Bombay High Court
Shri Harish Motichand Sariya, Karta And ... vs Ajanta India Limited And Ajanta ... on 9 April, 2003
Equivalent citations: 2003(6)BOMCR178, 2003(4)MHLJ291, 2004(28)PTC42(BOM)
Author: S.A. Bobde
Bench: S.A. Bobde
ORDER S.A. Bobde, J.
1. This is a motion by the Plaintiff for temporary injunction for restraining the Defendants from using, in relation to non-medicated toilet preparations including tooth paste, soaps, shaving cream, shampoo, cosmetics and allied goods, the trade mark AJANTA or any other trade mark deceptively similar to the Plaintiff's trade mark AJANTA and from using the word AJANTA as part of their corporate name or trading style of in any other manner whatsoever in relation to their business of manufacturing or trading in said goods so as to pass off their goods as those of the Plaintiff's goods. The Plaintiffs have also prayed for injunction restraining the Defendants from infringing the Plaintiff's mark AJANTA bearing registration No. 220724-B in Class 03 by using in relation to non-medicated toilet preparations the trade mark AJANTA or any other trade mark deceptively similar to the Plaintiff's registered trade mark.
2. The controversy relates to the trade mark "AJANTA" which, the Plaintiffs including his predecessor in interest, owns in respect of brushes including tooth brushes. The Plaintiff claims to have subsequently started using the trade mark for manufacturing tooth paste. By the present suit they seek an injunction restraining the Defendants from using the word mark "AJANTA" in respect of tooth paste. Apart from the claim that they have a registered trade mark in the word "AJANTA" they claim an injunction against the Defendants for passing off their gods as those of the Plaintiff. The notable feature of the Plaintiff's case is that he claims as injunction against the Defendants from using the trade mark "AJANTA" not only on the basis that the Plaintiff is manufacturing a tooth paste carrying the trade mark "AJANTA" but that he has long standing proprietary rights in the word "AJANTA" in relation to cognate goods such as tooth brushes which he has been manufacturing since 1950. He claims that irrespective of whether he has started manufacturing tooth paste of not, he is entitled to an injunction restraining the Defendants from using the trade mark "AJANTA" for his tooth paste since the Plaintiff has been using that mark for about 50 years in respect of cognate goods.
3. While the Plaintiff has filed the suit on 14th February, 2003 the Defendant has filed a prior suit in the Civil Court at Ahmedabad on 18th January, 2003. In the Defendants suit registered as Regular Civil Suit No. 163 of 2003 in the City Civil Court at Ahmedabad they have made an identical prayer for a decree restraining the Plaintiff herein from using in any manner in relation to their (Plaintiff) tooth paste the trade mark "Ajanta" so as to infringe their (Defendants) registered trade mark bearing No. 535953 B. They have also claimed an injunction for restraining the Plaintiff from passing off their goods as theirs (Defendants). The pending suit at Ahmedabad for injunction gives rise to the contention as to the legality of the exercise of jurisdiction of this court for granting temporary injunction. According to Mr. Sanghi, the learned Counsel appearing on behalf of the Defendants, this court ought not to exercise its jurisdiction even for the purpose of considering the grant of temporary injunction in view of the principle underlying Section 10 of the Code of Civil Procedure which reads as follows:-
"10. No court shall proceed with the trial of any suit in which the matter in issue is also directly and substantially in issue in a previously instituted suit between the same parties, or between parties under whom they or any of them claim litigating under the same title where such suit is pending in the same or any other Court in India having jurisdiction to grant the relief claimed, or in any Court beyond the limits of India established or continued by the Central Government and having like jurisdiction, or before the Supreme Court."
According to the learned Counsel, Section 10 which is enacted on sound public policy is intended to prevent a multiplicity of judgments and orders where the mater in issue is the same in both suits pending in different courts. Therefore, it would be not legal or proper for the Court trying the subsequent suit to even pass an order of temporary injunction. The learned Counsel relies on Order 39 of the Code of Civil Procedure to contend that a Defendant is equally entitled to ask for an injunction against the Plaintiff and therefore there would be no prejudice to the Plaintiff here since he could seek the injunction which they are seeking here, in the suit at Ahmedabad. Order 39 Rule 1 of the Code of Civil Procedure reads as follows:-
"1. Where in any suit it is proved by affidavit or otherwise:-
(a) that any property in dispute in a suit is in danger of being wasted, damages or alienated by any party to the suit, wrongfully sold in execution of a decree, or
(b) that the defendant threatens, or intends, to remove or dispose of his property with a view to defrauding his creditors,
(c) that the defendant threatens to dispossess the plaintiff or otherwise cause injury to the plaintiff in relation to any property in dispute in the suit, the Court may by order grant a temporary injunction to restrain such act, or make such other order for the purpose of staying and preventing the wasting, damaging, alienation, sale, removal or disposition of the property or dispossession of the Plaintiff, or otherwise causing injury to the Plaintiff in relation to any property in dispute in the suit, as the Court thinks fit, until the disposal of the suit or until further orders."
4. Mr. Tulzapurkar, the learned Counsel for the Plaintiff submits that the Plaintiff in the present suit is not entitled to ask for an injunction in the Court at Ahmedabad since according to him the Ahmedabad Court can only grant a temporary relief by way of an injunction only where it can grant a final relief. Since the Plaintiff here cannot claim the final relief namely that of an injunction against the Defendants from using Plaintiff's trade mark, the Plaintiff cannot seek a temporary injunction in that regard. The learned Counsel reliefs, for the settled proposition of law, on Cotton Corporation of India Limited v. United Industrial Bank Limited and Ors., . The Supreme Court has in paragraph 10 clearly held that it is indisputable that the power to grant temporary injunction has been conferred in aid or as auxiliary to the final relief that may be granted. If the final relief cannot be granted in terms as prayed for, temporary relief in the same terms can hardly if ever be granted. It is, however, not possible to infer from this decision the proposition that under Order 39, Rule 1 a Defendant cannot apply for an injunction. Their Lordships have themselves been cautious in observing that "if the final relief cannot be granted in terms as prayed for, temporary relief in the same terms can hardly if ever be granted". Moreover, Their Lordships were not considering the case of a Defendant applying for an injunction under Order 39. If the contentions of the learned Counsel for the Plaintiff were to be accepted, then in no case can the Defendant apply for a temporary injunction in a suit against him since the final relief in the suit would never be the one prayed for by the Defendant.
5. A plain reading of Order 39 suggests that the power to grant an injunction may be exercised in any of the cases contemplated by Clauses (a), (b) and (c) of Rule (1). In particular the power to grant an injunction can always be exercised where "any property in dispute in a suit" is in danger or being wasted, damaged or alienated "by any party to the suit" or wrongfully sold in execution of the decree, etc. Therefore where the property in dispute in a suit is in danger of being wasted, etc., by any party to the suit, obviously the other party is entitled to apply for an injunction. Therefore, in a case such as the present, I am of view that since according to the Plaintiff the property in dispute in the Ahmedabad suit which is the trade mark "AJANTA" is in danger of being misused or abused by the Defendants herein he would be entitled to apply for an injunction. Mr. Sanghi, the learned Counsel for the Defendants rightly relied on the decisions of the Karnataka High Court, in Suganda Bai v. Sulu Bai and Ors., AIR 1975 Karnataka 137; Calcutta High Court in Dr. Ashis Ranjan Das v. Rajendra Nath Mullick, ; Kerala High Court in Vincent and Ors. v. Aisumma, in support of the proposition that the Defendant is entitled to apply for an injunction under Order 39 Rules 1 and 2 in a suit. But this however does not result in answering the contention that this Court cannot exercise jurisdiction, in favour of the Defendants. Section 10 of the Code of Civil Procedure does not appear to govern applications for interlocutory reliefs such as those for grant of injunction or appointment of the Receiver as also summary suit under Order 37 of the Code of Civil Procedure. Such matters have been held not to be part of the concept of the trial contemplated by Section 10. In Indian Bank v. Maharashtra State Co-operative Marketing Federation Ltd., , the question arose whether Section 10 of the Code is applicable only to a regular and ordinary suit and not to a summary suit filed under Order 37 of the Code. A learned Single Judge of this Court held that Section 10 has no application to a summary suit. The Division Bench reversed the order of the learned Single Judge. The Supreme Court rejected the contention that the word "trial" in its widest sense will include all proceedings right from the stage of institution of a plaint in a civil case to the stage of final determination by a judgment and decree of the Court. Their Lordships observed that whether the widest meaning should be given to the word "trial" or that it should be construed narrowly must necessarily depend upon the nature and object of the provision and the context in which it is used. While deciding the question, the Supreme Court made the following observations:
"The object of the prohibition contained in Section 10 is to prevent the Courts of concurrent jurisdiction from simultaneously trying two parallel suits and also to avoid inconsistent findings on the matter in issue. The provision is in the nature of a rule of procedure and does not affect the jurisdiction of the Court to entertain and deal with the later suit nor does it create any substantive right in the matters. It is not a bar to the institution of a suit. It has been construed by the Court as not a bar of the passing of interlocutory orders such as an order for consolidation of the later suit with the earlier suit, or appointment of a Receiver or an injunction or attachment before judgment. The course of action which the Court has to follow according to Section 10 is not to proceed with the "trial" of the suit but that does not mean that it cannot deal with the subsequent suit any more or for any other purpose. In view of the object and nature of the provision and the fairly settled legal position with respect to passing, of interlocutory orders it has to be stated that the word "trial" in Section 10 is not used in its wides sense."
The judgment of the Supreme Court clearly concludes the issue. A Division Bench of this Court in Senaji Kapurchand and Ors. v. Pannaji Devichand, reported in 1922 Bombay 276, took the view that even an order staying a suit under Section 10 does not prevent a Court from making interlocutory orders, such as orders for a Receiver or an injunction or an order for attachment before judgment and therefore I am of view that this Court has the jurisdiction to consider the application for temporary injunction and therefore will not refuse to exercise the jurisdiction vested in it by law.
6. Coming to the relevant part of the case, the facts are there. The predecessor of the Plaintiff was a partnership Firm known as The Bombay Brush Company which adopted the trade mar "AJANTA" in respect of brushes in the year 1950. This partnership was incorporated as Bombay Brush Company Private Limited in the year 1958. From 1950 to 1987 the incorporated company and its licensees i.e. Bombay Brush Baroda Pvt. Ltd. and Bombay Brush Belgaum Pvt. Ltd. used the trade mark "AJANTA" in respect of tooth brushes and shaving brushes. In 1959 word mark "AJANTA" was registered in the name of Bombay Brush Company Private Limited in respect of brushes falling in Class 21. Thereafter one Mahipal V. Sariya obtained registration of the word mark "AJANTA" under No. 220724-B in respect of "non-medicated toiletry preparations, cosmetics and perfumes falling in Class 03." In the year 1978 a label mark containing the word "AJANTA" was registered under No. 344242 in respect of tooth brushes included in Class 21 in the name of Bombay Brush Company Private Limited. The word mark "AJANTA" and the label mark "AJANTA" were assigned by Bombay Brush Company Private Limited to R.S. Champalal Vijaychand Sariya, H.U.F. represented by the said Mahipal V. Sariya. There are various Registered User Agreements of 14th October, 1987 between the said H.U.F. and various companies such as Bombay Brush (Indore) Private Limited, Bombay Brush (Vidarbha) Private Limited, Bombay Brush (Belgaum) Private Limited and Bombay Brush (Baroda) Private Limited. Eventually, sometime in 1988 the H.U.F. abovenamed was brought as proprietor of the two marks i.e. word mark and the label mark. According to the Plaintiff and there is no denial of this fact, the two registered trademarks i.e. word mark and label mark both in Class 21 have been extensively used in relation to brushes including tooth brush. Upon the death of the earlier Karta request was made to the Registrar of Trade Marks to bring on record the name of the present Plaintiff as Karta and Manager of the said H.U.F. in respect of the trade mark. Eventually in May 1998 the Registrar of Trade Marks allowed the request to bring the Plaintiff's name as the subsequent proprietor of the trade mark "AJANTA". In short the plaintiff is the registered proprietor of the trade mark "AJANTA" both as a word mark and a label mark which has been inter alia used in the Trade of tooth brushes i.e. goods cognate to tooth paste.
7. According to the Plaintiffs in April, 2002 he requested a Company called Alps Containers Private Limited to manufacture tooth paste, shaving creams and shampoo. He claims to have made advance payment to Alps Containers Pvt. Ltd. by a cheque on 25th April, 2002 and on 29th April, 2002 he confirmed an order placed on Alps Containers Pvt. Ltd. for Ajanta tooth paste. The Plaintiff permitted Alps Containers Pvt. Ltd. to use the trade mark AJANTA to respect of the goods manufactures by Alps Containers Pvt. Ltd. for and on behalf of the Plaintiff on 2nd May, 2002 and received delivery on 1st June, 2002 of AJANTA tooth paste manufactured by Alps Containers Pvt. Ltd. for and on behalf of the Plaintiff. The Plaintiff also claim that he also paid excise invoice of Alps Containers Pvt. Ltd. regarding said supplies. On 16th July, 2002 the Plaintiff has made the final payment to Alps Containers. From 6th June, 2002 to 11th January, 2003 the Plaintiff has sold the AJANTA tooth paste along with shaving cream and shampoo. It must be noted that the quantity sold by the Plaintiff is in the region of about 1200 tooth paste and is not a large number.
8. On the other hand, the 2nd Defendant claim that they have a registered trade mark for the word "AJANTA" in respect of cosmetic preparations, dentifrices, tooth paste, shaving preparations, etc. It appears that the Registrar raised a preliminary objection to the registration of the 2nd Defendant's trade mark. On 15th May, 1997 and 2nd Defendant's mark AJANTA was registered as of 27th August, 1990 i.e. date of the application, after advertisement.
9. According to the Defendant No. 1 on 22nd March, 2002 they held as extra ordinary general meeting to amend their name and in the explanatory statement accompanying the notice of E.G.M. it was stated that the company plans to venture into the field of FMCG i.e. Fast Moving Consumer Goods i.e. in toiletries, cosmetics and its allied products.
10. On 11th April, 2002 the Plaintiff made an application for rectification of the 2nd Defendant's trade mark AJANTA on the ground that there was no bonafide intention to use the mark nor was there any actual user and that registration of the said trade mark was prohibited under Section 12. Apparently, the Registrar wrote a letter to the Plaintiff's attorney on 5th August, 2002 regarding Plaintiff's rectification application and Plaintiff's claim that the Defendant has notice of the Plaintiff's application for rectification of the 2nd Defendant's mark.
11. On 19th September, 2002 the 2nd Defendant is said to have assigned the mark to the 1st Defendant and on 28th December, 2002 the 1st Defendant has made the first sale of tooth paste under the name AJANTA.
12. The Defendants have filed the suit which is in the nature of quia timet action upon noticing the advertisement in Nagpur Edition of Navbharat on 18th December, 2002 in respect of Ajanta tooth paste.
13. It must be borne in mind that the Plaintiff has claimed an injunction against passing off as well as, on the ground of infringement of trade mark. The Defendants have strongly contested the grant of injunction on either ground. However, it is clear that if the Plaintiff is entitled to an injunction against passing off on the ground that the Plaintiff has been manufacturing and trading in goods such as tooth brush which are cognate and allied to the Defendants goods i.e. tooth paste since long than he would be so entitled to an injunction inspite of any defect in his registration of trade mark in respect of the goods and inspite of the Defendants having a registration in respect of the trade mark AJANTA for their tooth paste. It must, therefore, be seen whether the Plaintiff has made out a case in respect of passing off based simpliciter on their reputation in the word mark AJANTA in relation to cognate goods such as tooth brush. There is no dispute that the Plaintiff has been manufacturing and selling tooth brushes under the trade mark AJANTA since long. There is no reason at this stage to doubt the Plaintiff's claim that he has been manufacturing AJANTA since 1950. It is, therefore, clear that the Plaintiff has acquired a reputation in respect of the trade mark AJANTA in relation to the tooth brush. It does not require much to hold that tooth brush and tooth paste are cognate or allied goods. In fact use of these two is complementary to each other and are in fact has inseparably linked to each other.
14. The Plaintiff's case is that he intends to extend the market by commencing the manufacture of tooth paste also; and to that end he has a right to restrain the Defendants from using the trade mark or a name which is similar to that of the Plaintiff and in respect of which he has acquired a reputation in the market.
15. Such a right has been recognised by courts in India in a case as early as Thomas Bear and Sons (India) v. Prayag Narain. On a difference of opinion between two judges a learned Single Judge observed as follows:-
"The rule deducible from the foregoing cases appears to be that the plaintiffs whose goods have acquired a reputation in the market through a trade mark or name with which their goods have become associated, have a right to restrain the defendant from using a trade mark or name which is identical with or similar to that of the plaintiffs, and such right extends not only to the particular goods sold by the plaintiffs, but also to cognate classes of goods, provided the cumulative effect of the similarity of the mark, the commercial connexion between the plaintiffs goods and those of the defendant and surrounding circumstances is such as to lead the unwary customers to mistake the defendant's goods for those of the plaintiffs."
I am of view that in the present case tooth paste he taken to be a goods in a class cognate to tooth brush and that there is a clear commercial connexion between the tooth paste marketed by the Defendant under the name AJANTA and the tooth brush manufactured by the Plaintiff under the same name.
16. The above decision of the Allahabad High Court was carried in appeal. They Privy Council vide observed as follows:-
"Their Lordships see no reason to doubt the finding of the trial Judge that the appellants had acquired a proprietary right in respect of their elephant trade mark with reference to their cigarettes and Virginia Bird's Eye tobacco. Nor are they of opinion that the appellants right is confined only to the sale of the same kind of cigarettes and of Virginia Bird's Eye tobacco; for, in the absence of strong evidence to the contrary, such a mark would ordinarily extend to protect goods so similar in kind to the goods actually put upon the market by the trader in connexion with the trade mark that it is an almost inevitable inference that such goods would be manufactured or marketed by the trader. In other words, the prohibility of deception in the case of goods of a closely similar kind to those actually marketed by the plaintiff would be proved in the course of establishing the trade mark. No such inference could be made in the present case as regards the respondent's goods, since the chewing tobacco he sells differs widely in appearance and in use from the goods sold by the appellants."
The Allahabad case resulted in a refusal of the injunction. But nonetheless, the principle appears to have been clearly laid down by the Privy Council.
17. A similar question arose before the Delhi High Court in Prakash Industries Limited v. Rajan Enterprises, 1994-PTC-31. The Plaintiffs claimed a prior use of the trade mark "PRAKASH" in respect of television picture tubes, video tapes and cassettes and television tuner. The Defendants started using the trade mark "PRAKASH" in respect of televisions, tuners and T.V. kits. The Plaintiffs claimed an injunction against passing off on the ground that the Defendants goods are similar in description and that the Plaintiffs have already acquired a reputation under the name "PRAKASH" in respect of the goods which have been a common trading channel and class of customers. The Delhi High Court upheld the submission of the Plaintiffs that the goods were cognate, allied and connected and that the Plaintiffs goods and those of the Respondents had a common trading channel the class of customers being the same. In paragraph 32 the Delhi High Court used the words of the Privy Council as follows:-
"32. The Plaintiff whose goods have acquired a reputation in the market though a trade mark or name with which the goods have become associated has a right to restrain the defendant from using the trademark or name which is identical with or similar to that of the Plaintiff and such right extends not only to the particular goods sold by the plaintiff but also to cognate classes of goods provided the cumulative effect of the similarity of the mark, the commercial connection between the Plaintiff's goods and those of the defendant's goods and surrounding circumstances is such as to lead the unwary customers to mistake the defendant's goods for those of the plaintiff."
In paragraph 34 while holding that the goods are cognate that Delhi High Court further observed as follows:-
"Prima facie the goods are of the same nature and they are definitely cognate and allied to each other. There is a trade connection between the goods of both the parties. The appellant's goods and those of the respondents goods have a common trading channel and class of customers are the same. These can be displayed and sold side by side across the same counter in retail outlets as electrical electronics shops."
In fact the Delhi High Court in Ellora Industries v. Banarasi Dass, referred to the definition of passing off in paragraph 31, which reads as follows:-
"Lord Halsbury defined the tort of passing off in Reddaway v. Banham, 1896 AC 199. He said that the defendant shall not represent his goods or his business as the goods or business of the plaintiff. How do we apply this principle here? The Plaintiffs do not manufacture time-pieces though they are registered for them. This is an admitted case. Now it is not always necessary that there must be in existence goods of that other man with which the defendant seeks to confuse his own. As Lord Greene M.R. said:-
"Passing off may occur in cases where the plaintiffs do not in fact deal in the offending goods."
It is obvious from the above passage that even if the Plaintiff was not to deal in the particular goods he would still be entitled to maintain an action for passing of.
Similarly, similar rights in a trader to obtain an injunction against passing off in respect of cognate goods was recognised and confirmed by a Division Bench of this Court in the case of Kamal Trading Company, Bombay and Ors. v. Gillette U.K. Limited, Middle Sex, England, 1988-PTC-1. Plaintiffs there traded in safety razors, shaving brushes, etc. under the trade mark "7 O CLOCK". The Defendant started using the same trade mark "7 O CLOCK" for tooth brush. While rejecting the contention of the Defendant that the goods manufactured by the Plaintiffs are different from those manufactured by the Defendants because the Defendants tooth brushes are not available in the same shop as the Plaintiffs safety blades and safety razors and therefore use of "7 O CLOCK" for tooth brush would make no difference, this court observed as follows:-
"In the first instance, the assumption of the learned counsel that the class of customers for purchase of safety blades and tooth brushes are different and these goods are not available in the same shop is wholly misconceived. We take judicial notice of the fact that these goods are available in every shop including a small shop and each and every person is required to purchase these goods. The safety blades and tooth brushes are items of daily requirement and are required by every person. It is impossible to accept the submission that as the goods being different and as the goods are set out in different Classes in the Schedule to the Act, there is not any likelihood of customer being deceived."
Further the Division Bench observed as follows:
"It cannot be overlooked that it is not necessary for the plaintiffs to establish that in fact any customer was deceived, but it is enough if it is shown that there is likelihood of deception. We have no hesitation in concluding that the user of the mark "7 O CLOCK" by the defendant would clearly result in deceiving the customer with the impression that the tooth brushes come from the house of Gilletes."
I am of view that the ratio applies to the facts of the present case which are similar.
18. Another case where such an injunction was granted is Bajaj Electricals Limited, Bombay v. Metals and Allied Products, Bombay and Anr., . The question there was whether the Plaintiffs goods which were electric lamps, lighting, fittings, accessories, kitchen appliances such as stoves, heaters, toasters, mixers, grinder, pressure cookers and kitchen wares ought to be considered as allied to the Defendants goods which were being sold by them under the very same trade mark "Bajaj" i.e. Kitchen appliances such as Hot-Carrier, Ice Box, Hot Lunch Box, etc. The further question was whether the Plaintiffs were entitled to an injunction restraining the Defendants from passing off their goods as those of the Plaintiffs under the same trade mark "Bajaj". The Court rejected the contention of the Defendants that the goods are wholly dissimilar and that the purchasers of their utensils would not be confused by the use of the word "Bajaj" on the articles of the Defendants, in the following words:-
"It is not possible to accept the submission. The articles manufactured by the plaintiffs and the defendants are kitchen wares and are commonly used in almost every kitchen in this country. The mere fact that the articles manufactured by the contesting parties are different in nature is no answer to the claim that the defendants are guilty of passing off. We entirely agreed that the conclusion recorded by the learned trial Judge that there is identity of the goods, the mark and the consumer and the goods manufactures by both the plaintiffs and the defendants are sold under one shop, Mr. Cooper complained that the electric goods manufactured by the plaintiffs and the stainless steel utensils manufactured by the defendants are not sold in one shop. The submission is not accurate because it is common experience that kitchen were or kitchen appliances like mixers, grinders, pressure cooker, and stainless steel utensils are sold in the same. shop. At this interim stage, we are not prepared to accept the submission of Mr. Cooper on this count and we see no reason to take different view from that of the learned single Jude on this aspect. In our judgment, prima facie, it is clear that the defendants have intentionally and dishonestly tried to pass of their goods by use of name "Bajaj"."
19. In view of the clear position in law. I am of prima facie view that the plaintiff has acquired a reputation in respect of his goods i.e. tooth brushes under the trade mark AJANTA and that the trading by the Defendants in their goods i.e. tooth paste under the very same trade mark AJANTA constitutes passing off of their goods as those of the Plaintiff, since their goods are clearly allied or cognate goods.
20. The next question therefore is whether the Plaintiff is in the circumstances of the case, entitled to an injunction in view of the contentions of the Defendants. It was contended strongly on behalf of the Defendants that the plaintiff is not entitled to an injunction since according to the Defendants the Plaintiff's registration of the year 1964 is in respect of "non-medicated toiletry preparations, cosmetics and perfumes" This does not include tooth paste and therefore the Plaintiff is not entitled to an injunction against passing off. Therefore, according to the Defendants there cannot be an injunction in respect of items such as tooth paste which are clearly not mentioned in the certificate of registration. Further according to the Defendants, the Defendants have a specific registration or tooth paste and dentifrices obtained in 1990 and the Plaintiff is not entitled to an injunction against passing off because the Defendants have obtained a registration of the trade mark AJANTA for tooth paste and dentifrices. In other words, the Defendants contest the Plaintiff's right to an injunction in view of the fact that the Plaintiffs do not have, in the year 1964 a registration in the trade mark AJANTA in respect of the tooth paste and because on the other hands the Defendants have obtained registration of the trade mark AJANTA in respect of the tooth paste and dentifrices in 1990.
21. At the outset, these contentions of the Defendants cannot be upheld since the term toiletry preparations in the plaintiff's registration would include a tooth paste. Tooth paste is one of the things that is used to make one's toilet. Webster's Third New International Dictionary gives the meaning of "toiletry" as an article or preparation used in making one's toilet (as a soap, lotion, cosmetic, toothpaste, shaving cream, cologne). It also gives one of the meaning of "toilet" as the act of process of dressing, the process of washing, grooming and arranging oneself for the day's activities or for a special occasion. In Sarin Chemical Laboratory v. Commissioner of Sales Tax, U.P., , the Supreme Court has while considering the meaning of word toiletry, observed as follows:-
"Neither the expression cosmetic nor toilet requisite has been defined in the Act. The dictionary meaning of the expression cosmetic (see Webster's International Dictionary) is "A preparation to beautify or alter appearance of the body or for cleaning, colouring, conditioning or protecting skin, hair, nails, eyes or teeth". The same dictionary gives the meaning of the expression "toilet" thus, an act or process of dressing, especially formerly of dressing hair and now usually cleansing and grooming of one's person. The word "toiletry" is explained in the said dictionary as meaning "an article or preparation used in making one's toilet such as soap, lotion, cosmetic, tooth paste, shaving cream, cologne, etc."
This registration for toilet preparatory must be construed as one for tooth paste.
22. Further, it is not possible to uphold the contention of the Defendants that an action against passing off cannot be maintained by the Plaintiff merely because the Defendant has a registered trade mark in respect of the goods in question. Section 27 of the Trade Marks Act reads as follows:-
"27. No action for infringement of unregistered trade mark.- (1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof."
23. It is obvious that Sub-section (2) reserves in a person the right to maintain an action against any person for passing off goods notwithstanding anything contained in the Trade Marks Act. Therefore, nothing in the Trade Marks Act including the right conferred on a person by Section 28 to the exclusive use of the trade mark can affect the right of the person for bringing an action against passing off goods as his goods, including "the remedies in respect thereof". It is obvious from the provisions of the Trade and Merchandise Marks Act, 1958 that the Act contemplates honest and concurrent user under Section 12(3) and the use of two registered trade marks which are identical of nearly resemble to each other vide Section 30(1)(d). Section 33 also provides for the registration of a second trade mark. It is obvious from these provisions and in particular Section 27(2) that whereas it is possible that two similar or identical trade marks may be registered, nonetheless a person is entitled to maintain an action against passing off. Section 27(2) expressly reserves such a right. This is obviously due to the fact that the action for passing of is an action maintainable in tort, intended to protect the commercial goodwill and to ensure that business reputations are not exploited by deceit.
24. Having regard to the provisions of the Trade Marks Act referred to above, and having come to the conclusion that the Defendants are prima facie passing off their goods as those of the Plaintiff since the Plaintiff has acquire a reputation in those goods under the trade name AJANTA I do not propose to consider the arguments based on the alleged nonexistence of the plaintiff's registration of trade mark AJANTA in the year 1964 and the alleged existence of the Defendants trade mark in 1990.
25. Mr. Sanghi, learned Counsel for the Defendants submitted that the Plaintiff has not proved the manufacture of the tooth paste as claimed by him. In this regard, he challenged the authenticity of the documents produced by the Plaintiff at Exhibits "A" to "H-1" to the affidavit of one Mukesh C. Tejura in support of the Notice of Motion. In particular, it was contended that the Plaintiff claims that he got tooth paste manufactured sometime in April, 2002 is not true. According to the Defendants the documents annexed to the affidavit of Tejura of Alps Containers in which he has stated that Alps Containers manufactured too the paste for the plaintiff is only a gesture from obliging friend and the Plaintiff has not made any definite averments in that behalf. This is not to say that the Plaintiff has not made an averment that he has got the tooth paste manufactured from the Alps Containers. The learned Counsel for the Defendants also referred to the Lorry Receipt in which the despatch of the goods allegedly of the tooth paste from Nagpur is to Alpha Containers and not to Alps Containers. He also pointed out the discrepancy between the bill raised by Vyankatesh Offset and Allied Works in favour of R.S. Champalal Vijaychand Sariya, HUF. There is no doubt that there is such a discrepancy. However, at the same time it is not possible to totally disregard at this stage the affidavit of Tejura and the averments in the plaint in which there is a clear and unequivocal statement that the Plaintiff got the tooth paste manufactured from Alps Containers. At this stage I accept the statement.
26. It was next contended by the learned Counsel for the Defendants that the Plaintiff could not have got the tooth paste manufactured from Alps Containers because Alps Containers is not shown to have a licence for marketing and distribution which is required under the Drugs and Cosmetics Act, 1940. I am not inclined to go into this argument at this stage. If such a licence is necessary and a person has not obtained it before engaging in manufacture and distribution, he would be liable to be prosecuted under the Drugs and Cosmetics Act 1940. The absence of a licence would not ipso facto disprove the manufacture and distribution of the product. In any case there is no dispute that Alps Container has a manufacturing licence. The contention is that the Plaintiff does not have a distribution licence. According to the Plaintiff, Schedule K to the Drugs and Cosmetics Rules, 1945 has the effect of exempting cosmetics from the provisions of Chapter IV and the Rules made thereunder, provided that the cosmetics sold, if of Indian origin, are manufactured by the licensed manufacturers. Whatever be the correct position in law on this aspect, it does not lead to the conclusion mean that the Plaintiff did not get the tooth paste manufacture by Alps Containers. It might only mean that it is done without a proper licence. In any case in view of my finding that the Plaintiff is entitled to maintain an action against passing off on the basis of the reputation in the trade mark AJANTA acquired by the Plaintiff in respect of the tooth brush and tooth paste being cognate or allied goods, this aspect of the matter looses its significance. Prima facie, even if the Plaintiff is not manufacturing the tooth paste at all he would still be entitled to claim an injunction on the basis that he has acquired a reputations for manufacture of tooth brushes under the name AJANTA.
27. The last contention on behalf of the Defendants is that the Plaintiff is not entitled to an injunction since according to the Defendants the total sales of the Plaintiffs from 6th June, 2002 upto 12th February, 2003 comes to a total of Rs. 10,780.00 and in contrast the Defendants sales which starts from 28th December, 2002 till February, 2003 is in excess of Rs. 1 crore. The Defendants claim to have sold more than 22 lakhs AJANTA tooth paste tubes and they are producing and selling openly in the market place 3 lakhs AJANTA tooth paste. By the time the matter come up for hearing the Defendants claim to have sold more than 40 lakhs of Ajanta Tooth Paste as apparent from their written submission. A great deal of argument was advanced by both sides for challenging each others sales figure. It is not possible at this stage to give a precise finding as to veracity of the figures. But the question of amount of sales incurred by the partes has to be put in proper perspective. The Plaintiff has, prima facie, established his right and a prior user of the trade mark Ajanta in respect of the cognate and allied goods and I have found about that it deserves protection. Prima facie it appears that the Plaintiff has established his reputation in the cognate product i.e. tooth brush from about 1950. This reputation is not disputed. If the Plaintiffs right to protection of the mark AJANTA is to be upheld the fact that the Defendants have started selling their tooth paste at a great pace must be considered secondary. The Defendants claim to have made a large investment in building and equipment worth crores of rupees The investment if made is not likely to go waste. That can be used for the same purpose but for a different brand name. Obviously, the Defendants must be taken to have knowledge of the Plaintiff's reputation in regard to the cognate goods.
28. Apart from that there is an every reason to assume that the Defendants also had knowledge of the notice issued by the Registrar of Trade Marks on 5th August, 1982, at Exhibit "J-2". This notice is issued by the Assistant Registrar of Trade Marks in acknowledgment of the notice of rectification application filed by the Plaintiff on 15th April, 2002. At the bottom there is an endorsement tat the copy was forwarded to the registered proprietor i.e. Ajanta Transistor Clock Manufacturing Company. Prima facie, though there is a denial in the affidavit about receipt of the notice, it appears having regard to the usual course of events that the notice of 5th August, 2002 must have bene received by the Defendants. Even otherwise, admittedly an advertisement for Ajanta Tooth Paste appeared on 16th December, 2002 to 18th December, 2002 in three different newspapers. It is true that the advertisement does not who the advertisement issued by. However, there is no dispute that such an advertisement in regard to the marketing of a tooth paste named Ajanta was issued. The Defendants traced the source of advertisement to the Plaintiffs and also filed an application for rectification on tat basis on 6th January, 2003. Thus the Defendants appeared to have made the first sale of their tooth paste on 28th December, 2002. In any case, prima facie, it is difficult to believe that the Defendants have no knowledge whatsoever that the Plaintiff had commenced manufacture of the tooth paste under trade mark Ajanta. In any case the Defendants must be taken to had knowledge of the Plaintiff's reputation in the trade mark AJANTA as regards the cognate goods such as tooth brush is concerned. It is no answer on behalf of the Defendants to state that they also had a reputation int eh name Ajanta in regard to Transister Clock which are far removed in association, either commercial or actual from products like tooth brush and tooth paste. Thus if the Defendants decided to go ahead and manufacture tooth paste with knowledge, which they seem to have had, of the Plaintiff's claim to the trade mark Ajanta although in tooth brushes only, it is not possible to grant indulgence to them and withhold injunction in view of prima facie right established by the Plaintiff.
29. A similar situation arose before this Court in the case of Bal Pharma Limited v. Centaur Laboratories Pvt. Ltd. The Division Bench of this Court by a judgment delivered on 28th August, 2001 in Appeal No. 778 of 2001 arising out of the Notice of Motion No. 1645 of 2001 in Suit No. 2349 of 2001 made the following observation:-
"If, however, he had taken search and, knowing full well tat the mark was the property of another person, continues to use the mark, then he runs the risk of a registered proprietor challenging his action for infringement and merely because it is done at a subsequent stage, he cannot be head to complain on the ground of delay."
30. This application for injunction was also hesisted by the Defendants on the ground that the Plaintiff has in effected attempted to extort a sum of money to the extent of about Rs. 3 Crores for not proceeding with the suit. This allegation is made by an affidavit which was file during the course of the hearing dated 5th April, 2003. This allegations have been denied by the Plaintiff on oath by stating that the talk which is alleged to amount to an extort was in relation to the settlement of the dispute. At this stage, it is not possible to take the allegation of the Defendants as proved.
31. Thus in the facts and circumstances of the case. I consider this to be a fit case to grant an ad-interim order in terms of prayer Clause (a) of the Notice of Motion except the bracketed portion, which reads as follows:-
(a) That the Defendants by themselves, their directors, partners, servants, dealers, distributors and agents be restrained by a temporary order and injunction of this Honourable Court from using in relation to (non-medicated toilet preparations including) tooth paste, (soaps), shaving cream, shampoo, (cosmetics and allied goods) the trade mark AJANTA or any other trade mark deceptively similar to the Plaintiff's trade mark AJANTA (and/or from using the word AJANTA as part of their corporate name or trading style or in any other manner whatsoever) in relation to their business of manufacturing or trading in (non-medicated toilet preparations including) tooth paste, (soaps), shaving cream, shampoo, (cosmetics and allied goods) so as to pass of their said goods (and/or business) as and for the Plaintiff's goods (and/or business or otherwise howsoever)".
32. The injunction is being granted with regard to shampoo and shaving cream because the Plaintiff has prima facie filed invoices pertaining to the sale of shampoo and shaving cream. In any case, prima facie, they are both toilet preparations and if the Plaintiff has started dealing with that he is entitled to the protection in regard thereto.
33. At this stage Mr. Daruwalla, learned Counsel for the Defendants seek stay of this order. There shall be stay of this order till 30th April, 2003.
All Authorities concerned to act on an ordinary copy of this Order duly authenticated as true copy by the Associate of this Court.