Delhi District Court
Branch Office At vs Brite Stationers & Manufacturers on 15 February, 2007
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IN THE COURT OF SH. RAJ KUMAR CHAUHAN
ADDITIONAL DISTRICT JUDGE : DELHI
Suit No. 162/03/00
Date of Institution : 19-06-2000
Date of Decision : 15-02-2007
In the matter of :-
M/s Hindustan Pencils Ltd.,
510 Himalaya House,
79 Palton Road,
Mumbai.
Branch Office at
81 Furniture Market,
Kirti Nagar,
New Delhi-110015. ......Plaintiff
Versus
Brite Stationers & Manufacturers,
2557, Teliwara,
Sadar Bazar,
Delhi-110006. ....Defendant
J U D G M E N T :-
In this suit for permanent injunction, infringement of copy right, passing off, rendition of accounts, plaintiff has inter alia alleged that it is well Contd......
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established manufacturer of pencils and other items of stationery since the year 1957; in the year 1961, the plaintiffs adopted the trademark "Natraj" with the device of "Natraj" in respect of various stationery goods and since then they have been using the said trade mark "Natraj" and the device of "Natraj" in respect of goods manufactured by them; the plaintiffs are the registered proprietors of the following marks :-
a) Trademark NATRAJ with the device of NATRAJ under No. 225923 as of 14-12-1964 claiming user since 22-07-1961 in respect of writing pencils.
b) Trademark NATRAJ with the device of NATRAJ under No. 260466 dated 06-11-1969 claiming user since 22-07-1961 in respect of pencils, pencil sharpeners, pens, fountain pens, erasers and pins, clips and staples included in Class 16.
c) Device of NATRAJ with the trademark NATRAN under No. 283730 as of 27-10-1972 in Class 16 claiming user since the year 1961 in respect Contd......
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of pencils of all kinds, erasers, refills for propelling pens, pencils, pencil sharpeners, pens, fountain pens, pins, clips and wires staples for stapling presses.
d) Trademark NATRAJ under No. 400868 in Class 16 as of 03.02.1983 in respect of stationery, adhesive materials (stationery) artist's materials, paint brushes, office requisites other than apparatus.
e) Trademark device of NATRAJ under No. 400869 in Class 16 as of 03.02.1983 in respect of stationery, adhesive materials (stationery), artist's material, paint brushes, office requisites other than furniture and instructional and teaching materials (other than apparatus).
All the above said trademarks are old trademarks and their registrations are valid and subsisting on the Register of Trademarks. 2 The plaintiff's sale of stationery goods under the trademark NATRAJ with the device of NATRAJ is Contd......
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substantial and their goods are sold in every nook and corner of India; the plaintiffs are also spending large amount of money on sale, promotion and advertisement; on account of superiority of goods, long, extensive and continuous user and vide advertisement, the plaintiff's trademark NATRAJ and the device of NATRAJ have become very popular with the stationery trade and the member of public associate the trademark NATRAJ and the device of NATRAJ with the goods of plaintiffs and with no one else; the trademark NATRAJ and the device of NATRAJ in which the goods are sold connote and denote the goods manufactured by the plaintiff alone. 3 It is further alleged that plaintiff is holding the registration of trademark since 1961 for pencils, erasers, sharpeners which are part and parcel of geometry box and there is confusion and deception in the market if somebody will use the said articles which are registered Contd......
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in favour of the plaintiff; the plaintiff is the prior user and adopter of the said trademark as well as goods mentioned above; the plaintiffs are not manufacturing and marketing mathematical instrument boxes bearing the trademark NATRAJ because an injunction has been obtained by one Sh. Prem Chand Gupta who has wrongly obtained the registration of trade mark NATRAJ in respect of mathematical instruments; the plaintiffs appeal for dismissal of the said rectification proceedings are pending before a division bench of Hon'ble High Court of Delhi in FAO (OS) 6/85 against Sh. Prem Chand Gupta; the trademark A-30813/80 and 35887/80 in favour of Sh. Prem Chand Gupta have been cancelled by the Copyright Office, New Delhi and it has been declared in the said order that the plaintiff is the owner of the said artistic work; the said order has been challenged by Sh. Prem Chand Gupta in appeal.
Contd......
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4 It is further alleged that the plaintiffs have now obtained the registration of the trademark NATRAJ with the device of NATRAJ bearing No. 400868 and 400869 in respect of stationery, adhesive materials (stationery), artistic materials, paint brushes, office requisites other than apparatus; the mathematical instrument box being the stationery item and is covered under the heading of stationery.
5 It is further alleged that the defendant is manufacturing and marketing mathematical instrument box under the trademark NATRAJ/SUPER NATRAJ alongwith device of NATRAJ; the mathematical instruments box also contain the pencils as well as erasers which have been used by the plaintiffs for the last many decades; by using the trademark NATRAJ/SUPER NATRAJ and the device of NATRAJ in respect of mathematical instruments as well as contents of the pencils and erasers in the said Contd......
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mathematical instrument box, the defendant is infringing the trademark of the plaintiff under No. 225923, 260466, 283730, 400868 and 400869; the defendant is using the trademark NATRAJ and the device of NATRAJ in the same characteristic manner and script in which the plaintiffs are using on various products; hence, the defendants are also infringing the copy right of the plaintiff; as the defendants has copied the above said trademark NATRAJ and the device of NATRAJ of the plaintiff in respect of the goods mentioned above, a confusion has arisen amongst the traders and customers in India; an impression is being created in the minds of the public that the defendant's business is the business of the plaintiff or the defendant is an organisation or branch or devision of the plaintiffs which in fact is not true; the defendant's use of the said trademark, device is identical with or deceptively similar with the trademark, device, colour scheme and get up of the plaintiff; it is Contd......
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an attempt on the part of the defendant to deceive the public and to trade upon the goodwill, name and reputation of the public; the defendants are also guilty of passing of as they are selling their goods as the goods of the plaintiffs; the contents of the mathematical instrument box i.e. pencil, eraser contained in the mathematical box also gives an impression to the public that the said pencils and erasers are of NATRAJ trademark; the goods of the defendants are the goods of the same and/or same description of goods and cognate goods; the goods of the plaintiffs and those of the defendants are sold at the same shop and at the same counter and are purchased by the same set of purchasers which includes school going children, semi literate persons who are unable to make distinction regarding the source of manufacture. Hence, the present suit is instituted with a prayer to pass a decree for permanent injunction restraining the defendants, its agents from Contd......
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manufacturing, selling, offering for sale and distributing mathematical instruments, pencils and erasers and other stationery goods under the infringing trademark NATRAJ/SUPER NATRAJ and the device of NATRAJ or any other trademark and device which is similar to the plaintiff's registered trademark No. 225923, 260466, 283730, 400868 and 400869. It is further prayed that the defendants and its agents be restrained from passing of their goods as those of the plaintiffs. The plaintiff has also prayed for rendition of accounts from the defendants since the adoption of the offending mark and carton for the last three years.
6 The defendant filed the written statement and took the preliminary objection that it is a proprietory firm of Mr. Vijay Abrol and is in the business of manufacturing and trading of mathematical instruments and foot rules since 1-12-98 under the trademark BRITE with various quality names in respect Contd......
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of mathematical instruments including NATRAJ since inception of his business; the suit of the plaintiff, thus, suffers from delay, latches and acquiescence; the suit has been filed without any cause of action as the plaintiff is not using the trademark NATRAJ in respect of mathematical instrument box and plaintiffs mathematical instrument box are not available in market, hence, question of passing of does not arise; the defendant is prior in factual use of trademark NATRAJ in respect of mathematical instrument boxes; the trademark NATRAJ with the device of NATRAJ in respect of mathematical instrument box is not distinctive in favour of the plaintiff due to its non use continuously for the last more than five years. 7 On merit, it is denied that the plaintiff adopted the trademark NATRAJ in the year 1961 in respect of various stationery goods including mathematical instrument box; the trade channel of Contd......
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plaintiffs as well as defendants goods are not common as the item covered by the alleged registration in favour of the plaintiffs are office stationery, whereas mathematical instrument of defendant are used only by students; there are various other persons other than the plaintiffs who are registered proprietors of trademark NATRAJ and are using the trademark NATRAJ without any confusion or deception; the plaintiff is not entitled to relief under the Copyright Act 1957 because the artistic work in relation to goods such as mathematical instrument box is subject matter of Trade and Merchandise Marks Act 1958; it is denied that general term stationery includes mathematical instrument box also because the mathematical instrument box is separate and distinct item known by its specific description and cannot be confused with general term stationery; the item mathematical instrument box is liable to be excluded from the alleged registration of trade mark in view of the provisions of Contd......
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section 46 and 56 of the Trade and Merchandise Act 1958; the items packed in mathematical instrument box of defendant contain the trade mark BRITE and not NATRAJ as alleged by the plaintiff; the device of Lord NATRAJ is known since time immemorial and reproduction of such device is not infringement of plaintiffs copy rights because the plaintiffs artistic work has not been reproduced by the defendant; the device of NATRAJ adopted by the defendant is a well known bronze image of God NATRAJ; there is no confusion and deception in the minds of the traders and purchasers of stationery goods of the plaintiffs because of sale of mathematical instrument box of defendants. All other averments have been controverted and denied.
8 In replication, the plaintiff has reiterated and reaffirmed the stand taken in the plaint while controverting and denying the averments in the written Contd......
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statement.
9 On 22-12-03, from the pleadings of the parties, following issues are framed :-
1 Whether the plaintiff is registered proprietor of the Trade Mark 'Natraj' and devise of Natraj in relation to various goods as mentioned in para 3 of the plaint ? OPP.
2 Whether the plaintiff is the owner of copyright as mentioned in para 9 of the plaint ? OPP.
3 Whether the defendants are infringing the trademark and copyright of the plaintiff ?
OPP.
4 Whether the defendants are passing off their goods as the goods of the plaintiff ? OPP.
5 Whether the suit suffers from delay, latches and acquiescence, if so, its effect ? OPD.
6 Whether the plaintiff is entitled to any rendition of accounts, if so, from what period ?
Contd......
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OPP.
7 Relief.
10 In support of its case, the plaintiff has examined three witnesses whereas the defendant has examined one witness in support of his case. 11 Both the parties have filed their written submissions alongwith citations. I have perused the written arguments of the parties and the evidence on record. My issue wise finding is as under :- 12 ISSUE NO. 1 & 2 :-
1 Whether the plaintiff is registered proprietor of the Trade Mark 'Natraj' and devise of Natraj in relation to various goods as mentioned in para 3 of the plaint ? OPP.
2 Whether the plaintiff is the owner of copyright as mentioned in para 9 of the plaint ? OPP.
Contd......
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The onus of these issue is upon the plaintiff. The PW-1 has deposed that the plaintiffs are the registered proprietor of following trade marks :-
A) Trade mark 'NATRAJ' with the device of 'NATRAJ' under No. 225923, B) Trade mark 'NATRAJ' with the device of 'NATRAJ' under No. 260466, C) Device of 'NATRAJ' with the trade mark 'NATRAJ' under No. 283730, D) Trade mark 'NATRAJ' under No. 400868, E) Trade mark device of 'NATRAJ' under No. 400869.
13 It is further stated that all the above trade marks are the old trade marks and their registration are valid and subsisting on the register of trade marks. The copies of certificate have been proved as Ex. P-2 to P-4. The copy of the registered copyright bearing Contd......
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registration No. A-25427/79 is proved ad Ex. P-5. In cross examination of PW-1 it is simply suggested that the copyright certificate placed on record does not relate to mathematical instrument box. In this regard, the PW- 1 in para No. 13 has already deposed that "I say that the plaintiffs are not manufacturing and marketing mathematical instrument box bearing the trade mark NATRAJ as injunction has been obtained by Sh. Prem Chand Gupta who has wrongfully obtained the registration of the trade mark NATRAJ in respect of mathematical instruments by playing a fraud upon the trade mark office as well as obtained copyright registration of the said work." In para No. 14 of the affidavit, it is deposed that "I say that the plaintiffs have now obtained the registration of the trade mark NATRAJ with the device of NATRAJ bearing No. 400868 and 400869 in respect of stationery adhesive materials (stationery), artistic materials, paint brushes, office requisites other than apparatus. The mathematical Contd......
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instrument box being the stationery item and is covered under the heading of stationery."
14 On perusal of the evidence and the material on record including the written arguments, it is found that the registration of trade mark mentioned above is in respect of goods clause 16 which relates to all stationery items in respect of which claim has been made in the plaint. The plaintiff has, thus, proved by sufficient evidence that it is the registered proprietor of the trade mark NATRAJ with the device of NATRAJ under registration No. 225923, 260466, 283730, 400868 and 400869 in clause 16 in respect of various stationery goods mentioned in para No. 3 of the plaint. The plaintiff has, thus, also proved that it is the registered owner of the copyright as mentioned in para No. 9 of the plaint with regard to registration A-25427/79. Both the issues are accordingly decided in favour of the plaintiff and against the defendants.
Contd......
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15 ISSUE NO. 3 & 4 :- 3 Whether the defendants are infringing the trademark and copyright of the plaintiff ? OPP.
4 Whether the defendants are passing off their goods as the goods of the plaintiff ? OPP.
Both these issues are taken together as these issues are to be decided in the light of the same evidence. The onus of these issues is upon the plaintiff. The PW-1 in para No. 13 deposed that plaintiffs are not manufacturing and marketing mathematical instrument box bearing the trademark 'NATRAJ' as an injunction has been obtained by Sh. Prem Chand Gupta who has fraudulently obtained the registration of trademark 'NATRAJ' in respect of mathematical instrument box. The witness further states that in FAO 6/85 vide order dated October 31st 2003, the Hon'ble DB of the Hon'ble Delhi High Court in the litigation between Sh. Prem Chand Gupta and the plaintiff Contd......
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clarified that in suit for injunction and/or rendition of accounts filed by the appellants (plaintiff herein) against any such party will have to be decided on its own merits without being influenced by the judgment in the instant case. The Ld. counsel for plaintiff, therefore, argued that the injunction against the plaintiff with regard to mathematical instrument box will operate only in case of Prem Chand Gupta and any other third party is not entitled to manufacture and sale of the mathematical instrument box under the trademark and device of 'NATRAJ' and even the rights of the plaintiffs for restraining any third party from doing so are protected in the order of the Hon'ble DB of the High Court referred 'supra'. It is, therefore, argued that with regard to any third party, the trademark 'NATRAJ' and the device of 'NATRAJ' bearing No. 400688 and 400689 in respect of stationery, adhesive material (stationery) etc. shall also cover mathematical instrument box which being the stationery items and Contd......
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plaintiff is, therefore, entitled to restraining any third party except Prem Chand Gupta from selling and manufacturing the mathematical instrument box under the trademark and device of 'NATRAJ'. The PW-1 further deposed in para No. 15 to 19 which is reproduced as under :-
"15 I say that the defendant is manufacturing and marketing mathematical instruments under the trade mark NATRAJ / SUPER NATRAJ alongwith the device of NATRAJ. The mathematical instruments also contain the pencil as well as eraser, which have been used by the plaintiff for the last many decades. I say that by use of the trade mark NATRAJ / SUPER NATRAJ and device of NATRAJ in respect of mathematical instruments as well as the contents of the pencil and eraser in the said mathematical instruments the defendant is infringing the trade mark of the plaintiff under No. 225923, 260466, 283730, 400868 and 400869. The defendant is using the trade mark NATRAJ and device of NATRAJ in the same characteristic manner and script in which the plaintiffs are using on various products. Hence, the defendants are also infringing the copyright of the plaintiff. As the defendants have copied the above said trade mark NATRAJ and the device of NATRAJ of the plaintiff in respect of the goods mentioned above a great confusion has arisen among the traders and customers in India. By the use of the trade mark NATRAJ and the device of NATRAJ in respect of mathematical instruments which also contains the pencil and eraser an impression is being created in the minds of the public that the defendant's business is the business of the plaintiff or the defendant is an Contd......
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organization or branch or division of the plaintiffs which in fact is not true. The defendant's use of the said trade mark, device is identical with or deceptively similar with the trade mark, device, colour scheme and get up of the plaintiff.
16 I say that the use of the trade mark NATRAJ and device of NATRAJ by the defendant is calculated move and intended to deceive the public to trade upon the goodwill, name and reputation of the plaintiffs. In fact, they are also guilty of passing of as the defendant is selling their goods as the goods of the plaintiff. The contents of the mathematical instrument box i.e. pencil, eraser contained in the mathematical box also gives an impression to the public that the said pencil and eraser are of NATRAJ trade mark.
17 I say that the defendants are committing fraud upon the public. The defendant's goods with the trade mark NATRAJ and device of NATRAJ has become an instrument of fraud in the hands of unscrupulous sellers of stationery goods and they are passing off and likely to pass off the goods as that of the plaintiff's manufacture. The defendants have done so in order to trade upon the name, reputation and long standing of the plaintiff and pass of their goods as the goods of the plaintiff.
18 I say that the goods of the defendants are the goods of the same and/or same description of goods and cognate goods.
19 I say that the goods of the plaintiff and the goods of the defendants are sold at the same shop and at the same counter and are purchased by the same set of purchasers which include school going children, semi-literate persons who are unable to make distinction regarding the source of manufacture."
Contd......
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16 In cross examination of PW-1, it is deposed that they have received complaints not only from the public but also from the dealers with regard to deception in the public of the trademark 'NATRAJ'. It is further deposed that for many years repeatedly, the plaintiffs have got complaints about inferior quality of NATRAJ instrument boxes and its contents. 17 The plaintiff has also examined two independent witnesses, PW-2 Sh. Sanjay Gupta and PW-3 Sh. Paramjeet Singh and both of them deposed that they are selling the stationery goods manufactured by the plaintiffs under the trademark NATRAJ and the device of NATRAJ. It is also deposed by them that on account of superiority of good's long, extensive and continuous user and wide development, the plaintiff's trademark NATRAJ and the device of NATRAJ have become very popular and in case the said trademark are used by any other firm/company, Contd......
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there will be total confusion and deception in the market. Both these witnesses have withstood the test of cross examination carried out by counsel for defendant.
18 The defendant has examined himself as DW-1 and deposed that he is manufacturing mathematical instrument box under various quality names such as UNIVERSE, TONY, TEACHER, MAHARAJA, TIGER, BRITO, DISCOVERY, I LOVE MY INDIA, NATRAJ ETC. 19 In para No. 6 of the affidavit, he has given the details of the sales figures of mathematical instrument boxes and foot rules under the trademark BRITE with the quality marks as stated above. The detail is as under :-
Financial Year Sales Financial Year Sales 1992-93 2,62,048 1993-94 10,75,350 1994-95 10,54,271 1995-96 9,71,054 1996-97 13,83,762 1997-98 12,43,964 1998-99 16,96,472 1999-00 19,55,917 2000-01 2001-02 2002-03 2003-04 Contd......
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20 The DW-1 further deposed that the device of NATRAJ with the word NATRAJ was adopted by him after a well known bronze image of God NATRAJ and not after the trademark of plaintiff; that the adoption of device NATRAJ by him is honest and bonafide and therefore he has not committed any infringement of plaintiff's alleged copyright in artistic work titled NATRAJ BLACK LEAD claimed to be registered under No. A- 25427/79. It is further deposed that for the last more than 20 years, the plaintiff has not used the trademark label NATRAJ in respect of mathematical instrument boxes because vide order dated 20-12-82, passed by Delhi High Court in case of Universal Trading Company Vs. Hindustan Pencils (P) Ltd, (I.A No. 2357 of 1982 in Suit No. 883 of 1982), the plaintiff was restrained from using trademark and device of NATRAJ in respect of mathematical instrument box. It is further deposed in para No. 14 of the affidavit of DW-1 that there is not a single instance of confusion and deception as to use of Contd......
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quality name NATRAJ by him in respect of mathematical instrument boxes and the same has not caused any loss of the plaintiff in his business. It is further deposed that since the plaintiff's mathematical instrument boxes are not offered for sale in the market, hence, there cannot be any passing off of plaintiff's products by the defendant. In cross examination by Ld. counsel for plaintiff, the DW-1 admitted that plaintiff is manufacturer and seller of stationery items including pencils, sharpeners, rubber, etc. under the trademark NATRAJ. It is further admitted that the pencils, erasers, sharpeners, mathematical instruments and other stationery items are sold from the same outlets such as stationery shop. It is further admitted that the geometry box/mathematical instrument box contains pencils, sharpeners and erasers and other mathematical equipments. It is also admitted that the sale figures given in his affidavit are of his firm and not of the trademark NATRAJ as those sale figures referred to the Contd......
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trademark BRITE only. He has denied to a suggestion that by using the mark and logo NATRAJ he was passing off his goods as those of plaintiff's and taking benefit of plaintiff's reputation. He also admitted that criminal proceedings /FIR has already been registered against Rajiv Abrol, his son for infringement of trademark/copyright of the plaintiff's products. 21 I have gone through the written arguments submitted by the parties and also read the evidence on record. It is admitted fact that neither the plaintiff nor the defendant are proprietor of registered trademark NATRAJ with regard to mathematical instrument box/geometry boxes. The defendant's counsel has submitted that the plaintiff is already restrained by the order of the Hon'ble High Court in case of M/s Universal Trading Co. cited as 2000 PTC 561 (Delhi High Court). Now the question is whether the plaintiff is entitled to protect its trademark and Contd......
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copyright of NATRAJ with the device of NATRAJ with regard to mathematical instrument boxes/geometry boxes against the third party including the defendant or not ? Or the plaintiff is precluded from seeking injunction order against the third party other than M/s Universal Trading Co. with regard to manufacturing and sale of mathematical instrument boxes/geometry boxes under the trade name NATRAJ with the device of NATRAJ ? The Ld. counsel for plaintiff in this regard argued that in recent pronouncement of Hon'ble High Court of Delhi in CS (OS) No. 1370/04 titled Hindustan Pencils Ltd. Vs. J. M. Gosh & Brothers Pvt. Ltd., the Hon'ble High Court of Delhi has held that the plaintiff is entitled to injunction order against any third party except M/s Universal Trading Co. from manufacturing and sale of mathematical instrument boxes/geometry boxes under the trade name NATRAJ with the device of NATRAJ . It is, therefore, argued that the defendant who is manufacturing and selling the mathematical Contd......
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instrument box under the trade name NATRAJ is guilty of passing off his goods as those of goods of the plaintiffs and a deception is being created in the minds of the general public/purchaser of the goods of the plaintiff with the mathematical instrument box containing the stationery articles of NATRAJ under the label of NATRAJ.
22 In his written arguments, the Ld. counsel for plaintiff has highly relied upon the case of Sh. Prem Chand Gupta vs. Hindustan Pencils Pvt. Ltd. reported in 1982 PTC 6 (Delhi). The Ld. counsel for plaintiff submitted that in the above case, the order of the Hon'ble Single Judge was challenged by the plaintiff herein and the Hon'ble D.B. in the decision reported as 2000 PTC 561 referred 'supra' has already held that the proposition of the above case is applicable only in case of Prem Chand Gupta, proprietor of M/s Universal Trading Company and it shall not amount to a licence Contd......
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to any third party to violate the trademark and copyright of plaintiff for manufacturing stationery articles.
23 The Ld. counsel for defendant, however, further referred and relied upon the case of Hindustan Pencils Ltd. Vs. Aptudent Industries IA No. 1554/91 and 6253/91 in suit No. 644/91 decided on 10-07-91 (Delhi High Court) wherein it was held that sealing wax and coloured chalks were different from plaintiff's stationery goods. It is, therefore, argued on behalf of the defendant that the plaintiff has failed to prove passing off by the defendant as the adoption and use of trademark label NATRAJ with defendant's mark BRITE has been explained by the defendant and trademark NATRAJ is being also used by other persons for other stationery articles. It is, therefore, argued on behalf of the defendant that the case of Hindustan Pencils Ltd. Vs. M/s J.N. Ghosh & Bros. Pvt. Ltd. relied and referred Contd......
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by the Ld. counsel for plaintiff referred 'supra' is having no bearing on the present case. In order to appreciate arguments advanced on behalf of the defendant as well as plaintiff, the findings recorded by Hon'ble Mr. Justice Pradeep Nandrajog of our own Hon'ble High Court in case of Hindustan Pencils Ltd. Vs. M/s J.N. Ghosh & Bros. Pvt. Ltd. cited as CS(OS) No. 1370/2004 decided on 30-10-06 is quite relevant as his lordship has discussed the law laid down in Prem Chand Gupta's (Universal Trading Co. case) (supra) which is highly relied by the defendant of this case. Para 36 to 42 and 53 to 56 and 59 and 60 are relevant and reproduced as under :-
"36. Registration obtained by the plaintiff does not include mathematical instrument boxes. Not only that, plaintiff has come under a further cloud for the reason a learned Single Judge of this Court has restrained the plaintiff from using the trade mark 'Natraj' as also copyright in the design of its trade dress in relation to mathematical instrument boxes.
37. Said injunction was granted by a learned Single Judge of this Court on 20-12-1982 in the report published as 1982 PTC 6, Prem Chand Gupta Vs. Hindustan Pencils Pvt. Ltd.
Contd......
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38. Learned Single Judge found that Prem Chand Gupta, carrying on business under the name and style M/s Universal Trading Company had obtained registration of the trade mark 'Natraj' with device of lord Natraj in respect of mathematical instrument boxes, being in business since 1974. Nothing that M/s Hindustan Pencils Pvt. Ltd. were using the trade mark since 1961 but not in relation to mathematical instrument boxes, learned Single Judge noted that M/s Universal Trading Company obtained registration notwithstanding opposition by M/s Hindustan Pencils Pvt. Ltd. Nothing that the issue whether mathematical instrument boxes are cognate with pencils, rubbers, sharpeners etc. can be decided only after evidence is recorded, learned Single Judge restrained M/s Hindustan Pencils Pvt. Ltd. i.e. the plaintiff from using the trade mark 'Natraj' in respect of mathematical instrument boxes.
39. Said decision has been affirmed by a Division Bench of this Court in the decision reported as 2000 PTC 561, Hindustan Pencils Pvt. Ltd. Vs. Universal Trading Company.
40. Sh. Chetan Sharma, learned senior counsel for the defendant urged that in view of the fact that plaintiff stands injuncted from selling mathematical instrument boxes under the trade mark 'Natraj', in respect of mathematical instrument boxes, plaintiff cannot claim any interest predicated on the trade mark 'Natraj'.
41. I am afraid, stand of the defendant has to be rejected for the reason, learned Division Bench has lodged the following caveat :-
"Before parting, we may however refer to one of the apprehensions expressed by the counsel for appellants. It was submitted by him that the appellants are using the trade mark 'Natraj' with the device of Contd......
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Natraj for last about 45 years and its goods had achieved remarkable distinction and respect in the minds of public at large. This was the lurement for many unscrupulous and mischievous minded persons to copy the device in respect of some or other stationary items. The appellants were forced to file cases against these persons who were infringing appellants copyright and the judgment of the learned Single Judge was coming in the way of the appellants. In fact this was one of the principal reasons for which appellants were vehemently arguing the present appeal and wanted judgment of the learned Single Judge to be set aside. We make it clear that such an apprehension of the appellants is not well founded. It goes without saying that in the present case, the registration of the trade mark in question in favour of the respondent is maintained due to the peculiar circumstances of this case including the special circumstances as pointed out above. Such a judgment cannot give leverage to any other party who may try to infringe the trade mark of the appellants. Any suit for injunction and/or rendition of accounts filed by the appellants against any such third party will have to be decided on its own merit without being influenced by the judgment in the instant case."
42. Competing marks in relation to goods have to be considered not in relation to identity of the goods but also in relation to cognate and allied goods besides considering the trade channel.
53. Observations noted in the under noted judgments bring out the proposition that weightage has to be given to various factors such as class of consumers, trade connection between different goods, allied and cognate nature of goods, trade channel, reputation acquired by the plaintiff, phonetic or visual similarity in the competing marks :-
"i) AIR 1960 SC 142 Corn Products
Contd......
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Refining Co. Vs. Shangrila Food Products Ltd. (para 20) "......... there is no reason why the test of trade connection between different goods should not apply where the competing marks closely resemble each other just as much as it applies, as held in the black magic and panda cases, where the competing marks were identical. Whether by applying these tests in the particular case the conclusion that there is likelihood of deception or confusion would be arrived at would depend on all the facts of the case ......"
ii) AIR 2002 SC 275, Laxmi Kant Patel Vs. Chetanbhat Shah & Anr.
"10 A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name in results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic polices in the world of business. Secondly, when a person accepts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."
13 In an action for passing off it is usual, rather essential, to seek an injunction temporary or ad- interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima Contd......
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facie case, availability of balance of convenience in his favour, and his suffering by an irreparable injury in the absence of grant of injunction. According to Kerly (ibid, para 16.16) passing off cases are often cases of deliberate and intentional misrepresentation, but it is well settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing off (1995 Edition at 0.3.06) states that the plaintiff does not have to prove actual dam,age in order to succeed in an action for passing off. Likelihood of damage is sufficient. The same learned author states that the defendant's state of mind is wholly irrelevant to the existence of the cause of action for passing off. As to how the injunction granted by the court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiff's distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name. (Kerly, ibid para 16.97)"
iii) AIR 2001 SC 1952 Cadila Healthcare Ltd.Cadila Pharmaceuticals Ltd.
"35 Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered :
1. The nature of the marks i.e. whether the marks are work marks or label marks of composite marks i.e. bot words and label works.
2. The degree of resembleness between the marks, phonetically similar and hence similar to idea.
3. The nature of the goods in respect of which they are used as trade marks.
4. The similarity in the nature, character and performance of the goods of the rival traders.
Contd......
...35...
5. The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a decree of care they are likely to exercise in purchasing and/or using the goods.
6. The mode of purchasing the goods or placing orders for the goods and
7. Any other surrounding circumstances which may be relevant to the extent of dissimilarity between the competing marks.
Weightage to be given in each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factory in every case."
vii) AIR 1988 Bombay 167 Bajaj Electrical Ltd. Vs. Metal & Allied Products, Bombay & Anr. (DB) "that the mere fact that an article manufactured by the contesting parties are different in nature is not necessary to the claim that the defendants are guilty of passing off. We entirely agree that the conclusion recorded by the learned trial judge that there is identity of the goods, the market and the goods manufactured by both the plaintiff and respondent are sold under the same shop. Mr. Cooper complained that the electric goods manufactured by the plaintiff and the stainless steel goods manufactured by the defendants are not sold in one shop. The submission is not accurate but it is a common experience that Kitchenw are and Kitchen appliances like mixer, grinder and stainless utensils are sold in the same shop. At this interim stage, we are not prepared to accept the submission of Mr. Cooper on this account and we see no reason to take a different view from the learned single judge on this aspect. In our judgment, prima facie, it is clear that the defendants have intentionally and deliberately tried to pass of their goods by using of the name Bajaj."
ix) AIR 1969 Bombay 24 Sunder Parmanand Lalwani & Ors. Vs. Caltex (India) Ltd.
Contd......
...36...
"In this case, the goods are totally different. There is no trade connection between them. There is no connection in the course of trade, nor any common trade channels. There are factors against holding that there would be any danger of deception or confusion. But we must consider the factors which tend to show that there is a likelihood of creating deception or confusion. The opponents have been using their mark on a very large scale since 1937. Their sales in 1956 exceeded Rs. 30 crores. Their publicity is wide spread and large. In 1956, they spent over a million rupees on advertisements. The goods in respect of which they use the trade mark "Caltex" are mainly petroleum, kerosene and lubricants like grease and oils etc. The goods in respect of which the applicant seeks registration are mainly watches. The class of goods in respect of which the applicant seeks registration is wider that watches and watches can be both costly and cheap."
x) (1983) Fleet Street Reporter 155, Logo System Aktleselskalb and another vs. Lego M. Lemelstrich Ltd.
"(1) That the plaintiffs had established a high reputation in the mark LEGO which extended beyond the field of toys and construction kits the mark LEGO was wholly distinctive of them and had in fact become a household word;
(2) The reputation of the plaintiffs' mark and their goodwill was wide enough to extend to goods such as garden sprinklers and other irrigation equipment.
(3) That the use of the trade mark LEGO in relation to products of the defendants would mislead persons into thinking that those products were the goods of or connected with the plaintiffs.
(4) In the law of passing off as it has recently developed, there was no limitation respect to the parties' field of activity to that of the plaintiffs would be relevant as to whether the acts complained of in a Contd......
...37...
particular case amounted to a misrepresentation.
(5) The effect of the defendants continuing to use LEGO in relation to their products would destroy that part of the plaintiff's reputation in their mark LEGO and the goodwill attached to it. In view of the nature and extent of the plaintiff's reputation in the mark LEGO, such use was calculated to injure the plaintiff's goodwill in the sense that it was a reasonable forseeable consequence that it would do so;
(6) As a substantial number of persons would think that the use of LEGO on or in relation to the defendants' products would indicate that they were the plaintiffs' goods, the inability of the plaintiffs to control such use involved a real risk of injury to their reputation in the mark and hence to their goodwill."
xiii) 1999 PTC (19) 521 Essel Packaging Limited & Ors. vs. Essel Tea Exports Ltd.
"14 In the present case also, one of the points which arises for determination is the controversy pertaining to common field by activity. It is the case of the defendants herein that they are in the Tea Export Business whereas the Group of Companies of the Plaintiffs whereas the Group of Companies of the Plaintiffs are not in Tea Export Business. It is also contended that even one of the companies which in in the Tea Export Business does not bear the name "ESSEL" and in the circumstances, the plaintiffs are not entitled to an interim injunction in passing off action. This argument was also advanced in the case of Kirloskar Diesel Recon Pvt. Ltd. (supra) and it was rejected by Jhunjhunwala, J. by observing that the expression common field of activity is not conclusive for deciding whether there can be a passing off action although at one point of time the said test was treated as conclusive. With the passage of time the law on requirement of common field of activity in a passing off action has radically undergone a change and, according to the learned single Judge, there is no Contd......
...38...
requirement for a common field of activity to found a claim in passing off because the real question in each of such cases is whether there is, as a result of misrepresentation, a real likelihood of confusion or deception of the public and consequent damage to the plaintiffs is likely to be caused and if that is the test then the focus is shifted from the external objective test of making comparison of activities of parties to the state of mind of public in deciding whether it will be confused. Applying the test of misrepresentation, the learned single Judge Jhunjhunwala, J. observed that the business activity of the plaintiffs, namely, "Kirloskar Group of Companies" which vary from pin to lano as borne out from the object clauses of the Memorandum of Association is likely to create confusion if the defendants' business activities are allowed to be carried out in the name of Kirloskar Diesel Recon Pvt. Ltd. because in the case of trading name which has become almost a household word and under which trading name a variety of activities are undertaken, a passing off can successfully lie if the defendant has adopted identical or similar trading name.
15 In the case of Bajaj Electricals Ltd. vs. Metals and Allied Projects, reported in AIR 1988 Bom 157 : 1988 PTC 133, the Division Bench of this court while granting injunction has observed that it is always in the interest of fair trading and in the interests of all who may wish to buy or to sell goods, the law recognises that certain limitations upon freedom of action are necessary and desirable. In some situations the law had to resolve what might at first appear to be conflicts between competing right. In solving the problems which have arisen there has been no need to resort to any abstract principles but rather, to the straight-forward principle that trading must not only be honest but must not even unintentionally be unfair."
54. Plaintiff has successfully proved sale of its products since 1961 under the trade mark 'Natraj'.
Contd......
...39...
Witness of the defendant has admitted reputation of the plaintiff. Witness has admitted that product of the plaintiff is purchased by the children in reference to the trade mark 'Natraj'. Children go to the shop and tell the shopkeeper "we want to buy a Nataraj pencil". Nataraj has been admitted by the witness as phonetically similar to Nataraj. Considering common consumer as also the same trade channel I have no hesitation in holding that defendant has dishonestly attempted to trade upon the goodwill of the plaintiff. Defendant has attempted to pass off its goods as that of the plaintiff.
55. Notwithstanding that the plaintiff does not have registration for its trade mark 'Natraj' in respect of geometry boxes, (mathematical instrument boxes), in view of the law laid down in various decisions and as noted above, plaintiff would be entitled to an injunction against the defendant. The cloud on the right of the plaintiff in its litigation with M/s. Universal Trading Company eclipses plaintiff's right only qua said party. The said order does not give a licence to third parties to infringe the right of the plaintiff. This aspect has been clarified by the Division Bench of this Court, relevant observations are as noted in para 41 above.
56. I accordingly decide issues No. 2, 4 and 7 in favour of the plaintiff and against the defendant. Therefore, under the issue 'Relief' plaintiff would be entitled to a decree of perpetual injunction as prayed for.
59. I accordingly dispose of the suit by passing a decree of permanent injunction in favour of the plaintiff and against the defendant, restraining defendant from selling mathematical instrument boxes or any other stationery items using the trade mark Contd......
...40...
'Natoraj' with device of lord Nataraj forming the backdrop. I further restrain the defendant from selling mathematical instrument boxes or any other stationery item using a mark which is deceptively similar to the plaintiff's trade mark 'Nataraj'. I further restrain the defendant from using labels or packaging material having a design showing the idol of lord Nataraj or any other idol deceptively similar thereto.
60. I pass a decree of mandatory injunction directing defendant to deliver up all geometry boxes, packaging material, stationery etc. having the trade mark 'Natoraj' imprinted thereon to the plaintiff for destruction by the plaintiff within a period of 30 days from today."
24 The finding recorded by the Hon'ble High Court of Delhi in above case is squarely applicable to the case in hands. The plaintiff is entitled to protection of its trademark and copyright with trade name NATRAJ and device of NATRAJ against the defendant and any other third party except Prem Chand Gupta, proprietor of Universal Trading Company. The defendant in his affidavit has admitted that he is using the device of NATRAJ with the work NATRAJ stating to have adopted it from a well known bronze image of God NATRAJ. It is also admitted by the defendant that Contd......
...41...
he has advertised mathematical instruments under the trade quality name NATRAJ since the year 1992. The PW-2 and PW-3 examined by the plaintiff in support of its case has proved that plaintiff has gained a goodwill and reputation for long use and good quality with regard to stationery articles under the trade name NATRAJ. Therefore, if any other person is allowed to manufacture and sale of the stationery articles which undoubtedly includes the mathematical instrument box also, the deception is certain to be created in the minds of the purchaser of goods of the plaintiff under the trade name NATRAJ. It is also admitted by the DW- 1 that the stationery articles of the plaintiffs and mathematical instrument box under the trade name NATRAJ are sold on the same shop and the purchasers are students or the illiterate persons also. In these circumstances manufacture and sale of mathematical instrument box by the defendant under the trade name NATRAJ with the device of NATRAJ amounts to Contd......
...42...
passing off his goods as goods of plaintiff. The plaintiff has, therefore, succeeded in proving that the defendant is infringing the trademark and copyright of the plaintiff and is also passing off his goods as those of the plaintiffs. The issue No. 3 & 4 are according decided in favour of the plaintiff and against the defendants.
25 ISSUE NO. 5 :-
Whether the suit suffers from delay, latches and acquiescence, if so, its effect ? OPD.
The onus of this issue is upon the defendant. The defendant in has affidavit deposed that he has advertised trademark BRITE and quality name NATRAJ since the inception of his firm in December 1992. It is further deposed that products of his firm were advertised repeatedly in Delhi Stationer's Association Member's Telephone Directory published in 1995, 1998- 1999, 2001. He has filed the certified copy of the Contd......
...43...
relevant part of the said directory as Ex. DW1/(1-4). In para No. 12 of the affidavit, the DW-1 further deposed that plaintiff was also a member of above association and therefore ought to be aware about the use of trademark NATRAJ by him (defendant) in the year 1992. It is further deposed that the plaintiff has filed the suit in the year 2001 which suffers from delay, latches and acquisance. The defendant has relied upon DW1/(7-8) to prove that plaintiff was also member of Delhi Stationers Association and was accordingly aware of the sale and manufacturing of mathematical instrument boxes under the trade name NATRAJ by the defendant.
26 The Ld. counsel for plaintiff pointed out cross examination of defendant wherein he admitted as under :-
"I have the following trademark registered in my name which are :- Brite, Sumo for foot ruler, Contd......
...44...
Universal for mathematical instruments. These were registered about two years beck." The above cross examination was recorded on 15-09-05. The Ld. counsel for plaintiff, therefore, argued that the above deposition of defendant shows that he was not manufacturing and selling the stationery articles under the trade name NATRAJ since 1992 and has started it recently. The counsel for plaintiff further pointed out the end of cross examination of defendant wherein he has admitted that an FIR has been registered against the son of the defendant for infringement of trademark/copyright of the plaintiff's products.
27 I have perused the written arguments of the defendant with regard to issue No. 5 wherein it is argued that the documents Ex. DW1/1 to DW1/6 are admissible in evidence as per section 65(C) of the Indian Evidence Act because the originals were lying in another courts. Admittedly, these documents have not Contd......
...45...
been proved as primary evidence. Only certified copies have been filed. It is not explained as to why the said documents were not proved by summoning a competent witness. The contention that the same are admissible as secondary evidence does not hold water. The defendant has failed to prove these documents as per Indian Evidence Act and therefore, the same cannot be considered. Moreover, the defendant has stated that the plaintiff ought to be aware of manufacturing and sale of mathematical instrument box by the defendant under the trade name NATRAJ because of advertisement of defendant in Delhi Stationers Association Directory. The defendant must have examined the witness from Delhi Stationers Association to prove that he alongwith plaintiff were member of the said Association and the advertisement so given by the defendant was circulated to its members and was known to the plaintiff. The defendant in para No. 6 of his affidavit has given the Contd......
...46...
detail of sale figures of mathematical instrument boxes w.e.f. 1992-93 till 1999. The said sale figures are with regard to mathematical instrument boxes and foot rulers under the trademark BRITE. It is nowhere stated that the said sale figures are of mathematical instrument boxes sold under the trade name NATRAJ. 28 The PW-1 in para No. 25 of his affidavit deposed that the defendants have not given the statement of sale and advertisement figures to prove the user as alleged from the year 1992. It is further deposed that as and when the plaintiff came to know about the offending activities of the defendant, the present suit was filed. In cross examination, nothing was suggested to the PW-1 that the defendant was manufacturing and selling the mathematical instrument box under the trade name NATRAJ since 1992.
Contd......
...47...
29 Thus, the material on record shows that defendant has not been able to prove that he was manufacturing and selling the mathematical instrument boxes under the trade name NATRAJ since the year 1992 and that the suit of the plaintiff suffers from delay and latches. The issue No. 5 is accordingly decided in favour of the plaintiff and against the defendant.
30 ISSUE NO. 6 :-
Whether the plaintiff is entitled to any rendition of accounts, if so, from what period ? OPP.
The onus of this issue is upon the plaintiff. The plaintiff in his affidavit has stated nothing about the rendition of accounts and claim of damages from the defendants for the alleged passing off of his goods as those of plaintiffs. In para No. 25 of the affidavit of plaintiff, it is stated that the defendants have not given the statement of sale and advertisement figures to Contd......
...48...
prove the user as alleged from the year 1992. It is the case of the plaintiff that the defendants has started selling the mathematical instrument boxes under the trade name NATRAJ with the device of NATRAJ about the time when the suit was filed. The defendant in his cross examination stated that the sale figure given in para No. 6 of his affidavit is the sale figure of his firm which includes sale of stationery articles under different trade names as mentioned in his affidavit. The plaintiff has, therefore, not succeeded in discharging the onus of issue No. 6 and this issue is accordingly decided in favour of the plaintiff.
31 ISSUE NO. 7 :-
Relief.
In the prayer clause, the plaintiff has prayed for a decree of permanent injunction against the defendants alongwith delivery of the offending mathematical instruments and other stationery articles Contd......
...49...
alongwith rendition of accounts into the profit so earned by the defendants since the adoption of the offending mark. All issues except issue No. 6 has been decided in favour of the plaintiff. In the light of my finding on the issues, the suit of the plaintiff is decreed and following relief is granted :-
A) A decree of permanent injunction is passed in favour of the plaintiff and against the defendant restraining the defendants from selling mathematical instrument box or any other stationery items using the trade mark NATRAJ/SUPER NATRAJ with the device of NATRAJ. The defendant is further restrained from selling mathematical instrument boxes or any other stationery items using a mark which is deceptively similar to the plaintiff's trade mark NATRAJ.
B) A decree of mandatory injunction is passed in favour of the plaintiff and against the defendant directing the defendant to deliver to the plaintiff all the mathematical instrument box, stationery Contd......
...50...
articles having the trade mark NATRAJ/SUPER NATRAJ and the device of NATRAJ for destruction of the same by the plaintiff within a period of 30 days from the date of passing off this order. The suit of the plaintiff seeking relief of rendition of account as per prayer clause 'D' in the plaint is dismissed. The cost of the suit is also awarded in favour of the plaintiff and against the defendant.
A decree sheet be drawn accordingly. File be consigned to record room after due compliance.
Announced in the open Court on 15-02-07 (Raj Kumar Chauhan) Additional District Judge, Delhi.
Contd......