KUMAR ELECTRIC WORKS v. ANUJ ELECTRONICS — 1989 DIGILAW 264 (DEL)

G. C. Jain ( 1 ) IN an action for passing off and infringement of trade mark, the plaintiff has filed this application under Order 39 Rulers 1 and 2 read with Section 151 of Code of Civil Procedure seeking temporary injunction restraining the defendants its servants, agents and representatives from manufacturing, selling offering for sale or otherwise dealing in Black and White T. V. sets under the impugned trade mark olympus and passing off its said product under the said trade ma or any other similar and/or deceptively identical trade mark as that of the plaintiff. ( 2 ) ACCORDING to the averments in the plaint the plaintiff was a partnership firm. S/sh. Vino3 Kumar, Satish Kumar, T. C. Kumar and Raj Kumar were its partners. It was engaged in the business of manufacturing and marketing of electrical and electronics goods since the year 1979. In 1983 it started using trade mark olympus -for its electronics and electricals products and was using the same since then. It has enormous sales throughout India and has been spending substantial amount of advertisements. On account of long, established, continuous and extensive user coupled with large scale publicity throughout the whole country since 1983, the plaintiff s trade mark had acquired distinctiveness and had come about to be exclusively identified and recognised with the products of the plaintiffs manufacture and was adapted to distinguish the products of the plaintiff and was connected in the course of trade with the plaintiff exclusively. ( 3 ) FURTHER case of the plaintiff is that the plaintiff s tradmark olympus was duly registered at No. 417839 as of February 17, 1984 in the name of Sh. Raj Kumar, one of the partners of plaintiff firms in respect of electric flat irons included in class 9, and it had also applied for registeration under class 11 and 7 and that design of electric fan of the plaintiff was registered at No, 153018 dated 19th April, 1983. The said trade mark was duly advertised in the Trade Mark Journal No. 910 of May, 1983. ( 4 ) IT is nest alleged that the defendant had recently adopted the trade mark olympus for its product of Black and White TV which was also an electrical/electronic item and was allied and cognate good of the same nature as the products of plaintiff. ( 4 ) IT is nest alleged that the defendant had recently adopted the trade mark olympus for its product of Black and White TV which was also an electrical/electronic item and was allied and cognate good of the same nature as the products of plaintiff. The adoption and use of the trade mark of the plaintiff olympus amounted to passing off the defendant s goods under the said trade mark as the goods of the plaintiff and this act was bound to cause confusion and/or deception in the minds of public and trade. This act was in violation of the plaintiff s statutory right under the Trade and Merchandise Marks Act, 1958. ( 5 ) THE defendant resisted the application. It was pleaded that the plaintiff was not the registered owner of the trade mark olympus . The owner of the trademark No, 417839 dated February 17,1984 was Sh. Raj Kumar and not the plaintiff. It was next pleaded that the defendant was using the trade mark olympus in respect of television and the plaintiff had yet to start the manufacture of sale of televisions under the trade mark olympus and that the plaintiff s trade mark was registered under class 9 which did not include television. It was also pleaded that the plaintiff itself had misappropriated the trade mark olympus which belongs to a Japanese Company M/s. Olympus Optical Co. Ltd. , 43-2, 2-Chome, Hatagaya Shivuyaku, Tokyo, Japan. The said Company is the registered owner of the trade mark olympus in India under trade mark No. 322816 dated 8th February, 1977, in respect of television sets, magnetic tape, tape cassettes, tape recorder, recorder cassettes, radio receivers, microphones, loud speakers, video tape recorders, video cassettes, video cameras, pick ups for optical video disc players. ( 6 ) NO man can have any right to represent his goods as the goods of another. It is an actionable wrong for any persons to pass off his goods as and for the goods of another persons. To succeed the plaintiff was first required to prove that it had acquired a reputation good-will in the trade mark olympus and had proprietory right in the said trade mark. Secondly he has to show that the acts of the defendant are calculated to lead the public to confuse the goods of the defendant as the goods of the plaintiff. To succeed the plaintiff was first required to prove that it had acquired a reputation good-will in the trade mark olympus and had proprietory right in the said trade mark. Secondly he has to show that the acts of the defendant are calculated to lead the public to confuse the goods of the defendant as the goods of the plaintiff. ( 7 ) THE plaintiff has produced photo copy of the registration certificate and advertisements in Journal. These show that Raj Kumar was the registered owner of the trade mark olympus under registration No 417839 dated February 17, 1984 in class 9 in respect of electric flat irons included in class 9 . The advertisement further shows that the said Raj Kumar claimed user since 1st January, 1983 The plaintiff has also filed on record certificate of registration of design. It shows that the design of Electric fan was registered at No. 153018 dated 19th April, 1983 in the name of Raj Kumar under the Design Act, 1911. The design of electric fan shows that it had the mark olympus . Newspaper cuttings have been filed which show that olympus Heat Convector was advertised in the issues of the Hindustan Times dated 23rd December, 1983 and 27th December, 1983. It was also advertised in the issue of Sandhya Times of 16th December, 1983, 20th December, 1983, 23rd December, 1983 and 27th December, 1983. The plaintiff has filed pamphlets showing that it was using the trade mark olympus in respect of various other electric products such as Geysers, air cooler, juicer-blender-grinder, washing machine, cooler pump, cooler fan, sandwich toaster etc. The statement of sales shows that in 1982-83 its sales were to the extent of approximately 20 lacs and in 1987-88 the sales were to the extent of approximately 25 lacs. The defendant, according to its own case, started using the trade mark olympus in respect of television sets since August, 1988. ( 8 ) THE evidence produced by the plaintiff, prima facie shows that the plaintiff, by use of the trade mark olympus in relation to its electric goods mentioned above, had acquired a reputation/good will in the use of trade mark olympus in respect of the said goods. ( 9 ) ADMITTEDLY the plaintiff was not using the trade mark olympus in respect of televisions-the goods which the defendant was marketing under this name. ( 9 ) ADMITTEDLY the plaintiff was not using the trade mark olympus in respect of televisions-the goods which the defendant was marketing under this name. However, the fact remains that, prima facie the plaintiff s electronic and electrical goods namely electric fans, heat convector, air coolers, juicer-blender-grinder, washing machine, cooler pump, cooler fan and sandwich toaster were being marketed through the trade mark ,clympus . Plaintiff s right to restrain the defendant from using the trade mark, prima facie, extends to cognate classes of goods. Televisions, which are being sold by the defendant under exactly the same trade mark prima facie were in the same trading channel and were cognate goods. This view finds support from the decision of this Court in Creative Handicrafts v. Sadana Electric Co. and Another,1 In the circumstances, prima facie, second requirement has also been made out. ( 10 ) LEARNED counsel for the defendant vehemently contended that M/s. Olympus Optical Company Ltd, (a joint stock company of Japan) was the registered owner of the trade mark olympus in respect of televisions and other goods. The plaintiff and the defendant were both pirators and consequently plaintiff was not entitled to the temporary injunction prayed for Reliance was placed on a Division Bench decision of this court in Capital Plastic Industries v. Kappy Plastic Industries. 2 ( 11 ) DEFENDANT has filed on record a photo copy of page No. 305 of Trade Mark Journal dated July 16,1987. It shows that the said Japanese Company had applied for registration of trade mark olympus in respect of various goods including television sets and the application was advertised under the provisions of Section 20 (1) of the Trade Marks Act before acceptance. Its number is 3,89,345 dated April 29, 1982. Defendant also filed a photo copy of page No. 814 of Trade Mark Journal No. 544 dated 1. 10. 88 showing number of various applications for registration which were neither rejected nor varied, this list includes number 3,89,345 which was the number of M/s. Olympus Optical Company Ltd. (the Japanese company ). ( 12 ) ON a careful consideration I find no merit in this contention. In an action for passing off registration of trade mark is irrelevant (See Century Traders v. Roshan Lal Duggar and Co. 3 There is not an iota of evidence to show that the Japanese Company has ever used this trade mark. ( 12 ) ON a careful consideration I find no merit in this contention. In an action for passing off registration of trade mark is irrelevant (See Century Traders v. Roshan Lal Duggar and Co. 3 There is not an iota of evidence to show that the Japanese Company has ever used this trade mark. ( 13 ) MOREOVER, at this stage it cannot be said that the plaintiff was not the original originator of this trade mark. The plaintiff has filed on record copies of newspapers dated December 23, 1983 and December 27, 1983 in which plaintiff advertised its goods. The Japanese Company applied for registration of the said trade mark on April 29, 1982. There is no evidence when it was registered. As noticed above there is no evidence of any prior user of this trade mark by the Japanese company. At this stage it cannot be said that the plaintiff was a pirator. Division Bench judgment in Capital Plastic Industries case is not applicable. ( 14 ) FOR these reasons, in my view, the plaintiff has made out a prima facie case. The defendant, it appears, came in business only in 1988. No irreparable injury is likely to be caused if temporary injunction, as prayed by the plaintiff is granted. Balance of convenience is also in favour of the plaintiff. ( 15 ) CONSEQUENTLY, I grant a temporary injunction restraining the defendant, its servants, agents and representatives from selling, offering for sale or otherwise dealing in televisions under the trade mark olympus till the disposal of the suit. I. A. stands disposed of.