Kerala High Court
National Garments, Kaloor, Cochin vs National Apparels, Ernakulam, Cochin on 5 April, 1989
Equivalent citations: AIR1990KER119, AIR 1990 KERALA 119, 1989 (1) KER LJ 725 (1989) 1 KER LT 855, (1989) 1 KER LT 855
JUDGMENT K.P. Radhakrishna Menon, J.
1. The defendant in an action for passing off is the appellant.
2. The suit is for the grant of a prohibitory injunction restraining the defendant from using the words 'National Garments' and 'the yellow colour get up in the box' used in connection with the sale of the goods manufactured by the defendant and for seizure of all the materials used for printing the aforesaid words viz. 'National Garments', 'Tonoform' and the colour boxes etc. and to have them destroyed at the cost of the defendant. There are certain other minor reliefs sought for in the suit, but they are not stated here as they are not relevant in the context.
3. The temporary injunction sought for has been granted by the order under challenge.
4. Facts relevant and requisite for the purpose of deciding the dispute He in a narrow compass. The plaintiff is a firm of which the appellant was a partner till her retirement on 1st September, 1987. The plaintiff has applied to the authority concerned for the registration of its Mark 'Tonoform'. The plaintiff has been using this trade name to identify its products. The defendant after retirement from the firm, has started an identical business and the trade name used by her is 'Tonoform'. It is further alleged that even the branding of the words 'o' and 'e' are such that the purchasers of these materials would go in for the products of the defendant as if they are the products of the plaintiff. In proof of these allegations the plaintiff has produced along with the plaint two cover boxes. Those cover boxes, in any event, establish that the get up, the marking, branding etc. on them are likely to deceive the customers. FOR instance the brand name of the brassiers manufactured by the defendant is 'Sundari' whereas the brand name of that product of the plaintiff is 'Sundary'. Many such instances have been enumerated in the plaint to show that the materials manufactured by the defendant are being sold in the market as if they are the products of the plaintiff. These in short are some of the main allegations in the plaint. The defendant has not so far filed written statement, but in the counter-affidavit filed in the interlocutory application, she has tried to explain the circumstances under which she started using the trade name etc. highlighted in the plaint. The dispute as to whether there is any passing off has yet to be decided and for that matter that can be decided only in the suit.
5. The question now before me however is, was the Court below, under the circumstances indicated hereinbefore, justified in granting the temporary injunction?
6. This question cannot be answered in vacuum and therefore it has become necessary at least to touch upon the definition of the word 'passing off. I shall in this connection cite the following passage from Karly's Treatise on Law of Trade Marks and Trade Names:
"It is an actionable wrong for the defendant to represent, for trading purposes, that his goods are those or that his business is that of the plaintiff, and it makes no difference whether the representation is effected by direct statements, or by using some of the badges by which the goods of the plaintiff are known to be his, or any badges colourably resembling these, in connection with goods of the same kind, not being the goods of the plaintiff, in such a manner as to be calculated to cause the goods to be taken by ordinary purchasers for the goods of the plaintiff."
The plaintiff in an action for passing off therefore has to establish that his products have derived from the advertising a distinctive character recognised by the market. Plainly stated the principle of law is that "nobody has any right to represent his goods as the goods of somebody else" and sell it in the market for his own aggrandisement. This rule has been treated as a special instance carved out of the general rule that any misrepresentation calculated to give one trader the benefit of another's goodwill is actionable. Generally stated any misrepresentation calculated to injure another in his trade or business can be regarded as passing off (See Burberrys v. Cording, (1909) 26 RPC 693 at 701). Nonetheless in an action for passing off, a plaintiff need not prove any malice unlike the plaintiff in a tortious action for injurious falsehood. Likewise proof of damage as such is not essential to enable the plaintiff to maintain an action for passing-off. Why it is said so is that the confusion brought about by the action of the defendant puts the plaintiffs goodwill at risk. To put it briefly "the plaintiff in an action for passing off must show, if not that he has some sort of business which is threatened by the defendant's activities, at least that his interest is something akin to that of the owner of a business". (See Kean v. Mc Given, (1982) FSR 119).
7. The special nature of the action discernible from the statements above shall be borne in mind while answering the question aforesaid. It is interesting in this context to note that for an interlocutory injunction to restrain the defendant, until the hearing of the action, the principle applicable is slightly different from the principle applicable in ordinary cases. For a temporary order in an action for passing off, the plaintiff need not in general show a strong prima facie case. However the prima facie case that is required to be shown must be something more than a case that will avoid the action being struck out as frivolous or vexatious. Generally stated "even if the chance of success at the trial are only 20 per cent", the interim relief sought for is required to be granted. (See paras 15-66 of Kerly's Law of Trade Marks and Trade Names, Twelfth Edition). There is another reason for the grant of the interlocutory injunction under such circumstances. Such an order would stop the infringement without delay. Not only that from experience it is clear that a successful motion for interlocutory injunction "normally puts an end to the litigation and the infringement, with a great saving in expense compared with a full trial" and that is the reason why the law insists upon a hearing of such a motion in every case. It is also clear from this treatise of Kerley that "in extremely urgent cases an ex parte injunction may be obtained before the full hearing of the motion or an "Anton Piller" order, for inspection of the defendant's premises without prior warning and discovery of his records, may be obtainable". This Anton Piller' order is similar to the ex parte interlocutory order to take an inventory of the articles etc. passed in an ordinary suit.
8. The facts of the case stated supra, to my mind, warrant the issuance of an interlocutory order restraining the defendant from doing the business under the trade name which is in dispute. The Court below therefore has rightly allowed the application for interlocutory injunction.
Before I part with this order I would like to make it clear that nothing stated herein shall affect the rights of the parties that are being agitated in the suit.
The C.M.A. is dismissed. No costs.