M/S. Surya Roshni Ltd. vs M/S. Samana Steel Ltd. And Another
1996 Latest Caselaw 786 Del

ORDER

Dr. M. K. Sharma, J.

1. This order will dispose of the application filed by the plaintiff under Order 39, Rules 1 and 2 read with Section 151, C.P.C., being I.A. No. 6321/1994, praying for grant of temporary injunction restraining the defendants, their servants, agents dealers, representatives and all other persons on their behalf from manufacturing, selling, offering for sale or otherwise dealing with directly or indirectly with PVC pipes, tubes and fittings thereof under the trade mark 'PRAKASH SURYA' and/or SURYA PRAKASH or any other identical and/ or deceptively similar trade marks as of the plaintiffs. This order shall also further dispose of the injunction application No. 7188/94 wherein the defendant No. 2 has sought for setting aside vacating the ex parte injunction granted by this court on 15-6-1994 whereby, the defendants, their servants, agents and representatives were restrained from selling offering for sale of dealing with PVC pipes and tubes with the offending trade mark PRAKASH SURYA or 'SURYA PRAKASH' identical with or deceptively similar to the trade mark of the plaintiff till the next date.

2. The plaintiff instituted a suit contending, inter atia, that the plaintiff and its predecessors-in-interest have been using the trade marks 'PRAKASH', 'PRAKASH' in style, 'SURYA', P.T.L. monogram, 'PRAKASH SURYA', 'PST' 'SURYA PRAKASH', in relation to their products viz. steel pipes and steel tubes and the fittings thereof from the year 1973 continuously till date. It was also stated the words 'PRAKASH', 'PRAKASH' in style and 'SURYA' were registered trade marks of the plaintiff for steel pipes, tubes and fittings since the year 1985 and 1987 respectively. The plaintiff has also applied for registration of trade marks 'SURYA' and 'PRAKASH SURYA' and 'SURYA PRAKASH in respect of PVC pipes, tubes and fittings and the said applications are likely to be advertised soon in the Trade Marks Journals. It is stated that the plaintiff has also been incurring huge expenses in the promotion and advertisement in relation to the trade mark SURYA, 'SURYA PRAKASH SURYA', 'SURYA PRAKASH' etc. on account of which the people in general have associated their products or service bearing the aforesaid words exclusively with the products of the plaintiff. It is further stated that it came to the notice of the plaintiff that the defendant No. 1 had started pirating the registered trade marks of the plaintiff 'PRAKASH' and 'SURYA' in respect of their products of steel pipes, tubes and fillings as also PVC pipes, tubes and fillings thereof. Under the aforesaid circumstances, the plaintiff has instituted the present suit in which the application under Order 39, Rules 1 and 2 came to be filed.

3. This court while issuing summons in the court also issued an ad interim temporary injunction restraining the defendants, their servants, agents and representatives from selling, offering for sale or dealing with PVC pipes and tubes with the offending trade marks 'PRAKASH SURYA', and/or SURVYA PRAKASH identical and/or deceptively similar to the trade marks of the plaintiff till the next date.

4. On service of summons, the defendants appeared in the suit and contested the same by filing their written statement. Along with the said written statement, the defendants also filed a reply to the application seeking for interim injunction. The defendants further filed an application under Order 39, Rule 4, C.P.C. fbr setting aside/vacating the aforesaid ex parte injunction order dated 15-6-1994. The defendants have contended, inter alia, that the defendant No. 2 is the distributor and stockist of M/s. Surya Polyvin Ltd., who is engaged in the business of manufacturing and marketing rigid PVC pipes for irrigation and agricultural purpose and is the proprietor of the trade mark 'SURYA PRAKASH' in respect of the said goods. It is stated that the defendant No. 2 being distributor and stockist of the said company M/s. Surya Polyvin Ltd., marketed and sold the afore mentioned goods of the said company in the normal, course of his business activities.

5. During the course of arguments, the learned counsel for the parties drew my attention to the fact that M/s. Surya Polyvin Ltd., Patiala Road, Samana, Dist. Patiala, alleging to be proprietors of the trade mark 'SURYA PRAKASH' in respect of PVC pipes instituted a suit under Sections 105 and 106 of Trade and Merchandise Marks Act, 1958, against the plaintiff for the relief of permanent injunction, for passing off and rendition of accounts in the Court of Shri M.R, Batra, Additional District Judge, Patiala, and obtained an order dated 29-6-1994, restraining the defendant, being plaintiff in the instant suit from selling PVC pipe under trade mark 'SURYA PRAKASH' resembling the one being used by the plaintiff in the said suit namely, M/s. Survya Polyvin Ltd. The said suit apparently was instituted after the filing of the present suit. It is stated by the counsel for the plaintiff that the institution of the aforesaid suit was the direct effect of a publication made by the plaintiff in the "Punjab Kesari" informing about the pendency of the present suit and grant of an ex parte ad interim injunction in the instant suit. It is also stated that the plaintiff of the present suit tiled an application before the Court of M.R. Batra, Additional District Judge, Patiala, for vacating the ad interim injunction order passed by the said court in the suit instituted by M/s. Surya Polyvin Ltd. On the basis of the said application, the ad interim order of injunction is slated to have been vacated by the Additional District Judge, Patiala, against which an appeal was taken to the High Court which also came to be dismissed.

6. The counsel appearing for the plaintiff submitted before me that the plaintiff is the proprietor of the trade marks 'SURYA PRAKASH' and 'PRAKASH SURYA' not in respect of steel pipes, tubes and fittings, but also in respect of PVC pipes and tubes and fittings thereof, The plaintiff has registration of their trade marks, 'SURYA', 'PRAKASH SURYA' and 'SURYA PRAKASH', in relation to their products of steel pipes and steel tubes and the fittings and has applied for registration for the same trade marks in respect of PVC pipes and tubes and fittings thereof, and their applications are expected to be advertised soon in the Trade Marks Journals, The Counsel submitted that in relation to the aforesaid goods, namely, steel pipes and steel lubes and also PVC pips and lubes and fittings thereof the trade names 'SURYA PRAKASH' and 'PRAKASH SURYA' have come to be associated connected, recognised and identified with the plaintiff and that the defendant No. 1 has now pirated the aforesaid registered trade mark 'PRAKASH', 'SURYA', SURYA PRAKASH and PRAKASH SURYA, of the plaintiff in respect of their products of PVC pipes, tubes and fillings.

7. The counsel appearing for the defendants, however, submitted before me that the plaintiff is not entitled to be granted with any interim injunction in the present case in view of the wilful concealment of material facts like institution of a suit in the Patiala Court. The further submission of the learned counsel for the defendants was that the word 'SURYA' has been held to be common word and, therefore, no exclusive right could be claimed in respect of the said word 'SURYA' by the plaintiff and, therefore, the plaintiff is not entitled to any injunction.

8. I have considered the submissions of the learned counsel for the parties and also gone through the arguments made in the pleadings as also the various decisions placed before me. As against the specific statements made by the plaintiff that it has been using the words 'SURYA PRAKASH' AND 'PRAKASH SURYA' from Oct. 1973 and it has applied for registration of their trade marks under the aforesaid names in the year 1985 and in respect of the PVC pipes, tubes and fillings in the year 1991. The defendant No. 3 has stated in his written statement that it has adopted the trade mark 'SURYA PRAKASH' on 20th day of May, 1993. It is also admitted by the defendant No. 3 that the plaintiff is engaged in the business of manufacturing and marketing steel pipes and tubes PVC pipes and tubes and fittings thereof under the trade mark 'SURYA PRAKASH'. It is also admitted by the defendant No. 3 that there is a similarly and resemblance between the defendants trade mark 'SURYA PRAKASH' and that of the trade mark of the plaintiff under the name SURYA PRAKASH.

9. From the salesmens made in the plaint as also from the facts appearing from the averments made in the written statements, it appears that the goods of Ihe plaintiff in respect of steel and PVC pipes, tubes and fillings have acquired a reputation and goodwill in the market through a trade mark or name with which its goods have become associated. Even the court of the Additional District Judge at Patiala vacated the ad interim injunction granted by restraining the present plaintiff from using the trade mark SURYA PRAKASH. The vacation of interim order was later on upheld by the Punjab and Haryana High Court. There appears to be similarity of the trade mark between the plaintiff and that of the defendants and there is also commercial connection between the goods of the plaintiff and the defendants. The trade name adopted by the defendant is also phonetically similar to that of the plaintiff's trade mark.

10. In my considered opinion, it cannot be said that the plaintiff is guilty of suppression of material facts, as submitted by the counsel for the defendant. Besides here we are concerned with the trade marks 'PRAKASH SURYA' and 'SURYA PRAKASH' and not with single word 'SURYA'. Therefore, the submission of the counsel for the defendant that 'SURYA' is a common word has no relevance at all.

11. On consideration of the entire facts and circumstances of the case, in my considered opinion, the plaintiff has been able to prima facie prove that it has been using the particular trade mark 'SURYA PRAKASH' and 'PRAKASH SURYA' for a very long time and that at least as disclosed from the evidence on record, the plaintiff is the prior user of the said trade mark than the defendants. Under the aforesaid circumstances by the use of the words 'SURYA PRAKASH' and PRAKASH SURYA by the defendants as its trade mark in selling PVC pipes, cables and fittings there is a representation that the said goods marketed by the defendants are the goods of the plaintiff which is likely to create confusion and deception. The same if allowed to be done, would amount to false representation and would cause irreparable injury to the plaintiff. In my opinion, the plaintiff has been able to make out a strong prima facie case in the present case and on consideration of the entire facts and, circumstances of the case, the balance of convenience appears to be also in favour of the plaintiff. Accordingly, I am satisfied that in the instant case the plaintiff is entitled to grant of an interim injunction as sought for in the application filed under Order 39, Rules 1 and 2 C.P.C.

12. In the result, the application filed by the plaintiff under Order 39, Rules I and 2 stands allowed and the interim injunction passed by this court on 15-6-1994 is required to be confirmed and I accordingly confirm the same. Consequently, the injunction application No. 7188/94 stands dismissed.

13. It is however, made clear that any observations made herein are my tentative and prima facie views and in no way should be construed as my final opinion on the merit of the suit.

14. Application allowed.