Metropol India (P) Limited vs Praveen Industries India
1996 Latest Caselaw 4 Del

JUDGMENT

S.K. Mahajan, J.

(1) The plaintiff has filed this suit complaining the violation of its trade mark "CLEANZO" by the defendant and also complaining the infringement of its copyright and passing off its goods by the defendant as those of the plaintiff.

(2) The case of the plaintiff in short is that the plaintiff is a leading manufacturer of the cleansing agents, detergents, etc., and is the proprietor of the trade mark "CLEANZO" which has been registered in Class 3 under No. 335807 by the Registrar of Trade Marks under the Trade & Merchandise Marks Act, 1958 and this trade mark has now been renewed up to 20th April, 1999. It is stated that the plaintiff and its predecessor in interest were using the trade mark "CLEANZO" since 1947. The plaintiff has also claimed to be the owner of copyright bearing registration No. A-11008 / 74 under the Copyright Act in respect of the a rt work depicted on the label titled "CLEANZO". The said label has orange yellow colour, has the words Cleanzo written in a growing then declining oblong elongated style with the words "Registered Trade Mark" appearing below in a semi-circular shape in bold capital letters preceded by a device of a star. Below this is a pictorial device contained in a pentagon, which has further been divided into a hexagon containing four pictures. Depicting clockwise a man cleaning a toilet, a set of three urinals, a bathroom showing a bath-tub and wash-basin and a lady washing utensils in a kitchen respectively. Below this hexagon in white appear the words "Metropol India Private Ltd.," in a red base followed by the logo of the plaintiff comprising an Oval containing two quarter circular lines in parallel in red colour, containing within them the words "METROPOL" written in red on a white base. Then, to the right appear the following words in a vertical symmetry :- "USESAFELY To Clean Fine tile work, rubber and linoeum floor covering, mosaic floors, door and window panes, toilet fittings and oil painted articles. Directions One tea cup full of Cleanzo mixed in half or medium size bucket of water is adequate for regular cleaning of toilets floorings etc. Dilution may be varied according to extent of dirt/deposits to be cleaned. Shake Well Before Use Approved by Govt. text Laboratories., Railways, Health Dept., Canteen Stores Deptts. Batch NO. 5 Date of Mfr. Litres Maximum Delhi Price Rs. 48.00 Maximum outstation Price Rs. 60.00 Inclusive of all taxes."

Below the above appear identical matter in Hina with the edition of the following words. "Manufacturer : Metropol India (P) Ltd. 262, Okhla Industrial Estate, Phase Iii, New DELHI."

(3) The copyright was registered on 15th April, 1974 in the name of Metropol Corporation (India) and all rights held by partners of the said Metropol Corporation (India) in the said copyright were assigned in the name of the plaintiff on 10th July, 1991, as is evident from the certificate of Registrar of Copyrights. It is alleged that on account of the superiority of the products, long, extensive and continuous user, the plaintiff's products have become very popular with the trade and members of the public who associate the said cleanser with the plaintiff company alone and none else. The purchasers and the intending purchasers include hospitals. Government Offices, housewives literate and illiterate people unable to read or write English or Hindi who also recognise the plaintiff's products by their labels and distinctive colours.

(4) The sale of the plaintiff during the last ten years has been filed on record. In the year 1989-90, the sale was more than Rs. 33.00 lakhs and in the year 1991, it was more than Rs. 42.00 lakhs. The plaintiff has also shown to have spent lakhs of rupees every year on the publicity of its material.

(5) It is alleged that in the month of March, 1990, the plaintiff noticed that a cleanser was sought to be sold in the market by the defendant under the mark "CLEANFO" and the said product was being sold in tin- of identical size, background, colour, scheme, lay out and get up, same pictorial devices though in a changed arrangement and order and even directions for use were copied verbatim.

(6) On a complaint having been made by the plain iff, the premises of the defendant is stated to have been raided along with the premises of its two dealers, and offending goods were sealed and the defendant along with the dealers were arrested. The matter is stated to be pending in Court.

(7) It is stated that the defendant has again started selling the same goods in the very same tin with the same wrapper in the market and has also filed an application for registration of the word mark "CLEANFO" in class . The defendant is also stated to have filed an application under Sections 32, 42 & 56 seeking rectification of the Register of Trade Mark in relation to the trademark CLEANZO". It is stated that the adoption by the defendant of the offending trade mark and the offending colour scheme, label, get up, etc., is to trade upon the plaintiff's name, reputation, goodwill and long standing and amounts to passing off its goods by the defendant as that of the plaintiff. The plaintiff has, therefore filed this suit praying for a permanent injunction against the defendant from using the trade mark "CLEANZO" and passing off of its goods as that of the plaintiff and for certain other reliefs.

(8) The stand of the defendant is that the defendant is a prior user and first adopter of the trade mark KLEENJO/CLEANJO in respect of Naptha deodorant & cleaner and it was alleged to have been adopted in 1947 with the pictorial device by Late Shri Badri Nath Sabharwal, father of the defendant. It is stated that since 1947, the said mark is being continuously used by defendant uninterruptedly and this trade mark was never used by the plaintiff since 1947 as, according to the defendant, the plaintiff was not even born in the market in 1947. It is stated that on account of misrepresentation and fraud, the plaintiff got the trade mark registered in its name and the defendant has already filed a petition for removal of the said entry from the Register of Trade Marks in this Court being C.O. No. 11/90. It is stated that the plaintiff has no title to sue the defendant as the goods of the plaintiff fall in class 3 of the Iv Schedule of the Trade & Merchandise Marks Rules, 1959, whereas the defendant's goods fall in class 5 of the Iv Schedule of the same rules.

(9) It is also stated that on account of the pendency of C.O. 11/ 90, the suit is liable to be stayed under the provisions of Section 111 of the Trade & Merchandise Marks Act, 1958. The total sale for the period 11th December, 1991 to 19th January, 1992 has been filed showing a sale of Rs-22,057.52 paise and for the period 21st January, 1992 to 24th February, 1992 Rs-18,761.27 paise.

(10) The first question for determination is as to what is the effect of filing of a petition bearing C.O.No. 11/90 by the defendant for removal of the entry of the plaintiff from the Register of Trade Marks. Under Section 111 of the Trade & Merchandise Marks Act, where in any suit for the infringement of a trade mark the defendant pleads that the registration of the plaintiff's trade mark was invalid, the Court trying the suit shall, if any proceedings for rectification of the Register in relation to the plaintiff's trade mark are pending before the Registrar or the High Court, stay the suit, pending the final disposal of such proceedings. There is, therefore, no doubt about the proposition that in of the pendency of C.O.11 of 1990 filed by the defendant for rectification of the Register of Trade Marks in relation to the plaintiff's trade mark pending in this Court, this suit is liable to be stayed. However, is this Court precluded from passing any order on the injunction application of the plaintiff in the present case is the question which remains to be considered.

(11) The contention of the defendant is that once this Court comes to a finding that the suit is liable to be stayed under Section 111 of the Trade & Merchandise Marks Act, it should stay its hands from passing any interim order in the suit and, consequently, this Court will not have any jurisdiction to pass any order on an interim application of the plaintiff for the grant of interim relief of injunction.

(12) To my mind, the argument of learned Counsel for the defendant is fallacious on the face of it. Answer to his argument is provided by Sub-section 5 of Section 111 itself. In terms of Section 111(5), the stay of a suit for the infringement of a trade mark under this Section shall not preclude the Court from making any interlocutory order, including any order granting, an injunction, directing accounts to be kept, appointing a receiver or attaching any property during the period of stay of the suit. The contention of the learned Counsel for the defendant is, therefore, liable to be rejected at the outset and I am of the opinion that this Court continues to have jurisdiction to pass an interim interlocutory order on the application of the plaintiff.

(13) The plaintiff has placed on record the certificate of registration indicating that the plaintiff is the registered holder of the trade marks as well as the copyright and the registration has now been renewed up to 20th April, 1999. Under Section 31 of the Trade & Merchandise Act, registration of a trade mark is prima fade evidence of the validity of the trade mark. Though it ha: been stated in the plaint that the plaintiff is using this trade mark since 1947, however, the plaintiff has placed on record advertisements to show that since 1958 the plaintiff is advertising its products under the trade mark "CLEANZO" as a cleaning agent with the pictorial device, for which it is claiming a copyright. Besides the advertisements of 1958, the plaintiff has also placed on record advertisements of the year 1989 and 1990. Invoices have also been placed on record showing that since about 1953-54, the plaintiff is selling its products under the trade mark "CIEANZO".

(14) The entire case of the defendant is that the plaintiff is not entitled for an injunction as the defendant is the prior user of the trade mark and had adopted the same much earlier than the plaintiff. The defendant has however, not placed on record any advertisement which may show that it was using this trade mark "CLEANJO "prior to its user by the plaintiff. The first advertisement which has been placed on record by the defendant is for the years 199( and 1991. Even in these advertisements, somewhere the defendant has described i ts products "CLEANJO" and somewhere as "CLEENJOD". There is one advertisement which has been published in the 1985, Nehru Place Directory where a tin with the name "CLEANJOD" has been shown. In 1990-91 in souvenir of the Delhi Cricket Association, there appears an advertisement with trade mark "CLEANJOD" with almost similar pictorial device as appearing on the tins of the plaintiff. Some of the bills have been filed by defendant starting from the period 17th September, 1958. Copies of some of the bills of the year 1955-56 have also been placed on record with a view to show that during that period the plaintiff had been selling its products under the name of Praveen Clean jod. The said bills are in Urdu. An application is stated to have been submitted by the defendant on 11th April, 1990 for registration of its trade mark "CLEANJO" which was published in the Trade Marks Journal on 16th November, 1993. The contention of the defendant, therefore, is that as it has been using the trade mark "CLEANJO" since about 1955-56, the suit of the plaintiff is not only belated but the plaintiff has also acquiesced in the user of said trade mark by the defendant.

(15) The plaintiff is admittedly the registered user of the- trade mark "CLEANZO" and the registration is valid up to 20th April, 1999. Plaintiff is also the owner of the copyright bearing No. A-l 1008/74 under the Copyright Act in respect of the word depicted on the label, titled "CLEANZO". It is also not in dispute that the label of the defendant is exactly similar to the label of the plaintiff and defendant is also using the name "CLEANZO" for its product. That being the admitted position, the question which arises for consideration is whether plaintiff is entitled to any injunction against the defendant restraining them from using the trade mark as well as the copyright and is there any apprehension of the defendant passing off their goods as that of the plaintiff.

(16) Under the provisions of Section 28 of the Trade & Merchandise Marks Act, a registered trade mark proprietor has the preferential right over others for the use of the trade mark.

(17) Toappreciatethecontentionoftheparties, will be relevant to reproduce some of the provisions of Trade & Merchandise Marks Vet. "28.Rights conferred by registration:-(1) Subject o the other provisions of this Act, the registration of a trade mark in Part-A or'.part-B of the register shall, if valid, give to the registered proprietor of the trademark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. (2) The exclusive right to the use of a trade mark under Sub-section (1) shall be subject to any conditions and limitations in, which the registration is subject. (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other , the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquire by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor. 29. infringement of trade marks:-(1)A registered made mark is infringed by a person who, not being the registered propriety, of the trade mark or a registered user thereof using by way of permitted use, uses in the course of a trade mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (2) In an action for infringement of a trade mark registered in Part B of the register an injunction or other relief shall not be granted to the plaintiff if the defendant establishes to the satisfaction of the Court that the use of the mark of which the plaintiff companies is not likely to dedctive or cause confusion or to be taken as indicating a connection in the course or trade between the goods in respect of which the trade mark is registered and some person having the right, either as registered proprietor or as registered user, to use the trade mark. Acts not constituting infringement.-(1) not withstanding anything contained in this Act, the following acts do not constitute an infringement of the right to the use of a registered trade mark - (a) where a trade mark is registered subject to any conditions or limitations, the use of the trade mark in any manner in relation to goods to be sold or otherwise traded in, in any place, or in relation to goods to be exported to any market, or in any other circumstances, to which, having regard to those conditions or limitations, the registration does not extend; (b) the use by a person of a trade mark in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk of which they form part, the registered proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark; (c) the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the trade mark has been used without infringement of the right given by registration under this Act or might for the time being be so used, if the use of the trade mark is reasonably necessary in order to indicate that the goods are so adapted, and neither the purpose nor the effect of the use of trade mark is to indicate, otherwise than in accordance with the fact, A connection in the course of trade between any person and the goods; (d) the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act. (2) Where the goods bearing a registered trade mark are lawfully acquired by a person, the sale of or other dealings in those goods by that person or by a person claiming under or through him is not an infringement of the trade mark by reason only of the trade mark having been assigned by the registered proprietor to some other person after the acquisition of those goods. Registration to be prime fade evidence of nalidity.-(1) In all legal proceedings relating to a trade mark registered under this Act(including applications under Section 56), the original registration of the trade mark and of all subsequent assignments and transmission- of the trade mark shall be prima-facic evidence of the validity thereof. (2) In all legal proceedings as aforesaid a trade mark registered in Part A of the register shall not be held to be invalid on the ground that it was not a registrable trade mark under Section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or ins predecessor in the title as to have become distinctive at the date of registration."

(18) Under Section 31 ot the Act original registration of the trade mark shall prima facie evidence of its validity Under Section 28 of the Act, subject to other "visions of the Act, registration of a trade mark in Part "A" or Part "B" gives to the registered proprietor the exclusive right to use the trade mark in relation to the goods in respect of which the mark is registered and obtain a relief in respect of infringement of the trade mark in the manner provided by the Act. Under Section 29, in case a registered trade mark is infringed by a person who is not its registered proprietor or registered user thereof and uses in the course of this trade a mark which is identical or deceptively similar to the trade mark in relation to any goods in respect of which a trade mark is registered, the said person can be infringed from using the said mark. The only exception to this is that in case the defendant establishes to the satisfaction of the Court, that use of the mark, of which the plaintiff complains, is not likely to deceive or cause confusion, order of injunction may not be granted against him. With this settled position of law . I have to examine the defense of the defendant.

(19) The defendant in support of his contention that he is the prior user of trade mark, has drawn my attention to the copies of the bills which are of the year 1958. A perusal of the said bills shows that they were for a product which was known as "Praveeil Cleanjo". There is no advertisement or any other document to show the label of the product of the defendant, except the one which has been published in the Trade Mark Journal of 16th November, 1993 and in the advertisement appearing in souvenir of the Delhi Cricket Association, for the year 1990-91 as well as in the Nehru Place Directory of the year 1985. In the souvenir of the Delhi Cricket Association of the Deaf, advertisement is for "CLEANZOI)". I have been informed that both these products, namely, which have been advertised in the Delhi Cricket Association and in the Nehru Place Directory is the same product. There is also an advertisement appearing in "Sandhya Times" of 26th Manh, 1990 which is also for "CLEANZOD". In an advertisement appearing in the Navshakti Vidhya Mandir Senior Secondary School, Pahar Ganj, there is an advertisement of a product "super cleenjo". I, therefore, find that defendant had been giving the advertisement either for "CLEANFOD" or for "CLEANJO" or for "super cleanjo" and in the bills he has mentioned his product as "Praveen Cleanjo". During the course of arguments, it was stated by Mr. Ghiraya that his products are being marketed under the mark "Praveen Cleanjo" and he has drawn my attention to a label where the product has been named as "Praveen Cleanjo". He has also referred to the judgments reported as Mis. Kala Niketan, Karol Bagh v. Mis. Kala Niketan, South Extension-1, Air 1983 Delhi 387; National Organic Chemical Industries v. B.L. Industries, 1988 Ptc 85; Mis. Hindustan Pencils Limited v. Aptudet Industries, 1991 Ptc 204; Consolidated Foods Corporation v. Brandon and Company Private Limited, ; Century Traders v. Roshan Lal Duggar & Company and Ors., ; Sham Lal v. Interads Advertising (P) Limited and Ors., ; Shri Swaran Singh Trading as Appliances Emporium . M/s. Usha Industries (India) New Delhi and Another, , in support of his contention that he being the prior user of the product, there cannot be any older of restraint against the him. I am not referring to any of these judgments in my order as there is no dispute about the imposition advanced by the defendant

(20) From some of the records which have been filed by the defendant it appears that the defendant was using the mark "Praveeil Cleanjo in or about 1955 and I have no reason, at this stage, to disbelieve this version of the defendant. However, inspite of the fact that the defendant is using the said mark Praveen Cleanjo", can he use the label which is exactly similar to the label of the plaintiff. Can he also be allowed to write the words "Praveen Cleanjo" in a manner which is deceptively similar to the label of the plaintiff. The trade mark of the plaintiff is in oval shape and defendant in his label has written Praveen in bold letters but the word "cleanjo " is again in oval shape which is deceptively similar to the trade mark of the plaintiff.

(21) A perusal of the labels of both the products, one belonging to the plaintiff and the other belonging to the defendant, clearly shows that there is not the slightest difference except that photographs have been changed upside down in the hexagon which appears on the label. Even the word "cleanjo" has been written in oval shape on both the labels. It cannot be a coincidence that the photographs on the labels and the manner in which they have been shown are the same.A bare perusal shows that one label is a copy of the other. The question is as to whe has copied. Similarly, it cannot be a coincidence that the word "cleanzo" which has been adopted by one party has been coined by the other party as well. The word "CLEANZO''OT "CLEANJO" is not available in the dictionery. It can, therefore be safely said that one out of the two parties has copied this word from another.

(22) In the Trade Mark Journal of 1st January, 1949, .here is an advertisement whereby an application, before acceptance under Section 15(1) of the Trade & Merchandise Marks Act, had been accepted by the Registrar of Trade Marks. The plaintiff had given the said application for registration of this mark "cleanzo" for its products. The documents on record show the continuance of registration of the said trade mark in the name of the plaintiff from 1978 onwards. I have, therefore, no hesitation in my mind to hold that, prima fade, it is the plaintiff who had used this mark "CLEANZO" for its product for the first tune and the mark of the defendant is an imitation of the same.

(23) On the basis of the material on record, I find that defendant had been using this label and the mark openly since 1990. The present petition has been filed in 1991. Can it be said that there is an unexplained delay on the part of the plaintiff in taking proceedings against the defendant for infringement of the trademark and can the claim of the defendant be defeated on account of any alleged delay or acquiescence? In 1990, the plaintiff had filed a complaint with the police alleging the infringement of their trade mark by the defendant. Action was taken by the police on the filing of the said complaint and some of the products of the defendants were seized. The present suit has, therefore, been filed in December, 1991 In my opinion, the delay in filing of the suit is not such which would disentitle the plaintiff from claiming injunction against the defendant. There is no case of any acquiescence in the present case. There is no inordinate delay in the filing of the suit However, even assuming there was some delay, in my opinion, that cannot be a ground to refuse injunction.

(24) As, according to me, not only the name of the product but even the label is almost the same in respect of both the products and there is sufficient evidence on record to, prima fade, hold that the plaintiff was using , this label prior to the same being used by the defendant and the plaintiff is also the registered owner of the trade mark "CLEANJO" since about 1949-50, in my opinion, it was not just a coincidence that the defendant had named its product "CLEANJO and had depicted similar photographs in a similar hexagon on the label of its protect. It was for the defendant to prove as to how and in what manner he had shown the said photographs on the label of the product and as to how the word "CLEAN)0" has been coined. The word "CLEANZ0" is not available in the dictionary and, prima facie, the plaintiff is the prior user of the mark, and consequently, it was for the defendant to show to the Court as to how he came to name its product by the same name which has been coined by the plaintiff. The defendant has miserably failed to discharge the onus which was heavily upon him. Defendant has not been able prima facie, to prove that he has been using this mark prior to the registration of the trade mark of the plaintiff, and on the contrary, there is sufficient evidence on record to hold, prima fade, that the defendant has started using the same much later than the user of the plaintiff and much later than its registration in the name of the plaintiff.

(25) Prima fade, there is a great similarity in the twe cartons/labels. Not only the colour scheme but also the photographs are the same. The word "CLEANZO" has been written in the same oval shape and on viewing the impugned label vis-a-vis the label of the plaintiff, in my opinion, there is bound to be a confusion in the mind of the purchaser who wants to purchase the detergent/cleaning agent by the name of "CLEANZO ".The Supreme Court in Parle Products Private Limited v. J.P. & Company, has laid down the test to determine as to when a trade mark is deceptively similar to another. It was observed - ltis,therefore,clearthatinordertocometotheconilusionwhetheronemark is deceptively similar to another the broad and essential features of the two are to be considered. So, they should not be placed side by side to find out if there are any differences in the designee and if so, whether they are of such character as to prevent one design from being mistaken from the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other, if offered to him."

(26) Applying this test to the facts and circumstances of the present case, I am of the opinion that the mark and label of the defendant bear such a similarity to the registered mark and label of the plaintiff that it is likely to mislead the consumer to accept one for the other, if offered to him.

(27) The certificate of registration of the trade mark prima fade, evidence of the validity thereof under Section 31 of the Act. Under Section 28 of the Act, the registration of the trade mark not only gives the owner the exclusive right to use the sail-if in relation to the goods in respect of which it is registered but it also gives powers of passing of an order of injunction restraining the user of the said trade mark by any other person.

(28) In view of the observations made above, as I have come to prima fade finding that the label being used by the defendant is identical to the label of the plaintiff and the trade mark "CLEANJO''is also being Used by the defendant in the same style and manner as the plaintiff is using its trade mark "CLEANZO", I restrain the defendant from using the said trade mark and the label. I, accordingly, allow this application and restrain the defendant from manufacturing, selling and offering for sale or dealing with and selling their product under the trade mark "CLEANJO" or any other mark or marks deceptively similar to the plaintiffs registered trade mark "CLEANZO" bearing No. 335807 and also from using the labels similar to that of the plaintiff's labels on the cartels of the product.

(29) As the defendant is manufacturing and selling their product under the name and style of "Praveen CLEANJO" and prima facie appears to be its user since about 1955, they will be at liberty to manufacture and sell them under the name, style 4 and trade mark "Praveen Cleanjo", however, they will not write the word " Clean fO " in isolation or in conjunction with "Praveen " in an oval shape or in any other shape which may be deceptively similar to the manner in which plaintiff is writing its trade mark.

(30) With these observations, the application is disposed of. Any observation made in this order will not affect the merits of the case.