Mitaso Appliances Ltd. vs Mehta Zinabhai Bhimji Bhai
1995 Latest Caselaw 817 Del

JUDGMENT

S.K. Mahajan, J.

(1) The plaintiff claiming itself to be the registered proprietor of the trade mark "MITASO under No.404136 in respect of installations for heating, steam generating, cooking, including Lpg gas stoves, geysers and electrical household equipments, fans, hot plates, toasters, etc. and parts and fittings thereof, has filed this suit for an injunction restraining the defendants from manufacturing, selling or otherwise dealing with goods item and all other goods under the trade mark "MITASO" or any other trade mark identical and/or deceptively similar to the plaintiff's trade mark "MITASO", which may amount to infringement of the aforesaid trade mark No.404136.

(2) The case of the plaintiff in short is that it being the proprietor of the registered trade mark "MITASO" and its being first adopter, originator and true owner, is entitled to its exclusive use. It is stated that the plaintiff has given wide publicity to its trade mark "MITASO" and its goods under the aforesaid trade mark connotes and denotes the goods and merchandise of the plaintiff and none else and that its sales are run in several lakhs of rupees. It is further stated that on account of superior quality coupled with advertisement of the goods and due to continuous use of the trade mark "MITASO" since 1982, the said trade mark has acquired unique reputation in public and trade and the goods in the aforesaid trade mark are exclusively associated with the plaintiff. It is also alleged that the defendant has recently started manufacturing electronic gas lighter under the identical and/or deceptively similar trade mark "MITASO" represented in the similar manner as that of the plaintiff and the same is stated to be in clear and flagrant violation of the legal and vested rights of the plaintiff in established trade mark "MITASO" and the trade name Mitaso Appliances Limited and is alleged to have deliberately, dishonestly and in malafide intentions adopted the trade mark "MITASO" with similar get up and design only to trade upon the plaintiff's reputation and to gain profits in an illegal manner. The gas lighter is used to light the Lpg gas stove and in case the defendant is allowed to sell its products under the name "MITASO" with similar get up, the public at large and the people in the trade are bound to be deceived. It is alleged that the public and the trade will be bonafide believing that the said lighter being marketed by the defendant is a product of the plaintiff and not that of the defendant. It is also alleged that the goods of the defendant as well as that of the plaintiff are of the same nature and/or cognate and/or allied and are being sold at the same counters to the same class of purchasers and confusion and deception is inevitable by the use of the trade mark "MITASO" by the defendant. Defendant has also been alleged to be guilty of passing off inferior and sub-standard goods as that of the plaintiff. The plaintiff has also claimed copyright in the word and trade mark "MITASO" and has sought an injunction against the defendants restraining them from counter-feinting labels, cartons, dies, etc. or infringing the copyright of the plaintiff.

(3) Along with the suit an application under Order 39 Rule 1 and 2 for temporary injunction was also filed and by this order I intend to dispose of the said application for an interim relief.

(4) The defendants in the written statement, besides challenging the jurisdiction of this Court to decide the suit on the ground that no part of cause of action has arisen in Delhi, has also stated that the registration of the trade mark "MITASO" in the name of the plaintiff is not legal and regular and the same is liable to be rectified under the provisions of law. The art work involved in the get up, make up and lettering style is also not stated to be original in character and is otherwise common to the trade. It is also stated that the plaintiff all along knew that the defendant is using the trade mark "MITASO" in relation to electronic gas lighter as its proprietor and the present suit was, therefore, liable to be dismissed on account of delay, estopple, acquiesance, waiver and laches, etc. The lettering style of the word "MITASO" is stated to be the Japanese style of writing and it is denied that the plaintiff is the original owner or proprietor of the said trade mark. It is further stated in the written statement that the defendant is an established manufacturer of electronic gas lighter and is importing important element i.e. Piezo from Japan and hence they have adopted and used bonafidely and honestly and without any prejudice to any one, the trade mark "MITASO" in Japanese style in the year 1990 to denote the said goods containing Piezo imported from Japan and there was no other intention on the part of the defendant to adopt and use said trade mark "MITASO", nor the same is stated to be in violation of the alleged legal or vested rights of the plaintiff in the word "MITASO". The plaintiff has himself alleged to be guilty of passing off inferior and sub-standard goods as that of the plaintiff. The plaintiff has also claimed copyright in the word and trade mark "MITASO" and has sought an injunction against the defendants restraining them from counter-feinting labels, cartons, dies, etc. or infringing the copyright of the plaintiff.

(3) Along with the suit an application under Order 39 Rule 1 and 2 for temporary injunction was also filed and by this order I intend to dispose of the said application for an interim relief.

(4) The defendants in the written statement, besides challenging the jurisdiction of this Court to decide the suit on the ground that no part of cause of action has arisen in Delhi, has also stated that the registration of the trade mark "MITASO" in the name of the plaintiff is not legal and regular and the same is liable to be rectified under the provisions of law. The art work involved in the get up, make up and lettering style is also not stated to be original in character and is otherwise common to the trade. It is also stated that the plaintiff all along knew that the defendant is using the trade mark "MITASO" in relation to electronic gas lighter as its proprietor and the present suit was, therefore, liable to be dismissed on account of delay, estopple, acquiesance, waiver and laches, etc. The lettering style of the word "MITASO" is stated to be the Japanese style of writing and it is denied that the plaintiff is the original owner or proprietor of the said trade mark. It is further stated in the written statement that the defendant is an established manufacturer of electronic gas lighter and is importing important element i.e. Piezo from Japan and hence they have adopted and used bonafidely and honestly and without any prejudice to any one, the trade mark "MITASO" in Japanese style in the year 1990 to denote the said goods containing Piezo imported from Japan and there was no other intention on the part of the defendant to adopt and use said trade mark "MITASO", nor the same is stated to be in violation of the alleged legal or vested rights of the plaintiff in the word "MITASO". The plaintiff has himself alleged to have copied the written style of the trade mark "MITASO" and it is alleged that the plaintiff cannot have any copyright in the same. It is, therefore, stated that as the defendant is using the trade mark "MITASO" in respect of electronic gas lighter since the year 1990 as its proprietor and the plaintiff being not the registered proprietor of the trade mark "MITASO" in respect of electronic gas lighter, there is no question of either infringement of the trade mark of the plaintiff or passing off the defendant's goods as that of the plaintiff.

(5) The plaintiff has placed on record the copy of the trade mark registration. Word "MITASO" was registered as trade mark No.404136 on 11th April, 1983. The plaintiff has also placed on record the bills in respect of sale of its products under the trade name "MITASO" for the period 1983 to 1993. Plaintiff has also placed on record the various advertisements appearing in the newspapers. First of such newspaper is of 7th June, 1983 and thereafter various advertisements up to the year 1993 published in newspapers have been placed on record. From the documents on record, it is clear that plaintiff is manufacturing Lpg gas stoves, cooking ranges, electric geyser, etc. under the trade mark "MITASO" right from 1983/1984. Even as per submissions made by the defendants, the defendants are manufacturing gas lighters and marketing the same only from the year 1990. First of such bills which has been placed on record by the defendants is dated 11th December, 1990.

(6) A bare perusal of the advertisements of the products of the plaintiff company which had appeared in the various newspapers right from 1984 to 1993 and the carton of the electronic gas lighter manufactured by the defendants show that there is not the slightest difference between the writing style of the word "MITASO". The writing style of "MITASO" by the defendants for its electronic gas lighter as well as the writing style of the word "MITASO" for the products of the plaintiff is exactly the same. It is apparent that the word "MITASO" is not a commonly used one and is not to be found in the dictionery. It is also not in dispute that the plaintiff is a prior user of the word "MITASO" and is also its registered proprietor. The word "MITASO" is an invented one and the first user of such a trade mark obviously intends to have a monopoly of it and he will make every attempt to protect his monopoly of the same. The plaintiff have coined the word "MITASO" and being its previous user, it was for the defendant to explain as to how they have adopted the said word "MITASO". Plaintiff is also the registered owner of the trade mark "MITASO" and being the registered owner, it is entitled by virtue of Section 28 read with Section 31 of the Trade and Merchandise Marks Act to an injunction restraining the defendants from using the said trade mark or any other deceptively similar mark and goods. The effect of registration of the mark has been explained in the judgment reported as American Home Products Corporation Vs. Mac Laboratories Private Limited and Another, . It was held in the said case that "when a person gets its trade mark registered, he acquires valuable rights by reason of such registration. Registration of his trade mark gives him the exclusive rights to the use of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person using the mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain injunction, damages or an account of profits made by other person".

(7) Though it is stated by the defendants that the plaintiff has obtained registration fraudulently and illegally, however till such time the register maintained under the Trade and Merchandise Marks Act is rectified and the trade mark is removed from the register, the plaintiff will continue to have a monopoly in the said trade mark.

(8) It is the case of the defendants that while the plaintiff is a manufacturer of Lpg gas stoves, etc. it cannot file any suit against the defendants who is admittedly manufacturing electronic gas lighter which are not the same goods for which the trade mark has been registered in the name of the plaintiff. In my opinion, there is a fallacy in the argument of the defendants. The trade mark "MITASO" is in respect of installations for heating, steam generating, cooking, including Lpg gas stoves, geysers and electrical household equipments, fans, hot plates, toasters, etc. The plaintiff is marketing such goods under the trade mark "MITASO". In my opinion, the plaintiff's right to restrain the defendants from using the trade mark will, prima facie, also extend to cognate classes of goods. Electronic gas lighter is used mainly for purposes of lighting the gas burners. Even the carton which is used by the defendants shows the lighter with the Lpg gas burners. It clearly shows that electronic gas lighter is a product used for igniting Lpg gas burners. Persons in the trade as well as the consumers can be carried away by the fact that "MITASO" electronic gas lighter which is the product of the defendants is manufactured by the plaintiff company and as such, prima facie, I am of the opinion that the goods of the defendants can be passed off as that of the plaintiff. In a judgment reported as M/s.Kumar Electric Works Vs. Anuj Electronics, 1990 Ptc 26 where the plaintiff was the registered owner of the trade mark Olympus in respect of electronic plat irons and had filed a suit for injunction against M/s.Anuj Electronics who had started manufacturing black and white television sets under the same trade mark Olympus, it was held :- "ADMITTEDLY the plaintiff was not using the trade mark "OLYMPUS" in respect of televisions - the goods which the defendant was marketing under this name. However, the fact remains that, prima facie, the plaintiff's electronic and electrical goods namely electric fans, heat convector, air coolers, juicer- blender-grinder, washing machine, cooler pump, cooler fan and sand which toaster were being marketed through the trade mark "OLYMPUS". Plaintiff's right to restrain the defendant from using the trade mark, prima facie extends to cognate classes of goods. Televisions, which are being sold by the defendant under exactly the same trade mark, prima facie, were in the same trading channel and were cognate goods. This view finds support from the decision of this Court in Creative Handicrafts Vs. Sadana Electric Company & Another, IA.No.3344 of 1988 in Suit No.1347 of 1988 decided on 19.7.1988. In the circumstances, prima facie, second requirement has also been made out."

(9) I am, therefore, prima facie, of the opinion that not only that the trade mark is being infringed by the defendants but the defendant is also passing off its goods as that of the plaintiff.

(10) An objection has been raised by the defendant that this Court has no territorial jurisdiction, as no part of the cause of action has accrued in Delhi. The contention is that it has not been stated in the plaint that the defendant carries on business in Delhi nor any documentary evidence has been placed on record in support of the contention made in paragraph 16 of the plaint that any part of the cause of action has arisen in Delhi. A bare reading of the plaint shows that besides claiming the relief against the infringement of trade mark and passing off the goods, plaintiff has also claimed that the defendant has copied the design and get up of the trade mark and thereby infringed copyright which vests in the plaintiff exclusively. Under Section 62 of the Copyright Act 1957 every suit or other civil proceedings under the Act shall be instituted in the District Courts having jurisdiction and the District Court has been defined as the Court within the local limits of whose jurisdiction, at the time of the institution of the suit or civil proceedings, the person instituting the suit or civil proceedings actually and voluntarily resides or carries on business. In The Tata Oil Mills Company Limited Vs. Hansa Chemical Pharmacy, Ilr 1979 (2) Delhi 236, it was held in respect of the Union Territory of Delhi, High Court of Delhi has the civil original jurisdiction in every suit value of which exceeds the amount mentioned in the Delhi High Court Act and as such it is the principal civil Court of original jurisdiction with respect to every suit above the specified value and as such is the District Court within the meaning of Section 62 of the Copyright Act. It was also held that the suit in respect of infringement of copyright shall be filed in the Court where the plaintiff resides or carries on busines. In Nirex Industries Limited Vs. Manchanda Footwear reported as 1984 Iplr 70, it was held that since the plaintiffs were claiming the reliefs for injunction of copyright, this Court will have the jurisdiction in view of the provisions of Section 62 of the Copyright Act. In Glaxo Operations Uk Limited, and Others Vs. Samrat Pharmaceuticals, it was held that a suit for infringement of copyright in the Delhi High Court will be maintainable by the plaintiff company if it carries on business in Delhi.

(11) In view of the fact that plaintiff has also claimed the relief against the infringement of its copyright, this Court, in view of the clear provisions of Section 62 of the Copyright Act, will have the territorial jurisdiction to entertain the present suit.

(12) In Corn Products Refining Company Vs. Shangrila Food Products Limited, as well as in Century Traders Vs. Roshan Lal Duggar and Company & Ors., , it was held that in an action for passing off, the plaintiff need not prove actual damage in case he is the prior user of the said trade mark. As I have already held, prima facie, it has been brought on record that the plaintiff is a prior user of the trade mark "MITASO" since 1982 and is also the registered owner, in my opinion, there is no need for the plaintiff at this stage to prove actual damage to it by the use of the said trade mark by the defendants.

(13) In view of the above discussions, I am, prima facie, of the opinion that the defendants have violated the exclusive statutory right of the plaintiff in the use of the word "MITASO" for its electronic gas lighter and such violation is illegal and the plaintiff is, therefore, entitled to an injunction. I, accordingly, allow this application and restrain the defendants from using the name "MITASO" on any of its products including the electronic gas lighter.

(14) Any opinion expressed in this order will not in any manner affect the merits of the case.