Calcutta High Court
P.C. Duraiswamy vs Ayyanar And Ors. on 15 February, 2002
Equivalent citations: (2002)3CALLT170(HC), 2002(2)CHN184
Author: S.K. Mukherjee
Bench: Subhro Kamal Mukherjee
JUDGMENT S.K. Mukherjee, J.
1. This is an appeal against the judgment and order dated December 4, 2001 passed by the learned District Judge rejecting an application under Order 39, Rules 1 and 2 read with Section 151 of the Code of Civil Procedure filed by the plaintiff in other suit No. 2 of 2001.
2. Other Suit No. 2 of 2001 has been instituted by the plaintiff-appellant in the Court of the learned District Judge, Andaman and Nicobar Islands, inter alia, for permanent injunction. It is alleged by the plaintiff that the plaintiff has been carrying on business in the name and style of Sakthi Trading Company and the defendants have been carrying on business at Port Blair. The plaintiff has been carrying on business as a leading manufacturer of food products for long time and in the course of his business he adopted the trademark 'Shakti' for the food products manufactured by him. He had commenced the manufacturing and selling under the aforesaid trademark since 1977. He has registered the trademark in respect of turmeric powder on January 5, 1979 and, also, registered the said trademark for masala powder. The plaintiff has been spending huge sums of money for promoting the sales of his products under the trademark 'Sakthi' and because of such steps by the plaintiff, it has been alleged, the sales of his products sold under the trademark 'Sakthi' masala powders ran to several crore of rupees. The plaintiff has obtained the copy right registration for his various artistic work labels Sakthi. The plaintiff has been awarded during the years 1987 and 1988 by the Director of Industries and Commerce, Madras as an outstanding entrepreneur. In 1992, the plaintiff has been conferred with an award by the council for fair business. The plaintiff, also, bagged an excellent award from the Directorate of Industries and Commerce in 1997 and the national award for quality products in the year 1994 from the Ministry of Industries, Government of India. On December 3, 1998, the Ministry of Social Justice and Employment, Government of India, conferred on the plaintiff the national award for welfare of the people with disabilities. For the year 1996-97 the Government of Tamil Nadu declared the plaintiff as the best private employer. The plaintiff came to know during the second week of November, 2001 that the defendant No. 1 had commenced manufacturing and selling of masala powders under the offending trademark and the artistic work label 'Joysakthi' in Andaman and Nicobar Islands. The defendants No. 2 and 3 have been selling the aforesaid products in the city of Port Blair. It is alleged that the defendants have willfully chosen the trademark and artistic work 'Joysakthi' which has been identically, deceptively and phonetically similar to that of the plaintiff's well established trademark and artistic work in order to acquire unlawful gain under the reputation earned by the plaintiff. It is, further, alleged that by reason of user of the offending artistic work and the trademark 'Sakthi' by the defendants for masala powder, the plaintiff would be put to irreparable loss, hardship and injury.
3. On the basis of the aforesaid allegations, the plaintiff prayed for the following reliefs :-
(a) granting permanent injunction restraining the defendants, by themselves, their servants or agents or anyone claiming through them from in any manner infringing the plaintiff's well established trademark SAKTHI together with peculiar colour scheme and get up by using the offending trademark SAKTHI together with identical colours scheme and get up or any other mark or marks which are in any way deceptively similar to or a colourable imitation of the plaintiff's well established trademark SAKTHI;
(b) granting permanent injunction restraining the defendants, by themselves, their servants or agents or anyone claiming through them from in any manner infringing the plaintiff's copyright artistic work label SAKTHI by using the offending artistic work label SAKTHI together with identical colour scheme and get up or any other work or works which are in any way deceptively similar to or a colourable imitation of the plaintiff's copyrighted artistic work SAKTHI label;
(c) granting permanent injunction restraining the defendants by, themselves, their servants or agents or anyone claiming through them from in any manner passing off of their masala powders bearing the offending trademark and artistic work SAKTHI as and for the celebrated masala powders of the plaintiff sold under the well established trademark and copyrighted artistic work SAKTHI either by selling or offering for sale or in any manner advertising the sale;
(d) directing the defendants to render a true and faithful account of the profits earned by him by using offending trademark SAKTHI;
(e) directing the defendants to surrender all the unused offending SAKTHI pouches, dyes, blocks etc.
(f) directing the defendants to pay to the plaintiff's the costs of the suit;
(g) pass such further or other orders as may be deemed fit and proper in the circumstances of the case and in the interest of justice.
4. In connection with the said suit the plaintiff moved an application for temporary injunction under Order 39, rules 1 and 2, read with Section 151, of the Code of Civil Procedure, inter alia, praying for a temporary order of injunction restraining the defendants, their servants and agents from infringing the plaintiff's registered trademark 'Sakthi' by using the offending identical trademark 'Joysakthi' or any other mark or marks which are in any way deceptively similar to or colourable imitation of plaintiff's trademark either by selling or offering for sale or in any manner advertising the same. It was, further, prayed that the defendants should be restrained from passing off their masala powders as and or the plaintiff's masala powders either by selling or offering for sale or in any manner advertising the same.
5. The defendants entered appearance in the said suit and contested the prayers' for temporary injunction by filing their written objection. The defendants have, however, denied all the material allegations of the plaintiff and asserted that they have not imitated the trademark, colour or style of writing/printings etc. of the plaintiff's trademark. It is alleged that the product of the defendant No. 1 was completely different from the plaintiff's product in all respect and the defendant No. 1 never copied the trademark and the copyright of the plaintiff as alleged. It is contended that the plaintiff has emphasized on the word "Sakthi" by putting it in bold letters, but the defendant's masala products have been sold under the name 'Joysakthi' and the whole word 'Joysakthi' is printed in black letters. The defendants' products were available at almost same price as compared to that of the plaintiff's and, as such, there was no chance of injury to the plaintiff. The words 'Sakthi' and 'Joysakthi' are apparently dissimilar and there is no resemblance between the two.
6. The learned District Judge by the order impugned rejected the said application for temporary injunction on contest, but without any order as to costs. The learned District Judge observed that he himself inspected the packets attached to the case record and compared the deferent products of 'Sakthi' and 'Joysakthi' and, on such inspection and comparison, he did not find any deceiving similarity in the get up and colour combination in the respective packets of both sides. It was held that, on a plain glance over the respective packets of the products of the plaintiff and the defendants, there was nothing by which a customer might be deceived on seeing the packets of the defendants as the products of the plaintiff and the use of the name 'Sakthi' by the defendants in their trade name 'Joysakthi' has been done completely in different style from that of the plaintiff. Therefore, the learned District Judge held that he did not find any prima facie material in the plaintiff's application for temporary injunction to restrain defendants' product from being marketed at this stage. The learned District Judge, further, observed that admittedly the manufacturing unit of Sakthi Trading Company is at Erode in the State of Tamil Nadu. The plaintiff, therefore, could have approached the learned District Judge within whose jurisdiction the production unit of the defendants or the production unit of the plaintiff are situated.
7. Being aggrieved, the plaintiff has come up with this appeal.
8. Before we deal the appeal on merits, we must record here that Mr. Dipak Roy, the learned advocate, appearing on behalf of the defendants/ respondents, in course of hearing of the appeal abandoned the question as to the jurisdiction of the Court of the learned District Judge at Port Blair to entertain the suit. Mr. Roy, in his usual fairness, submitted that he was not pressing the point of maintainability of the suit at Port Blair and admitted that the suit was properly instituted in the Court of the learned District Judge at Port Blair.
9. Mr. Asish Kumar Roy, learned senior advocate, appearing in support of the appeal argued that the learned District Judge erred in law and in facts in rejecting the application for temporary injunction as the learned District Judge has failed to apply proper legal tastes in determining the application for temporary injunction in the present suit. Mr. Roy, to bring home his points cited several authorities, both of the Apex Court and of various High Courts. Mr. Roy cited the decisions in the cases of Cadila Health Care Limited v. Cadila Pharmaceuticals Limited, , the Scotch Whisky Association and Anr. v. Prauara Sahakar Sahakar Karnhana Limited, , Helpage India v. Helpage Garhwal, reported in 2001 PTC 872 (Del), Jai Prakash Gupta v. Vishal Aluminium Manufacturing Company, reported in cases and Materials on Trade Marks and Allied Laws, Volume-1 at page 759, Aravind Laboratories v. V.A. Samy Chemical Works, , K.R. Chinna Krishna Chettiar v. Sri Ambal & Co. and Anr., , Ruston and Homby Ltd. v. Zamindara Engineering Co., reported in 1970 Supreme Court 1649, Parle Products (p) Ltd. v. J.P. & Co. Mysore, and K.R Chinnikrishnan Chettiar v. Sri Ambal & Co. and Anr., reported in (1964)2 MLJ 206. Mr. Roy, also, cited an administrative panel decision of WIPO Arbitration and Mediation Centre in the case of Sony Corporation v. Park Kwangsoo, reported in 2001 PTC 492 (WIPO).
10. Mr. Dipak Roy, learned advocate, appearing on behalf of the defendants/respondents, however, contradicting the contentions of Mr. Ashish Kumar Roy, learned senior advocate, submitted that the plaintiff has failed to make out any case for temporary injunction to stall the entire activities of the defendants. Mr. Roy submitted that even assuming, though not admitting, that the plaintiff has made out some triable issues, but considering the other, relevant considerations for granting temporary order of injunction, the learned trial Judge rightly rejected the application for temporary injunction in proper application of his judicial discretion. Mr. Roy submitted that since the learned District Judge refused to grant a discretionary relief in the peculiar circumstances of the case, such order need not be interfered with in appeal by this Court. It is, further, submitted that in the event the defendants are restrained from carrying out their business activities and if ultimately the suit is dismissed, the irreparable loss and injury, the defendants will suffer can never be compensated even by pecuniary damages and the balance of convenience and inconvenience is in favour of the defendants. Mr. Roy in support of his contention cited the decisions in the cases of Wander Ltd. and Anr. v. Antox India P. Ltd., reported in 1990 (suppl) Supreme Court Cases 727, Colgate Palmolive (India) Ltd. v. Hindustan Lever Ltd., , Aristo Pharmaceuticals Ltd. v. Wockhardt Ltd., and Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd. and Others, .
11. The Supreme Court of India in the case of Parle Products (P) Ltd. (supra) observed -- "It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other."
12. The learned District Judge, however, held that the plaintiff had no prima facie case as it appeared to him on a plain glance over the respective packets of the products that there was nothing by which a customer may be deceived on seeing the packets of the defendants to the product of the plaintiff. The approach was not correct.
13. It is alleged by the plaintiff that the plaintiff is in the market since 1977. It is, also, admitted that the plaintiff is registered holder of the tramdemark. In the written objection, the defendants did not indicate as to the point of time when the defendant No. 1 started manufacturing and selling of its products. The product of the plaintiff is "Sakthi" while the product of the defendant No. 1 is "Joysakthi". There are some degree of resemblances between the marks and they are phonetically almost similar. The area of operation of both the plaintiff and the defendant No. 1 are the same inasmuch as both of them are dealing with masalas.
14. The Apex Court in the case of Cadila Health Care Ltd. (supra) observed as under :--
The trademark is essentially adopted to advertise one's product and to make it known to the purchaser. It attempts to portray the nature and, if possible, the quality of the product and over a period of time the mark may become popular. It is usually at that stage that other people are tempted to pass of their products as that of original owner of the mark. That is why it is said that in a passing off action, the plaintiff's right is against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing off is said to be a species unfair trade competition or of actionable unfair trading by which on person, through deception, attempts to obtain an economic benefit of the reputation which other has established for himself in a particular trade or business. The action is regarded as an action for deceit."
15. "Broadly stated in an action for passing off on the basis of unregistered trade mark 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 resemblances 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 purchases 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.
16. Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case."
17. Mr. Dipak Roy, however, cited the aforesaid decisions in order to establish that in a passing off action, normally, no injunction is granted. The decision in the case of Colgate Palmolive (I) Ltd. (supra) is distinguishable as the said decision deals with Monopolies and Restrictive Trade Practices Act, 1969 and therefore, operates in a deferent field. The decision in the case of Aristo Pharmaceutical Ltd. (supra) is of no help inasmuch as in the said decision the Apex Court has found that the facts alleged by the appellant in the said case were not exactly admitted by the respondent of the said case. There was dispute as to whether the word Spasmo has been used in connection with medicine since before and after 1977 which was a relevant consideration and there was dispute as to whether any drug using the word Spasmo was still being manufactured and sold after the respondent in the said case has got its trademark registered in the year 1977. In the case in hand, the defendants have failed to even challenge the statement of the plaintiff hat the plaintiff is in petition since 1977. Moreover, the plaintiff is registered trademark holder. The plaintiff manufacturers masala powders under registered trademark 'Shakthi' and the defendant No. 1 was using the mark 'Joysakthi' for his masala products. In view of phonetic similarity, the plaintiff's petition for temporary injunction must succeed. The defendants have adopted deceptively similar trade name, which is likely to cause confusion in the mind of the general public and when the plaintiff is the registered owner of the trademark, user of phonetically similar mark by the defendants should be stopped when speciallt both the parties are operating in the same area of trade, that is, both are marketing masala powders. The plaintiff has been using the trademark since 1977 and continuously whereas the defendants, prima facie, have entered into the said field of operation very recently. The spehere of activity and the market of consumption of goods are the same. Moreover, the customers are basically general public, who are capable of being deceived or confused or misled when the plaintiff has, prima facie, acquired a distinctiveness and the products of the plaintiff are associated in the minds of the general public as goods of the plaintiff.
18. The decision in the case of Uniply Industries Ltd. (supra) is distinguishable. In that case, both the parties had registered their trade marks and the dispute which was primarily involved in the said litigation was, who was the prior user of the product. In the case in hand priority is established beyond any reasonable doubt by the plaintiff.
19. True it is that grant or refusal of injunction is a matter of discretion by the Court and no doubt Court of appeal, normally, does not disturb the findings of fact. Nevertheless, we find that findings were arrived at by the learned District Judge not on proper consideration of the law on the subject and, as such, they are required to be set aside by us.
20. At the same time, we are not unmindful about the interest of the defendants and as such, we hold that the plaintiff is not entitled to an order of injunction unconditionally. In the facts and in the peculiar circumstances of the case, we find that justice will be subserved if the plaintiff is directed to deposit a sum of Rs. 2,50,000/- (Rupees two lakh fifty thousand only) in the Court below subject to further direction by the Court below at the conclusion of the trial.
21. Accordingly, the Judgment and order passed by the learned District Judge is set aside. The defendants and/or their agents are restrained from selling masala powders by using the mark 'Joysakthi' in the Andaman and Nicobar Islands and from advertising for sale of such products with the said mark, The said order of injunction will continue uncoditionally till March 1, 2002 and during the said period the plaintiff will have to deposit a sum of Rs. 2,50,000/- (Rupees two lakh fifty thousand only) in the Court of the learned District Judge at Port Blair. In the event of his failure to deposit the said sum, the order of injunction will stand automatically vacated. In the event of deposit of the said sum during the aforesaid time frame, the order of injunction will continue till the disposal of the suit. If, however, the said sum is deposited, the learned District Judge will invest the same in short term deposit with any nationalized bank and he will be entitled to pass appropriate orders on the principle sum and the interest accrued thereon at the time of final disposal of the suit.
22. We are informed that the defendants have not filed their written statement as yet. The defendants are directed to file their written statement by March 1, 2002 and we direct the learned District Judge to dispose of the suit as expeditiously as possible, preferably before the annual vacation of the Court for this year.
23. We make it clear that the findings, if any, made by us in disposing of this appeal against the impugned order rejecting the application for temporary injunction cannot in any way take the place of the findings to be arrived at in disposing the suit after full fledged trial and all our opinions are for the purpose of disposal of the application for temporary injunction.
The appeal is, thus, allowed. There will be no order as to cost.
P.K. Samanta, J.
I agree.