Calcutta High Court
Paresh Chandra Saha vs Prakash Chandra Das & Anr. on 13 October, 1999
Equivalent citations: (2000)1CALLT388(HC)
Author: S.B. Sinha
Bench: Satyabrata Sinha
JUDGMENT S.B. Sinha, J.
1. This appeal is directed against an order dated 23.2.99 passed by 3rd Additional District Judge, Barasat, North 24 Pgs. In Title Suit No. 1/99 whereby and whereunder the said learned Judge rejected applications for Injunction filed by both the plaintiff and the defendant purported to be under Order 39 Rules 1 and 2 of the Code of Civil Procedure.
2. By reason of the said order the learned trial court has also disposed of an application under Order 39 Rule 4 of the Code of Civil Procedure.
3. The plaintiff is the appellant. He filed the afore-mentioned suit, inter alia, for the following reliefs :--
"(a) in preliminary from for accounts of all profits made by the defendant from the sale of the goods under the impugned trademark and/or impugned pouch design by the defendant and thereafter on enquiry final decree be passed :
(b) ..... declaration that the plaintiff is exclusively entitled to use the trade name "P.C. Saha & Co.", the word "HOME" as well as the pouch design as shown in annexure 'A' hereto including the get up and colour scheme in respect of washing powder to the exclusion of others Including the defendants :
(c) ..... permanent Injunction restraining the defendants, whether by themselves, their partners, employees, servants, agents or otherwise and each of them whosoever from passing off or Intending to pass off, or causing, eanabling or assisting others to pass off the said trademark and pouch design shown in annexure 'A' hereto Including the get up and colour scheme or any colourable Imitation thereof or by any other means or manner whatsoever, in respect of washing powder."
4. In the plaint as also in the application for Injunction the plaintiff. inter alia, alleged that the plaintiff has been using continuously and extensively the trade mark 'Home' being the owner of the property thereof since 1990 and he had applied for registration of the said trade mark under the provlson of the Trade and Merchandise Marks Act, 1958 which is still pending. According to the plaintiff, the gross turnover of the said washing powder had been to the tune of Rs. 40,000/- to Rs. 45,000/- and in the current year the turn over is about Rs. 1.5 lakhs. It was alleged that in the month of September, 1997 it came to learn that the defendant No.1 had been marketing under a pouch consisting of the trade mark of plaintiff and at selected places it has been using even the trade name 'P.C. Saha and Co.' used by the plaintiff, in respect whereof an enquiry was caused to be made and it was detected that the defendant No. 1 has been using the same. It is stated that the defendant No.1 has business connection with the defendant No.2 who Joined hands with him and by selling washing powder appearing a similar get up and design and trade mark of him and the said counter-felting and falsification of his trade mark by the defendants were solely as a dishonest all Illegal Intention of falsifying trade mark of the plaintiff and passing of the spurious products of inferior qualify of the defendant. It has been stated that although the defendant had been using the word "Super" but the said word has been printed in very small prints above the word 'Home'.
5. The defendants in their application under Order 39 Rule 1 and 2 of the Code of Civil Procedure stated that the defendant No.2 and the plaintiff are brothers. Ram Prasad Saha, their father, had been carrying on the said business, who died on 21.9.1970 and they are displaced persons from East Bengal. The defendant No.2 was carrying on business under the name and style as "R.C. Saha and Co." using an abbreviation as 'R.S' under the brand and trade name 'Star' for sale of the products of Soap and Barley manufactured as a cottage industry, Allegedly the said defendant having devised a formula for manufacturing detergent power had been marketing the same under name and trade mark 'Home' and selling on an artistically designed "Flying Eage" distinguished by the word "R.S" for about 18 years. In the year 1982 the said defendant allegedly made certain improvements to his product and since then had been selling the said improved product in pouches specially designed with distinctive colour and get up in the said trade name 'Home' and putting distinctive and distinguishing "Super" at the left corner of the top of the said brand name. In the year 1983 the said establishment for the said product was registered under the West Bengal Shops & Establishments Act. The defendants claimed themselves to be absolute owners of the said business. It is the case of the defendant that in fact in 1997 they discovered that the plaintiff commenced the business under the name and style as 'P.C. Saha & Co.' and started manufacturing and selling while washing powder in immitation with the product of the defendants under the same brand name 'Home' and that the said trade mark of "Flying Eagle" and was passing off the said product. A criminal case was also instituted by the plaintiff against the defendant. The defendant by his letter dated 23.7.98 addressed to the Registrar of Trade Marks lodged protest to the purported application for registration of trade mark by the plaintiff and also filed an application therefor.
6. The learned trial Judge upon considering the provisions of section 27(1) of the Trade and Merchandise Marks Act, 1958 as also some decisions before him come to the conclusion that as regard the period of user no paper had been produced by either of the parlies to show as to the date from which date such user of the trade name was being done by either of them by way of manufacturing and marketing the same. The learned trial Judge noticed that the defendant in his application has enclosed a certificate granted to him on 12th April, 1983 under the West Bengal Shops and Establishments Rules. 1964, which in his opinion was not a proof of markeling the said detergent powder under the said brand. The learned trial Judge, therefore, held that keeping in view the fact that as regard the subject mailer there was no proof of prior user, he refused to pass any order of injunction in favour of either of the parlies.
7. Mr. Pratap Chatterjee, the learned counsel appearing on behalf of the appellant, infer alia, had produced before us various pouches to show that how the same had been changed from time to time and similar pouches had been used by the defendants. According to the learned counsel, the learned trial Judge erred in holding that no order of Injunction could be granted only on the ground that the plaintiff had not got the trade mark registered. Strong reliance in this conneclion has also been placed upon a purported alumina mark. The learned counsel would urge that the learned trial Judge completely erred in passing the Impugned order without taking Into consideration the ingredients of a passing off action. Our alientlon has been drawn to the statements made in paragraph 3 of the affidavit-in-reply filed by the defendant No.2 to the affidavit-in-opposition filed by the plaintiff wherein, inter alia, it has been stated :
"Assuring but not admitting that my signature being upon annexure 'A' to the Opposition with full knowledge and own volition I even then the following queries arose therefrom :--
(a) if at all there was any existence of the partnership firm namely, M/s. S.R.P Saha Industries, even then the letter may indicate about the involvement of defendant No. 1, Prakash Chandra Das or of the Paresh Chandra Saha. In any event at any period of time no partnership business was created between myself and the defendant No. 1 as alleged.
(b) "Home Washing Powder" cannot be the same or identical to "Super Home White Washing Powder", Moreover, if at all there was any undertaking given by me as alleged in annexure 'A' to the Opposition, the undertaking appears to be limited only to the extent of non-user of same formula for production of detergent Washing Powder but act not to the user of name "Home".
(c) Ramesh Chandra Saha being one of the partners as alleged in annexure 'A' to the Opposition, without consent of other partner/ partners, under what authority Suo motu could transfer and/or handover the alleged three items upon the hand of the plaintiff, Inasmuch as without consent of the other partner to the effect the contents of the alleged annexure 'A' to be regarded as void one, and not binding upon myself in any way. Curiously, the said annexure 'A' remained silent under what circumstances and/or considerations and/or reasons the defendant No.2 handed over the alleged three Items upon the hand of the plaintiff."
8. The learned counsel submits that the signature bears thereupon appears to be the signature of Ramesh Chandra Saha, but the writings in the body written by some one, which may be of Sri Nani Copal Saha, the husband of the sister of both the plaintiff and defendant No.2. The writings thereupon was at a stretch and bears no penning through if correction, from which it can safely be presumed that writings were drafted earlier and then subscribed thereupon motivatedly."
9. It is submitted that evidently, the denials made by the respondents are vague which goes to show that the claim of the plaintiff is correct- Strong reliance has also been placed upon a purported undertaking made on or about 21st May, 1975 which had allegedly been notarised on 11th June, 1998, the translation whereof reads thus :--
"I, the undersigned Sri Ramesh Chandra Saha, as one of the partners of M/s. R.P. Saha Industries, do hereby acknowledge Sri Paresh Ghandra Saha as the sole proprietor of the trademarks Home Washing Powder, Madhu and P.S with effect from 21st May, 1975. Sri Paresh Chandra Saha, will be the sole proprietor of the aforesaid three Items with effect from today. I will not hereafter manufacture any of the aforesaid three items and if 1 do, the same should be treated as Illegal. Further, I will not claim any right, title and Interest in respect of the said items and if I do, the same would be illegitimate."
10. It was submitted that the learned trial Judge erred in not taking into consideration the fact that the nature and extent of business is not a relevant consideration and that no action can be taken if mark is not registered. The submission of Mr. Chatterjee was that as only the word 'Super' in small print has been used, the same by Itself would not be a ground for not granting Injunction and in support of the said contention reliance has been placed upon in and an unreported decision of this court in M/s Saha & Roy Rubber Industries & Ors. v. Khadim Shoes Put. Ltd. & Ors. (F.M.A.T No. 1013 of 1998) disposed of on 31.7.98, it was further submitted that in an action of passing of an order of injunction should be granted automatically.
11. Mr. Kanan Kumar Ghosh, the learned counsel appearing on behalf of the respondents, on the other hand, submitted that prior to grant of ad-interim injunction on 16.3.98 the respondent had been using the said brand continuously. As regard purported notarised letter it was submitted that the genuineness thereof had been questioned before the learned trial Judge as also before this court. It has been pointed out that the said letter was not annexed with the plaint or the application for Injunction and had for the first time been annexed with the reply to the affidavit-in-opposition and, thus, no reliance can be placed thereupon as the same had specifically been denied and disputed. It has been pointed out that a specific stand has been taken that a fraud had been practised upon the court by using the said document.
12. The law as regard the grant of injunction, in a passing off action is well known. While the plaintiff proves that Infringements of a trade mark which has been registered under the Trade and Merchandise Act has been committed as a result whereof he has a right to use it exclusively, he is entitled to temporary order of injunction. However, the same cannot be said in a passing off action. Acquiescence on the part of the plaintiff and/or user by the defendant of the same brand for a long time, in a relevant factor and upon consideration thereof an Injunction should not be granted. While granting such an injunction the reputation of the company of which some times a Judicial notice can be taken, would be a relevant consideration.
13. In M/s. Saha & Roy Rubber Industries (supra), one of us S.B. Sinha, J) speaking for the Division Bench observed :--
"The trade license or other licenses granted by different companies is of no consequences for the purpose of adjudication of the dispute at the stage. The fact remains that there is no evidence that the Appellants had been manufacturing and marketing the goods in the same manner as is sought to be done by reason of the advertisement published in Bartaman.
It further appears that prima facie the appellants had been using logo and sticker which are deceptibly similar to logo which is registered under the Copyright Act and the sticker user by the plaintiff respondents for a long time."
14. Upon consideration of the decision of the Supreme Court in Amrttdhara Pharmacy v. Satya Deo Gupta. , Consolidated goods Corporation v. Brand on and Co. Private Ltd- and Smt, Vinnay Chawla v. M/s. Chandomama , it was held :--
"For the purpose of grant of a temporary order in an action for passing off, the plaintiff need not in general show a strong prima facie case. The prlma facie case that is required to be shown is a case that will avoid the acting being struck out as frivolous or vexatious. Injunction is granted so as to enable the court to stop the infringement without delay."
15. It is also a settled principles of law "nobody has a right to represent his goods as the goods of somebody else and sell it in the market for his own aggrandizement." However, 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 National Garments Kaloor, Cochin v. National Apparels, Ernakulam, Cochin .
16. However, there cannot be any doubt whatsoever that the principles of acquiescence has a great role to play.
17. It is, therefore, not correct to contend that the plaintiff is entitled to an Injunction as a matter of course. The plaintiff in an action for Infringement of trade mark or passing off, must establish a prima facie case showing :--
"(a) he (the plaintiff) has been using its trading style and trade mark for quite a long period and continuously, whereas the defendant has entered into the said field only recently;
(b) there has not been much delay in the filing of the suit;
(c) the goods of the plaintiff have acquired a distinctiveness and are associated in the mind of the general public as goods of the plaintiff;
(d) nature of activity of the plaintiff and the defendant is same or similar.
(e) the goods of the parties with which the trade mark of the plaintiff is associated are some and similar;
(f) the user of the said trade mark or trade name by the defendant is likely to deceive or cause confusion in the public mind and Injury to the business reputation of the plaintiff:
(g) the sphere of activity and the market of consumption of the goods of the parties are the same; and
(h) the customers of the plaintiff, inter alia. Include uneducated, Illiterate and unwary customers who are capable of being decfeved or confused or misled."
18. Furthermore, for the purpose of grant of injunction deceptive similarity is one of the main criterias.
19. Keeping in view the aforementioned principles of law we are of the opinion that there does not exist any clear proof that the plaintiff had been using the said trade mark 'Home' for a long time. Admittedly, the plaintiff in his plaint or his application for Injunction did not plead that the defendant No.2 had disclaimed his right to use the said mark. In fact, the plaintiff-appellant averred :--
"That this defendant No.2 and I were partners, M/s. R & P Saha Industries and used to manufacture, Inter alia, washing powder under the trademark HOME. The said partnership firm was dissolved on 21st May, 1975 and the defendant No.2, on 21st May, 1975 had undertaken. In form of an affidavit, not to manufacture any product under the trademark "HOME" and relinquished his right over the said trademark. He also declared that any production of white washing powder under the trademark "HOME" by him, in future, would be regarded Illegal. A copy of the said undertaking by defendant No.2 dated 21st May, 1975 is annexed hereto and marked with the letter "A".
20. However, although the said purported agreement was allegedly entered into which is in the vernacular language, the translation whereof had been quoted hereinbefore is dated 21st May, 1975 the same was produced before the 'Notary' only on 11th June, 1998. The purported Notarial Certificate states :
To all to whom these presents shall come, I, Tapan Das duly appointed by the Central Government as a Notary and practising within the city of Calcutta & 24 Parganas, Union of India do hereby certify that the paper writings collectively marked 'A' annexed hereto hereinafter called the paper writings. 'A' are presented before me by the executant/s."
21. Admittedly, therefore, the said agreement cannot be taken Into consideration as apart from the fact that the genuineness thereof had been seriously denied and disputed by the defendant, the defendant No.2 did not execute the said document before the Notary in terms of the provision of the Notaries Act, and, thus, the said purported Notarial Certificate has no value in the eye of law.
A bare perusal of the said certificate would show that any Incorrect statement had been made therein that the said certificate was in relation to an affidavit although as notice here inbefore, the same was in relation a purported unilateral agreement.
22. A bare perusal of the purported agreement goes to show that the defendant No. 2 was a partner of M/s. R.C. Saha & Co.. There is no contemporaneous documents to show that the said partnership was dissolved as a result whereof the plaintiff became the sole proprietor of the trade mark "Home Washing Powder." it does not stand to reason as to why the said purported certificate dated 21.5.75 was notarised only on 11.6.98. The plaintiff, therefore, had not been able to show that he had been using the trade mark prior in point of time to the Impugned user of the defendant.
23. In Rajendra Sahoo v. Ganeswar Swain , D.P. Mohapatra, J (as His Lordship then was observed :--
"In the present case it has been found by the trial court on the materials on record, and in my view rightly, that neither of the parties had registered his trade mark under the Trade and Merchandise Marks Act, 1958 entitling him to exclusive user of the trade mark. Therefore, the plaintiffs suit cannot be construed to be one for Infringement of the trade mark, it is indeed an action against passing off by the defendant." The court noticed a decision of Bombay High Court in Hiralal Parbhudas v.
Ganesh Trading Co. wherein the principles have been summarised in the following term :--
"(a) What is the main idea or salient features;
(b) Marks are remembered by general Impressions or by some significant detail rather than by a photographic recollection of the whole;
(c) overall similarity is the touchstone,
(d) marks must be looked at from the view and first impression of a person of average Intelligence and Imperfect recollection,
(e) overall structures phonetic similarity and similarity of ideas are important and both visual and phonetic tests must be applied,
(f) the purchaser must not be put in a state of wonderment,
(g) marks must be compared as a whole, microscopic examination being impermissible,
(h) the broad and silent features must be considered for which the marks must not be placed side by side to find out differences in design, and
(i) overall similarity is sufficient. In addition, indisputably must also be taken Into consideration the nature of the commodity, the class of purchasers, the made of purchase and other surrounding circumstances."
24. In that case having arrived at a finding of fact that the plaintiff had been using the said trade mark prior in time an order of Injunction had been granted.
25. Thus, each case must be Judged on its own facts. In the Instant case, as the plaintiff had failed to prove earlier user in point of time and further has made statements which ex facie does not appear to be correct, the conduct of the plaintiff also stands in his way in obtaining an order of injunction as he does not appear to have approached the court with clean hands. Furthermore, if such a document was in possession of the plaintiff, there was absolutely no reason as to why the same would not be pleaded in the plaint or in the application for injunction. It is true that plaintiff may not plead evidences but in an action for passing off it was obligatory on his part to plead and prove that facts as an order of Injunction has to be passed on the basis of the affidavit evidence.
26. The learned trial Judge although may not be correct in making an observation that the plaintiff having not been able to show that his trade mark has been registered is not entitled to any order of injunction; we are of the opinion that keeping in view the aforementioned facts and circumstances of this case no case had been made for Interfering with the Impugned order. However, the suit, is directed to be disposed of expedi-tiously and preferably within a period of two months from the date of communication of this order.
27. The views expressed by us are only prima facie views and shall not prejudice either party. The parties hereto shall be entitled to lead all such evidences as may be available to them in law and the court shall dispose of the such in accordance with law and uninfluenced by any conclusions or the observations made hereinbefore.
This appeal is dismissed with the observations mentioned hereinbefore.
In the facts and circumstances of this case there will be no order as to costs.
M.H.S. Ansari, J.
I agree.
28. Appeal dismissed.