Marc Enterprises Pvt. Ltd. vs Five Star Electricals (India) And ...
2008 Latest Caselaw 435 Del

ORDER

Shiv Narayan Dhingra, J.

IA No. 5911/2005 in CS(OS) No. 1059/2005 and IA No. 1193/2006 in Counter Claim No. 1349/2005

1. The plaintiff filed the instant suit under Sections 134 and 135 of Trademark Act, 1999 as well as under Section 51 of Indian Copyrights Act seeking permanent injunction against the defendant alleging therein that the defendant was infringing the trademark and logo of the plaintiff viz 'Marc'.

2. It is submitted by the plaintiff that the plaintiff conceived and coined word 'Marc' and started using it as its trademark as well as logo since 1981 and developed the goodwill and reputation under the above trademark and logo. The plaintiff had become the owner of the trademark and logo because of exclusive use and the goods of the plaintiff bearing this trademark were distributed in major parts of the country. The plaintiff's trademark/logo 'Marc' was duly registered under the Trademark Act under No. 420735B in Class '9' and under No. 420736 in Class '1' and 420737B in Class '7' on 16.4.1984. The trademark was registered in respect of the goods under Class '7', '9' and '11'. The trademark was renewed from time to time and the registration was still valid. By virtue of the registration of this trademark in favor of the plaintiff and by way of long use, the plaintiff had exclusive right over the trademark within the meaning of Section 28 and 29 of the Trademark Act and the plaintiff filed number of applications for registration of the trademark in different classes. The plaintiff has been advertising and promoting this trademark through different means and has given wide publicity to this trademark through newspapers, trade literatures and trade hoardings. The plaintiff also gave its sale figures starting from 1981-82. The total annual sale figure during 1981-82 was Rs. 9,75,822/- and the sale figures for 2003-2004 was Rs. 14,65,02,583/-. There has been gradual increase in the sales from 1981 to 2004 It is stated that the plaintiff was using highest standards of business and quality and the trademark/logo 'Marc' of the plaintiff has become distinctive indicative of the plaintiff and the plaintiff's goods and business. It is alleged that defendant No. 1 and their authorized dealers were using the trademark/logo 'Marc' in an identical and deceptively similar manner as being used by the plaintiff with the same get up and make up for the goods like electrical switches and accessories. Both plaintiff's and the defendants' goods and business were same or similar and they are dealing with same line of business in the market. The trademark of the defendant was bound to cause deception and confusion in the normal course of business activities of the plaintiff. The defendants adopted the trademark/logo 'Marc' out of greed with a view to take advantage of the goodwill and reputation of the plaintiff and to create a confusion amongst the market and the consumers. The trademark adopted by the defendants amounted to indulgence in unfair trade and competition and was a dishonest, tainted and ill-motivated. The defendants were trying to cash in on the reputation and goodwill of the plaintiff and in turn were damaging the reputation of the plaintiff. The defendants were guilty of infringement of the trademark and logo of the plaintiff and were also passing off of their goods as those of the plaintiff thereby the defendants were violating not only the rights under the Trademark Act, 1999 but also common law rights of the plaintiff. Due to the activities of the defendants, the plaintiff was suffering tremendously in the business and goodwill and intending buyers were being deceived. The plaintiff came across the goods of the defendants towards the end of March 2005 being imitating trademark and the plaintiff inquired in the market at its level that the defendant had started commercially using the trademark only recently and the defendants were carrying their activities in a clandestine and deceitful manner. It is alleged that the defendants were not issuing any formal bills or invoices.

3. In the application under Order 39 Rule 1 and 2 CPC, the plaintiff sought ad interim injunction against the defendants restraining them from using the trademark /logo 'Marc' or any other trademark or logo identical or deceptively similar to that of the plaintiff.

4. In written statement filed by the defendants, the defendants claimed that the plaintiff was manufacturing certain electrical accessories and gadgets under the Trademark 'Marc' whereas the defendant No. 1 was using the trademark in respect of switches, sockets, holders, three pin plugs etc. The trademark of the defendant No. 1 was entirely different in writing, style, get up, layout, logo and colour combination from that of the plaintiff. There was no infringement of the trademark of the plaintiff, neither action for passing off of the goods was maintainable. The documents filed by the plaintiff show that the plaintiff was manufacturer of water heaters and was marketing fans under the trade names like Usha, Innova etc. The defendants were neither manufacturing nor marketing electrical accessories as the one being marketed by the plaintiff, therefore, no passing off action lies against the defendants. It is further submitted that the plaintiff had no right or title to sue the defendants since the trademark 'Marc' was registered in the name of the defendant under Number 1012263 in Class '9' since April 2001 in a different artistic style get up and lay out, which was entirely different from that of the plaintiff. The plaintiff was neither manufacturing nor marketing electrical accessories like switches, holders, distribution boxes etc, being manufactured by the defendants and the goods of the plaintiff and defendants were altogether different. It is further submitted that the word 'Marc' being used by the plaintiff as well as by the defendants was not an invented or coined word and it was only a mis-spelt form of the original word 'mark' and word 'Marc' is in common use by several manufacturers in respect of the electrical and electronic appliances/goods and plaintiff cannot claim to be the sole proprietor of the word 'Marc'. The defendant had applied for trademark 'Marc' for electrical switches, holders, sockets etc in Class '9' on 28.5.2001. The defendant received examiner 's report on 21st September 2002. The defendant filed application of user and the application of the defendant was advertised in Trademark Journal Mega-14 dated 25.10.2003. There was no opposition to the registration by the plaintiff or anyone else within the meaning or scope of Section 21 of the Trademark Act and, therefore, defendant became the registered owner of the trademark 'Marc' for the goods being manufactured by the defendants within the meaning of Section 28. The plaintiff had no exclusive right to use the word 'Marc' in respect of the goods to that of the plaintiff. All allegations made by the plaintiff against the defendants were denied. It was denied that the defendant was selling the goods without valid invoices and vouchers or that the defendants were infringing the trademark and logo of the plaintiff or passing off its goods as that of the plaintiff. It is submitted that the defendants were manufacturing their goods as per ISI standard and were registered with ISI. They were manufacturing the standard quality products and they have a stake in the quality of the goods and the trademark 'Marc' in respect of the goods they were manufacturing. The defendant No. 1 has been exclusively and uninterruptedly using the trademark and logo 'Marc' since April 2001 and the claim of the plaintiff was false.

5. The defendants also filed a counter claim against the plaintiff giving same facts and praying an injunction against the plaintiff that the plaintiff be restrained from using the trademark and logo 'Marc' in respect of the goods like electrical switches, plugs, electrical holders, change over, distribution boxes etc. with trademark 'Marc'. Similarly an application under Order 39 Rule 1 and 2 has been made by the defendants for permanent injunction has been made in the counterclaim.

6. I have perused the documents filed by the both parties. The documents filed by the plaintiff would show that the plaintiff was using the word 'Marc' for ceiling fans, exhaust fans, wall mounted fans, water heaters, oil heaters and room heaters. The entire trade literatures of the plaintiff is in respect of these items only. The plaintiff has also filed the defendant's catalogue in respect of switches which show that the defendant was using the trademark 'Marc' for electrical switches, plugs, etc. In the registration certificate filed by the plaintiff, different items for which it got the trademark registered are given and these items are plugs, pressure cookers, milk cookers, table lamp, electrical fans, bulb holders, lighting fixtures and fittings installation, Florance tube etc. However, except for geysers, room heaters, oil heater, fans, literature of invoices of no other item has been placed on record being marketed or manufactured by the plaintiff. The defendant, on the other hand, has placed on record its own trade literatures and packing materials in respect of the goods being manufactured by it and the defendant is manufacturing electrical switches, cut outs, plugs, holders, change overs, regulators, sockets, tubes strips etc. The defendant has also placed on record the registration of trademark 'Marc' under Class '9' for its goods. It has also placed on record the other documents showing that the trademark 'Marc' was not a coined word and was a commonly used word by several other companies and manufacturers. A search from ROC has been placed on record showing that at least 54 companies were having the word 'Marc' as their first trade name coupled with other names and words. The plaintiff has also placed on record Internet search in respect of the use of word 'Marc' by other manufacturers and there are several manufacturers who use word 'Marc' either as a trade name or as logo or as trademark in respect of different goods. He has placed the list of at least 20 such manufacturers who were using the trademark/logo of trade name 'Marc' for various goods.

7. It is argued by counsel for the plaintiff that the plaintiff company M/s Marc Enterprise Private Limited was using the trademark/logo 'Marc' for last 25 years and has earned goodwill and reputation. The trademark of the plaintiff was registered with the Registrar even for those items which were being manufactured by the defendant and since the plaintiff was a registered proprietor of the trademark, the subsequent registration of the trademark obtained by defendant, does not give a right to the defendant to use the trademark 'Marc' for similar or same goods. The plaintiff was manufacturing electrical appliances and the goods being manufactured by the defendant were also electrical items and there was every possibility that the consumer would consider that the goods manufactured by the defendant were goods of the plaintiff. The plaintiff being the registered proprietor of the trademark has exclusive right to use the trademark in respect of the goods and services in respect of which the trademark was registered.

8. On the other hand, counsel for the defendant has argued that the plaintiff was not manufacturing any of the items being manufactured by the defendant. The plaintiff has not placed on record a single document showing that it has sold switches, holders, switch overs, plugs, sockets etc. and all invoices and documents placed on record are in respect of electrical appliances like heaters, fans etc. Since the trademark of the defendant was also registered, the plaintiff cannot claim any exclusive right to restrain the defendant from using the trademark 'Marc' for its own goods. It has also been submitted that the visual representation of the trademark by the defendant was entirely different to that of the plaintiff qua colour scheme and other aspects are also quite different.

9. A comparison of the trade literatures placed on record by the plaintiff with that of the defendant would show that the defendant is not copying the style and trademark of the plaintiff. While in case of plaintiff, all the letters are of same height and written in a plain simple and bold manner and there is a circle before word 'Marc' wherein word 'M' is made at the bottom of the circle in an artistic manner. The literatures of the defendant shows that the defendant has used the word 'Marc' in an altogether different manner. The first and last word are of the same height and in between the two words 'a' and 'r' are half the size and width and above that is a 'thunder' sign and the words 'tm' are written above the word 'c'. There is no circle before 'marc' The trade literatures also shows that defendant has shown only those items which are being manufactured by the defendant like electrical switches, sockets, switch over, regulators etc. There is no similarity either qua colour combination or visual representation of the two marks. The plea of the plaintiff that the defendant was copying its logo and had also copied the colour combination, colour scheme, is prima facie baseless.

10. It is an undisputed fact that the defendant was also a registered proprietor of the trademark 'Marc' and it was being used by defendant for different goods. In P.M. Diesels Pvt. Ltd. v. Thakural Mechanical Works, PTC (Supp.) (2) 863 (Del.), this Court, inter alia, observed as under:

15. In the present case the plaintiff is the registered proprietor of the trademark 'Field Marshal', in respect of diesel oil engines or parts thereof. The defendants, on the other hand, are also the registered proprietor of the trademark 'Field Marshal', but in respect of centrifugal pumps etc. Inasmuch as both the plaintiff and the defendants are the registered proprietors of the trademark which are identical, namely 'Field Marshal' the provisions of Section 28(3) of the Act would be applicable to the present case. By virtue of this provision, the exclusive right to use the trademark 'Field Marshal', shall not be deemed to have been acquired either by the plaintiff or by the defendant as against each other, but both the plaintiff as well as the defendant have otherwise the same rights as against other persons as they would have if they were the sole proprietors. Section 28(3) therefore, protects the proprietory rights of both the plaintiff as well as the defendant. They would be entitled to take action against anyone, if the trademark is infringed, but neither the plaintiff nor the defendant are entitled to take action against each other because both of them are registered proprietors of identical trademark, though in respect of different types of goods.

16. Learned Counsel for the plaintiff sought to reply upon a decision in the case of the Valentine Extract Company Limited (1901 (18) RPC 175) so as to contend that an injunction can be issued restraining the registered owner of a trademark from using the said mark. The head note of the said report reads as follows:

V, in 1897, registered three Trademark, each consisting of the word

'Valtine' for all goods in Classes 3 and 42, and in Class 43 for beer and spirits, and purported to assign them to a Limited Company formed to carry on the business of meat extract manufacturer, with his good will, if any. Another Company obtained an injunction restraining the Limited Company from selling meat extract or meat juice under the name 'Valtine' and subsequently moved to remove the marks from the Register of Trade Marks, the grounds of the application being that at the date of the assignment V. had no goodwill to assign, that the marks were deceptive, and had not been used except for meat extract. An Order was made moving the marks from the Register with costs.

17. In my opinion, the aforesaid decision can be of no assistance to the plaintiff. Firstly, Mr. Justice Farewell of the Chancery Division had no occasion to consider or deal with a provision similar to Sections 28 and 31 of the Trade and Merchandise Marks Act, 1958. The submission of Mr. Anand, learned Counsel for the defendant is that in fact the Trade and Merchandise Marks Act applicable in England at that time did not contain a provision similar to Sections 28 and 31 of the Indian Act. Secondly, no contention was raised before the Court in Valentine's case that an injunction cannot be granted restraining the registered owner from using the trademark.

11. In Jindal Industries Limited v. Nirmal Steel Tubes Pvt. Ltd. 1995 PTC 75 this Court refused to issue injunction against the defendant having trademark 'Nirmal' shown across the map of India in oval shape whereas the trademark of the plaintiff was 'Jindal' written across the map of India in Oval shape, since defendant was registered owner of trademark.

12. In Tee Cee Hosiery Works v. Grover Sons, FAO 97/1987, 2004(29) PTC 532 (Del.) defendant was the registered proprietor of trademark 'SPLASH'. This Court held that no injunction would lie against the appellant since the appellant was holding a registered trademark in its name and the remedy available to the respondent was to have the trademark cancelled.

13. The plea of the plaintiff is that the plaintiff was the registered proprietor of trademark in Class '9', through the defendant was also a registered proprietor of same trademark for Class '9', but since the plaintiff's trademark was registered earlier in time, the defendant should be restrained from manufacturing the goods. If the plaintiff had been manufacturing the same items as were being manufactured by the defendant, the plaintiff would have a case. In the instant case, however, plaintiff is not manufacturing the goods which were being manufactured by the defendant. Even if the plaintiff has got the trademark registered for a class of items, the plaintiff was not using this trademark for the goods which were being manufactured by the defendant and the defendant, therefore, cannot be restrained from being using the trademark 'Marc' for the goods manufactured by it.

14. In Sona Spices Pvt. Ltd. v. Soongachi Tea Industries Pvt. Ltd. 2007 (34) PTC 91(Del.) the plaintiff was the owner of registered trademark 'Sona' in Class '30' but was using it for spices only whereas the defendant was also registered trademark owner of trademark 'Sona' in respect of class '30' and was using it for Tea and other beverages. The trademark of the plaintiff was registered in October, 1980. The trademark of defendant was registered in respect of Tea in June 1983. The plaintiff contended that it was prior user of trademark 'Sona' and has commenced its business sometime in 1975 and defendant was passing off its tea as that of the plaintiff. This Court observed that plaintiff has not made out a prima facie case for interference even though plaintiff may be entitled to say that its user of trademark 'Sona' can extend beyond spices such as tea but the plaintiff has not utilized its trademark for manufacture of tea, prior to 1993 while the defendant was manufacturing the tea much prior to 1993 i.e. since 1978-79 and was user of trademark 'Sona' in respect of Tea. The plaintiff had taken no steps to protect its interests in respect of trademark 'Sona' regarding manufacture and sale of tea. The Court, therefore, held that there was no case in favor of the plaintiff and refused to grant injunction to the plaintiff against the use of the trademark 'Sona' by defendant.

15. In Canon Kabushiki Kaisha v. B. Mahajan and Ors 2007 (35) PTC 265(Del) the applicant sought interim injunction against the trademark and copyrights of mark 'Canon' used for imaging equipments and information systems alleging that defendant was using the trademark 'canon' for similar style and get up in goods consisting of nuts, bolts and fasteners etc. This Court observed that while considering the action of passing off, the Court has to keep in mind if there was likelihood of even in the minds of the customers. If there was dissimilarity in the goods and services, the possibility of confusion and suspicion would normally be less. This Court also observed that the plaintiff in fact has not used its registered trademark in respect of the goods falling in Class '6' and '20' and, therefore, there seems to be no force in the defendants submission that the registration obtained by the plaintiff is liable to be taken off the register under Section 47 of the Trademarks Act because of its use. The defendants had been using the trademark 'canon' as part of their trademark since 1995 for fasteners, nut, bolts and the application of the defendant was also advertised in trademarks journals based on users. The defendant had also participating in various exhibitions and openly using the the mark 'canon' as part of their trade name and style and the plaintiffs did not even claim to have objected to the same. The Court refused to issue interim injunction in favor of the plaintiff. This Court also observed that a large number of entities world over were apparently using the mark 'canon' as part of their style and trademarks. Thus, the mark 'canon' was not distinctive of plaintiff's goods world over.

16. In Vishnudas trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd. 1996 PTC (16) 512 (SC) the Hon'ble Supreme Court observed as under:

In our view, if a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bona fide 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 of manufacturers to get registration or 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 manufacturer, 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 favor. 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 Mark Act and the Rules framed there under, it appears to us that registration of a trademark cannot be held to be absolute, perpetual and invariable under all circumstances.

17. I find that the plaintiff has failed to show that it has a prima facie case that the defendant was copying its trademark and logo. The style and logo of circle with 'M' was not at all there in the literature of defendant and trademark 'MARC' was also written in different style and manner. The defendant was neither marketing nor manufacturing the goods being marketed/manufactured by the plaintiff. The defendant was registered proprietor of the trademark 'MARC' for the goods being manufactured by it. The word 'MARC' was not a coined word or invention of the plaintiff. It was and is being extensively used world over as a trade name, a trade style and as a first name of the company.

18. In view of above scenario, I find that no case is made out for issuing injunction either against the plaintiff or against the defendants from using the trademark/logo 'MARC'. It is further directed that in all their literatures, the plaintiff and defendants shall write the name of the company prominently to indicate as to who was the manufacturer of the goods and on packing materials both plaintiff and defendants shall write the name of the company/manufacturer so that the customers know who is the manufacturer.

19. With above directions, both the applications stand disposed of. No orders as to costs.

CS(OS) No. 1059/2005

List on 8th August 2008.