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1986 DIGILAW 258 (DEL)

KUNDAN SOAP COMPANY v. AJANTA SOAP COMPANY

1986-07-23

SUNANDA BHANDARE

body1986
Sunanda Bhandare ( 1 ) THE plaintiff is a partnership firm carrying on the business of manufacturing and marketing of washing soap and for that purpose claims to be using the trade mark ASHIRVAD. The plaintiff applied for registration of the trade mark ASHIRVAD with the Registrar of Trade Marks. The advertisement in this regard was issued in Trade Marks Journal No. 856 and no objection was filed by any party. The plaintiff markets the washifng soap using the trade mark ASHIRVAD in an artistic wrapper, the design for which is registered under the Copy Right Act 1957. It is alleged by the plaintiff that the defendants who are also engaged in manufacturing and selling of washing soap adopted identical and/or deceptively similar trade mark ASHIRVAD and also copied the artistic design of wrapper in clear violation and infringement of the plaintiff s trade mark and copy right. The plaintiff, therefore, filed a suit for perpetual injunction restraining the defendants from manufacturing, selling, offerring for sale or otherwise dealing in washing soap under the trade mark ASHIRVAD or any other trade mark which may be identical or deceptively similar to the plaintiff s trade mark ASHIRVAD and for further injunction restraining the defendants from infringing the plaintiff s copy right by printing, publishing or using or reproducing the artistic wrappers entitled ASHIRVAD and further for an order of injunction restraining the defendants from passing of their washing soap under the trade mark or wrapper ASHIRVAD and for rendition of accounts of profits earned by the defendants on the sale of washing soap under the trade mark ASHIRVAD or infringing wrappers on the basis of sale made during the last three years from the filing of the suit till the date of injunction. Alongwith the plaint, the plaintiff filed the present interim application under Order 39 Rules 1 and 2 praying that during the pendency of the suit the defendants be restrained from using trade mark and artistic wrapper entitled ASHIRVAD. ( 2 ) BY order dated 10th March 1986 this Court issued notice to the defendants and pending notice of this application granted an ex-parte injunction restraining the defendants, their agents, servants, dealers, representatives and all other persons from manufacturing, selling, offerring for sale or otherwise dealing in washing soap etc. ( 2 ) BY order dated 10th March 1986 this Court issued notice to the defendants and pending notice of this application granted an ex-parte injunction restraining the defendants, their agents, servants, dealers, representatives and all other persons from manufacturing, selling, offerring for sale or otherwise dealing in washing soap etc. under the trade mark and wrapper entitled ASHIRVAD or any other trade mark or wrapper which may be identical with and or deceptively similar to the plaintiff s trade mark ASHIRVAD. ( 3 ) THE defendants filed a counter-affidavit to the interim application and prayed that the interim order granted be vacated. ( 4 ) WHEN the application came up for hearing, learned counsel for the plaintiff made a statement that during the intervening period the plaintiff was granted registration under the Trade and Merchandise Act 1958 for the trade mark ASH1rvad. A photo-stat copy of the registration dated 19th May 1986 was filed alongwith the rejoinder affidavit and further an application under Order 6 Rule 17 read with Section 151 Civil Procedure Code was also filed for amendment of the original plaint. The learned counsel, therefore, made a two-fold argument. ( 5 ) IT was submitted by the learned counsel for the plaintiff that in view of the registration the plaintiff has now acquired a statutory right which should be protected by an order of injunction and further even if the registration of the trade mark was not to be considered because it was not registered prior to the filing of the suit, the plaintiff being the prior user of the trade mark and had acquired a reputation because of the distinctive artistic logo was entitled to the same protection. In support of his contention, learned counsel referred to the sale figures of the plaintiff, the application for trade mark dated 21st August 1981, various advertisements issued by the plaintiff and the registration of the Copy Right for the artistic logo. It was further contended that the defendants not having given any sale figures and not having shown that they are the prior user of the trade mark should be restrained from using the trade mark. It was further contended that the defendants have also been infringing the right of the plaintiff under the Copy Right Act. It was further contended that the defendants not having given any sale figures and not having shown that they are the prior user of the trade mark should be restrained from using the trade mark. It was further contended that the defendants have also been infringing the right of the plaintiff under the Copy Right Act. It was submitted that the plaintiff had got the artistic wrapper specially designed and the same was registered under the Copy Right Act. Learned counsel referred to the two wrappers to show that the wrapper of the defendants was deceptively, similar to the distinctive wrapper of the plaintiff and a common customer was likely to be mislead. It was further submitted that the defendants had not given any particulars regarding its user, sale figures etc. in the counter-affidavit and the plaintiff having filed the application immediately after the infringement by the defendants had come to their notice were entitled to the injunction prayed for. Learned counsel referred to Century Traders v. Roshan Lal Duggar and Co. ,1 in support of his contention that if prior user of the plaintiff was established the injunction ought to be granted. ( 6 ) LEARNED counsel for the defendants contended that since the plaintiff had not got the trade mark registered prior to the filing of the suit the plaintiff was not entitled to file a suit under Section 27 (1) of the Trade and Merchandise Act, 1958 for infringement but was entitled to get relief only for passing off and in such a case interim injunction should be granted only in the rarest of rare cases because due to the order of injunction the business of the defendants would come to a stand-still and unless the plaintiff made out a strong case based on evidence the balance of convenience demands that no injunction is granted during the pendency of the suit, It was submitted that in the present case the suit was only at a preliminary stage and the balance of convenience was in favour of the defendants. It was not disputed that the plaintiff was the prior user but it was submitted that the plaintiff s trade mark did not have distinctive features and wide reputation as claimed by the plaintiff. Learned counsel further submitted that in order to get relief the plaintiff had to prove substantial user, its distinctive features and wide reputation and 1. It was not disputed that the plaintiff was the prior user but it was submitted that the plaintiff s trade mark did not have distinctive features and wide reputation as claimed by the plaintiff. Learned counsel further submitted that in order to get relief the plaintiff had to prove substantial user, its distinctive features and wide reputation and 1. AIR 1978 (Delhi) 250. all these things could not be proved except by adducing evidence. That stage had not yet reached in the present case and, therefore, the plaintiffs were not entitled to an interlocutory order till the evidence was concluded. Learned counsel referred to Khemraj Shrikrishnadass v. Mjs. Garg and Co. and Another* M/s Victory Transport Co. Pvt. Ltd. v. District Judge, Ghaziabad and Others3 and Teju Singh v. Shanta Devi,* On the second question of registration of artistic design under the Copy Right Act it was submitted by the learned counsel that the registration of the plaintiff s artistic design under the Copy Right Act was of no consequence because under Section 15 (2) of the Copy Right Act an artistic design capable of being registered under Indian Patent and Designs Act, 1911 but not registered ceases to be operative as soon as it is reproduced more than 50 times by any industrial process by the owner. Since the plaintiff had used the design on the wrapper more than 50 times the registration had become useless. It was further contended that evenotherwise the wrapper ; and design of the defendants was not deceptively similar to the design and trade mark of the plaintiff. Learned counsel referred to the two wrappers to indicate the differences in the wrapper. In order to show that the balance of convenience is in favour of the defendants, learned counsel for the defendants are restricted only to one district and their business will come to a stand-still if an order of injunction is passed. ( 7 ) THE two well settled considerations which weigh with the court while granting an injunction are : (a) that the plaintiff has been able to establish a prima-facie case ; and (b) that the balance of convenience lies in favour of granting an injunction against the defendants. ( 7 ) THE two well settled considerations which weigh with the court while granting an injunction are : (a) that the plaintiff has been able to establish a prima-facie case ; and (b) that the balance of convenience lies in favour of granting an injunction against the defendants. In a case of infringement of registered trade mark the right is founded on registration of trade mark which is a right to property and, therefore, similarity in trade mark is perse action- able. But it is equally well settled that in an action for passing off the plaintiff has not only to prove that he is the prior user but also that there is likelihood of deceit. This can be done as held by this Court in Khemraj Shri- krishnadass s case by establishing :- (A) distinctive features (b) substantial user ; and (c) wide reputation ( 8 ) THERE can be no doubt that the standard of proof in a case of passing off which is a common law right has to be very high. In the present case, the prior user of the plaintiff is not disputed by the defendants. The figures of the sales of the plaintiff also indicate that the plaintiff has been marketing and advertising the washing soap with the trade mark ASHIRVAD all over India and has large sales. The defendants have not chosen to place on record its sales figures and in fact it is admitted that the sales of the defendants are confined only to one district. I find no substance in the argument of the learned counsel for the defendants that there are several differences in the design of the defendants wrapper. As held by the Supreme Court in Parle Products (P) Ltd. v. J. P. and Co. ,6 in order to come to a conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. To my mind, prima-facie the two wrappers of the plaintiff and the defendants give an overall appearance of similarity which is likely to mislead a common customer of washing soap. The wrappers are of the same orange colour scheme, get up and writing style. Moreover the trade name is not a mere discriptive word of common use. Furthermore the registration under the Copy Right Act also adds to its distinctiveness. The wrappers are of the same orange colour scheme, get up and writing style. Moreover the trade name is not a mere discriptive word of common use. Furthermore the registration under the Copy Right Act also adds to its distinctiveness. The plaintiff has, therefore, made out a prima-facie case for an action for passing of. ( 9 ) NOW coming to the next question of balance of convenience. Admittedly the activities of the defendants are restricted only to one district and the sales of the plaintiff are very large. Added to this one cannot lose sight of the fact that the plaintiff has how been able to obtain a registration of the trade mark from a back date because though the registration was granted on 19th May 1986 it is effective for 7 years from 21st August 1981. The Court cannot overlook this factor altogether and if injunction is not granted till the conclusion of evidence and disposal of the suit, continuous damage will be caused to the rights of the plaintiff. The defendants were given an apportunity by way of a show cause notice but they have chosen not to file a detailed reply. It is possible that the defendants business will be affected. In fact it does appear that very often small manufacturers do suffer. But having admitted that the plaintiff is the prior user and having failed to even prima-facie establish that their continuous use of the trade marke ASHIRVAD is not likely to mislead, the damage that will be caused to the plaintiff appears to me to be greater. I find it difficult to accept the contention of the learned counsel for the defendants that when business of the small manufactures is likely to be affected like in a death sentence case only in rarest of rare cases injunction should be granted. To my mind, once the two preliminary considerations are satisfied i. e. the plaintiff has made out a strong prima-facie case and shown that the balance of convenience lies in his favour an order of injunction ought to follow. ( 10 ) THEREFORE, without going into the question of the rights of the plaintiff under the Copy Right Act the ad-interim ex-parte order dated 10th March 1986 is confirmed. ( 10 ) THEREFORE, without going into the question of the rights of the plaintiff under the Copy Right Act the ad-interim ex-parte order dated 10th March 1986 is confirmed. It is however made clear that the observations made in this order are tentative and will not prejudice the trial of the suit on its merits in any manner. There will be no order as to costs.