Dharampal Premchand Ltd. vs Ganpati Wood Products
2002 Latest Caselaw 1279 Del

JUDGMENT

Dr. Mukundakam sharma, J.

1. This order shall dispose of the application filed by the plaintiff under Order 39 Rules 1 and 2 CPC. The plaintiff has filed the suit as against the defendant praying for a decree for permanent injunction restraining infringement of trade mark and copy right and also for restraining passing off by the defendant and also for payment of damages and delivery of the goods of the defendant to the plaintiff.

2. The suit is filed against alleged wrongful and illegal use by the defendant of the plaintiff's trademark 'BABA' and copy right in the artistic work denoted by trademark 'BABA' and the colour scheme of the product package owned by the plaintiff. It is stated that the plaintiff adopted the said trademark 'BABA' honestly and bonafidely in the year 1957-58 for chewing tobacco, 'quiwam', cardamom seeds, betel nuts, etc. and has been using the said trademark ever since continuously and extensively. It is also stated that the trade 'BABA' is written on the plaintiff's pouch in a unique and artistic logo script. The said device of the 'BABA' appears within a semi circular device having a white background. Products manufactured and distributed by the plaintiff under the said trademark 'BABA' are in class 34 in respect of chewing tobacco. The plaintiff also claims statutory right to the exclusive use of trademark 'BABA' being the registered proprietor of the same in India and, therefore, in addition to the common law rights that accrue to the plaintiff on account of the long and continuous use of the trademark 'BABA', the plaintiff claims entitlement to statutory right in relation to such registration. It is alleged that the defendant has adopted the trademark 'BABA' for the product Bhatti Kattha in a manner, which is extremely deceptive as it is in the same script for Bhatti Kattha/gutkha/chewing tobacco or any other allied and cognate good that is subject of ownership by the plaintiff. It is stated that the aforesaid use of the well-known trademark 'BABA' or any other identical or deceptively similar mark by the defendant conveying the same idea, in respect of goods in any form or any other cognate or allied goods, is bound to cause confusion and deception in the minds of the consuming public and the members of the trade leading them to falsely believe that such third party goods originate from the plaintiff or that such third party had trade connection or affiliation with the plaintiff or its goods amounting to passing off. It is also stated in the petition that in addition to the plaintiff's blatant and unauthorised use of the plaintiff's trademark, 'BABA', the defendant has also brazenly adopted a deceptively similar artistic work. In this respect the defendant has also copied the unique and artistic depiction of the trademark 'BABA' as well as copied the layout and colour scheme, which is distinctive to that the plaintiff. On the basis of the aforesaid statement, the present suit is filed along with the injunction application.

3. While issuing summons, notice was also issued in the application on the service of which, the defendant has filed the written statement and reply. The stand taken in the written statement and reply is that the Bhatti Kattha in respect of which the defendant has adopted the trademark 'BABA' falls in a different class that in class 31 and the same is used for multifarious purposes such as an ingredient in Ayurvedic Medicines, hair-dyes, henna and in Pans. It is stated that the products being produced and marketed by the plaintiff are quite different from Kattha being marketed by the defendant and their resultant usage being different, it is wrong on the part of the plaintiff to allege that the defendant's user of the trademark 'BABA' is malafide.

4. In the light of the aforesaid statement made in the pleadings of the parties and in the injunction application, I am required to consider and dispose of the injunction application filed by the plaintiff. During the course of the arguments, counsel for the parties, in support of their contentions, brought to my notice various decisions of the Supreme Court and of this Court in that regard. Counsel for the plaintiff relied upon the decision of this Court in Dharam Pal Satya Pal v. Janta Sales Corporationreported in 1992 (2) Arb. LR 91; Ceat Tyres of India Ltd. v. Jai Industries Services reported in 1996 PTC (16) 720 and some other related decisions of the Supreme Court to which reference shall be made hereinafter. Counsel for the defendant, however, strongly relied upon the decision of the Supreme Court in Vishnudas Trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd. .

5. There is no denial of the fact and rather it is an admitted position that the trade mark adopted by the defendant is the same as that of the plaintiff and, therefore, it is an identical trade mark with no difference in spelling at all. The goods sold by the plaintiff is sold and consumed either independently or with pan whereas the goods marketed by the defendant under the trade name 'BABA' is in the paste form and applied usually as an ingredient to pan (betal leaf) whereas the goods marketed by the plaintiff, namely, Jarda is generally consumed with betel leaf. Therefore, the goods are sold by the same shopkeeper and are displayed side by side. In fact the picture as given by the defendant on its pouch depicts the same position that both the goods are generally marketed from the same place and for the same purpose, namely, for preparation of pan. Therefore, betel leaf is the common base on which the goods of both the plaintiff and the defendant are used. Therefore, the trade channel and the class of customers is the same in respect of both the items and consumers are persons, who are common and could be illiterate persons. In the present case, not only the trade mark is same but the letter and style and design of the trade mark used by the plaintiff and the defendant is the same. Therefore, there is enough scope and reasonable possibility of deception in the present case.

6. In the case of Parle Products (P) Ltd. v. J.P. & Co., Mysore principles of safeguarding the interests of manufacturers with a prior user have been highlighted by the Supreme Court when it stated that the objective was to protect the goods of one being mistaken as for the other by virtue of similarities in design or trade mark or trading style and to come to that conclusion, it was a good principle to place them side by side to find out if there are any difference in design or not and that it would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other, if offered to him. It was also held in that case that the actual or deliberate intention to deceive need not be the there and the likelihood of confusion or deception was the guiding principle. It has also been held in a number of cases that the trade mark for which the distinction or right was staked need not have been in the market for a long time or at an extensive scale and that all that was required to be proved was that it has become a vendible article and even a single sale prior to time than the defendant would be enough. This was the view very succinctly outlined in the case of L.D. Malhotra Industries v. Ropi Industries 1976 (1) Delhi 278.

7. The Supreme Court in the case of Ruston and Hornby Ltd. v. Zamindara Engineering Co. also upheld the right of a prior user of a trade mark to seek a restraint order against another manufacturer who adopted the near similar trade mark on the goods similar to those being manufactured by the plaintiff therein on the principle of likelihood of confusion or deception arising from similarly of marks, even in a passing off action. The test held applicable for a passing off action was laid down as under:

"If the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are plaintiff's goods?"

8. It was held that the manufacturer was not entitled to represent his goods as the goods of another, and that even though even it may not be a case of deliberate intention to deceive or fraud but in the trade mark on get-up of the prior user of a trade mark has become distinctive and that there was possibility of confusion between them and the goods of the latter manufacturer, then action would lie. On facts, in the said case, it was found to be a case where there was deceptive resemblance between "RUSTON" and "RUSTAM", and the use of this bare word constituted infringement, and that even though the defendant had shown that they were using the name also as "RUSTAM INDIA" even then this addition was held to be not sufficient, to distinguish the goods from that of the plaintiff.

9. Reference may also be made to another decision of this Court in Dharam Pal Satya Pal v. Janta Sales Corporation (supra). In the said case, the plaintiff was manufacturing and selling tobacco under the trade name "RAJNI". The defendants started marketing pan masala under the said trade mark. The injunction was allowed. The learned Judge has referred to almost all the judgments on the subject in order to decide the said case. It was found by the Court that the goods marketed by the plaintiff are in the category of cognate and allied goods. Both are manufactured by the same manufacturers, are sold by the same shopkeepers, and are displayed side by side. Injunction was granted. This case appears to be similar and nearer to the facts of the present case.

10. It was sought to be argued by the counsel for the defendant that the goods of the plaintiff falls within classification 34 whereas the goods of the defendant falls within the classification 31 and, therefore, there is no similarity of the goods of the plaintiff and the defendant.

11. In my considered opinion, the same cannot be the only criteria for judging whether or not there is infringement and passing off of the trade mark.

12. In support of the aforesaid contention, counsel for the defendant relied upon the decision in Vishnudas Trading (supra). I have carefully considered the said decision of the Supreme Court. In paragraph 44 of the said decision, the Court has appropriately referred to Class 34 of Fourth Schedule to the following '34. Tobacco raw or manufactured, smokers' articles, matches.' In the said decision it was held so far groups and varieties are concerned, the said articles are differently used and they have their distinctive quality and separate identity. The said articles are also marketed as distinct articles of use in different manners. It was also held that in the common trade channel such articles are not only held different and distinct articles but are also marketed separately. It also held that snuff or quiwam are entirely distinct products and even though the said products may come under the broad classification 'manufactured tobacco', each of the said products is always held as a distinct and separate article of use having its specific characteristic.

13. However, so far quiwam and zarda are concerned, they are consumed by chewing and ingestion. The said category could also include Kattha, which is in the paste form and applied usually as an ingredient to pan whereas zarda is in the form of fine flakes (usually aromatic) is applied to pan. Such a similarity was also noticed by the Supreme Court in paragraph 45 of the said judgment. So far the facts of the said case are concerned, the same was concerned with cigarettes as against quiwam and zarda. The facts, therefore, are totally dissimilar to the facts of the present case and, therefore, they cannot be pressed into service in the present case.

14. I may also appropriately refer to the decision of this Court in Ceat Tyres of India Ltd. v. Jain Industries Services (supra). In the said decision, although the goods manufactured by the defendants had no connection with the goods marketed by the plaintiff, still injunction was granted by this Court on the ground that the common customer, who is purchasing the goods is likely to be deceived with the new products of the defendants in all probabilities considering the same as manufactured by the plaintiff because they are being marketed under the same trade mark.

15. While coming to the aforesaid conclusion, this Court discussed a number of case on the issue. In the said case, the plaintiff was trading in the trade mark of CEAT tyres whereas the defendant was using the same mark for its 'V' belt and fan belt. Injunction was granted by the Court taking that tyres are used in vehicles, fan belts are also used in vehicles and 'V' belts are also used in machines, which are used for retreading the tyres. In Jugmug Electric & Radio Co. v. Telerad Private Limited, (1978) Delhi 667, the trademark 'TELERAD' was adopted both by the plaintiff and the defendant but for different goods, namely, in respect of radio receiving sets and component parts as against the electric appliances. In the light of the aforesaid same trademark being used for different goods, the Division Bench of this Court held that there is a real tangible danger of confusion if the trademark of the appellant is continued to remain on the Register as it was found that many electrical goods shops not only sell radios but also domestic electrical appliances. In my considered opinion, the facts of that case are also similar to the facts of the present case. The same shops, which sell the goods of the plaintiff, also sell the products of the defendant, namely, Kattha. In the said case, the same shops which sell the tyres also sell 'V' belts and fan belts and, therefore, prima facie possibility of customer being confused in buying the goods of the defendants treating them to be of the plaintiff cannot be over-ruled.

16. Similar is the case in Sunder Parmanand Lalwani and Ors. v. Caltex (India) Ltd. . In the said case, the trademark 'CALTEX' was being used by one party in respect of petrol and various oil products. The other party started dealing with manufacture of watches under the same trademark. It was held by the Bombay High Court that person seeking the mark attached to watches which was a new class of goods, would presume, or was not likely to assume that they originated from the proprietor of the mark, namely, the opponents. So, the restrictions was not granted. In para 49 the Division Bench observed that in this case goods were totally different and there is no connection in the course of trade or any common trade channels and there are factors against holding that there would be any danger of deception or confusion but the trade factors cannot be ignored which tend to show that there is likelihood of creating deception and confusion. However, it was found by the Division Bench that the goods of both the nature are being purchased by a common man and as far as the trade mark 'CALTEX' is concerned, the same would confuse the common customers thinking that the new product is also being marketed by the proprietors of the same trademark 'CEAT' has achieved lot of reputation and has become very common and the plaintiff has been marketing goods under the said trademark running into substantial amounts and had incurred lot of expenditure on having wide publicity. I am of the considered opinion that on the facts of the present case, the ratio of the decision of the Bombay High Court is also applicable. The trademark of the plaintiff 'BABA' has also achieved a lot of reputation and said product is being marketed by t he plaintiff under the said trademark for a number of years giving wide publicity to it and substantial amount is spent in marketing the said product, which is indicated from the plaint and which is not disputed by the defendant.

17. In view of the aforesaid facts, I am of the considered opinion that the plaintiff has a strong prima facie case and the balance of convenience lies in favor of the plaintiff and that if such injunction is not granted, there is likelihood of the plaintiff suffering irreparable loss. Accordingly, temporary injunction is granted in favor of the plaintiff and against the defendant restraining the defendant, its partners, proprietors agents and stockists and all other acting on its behalf from using the trademark 'BABA' or any other mark or device, in any form or style, which is identical or deceptively similar for its products Bhatti Kattha, Gutka or chewing tobacco either leading to infringement of the trade mark and copyright of the plaintiff and also passing off, till the disposal of the suit.

18. Let the suit be listed on 30/10/2002 for further orders.