Rolls-Royce Plc And Anr. vs R.R. Motors Pvt. Ltd.
1996 Latest Caselaw 895 Del

JUDGMENT

M.K. Sharma, J.

(1) This is a suit instituted by the plaintiffs against the defendant seeking for permanent injunction and accounts for infringement of the trade mark of the plaintiffs by the defendant.

(2) The present application was filed by the plaintiffs seeking temporary injunction restraining the defendants from using in connection with their business or in any manner whatsoever 'R.R. 'and /or the device of interlinked 'R.R.' in a shield or any other trade mark deceptively similar to the plaintiffs trade mark. On 15.9.1994, this Court granted an ad interim ex parte temporary injunction restraining the defendant from using 'R.R.' in a shield device. The defendant has filed a reply to the present application filed by the plaintiffs.

(3) The plaintiffs have stated that the second plaintiff is a world renowned manufacturer and merchant of motor cars, motor chassis and internal combustion engines for land vehicles and parts thereof. It is further stated that the first plaintiff is the registered proprietor amongst others of the trade mark of the goods referred to above. It has been further averred that the most famous cars manufactured and sold b)" the plaintiffs is popularly known as the 'Rolls-Royce' and over the years Rolls -Royce' cars have gained reputation as a symbol of excellence.

(4) According to the plaintiffs, the second plaintiff received information that the defendant was using a trading style in connection with its business of running a motor car repair workshop or garage under the letters 'R.R.' in a shield device inspite of the fact that the plaintiffs are the registered proprietor in respect of the said trade mark in a shield device. The defendant, however, stated that it is not manufacturing and selling cars and that the defendant is only repairing cars. Accordingly, the nature of activity of the plaintiffs and the defendant being entirely different, the business activities of the plaintiffs in India, it is stated, have got no correlation with that of the defendant and, therefore, there is no cause of any confusion or deception being caused in the minds of the general public.

(5) It is also stated that the defendant's mark or name is not likely to cause any mistake, deception or confusion in the minds of the public or trade and that the defendant has been using the said mark 'R.R. 'and device for last several years.

(6) I have heard Mr. C.M. Lall, Counsel appearing for the plaintiffs. The learned Counsel for the defendant during the course of hearing informed that he has received no instructions from the defendant and accordingly, he is not in a position to advance his arguments in respect of the injunction application.

(7) According to the plaintiffs, the defendant was using the trading style of the plaintiff in connection with its business of running a motor car repair workshop or garage under the trade name 'R.R.' which is registered in India in the name of the plaintiffs and that die defendant has also been using as a symbol of its business interlinked 'R.R/ in a shield device which is also the device of the plaintiffs which a view to trading upon plaintiffs reputation. The user of the trade mark, according to the plaintiffs by the defendant is not lawful and they are purposely trading on the name of the plaintiff trade mark so as to induce the general public to think that the defendant is trading on behalf of the plaintiffs.

(8) In Daimler Benz Aktiegesellschaft and Another v. Hybo Hindustan, , the word 'Benz' was used for selling undergarments with the mark indicating "Benz' used and shown in the undergarments. When the manufacturers of the car 'Benz' sued for injunction, the defense was that the manufacturers cannot make a grievance because of the people who use the undergarments are different and the persons who use the Benz cars belong to an elite of the population and there was no scope for any confusion and there was no question of any passing off of the goods. This Court in paragraphs 14 and 15 of the said judgment has held thus : THERE are marks which are different from other marks. There are names which are different from other names. There are names and marks which have become household words. "Benz" as name of a Car would be known to every family that has ever used a quality car. The name "Benz" as applied to a car, has a unique place in the world. There is hardly one who is conscious of existence of the car/automobiles, who would not recognise the name "Benz" used in connection with cars. Nobody can plead in India, where "Mercedes Benz" cars are seen on roads, where "Mercedes" have collaborated with TATAs, where there are Mercedes Benz - Tata trucks have been on roads in very large number, (known as Mercedes Benz Trucks, so long as the collaboration was there), who can plead that he is unaware of the word "Benz" as used with reference to car or trucks. In my view, the Trade Mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else's reputation with reference to goods, especially so when the reputation extends world wide. By no stretch of imagination can it be said that use for any length of time of the name "Benz" should be not objected to."

(9) In the case of Montari Overseas Ltd. v. Montari Industries Ltd. reported in 1996 Ptc 142, the Court hold that : "IT is well settled that no company is entitled to carry on business in a manner so as to generate the belief that it is connected with the business of another company, firm or an individual. The same principle of law which applies to an action for passing off of a trade mark will apply more strongly to the passing off of a trade or corporate name of one for the other."

(10) In Ags Manufacturing Co. Ld. v. Aeroplane General Sundries Co. Ld" reported in 1918(35) Rpc 127, the Court held that even though the plaintiffs cannot claim a monopoly to die letters "A.G.S." "but on the other hand, it is clear that no one can make use of these letters in a manner calculated to deceive and intentionally lead to the belief the defendant company is the plaintiff company."

(11) My attention was also drawn to the case in Rolls-Royce Motors Ltd. and Anotherv. Dodd reported in 1981 Fleet Street Reports (517). Under almost similar circumstances, where the defendant, a motor engineer principally concerned with the repair of automatic gearboxes of the kinds used in Rolls-Royce and Bentley motor cars built a motor car having a grille similar to the plaintiffs' grille bearing a gold "Spirit of Ecstasy" statuette; on the lower end of each of the car's wings were the worlds "Powered by 27 litre Rolls-Royce Merlin." The plaintiffs' "R.R." logo appeared on the brake pedal and the stick shift and the car was described simply as "Rolls-Royce" on the road fund licence.

(12) It was held therein that the plaintiff has undoubtedly an arguable case on the question of infringement of the registered trade mark of the plaintiff. In respect of passing off, it was held thus : "AS to passing off, here again I think considerable reliance was placed somewhat different nature of the respective businesses of the plaintiffs and the defendant. I do not really think myself that there is a startling difference. The plaintiffs are concerned with repair work, as is Mr. Dodd. It is true that Mr. Dodd on the evidence before me is concerned only with repair work and not with the manufacture and sale of cars."

(13) In that view of the matter, the contention raised by the defendant in its reply that the goods manufactured by the plaintiffs and the defendant are different and hence the apprehension of the plaintiffs that the use of the mark 'R.R.' or the same as a corporate name in respect of the goods manufactured by the defendant is not likely to cause confusion in the minds of the buyers is unfounded.

(14) I am thus satisfied that the plaintiff has been able to make out a strong prima fade arguable case that the defendant not only adopted R.R. as its trading name, but is also using 'R.R.' in an interlinked fashion identical to the registration of the plaintiff in a manner calculated to deceive and intentionally lead to belief that the defendant Company is the plaintiffs Company. The balance of convenience is also in favour of the plaintiffs and that the damages in the present case cannot be an adequate remedy for the plaintiffs.

(15) Accordingly, while confirming the ad interim ex parte injunction granted by this Court on 15.9.1994, I am satisfied to issue an injunction restraining the defendants, their agents and servants from using in connection with their business in any manner whatsoever the trading name of the plaintiff 'R.R.' and /or the device of interlinked 'R.R.' in a shield or any other trade mark deceptively similar to the plaintiffs trade mark.

(16) The application accordingly stands allowed. There shall be no order as to cost. It is however, made clear that any observation made herein in respect of the trade mark of the plaintiff and defendant is tentative and be not construed as the final expression of this Court on the merits of the case.