Delhi High Court
Smt. S. Charat Ram vs M/S. Usha Rectifier on 4 September, 1996
Author: R Lahoti
Bench: R Lahoti
JUDGMENT
R.C. Lahoti, J.
1. This common order shall govern the disposal of several interlocutory applications in four suits as stated shortly hereinafter.
2. This four suits are between common sets of parties and raise inter-connected questions of facts and law. Indeed all the matters have been taken up for consolidated hearing and the learned counsel for the parties have advanced common arguments therein.
3. Let introductory facts of the four suits be briefly noticed by reference to each of the suits separately. The common set of facts and the contentions raised by learned counsel for the parties would be dealt with soon thereafter.
4. S. No. 2957/89 is filed on 2nd November, 1989 by (i) Smt. S. Charat Ram & Shri N. R. Dongre Trustees of M/s. Chinar Trust, (ii) Shri L. P. Gupta and Shri Subodh Verma Trustees of M/s. Mansarovar Trust, also trading as M/s. Usha Shriram India, and (iii) M/s. International Ltd. against two defendants namely (i) M/s. Usha Rectifier, Home Appliance Division, and (ii) M/s. Usha Rectifier Corporation (India) Ltd. The suit seeks protection of plaintiffs trade mark and permanent injunction restraining infringement of registered trade marks as also passing off by the defendants and decree for accounts etc. The suit relates to registered trade marks USHA and USHA SHRIRAM (LOGO).
4.1. On I.A. No. 8219/89 filed by the plaintiffs, the court has on 2.11.1989 directed the defendants to remain restrained from manufacturing or selling electric irons, bread toasters, cooking range, electric ovens, microwave oven, geysers, immersion rods and mixes bearing the trade mark USHA or the mark/mark USHA RECTIFIER or any other mark or name of which trade mark USHA forms a part.
4.2. By IA 9915/93, the plaintiffs brought to the notice of the court that Usha Rectifier Corporation had commenced carrying own business as Usha Home Appliance Ltd. so as to work a way out for non-compliance with the order dated 2.11.1989. On 16.12.1993, the court directed Usha Home Appliance Ltd. to remain restrained in the same terms as Usha Rectifier Corporation were restrained by order dated 2.11.1989.
4.3. On IA 7170/94 moved by the plaintiffs the court has allowed impleading of M/s. Usha Home Appliance Ltd. as one of the defendants. Amended plaint has been filed.
5. Suit No. 2991/89 has been filed in first week of November, 1989 by the Jay Engineering Works Ltd. impleading two defendants namely (i) M/s. Usha Rectifier (Home Appliance Division) (ii) M/s. Usha Rectifier Corporation (India) Ltd. The subject matter of suit is trade mark USHA and USHA LOGO in respect of sewing machines and parts thereof, electric fans and regulartors. Permanent injunction is sought for restraining the defendants from marketing or advertising household appliances including sewing machines and electric fans bearing the trade mark USHA or the mark/name USHA RECTIFIER.
5.1. On 6.11.1989, on IA 8283/89 filed by the plaintiffs, the court has restrained the defendants from selling directly or indirectly the household appliance including sewing machines and electric fans bearing trade mark USHA or any other mark/name in which USHA forms a part.
6. Suit No. 3086/89 has been filed on 15.11.1989 by Shri Ram Refrigeration Industries Ltd. against (i) M/s. Usha Rectifier (Home Appliances Division) and (ii) M/s. Usha Rectifier Corporation (India) Ltd. in respect of trade mark USHA (Logo) relating to water coolers and seeking relief of permanent injunction preventing the defendants from infringing the plaintiff's trade mark or passing off by the defendants of appliances including water coolers bearing the trade mark USHA or the mark/name Usha Rectifier or any other mark or name deceptively similar with trade mark USHA.
6.1. On 20th November, 1989, on IA 8488/89 filed by the plaintiffs, the court has restrained the defendants from manufacturing, selling or offering for sale directly or indirectly the water coolers bearing the trade mark USHA or the mark Usha Rectifier or any other mark or name of which the trade mark USHA forms a part.
7. While the contest in the suits above said was going on, it appears that the defenses raised by the defendants in the above said three suits made the plaintiffs wiser and they realised the necessity of striking at the root cause of the problem. On 24th September 1994, six plaintiffs, namely, (i) Usha International Ltd. (ii) The Jay Engineering Works Ltd. (iii) Usha Intercontinental (India), the trading name of General Sales Ltd.; (iv) Usha Shri Ram (India), the trading name of Mansarover Trust (v) Shriram Pistons and Rings Ltd., and (vi) Chinar Trust have jointly filed a suit impleading (i) Usha India Ltd. formerly known a Usha Rectifier Corporation (India) Ltd., and (ii) Usha Home Appliances Ltd., registered as suit No. 2149/94. The net of this suit is which the plaintiff companies were born and since how long have they been in existence, they claim the word USHA having been identified as trade mark exclusively of the plaintiffs as having acquired reputation and goodwill associated with the plaintiffs. It is alleged that whenever the mark USHA or the expression USHA Group or UIL or USHA brand or any other equivalent expression is used the public and the consumers are reminded of the plaintiffs' trade mark/trade. To take advantage of the reputation earned by trade mark/trade name USHA, the defendants have incorporated the word USHA in their corporate name and are trying to create confusion and play deception in the public and in the course of trade by manufacturing/marketing/advertising their products with USHA associated therewith.
7.1. As to the defendants it is alleged that till the year 1993 the defendant's Group was referred to as Ram Krishan Kulwant Rai Group and not as the USHA Group of Companies and/or Group Usha. The defendant No. 1 admittedly commenced business in the year 1962 comprising of engineering, iron-industry, electric components and industrial software designs and not consumer goods. Now they are illegally and unlawfully advertising themselves as Usha Group of Companies/Group Usha. The defendant No. I was incorporated on 15th February, 1962 under the name and style of Usha Rectifier Corporation India Ltd. The main objects of the defendant No. 1 as mentioned in its Memorandum of Association do not include manufacturing marketing, sale, distribution of any consumer goods or durables.
7.2. In 1985 the Rama Krishan Kulwant Rai Group of Companies started infringing the trade mark USHA in relation to consumer goods and for this purpose set up a wholly owned subsidiary company of defendant No. I by the name of Usha Television Ltd. In suit No. 607/85, by order dated 10th April, 1995 the High Court of Delhi restrained Usha Television Ltd. from manufacturing, selling or offering for sale television sets under the Trade Mark USHA (The Delhi High Court judgment is reported as Usha Inter Continental Ltd. and others v. Usha Television Ltd. (1987 PTC 240-A). An appeal preferred by Usha Television Ltd. before the Division Bench of Delhi High Court was registered as FAO (OS) 5/86 and was dismissed on 7th March, 1986. The defendant No. I violated the order of injunction and on proceedings being initiated tendered an unconditional apology. A second contempt was committed and proceedings relating thereto are pending.
7.3. It is further alleged that the defendants had no sales in consumer goods till the year 1989-90. In the year 1990-91 they had a negligible sale of 2022 units. These facts are borne out from their annual reports.
7.4. On 20th October, 1989 the defendants announced the introduction of a whole range of household appliances in the newspapers. The advertisement prominently bore the mark Usha Home Appliances.
7.5. In views of the several restraint orders passed against the defendant No. 1 in the three suits noticed hereinabove, in 1993 the defendant No. 1 incorporated a wholly owned subsidiary in the name and style of M/s. Usha Home Appliances Ltd. (the defendant No. 2) having the same registered office as defendant No. 1. This was done to circumvent the order of injunction passed by the court against Home Appliances Division of the defendant No. 1.
7.6. Again in order to circumvent the orders of the court, the defendant No. 1 had adopted the name of Usha India Ltd. which name not only illegally uses the name USHA but also copies the acronym UIL of plaintiff No. 1.
7.7. The reliefs sought for by the plaintiffs in this suit are restraining infringement of registered trade marks of the plaintiffs, restraining the passing off by the defendants of their goods as that of the plaintiffs. For that purpose the plaintiffs have sought for the following three injunctions apart from the reliefs of rendition of accounts and delivery up etc. :
(i) restraining defendants from using the trade mark/name and word USHA and/or the acronym UIL in their corporate names, trading style etc.
(ii) restraining the defendants from manufacturing, marketing, advertising or dealing in goods under the trade mark/trade name USHA, Usha India, Usha Home Appliances, Group Usha or any other mark or name of which the word USHA forms a part.
7.8. IA No. 8655/94 under Order 39 Rules 1 and 2 of the Civil Procedure Code has been filed by the plaintiffs seeking ad interim ex parte injunctions more or less on the same terms in which permanent injunctions are sought for in S. No. 2149/94. The defendants had entered a caveat and taken notice. There is no interim order made on the application as yet.
8. In suit No. 2149/94 are available the details with particulars of the trade marks owned by the several plaintiffs. They are as under :
USHA INTERNATIONAL LTD.
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Mark Regn. No. Date Class Goods
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USHA 276104 6.11.1971 7 DIESEL OIL ENGINES
USHA 276104 6.11.1971 7 ELECTRICAL MOTOR & PUMP SETS
USHA 267104 6.11.1971 7 DIESEL OIL
JAY ENGINEERING WORKS LTD. - IN INDIA
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Mark Regn. No. Date Class Goods
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USHA 3058 4.8.1942 7 SEWING MACHINE
USHA 195536 20.4.1960 7 SEWING MACHINE
USHA ARISTOCRAT 249631 3.6.1968 7 SEWING MACHINE
USHA DOMESTIC 243620 11.8.1967 7 "
USHA DOMESTIC DELUXE 243610 11.8.1967 7 "
USHA EXCELLA 249630 3.6.1988 7 "
USHA FLORA 243521 11.8.1967 "
USHA INDUSTRIAL 243611 13.10.1969 "
USHA NOVA 259984 13.10.1969 "
USHA PRIMA 243612 11.8.1967 "
USHA STREAMLINED 243608 11.8.1967 "
USHA TAILOR 243609 11.8.1967 "
USHA ZIG ZAG 243616 11.8.1967 "
USHA 444893 30.1.1967 "
USHA 128504 21.3.1947 "
USHA 195537 20.4.1960 "
USHA ARISTOCRAT 249632 3.6.1968 "
USHA AIRKING 2436115 11.8.1967 "
USHA DELUXE 243613 11.8.1967 "
USHA EXHAUST 243619 11.8.1967 "
USHA GYRO 249628 3.6.1968 "
USHA MINIFLOW 249627 3.6.1968 "
USHA NOVA 243618 11.8.1967 "
USHA POPULAR 259985 13.10.1969 "
USHA SUPREME 253893 3.1.1969 "
USHA SENATOR 249629 3.6.1968
USHA PRIMA 243617 11.8.1967
USHA 400668 28.1.1969 7 & 12 FUEL INJECTION EQUIPMENTS
USHA 216308b 4.7.1970 7 FRACTIONAL HP MOTORS
USHA 187918 2.12.1958 16 BOOKS/MAGAZINES
USHA 3060 4.8.1942 11 COOKING STOVE
USHA 119536 26.2.1975 2 ENAMELS & PAINTS
USHA 216380B 4.7.1977 7 ELECTRIC MOTOR
USHA 248336B 15.2.1972 4 LUBRICATING OIL
USHA 278335 15.2.1972 26 NEEDLES
USHA 203071B 15.6.1967 8 SCISSORS
USHA 336101 1.5.1978 7 DIE GRINDERS
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JAY ENGINEERING WORK LTD - ABROAD
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Mark Regn. No. Date Country Goods
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USHA B826355 5.9.1961 ADEN SEWING MACHINE
USHA 3122 16.6.1976 AFGANISHTAN "
USHA A169226 14.9.1961 AUSTRIALA "
USHA 24924 21.11.1975 ALGERIA "
USHA 19484 24.9.1979 AFRICAN UNION "
USHA BIK 1530 11.8.1967 BAHRAIN "
USHA 492 10.6.1976 BURMA "
USHA B830450 29.11.1971 BENELUX "
USHA 950970 13.3.1962 BELGIUM "
USHA 80 19.6.1972 BANGLADESH "
USHA 7394 11.10.1961 CYPRUS "
USHA 9643 6.6.1975 FIJI "
USHA 138 6.9.1962 HONGKONG "
USHA 106641 13.5.1975 INDONESIA "
USHA 9842 15-8-1963 IRAQ "
USHA 43051 19.7.1956 IRAN "
USHA 21277/C/79 11.10.1979 ITALY "
USHA B11982 16.8.1963 KENYA "
USHA M/29522 20.1.1958 MALAYA "
USHA B69487 13.9.1961 NEW ZEALAND "
USHA 12965 11.11.1961 NIGERIA "
USHA 6687/045 30-11-1988 NEPAL "
USHA 25392 29-12-1977 PHILLIPINES "
USHA 1756/61 30.12.1961 RHODESIA "
USHA 1635/CRK 10.5.1980 RWANDA "
USHA 7418 2-5-1982 SUDAN "
USHA 6904 22.5.1982 SUBAH "
USHA 2487 26.2.1958 SARAWAK "
USHA 22942 15.1.1958 SINGAPORE "
USHA 2702 2.9.1979 SOMALIA REPUBLIC "
USHA KOR5485 13.8.1979 THAILAND "
USHA B7672 5.1.1962 TANZANIA "
USHA B825355 15.9.1961 U.K. "
USHA 50749 11.12.1976 U.A.R. "
USHA 392 7.10.1980 TUNISIA "
USHA 28932 7.9.1980 SYRIA "
USHA 142892 1.11.1980 TIWAN "
USHA 1756/61 29.12.1982 ZAMBIA "
USHA 172718 27.2.1983 CHINA "
USHA 17634 1.12.1980 JORDAN "
USHA 1462 27.5.1981 QATAR "
USHA 3122 16.6.1976 AFGHANISTAN FAN
USHA A303021 13.12.1976 AUSTRALIA "
USHA 19484 AFRICAN UNION "
USHA BIK 3573 3.4.1976 BAHRAIN "
USHA 492 10.6.1976 BURMA "
USHA 083045 29.11.1971 BENELUX "
USHA 81 19.6.1972 BANGLADESH "
USHA 10292 10.3.1976 BULGARIA "
USHA 22819 20.9.1991 CEYLON "
USHA 16421 16.6.1975 CYRPUS "
USHA 25350 21.6.1976 DOMINICAN REPUBLIC
USHA 1105014 22.8.1978 FRANCE "
USHA 9643 6.6.1975 FIJI "
USHA 139 6.9.1962 HONGKONG "
USHA 106641 22.7.1972 INDONESIA "
USHA 9842 1.1.1978 IRAQ "
USHA 43051 18.7.1981 IRAN "
USHA 21277/C/79 11.10.1979 ITALY "
USHA B21976 19.6.1975 KENYA "
USHA M/29521 20.1.1958 MALAYA "
USHA 12965 11.11.1982 NIGERIA "
USHA 6687/045 30.11.1988 NEPAL "
USHA 25392 29.12.1983 PHILLIPINES "
USHA 1756/61 30.12.1982 RHODESIA "
USHA 1634/CRK 10.5.1980 RWANDA "
USHA 195599 21.5.1982 SUDAN "
USHA 6905 2.5.1958 SABAN "
USHA 2488 26.2.1958 SARAWAK "
USHA 22943 15.1.1958 SINGAPORE "
USHA 240/45 21.7.1991 SAUDI ARABIA "
USHA 2702 2.9.1979 SOMALIA "
USHA KOR5486 15.9.1993 THAILAND "
USHA B15961 17.7.1989 TANZANIA "
USHA B855250 14.10.1963 U.K. "
USHA 50750 9.7.1985 U.A.R. "
USHA 392 3.10.1980 TUNISIA "
USHA 28932 7.9.1980 SYRIA "
USHA 142892 11.12.1980 TAIWAN "
USHA 1757/61 30.12.1961 ZAMBIA "
USHA 172719 27.2.1973 CHINA "
USHA 17635 1.12.1987 JORDAN "
USHA 1462 26.5.1987 QATAR "
USHA 5339 28.1.1993 ADEN "
USHA 3122 16.6.1976 AFGHANISTAN FRACTIONAL HP MOTORS
USHA 24924 21.11.1975 ALGERIA "
USHA 294375 19.2.1976 AUSTRALIA "
USHA 492 10.6.1976 BURMA "
USHA 16508 26.8.1971 CYPRUS "
USHA 9643 6.6.1975 FIJI "
USHA 43051 19.7.1975 IRAN "
USHA B21975 19.6.1975 KENYA "
USHA B1048978 3.7.1975 U.K. "
USHA 3122 16.6.1976 AFGHANISTAN DIESEL ENGINE PUMP
USHA 492 10.6.1976 BURMA "
USHA B21975 19.6.1975 KENYA "
USHA B1048978 3.7.1975 U.K. "
USHA 50749 11.2.1976 U.A.R. "
USHA 31742 27.3.1985 SYRIA "
USHA 21156 16.9.1984 BANGLADESH "
USHA 72072 3.11.1990 EGYPT "
USHA 244586 24.7.1992 S. KOREA "
USHA 244586 24.7.1992 S. KOREA FUEL INJUNCTION EQUIPMENTS
USHA 72072 9.5.1992 EGYPT "
USHA 9392/050 21.9.1993 NEPAL "
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USHA INTERCONTINENTAL LTD.
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Mark Regn. No. Date Class Goods
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USHA 406969 21.6.1983 9 TELEVISION RADIOS, ANTENNA -----------------------------------------------------------------------------
SHRIRAM PISTONS & RINGS LTD.
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Mark Regn. No. Date Class Goods
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USHA 308519 17.9.1975 7 PISTONS & PISTONS RINGS
USHA 309086 8.10.1975 7 PISTONS & PISTONS RINGS
USHA 309092 8.10.1975 7 "
USHA 310046 14.11.1975 7 "
USHA 312962 6.3.1975 6 GUDGEON PINS
USHA 316156 24.6.1976 12 PARTS FOR IC ENGINEERING LAND VEHICLES -----------------------------------------------------------------------------
9. Now it may be stated what is the case of the group of companies represented by the several plaintiffs. It is as under :
9.1. In the year 1936 the plaintiffs began to use the trade mark and mark USHA continuously and without a break till date. Between 1936 and 1995 the plaintiffs trade mark and name USHA achieved the following land marks : Almost every Indian has used an USHA product and is aware of the plaintiffs trade mark and name USHA. The mark is associated with the plaintiffs to the exclusion of the defendants herein. Consumer recall of the plaintiff's trade mark and name USHA is 91%. The plaintiffs have over 5000 selling outlets, over 500 show-rooms and over 5000 dealers having an extensive dealer network all over India. Internationally the plaintiffs trade mark and name USHA is popular over 60 countries, especially in Russia and the Central Republics, Middle East, South East Asia and Africa. USHA is the third most popular brand in India (higher than TATA and Birla, Reliance and other well established brands). USHA is equally popular among both urban and rural consumers and equally popular amongst all income groups, from the lowest to the highest. From 1936 to 1995 there are 183 registrations in favour of the plaintiffs in the trade mark and name USHA in India, and 118 such registrations internationally. Between 1983-84 to 1994-95, the plaintiffs have incurred publicity expenditure of over Rs. 5,950 lacs in respect of the trade mark and name USHA, spending over Rs. 90 lacs for the year 1993-94 only. Between 1983-84 to 1994-95, the plaintiffs have achieved a sales turnover of USHA products of over Rs. 46,682 lacs and over Rs. 55,000 lacs for the year 1993-94 only. Between 1983-84 to 1994-95, the plaintiffs have sold USHA brand consumer items of over 1527 lacs, and for the year 1993-94 over 200 lacs.
9.2. According to the plaintiffs the trade mark and trade name USHA is associated with the plaintiffs solely to the exclusion of the defendants in the minds of the public and the consumers of USHA goods and products since 1936. It is a mark and name that has an overwhelming reputation that belongs solely to the plaintiff to the exclusion of the defendants in the mind of the public. It is a mark, name and brand that is and has been used in almost every household, and by almost every consumer in India, both urban and rural and is associated solely with the plaintiffs to the exclusion of the defendants.
9.3. Defendant No. 1 was incorporated in 1962, twenty six (26) years after the plaintiffs began to use the single word as a trade mark and name USHA. Between 1962 till December, 1994 the defendants have never used the single word USHA as a trade mark, name or corporate name. Defendant No. 1 illegally and unlawfully attempted to use the single word USHA for the first time in 1984, and has thereafter intermittently illegally and unlawfully sought to try to use the single word USHA but has been repeatedly injuncted by this court from doing so as stated herein under. In Suit No. 607 of 1985 where a wholly subsidiary of defendant No. 1 was restrained from using the plaintiffs trade mark USHA in respect of Televisions. In Suit No. 2957 of 1989 where defendant No. 1 was restrained from using the plaintiffs' trade mark and name USHA and further the name USHA RECTIFIER in respect of home appliance and consumer goods. In Suit No. 2957 of 1989 where defendant No. 2 was also restrained from using the plaintiffs trade mark and name USHA in respect of home appliances and Consumer goods. In Suit No. 2991 of 1989 defendant No. 1 was restrained from using the plaintiffs trade mark and name USHA and further the name USHA and further the name USHA RECTIFIER in respect of household appliances including sewing machines and electrical fans.
9.4. Defendant No. 1 was not incorporated using the single word and name USHA. The said defendant's main object is "to manufacture, import, export, but, sell and deal in all kinds of semiconductors and rectifiers including selenium and silicon rectifiers stacks, cartridges and photovoltaic cells, contact protectors silicon diodes, capacitors, voltage regulators and the components of semiconductors and rectifiers, cartridges, photovoltaic cells, diodes and such other equipments".
9.5. Defendant No. 1 was not incorporated to manufacture, market and sell consumer goods and its objects have not been amended even after the said defendant has illegally and unlawfully changed its name from USHA Rectifier Corporation (India) Ltd. to USHA (India) Ltd. Further between 1962 to 1995 the defendants have admittedly not sold any consumer goods under the name and mark USHA.
9.6. It is further submitted by the plaintiffs that the use of the plaintiffs' trade mark and name USHA by the defendants, and the change of defendant No. 1's name from USHA Rectifier Corporation (India) Limited to USHA (India) Limited which acronym (UIL) being exactly the same as that of plaintiff No. 1, USHA International Limited (UIL) amounts to an illegal and unlawful appropriation of the plaintiffs trade mark and name USHA. It is a trade conspiracy to misappropriate the plaintiff's established and overwhelming reputation in the plaintiff's trade mark and name USHA. The defendants are illegally infringing the plaintiffs trade mark and name USHA. They are passing off themselves as the plaintiffs illegally and unlawfully in the minds of the public since the public associate the trade mark and name USHA with the plaintiffs as the plaintiff have been using the single word USHA as a trade mark and name continuously since 1936 whereas the defendants have never done so till date. It is not correct to say that there can be no confusion between USHA RECTIFIER and USHA in the minds of the public. To their further illegal and unlawful misappropriation of the plaintiffs trade mark and name USHA, the defendants have purportedly incorporated 32 companies using the name USHA of which :
- 17 admittedly have not commenced business till date (including companies incorporated as far back 1962 onwards)
- 8 allegedly commenced business in 1993-94 admittedly
- 5 allegedly commenced business between 1977 and 1992 admittedly.
None of these companies have used the single word USHA as a trade mark or a trade name for any of their products which are available to the consuming public from 1962, 1977-1992 and 1993-94 till date. The defendants have not spent any money till 1995 towards publicity expenses for any of their goods under the trade mark, name and brand name USHA. The defendants have not sold any goods under the trade mark, name and brand name USHA till date. The defendants admittedly do not have a single registration under the trade mark and name USHA.
10. Written statement and replies have been filed in the first three suits. In Suit No. 2149/94 complete written statement is yet to be filed though a written statement by way of preliminary objections has been filed. In the next para the gist of the defenses raised by the defendant will be noticed. What needs to be particularly placed on record is that in S. No. 2957/89 in the written statement which was filed by Usha (India) Ltd. and Usha Home Appliances Ltd. consequent to their having been joined as parties to the suit not only a written statement has been filed but a counter claim has also been raised. These defendants have sought for a decree of permanent injunction against the plaintiffs seeking their being restrained from manufacturing, selling or in any other way using "Usha Group", 'Ushawala' or any other word deceptively similar to USHA in relation to their goods or as trading style. Decree of rendition of accounts etc. has also been asked for.
11. For the purpose of this order, it would suffice to notice in brief the gist and nature of the defenses raised by the defendants. According to the defendants they are the prior users of the trade mark USHA. There are several other parties using the trade mark USHA for electrical and electric goods and consequently the mark has become common to the trade. The trade mark USHA cannot be said to have acquired a secondary meaning as denoting the goods of the plaintiffs. There can be no confusion and passing off because there is sufficient added matter to the defendants packaging which makes their goods distinguishable from the goods of the plaintiffs. The defendants are using their own name bona fide and no exception can be taken by the plaintiffs to it. The plaintiffs are also guilty of trafficking in trade mark and hence are not entitled to the relief of injunction. The relevant defense whenever necessary to be noticed with any more details shall be so dealt with at its appropriate place.
12. Before proceeding to examine the several questions arising for decision, it will also be useful to note the names of the 32 companies with their respective dates of incorporation which belong to the defendants. They are as under :
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Sl. No. Name of the Company Date of Incorporation
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1. USHA SPINNING & WEAVING MILLS LTD. 6.4.1961
2. USHA RECTIFIER CORPORATION (INDIA) LTD.
NOW USHA (INDIA) LTD. 15.2.1962
3. USHA FORGING & STAMPING LTD. 9.5.1962
4. USHA FLOUR & GENERAL MILLS LTD. 9.2.1965
5. USHA SERVICES & CONSULTANTS LTD. 20.9.1976
6. USHA MARKETING (P.) LTD. 25.9.1980
7. USHA TELEVISION (P.) LTD. 1.5.1982
8. USHA ISPAT LTD. 13.3.1983
9. USHA VIDEO SYSTEMS (P.) LTD. 27.6.1983
10. USHA DIDAK LTD. 17.2.1986
11. USHA MARCONI MICROELECTRONICS LTD. 1.7.1987
12. USHA GENERAL MILLS LTD. 1.7.1987
13. USHA GEC PLESSY TELECOMMUNICATION (P.) LTD. 6.1.1988
14. USHA AMORPHUS METALS LTD. 19.1.1988
15. USHA PLESSY NETWORKS (P.) LTD. 3.1.1989
16. USHA CAD (P.) LTD. 10.4.1989
17. USHA DRAGGER (P.) LTD. 18.6.1990
18. USHA CCI COMPUTERS LTD. 17.8.1990
19. USHA HOUSING DEVELOPMENT CO. LTD. 23.10.1991
20. USHA MATRA LTD. 12.10.1992
21. USHA AVIONICS (P.) LTD. 20.10.1992
22. USHA HYBRID CIRCUITS (P.) LTD. 20.10.1992
23. USHA GRANSTONE (P.) LTD. 20.10.1992
24. USHA ORGANICS LTD. 9.12.1992
25. USHA ROAD CONSTRUCTION ENGINEERS LTD. 9.12.1992
26. USHA HOME APPLIANCES LTD. 10.2.1992
27. USHA MEDICALS LTD. 29.12.1992
28. USHA TOURISM LTD. 29.12.1992
29. USHA PETRO LTD. 15.4.1993
30. USHA FACTORING LTD. 15.4.1993
31. USHA INFORMATION SYSTEMS LTD. 2.12.1993
32. USHA SECURITIES & SUPPORTS SERVICES (P) LTD. 18.1.1994
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13. Both the parties have filed a number of documents.
13.1. On behalf of the plaintiffs copies of several certificates of registrations of trade marks, copies of advertisements and trade literature and news items have been filed. The plaintiffs have also filed certificates of incorporation of the plaintiff companies. Details of publicity expenses and sales turn-over, specimen copies of orders received from Government department and other institution, export orders have also been filed.
13.2. On behalf of the defendants certificate of incorporation of Usha Rectifier Corporation India Pvt. Ltd. dated 20th June, 1984 has been filed. They have also filed Memorandum and Article of Association of most of the companies belonging to the defendants' group. Copies of documents showing advertisements and publicity of the defendants' in trade mark journals and brochures have been filed.
13.3. The documents are voluminous. However, with the assistance of the learned counsel for the parties, I have gone through the relevant documents and also seen in particular such of the documents as were referred with emphasis during the course of hearing by the learned counsel for the parties.
14. The first question is who is the owner and prior user of the trade mark USHA.
15. The various companies who are the plaintiffs in the four suits are all a part of one identifiable group of companies, the oldest of which is the Jai Engineering Works Ltd. It claims to have commenced the use of trade mark USHA since 1936 in relation to goods such as electric fans and sewing machines. It obtained trade mark registration No. 003058 dated 4.8.1942 in relation to sewing machines. Soon this Group started expanding use of the trade mark Usha in relation to various domestic consumer goods. In 1947 USHA was registered trade mark for fans. Trade mark registration No. 311724 dated 17.1.1976 was obtained in Class 11 in relation to Room Heaters, stoves, ovens, toasters and other domestic appliances. Trade mark registration No. 276920 dated 14.1.1991 was obtained in class 9 in relation to electric flat irons. The details of several other registrations which have followed, all in the name of USHA, are noticeable from the list given in para 8 above of this order.
16. The defendants, on the contrary have pleaded user of the Company name Usha Rectifier since 1961. Some statements made in the written statement dated 27.3.1990 deserve to be specially noticed and mentioned. The defendants have pleaded - "the defendant has not used the plaintiffs' alleged trade mark USHA (Written Statement page 2 para (VI); the defendant's Company's name as registered in 1961 is "Usha Rectifier". The defendant cannot be prevented from using the term Usha Rectifier, simply long thereto, the plaintiffs have chosen to deal in certain items with the brand name USHA (W.S. page 2, para VII). In any case the terms USHA and USHA RECTIFIER are totally different (W.S. page 3 Para X).
17. The documents filed by the parties go to show that while the plaintiffs commenced using trade mark Usha in the year 1936, the defendant alleges its association with the word USHA for the first time in the year 1967. In 1985, defendants attempted at using USHA for televisions which was immediately restrained at the instance of the plaintiffs. Subsequent users in 1989 and 1993 have been subject matter of contempt proceedings.
18. User by defendants in 1967 and 1975 has been respectively for selenium metal rectifier stacks i.e., mere industrial components and voltage stabilizers - an ancillary to electric goods, none being domestic consumer goods. The plaintiffs first trade mark registration of USHA relates back to the date 4th August, 1942. The defendants UR logo registration is dated 13th May, 1965.
19. Total number of trade mark registration for trade mark USHA for the plaintiff has been 65 in India and 118 International. The defendants have only one registration in India and none International.
20. On the basis of the material available on record it can be unhesitatingly concluded that the plaintiffs have been the first, prior and ancient users of USHA as a trade mark. The plaintiffs have widely used the trade mark USHA. The defendants' comparatively later user of and association with USHA as a trade mark has been recent. very limited and that too not in the field of domestic consumer goods.
21. The several registrations of trade mark on which the plaintiffs have relied, having been more than 7 years old and part-A registrations, have become conclusively valid under Section 32 of the Trade and Merchandise Marks Act, 1958.
22. Are the defendants committing infringement of plaintiffs' trade mark and passing off their goods as those of plaintiffs ?
23. It was submitted on behalf of the defendants that the plaintiffs were using such cartons as were different from the cartons used by the defendants and as the plaintiffs were using the trade mark LEXUS on all their products which word the defendants were not using, there was no possibility of customers being led away to purchase the defendants' products as those of the plaintiffs.
24. From the documents brought on record, it is clear that mostly in respect of household consumer goods, home appliances and various other productions of the plaintiffs they have been using the trade mark USHA alongwith trade mark registration numbers and effective dates thereof whenever the trade marks are registered. The trade mark USHA is being used by the plaintiffs in respect of a few other products also which are not so covered by the registrations. As against this, the defendants have only a single registration and that too for U.R. logo wherein their corporate name appears in microscopic print.
25. A comparative evaluation of documents brought on record by both the parties clearly goes to show that the defendants are practicing deception in the field of trade mark USHA. This they are doing in several ways. At times they are using USHA as part of their corporate names but placed upon the goods so boldly and prominently as to appear as a trade mark. In their advertisements they are referring to themselves simply as USHA which is sure to create confusion. At times on their products and in advertisements they are using expressions like 'group USHA' or 'USHA Group' for themselves.
26. I may now examine the case from the aspect of the defendants having used USHA as part of their corporate name. According to the plaintiffs USHA was the name of one of the female members of the family of the founder of the plaintiff's group. According to the defendants it was the name of the daughter of Mr. Kulwant Rai, the founder of the defendants group. As it will be shortly noticed, nothing turns on the name USHA having been the name of any member of the family of either group. The fact remains that it is not claimed as a name/surname of any individual claiming the trade mark. At best or at worst it is a part of corporate name of the companies arrayed as plaintiffs or as defendants. It will be shortly seen what is the effect thereof.
27. The documents brought on record by the parties clearly demonstrate the charge levelled by the learned counsel for the plaintiffs against the conduct of the defendants. It was submitted that the defendants have moved like a camel in the tent of the plaintiffs slowly and incrementally changing from Ram Krishna Kulwant Rai Group to UHA RKKR Group and then to Group USHA. Gradually the defendants have shifted emphasis on the word USHA in their advertisements and literature so as to concentrate thereon.
28. In 1989 the defendants had displayed a whole range of products as their own though in some of them such as sewing machine and water coolers they had never dealt with. Obviously this was done only to create confusion in the market so as to make it appear that they were the products of the defendants in the market.
29. In 1993 the defendants has made a new company out of the existing ones separating Home Appliances Division of Usha Rectifier Corporation (India) Ltd. to a wholly owned subsidiary company - Usha Home Appliances Ltd. though the directors, office address and staff remained common. The documents brought on record also go to show that out of 32 companies of the defendant only 16 are in business. Out of these 16 only 4 were using USHA as a part of their trade mark prior to the year 1985.
30. Climax of the defendants' objectionable activity has been to float Usha (India) Ltd. by converting their flagship company - Usha Rectifier Corporation (India) Ltd. there into and thereafter abbreviate it as UIL so as to confuse the same with the plaintiffs UIL standing for Usha International Ltd.
31. From the above said discussion the following findings follow :
(i) that USHA is the trade name owned by the plaintiffs to the extent to which they have registrations, they are the owners by virtue of registrations; otherwise, they are prior users of the trade mark USHA.
(ii) that use of the word USHA by the defendants in any manner as to show trade mark/name of their goods amounts to infringement of the plaintiffs trade mark and passing off of the defendants goods as that of the plaintiffs. The use of the expressions such as USHA or Group USHA also amounts to attempt at passing off themselves as the plaintiffs, as the same is likely to cause confusion in the minds of the consumers.
(iii) that the corporate name USHA (India) Ltd. in its full or abbreviated form as U.I.L. or as acronym ULI also amounts to passing off the defendants in the commercial world as plaintiffs.
32. During the course of hearing in support of their respective submissions the learned counsel for the parties have relief on a good number of decided cases and authorities. It is not necessary to refer to and deal with each of them as the principles are well settled. It would suffice to state the relevant settled legal principles and refer to a few authorities as necessary.
33. The following observations from Parker Knoll Ltd. v. Knoll International Ltd. (1962 RPC 265, 278), by Lord Morris have been quoted by way of preface to a Division Bench Judgment of this court in B.K. Engineering Company, Delhi v. U.B.H.I. Enterprise (Regd.) Ludhiana and another .
"In the interests of fair trading and in the interests of all who may wish to buy and sell goods the law recognises that certain limitations upon freedom of action are necessary and desirable. In some situations the law has had to resolve what might at first appear to be conflicts between competing rights. In solving the problems which have arisen there has been no need to resort to any abstruse principles but rather, I think, to the straightforward principle that trading must not only be honest but must not even unintentionally be unfair."
The Division Bench has added :
"Competition must remain free, it is true. This is the life blood of free enterprise system. Yet it is essential that "trading must not even unintentionally be unfair." If it is shown that a product or a business of a trade has acquired a distinctive character the law will restrain a competitor from using the other's name. A line must be drawn some where between honest and dishonest trading between fair and unfair competition."
34. Passing off cases are often cases of deliberate and intentional misrepresentation, but it is well settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defense. (Trade Marks, Kerly Twelfth Edition, 1986 para 16.16).
35. The court must in the common case be satisfied that the defendant's conduct is calculated to pass off other goods as those of the plaintiff, or at least to produce such confusion in the minds of probable customers or purchasers or other persons with whom the plaintiff has business relations as would be likely to lead to the other goods being brought and sold for his ...... The question of likelihood of deception is for the court (not the witnesses) to decide "looking to the documents and evidence before him". Kerly ibid, para 16.72.
36. How far the plea that the defendants were using their own name can provide a valid defense and if so, in what circumstances ?
37. Kerly (ibid, vide para 16.84) states as under :
'Use of one's own name'
It would seem clear that there is in some circumstances a defense to an action for passing-off, that all the defendant was doing was to make a normal use of his own name; but the precise nature and extent of his defense are none too clear, the rather numerous authorities on the point being difficult to reconcile. The defense is certainly of limited scope; in particular, it does not extent to allow use of that name in relation to goods so as to pass off :
"To the proposition of law that no man is entitled so to describe his goods as to represent that the goods are the goods of another, there is no exception."
38. The law as to concurrent right to use a title, mark or name has been so stated by Kerly (ibid, para 16.39) :
'Other cases of concurrent right'
"There are other cases best considered as cases where the defendant has as good a title to use the mark or name complained of as the plaintiff has to use the mark or name with which (as he alleges) it is likely to be confused; as for instance, where the defendant has been using his mark or name for nearly as long as the plaintiff has his, or where both parties are equally unmeritorious. Since, however, there is recall no such thing as right to use a mark or name, such cases require more careful analysis for the purpose of pleading a defense."
39. In Rodgers (Joseph) & Sons Ltd. v. W. N. Roders & Co. ((1924) 41 RPC 277), which is probably the first case available on the point and which has held the field till the day, Romer, J. has said :
"To the proposition of law that no man is entitled to carry on his business in such away as to represent that it is the business of another, or is in any way connected with the business of another, there is an exception, that a man is entitled to carry on his business in his own name so long as he does not do anything more than that to cause confusion with the business of another, and so long as he does it honestly. To the proposition of law that no man is entitled so to describe his goods as to represent that the goods are the goods of another, there is no exception."
40. As to the use of a word or name as a part of corporate name when the alleged to be passing off, Wadlow in his Law of Passing Off, (IInd Edition, 1995, para 7.14) states :
"Unlike an individual, a newly formed company has an almost infinite choice, of names to adopt. Consequently, the choice of the promoters, even if made bona fide, cannot confer on the company the rights which an individual of that name might have had. One instance in which it has been said that a Company can have the same rights as an individual is when the company is the assignee of subsisting goodwill transferred to it by an individual trader of that name. It is suggested that the near impossibility of defining the circumstances in which the defense might be available to a corporate defendant is another reason for doubting its very existence."
41. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories , while dealing with distinction between action for passing off and action for infringement of trade mark their Lordships have held that "where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation no further evidence is required to establish that the plaintiff's rights are violated.
42. In Montari Industries Ltd. v. Montari Overseas Ltd. (1995 (1) AD (Delhi) 1319), on a review of the case law and the authorities I have held :
"The trend of judicial opinion appears to be that reputation or goodwill in business generally attaches with the trade name adopted by a house. Such reputation or goodwill would be protected by the court Copyright of the name by a competitor is likely to cause an injury to its business. No one is entitled to commence or carrying on business in such a way as to represented it to be the business of someone else or at least associated with such someone else. If a person or house uses a name which is likely to deceive and divert the business of someone else to him or is likely to cause confusion in the mind of the persons likely to deal with such competing business house, then the impugned, action or intended action would be prevented by the courts on the same principles which are applicable to ordinary cases of passing off relating to sale of goods. Innocence of the defendant is no defense. The law applies with more rigour when the defendant is an inanimate person such as a company and when the name consists of a coined word." (para 15)
43. In Bajaj Electricals Ltd. Bombay v. Metals and Allied Products, Bombay and another , the defendants were using their family name not as a trading style but as a trade mark or trade sign. The Division Bench held that such user was not permissible. "The fact that damages would be suffered by the plaintiff cannot be ignored and the actual sufferance of damages cannot be established on the date of the institution of the suit".
44. In Ruston & Harnby Ltd. v. Samindara Engineering Co. , their Lordships having held that there was a deceptive resemblance between the word Ruston and the word Rustam and, therefore, the use of the bare word Rustam constituted infringement of the plaintiff's trade mark Ruston, held "if the respondent's trade mark is deceptively similar to that of the appellant, the fact that the word India is added to the respondent's trade mark is of no consequence and the appellant is entitled to succeed in its action for infringement of its trade mark.
45. In M/s. Power Control Appliances and others v. Sumit Machines Pvt. Ltd. , the Supreme Court has held :
"It is a settled principle of law relating to trade mark that there can be only one mark, one source and one proprietor. It cannot have two origins."
46. The conduct of the defendants is neither a case of bona fide use of their own name nor the defendants have been in market with USHA as long as the plaintiffs have been nor can the plaintiffs be said to be unmeritorious. None of the defenses referred to in para 35 hereinabove has been made out by the defendants so as to be entitled to concurrent right to use USHA as a trade mark/name.
47. The plaintiffs have made out a strong prima facie case for the grant of injunctions prayed for. The balance of convenience lies in their favour. If the defendants are restrained the plaintiffs are sure to suffer irreparable injury which will not be capable of being calculated in terms of money.
48. In what form the injunctions should issue ? Or to put it in other words what would be the appropriate words or expression in which the ad-interim injunctions to be granted to the plaintiffs should be couched.
49. The form of injunction varies according to the acts to be restrained. In an action for infringement of a registered trade mark the injunction restrains the infringement of the mark generally. In a passing off action the injunction may relate to the use of a trading name or to the use of a mark or name on goods or to both these matters. An injunction relating to the use of a mark or name on goods may restrain user of the mark or name without clearly distinguishing the goods from the plaintiff, but it is difficult to comply with such an injunction. An injunction may be granted restraining user calculated to deceive, or imitation of get-up, or sale under a name or mark so closely resembling the plaintiff's as to be calculated to pass off or enable others to pass off goods as his, or the sale of goods other than the plaintiff's goods under a particular name unless it is first ascertained that the plaintiff's goods are not required. In other passing-off cases the order may not give the defendant the opportunity to distinguish his goods from the plaintiffs. In special cases the order may permit sales under a mark only if certain labelling precautions are taken. A mandatory injunction requiring a company to change its name may be ordered. (Halsbury's Laws of England, Fourth Edition, Vol. 48, para 263 at p. 172.)
50. Here a few relevant considerations as highlighted by the learned counsel for the defendants shall have to be kept in view.
51. In S. No. 2149/94 vide para 10 of the plaint, the plaintiffs have stated that since 1962 - "the main business of the defendant No. 1 comprised of Engineering, iron and steel, electric components and industrial software design and not consumer goods". In rejoinder to IA 7170/94, the plaintiffs have state - "the fact that USHA electric rectifier are used in electrical and electronic goods does not in any way justify the use of the mark USHA for final finished goods." In reply to IA No. 9975/94, the plaintiffs have inter alia stated : ...... the defendants started using Usha as a part of their corporate name since the year 1962 and have restricted their business only in relation to rectifiers and the other heavy engineering goods".
52. In view of the above said admissions on the part of the plaintiffs clearly pointing out of long user by the defendants of USHA with reference to rectifier, heavy engineering, goods, iron and steel, electrical component, industrial software designs, it will not be proper to restrain the defendants from using USHA in relation to above said goods.
53. USHA India Ltd. is of recent origin. It has already been held that word USHA is associated with the plaintiffs. USHA (India) Ltd. gives an impression of being a company associated with the products manufactured and marketed by the plaintiffs under the trade mark/name USHA. The use of that name deserves to be restrained. This is more so in the background of two facts : firstly, the plaintiffs had already incorporated USHA International Ltd. in the year 1965; and secondly, in the list of 32 companies belonging to the defendants none had used word USHA in isolation, it has invariably been used with something suffixed to it so as to give an indication of the products which it might be manufacturing or marketing under the name. Usha (India) Ltd. has been so coined as to lay emphasis on Usha because the Company being in India, the word India would be meaningless.
54. So is the case with USHA HOME APPLIANCES LTD., incorporated in December, 1992. It has already been noticed that the plaintiff had already established themselves in the market of home appliances with the trade mark USHA.
55. In EXXON Corporation and others v. EXXON Insurance Consultants International Ltd. (1981 (2) All E.R. 495), the plaintiffs were held entitled to an injunction against the defendants using the word EXXON and/or allowing its name in a form incorporating the word EXXON to remain on the Companies Registrar because it would be unlawful and damaging to the plaintiffs. His Lordship said :
If it continues to do so, the act of so doing if any fraudulent is at least more unlawful and is clearly damaging to the plaintiff. If this is the situation I think that a court would be shutting its eyes to realities unless it did best that it could to prevent any such thing happening in future". Also see Montari Industries Ltd. (supra).
56. Adopting the corporate name USHA HOME APPLIANCES LTD. gives an impression that this was a company manufacturing marketing home appliances which have already acquired goodwill and reputation in the market with the trade mark/name USHA.
56.1. Though an injunction has to be issued restraining the use of respective names by these two companies, the operation of the injunction shall have to be suspended for a reasonable time. Kerly in Trade Marks (ibid, para 16.65) states :
"Where an injunction is granted against limited Company carrying on business under its registered name, the injunction is usually suspended for a short time to allow a company to change its name."
57. For the foregoing reasons IAs. Nos. 8219/89 and 9915/93 in S. No. 2957/89; IA No. 8283/89 in S. No. 2991/89; IA No. 8488/89 in S. No. 3086/89 and IA No. 8655/94 in S. No. 2149/94 filed by the plaintiffs are allowed. The following injunctions are issued so as to remain in operation during the hearing of the suits :
(i) defendants are restrained from using USHA as a trade mark or trade name in respect of such goods as to which the plaintiffs have registration of trade marks;
(ii) the defendants are restrained from using the word USHA or expression such as GROUP USHA as a trade mark or otherwise in relation to consumer goods and household appliances;
(iii) the defendants are restrained from using USHA Home Appliances Ltd. and Usha (India) Ltd. as corporate names either in full or in abbreviated form or as an acronym;
(iv) the defendants are also restrained from using USHA as a part of their any corporate name except that in their existing corporate names defendants may so use. USHA as part of their corporate name that the name shall wherever used or published shall be so used or published in full. As a part of any corporate name of which USHA forms a part, the word USHA shall not be so used as to give it a distinct or prominent appearance from the other words constituting the name by resorting to use of colour scheme, designing, lettering style or sizing of letters.
58. The defendants shall 'however' be at liberty to use USHA in respect of rectifiers, heavy engineering, iron and steel, electronic components and industrial software design goods.
59. The injunction restraining use of USHA (India) Ltd. and USHA HOME APPLIANCES LTD. as corporate names shall remain suspended in its operation for a period of three months, from today so as to allow the defendants an opportunity of taking steps for altering the name.
60. Each of the plaintiffs shall within four weeks from today place on record an undertaking in the shape of affidavit sworn in by duly constituted attorney or representative to indemnify each of the defendants for any loss or damage caused or may be caused to later on account of the injunctions above said and determined in these suits or any other legal proceedings in the event of the plaintiffs being held not entitled to the relief sought for in the suit.
61. Nothing said hereinabove shall prejudice in any manner the rights of either party to have their pleas determined on merits at the trial.
