Document Fragment View

Matching Fragments

1. The plaintiffs, a partnership firm claiming themselves to be the prior user of trade mark 'Gopal' since about February 18, 1979 in respect of the mathematical instruments, geometry boxes, etc. has filed this suit for passing off of their trade mark and infringement of copyrights by the defendants. The allegations made by the plaintiffs are that they have been manufacturing the geometry boxes under the trade mark 'Gopal' which has a distinctive and unique characteristic, artistic work and design. The alleged distinctive features of the Plaintiff's trade mark include printing of the geometry box in multicolours, having a lake in the background with the stream flowing at the left top corner below the trade mark 'Gopal' while there are mountains appearing at the right top corner of the said box, below which is a tree. On the left side there was bushes and three lotus flowers in the lake. On the bottom right side of the box, the logo of the plaintiff, with the first word of the trading style of the plaintiff namely 'Plasticians' appears. In the centre a boy with long hair wearing a peacock feather in his hair appears feeding something to a cow with his right hand, while he has kept his left hand at the neck of the cow, holding a flute. On the back side panel of the cover lid of the box the name of the plaintiff with complete address appears, while on the front side panel of the said cover lid, the retail price of the box has been mentioned. The plaintiffs have used the design/artistic work on the card board cover of the geometry box in the same manner as on the box. On the card board the design has been printed with the background colour yellow. On the front side panel of the said cover, the trade mark 'Gopal', the description of the goods and the name address of the plaintiff appears in red ink. The plaintiff claims copyright in the said artistic work relating to the geometry box and its card board cover and claims to be the owner thereof. The aforesaid trade mark and packing is alleged to be continuously, openly, extensively and exclusively used by the plaintiff without interruption since 16th February, 1979. Plaintiff is alleged to have given wide publicity to the aforesaid mark including advertisements in the trade journal 'Paper and Stationary Samachar' and also in the Members Directory of the 'Delhi Stationers' Association (Regd.)' of which the defendant is also a member. It is, therefore, alleged that defendant had complete knowledge that the said trade mark and artistic work belonged to the plaintiff. Plaintiff claims to have acquired goodwill and reputation in the trade mark and the artistic work in respect of the aforesaid goods. The plaintiffs are also alleged to have filed an application for registration of the trade mark 'Gopal' with the Registrar of Trade Marks on 12th April. 1991 under No. 548898 in Class 16 and the application is stated to have been accepted for advertisement in the Trade Marks Journal.

2. It is alleged that in the first week of July, 1994 the plaintiff came across a geometry box with an identical trade mark and similar artistic features as that of the plaintiff. On the cover lid of the said geometry box the name of the defendant appeared. However, on the card board cover it was written as 'Manufactured by High Class Mathematical Instrumental Boxes.' On enquiries alleged to have been made by the plaintiff it came to their knowledge that the said geometry box were being manufactured and sold by the defendant only recently. On being requested by the plaintiff to stop infringing their rights the defendant threatened flood market with infringed goods.

5. With this background we have to see whether the defendant is passing off his goods as that of the plaintiff and whether there is a similarity in the name, label and get up in the products of the parties and whether the plaintiff is a prior user of the goods marketed by him under the trade mark 'Gopal' and if so to what relief the plaintiff is entitled ? The case of the defendant in the written statement is that the plaintiff being neither the proprietor of the trade mark nor owner of the copyright, has no right to institute the suit. While the defendant does not deny that he is using almost the same artistic work and design as is being used by the plaintiff and is also using the same name 'Gopal' for its mathematical instruments as is being used by the plaintiff, however, the defense taken by the defendant is that the said trade mark is common to the trade as many manufacturers and merchants were invariably using the same trade mark and artistic work in relation to mathematical instruments and geometry boxes and the plaintiff, therefore, cannot claim exclusive rights in either the trade mark or the artistic work. I have not been shown any other manufacturer of mathematical instruments or geometry box who may be using same trade mark, label or artistic work as is being used by the plaintiff, as is contended by the defendant. I have, therefore, not been able to make myself agreeable with the contention of the defendant that the trade mark 'Gopal' is common for the manufacturers of mathematical instruments and geometry box or that they use almost similar artistic work and labels for their products. The defendant has not been able to show anything to me as to how they have adopted this word 'Gopal' for their product. The word Gopal is not found in the dictionary but is the name of a person. Lord Krishna is also sometimes known as Gopal and the photograph of the boy which appears on the labels of the geometry box with a peacock feather on the head, one hand feeding the cow and other hand holding a flute gives an impression as if it was of the childhood of Lord Krishna. There must be some reason for the defendant to adopt the same trade mark as is being used by the plaintiff. In the absence of any reason coming from the defendant, I have no hesitation to hold that prima facie the same was adopted with a view to trade upon the name, goodwill and reputation of the plaintiff and to pass off his goods as those of the plaintiff.

6. The plaintiffs have placed sufficient material to show that they have been using the trade mark 'Gopal' and the artistic work as shown on the geometry boxes since about 1979. The copies of Directories of Delhi Stationers Association' as well as 'Paper and Stationery Samachar' have been placed on record to show that the plaintiffs have been advertising their product under the name and style of 'Gopal' with the artistic work on the geometry box. The defendant has not denied that they were also members of the said associations and I have no reasons to disbelieve the plaintiff that the defendants were aware of the user of the said mark and the design work by the plaintiff since long.