Mohd. Shamim ( 1 ) THIS is an application by the plaintiff for issue ofan ad interim injunction under Order 39 Rules 1 and 2 of the Civil Procedure Code restrainingthe defendant, their servants and agents from manufacturing, selling, offeringfor sale, advertising or displaying, directly or indirectly, their toys or stuffedtoys under the trade mark cuddles or any other trade mark identical withor deceptively similar to the aforementioned trade mark of the plaintiff. ( 2 ) BRIEF facts which led to the present application are : that the plaintiffis a firm and Smt. Vinay Chawla is the sole proprietress of the said firm. Thesaid firm deals in toys under the trade mark cuddles . The plaintiff hasbeen using the said trade mark since long i. e. 1/01/1987. The goodsof the plaintiff bearing the said trade mark are in huge demand in the markets. The plaintiff with a view to acquiring the statutory rights in the said trademark moved an application bearing No. 505426 before the Trade Markregistry, New Delhi on 15/02/1989 for all types of toys. The saidapplication has been accepted for registration by the Trade Mark Registry,bombay vide Order No. U-8/2759, dated 30/07/1991 and as such, registrationcertificate is to be issued shortly in favour of the plaintiff. Besides the abovethe plaintiff also claims to be the proprietor of the said trade mark on accountof its prior adoption and subsequent user. The said trade mark alluded to abovehas already become distinctive and is associated with the aforesaid goodsbelonging to the plaintiff on account of its long, continuous extensive and exclusive user. The goods belonging to the plaintiff bearing the said trade markare very much in demand on account of their standard quality and precision. The plaintiff has also advertised the said trade mark through the distributionof trade literature and by displaying the same on packing material of the aforementioned products. The plaintiff has as such spent a substantial sum of moneyon the publicity of the said trade mark. The plaintiff has been using the saidtrade mark all alone without any interruption or interference from any quarter,whatsoever. ( 3 ) THE defendant (hereinafter REFERRED TO to as respondent) are alsoa dealer in stuffed toys under the trade mark cuddles . The saidfact came to the notice of the plaintiff through an advertisement in amagazine known as chandamama of May, 1991. ( 3 ) THE defendant (hereinafter REFERRED TO to as respondent) are alsoa dealer in stuffed toys under the trade mark cuddles . The saidfact came to the notice of the plaintiff through an advertisement in amagazine known as chandamama of May, 1991. The defendant is notthe proprietor of the trade mark cuddles in respect of stuffed toys or toysto any type. The respondent adopted the impugned trade mark in respectof stuffed toys and toys out of greed with a view to taking advantage ofthe reputation of the plaintiff (hereinafter REFERRED TO to as the applicant) tomislead the public and to practise deception and create confusion in the mindsand to pass of their spurious goods as that of the applicant. The resemblancein between the two trade marks i. e. the one belonging to the applicant and theother belonging to the respondent is so close that it could not have occurredexcept by deliberate imitation. The said trade mark is bound to cause confusion and deception in the normal course of business. The respondent arethus guilty of passing off their goods and business as that of the applicant. Therespondent thus must give up the use of the trade mark as the applicantis suffering huge losses, both in business and in reputation. Thus, the primafade case is in favour of the applicant, the balance of convenience is also inher favour. The applicant is likely to suffer irreparable loss and injury incase the injunction is not issued in favour of the applicant restraining the respondent from passing of their goods under the trade mark cuddles belonging to the applicant. Hence the present application. The applicationis supported by an affidavit. The applicant is likely to suffer irreparable loss and injury incase the injunction is not issued in favour of the applicant restraining the respondent from passing of their goods under the trade mark cuddles belonging to the applicant. Hence the present application. The applicationis supported by an affidavit. ( 4 ) THE respondent have resisted and opposed the above applicationthrough an application under Order 39 Rule 4 CPC, being I. A. No. 12208/91inter alia, on the following grounds : that the respondent came into being on 28/05/1986 with the main object of carrying on business in the manufactureand sale of toys, including stuffed toys, the respondent have been manufacturingand selling stuffed toys, under the trade mark cuddles w. e. April, 1990,the stuffed toys manufactured and marketed under the trade mark CUDDLES by the respondent have b. ;en extensively advertised in public newspapers andmagazines with extensive circulation all over the country, such as The Hindu,chandamama, Women s Era, Anandmela, the Indian Express, The list of allthe members of All India Toys Manufacture s Association was published inthe Toys Show organised by the All India Toys Manufacture s Association. The name of the respondent is very much mentioned in the said list whereasthe name of the applicant is not even classified as a toy manufacturer as theyhave never been toy manufacturers. The stuffed toys manufactured by therespondent under the trade mark cuddles have been extensively sold indifferent markets in India, including Delhi, since April, 1990. the toysmanfactured by the respondent are sold in Delhi markets under the trademark cuddles through M/s United Agencies, 33-C, Swadeshi Market,sadar Bazar, Delhi. The applicant is only a manufacturer of school bags underthe trade mark piggy . The applicant has never manufactured, sold or dealtwith toys under the trade mark cuddles . Even if it is assumed that theapplicant has used the trade mark cuddles , in that eventuality the extentand duration of the use is deminimus and not adequate to make the mark distinctive of the goods of the applicant. There is no document on the record toshow and prove any deception or confusion in relation to the goods manufactured by the respondent. The respondent have been only advertising and sellingtheir goods i. e. toys under the trade mark cuddles since April, 1990while present suit has been filed after nine months when the respondent havecompletely established themselves in the mark. The application is false andfrivolous. The respondent have been only advertising and sellingtheir goods i. e. toys under the trade mark cuddles since April, 1990while present suit has been filed after nine months when the respondent havecompletely established themselves in the mark. The application is false andfrivolous. It is thus liable to be dismissed. ( 5 ) IT is manifest from the facts canvassed above that the applicant hasclaimed, an ad interim injunction in the instant case on the ground that therespondent are passing off and selling their goods in the market under thetrade mark cuddles of which she is the proprietress. Section 27 (2) of thetrade and Merchandise Marks Act, 1958 deals with an action for passing offone s goods as the goods of another person. Since we are concerned withthe construction of the said section it would be just and proper to examinethe provisions of the said section before proceeding any further in the matter. It is in the following words : "27 (1 ). No person shall be entitled to institute any proceedingto prevent, or to recover damages for, the infringement of an unregistered" trade mark. (2) Nothing in this Act shall be deemed to affect rights of actionagainst any person for passing off goods as the goods of anotherperson or the remedies in respect thereof. " ( 6 ) THE above Section 27 (2) came up for interpretation before different High Courts, in our own country and in Courts in England, in a largenumber of cases. It was observed by Wynn Parry, J. in Me. Culloch v. May (Produce Distributors), Ltd. (1948) 65 R. P. C. 58 at page 64 : "it is of the essence of an action for passing off to show, first,that there has been an invasion by the defendant of a proprietaryright of the plaintiff, in respect of which the plaintiff is entitled toprotection, and, secondly, that such invasion has resulted in damageor that it creates a real and tangible risk that damage will ensue". ( 7 ) LORD Cozens-Hardy opined in J. B. Williams Co. v. H. Bromleyco. Ltd. , (1909) 26 R. P. C. 765 at page 771 : "what is it necessary for a trader who is plaintiff in a passing offaction to establish ? ( 7 ) LORD Cozens-Hardy opined in J. B. Williams Co. v. H. Bromleyco. Ltd. , (1909) 26 R. P. C. 765 at page 771 : "what is it necessary for a trader who is plaintiff in a passing offaction to establish ? It seems to me that in the first place he must,in order to succeed, establish that he has selected-a peculiar a novel-design as a distinguishing feature of his goods, and that his goods areknown in the market, and have acquired a reputation in the market,by reason of that distinguish feature, and that unless he establishesthat, the very foundation of his case fails. " ( 8 ) THE aforesaid section was also the subject matter of a suit in acase before the Bombay High Court as reported in Consolidated Food Corporation v. Brandon and Co. Pvt. Ltd. , AIR 1965 Bom 35 (para 28 ). It wasobserved by Shah, J. in the said case : "it is sufficient if the article with the mark upon it has actually becomea vendible article in the market with intent on the part of the proprietor tocontinue its production and sale. It is not necessary that the goods shouldhave acquired a reputation for quality under that mark. Actual use of markunder circumstances as showing an intention to adopt and use it as a trade markis the test rather than the extent or duration of the use". It was further observed in para 27 of the case alluded to above. "the trade mark exists independently of the registration which merely affords further protection under thestatute. Common law rights are left wholly unaffected. Priority in adoptionand use of a trade mark is superior to priority in registration". It is crystal clearfrom the authorities alluded to above that an applicant for an action on thebasis of the passing off must prove the following : (i) That the trade mark which he has been using on the goodsmanufactured by him has assumed a vendible character. (ii) He has been using the said trade mark from before it was usedby the defendant. (iii) His goods are identified and recognised by the use of the saidtrade mark and in case the defendant is allowed to use the saidtrade mark or a trade mark which is deceptively similar to thesaid trade mark it is likely to cause irreparable loss and damageto him. (iii) His goods are identified and recognised by the use of the saidtrade mark and in case the defendant is allowed to use the saidtrade mark or a trade mark which is deceptively similar to thesaid trade mark it is likely to cause irreparable loss and damageto him. (iv) There is every likelihood that the impugned trade mark willinvade and offend the proprietary rights of the applicant. ( 9 ) WITH the above background let us now see as to how far theapplicant in the instant case has succeeded in proving the above laid downingredients. The case of the applicant is that he has been using the impugnedtrade mark cuddles since 1/01/1987 (vide para 5 of the application ). Furthermore, in order to acquire the statutory rights in the said trade mark anapplication bearing No. 505426 was moved before the Trade Mark Registry,new Delhi, under the Trade and Merchandise Marks Act, 195 8/02/1989 (vide para 6 of the application ). It has thus been urged for and onbehalf of the applicant by the learned Counsel Mr. Bansal that the applicanthas become the proprietor of the said trade mark on the basis of its prior userin time since she has been using it since 1/01/1987. The respondent on theother hand, claim the user of the said trade mark since April, 1990 (vide para 3of the application under Order 39 Rule 4 CPC ). It thus can be safely concluded from above that the applicant has prima facie proved that she has beenusing the said trade mark from before it was used by the respondent. ( 10 ) LEARNED Counsel Mr. Praveen Anand has vehemently contendedthat the alleged prior user by the applicant of the impugned trade mark doesnot confer on her any proprietary right inasmuch as the said user is intermittent, casual and deminimus. It is of thus no avail to the applicant, on thebasis of the said intermittent user to allege that she is the proprietress of thesaid trade mark. Thus her application for the issue of an ad interim injunction is liable to be flung away on this short ground alone. The contention ofthe learned Counsel, I feel, does not hold much water and it can be brushedaside without any difficulty. Thus her application for the issue of an ad interim injunction is liable to be flung away on this short ground alone. The contention ofthe learned Counsel, I feel, does not hold much water and it can be brushedaside without any difficulty. ( 11 ) THE applicant in order to show and prove that the said user bythem of the trade mark cuddles on their articles is neither casual norintermittent but it was used by them since the year 1987 on all the toysmanufactured by the applicant. The fact that the applicant was very muchserious and sincere to display and sell all her goods under the trade mark cuddles and to make them distinguishable from the toys manufacturedby other manufacturers is evident from the fact that she applied for the registration of the impugned trade mark to the Trade mark Registry, New Delhi, asas early as on 15/02/1989. The said application No. 505426 has beenaccepted for registration by the" Trade Mark Registry, Bombay, vide orderno. U/281 dated 30/07/1991. It is thus manifest from above that theapplicant is very much serious and has got all the intention in the world to usethe said trade mark on all the goods manufactured by her, for the presentand the future. ( 12 ) THE applicant has placed on record 40 photo copies of the invoiceswhich, all relate to the year 198 9, in order to show and prove that she hasbeen using the impugned trade mark while selling her goods. The applicantbesides the above has also placed on record certificates issued by certain firmsi. e. Sehgal Bros, Maya Toys, K. B. Stationery, Shiv Jyoti Traders, New Kidsand Karti Kag Gift Shop. All of them have certified to the fact that theyhave been selling toys manufactured by the applicant under the trade mark cuddles . Then there are 9 invoices pertaining to the year 1988. The "invoice dated 14/06/1988 shows that stuffed toys were sold under the trademark cuddles . All the above documents prima fade show that theapplicant has been selling her goods in the market under the trade mark cuddles . The said goods under the impugned trade mark have acquireda vendible character and the same are being identified and recognised with thehelp of the said trade mark. All the above documents prima fade show that theapplicant has been selling her goods in the market under the trade mark cuddles . The said goods under the impugned trade mark have acquireda vendible character and the same are being identified and recognised with thehelp of the said trade mark. ( 13 ) THE respondent on the other hand, have filed photocopies of theextracts from certain magazines, journals such as Chandamama, Women s Era,anandmela, Hindu and the Indian Express in order to show and prove thatthey have extensively advertised their trade mark in the aforesaid newspapers. Besides the above, they have also placed on record certificates issued by asmany as ten firms/shops in order to prima fade show and prove that theirgoods are being widely sold in Delhi Markets and elsewhere under the trademark cuddles and they have acquired a very good and wide reputation. To my mind, the said documents are of no avail to the respondent inasmuch asthey have themselves admitted that they have started using the impugned trademark w. e. f. April, 1990 only. Thus, the user of the applicant of the impugnedtrade mark is prima fade prior to that of the respondent. ( 14 ) WE have already observed above that the applicant has been usingthe said trade mark since 1/01/1987. Her user of the impugned trademark is much prior to that of the respondent. In the circumstances stateabove we are of the view that the applicant has succeeded in proving and primafade case in her favour on the basis of the prior and consistent user of theimpugned trade mark. The balance of convenience is also in favour of theapplicant inasmuch as in case the respondent are not restrained from using theimpugned trade mark they are likely to invade and offend the proprietaryrights of the applicant in the impugned trade mark. There is every possibilityin the absence of an injunction order from this Court of a confusion beingcaused in the mind of the purchasers to take the goods of the applicant as thegoods of the respondent and the same is likely to result in irreparable loss anddamage to the reputation and goodwill of the applicant which would be difficult to measure in terms of the pecuniary compensation. ( 15 ) IN the circumstances stated above, the application is allowed. ( 15 ) IN the circumstances stated above, the application is allowed. Therespondent, their servants and agents are hereby restrained from selling, displaying for sale or advertising their goods or toys under the impugned trade mark cuddles or any other trade mark identical or deceptively similar to thetrade mark of the applicant cuddles . The application under Order 39rule 4 Civil Procedure Code is hereby dismissed.