M/S. Suttind Seeds Pvt. Ltd. vs M/S. Sutton & Sons India Pvt. Ltd.
2010 Latest Caselaw 3187 Del

* IN THE HIGH COURT OF DELHI AT NEW DELHI

+              IA No. 3021/2005 in CS(OS) No.511/2005

                                      Date of Decision: 9th July, 2010

       M/S SUTTIND SEEDS PVT. LTD.              .....Plaintiff
                 Through:  Ms.Pratibha M.Singh and
                           Ms.Pema Yeshey, Advocate.


                            VERSUS

       M/S SUTTON & SONS INDIA PVT. LTD.     .....Defendant
                 Through:  Mr.David Mantosh and
                           Mr.Sunil Goyal, Advocate.


%      CORAM:
       HON'BLE MS. JUSTICE ARUNA SURESH

(1)    Whether reporters of local paper may be allowed to see
       the judgment?

(2)    To be referred to the reporter or not?                   Yes

(3)    Whether the judgment should be reported in the Digest? Yes

                            JUDGMENT

ARUNA SURESH, J.

I.A. No. 3021/2005 (u/O 39 Rules 1 & 2 CPC) in CS(OS) No.511/2005

1. This is an application filed by the plaintiff under Order 39

Rules 1 and 2 and Section 151 of the Code of Civil Procedure

(hereinafter referred to as „CPC‟) read with Section 38 of the

Specific Relief Act, seeking interim injunction against the

defendant for restraining it through its directors etc. from

manufacturing, selling, offering for sale, advertising directly

and indirectly dealing in vegetable and flower seeds bearing

the trade mark "SUTTON SEEDS" within parallelogram as

and/or any other trade mark, as may be identical with and/or

deceptively and confusingly similar to plaintiff‟s registered

trade mark "SUTTIND SEEDS" within parallelogram in class

31, as to pass off or enable others to pass off defendant‟s

goods/product etc. as that of the plaintiff, with further

directions to the defendant to withdraw/recover the infringing

goods from third parties to whom the defendant or anyone of

them have passed for commercial purposes.

2. Plaintiff company is dealing with manufacturing and

marketing of seeds, plants, bulbs, fruits and vegetables,

grasses, flowers in the name of "SUTTIND SEEDS" since the

year 1991 and it claimed that over the years it has acquired

distinctiveness, reputation and goodwill among the

consumers. In 1991 plaintiff company was incorporated

under the name of M/s S. & S. Agro Industries Pvt. Ltd.

having its registered office at Calcutta. Subsequently, it

changed its name to M/s Suttind Seeds Pvt. Ltd. on 29th June,

1992 and changed its registered office to Delhi on 14th

August, 1992.

3. Defendant company was earlier the registered proprietor of

the trademark "SUTTIND SEEDS" within parallelogram in

class 31 in all kinds of seeds. Defendant company assigned

the said registered trademark to M/s S. & S. Agro Industries

Pvt. Ltd., (erstwhile name of the plaintiff), vide Agreement

dated 4th February, 1992. Later on parties entered into an

agreement on 31st March 1999, thereby permanently assigning

the said trade mark "SUTTIND SEEDS" within parallelogram

in favour of the plaintiff company for whole of India and also

to export the goods to any foreign country by the said trade

mark. An Assignment Deed dated 19th April, 1999 was

executed by the defendant company in favour of the plaintiff

company. Defendant filed a civil suit in 2000 seeking

declaration that the said Deed of Assignment dated 19th April,

1999 be declared cancelled, void and non est and also prayed

for permanent injunction for restraining the plaintiff from

using the said trade mark. Defendant allegedly adopted

deceptively or confusingly similar and identical trade mark

"SUTTON SEEDS" within parallelogram and has also

adopted the boxes, tin pouches, cartons of "SUTTON

SEEDS" within parallelogram for the vegetable and flower

seeds which are identical with and/or deceptively and

confusingly similar to plaintiffs‟ trade mark "SUTTIND

SEEDS" within parallelogram and its copy right in the artistic

tin pouches etc., which is mala fide and fraudulent and

actuated with a view to earn easy and illegal profits for itself

by deceiving the innocent purchasing public and trade

thinking that the defendant‟s goods are the same as of the

plaintiff. Act of the defendant tantamounted to causing

infringement of the registered trade mark and passing off its

goods and business as that of the plaintiff.

4. Defendant in its written statement has alleged that Sutton &

Sons Ltd. of U.K. was in the business of producing and

selling vegetables and flower seeds in U.K. since the last 200

years. It started its business in Calcutta about 100 years back.

Since in 1968-69 there was a change of law with regard to

foreign exchange regulations, it had to close its branch in

India, being a foreign company, and incorporated a new

company in 1991 Sutton and Sons India Pvt. Ltd. The

company in U.K. started objecting to the defendant from

exporting seeds abroad in the name of Sutton & Sons.

Accordingly, defendant company registered a trade mark

"SUTTIND SEEDS" in its name, being similar to the word

"SUTTON". To avoid any further objection from UK

Company, another company under the name of M/s S. & S.

Agro Industries Pvt. Ltd. was incorporated in 1991. Both the

companies were controlled by Mr.Suresh Kumar himself and

through his nominees. An Agreement dated 4th February,

1992 with M/s S. & S. Agro Industries Pvt. Ltd., permitting

the said company to use trade mark "SUTTIND SEEDS" for a

period of five years from 1st April, 1991 was executed, which

was never renewed. Agreement dated 31st March, 1999 and

Assignment Deed dated 19th April, 1999 were got executed

from Suresh Kumar, who was aged about 80 years and a sick

man, by playing fraud and undue influence as the

consideration of Rs.1,000/-, as per the Assignment Deed dated

19th April, 1999, was grossly inadequate. It is also averred

that defendant has been using the trade mark "SUTTON

SEEDS" since 1968 and is a prior user of the said trade mark,

which fact was known to the plaintiff company and that trade

mark "SUTTIND SEEDS" has not been registered in the

name of the plaintiff company till date and the defendant

company has applied for registration of the trade mark

"SUTTON SEEDS" before the Registrar of Trade Marks to

which objections have been filed by the plaintiff company.

Therefore, claim of the plaintiff is unwarranted.

5. Ms. Prathiba M. Singh appearing on behalf of the plaintiff has

argued that from perusal of the photocopies of plaintiff‟s

trademark "SUTTIND SEEDS" within parallelogram on the

tin boxes when compared with the photocopies of defendants‟

trademark „SUTTON SEEDS" within parallelogram on the tin

boxes are identical and show visual similarity which is

deceptively and confusingly similar so as to pass off

defendant‟s goods/products as that of the plaintiff. Both these

trademarks are also phonetically similar. She has further

argued that both the parties are engaged in identical trade of

selling seeds of vegetables, flowers etc. and the seed products

are similar in nature. She has emphasized that class of

consumers are identical which clearly indicate that defendant

is using the trademark "SUTTON SEEDS" with a view to

pass off its goods as that of the plaintiff as trade name

„SUTTIND SEEDS" has acquired distinctiveness, substantial

goodwill and reputation amongst its customers/dealers in a

short span of time because of excellent quality of the products

and high preference of the consumers for the same.

6. She has further argued that "SUTTON SEEDS" is not a

registered trademark though an application has been filed by

the defendant seeking registration of the said trademark to

which plaintiff has already filed objections. It is argued that

defendant vide Agreement dated 4th February, 1992 had

permitted the plaintiff to use its registered trademark

"SUTTIND SEEDS" and subsequently vide Agreement dated

31st March, 1999 plaintiff has been given perpetual rights to

use the said trademark which further finds support from

Assignment Deed dated 19th April, 1999 and that therefore,

plaintiff is the exclusive user of the trademark "SUTTIND

SEEDS" and the defendant with an ulterior motive started

selling its goods under the trademark „SUTTON SEEDS‟ with

a view to pass off its goods as that of the plaintiff and the said

act of the defendant is prejudicial to the interest of the

plaintiff and is adversely affecting its business, thereby

causing loss to the plaintiff and therefore defendant should be

restrained from using the trademark "SUTTON SEEDS" as

plaintiff has a good prima facie case and also balance of

equity and convenience in its favour. She has referred to

'M/s. Modi Threads limited Vs. M/s. Som Soot Gola Factory

& Anr.', AIR 1992 DELHI 4, 'Doctor Morepen Limited Vs.

Yash Pharma Laboratories Limited', 2007 (35) PTC 7 (Del)

and 'Ruston & Hornsby Ltd. Vs. The Zamindara

Engineering Co.', 1969 (2) SCC 727.

7. Mr. David Mantosh Advocate appearing on behalf of the

defendant has submitted that defendant was using the

trademark "SUTTON SEEDS" since 1968 when defendant

company was incorporated in India. Therefore, being prior

user of the trademark, they are entitled to market their

products under the trademark "SUTTON SEEDS", which is

not violative of any right of the plaintiff‟s trademark

"SUTTIND SEEDS". He further submitted that the

Agreement dated 31st March, 1999 as well as the Assignment

Deed dated 19th April, 1999 are forged and fabricated

documents as Suresh Kumar, being an old man of 80 years of

age and suffering from diabetes, having got his leg amputated

because of gangrene, was unduly influenced, misled and

pressurised by Dr. I.K.Arora to sign the said documents. It is

argued that plaintiff was not permitted to use trademark

"SUTTIND SEEDS", registered in the name of the defendant

after the Agreement dated 4th February, 1992 came to an end

by efflux of time i.e. after expiry of period of five years; the

period for which plaintiff was permitted to use the trademark

"SUTTIND SEEDS" upon payment of royalty 0.1% of the

turnover.

8. He has argued that defendant has not violated the trademark

of the plaintiff and that defendant, being a prior user of

"SUTTON SEEDS", has every right to conduct its business

under the trademark "SUTTON SEEDS". He has submitted

that plaintiff is not entitled to any interim relief as prayed,

claim of the plaintiff being baseless, false and frivolous. He

has referred to 'N.R.Dongre & Ors. Vs. Whirlpool

Corporation & Anr.', (1996) 5 SCC 714, to emphasize that

defendant being a prior user of the trademark "SUTTON

SEEDS" and registered owner of the trademark "SUTTIND

SEEDS" being misused by the plaintiff through deception to

obtain economic benefit and of reputation, it cannot be said

that defendant is using the trademark of the plaintiff for

passing off its goods as that of the plaintiff. He has submitted

that in an action for passing off, it is not material whether

misrepresentation or deception has proceeded by a registered

or unregistered user of the trademark.

9. Now, it is to be seen if plaintiff can maintain an action for

passing off against the defendant which is running its business

in India since 1968 and as claimed has been marketing its

goods under the unregistered trademark "SUTTON SEEDS"

prior to the registration of trademark "SUTTIND SEEDS",

being used by the plaintiff since 1991-92.

10. Section 27 of the Trademarks Act 1999 (hereinafter referred

to as the „Act‟) prohibits a person to file a suit or any other

proceedings to prevent, or to recover damages for the

infringement of an unregistered trademark but this Section

recognizes the common law rights of the trademark owner to

take action against any person for passing off the goods as the

goods of another person or as services provided by another

person or the remedies thereof.

11. Section 28 of the Act speaks of rights conferred by

registration of a trademark.

12. Section 28(1) of the Act, registration of a trademark gives to

the registered proprietor thereof exclusive right to use the

same in relation to the goods in respect of which it has been

registered. However, this provision is subject to other

provisions contained in the Act and therefore, it is clear that

the right conferred on a trader is not an indefeasible right as is

clear from Section 27(2) of the Act.

13. Section 33 of the Act also speaks of vested right of a prior

user. As per this Section, nothing in the Act entitles a

registered proprietor of a trademark to interfere with the use

of the trademark by prior user of the same. Therefore, the

right created by Section 28 (1) of the Act in favour of the

registered proprietor of a trademark is not an absolute right

but is subservient to other provisions of the Act, namely,

Sections 27 (2) and 33 etc.

14. In 'Bimal Govindji Shah Vs. Panna Lal Chandu Lal', 1997

(2) Arb.L.R. 76 (Delhi), Sections 28 and 33 of the Act were

interpreted by this Court as below:-

"(7) For the purpose of adjudicating the issues posed before me it would be necessary to deal with the main questions which arise for my

prima facie determination,

(I)whether the plaintiff not being a registered proprietor of trade mark Flora in respect of hardware goods can maintain an action for passing off against the defendant in respect of the use of the same which has been registered in its favor in respect of the said goods

(8) Under Section 28(1) of the Trade and Merchandise Marks Act (hereinafter called the Act) registration of a trade mark gives to the registered proprietor thereof exclusive right to use the same in relation to the goods in respect of which it has been registered. Accordingly, in the present case in terms of the aforesaid provision the defendant being the registered proprietor of the trade mark Flora in respect of hardware goods could claim to have the exclusive right to use the same in relation to hardware goods in respect of which it is registered. But when the opening words of Section 28(1) are noticed which opens with the expression "subject to other provisions" it is crystal clear that the aforesaid right conferred on a registered proprietor is not an absolute right as the same is made subject to other provisions of the Act. The aforesaid view is fortified by the provisions of Section 27(2) of the Act which provides that "nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof". Accordingly, it is manifestly clear that Section 28 of the Act and other provisions come within the over-riding effect of Section 27(2) of the Act. Similarly, the provisions of Section 33 of the Act also saves vested right of a prior user when it lays down that "nothing in the Act shall entitle the proprietor or a registered user of a registered

trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a prior date".

THUS a conjoint reading of the aforesaid provisions persuaded me to conclude on a reading of the aforesaid provisions conjointly the natural deduction is that the right conferred by Section 28(1) of the Act in favor of a registered proprietor of a trade mark is not an absolute right but is subject to the other provisions of the Act namely - Sections 27(2) and 33. It is also to be noted that neither Section 28 nor any other provision of the Act prohibits an action for passing off by an anterior user of a trade mark against a registered user of the same. In other words registration of a trade mark does not provide a defense to the proceedings for passing off as provided for under Section 27(2) of the Act. A prior user of a trade mark is entitled to maintain an action against a subsequent user of identical trade mark including registered user thereof.

(15) The legal proposition that emerges from all the aforesaid decisions is that the registration is immaterial in a case of passing off and the criteria for granting an in junction is the prior user of the trade mark by the parties. In other words, "in an action for passing off, in order to succeed in getting an interim in junction the plaintiff has to establish user of the mark prior in point of time than the impugned user by the defendant and that the registration of the mark or similar mark prior in point of time to user of the plaintiff is irrelevant in an action of passing off and the mere presence of the mark in the

register maintained by the Trade Mark Registry did not prove its user by the persons in whose names the mark was registered and it is irrelevant for the purposes of deciding the application for interim in junction unless evidence had been led or was available of user of the registered trade mark". (Jai Prakash Gupta's case (supra)."

15. Thus, it is clear that the exclusive right obtained by

registration cannot operate against the right of prior user of

the same or similar trademark. The conditions necessary for

this protection are that the trademark must have been used

from a date prior to the use of the registered trademark or its

date of registration whichever is earlier, the prior use claimed

must be by the proprietor himself or by the predecessor in

title and user claimed must be continuous. When these

conditions are fulfilled, the registered proprietor cannot

interfere with or restrain the use of similar mark by the

person, who claims prior use.

16. By virtue of Section 33 of the Act, Registrar in such

circumstances cannot refuse registration of prior user of

trademark by reason only of existence on the register of the

registered trademarks.

17. Suttons and Sons Ltd. of U.K. dealing in the business of

producing and selling vegetables and flower seeds started its

branch office in Calcutta. There was change in law in 1968-

69 with regard to foreign exchange regulations. This resulted

into the company closing down its branch office in Calcutta

being a foreign company. Thereafter, a new company under

the name and style of „SUTTONS & SONS INDIA PVT.

LTD.‟ was incorporated in 1968, defendants in this case.

Defendant company was not entitled to use the Royal

Warrant of the U.K. company, therefore, it started using the

unregistered trade mark "SUTTON SEEDS" since after its

incorporation.

18. In or about 1991 Suttons of U.K. objected to the use of trade

mark „SUTTON SEEDS‟ by the defendant company.

Accordingly, defendant company got trade mark named

„SUTTIND SEEDS‟ registered in its name. Thereafter, a new

company in the name of „S & S Agro Industries Pvt. Ltd.‟

was incorporated in 1991 by Mr. Suresh Kumar, who was

also in complete control of the defendant company.

19. It is a common case of the parties that parties to the suit

entered into an agreement dated 4.2.1992. Vide this

Agreement "S & S Agro Industries was permitted to use the

trade mark „SUTTIND SEEDS‟ for a period of five years

from 1st April, 1991 on payment of royalty at the rate of 0.1%

of the turnover.

20. „S & S Agro Industries Pvt. Ltd.‟ changed its name to

„SUTTIND SEEDS PVT. LTD.‟ and continued to use the

trade mark „SUTTIND SEEDS‟ for its vegetables and flowers

seeds even after expiry of period of five years.

21. On 31.3.1999 parties entered into another Agreement

whereby plaintiff was given permanent right to use trade

mark „SUTTIND SEEDS‟ for its products. Clause 6 of this

Agreement reads:-

"6. This assignment deed shall remain in force permanently. However, as the Registered Trade Mark has been renewed upto 10.4.2005, the renewal application after the said date will be submitted by the Registered Users. There will be no control of the Registered Proprietors as well as no liability as the said Trade Mark has been permanently assigned to the Registered Users."

22. This Agreement was annexed with an affidavit of Suresh

Kumar, the Director of the defendant company and registered

Proprietor of the trade mark „SUTTIND SEEDS‟. Another

Deed of Assignment dated 19.04.1999 followed this

Agreement. Vide this Assignment Deed, defendant company

assigned and transferred its entire right, title and interest in

and to its registered trade mark „SUTTIND SEEDS‟ together

with the goodwill of the business concerned in the goods,

which the defendant company had been enjoying, thereafter

to be enjoyed by the plaintiff company, its successors and

assignees.

23. Defendant has not disputed the execution of these two

documents. However, it is urged that these documents were

procured by Dr. I.K. Arora by playing fraud,

misrepresentation and by using undue influence and pressure

upon Suresh Kumar, who happen to be the Director of the

defendant company and therefore Plaintiff was not assigned

any right to continue to use trade mark „SUTTIND SEEDS‟

for its products after the expiry of Agreement of 1992.

24. Counsel for the defendant has pointed out that defendant has

filed a suit for declaration claiming that the alleged Deed of

Assignment dated 19.4.1999 was void, non-est and the same

should be cancelled and also has sought permanent injunction

for restraining the Plaintiff (herein) from using the trade mark

„SUTTIND SEEDS‟. He has also filed another suit seeking

similar relief against the plaintiff from using the trade mark

„SUTTIND SEEDS‟ on its price list, etc. I find no force in

these submissions. Prima facie execution of these documents

is not in dispute. It is pertinent that in the Civil suit

No.2036/2000 seeking cancellation of assignment deed and

restraining the plaintiff from using the trade mark „SUTTIND

SEEDS‟ filed in December, 2000, defendant had filed an

application under order 39 Rule 1 & 2 CPC seeking interim

injunction against the plaintiff. The City Civil Court granted

ex-parte injunction on 7.12.2000. This resulted into filing of

an application by the plaintiff under Order 39 Rule 4 CPC.

Vide its detailed order dated 21.07.2001, the learned Judge

was pleased to vacate the ex-parte ad interim injunction and

dismissed the application of the defendant filed under Order

39 Rule 1 & 2 CPC. While dismissing the application the

court observed that by a registered document, the defendant

had assigned the trade mark to the plaintiff who were carrying

on business and after such deed of assignment the title in

respect of the trade mark passed in favour of the plaintiff and

only formality left was to the registration of the trade mark by

the registering authority. It was also observed that admittedly

the trade mark „SUTTIND SEEDS‟ had been assigned to the

plaintiff by Deed of Assignment on 31.3.1991 and therefore

prima facie it was apparent that the title of the trade mark was

now with the plaintiff. This order of the City Civil Court was

challenged by the defendant in appeal being FMAT

No.2267/2001 in the High Court of Calcutta. The said appeal

was dismissed on 2.08.2001. Thus, the order of the City Civil

Court dated 21.07.2001 attained finality.

25. Thereafter another suit was filed by the defendant being Suit

No.774/2002 seeking declaration that the trade descriptions of

various seeds are the trade descriptions of the present

defendants and also to restrain the plaintiff from using the

said trade descriptions, specially in its price list, catalogue or

packing. Again defendant managed to get an ex-parte order

which was vacated by the City Civil Court on 7.3.2005 on an

application filed by the plaintiff under Order 39 Rule 4 CPC.

The order dated 7.3.2005 was challenged in appeal being

FMAT No.892/2005 before the High Court of Calcutta. The

said appeal was dismissed on 12.5.2005. Defendant filed an

application for review of the said order dated 12.05.2005

which was also dismissed on 22.07.2005. SLP against the

said two orders of the High Court of Calcutta filed by the

defendant was also dismissed.

26. Chain of litigations as narrated above clearly indicate that

even in the civil cases defendant remained unsuccessful in

getting an ad-interim injunction against the plaintiff on the

plea that agreement dated 31.3.1999 and Assignment Deed

dated 19.04.1999 were obtained by misrepresentation,

coercion and fraud and were fabricated documents.

27. As discussed above, execution of the documents is not

disputed by the defendant. Only their authenticity is under

challenge. Whether the documents were got executed by Dr.

I.K. Arora by playing fraud or misrepresentation or coercion

on Suresh Kumar is a question which needs adjudication and

has to be decided only on merits after the trial is complete.

28. By virtue of Agreement dated 4.2.1992 plaintiff was assigned

the use of registered trade mark „SUTTIND SEEDS‟, may be

for a period of five years. Plaintiff continued to use this trade

mark for its products even after the expiry of five years

without any objection or resistance from the defendant.

Prima facie plaintiff has been using trade mark „SUTTIND

SEEDS‟ since 1991 till date with the consent of the

defendant. Submission of the defendant that after expiry of

the agreement dated 4.2.1992, plaintiff was not entitled to use

the trade mark stands forfeited in view of the agreement dated

31.3.1999 and subsequent Assignment Deed dated 19.4.1999.

29. Plaintiff has referred to a letter dated 29.03.2001 addressed to

the plaintiff by „Suttons Consumer Products Ltd.‟ U.K.

Perusal of this letter reflects that „Suttons Consumer Products

Ltd. had no branch office of any kind in India and they had

not appointed any sole representative in this country and no

company, therefore, was authorized by them to claim to be

their sole representative. It was except that „SUTTIND

SEEDS PVT. LTD.‟ i.e. the plaintiff is an authorized

distributor of „Suttons Consumer Products Ltd‟. and imports

packeted seed directly from the company. This letter prima

facie makes it clear that defendant company no longer was a

representative company of the erstwhile Suttons and Sons

Pvt. Ltd. U.K.

30. From the averments of the defendant itself, after an objection

was raised by Sutton & Sons Pvt. Ltd., U.K. to the user of

„SUTTON SEEDS‟ trade mark for export of its product, it

had to get its trade mark registered in the name of „SUTTIND

SEEDS‟. „SUTTIND SEEDS‟ was registered as a trade mark

on 11th April, 1984. After its registration, defendant could not

have continued to use the trade mark „SUTTON SEEDS‟.

The documents placed on record by the defendant to

emphasis that it has been using the trade mark „SUTTON

SEEDS‟ and is a prior user of the same since long relate to

the retail price list pertaining to the year 2001-2005.

Apparently, it seems that, after defendant failed in getting an

interim relief against the plaintiff it started using „SUTTON

SEEDS‟ as a trade mark on its price list. It is pertinent that

retail price list of 2000-2001 does not find mention of trade

mark „SUTTON SEEDS‟ within the parallelogram and the

original packing of Suttons Seeds U.K. Of course, there are

documents pertaining to the year 1967-68 till the period 1991-

92, some of which reflect the use of trade mark „Suttons

Seeds‟ in parallelogram as that of „SUTTIND SEEDS‟.

There is no document to indicate that after the user of trade

mark „SUTTIND SEEDS‟ was assigned to the plaintiff, the

defendant had been using the trade mark „SUTTON SEEDS‟

despite the objections raised by „Sutton Seeds & Sons U.K.‟

to the user of the said trade mark by the defendant company.

Apparently, it re-started using the trade mark „SUTTON

SEEDS‟ after filing the civil suit in the city Civil Court

Calcutta to misguide the Court that user claimed was

continuous.

31. In ''N.R.Dongre & Ors's case (supra) a suit was filed by the

Respondent on a passing off action to restrain the appellant

(defendant) from manufacturing, selling, advertising or

anyway using the trade mark „WHIRLPOOL‟ in any other

trade mark deceptively or confusingly similar to the trade

mark of „WHIRLPOOL‟ in respect of their goods. The claim

of the plaintiff (respondent) was based on a prior user of the

trade mark „WHIRLPOOL‟ on a vast reputation indicating

that any goods marketed with the use of the mark

„WHIRLPOOL‟ gave the impression of it being goods

marketed by the respondent. Respondent sought temporary

injunction which was granted by the Single judge and

affirmed by the Division bench of the High Court. While

dismissing the appeal, the Supreme Court observed:-

"..........The concept and principle on which passing off action is grounded is that a man is not to sell his own goods under the pretence that they are the goods of another man. A trader needs protection of his right of prior user of a trade mark as the benefit of the name and reputation earned by him cannot be taken advantage of by another trader by copying the mark and getting it registered before he could get the same registered in his favour. We see no reason why a registered owner of a trade mark should be allowed to deceive purchasers into the belief that they are getting the goods of another while they would be buying the goods of the former which they never intended to do. In an action for passing off if should not matter whether misrepresentation or deception has proceeded from a registered or an unregistered user of a trade mark. He cannot represent his own goods as the goods of some body else.

xxx xxx xxx

Applying this principle & the reasons already stated we have prima facie come to the conclusion that the appellants have acquired reputation & goodwill in respect of its goods bearing trade mark 'WHIRLPOOL' in this country. Even though the appellants have no connection with the respondents, they are using the mark 'WHIRLPOOL' for their products. Prima facie it appears to us that buyers are likely to be deceived or confused as to the origin and source of the goods. They will believe that the product is manufactured by the respondents, an impression not founded in truth. The limitation will pass of as genuine. No one can be

permitted to trade by deceiving or misleading the purchasers or to unauthorisedly divert to itself the reputation and goodwill of others. Under Section 27(2) an action for passing off against registered user of trade mark is maintainable at the instance of a prior user of the same, similar or identical mark. Since such a remedy is available against the registered user of a trade mark, an interim injunction restraining him to use the mark can also be granted to make the remedy effective."

32. This judgment rather helps the plaintiff and goes against the

claim of the Respondent.

33. Under these circumstances, prima facie it cannot be said that

defendant company is in continuous user of trade mark

„SUTTON SEEDS‟ much prior to the user of the trade mark

„SUTTIND SEEDS‟ by the plaintiff . After valid assignment

of the trade mark „SUTTIND SEEDS‟ within parallelogram

being registered user of the said trade mark with long and

established continuous user coupled with vast publicity given

to the trade mark, the plaintiff company has acquired a

statutory and exclusive right to use the said trade mark and

has copy right in the user of the same on the tin, pouches and

carton and other packaging material, price list, etc.

34. Trade mark „SUTTIND SEEDS‟ used by the plaintiff has

acquired reputation and good will in the country and has

become associated in the minds of the consumers / buyers as

that of the goods of the plaintiff. This fact prima facie clearly

demonstrate that the plaintiff was and is user of the trade

mark „SUTTIND SEEDS‟ since 1991 (though the trade mark

„SUTTIND SEEDS‟ has not been registered in its name)

uninterruptedly and continuously till date after it was

assigned to it by way of three documents executed from time

to time.

35. True that trade mark „SUTTIND SEEDS‟ has not been

registered in the name of the plaintiff.

36. It is pointed out by the learned counsel for the plaintiff that

plaintiff has already sent the assignment of the said trade

mark to Registry for necessary orders. As discussed above,

registration is not a must to claim right in the user of the trade

mark.

37. By virtue of assignment, plaintiff has become the owner of

the trade mark. Defendant has disputed the consideration

amount for permanent assignment of the trade mark to say

that Assignment deed dated 19.4.1999 is a fabricated

document. The fact remains that defendant has infact sold or

transferred its registered trade mark in favour of the plaintiff

for a consideration since the year 1991.

38. In 'M/s. Modi Threads Limited's case (supra) plaintiff

company was using the trade mark "COCK" register`ed in the

name of M/s. Modi Spinning and Weaving Mills Company

Limited, after it was assigned in its name by an Assignment

Deed whereby all the rights of the assignee mill including the

rights in the said trade mark etc. were transferred in favour of

the plaintiff company, though the application of the company

for getting the registered trade mark transferred in its name in

the office of Registrar was pending consideration. It was held

that it did not debar the company to protect the violation of its

trade mark at the hands of unscrupulous persons by filing an

action in court of law for injunction and that the defendant in

the said case could not be allowed to make use of said trade

mark "COCK" in order to get himself illegally enriched

earning upon the reputation built up qua that trade mark by

the predecessor-in-interest of the plaintiff company by selling

its own goods which would lead to some confusion in the

minds of the purchasers who have since long practice

associated with the goods of the plaintiff under the trade mark

"COCK".

39. In Doctor Morepen Limited's case (supra) there was an

Assignment Agreement between the plaintiff and the

defendant for the use of trade mark „LEMOLATE‟. Later,

defendant made a breach of agreement by using trademark

"Lemotab". Plaintiff filed suit for permanent injunction

against the defendant for restraining them from using

trademark „LEMOTAB‟ which was deceptively similar to

mark of plaintiff. It was held that no one can claim exclusive

right to use any word, abbreviation or acronym which has

become public Jurisdiction but said principle would not apply

where there was any agreement to the contrary and after

having sold the trademark for consideration. The Court found

that Defendant infringed the trade mark of plaintiff by using

the trade mark „LEMOTAB‟ and said action could not be

justified by the Defendant after having received consideration

and entering into an agreement with plaintiff for not

infringing the trade mark nor creating any trade mark which

is similar to or resembling the trade mark „LEMOLATE‟. It

restrained the Defendant from using trade mark „LEMOTAB‟

on the basis of good prima facie case established by the

plaintiff.

40. In Ruston & Hornsby Limited's case (supra) the Court was

faced with a question whether the user of trade mark

„RUSTAM‟ by the Respondent amounted to infringement of

trade mark „RUSTON‟ owned by the appellant. The Supreme

Court while allowing the appeal held that, If the Respondent's

trade mark is deceptively similar to that of the appellant the

fact that the word 'INDIA' is added to the Respondent's trade

mark is of no consequence and the Appellant is entitled to

succeed in its action for infringement of its trade mark. It was

observed:-

"4. The distinction between an infringement action and a passing off action is important. Apart from the question as to the nature of trade mark the issue in an infringement action is quite different from the issue in a passing off action. In a passing off action the issue is as follows : Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plantiff's goods ?

But in an infringement action the issue is as follows : Is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiff's registered trade mark ?

It very often happens that although the

defendant is not using the trade mark of the plaintiff, the get up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiff's mark the get up of the defendant's goods may be so different from the get up of the plain-tiffs goods and the prices also may be so different that there would be no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the-defendant is improperly using the plaintiff's mark.

7. In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test of infringement is the same as in an action for passing off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off actions."

41. Trademarks "SUTTIND SEEDS" and "SUTTON SEEDS"

phonetically sound idenitcal and visually look similar and the tin

boxes containing trademarks "SUTTIND SEEDS" and "SUTTON

SEEDS" seem to be deceptively the same. Both the parties are

dealing in the manufacturing and marketing of seeds, plants, bulbs,

fruits, vegetables, grasses, flowers etc. and other seed products and

the class of customers is common. Therefore, a consumer is very

likely to be deceived and confused when he purchases product

carrying trademark "SUTTON SEEDS" as that of the plaintiff.

42. Defendant had stopped using the trademark "SUTTON

SEEDS" since 1991 on an objection raised by the principal company

and it was under those circumstances that defendant got its

trademark "SUTTIND SEEDS" registered within parallelogram in

class 31 of all kinds of seeds. Trademark "SUTTIND SEEDS" has

been assigned by the defendant in favour of the plaintiff and since

1991 this trademark is being used by the plaintiff as the registered

proprietor of the said trademark.

43. As pointed out above, defendant probably started using its

initial trademark "SUTTON SEEDS" after assignment of their

trademark "SUTTIND SEEDS" within parallelogram in favour of

the plaintiff somewhere in the year 2000 only. Prima facie therefore,

plaintiff is the prior user of "SUTTIND SEEDS" as its registered

proprietor since the year 1991 continuously till date. Use of

trademark „SUTTON SEEDS" within identical parallelogram by the

defendant is an infringement of the trademark "SUTTIND SEEDS"

of the plaintiff. Prima facie it appears that buyers are likely to be

deceived or confused as to the origin and source of the seeds. Under

these circumstances, they are likely to believe that the product is

manufactured by the plaintiff, an impression, which is not well-

founded and based on misrepresentation.

44. Balance of convenience, under the circumstances, lies in

favour of the plaintiff. It is the plaintiff who would suffer

irrepairable loss and injury if defendant is not restrained from using

trademark "SUTTON SEEDS" within parallelogram on its products.

Infringement of the trademark and passing off its goods as that of the

plaintiff by the defendant will not only injure the reputation and

goodwill made by the plaintiff in the market but will also adversely

affect their business and cause them financial loss. It is noted that

the suits filed by the defendant in the Calcutta Courts are still

pending adjudication but, defendant has failed to get any relief for

interim injunction against the plaintiff. Application filed by the

defendant for registration of the trademark "SUTTON SEEDS" in its

name and the objections filed by the plaintiff to the claimed

registration are still pending consideration.

45. Hence, application is allowed. Defendant through its director,

servants, agents, stockists, assigns, representatives and all others

acting for and on its behalf is hereby restrained from using the

trademark "SUTTON SEEDS" within parallelogram as and/or any

other trademark, as may be identical with or deceptively and

confusingly similar to plaintiff‟s registered trademark "SUTTIND

SEEDS" on its products, packaging material, price list etc. till the

final disposal of the case on merits. Observations made in this order

are without prejudice to the rights of the parties on merits of the case.

CS(OS) No.511/2005

46. List before the Regular Bench on 30th July, 2010 for further

directions.

ARUNA SURESH (JUDGE)

JULY 09, 2010 sb/vk