Jai Prakash Gupta vs Vishal Aluminium Manufacturing ...
1996 Latest Caselaw 705 Del

JUDGMENT

Devinder Gupta, J.

1. The plaintiff in a suit for passing off of trade marks, rendition of accounts and damages has in the application under Order 39 Rules 1 and 2 of the Code of Civil Procedure (for short "the Code") sought an order of injunction restraining the defendants, their servants, agents, representatives, distributors and dealers and all other persons on their behalf from selling the pressure cookers (non-electric) under the trade mark VISHAL king and/or other trade mark containing the word "VISHAL" till final disposal of the suit.

2. After summons were issued and notice in the application was sent, the defendant put in appearance and filed its reply. Pleadings are complete. I have heard learned counsel for the parties.

3. The suit is filed on the allegation that plaintiff firm is engaged in the business of manufacturing and sale of pressure cookers (non-electric) etc. being household kitchen goods for the last many years. The plaintiff is using one of the celebrated trade mark VISHAL in respect of pressure cookers (non-electric) since the year 1984 continuously extensively and openly and without any objection from anyone. The business carried on by the plaintiff is an extensive one and the aforesaid trade mark VISHAL has always been mentioned on the goods and packing thereof. The plaintiff being the proprietor and owner of the trade mark VISHAL, therefore, it is unlawful for any other person or firm to use the identical and/or deceptively similar trade mark as that of the plaintiff in respect of same goods or the goods of the same description. It is also alleged that the plaintiff has conducted huge sales of the aforesaid goods under the trade mark VISHAL through most of the states in the country and people in the trade associates, the aforesaid goods under the trade mark VISHAL with the plaintiff only. The plaintiff has acquired tremendous-goodwill and reputation in respect of the trade mark VISHAL in respect of pressure cookers (non-electrical).

4. In order to protect the interest in the trade mark, the plaintiff filed an application for its registration with the Trade Marks Authorities under No. 487390 in class 21 dated 15th March, 1988, in respect of pressure cookers claiming its user since 1st April, 1984. The application was accepted by the Registrar, Trade Marks Bombay, in respect of specification of goods 'pressure cookers (non electric)' for advertisement in the Trade Marks Journal. In December, 1991, the plaintiff came across the goods of the defendant under the trade mark VISHAL KING and on enquiries made, it was learnt that the defendant was selling pressure cookers (non-electric) under identical and/or deceptively similar trade mark and above the word "VISHAL" the defendant was using the word "R" in a circle, falsely representing that the mark VISHAL stands registered in the name of the defendant.

5. It is alleged that the defendant came in the market recently. Since the defendant had complete knowledge that the mark VISHAL belongs to the plaintiff and the plaintiff is the owner and proprietor and prior user of the mark VISHAL in respect of pressure cookers (non-electric) and the plaintiff had tremendous goodwill and reputation, out of greed and in order to cash on the plaintiff's goodwill and reputation, the defendant started marketing pressure cookers under the identical and/or deceptively similar trademark VISHAL KING without getting any permission or licence from the plaintiff. The defendant is also using, the word "R" above the mark VISHAL, which is causing confusion in the market. People and traders are being deceived and they are purchasing the goods of the defendant believing in good faith that the mark of the defendants is registered. On search being conducted it has been found that there is no trade mark registered in the name of the defendant. The plaintiff thereafter filed a complaint against the defendant under Section 81 of the Trade and Merchandise Marks Act, 1958 for making false representation of an un-registered trade mark as a registered trade mark VISHAL KING. Because of the illegal activities of the defendant, the defendant has earned undue profits by committing the tort of passing off and also by representing the trade mark VISHAL KING as registered trade mark. Because of the unauthorised use of the identical and/or deceptively trade mark by the defendant as that of the plaintiff, there is every likelihood that the purchasers or intending purchasers will be misled and deceived. The unwary purchasers are likely to take the goods of the defendant as that of the plaintiff and will be compelled to buy the goods of the defendant, which are inferior in quality as compared to superior quality of the plaintiff. In this background decree for injunction and rendition of accounts has been prayed and till the disposal of the suit, temporary injunction has also been prayed alleging that injunction, if not granted, will result in incalculable loss and injury.

6. The suit has been contested by the defendant, who has denied that the plaintiff is the owner and proprietor of trade mark VISHAL within the meaning of Trade and Merchandise Marks Act, 1958. It is also denied that the plaintiff ever used the trade mark VISHAL in respect of pressure cookers and other like goods. The defendant has alleged that user, if any, is an after/thought, subsequent and fraudulent one. It is alleged that the defendant is prior in adoption and use of the trade mark with key portion of VISHAL since August, 1978. It is also alleged that M/s. Monica Manufacturing Company is also the prior user and in adoption of the trade mark VISHAL since February, 1982 in respect of aluminum intensils, pressure cookers, non-stick utensils etc. The defendant has alleged that the suit of the plaintiff is neither competent, nor maintainable since there is neither any infringement nor passing off. The defendant is prior in adoption of the trade name VISHAL ALUMINIUM COMPANY with key portion of VISHAL and the said trade name for the first time was adopted in the month of August, 1978 when the defendant was registered with the Sales Tax Department by obtaining sales tax number on 25th August, 1978 at premises No. 12/48, Geeta Colony, Delhi when Shri Bansi Lal was the proprietor of the firm. On 7th June, 1980, the firm was shifted to 13/42, Geeta Colony, Delhi and since then the defendant has been carrying on the business of manufacture and merchants of aluminum patti, utensils and other cognate and allied goods. The defendant is the prior user and adopted the trade mark with key portion VISHAL since 25th August, 1978.

7. It is alleged that the plaintiff himself is passing off the goods and business of defendants as well as of M/s. Monica Manufacturing Co. A-29 and B-29, Rani Garden, Shastri Nagar, Delhi, Monica Manufacturing Company has continuously, extensively, uninterruptedly and without any hindrance been using the trade mark VISHAL since February, 1982 in respect of aluminum utensils, pressure cookers, non-stick utensils and the defendant has also been using the trade name with key portion of VISHAL since 1978. M/s. Monica Manufacturing Company has filed suit No. 692/92 against the plaintiff in this court seeking decree for injunction restraining the plaintiff from passing off the goods and business as of M/s. Monica Manufacturing Co. The suit was registered on 21st February, 1992, in which Shri N. K. Manchanda, Advocate, appearing on behalf of the plaintiff, accepted the notice and the court was pleased to grant two weeks time for filing reply to the application for injunction. As such neither the suit of the plaintiff nor the application for injunction is maintainable, the plaintiff being pirator of the trade mark VISHAL of M/s. Monica Manufacturing Co.

8. The plaintiff filed replication and rejoinder denying all the allegations levelled contrary to the allegations made in the plaint and took up a plea that the Sale Tax registration certificate relied upon by the defendant shows that the defendant has dealt in aluminum patti only and not pressure cookers. The defendant is guilty of concealing material particulars. The defendant has also not disclosed names of its partners and it is denied that the defendant ever used the word "VISHAL" or manufactured cookers prior to 1991. As regards suit No. 692/92, the plaintiff has stated that M/s. Monica Manufacturing Company never manufactured pressure cookers and/or any other goods under the mark VISHAL. Suit No. 692/92 is liable to be dismissed as the same is based upon false allegations and the said suit has been filed by concealing the fact of pendency of the instant suit No. 92/92. The plaintiff has reiterated the allegations made in the plaint.

9. During the pendency of this suit and the miscellaneous application, the plaintiff's application No. 487390 for registration of trade mark in Class 21 and defendant's opposition thereto has since been decided by the Deputy Registrar of Trade Marks. Defendant's opposition has been rejected and plaintiff's application has been allowed. It has been directed in the order passed on 31st August, 1994 that the plaintiff's application No. 487390 in class 21 shall proceed to registration. It is also not in dispute that against this order, a petition has been preferred by the defendant, namely, C. M. (M). No. 536/94, in which stay of the operation of the impugned order dated 31st August, 1994 is in operation.

10. There is no dispute and can be none with the legal proposition that as between the two parties, who proposed to use a particular trade mark the person who designs the mark will get preference over the other and in case of one party proposing to use the mark against the actual user, the later will take precedence. In between the two parties claiming actual user as against the prior user, the party, who is prior in point of time will have the advantage over the other. Even in regard to the prior registration of the trade mark, as against the prior user, the action of the later will prevail. In an action for passing off, in order to succeed in getting an interim injunction, the plaintiff has to establish user of the mark prior in point of time than the impugned user by the defendant. The registration of the mark or similar mark prior in point of time to user by the plaintiff is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trade mark registry does not prove its user by the person in whose names the mark is registered and it is irrelevant for the purposes of deciding the application for interim injunction unless evidence has been led or is available of user of their registered trade mark. A Division Bench of this court in Century Traders v. Roshan Lal Duggar & Co. and another , held that :

"The law is pretty well settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in time than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action for passing off and the mere presence of the make in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purpose of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trade marks."

11. Thus, in order to grant interim injunction in plaintiff's favour, it will be necessary to ascertain that whether the plaintiff has been successful in establishing prima facie user of the mark VISHAL prior in point of time than the impugned user by the defendant. In addition, the further factor, which will have to be considered would be the nature of the right, which is alleged to be infringed. In an action for infringement where the defendant's mark is identical with the plaintiff's mark, the court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test of infringement is the same as in an action for passing off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off action. The Supreme Court in Ruston & Hornby Ltd. v. Zamindara Engineering Co. , pointed out distinction between passing off action and action for infringement of trade mark It is in the above parameters that the application has to be dealt with

12. The plaintiff has claimed user since the year 1984 and it is not disputed that in the application for registration also the plaintiff claimed user of the mark "VISHAL" since the year 1984. The plaintiff alleged that presently he is not possessed of the proof as regards marketing of the pressure cookers with mark "VISHAL" prior to the year 1987, which will be produced, if available, during the course of the hearing of the suit but has given the marketing figures for the period from 1987 on wards. There is a dispute raised by the defendant as regards interposition of the word VISHAL in some of the vouchers filed by the plaintiff and for which the defendant has also moved an application under Section 340 of the Criminal Procedure Code for taking action against the plaintiff for fabricating evidence. But at this stage, it will not be appropriate, without further evidence, to give any findings about the said point raised by the defendant that whether the plaintiff is guilty of fabrication or not. It will be a matter, which will have to be decided during the course of the hearing of the suit.

13. Prima facie what can be noticed is that at least from the material placed on record, namely, the carbon copies of the bill books at least from 1988 onwards, the word VISHAL is prominently used on the bills evidencing the sale of pressure cookers under the brand name of VISHAL. Apparently, there is no effect to incorporate the word VISHAL subsequently on the copies of the bills, which have been produced on record and which are available at pages 8 onwards of the document filed by the plaintiff. Even in the copies of the bills, which have been produced for the period from 20th May, 1987, onwards, till 1988, the word VISHAL did appear, but the question that whether the mark VISHAL has or has not been incorporated later on, will be a question, which will have to be decided during the course of hearing of the suit. Prima facie on the face of the material, which has been produced on record, it appears that at least prior to filing of the application by the plaintiff in the year 1988, the plaintiff had started using the mark VISHAL on the pressure cookers (non-electric) manufactured by it.

14. As against this evidence, the defendant in support of its plea that it has been using the mark VISHAL KING or the mark VISHAL on manufacture and sale of pressure cookers, reliance has been placed upon certificates of registration also. But no certificate prior to the year 1992 supports the version of the defendant. The first certificate issued under the Delhi Sales Tax Rules, 1975 in the year 1978, with the validity 8 with effect from 25th August, 1978 is only for the manufacture of "aluminum sheets patti". The other certificate of registration valid with effect from 20th December, 1991, which was issued on 20th May, 1992 pertains to the manufacture of aluminum pressure cookers, candor etc. The earlier certificate do not incorporate therein the pressure cookers. Even copy of partnership deed produced on record by the defendant do suggest that the defendant had not been in the trade of manufacture of pressure cookers prior the year 1991. Thus the material placed on record prima facie supports the plaintiff's case the plaintiff is the prior user of the mark "VISHAL" with respect to pressure cookers (non-electric). The decision of this Court in Century Trader's case (supra) holds that priority in use is superior to priority in registration. The plaintiff had an intention to use the word VISHAL and at least prima facie material is on record that prior to use of the same mark "VISHAL" by the defendant, the plaintiff had been using the same mark VISHAL for the manufacture and sale and pressure cookers (non-electrical); for which application for registration of the mark had also been submitted by the plaintiff, which has since been allowed on rejection of defendant's opposition. Material has also been produced on record by the plaintiff in support of his version for use of the mark that the same was used in advertisements and such user of mark for advertisement would also constitute use in relation of goods since as per the bills, pressure (non-electrical) was also offered for sale by the plaintiff in the market.

15. The plaintiff has alleged that he is manufacturing pressure cookers and using the word "VISHAL". It is not necessary to show that the mark should have been used for considerable length of time. A single actual use with intent to continue such use co instanti confers a right to such mark as a trade mark, as held in Consolidated Foods Corporation v. Brandon & Co. Private Ltd. , which decision was duly approved by this court in Century Traders' Case (supra). In an action for passing off, it is also not necessary to prove fraud, that is to say, an intent to deceive. It is sufficient in all cases to prove that the practice complained of is calculated or is likely to deceive. As held in Century Traders' case (supra) proof of actual damage or fraud is unnecessary in a passing off action whether the relief asked for is injunction alone or injunction, accounts and damages. If there is a likelihood of the offending trade mark invading the proprietary right, a case for injunction is made out, for which proposition Century Traders' decision placed reliance upon another. Division Bench decision of this court in Prina Chemical Works and others v. Sukhdayal and others ((1974) 1 Delhi 545), In Century Traders' case (supra) also on the question to irreparable injury, it was observed that irreparable injury would be the likely confusion that may be cause, if respondents were allowed to use the mark, for which prima facie it was found that, mark was that of the plaintiff and since disposal of the suit was likely to take some time to be decided if the defendants were not restrained by means of an interim injunction, they would continue to market their goods with the offending mark. That ultimately might be held to be long user and the ultimate relief of permanent injunction may be refused on the plea of common or concurrent user. It was also held that at the moment no plea of common or concurrent user had been raised by the respondents but there was nothing to prevent them from doing so in future, if they were allowed to use the trade mark for the duration of the pendency of the suit. The likelihood of confusion being caused and likelihood of the plea of common or concurrent user being raised at a later stage would be irreparable injury to the appellant. The same reasoning would hold good in the instant case also, since at least undisputedly from 15th March, 1988 or immediately prior thereto it has been prima facie shown that the plaintiff has continuously been using the mark "VISHAL" as a trade mark on his product pressure cookers (non-electrical) and such has been as intent to continue it as of right. If injunction is not granted, valuable right of the plaintiff is likely to be interfered with.

16. On another question, which has been raised on behalf of the defendant that the application as well as suit of the plaintiff is not maintainable, since plaintiff is a pirator of the trade mark VISHAL of M/s. Monica Manufacturing Co., the same is of no consequence since the instant litigation is between the plaintiff and the defendant, in which M/s. Monica Manufacturing Co. is not a party. Moreover, it may be observed that in suit between the plaintiff and M/s. Monica Manufacturing Co. also there is an order passed on 13th September, 1993, copy of which has been placed on record on behalf of the defendant that M/s. Monica Manufacturing Co., for the duration of the said suit stated that plaintiff in the instant suit will be at liberty to use the trade mark VISHAL till the controversy amongst plaintiff and M/s. Monica Manufacturing Co. is finally decided. The above objection raised on behalf of the defendant otherwise has to be negatived that for the purpose of the instant application, on the ratio of the decision of this court in Coolways India v. Princo Air Conditioning and Refrigerations. (1993 (1) Arb. LR 401), In that case it was held that it will be useless and without merit to contend that the petitioner himself is infringing the trade mark of another person. It is a matter between the petitioner and the other party in whose favour that trade mark is registered. The respondent cannot be allowed to make use of the reputation and goodwill of the petitioner by adopting his trade mark or a deceptively similar trade mark for his product. On the same principle, in the instant case also, the defendant cannot take advantage of the pendency of litigation between the plaintiff and M/s. Monica Manufacturing Co.

17. In this case it has been prima facie found that the plaintiff is prior in use in time. It gives no right to the defendant and the defendant cannot be permitted to make use of the reputation and goodwill, which the plaintiff has earned by establishing his trade mark or the mark which is deceptively similar with the plaintiff trade mark. Such a view, as was taken in Coolways India's case (supra) was also the view taken in an earlier, decision of this court in Sharp LP.G. Pvt. Ltd. v. Salko Engineers. (1988 (1) Arb. LR 72).

18. Irrespective of the fact that order, which has been passed in plaintiff's favour of registration of its mark VISHAL, operation of which stands suspended in a petition preferred on behalf of the defendant, having gone through the pleadings on record and the documents including the sample of the two cookers and comparing the respective marks, which are used by the plaintiff and the defendant, I am of the considered view that the plaintiff is entitled to temporary injunction in the instant case for duration of the suit, which if not granted, is likely to cause such loss and injury to the plaintiff, which it will not be possible to compensate by awarding damages. The mark, which is being used by the defendant on the test laid down in Ruston & Hornby Ltd.'s case (supra) is likely to lead to confusion or deception from similarity of the marks VISHAL in the two cases.

19. Consequently, injunction as prayed for in the application is granted in plaintiff's favour as against the defendant for the pendency of the suit

20. The application in the above terms is allowed. Be it stated that observations made while deciding the application will not prejudice the case of the parties on its merits.

S. No. 92/92

21. List for directions on 30th September, 1996.