D. P. Wadhwa ( 1 ) THIS is a passing off action. The plaintiffs, who are two in number, have filed this suit against the defendants, also two in number,for permanent injunction restraining the defendants from using the mark STAYFREE and the legend no BELTS : NO PINS : No STP1ngs on any packing for sale of sanitary napkins and allied products so as to pass off the goods of the defendants as those of the plaintiffs and the plaintiffs also want a decree requiring the defendants to render accounts in respect of the profits earned by them by using the mark STAYFREE and ths aforesaid legend on the packing of the defendants. The suit was filed on 5th May, 1986, Along with it, the plaintiffs filed an application (IA No. 3072/86} under Order 39,rules 1 and 2 and Section 151 of the Code of Civil Procedure, which is the subject-matter of this order. By this application, the plaintiffs by an adinterim order want to restrain the defendants from using the ma STAYFREE or the impugned legends NO BELTS : NO PINS : NO STRINGS on any of the packings of the defendants for sale of sanitary napkins. The packing of the defendints to which the plaintiffs object is Annexure *e to the plaint. ( 2 ) THE plaintiffs say that the first plaintiff is a Corporation organised under the laws of New Jersey, United States of America and carries on the business of manufacture, sale and export of sanitary napkins, sanitary belts etc. through its subsidiaries, associates and affiliates and that the second plaintiff is a subsidiary of the first plaintiff. The second plaintiff is a company registered under the Companies Act, 1956 and carries on the business of manufacture and sale of the sanitary napkins, sanitary belts etc. under the supervision and control of the first plaintiff and also as per specifications prescribed by the first plaintiff Both the defendants are also companies incorporated under the Companies Act, 1956. The first defendant carries on the business of manufacture and distribution of sanitary napkins and allied products and it is alleged that the second defendant manufactures these goods on behalf of the first defendant. The first plaintiff claims to be the proprietor of the trade mark STAYFREE in India in respect of sanitary napkins and allied products. The first defendant carries on the business of manufacture and distribution of sanitary napkins and allied products and it is alleged that the second defendant manufactures these goods on behalf of the first defendant. The first plaintiff claims to be the proprietor of the trade mark STAYFREE in India in respect of sanitary napkins and allied products. This mark STAYFREE is stated to have been coined and invented by the first plaintiff which mark is used by it in many countries It is said that STAYFREE is a registered trade mark of the first plaintiff in many countries like Australia, South Africa etc. The first plaintiff says that since June 1978 it had permitted the second plaintiff to use this trade mark STAYFREE in respect of sanitary napkir s manufactured by the second plaintiff in India as per specifications of the first plaintiff and that since then the second plaintiff is using this mark STAYFREE in respect of sanitary napkins manufactured and marketed by it in India. The plaintiffs say that the mark STAYFREE distinguishes thetr goods from similar goods and that this mark has acquired a wide reputation and goodwill in India and it is associated by the traders and public at large exclusively with the goods of the manufacture of the plaintiffs. The plaintiffs have filed a statement showing the sales figures of their goods sold under this mark. From the statement it will be seen that from the figure ofrs. l,60,000. 00inl978,thesales increased to over Rs. 13. 00 crores in 1985. The statement showing the publicity expenses incurred by the plaintiffs in popularising this mark would show that while in 1978 the expenses incurred were Rs. 1,27,000. 00 those in 1985 were over Rs. 1. 00 crores. The plaintiffs then say that the first plaintiff applied for registration of this mark as per its application of 18 December, 1980, in respect of sanitary napkins and personal hygiene products used in menstruaction claiming user since 1978 and that application is still pending and was advertised in the Trade Mark Journal on 16 August, 1984. It is said that on 26 November, 1984, the first defendant filed a notice of opposition 10 this application. It is said that on 26 November, 1984, the first defendant filed a notice of opposition 10 this application. The averment in this respect,however, is that the defendants were at all times fully aware that the first plaintiff was the proprietor of the trade mark STAYFREE and that the mark was owned by the first plaintiff in India and that this mark had become distinctive of the goods of the first plaintiff. The plaintiffs then say that the sanitary napkins are purchased by ladies which include semi-literate and that when buying they ask for sanitary napkins by the name STAYFREE. The plaintiffs also say that since the very beginning they had adopted polythene packs having distinctive colour scheme of blue, pink, green and white and the get up which is easily recognisable by the customers and that on this packing the mark STAYFREE is prominently displayed and the legend NO BELTS : NO PINS : NO STRINGS is printed. The plaintiffs continued to use this packing till December 1985 when it was slightly altered some time in January 1986. In respect of the packing also, the plaintiffs claim that it has come to be associated with the goods of their manufacture. ( 3 ) THE defendants also deal in the manufacture and sale of sanitary napkins and as is borne out they are the competitors of the plaintiffs. The plaintiffs say that in February 1986 they learnt that with a view to trade upon their reputation in respect of their mark STAYFREE and to pass off the goods of the defendants as. those of the plaintiffs, the defendants adopted their packing similar to that of the plaintiffs and the defendants also used the mark STAYFREE in respect of their goods, namely, sanitary napkins. The plaintiffs say that the defendants substantially copied their pack, the mark and the legend. The mark STAYFREE has been used seven times on the packings of the defendants, so the plaintiffs complain. The plaintiffs say that the defendants substantially copied their pack, the mark and the legend. The mark STAYFREE has been used seven times on the packings of the defendants, so the plaintiffs complain. They say that the whole aim and intention of the defendants is to trade upon the enviable reputation and goodwill acquired by the second plaintiff in respect of its goods and the defendants want to make dishonest and illegal gains by their illegal action by adopting the mark STAYFREE and the legend NO BELTS : NO PINS : NO STRINGS and also using the packing confusingly similar to that of the plaintiffs for the manufacture and sale of the sanitary napkins of the defendants. Thus, the plaintiffs complain that the defendants are trying to pass off their goods as those of the plaintiffs. Reference has been made in the plaint to certain earlier litigation between the parties and also exchange of notices, all at Bombay. The plaintiffs also say that their goods are of high quality and are also priced high in comparison to the goods of the defendants. ( 4 ) THE defendants have not yet filed their written statements. They have, however, separately filed detailed replies to which rejoinders and even sur-rejoinders have been filed. The defendants have also filed separately two applications under Section 10 of the Code of Civil Procedure seeking stay of these proceedings. ( 5 ) FROM reading the plaint I got the impression that the defendants are also manufacturirig and selling their goods under the mark STAYFREE. This is, however, not so. In fact, the defendants are marketing their goods under the mark COMFIT ALWAYS and then they have used the legend STAYFRPE BELTLESS sanitary napkins and also the legend NO BELTS : NO PINS : NO STRINGS, The defendants are also marketing their product under the mark COMFIT in yellow packing. The other packing where they have used the words STAYFREE BELTLESS, the packing is mostly blue. But, seeing the packing of the plaintiffs and that of the defendants which has been complained against, it cannot be sail that anyone would be misled. Both packings are quite distinctive. On the packing of the plaintiffs, there is a photograph of a la which is quite prominent and so a e certain other features. But, seeing the packing of the plaintiffs and that of the defendants which has been complained against, it cannot be sail that anyone would be misled. Both packings are quite distinctive. On the packing of the plaintiffs, there is a photograph of a la which is quite prominent and so a e certain other features. From visual angle it cannot, therefore, be said that by using the packing which is complained of by the plaintiffs, the defendants are passing off their goods as those of the plaintiffs. In fact, Mr. F. S. Nariman, learned senior counsel for the plaintiffs, for the purpose of decision of this application,did not advance any argument either on the use of the legend NO BELTS : NO PINS : NO STRINGS by the defendants and also as regards the packings of the defendants. ( 6 ) THE principal question, rather the only question, that arises is as regards the use of the word stayfree by the defendants on their packing. The plaintiffs say that the word STAYFREE is not a word of English language to be found in any dictionary. They say that though it cannot be said that this word was invented by the plaintiffs it was certainly coined by the and they have been using it since June 1978 in India. Mr. Nariman said that the defendants in the reply could only find the word "stayless" in some dictionary and from that it could not be said that the word STAYFREE is synonymous with stayless . Mr. Andhyarujina, learned counsel for the defendants, said that the word Stayfree was a colloquial word and was commonly u sed like the words trouble free , salt-free , problem free etc. He said that all these words were commonly used and that in fact two words were combined in one and further that the words salt-free , trouble-free etc. could not be found in a dictionary. He said that a dictionary could not be a correct guide to say that any particular word must invariably find mention in it. Mr. Andhyarujina said that the word stay-free could never be a trade mark inasmuch as the word was descriptive of the product. With reference to the packing of the plaintiffs, he said that the trade mark was Johnson and Johnson and STAYFREE was a type of the product of the plaintiffs. Mr. Andhyarujina said that the word stay-free could never be a trade mark inasmuch as the word was descriptive of the product. With reference to the packing of the plaintiffs, he said that the trade mark was Johnson and Johnson and STAYFREE was a type of the product of the plaintiffs. He said, if the plaintiffs could have no objection to the use of the word beltless they could similarly have no objection to the use of the said word STAYFREE. He said the word stayfree connotes that the said sanitary napkin when used would stay at its place without support or without there being anything to bold the napkin. He said the word merely connotes the t\pi of the napkins as there were napkins with belts, loops, pins, strings etc. The sanitary napkin marketed with the word stayfree merely connotes that it was stay-free type, that is, one that stays or that is without any stay. Mr. Andhyarujina said that the words stayfree and beltless on the packing of the defendants described their product. He said the mere use of the words beltless might not be enough as otherwise his product would be taken to be restricted only to belts that it could be used without any belt. He also said that description on his product with the mark STAYFREE or for that matter on the product of the plaintiffs was merely to tell the user thereof that he would be stay-free or that he would remain free to do anything by using that product. Thus, it was argued, that the word STAYFREE if not descriptive of the product as such, certainly conveyed a message to the user thereof of the type of the product. ( 7 ) AT this stage, I may examine the word stay with reference to certain dictionaries as well. If reference is made to the dictionaries, the word stay would mean, as would be relevant in the case before me, anything that props or supports or steadies or holds; or a brace; a strip or a piece of plastic or metal or bone used to stiffen collars, corsets and other clothing (see : Funkand Wagnalls Standard Desk Dictionary; New Webster s Dictionary of the English Language; Webster s Third New International Dictionary; Concise Oxford Dictionary ). The Longman Dictionary of Contemporary English defines the word stays as a lady s old-fashioned undergarment stiffened by pieces of bone and worn tight around waist . I have also come across the word stay being used for a small piece of metal of aluminium or brass to keep the window at its position when open. It has not been shown to me and neither I have come across the word stay as used with reference to garments of i:ndergarments in the sense suggested by Mr. Andhyarujina. Even if that was so, the proper word would appear to me to be stayless and not stayfree though I would say that my knowledge of English is rather limited. I think, the word STAYFREE has reference to the user, that is, it gives a message to the user. This would be apparent when the plaintiffs describe their goods as BELTLESS Sanitary Napkins and also there is a figure of a young girl on the packing and in that sense I would say that this word STAYFREE is descriptive of the article. But then the plaintiffs have been using the word STAYFREE on their sanitary napkins for quite some time past and that was to the knowledge of the defendants. Mr. Nariman said that even if it was said that the word STAYFREE was descriptive of the article, the word STAYFREE in the case of the goods of the plaintiffs had come to denote the goods of the plaintiff s and, therefore, the plaintiffs were entitled to restrain the defendants from using this word/mark so as to deceive the customers. In support of this submission, he REFERRED TO to a Division Bench decision of this court in Registrar of Trade Marks v. Hamdard National Foundation (India)1 and Reddaway v. Banham2 and in In re an Application by Dunlop Rubber Co. Ltd3 In the last mentioned case, the applicant applied for registration of the word trakgrip as a trade mark in respect of rubber tyres vehicle wheels. They claimed user of this word to distinguish their goods since 1931. Registration was refused. On an appeal, it was held: "the word "trakgrip" was a coined word, hitherto unknown to the English language, and what familarity it had was due to the Applicants use of it in connection with their own goods. They claimed user of this word to distinguish their goods since 1931. Registration was refused. On an appeal, it was held: "the word "trakgrip" was a coined word, hitherto unknown to the English language, and what familarity it had was due to the Applicants use of it in connection with their own goods. Accordingly it could not be said that it was a word which other traders would be likely, in the ordinary course of their business, to desire to use in connection with such articles. " ( 8 ) IT does appear to me that use of the word STAYFREE by the defendants on their packings for the sale of sanitary napkins, user of which is claimed by them since October 1985, could not be innocent. They have used the legend STAYFREE-BELTLESS and to my mind the word STAYFREE does not go quite well with the word BELTLESS. It cannot be stay-free and beltless and could only be stayless and beltless if the word stay is used to hold something as was suggested by Mr. Andhyarujina. But could it be said that by use of the word STAYFREE the defendants have been passing off their goods as those of the plaintiffs? In Durga Dutt Sharma v. N. P. Laboratories,4 the Supreme Court considered the difference between an action for infringement of a trade mark and thai of passing off and it said that in the case of passing off the defendant might escape liability if he could show that the added matter was sufficient to distinguish his goods from those of the plaintiff. The plaintiffs do not, for the purpose of this application, object to the colour scheme of the packing of the defendants as being deceptively similar to that of the plaintiffs packing. There is also no objection to the use of legend NO BELTS : NO PINS : NO STRINGS. The only objection is to the use of the word/maik STAYFREE on the packing of the defendants. ( 9 ) IF one examines the packings of the defendants as well as of the plaintiffs, these are very much different. The defendants on their packing have prominently used their mark COMF1 r ALWAYS and they have also put their mark which is circular in form and in blue and yellow colours. ( 9 ) IF one examines the packings of the defendants as well as of the plaintiffs, these are very much different. The defendants on their packing have prominently used their mark COMF1 r ALWAYS and they have also put their mark which is circular in form and in blue and yellow colours. It cannot be said that the defendants are marketing their goods in the packing with the mark STAYFREE. On the other band, the packing of the plaintiffs shows their mark STAYFREE prominently and as noted above there is a picture of a young girl showing how free she is feeling by using the sanitary napkin of the plaintiffs marketed with the mark STAYFREE. The mark STAYPREE is written in bold letters on a green background and then this word similarly is there all over the packing. The mark of the defendants COMFIT (light blue) ALWAYS (dark blue) and the circular sign (blue and yellow) is written on the white background and the words SIAYFREE-BELTLESS are either in blue against white background or in white against blue background. From seeing the packing of the defendants one could hardly say they are marketing their goods with the mark STAYFREE. Except for the use of the word STAYFREE by the defendants on their packing as above mentioned; there is no resemblance whatsoever between the packings of the plaintiffs and the defendants either phonetically, visually or otherwise. The plaintiffs say that the sanitary napkins marketed by them are purchased by ladies which include semi-literate and they ask for the plaintiffs sanitary napkins by STAYFREE. That would mean that the napkins are purchased by literate and semi-literate Ladies. The language on the packings is English all over and describes the user of the product in detail. A literate lady is not likely to be deceived into buying the napkins of the plaintiffs in the packings of the defendants. Mr. Nariman said that the goods of the defendants were cheaper by about Rs. 2. 00 and that if a semi-literate lady asked a shopkeeper to give her STAYFREE napkins, the shopkeeper might give her napkins of the defendants. I think, in the present circumstances, such a case might amount to cheating by the shopkeeper. Mr. Nariman said that the goods of the defendants were cheaper by about Rs. 2. 00 and that if a semi-literate lady asked a shopkeeper to give her STAYFREE napkins, the shopkeeper might give her napkins of the defendants. I think, in the present circumstances, such a case might amount to cheating by the shopkeeper. Thus, even if I accept the plea of the plaintffs that the work/mark STAYFREE was coined by them or that it being descriptive, the goods of the plaintiffs have established reputation with it or the goods of the plaintiffs are identified with the word/mark STAYFREE, the plaintiffs have not been able to show that the use of the word STAYFREE by the defendants on their packings is calculated to deceive the customers as such. If a reference is made to a bill of Ramesh General. Store, New Delhi, which is dated 25-4-19 6, for the sale of sanitary napkins of the defendants and which bill was filed in court by the plaintiffs to show that the goods were being sold in Delhi on commercial scale and thus the count would have jurisdiction to try the present suit, it would be seen that the goods of the defendants have been described as Comfit Always and Comfit Regular. The goods of the defendants cannot, therefore, be said to be sold in the packing with the mark/word STAYFREE. Prima facie, therefore, I am not satisfied that the plaintiffs have made out a case for grant of an interim injunction. In view of this, it is not necessary for me to refer to the other arguments by way of preliminary objections advanced by Mr. Andhyarujina except to consider hia objection as to the jurisdiction of this court. ( 10 ) MR. Andhyarujina said that the defendants under some agreement with another party were selling their goods at Bombay though he admitted that the goods of the defendants were being sold in Delhi in large scale. These, he said, were being sold by the party to whom the defendants were selling their goods at Bombay. In support of his argument, Mr. Andhyarujina REFERRED TO to a decision of the Punjab and Haryana High Court in H. P. H. P. Marketing and Processing Corporation \. M,m, Breweries. 6 The facts of that case are, however, quite different. These, he said, were being sold by the party to whom the defendants were selling their goods at Bombay. In support of his argument, Mr. Andhyarujina REFERRED TO to a decision of the Punjab and Haryana High Court in H. P. H. P. Marketing and Processing Corporation \. M,m, Breweries. 6 The facts of that case are, however, quite different. It is admitted by the defendants that their goods are being sold in Delhi on large commercial scale. It can be said, therefore, that the causs of action does arise in Delhi. In somewhat similar circumstances, I have held in a case recently decided by me that Delhi court would have jurisdiction in the matter: see Suit No. 228/^4, B. K. Engineering v. UBHI Enterprises decided on 27-5-1986. I will, therefore, reject the argument of Mr. Andhyatujina that this court has no jurisdiction to try the present suit. ( 11 ) MR. Andhyarujina strongly commented on the conduct of the plaintiffs for procuring certain affidavits and in rushing to file this suit in the Delhi High Court. He said, the plaintiffs were guilty of various mis-statements and suppression of material facts. It was pointed out that the plaint and the affidavits did not contain proper verifications. Mr. Andhyarujina also said that under the provisions of Section 11 of the Industries (Development and Regulation) Act, the plaintiffs could not market their goods under the mark STAYFREE. This was controverted by Mr. Nariman aad he said that the provisions of that Act were not at all applicable and that in any case it was not for the defendants to raise such an objection in a suit on passing off action. Mr. Andhyarujina also said that as a court of equity I should even otherwise grant no relief to the plaintiffs as their action in filing the suit in Delhi was mala fide. He said that various proceedings between the parties were pending not necessarily with reference to the mark STAYFREE but in relation to some other marks in Bombay and that the evidence in the present case would all be available in Bombay where also the parties have their regtstered/head offices/ manufacturing units. He said that various proceedings between the parties were pending not necessarily with reference to the mark STAYFREE but in relation to some other marks in Bombay and that the evidence in the present case would all be available in Bombay where also the parties have their regtstered/head offices/ manufacturing units. I must say, I was also a bit surprised as to why the plaintiffs chose this court for filing this suit though I have already held that this court has jurisdiction in the matter as part of the cause of action could be said to have arisen in Dslhi. Mr. Narimaa said that 25% of the sales of the plaintiffs were in Northern India and that the divisional office of the plaintiffs is in Delhi. He also pointed out that an office of the defendants is also located in Delhi. Mr. Nariman also said that the principle of forum of convenience is inapplicable in India and that the defendants could seek transfer of the case from Delhi to Bombay under the provisions of the Code of Civil Procedure. Mr. Andhyarujina also REFERRED TO to a decision of the Calcutta High Court in Jokai Tea Co. v. Bhawani Shankar. 6 stating that in circumstances the present proceedings be stayed. I would,however, say nothing on the point of forum of convenience or as regards stay of these proceedings as applications of the defendants under Section 10 of the Code are still pending. ( 12 ) I would, therefore, dismiss this application. There will be, however,no order as to costs. ( 13 ) BEFORE parting I will note that the application of the plaintiffs for registration of the mark STAYFREE is pending under the provisions of the Trade and Merchandise Marks Act, 1958, to which ths defendants have filed a notice of opposition. Since for the purpose of this order I took only a pumafacie view of the matter, any observation made by me in the order would not come in the way of the authorities under the Trade and Merchandise Marks Act in deciding the application of the plaintiffs for registration of the trade mark.