C & J Clark International Ltd. vs Clarks Sports Shoe Factory And ...
1995 Latest Caselaw 684 Del

JUDGMENT

K. Ramamoorthy, J.

(1) This is an application for injunction restraining the defendants from using Trade Mark Clarks in respect of shoes.

(2) Broadly the allegations in plaint are these. Plaintiff wants to use the famous trade mark Clarks represented in script form. The trade mark is registered in many countries of the world including India, The plaintiff relies upon the following registration for using Clarks in India:- Trade Mark Regn.No.& Class Goods Date Clarks 348217/8/42 25 Boots, Shoes, slippers leggings and gaiters CLARKS(in 34827618/4/79 25 Boots, shoes, script form) slippers, sandals over boots, over shoes, goulashes and inner socks for use in all the aforegoing.

(3) The above Registrations having been renewed by the plaintiff from time to time and according to the plaintiff they are valid and subsisting on the file of the Registrar of Trade Mark. Annexure A along with the plaint is the document showing the registration and renewal of the trade mark. The plaintiffs operations date back to 1825, when it was originally established. According to the plaintiff, it is in the field for the past more than 163 years and it has been able to be in the business owning to his devotion, research, hard work and the quantity of the product satisfying the needs of the public. Internationally according to the plaintiff it makes 24 million pairs of shoes in a year in U.K. Portugal, Cyprus, and United States of America and. the shoes are sold through 1500 Retail Outlets. The plaintiff has given sales figures of its product from 1981 to 1990, which read as follows:- Year Turnover (in millions) (Sterling Pounds) 1981 473 1982 465 1983 511 1984 606 1985 593 1986 604 1987 602 1988 636 1989 600 1990 606

(4) The plaintiff has made arrangements for local manufacture of its Clarks shoes primarily for export as well as to the plaintiff Co. for international markets, from the following sources:- (a) Fireoz Shoes Limited, Parpia House, 185Poonamallee High Road, Madras-600010. (b) Gck, House, 72, Harrington Road, Chetpet Madras-600031. . c) India Shoes, 151/4, Mount Poonamalee Road, Ramapuram, Madras-600089. d) Chandan Export Corporation, 6869, Apollo Industrial Estate, Mahali Loves Road, Andheri Road, Bombay-400 093."

(5) The goodwill generated by the plaintiff would be evident from the constant visits by the persons working in U.K. and other places in India vice versa. In the year 1990, 60,000 pairs of Clarks shoes were manufactured in India and in the year 1991 80,000 pairs of shoes were produced and in the year 1992 2.5 lacs pairs of shoes were estimated.to have been manufactured under license in India. The plaintiff has also advertised its product in various international publications and magazines, which are also under circulation in India. In particular, the plaintiff advertises in a Weekly called 'SHOE & Leather NEWS'. In or about March 1992 the plaintiff came to know that shoes manufactured in India but not by the plaintiff were being sold under the plaintiff's trade mark CLARKS. A criminal complaint was made by the plaintiff in the Court of Chief Metropolitan Magistrate, Delhi on 17th of March 1992. On 21st of March 1992 warrants were issued to the Deputy Commissioner of Police to investigate into the mater. On 10th of April 1992 police raided amongst others the premises of one M/s. 0m Boot House, 30 Sarojini Nagar Market, New Delhi where from 50 pairs of local manufactured shoes under the trade mark Clarks were seized. After that the plaintiffs representative made a purchase from 0m Boot House. Cash Memo is evidenced by Annexure C. On the box contain the shoe the mark Clarks is very prominently displayed and it is also stated that mark to be registered under No. 555660. The plaintiff made enquiries of the trade mark from Registrar, Bombay pertaining to trade mark No. 555660 and the plaintiff came to know that under application No. 458623 dated 14.8.1986 the second defendant Disco Enterprises, Prop. Mr.Aziz Uddin, Agra had applied for the registration of the trade mark. It also transpired that the shows were supplied by the first defendant Clarks Sports Shoe Factory, Proprietor Mr. Aziz Uddin; Agra. The plaintiff has stated that the defendants have deliberately adopted the mark of the plaintiff. It is stated by the plaintiff that the mark used by the defendants is identical to the plaintiffs trade mark CLARKS. The plaintiff has further stated that the plaintiff has suffered and is likely to suffer incalculable loss to his trade and reputation on account of the defendants infringing and passing off the mark of the plaintiff. On these allegations, the plaintiff has prayed for the relief of injunction in the application.

(6) A Local Commissioner was appointed and he has submitted his report relating to the inspection of the premises 30, Sarojini Nagar Market on 17.3.199.4. The plaintiff has .also filed documents showing the products on various. types and also the photographs showing the shoes of the plaintiff.

(7) The defendants I and 2 filed written statement on 11th of July 1993. The allegations in the written statement tersely stated are ; the suit is not maintainable, the appointment of the Advocates as attorneys is against the rules of the Bar Council of India and defendants 1 and 2 have no concern with defendant No. 3. The defendants are using the trade mark Clarks since 10.5.1982. The registered trade mark of defendant No. 2 is quite different. The mark of the defendants is 'Clarks Shoes' and there is no infringement of any existing trade mark, if any, of the plaintiff. According to the defendants 1 and 2, the name 'CLARKS' is a common and prevalent name and not the parentage or family name of the plaintiff. In Agra Cantonment Area Hotel Clarks Sheiraz is functioning for the long time and the defendants 1 and 2 were inspired to adopt the word 'CLARKS' and, therefore, the factory is called 'Clarks Sports Shoe Factory' and the name is Disco Enterprises. The defendants 1 and 2 denied all the all clarions in the plaint and no particulars about their sales and how far they are selling heir products are given.

(8) The third defendant filed written statement contending, inter alia, that there is no direct relationship between the third defendant and defendants 1 and 2 and the defendant No. 3 purchased 75 pairs of sports shoes in question from Sant Footwear Co. and the plaintiff ought to have made Sant Footwear Co. as a necessary party. According to the third defendant he is not at all fault as he purchased the shoes under the trade mark in dispute from Sant Footwear Co. and he disclosed these facts to the plaintiff and the investigating agency.

(9) Learned counsel for the plaintiff contended that by virtue of Section 29 of the Trade Marks Act the plaintiff is entitled to the order of injunction. He relied upon the judgment of the Supreme Court in Power Control Appliances & Others vs. Sumeet Machines Pvt. Ltd., 53 (1994) Dlt 723 (SC). He also relied upon a decision of this Court reported in REV. On INC.,& Another vs. Hosiden Laboratories (India) & Others, by Justice P.K. Bahri. Learned counsel for defendants 1and 2 argued that since 1982 defendants 1 and 2 have been using the mark and their mark is also registered and the plaintiff cannot claim right in the trade mark and the power of attorney relied upon by the plaintiff has not been executed in accordance with law and inasmuch as the defendants 1 and 2 have been using the mark for the last 13 years, the plaintiff is not entitled to injunction.

(10) The learned counsel for the plaintiff in countering the arguments of the learned counsel for defendants 1 and 2 submitted that under section 18 of the Trade Merchandise Marks Act. 1958 advertisement must have been made or application by defendants I and 2, such an advertisement has not been made and he also referred to Section 21 of the Act. About the power of attorney the learned counsel for plaintiff relied on Section 85 of the Evidence Act and it has been properly executed and the defendants can not challenge the same in these proceedings.

(11) I am convinced on the facts and circumstances of this case, the plaintiff is entitled to ati order of injunction pending the suit. The principles have been laid down in B.K. Engineering Company, Delhi vs. U.B.H.I. Enterprises (Regd.), Ludhiyana and another, and other cases besides the judgment of the Supreme Court noted above, the plaintiff is proprietor of the trade mark 'CLARKS' duly registered. The defendants 1 and 2 have not shown that their trade mark is registered and their claim it is registered has not been established.

(12) The aim of the third defendant that he has nothing to do with defendants is really to help defendants 1 and 2 for the purpose of the plea by defendants 1 and 2 relating to the jurisdiction.

(13) Therefore, I do not find any difficulty in rejecting .the case of the defendants and accepting the case of the plaintiff. Therefore, the ad-interim order-dated 10th of January 1993 is made absolute and there shall be no order as to costs.