M/S Mrf Limited vs Mr. Mukesh Chawla
2001 Latest Caselaw 1376 Del

ORDER

J.D. Kapoor, J.

1. The plaintiff claims to be one of the largest and most reputed automotive tyre/tube companies in India with a network of five factories. In 1971, the plaintiff adopted and independently used trade mark 'MRF' in a unique connected style of writing with two sets of parallel lines on both sides of the lettering The 'MRF LETTER DEVICE was conceived and designed by artists/employees of the plaintiff. Since then, it has been using the said mark.

2. The trade mark has been registered in respect of various classes of goods, details of which have been provided in para 7 of the plaint. The sale figures of the goods appearing under the trade mark 'MRF ZIGMA' have been provided in para 9 which run into crores. However, 'MRF ZIGMA' has not been registered till date though application for registration was moved on 2.8.1988.

3. It was in May, 1993 the plaintiff learnt that defendant was manufacturing and selling electric horns under the plaintiff's trade mark 'MRF ZIGMA' and the plaintiff purchased through a notary public one carton containing 52 pieces of electric horns bearing the trade mark 'MRF ZIGMA'. Investigations revealed that the defendant does not possess any plant or machinery or power press. It gives out contracts to local manufacturers for the supply of various parts of the horn on which specified numbers of shells are thus embossed.

4. The plaintiff has filed this suit as the owner of the trade mark and its prior user as act of defendant amounts to infringement of the plaintiff's trade mark as also passing off their goods as that of the plaintiff's and seeks permanent injunction against the defendant from using registered trade mark 'MRF' by use of the impugned trade mark 'MRF ZIGMA' or any other logo/mark or device deceptively similar to the plaintiff's trade mark 'MRF' or 'ZIGMA'.

5. As regards prayers (iv) to (vi), there is no justification for allowing it as on the first date, plaintiff was granted ex-parte injunction which was duly complied with and therefore no useful purpose would be served by decreeing the suit in respect of prayers (iv) to (vi).

6. In spite of having been served, defendant chose not to contest the suit and was consequently proceeded ex parte.

7. In order to establish its claim over the registered trade mark 'MRF' and particularly trade mark 'MRF ZIGMA', plaintiff has proved following documents by way of evidence.

(i) Exhibit A, registration certificate dated 5.10.1993 with regard to trade mark 'MRF' issued under Trade and Merchandise Marks Act, 1958; (ii) Exhibit B, cartoon of defendant's product bearing trade mark MRF ZIGMA; (iii) Exhibit C, report of the notary as to the purchase of the goods of the defendant bearing trade mark MRF 'ZIGMA'; and (iv) Exhibit D, the affidavit of notary who has purchased the aforesaid goods of the purchased.

8. Apart from these documents, three affidavits have also been filed, two of which are by the employees of the plaintiff company and third one is by the employee of the Company who had coined, conceived and designed the mark 'ZIGMA'.

9. As is apparent from the aforesaid facts, there is twin violation of law. First the registered trade mark 'MRF' has been infringed and second by using 'MRF ZIGMA' mischief of passing has been committed.

10. As regards offence of infringement it is complete when limitation of registered trade mark in the course of trade in relation to goods for which mark is registered. It is not necessary that offending mark should be identical or similar with the registered mark. Even deceptive similarities or near similarities show colourable imitation amount to infringement. Infringement of trade mark is a statutory remedy and in order to avail, the plaintiff has to prove its total and exclusive right to use the trade question in question. In the instant case, mark 'MRF' is identical in the trade mark 'ZIGMA'. 'MRF ZIGMA' has been registered as trade mark.

11. Non-registration of trademark does not mean that a person has no remedy. Section 27 of the Trade and Merchandise Marks Act, 1958 provides that passing off goods as the goods of another person does affect the rights of the person whose goods has been passed of.

12. In the passing off, plaintiff has to prove the following requirements as proved in Hindustan Radiotors Co. V. Hindustan Radiotors Ltd., :-

"(i) That the plaintiff has been using its trading style and trade mark for quite a long period and continuously, whereas the defendant has entered into the said field only recently;

(ii) that there has not been much delay in the filing of the suit for injunction by the plaintiff;

(iii) that the goods of the plaintiff have acquired distinctiveness and are associated in the minds of the general public as goods of the plaintiff;

(iv) that the nature of activity of the plaintiff and that of the defendant are the same or similar;

(v) that the goods of the parties, with which the trade mark of the parties, with which the trade mark of the plaintiff is associated, are the same or similar;

(vi) that the user of the same trade mark or trade name by the defendant is likely to deceive and cause conclusion in the public mind and injury to the business reputation of the plaintiff;

(vii) that the sphere of activity and the market of consumption of goods of the parties are the same;

(viii) that the customers of the plaintiff inter alia include uneducated, illiterate and unwary customers who are capable of being deceived, confused or misled."

13. I am satisfied from the documents and the contents that the plaintiff has succeeded in establishing its case for permanent injunction as per prayers (i) to (iii) only. As regards prayers (iv) to (vi), there is no justification for allowing it as on the first date, plaintiff was granted ex-parte injunction which was duly complied with and therefore useful purpose would be served by decreeing the suit in respect of prayers (iv) to (vi).