Goel Pocket Books vs Raja Pocket Books
1997 Latest Caselaw 638 Del

JUDGMENT

Mohd. Shamim, J.

(1) The appellant through the present appeal have taken exception to the judgment and order dated July 4, 1992 passed by an Additional District Judge, Delhi, whereby he allowed an application moved by the plaintiff/ respondent (hereinafter referred to as the respondent for the sake of convenience) under Order 39 Rules 1 & 2 of the Code of Civil Procedure for ad interim injunction and restrained the defendant/appellant (hereinafter referred to as the appellant for the sake of brevity) from using the trade mark 'Nagputra' in respect of the comics published by them or any other trade mark which may be deceptively similar to the trade mark 'Nagraj' belonging to the respondent.

(2) Brief facts which gave rise to the present appeal are as under : that the respondent M/s. Raja Pocket Books are a partnership concern consisting of three partners known as Shri Manoj Gupta, Smt. Prem Lata Gupta and Smt. Parul Gupta. Shri Manoj Gupta is fully competent and authorised to sign and verify the plaint and to institute the suit on behalf of the other partners. The respondent have been carrying on business of publishing and distributing paper back novels, books and comics for the last six years. They in this connection are publishing a series under the name/trade mark 'Nagraj'. The same is very much popular especially amongst the children. The first issue of the comic series under the trade mark 'Nagraj' was broughtinl986 and since then they have published 22 issues of the said comic series and sold near about 15,21,500 copies of the same under the trade mark 'Nagraj'. The total turnover of the respondent from the sale of the comics under the trade mark 'Nagraj' during the period 1986 up-to-date is to the tune of near about Rs. 50 lacs which shows the popularity and the mass appeal of the said comic series. The respondent have incurred a huge expenditure on advertisement of the said comic series on television, radio, magazines. The said publicity expenses would be around Rs. 8 lacs. The respondent have become owner of the trade mark 'Nagraj' by virtue of the long, continuous, extensive and exclusive user of the said trade mark in respect of the above said comic series. They are also the owner of the copyrights of the said comic series under the above said mark.

(3) The appellant also claim to be the publishers of books and other materials including comics. They have very recently brought out certain comics under the name and style of 'Nagputra. The said trade mark 'Nagputra' adopted by the appellant is deceptively similar to the trade mark 'Nagraj' of the respondent inasmuch as the trade marks 'Nagputra' and 'Nagraj' convey the same idea. The aforementioned trade mark adopted by the appellant depicts the device of a snake and fictitious character having the supernatural powers of a snake. The primary and essential feature in both the trade marks is the word 'Nag'. The overall impression created by both the trade marks is the same. The readers are thus bound to be confused with respect to the two names. There is every apprehension that one may be taken for the other. They may be led to the belief that the Nagputra comic series are also from the same source as that of Nagraj comic series by the respondent. The appellant have not only copied the get up, colour and dress of the respondent's character but have also copied the distinctive and special features of the character Nagraj. The appellant were well aware about the use and reputation of the trade mark 'Nagraj' being used by the respondent for their comic series. Thus they were under an obligation not to have adopted the trade mark 'Nagputra' in respect of their comic series. However, they have done so dishonestly and with ulterior motive. The illegal activities of the appellant, adverted to above, are putting the respondent to a great loss and damage in their business in terms of money besides the loss of reputation which is difficult to be ascertained in terms of money. The appellant are selling, advertising and offering for sale their comics under the impugned trade mark 'Nagputra' in the markets of Delhi. Thus they are infringing the trade mark 'Nagraj' of the respondent.

(4) It was in the above circumstances that an application for ad interim injunction was moved by the respondent to restrain the appellant, their servants, agents and representatives for printing, publishing, selling comics under the trade mark 'Nagputra' or any other word which may be deceptively similar to the trade mark 'Nagraj".

(5) The appellant put in contest and oppose the said application, inter alia, on the following grounds: that the suit of the respondent is barred by Section 69 of the Indian Partnership Act. The trade mark 'Nagraj' consists of two descriptive words 'Nag' and 'raj'. They are of common use. Hence the respondent cannot claim any monopoly on the use of the said words. The same can be used by anyone and everyone for the purpose of his trade and business. The trade mark 'Nagputra' is distinct and different from trade mark 'Nagraj'. Hence the respondent should not have any objection to the use of the same by the appellant. It is wrong and false that the comic 'Nagraj' is immensely popular amongst the children. It is also wrong and false that the first issue of the comic 'Nagraj' was brought out in March, 1986 and since then the respondent have published about 22 issues and sold approximately 15,21,500 copies. It is also incorrect that the turnover from the publication of the above said comic series of the respondent is near about Rs. 50 lacs. It is also wrong and false that the respondent have spent near about Rs. 8 lacs on publicity. The trade mark 'Nagraj' has not acquired a secondary meaning which may lead to the conclusion that it belongs to the respondent. The above said trade mark consists of words which are of common use and have so far not developed any distinct and different meaning from its common meaning. Since the said word is the word of common use hence everybody has the right to use the same and in fact the same has been used in different stories, books, pictures, Puranas and Vedas. The respondent do not have any copyright in the same. It has also been denied that the word 'Nagraj' is a trade mark or has any artistic and distinctive character appearing as such on the comics of the respondent. The words 'Nagraj' and 'Ngputra' and different words and have different meanings. The title of the comic series is also different. They are written in different style and colour and are as such different from each other in every respect. The appellant have been publishing their comic series since June, 1991 under the trade mark 'Nagputra'. The respondent were fully aware of the same, yet they never objected to the same though they allege the same to be similar to their trade mark 'Nagraj'. In case the injunction is granted to the respondent it would be to the detriment and harassment and humiliation and loss to the appellant inasmuch as they would not be in a position to bring out their further publication. The story, incidence, get up, colour, dress and character in the two comic series are different from one another. It is wrong and incorrect that the overall impression of both the trade marks is the same and there is any likelihood that the readers would be confused with regard to the two names. The comic series cater to the taste of the affluent class of children who are quite intelligent and are capable of making distinction in the two trade marks/names. Thus there is absolutely no reason, whatsoever, as to how and why comic series under the name and style of 'Nagputra' would be taken as comic series from the source of the respondent. The application is false and frivolous. It is liable to be dismissed.

(6) Leaned Additional District Judge after hearing the learned Counsel for the parties and appraisal of the evidence came to the conclusion that there was a prima fade case in favour of the respondent and the balance of convenience was also in their favour. He further opined that in case the ad interim injunction is not granted they are likely to suffer irreparable loss and damage. Hence he allowed the application for the grant of ad interim injunction and restrained the appellant from using the trade mark 'Nagputra' in respect of the comics brought out by them and from using any other trade mark which may be deceptively similar to the trade mark 'Nagraj' of the respondent. Aggrieved and dis-satisfied with the judgment and order the appellant have approached this Court by way of the present appeal.

(7) Learned Counsel for the appellant Mr. Ajay Kapur has vehemently contended that the impugned trade mark 'Nagputra' is neither similar nor deceptively similar to the trade mark 'Nagraj'. The two trade marks are altogether different from each other. Thus there is absolutely no reason, whatsoever, that the comics being sold under the trade name 'Nagputra' would be taken as the comics brought out by the appellant. The apprehension of the respondent is absolutely unfounded. It is simply a figment of the imagination of the respondent. The two comics i.e. the one being published under the trade mark 'Nagraj' belonging to the respondent and the comic which is being published under the name and style of 'Nagputra' are different from each other in their get up, colour scheme, dress and design. Even the stories in both the comics are quite different. The impugned trade mark 'Nagputra' is neither phonetically nor structurally similar to the trade name 'Nagraj'.

(8) It has next been contended by the learned Counsel for the appellant that if a trade chooses to use a word of a descriptive nature with dictionary meaning, he cannot restrain the other trader from using a similar word to claim supremacy over the other persons unless he succeeds in showing that the said words used by him by way of their name have acquired a distinctive or secondary meaning with the result that his goods are known by the said trade mark i.e. to say the said disruptive words have acquired altogether a different meaning other than the meaning which they convey according to dictionary.

(9) Learned Counsel for the respondent Mr. Manmohan Singh has urged to the contrary. According to him, the words 'Nagraj' and 'Nagputra' are almost the same. They convey the same meaning. Whereas the word 'Nagraj' means a king of snakes, the word 'Nagputra' on the other hand, which is the combination of two Hindi words i.e. 'Nag' and 'putra' means the son of a snake. What is lost sight of by the learned Counsel for the appellant during the course of his arguments is the fact that the main word which is being relied upon by the respondent to sell his comics is the word 'Nag'. Thus if the same is allowed to be used by the appellant to sell his comics then the unwary purchasers of the said comics would readily take the comics brought out under the name and style of 'Nagputra' to be that of the respondent. Furthermore, this is all the more so in the instant case inasmuch as purchasers of the comics are none else but the credulous and unwary children of tender age. I have heard the learned Counsel for both the parties at sufficient length and have very carefully examined their rival contentions and have given my anxious thoughts thereto.

(10) It is manifest from the arguments briefly reproduced above that the questions which arise for determination in the present appeal are: (a) whether the trade mark "Nagraj' which is not claimed by the respondent to be inventive but simply descriptive in relation to their goods has come to acquire during the course of time a distinctive or a secondary meaning so much so that the goods/comics belonging to the respondent are known by the said name and purchased by the public under the said title, and (b) if so, whether the same can be protected under the law of passing off ?

10. Competition in business is life blood of every free enterprise. No body would dispute that it is almost a must. It is so to say the very breath of a being for his survival. However, the said competition must be a healthy competition giving an opportunity to every trader to thrive and flourish. "The trading must not only. be honest but must not even un-intentionally be unfair. "(Parker Knoll Ltd. v.Knoll International Ltd., 1962 Rpc 265 at page 278). If a trader, it is shown, has been using a particular trade name for the sale of his commodity and has been doing so for a sufficiently long period and thereby he has acquired name, fame, reputation (which is technically known as goodwill) and his goods are identified and recognised by the said name and purchased by the public on the assumption that the same are coming from a particular source and as such, the same must be of superb quality and skill, then in that eventuality no other trader would be permitted to use the same trade mark or a trade mark which is similar or deceptively similar to that trade mark. The law on the said point was laid down as far back as in the year 1986 by their Lordships of the Privy Council as reported in Reddawayv. Banham, (Reports of Patent, Design and Trade Cases, Vol. Xiii page 218 at page 228)........" It had been previously enunciated in much the same way by Lord Langdale in the case of Croft v. Day, Lord Kingadown's words were as follows ; "The fundamental rule is that one man has no right to put off his goods for sale as the goods of a rival trader, and" he cannot,therefore, (in the language of Lord Langdale in the case Perry v. Truefitt) be allowed to use names, marks, letters, or other indicia, by which he may induce purchasers to believe that the goods which is selling are the manufacture of another person". It is, in my opinion, this fundamental rule which governs all cases, whatever be the particular mode adopted by any man for putting off his goods as those of trader, whether it is done by the use of a mark which has become his Trade Mark, or in any other way........ Where the trade mark is a word or device never in use before, and meaningless, except as indicating by whom the goods in connection with which it is used were made, there could be no conceivable legitimate use of it by another person. His only object in implying it in connection with goods of his manufacturer must be to deceive. In circumstances such as these, the mere proof that the trade mark of one manufacturer had been thus appropriated by another, would be enough to bring the case within the rule as laid down by Lord Kingsdown, and to entitle the person aggrieved to an injunction to restrain its use."

(11) In an action for passing off with which we are concerned in the present case, it was observed by a Single Judge of the Allahabad High Court as reported in Mis. Victory Transport Co. Pvt. Ltd., Ghaziabad v. The District fudge, Ghaziabad and Others., ...." In regard to a "passing off" action according to settled law, there are broadly two tests which have to be applied for determining the question whether the plaintiff is entitled to an injunction. The tests are: (1) Whether the words used hi the trade name of the plaintiff are mere descriptive words of common use or have they come to acquire a distinctive or secondary meaning in connection with the plaintiff's business so that the use of those words in the trade name adopted by another was likely to deceive the public? This test relates to the reputation which the plaintiff claims for itself. (2) Whether there is a reasonable probability that the use of the name adopted by the defendants was likely to mislead the customers of the plaintiff by reason of similarity of the trade names."

(12) With the above background let us now see as to whether the trade mark 'Nagraj' used by the respondent in connection with their publication which is admittedly descriptive in nature has acquired a secondary meaning and goodwill and reputation, so much so that their publications are known by the said trade name and are purchased by the public as such. Learned Counsel for the respondent has contended that the respondent have been using the said trade mark since the year 1986. They have is this connection placed on record copies of the bills dated July 7, 1986, May 2, 1988 and June 30, 1989 in order to substantiate their contention that the respondent have been using the trade mark 'Nagraj' continuously without interruption since the year 1986. It has thus become distinctive and has acquired a secondary meaning on account of the continuous user and people have come to associate the publication of the respondent with the said trade mark. The sales of the respondent under the said trade mark are to the tune of Rs. 50 lacs. They are alleged to have published more than 100 issues. They are further alleged to have spent near about Rs. 8 lacs. The appellant, on the other hand, adopted deputed the impugned trade mark 'Nagputra' since the year 1991. Learned Counsel for the appellant has not disputed the said fact. It is thus prima fade established that the respondent is a prior user of the said trade mark. It has further been substantiated that they have acquired a goodwill and reputation under the said trade mark. Hence, they are entitled to an order of injunction.

(13) I am supported in my above view by a decision of a Division Bench of this Court reported in Century Traders v. Roshan Lal Duggar & Co. and Others., ......". In an action for passing off in order to succeed in getting an interim injunction the plaintiff has to establish user of the mark prior in point of time than the impugned user by the defendants. The registration of the mark or similar mark prior in point of time to user by the plaintiff is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trade mark registry does not prove its user by the persons in whose names the mark is registered and is irrelevant for the purposes of deciding the application for interim injunction unless evidence has been led or is available of user of their registered trade mark."

(14) This brings us to the other point as to whether the trade mark 'Nagputra' is similar or deceptively similar to the trade mark 'Nagraj' and if so, whether the unwary members of the public are likely to take the publication of the appellant as that of the respondent and thereby led to purchase the same. Admittedly, there is a common word 'Nag' in the two trade names, the word 'Nagraj' means the king of snakes whereas the word 'Nagputra', on the other hand, means the son of a snake. The common word in between the two is 'Nag' which is likely to convey the impression that the books belonging to the appellant are coming from the same source i.e. of the respondent. This is all the more so likely to happen in the instant case inasmuch as the purchasers of the said comics are none else but the unwary and credulous children of tender age. It is well known that the judgments of the children are immature. They are not patient as a grown-up man to analyse and scrutinise the goods before opting for the purchase of the same.

(15) The same opinion was given vent to by their Lordships of the Supreme Court as reported in Amritdhara Pharmacy v. Satya Deo Gupta, , when an application for the registration of trade name Lakshmandhara was moved in respect of a medicinal preparation and the same was opposed by the proprietors of the trade name 'Amritdhara', which was already registered as trade name in respect of medicinal preparation. On the question whether the trade name 'Lakshmandhara' was likely to deceive the public or cause confusion to trade, it was observed "Held, that the question had to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the two names 'Amritdhara' and 'Lakshmandhara' was likely to deceive or cause confusion."

(16) A matter which is very much akin to the matter in hand came up for consideration before their Lordships of the Supreme Court as reported in K.R. Chinna Krishna Chettiar v. Sri Ambal & Co. and Another, . It was observed,......."It is for the Court to decide the question on a comparison of the competing marks as a whole and their distinctive and essential features. We have no doubt in our mind that if the proposed mark is used in a normal and fair manner the mark would come to be known by its distinguishing feature : Andale. There is a striking similarity and affinity of sound between the words "Andale and "Ambal". Giving due weight to the judgment of the Registrar and bearing in mind the conclusions of the learned Single Judge and the Division Bench, we are satisfied that there is a real danger of confusion between the two marks."

(17) The same view was again reiterated by their Lordships of Bombay High Court as reported in James Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd., ....." The real question is as to how a purchaser, who must be looked upon as an averaged man of ordinary intelligence, would re-act to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing. It is impossible to accept that a man looking at a trade mark would take in every single feature of the trade mark. The question would be, what would he normally retain in his mind after looking at the trade mark? ...... "Therefore, if there is a possibility of a mistake, if there is a likelihood of this bird being mistaken or accepted as an Eagle, that possibility itself is sufficient to entitle the Registrar to say that this trade mark is likely to deceive or cause confusion."

(18) In view of the above, I conclude that there is every likelihood that the purchasers may be misled to purchase the goods of the appellant treating them as the goods of the respondent. Learned Counsel for the appellant has contended that there is no such apprehension and the apprehension of the respondent is simply a figment of his own imagination. The purchase of the comics is admittedly by literate public. Thus it cannot be expected of them that they would be misled and would purchase the comics of the appellant considering them to be the comics from the respondent. The contention of the learned Counsel is devoid of any force.

(19) It is true that we can make distinction between a literate child and an illiterate child. However, a child is after all a child and there cannot be any dispute with regard to the fact that the judgment of a child is not right and mature enough. He is thus likely to be misled. Considering the above facts and circumstances I do not see any force in the present appeal. It is liable to be dismissed. The appeal is accordingly dismissed as such with costs.