Bombay High Court
Pawan Kumar Atmaram Saboo And Anr. vs Saboo Collections on 27 July, 2001
Equivalent citations: 2002(24)PTC27(BOM)
Author: S.D. Gundewar
Bench: S.D. Gundewar
JUDGMENT S.D. Gundewar, J.
1. Heard finally at the stage of admission by the consent of the parties.
2. These two Appeals Against Order bearing Nos. 27/01 & 28/01 are being disposed OF by this common judgment since both of them are directed against the common order dated 23-10-2000 passed by the learned 5th Additional District Judge, Nagpur below applications (Exh.5) for temporary injunction moved in Special Civil Suit Nos. 2/2000 & 3/2000, whereby the learned trial Judge rejected the said applications.
3. The facts, in so far as, they are relevant for the disposal of these appeals are as under:-
The appellant No. 1 is the sole proprietor of the firm named and styled as 'Saboo Sons'. He is also one of the Directors of the appellant No. 2 - 'Saboo Decopride', which is a private limited company registered under the Companies Act, 1956. The appellants are engaged in the business of marketing, selling and providing bed sheets, bed covers, mattresses, etc. The appellant No. 1's father Atmaram Saboo started the said business sometime in the year 19,60 under the name and style as 'Saboo Textiles', which is still continuing and is looked after by the appellant No. 1's father. As the said business grew up and required more space and attention, the appellant No. 1 in the year 1987 started his independent business under the name and style as 'Saboo Sons'. During the period from 1993 to 1997 the appellant No. 1 acquired the reputation and goodwill in the said business with huge sales and, therefore, he started one more shop under the name and style as 'Saboo Decopride' which was afterwards converted into a private limited company of which the appellant No. 1 and his wife are the Directors. The appellant No. 1's other brothers also carry on their business under the names as 'Saboo Fab', 'Saboo Furnishings', Saboo Weaving Industries', Saboo Textile Industries', etc. Thus, the entire business of the members of the appellant No. 1's family is being run under the name beginning with a word 'Saboo' which is the surname of the family. The business activities conducted by the appellants are very extensive. The respondent (in A.A.O. No. 27/2001) was carrying on similar business under the name and style as 'Mahesh Textiles' but in or about May, 1998 he suddenly changed the name and started the said business under the name and style as 'Saboo Collections' in Itwari locality of Nagpur. Not only that but Brahmanand Saboo, the cousin of appellant No. 1 has recently started another firm in Sadar locality of Nagpur dealing in same business under the name and style as "Saboo Collections" with dishonest and mala fide intention of cashing in the goodwill and reputation acquired by the appellants. The appellants learnt about the same recently. In fact, it is the appellants, who have been advertising the name and putting all efforts, time, money, energy and skill to popularise their trade name "Saboo Sons". The respondents adopted deceptively similar name and this act of respondents is in violation of appellants' vested legal right and is an action in passing off and hence the appellants were constrained to file Special Civil Suit Nos. 2/2000 & 3/2000 against the respondents.
4. Special Civil Suit No. 2/2000 was filed on 23-5-2000 against the respondent 'Saboo Collections' situated in Sadar locality of Nagpur, whereas Special Civil Suit No. 3/2000 was filed on 12-6-2000 against the respondent 'Saboo Collections' situated in Itwari locality of Nagpur. Along with the aforesaid suits, the appellants has filed the applications for temporary injunctions (Exh.5) for restraining the respondents from carrying on the business of marketing, stocking, offering for sale, exhibition, advertising or otherwise dealing in bed covers, bed sheets, furnishing fabrics, other material, mattresses, etc. under the trade names beginning with or consisting of or comprising the word 'Saboo'. The appellants' applications for temporary injunctions in both the aforesaid suits came to be rejected by the learned trial Judge and hence, the present Appeals Against Order.
5. The respondents resisted the appellant's applications for temporary injunction by filing separate reply in both the aforesaid suits. It is inter alia contended by the respondents that Special Civil Suit No. 3/2000 is barred under Order 2 Rule 2 of C.P. Code as the relief claimed therein ought to have been sought in earlier Special Civil Suit No. 2/2000. It is further contended by the respondents that the firm 'Saboo Textiles' was started by the father of the appellant No. 1 and the father of Brahanand Saboo, the proprietor of respondent firm. It was the joint family venture. The said firm was dealing in the business of selling and marketing bed sheets, bed covers, etc. The appellant No. 1 as well as Brahmanand Saboo, the proprietor of respondent firm both were using name 'Saboo'. According to the respondent Brahmanand Saboo, the proprietor of respondent firm, was initially carrying on the business in bed sheets, ted covers, etc. with his father Hiralal under the name and style as 'Mahcsh Textiles' but on gaining experience and knowledge in May, 1998 he started his independent business under the name and style as 'Saboo Collections', which in fact is one of the branches of 'Mahesh Textiles' but the appellants suppressed all these material facts and acted in unfair or inequitable manner and, therefore, they are not entitled to an injunction as sought. It is also contended by the respondents that another member of Saboo family by name Ashok Saboo also carries on similar business and deals in bed sheets, bed covers, etc. under the name and style as 'Saboo Brothers' against whom the appellants have not taken any action, which fact clearly indicates that the appellants have some personal grudge against the respondents and out of the said grudge they have filed the aforesaid suits against it. According to the respondents, this conduct of the appellant No. 1 itself is sufficient to negativate his claim for temporary injunction. It is further contended by the respondents that the alleged cause of action arose in May, 1998 whereas the aforesaid suits were filed in May and June, 2000, i.e. after about two years, which shows that there was in fact no legal injury sustained by the appellants and, therefore, both the Appeals Against Order filed by the appellants deserve to be dismissed.
6. The learned trial Judge after hearing the learned Counsel for the parties and considering the material on record, rejected the applications for temporary injunction filed by the appellants in both the aforesaid suits by common order dated 23-10-2000, which is under challenge in these A.A.Os.
7. Heard S/Shri M.K. Miglani and R.S. Parsodkar, the learned Counsel for the appellants and Shri M.B. Naidu, the learned Counsel for the respondents at length.
8. While assailing the impugned order, it is urged by Shri M.K. Miglani, the learned Counsel for the appellants, that the trade name of the appellants, i.e. 'Saboo Sons' and 'Saboo Decopride (P) Limited' were widely advertised and gained a wide reputation for a number of years. The respondents are carrying on the business under the name and style as 'Saboo Collections' since 1998 and though the respondents are using family surname, i.e. 'Saboo', the trade name used by the respondents is identical and deceptively similar to the trade name of the appellants. The respondents are dealing in goods such as bed sheets, bed covers, mattresses, etc., which are identical and similar to the goods of the appellants. The respondents are attempting to pass off their goods with the said trade name with an intention to secure advantage of the reputation and goodwill earned by the appellants which is not permissible. For this, the learned Counsel for the appellants though cited various decisions has mainly relied upon two decisions in Bajaj Electricals Limited, Bombay v. Metals & Allied Products, Bombay and Anr., and in Kirloskar Diesel Recon Pvt. Ltd. and Anr. v. Kirloskar Proprietary Ltd. and Ors., .
9. On the other hand, Shri M.B. Naidu, the learned Counsel for the respondents, contended that the surname of the parties being 'Saboo', the respondents are entitled to adopt and use the said name and unless it is established that the user was dishonest, it is not permissible to grant the injunction on the ground that the user is likely to cause deception or confusion in the mind of the customers. In support of the aforesaid submission, Shri Naidu referred the decisions in Shri Gopal Engg. & Chemical Works v. POMX Laboratory, AIR 1992 Delhi 302, S.M. Dyechem Ltd. v. Cadbury (India) Limited, AIR 2000 SC 2114, Bagla and Co. v. Bagla Cosmetics, 2000 (2) Arb.L.R. 590, The National Sewing Thread Co. Ltd. carrying on business in Chidambaram v. James Chadwick and Bros. Ltd., a company registered under the English Companies Act by its duly constituted Attorney, Harvy Godfrey, Bombay reported in AIR (35) 1948 Madras 481 and Carew Phipson Limited v. Deejay Distilleries Pvt. Limited, 1994 Mh.L.J. 1617.
10. The main bone of contention between the parties before me is whether prima facie the respondents by adopting the name 'Saboo Collections', which is deceptively similar to appellants' trade name 'Saboo Sons' have been passing off their services and goods as that of the appellants. To that end, it would be appropriate to recapitulate some well-established principles. The law relating to passing off is fairly well-settled. The principle underlying the action is that no one is entitled to carry on his business in such a way as to lead to the belief that he is carrying on the business of another man or lead to belief that he is carrying on or has any connection with the business carried on by another man.
11. While dealing with similar aspect, the Division Bench of this Court in Bajaj Electricals Limited, Bombay v. Metals & Allied Products, Bombay and Anr., observed in paragraph No. 7 of the judgment as below:-
"7. It is required to be stated at the outset that in the present case the question for determination is whether the defendants are guilty of passing off and not of infringement of trade mark. It was contended by Mr. Cooper, learned counsel appearing on behalf of the respondents, that the surname of the partners of defendant No. 1 being 'Bajaj', the defendants are entitled to use their own name and unless it is established that the user was dishonest, it is not permissible to grant injunction on the ground that the user is likely to cause deception or confusion in the mind of the customers. It is not possible to accept the submission of the learned counsel. It is necessary to bear in mind that the defendant No. 1 is not using the word "Bajaj" as a trading style, but are only using the word "Bajaj" as a trade mark or a sign and such user is not permissible. It is required to be stated at this juncture that Mr. Cooper did not dispute that the plaintiffs have acquired large reputation by user of the word "Bajaj" in respect of sale of their goods, but contended that the surname of the partners of the defendants being "Bajaj", there is no objection for the defendants' using the word by that trade sign. The reliance in this connection by Mr. Tulzapurkar on the decision of House of Lords in the case of Parker Knoll Limited v. Knoll International Limited, 1962 RPC 265 is very appropriate. Lord Morris, while opening the speech, observed:
"In the interests of fair trading and in the interests of all who may wish to buy or to sell goods the law recognises, that certain limitations upon freedom of action are necessary and desirable. In some situations the law has had to resolve what might at first appear to be conflicts between competing right. In solving the problems which have arisen there has been no need to resort to any abstruse principles but rather, I think, to the straight forward principle that trading must not only be honest but must not even unintentionally be unfair,"
It was further observed:
"A name may be used as a mark under which a person's goods are sold so that the name comes to denote goods made by that person and not the goods made by anyone else or even made by anyone else who has the same name. So also a mark under which a person's goods are sold may come to denote goods made by that person. The name or the mark will have acquired a secondary meaning."
The scquitur of this finding was that someone may, even by using his own name and using it innocently, make a representation that is untrue, that is a representation that goods which in fact are his are the goods of someone else. Lord Morris thereafter referred to the celebrated passage from the judgment of Justice Romer in the case of Joseph Rodgers & Sons, Limited v. W.N. Rodgers & Company, (1924) 41 RPC 277. The passage at p.291 reads as under:-
"It is the law of this land that no man is entitled to carry on his business in such a way as to represent that it is the business of another, or is in any way connected with the business of another; that is the first proposition. The second proposition is that no man is entitled so to describe or mark his goods as to represent that the goods are the goods of another. To the first proposition there is, I myself think an exception; a man, in my opinion, is entitled to carry on his business in his own name so long as he does not do anything more than to cause confusion with the business of another, and so long as he does it honestly. To the second rule, to which I have referred, I think there is no exception at all; that is that a man is not entitled so to describe his goods as to lead to the belief that they arc the goods of somebody else."
The House of Lords then noted the distinction drawn by Justice Romer between trading under a name and passing off of goods by the use of a name. The distinction noticed by Justice Romer was subsequently accepted as correct by Viscount Simonds and in several other decisions. Relying on this, decision, Mr. Tulzapurkar urged, and in our judgment with considerable merit, that the defendants are not carrying on their trade in the name of "Bajaj", but are using the mark as a trading sign and that is not permissible. Mr. Cooper controverted the submission by relying upon the dissent voiced by Lord Denning and Lord Devlin in their speeches. It is undoubtedly true that these judges were not inclined to accept the distinction noticed by Mr. Justice Romer, but even then have clearly stated that if the use by the defendants of their own name was likely to deceive, then there would have been no defence to the action of passing off, no matter how honest and bona fide the user was. The decision of the majority of the House of Lords is good law in England for last over 25 years and no case has been brought to our attention where the accuracy of the principles laid down has been doubted. We see no reason at this interim stage to accept the submission of Mr. Cooper that the minority view should be preferred to that of the majority and the distinction noticed by the House of Lords should be ignored. Mr. Cooper invited our attention to a decision in the case of Turton v. Turton, (1889) 42 Ch.D. 128, and to the decision in the case of S. Chivers & Sons v. S. Chivers & Co. Ltd., (1900) 17 RPC 420. The decision in the case of Turton was considered by the House of Lords in the case of Parker-Knoll Limited, and the observations in case of Olivers were based oft peculiar facts of that case, and, in our judgment, it is not possible to by-pass the decision of the House of Lords by reference to these cases."
12. Similarly, in Kirloskar Diesel Recon Pvt. Ltd. and Anr. v. Kirloskar Proprietary Ltd. and Ors., , this court while considering the contention of the appellants that 'Kirloskar' is a surname and by virtue of provisions of Sections 9 & 34 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as "the Act") the persons having the surname "Kirloskar" are entitled to adopt and use it as their trade mark and/or trade name and as such the appellants have right to use it, observed in the latter part of paragraph No. 17 as below:-
"In the interests of fair trading and in the interests of all who may wish to buy or to sell goods the law recognises that certain limitations upon freedom of action are necessary and desirable. In some situations the law has had to resolve what might at first appear to be conflicts between competing right. In solving the problems which have arisen there has been no need to resort to any abstruse principles but rather, I think, to the straight forward principle that trading must not only be honest but must not even unintentionally be unfair."
Further, in paragraph 18 of the said judgment, this Court observed as under:-
"18. In passing off action, the plaintiff is not required to establish fraudulent intention, on the part of the defendant and as such, it was not necessary for the respondents to establish fraudulent intention on the part of the appellants in incorporating the word 'Kirloskar' as part of corporate names of 1st appellant in each of the appeals. It was even not necessary for the respondents to prove causing of actual confusion amongst the customers or public at large by the appellants adopting the word 'Kirloskar' as part of corporate names of 1st appellant in each of the appeals. What the respondents were required to establish, which the respondents have established, is a likelihood of deception or confusion. Same view is expressed in Parker-Knoll Ltd., 1962 RPC 265(supra). The North Cheshire & Manchester Brewery Co. Ltd., 1899 AC 83 (supra) and Saville Perfumery Ltd., 58 RPC 747(supra)."
13. In the case in hand, from the documents on record such as letters, bills, receipts, invoice forms, octroi receipts, cash-memos, etc., prima facie, it appears that the appellant's trade names, i.e. 'Saboo Sons' and 'Saboo Decopride (P) Ltd.' were widely advertised and gained wide reputation and user of similar or identical trade name, i.e. 'Saboo Collections' by the respondents caused deception and created confusion in the minds of the customers as well as other dealers. In view of this and having regard to the ratio laid down by this Court in Bajaj's & Kirloskar's case(supra), I find much substance in the contention raised by Shri Miglani, the learned Counsel for the appellants, in this regard.
14. In view of the above, it is not possible to accept the contentions raised by Shri Naidu, the learned Counsel for the respondents that the surname of respondents being 'Saboo', the respondents are entitled to adopt and use it because in the case in hand from the documents on record prima facie it appears that the respondents are not using the word 'Saboo' as a trading style but are using it as a trade sign and such user is not permissible. The ratio laid down in the decisions cited supra on behalf of the respondents, in my opinion, is not applicable to the facts of the present case as discussed below.
15. In Shri Gopal Engg. & Chemical Works v. POMX Laboratory, AIR 1992 Delhi 302, the defendant was in open concurrent trade since the year 1983 with the business spread out in the State of Uttar Pradesh. In that case there was nothing on record to show that because of the presence of the defendant the business of the plaintiff had suffered or its sales had shown decline and, therefore, the injunction was refused. Here it is not so. In the case in hand, it is specifically averred by the appellants that because of the user of identical trade name by the respondents, their business has suffered a lot and, therefore, in my view, the ratio laid down by the Delhi High Court in this case is not applicable to the facts of the present case.
16. In S.M. Dyechem Ltd. v. Cadbury (India) Ltd., AIR 2000 SC 2114, it is observed by the Apex Court that:
"In matters of infringement of trade mark under our law, it can be said that stress is laid down on common features rather than on differences on essential features, except for a passing reference to a limited extent in one case. Principles of English Law relating to differences in essential feature are equally applicable in our country. In such a case, three tests have to be applied. The first one is this: Is there any special aspect of the common feature which has been copied? The second test will be with reference to the mode in which the parts are put together differently? That is to say whether the dissimilarity of the part or parts is enough to mark the whole thing dissimilar. The third test is whether when there are common elements, should one not pay more regard to the parts which are not common, while at the same time not disregarding the common parts? What is the first impression? Further, if in a given case; the essential features have been copied, the intention to deceive or to cause confusion is not relevant in an infringement action. Even if, without an intention to deceive, a false representation is made, it can be sufficient. Similarly, confusion may be created unintentionally, but yet the purchaser of goods may get confused for he does not have the knowledge of facts which can enable him not to get confused.
Where the injunction was sought by the plaintiff to restrain the defendant from using the word PICNIC as it allegedly amounted to infringement of the plaintiffs registered trade mark for the use of the word PIKNIK, and essential features of plaintiffs trade mark were that apart from the word PIKNIK, there were also the special script of words in block letters and the curve in which those words were inscribed and the caricature of the boy with a hat occurring between the words 'K' and 'N' on the plaintiffs mark, while the defendant's mark contained the words PICNIC in a straight-line, the script was normal and the words 'Cadbury' were written above the words PICNIC and neither the peculiar script nor the curve nor the boy with a hat was found in the defendant's mark the plaintiff was not entitled for injunction as aforesaid because the dissimilarities appeared to be clear and more stricking to the naked eye than any similarity between the marks. As to the first test the peculiar aspects of the common features of PIKNIK namely the peculiar script and the curve have not been copied; then, as to the second test, absence of the peculiar script in the letters, the curve and the absence of the caricature of the boy with a hat, made the whole thing look dissimilar. Then, as to the third test, the above three dissimilarities have to be given more importance than the phonetic similarity or the similarity in the use of the word PICNIC for PIKNIK."
Considering the aforesaid facts, it can very well be said that the facts of the said case being not identical to the facts of the case in hand, the ratio laid down by the Apex Court in the aforesaid decision, in my opinion, is not applicable to the facts of the present case.
17. In Bagla and Co. v. Bagla Cosmetics, 2000 (2) Arb.L.R. 590 it is held by the Delhi High Court as below:-
"Held- In my view it is not permissible at this stage, to lose sight of the fact that the two adversaries are offshoots of the original family business commenced by the partial namely Nanu Mal Bagla in 1925. The business is the same and had been jointly carried out by Nanu Mal Bagla and his two sons. It cannot be held at this stage which part of the Bagla family was transacting business in style of Bagla Cosmetics. It is also not possible at this stage to return a decisive and unequivocal finding as to which of the rival factions of the family has been doing business after the disruption of the family business due to the disappearance of Shri Nanu Mal Bagla. As has been clearly set down by the Apex Court in Sohan Lal's case (supra), both factions would be entitled to use of the family name "Bagla". Neither of the parties are entitled to injunct the other from transacting business by employing the family name "Bagla" The partnership firm 'Bagla Cosmetics' of which Shri Navin Kumar and Pawan Kumar Bagla Sons of Laminder Kumar Bagla and grandson of Nanu Mal Bagla shall be entitled to continue to transact business in the name and style "Bagla Enterprises". Shri Ganeshi Lal Bagla son of Nanu Mal Bagla and sole proprietor of "Bagla & Co." may continue to transact business in the name and style "Bagla & Co."
From the aforesaid facts it seems that in that case it was not brought on record as to which of the rival factions of the family was doing business in the name, i.e. 'Bagla Cosmetics' after disruption of the family business. In the case in hand, it is clearly averred by the appellants that they are dealing in the business of bed sheets, bed covers, mattresses,' etc. since long, i.e. since 1987 and the respondents have entered into this business only in 1998 and, therefore, in my opinion, the facts of the aforesaid case being not identical to that of the present one, the ratio laid down in the said case is not applicable to the present case. It seems that the learned trial Judge has lost sight of this important aspect of the matter.
18. In The National Sewing Thread Co. Ltd. carrying on business in Chidambaram v. James Chadwick and Bros. Ltd. a company registered under the English Companies Act by its duly constituted Attorney, Harvy Godfrey, Bombay, AIR (35) 1948 Madras 481 while considering the aspect of passing off action, the Madras High Court observed that an action against the person concerned is maintainable if there is a reasonable probability and not mere possibility of deception which may be by sound or sight. In the case in hand, from the averments made by the appellants and the similarity of trade name being used by the respondents, prima facie, it seems that there is a reasonable probability of deception and, therefore, the ratio laid down in the aforesaid case is also not applicable to the facts of the present case.
19. In Carew Phipson Limited v. Deejay Distilleries Pvt. Limited, 1994 Mh.L.J. 1617, the learned Single Judge of this Court held that:
"Held, that it is well established that purely descriptive terms are totally un-registrable. If the mark is not an invented word but has a direct reference to the character, and quality of the goods concerned, then it cannot be said to be descriptive. The words "Duet" and "Gin N Lime' or "Gin N Orange" were clearly referable to the goods and ingredients of the nature of premixtures used by the companies. The said words were not invented words and were also not inherently distinctive or inherently capable of distinguishing the goods. On comparison of the trade marks of the plaintiffs with the defendants' trade mark, it was difficult to hold that the two marks were deceptively similar and likely to create any confusion in the minds of the customers. Having regard to the fact that the customer who is likely to buy the products of the plaintiffs and the defendants will be normally educated and discerning type, it was impossible to hold that there was any likelihood of confusion. The plaintiffs had also failed to cite even a single instance showing that there was confusion in the minds of the customers. Even the labels used by the defendants were different than those used by the plaintiffs. There was no substance in the plaintiffs, claim of alleged infringement of copyright. No case had been made out for grant of any interim relief."
In that case, the labels used by the defendant were different than those used by the plaintiff. Moreover, in that case the plaintiff had also failed to cite even a single instance showing that there was confusion in the minds of the customers and, therefore, in the said case this Court held that the plaintiff was not entitled to interim relief as there was no infringement of copyright. In the instant case, the documents produced by the appellants clearly go to show that the user of trade name, i.e. 'Saboo Collections' by the respondents created confusion in the mind of the customers. In view of this, I find that the ratio laid down in the aforesaid case is not applicable to the facts of the present case. The contentions raised by Shri Naidu, the learned Counsel for the respondents, in this regard, therefore, cannot be accepted.
20. It is then contended by Shri Naidu that a passing off action is essentially based on tort and could be fought in the ordinary Court, where a suit on tort would normally lie and, therefore, under Sections 105 & 106 of the Act it was the Court of Civil Judge, Junior Division, which had jurisdiction to entertain the aforesaid suits and not the District Court and, hence, the appellants, aforesaid suits need to be dismissed on this Count alone. For this he placed reliance on the decisions in Bharathiya Coffee Workers Catering Service (P) Ltd. v. Indian Coffee Workers Cooperative Society Limited, and Rohem Separation Systems (I) Pvt. Ltd., Mumbai v. TAS Engineering Co. Pvt. Ltd., Mumbai 2001 (2) Mh.LJ. 146.
21. On the other hand, the learned Counsellor the appellants relying upon the decision in Aziz Gadighar v. Abdul Aziz, 1988 Mah.L.R. 625 submitted that for an action for passing off a suit would He only in the District Court and not in the Court of Civil Judge, Junior Division Court as contended. In order to consider the rival submissions made in this behalf, it would be appropriate to reproduce the provisions of Section 105 of the Act. Section 105 of the Act reads as under:-
"Section 105. Suit for infringement, etc. to be instituted before District Court-
No suit-
(a) for the infringement of registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiffs trade mark, whether registered or unregistered;
shall be instituted in any Court inferior to a District Court having jurisdiction to try the suit."
22. Now in Aziz Gadighar's case (cited supra) this Court has observed in paragraph No. 9 as below:-
"The ingredients of the action for passing off have been restated by the House of Lords in two distinct formulations, the first being as follows"
"(1) a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him (4) which is calculated to injure the business or goodwill of another trade, in the sense that this is a reasonably forseeable consequences, and (5) which causes actual damage to a business or goodwill of the trade by whom the action is brought or, in a quia timet action, will probably do so."
(48 Halsbury's Laws of England, Fourth Edition, para 144) And further onwards-
"Passing off may occur, not by reason of any similarity of trade mark or names, but because of the similarity of the general appearance or get-up of goods....
The similarity of get-up may be such that passing off is likely to occur even though the trade marks or names are wholly different, especially where the goods are likely to be brought by illiterate or uneducated persons, but similarity or dissimilarity of get-up is only one of the factors to be taken into account in deciding whether in all the circumstances there is a likelihood of deception..."
(48 Halsbury's Laws of England, Fourth Edition, para 168) (Para 6) It is clear from the plaint averments and the essential nature and character of the instant suit, that the suit is clearly one in the nature of passing off action governed by Section 105(c) of the Act. It would, therefore, lie only in the District Court. (Para 8) The Act covers all passing off actions, whether based on trade marks or marks or trade names or business names. Indeed, it is difficult to discover any real distinction between a passing off claim as a common law action and a passing off claim as a statutory action. Both are passing off claims and both would stand covered by Section 105(c) of the Act." (Para 9) Considering the provisions of Section 105(c) of the Act and the aforesaid observations made by this Court, I find much force in the submission made by the learned Counsel for the appellants in this regard. The contention of the learned Counsel for the respondents that suit for passing off action lies in the Court of Civil Judge, Junior Division, and not in the District Court, therefore, must fail.
23. Nextly, it is contended by Shri Naidu that Ashok, another member of Saboo family, also deals in similar business since 1977 under the name and style as "M/s. Sabuo Brothers" but the appellants have not taken any action against him till date which indicates that the appellants have some grudge against the respondents and out of the said grudge they filed the present suits for injunction against them and, therefore, this conduct of the appellants disentitles them from claiming the relief of injunction against the respondents. Shri Miglani, the learned Counsel for the appellants, has disputed the aforesaid contention raised by the learned Counsel for the respondents firstly on the ground that Ashok deals in Handloom Cloth business and not in bed sheets, bed covers, mattresses, etc. and secondly, that the appellants intend to take action even against him. In view of this, in my opinion, solely on such ground the relief of injunction cannot be denied to the appellants when they are otherwise entitled for the same.
24. Lastly, it is contended by Shri Naidu, the learned Counsel for the respondents, that though the appellants were aware of all the facts, they had not pleaded them in Special Civil Suit No. 2/2000 filed earlier and, therefore, the Special Civil Suit No. 3/2000 filed by them subsequently alleging the facts which were omitted is barred under Order 2 Rule 2 of C.P.Code. For this he placed reliance on the decisions in K.V. George v. The Secretary to Govt. Water and Power Dept., Trivandrum and Anr., and Canning Mitra Phoenix Ltd, v, Popular Constructions and Anr., . Similarly, it is contended by Shri Naidu that the appellants had not disclosed all the material facts, which indicate that their conduct was unfair and inequitable and, therefore, even on this count they are not entitled for discretionary relief of injunction. For this he placed reliance on the decisions in Prof. A.K. Sanyal v. Dr. Chitta Ranjan Basistha and Ors., and Shajuddin and Ors. v. Nagar Palika Parishad and Anr., AIR 1985 M.P. 252. In my opinion, all these contentions raised by the learned Counsel for the respondents can be decided only after the entire evidence is adduced by the parties and not at this stage, when only a prima facie, case is to be considered.
25. For the reasons stated hereinabove, in my opinion, the appellants/plaintiffs have made out a prima facie case for the issued of temporary injunction as sought and, therefore, the impugned order passed by the learned Additional District Judge rejecting the plaintiffs' applications for temporary injunction needs to be quashed and set aside by allowing the present appeals.
26. In the result, both the appeals are allowed and the impugned order dated 23-10-2000 passed by the learned 5th Additional District Judge, Nagpur below applications (Exh.5) in Special Civil Suit Nos. 2/2000 & 3/2000 is hereby quashed and set aside and the plaintiffs' application for temporary injunction (Exh.5) in both the aforesaid suits are allowed and the respondents/defendants, their servants, agents, dealers, distributors, stockists, representatives and any other person on their behalf are hereby restrained from carrying on business of marketing, selling, stocking, offering for sale, exhibiting, advertising or otherwise dealing in bed covers, bed sheets, furnishing fabrics, mattresses etc., or any other cognate or allied goods under the trade name, beginning with or consisting or comprising the word "Saboo" or any other trade name/firm name beginning with or comprising or consisting of the word 'Saboo' till the final disposal of the aforesaid suits.
27. In the circumstances of the case, there shall, however, be no order as to the costs.
28. At this juncture, Shri Naidu, the learned Counsel for the respondents, prays that the effect and operation of this order be stayed for a period of four weeks in order to enable the respondents to carry the matter in appeal. Considering the facts and circumstances of the case, the aforesaid request made by the learned Counsel for the respondents is allowed. The effect and operation of this order is stayed for a period of four weeks from today.