Rev. On Inc. And Anr. vs Hosiden Laboratories (India) And ...
1990 Latest Caselaw 291 Del

JUDGMENT

P.K. Bahri, J.

(1) Plaintiffs have brought have a suit seeking perpetual injunction against the defendants restraining them, their agents, servants or any person on their behalf from manufacturing, selling, offering for sale and distributing talcum powders and other cosmetics goods falling in class 3 and thereby infringing plaintiffs registered trade mark 'JONTUE' or any mark deceptively similar to the plaintiff No. 2's registered trade mark and using the said offending mark 'JONTUE' on Talcum Powder and to pass of their goods as those of plaintiffs' goods. Some other reliefs are also sought in the plaint. Along with the plaint, an application I.A. 9377 of 1988 was moved seeking temporary injunction till the disposal of the suit and an ad-interim injunction order was granted on December 20, 1988 against the defendants. Defendants have filed I A. 12/89 seeking vacation of the said ad interim injunction order. Arguments have been heard in both the applications.

(2) The case of the plaintiffs, in brief, is that plaintiff No. 1, is a company incorporated in United States of America and plaintiff No. 2 is a company incorporated in Switzerland and it is wholly owned by plaintiff No.1 company. The plaintiff No. 1 is stated to have been incorporated in the year 1933 and deals in manufacture and sale of various types of cosmetics perfumery and toiletries including talcum powder etc. The plaintiff No. 2 has got registered trade mark 'JONTUE' since 1975 and it is averred that the said trade mark has been registered by the plaintiffs in a large number of countries and plaintiff No. 1 and its subsidiaries under the subsidiaries under the said trade mark 'JONTUE' produce various types of perfumery, talcum powder and other toilet and cosmetic products and have over the years built up a comfortable good-will and reputation in market and the said products of plaintiffs are of superior quality and arc considered by the trade and members of the public all over the world as the best of its kind. It is also averred that plaintiff NO. 2 is the registered proprietor of the trade mark 'JONTUE' in a characteristic style under the trade mark No.306483 in class 3 since June 25, 1975 and that the application of the plaintiff No 2 filed since 1985 for getting style Wise written word trade mark. registered is still pending It is further placed that huge amount has been spent by the plaintiffs in advertising its products under the aforesaid trade mark by advertising in world famous magazines which are also available in India and over the years the plaintiffs have done considerable business in sale of such products under the said trade mark all over the world including India. The plaintiffs have filed Along with the plaint annexure showing all these facts. It is averred by the plaintiffs that defendant No Lisa firm carrying on business of manufacturing and sale of cosmetics including talcum powder and defendant No. 2 is manufacturing the aforesaid goods for and on behalf of defendant No. I and defendant No.3 has been selling and marketing the above goods and various places including Delhi and defendants 4 and 5 are wholesalers and distributors of the goods manufactured by defendants 1, 2 and 3. It was pleaded that in first week of June, 1988. the plaintiffs found in the newspaper -Hindu dated June 26, 1998, an advertisement given by defendant No 1, in respect of talcum powder manufactured by it and being marketed under the trade mark 'JONTUE'. It was pleaded that defendant's use of the said trade mark is an infringement of plaintiffs' trade mark and defendants have infringed the trade mark of the plaintiffs with the sole intention of the public and trade by passing off their goods as the goods manufactured by the plaintiffs and in that way get themselves enriched fraudulently.

(3) The defendants have contested the suit as well as the application and have taken the plea that the plaintiffs' goods are not being sold in India under the aforesaid trade mark and defendants since 1985 have been manufacturing, selling talcum powder under the said trade mark. It was also pleaded that the word 'JONTUE' being phonetically equivalent to Hindi word 'Jantu' meaning a living being, no trade mark under the said name could be got registered under Section 9(d) of the Trade and Merchandise Marks Act. It has been pleaded that defendants has been honestly using the said trade mark without the knowledge that plaintiffs have got registered the said trade mark in their own name. Lastly it was pleaded that suit has been filed belatedly by the plaintiffs and thus plaintiffs should be debarred from complaining about the user of the said trade mark by the defendants.

(4) It is evident that defendants have infringed the registered trade mark of the plaintiffs. Now. the short question which arises for consideration is whether the defendants should be restrained from using the said trade mark or not till the disposal of the suit. Prima facie the plaintiffs have a case in their favor inasmuch as the plaintiffs are registered trade mark owners since 1975 and it ii also clear that the goods manufactured by the plaintiffs have acquired a lot of reputation of good quality and they have spent considerable amount in advertising those goods in world famous magazines which are also available in India. Prima-facie they have also made out the case that their goods are also being sold in India.

(5) Learned counsel for the plaintiffs has contended that plaintiffs are owners of registered trade mark. the defendants have no right to use the said trade mark for their goods. He has placed reliance on Metro Playing Card Co v. Wczir Chand Kapoor, . In this judgment it has been laid-down that registered trade mark is Prima-facie evidence of its validity and unlegs the registration is challenged under the provisions of Trade and Merchandise Act, .1958. it is not open to the defendants to plead any protection under Section 12(3) of the said Act. In the said case the defendant had given an application to the authority under the .Act for having concurrent registration of similar trade mark but that application was still pending. It was held by the Division bench of this Court that the defendant had no right to infringe tho registered trade mark of the plaintiff till its application is allowed. He has also placed reliance on Shri Swaran Singh Trading as Appliances Emporium v. M/s Usha industries (India) New Delhi and another, , wherein a Division Bench of this Court has held that the effect of registration is to give an exclusive right of user to the proprietor of the registered trade mark. It was held in that case that since the exclusive right of user of registered trade mark conferred by the Trade and Merchandise Marks Act, 1938 could not be lost by delay. general principles governing grant of injunctions in other types of cases might not hold good while dealing with cases of infringement of the at above statutory right and normally delay in seeking relief might non-suit the proprietor of the registered trade mark. In the present case, it is quite clear that defendants have infringed the registered trade mark of the plaintiffs. There is nothing to show that plaintiffs have been aware of such infringement by the defendants at any point earlier that 1988. So, it cannot be said that plaintiffs have come to the Court belatedly in seeking the necessary relief of injunc.lion against the defendants. Even if there has occurred any such delay, the same, in my opinion, is not fatal to the maintainability of this suit.

(6) Learned counsel for the defendants has contended that defendants have been using the trade mark in question binately and concurrently and thus no injunction could be granted against them and he has sought support from M/s. Wattan Singh and Sons v. The Registrar of Trade Marks and others, . The judgment of this Court stated above is not applicable to the facts of the present case. In the said case an appeal has been filed under the provisions of Trade and Merchandise Marks Act seeking concurrent registration of the trade mark. Such is not the case here. Even otherwise, the facts do not show prima fade that the defendants have any concurrent user of the trademark in question. The trade mark was registered in favor of the plaintiffs in 1975 whereas defendants came into picture for using the said trade mark only in the year 1985. So it cannot be held prima fade that the defendants have been using concurrently the said trade mark.

(7) Even otherwise ignorance of the defendants regarding registered trade mark of the plaintiffs does not give any right to the defend ants to continue to infringe the registered trade mark of the plaintiffs after defendants have come to know about registration of trade mark in the name of the plaintiffs. In Indian Hume Pipe Company Ltd. v. Vendra Venkanna. Proprietor of Jui Bharathi Cement Works , a Division Bench of the said High Court has also laid down that the provisions of the Trade Marks Act, 1940, do not seen to admit a plea that defendants had used the trade mark unaware of the fact of its registration. I entirely agree with the said view expressed in the said judgment

(8) So, examined from any angle, it is clear that plaintiffs have prima facie a case and balance of convenience is in favor of the plaintiffs and if the relief of temporary injunction is not granted the plaintiffs are obviously liable to suffer irreparable loss as the inferior goods of the defendants being sold to the public may bring down the reputation of the plaintiffs pertaining to their good quality goods. I dismiss the application of the defendants (LA. No. 12 of 1989) and allow the application of the plaintiffs (1.A. No. 9377 of 1988) and confirm the injunction granted on December 10, 1988, till the disposal of the suit.