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1983 DIGILAW 280 (DEL)

MANOJ PLASTIC INDIA v. BHOLA PLASTIC INDUSTRIES

1983-10-05

SULTAN SINGH

body1983
SULTAN SINGH ( 1 ) THIS is an application under O. 39, Rr. 1 and 2 read with S. 151 of the Civil P. C. for restraining the defendants from manufacturing, selling or otherwise dealing in the mirrors under the trade mark tony and/or any other identical or deceptively similar trade mark and also dealing in mirrors with shelf of the artistic and destinctive design and arrangement as that of the plaintiffs in a suit for perpetual injunction restrainng, passing off and rendition of accounts. ( 2 ) BRIEFLY the facts are that Manoj Plastic India, Plaintiff is a partnership concern registered under the Indian Partnership Act. The plaintiff firm has been carrying on business of manufacturing and marketing mirrors for household use since 1976. They introduced into the market mirrors with shelf with artistic and distinctive design. The shape configuration and the features of the said mirror is as follows : "the mirror is in a rectangular shape and is fixed in a plastic frame. It has on the plastic frame two holes on the upper edge which are meant to hang the same or fix it anywhere on any wall. On the lower edge of the plastic frame, a flexible plastic shelf appears. This shelf itself is very artistic and distinctive. The shelf has on its base two flowers in the round shape and the same may be used for putting soaps, pastes and brushes etc. " ( 3 ) THE plaintiffs introduced the said mirror into the market under the trade mark TONY on 8th August. 1981 and since then it has been continuously and extensively used by them. The mirror has been manufactured by M/s. Tony Plastics (India), a firm associated with the plaintiff firm, only for the Plaintiffs who are marketing the said products in their name. The plaintiffs have given wide publicity to the trade mark TONY. The sales of the mirrors under the said trade mark TONY for one year are alleged to be Rs. 1,50,000. 00. The plaintiffs have given wide publicity to the trade mark TONY. The sales of the mirrors under the said trade mark TONY for one year are alleged to be Rs. 1,50,000. 00. The plaintiffs allege that on account of the superior quality of the glass of mirror and due to the artistic, distintive, eye catching design, get-up, arrangement and flexibility, multipurpose capacity and due to the continuous and extensive use of the trade mark TONY since 8th August, 1981 the plaintiffs trade mark and the mirror with shelf have acquired unique reputation and goodwill in public and trade, and the goods under the trade mark TONY are exclusively associated with the plaintiffs by the purchasing public. ( 4 ) THE plaintiffs allege that recently the defendants started manufacturing and marketing the mirror with shelf under the identical trade mark TONY, that the use and the adoption of the trade mark TONY by the defendants is dishonest and deliberate, with full knowledge of the use and existence of the said trade mark TONY of the plaintiffs, that the adoption and use of the trade mark by the defendants is a violation of the proprietary rights of the plaintiffs, that defendants have adopted identical size, get-up, lay out, arrangement, design, shape and configuration of the mirror which amount to violation of the plaintiff rights. Both the mirrors are fixed in a plastic frame having holes on the upper edge for fixing on the wall and a shelf on the lower edge having on base two flowers in round shape cuts. On these grounds the plaintiffs allege that the defendants are guilty of passing off their inferior and sub-standard mirrors as and for the quality products of the plaintiffs. ( 5 ) THE defendants have pleaded that they adopted the trade mark TONY and have been using the same since 3rd April, 1981 in respect of looking mirrors, that the plaintiffs suit is not maintainable as they are not registered proprietors of the trade mark TONY, that there is no provision in the Designs Act for any action for passing off the design, that the defendants are first adopter and user of the trade mark TONY in respect of the mirrors and as such it is protected under S. 33 of the Trade and Merchandise Marks Act, 1958. It is denied that M/s. Tony Plastics (India) is in existence or is associated with the plaintiffs, that the defendants have sold goods worth Rs. 3,50,000. 00 in the year 1981-82 including sales of the mirrors under the trade mark TONY. ( 6 ) THE short question is : whether the plaintiffs adopted the trade mark TONY prior to the adoption of the said mark by the defendants and also whether the plaintiffs have been using the said trade mark regularly? The plaintiffs have placed on record their mirror marked a and the mirror of the defendants marked b . A bare look at the two mirrors leaves no doubt that both are identical in size, shape and get-up. As a matter of fact there is no difference in the two mirrors. On the front side of plaintiffs mirror there is a label reading tony Mirror, Electrocoppered Glass and on its back the words are, "mfd. By Tony Plastics (India)" while on the back of the mirror of the defendants is mentioned "tony Mirror manufactured by Bhola Plastic Industries". The word TONY (Wrapper) is registered under the Copyrights Act vide registration No. A- 40435 of 1983. The word TONY (label) is also registered under the Copyrights Act under No. A 41326 of 1983. The plaintiffs claim user of the trade mark representation TONY under No. 394531 in class 20 since 1978. The plaintiffs firm has got a certificate of registration as a dealer under the Delhi Sales-tax Act and the Central Sales-tax Act since 15th November, 1976. The Plaintiffs have placed on record carbon copies of the bills relating to the sales of their mirrors for the period from 8th August, 1981 to 6th May. 1982. The suit was filed in August, 1982. ( 7 ) DEVKI Nandan, partner of M/s. Haryana Novelty Emporium, Sadar Bazar has filed affidavit deposing that his firm has been regularly purchasing the mirrors under the trade mark TONY from the plaintiffs since August 1981, that the said firm purchased mirrors of the value of Rs. 7,083. 00 in 1981 and Rs. 13,900. ( 7 ) DEVKI Nandan, partner of M/s. Haryana Novelty Emporium, Sadar Bazar has filed affidavit deposing that his firm has been regularly purchasing the mirrors under the trade mark TONY from the plaintiffs since August 1981, that the said firm purchased mirrors of the value of Rs. 7,083. 00 in 1981 and Rs. 13,900. 00 in 1982, that prior to August 1981 the mirrors of the impugned mark were not available in the market, that the said mirror was first introduced by the plaintiffs under the trade mark TONY, that Bhola Plastics Industries (defendants) have been engaged in the business of marketing of Slates and recently they started marketing mirrors under the trade mark TONY. Roshan Lal proprietor of M/s. Pindi Glass House has also filed an affidavit deposing that he has been regularly purchasing mirrors under the trade mark TONY from the plaintiffs since the year 1981, that he purchased mirrors of the value of Rs. 19,383. 00 in 1981 and of the value of Rs. 23,080. 00 in 1982 from the plaintiffs, that they introduced the said mirror under the trade mark TONY in August 1981 and that prior to 1981 mirrors under the trade mark TONY were not available in the market. He has further deposed that the defendants are engaged in the business of marketing Slates and recently adopted and copied the design and trade mark TONY of the plaintiffs. ( 8 ) ON behalf of the defendants Mahinder Kumar Batla partner in his affidavit has deposed that the defendant firm has been carrying on business since 1st April 1981; the defendants sold mirrors of the value of Rs. 300. 00 on 3rd April 1981 to Mahavir Fancy Store, New Delhi, that on 8th April, 1981 they sold mirrors to Rajesh Plastics. Madras of the value of Rs. 708. 76, that on 22nd April, 1981 they sold for cash mirrors of the value of Rs. 432. 00 and Rs. 288. 00 on 31st July 1981 under two bills to Bombay General Store, Sadar Bazar. Delhi. The defendants have filed photostat copies of some bills but they are not legible. The carbon copies of the bills in their possession have not been filed although issues in the suit were framed on 7th April, 1983 and the parties were required to file documents within six weeks thereafter. Delhi. The defendants have filed photostat copies of some bills but they are not legible. The carbon copies of the bills in their possession have not been filed although issues in the suit were framed on 7th April, 1983 and the parties were required to file documents within six weeks thereafter. When the parties appeared before the Deputy Registrar on 13th July 1983 it was reported that no additional documents were filed by them. In other words it means that the defendants have no documents to support their prima facie case. The defendants have alleged that they sold goods worth Rs. 3,50. 000. 00 during the year 1981-82 including mirrors under the trade mark tony . Neither the accounts nor the carbon copies of the bills showing sales of mirrors under the impugned trade mark have been filed by them. Failure to produce documents in support of their case is a ground to draw presumption against them at this stage. ( 9 ) BALDEV Mitter, partner of the plaintiffs firm has filed a counter-affidavit denying the contents of the affidavit of the defendants. He deposes that the first bill dt. 3rd April, 1981 is alleged to have been issued by the defendants in favour of Mahavir Fancy Store who are related to them, and in collusion they have fabricated the evidence regarding the said bill. He further deposes that Mahavir Fancy Store deals in pencil and has no business of selling and dealing in mirrors, that all the bills referred to by the defendants are fabricated ones, that the purchasers of the goods from them have not filed affidavits. One Prem Chand, Partner of Bombay General Store to whom the defendants are alleged to have sold the goods however, filed an affidavit who has deposed only about one bill for Rs. 432. 00 dt. 31st July, 1981 stating that his firm purchased mirrors on 31st July, 1981 of the value of Rs. 432. 00. The defendants, also alleged to have sold on 31st July, 1981 mirrors of the value of Rs. 288. 00 to Bombay General Store but there is no mention of the other bill for Rs. 288. 432. 00 dt. 31st July, 1981 stating that his firm purchased mirrors on 31st July, 1981 of the value of Rs. 432. 00. The defendants, also alleged to have sold on 31st July, 1981 mirrors of the value of Rs. 288. 00 to Bombay General Store but there is no mention of the other bill for Rs. 288. 00 in his affidavit Learned counsel for the plaintiffs submits that the defendants have failed to disclose even prima facie the amount of sales made by them relating to mirrors under the impugned trade mark, that Prem Chand, partner of Bombay General Store only has filed the affidavit which is also not believable as it is contrary to the allegations of the defendants. No other alleged purchaser of the defendants has filed any affidavit. ( 10 ) IN an action for passing off the plaintiff has to establish user of the mark prior in point of time than the impugned user by the defendants. The registration of the mark prior in point of time to user by the plaintiff is irrelevant in an action for passing off. Proof of actual damage or fraud is also unnecessary in a passing off action. If there is a likelihood of the offending trade mark invading the proprietary right, a case for temporary injunction is made See : Century Traders v. Roshan Lal Duggar and Co. AIR 1978 Delhi 250. Although the defendants allege that they have been using the trade mark TONY since 3rd April, 1981 but they have not placed any material to show even prima facie that they were the prior users. The plaintiffs on the other hand have placed sufficient material on record to hold prima facie that they have been the prior users of the mirrors in question, that they have been dealing in these mirrors regularly since August, 1981. The mirrors sold by the plaintiffs are manufactured by the Tony Plastics (India), a firm associated with the plaintiffs. It has been alleged by the plaintiffs that Tony Plastics (India) manufacture the goods only for the plaintiffs who have been marketing the same. ( 11 ) IT appears that the defandants considering the sales, design and reputation of the plaintiffs mirrors have recently adopted their trade mark. It has been alleged by the plaintiffs that Tony Plastics (India) manufacture the goods only for the plaintiffs who have been marketing the same. ( 11 ) IT appears that the defandants considering the sales, design and reputation of the plaintiffs mirrors have recently adopted their trade mark. It is better that they stop passing off their goods under the trade mark TONY at the earliest If they are sure about the quality and utility of their mirrors, they may sell under any other trade mark. The plaintiffs have a prima facie case and if the defendants are not restrained the plaintiffs shall suffer irreparable loss in business. The balance of convenience is in favour of the plaintiffs. The defendants are therefore, hereby restrained till the decision of the suit from passing off their goods as the goods of the plaintiff under the trade mark TONY and/or any other identical or deceptively similar trade mark and they are also restrained from dealing in mirror with shelf of the artistic and distinctive design and arrangement as that of the plaintiffs which is manufactured by Tony Plastics (India) bearing the label tony Mirror and is marked a on the record of this suit. No order as to costs.