Delhi High Court
Virumal Parveen Kumar vs Gokal Chand Hari Chand on 27 August, 2002
Equivalent citations: 2002(25)PTC672(DEL)
JUDGMENT S. Mukerjee, J.
1. This is a suit for perpetual injunction for restraining the use of trade mark "555", passing of and rendition of accounts etc. In brief, the case of the plaintiff is that the plaintiff adopted the trade mark "555" Along with the device of Swan with a distinctive colour combination in 1989 for buttons, safety pins, hooks, eye-lets, fastners etc. On account of continuous and long user the plaintiff has acquired proprietary rights in the above trade mark and the above trade mark is generally associated with name of the plaintiff and is considered as a standard of quality of goods. The plaintiff is stated to have built up a huge reputation and good-will in the market in respect of the above products under the said trade mark. The plaintiff is also stated to be lawful proprietor of the said trade mark under application number, 555498 dated 30th July, 1991 under class 26. The plaintiff is stated to be first adopter, originator, author and owner of the copy rights in the labels used for packaging purposes of the products. The plaintiff is also stated to have large and extensive sale of products under the said trade mark throughout the country and is also stated to be spending substantial amount on the publicity of the trade mark.
2. The plaintiff has filed a statement showing the annual sale of the products.
3. The plaintiff has further stated that he is the lawful proprietor of the trade mark and has got exclusive right to the user thereof. The plaintiff has further stated that it has been taking actions against the infringers of such trade mark. It is also stated that plaintiff filed a suit against M/s. Shruti Fastners Ltd. bearing suit No. 1273/1997. It is further stated that vide an order dated 23rd June, 1997, this Court restrained the defendant in the above said suit from using the trade mark "555" in respect of buttons and safety pins. The said suit is said to have been decreed.
4. The defendants as per the allegation of the plaintiff, were appointed as distributors/dealers of the plaintiff in the year 1991. In the year 1998, the deader-ship/distributorship of the defendant was cancelled/terminated and thereafter the defendant with dishonest intention, allegedly, started selling his goods under a deceptively similar trade mark "Asian 555" with an identical colour combination, |et up and arrangement of the carton. The plaintiff has stated that the purchasers and intending purchasers of the products, are generally the lay public, domestic servants and ladies which is generally a unwary class of purchasers. The confusion and deception in relation to such class of purchaser, is inevitable because of the close and deceptive similarity of the mark adopted by defendant for the purpose of passing of its inferior and substandard goods as the quality goods of the plaintiff. In these circumstances, the present suit came to be filed.
5. Along with the suit, I.A. No. 9348 of 98 under Order 39 Rules 1 & 2, was filed and on 15.9.98, an ex parte ad-interim injunction was granted in favor of the plaintiff. The said application was heard and thereafter vide order dated 10th August, 2000, this Court vacated the stay on the ground of pendency of a suit bearing No. 2098/95 filed by one M/s. Needle Industries against the plaintiff herein and that plaintiff had not disclosed this fact.
6. The present application has been filed in view of certain subsequent developments. It is stated by the plaintiff that in the suit that was filed by M/s. Needle Industries against the present plaintiff, initially this Court had granted ad interim injunction on 29th March, 2000 in favor of M/s. Needle Industries and had restrained the present plaintiff from using trade mark "555". Thereafter, the present plaintiff filed an appeal against the said order. The said appeal came to be registered as FAO (OS) No. 115/2000. In the said appeal, the Division Bench of this Court firstly stayed the impugned order dated 29th March, 2000, and then ultimately the plaintiffs appeal itself has been allowed by holding that in spite of the fact that M/s. Needle Industries were holding registered trade mark "555", but it had no right to restrain the defendant in those proceedings (viz. the present plaintiff), because for the last 40 years M/s. Needle Industries themselves were not using the said trade mark in India, and the said mark was being used by the present plaintiff continuously for a substantially long period. Therefore, the present plaintiff was held to be having a better right than M/s. Needle Industries.
7. In view of above said subsequent developments, the present second application under Order 39 Rules 1 & 2 has been filed thereby seeking injunction against the defendant.
8. I find from the record that on the earlier occasion the ad-interim injunction granted in favor of the plaintiff, had been vacated on the ground that the plaintiff had concealed the fact that a suit had been filed against the plaintiff, by M/s. Needle Industries and therefore the right of the plaintiff itself was under a cloud. However, as on the date of the subsequent injunction application, which is now under consideration in the present order, the plaintiff/applicant has succeeded before the Division Bench in the appeal preferred by the plaintiff/applicant against the stay order obtained by M/s. Needle Industries vis-a-vis the plaintiff, and in fact in a way prima facie proved its right to the trade mark '555'. Such right in fact has been found to be on a better footing in favor of present plaintiff, than the registered owner of the trade mark '555' viz. M/s. Needle Industries.
9. It is not disputed by the defendant that the defendant had been a distributor of the plaintiff, or that the plaintiff has been using the said mark for the last about fifteen years. A comparison of the carton of the plaintiff with that of the defendant, would go to show that prima facie there has been a close resemblance and deceptive similarity between the mark of plaintiff and defendant. In the absence of any plausible explanation on the part of defendant as to why it adopted this mark and in view of the fact that the defendant itself was distributor of plaintiff for over a period of time, this appears nothing but a dishonest adoption of the trade mark "Asian 555" by the said defendant. The reliance placed by learned counsel for the plaintiff on 1985 PTC 155 (para 44) is well placed. It is settled law that the interest of the public at large, have to be protected and that nobody is to be held entitled to sell his goods as that of someone else.
10. The defendant having been a distributor working on behalf of the plaintiff, cannot conceivably have any independent right to use the said mark.
11. Earlier the defendant had made out a defense by relying upon the circumstance of M/s. Needle Industries being the holder of the registered mark "555", but that defense does not survive after the Division Bench judgment in FAO (OS) 155/2000.
12. Moreover in a case of dispute between the parties before this Court where the plaintiff is pressing for an action of passing off, such as in the present case, the fundamental aspect is as to who is the prior user out of the two parties before the Court. Learned counsel for the plaintiff has drawn my attention to the judgment of the learned Single Judge of this Court reported as Coolways India v. Princo Air Conditioning and Refrigeration, 1993 (1) ALR 401 : PTC (Suppl)(1) 470(Del) where Hon'ble D.K. Jain, J. has come to the conclusion that registration of trade mark in the name of a third party, is of no consequence and the dispute between the parties who are before the Court, is to be adjudicated upon the position inter-se themselves. That decision has taken into consideration two other decisions Capital Plastic Industries v. Kapital Plastic Industries, 1989-PTC-98 and Capital Plastic Industries v. Happy Plastic Industries, 1988 PTC 182.
13. I find reliance of the plaintiff on the Division Bench judgment of this Court in Kumar Electric Works v. Anuj Electronics, 1990 PTC 26, and Sharp L.P.G. Pvt. Ltd. v. Seiko Engineers, 1988(1) ALR 72 to be well placed.
14. The defendant has then tried to rest his case on the point that though the appeal has been disposed of in favor of the plaintiff herein, but the suit by M/s. Needle Industries is still there and therefore the second injunction application should not be entertained. In this connection, reference need only be made to 1984 FSR 304 and Bengal Waterproof Ltd. v. Bombay Waterproof Mnfg. Co., 1997 PTC (17) 98, wherein an injunction was granted on the second injunction application.
15. Towards the end of his submissions, the learned counsel for the defendant also contended that defendant's carton is different from the plaintiffs' since defendant is using prefix "Asian" to mark "555" and therefore the mark of defendant is not deceptively similar to that of the plaintiff. The said submission runs in the teeth of the settled position under law, and as held in the catena of cases. The plaintiffs reliance upon K.R. Chinna Krishna Chettiar v. Sri Ambal & Co, and Anr., is well placed.
16. Likewise the reliance by the defendant upon Ved Prakash v. Samir Kumar and Ors., 1994 III AD (Delhi) 1273 : 1994 PTC 284 is mis-conceived. Rather the decision also holds that key factor in the case of trade mark matters, is the user aspect.
17. In the present case while dealing with the plaintiffs appeal against M/s. Needle Industries, the Division Bench has come to a finding that M/s. Needle Industries Limited has never used the trade mark "555" during the last forty years. Atleast for the purpose of prima facie consideration of the matter, at the present stage of second injunction application, that finding regarding M/s. Needle Industries not using the mark "555", is crucial.
18. I find that plaintiff has made out the requirements for grant of ad-interim injunction inasmuch as there is a strong prima facie case in favor of the plaintiff, and also both balance of convenience and irreparable hardship aspect is in favor of the plaintiff and against the defendant.
19. In view of the above, I direct that till the disposal of the present suit, the defendants/respondents, their servants, agents, dealers, representatives and all other persons acting on their behalf, are restrained from manufacturing and/or marketing, or offering for sale or otherwise dealing in buttons and safety pins hooks, eye-lets, fasteners etc. under the Plaintiffs trade mark "555" or any other deceptively similar mark such as the infringing mark "ASIAN 555".
20. The observations made in their order, are limited to only prima facie consideration of the matter for the purposes of the prayer for interim injunction.
21. IA 3873/2002 stands disposed of.