliance on 2003 (26) PTC 208 (Bom) 1 Pizza Hut International LLC etc. v. Pizza Hut India Limited also in support of her contention that Hyundai is a well known mark and is entitled to protection. 67. Reliance has been placed on 2002 (25) PTC 438 entitled Caterpillar Inc. v. Mehtab Ahmed and Ors. (para 13). In this case the comparison was between the trademarks "Caterpillar" and "Cat". The Court noticed the different words which are used as trademark and categorized them in respect of which the proprietary rights could be claimed. The principles laid down by the Court were both topical and instructive and read thus:
9. There are two propositions that crop up for determination. Firstly whether the trade marks CAT and Caterpillar which are the names of the animals can be monopolized by any person and secondly whether the plaintiff is required to proved and show the user of the mark by way of sale of its goods in the country where it seeks action for passing off.
10. The words or marks can broadly be divided into six categories. The first category of words is "generic". These words have dictionary meaning and are neither specific nor special. These words belong to genus. Generic name is name of genus which names the species. Such words are neither brand names nor have any protection by a registered trade mark. The words which are directly descriptive or quality of goods belong to second category. Such words are adjective expressing quality or attribute of an article or goods. These are neither patented nor proprietary names. These words are in common parlance known as laudatory epithets.
11. Third category is that of directly descriptive words. These words describe the character or the quality or attribute of the goods or articles but without an element of laudation. The words of second and third category if used as a mark acquire secondly meaning on account of constant and long user. Fourth category is of 'indirectly descriptive words'. These words are those which have indirect or remote reference to the nature or quality of goods. The element of directness is wanting in these words. Such words can be used as a mark or trademark irrespective of the fact whether they acquire secondary meaning or not.
12. Words which are fanciful or arbitrarily applied to goods and do not have either direct or remote reference to the nature or quality of goods fall within fifth category. The words belonging to categories two, three and five if used in relation to a particular goods can be protected if attempt is made to pass them off by way of deceptive similarity either in look or sound.
13. The last category is of "invented words". No meaning is attached to these words. These are composed by imagination and are designed for the first time. These words demonstrate or display effort or skill of imagination, faculty or power of inventing. These words are invented in relation to a particular good. Such words are inherently distinctive and therefore have to be protected in any case. These words are designed or contrived through imagination for the first time wherein ability as well as flight or effort of imagination is displayed.
14. As regards marks or trademarks falling within categories 2 to 5 namely 'directly descriptive words having laudatory epithets, 'directly descriptive words without laudatory epithets, indirectly descriptive words and words not being descriptive have also to be protected as some of them over a period acquire secondary meaning while others due to prior and consistent use denote source and origin and if any attempt is made to either mutilate them or simulate them such an attempt amounts to passing off as it demonstrates element of malafidenss for cashing upon the reputation and goodwill of such marks. Likelihood of confusion as to source or origin of a particular good sold under a particular trade mark broadly amounts to an act of passing off.
68. In this case, the court held that the mark of the plaintiff was synonymous with quality of high degree and adoption of its name Along with distinctive and unique characteristics of style by the defendant's projects, propensity to trade or cash upon goodwill and reputation of the plaintiff's trade mark, which was nothing but piracy of the trade name against which the plaintiff was entitled to protection. The Court further considered the objection raised as to requirement of a plaintiff to prove and show the user of the mark by way of sale of its goods in the country where it seeks action for passing off. Placing reliance on an earlier pronouncement rendered in 2002 (25) PTC 29, Solian Ink v. Doctor and Co., the Court held that mere advertisement in the other country i.e. the country where injunction is sought, is sufficient if the trademark has established its reputation and goodwill in the country of its origin and the countries where it is registered. It is not necessary that the association of the plaintiff's mark with its goods should be known in the country other than its origin or to every person in the area where it is known at best. In this behalf, it was again observed that in the modern world, advertisements in the newspapers travelled beyond the country where the party is engaged in business through overseas editions or otherwise. Mobility has rendered international awareness of the commodities and reputation travels faster than man. The same principle was laid down by the Apex Court in N.R. Dongre v. Whirlpool (supra.).
69. So far as the pronouncement of the Apex Court in Vishnu Das Trading as Vishnudas Kishandas v. Vazir Sultan Tobacco Co. Ltd. is concerned, this case relates to an issue of rectification and does not raise any issue of infringement of trademark or passing off. In Tube Investments of India Ltd. v. Trade Industries, Rajasthan, the Apex Court held that decision rendered in Vishnu Dass Trading (supra) dealt with rectification of registration of a trademark and had no bearing to the case in hand, which related to infringment of trademark. On the same principle, the pronouncement in the Vishnu Dass Trading (supra) would have no application to the instant case.
70. Mr. Phoolka, learned Senior Counsel for the defendant has also placed reliance on the pronouncement in 1998 (18) PTC 759 entitled Relaxo Rubber Ltd. and Anr. v. Aman Cable Industries and Anr. In this case, the Court had been of the view that the trademark Relaxo was used by the plaintiff with regard to shoes while the defendant was using the same for manufacture of tubes and pipes. The Court also held that the two companies were engaged in different fields and the goods are not sold from the same counter or in the same shape and that there was generally no likelihood of causing deception or confusion or mistake in the minds of customers. Furthermore the word 'Relaxo' have been derived from the word `Relax' and was not an invented word. For all these reasons the injunction was denied to the plaintiff. This case is materially distinguishable on facts from the instant case.
71. From a consideration of the record and the submissions before this Court, I find that there is no dispute that the word Hyundai is not a word of common use and that the same consists of a transliteration of Chinese and Henkul characters meaning "present generation", use whereof was commenced by the Hyundai group in the year 1976 in Korea. Hyundai is admittedly neither generic nor descriptive. It is not to be found in common use in India that the plaintiff is associated with the same and has been using the same as its trademark for a considerable period.
72. The defendant has not even attempted to give an explanation as to how it came to conceptualise or use the word Hyundai in either its pleading or the reply to the application. There is nothing to show that the defendant has any connection with Korea. On the other hand the plaintiff has placed material before this Court which prima facie shows extensive world wide registrations of the trademark in the name of the plaintiff and its group concerns. The Courts have increasingly relied upon the reputation which is acquired by a trademark and a trade name and have also taken notice of the fact that more and more business houses are working as corporations having a umbrella corporation under which smaller companies are incorporated so as to deal with specific projects and goods in diverse areas of manufacture and service. The purpose is to maximize profit and also for reasons of fiscal policies and savings. The same also enables the Corporations to effectively and efficiently develop its activities.
73. In view of provisions of Section 29, noticed above and the binding principles laid down in judicial precedents, it is not necessary for the products of the parties to be similar.
74. Any discussion on the issue raised in the present would be incomplete without noticing the specific principles laid down by the Apex Court with regard to the considerations which have to be weighed by the Court in adjudicating an application for injunction. The court is also required to weigh the facts in the balance of comparative hardship to the parties. In entitled Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., the Court was concerned with a prayer for injunction on account of the use of word 'Siffy' by the respondent. It was contended by the appellant that the same was similar to 'Sify' which was a coined word which form part of the domain name of the appellant. The plaintiff had claimed intellectual property rights in the domain name in this case. In this case, the Court noticed that there was clearly an overlap of identical or similar services of the two parties. Furthermore the case was not of a bonafide current use by the respondent where the right to use the word was co-equal. The explanation given by the respondent for the choice of the word 'Siffy' was doubtful. This coupled with the reputation of the appellant persuaded the court to reach the rational conclusion that the respondent was seeking to cash in on the appellant's reputation as a provider of service on the internet. On these observations, it was held that the appellant was entitled to ad-interim injunction. In the light of the foregoing discussion, I am not prepared to deny the ad-interim relief sought by the plaintiff on the ground and objections which have been urged by the defendant.
75. Before this Court, from the material which has been placed by the parties on record, I prima facie find that both parties are dealing with similar goods, which include TVs, dish antenna, cables etc. The plaintiff has, after the filing of the suit, also been granted the registration of the trademark 'Hyundai' in the same class and for the same goods as are being traded by the defendant under the trademark 'Hyundai'. In my view, therefore, the objection urged on behalf of the defendant at the distinction sought to be drawn and the opposition to the application of the plaintiff on the ground that the defendant is manufacturing and trading in goods other than goods manufactured by the plaintiff is of no consequence.
76. So far as passing off action is concerned, it is well settled that it is not material as to whether the plaintiff and the defendant are trading in the same field or trading in different products. In 2003 (26) PTC 1 entitled Honda Motors Co. Ltd. v. Charanjit Singh and Ors., the plaintiff had brought, the action for infringement of trademark as well as of passing off. The defendant urged that it was engaged in the manufacture of cookers and was trading under the trademark HONDA in respect of its goods. It was submitted that therefore the plaintiff which was manufacturing motor vehicles was not prejudiced. However, the Court held that thus:
42. In the present case the plaintiff's mark HONDA has acquired a global goodwill and reputation. Its reputation is for quality products. The name of HONDA is associated with the plaintiff's especially in the field of automobiles and power equipments on account of their superior quality and high standard. The plaintiffs business or products under the trade mark HONDA has acquired such goodwill and reputation that it has become distinctive of its products and the defendants user this mark for their product "Pressure Cooker" tends to mislead the public to believe that the defendants business an goods are that of the plaintiffs. Such user by the defendants has also diluted and debased the goodwill and reputation of the plaintiff.
77. Interestingly, the defendant in this case had also given an explanation as to why it adopted the name HONDA. The same was considered thus in this judgment:
45. Further contention of the defendants is that the trade mark HONDA is common to trade and common surname. The defendant has filed an affidavit to the effect that the name of his uncle is S. Honda Singh. However, no documentary evidence produced by the defendants in this respect to show that the alleged S. Honda Singh ws the uncle of defendant No. 1. The affidavit of defendant No. 1 in this respect nothing but a self-serving document. Such an affidavit cannot take place of cogent documentary evidence. Two persons with the surname have been shown as members of APAA. It does not establish that the mark HONDA has become a commonsurname. The defendants have also placed on record a few pages of the telephone directory of the year 1999 published by MTNL, Delhi, which gives some names with HONDA surname but in the given facts and circumstances of this case no weightage can be given to the same. From the entire record the trade mark HONDA does not appear to be a common name in India as submitted by learned Counsel for the plaintiff. It is possible that since the plaintiff's trade mark is in existence for the last more than years in more than 140 countries of the world there is a possibility that few persons have adopted and used the name HONDA in temptation. Even the said fact does give any legal right to use the same in relation to merchandise goods. As a matter of fact, it is borne out from the record that HONDA is not a dictionary word. It is pertinent to note that it is not only the trade mark of the plaintiff but it is also, part of corporate name. The word 'HONDA' in fact appears to be in invented word unusual and having no meaning.
To the same effect are the principles laid down in 1998 (18) PTC 47 Aktiebolaget Volvo v. Volvo Steels Limited and 2002 (24) PTC 121 (SC) Mahendra and Mahendra v. Mahindra and Mahindra.
78. So far as the objection of the defendant on the ground that the present suit is delayed is concerned, the same submission has fallen for consideration before the Apex Court. It would useful to refer to some of the decided cases on this issue.
79. It now becomes necessary to deal with the objections taken by the defendant on the grounds of this Court not having the territorial jurisdiction, to entertain and adjudicate upon the subject matter of the present suit. It has been contended that the defendant is neither personally working for gain nor carrying on business within the jurisdiction of this Court. It is further submitted that the activities complained of by the plaintiff allegedly had occurred outside the territorial boundaries of Delhi. Mr. H.S. Phoolka, learned Senior Counsel appearing for the defendants has strongly urged that the plaintiff has made a submission that it is maintaining a liaison office at Delhi and has got the suit in Delhi on this sole ground. Placing reliance on the pronouncement of this Court in Haryana Milk Food Ltd. v. Chambel Dairy Products, it is urged that from the perusal of the plaint itself, it is apparent that no part of the cause of action has arisen at Delhi and consequently, the plaint deserves to be rejected. Learned senior Counsel has urged that the maintenance of a liaison office at Delhi would not entitled the plaintiff to maintain the suit in as much as the liaison office does not amount the plaintiff to carrying on business at Delhi.
80. In this behalf, learned Counsel for the plaintiff has pointed out that the plaintiff is working internationally and apart from manufacture is dealing in trading. It is further urged that the defendant/plaintiff has not restricted its application for registration of trademark by any physical boundary or territory. There is nothing on the record, either in the pleadings of the defendant or in the documents filed by it to show that it was restricting its operation in any manner to outside Delhi. Consequently, the plaintiff has reasonable and strong apprehension that the defendant would sell its products even at Delhi. It has been urged that the courts have repeatedly held that in a trademark infringement and passing off action, the plaintiff is entitled to bring his suit for injunction upon apprehension of and reasonable expectation of such a breach and deception on the part of the defendant. The plaintiff is not required to wait for the threat to be completed or implemented.
81. From an examination of the evolution of law and the applicable principles so far as cases relating to infringement of trademark and complaints of deceptive passing off of the products of the defendants as those of the plaintiff or being associated with the plaintiff are concerned, increasingly it has been held that it is the interests of the public at large and the extent of the deception which would result in the minds of public and the confusion which shall ensure in the minds of the consuming public, which merits protection. Injunctions have increasingly been granted for reasons of the difficulty and the problems which would result in case such dishonest, deceiving and malafide activities were not injuncted. It is for this reason that the exceptions to the normal law laying down the parameters and extent of territorial jurisdiction of the court have been statutorily provided in Section 62 of the Copyright Act, 1957 and Section 134 of the Trademark Act, 1999. I am therefore of the view that such apprehension having been expressed by the plaintiff and evidenced by the aforenoticed action of the defendant, there would, prima facie, be no bar with regard to the maintainability of the suit at Delhi.
82. A similar question on jurisdiction arose before the Apex Court in the case of Exphar SA v. Eupharma Laboratories Ltd. 2004 (28) PSTC 251 (SC). The court held that when an objection to jurisdiction is raised by way of a demurrer and not at the trial, the objection must proceed on the basis that the facts are pleaded by the initiator of the impugned proceedings are true. In this case the court was concerned with Section 62(2) of the Copyright Act, 1957. A similar provision was introduced as Section 134(2) in the Trademarks Act, 1999 which would require to be applied on the same basis.
83. Ms. Pratibha Singh, learned Counsel appearing for the plaintiff has placed reliance on the pronouncement of the Apex Court in the case reported in 2006 (32) PTC 1 (SC) entitled Dhodha House and Patel Field Marshal Industries v. S.K Maingi and P.M. Diesel Ltd. In this case, the Court observed that in view of the explanation appended to Section 20 of the Code of Civil Procedure, 1908, a corporation would be deemed to be carrying on business inter alia at a place it has a subordinate office. In the instant case, the plaintiff has stated that it is maintaining an office at Delhi and it is not merely urged that it is only selling goods at Delhi. Noteworthy is the consideration by the Apex Court of the impact of the legislative intent. In this behalf the Court observed thus:
47. A cause of action in a given case both under the 1957 Act as also under the 1958 Act may be overlapping to some extent. The territorial jurisdiction conferred upon the court in terms of the provisions of the Code of Civil Procedure indisputably shall apply to a suit or proceeding under the 1957 Act as also the 1958 Act. Sub-section (2) of Section 62 of the 1957 Act provides for an additional Forum. Such additional Forum was provided so as to enable the author to file a suit who may not otherwise be in a position to file a suit at different places where his copyright was violated. The parliament while enacting the Trade and Merchandise Marks Act in the year 1958 was aware of the provisions of the 1957 Act. It still did not choose to make a similar provision therein. Such an omission may be held to be a conscious action on the part of the Parliament. The intention of the Parliament in not providing for an additional Forum in relation to the violation of the 1958 Act is, therefore, clear and explicit. The Parliament while enacting the Trade Marks Act, 1999 provided for such an additional Forum by enacting Sub-section (2) of Section 134 of the Trade Marks Act. The court shall not, it is well settled, readily presume the existence of jurisdiction of a court which was not conferred by the statute. For the purpose of attracting the jurisdiction of a court in terms of Sub-section (2) of Section 62 of the 1957 Act, the conditions precedent specified therein must be fulfillled, the requisites wherefor are that the plaintiff must actually and voluntarily reside to carry on business or personally work for gain.
84. Furthermore the Division Bench of this Court in its pronouncement in Dhodha House (supra) has held that Section 34 of the Trademarks Act provides an additional forum, over and above the forum, provided by the provisions of Section 20 of the Code of Civil Procedure, 1908. In 2003(26) PTC 239 Lalli Enterprises v. Karamchand and Sons, the Court noticed that an objection to the maintainability of a case on territorial jurisdiction in a given case required evidence to be led.
85. In 1983 PTC 207 Jawahar Engineering Co. v. Jawahar Engineers P. Ltd., a Division Bench of this Court held that a mere application by a defendant to register a trade mark in Delhi would be sufficient to confer jurisdiction upon the court. The court held that "once the plaintiffs have learnt that the defendants have applied for registration of trade mark in Delhi, they can claim an injunction to prevent any sale of the infringing product in Delhi. In this sense, the Court will have jurisdiction whether any sale in Delhi has taken place or not". The court further held that "when an injunction is sought, it is not necessary that the threat should have become a reality before the injunction and it can even be sought for a threat that is still to materialise." This case was cited with approval by another Division Bench of the Delhi High Court in 1998 PTC 260 P.M. Diesels Ltd. v. Patel Field Marshal Industries.
86. It is noteworthy that the P.M. Diesel case was considered and distinguished from the Jawahar Engineering case by the Supreme Court in Dhodha House v. S.K. Maingi and Patel Field Marshal Industries v. P.M. Diesel Ltd.
87. In this behalf it would be used to consider the pronouncement of this Court reported at 127 (2006) DLT 783 Pfizer Products, Inc. v. Rajesh Chopra while considering the decision of the Supreme Court decision in the Dhodha House case observed that "the decision in the Jawahar Engineering (supra) was not disapproved by the Supreme Court." It was held that ratio laid down by the Supreme Court "does not militate against what has been held in Jawahar Engineering (supra)." This Court observed that therefore, the arguments advanced by the learned Counsel for the defendants are not tenable and I find that the decision in the case of Jawahar Engineering (supra) covers the present case which has not been unsettled by the Supreme Court in Dhodha House (supra)?.
88. In Pfizer Products Inc. v. Rajesh Chopra and Ors. (supra) it was observed that 'a threat of selling the offending goods in Delhi would in itself confer jurisdiction in the courts in Delhi to entertain a suit claiming an injunction in respect thereof'. It was also held in para 12 that 'assuming that whatever is stated in the plaint is correct, one would have to also assume that the threat or the intention of the defendants to sell and offer for sale the offending goods in Delhi is also correct. Therefore, if the threat exists then this Court would certainly have jurisdiction to entertain the present suit'.
89. It is therefore trite that while considering whether the jurisdiction lies with a court, the cause of action arising even under the Trade and Merchandise Marks Act is fully governed by the provisions of the Code of Civil Procedure on the basis of which the cause of action, either wholly or in part should arise in the place where the plaintiffs reside or, to entertain a suit the court should have jurisdiction at that place.
90. It is noteworthy that in Tata Oil Mills Co. Ltd. v. Gajra's Monochem Ltd. 1988 (1) Arbitration Law Reporter 1, Justice M.K. Chawla of the Delhi High Court also described Section 62(2) of the Copyright Act, 1957 as an exception to the CPC. The court held that 'it is enough if the plaintiff actually resides or works for gain within the jurisdiction of the court which is approached and it is not necessary for his residence to be a permanent one or his registered office being situated at a different place'.
91. In Nirex Industries P. Ltd. v. Man Chand Footwear Industries 1984 PTC 97, Justice B.N. Kirpal of the Delhi High Court upheld the jurisdiction under Section 62(2) of the Copyright Act, 1957 on the facts that the plaintiff was carrying on business in Delhi. It was also observed that no prove sale of goods, there is no requirement for even producing evidence of such sale. The plaintiff has made a positive assertion that it is maintaining a liaison office at Delhi. The address of the office has been disclosed in the plaint and the suit has been filed by the General Manager of such office of the plaintiff at Delhi. It is well settled that at this stage, such plea of the defendant and objection relating to jurisdiction requires to be tested on demurer. From the assertions in the plaint, it cannot be held that the plaintiff is not maintaining any office and not carrying on its business at Delhi.
92. Before this Court, the plea of the plaintiff that it is maintaining a liaison office at Delhi which is challenged by the defendant. The question of territorial jurisdiction is a mixed question of law and fact. Without anything more and evidence in the matter it cannot be held against the plaintiff that there is no such office. The defendant would have the right to contest the plaintiff's claim in cross examination and to lead evidence in support of such objection. In any case, at this stage such objection has to be decided on demurrer.
93. As noticed above, the application of the defendant for registration of the trademark is not restricted to a particular area. The plaintiff has thus reasonable apprehension and threat of sales in Delhi by the defendant as well. Further, in the light of the foregoing discussion, I, prima facie find that this Court would have the territorial jurisdiction to entertain and adjudicate upon the subject matter of the present case. Needless to say, it would be open to the defendant to press an issue on this objection and lead evidence on the same in the trial of the suit. For all the foregoing reasons, I am of the view that the present application deserves to be granted.
Accordingly, the defendant/its proprietor/partners/servants, agents, stockists, assigns and representatives and all others acting for and on its behalf are restrained from manufacturing, selling, offering for sale, advertising directly and indirectly dealing in goods bearing the trade mark "HYUNDAI" as and/or any other trademark, as may be identical with and/or deceptively and confusingly similar to plaintiff's registered and well known trade mark "HYUNDAI" so as to pass off or enable others to pass off the defendant goods/products/business and service of the plaintiff and/or some way connected with the plaintiff.