MICRONIX INDIA v. J. R. KAPOOR — 1993 DIGILAW 539 (DEL)

Sat Pal ( 1 ) THIS is an application filed by the plaintiff under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure (hereinafter referred to as the Code ). In this application it has been prayed that the defendant, its servants, agents, dealers, representatives and all other persons on its behalf may be restrained from manufacturing, selling, offering for sale or otherwise dealing in electrical and electronic apparatus and instruments, TV boosters, TV tuners and all other electrical goods under the trade name MICRO TELEMATIX, trade mark MICROTEL and logo "m" and cartons of the booster and/or any other trade name, trade mark and cartons and/or deceptively similar to the trade name, trade mark and cartons of the plaintiff and from passing off their goods and business as those of the plaintiff. Notice of his application was given to the defendant. The defendants in their reply to this application have controverted the allegations made in the application. ( 2 ) BRIEF stated, the facts of the case are that the defendant was one of the partners of the plaintiff firm vide partnership deed dated 21st September, 1977. By mutual consent the said partnership came to an end with effect from 14th February, 1992 in terms of a compromise deed filed in Suit No. 484/91 pending in the court of Shri K. S. Paul, Sub Judge, Delhi and the said suit was decreed. As a result of the said decree based on the compromise, the defendant retired from the partnership with effect from 14th February, 1992 and the continuing partners became the subsequent proprietors. ( 3 ) THE plaintiff is the registered proprietor of the trade/mark/label MICRONIX under No. 463330 dated 19th November, 1986 in respect of electrical, electronics apparatus and instrument, TV tuners, TV boosters, TV vision, IF, parts and fittings. As a result of the compromise mentioned hereinabove, the said trade mark/label became the exclusive property of the continuing partners of the plaintiff firm. In clause (g) of the compromise it has been specifically stated that the defendant undertook not to make any copy or use of the registered patent design or trade mark of the plaintiff firm hereinafter. As a result of the compromise mentioned hereinabove, the said trade mark/label became the exclusive property of the continuing partners of the plaintiff firm. In clause (g) of the compromise it has been specifically stated that the defendant undertook not to make any copy or use of the registered patent design or trade mark of the plaintiff firm hereinafter. ( 4 ) THE case of the plaintiff is that the plaintiff firm has been using the trade name Micronix India, trade mark Micronix and also trade mark/ logo "m" since 1977 without any interruption and the said trade mark/logo and trade name have become the exclusive property of the continuing partners after 14th February, 1982. ( 5 ) MR. Goel, the learned counsel appearing on behalf of the plaintiff submitted that the use of trade mark "micro-TEL" by the defendant amounts to infringement of registered trade mark of the plaintiff namely, "micronix" under No. 463330 dated 19th November, 1986 and passing off the plaintiff. He also submitted that the use of trade mark/logo "m" by the defendant amounts to passing off the goods of the plaintiff under the trade mark/logo "m". He further submitted that the use of firm s name "micro-TELEMATIX" amounts to passing off its business as that of the plaintiff as it also amounts to infringement of the registered trade mark under Order No. 463330. He further submitted that the defendant had copied two cartons which are at page Nos. 43 and 44 of the documents, and which are substantially the copy of the plaintiff s cartons of Page No. 41 and 42 in get up, design,; specification, model number, design of article on cartons etc. He, therefore, contended that the injunction as prayed in the application be granted. In support of his contention, the learned counsel placed reliance on the following judgments Corn Products Refining Co. v. Shangrila Foods Products Ltd. 1, K. R. Chinna Krishna Chettiar v. Sri Ambal and Co. 2, Mis. R. P. Locks Co. v. Sehgal Locks Co. 3. Pitilite Industries Pvt. Ltd. v. Mittees Corporation4, Century Traders v. Roshan Lal Duggar and Co. 5, Simantal Chemical Industries Pvt. Ltd. v. Cobatal Ltd. 6 and M/s. Deep Chand Arya, Industries v. M/s. Kiran Soap Works7. ( 6 ) MR. 2, Mis. R. P. Locks Co. v. Sehgal Locks Co. 3. Pitilite Industries Pvt. Ltd. v. Mittees Corporation4, Century Traders v. Roshan Lal Duggar and Co. 5, Simantal Chemical Industries Pvt. Ltd. v. Cobatal Ltd. 6 and M/s. Deep Chand Arya, Industries v. M/s. Kiran Soap Works7. ( 6 ) MR. Mangla, the learned counsel for the defendant raised a preliminary objection that in the plaint, the plaintiff has alleged that by using the trade mark "micro-TEL" the defendant had violated the terms of the compromise filed in the Court of Shri K. S. Paul, Sub Judge, Delhi in Suit No. 484/91 wherein the defendant had undertaken not to make any copy or use of the registered patent design or trade mark of the plaintiff firm and as such the remedy available for the plaintiff was to file execution application in the said suit. He, therefore, contented that the present suit is not maintainable. ( 7 ) DEALING with the merits of the application, the learned counsel for the defendant submitted that no undertaking was given by the defendant in the above mentioned suit No. 484/91 with regard to the use of trade name. He further submitted that the trade name of the defendant is "micro TELEMAT1x" which is quite different from the trade name of the plaintiff "micronix INDIA" in sound, pronunciation, speech and design. He also submitted that the word "micro" has been prefixed with the trade name of the various firms dealing in the same trade and in this connection he drew my attention to pages 188, 190 and 191 of the Buyers Guide "electronic For You". As regards the use of trade mark, the learned counsel submitted that the trade mark of the defendant microtel is entirely different from the plaintiff s trade mark "micronix" in sound, pronunciation and speech. He further submitted that the goods like TV booster. Aerial boosters are normally purchased by the engineers andeducated class of society and as such the question of confusion and deception does not arise in this case. He, therefore, contended that the application of the plaintiff be dismissed. The learned counsel, however, did not give any satisfactory reply to the submissions made by the learned counsel for the plaintiff regarding use of logo "m". ( 8 ) I have given my anxious consideration to the submissions made by the learned counsel for the parties. He, therefore, contended that the application of the plaintiff be dismissed. The learned counsel, however, did not give any satisfactory reply to the submissions made by the learned counsel for the plaintiff regarding use of logo "m". ( 8 ) I have given my anxious consideration to the submissions made by the learned counsel for the parties. First of all I may examine the prelimary objection raised by the learned counsel for the defendants that the present suit is not maintainable and the remedy for the plaintiff could be filing of execution application in the earlier suit. A mere reading of the compromise, however, shows that the defendant had undertaken not to make any copy or use of the registered patent design or trade mark of the plaintiff firm but in the present case the plaintiff has not alleged that the defendant has used the identical trade mark but the allegation of the plaintiff is that the defendant has used the trade mark and trade name which are deceptively similar to those of the plaintiff and this amounts to infringement of the registered trade mark of this plaintiff. In view of this I do not find any merit in the preliminary objection raised by the learned counsel for the defendant. ( 9 ) NOW coming to the merits of the case, the question to be determined is whether there is such a similarity between the two trade marks "micronix" and "micro-TEL" and the two trade names "micronix INDIA" and "micro TELEMATIX" that the one is in the ordinary course of human affairs likely to be confounded with the other. ( 10 ) IN the case of Corn Products Refining Co. , (supra) the Supreme Court held that in deciding the question of similarity between the two marks, the trade marks have to be considered as a whole. It was further held that in deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. In the case of K. R. C. K. Chettiar (supra), the Supreme Court held that the resemblance between the two (trade) marks must be considered with reference to the ear as well as the eye. In that case it was held that there was a close affinity between "ambal" and "andal". In the case of K. R. C. K. Chettiar (supra), the Supreme Court held that the resemblance between the two (trade) marks must be considered with reference to the ear as well as the eye. In that case it was held that there was a close affinity between "ambal" and "andal". ( 11 ) IN the present case both the words "microtel" and "micronix" are made up of eight letters. In both the words, the name micro is a common component and constitutes first five letters of the word. Phonetically the first five letters in both the words are identical. Thus both the words would appear to be so similar to an average person with imperfect recollection that one will not suspect that one is dealing with one and not the other and vice-versa. In view of the aforesaid reasoning. I am of the view that the respondent should be restrained from using the trade mark "microtel". The view I have taken finds support form a judgment of this Court in the case of R. P. Locks Co. (supra ). In that case a learned Single Judge of this Court held that the two marks "harrison" and "haricon" appear to be visually and phoneticilly similar. Similarly, in the case of Deep Chand Arya Industries (supra) a learned Single Judge of this Court held that the marks "sinaula" and "sindrela" are visually and phonetically confusing and deceiving. ( 12 ) THE learned counsel for the defendant did not make any sub-mission in reply to the contention urged by the learned counsel for the plaintiff regarding use of logo "m", I am, therefore, of the view that the defendant has to be restrained from the use of logo m" also. ( 13 ) AS regards the use of trade name "micro TELEMATIX", it appears, prima facie, that this trade name is different from the trade name of this plaintiff "micronix INDIA" both visually and phonetically. From pages 188, 190 and 191 of the Buyers Guided also find that the word "micro" has been prefixed by the various firms dealing in the same trade with their trade name such as "micro ELECTRONICS, MICRO MEGA ELECTRONICS and MICRO CRAFT. Since the word "micro" has been shown to be used by more than one person in the same business, it will not be proper to restrain a person from using that name. Since the word "micro" has been shown to be used by more than one person in the same business, it will not be proper to restrain a person from using that name. In view of this I do not find any merit in the contention of the learned counsel for the plaintiff that the defendant should be restrained from using the trade name of "micro TELEMATIX", ( 14 ) IN view of the above discussion I restrain the defendant from manufacturing, selling, to offer for sale or otherwise dealing in electrical and electronic apparatus, instruments, TV boosters TV tuners under the trade mark "micro-TEL" and the logo "m" and also from using the cartons of the aforesaid articles with the aforesaid trade mark and logo during the pendency of the suit. The defendant is, however, given two months time commencing from today to alter its trade mark and logo so that it does not offend and violate the injunction being issued by this court. It is, however, made clear that the observations given by me hereinabove are only for the decision of this application.