Borosil Glass Works vs O.P. Batra And Anr.
1998 Latest Caselaw 35 Del

JUDGMENT

S.N. Kapoor, J.

1. This third application under Order 39, Rule 4 has been moved for vacating the injunction order passed on 10th November, 1995 directing the defendant not to use trade mark 'Borosil'.

2. I have also heard the learned Counsel for the parties in respect of the following points :

1. Whether this Court while disposing of the application under Order 39, Rule 4 could reopen and modify the earlier order ?

2. Whether the plaint is liable to be rejected for want of cause of action under Order 7, Rule 11 CPC ?

3. Earlier by order dated 10th November, 1995 not only the application under Order 39, Rules 1 and 2 was allowed but also two Application Nos. 2303/95 and 4967/95 filed by the defendants were dismissed.

3.1. First the undisputed facts. It has been very fairly conceded by learned Counsel for the plaintiff that the plaintiffs are neither manufacturing nor holding any registration of trade mark Borosil in relation to Mixer-cum-grinder, Juicer, Food Processors and Washing Machine. According to plaintiffs own case they are just manufacturers of kitchenwares, tablewares, ovenwares, scientific laboratory, industrial, pharmaceutical and other technical glass and glass wares of various variety and description. According to para 5 of the plaint, the trade mark "BOROSIL" is registered for following classes and goods :

Trade Mark  

No.

Class Goods  

427793  

Small domestic utensils and containers (not of precious metals or coated therewith) glass ware-porcelain and earthenware not included in other classes

427792  

Paper and paper articles including filter paper.

427789

Scientific, electrical apparatus and instrument teaching apparatus.

427790

Surgical and Medical Instruments & apparatus.

427791

Installations and parts thereof for lighting, heating, steam generating and cooking.

"1.

defense Secretary (Shri S.K. Bhatnagar)  

12.3.1986  

2.  

Secty. (Def. Prod. & Supplies) (Shri P.C. Jain)  

13.3.1986  

3.  

Raksha Rajhya Mantri (Shri Sukh Ram)  

13.3.1986  

4.  

Raksha Rajya Mantri (Shri Arjun Singh)  

13.3.1986  

5.  

Financial Adviser (Shri C.L. Choudhry)  

13.3.1986  

6.  

Secretary (Exp.) (Shri Ganpathi)  

13.3.1986  

Finance Secy. (Shri V. Venkitaraman)  

13.3.1986  

8.  

Finance Minister (Shri V.P. Singh)  

13.3.1986  

9.  

Prime Minister as defense Minister (Shri Rajiv Gandhi)  

14.3.1986  

3.2. It is also alleged that the plaintiff is carrying on its business under the trade mark BOROSIL as mentioned above which is recognised by the members of the trade and by public. The plaintiff adopted the trade mark BOROSIL and has been using the same since 14th December, 1962.

3.3. However, it is not claimed in the plaint any where that 'BOROSIL' is an invented word. It appears that the word 'BOROSIL' may be an abbreviated version of Boor Silicate and intends to give an impression of lasting durability. It is not claimed that the plaintiffs ever produced any electric domestic appliance, which is covered under any of the classes referred to above with reference to trade mark 'BOROSIL' registered in the name of the plaintiff.

4. A preliminary objection taken by the learned Counsel for the plaintiff is that after the dismissal of the application under Order 39, Rule 4 for vacating the injunction order, the order could not be modified by this Court for it would operate as a constructive res judicata till the disposal of the matter. The order could have been modified only in an appeal and not otherwise.

4.1. In response to this argument the learned Counsel for the defendant contends that in Regent Oil Co. Ltd. v. J.T. Levesley (Lichfield) Ltd., 1966 (2) All E.R. 454, a similar question arose. In that case on December 12, 1960 the defendant proprietors of a garage entered into an agreement with plaintiff, a supplier of motor fuel, restricting the defendants during a period of eight and a half years from February 1, 1960 to purchasing the defendants' total requirement of motor fuels and other light petroleum products from the plaintiff. Before the decision in the Court of Appeal cited below the plaintiff had obtained an ex parte interlocutory injunction which was continued later by consent against contravention of the restriction in the sole agreement. There was no evidence that a restriction for a seven and a half years was no longer than was reasonably necessary to protect the plaintiffs interest. On motion to discharge the injunction in view of the subsequent decisions of the Court of appeal in Esso Petroleum Company Ltd. v. Harper Garage (Stourport) Ltd., [1965] 2 All E.R. 933; Petrolfine (Gt. Britain) Ltd. v. Martin, [1996] 1 All E.R. 176 and the Harper's Garage case, [1996] 1 All E.R. 725, Stamp. J. of the Chancery Division observed in Regent Oil Company's case as under :

"For the reasons which I have given, if the plaintiff were today applying for interlocutory relief, I should be constrained reluctantly to refuse it, reluctantly because this Court is reluctant, on an interlocutory application, not to hold a party bound to the very words of his covenant and I would have to hold that there ought not to an injunction from today until the trial. Taking the view that I do that the plaintiff has no built-in right to the continuance of the injunction which it has obtained after it has become apparent that it was founded on a decision which was wrong in law, I ought, in my view, to discharge the injunction, and this I do."

4.2. Before proceeding further it is desirable to refer Order 39, Rule 4 itself. Order 39, Rule 4 reads as under:

"Order XXXIX -- Temporary Injunctions and Interlocutory orders.

Rule 4.

Order for injunction may be discharged, varied or set aside--

Any order for an injunction may be discharged, or varied, or set aside by the Court, on application made thereto by any party dissatisfied with such order:

Provided that if in an application for temporary injunction or in any affidavit supporting such application, a party has knowingly made a false or misleading statement in relation to a material particular and the injunction was granted without giving notice to the opposite party, the Court shall vacate the injunction unless, for reasons to be recorded, it considers that it is not necessary so to do in the interests of justice :

Provided further that where an order for injunction has been passed after giving to a party an opportunity of being heard, the order shall not be discharged, varied or set aside on the application of that party except where such discharge, variation or setting aside has been necessitated by a change in the circumstances, or unless the Court is satisfied that the order has caused undue hardship to that party."

4.3. As is evident, the present case may be covered by the second proviso to Order 39, Rule 4. Consequently, it is required to be seen whether the application for vacating the order "has been necessitated by the change in the circumstances" or "the Court is satisfied that the order has caused undue hardship to that party".

4.4. While one would agree to a limited extent with the submission of learned Counsel for the plaintiff that a later judgment of the Supreme Court or a higher Court or a Division Bench or Full Court does not by itself amount to such a change in the circumstances that as of necessity the order should be vacated for the law remains the same, yet a subsequent judgment may be sufficient ground to review an earlier order. It appears that while it is true that if it was just a case of a superior Court having interpreted the law and the law having become final it would not constitute a ground for review of the judgment. But where it relates to the question of jurisdiction of Court it is a settled legal position that the order having been passed without jurisdiction could be reconsidered. (See Union of India v. Sube Ram and Ors., ).

4.5. The object of interlocutory injunction is to protect the plaintiff against the injury by violation of his rights for which he could not adequately be compensated in damages recoverable in action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The Court must weigh against one need against another and determine where 'balance of convenience' lies. [See Rampal Singh v. Rias Ahmad Ansari and Anr., 1990 Supp. SCC 726 (731)].

4.6. In Ravishanker and Anr. v. VIIth Additional District Judge, 1994 II MPLJ 200, on difference of opinion, the matter was referred to third Judge, Hon'ble Mr. justice R.C. Lahoti. Following observations in para 14 are noteworthy :

"When the Appellate Court passes an order of injunction while disposing of an appeal before it the order stands substituted in place of the order of the Trial Court. The order is passed not for the purpose of appeal not to remain operative during the hearing of the appeal. It is an order passed for the purpose of the suit and to termination with the decision of the suit. An application under Order 39, Rule 4, CPC can appropriately be dealt with by the Trial Court though the order of injunction sought to be discharged, varied or set aside by the Trial Court".

It is required to be seen whether the injunction order has caused undue hardship to the defendant.

4.7. In Arjun Singh v. Mohindra Singh and Ors., , the Supreme Court observed as under:

"13. It is needless to point out that interlocutory orders are of various kinds; some like orders of stay, injunction or receiver are designed to preserve the status quo pending the litigation and to ensure that the parties might not he prejudiced by the normal delay which the proceedings before the Court usually take. They do not, in that sense decide in any manner the merits of the controversy in issue in the suit and do not, of course, put an end to it even in part. Such orders are certainly capable of being altered or varied by subsequent applications for the same relief, though normally only on proof of new facts or new situations which subsequently emerge. As they do not impinge upon the legal rights of parties to the litigation the principle of resjitdicata does not apply to the findings on which these orders are based...........smooth, orderly and expeditious disposal of the suit. They are interlocutory in the sense that they do not decide any matter in issue arising in the suit, nor put an end to the litigation.........The principle underlying the distinction between the rule of res judicata and a rejection on the ground that no new facts have been adduced to justify a different order is vital. If the principle of resjudicata is applicable to the decision on a particular issue of fact, even if fresh facts were placed before the Court, the bar would continue to operate and preclude a fresh investigation of the issues, whereas in the other case, on proof of fresh facts, the Court would be competent, nay, would be bound to take those into account and make an order conformably to the facts freshly brought before the Court.

4.8. Thus it is apparent from the foregoing discussion that interlocutory order of ad interim injunction neither operates as res judicata, nor so final and binding that it cannot be modified or vacated at all. But the Courts should adopt this kind of procedure in rarest of rare cases where it is apparent that the plaintiff has no case at all and not simply because the defendants are repeatedly and intermittently disputing the claim of the plaintiffs. While proximate and near finality and binding nature of the interlocutory orders is not supposed to be lightly interfered with, yet if it becomes apparent that if there is no cause of action, this Court is duty bound to vacate the stay.

5. An action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to use the trade mark in relation to goods, the use of trade mark of the plaintiff in relation to goods being sine quo non in the action, for Section 29(1) refers to infringement "in relation to any goods in respect of which trade mark is registered". The considerations-relevant in the passing off action are somewhat different than they are in action for infringement of trade mark under the Trade Marks Act. In an action for passing off in common law, remedy being an action in substance of deceit under the Law of Torts and arises "when a person passing off his goods as those of another". (See Bengal Waterproof Ltd. v. Bombay Waterproof Mfg. Co., ). In a passing enaction, use of trademark of the pontiff is not sine quo non; it is deceit in passing off. The onus in passing off action rests on a plaintiff to prove whether there is likelihood of the defendants goods being passed off as the goods of the plaintiff. If the general get up of the trade mark is different, as the meagre material (of Bengal like board) in the trade, it could not be held to be a case of passing off. But it was held to be sufficient to refuse registration relating to similar goods of sewing threads. See N.S. Threads Company Ltd. v. J. Chadwick & Bros., 1953 SC 357. Neither there is any possibility nor likelihood of any deception nor of causing confusion in absence of "original goods".

5.1. There is yet another aspect. When the Trade Marks Act also confines Trade Marks in relation to goods and not independent of goods then it becomes all the more difficult to accept the proposition that in a passing off action there would be deception and confusion even where the plaintiffs are not manufacturing or marketing goods and products manufactured by the defendants.

5.2. In infringement action as well as in an action for passing off, born, trade mark has to be related to the goods which are being manufactured by the plaintiff. In an action on passing off and even in case of registered trade mark, goods are at least proposed to be manufactured. In absence of non-manufacturing and non-marketing of any product accompanied by absence even such proposed, there is no 'original' to be imitated with the purpose of cheating. Cheating being an essence of "passing off" action there can be possibility of passing off in the aforesaid situation.

5.3. In this it is apparent that the learned Counsel for the defendant has moved this application on the strength of the judgment of the Supreme Court in Vishnudas Trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd., 1997 PTC (16) SC 512 decided by Supreme Court. In that case a rectification of the trade mark was sought. After referring to a catena of judgments the Supreme Court held as under :

45. "...In our view, if a trader or manufacturer actually trades in or manufacturers only one or some of the articles coming under a broad classification and such trader or manufacturer has no bonafide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers to get registration of separate and distinct goods which may also be grouped under the broad classification. If registration has been given generally in respect of all the articles coming under the broad classification and if it is established that the trader or manufacturer who got such registration had not intended to use any other article except and articles being used by such trader or manufacturers, the registration of such trader is liable to be rectified by limiting, the ambit of registration and confining such registration to the specific article or articles which really concern the trader or manufacturer enjoying the registration made in his favour. In our view, if rectification in such circumstances is not allowed, the trader or manufacturer by virtue of earlier registration will be permitted to enjoy the mischief of trafficking in trade mark. Looking to the Scheme of the registration of trade mark as envisaged in the Trade Marks Act and the rules framed thereunder, it appears to us that registration of a trade mark cannot be held to be absolute, perpetual and invariable under all circumstances. ...It is also to be noted that the expression "goods" and "description of goods" appearing in Section 12(1) of the Trade Marks Act indicate that registration may be made in respect of one or more goods or of all goods conforming a general description. 'The Trade Marks Act has noted distinction between description of goods forming a genus and separate and distinctly indentify able goods under the genus in various other Sections, e.g., goods in same description in Section 46, Sections 12 and 34 and class of goods of Section 18, Rules 12 and 26 read with 4th Schedule to the rules framed under the Act.

46...

47. Since such registration had not been done, the rectification of the registration by limiting or confining the registration of trade mark of the respondent Company to particular goods, namely, cigarettes, in the facts and circumstances of the case, cannot be held as illegal or unjustified.

48...As in the facts and circumstances of the case, the rectification of the trade marks registered in favour of the respondent Company since allowed by the Assistant Registrar of Trade Marks was valid and also justified, such order in our view, should not have been interfered with in appeal. We, therefore, allow these appeals, set aside the impugned judgments of the High Court and restore the order of rectification passed by the Assistant Registrar of Trade Marks, Madras. By way of abundant caution, it is expressly made clear that we have no expressed any opinion on the claim of registration of the trade mark "charminar" in favour of the appellant for quiwam and Zarda being manufactured and traded by the appellant. In the facts of the case, there will however be no order as to costs.

5.4. It may further be mentioned that in United Brothers v. United Traders decided on 20th January, 1982 reported in 1997 PTC (17) 603, the plaintiffs (United Brothers) were registered proprietors of the trade mark 'United' registered under No. 274649 in Class 21 in respect of aluminium hollow ware utensils for household use. The plaintiffs were manufacturing and selling pressure cookers, different kinds of tiffin box and other allied products. The defendants were manufacturing and selling table were, i.e. spoons, forks and knifes under the trade mark 'United', the trade name of the defendants being 'United Traders'. The Single Judge of this Court took the view that since the plaintiffs never manufactured and sold spoons, forks and knifes, and forks manufactured by the defendants and the forks, knifes and spoons not being the goods allied or cognate to the goods of the plaintiff, the sale of the said goods by the defendants could in no way be considered by the buyer as the goods of the plaintiffs. The goods manufactured by the plaintiff and defendant might well be sold in the same shop or the counter but the said goods are so different in shape and use that there cannot be any confusion in the mind of purchaser that the goods manufactured by the defendants are of the plaintiffs.

5.5. From the foregoing it is apparent that it cannot be said that any perceptible change has been noticed. It is not a subsequent expression of a different view. It is notable that when the order dated 10th November, 1995 was passed, the judgment in Vishnudas's case (supra) had not been delivered, for it was delivered on July 9, 1996 and was reported in 1996 PTC 16 SC at 512. The Supreme Court, as pointed out by learned Counsel for the plaintiff, has not considered the question in relation to infringement of trade marks, passing off, and defensive registration and has refrained from expressing any opinion on the claim of registration of trade mark "Charminar" in favour of the appellant for Quiwam and Zarda being manufactured and traded by the appellant. But, at the same time, if the avowed object of the Act is neither to create and permit "monopoly in respect of all the articles which also tall under the said broad classification and by that process preclude the other traders or manufacturers to get registration of separate and distinct goods", nor to permit "the mischief of trafficking in trade mark", then it is virtually difficult to have a different view in relation to the present case.

5.6. Recently in Roshan Lal Oil Mills Ltd. v. Assam Company Ltd., 1996 PTC (16) P. 699 again dealt with a similar type of case. In that case the trade mark of the plaintiff was 'JUMBO' lable with a device of Aeroplane in relation to edible oils (Mustard Oil). While the defendants were dealing in Tea of any other allied and cognate goods under the trade name of 'JUMBO' lable. The learned Single Judge after considering a number of cases came to the following conclusion :

"In my opinion it could be said that there is an innocent resemblance of the word 'JUMBO' between the two trade marks but it cannot be said that the defendants have deceptively copied the trade mark in its letter and its essential features. It appears to me the trade mark of the plaintiff denotes 'JUMBO' aeroplane whereas that of the defendant denotes 'JUMBO' elephant. The idea is to convey superpower or strength in edible oils and tea respectively and therefore, it cannot be said that there is an imitation by the defendant of the plaintiff's trade mark and that the defendant is using the same with the sole object of diverting the business of the plaintiff.

On analysis of all decisions placed before me including the decision in Vishnu Das Trading (supra) wherein it is stated by the Supreme Court that if a trader or manufacturer trades in one or some articles coming under a broad classification, such trader or manufacturer cannot be permitted to enjoy monopoly and applying the said principles of law to the facts of the present case, I am prima facie of the opinion that issuance of interim injunction at this stage is not called for in the present case. Accordingly, the application filed by the plaintiff and registered as I.A. 8444/1991 stands dismissed. It is made clear that the findings arrived at by me herein are my tentative and prima facie opinion and shall not be treated as my final and conclusive opinion on the merits of the case."

5.7. Phonetic similarity alone may be sufficient in allied and cognate products for the purpose of passing off action but not in cases of totally unrelated products. In Tube Investments of India Limited v. Trade Industries Rajasthan, 1997 PTC (17) 655 (relied upon by the plaintiff), the plaintiff (petitioner) was the registered proprietor of trade mark II in respect of bicycle and bicycle parts. The defendant (respondent) was using deceptively similar trade mark in marketing in saddle covers used in bicycle. Supreme Court observed that "the visual similarity between the two marks coupled with the fact that the respondents marked is used on bicycles saddle covers, prima facie, paved a real danger that the product of the respondents can be passed off as product of the appellants. Use of the mark by the respondent on these goods falling in Class 12 is prima facie violative of appellant's rights in respect of their registered trade mark for goods in Class 12". In the present case, use of the mark by defendant is neither on the goods of same class, nor the use relate to allied and cognate goods, nor the trade channel is the same, as would be in the case of bicycle and bicycle parts and saddle covers. Consequently this authority does not advance the case of the plaintiff.

6. In Vishnudas's case (supra) the word 'charminar' was being used by the two traders in respect of different goods and that led to the above said judgment. While Vazir Sultan Tobacco Company Limited has been manufacturing cigarette under the brand name of charminar and got the same registered and did not manufacture anything other than cigarette during all these long years. The appellant Vishnudas was manufacturing Quiwam and Zarda since 1963 and has been using the same trade mark, namely, 'charminar'. So the facts of the case of Vishnudas (supra) and the present case are similar with slight variation for that matter related to rectification of the trade mark and this matter relates to passing off. The facts of this case are also similar to United Brothers case (supra) and Roshan Lal Oil Mills Ltd. (supra).

6.1. Learned Counsel did refer to a number of cases indicating that the Courts have granted stay also in those cases where the goods were different, and there could be deception, likely confusion in the light of trade connection. He referred to the following cases:

1. Corn Products Refining Company v. Shangrila Food Products, ,

2. Dunlop Pneumatic Tyre Company Ltd. v. The Dunlop Lubricant Company, 16 CPC 12,

3. Eastern Photographic Materials Company Ltd. and Another v. The John Grifith Cycle Corporation Ltd. and Cycle Company Ltd., 15 RPC 105,

4. Bajaj Electricals Limited, Bombay v. Metals & Allied Products, Bombay and Another, ,

5. Daimler Benz Aktegesslls chaft v. Hybo Hindustan, ,

6. Kamal Trading Company and Others v. Gillette U.K. Ltd., 1988 IPLR 135.

7. L.R.C. International Limited and Another v. Lilla Edets Sales Company Ltd., 1973 R.P.C. 560,

8. Lego System Aktieselskab and Anr. v. Lego M. Lemetstrich Ltd., 1983 Fleet Street Reports 155,

9. Rawal Industries (P) Ltd. v. Duke Enterprises and Ors., 1975 IPLR 121,

10. Ceat Tyres of India Ltd. v. Jai Industrial Services, 1996 PTC 720.

6.2. It appears that two views are possible about the deception; first in relation to goods and the second without there being any relation to the goods. Since both views are possible and the plaintiff may have a right or may not have right, title and interest accordingly, it would not be appropriate to reject the plaint for want of cause of action by adopting a different line of approach in view of the preponderance of the authorities. This may be one approach. In Vishnudas's case (supra) a different view has been taken on account of the specific provisions of the Trade and Merchandise Marks Act, 1958. The points which have been considered in Vishnudas's case. United Brother's case and Roshan Lal Mills case had not been considered with reference to specific provisions or specific aspect of cheating by deception so pointedly in earlier cases.

6.3. It may further be mentioned that there could be two kinds of cheating, deception or causing confusion, one just by using the trade name of another and another is just producing and marketing the goods of inferior quality and selling it by using the trade mark of the plaintiff and passing it as the goods of the plaintiff. This is not a second kind of case. There can be a possibility of deception in first kind of cases by showing that the products belong to a particular group of manufacturers without there being any relation with them. If it purports to indicate even a trade connection then it may possibly be said that because of trade connection the inferior goods of the defendant may be passed of as the goods of the plaintiff.

6.4. Supposing for the sake of arguments one takes a different view on settled legal proposition it would not be appropriate for this Court to take a different view even on tentative findings of fact given and mentioned in the order dated 10th November, 1995. As, two views are possible even on the basis of an admitted facts, it would not be proper to say that the plaintiff has got no cause of action at this stage. Accordingly it is not possible to accept the contention of the learned Counsel for the defendant for rejecting the plaint.

6.5. In so far as the legal proposition is concerned in certain extraordinary circumstances proviso to Order 39, Rule 4 can certainly be invoked on the ground that vacating of the order "has been necessitated by the changes in the circumstances" or "the Court is satisfied that the order has caused undue hardship to that party". So far as the changed circumstances are concerned the submissions of learned Counsel for defendants cannot be accepted in view of the preponderance of the authorities and the fact that this case does not relate to rectification but to passing off. It may further be mentioned that the Supreme Court by way of abundant caution did not like the idea to express any opinion on the claim of the registration of the trade mark Charminar' in respect of Quiwam and Zarda in Vishnudas's case. Where two views are possible it would be highly inappropriate to vacate the confirmed stay on account of subsequent judgment which is not directly related with passing off and in absence of a clear cut case of want of cause of action. Consequently neither the aforesaid alleged changed circumstances justify the vacation of the stay and rejection of the plaint nor this Court is in a position to say that the order has caused undue hardship to the defendant. Obviously, both the points in issue are decided against the defendant. Accordingly I do not find any force in I. A. 2754/97 and dismiss the same.

S. No. 484/95 & LA. 8056/95

The defendant shall file reply to the Contempt Application No. 8056/95 within two weeks.

Both the parties are directed to file original documents within four weeks.

List the matter before Joint Registration 24th March, 1998 for admission/denial of documents.

List the matter in Court on 15th April 1998.