Super Refrigeration Pvt. Ltd. vs Super Sales Corporation
1996 Latest Caselaw 925 Del

JUDGMENT

S.K. Mahajan, J.

(1) The partnership firm under the name and style of M/s.Kumar Metal Industries of which Sh.Satish Maini was one of the partners was engaged in the manufacture and sales of refrigeration goods and adopted a trade mark "Super" for the said goods. The plaintiff company was incorporated on 14th February, 1986 and is alleged to have acquired a running business of the aforesaid firm. It is therefore, stated that the plaintiff No.1 and its predecessors have been using trade mark "Super" for its goods continuously and extensively and without any hindrance from any quarter since 1965. It is also alleged that said trade mark "Super" had been widely advertised by the plaintiff and the word "Super" also forms key portion of the plaintiffs trade name. This trade mark "Super" is alleged to have acquired enviable reputation in the minds of the purchasing public and the trade because of its alleged excellent quality and high standard during the past more than 28 years and has come to be identified exclusively and recognised by the purchasers with the goods and business of the plaintiffs alone and none else. Plaintiff No.2 is a partnership firm of which Sh.Satish Maini is one of the partners and the said firm is a dealer of Plaintiff No.1. Sh. Satish Maini is also the Managing Director of the Plaintiff No.1 company. It is alleged that the defendant has recently adopted trade mark "Super" with Maini below it in relation to its business. The adoption and use of trade mark "Super" is alleged to be malafide dishonest and tainted solely with a view to trade upon the well established reputation of the plaintiffs trade mark and business. Defendant is alleged to be aware of the wide reputation of the plaintiffs as Sh. Devender Kumar Maini, partner of the defendant firm is the brother of Sh. Satish Maini, Managing Director of the plaintiff No.1 firm. It is alleged that the use of the word "Super" in relation to its business of manufacture, sale or supply as part of its trade name is passing off and/or enabling others to pass of their goods as those of the plaintiffs. It is also alleged that the use of said mark by the defendant is bound to cause confusion and deception in the minds of the purchasing public and the trade.

(2) The plaintiffs have, therefore, filed this suit for an injunction restraining the defendants from manufacturing, selling, offering for sale and/or supplying their goods under the trade mark "Super" and/or trade name wherein the word "Super" forms a part there of. Along with the suit an application for injunction was also filed by the plaintiffs for restraining the defendants from manufacturing, selling and/or offering for sale their machinery under the trade mark "Super". By this order I am disposing of this application of the plaintiffs for the grant of interim injunction.

(3) The case that the defendants have set up in the written statements is that the defendants had started the business with the complete knowledge and blessings of Sh. Satish Maini on 1st January, 1993 when the parties were allegedly having cordial relations. It is alleged that legal notice was issued by the plaintiffs on 9th April, 1993 in order to pressurise Mr.D.K.Maini to sign certain papers for settlement of disputes between them and it was only on the refusal of Sh.D.K.Maini to sign the said documents that the plaintiffs had issued notice and filed this suit. Further contentions of the defendants are that in 1968, Sh.D.K.Maini had started a firm under the name and style of M/s.D.K.Foundary Works at Plot no.54, Opposite Gali no.6, New Rohtak Road, New Delhi for the purpose of manufacturing of Ammonia Compressor valves and machinery used in ice factory and cold storages. The said firm was allegedly manufacturing their goods under the trade mark "Super" and various bills of the said D.K.Foundary works were prepared by Mr.S.K.Maini in his own hand-writing as well as by one Mr.Diwakar Ohri who is also one of the Directors of the plaintiff company. It is alleged that M/s.New India Refrigeration Stores another firm of Satish Maini used to purchase goods from D.K.Foundary Works under the trade mark "Super". Another firm namely United Metal Industries in which the wife of Sh.S.K.Maini was one of the partners was also allegedly purchasing goods from D.K. Foundary works under the trade mark "Super". Still another firm by the name of M/s.Anil Industries was started with Sh.S.K.Maini, Sh.D.K.Maini, Sh.Vijay Kumar and Smt.Sunita Maini as partners and the said firm was also manufacturing and selling goods under the trade mark "Super Amoking". The said firm has however, since been closed. After the close of the said firm the trade mark "Super Amoking" was allegedly being used by M/s.Seabird Industries of which Sh.Vijay Maini and Joginder Pal Maini are partners. It is also alleged that the company by the name of Philco Metal Industries Private Limited, of which also the family members are the Directors, is manufacturing the compressors under the trade mark "Super". Names of certain other family concerns have also been given in the written statement which are also manufacturing refrigeration parts under the trade mark "Super" and are using the word "Super" as part of their trade as well. That sometimes in December, 1992 the three brothers had decided to settle the family properties and open a new firm in the name of Mr.D.K.Maini and his family and it was in these circumstances that the defendant firm was started with Mr.D.K.Maini as one of its partners. The members of family including Sh.S.K.Maini attended the Muhurat on 1st January, 1993 wherein it is alleged to have been decided that this firm will use the word "Maini" with the word "Super" as a trade mark in such a manner that the word "Maini" would be bigger than word "Super" so that the same is different from the trade mark "Super" hereto used by all the family concerns. Certain differences were alleged to have arisen thereafter between the brothers as the other two brothers namely Mr.J.P.Maini and Sh.Satish Kumar Maini did not have the intention to give the legitimate share to Sh.D.K.Maini and the present suit is alleged to be a device to pressurise and harass Mr.D.K.Maini.

(4) On the merits of the case, the defendant's averments are that the word "Super/Superfine/Supreme" as trade mark and/or as part of the trading style is being used by a large number of firms dealing in refrigeration parts. The names of some of those firms have been given in paragraph 9 of the written statement. Even otherwise according to the Defendant the word "Super" cannot be adopted as a trade mark by the plaintiffs in as much as the same represents the quality of the business of the goods of a Business House. It is denied by the defendant that the plaintiffs have been using exclusively the trade mark "Super" for their products since 1965 or since any other date as alleged in the plaint.

(5) In the replication to the written statements the plaintiffs have not denied the use of the word "Super" by various companies for manufacturing of their products. However, it is stated that all the companies which are using the word "Super" for their products are associated companies of the plaintiffs and that the said companies are using the trade mark "Super" for manufacturing their products with the consent of the plaintiffs and under their quality control and supervision. All those companies are allegedly known as Super Group of Industries and they are alleged to be the only companies which are entitled to use trade mark "Super" for their products in relation to the refrigeration industry.

(6) It is an admitted fact that the word 'Super' is not a registered trade mark of the plaintiffs, though it has been alleged that an application for registration has already been made with the Registrar of Trade Marks. However, the defendants have drawn my attention to certain documents to show that the Plaintiff has already started using the word "Super" as a registered trade mark as it is writing a letter 'R' in circle above the word 'Super" and this is being done with a view to give a wrong impression to the general public that the word "Super" has been registered in the name of Plaintiff. The contention of the plaintiff is that it was only for a short duration that they had been using the word "Super" with 'R' in circle above the word under the impression that by filing an application for registration, the mark was registered in their name and they had now stopped using 'R' on coming to know their mistake. It is also stated that none of the firms using the trade mark "Super" either with their names or for manufacturing their products were engaged in selling and manufacture Compressors/Ammonia valves. However, it is not denied that the said firms are engaged in the sale and manufacture of refrigeration products.

(7) An action for infringement of trade mark is a statutory remedy conferred on the registered proprietor of a registered trade mark for the enforcement of his right to use the trade mark in relation to the goods for which the mark has been registered. An action for passing off, however, is an action for deceit for colourable imitation of a mark adopted by a person in relation to his goods which has acquired distinctive reputation in the market as referring to the goods belonging to or produced by that person only. In such a case evidence of actual deceit is not necessary. In order to succeed in an action for passing off, the plaintiff has to establish user of his mark prior in point of time than impugned user by the defendant. As held in T.Oertti A.G. Vs. E.J.Bowman (London) Ltd., 1959 Rpc 1, in an action for injunction on the ground of passing off, the plaintiff has to prove that the disputed mark has become by user distinctive of his goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark will be understood by the trade and the public as meaning that the goods are his goods. The gist of the action is that the plaintiff, by using and making known the mark or get up in relation to his goods and thus causing it to be associated or identified with those goods, has acquired a quasi proprietary right to the exclusive use of the mark or get up in relation to goods of that kind, which right is invaded by any person who, by using the same or some deceptively similar mark, or get up in relation to goods not of the plaintiff's manufacture, induces customers to buy from him goods not of the plaintiffs manufacture as goods of the plaintiff's manufacture, thereby diverting to himself orders intended for and rightfully belonging to the plaintiff. Proof of actual damage or fraud is unnecessary in passing off action. If there is a likelihood of the offending trade mark invading the proprietary right, a case for injunction is made out. Under Section 27 of the Trade and Merchandise Marks Act, a person is not entitled to institute any proceedings to prevent an infringement of an unregistered trade mark. However, the same shall be deemed not to affect the rights of action against any person in passing off goods as the goods of another person or remedies in respect thereof. Section 106 of the Act provides for reliefs in suits in infringement or for passing off. Under Section 106 of the Act, the relief which a Court may grant in a suit for infringement or for passing off their goods referred to in Section 105 includes injunction.

(8) It is not disputed that the defendant had been working under the name and style of M/s.D.K.Foundary works since 1968. The plaintiffs have also not denied that Sh.S.K.Maini and Mr.Ohri the Directors of the Plaintiff company, might have issued some bills/invoices for the said D.K.Foundary works with a view to help the plaintiff. It is also not in dispute that the plaintiff companies as well as defendant companies belong to the same family and the disputes had arisen only in late 1992 when they separated the companies. Some of the firms with which Mr.S.K.Maini and his wife were associated were admittedly purchasing goods from D.K.Foundary works of which Mr.D.K.Maini was the proprietor and the said firm had been supplying these goods under the trade mark "Super" to the firms with which the plaintiffs were associated. The contention of the plaintiff, however, is that defendant had been manufacturing goods for the associated firms of the plaintiff and had, therefore, used the trade mark "Super" on the said goods which will not mean that the defendant was manufacturing the goods under the trade mark "Super" in his own right. However, from the record I find that M/s.D.K.Foundary works had been supplying the goods to other parties as well under the trade mark "Super". In November, 1981 Ammonia Compressors were supplied to M/s.Bhatia Ice Factory. However, the invoices dated 4.11.81, 18.11.81 and 23.11.81 do not indicate that the goods were supplied under the trade mark "Super". Mr. Amrik Singh Bhatia the partner of the said Ice factory had given certificates on 31st May, 1993 certifying that the goods supplied by M/s.D.K.Foundary works were supplied under trade mark "Super". I am, however, at this stage, not inclined to place any reliance on the above said certificates as the same had been given 12 years after the supply of the goods.

(9) On 20th April, 1982 the goods were exported to M/s.Maulana Bashir Cold Storage, Rangpur, Bangladesh by the defendant. The invoice of the said goods show that it was Ammonia Compressors "SUPER BRAND" which had been supplied to the said party.

(10) Though it is case of the plaintiffs that they have been using the trade mark "Super" since about 1966 however, I find that it was the Maini family including the defendant and its different companies and firms which were using the trade mark "Super" for its refrigeration components. My attention has also been drawn to the application which was filed with the Registrar of Trade Marks under section 18 of the Trade & Merchandise Marks Act for registration of trade mark "Super". A perusal of the said application shows that the plaintiffs while making the application had mentioned that they propose to use the trade mark in respect of their goods. It shows that till that date it was not their exclusive mark. Be that as it may prima facie, I am of the opinion that as it was the Maini family and its firms which were using the trade mark "Super" for their products and since the defendants is also a part of same family and there are documents on record which indicate that he had also been using this mark in or about 1982. As held in Consolidated Foods Corporation Vs.Brandon and Company Private Limited, , which was cited with approval by a Division Bench of this Court in Century Traders Vs. Roshan Lal Duggar and Company, to claim right in a mark, it is not necessary that the mark should have been used for a considerable length of time. A single actual use with intent to continue such use can also confer a right to such mark in the person who has used it with intent to continue the same on its products. Actual use of the mark under such circumstances as showing an intention to adopt and use it is the test rather than the extent or duration of the use. I, therefore, find that as the defendant has also been using the mark "Super" since about 1982, prima facie, he along with other family concerns has also obtained a right to continue to use the same.

(11) I, therefore, feel that at this stage it will not be proper to restrain the defendant from using the mark "Super Maini" for their product. Any such order against the defendant at this stage, in my opinion, will not only be too harsh but it will also not serve the ends of justice. Moreover, with the writing of the word "MAINI" in bold letters in a size larger than the size in which word "SUPER" is written, I feel there cannot be any confusion in the mind of the consumer, who is used to buying such type of goods as are being manufactured by the parties, in distinguishing whether the good being purchased by him are manufactured by the plaintiff or not. The principle on which I have to decide this application depends on the answer to the question whether the defendant is passing off his goods as being that of the plaintiffs. Since I have held that the defendant is prima facie manufacturing and selling his products under the trade mark "Super" since about 1982, in my opinion, the answer to the above question has to be in the negative. Number of judgments have been cited at the bar by counsel for both the parties, however, I am not referring to any of these judgments for the reason that prima facie I am satisfied that the defendant is not passing off his goods as those of the plaintiffs and the plaintiffs also do not have the exclusive right to use the mark "Super" for their products.

(12) Though the parties have addressed lengthy arguments to show whether the mark "Super" can be adopted and registered as a trade mark since the same represents the quality of the business and goods of a party, however, since I am prima facie, of the opinion that the defendant is entitled to use mark "Super" in conjunction with the word "MAINI" in respect of their products I am not dwelling myself upon the other contentions raised by the parties.

(13) In view of the observations made above, the application of the plaintiffs is dismissed leaving the parties to bear their own cost.

(14) Any observation made in this order will not have any bearing on merits of this case.