Bombay High Court
The Atul Products Limited vs V.P. Mehta on 2 February, 2009
Equivalent citations: AIR 2009 BOMBAY 84, 2009 (5) ALJ (NOC) 844 (BOM.), 2009 (2) AIR BOM R 612, 2009 (4) AKAR (NOC) 660 (BOM.), 2009 A I H C 2356, 2009 CLC 1138 (BOM), (2009) 2 ALLMR 524 (BOM), 2009 (2) ALL MR 524, 2009 (2) BOMCR 562
Author: Roshan Dalvi
Bench: Roshan Dalvi
1
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
O. O. C. J.
Suit No.41 of 1980
The Atul Products Limited. .. .. Plaintiff
v/s.
V.P. Mehta, since deceased through
his legal heirs & represent atives :
1A. Shailesh Vinodrai Mehta & ors. .. .. Defenda nt s
Mr.S. Purohit with Ms.Shweta Katvi i/by Dhru & Co. for
Plaintiff.
Mr.N.B . Zaveri with Mr.M.J . Jhaveri i/by Nandlal Kothari &
Sabir for Defendant s.
------
CORAM : SMT.ROSHAN DALVI, J.
Dated : 2 nd February 200 9
JUDGMENT :
1. The Plaintiff carries on business in certain indust rial chemicals. The Plaintiff adopted the word mark "Atul" as well as a trade mark "Atul" for its product s since 1955. The Plaintiff applied for registration of the trade mark "Atul" on 8.11.1962 in Class- 1, Class- 2 and Class- 5 of Schedule- IV to the Trade Marks Act and Rules. The Suit is concerned with the Plaintiff's mark in Class- 1 relating to chemicals. The Plaintiff's trade mark, copy of which is shown in the advertiseme nt issued in the Trade Marks Jour n al, is a symbol in a circle showing the letter "v" in Hindi below which is the entire word "Atul" in Hindi and on the rim of the ::: Downloaded on - 09/06/2013 14:18:05 ::: 2 circumference of the circle are the words "Atul" in Gujarati, English, Urdu and other regional languages separated by 3 dots.
2. The Plaintiff applied for and obtained registration of the word mark "Atul" on and from 1.12.1964 after the relevant inquiries being made by the Trade Marks Registry and the Plaintiff's Affidavits in that behalf. The Plaintiff has not produced the certificate issued by the Trade Marks Registry. However these marks have been renewed from time to time.
The Plaintiff has produced the certified copies of the renewal certificates issued by the Registrar. The last such renewal has been on 1.12.2006. This Suit would be concerned only with the date of the application for the trade mark as well as the word mark and the very first registrations for each of them which are in the years 1962 and 1964, respectively as reflected in the docume nt s of the Trade Marks Registry produced by the Plaintiff.
3. The present Defenda nt s are the heirs and legal represent atives of the original Defenda nt who carried on business as a sole proprietor in the name of Atul Chemicals (original Defenda nt / D efen da n t). The Defenda nt has designed the name of his business Atul Chemicals as an artistic work and has obtained a copyright in respect of the ::: Downloaded on - 09/06/2013 14:18:05 ::: 3 word "Atul" as an artistic work from the Copyrights Office.
The Defenda nt has produced the certified copy of the true extract of the registered copyright dated 13.10.1977 and has produced his artistic work, a copy of which is relied upon by him.
4. It is the Plaintiff's case that the Defendan t has infringed its trade mark. It is the Plaintiff's alternative case that the Defenda nt has sought to pass off the Plaintiff's goods under the word and name "Atul".
ig The Plaintiff has accordingly sought an injunction against the Defenda nt s, their servants and agents from using the Plaintiff's tradema r k / w o r d mark "Atul" in respect of the goods covered under Class- 1, Class- 2 and Class- 5 of Schedule IV to the Trade and Mercha ndise Act, 1958 (the Act) registered in favour of the Plaintiff in respect of the word "Atul" or the trade name "Atul Chemicals". The Plaintiff has also sued for damages but that relief is not pressed. Since the Defenda nt s deal in goods and products covered only under Class- 1, the relief of injunction required by the Plaintiff shall only be considered with regard to the products under Class- 1 traded by the Defenda nt s under the trade name Atul Chemicals.
5. The Defenda nt claims that the word "Atul", being the name of a person and commonly used as such is a generic term for ::: Downloaded on - 09/06/2013 14:18:05 ::: 4 which a trade mark cannot be granted or enforced. The Defenda nt also contends that the word is in respect of a geographical place for which also the trade mark cannot be granted or enforced. The Defenda n t has not applied for cancellation of the Plaintiff's trade mark either before the Trade Marks Registry or before this Court. It is the Defenda nt's contention that whereas the Plaintiff deals in bulk products of industrial chemicals, the Defenda nt deals in what are called "laboratory chemicals" to be supplied to hospitals, laboratories, ig schools and the like in smaller quantities. It is also the Defendant's contention that the Defenda nt deals in only 5 of the products in which the Plaintiff also deals amongst about 180 chemicals in the market. Since the use by the Defenda nt is in a different sector, for a different clientele and in a different quantity, the Defendant claims that the Defenda nt causes no confusion in the market with regard to the Plaintiff's trade mark or word mark and hence cannot be injuncted. The Defenda nt has produced certain corresponde nce between the parties to show that the Defenda nt's use of the trade mark Atul Chemicals has not caused any confusion with the Plaintiff's trade mark. The Defendant has contended that there are number of traders carrying on business in various products under the name "Atul" with regard to that indust ry. These relate to the use of the name "Atul" not only for ::: Downloaded on - 09/06/2013 14:18:05 ::: 5 products under Class- 1 of Sched ule- IV of the Act but for various other products for which the Plaintiff has not sued. The Defenda nt has also contended that the Plaintiff's Suit is barred by limitation or suffers from gross delay in filing this action in law since the Defenda nt has been using the word "Atul" as a part of his trading style since the year 1968 till the filing of the Suit bonafide, lawfully and honestly and to the knowledge of the Plaintiff and the Plaintiff must be taken to have waived or abandone d any right to object to the Defenda nt's trade name. The Defendan t also claims that, in any event, the Defendan t's dealings are for different products of different size and have caused no confusion and that the Defenda nt does not even desire to cause any confusion in the market. It is also the Defendant's case that the Defenda nt maintain s high quality standar d and has established good reput ation in market and has caused no injury to the Plaintiff.
6. Based upon the aforesaid contentions of the parties, the following issues have been framed by Ju stice V.R. Datar (as he then was) which are answered as follows:-
ISSUES (1) Whether the Plaintiff proves that the word "Atul" is not a common dictionary word and / o r common person al name. - (REDRAFTED) ::: Downloaded on - 09/06/2013 14:18:05 ::: 6 (2) Whether the Plaintiff proves that it has exclusive right to use the said word "Atul" as part of trade names. -
YES SUBJECT TO 2 DEFENCES.
(3) Whether the Plaintiff proves that it is the registered proprietor of the trade mark "Atul" and whether the same is valid and subsisting. - YES (4) Whether the Plaintiff proves that the Defenda nt s' adoption of the trading style "Atul Chemicals" is dishonest. - NO (5)Whether the Plaintiff proves that use by the Defendan t s of the trade name "Atul Chemicals" has caused any confusion or deception. - NO (6)Whether the Plaintiff proves that use of the trade mark "Atul" by the Defendan t s has resulted in any confusion.
-DOES NOT COME UP FOR CONSIDERATION.
(7)Whether the Plaintiff proves that the Defenda nt s are not entitled to use the trade name "Atul Chemicals". - NO (8)Whether the Plaintiff proves that the Defenda nt s are not entitled to use the word "Atul" as a trade mark. - NO (9)DELETED (10)Whether the Defendant s prove that they have been openly and continuo u sly doing their business under the trade name Atul Chemicals since the year 1968. - YES (11) Whether the Defendan t s prove that they have been openly and contin uo u sly using trade name "Atul" from the year 1968 till prevented by interim injunction order. - YES, BUT FROM 1977.
::: Downloaded on - 09/06/2013 14:18:05 ::: 7(12)Whether the Plaintiff is estopped, acquiesced from objecting to the use of the trading style "Atul Chemicals" or the trade mark "Atul" by the Defenda n t s. - YES (13)Whether the Plaintiff is disentitled to reliefs on account of delay and laches in filing the Suit. - YES (14)What reliefs ? - AS PER FINAL ORDER
7. It is argued on behalf of the Plaintiff that Issue No.(1) needs to be amended. It is contended that the onus of proof on the Plaintiff in Issue No.(1) is incorrect. Hence the issue is redrafted and answered as follows:-
"Whether the word "Atul" is a common dictionary word and / o r a common personal name". - YES
8. Both the parties have produced copies of the documen t s relied upon by them in separate compilations. Neither of the parties has objected to the production of any of the docume nt s of other party. Both the parties have sought to rely upon and interpret the docume nt s of itself and other party. The docume nt s have not been considered for their admissibility separately. They are, therefore, not separately marked as Exhibits. They shall, therefore, be relied upon considering the description of the docume nt s themselves.
::: Downloaded on - 09/06/2013 14:18:05 ::: 89. The parties have led oral evidence. The Plaintiff has examined two witnesses who are its officers. The Defendan t has examined himself.
10. The Plaintiff has essentially relied upon the applications made to the Trade Marks Registry for the issue of the trade mark as well as the word mark "Atul", the affidavits filed by the officer of the Plaintiff on behalf of the Plaintiff and the registration certificates issued as renewed by the Trade Marks Registry from time to time.
ig The material aspect is the dates of the applications for registration of the Plaintiff's word mark as well as trade mark. The Plaintiff has produced the correspon dence exchanged between the parties with regard to the use of the trade mark prior to the filing of the Suit which forms a chain of corresponde nce admittedly exchanged between the parties.
11. It is the case of the Plaintiff that certain other parties had also tried to infringe the Plaintiff's registered trade mark and hence the Plaintiff has instituted legal proceedings in Ahmedabad City Civil Court and Surat District Court being 2 Suits filed therein and an Appeal therefrom being Regular Civil Suit No.532 of 1977 in the Ahmedabad City Civil Court, Regular Civil Suit No.2950 of 1976 in the Ahmedabad City Civil Court, Regular Civil Suit No.6 of 1977 ::: Downloaded on - 09/06/2013 14:18:05 ::: 9 in Surat District Court and Appeal No.366 of 1978 therefrom. The Plaintiff has relied upon certified copies of those papers and proceedings being judicial records which carry a presu m p tion as to their correctnes s.
12. The reliance by the Plaintiff upon its certificate of incorporation, Articles and Memorand u m of Association of the Company and the ann u al reports is not required and has not been ultimately relied upon in the argume nt s in view of the admitted position ig of the Plaintiff being a limited Company so incorporated and having its own goodwill and sales as reflected in its ann u al reports.
13. The Defendant has relied upon the Birth Certificate of his second son who was born on 9.2.1962 and who was named Atul after whom the original Defenda nt had sought to name his business. The Defendan t has relied upon the Certificates of Registration under the Bombay Sales Act and Shops and Establish me n t s Act which are public docume nt s issued by the said relevant authorities. The Defenda nt has also relied upon certain prices, extracts of telephone directories, advertiseme nt s in respect of the Defenda n t in certain trade journals, list of firms registered with the Registrar of Firms having the name Atul and dealing in various indust ries other than commercial products, two of which deal in chemicals ::: Downloaded on - 09/06/2013 14:18:05 ::: 10 being M/s.Atul Chemical Industries and M/s.Atul Chemical Corporation. The Defenda n t has produced certified extracts from the Registrar of Firms in respect of several of these Companies. The Defenda nt has produced his own certificate of the Copyright Office showing "Atul" as an artistic work and the label showing the said artistic work. The Defenda nt has also relied upon and produced the directory of the Chemical and Alkali Mercha nt s' Association showing, inter alia, the Defenda nt's advertiseme nt s, the extract relating to certain Firms, inter ig alia, being of M/s.Atul Chemicals, M/s.Atul Paints and Chemical Company and Atul Traders.
The Defenda nt has also produced extracts of Chemical Weekly showing, inter alia, the products in which the Defenda nt deals and various copies of advertisement s in various magazines or souvenirs showing firms, inter alia, with the word "Atul". Similarly the Defenda nt has produced the extract of dictionaries dyest uffs, inter alia, of the Plaintiff- Company along with particulars of its telephone number, telex and products that it deals in which relate to dyes. The Defendan t has further relied upon certain corresponde nce between the Plaintiff and the Defenda nt as a part of its business relating to certain trade inquires made by the Plaintiff or its agro chemical divisions for certain goods being the chemicals in which the Defenda nt deals.
::: Downloaded on - 09/06/2013 14:18:05 ::: 1114. Though several docume nt s of the Defendan t are private docume nt s and otherwise required to be proved by direct evidence being copies of certain private magazines, directories, trade journals, etc., the Plaintiff has not taken exception to his production and has cross- examined the Defenda nt upon the documen t s.
15. The interpretation of the docume nt s of both the parties upon their acceptance would, therefore, be required.
16. Issue No.(1) :
It is common knowledge and an admitted fact that the word "Atul" is a proper name of a person and is rather a common proper name. It is a Sanskrit term. Its meaning in English is known to all in this country. The word "Atul" means incompar a ble, unpar alleled or unweighable. In fact, it is an aspect of which judicial notice is required to be taken. Hence under Section 56 of the Evidence Act such fact need not be proved. This aspect is not seriously contested or denied by either party in this Suit. Issue No.(1) is, therefore, answered in the affirmative.
17. Issue Nos.(2) & (3) : The Plaintiff has obtained registration of its trade mark "Atul" shown in a circle with the letter "v" in Hindi as well as the word "Atul" in various Indian languages therein. The Plaintiff has obtained separate ::: Downloaded on - 09/06/2013 14:18:05 ::: 12 registration of its word mark "Atul". There are 3 such separate trade registrations, each relating to Class- 1, Class- 2 and Class- 5 of Sched ule- IV of the Act. It is the Plaintiff's case that it commenced its use of the said trade mark and word mark since 1955. The averment in that regard is made in paragrap h 7 of the Plaint. The Defenda nt has not admitted the said averment in paragrap h 7 of the Written Statement. However there is not much contest between the parties on this score in their evidence. The averment s in paragrap h s 11 and 12 of the Plaint show the applications made by the Plaintiff for registration of the trade mark and the word mark "Atul" on 8.11.1962 and 1.12.1964. The trade mark and the word mark, which came to be ultimately issued by the Trade Marks Registrar, would be effective from the date of the applications. Hence the Plaintiff's registration of the trade mark and the word mark relating to Class- 1 products, with which this Suit is concerned, is from 1962 and 1964. Upon registration, the Plaintiff would be entitled to use the said trade name, the Plaintiff being a registered proprietor of that mark. The Plaintiff would also be entitled to use the word mark "Atul" as a part of its trading name, only subject to the Defendan t's defences with regard to the user of the word as a common dictionary word or a common personal name by various parties, including the Defenda nt and the delay in the Plaintiff's action by allowing the ::: Downloaded on - 09/06/2013 14:18:05 ::: 13 Defenda nt to use the said word for a number of years until the filing of this Suit. Issue Nos.(2) and (3) are answered in the affirmative accordingly.
18.Issue No.(4) : Though the Plaintiff is the registered proprietor of the trade mark "Atul" and the word mark "Atul"
and would be entitled to its exclusive use purs u a n t to its registration, it is the Defenda nt's case that the Plaintiff's application for registration of trade mark and word mark "Atul" itself is obtained by practising a fraud upon the Trade Marks Registry. Though the Defendan t has not applied for rectification of the Plaintiff's trade mark or its cancellation, this aspect is required to be considered only in respect of the fact that the Plaintiff's application is for the trade mark "Atul" and for the word mark "Atul". Judicial Notice of the fact that this is a very common personal name has been taken by the Trade Marks Registry. It was upon the Plaintiff's insistence that it was not a common person al name that the trade mark and the word mark have been allowed. The Plaintiff has, therefore, made itself fall within the mischief of Section 34 of the Act. The Plaintiff took the risk and chance of having other dealers of chemicals, dyes and pharm ace u ticals to adopt the same trade mark or a word mark. The Plaintiff's use is limited to and excepted by the exception contained in Section 34 of the Act. Section 34 ::: Downloaded on - 09/06/2013 14:18:05 ::: 14 runs thus:-
" 34. Saving for the use of name, ad dr e s s or descri p t i o n of goods. - Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of busines s, or of the name, or of the name of the place of busines s, of any of his predeces sors in busines s, or the use by any person of any bona fide description of the character or quality of his goods ."
Therefore, the Plaintiff has to prove that the Defenda nt has used the Plaintiff's trade mark or word mark "Atul" dishonestly and malafide. The dishonest and malafide use by a trader dealing in the said goods would only be shown if the trader has sought to impeach upon the profits or goodwill of registered trade mark holder.
19. It is contended on behalf of the Plaintiff that once the Plaintiff shows that it is the registered owner of the trade mark and the Plaintiff shows that the Defendan t is dealing in the same goods under the same trade mark or word mark, the Plaintiff need show no more. That contention is true with regard to the use of an exclusive trade mark which no other trader can use. Conseque n tly, the use of the name of a person or the place of his business is excepted. Since the Plaintiff's trade mark as well as word mark is only "Atul", ::: Downloaded on - 09/06/2013 14:18:05 ::: 15 without more and since the said word is a very common personal name of males in this country, the bonafide use by the Defenda nt of such word mark would have to be seen by lack of malafides rather than by the mere use of such word which can be taken to be an infringement of the Plaintiff's word mark. The Defenda nt's Advocate put it rather succinctly when he gave the illustration of the word "Infosys" to Court to bring home the point that a trade mark so distinctive and unique, can be taken to be used dishonestly by a mere use without more, but a word mark such as "Atul"
would not fall within the mischief of the said rule if it is shown to be used bonafide by a person as his own name or the name of the place of his business. In this case, it is the name of the original Defendan t's younger son, born on 9.2.1962 as evidenced by his birth certificate, produced by the Defenda nt.
20. The Plaintiff has averred about the use of the mark "Atul"
since 1955. The Plaintiff has not produced any document a ry evidence to subst a n tiate that averment. The Plaintiff has applied for registration of the trade mark only in 1962 and of the word mark in 1964. The Defenda nt claims to have used the mark "Atul" as a part of the Defendan t's trade mark since 1968. The Defendan t has also not produced any docume nt s to show the commence me nt of the user of the ::: Downloaded on - 09/06/2013 14:18:05 ::: 16 said trade name since 1968 or thereabou t s. However the fact remains that since the word mark "Atul" is a common personal name of males and is the Defendant's son's personal name also, the use by the Defenda nt cannot be termed malafide.
21. The Plaintiff has simplicitor produced ann u al retur n s of the years 1988, 1999 and 2000 to show its sales. The user is since the 1960s by both the parties. Mere production of ann u al retur n s of the aforesaid years cannot show any malafide use by the Defendant. The Plaintiff has not even sought to show how the Plaintiff's profits and sales have come to be affected by the Defenda n t's use of the said word as a part of the Defenda nt's trade name. Conseque n tly, no malafides can be imputed and hence conversely the Defenda nt's use is seen to be bonafide.
22. The Defendant has not sought to use the Plaintiff's trade mark. The Defendan t cannot do so. The Plaintiff, who is the registered holder of the trade mark, in the form described above would be entitled to use it exclusively in such form.
However the word mark "Atul" falls within the parameters of Section 34 and is exempted from the rigours of infringement by its use. Consequen tly, the Defenda nt's adoption of the trading style "Atul Chemicals" cannot be taken to be ::: Downloaded on - 09/06/2013 14:18:05 ::: 17 dishonest.
23. The Plaintiff has relied upon the judgment s in cases which have the use of the trade marks of registered owners per se is held to be dishonest Ruston and Hornby Ltd. v. Zamindara Engine ering Co., AIR 197 0 SC 164 9 , Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceu t i c al Laboratories, AIR 196 5 SC 980 and Ramdev Food Product s Pvt. Ltd. v. Arvindbhai Rambhai Patel & ors., AIR 20 0 6 SC 33 0 4 .
24. The case of Kirloskar Diesel Recon Pvt. Ltd. vs. Kirloskar Proprietary Ltd. & ors, AIR 199 6 Bombay 149 must be considered if only for its non- application. In that case an employee of the Defenda nt- Company, which is famous, whose surn a m e was Kirloskar, started another Company bearing the name Kirloskar as a part of its corporate name. It was held that the word "Kirloskar" had acquired a secondary meaning and had almost become house hold word. The Defenda nt was restrained from using his surn a m e in its corporate name upon it being held by this Court that the saving under Section 34 of the Act which applied to the name of a person was held not applicable to the corporate name which was specifically given.
::: Downloaded on - 09/06/2013 14:18:05 ::: 1825. In the case of Poddar Tyres v. Bedrock Sales Corporation Ltd. & anr., AIR 199 3 Bombay 237 , the question of bonafide use under Section 34 of the Act came up for consideration. The use of the Defenda nt's name was contended to be an exception to the general rule relating to the rights of registered owners of trade mark under Section 28 of the Act. In that case, it was held that the Defendan t has not adopted the word "Bedrock" of which the Plaintiff was a registered owner bonafide as a part of the name of the Defenda nt's Company. ig Though we are not concerned with the facts of that case which drove the Court to conclude the absence of bonafides, the Defenda nt, in this case, claims the use of the word "Atul" being the name of his younger son. The Defenda nt has taken upon himself to discharge the onus of proving the use purs u a n t to his son's birth by way of his personal name as shown in his birth certificate. The user of the trade name by the Defenda nt has been without any reference to the Plaintiff's word name and trade mark which were then in their infancy, they having been acquired but 4/6 years before the original Defenda nt commenced his business at- least in 1969 as reflected in the Defenda nt's certificates issued under the Sales Tax Act and the Bombay Shops and Establish me n t s Act. In view of such a trade mark, the Defenda nt's case that it was the Defenda nt's personal name (which is the name of his younger son) due to which ::: Downloaded on - 09/06/2013 14:18:05 ::: 19 he adopted that trade name, must be taken to be bonafide.
Though the Plaintiff has sued 2 other parties and entered into Consent Terms with one of them and obtained an order upon the accepta nce of the Plaintiff's trade mark by another party, those orders also cannot be taken as precedent s to determine the Plaintiff's case against the Defendant herein.
The Defenda nt's opposition on that ground is, therefore, required to be independe n tly judged under Section 34 of the Act. Hence the use of the trading style Atul Chemicals by the Defenda nt is not shown to be dishonest.
ig Hence Issue No.(4)
is answered in the negative.
26. Issue Nos.(5) & (6) : The Plaintiff need not prove the
confusion caused by the Defenda nt upon use of the
Plaintiff's trade mark as the Plaintiff is the registered user.
The Plaintiff needs to show confusion caused by the Defenda nt's products in the minds of the Plaintiff's customer s etc. only in a passing off action. The Plaintiff's main case of infringement of its trade mark is based upon the dictu m enunciated in the case of Ruston (supra) as also Durga Dutt Sharma (supra) wherein the distinction between the infringement action and a passing off action and the requireme nt of proof of confusion has been laid down. In an action for infringement where the Defenda nt's trade mark is identical with the Plaintiff's trade mark, the Court would not ::: Downloaded on - 09/06/2013 14:18:05 ::: 20 inquire whether the infringement was likely to deceive or cause confusion. If the Defenda nt's mark is similar to the Plaintiff, it would require to be proved as in a passing off action. When the two marks are identical, no further questions arise - infringement is made out. When the two marks are not identical, the Plaintiff would have to establish that the Defendan t's marks so resemble the Plaintiff's as is likely to cause confusion. In this case, the Defenda nt has not used the Plaintiff's trade mark at all. Hence there is no confusion on that score.
27. With regard to the trade name "Atul Chemicals", the first word "Atul" is the only similar word. The Defendant uses it differently. The style of that word is as in the Defenda nt's label for which the Defenda nt has obtained a copyright as an artistic work as shown in the certificate of the Copyright Office produced by the Defendan t. So far as the word mark of the Plaintiff is concerned, the certified copy of the extract produced by the Plaintiff shows only the 4 English alphabets A T U L. Hence the trade name or trading style Atul Chemicals is not seen to be resembling that of the Plaintiff's word mark. The word "Atul" in English in the Defenda nt's label is also not seen to be similar to the word name "Atul" used by the Plaintiff. In fact, the Plaintiff has not shown by any docume n t a ry evidence contained in its letter or visiting ::: Downloaded on - 09/06/2013 14:18:05 ::: 21 cards how the word mark "Atul" is actually used except for the 4 English alphabet s.
28. The Plaintiff applied as aforesaid for registration of the trade marks and the word marks. The application was for all the chemicals in Class- 1 of Sched ule- IV of the Trade Mark Rules. Since the expression "chemicals" in Class- I is very wide and includes as one of its items only the chemicals used in indust ry, which the Plaintiff deals in, the Trade Marks Registry required ig the Plaintiff to amend the application to restrict the specification to only "chemicals used in industry". It is the Defenda nt's argumen t that this would exclude the laboratory chemicals which are used in hospitals, schools, etc. and which are essentially not for bulk sales as against the industrial chemicals which, being the material used in production of other products, are essentially bulk sales. It is the Defenda nt's contention that the Defendant is not even dealing in all the chemicals that the Plaintiff is dealing in. There are only about 4/ 5 chemicals which both the parties deal in. In the evidence of P.W.2 , the Defenda nt has shown that only one chemical out of the list of chemicals that the Defenda n t deals in viz. Potassi u m Hydroxide Flakes is the common chemical product dealt by both the parties.
::: Downloaded on - 09/06/2013 14:18:05 ::: 2229. The cross- examination of the Defenda nt's witness with regard to the few num ber of chemicals being common chemicals upon the Defenda nt's examination- in- chief in paragrap h 19 is in respect of the chemicals used in laboratories, hospitals and clinics. It shows that the Defenda nt deals in small quantities and executes orders for trading and repacking chemicals not used in industries. However, further examination shows that if the Defendant receives an order for a big quantity, he would natur ally execute it. This big quantity also is not an order for indust rial chemicals. Hence though the Defendan t deals in a few common chemicals, he targets a completely different market.
30. Though the document s relied upon by both the parties in their respective compilations have not been opposed and both the parties have relied upon the docume nt s to interpret them, a copy of Fax message dated 23.8.2002 sought to be relied upon by the Plaintiff in the evidence of P.W.2 has been opposed by the Defenda nt. Though no mention was made of the said fax in the argume nt, it has been relied upon as the Plaintiff's documen t in the written sub missions in an effort to show that the Defenda nt's trade name Atul Chemicals caused confusion in the market. The evidence of P.W.2 shows that the Fax dated 23.8.2002 was received from one ::: Downloaded on - 09/06/2013 14:18:05 ::: 23 M/s.NEC Engineers Private Limited, New Delhi by the Plaintiff. It was addressed to Atul Chemicals. The Defenda nt carried on business in this trade name. It also contained the address of the Defenda nt. It was a business enquiry letter. Though the fax was received, the original fax was not produced. It could have been produced as a docume nt admissible in evidence as per ruling in Bishwana t h Rai v. Sachidanand Singh , AIR 197 1 SC 19 4 9 @ 195 3 . The copy of the fax is not admissible in evidence. It is opposed by the Defenda nt. The copy annexed to the Affidavit of P.W.2 does not show fax num ber of the sender or the receiver which gets autom atically printed. The trans mis sion slip is not produced. The date and time of the fax cannot be seen. The cross- examination of P.W.2 shows that he could not say whether the fax was received on the Plaintiff's fax number, the Defenda nt's fax num ber or the fax number of any other party and that mistakes in trans mis sion of messages to wrong number s can occur in the normal course of business from the sender's office trans mitting the messages which are not possible to know. The Plaintiff has not shown any endorseme n t of any action taken on the message. No explanation as to why the original is not produced is given. The fax message, if any, was received well after the filing of the Suit. The confusion, if at all, is not required to be seen to be with the Plaintiff, but ::: Downloaded on - 09/06/2013 14:18:05 ::: 24 with the customers of the Plaintiff and the public in the market. The fax does not show any confusion caused to any other customer or in the market. The confusion, if at all, is qua the Plaintiff. Hence though the copy of the fax is not a proved docume nt and need not be looked at, its evidentiary worth has been considered since it has been smuggled into the Plaintiff's written argume n t s. In the absence of any confusion shown by the Plaintiff caused by the Defenda nt in the market by way of any illustration of any person having taken the Defenda nt's product as that of the Plaintiff, the use of the Defenda nt's trade name Atul Chemicals is not seen to have caused any confusion in the minds of the public or the customer s of the Plaintiff who may be confused as to the product s of the 2 producers or dealers and take one for another. Hence, whereas Issue No.(6) does not even come up for consideration, issue No.(5) is answered in the negative.
31. Issue No.(7) : In view of the answer to Issue No.(5), the Defenda nt s cannot be held not entitled to use their trade name Atul Chemicals. Hence Issue No.(7) must be answered in the negative.
32. Issue No.(8) : The Defenda nt is seen not to have infringed the Plaintiff's trade mark which is in a circle as described ::: Downloaded on - 09/06/2013 14:18:05 ::: 25 above. The mere use of the word "Atul" as the Defenda nt's mark on its label, for which the Defenda nt is the registered owner of the copyright as an artistic work, cannot be restrained. The Defenda n t s cannot be restrained from using the word "Atul" in their trade name or as their trade mark. Hence Issue No.(8) is also answered in the negative.
33. Issue No.(10) : The original Defendant has claimed to have commenced his busines s under the trade name Atul Chemicals since 1968. ig The Defenda n t has produced the registration certificate under Section 22 of the Bombay Sales Tax Act dated 18.11.1969 and the registration certificate under the Bombay Shops and Establish me n t s Act from 1969. Both these registration certificates show the aforesaid trade name of the Defenda nt s. Upon these public docume nt s, which are not refuted and which cannot be, issue No.(10) is answered in the affirmative.
34. Issue No.(11) : The Defendan t's use of the trade mark "Atul" is claimed to be from 1968. The registration certificate issued by the Copyrights Office to the original Defenda nt is dated 13.10.1977 under registration No.A18569 / 7 7 . The use by the Defenda n t s of the said name as the artistic work under the Copyright Act is not otherwise shown by any docume nt a ry evidence. Though therefore, the use by the ::: Downloaded on - 09/06/2013 14:18:05 ::: 26 Defenda nt s of the said trade name or mark "Atul" is seen from 1977, it cannot be seen from 1968. Issue No.(11) is answered accordingly.
35. Issue Nos.(12) & (13) : The Defenda n t contend s that the Plaintiff is estopped from objecting to the Defenda nt's trade name of Atul Chemicals or their trade mark "Atul", which is rather different from the Plaintiff's trade mark, on the ground of the Defenda nt's user since 1968 and the belated action of the Plaintiff. The Plaintiff contend s that it had no knowledge of the Defenda nt s' user until immediately prior to the Suit when the Plaintiff issued a legal notice to the Defenda nt s. The various books, directories, booklets, broch ure s, magazines, etc. relied upon by the Defendant s show that the parties in chemical business would take recourse to and have access to each of them. The knowledge of the use of such trade name would, therefore, be imputed upon the Plaintiff.
36. The Plaintiff has initiated legal action for breach of the infringement of its trade mark against 2 Firms or Companies M/s.Atul Dyes and Atul Chemical Industries Ltd. in the District Court, Surat and the City Civil Court, Ahmedaba d. The Plaintiff was, therefore, desirous of protecting its trade mark even against others. By virtue of the common name ::: Downloaded on - 09/06/2013 14:18:05 ::: 27 "Atul", the Plaintiff has met with such confrontation more than once. The Plaintiff must, therefore, be taken to have been put on guard. The Plaintiff must be taken to have read the Trade Jour n als, magazines, etc., inter alia, governing the chemicals.
37. The Plaintiff has sued as late as in 1980. The only averment with regard to the Plaintiff's belated action for the loss sought to be caused to the Plaintiff's reput ation and goodwill by the Defenda nt's action of infringement of the Plaintiff's trade mark as well as passing off by the Defenda nt's trading style is contained in paragrap h 23 of the Plaint in which the Plaintiff has averred that it has "recently" come to know that the Defenda nt carries on business under that name without any further particulars relating to the date of the knowledge of the Plaintiff.
38. The Defenda nt has produced certain letters of the Plaintiff making certain trade inquiries, inter alia, from the Defenda nt. One such letter is dated 16 th Februa ry 1987 addressed to the Defendan t showing the Plaintiff's interest in the purcha se of certain chemicals mentioned therein and requesting the Defenda nt to let the Plaintiff know whether the Defendant can supply the same and if so, to quote the price, specification and other terms and conditions. Similarly ::: Downloaded on - 09/06/2013 14:18:05 ::: 28 the Plaintiff's agro chemical division has addressed a letter dated 1.9.2000 to the Defenda nt stating that the Plaintiff underst a n d s that the Defenda nt is a chemical dealer and the Plaintiff desired to know whether the Defenda nt would be interested in buying some of the items of chemicals mentioned in that letter. It has been the Plaintiff's evidence that the letters are trade inquiries made to all the traders without knowledge of their names by the marketing division of the Plaintiff which does not impute knowledge of the Defenda nt's use of the said trade name upon the Plaintiff.
The cross- examination of the Plaintiff's witness Jayesh Desai, who is the Plaintiff's Law Officer, shows that these are only business inquiry letters.
39. The Plaintiff has also admittedly entered into the said corresponde nce with the Defenda nt amongst others, be it merely as trade inquires. The Plaintiff cannot be allowed to simplicitor throw up its hands to state that it had no knowledge of the Defenda nt s' contin uo u s use for many years prior to the Suit in view of the Defenda nt's commenceme nt of business at- least from 1969 in the same trade name and the Defenda nt's copyright since 1977.
40. The Defenda nt has also produced the invitation of the Plaintiff showing the Plaintiff's trade mark "Atul" for its silver ::: Downloaded on - 09/06/2013 14:18:05 ::: 29 jubilee year celebration in an envelope marked to the original Defenda nt. This shows knowledge of the Defenda n t's business and the Plaintiff's acquiescence to the use of the trade name by the Defendant. Hence the Plaintiff must be estopped from objecting to the use of the trading style Atul Chemicals or the trade mark "Atul" by the Defendan t s.
Hence Issue Nos.(12) and (13) are answered in the affirmative.
41. Issue No.(14) : The Plaintiff's registered trade mark "v" and "Atul" in a circle is not infringed by the Defenda nt s. The Plaintiff's word mark "Atul" is a part of the Defenda nt's artistic work in use since at- least 1969, about 11 years prior to the Suit. The Plaintiff has not shown any damage suffered by the Plaintiff to its reput ation, profits or goodwill by the use of the said trade name. The Defendant's use is seen to be bonafide and adopted only upon the birth of his son by that name. The name is even otherwise a common personal name. For want of any confusion caused by the Defenda nt or any lack of bonafides in the use of the name, the Defenda nt s cannot be injuncted from using the word "Atul" as the Defenda nt s' trade name or style as has been done by the Defenda nt s. Hence, the following order:-
ORDER The Suit is dismissed. No order as to costs.
(SMT.ROSHAN DALVI, J.) ::: Downloaded on - 09/06/2013 14:18:05 ::: 30 ::: Downloaded on - 09/06/2013 14:18:05 ::: 31 ::: Downloaded on - 09/06/2013 14:18:05 :::