VRAJLAL MANILAL AND COMPANY v. N. S. BIDI COMPANY — 1987 DIGILAW 161 (DEL)

C. L. CHAUDHRY, J. ( 1 ) THE plaintiffs have filed a suit for perpetual injunction praying for the following reliefs : (I) For perpetual injunction restraining the defendants, their servants, agents, representatives, dealers ad all other persons on their behalf from manufacturing, selling or otherwise dealing in bidis under the trade mark consisting of numerals 12 or any other trade mark identical and/or deceptively similar to the plaintiffs registered trade marks 22, under the provisions of the Trade and Merchandise Marks Act, 1958. (ii) For perpetual injunction restraining the defendants, their servants, agents, dealers, representatives and all other persons on their behalf from infringing/offending or violating the plaintiffs copyrights by printing, publishing reproducing or otherwise dealing in the labels entitled 12 or any other label identical and/or deceptively similar to the plaintiffs label 22; (in) For perpetual injunction restraining the defendants, their servants, agents, dealers, representatives and all other persons on their behalf from passing off their bidis as and for those of the plaintiffs or connected with the plaintiffs under the trade mark or lable 12 and/or any other trade mark/label which may be identical and/or deceptively similar to the plaintiffs trade mark/label 22; ( 2 ) ALONG with the suit the plaintiffs have filed I. A. 3766/1986 under 0. 39, Rr. 1 and 2 of the Code of Civil Procedure praying that during the pendency of the suit the defendants and their servants may be restrained from manufacturing, selling, offering for sale or otherwise dealing in the bidis under the trade mark/label 12 or any other trade mark/label which may be identical with and/or deceptively similar to the label 22 of the plaintiffs. ( 3 ) THE plaint proceeds on the allegations that the plaintiff firm has been carrying on the well established business of manufacturing and marketing of bidis for the last more than 5 decades. It is stated that since 1935 the plaintiffs have been using the trade mark/labels consisting of numerals 22 for their aforesaid bidis and that the trade marks/labels comprising and/or consisting of numerals 22 are duly registered in the name of the plaintiff under the provisions of the Trade and Merchandise Marks Act 1958. It is further contended that the registration of the trade marks had been renewed from time to time and the same are still valid, subsisting and effective throughout India. It is further contended that the registration of the trade marks had been renewed from time to time and the same are still valid, subsisting and effective throughout India. If is next contended that the plaintiffs have also been using the said trade mark in the form of labels for the purpose of marketing their bidis since 1935. The salient features of the said labels are stated to be "that the label has a blue colour background. On the top of the label, there appears a white blank whereon trade name/trading style of plaintiffs appears in black colour in Hindi. The bottom of the label similarly has a white blank whereon the trading style of the plaintiffs appears in black colour in English. The entire middle portion of the label is occupied by the picture of heart in red colour and is surrounded by golden colour lines. On the red colour heart the trade mark 22 of the plaintiff appears in golden colour surrounded by black colour lines. " ( 4 ) IT further states that the colour scheme, get up, lay out, writing style and arrangement of the plaintiffs label is unique and artistic and the same appeals to the eyes. The plaintiffs have claimed to be the owners of the copyright of the said label under the law. The plaintiffs assert that they have given wide publicity to their trade mark 22 and artistic labels entitled 22 and the said goods viz. , bidis under the said trade mark and label 22 connote and denote the goods and merchandise of the plaintiffs origin and of one else. The sales of the bidis run in several crores of rupees. The plaintiff claims that their trade mark and label entitled 22 have acquired unique reputation and enviable goodwill in public and trade and the bidis under the same are exclusively identified and associated by the trade and public to have emanated from the plaintiffs only. The use and advertisement of the impugned trade mark and also the label consisting of numerals 22 has been so open, extensive and voluminous that the bidis of the plaintiffs are being purchased, asked for, sold and referred to by name and with reference to numerals 22. The public purchases the bidis of the plaintiffs under the trade mark and label 22 as a guarantee of excellent quality. The public purchases the bidis of the plaintiffs under the trade mark and label 22 as a guarantee of excellent quality. The plaintiff is stated to be having branches at Delhi, Agra, Lucknow and Sagar. The case of the plaintiff is that the defendants have recently adopted the trade mark/labels consisting of numerals 12 which is identical with and/or deceptively similar to the registered trade mark 22 of the plaintiffs. The adoption and use of the said trade mark/label 12 on the part of the defendants amounts to infringement of the plaintiffs aforesaid registered and reputed trade mark/label 22. It is further claimed that the defendants have also adopted identical and/or deceptively similar label, colour scheme, get up, lay out, writing style and arrangement of the plaintiffs label which acts further amount to infringement of plaintiffs vested and legal copyright in the label entitled 22. The defendant s label is nothing but a slavish copy of the plaintiffs label. A mere look at the two labels would conclude that the defendant s label could not have been designed by the designer unless the plaintiffs label had been placed before him. The defendants have no right or justification to use or adopt the impugned trade mark/label which are deceptively similar to the plaintiffs label/trade mark 22. The act of the defendants is stated to be a clear and flagrant violation of the plaintiffs rights guaranteed by virtue of the registration of trade marks/labels 22 and long, continuous and extensive use of the trade mark/labels 22. The plaintiff further alleges that the purchasers and intending purchasers of the goods viz. bidis, are the servants, villagers, poor and illiterate persons etc. which is an unwary class of purchasers and who demand and recognise the plaintiffs bidis by the trade mark 22 and colour scheme of the label 22. The confusion and deception among the public and trade is inevitable due to the close deceptive similarity of the trade marks and labels. The manner in which the defendants are using the trade mark/label 12 apparently indicates the intention of the defendants to give to the purchaser an impression that their bidis are coming from the plaintiffs or their bidis are 22 number bidis or connected with the plaintiffs in some or the other manner. The defendants are passing off their inferior and sub-standard bidis as and for the quality bidis of the plaintiffs. The defendants are passing off their inferior and sub-standard bidis as and for the quality bidis of the plaintiffs. The plaintiffs further contend that on account of the defendant s aforesaid deliberate, unlawful and unjust trade activities the plaintiffs have suffered damage in the well-known and well established trade and reputation and further damage to the trade and reputation are inevitable unless the defendants are restrained immediately by an injunctionorder from infringing the plaintiffs registered trade mark and copyrights. The pecuniary compensation will not afford adequate relief to the plaintiffs as the hard earned goodwill and reputation of the plaintiffs, if once lost, would not be regained by money. On these premises the plaintiffs claim that the interim injunction is the only appropriate remedy to safeguard the interest of the plaintiff. ( 5 ) THE defendants have contested this application. They have denied that the trade mark/labels comprising and/or consisting of numerals 22 are duly registered in the name of the plaintiff. It is further contended that the registrations, if any, are illegal, irregular and invalid. The plaintiffs are not admitted to be the proprietors of the labels alleged to be used for the purpose of marketing bidis since 1935. The defendants claim that the labels of the plaintiffs are not original in character and have been slavishly copied by the plaintiffs from the labels of registered trade marks for bidis belonging to other manufacturers. Ownership of the plaintiff regarding copyright of the label is denied. It has been denied by the defendants that the plaintiffs have given wide publicity to the trade mark 22 and its artistic labels entitled 22 and the said trade marks and labels connote and denote the goods of the plaintiffs origin. Figures of the sales are stated to be fanciful and exaggerated. It has also been denied that the plaintiffs trade mark and label entitled 22 have acquired unique reputation and enviable goodwill in public. The case of the defendants is that defendant adopted the trade mark bidi No. 12 in respect of bidis which is not identical and/or deceptively similar to the alleged registered trade mark/label 22 of the plaintiffs. It is further stated that the purchasers understand the difference between the numerals 12 and 22 and as such there is no possibility of any deception or confusion. The allegations of passing off have been denied. It is further stated that the purchasers understand the difference between the numerals 12 and 22 and as such there is no possibility of any deception or confusion. The allegations of passing off have been denied. ( 6 ) I have heard the learned counsel for the parties at length. ( 7 ) THE plaintiff has produced on record the yearwise sale figures from the year 1937- 38 to 1983-84. The sales in the year 1937-38 was Rs. 71,118. 00 and in the year 1983-84 it is Rs. 17,015,9954. 30- The certificate of renewal of the trade mark of the plaintiff bearing No. 3427 for a period of 7 years from 14-8-1985 has also been placed on record. The plaintiff has also produced the photo copies of the bills and orders and advertisements for the year 1958 onwards. The statement showing receipts of quantities of labels of bidis to be sold under the trade mark 22 for the years 1935 to 1955 has been filed. Also placed on record are the photo copies of the advertisement entitled 22 in a number of newspapers starting from 1980 till 1984. The plaintiff has made allegations that the defendants have started using the labels and trade mark recently and they came to know about it in May, 1986. The defendants in their reply have not repudiated the allegations made by the plaintiffs. It appears that the defendants have recently started selling their bidis under the trade mark 12 . I have compared the labels used by the plaintiff and the defendants for selling their products, to find out whether there could possibly be any similarity at all between the two. From their appearance, both the labels look quite identical and there is not much dissimilarity. I find from the labels that the colour scheme, get up, lay out of both the labels is almost identical. Both the labels are having all the prominent features in the same manner and practically they have the same colour. There is a slight difference in the colour but that is negligible; and it can escape from notice of anybody if these labels are not put side by side. The resemblance between the two labels is extremely close. Both the labels are having all the prominent features in the same manner and practically they have the same colour. There is a slight difference in the colour but that is negligible; and it can escape from notice of anybody if these labels are not put side by side. The resemblance between the two labels is extremely close. In view of the fact that the bidis are consumed and used by illiterate and unwary purchasers, it would be impossible for them to decipher an imperceptible difference when would not have been even I found by a reasonable intelligent buyer. Learned counsel for the defendant argued that the get up of the two labels is not the same. Moreover, there is a difference in the numerals and the plaintiff is not entitled to the relief asked for in this application. In support of his contention he has relied upon Ardath Tobacco Co. Ltd. v. W. Sandoridas Ltd. ; 1925 RPC 5 and Karda Bottomma v. Korada Audinarayana; AIR 1918mad56 (l ). In my opinion the judgments relied upon the defendant do not advance his case any further. In this case, the question involved is not only regarding the use of numerals. The case of the plaintiff is that the defendants are selling their goods in labels which are exactly similar to that of the plaintiff. It can be stressed that the use of numerals 12 may not by itself amount to infringement of the trade mark of the plaintiff. But the plaintiff has not confined its claim only to the numerals 12 . The case set up by the plaintiff is that his trade mark is 22 and he has been selling his goods in a particular type of labels since 1935 and the defendant is copying and using almost exactly similar labels. The view I have taken is supported by two judgments. The first is Tavener Rutledge Ltd. v. Specters Ltd. ; 1959 RPC 83. This was an action for infringement of trade mark, passing off and for infringement of copyright. It was observed as under : "when you come to the reproduction of the fruit drops in the Defendants design they bear the name specters instead of taveners but otherwise they are almost exactly similar. This was an action for infringement of trade mark, passing off and for infringement of copyright. It was observed as under : "when you come to the reproduction of the fruit drops in the Defendants design they bear the name specters instead of taveners but otherwise they are almost exactly similar. The arrangement is almost precisely the same and the colour s, though in some cases perhaps slightly darker in the Defendants design are exactly similar otherwise to the plaintiffs and the series in which they appear in different colours is completely in accordance with the plaintiffs own arrangement. It became obvious to me and it is now accepted that an artist who was employed by Lloyd s to produce a design to the Defendants, whether goaded by the Defendants or not, did in fact copy the plaintiffs design. It is quite incredible that the result should have been reached in any other way, and therefore, the defendants design is a copy of the Plaintiffs design with merely trifling additions in addition to the different background, done, it would appear, with the idea of trying to give the effect that it was somebody else s effort. "the other case is Vicco Laboratories v. Hindustan Rimmer; AIR 1979 Delhi 114. This was a suitfiled by the plaintiff for injunction restraining the defendants from using their product "carton and tubes" pertaining to Cosmo Turmeric Vanishing Cream and other carton or tube which was deceptively similar to the plaintiffs carton and tube pertaining to Vicco Turmeric vanishing cream so as to pass off as the goods of the plaintiff. It was observed while disposing of the application under O. 39 Rr. 1 and 2 as under : "the plaintiffs claim passing off by the defendants of their product as and for the product of the plaintiffs on the basis of the copy of the distinctive get-up and colour scheme of the collapsible tubes and the cartons by them. The defendants are not entitled to represent their goods as being the goods of the plaintiffs. The defendants are not entitled to represent their goods as being the goods of the plaintiffs. The two marks vicco and cosmo used by the plaintiffs and defendants respectively are no doubt different and the mark cosmo by itself is not likely to deceive but the entire get up and the colour scheme of the tube and the carton adopted by the plaintiffs and the defendants are identical in every detail and are likely to confuse and deceive the customer easily. The get up and the colour scheme of the plaintiffs adopted in every detail by the defendants for their tube and the carton cannot be said to have been adopted by the defendants unintentionally. " ( 8 ) COUNSEL for the defendant also relied upon the judgment delivered by this court in Suit No. 1462/1984 where the challenge of the plaintiff against M/s. K. M. Sinha and Bros. for the infringement of their trade mark failed. I have perused the judgment and gone through the facts of that case. In that case the plaintiff was non-suited on the ground of delay and waiver. The finding given in that suit was that the plaintiff had brought the action against the defendant after a lapse of so many years. This is not the case here. The defendant cannot get support from that judgment because, as already stated, the defendants have not controverted the plea of the plaintiffs that the defendants have started selling their goods recently and they came to know about it in May, 1986. ( 9 ) PRIMA facie, I am of the view that the plaintiff has been able to establish that their goods had become by user distinctive of the plaintiffs goods. The conduct of the defendant is calculated to pass off their goods as those of the plaintiffs, or at least, to produce confusion in the minds of probable customers or purchasers or other persons with whom the plaintiff has business relations as would likely to lead to the other goods being bought and sold for theirs. It appears that the defendants have designed a label with the intention of immitating that of the plaintiff for the sole purpose of committing wrongful loss to the plaintiff. In my opinion the plaintiff has been able to make out prima facie case for the grant of injunction. It appears that the defendants have designed a label with the intention of immitating that of the plaintiff for the sole purpose of committing wrongful loss to the plaintiff. In my opinion the plaintiff has been able to make out prima facie case for the grant of injunction. The balance of convenience is also in favour of the plaintiff and in case the defendants are not restrained, the plaintiff is likely to suffer irreparable injury. ( 10 ) THE result is that this application is allowed. The defendants are restrained from manufacturing, selling, offering for sale or otherwise dealing in bidis under the trade mark/labels which may be identical with and/or deceptively similar to the label 22 of the plaintiff till the final disposal of the suit. No observation herein contained shall be construed as an expression of opinion in respect of any matter which may arise at the time of final decision of the case.