Bombay High Court
Faber-Castell Aktiengesellschaft vs Pikpen (P.) Ltd. on 13 February, 2004
Equivalent citations: [2004]54SCL397(BOM)
Author: D.G. Karnik
Bench: D.G. Karnik
JUDGMENT D.G. Karnik, J.
1. This motion is taken out by the plaintiffs seeking relief under Order 39 Rule 2A of the Code of Civil Procedure against the defendant and its director who are alleged to have committed breach of the order of injunction passed by this Court on April 30 and May 2, 2003 in Notice of Motion No. 2/03 as modified by an order dated 4th July, 2003.
The facts giving rise to present motion are stated below :
2. The plaintiff No. 2 is a subsidiary of plaintiff No. 1 and is a part of Faber-Castell Group and is inter alia is engaged in the business of manufacturing and marketing art material products, stationery products, drawing and painting instruments and textmarkers which are used for highlighting typewritten or fax text in fluorescent colours. The plaintiff No. 2 manufactures and sells textmarkers under the brand name "Faber-Castell" world wide and in India for the last many years. The defendant introduced a product having similar characteristics of highlighting typewritten text and fax text under a brand name "KOLORPIK". The plaintiffs thereafter filed a suit No. 285/03 in this Court stating that the plaintiffs product has a distinctive design and which is registered under registration No. 1 /4429 on 4th August, 1997 with the Controller of Patents and Designs under the Designs Act, 1911 and alleging that the Defendant had copied the design of the plaintiffs. The plaintiff also alleged that the defendant used copies and using the plaintiff's mark "TEXTLINER" on its product and was passing off its textmarkers as that of the plaintiff's by producing them with an overall get up deceptively similar to that of the plaintiff's textmarkers. By the order dated April 30 and May 2, 2003, this Court granted an interim injunction in terms of prayer Clause (c) in the motion. According to the plaintiffs, after the order of injunction, the Defendant made some cosmetic alterations in its product which were immaterial in nature. The altered product is also deceptively similar to the plaintiffs textmarkers. The defendant has continued to sell its textmarkers with such small alterations that the defendants continue to be deceptively similar to the plaintiffs' textmarkers. According to the plaintiffs, the defendant by continuing to sell the textmarkers in such fashion is committing and has continued to commit a breach the order of injunction and therefore the present motion for action under Order 39 of Rule 2A of the Code of Civil Procedure.
3. Learned Counsel for the defendant submitted that no action under Order 39 of Rule 2A of Civil Procedure Code can be taken in the present case for the following reasons :
(i) The defendant has made changes in its textmarkers and the new product is not deceptively similar to the product of the plaintiffs. The defendant has therefore not committed breach of the order of injunction dated April 30 and May 2, 2003.
(ii) In the notice of motion No. 240/03, the plaintiffs had claimed the injunction restraining the defendant from using their design (prayer Clause B of the motion) and they had also claimed injunction restraining the defendant from passing off the impugned goods i.e. the goods which the defendant was then manufacturing, on the ground that were deceptively similar to the plaintiffs' goods. As the altered textmarkers produced and sold by the defendant were different from the impugned goods in respect of which injunction was granted, the plaintiff cannot be said to have committed the breach of the order of injunction. If the plaintiffs feel that the sale of the altered textmarkers also amounts to passing off, the plaintiffs should have taken out of a separate motion for an injunction against the sale of the altered textmarkers but cannot pray for an order under Order 39 of Rule 2A of the Code of Civil Procedure because the defendant is not selling the impugned goods i.e. the original goods.
(iii) Provisions of Order 39, Rule 2A of the Code of Civil Procedure are not available and cannot be invoked by the High Court exercising its original jurisdiction. Order 39, Rule 2A is essentially available to the Subordinate Court for taking action for breach of their orders of injunction. In any event, the High Court being the Court of record and having the power to punish for its own contempt under Article 215 of the Constitution of India, in case of a breach of its order of injunction passed in its original jurisdiction in a suit, the High Court should not resort to Order 39, Rule 2A of the Code of Civil Procedure.
(iv) The Defendant had made bona fide changes in the design and get up of its textmarkers "KOLORPIK". For the purpose of taking an action under Order 39 of Rule 2A of the Code of Civil Procedure, the plaintiff must prove that the defendant has deliberately and wilfully violated the order of injunction. Assuming that the court comes to the conclusion that selling of altered textmarkers also amounts to passing off, and also amounts to breach of an order of injunction, the defendant has not committed "wilful" breach and therefore action under Order 39, Rule 2A of the Code of Civil Procedure is uncalled for.
Regarding Ground (I) :
4. Before any action under Order 39, Rule 2A of the Code of Civil Procedure can be taken, it would have to be first proved by the plaintiff that the defendant has committed a breach of the order of injunction. The order of injunction restrained the defendant from selling his textmarkers by using any trade dress or colour scheme which was identical with or deceptively similar to the plaintiffs' textmarkers so as to pass off the defendant's textmarkers as that of the plaintiffs'. According to the defendant, it has modified the get up of its textmarkers and the modified textmarkers do not amount to passing off of the defendant's goods as that of the plaintiffs. In order to ascertain whether the alterations made by the defendant arc such as would remove the vice of passing off its goods as that of the plaintiffs' goods, it would be appropriate to compare the plaintiffs product the Defendant's original product and the defendant's altered product. In paragraph No. 17 of its order dated April 30 and May 2, 2003, this court concluded "On the whole, there is a deceptive similarity between the defendant's marker pens with that of the plaintiff's marker pens. In paragraph No. 16 of the Judgment, following 6 similarities were noted between the plaintiffs textmarkers and the defendants textmarkers.
(i) The arrangement of the words written on the body (barrel) of the textwriters and the colour of the lettering were confusingly similar.
(ii) The lettering of the letters written in the name and the text were indistinguishable.
(iii) The textmarker consist of the body, clip and the plug at the bottom. The clip was held to be similar with minor variation.
(iv) The size and the colour of the plug at the bottom of the defendant's product was held to be similar to the plaintiff's product.
(v) There was a slight difference at the two ends of the marker pens. Ends of the defendants highlighter pens were flat whereas the ends of the plaintiffs highlighter pens were slightly curved. But the difference was hardly noticeable.
(vi) The deep green colour of the body (barrel) of the textmarkers of the defendant was matching with the colour of the body of the plaintiffs textmarkers.
5. In paragraph No. 5, the affidavit, in reply filed dated 19th December, 2003 sworn in by Rachna Sawhney, Director of the defendant, the defendant has stated the changes made in the altered textmarkers as follows :
(a) Colour of the body (barrel) of the textmarker has been changed from green to black.
(b) The use of the word "TEXTLINER" from the text written on the barrel of the textmarkers has been discontinued.
(c) The lay out of the text written on the barrel has been altered.
6. Let me examine whether the three changes as enumerated by the defendant in his affidavit in paragraph No. 5 are only cosmetic, as alleged by the plaintiffs, or whether they are substantial or real so as to make the defendants altered textmarkers differentiable from the plaintiffs.
7. In the clarificatory order dated 4th July, 2003, this court has clarified that the use of the word "TEXTLINER" per se is not prohibited and that the plaintiff has not established exclusive right to use the word "TEXTLINER", which was found to be descriptive. The court had not held that the use of the word "TEXTLINER" was deceptive and had not prohibited the use of the word "TEXTLINER" by the defendant on its product. Therefore, the change made by the defendant, by deletion of the word "TEXTLINER" is inconsequential.
8. No doubt some changes have been made by the defendant in the lay out of the text written on the barrel of its textmarkers. However, applying the test of the purchaser, being a man of "average intelligence and imperfect memory" one would have to see whether the changes are real and substantial or merely cosmetic and the overall get up of even the altered product is deceptively similar to that of the plaintiffs. What is prominent even in the altered textmarker is the colour in which the text is written. It is bright golden and identical with the colour of the letters used on the plaintiff's textmarkers. No change is made in colour of the letters by the defendant though in its order dated April 30 and May 2, 2003, the Court had found that the overall get up of the text written on the plaintiffs text-marker and the defendant's textmarker was non-distinguishable. The size of letters written on the modified product also remains non-distinguish-able and the few changes made in the layout of the written letters/words are not such as would make the overall get up of the text distinguishable to the man of average intelligence and imperfect memory.
9. The third change viz. the change in the colour of the barrel is claimed to be change of significance. Learned counsel for the defendant handed over to me a photograph showing 12 textmarker pens available in the market, which shows that 9 out of 12 textmarker pens have a black coloured barrel, 1 marker pen of the plaintiff has a deep green coloured body and 1 marker pen by name Top Star has a light green coloured barrel. The defendant's old marker pen also had a deep green coloured barrel a seen in the photograph. Learned counsel for the defendant also handed over the textmarker pens, as depicted in the photograph. All the marker pens show that they have a black coloured barrel with similar design viz. a flat shape body, cap with a clip depicting the colour of the marker ink and the plug at the bottom. In the few cases, the plug also has the colour of the body and in other cases, the plug at the bottom is of same colour as of the cap and the clip. The design of the cap is slightly different in some cases while it is similar in few others. Learned counsel for the defendant submitted that the flat body is a common trade feature for almost all the textmarker pens available in the market. He further submitted that the black coloured body was also a common feature of most of the textmarkers available in the market. He invited my attention to paragraph No. 189 appearing on page No. 117 of volume 48 of Halsburys Laws of England, 4th Edition, which reads as under :
"Passing off by similarity of get-up or shape of goods. Passing off may occur, not by reason of any similarity of trade marks or names, but because of the similarity of general appearance or get-up of goods, or the premises in which business is conducted, or the advertising materials and other documents used in connection with the defendant's goods or services.
The similarity of get up may be such that passing off is likely to occur even though the trade marks or names are wholly different, especially where the goods are likely to be brought by illiterate or uneducated persons but similarity or dissimilarity of get up is only one of the factors to be taken into account in deciding whether in all the circumstances there is a likelihood of deception, and a dissimilar name or mark, if given prominence, may negate the similarity of get-up. A competing trader may adopt a get-up similar to that of the plaintiff's product, not in order to pass off his goods as the plaintiff's but in order impliedly to represent to the public that his goods are similar to or a substitute for the plaintiffs, thus, competing in and taking advantage of a market created by the plaintiff's efforts, this is legitimate so long as he does not thereby represent his product as the plaintiff's."
10. He submitted that similarity or dissimilarity of get up is only one of the factors to be taken into account in deciding whether in all the circumstances, there is a likelihood of the deception, and a dissimilar name or mark if given prominence, may negate the similarity of the get up. He submitted that the name "KOLORPIK" is written with prominence on the defendant's textmarker pens while the plaintiff's textmarker pens use its name "Faber-Castell" on the barrel. The prospective purchaser would ask for the product by name and therefore there was no possibility of deception. Other similarities in the appearance of the plaintiff's product and the defendant's altered product would not amount to passing off. Such argument could have been advanced before the Learned Judge hearing motion No. 240/2003 when the court was considering whether the defendant's product was deceptively similar to the plaintiff's product and whether the defendant was passing off its goods as that of the plaintiff. Such an argument is not available when the court is considering whether the defendant has committed a breach of the order of injunction. The argument that the name "KOLORPIK" was prominently written on the defendant's product, which distinguishes it from the plaintiff's product named as "Faber-Castell," could have been available to the plaintiff when the court on the hearing the original motion for grant of injunction. Once the injunction is granted, this argument would not be available, as it would virtually amount to review of the previous order.
11. All that can be seen in an inquiry under Order 39, Rule 2A of the Code of Civil Procedure to see whether the defendants have made, such changes in the offending product as would remove the vice of passing off on the ground of deceptive similarity. The Court must confine itself to the similarities found in the original order of injunction and see whether those similarities have been obliterated and removed. In the present inquiry, the court cannot independently see whether the similarities as noticed in the order granting injunction were really deceptive similarities amounting to passing off.
12. One of the test for finding out whether the altered product is so dissimilar as to remove the vice of deceptive similarity amounting to passing off is to compare the defendant's original product and the altered product and to see if the altered product was of different person. Whether the defendant could have successfully brought an action against the manufacturer of altered product as passing off that product is of the defendants. If two products look so similar as to enable the defendant to get an injunction against the manufacturer of the altered product (except perhaps for the same name if the original name of the defendant's product was not held to be similar) then the alterations made by the defendant would ordinarily be regarded as cosmetic and not real or substantial. If the original textmarker of the defendant and the altered textmarker is compared, there can be no doubt in anybody's mind that they are very similar and the defendant would have been able to get the injunction against the person selling the altered product, if it was of a different manufacturer. If plaintiff's product 'A' and the defendant's original product 'B' are held to be deceptively similar and if the defendant's altered product 'C' is deceptively similar to the product 'B' then the product 'C' would ordinarily be regarded as deceptively similar to product 'A'.
13. Even the visual inspection of the plaintiff's original product and defendant's original product and the altered product leave no doubt that the changes which have been made by the defendant are cosmetic. It is true that black colour is generally used as a colour of the barrel by most of the manufacturers of textmarker pens. However, the black colour of other manufacturers except that of the defendant's textmarker has a mat finish, dissimilar and distinguishable from the plaintiff's. Only the defendant's textmarker has a glossy black colour of the body/barrel for its textmarker, which from a distance appears similar to green colour of the plaintiff's textmarker. From a distance, and in artificial light in the shops where the products are usually sold, the colours look very similar and the overall get up makes the two products indistinguishable for a person of average intelligence with imperfect memory. Thus, to my mind, the changes made by the defendant appear to be only cosmetic and not bona fide at all. The sale by the defendant of the textmarkers pen in the altered form also amount to be breach of the injunction order passed by this court on April 30 & May 2, 2003.
Regarding Ground (II):
14. By an order dated April 30 & May 2, 2003, an injunction was granted in terms of prayer Clause C which reads as under :
"That pending the hearing and final disposal of the suit, that the defendants by themselves, through their partners, proprietors, servants, agents, manufacturers and/or otherwise howsoever be restrained by an order and injunction of this Hon'ble Court from in any manner using the trade mark TEXTLINER in relation to suit goods and/or applying, placing upon the market for sale or exposing for sale, the impugned goods with impugned design and/or impugned trade dress and colour scheme as shown in Exhibits "H" and "I" to the Plaint and/or any other mark and/or trade dress and/or colour scheme which is identical with and/or deceptively similar in any manner whatsoever to the plaintiff No. 1 's trade mark TEXTLINER and/or plaintiffs design and trade dress and colour scheme as shown in Exhibits "D" and "E" to the plaint so as to pass off and/or enable others to pass off, the Defendants impugned goods and also as shown in Exhibits "H" and "I" to the Plaint the as and for that of the plaintiffs bearing the trade mark TEXTLINER and/or as shown in Exhibits "D" and "E" to the plaint respectively." (Underlining supplied)
15. Learned counsel for the defendant contended that the defendant was injuncted only from selling the impugned goods. He invited my attention to the various averments made in the plaint to contend that the phrase "impugned goods" as used by the plaintiff in the plaint and in the previous notice of motion, denote only the original textmarkers as shown in Exhibits "H" & "I" to the plaint. Learned counsel submitted that once the defendant made any changes in the textmarkers, the new goods came into existence and the new goods were not the "impugned goods" as shown in Exhibits "H" & "I" to the plaint. Learned counsel submitted that as the injunction order was only against the sale of "impugned goods" and not against the sale of any other goods which may also be deceptively similar to the plaintiff's textmarkers. If the altered textmarkers of the defendant were also similar to the plaintiff's product, the plaintiff ought to have taken out a fresh motion for injunction in respect of the altered textmarkers. There was no injunction against the defendant not to sell the altered textmarkers and the injunction was limited to the impugned goods and therefore no action under Order 39, Rule 2A of the Code of Civil Procedure can be taken. The argument is only stated to be rejected. Once the court comes to the conclusion that the goods which have been altered after the order of injunction are also similar and deceptively similar the injunction would operate against the sale of the altered goods also. Otherwise clever defendant, on being prevented by an order of injunction, would make slight modifications in the goods to contend that the new goods are different and therefore the plaintiff must apply for the separate injunction in respect of the different goods. Assuming that the plaintiff obtains fresh injunction in respect of such modified goods, nothing prevents the defendant from making some further small modifications and claim that the goods which have been modified for the second time are different and therefore it is not injuncted from selling them. This can go on ad infinitum, leaving the plaintiff without remedy. Such an interpretation of the original order of injunction would be absurd and has to be rejected.
Regarding Ground (III)
16. Learned counsel for the defendant submitted that the provision of Order 39, Rule 2 A of the Code of Civil Procedure cannot be invoked by the High Court for taking action against the defendant for breach of an order of injunction passed in a suit entertained by it in exercise of its original jurisdiction. He submitted that Order 39, Rule 2A of the Code of Civil Procedure is essentially enacted to enable the sub-ordinate courts for enforcing their orders of injunction as the subordinate courts cannot punish for the contempt of Court but have to make a reference to the High Court under the Contempt of Courts Act, 1971. Punishing the defendant for contempt breach of injunction order may take a long time by reference and in order to provide quicker remedy to the party who suffers on account of the breach the provision has been made under Rule 2A of Order 39. In case of breach of an order of injunction passed by the High Court in a suit entertained by it in exercise of its original jurisdiction, the High Court for its own contempt without making of a reference from the provisions of the Contempt of Courts Act, 1971. Thus a person aggrieved on account of a breach of an order of injunction passed by the High Court in a suit tried under its original jurisdiction, can avail of a quicker remedy of a contempt and cannot apply under Order 39, Rule 2A of the Code of Civil Procedure. Learned counsel for plaintiff invited my attention to the decision of the Supreme Court in High Court of Judicature at Allahabad through its Registrar v. Raj Kishore Yadav [1997] 311 (sic.). In para 14 of the judgment the Court observed :
"Reliance placed on Order 39, Rule 2A of the Code of Civil Procedure, 1908 ("CPC" for short) by the learned Judges in the impugned judgment is also uncalled for. The said Rule on its express language enables the presiding Judge of the court that passed injunction order to entertain complaint regarding breach of his order. In such a case the presiding Judge of the court or his successor-in-office is enabled to entertain such a complaint. The aforesaid Rule is mainly pressed into service before subordinate courts which at most of the centres consist of sole presiding Judges of the courts. In such cases where the subordinate courts working at these centres consist of only one presiding Judge the applications under Order 39, Rule 2A CPC will have to be filed in the very same court and would go to the same Judge or his successor-in-office. Such is not the case with the High Court functioning as a superior court of record under Article 215 of the Constitution of India."
17. In my opinion the observation of the Supreme Court to the effect: "Rule 2A of the Order 39 of the Code of Civil Procedure is mainly pressed into service before the subordinate courts which at most centres consist of sole presiding Judges of the Courts" is only an observation of state of affairs. The Supreme Court did not lay down that the High Court is powerless to take action under Order 39, Rule 2A of the Code of Civil Procedure. In case of breach of an order of injunction passed by a High Court, in a suit entertained by it under its original jurisdiction, the existence of an alternative remedy of punishing in contempt the person committing the breach of the order of injunction would not bar the High Court from taking an action under Order 39, Rule 2A of the Code of Civil Procedure, in a case where it is shown that the defendant has breached the order of injunction passed by it in a suit entertained by it in exercise of its original jurisdiction. There is yet another reason for taking the view that action under Order 39, Rule 2A can be taken by the High Court in the event of breach of an order of injunction passed by it in a suit in exercise of its Original Civil Jurisdiction. Under Section 2(d) of the Contempt of Courts Act, the civil contempt has been defined to mean wilful disobedience of any judgment, decree, direction, order, writ or other process of the court or a wilful breach of an undertaking given to the court. For taking action for civil contempt, it is necessary to show that the defendant has committed the breach of the injunction order wilfully. For taking action under Rule 2A of Order 39, it is not necessary to show that the breach was wilful. Rule 2A of Order 39 reads as under :
"2 A. Consequent of disobedience or breach of injunction.--(1) In the case of disobedience of any injunction granted or other order made under Rule 1 or Rule 2 or breach of any of the terms on which the injunction was granted or the order made, the Court granting the injunction or making the order, or any Court to which the suit or proceeding is transferred, may order the property of the person guilty of such disobedience or breach to be attached, and may also order such person to be detained in the civil prison for a term not exceeding three months, unless in the meantime the Court directs his release.
(2) No attachment made under this rule shall remain in force for more than one year, at the end of which time, if the disobedience or breach continues, the property attached may be sold and out of the proceeds, the Court may award such compensation as it thinks fit to the injured party and shall be the balance, if any, to the party entitled thereto."
It is seen that the word "wilful" is not inserted in Rule 2A. The legislature deliberately used only the word "disobedience" and did not qualify it will the word "wilful" as is done in Section 2(d) of the Contempt of Courts Act. While for punishing a person for contempt, it would be necessary to prove that the person has wilfully disobeyed the order of the Court, it is not necessary to prove wilful disobedience for taking action under Rule 2A of Order 39. Whether the breach is wilful or otherwise, may be the relevant circumstance for determining what action should be taken under Rule 2A; the severity and the extent of action. But the power to take action under Rule 2A of Order 39 is not dependant upon the wilfulness of the breach.
18. Under Order 39, Rule 2A, two actions can be taken for a breach of Order of Injunction. One is attaching the property of a person who is guilty of disobedience and the other is to detain the person committing the breach in civil prison for a term not exceeding three months. In Samee Khan v. Bindu Khan ; the Supreme Court held :
"...It is open to the Court to attach the property of a disobeying party and at the same time the court can order him to be detained in civil prison also if the Court deems it necessary. Similarly, the Court which orders the person to be detained in civil prison can also attach the property of that person. Both steps can be resorted to or one of them alone need be chosen...." (p. 2765)
19. It is left to the court to decide, on consideration of the facts situation in each case, what action should be taken under Order 39, Rule 2A in case of a breach of order of injunction. It is thus, open to the Court to take both the actions simultaneously or the Court may take only one of the two possible actions. The discretion as to whether one or the other or both the actions should be taken, which is left to the Court must be exercised judiciously. If it is shown to the Court that the breach is deliberate and to defy the authority of the Court, it may take both the actions simultaneously. However, if it is shown to the Court that the breach is not wilful, but is accidental or on account of circumstances beyond the control of the person the court may not detain the person in civil prison but may only attached his property. It appears to me that the order of attachment to be passed by the Court under Order 39, Rule 2A is ordinarily curative in nature. Initially the Court only attaches the property and the attachment remains valid for a period of one year. At the end of the period of one year, if the disobedience of the breach continues, the property attached may be sold and out of the sale proceeds, the Court may award such compensation as it thinks fit to the injured party and pay the balance if any to the party entitled thereto. The property cannot be sold immediately on attachment. The cooling period of one year is provided to enable the party who committed the breach to mend his ways and obey the order of injunction. If he obeys the order of injunction before the expiry of the period of one year, the property attached cannot be sold and the order of attachment would lapse at the end of the year. This only shows that an opportunity is given to the party committing the breach to mend his ways and so, in my opinion, the order of attachment is curative in nature. As against this, the order of detaining a person in civil prison appears to be punitive though the object of either of the actions is to ensure that the order of injunction is obeyed. In the first case, a person is given an opportunity of rectifying the breach without being punished. While in the case of latter, a person is detained in civil prison also by way of a punishment.
20. Keeping in mind the above, it would be necessary to examine the facts of this case for considering what action should be taken. The Defendant No. 1 is a company and therefore, cannot be detained in civil prison. However, Mr. Rajiv Sawhney, Defendant No. 2 has been joined as a party respondent to this motion. In paragraph Nos. 4 and 8 of the affidavit of the support of the notice of motion dated 12th December, 2003, it is alleged that Mr. Rajiv Sawhney is the Director in-charge of the affairs of defendant No. 1 and that he was aware of the injunction and is responsible for the breach. It is, therefore, prayed that the order of detaining Mr. Rajiv Sawhney in civil prison be passed, in addition to the order of attachment of the property of the Defendant. I am not inclined to pass an order of detention of Mr. Rajiv Sawhney in the civil prison for the reasons mentioned below.
21. After the order of injunction, the defendant No. 1 made some changes in its textmarker. According to the learned counsel for the defendant, the changes were such that the altered goods ceased to be deceptively similar to the plaintiffs goods. The changes were made bona fide with a view to comply with the order of injunction. It is one thing to say that this Court finds that the changes are not sufficient so as to distinguish and prevent passing off of the defendant's textmarker as that of the plaintiff and another thing to say that the defendant has deliberately continued to pass off its goods as that of the plaintiff. At the stage of hearing, the learned counsel for the defendant made a further submission that if the court finds that the altered textmarkers of the defendant were also deceptively similar to the plaintiffs' textmarkers, it was willing to make further changes in its textmarker. As the hearing spilled over to the next day, on the second day the defendant produced one textmarker with altered layout and lettering. The learned counsel submitted that this was a change made overnight-and the defendant was willing to make even further changes. The textmarker produced showed that the layout has been further changed and the colour of the lettering has been changed from golden to silver to make the two products distinguishable. Learned counsel for the plaintiff objected to recording of any finding as to whether the altered product was also deceptively similar to the plaintiffs product, as this is not an enquiry into the similarity or otherwise of the altered product which is yet to come into the market, and refrain from recording any finding whether the further altered product is deceptively similar to the plaintiffs' product. The submission is accepted. All that can be said at this stage is that the defendant at the first instance made some changes bona fide believing that he would lawfully sell his textmarkers with those changes and that the defendant bona fide intends to make alterations in the product. Learned counsel submits that the defendant does not want to trade on the deceptive similarities but wants to compete fairly in the market. The defendant and Director of the defendant, Mr. Rajiv Sawhney who present in the court, through their counsel undertake that after the expiry of period of one week from today, the defendant would not produce textmarkers nor sell textmarkers using golden lettering but would change the lettering to silver. This undertaking of course does not apply to the stocks which have already been sold in the market. The learned counsel further says that this undertaking would be subject to any order which may be passed in an appeal against this order. In view of this undertaking, it is not necessary to pass an order of immediate attachment of the dyes as requested by the plaintiffs. The plaintiffs have not mentioned in the motion any specific property to be attached. But only an oral prayer is made for attachment of the dyes by which the defendant's textmarkers are produced. As stated earlier, object of an order of attachment is curative, to prevent a person from continuing to commit a breach. As an undertaking in the aforesaid form has been given, I am inclined to pass only a conditional order of attachment.
22. Accordingly, the motion is allowed in following terms :
The dyes by which the defendant manufactures the offending text-markers shall be attached in the event the defendant commits a breach of the undertaking given to this Court. The plaintiff shall be free to inform this court the full description of the place where the dyes are kept for the purpose of attachment.
23. Learned counsel for the defendant states that the dyes do not belong to the defendant company. It is not necessary to adjudicate on this issue, as the issue can be adjudicated under Order 21, Rule 58, if need arises.
24. Motion disposed of in aforesaid terms.