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2003 DIGILAW 822 (KAR)

SUKHSAGAR HOTEL v. SUKH SAGAR ENTERPRISES

2003-09-26

S.ABDUL NAZEER

body2003
S. ABDUL NAZEER, J. ( 1 ) THE defendant in O. S. 6/2001 on the file of the I Additional District Judge, Belgaum, has filed this appeal challenging the Order on. A. No. 1 filed by the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure. ( 2 ) FOR the sake of convenience, the parties will be referred to by their respective ranks before the trial Court. ( 3 ) THE plaintiff has filed the said suit for permanent injunction restraining the defendant, their servants or agents any one of them claiming through them in any manner infringing the plaintiffs well established trade mark 'sukhsagar' or any other trade mark which are in any way deceptively similar to the plaintiffs trade mark and trading style in respect of preparation of food items by using offending trade mark and for certain other reliefs. The plaintiff has averred that it has been using the trade mark 'sukhsagar' since 1976. The artistic work, design and get up in respect of the said trademark exclusively belong to it. The trade mark 'sukhsagar' has become popular all over India and that the said trade mark exclusively belongs to it and none else. At present it is running three branches at Bangalore and one at Mumba. It is plaining to start a new hotel at Belgaum under the said trade mark shortly. With a view to protect the trading style and logo, it has secured the registration of its trade mark under Trade and Merchandise Act, 1958 and the same is registered under Nos. 465792, 465793 and 465794 respectively and the same has been renewed from time to time and is valid and subsisting. It has also given the details of its sales turnover and advertisement expenses from the date of inception,. e. , 1976 till 2001-2002. ( 4 ) PLAINTIFF has further contended that the defendant has started selling vegetarian food preparations by using the said trade mark and that the trade name adopted by the defendant is phonetically and visually similar to its trademark. It is alleged that the defendant who is aware of the trade mark has fraudulently adopted "sukhsagar' for preparation of vegetarian food products in order to deceive the customers and in order to encash the goodwill which has been earned by the plaintiff over a number of years. It is alleged that the defendant who is aware of the trade mark has fraudulently adopted "sukhsagar' for preparation of vegetarian food products in order to deceive the customers and in order to encash the goodwill which has been earned by the plaintiff over a number of years. In the application filed under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, seeking grant of an order of temporary injunction, plaintiff has reiterated the averments made in the plaint. It has further stated that the defendant is infringing its trade mark and it is also liable for passing off an action. The plaintiff has further stated that it will be suffer great loss and irreparable injury if an order of injunction is not granted in its favour and that the balance of convenience is in its favour. ( 5 ) THE defendant has filed its objections. It has contended that it is running its business in lodging under the name and style "shri Sukhsagar Hotel" and that it has never used the trade mark of the plaintiff. According to the defendant, the trade mark of the plaintiff is "m/s sukhsagar Enterprises" and there is a substantial difference between the two names and trade marks and that the nature of the business carried on by the defendant is different from that of the plaintiff. The name of the defendant is in no way deceptively similar to that of the plaintiff. It is the case of the defendant that it is running its business in lodging and at no point of time it is engaged in running any vegetarian restaurant and that at no time it has adopted the trade mark of the plaintiff. IA has filed additional objections to. A. No. I contending that the building comprised in CTS Nos. 10618/1, 10618/2 and 10618/3 belongs to a partnership firm known as "shri Sukhsagar Hotel". The defendant and his two sons are its partners. After completion of the building, shops on the ground floor have been let out to different tenants and on the first floor the defendant is running lodging under the name and style "shri Sukhsagar Hotel". The lodging was inaugurated on 26. 01. 2001. Except lodging, the defendant is not carrying on any other business. The restaurant viz. After completion of the building, shops on the ground floor have been let out to different tenants and on the first floor the defendant is running lodging under the name and style "shri Sukhsagar Hotel". The lodging was inaugurated on 26. 01. 2001. Except lodging, the defendant is not carrying on any other business. The restaurant viz. , 'nikhi Sagar' is run by one Shri B. Punawala and Shri Yazdani and that the defendant is in no way concerned with that restaurant. ( 6 ) THE Trial Court has framed the following points for consideration: (1) Whether plaintiff has made out prima facie for grant of temporary-injunction as per. A. I under Order 39 Rules 1 and 2 CPC? (2) Whether balance of convenience is in favour of the plaintiff? (3) Whether plaintiff would suffer irreparable loss or hardship in case. A. I is not allowed? (4) What Order? ( 7 ) THE Trial Court by its order dated 26. 07. 2001, has allowed the said. A. , and the exparte order of temporary injunction granted on 12. 06. 2001 has been made absolute. Consequently, defendant, its agents, servants, etc. , claiming through the defendant were restrained from making use of the trade mark of the plaintiff 'sukhsagar'. ( 8 ) I have heard Shri G. Balakrishna Shastry, learned Counsel for the defendant/appellant and shri B. V. Acharya, learned Senior Counsel for Shri Harikrishna S. Holla, learned Counsel for the plaintiff/respondent. ( 9 ) SHRI G. Balakrishna Shastry, learned Counsel for the appellant contends that the defendant has constructed a commercial complex wherein it is running its' lodging in the first floor by name "m/s Shri Sukhsagar Hotel" and the different shops in the ground floor have been let out. He draws my attention to the Registration Certificate of the plaintiff, registered under the Trade and merchandise Act and submits that the registration is in respect of preserved and cooked fruits and vegetables, jellies, jams, etc. The second Certificate is for scented betelnut powder and the third Registration Certificate is in respect of aerated waters and other non-alcoholic drinks. He submits that the defendant is not manufacturing any of those items. Therefore, grant of injunction not to run the lodging by name "shri Sukhsagar Hotel" is not justified. The second Certificate is for scented betelnut powder and the third Registration Certificate is in respect of aerated waters and other non-alcoholic drinks. He submits that the defendant is not manufacturing any of those items. Therefore, grant of injunction not to run the lodging by name "shri Sukhsagar Hotel" is not justified. Further, he submits that admittedly, the plaintiff has its hotels at Bangalore and Bombay and the defendant is having its lodging at Belgaum which is at a distance of at least 500 Kms. , from Bangalore and bombay. The defendant is only using the signboard by name and style "shri Sukhsagar Hotel" . The said sign is not deceptively similar to that of the plaintiff. He draws my attention to Section 28 of the Trade and Merchandise Act and submits that the trade mark registered in favour of the plaintiff is in relation to goods enumerated in the said Certificates. As the defendant is not manufacturing any of those goods, infringement of a trade mark does not arise. ( 10 ) PER contra, the learned Senior Counsel for the respondent submits that the plaintiff has not only complained infringement of trade mark but also passing off action. The defendant is carrying on hotel business under the name and style "m/s. Sukhsagar Hotel", which is an allied activity. He submits that the trade name and trade mark stand on the same footing and, therefore, the defendant should not be permitted to carry on the business under the name and style "shri sukhsagar Hotel". ( 11 ) THERE is no dispute that the plaintiff is carrying on the business by name and style-"m/s. Sukhsagar Enterprises" at Bangalore and Bombay since 1976 and the defendant has been running its lodging under the name and style "m/s Shri Sukhsagar Hotel" at Belgaum since the year 2001. The material on record evidences that the plaintiff has substantial sales turnover and it has spent a considerable amount towards advertisement expenses since 1976 and the said name is well established. Though the registration of the plaintiff under the Trade and Merchandise marks Act, 1958, is only in respect of certain items, whether the defendant can be permitted to carry on its lodging business under the trade name and style "shri Sukhsagar Hotel". The defendant has not registered the said trade name under the Trade and Merchandise Marks Act, 1958. Though the registration of the plaintiff under the Trade and Merchandise marks Act, 1958, is only in respect of certain items, whether the defendant can be permitted to carry on its lodging business under the trade name and style "shri Sukhsagar Hotel". The defendant has not registered the said trade name under the Trade and Merchandise Marks Act, 1958. Therefore, the other question to be considered is whether the defendant has committed infringement of trade mark of the plaintiff or passing off the defendant's goods as that of the plaintiff? ( 12 ) THE learned Counsel for the appellant Shri G. Balakrishna Shastry has taken me through the decisions of the Apex Court in the case of F. Hoffimann-LA Roche and Co. , Ltd. v. Geoffrey manners and Co. Private Ltd. , AIR1970 SC 2062 , (1971 )73 bomlr119 , (1969 )2 SCC716 , [1970 ]2 SCR213 and submits that the marks must be compared as whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. He has referred to the decision in S. M. Dyechem Ltd. v. Cadbury (India) Ltd. , AIR 2000 SC 2114 : 2000 PTC (20) 297 (SC), and submits that where injunction was sought by the plaintiff to restrain the defendant from using the word PICNIC as it allegedly amounted to infringement of plaintiffs registered trade mark PIKNIK on the basis of passing off action. As there is the word 'cadbury' above the word PIKNIK, there is no scope for the purchaser being misled. He has further relied on another decision in Victory Transport Co. Pvt. Ltd. , Ghaziabad v. The District Judge, Ghaziabad and Ors. , AIR1981 All 421 and contends that the Court shall insist on a very high standard of proof before it would grant injunction in favour of the plaintiffs in view of the seriousness of the repercussions which such an injunction is bound to have on the rights of the defendants. , AIR1981 All 421 and contends that the Court shall insist on a very high standard of proof before it would grant injunction in favour of the plaintiffs in view of the seriousness of the repercussions which such an injunction is bound to have on the rights of the defendants. ( 13 ) IN the case of Ellora Industries, Delhi, v. Banarasi Dass Goela, AIR1980 Delhi 254 , the Delhi High Court has held that if trade mark is registered for goods, any passing off is likely to involve infringement of rights given by registration. It is further held that the purpose of tort of passing off is to protect commercial goodwill is to ensure that people's business reputations are not exploited. Since business 'goodwill' is an asset and therefore, species of property the law protects it against encroachment as such. The tort is based on economic policy, the need to encourage enterprise and to ensure commercial stability. It secures a reasonable area of monopoly to traders. It is thus complimentary to trade mark law, which is founded upon statute rather than common law. There is a difference between statute law relating to trade marks and the passing off action; for, while registration of relevant mark, itself gives title to the registered owner, the onus in a passing off action lies upon the plaintiff to establish the existence of the business reputation which he seeks to protect. The asset protected is the reputation, the plaintiff's business has in the relevant market. It is for the plaintiff to establish that his business or goods have acquired the reputation be alleges. ( 14 ) THE learned Senior Counsel has relied on the decision in the case of Sarabhai International ltd. and Anr. v. Sara Exports International, 1987 PTC 269 wherein the Delhi High Court has held that the trading style of Sarabhai Chemicals and the trade marks SARA and SARABHAI emblems have acquired very wide reputation, goodwill and name all over India and abroad in respect of medicinal, pharmaceutical and veterinary preparations and said trading style and trade marks are exclusively associated with the said company and none else. The said articles bearing the trade mark SARA and SARABHAI denotes and connotes the goods of the said company and no one else and is an indication of the source of manufacture as such. The said articles bearing the trade mark SARA and SARABHAI denotes and connotes the goods of the said company and no one else and is an indication of the source of manufacture as such. The activities in respect of the similar goods of the plaintiff and defendant and the adoption of trading style Sara Exports international by the defendant and offering for sale, export and advertising the goods under the aforesaid trading style, that is Sara Exports International is calculated to deceive and create confusion amongst the doctors, chemists and the general public in India and the importers and general public in India and abroad. Therefore, the trading style Sara Exports International creates an impression in the mind of the general public, dealers and importers that defendant may be an organisation or a Division or Branch of the plaintiffs and accordingly, the Court has prohibited the use of the said trading style by the defendant in the said case. ( 15 ) IN the case of Kamal Trading Co. , Bombay and Ors. v. Gillette U. K. Limited, Middle Sex, england, 1988 PTC PAGE 1, the Division Bench of the Bombay High Court has held that use of trade mark 7 O'clock for tooth brushes by the defendant amounts to passing off. The relevant portion is as follows: "the defendants assumption that the goods are different is wholly misconceived as these goods are available at every shop and each and every person is required to purchase these goods. The mark 7 O'clock having acquired a worldwide reputation there is every likelihood of deception as the user of the mark 7 O'clock by the defendant would clearly give the impression that the tooth brushes came from the House of Gillette. The defendants contention that goodwill if any of the mark 7 O'clock stands extinguished because the goods manufactured by the plaintiff are not available in India from the year 1958 is also rejected as the goodwill in the present days is not limited to a particular country because the trade is spread all over the world being transported from one country to another very rapidly on extensive scale. In the circumstances even when the manufacture has to suspend its business activities in a country for a short duration that will not destroy the reputation or goodwill already acquired. In the circumstances even when the manufacture has to suspend its business activities in a country for a short duration that will not destroy the reputation or goodwill already acquired. Moreover, the entire conduct of the defendants being totally dishonest and fraudulent in using the mark 7 O'clock, the learned single Judge was perfectly right in granting relief to the plaintiff by way of interim injunction and accordingly the appeal fails and is dismissed. " ( 16 ) IN the case of Binatone International Ltd. and Anr. v. Sugan Kitchenware Appliances and ors. , 1991 PTC 8 the Delhi High Court held as follows: "the use of the mark BINATONE by the defendants in respect of pressure cookers will amount to passing off their goods as those of plaintiffs and accordingly the defendants are restrained by means of permanent injunction either by themselves or through any of their agents, servants, etc. , from selling the pressure cookers bearing the mark BINATONE with directions to remove the mark BINATONE from the pressure cookers and destroy all articles bearing the said mark. " ( 17 ) IN the case of Poddar Tyres Ltd. v. Bedrock Sales Corporation Ltd. and Anr. , AIR1993 Bom 237 , 1993 (1 )Bomcr505 , the Bombay High Court has held that any trader who exclusively sells goods bearing registered trade mark has no right to adopt trade name which could include said trade mark and such adoption would amount to both infringement and passing off action. ( 18 ) IN the case of Daimler Benz Aktiegesellschaft v. HYBO Hindustan, AIR1994 Delhi 239 , 1994 RLR79 , the Delhi High Court was considering the infringement of trade mark "benz" associated with the name of the world famous car "mercedes Benz". The defendant therein was manufacturing underwear garments using the word 'benz'. The Delhi High court held as follows: "there are names and marks which have become household words. "benz" as name of a car would be known to every family that has ever used a quality car. The name "benz", as applied to a car, has a unique place in the world. There is hardly one who is conscious of existence of the cars/automobiles who would not recognize the name "benz" used in connection with cars. "benz" as name of a car would be known to every family that has ever used a quality car. The name "benz", as applied to a car, has a unique place in the world. There is hardly one who is conscious of existence of the cars/automobiles who would not recognize the name "benz" used in connection with cars. Thus, the boxes in which the defendant sells its undergarments for men, and the representation thereon is of a man with his legs separated and hands joined together above his shoulder, all within a circle, indicate, the strong suggestion of the link between the three pointed star of "mercedes benz" car and the undergarments sold by the defendant. This cannot be considered to be a "honest concurrent user" by the defendant of the above said symbol. Therefore, the defendant could be restrained from using the work "benz" with reference to any underwear which is manufactured by them, and injunction could be issued restraining the defendant to cease and desist from carrying on trade in any undergarments in the name of "benz" and "three Pointed human Being in a Ring", forthwith. " ( 19 ) FROM the aforesaid decisions, it is clear that the infringement of trade mark and passing off action, both are prohibited. It is equally settled that in any passing off action, the goods need not be the same and all what is required to be seen is the user of the mark by the defendant though for manufacture of different type of goods, whether the mark would carry confusion and deceive to the purchasers taking the goods of the defendant to be that of the plaintiff with the goods manufactured by the defendant. ( 20 ) IN the instant case, the plaintiff has established its business with the trade name "shri sukhsagar Hotel Limited" since 1976. The Defendant has started its lodging in the year 2001, with a more or less similar name "sukhsagar Enterprises". There cannot be any dispute that the plaintiff has earned goodwill and reputation under the trading style "m/s. Sukhsagar enterprises". The trade mark has been registered for certain items. The question is not whether the trade mark used by the defendant is distinguishable, but whether it is deceptively similar one. There cannot be any dispute that the plaintiff has earned goodwill and reputation under the trading style "m/s. Sukhsagar enterprises". The trade mark has been registered for certain items. The question is not whether the trade mark used by the defendant is distinguishable, but whether it is deceptively similar one. I am prima facie satisfied that the present name "m/s. Shri Sukhsagar Hotel" under which the defendant is carrying on the business is deceptively similar to the trade style of plaintiffs "m/s. Sukhsagar Enterprises". ( 21 ) AFTER considering the material on record, the Trial Court has recorded a prima facie finding that trading style of the plaintiff is deceptively similar to that of the defendant. As held by the hon'ble Supreme Court in F. HAFFIMANN's case, relied on by the learned Counsel for the appellant, the totality of the trade mark of the defendant is likely to cause deception or confusion in the minds of the persons accustomed to the trade mark of the plaintiff. The Trial Court on consideration of the entire material on record has granted an order of injunction in favour of the plaintiff. It is well established that the appellate Court will not interfere with the exercise of discretion of the court of first instance, except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely. The Hon'ble Supreme Court in the case of wander Ltd. and Anr. v. Antox India P. Ltd. , 1990 (Supp.) SCC 727 : 1991 (11) PTC 1 (SC) has held as follows: "14. This appeals before the Division Bench were against the exercise of discretion by the single Judge. In such appeals, the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court has reasonably possible on the material. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court has reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to the contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner of the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion. " i am of the view that the discretionary order of the Trial Court impugned in this appeal does not suffer from any infirmities. The defendant cannot be permitted to carry on its business under its present trade name and style and requires to be restrained from doing so pending disposal of the suit. ( 22 ) THEREFORE, I pass the following order: the appeal is dismissed. No costs. The Trial Court shall decided the suit on its merits without being influenced by any of the observations made in the course of the order impugned or in this Order.