Pearl Appliances Private Limited vs Jay Engineering Works Ltd.
1991 Latest Caselaw 603 Del

JUDGMENT

Usha Mehra, J.

(1) M/S Pearl Appliances Pvt. Ltd. are seeking injunctionagainst M/s Jay Engineering Works Limited who are intending to use the trademark consisting of the words "PEARL" for its products namely fans and components thereof. Plaintiff has based his claim mainly on the ground that he isprior user of this , registered trade mark and has earned reputation and goodwill because of his superior pro ducts.

(2) The plaintiff's case is that he is one of the leading manufacturersand traders of "Electrical appliances". Plaintiff is the proprietor of trade markconsisting of the word "PEARL" for its electrical goods. This trade mark wasoriginally registered in the name of Raman Electricals (P) Ltd. but subsequentlyby virtue of the Deed of Assignment plaintiff took over this trade mark.Plaintiff has been using this trade mark extensively and continuously. Plaintiffhas been issuing advertisement for its products under this trade mark as a resultof which they have earned a goodwill and reputation. Plaintiff's trade markis registered under class 7 in respect of washing machine which is also coveredunder class 11 and has been accepted for registration under class 9 for ''ElectricIrons". Plaintiff has been using this trade mark "PEARL" for the last morethan 15 years for its various electrical appliances. The defendants intend toadopt this trade mark "PEARL" for its product namely fans with components,The trade mark which the defendants wants to adopt is deceptively similar/ identical with that of the registered trade mark of the plaintiff. Because of this similarity the defendants are going to infringe the right of the plaintiff of passingoff. Not only there is infringement of his right but because of the use of similartrade mark by the defendant, the reputation of the plaintiff will be effectedadversely. Defendant filed an: application for registration of the trade mark"PEARL" which was published in Journal dated 1/08/1990. When theapplication appeared in the Journal, only then the plaintiff acquired the knowledge about the defendant's intention to use this trade mark "PEARL". Onacquiring this knowledge plaintiff lodged a protest with the defendant and alsointimated that plaintiff is the prior and extensive user of the trade mark"PEARL" therefore the defendant should desist from using the same. Theprotests from the plaintiff fell on the deaf ear of the defendant hence thisapplication.

(3) Defendant contested this application, inter alia on the grounds thatdefendant is the registered proprietor of trade mark 'PEARL" in respect ofelectric fans, components thereof and electric regulators in class 11. Defendantgot its trade mark with word "PERLE" registered on 7/01/1974. Thesaid registration is still valid. Even otherwise there is no infringement of anyright of the plaintiff. In fact, it is the plaintiff whose trade mark is deceptivelysimilar to that of the defendant. Plaintiff's trade mark was registered in 1983,whereas defendant's trade mark "PERLE" was registered in 1974. It is thus theplaintiff who is guilty of concealment of this fact. The defendant is a priorregistrant of its trade mark "PERLE". Defendant has a right to use the trademark "PERLE" for electric fans because plaintiff is registered only for heatingand lighting electrical appliances and not for cooling appliances like fans. Thetrade mark of the plaintiff does not cover electric fans and to. this extent he hasmisrepresented the facts. Plaintiff does not deserve any discretion of thisCourt.

(4) I have heard Mr. M.L. Mangla, Counsel for the plaintiff andMr. Praveen Anand for the defendants. Both the Counsel have placed relianceon the fact that they are proprietor of their respective trade marks. Plaintiff isseeking relief on the ground of continuous user of this trade mark whereasdefendant is challenging the claim of the plaintiff on the ground of prior- registtant of its trade mark "PERLE". Further according to defendant, plaintiff'strade mark is registered for heating and lighting electrical appliances whereasdefendant intends to get trade mark "PEARL" for fans, its components- andregulators. Therefore, the plaintiff has not the exclusive right to restrain the useof registered trade mark.

(5) In order to strengthen their arguments both the Counsel havedrawn my attention to various provisions of the Trade and Merchandise MarksAct 1958 (hereinafter called the Act). Some of the provisions which are relevantfor consideration are namely Sections 2(d), 27, 28(3), 30(1)(d) and 46.

(6) In order to appreciate the contentions raised at the Bar one has tounderstand what the word "deceptively similar means". It is defined under section 2(d) which reads as under :'deceptively similar : A mark shall be deemed to be deceptivelysimilar to another mark if it so nearly resembles that other mark asto be likely to deceive or cause confusion".The deceptively similar means absoulute identify of the two competingor their class resemblance. Furthermore, there has to be test of trade connectionbetween different goods. The similarity could be phonetic, it could be visualor idea similarity. The similarity should be such that customers who are to buythe goods, may get confused or deceived.

 (7) Section 27 provides infringement of unregistered trade mark. Section 28 conferred rights by registration and Sub-section (3) of Section 28 provides as under:    "WHEREtwo or more persons are registered proprietors of trademarks, which are identical with or nearly resemble each other, theexclusive right to the use of any of those trade marks shall not(except so far as their respective rights are subject to any conditionsor limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those personsmerely by registration of the trade marks but each of those personshas otherwise the same rights as against other persons (not beingregistered users using by way of permitted use) as he would have if hewere the sole registered proprietor."  

 This section provides twin rights i.e. to use exclusively and stop othersfrom using the same trade mark.   

 (8) In the present case, it is an admitted fact on record that defendantgot its trade mark "PERLE" registered on 7/01/1974. Whereas theplaintiff got its trade mark "PEARL" registered on 17/11/1983. Butthe question for determination is whether the defendant has been using thistrade mark for its fans ever since 1974 or is he trying to adopt this for the firsttime in 1990.  

(9) Mr. Anand in order to strengthen the case of the defendants contended that the defendant is the earlier registrant of the trade mark "PERLE".Plaintiff's trade mark 'PEARL" for its electrical appliances is in fact deceptively similar to the trade mark of the defendant. Moreover the trade mark"PEARL" for electric fans is not occupied nor the plaintiff has relied on cognate and allied theory. Nor there can be any question of infringement oftrade mark. This argument of the defendant can be rejected on a short groundbecause according to defendant's own showing as apparent from the Journaldated 1/08/1990, the defendant wants .to adopt this trade mark now in1990 for its product electric fans, component and regulators. Hense it is apparent that the defendant had not been using this trade mark earlier then theplaintiff nor the defendant can take the advantage of registration of the trademark under the name of "PERLE". Mere registration as such does not giveany right to the defendant particularly when the plaintiff's case is based on passing off action. The contention of Mr. Anand that the trade marks "PEARL"for electric fans is not occupied is also without substance. Plaintiff's trademark with the word 'PEARL' is registered for electric goods like washingmachine, electric iron and 'heating and lighting electrical appliances'. Admittedly the goods of the plaintiff as well as of the defendant are electrical goodsand electrical appliances are covered under class 11 and so does the electricfans. Therefore it cannot be appreciated that the trade mark with the word"PEARL" on electric fan is not occupied. The other contention of Mr. Anandthat the trade mark of the plaintiff is registered only for heating and lightingelectrical appliances and not for cooling like fans is also without force becauseelectric goods are electric goods and in the passing off action it is the prior userwho has a right. Admittedly plaintiff is the prior user of the trade mark withthe word 'PEARL' for electric appliances.

(10) Mr. Mangla's contention that the defendant cannot claim anyright on account of registration as it is hit by Section 46 of the Act, whichprovides that if an trade mark is not used for 5 years and one month, it will bestruck off from the register. This matter is sub-judice before another Authorityand therefore I would not like to deal with this aspect. Even otherwise for apassing off action, as already observed above, registration is not an essentialingredient. Suffice it to say that electrical iron, washing machine, electrical fans,heating and lighting electrical appliances are sold to the same set of customerson the same set of shops. Therefore there is every likelihood of customers beingdeceived. It is likely to cause confusion in the course of trade to such customers of cognate goods bearing the same trade mark. The question whetherthis trade mark 'PERLE' has not been used for more than 5 years as requiredunder Sec 46 of the Act has no relevancy for the decision of this application.Be that as it may, but one thing can be said without going into the merits ofthe case that more earlier registration deos not give the right to the defendantto use the trade mark of other person.

(11) The electric fans are cognate goods and for those separate customers are not required. In fact electric goods are sold on the same shop purchased by same set of customers. Mr. S. Venkateswaran, Controller General ofPatents, Designs and Trade mark in his book 'The Law of Trade and Merchandise in India' described what is similar goods as under : "THEquestion whether or not two sets of goods are of the samedescription is a question of fact, and in deciding the question "Onehas to look at the trade" and must look at it from a practical business and commercial point of view.The classification in the Fourth Schedule to the Trade andMerchandise Marks Rules is no criterion as to whether or not twoset of goods are of the same description. The description of goodsmay be narrower or wider than any of the classes according to thecirumstances of the case."

(12) Mr. Anand then contended that this is not a case of infringementof any right of the plaintiff. Mr. Mangla on the other hand urged that theword 'infringement' is used in common parlance. Even for un-registered trademark there can be infringement on the ground of continuous user of a trademark. He has placed reliance on the decision of Supreme Court in the case ofRegistrar of Trade Marks v. Ashok Chandra Rakhit Ltd., . In that case one Durga Charan Rakhit (since deceased) adopted"Shree" as his trade mark in respect of the ghee produced and marketed byhim which with some slight modification was registered as a trade mark. Thetrade mark was a device consisting of the word "Shree" written on the top inbold Bengali character, having below it an ornamental figure with the word"Shree" written in the centre in small Deva Nagri character, the word 'Trade'written in English and the word 'MARK.' written in English in an inclinedmanner on the right hand side of the ornamental figures. The ornamentalfigures were written consisted of a triangle over which the words "Shree DurgaCharan Rakhit" written in Bengali character was inserted. This mark asttiroughout been referred to as the said mark, shre". The said Durga ChandRakhit having subsequently been adjudged insolvent, the goodwill of this trademark was sold by the Official Assignee. The purchaser caused the said markregistered with the Registrar of Assigness of Calcutta and declared his ownership of the said mark. The Registrar declined to register the trade mark"Shree" because it was found that the word "Shree" was used by "Hindus" asan auspicious symbol. While dealing with the powers of the Registrar under section 13 of the Indian Trade Marks Act, 1940, Supreme Court observed thatthe proviso to Section 13 preserves in tact any right which the proprietor mayotherwise under any other law have in relation to the mark or any part thereof. It does not affects the rights of the proprietor except such as arise out ofregistration. That is to say, the special advantages which the Act gives to theProprietor by reason of the registration of his trade mark do not extend to theparts or matters which he disclaims. In short, the disclaimed parts or mattersare not within the protection of the statute. That circumstance, however, doesnot mean that the Proprietor's rights, if any with respect to those parts ormatters would not be protected otherwise than under the Act. "If the proprietor has acquired any right by long user of both parts or matters in connectionwith the goods manufactured or sold by him or otherwise in relation to histrade, he may, on proof of the necessary facts, prevent an infringement of hisrights by a passing off action". Therefore, on the basis of these observationsMr. Mangla contended that the word infringement which he has used is in thissense. The trade mark 'PEARL' is registered for his electric goods and if thedefendant is now allowed to adopt the same for his electric goods it wouldinfringe his right. He further stressed that the trade mark 'PEARL' has acquired reputation and goodwill as plaintiff's goods, hence plaintiff has a right toseek restraining order against the defendant from using this trade mark. Electrical fans, components and regulations which the defendant wants to market areunder plaintiff's trade name and prima facie, is in the same trading channel andis a cognate good. It amounts to passing off. Reliance has been - placed on thedecision of this Court in the case of Creative Handicrafts v. Sadanand ElectricCo. (IA No. 3344/88 in S.No. 1347/88, decided on 19/07/1988 where theplaintiff was manufacturer of Tv sets being marketed under the name of'Choice' whereas the defendant had adopted the same trade name on domesticappliances manufactured by them such as steam machine, fans, exhaust fans,electric iron, geyser, water boiler which were not electric items under the namesand style of 'Choice'. Both were held to be cognate and allied goods on thebasis that they had the same trade channel and even being sold in the sameshop. Hence injunction was granted. In an earlier decision of this Court in thecase of M/s Jugmug Electric and Radio Co. v. Telerad Private Limited the sameopinion was expressed by the Court. Defendants' goods i.e. electric fan itscomponents and regulator are electric items and these items fall under class 11and so do the plaintiffs electrical appliances are covered under class 11. Thetrade name which the defendant now wants to adopt is similar. Thus, primafacie goods which defendant wants to market i.e. electric fans, components andregulators are in the category of cognate and allied goods to that of the plaintiff. As already observed above, these goods are sold by the same set of shopkeepers. These are displaced on the same set of shop and may be sold side byside. Keeping in view the nature of the goods these are sold through the samechannel. We cannot lose sight of the fact that the customer will go to anelectric shop for buying lighting and heating appliances. On the same shop hewill buy electric fans, its components and regulators. The nature and characterof the goods being the same, there are thus higher chances of confusion anddeception because trade channel and class of customers being the same in respect of plaintiff goods as well as of the defendant. Customers consists ofboth categories literate as well as illeterate.

(13) Reference was also made to the decision of the High Court ofJustice-Chancery Division in the matter of the Australian Wine Importers'Trade Mark (RPC 311 at 318-319) where it was observed that for the purpose of deciding whether two sets of goods are of .the same description whenthey are not the same goods, we cannot, lay too much stress on the classification of. the rules to find out the characterstic portion of the similarity. One hasto look at the trade. One must look it from the business point of view. Relyingon the observations of the above said case we cannot, shut our eyes to the factthe electric iron or electric fans and other electrical appliances with similarTrade Mark will definitively deceive the common man. It will cause confusionin the minds of the public in general. Reliance can be placed to the decision ofour High Court in the case of Fiat Tyre of India Limited v. Jay Industrial Services and Others, reported in Arbitration Law Reporter 1991(1) Volume 14 page33. In that case the plaintiff was the proprietor of the registered trade mark of'Fiat' and had a good turn over in the business. The defendant started sellinghis 'V' fan-belt under the same trade name. Court came to the conclusion thatthis will adversely affect the business of the plaintiff. Though the defendant'scontention was that the plaintiffs are not manufacturing or dealing in fan-beltand there is no infringement of the plaintiff's trade mark These pleas wererejected and the injunction was allowed It was observed in that case that anaction for passing off is founded on desirability of preventing commercial immorality of dishonesty on the part of a trader who by using a particular mark,whether registered or unregistered wants to falsely represent that his goods arethe goods of someone else so that he can take unfair advantage of the reputation of that other person in the market. Reliance was also placed on the caseof Kumar Electric Works v. Anuj Electronics. In that case plaintiff was sellingTV sets under exactly the same trade mark. The Court after dealing withvarious aspects of the case restrained the defendants from using the same trademark because the plaintiff was found prior user of the said trade mark. It wasobserved that to succeed the plaintiff has to prove that he had acquired a reputation and goodwill in the trade and had proprietory right in the said trademark and secondly the defendants are trying to confuse the public that thegoods of the defendants are that of the plaintiff. Therefore, relying on theseauthorities Mr. Mangla contended that if the defendant is not restrained,the business of the plaintiff will be adversely affected. He has a reputation andgoodwill. Plaintiff has placed on record statement showing the turnover. Perusalof the same shows that plaintiff has huge earnings.

(14) Mr. Anand contended that the case cited by plaintiff arenot relevant for the decision of this case. In all these cases action was sought byproprietor against copier but in the case in hand litigation is between twoindependent proprietors, therefore, none of these authorities apply to the factsof this case. I am afraid this argument of Mr. Anand when applied to the factsof this case does not hold good. As already observed defendant had not beenusing its trade mark 'PERLE' for electric fans, components and regulators.Defendant now wants to use the same trade mark for its electrical fans. Theother contention of Mr. Anand that the plaintiff is a registered company forlighting, heating electrical appliances whereas he wants to get registered forcooling equipments like electric fans, therefore, there cannot be any adverseeffect on the trade of the plaintiff. This argument is also without force becauseas observed above, we have to see the likelihood of deception which is going tocause by defendant marketing its products under the same name when thatvery product is going to be sold on the same set of shop. It cannot be said thatthe chances of deception are remote in this case. In fact the chances can be,prima fade, strong when the electric iron and electric fans are going to be soldside by side on the same shop. The common customer is likely to be deceivedin view of similarity of the trade marks.

(15) In view of what has been discussed above, I am prima fade of theView that the balance of convenience lies in favor of the plaintiff and it is afit case .where the defendant should be restrained from selling electric fans,components and regulators under the same trade name as that of the plaintiff.Accordingly, I confirm the interim injunction already granted till the disposal ofthe suit. In view of this decision the application filed by the defendants underOrder 39 Rule 4 stands dismissed. lAs 340/91 and 3318/90 stand disposedof.