M/S.Mahavir Pvc Cables Factory vs M/S.Indo Mahaveer Kable
2023 Latest Caselaw 2901 Ori

       IN THE HIGH COURT OF ORISSA AT CUTTACK

                          FAO No.55 of 2023

(From the order dated 2nd November, 2022 passed by the learned
District Judge, Cuttack in I.A. No.01 of 2021 arising out of Original
Suit No.01 of 2021)


 M/s.Mahavir PVC Cables Factory             ....                Appellant

                                          -versus-
 M/s.Indo Mahaveer Kable                    ....              Respondent


Advocate(s) appeared in this case:-

          For Appellant        : Mr. Pratik Dash, Advocate

          For Respondent       : Mr. Jayasankar Mishra, Advocate


             CORAM: JUSTICE B.P. ROUTRAY
                             JUDGMENT

6th April, 2023

B.P. Routray, J.

1. Present appeal is directed against order dated 02.11.2022 of learned District Judge, Cuttack passed in I.A. No.01 of 2021 arising out of Original Suit No.01 of 2021, wherein learned trial court (District Judge) has rejected the prayer for interim injunction against the Defendant.

2. Plaintiff is the present Appellant. He is the registered proprietor of the Trade Mark "MAHAVIR" in Class-09 of the Trade Marks Act,

1999. The Plaintiff is doing business of manufacturing the PVC wires and cables for more than two decades in different cities in the State of Orissa and also throughout the country. The brand name and Trade Mark "MAHAVIR" gained reputation as well as good will among the customers. It is alleged that the Defendant (present Respondent) subsequently by selling the products in PVC wires and cables by using the Trade Mark "INDO MAHAVEER KABLE", which is phonetically and visually deceptive to the Trade Mark "MAHAVIR", has attempted to infringe the reputed Trade Mark of the Plaintiff to pass off his products in the market. It is further alleged that the Defendant has not only copied the phonetically similar mark, but also the trading style, getup and colour scheme of the Trade Mark of the Plaintiff to ride on the reputation and good will earned by the Plaintiff. The Defendant, further, by using materials of sub-standard quality with greater risk of catching fire has disreputed the good will of Trade Mark and such action of the Defendant in passing off goods and good will of Plaintiff's Trade Mark in the market is a deliberate attempt on his part.

3. Learned District Judge, Cuttack while deciding the prayer for interim injunction have held that, though the Plaintiff has established prima facie case in his favour, but have failed the test of balance of convenience and irreparable injury. The learned District Judge have further held that grant of temporary injunction in favour of the Plaintiff would amount to grant of main relief in the suit which is impermissible.

4. The undisputed fact remains that, MAHAVIR PVC CABLES factory is a registered unit and registered as a small scale industrial unit as per the certificate dated 5.4.1986 issued by the General Manager, District Industries Centre, Dhenkanal. As per Trade Mark Certificate dated 19th June 2018 granted under the Trade Marks Act, 1999, the Trade Mark image is "MAHAVIR"

Similarly, the Trade Mark Certificate granted under Trade Marks Act, 1999 of "Indo Mahaveer Kable" dated 15th December, 2019 and the Trade Mark image is

5. The Plaintiff's business is running since 1984. Due to some dispute and allegations of deception, two FIRs were lodged in Bhuban Police Station in the district of Dhenkanal on 18.7.2018 and 11.12.2020 registered as Bhuban P.S. Case No.140/2018 and Bhuban P.S. Case No.360/2020 respectively. Annexure-7 is the application form of the Defendant for the Trade Mark "INDO MAHAVEER KABLE". It reveals that the goods and service details (Class-9) are as, "scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), lifesaving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; Magnetic data

carriers, recording discs; compact dics, DVDs and other digital recording media; Mechanisms for coin operated app.. However, while this trademark was existing, the Respondent decided to obtain another Trademark under the name."

The above details does not include PVC wire and cables. At the same time, the running of business in the brand name "MAHAVIR" in respect of PVC wire and cables by the Plaintiff since 1984 is not disputed and his Trade Mark Certificate is prior to grant of certificate in favour of the Defendant. Further, manufacturing and marketing of PVC wire and cables by the Defendant in the brand name "INDO MAHAVEER KABLE" from the year 2017 and onwards is not denied.

6. Now the question falls for determination is that, "Whether the Plaintiff's prayer for interim injunction against the Defendant is sustainable and satisfies the tests ?"

7. In view of narration of the facts as above, I fully agree with the conclusion of the learned trial court that a strong prima facie case exists in favour of the Plaintiff. The reasons for the same are not discussed here to avoid repetition.

8. Before delving into the other tests, it would be profitable to refer and rely the case of Laxmikant V. Patel vs. Chetanbhai Shah and another, (2002) 3 SCC 65. It was a case of Trade Mark dispute in the name and style of "Muktajivan Colour Lab and Studio" and "QSS - Muktajivan Colour Lab" between the Plaintiff and Defendant respectively. The Supreme Court has observed as follows:

"8. It is common in trade and business for a trader or a businessman to adopt a name and/or mark under which he would carry on his trade or business. According to Kerly (Law of Trade Marks and Trade Names, 12th Edn., para 16.49), the name under which a business trades will almost always be a trade mark (or if the business provides services, a service mark, or both). Independently of questions of trade or service mark, however, the name of a business (a trading business or any other) will normally have attached to it a goodwill that the courts will protect. An action for passing-off will then lie wherever the defendant company's name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two business. If this is not made out there is no case. The around is not to be limited to the date of the proceedings; the court will have regard to the way in which the business may be carried on in the future, and to its not being carried on precisely as carried on at the date of the proceedings. Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.

9. It will be useful to have a general view of certain statutory definitions as incorporated in the Trade Marks Act, 1999. The definition of trade mark is very wide and means, inter alia, a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. Mark includes amongst other things name or word also. Name includes any abbreviation of a name.

10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the

business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basis policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.

xxx xxx xxx

13. In an action for passing-off it is usual, rather essential, to seek an injunction, temporary or ad interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly (ibid, para 16.16) passing-off cases are often cases of deliberate and intentional misrepresentation, but it is well settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence, though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing-Off (1995 Edn., at p. 3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing-off. Likelihood of damage is sufficient. The same learned author states that the defendant's state of mind is wholly irrelevant to the existence of the cause of action for passing-off (ibid, paras 4.20 and 7.15). As to how the injunction granted by the court would shape depends on the facts and circumstances of each case. Where a

defendant has imitated or adopted the plaintiff's distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name (Kerly, ibid, para 16.97)."

9. In the case at hand, running of business by the Defendant is effected much after Plaintiff's business in PVC wire and cables, that too under un-authorized trade mark as per Class-9 details mentioned in the application. It is not the case of the Defendant that he is unaware of the business entity of the Plaintiff in marketing the Trade Mark "MAHAVIR". It is of course a different aspect to be examined on the quality of the product in the brand name of "INDO MAHAVEER KABLE". The sphere of business of Plaintiff throughout Odisha and beyond the State boundaries is unquestioned. Therefore, the balance of convenience is in favour of the Plaintiff since he is in the market much before the Defendant came. So far as irreparable injury is concerned, the reputation and goodwill earned by the plaintiff is the pivotal consideration and it is necessary to protect him from the loss to be sustained in future by any deceptive use of his trade mark. Here the fact that Respondent is already running the business in the alleged deceptive name and style "INDO MAHAVEER KABLE" would hardly matter in his favour. This would not disentitle the Plaintiff from protecting his loss or injury in the market. The likelihood of injury on the part of the Plaintiff would be immense. The photograph as produced under Annexure-8 is revealing how the word "MAHAVEER" has protruding prominence on the product marketed by the Defendant.

10. It is another aspect of the matter that the Defendant has applied before the Registering authority for the Trade Mark for electric wires and cables on 13.12.2020 under the Trade Mark "INDO MAHAVEER KABLE" and the Plaintiff has submitted his objection to that before the Trade Mark Registering authority and the same is subjudice till date. This Court refrains from entering into that aspect of the issue.

11. I would like to emphasize here that the allegations of use of sub- standard materials in the products of the brand name "INDO MAHAVEER KABLE" inviting greater risk of fire has not been substantially denied by the Defendant. It is true that in an action for infringement of Trade Mark, the Plaintiff can always be compensated by awarding damages in case he succeeds. But in case of damages for the loss suffered by the customers/consumers during the period pending adjudication would never be compensated. To prevent the menace of products by sell of duplicate products of sub-standard quality in violation of intellectual property right, it would be proper on the part of the Court to take into consideration the interest of general public as consumers in common. Therefore, it would be necessary to injunct the offending party from using the Trade Mark through temporary injunction. It is also required to prevent further confusion in the market and the consumers from being mislead while buying the product.

12. In view of the discussions made above, it is found that the Plaintiff has satisfied all such tests in his favour. The Defendant- Respondent is temporarily injuncted from using the disputed Trade

Mark "INDO MAHAVEER KABLE" from manufacturing, using and marketing the products of PVC wire and cables pending disposal of the suit, i.e. Original Suit No.01 of 2021 before the learned District Judge, Cuttack.

13. It is made clear that all such observations and findings made in the present order are for the limited purpose and shall not prejudice any of the parties in deciding the suit on merit.

14. The FAO is disposed of.

(B.P. Routray) Judge

B.K. Barik/Secretary