Delhi District Court
M/S Jagan Nath & Sons vs M/S Steel Tools India on 28 May, 2013
1
IN THE COURT OF SHRI MANMOHAN SHARMA
ADDITIONAL DISTRICT JUDGE (CENTRAL) 01
TIS HAZARI COURTS, DELHI.
T.M. No. 68/2011
Unique ID no. 02410C0494022010
M/s Jagan Nath & Sons
....Plaintiff
Versus
M/s Steel Tools India
....Defendant
Application U/O 39 Rule 1 & 2 CPC
O R D E R: This is an application U/o 39 Rule 1 and 2 CPC in the suit for permanent injunction whereby the plaintiff seeks restraining the defendant from infringement of its trade mark, passingoff and infringement of copy right and other reliefs.
2. I have heard the arguments addressed by Ld. Counsel for the parties and perused the written submissions.
3. The ld. Counsel for the plaintiff has submitted the following T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 1 of 22 2 points:
(i). Plaintiff is a registered partnership firm engaged in the business of the manufacture of the carpentry hand tools since 1961.
(ii). It has adopted the trade mark 'Chand No. 1 Sanaur' with device of Star and Half Moon including artistic work in respect of carpentry hand tools since 1986. It is registered vide trade mark No. 615913 in class 8.
(iii). The trade mark including artistic work depicted on the product label of plaintiff in distinctive artistic style and get up is the original artistic work and the plaintiff is its first owner and first publisher. As such, the copyright vests in it.
(iv). The plaintiff is aggrieved that the defendant has adopted a deceptively similar trade mark as 'Chanda No. 1 Sanaur' with device of Star and Half Moon including imitation of artistic work of the plaintiff.
(v). The said adoption on the part of the defendant is visually, phonetically and structurally similar or almost identical to the plaintiff's trade mark which is a dishonest work on the part of T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 2 of 22 3 the defendant. Thus the defendant has taken undue advantage of the plaintiff's trade mark and unjustly enriching itself riding on the goodwill of the plaintiff. In this manner, defendant's goods are being passed off as if they originate from the plaintiff. If allowed to continue, it would cause incalculable harm to the goodwill of the plaintiff.
4. Ld. Counsel for the defendant has opposed the application on the following submissions:
(i). The defendant is the registered proprietor of 'Chanda' and 'Chanda no. 1' with device of Star and Half Moon. The defendant has placed on record documents to show that the trademarks of the defendant are registered trademarks. The trademark Chanda is registered in the name of the defendant vide registered trade mark no. 819853 in class 8. The trade mark Chanda No. 1 with device is registered in the name of the defendant vide no. 1128758 in class 8.
(ii). The design of plaintiff is not unique and novel and such the same is neither capable of registration nor registered. The plaintiff is not the owner of the copy right as claimed. T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 3 of 22 4
(iii). The user of the defendant is since 1972 without any break. In fact, it is the plaintiff who has pirated the trade mark of defendant. To substantiate its claim, the defendant has placed on record invoices of the year 1987 onwards.
(iv). While filing the suit, the plaintiff has suppressed the material facts including the old usage of the trade mark by the defendant.
(v). The notice dated 31.05.2008 issued by the plaintiff was duly replied by the defendant on 23.06.2008.
(vi). The plaintiff being in the same business is very much aware about the existence of the defendant and had filed the suit after a lapse of so many years to pressurize the defendant.
(vii). The Mark 'Chand No.1' is a generic word and the plaintiff cannot claim any exclusive right to use the said trade mark in his favour. The trademark Chand No. 1 is not an invented word. The said word has not even acquired a secondary meaning connecting to the products of the plaintiff.
(viii). The name of the defendant is clearly mentioned on its goods which clearly distinguishes the goods of the plaintiff with T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 4 of 22 5 the defendant.
(ix). The plaintiff has failed to prove that it has established a goodwill with respect to its trade mark in question or the defendant is making misrepresentation and use of the mark by the defendant is likely to cause confusion or deception.
(x). The defendant being a concurrent and honest user of the mark is not liable to be restrained from using the same. The defendant is the bona fide/honest prior user and registered proprietor of the said trademarks.
(xi). Both the trademarks are totally different in visual, structural and phonetic aspects. The font, colourscheme and writing style of both the trademarks and the packaging material/style of the goods/services bearing the said trademarks are also completely different. Moreover, the source of the goods/services of defendant is prominently displayed/mentioned on the packaging of the goods of the defendant bearing the trade mark 'Chanda' or 'Chand No. 1'. As such there is no probability of even a minor confusion or deception among the consumers or the members of the trade regarding the source of T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 5 of 22 6 the goods/services bearing the trade mark Chanda No. 1 of the defendant.
(xii). The goods manufactured/sold by both the plaintiff and defendant are carpentry tools and the such goods are not purchased by the general public but by the carpenters and the persons involved in the business of manufacturing furniture/wooden items and these persons being expert in their trade cannot be misled into purchasing the goods of defendant as or for the goods of the plaintiff. There is no infringement of the artistic work of the plaintiff by the defendant as alleged.
(xiii). The artistic label of the defendant is in different font having different colour scheme, different script style and different features. In the defendant's label there is no use of Urdu language as used by the plaintiff and there is clear depiction of the origin of the defendant on the label.
(xiv) The device of star and half moon is a universal and generic device. The said device is commonly used by the members of the trade, in relation to their goods and with their trademarks/trade name/label. The said device of star and half T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 6 of 22 7 moon is incapable of becoming distinctive qua the goods/services of any trader/trading entity or their trade mark and no one can claim the same to be his own trade mark or otherwise. The above said device is public juris and no trader/trading entity could be allowed to use the same exclusively. In other words, no one can be allowed to clam any proprietary right in the said device of star and half moon or a star or a moon, or to claim the said device to be his/its trademark/trade name/logo/label to the exclusion of all others.
5. In support of their respective arguments, the Ld. Counsel for the parties have relied upon a catena of case law.
6. Plaintiff has cited the case of Century Traders Vs. Roshan Lal Duggar & Company AIR 1978 Delhi 250 {(PTC (Suppl) (1) 720 (Delhi) DB} on the aspect of prior user:
"13. The Supreme Court in Corn Products Refining Co. Vs. Shangrila Food Products Ltd, laid down the rule visavis user of a mark as opposed to registration of mark. It observed that the onus of proving user is on the person who claims it. It did not approve of looking into the register of trade marks where a mark may be entered to be any T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 7 of 22 8 proof of user. To quote from the speech of A.K. Sarkar. J: "Now, of course, the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of marks in the register.
14. Thus, the law is pretty wellsettled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action passing off and the mere presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trade marks. In our opinion, these clear rules of law were not kept in view by the Ld. Single Judge and led him to commit an error."
7. To counter the argument of delay, laches or acquiescence, the plaintiff has placed reliance upon R.N. Bhagat and Ors. Vs. Bhagar Marketing Corp. and Anr., 2007(35) PTC 571 (Guj.) by T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 8 of 22 9 emphasizing that the plea of acquiescence and laches is immaterial when plaintiff prima facie establishes that it was the prior user of the mark and there is no evidence in support of plea of prior use by defendant.
8. The above case law has also been cited by the plaintiff to bring home the point that suit of passing off is maintainable even against the registered trade mark and when the defendant is taking advantage of goodwill and reputation of plaintiff, order granting interim injunction, affirmed.
9. Ld. Counsel for the plaintiff has further cited the law pronounced in Cadbury India Limited & Ors Vs. Neeraj Food Products, 2007 (35) PTC 95 (Del.). It is submitted that it has been held that no explanation for adoption of marks by the defendant; claim of using the mark since 1979 not proved by documentary evidence and similar packaging used for both the marks show likelihood of confusion and thus the plaintiff is entitled to injunction against infringement.
10. Ld. Counsel for the plaintiff cited Alfred Dunhill Ltd. Vs. Kartar Singh Makkar and others, 1999(2) Arb. LR 173 on the T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 9 of 22 10 following pronouncement of law:
"6. It is well settled that an action for passing off is a common law remedy being an action in substance of deceit under the law of tort. In Warnink Vs. Townend & Sons (HULL) Ltd. 1979 AC 731, Lord Diplock identified the following five characteristics which must be represented in order to create a valid cause of action for passing off:
(a) a misrepresentation,
(b) made by a trader in the course of trade,
(c) to prospective customers of his or ultimate customers of goods or services supplied by him.
(d) which is calculated to injure the business or goodwill of another trader (in the sense that there is a reasonably foreseeable consequence) and,
(e) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in quia timet action) will probably do so."
11. To buttress his arguments further, Ld. Counsel for plaintiff cited the case of Cadila Healthcare Ltd. Vs. Cadila Pharmaceuticals Ltd. 2001(1) CTMR 288 as under: "20. Broadly sated in action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 10 of 22 11 following factors to be considered:
(a) the nature of 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."
12. Midas Hygenic Industries Pvt. Ltd. Vs. Sudhir Bhatia and others, 2001(2) CTMR 422 has been relied upon by the plaintiff on the point that in a suit for passing off and violation of copyright in package design, prior user of plaintiff is established; there is no documents by defendant in it support nor, any explanation for T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 11 of 22 12 adopting the impugned trade; hence there is prima facie case to grant adinterim injunction in favour of plaintiff.
13. S.P. Chengalvaraya Naidu (dead) by LRs Vs. Jagannath (dead) by LRs and others, AIR 1994 SC 853 has also been relied upon by the plaintiff to cite that withholding of vital document relevant to litigation is a fraud on Court and that the guilty party is liable to be thrown out at any stage. The facts of the said case were that the litigant had obtained preliminary decree for partition of property without mentioning at trial as to his having executed before filing of suit release deed in respect of property in favour of his employer. Such a decree was held to be vitiated by fraud.
14. To lend credence to his arguments Ld. Counsel for defendant has relied upon the law pronounced in The Procter & Gamble Company Vs. Satish Patel, 1996 PTC (16) as under: "The words SFEGUARD is not claimed to be an invented word. Therefore, it is descriptive. I am prima facie of the view that the plaintiffs have not established that the plaintiffs had any reputation on the basis of which one can say that the word has acquired secondary meaning connecting the product with the plaintiffs.
T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 12 of 22 13 In a passing off action what would tilt the scale is the user of the mark and the get up and the packages used by the parties. In the trade mark world it is not unknown that two parties use the same mark. The statute itself provides for such a situation. In the instant case the defendants have been manufacturing Ayurvedic antiseptic cream and has been selling the product since 1984 and the suit is filed in 1995. For 11 years the plaintiffs have not raised any objection.
The case of the plaintiffs that the defendants are guilty of fabrication of documents cannot be accepted at this stage without there being a trial on the issues. What I wish to say to point out is that the plaintiff simply cannot say for the purpose of interlocutory application that the documents filed by the defendants are fabricated."
15. The defendant has relied upon Skyline Education Institute (I) Private Ltd. Vs. S.L. Vaswani and Anr. 2010 (42) PTC 217 (SC) in which restraint to use name 'Sklyline' as part of respondent's trading name in relation to activities in the field of education and/or as a trademark in relation to any printed mater, literature, syllabus etc. or in any other manner whatsoever was under consideration. It was held that Skyline is a generic work and not a specific work, used by T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 13 of 22 14 thousands of person and institutions as their trade name in India and abroad. The contention that the word was used by appellant to the exclusion of others was not held to be sustainable.
16. Ld. Counsel for defendant also placed reliance upon Star Bazaar Pvt. Ltd. Vs. Trent Ltd & Anr. 2010(43) PTC 154 (Del) (DB) to cite that visàvis the trade mark 'Star Bazar', both the parties were concurrent user of mark. Respondent agreeing to use the words 'A Tata Enterprise' in conjunction with the mark. It was held that whether the defendant was encashing upon the goodwill of the plaintiff is a matter which can be examined only during the trial and thus the order rejecting interim injunction was affirmed.
17. The case of Sunsar Overseas Ltd. Vs. Rameshwar Dass Garg, 2011 (46) PTC 89 (Del.) has been relied upon by the defendant on the aspect that in the said case the trade mark 'Alishan' used since 2004 in respect of processed rice and the plaintiff had spent considerable amounts towards publicity. On the other hand, defendant was the bona fide concurrent user. Plaintiff produced a large number of invoices relating to the period 2006 onwards but no material to substantiate usage of the mark prior to that time. The defendant relied T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 14 of 22 15 upon invoices for the period 2006 onwards. Mark was advertised in specialist publications from November, 2007 onwards. Under these facts the plaintiff's application for temporary injunction was dismissed.
18. To lend credence to his arguments, Ld. Counsel for defendant also relied upon the case titled as Cadbury Schwepps Pvt. Ltd. Vs. Pub Squash Ltd. (1981 RPC 429), wherein it was held that the presence of the defendant's name on its goods was an indication that there was no passing off, even if the trade dress was similar.
19. I have considered the rival submissions and the material on record.
20. While considering an application under Order 39 Rule 1 and 2 CPC the case has to be considered on the parameters of prima facie case; balance of convenience and apprehension of irreparable injury.
21. The plaintiff's trade mark is 'Chand No. 1 Sanaur' with device of Star and Half Moon. It is registered vide trade mark No. 615913 in class 8 in respect of Carpenter Tools and Hand Tools. The date of registration is 19.11.2005 and date of application is 05.01.1994.
22. The defendant's trade mark is1972 with device of Star and Half T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 15 of 22 16 Moon. It is registered vide trade mark No. 1128758 in class 8 in respect of hand tools. The date of registration is 01.12.2005 and the date of application is 26.08.2002. The defendant's another trade mark is word mark 'CHANDA' It is registered vide trade mark No. 819853 in class 8 in respect of hand tools and instruments. The date of registration is 12.09.2006 and the date of application is 18.09.1998.
23. The plaintiff claims the user since 1986 whereas the defendant claims the user since 1972. To establish their user the parties have relied upon various documents primarily the copies of bills. As regards the plaintiff there are copies of bills dated 13/6/86 using the trade mark Chand Sanaur. Bill dated 19/8/86 of plaintiff specifically show the sale under Chand No. 1 Sanaur. Other bill dated 11/5/88 of plaintiff also sails in the same boat. In some of the bills of the plaintiff the trade mark device is also printed. On the part of the defendant also a number of bills have been relied upon. Copy of Office copies of bill dated 7/12/88; 4/4/89; 11/03/89; 9/3/89; 14/7/90; 4/8/90; 21/7/90; 30/01/91; 1/2/91; 5/1/91; 23/6/92 and many bills dated till 11/5/94 are shown to be using CHANDA but the word used there is not CHANDA. It may be 'chala' or 'chaha' or 'chalda' or some other T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 16 of 22 17 word but at least it is not 'chanda'. It is only in respect of bills since 4/6/97 the word 'chanda' is specifically seems to be used. The copies of bills propounded by the defendant are on plain paper whereas on those of plaintiff the name of the plaintiff firm is prominently printed. Therefore the plaintiff has been prima facie able to show the user of his trade mark since 1986 but the defendant is able to show its user only since 1997. It has produced no document to show its user since 1972 as claimed. The earliest document it is able to show pertain to the year 1988. Even the word written there is read as 'Chanda' the defendant's user is shown only since 1988 whereas the plaintiff's user is shown 1986. The defendant has shown no user in respect of the label mark 'CHANDA NO. 1'. Thus on the basis of the material on record prima facie the plaintiff is the prior user i.e. 1986 as per his claim. On the other hand there is a wide gulf between the claimed and actual usage of the defendant.
24. The adage goes that the proof of pudding lies in the eating. Similarly in respect of a trade mark its worth is in its usage and not mere registration.
25. The defendant has offered no plausible explanation to use the T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 17 of 22 18 word 'Sanaur' with its trade mark though its trade marks are registered as label mark 'CHANDA NO. 1' or word mark 'CHANDA' and the word 'sanaur' is conspicuous by absence.
26. It does not lie in the mouth of the defendant to state that the word CHAND NO. 1 is a generic word and not capable of a secondary meaning when the defendant itself is using label mark 'CHANDA NO. 1' or word mark 'CHANDA' and claiming distinctiveness and registration. As the word 'chand' has been used in arbitrary sense and not in terms of its dictionary meaning it is capable of distinguish the goods of the plaintiff. There are many instances in business circles where dictionary words have been used in an arbitrary way as trade mark and have been able to distinguish the goods of the maker and they are permitted as they have no reference to the character or quality of the goods. Such trade marks are 'Apple' in respect of computers; 'Teacher' in respect of whisky; 'Arrow' in respect of shirts etc. to name a few.
27. The defendant has offered no reason of explanation for adoption of marks as propounded by it. It has also not offered any special reason for adopting the design of the carton similar in features, colour T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 18 of 22 19 scheme, hues etc/ as that of the plaintiff. It is not the case of defendant that the plaintiff has copied the pattern of its packaging design.
28. The case of the defendant is that name of the defendant is clearly mentioned on its goods which clearly distinguishes the goods of the plaintiff with the defendant. I have both the packaging. The colour scheme of the plaintiff's packaging is of combination of green and yellow. From the top the green starts yielding place to the yellow. Similar is the colour scheme of the defendant's packaging. Carpenter's blade in similar size and way is shown on both the packaging. The place of writing various descriptions like the manufacturer's name or the guarantee etc. are also similar in manner and placed similarly.
29. In a catena of case law it has been held that side by side comparison is not to be resorted to as it does not conform to the 'reality test'. An ordinary prudent consumer cannot have and is not expected to have a photogenic memory. Only the broad features of packaging and the trade mark get registered in the memory of a consumer and therefore these only are relevant.
30. It is the settled law that two marks cannot be distinguished by a T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 19 of 22 20 side by side comparison as to the ordinary consumer two marks are seldom available for such comparison in the real life situation. The case has to be seen from the perspective of an ordinary prudent man having faculty of imperfect recollection. Thus for such a person only the broad features of a trade mark are recallable and he neither does nor is supposed to remember fine distinctive features.
31. The colour scheme, pattern and designing, the trade mark of the defendant are so strikingly similar to that of the plaintiff that an ordinary consumer is liable to be way laid and deceived. It is the apprehension of confusion and deception that is relevant rather than the actual deception.
32. Carpentry tools are purchased by carpenters who generally have no formal schooling in India and they are in trade on account of it being their ancestral business. Thus they are not in a position to know or read the name of the manufacturer. They make their purchase of tools on the basis of pictorial representation of the packaging visàvis the image they have in their mind. In view of the same the apprehension of confusion and deception cannot be ruled out. This may invite the situation that the goods of defendant may be passed out T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 20 of 22 21 as those originating from the plaintiff.
33. Thus it would not only jeopardize the business interest of the plaintiff but would also affect the interest of general public. If the goods are not to the satisfaction of the consumer it may again adversely affect the goodwill and reputation of the plaintiff and would result in its dilution.
34. The defendant has pleaded acquiescence and laches on the part of the plaintiff. Acquiescence is a facet of delay. There is nothing on record to suggest the same as the plea as made is itself vague and bald.
35. As far as the copyright is concerned the objection of defendant as to the nonregistration of the copyright of plaintiff holds no water as under the law registration of copyright is not mandatory.
36. Accordingly, in view of the above discussion, the plaintiff has been successful in exhibiting a prima facie case. The balance of convenience is also in its favour as it is the prior adopter and user of the trade mark and it is likely to be injured by the acts and omissions of the defendant. It's goodwill is likely to be diluted by the acts and omissions of the defendant and the damage cannot be quantified in terms of money as the consequences may haunt it for a long time. T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 21 of 22 22 Thus the plaintiff is entitled to interim injunction.
37. Thus the application of plaintiff is allowed and during the pendency of the present suit the defendant and its associates, agents, dealers etc. are restrained from using in any manner a trade mark which is identical or deceptively similar, whether visually, phonetically or in any other way, to the plaintiff's trade mark/label mark 'Chand No. 1 Sanaur' with device of Star and Half Moon' including artistic work in respect of carpentry or hand tools. The defendant is afforded a time of 90 days from the date of this order for compliance.
38. Nothing stated herein shall tantamount to an expression of opinion on the merits of the case.
39. Injunction application stands disposed of accordingly. Announced in the Open Court On this 28th day of May 2013 (MAN MOHAN SHARMA) ADJ (Central)01, Delhi T.M. NO. . 68/2011 (M/s Jagan Nath & Sons Vs. M/s Steel Tools India) Page 22 of 22