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14. Mahindra Holdings & Finance Ltd.

15. Mahindra Acres Consulting Engineerings Ltd.

The further case of the plaintiff is that the word 'Mahindra' is its registered trade mark bearing Registration No. 338997, in respect of the goods in Class 12 of the Trade & Merchandise Marks Act, 1958 (hereinafter referred to as 'the Act'). According to the plaintiff, the word 'Mahindra' is not only a registered trade mark but forms the dominant and significant part of the plaintiff and other companies of the group. The companies carrying the name 'Mahindra' are engaged in industrial and trading activities in multiple fields such as manufacture of cars, jeeps, tractors, motor spare parts, farming equipments, chemicals, hotels, real estate, exports, computer software and computer systems, etc. The annual turnover of the plaintiff and some of its group companies exceeds Rs. 3, 000 crore. The annual expenditure for advertisements and market development for sales promotion by the plaintiff and its group of companies is about Rs. 9 crore. The plaintiff has averred that the name and trade mark of 'Mahindra' is extremely popular in India and is associated with the products and services of the plaintiff. It was further averred that the Mahindra group of companies have a nation-wide network of selling and distributing agents. The name and trade mark "Mahindra" is prominently used and displayed on all its products and also promotional materials. On account of high quality of the products manufactured and sold by the plaintiff, as also high quality of products and services of other group companies, the plaintiff asserts, that the name and trade mark of 'Mahindra' have come to be known exclusively with the plaintiff and its group of companies and have acquired tremendous reputation and goodwill among members of public throughout the world including India. The further case pleaded by the plaintiff is that in or about August 1996, it came across a prospectus of the defendant in respect of its public issue and for the first time the plaintiff then came to know about the existence of the defendant and its corporate name. The name of the defendant is almost the same as that of the plaintiff with the only difference in spelling by substituting 'e' for 'i' in 'Mahindra'. It is the contention of the plaintiff that the words are phonetically, visually and structurally almost identical and in any event deceptively similar. In the prospectus of the defendant the words "Mahendra and Mahendra" are more prominently written than the rest of the names. According to the plaintiff the defendant wishes and intends to fraudulently and wrongfully deceive members of the public into believing that the defendant is the associate of the plaintiff or in some way connected with the plaintiff and to trade on the reputation of the plaintiff. The plaintiff apprehends that by the use of name/words deceptively similar to that of the plaintiff's name as its corporate name the intention of the defendant is to pass-off or likely to pass-off and to enable others to pass-off its business and products as those of the plaintiff. It is the contention of the plaintiff that the defendant by use of the said words is trading on the goodwill and reputation of the plaintiff.The plaintiff in the notice issued on 28th August, 1996 had called upon the defendant to change its name. It had also moved the Securities and Exchange Board of India and various stock exchanges in the country drawing their attention to the fact that the defendant was using a deceptively similar corporate name as that of the plaintiff and to take appropriate action against the defendant. The defendant, in its reply to the said notice, took the plea that it has used the name of 'Mahendra' honestly and the allegations made by the plaintiff that it has dishonestly adopted the said name and style is misconceived. Thereafter, the plaintiff filed the suit.

The defendant, the appellant herein, contested the notice by filing a reply affidavit, filed by one Mulchand alias Mahendra G. Parwani in which it was stated, inter alia, that the deponent is better known as 'Mahendrabhai' in the trade circle and he resides in 'Mahendra House' named after him. He has been filing income returns in the name of Mahendra G. Parwani. In the year 1974 he started his sole proprietary business in Prantija District of Gujarat in the name of 'Mahendra Radio House'. After about four years, he along with his two brothers started a partnership firm in the name of 'Mahendra & Mahendra Seeds Company'. According to the deponent, his nephew's name is also 'Mahendra' and that is how the partnership firm came to be named as Mahendra & Mahendra Seeds Company. The defendant further averred that on 1st of January, 1982 the said partnership of Mahendra & Mahendra Seeds Company was incorporated as Pvt. Ltd. company in the name of 'Mahendra & Mahendra Seeds Pvt. Ltd.' having its office at 7, Ellora Commercial Centre, Opposite GPO, Ahmedabad. Another proprietary firm by the name 'Mahendra Music & Electronics' was started by the defendant's family in the year 1983 and the same was registered under the Sales Tax Act also. It is the further case of the defendant that in the year 1994 the said Mulchand (alias Mahendrabhai G. Parwani) along with his brothers Trikambhai Parvani and Dayalbhai Parwani, incorporated a company by the name of 'Mahendra & Mahendra Paper Mills Ltd.'. According to the defendant, the words 'Mahendra & Mahendra' was a continuation of their business name which they have been using continuously for various businesses since the year 1974. That the public issue was opened on 25th July, 1996 and the same remained open till 6th August, 1996 and despite wide advertisement by the defendant and best efforts, the defendant could not even manage to get 100 per cent subscription and the allegation by the plaintiff that defendant has been using plaintiff's goodwill is wholly misconceived. The defendant also stated that the name 'Mahendra' is a household name in Gujarat and there are several businesses being carried on in the said name throughout Gujarat. The defendant further stated that its products are, in no way similar to the products and businesses of the plaintiff. The business carried on by the defendant does not overlap with the business of any of the companies enlisted by the plaintiff. The defendant pleads that it has a reputation of its own in the name of 'Mahendra & Mahendra' and cannot derive any benefit by the name which is alleged to be similar to that of the plaintiff. The assertion of the plaintiff that the trade mark 'Mahindra' and/or 'Mahindra & Mahindra' have come to be identified with the plaintiff or the plaintiff's group of companies in any manner, has been denied by the defendant. The defendant has also denied that the name of its company can be said to be deceptively similar to that of the plaintiff. The plea of passing-off or likelihood of passing-off of trade or business of the plaintiff has been denied. The defendant has also set up the plea that the balance of convenience is not in favour of the plaintiff nor the plaintiff would suffer irreparable loss in case the injunction is not granted.On consideration of the petition for interim injunction filed by the plaintiff, the learned Single Judge in para 14 of his order issued the following directions :

Further, considering the reasons recorded by the learned Single Judge, this appeal is dismissed. ..."

.

Hence, this appeal by the defendant.

The main thrust of the submissions of Shri P. N. Misra, learned senior counsel for the appellant, was that the present case is not an action for infringement of trade mark but it is an action in passing-off the business and services. In the absence of any similarity of the goods manufactured or sold by the parties the tests of deception or confusion amongst the consumers does not arise. According to Shri Misra, the action in passing- off is not to be considered in the abstract sense; it has to be judged on the facts and circumstances of the case. The learned counsel contended that the defendant has been doing business since 1974 using the trade name "Mahendra" in a wide range of products. Therefore, the claim of exclusive user of the name made by the plaintiff does not arise, at least not at the interlocutory stage, as it depends on evidence to be led in the suit. The learned counsel further submitted that while judging the plea of passing- off, the test to be applied is probability and not mere possibility of confusion or deception. On the facts and in the circumstances of the case, the learned senior counsel submitted, that grant of interim injunction in favour of the plaintiff was not warranted; the Division Bench of the High Court should have set aside the order passed by the learned Single Judge and vacated the interim order of injunction.Per contra, Shri R. F. Nariman, learned senior counsel for the respondent, contended that the order of interim injunction passed by the learned Single Judge is based on well recognised principles of law which have been aptly applied to the case in hand. Shri Nariman further contended that on a bare perusal of the prospectus issued by Mahendra & Mahendra Paper Mills Ltd. it is manifest that the defendant is trying to utilise the tremendous popularity and goodwill associated with the plaintiff's name 'Mahindra and Mahindra' in the trade circles. According to him, any man of average intelligence and imperfect recollection is likely to get an impression that the defendant is one of the associated companies of the 'Mahindra and Mahindra' group. The further contention of the learned counsel was that whatever amount was collected by the defendant from sale of shares of the company to investors was due to the deceptively similar name given to the defendant company. It was the further submission of the learned counsel for the respondent that the business activity of the defendant company has not yet commenced. The learned counsel contended that the plaintiff successfully established a strong prima facie case in its favour and in the circumstances denial of order of interim injunction will result in irreparable loss and injury in its trade and business. In the submission of Shri Nariman, the learned Single Judge rightly passed the order of interim injunction and the Division Bench was justified in declining to interfere with the said order.

.' In a recent decision in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. 2001 (5) SCC 73, a bench of three learned Judges, summed up the position of law regarding tests to determine a passing-off action, with the following observations :

'We are unable to agree with the aforesaid observations in Dyechem case, 2000 (5) SCC 573. As far as this court is concerned, the decision in the last four decades have clearly laid down that what has to be seen in the case of a passing-off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion. This is evident from the decisions of this court in the cases of National Sewing Thread Co. Ltd. case 1953 AIR(SC) 35, Corn Products Refining Co. case 1960 AIR(SC) 142, Amritdhara Pharmacy case 1963 AIR(SC) 449, Durga Dutt Sharma case 1965 AIR(SC) 980, and Hoffman-La Roche & Co. Ltd. case 1969 (2) SCC 716. Having come to the conclusion, in our opinion incorrectly, that the difference in essential features is relevant, this court in Dyechem case sought to examine the difference in the two marks "PICNIK" and "PICNIC". It applied three tests, they being : (1) is there any special aspect of the common feature which has been copied ? (2) mode in which the parts are put together differently, i.e., whether dissimilarity of the part or parts is enough to make the whole thing dissimilar, and (3) whether, when there are common elements, should one not pay more regard to the parts which are not common, while at the same time not disregarding the common parts ? In examining the marks, keeping the aforesaid three tests in mind, it came to the conclusion, seeing the manner in which the two words were written and the peculiarity of the script and concluded (at SCC p. 597, para 39) that " the above three dissimilarities have to be given more importance than the phonetic similarity or the similarity in the use of the word PICNIC for PIKNIK. ...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 are to be considered :