Delhi High Court
M/S. Modi Threads Limited vs M/S. Som Soot Gola Factory And Another on 4 December, 1990
Equivalent citations: AIR1992DELHI4, 1992(22)DRJ24, AIR 1992 DELHI 4, 1992 CHANDLR(CIV&CRI) 280
ORDER
1. M/s. Modi Threads Limited, a company incorporated under the Indian Companies Act, has brought the suit seeking permanent injunctions against the defendants restraining them from infringing the trade mark of the plaintiff, namely, "COCK BRAND" comprising of the device of the cock pertaining to threads and the yarn of the textile material and also restraining the defendants etc. from selling, advertising in any manner their threads and yarn of textile material in the impugned cartons or in similar or colourable cartons producing stylish imitation and substantial reproduction of the cartons of the plaintiff and also restraining them from manufacturing, selling, offering for sale, advertising directly or indirectly dealing in threads and yarns of textile material under the impugned cock device and the: impugned cartons or any other mark, device or carton, as may be identical to and/or deceptively similar with the trade mark and carton of the plaintiff. Relief of rendition of accounts and delivering of all the impugned articles have been also sought in the suit.
2. In the suit the plaintiff has moved an application for grant of interim injunction till the disposal of the suit as contained in Para 22 of the application. Ad interim ex parte injunction was granted vide order dated December 8, 1982. The defendants have moved two applications seeking revocation of the interim injunction granted and seeking some other relief in the alternative as they have now put up a draft device of 'cock' which is stated to be not similar with the alleged registered device of the cock and permission is sought that the defendants may be allowed to market their goods under the new device.
3. I have heard arguments in these applications and proceed to dispose them of by this order.
4. The facts mentioned in the plaint, in brief, are that the plaintiff 's predecessor M / s. Modi Thread Mills, Modinagar, had been engaged in the business of manufacturing, processing, altering, exporting and selling cotton, silk, synthetic threads and yarns for several decades and in the year 1966 it adopted the trade mark comprising of a cock wearing a coat and a pair of trouser and standing on the two legs in a human posture and the same is referred as "COCK BRAND" and this trade mark has been used continuously and extensively by it since very inception. It is pleaded that in 1983 the plaintiff took over the business, properties, liabilities, goodwill, trade mark and copyright of M/s. Modi Thread Mills and since then the plaintiff has been using the said trade mark in respect of the aforesaid mentioned goods continuously and extensively all over India. The aforesaid trade mark stands registered under the trade mark registration No. 234324 dated March 22,1966, in class 23 in Part 'A' of the Register for yarns and threads of textile materials, in the name of M / s. Modi Thread Mills and the said registration is stated to be holding valid up till now and is in full legal force. It was pleaded that the plaintiff has been selling the "COCK BRAND" threads in two cartons having-capacity of 25 and 150 tubes each and the carton comprises a colour combination of grey, white and brown and upper portion of the carton comprises a square device within which the said device of the "COCK BRAND" and the trade mark registration number appear with a circular device in brown border and blue background and adjacent to the said square is a rectangular device within which the trade mark MODI THREAD along with the expression "No. 60 GASSED MERCERISED" appear and then the description of the other carton of the plaintiff is also given and specimen cartons have been filed along with the plaint which are marked 'A' & 'C'. It was pleaded that the device of COCK and the material packed in the aforementioned cartons have acquired tremendous and enviable reputation in respect of the excellent quality of the goods of the plaintiff/its predecessor amongst the purchasing public and the trade and the said device of COCK and the aforementioned cartons in relation to the threads have become distinctive of the goods and business of the plaintiff and use of impugned COCK device and the aforementioned cartons or any other similar device by any other trader in relation to threads is bound to cause confusion and deception amongst the purchasing public and the said person or trader would be guilty of act of passing of his inferior goods as those of the plaintiff. Then, it was pleaded that the defendants who are engaged in the business of manufacturing and selling threads of textile material have dishonestly adopted the impugned device and the cartons similar to the device and cartons of the plaintiff with a view to get themselves enriched by selling their .goods to the unwary customer's who would treat the said goods as being sold by the plaintiff. It was pleaded that the trade activities of the defendants which have come to the knowledge of the plaintiff sometime in the third week of November 1988 have caused tremendous loss and damage to the goodwill, reputation and business of the plaintiff and unless the defendants are restrained by injunction irreparable injury would be caused to the reputation and the business of the plaintiff.
5. The defendants contested the suit as well as the application of the plaintiff pleading that in fact, the plaintiff is neither the proprietor, of the registered trade mark in question nor the successor-in-interest of the owner of the said registered trade mark and thus, the plaintiff has no locus standi to file the present suit. It was also pleaded that the defendants have been using the trade mark and the cartons to the knowledge of the plaintiff since long and thus, the defendants have not committed any breach of the registered trade mark or are guilty of any action for passing of. It was pleaded that a disclaimer to the following effect stands recorded in respect of the impugned registered trade mark "registration of this trade mark shall give no right to the exclusive use of the device of a cock except sufficiently as shown in the representation annexed hereto" Then, the plea was taken that the trade mark consisting of a device of a cock is common to the trade of yarns and threads and is being commonly used by several manufacturers and traders of yarns and threads and the device of cock has already become public Jurisdiction in the trade of yarns and threads.
6. At the outset, I may mention that counsel for the defendants did not dispute that defendants have been using the similar trade mark and the cartons as were being used by the predecessor-in-interest of the plaintiff and that the said trade mark stands duly registered in the name of M/s. Modi Thread Mills, Modinagar (U.P.) since 1966 and that registration is valid up till date. The only contention raised by the learned counsel for the defendants is that the plaintiff has no locus standi to file the present suit inasmuch as the plaintiff has not acquired any proprietary rights in the said trade mark and the cartons. There appears to be no merit, prima, facie, in this contention of the learned counsel for the defendants. The plaintiff has placed on record the copy of the assignment deed showing that M/s. Modi Spinning and Weaving Mills Company Limited, the proprietor of M/s. Modi Threads Mills, Modinagar (U.P.) have by virtue of this assignment deed transferred all their rights in their mill including the rights in the said trade mark etc. in favor of the plaintiff. This deed is executed on April 25, 1984. The learned counsel for the defendants pointed out to certain recitals in the deed which require certain acts to be performed before the transfer was to be completed but counsel for the defendants forgets that after those recitals have been given the deed clearly shows that complete transfer has taken place by virtue of this deed and thus, it cannot be held that the transaction between the predecessor-in-interest of the plaintiff and the plaintiff is yet to come into force. It is true that the plaintiffs application for getting transferred the registered trade mark in its name in the office of the Registrar is still pending but that does not debar the plaintiff to protect the violation of the aforesaid trade mark at the hands of unscrupulous persons by filing an action in court of law for injunction. It is, prima facie, clear to me that during the interregnum period when the application of the plaintiff is kept pending for consideration by the Registrar of Trade Marks the dishonest persons cannot be allowed to make use of the said trade mark in order to get themselves illegally enriched earning upon the reputation built up qua that trade mark by the predecessor-in-interest of the plaintiff. Fortunately there are two judgments of two High Courts supporting this view. In T. 1. Mahommed Zumoon Sahib v. Fathimunnissa @ Bibijan, , a Division Bench of the said High Court laid down that there is nothing in Section 21 or Section 35 which would support the argument that it is only the order of the Registrar under Section 35 which confers a right on the heirs of the original registered proprietor to bring an action for infringement of the trademark. Such an action, is, therefore, maintainable even before an order was passed under Section 35. So, the title to the plaintiff accrues, prima facie, on the execution of the assignment -deed and all other follow up actions which are required to be taken under the Trade Marks Act do not change the title already acquired in this respect. Hence, it cannot be said that till the plaintiff is able to get the registration o f the trade mark transferred in its name the plaintiff cannot bring the suit for injunction restraining the breach of the trade mark, by any other unscrupulous person. I entirely agree with the law laid down in this judgment.
7. The next judgment cited by the learned counsel for the plaintiff in this respect is M / s. Hindustan Lever Limited v. Bombay Soda Factory, AIR 1964 Mysore 173. In the said case also the same question arose and a Division Bench of the said High Court held that the view of the court below that as the necessary change in the name of the registered proprietor had not been effected by the time the suit was instituted, the same should fall is wrong. Registration of the name of the proprietor does not confer title on him. It is merely an evidence of his title. It was held that merely because the trade mark in question did not stand registered in the name of the plaintiffs on the date of the suit the plaintiffs could not have been non-suited. This judgment placed reliance on the aforesaid case decided by the Madras High Court. No judgment taking any contrary view has been brought to my notice by the learned counsel for the defendants. Hence, I hold that the plaintiff, prima facie, has become proprietor of the trade mark in question and thus, has locus standi to file this suit seeking injunction against the defendants.
8. The learned counsel for the defendants has then contended that the assignment deed has not been executed jointly by M/ s. Modi Spinning & Weaving Mills Company Limited and M/s. Modi Thread Mills, Modinagar (U.P.) and thus, the plaintiff does not acquire the title in the registered trade mark. There is no merit in this contention as well. On the face of it, the registration certificate, photo copy of which is filed by the plaintiff, shows that M/s. Modi Spinning & Weaving Mills Company Limited is only trading as M/ s. Modi Thread Mills, Modinagar (U.P.) and thus, the latter is not a separate legal entity. M/s. Modi Spinning & Weaving Mills Company Limited, thus, could transfer the right existing in the trading name of M/s. Modi Thread Mills mentioned above.
9. In view of the above, it is evident that the defendants have infringed the registered trade mark by using the similar device of cock and also the cartons as have been used by the plaintiff's predecessor since 1966. So, the injunction already granted against the defendants restraining the defendants from infringing the registered device and the cartons of the plaintiff has to be confirmed till the disposal of the suit and the application of the defendants seeking revocation of the injunction order has to be dismissed.
10. The defendants have come up with an application in which they have mentioned that they have now devised a new device of cock which is totally dis-similar to the device of cock being used by the plaintiff and thus, the defendants may be permitted to carry on their trade under the new device of the cock, photo copy of which is also filed on the record.
11. It is true that the device of the cock now sought to be adopted by the defendants is dis-similar to the registered trade mark in question but still the question which arises for decision is whether by allowing the defendants to use this new device could it be said that the defendants would be passing of their goods as of the plaintiff. For passing of action it is not necessary that the device being adopted by the defendants should be dissimilar to the registered trade mark Of the plaintiff. The relief of passing comes into play the moment it is shown that the customers and traders dealing in the trade are likely to be deceived by any such device of the defendants which may give an impression that the goods being sold by the defendants are those of the plaintiff.
12. The defendants have not placed any material on the record in support of their contention that the device of cock has become common amongst the trade. So, prima facie, the plea of the defendants that the device of cock has already become public Jurisdiction in the trade of yarns and threads is not borne out from any evidence filed by the defendants.
13. Counsel for the plaintiff has contended that the trade mark i.e. the device of the cock has come to be associated with the said textile goods of the predecessor-in-interest of the plaintiff and is known as "MURGA CHHAP" in the trade and has acquired a lot of reputation and if the device of cock is allowed to be used by other persons who have come recently in the trade, the same is likely to cause confusion in the minds of the average person who goes out in the market to buy the goods of the plaintiff and there is every possibility of such an unwary purchaser being deceived by seeing the device of cock in the goods of the defendants treating them as the goods of the plaintiff.
14. He has sought reliance from James Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd., . The Division Bench of the Bombay High Court while interpreting Section 10 of the Trade Marks Act in the said case observed that in deciding whether a particular trade mark is likely to deceive or cause the confusion it is not sufficient merely to compare it with the trade mark which is already registered or whose proprietor is offering opposition to the registration of the former trade mark. What is important is to find out what is the distinguishing or essential features of the trade mark already registered and what is the main feature or the main idea underlying that trade mark and if it is found that the trade mark on whose registration is sought contains the same distinguishing or essential features or conveys the same idea, then ordinarily the Registrar is right if he comes to the conclusion that the trade mark should not be registered. It was observed that the real question is as to how a purchaser who must be looked upon as an average man of ordinary intelligence would react to a particular trade mark and what association he would form by looking at the trade mark and in what respect he would connect the trade mark with the goods which he would be purchasing. In the said case, the trade mark "EAGLE" was in question with regard to cotton sewing thread. The Division Bench of the said High Court held that there may be cases where dissimilarity in the object represented may be the deciding factor. If, for instance, particular class of goods are sold by several dealers, all under different kinds of Eagle trade mark, then the purchaser is expected to know the difference between one trade mark and another, knowing as he does that more than one person sells goods under the same appellation, but where only one dealer sells the class of goods under the Eagle Brand and his goods are known as Eagle or Eagley, then the position is very different and any attempt to sell goods under a trade mark which fixes in the mind of the purchaser the association of an Eagle would not be justified.
15. It is, hence, evident that if, prima facie, it is shown that the trade mark of cock being used by the plaintiff has become exclusive pertaining to textile goods like textile yarns then obviously no other person can be allowed to use the trade mark "COCK" for selling his own goods which would lead to some confusion in the minds of the purchasers who have since long practice associated the goods of the plaintiff under the trade mark "COCK". It is to be emphasized here that in the plaint the plaintiff has not sought any injunction against the defendants restraining them from using the device of any cock in respect of the goods in question. The only relief sought is that the defendants should not be allowed to use the said trade mark as stands registered in the name of the plaintiff. The plaintiff cannot be allowed to enlarge the scope of his suit by having any wider injunction against the defendants than prayed for in the suit.
16. It is not the case set up in the plaint that the only plaintiff or plaintiff's predecessor have been using the device of "COCK" for marketing their goods and no other trader or manufacturer had used the device of cock early to them in marketing its goods. It is only during the course of arguments and in reply to the application of the defendants that counsel for the -plaintiff has sought the relief of injunction restraining the defendants even from using the device of "COCK" may be totally dissimilar to the registered trade mark of the plaintiff. It is also not pleaded in the plaint that the customers have come to associate the goods of the .plaintiff with any trade mark "MURGA" or trade mark "COCK". The plea taken in the plaint is that the registered trade mark of the plaintiff is of peculiar type and defendants have adopted the same trade mark in marketing their goods and they should be restrained from infringing the trade mark of the plaintiff by using such similar device or any other deceptive similar device.
17. Counsel for the defendants has also argued that there has been some delay in bringing the suit by the plaintiff seeking injunction restraining breach of their registered trade mark. It has been held by a Division Bench of this Court in Shri Swaran Singh Trading as Appliances Emporium v. Usha Industries (India) New Delhi , that since the exclusive right of user of a registered trade mark conferred by the Trade and Merchandise Marks Act, 1958, could not be lost by delay, general principles governing grant of injunctions in other types of cases might not hold good while dealing with cases of infringement of the above statutory right and normally delay in seeking relief might, not non suit the proprietor of the registered trade mark. Similar view was expressed in Hindustan Pencils Pvt. Ltd. v. M/s. India Stationery Products Co. Ltd., .
18. So, I come to the conclusion that prima facie, the plaintiff has become owner of the registered trade mark in question and the defendants have by marketing their goods under the same trade mark and using the same type of cartons have infringed the registered trade mark of the plaintiff and thus, the plaintiff is entitled to have temporary injunction till the disposal of the suit.
19. I confirm the injunction already granted till the disposal of the suit, I make it clear that the defendants are not debarred from marketing their goods under the new different device of cock, photo copy of which stands filed in the case. The applications are disposed of in above terms.
20. Order accordingly.