Procter & Gamble Company vs Satish Patel And Ors.
1996 Latest Caselaw 687 Del

JUDGMENT

K. Ramamoorthy, J.

(1) The first plaintiff, the Procter & Gamble Company and the second plaintiff Procter & Gamble Godrej Limited have filed the suit for injunction on the ground that the defendants are passing off the trade mark of the plaintiffs' ' SAFEGUARD'. According to the first plaintiff the second plaintiff is licensed by the plaintiff to use the trade mark under the License Agreement dated 24th February, 1993,to market, sell and distribute the first plaintiff's products in India. About the reputation and goodwill of the first plaintiff in para 5 of the plaint the case is put forth like this : "THE plaintiffs portfolio of trademarks includes well-known marks such as Safeguard, Camay, Crest, Head & Shoulders, Pampers, Whisper, Ivory, Zest, Ariel, Tide, Always, and several others. The plaintiff has spent millions of rupees on advertisement, sales promotional exercises and publicity campaigns in respect of its various goods bearing the different trademarks as aforesaid. This investment has earned the plaintiff lasting goodwill and reputations under the said trademarks, and is responsible to a large extent for the plaintiffs phenomenal sales turnover and the constant popularity and demand for its products.

(2) About the trade mark Safeguard in para 6 the plaintiff alleges that : "SAFEGUARD for toilet soaps is one of the oldest trademarks of the plaintiff, in use since the year 1963, and registered in the Usa as of 19th May, 1964. The trademark Safeguard is additionally registered in over 90 other countries of the world. A detailed list of the plaintiffs said registrations in foreign countries with registration particulars is filed herein. The plaintiffs applications for registration of the said mark in India are currently pending."

(3) It is asserted by the plaintiffs that the plaintiffs' products bearing trademark since 1970 are advertised in leading magazine like Times, Newsweek, READER'S DIGEST. The first plaintiff has been supplying the soap under the trademark Safeguard to embassies and other diplomatic missions in India. The plaintiffs give a statement of advertisement expenses in the following terms :      Statement Of Advertisement Expenses 1992-93 ($M) 1993-94 ($M) Usa 16,777 8,624 Countries other than Usa 6,994 9,406 Total= 23,771 18,030  

(equivalent to Rs. 76.1 crores) (equivalent to Rs-57.70 crores) In the same para the (Global) first plaintiff has given the statement of Sales turnover as under:      Statement Of Sales Turnover (GLOBAL) Usa 58.800 52.500 Countries other 66.767 78.381 Total 125.567 130.881  

(equivalent to Rs-401.8 crores) (equivalent to Rs-502.6 crores)   

(4) In para Ii the plaintiffs state about the defendant in the following terms :    "THE present suit is concerned with the specific goods bearing the trademark Safeguard of the plaintiff and arises from the cause of action of wrongful imitation and wilful misrepresentation by adoption and use of the same by the defendants who have recently introduced in the market a cosmetic product, being antiseptic cream, under a mark that is identical to the plaintiffs mark SAFEGUARD."  

(5) According to the plaintiff's, the defendants had come into the market recently and the moment the plaintiff came to know about it, the plaintiffs had a market survey conducted by Mode Research Pvt. Ltd. In para 13 of the plaint the outcome of the market survey is detailed in the following terms :    (A)awareness of the brand Safeguard among die target group was of whom 61% could correctly recall the product category; and (b) 32% of the respondents on being shown photographs of the product of the plaintiff and that of the defendant believed them to be from the same company and all of them said that the same name gave diem such impression.  

Thus, the results of the market survey clearly provide prima facie evidence that a very substantial section of the relevant public, i.e. one in three members of relevant public, will get confused or deceived into believing that the antiseptic cream bearing the mark Safeguard originates from or has some trade connection with the plaintiff.    14.The survey was conducted by Mode in strict accordance with the basic principles applicable to market researches, namely : (a) the survey was carried out on a representative sample of the relevant public, that is to say the sample size of the respondents was representative of the relevant class of customers; (b) the form of questions and the manner in which the survey was conducted was based on accepted market research principles; (e) the questions were formulated in such a way as to preclude a weighted response, that is no leading questions were asked, and the answers were fairly and accurately recorded; and (d)' the respondents were drawn from the cross-section of the public or the trade whose expression or opinion is relevant to the matters in question."  

(6) It is stated by the plaintiffs that the market survey which gleaned information from the relevant class of customers established that persons who have had even a brief contact with the outside world are aware of the plaintiffs brand and would associate the use of a similar brand in relation to a related product with the plaintiff. In para 16 the plaintiffs state as to how the confusion will arise in the mind of the public in the following manner :    "THE confusion in the minds of the consumers will inevitably lead to passing off since it is not unusual for manufacturers of cosmetic and toiletry products to be marketing different goods falling under the same class under a common brand. Thus, for example, consumers are accustomed to find antiseptic lotion as well as soap under the trademark Dettol, antiseptic after shave lotion, shaving cream, hair cream and talcum powder bearing the trademark Old SPICE.antiseptic cream and prickly heat powder bearing the mark Boroplus, VICCO's antiseptic turmeric cream as well as Vocco Tooth Paste and tooth powder etc. The purchasing public and the trade is thus familiar with this trend of use of common marks for cognate and allied goods of the same manufacturer and in these circumstances, use of the mark Safeguard by the defendants in relation to antiseptic cream of their manufacture amounts to a misrepresentation to the purchasing public and the trade that their goods are those of or approved by or in some manner connected with those of the plaintiff thereby giving rise to a strong likelihood of passing off."  

(7) It is further stated in the same paragraph that the nature of the soap sold by the plaintiff under the trade mark 'SAFEGUARD' is antiseptic and the defendants are manufacturing the product as antiseptic cream and both the products being antiseptic there is every likelihood of a soap and a cream bearing identical marks being believed by the consumers to be supplementary and/or complementary to, or in lieu of, each other.   

(8) According to the plaintiffs the following factors would lead to passing off of the defendants' goods as and for those of the plaintiffs.    (I)Identity of the competing marks. (ii) Similarity of the goods upon which the marks are used. (iii) Common trade channels, (iv) Degree of sophistication of the buyers. (v) Public knowledge of the plaintiffs well known mark. (vi) Exclusivity of use by the plaintiff. (vii) The nature of the mark. (viii) Extent of potential confusion.  

(9) The plaintiffs asserted that the first plaintiff proposes to launch its soap under the trademark Safeguard in the Indian market on a large scale shortly and the plaintiffs will be put to great hardship if the defendants are allowed to have the use of the trade mark Safeguard for selling their antiseptic cream. Alongwith the plaint the plaintiffs filed the following documents : 1.Photocopy of Power of Attorney executed by plaintiff No. I in favour of Mr. Ashok Chhabra and certified copy of the Board Resolution passed by plaintiff No. 2 in favour of Mr. Ashok Chhabra. 2. Annual report of plaintiff No. I for the year 1994. 3. Photocopy of Trademark License Agreement dated 24th January 1993 between plaintiff No. I and plaintiff No. 2. 4. Specimen copies of the "P&G World", an in-house magazine of the plaintiff, and other literature containing information on the plaintiff and its Safeguard product. 5. Photocopies of extracts from "Fortune 500" magazine, "The World's Greatest Brands" and from publications of other independent agencies carrying write-ups on the plaintiff. 6. List of countries in which trademark Safeguard is registered alongwith registration details. 7. Photocopies of certificates pertaining to trademark registrations of Safeguard in Usa, Hong Kong, New Zealand, Philippines Thailand and Great Britain. 8. Copies of specimen advertisements of the plaintiffs products including Safeguard, appearing in Newsweek (dating back to the year 1992) etc. 9. Photocopy of certification letter dated 21st February, 1995 issued by the American Embassy in India pertaining to use of Safeguard soap by its staff. 10. Copy of the market survey report by MODE. 11. Photocopy of letter dated 16th February, 1995 addressed to the plaintiff by M/s. Rernfry & Sagar informing them about abandonment of trade mark application No. 420752 filed by defendant No. 2 in class 3 for registration of SAFEGUARD. 12. Photographs of cosmetic preparations and toiletry articles of the same manufacturers bearing common trademarks. 13. Photograph of the plaintiffs product under the mark Safeguard and that of the defendants bearing an identical mark. 14. Sample advertisement material of the defendants relating to their product bearing the infringing mark SAFEGUARD. 15. Photocopy of invoice dated 24th January, 1995 issued by Khurana General Store, Sadar Bazar on purchase of the defendants' product. 16. Respective products of the plaintiffs and defendants.

(10) On 15.07.1995 the second defendant filed Ia No. 7339/95 under Order Xxxix Rule 4, Civil Procedure Code to vacate the ad-interim orders passed by this Court on 27.4.1994. It is stated in the application that the second defendant is engaged in the business of manufacturing and marketing Ayurvedic Antiseptic Creams under the trade mark Safeguard since 1983. The defendants have been advertising through various media including newspapers having circulation in various parts of India since 1984. The plaintiffs are carrying on business in India since 1985, which could be seen from the documents filed by the plaintiff themselves. The plaintiffs have deliberately concealed their knowledge about the use of the trade mark "SAFEGUARD" by the defendants for the past 10 years. A reference was made by the plaintiffs about the various international magazines and that does not represent the correct position because the magazines circulated in India do not carry the advertisement in relation to the soap Safeguard manufactured by the first plaintiff. The plaintiffs have neither registered the trade mark safeguard nor have used the trade mark Safeguard in India and, therefore, they cannot claim any relief in the suit. It is stated in para Iii of the application that the word Safeguard is highly descriptive having direct reference to the character and quality of the goods. It is further stated that the word "SAFEGUARD' conveys a meaning as per the shorter Oxford English Dictionary (IIIrd Edn. Vol.2), so as to mean "to protect, to guard". The plaintiffs claim to be using the said mark in relation to anti bacterial soap. The plaintiffs' adoption and use of the mark Safeguard is deliberate and to impress upon the consumers that the soap is medicated and is recommended to guard against bacterial infection. Such a descriptive word as Safeguard cannot be appropriated and monopolised as a trade mark by any single manufacturer or trader. Even if such proprietory right is accepted it has to be confined to monopoly limited to the product for which such use has been proved. So, if at all, plaintiffs can claim a monopoly in respect of use of trade mark Safeguard only in relation to their anti-bacterial medicated soap and not for any other product. This is without prejudice to the defendant's contention that even such claim of the plaintiffs is not maintainable as plaintiffs have failed to prove such use of trade mark in India. The word Safeguard describes the character and quality of the goods, i.e., a soap, which safeguards the consumer against bacterial skin infection. Such a word ought to be open to the members of the trade, to be used as bona fide description of their product. Consequently, the plaintiffs have to discharge a heavy burden of proof of extensive use of such mark in India so as claim any proprietory rights or right of exclusive use. In the present case, the plaintiffs have failed to establish any use whatsoever of the trade mark Safeguard in India. The plaintiffs have failed to establish any proprietory right to the purported mark SAFEGUARD. The plaintiffs have not shown that they have established any goodwill in India and if that is the position there is no question of misappropriation of the same by the defendants. The defendants claim that the sale of the antiseptic cream by the defendants has been extensive and the defendants have been exporting antiseptic cream to countries outside India and the defendants have been spending a good lot of money for advertising and for the sale promotion and in the year 1994 on that head the defendants had spent about Rs. 70 lakhs. It is asserted by the defendants that the survey report relied upon by the plaintiffs cannot be looked into unless the persons who had given the report are subjected to cross-examination. It is stated in the application that the adoption and use of the trade mark Safeguard by the defendant is honest and concurrent since 1983, without any interruption/objection from any quarter including plaintiffs and defendant is entitled to use and to be registered as proprietor of trade mark Safeguard under Section 12(3) of Trade & Merchandise Marks Act, 1958.

(11) About the business of the defendants and the hardship that would be caused to the defendants if injunction is granted is stated in the following terms : "ON the contrary, the defendant has an annual turnover of over Rs. 1.25 crores. The defendant further has orders worth Rs.70 to 80 lakhs and another Order worth Rs. 20 lakh for Export, which the defendant is unable to execute because of the operation of the impugned ex-parte order of Interim Injunction. The factory of the defendant is closed for the past two months, where the manpower of more than 150 is sitting idle and is being paid by the defendant. Further, there are fresh orders coming in every day, which the defendant is unable to accept for its inability to execute the same. A part from loss and injury caused to the business of the defendant, the products of the defendant are lying with the Stockists and Retailer worth over Rs. 50 lakhs, for which the defendants will not receive payment unless the stockists and the retailers are able to sell the products, which only will be possible if the impugned ex-parte Order is vacated. Apart from the immediate loss in business, the defendant is further suffering irreparable injury to its goodwill and reputation which it has been able to build up in the Trade Mark Safeguard associated by the consumers with the defendants for past more than 12 years. All such injuries suffered by the defendants are beyond compensation and if the impugned ex-parte Order is allowed to continue, it will destroy the defendants totally beyond repair or chances of retrival. The impugned ex-parte order, if it is allowed to continue, will amount to a decreeing the suit in favour of the plaintiff and against the defendants without trial. As compared to all such injuries, the plaintiffs will not suffer any injury whatsoever and can be well compensated if they ultimately succeed in the suit after trial."

(12) The second defendant has also filed the reply to the application for injunction filed by the plaintiffs. The plaintiffs have also filed reply to the application filed by the defendants under Order Xxxix Rule 4, CPC. The second defendant has filed rejoinder to the reply. I do not want to refer to the averments in these because I had already extracted the relevant averments in the pleadings of the parties.

(13) On 12th July of 1995, the second defendant filed 18 documents which are as follows: 1.Reader's Digest - issue dated April, 1978. 2. Extracts from Newsweek dated 21.2.1972,21.1.1974,6.2.1984,25.10.1976, 11.10.1976, 13.2.1984,20.2.1984, 26.4.1982, 4.5.1981, 14.8.1978. 3. Issue dated 17.1.1972 of Newsweek as obtained from the American Library at Bombay. 4. Issue dated 21.2.1972 of Newsweek as obtained from the American Library at Bombay. 5. Advertisement publication schedule of the defendant of the mark "SAFEGUARD" from the year 1984 till 9.4.1995. 6. Schedule giving advertisements issued by the defendant in Door Darshan Channel I and Zee T.V. for the year 1995. 7. Sample Advertisements issued by the defendant since the year 1984. 8. Sample Invoice showing the mark "SAFEGUARD" being advertised on Ahmedabad City Buses alongwith a photograph showing the advertisement. 9. Sample contracts dated 30.11.87 & 25.3.86 showing advertisements of the mark "SAFEGUARD" by the defendant on All India Radio. 10. Sample telecast Certificates dated 24.11.1994, 29.11.1994, 1.12.1994, 8.12.1994, 13.12.1994, 15.12.1994, 20.12.1994, 22.12.1994 & 3.1.1995 654 issued by Door Darshan Kendra showing that the defendant had advertised the mark "SAFEGUARD" on T.V. 11. Letter dated 14.12.1984 showing that the defendant had advertised the mark "SAFEGUARD" in various Cinema Halls. 12. Sample Stokist's agreement dated 30.6.84, 8.6.84, 27.5.84, 26.6.84, 28.6.84, 13.6.84, 11.6.84,20.6.84 for the distribution of the defendant's product "SAFEGUARD". 13. Letter dated 1.1.1988, Invoice dated 30.11.1987, Certificate of Origin/ Manufacture dated 1.12.1987 issued by the Bombay Chamber of Commerce and Industry; Bill of Lading dated 30.11.1987, Export application dated 8.12.1987, Shipping Bill dated 23.11.1987, showing export of the product of the defendant under the mark "SAFEGUARD". 14. Letter dated 12.6.1995 from the defendant to the Trade Marks Registry at Bombay along with annexures and filing receipt dated 12.6.1995. 15. List of products manufactured by the defendant as approved of by the Food and Drugs Control Administration, State of Gujarat. 16. Sample point of purchase publicity material issued by the defendant since the year 1984. 17. Extract from the shorter Oxford English Dictionary giving the meaning of the word "SAFEGUARD". 18. Sample Invoices showing sale of the defendant's product since the year 1984. 13.0n26.10.1995,thedefendants filed another set of documents alongwith the affidavits of third parties The details are as follows : 1. Affidavit of Ishwarbhai Ramchandra Sharma dated 19.9.1995. 2. Affidavit of Pravinbhai Natubhai Chawla dated 12.9.1995. 3. Affidavit of Gamanlal Jagjivandas Parmar dated 13.9.1995. 4. Affidavit of Mukundrai Mehta dated 23.9.1995 alongwith Bill No. 125 dated 19.1.1986. 5. Affidavit of Jaswantlal Jethalal Doshi dated 24.9.1995. 6. Affidavit of Mohibbhai Yusafbhai Bajowala dated 22.9.1995. 7. Affidavit of Zoherbhai Taherbhai Nevtiwala dated 16.9.1995. 8. Affidavit of Hitesh Kumar Shah dated 19.9.1995. 9. Affidavit of Hasmukhrai Suchak dated 19.9.1995 alongwith letter dated 22.7.1986, Bill No. 195 dated 11.6.1986 and letter dated 25.7.1986. 10. Affidavit of Viren Kumar Shah dated 19.9.1995 alongwith Bill No. 314 dated 11.3.1987, being LR. No. 1620 dated 17.3.1987, Bill No. 107 dated 2.7.1987 and Challan Invoice being Lr No. 019262 dated 4.7.1987. 11. Affidavit of Ashwin Kumar Thaker dated 21.9.1995 alongwith Bill No. 164 being Lr No. 2824 dated 12.2.1988 and Bill No. 168 being dated 13.4.1988. 12. Affidavit of Rameshbhai Natverlal Kaji dated 16.9.1995 alongwith Bill No. 108 dated 16.11.1989. 13. Central Board Censor Certificate of Safeguard dated 19.9.1984 alongwith bills and letters issued alongwith bills and letters issued by Blaze Advertising for 1984-1986. 14. Advertisements of Safeguard in newspaper "the Times of India" (Bombay Edition) dated 26.1.1984,20.10.1984,28.1.1984and 30.1.1984. 15. Letter/Certificate dated 2.9.1995 from Bank of Baroda endorsing sale of "SAFEGUARD" antiseptic Cream" by the defendants. 16. Excise Gate Passes dated 23.3.1984, 1.8.1984 and 9.11.1987 regarding "Safeguard antiseptic cream" alongwith "delivery challan" issued by Supreme Containers Industry Pvt. Ltd. 17. Insurance Cover Notes dated 11.9.1984, 24.9.1984 and 30.10.1984 issued by United Insurance Co. Ltd.

(14) On 28.10.1995 the plaintiffs again filed the documents alongwith the affidavits which are as follows : 1.Affidavit of Mr. Ashok Chhabra. 2. Annexure 'A' (Collectively). 3. Newsweek (International Edn. 4 Feb, 1974). 4. Newsweek (American Edn. 4 Feb. 1974). 5. Newsweek (International Edn. 25th Oct. 1976). 6. Newsweek (American Edn. 25 Oct. 1976) 7. Newsweek (International Edn. 4 Dec. 1978) 8. Newsweek (American Edn. 4 Dec. 1978). 9. Newsweek (International Edn. 13 Feb. 1984).

(15) Alongwith these documents the plaintiffs filed on 31st October, 1995 the affidavit of Mr. Diniar Gamir, Territory Sales Officer of the Procter & Gamble Godrej Limited, Bombay (second plaintiff) stating that the telephone number at Vadodara came into operation only after 11.10.1986. This is to show that the telephone number given in certain documents by the defendants in the earlier years would show that the defendants had fabricated certain documents to project the sales of their products prior to 1986. The same person has filed the affidavit stating that in the years 1984-85 and 1985-86 the sales tax paid by the defendants was less than a thousand and, therefore, the claim of the defendants that they were doing business on a large scale cannot betrue.

(16) On 4.12.1995, the defendants filed a reply to the affidavit by Mr. Gamir stating that the defendants having been paying sales tax regularly and the defendants have also included certificate dated 27.1 I.I 995 by the Sales Tax Officer Div.II Vadodara stating the defendants had been filing the sales tax return from 1.7.1983 to 31.3.1991 for the sales of their products 'SAFEGUARD' Ayurvedic antiseptic cream. The defendants have also filed the affidavit of the Manager/Partner of the second defendant Mr. T.S. Patel wherein the sales and advertisement expenses are shown in the following terms : _________________________________________________________________ S.No. Period Sale Advertising 1_________2____________________3____________________4____________ 1. 1.4.90-31.3.91 4,27,480.00 l,82,000.00 2. 1.4.91-31.3.92 4,47,280.00 l,56,000.00 3. 1.4.92-31.3.93 2,80,927.00 60,000.00 4. 1.4.93-31.3.94 6,46,800.00 2,27,000.00 5. 1.4.94-31.3.95________118,99,590.00 __________70,00,000.00 _______

(17) Learned Senior Counsel Mr. Ashok Desai for the plaintiff formulated his submissions and submitted that, according to him, there are six points which have to be considered in the case.

(18) First point is that Safeguard is an internationally well established and widely known product with reputation and he referred to the figures given in the plaint and also various magazines to show that the first plaintiff had issued advertisements in those magazines. He also relied upon the market survey. In support of his case, he relied upon the following cases : VITAMINLD's 1956 Rpc I, N.R. Dongre & Ors. v. Wimlpool Corporation, 1995 (II) Ad (Delhi) 409, CalvinKlein,lnc. v. International Apparel Syndicate Cal. Hc reported in Ip Asia 31 Oct. 1994, William Grant & Sons Ltd.v. Mcdowell & Company Ltd., , Daimler Benz Aktiengesellschaft &Anr. v. Hybo Hindustan, , Har Par Brothers International Limited v. Tiger Balm Company Pvt. Ltd and Ors. and Lego System Aktiselskab and Another v. Lego M. Lemelstrich Ltd., 1983 Fsr 155.

(19) The second point is that the second defendant is a multi-product Company and its sale of Safeguard Antiseptic cream is neither shown nor proved to be continuous or sizeable. Learned Senior Counsel submitted the documents filed by the defendants are fabricated and they cannot be taken to be true and all those documents have to be completely ignored and according to the learned Senior Counsel that there was no effective advertisement prior to 1995. According to the learned Senior Counsel that the sales figure given in the application under Order Xxxix Rule 4 about the sale was at 1.25 crores whereas in the affidavit filed by Mr. T.S. Patel dated 30.11.1995 it has come down to Rs. 1,18,99,590.00 would show that the defendants are not able to give correct figures. The defendants abandoned the application for registration in 1990. The application for registration by the plaintiffs is pending before the Registrar of Trade Marks which is for registration under Class 3 goods for which the defendants also applied and abandoned. The learned Sr. Counsel submitted that the publication made by the defendants in Times of India edition dated 20.11.1984 is also not true and, therefore, the defendants had filed " "fabricated documents to show their advertisements.

(20) The third point is that there is sufficient similarity in die lettering style and colour scheme between the plaintiffs' and the defendants' products to bring on a charge of passing off.

(21) The 4th point is that the defendants have relied upon false and fabricated documents to establish a case of long and continuous use. That would amount to Contempt of Court. The learned Sr. Counsel relied upon the following cases : Chandra Shashi v. Anil Kumar Verma, , Johnson & Son Ltd. v. W. Puffer & Co. Ltd., 47 Rpc 95, Intercontex &Anr. v. Schmid & Anr., 1988 (FSR) 575 and 39RPC 406.

(22) The 5th point is that the broad class of goods is identical, dealing with goods of germicidal or antiseptic quality. The learned Senior Counsel relied upon J. Brown & Co. Ltd to register a Trade Mark Vol. 38 Rpc 15.

(23) The 6th point is that there is no delay on the part of the plaintiffs in approaching this Court for relief. The learned Sr. Counsel relied upon the following cases: Hindustan Pencils Pvt. Ltd. v. Mis. India Stationery Products and Ors., and Hitachi Ltd. v. Ajay Kumar Aggarwal, 1995 Iplr 102.

(24) The learned Sr. Counsel for the defendants Mr. Arun Jaitley formulated his submissions. His first point is that the distinction between passing off and infringement of trade mark should borne in mind. According to learned Sr. Counsel the plaintiffs must have established goodwill in India in the trade mark in question. The learned Sr. Counsel also submitted that the plaintiffs must have established that the defendants are making misrepresentation and use of mark by the defendants is likely to cause confusion and deception. The learned Sr. Counsel relied upon the following two cases in support of this point : Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratones, and Mis. Hindustan Radiators Co. v. Mis. Hindustan Radiators Ltd., .

(25) The second point, the learned Senior Counsel referred, is goodwill. According to the learned Senior Counsel the goodwill is local in nature and it can exist where the business is carried on. No one can claim to have goodwill when the business is not in existence. In support of this contention learned Senior Counsel relied upon: Brooke Bond India Ltd. v. K Manibhai & Co., 1 Plr 1987 143, Pepsico Inc. v. Express Battlers Services Pvt. Ltd. and Am., Iplr 12 (1987) 71 and Star Industrial Co. Ltd. v. Yap Kwee Kor, Fsr (1976) 256.

(26) The learned Senior Counsel also submitted that in a case of passing off a foreign proprietor not selling products in India must produce concurrent evidence of sale of his products which would have developed goodwill. The plaintiffs in this case have not produced such evidence. According to the learned Senior Counsel the advertisement relied upon by the plaintiff would relate to the entire range of products of the plaintiffs and not with reference to the trade mark 'SAFEGUARD' alone. A perusal of the advertisement would show that the soap 'SAFEGUARD' is shown only in a crowded place and one cannot identify the mark safeguard unless one's attention is specifically drawn to it. The plaintiffs have not produced any evidence to show the sale of Safeguard soap in Five Star Hotel, Airport, Embassies and duty free shops and other important markets.

(27) The next point is that there are differences in get-up and added matters. The learned Senior Counsel submitted that the distinction between the infringement and passing off is that in case of infringement difference in get up packaging is immaterial whereas in passing of these things would have a great bearing. The learned Senior Counsel relied upon the judgment of the Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, .

(28) The next point is that if a trade mark is an invented word the proprietor may claim monopoly if the proprietor has been able to establish sales and good business in the place in which the business is carried on. If the trade mark is distinctive the proprietor cannot claim monopoly in the trade mark unless the proprietor is able to establish by cogent evidence that it has become distinctive with the product of the proprietor. The proprietor should also establish that the distinctive word has acquired the secondary meaning with reference to the product of the proprietor maintaining a very large scale sales. The learned Senior Counsel relied upon the following cases: Mis. Jugmug Electric & Radio Co. v. M/s. Telerad Private Ltd., Ilr 1978 Vol. I Delhi 667, Teju Singh v. Shanta Devi, , Air 1991 Fleet Street Report 367 and M/s. Kala Niketan Karol Bagh, New Delhiv. M/s. Kala Niketan G- 10, South Extension Market I, New Delhi, . The learned Senior Counsel relied upon the Kerly's 12th Edn. Paragraphs 14 to 40.

(29) The next point is that the goods are completely different, the plaintiffs manufactured soap, and the defendants are manufacturing cream as an Ayurvedic product and, therefore, there is no likelihood of confusion or deceptive. The learned Senior Counsel relied upon the following cases : Nestle's Products Ltd. and Others v. M/s. Milkmade Corporation and Other, , M/s. S.M. Enterprises'. M/s. Hyderabad Lamps Ltd., 1988 Patent and Trade Mark Cases 98. Wander Ltd. and Another v. Antox India Pvt. Ltd., , Synthetic Moulders v. Samperit Aktiergeselshaft, Rlr 1980 263, Chandra Bhan Dembla Trading Delhi v. Bharat Sewing Machine Co., The Post Office v. Interlink Express Parcels Ltd., Fsr 1989 (1)369 and Shri Gopal Engg. & Chemical Works v. M/s. Pomx Laboratory, Air 1992 Delhi 302.

(30) The next point formulated by the learned Senior Counsel is that under Section 12(3) of the Trade Mark and Merchandise Act, 1958, the defendants had applied for the registration of trade mark in 1984, they are entitled to registration under Section 12(3) on the ground of honest concurrent user and when that is the case, the plaintiffs cannot claim any interim orders.

(31) The learned Senior Counsel submitted that the balance of convenience is in favour of the defendants and if the injunction is granted irreparable injury will be caused to the defendants. According to the learned Senior Counsel it cannot be disputed that the plaintiffs are not selling soap under the trade mark Safeguard and as a matter of fact, it is their case that they are going to manufacture soap under the trade mark and ultimately if this Court comes to the conclusion that the defendants are guilty of passing off, the plaintiffs would not be put to any hardships, whereas the defendants would be put to great hardship if they are prevented from using the Safeguard which they have been using since 1984.

(32) I have considered the materials placed on record and the arguments advanced before me. The word Safeguard is not claimed to be an invented word. Therefore, it is descriptive. I am prima facie of the view that the plaintiffs have not established that the plaintiffs had any reputation on the basis of which one can say that the word has acquired secondary meaning connecting the product with the plaintiffs. It is the case of the plaintiffs that the soap are used in Embassies and, therefore, the trade mark 'SAFEGUARD' is known to be the mark as that of the plaintiffs. If that is so, the plaintiffs cannot pretend that the defendants user did not come to their notice. The defendants have produced sufficient material to show that they have been using the trade mark Safeguard from 1984. The Censor Board Certificate of the year 1984 would show that the Central Government was made known about the product of the defendants. In a passing off action what would tilt the scale is the user of the mark and the get up and the packages used by the parties. In the trade mark world it is not unknown that two parties use the same mark. The statute itself provides for such a situation. In the instant case the defendants have been manufacturing Ayurvedic antiseptic cream and has been selling the product since 1984 and the suit is filed in 1995. For 11 years the plaintiffs have not raised any objection. One can appreciate the case of the plaintiffs if they say that the defendants were carrying on the business in a very remote place in India and that was not made known beyond the frontier of a small place and there was no possibility of diligent steps to know about the business of die defendants and, therefore, no action could be taken by the plaintiffs. The position is different here. The defendants have been carrying on business in a very important place and too on a large scale. Even advertisements are seen in public transport buses in Gujarat and there had been advertisements in Newspapers. The case of the plaintiffs that the defendants are guilty of fabrication of documents cannot be accepted at this stage without there being a trial on the issues. I do not think that the plaintiffs are justified in levelling such serious allegations against the defendants with reference to all the documents filed by the defendants. That does not mean that the plaintiffs are justified in making the allegations in respect of a few of documents filed by the defendants. What I wish to point out is that the plaintiff simply cannot say for the purpose of interlocutory application that the documents filed by the defendants are fabricated.

(33) In my view, on the material placed by the plaintiffs, the plaintiffs do not satisfy the requirement of law in a passing off action for the grant of injunction pending the suit against the defendants. I have come to this conclusion on the following principal factors: 1.The plaintiffs have not establishment either Globally or in India that with reference to the soap Safeguard that they have established their exclusive ownership of the trade mark by showing that the safeguard has acquired a secondary meaning and it has acquired the distinctiveness with the plaintiffs. 2. he second is the advertisements made by the plaintiffs do not show the trade mark Safeguard of their soap in a very pronounced form. 3. The third is that the plaintiffs' product is a soap used by the everybody whereas the defendants' product is a Ayurvedic cream which is not used by all people. Apart from this the get up and the way in which the mark Safeguard shown in the packages by the defendants do not bear any resemblance to the trade mark which can be said to be deceptively similar and which is likely to give confusion in the mind of the general public. Therefore, I am impelled to come to the conclusion that the plaintiffs have failed to make out a prima facie strong case for the grant of injunction. 4. Another important factor which has to be taken note of is the judgment of the Supreme Court in Vishnudas Tradmgv.Vazir Sultan Tobacco Co. Ltd., Jt 1996 (6) 369. In the case before the Supreme Court, the Respondent Company, namely, Vazir Sultan Tobacco Co. Ltd. has been manufacturing cigarettes under the brand name 'Charminar'. The Company registered trademark Charminar in respect of manufactured tobacco "falling in Clause 34 of the 4th Schedule to the rules framed under the Trade Marks Act, 1940and 1950 Act. However, the Company did not manufacture anything other than cigarettes during all these long years. The Appellant Company before the Supreme Court is manufacturing Quiwam and Zarda' from 1973 and has been using the trade mark "Charminar" on its bottles and boxes of Quiwam and Zarda. Thereupon the Appellant Company instituted rectification proceedings. The Supreme Court considered the matter and held that the Appellant Company was entitled to the rectification. The relevant portion of the judgment is extracted below for the proper appreciation of the position: Para 47. The "class" mentioned in the 4th Schedule may presume or comprise a number of goods or articles which are separately identifiable and vendible and which are not goods of die same description as commonly understood in trade or in common parlance. Manufactured tobacco is a class mentioned in Class 34 of 4th Schedule of the Rules but within the said class, there are number of distinctly identifiable goods which are marketed separately and also used differently. In our view, it is not only permissible but it will be only just and proper to register one or more articles under a class or genus if such articles are intended, by specifically mentioning the names of such articles and by indicating the class under which such article or articles are to be comprised. It is, therefore, permissible to register only cigarette or some other specific products made of 'manufactured tobacco' as mentioned in Class 34 of 4th Schedule of tine Rules. In our view, the contention of Mr. Vaidyanathan that ' in view of change in the language of Section 8 of Trade Marks Act as compared to Section 5 of Trade Marks Act, 1940, registration of trade mark is to be made only in respect of class or genus and not in respect of articles of different species under the genus is based on incorrect appreciation of Section 8 of the Trade Marks Act and 4th Schedule of the Rules. Para 48. Since such registration initially had not been done, the rectification of the registration by limiting or confining the registration of trade mark of the Respondent Company to particular goods, namely, cigarettes, in the facts and circumstances of the case, cannot be held as illegal or unjustified" The dictum laid down by the Supreme Court, in my view governs this case.

(34) Now let us see the balance of convenience. It is asserted by the plaintiffs that they are doing business in billions of rupees all over the world and they propose to engage themselves in the manufacturing of soap under the trade mark Safeguard and they have also applied for registration. At the time of the registration the Registrar will decide the question in accordance with principle of law applicable thereto. The defendants also claimed to have applied for its registration, though it is contended by the plaintiffs that the defendants had abandoned the application for registration in 1990. The defendants have beep carrying on the business of manufacturing and selling Ayurvedic cream for nearly a decade and more and at this stage if the defendants are interdicted from using die trade mark Safeguard they will have to change the name and start the a new business, as it aware and, tell their customers all over the country and abroad that they are now manufacturing under a new trade mark. That task will be very difficult and I will be doing great injustice to the defendants if I am to say that the balance of convenience is in favour of the plaintiffs. If ultimately the plaintiffs succeed in establishing their case they can always prevent the defendants from carrying on the business under the trade mark SAFEGUARD. It is not the case of the plaintiffs that if pending the trial the defendants are allowed to sell their Ayurvedic antiseptic cream and in the event of the plaintiffs commencing selling soap under the trade mark Safeguard, the selling of their products by the defendants would in any way affect their business. That is only academic because the plaintiffs are yet to enter the business in india on a commercial scale. The defendants do not seek to injunct the plaintiffs from using the trade mark SAFEGUARD. As I had mentioned earlier, the learned Senior Counsel for the defendants relied upon Section 12(3) of the Trade Mark Act, 1958 and claimed honest concurrent user. Having regard to the totality of the circumstances, I am satisfied that the balance of convenience is in favour of the defendants and the grant of injunction against the defendants would cause great prejudice to the defendants and this Court would not be in a position to place the defendants in the same position as they enjoy on the date of the suit. On the other hand, the position of the plaintiffs is entirely different.

Accordingly, No. 3544/95 for injunction is dismissed. Ia No. 7339/95 under Order Xxxix Rule 4 is allowed. There shall be no order as to costs. ---

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Post the matter for admission/denial of documents before the Joint Registrar on 14.11.1996 and then for framing of issues on which date the Court can fix the dates for trial.