JUDGMENT Hon’ble Amitava Lala, J.—This appeal is arising out of an order passed by the District Judge, Kanpur Nagar dated 27th January, 2009 in an application under Order 39 Rule 1 and 2 read with Section 151 of Code of Civil Procedure in connection with the suit No. 121 of 2008 (Lohia Starlinger Limited v. Lohia Auto Industries). The suit, as filed by the plaintiff before the Court below, is for infringement of the trade mark by the defendant/appellant herein. 2. According to the plaintiff/respondent the defendant/appellant and/or its agents are using their house mark “LOHIA GROUP” or any other word deceptively similar “LOHIA GROUP” in relation to any of the defendant. The house mark of the famous LOHIA GROUP comprises of an exclusive device consisting of capital letter “G” in such stylized manner encompassing capital letter “L” with the word LOHIA GROUP underneath. This distinctive LOHIA GROUP and the device mark is used as a “house mark for all the units belonging to the Group”. The term LOHIA GROUP has become synonymous with the plaintiff and its associates. The plaintiff enjoys a worldwide network and immense reputation all over the world as a part of the LOHIA GROUP. The plaintiff manufactures and sells products that range from plastic processing machines to part and components made of ferrous and non-ferrous metal. Castings, forgings, electrical components, data on recording discs, auto components, components of arms and ammunitions and its services provided for after sales services for the past over 20 years. None else is entitled to use the name and device mark “LOHIA GROUP” causing unlawful loss and damage to the plaintiff. The plaintiff was recently disturbed, rather astonished to know that the defendant in most unlawful and illegal manner is using the house mark LOHIA GROUP for promoting its business thereby creating impression in the minds of the general public that the goods and services offered by it are in someway related or connected to the plaintiff. The confusion created by the use of identical trade name LOHIA GROUP has been exasperated by the fact that even the Media Associates the defendants mark with that of the plaintiff’s famous and distinctive device mark. This fact become evident from an article published in the internet wherein the mere mention of the name LOHIA GROUP for the defendant convinced the media to put the device mark of the plaintiff on the article. This fact become evident from an article published in the internet wherein the mere mention of the name LOHIA GROUP for the defendant convinced the media to put the device mark of the plaintiff on the article. The use of the identical trading name in the article for the defendant along with the distinctive device has caused utter confusion in the media. The article opens with the lines “A new company has recently entered into the Indian automobile sector, and it is the joint business house with interests in different types of business, the Lohia Group”. The intention is malafide for such website. Again an article was published in Times of India, Lucknow edition dated 22nd May, 2008 stating that LOHIA GROUP has entered into automobile sector. The confusion magnified to the plaintiff. The plaintiff received a letter from the Chief Manager and relationship Manager of the State Bank of India, Kanpur Branch congratulating the plaintiff on its new venture of entering into the automobile sector. Therefore, the plaintiff served a notice to the defendant vide letter dated 21st July, 2008 and called upon to immediately cease and desist from the use of the mark. The defendant did not agree to amicable resolution and sent a reply on 7th August, 2008 stating that they have many companies comprising the name LOHIA and falsely denying any infringement and passing off the plaintiff’s distinctive house mark/trading style and name. 3. The defendant/appellant has opposed and filed objection stating that the name of LOHIA GROUP is a generic word and no person/entity can claim monopoly over it. LOHIA is a sub-case and the word group the defendant is not using the mark LOHIA GROUP for its and the word group is a word of English language which means an assemblage of persons or things. The word LOHIA GROUP is commonly used term and the plaintiff cannot claim the exclusive right over the same. The defendant has never used the term the word LOHIA GROUP as its trade mark/house mark. The said word LOHIA GROUP has been used in the common dictionary manner describing the assemblage of the aforesaid companies. The defendant/appellant is prior user of the word LOHIA as the defendant firstly stated using the said word in the form of Lohia Industries in the year 1960s much prior to the incorporation of the plaintiff in the year 1981. The said word LOHIA GROUP has been used in the common dictionary manner describing the assemblage of the aforesaid companies. The defendant/appellant is prior user of the word LOHIA as the defendant firstly stated using the said word in the form of Lohia Industries in the year 1960s much prior to the incorporation of the plaintiff in the year 1981. There is no intention to take unfair advantage of or be detrimental to any alleged distinctive character of the trade mark of the plaintiff/respondent. There is no intention to infringe the trade mark/house mark of the plaintiff and pass of the goods of the defendant as those of the plaintiff/respondent. The companies/firms belonging to the group of defendant/appellant are well established and the net worth of the said group companies is approx. Rs. 500.00 crores. 4. According to the Court below the defendant/appellant is blowing hot and cold at the same time. At one place, it says that they are not using the logo of the plaintiff and they do not intend to gain any undue advantage by using the logo of the plaintiff and at the same time they say that they cannot be restrained from using the word LOHIA GROUP. It is recorded by the Court below that both the parties are running their business in the name of LOHIA for the last more than 20 years and both the parties have filed papers showing that their business has got market in whole India as well as overseas. Both the parties have further filed papers showing that they have got business over worth several crores of rupees in a year. Therefore, there is no need of entering into this issue at this interlocutory stage as to which party has got bigger business and as to which party is a prior user. It may only be mentioned here that both the parties have filed papers showing that they have been using word LOHIA GROUP and LOHIA for the last more than 20-25 years. 5. The Court below in coming to the conclusion itself considered the two valuable judgments of the Supreme Court reported in AIR 2004 SC 3540 , M/s Satyam Infoway Ltd. v. M/s Sifynet Solutions Pvt. Ltd.; and 2005 (3) SCC 63 , Dhariwal Industries Ltd. and another v. M.S.S. Food Products. 5. The Court below in coming to the conclusion itself considered the two valuable judgments of the Supreme Court reported in AIR 2004 SC 3540 , M/s Satyam Infoway Ltd. v. M/s Sifynet Solutions Pvt. Ltd.; and 2005 (3) SCC 63 , Dhariwal Industries Ltd. and another v. M.S.S. Food Products. The first judgment i.e. Satyam Infoway Ltd. (supra) has been followed to place its reliance that passing off action is based on the goodwill that a trader has in his name, while in action for infringement of a trade mark trader’s right is based on property in the name as such. In passing of action the defendant must have sold its goods or offered its services in a manner which has deceived or would be likely to deceive the public into thinking that the defendant’s goods or services are the plaintiff’s. The action is normally available to the owner of a distinctive trade mark and the person who, if the word or name is an invented one invents and uses it. 6. On the other hand, it has relied upon the later judgment i.e. Dhariwal Industries Ltd. (supra), where it has been held that this type of question should not be decided at an interlocutory stage. The interim injunction in passing off action is permissible in the light of Section 27 of Trade Marks Act, 1999 in case the plaintiff can show prima facie case that it was prior user of its mark and balance of convenience was in favour of the plaintiff/respondent. Inspite of the same the Court came to the conclusion on the basis of the prima facie satisfaction that the plaintiff/respondent is prior user of a particular logo mentioned LOHIA GROUP, whereas the defendant failed to show any document or paper that they have also mentioned word LOHIA GROUP in any of their logo or trade mark. It was further held that the defendant/appellant never used the word LOHIA GROUP earlier in any of their advertisement, trade mark, banner or Firm name. As against it, the plaintiff has been able to prima facie prove that they have been using the word LOHIA GROUP since long and they are continuous user of the word LOHIA for the last several years. 7. The Court below ultimately held that the plaintiff/respondent has got a prima facie case for restraining the defendant from using the word LOHIA GROUP. 7. The Court below ultimately held that the plaintiff/respondent has got a prima facie case for restraining the defendant from using the word LOHIA GROUP. So far as the balance of convenience is concerned, it is also in favour of the plaintiff. No inconvenience is going to be caused to the defendant/appellant, if they are permitted to use the word LOHIA only. Therefore, interim injunction application of the plaintiff/respondent was allowed. The defendant/respondent were restrained from using the word LOHIA GROUP till further orders. However, it was made clear that the defendant/appellant may use the word LOHIA only. Written statement was directed to be filed and 21st February, 2009 was fixed for framing the issues by the order impugned. However, the appeal has been filed on 30th April, 2009. 8. If we go through Section 29 of the Trade Marks Act, 1999, we shall be able to find that infringement of registered trade mark is punishable upon the facts situation that in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. 9. It has already been held by the Supreme Court in Dhariwal Industries Ltd. (supra) that such type of question cannot be decided at an interlocutory stage. Therefore, our endeavour would be to identify that whether both the logos and/or trade marks are deceptively similar with each other or not. Logo of defendant/appellant and the logo of plaintiff/respondent are scanned and inserted hereunder : 10. Under no circumstances, from the apparent look we find that there is any deceptivity amongst the two logos for the sake of intervention of the Court below even at the interlocutory stage when the suit is directed to be disposed of within few months. Moreover, we find the cause of action and website information and alleged publication in the Times of India but the plaintiff/respondent have taken steps for issuance of notice after a period about two months from the alleged publication. Moreover, we find the cause of action and website information and alleged publication in the Times of India but the plaintiff/respondent have taken steps for issuance of notice after a period about two months from the alleged publication. It appears to us that the Court has been swayed away with the submissions of the plaintiff/respondent and ignored the plea of the defendant/appellant that the LOHIA GROUP is generic words and no person and entity can claim monopoly over it. According to us, the Court below did not discuss anything about prior use of word LOHIA by the appellant/defendant and deceptivity of the trade mark, which are genesis of the dispute with regard to the trade mark. 11. We have gone through the judgment reported in 2006(8) SCC 726 : JT 2006 (8) SC 393, Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel and others, where we find the essence of passing of action, which are as follows : “Essence of passing-off action 88. In a case of this nature, the test for determination of the dispute would be the same where a cause of action for passing­off arises. The deceptively similar test, thus, would be applicable herein. 89. The doctrine of passing-off is a common law remedy whereby a person is prevented from trying to wrongfully utilise the reputation and goodwill of another by trying to deceive the pubic through “passing-off” his goods. 90. In Kerly’s Law of Trade Marks and Trade Names, supplement pp. 42 and 43, para 16-02, the concept of passing­off is stated as under : “The law of passing-off can be summarised in one short general proposition that no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. Firstly, he must establish a goodwill or reputation attached to the goods or services which he supplies in the minds of the purchasing public by association with the identifying ‘get-up’ (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get­up is recognised by the public as distinctive, specifically of the plaintiff’s goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to a belief that the goods or services offered by him are the goods or services of the plaintiff. Thirdly, he must demonstrate that he suffers or, in a quick time action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or service is the same as the source of those offered by the plaintiff ....” Passing-off—infringement 91. Although the defendant may not be using the actual trade mark of the plaintiff, the get-up of the defendant’s goods may be so much like the plaintiff’s that a clear case of passing-off could be proved. It is also possible that the defendant may be using the plaintiff’s mark, the get-up of the defendant’s goods may be so different from the get-up of the plaintiff’s goods and the prices also may be so different that there would be no probability of deception to the public. However, in an infringement action, an injunction would be issued if it is proved that the defendant is improperly using the plaintiff’s mark. In an action for infringement where the defendant’s trade mark is identical with the plaintiff’s mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. The test, therefore, is as to likelihood of confusion or deception arising from similarity of marks, and is the same both in infringement and passing-off actions. [See Ruston & Hornsby Ltd. v. Zamindara Engg. Co., 1969 (2) SCC 727 ] 92. In Parle Products (P) Ltd. v. J.P. & Co., 1972 (1) SCC 618 , emphasis was laid on the broad and essential features of the impugned mark holding : “It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.” 93. Noticing the similarity of the mark in question with that of the impugned mark, it was opined that : “if one was not careful enough to note the peculiar features of the wrapper on the plaintiffs’ goods, he might easily mistake the defendants’ wrapper for the plaintiffs’ if shown to him some time after he had seen the plaintiffs’”. 94. It was further stated : “After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendants’ wrapper is deceptively similar to the plaintiffs’ which was registered. We do not think it necessary to refer to the decisions referred to at the Bar as in our view each case will have to be judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it.” 95. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 : 1965 (1) SCR 737 , this Court held : (AIR pp. 989-90, para 28) “These matters which are of the essence of the cause of action for relief on the ground of passing­off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy in the event of the use by another of that mark or a colourable imitation thereof. While an action for passing-off is a common law remedy being in substance an action for deceit, that is, a passing­off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of ‘the exclusive right to the use of the trade mark in relation to those goods’ (vide Section 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing-off, but is the sine qua non in the case of an action for infringement. The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing-off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing-off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing-off action would also be such in an action for infringement of the same trade mark.” 12. Upon going through such judgments we have come to know that the relief by way of interlocutory injunction would be material in a suit for infringement of trade mark. The balance of convenience has a vital role to play. When a prima facie case is made out and balance of convenience is in favour of the appellant, it may not be necessary to show more than loss of goodwill and reputation to fulfil the condition of irreparable injury. In fact, if the first two pre-requisites are fulfilled, in trade mark actions irreparable loss can be presumed to have taken place. In dealing with the issue, the Supreme Court held that what is sought to be injuncted is using a label which is deceptively similar to that of the plaintiff. 13. From the judgment reported in 1990 (Supp) SCC 727, Wander Ltd. and another v. Antox India P. Ltd., we find that appellate Court will not interfere with the exercise of the 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 where the Court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. In a passing-off action, however, the plaintiff’s right is independent of such a statutory right to a trade mark and is against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing-off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. 14. Passing-off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. 14. Taking into totality of the matter we are of the view that the dispute is with regard to such logos not anything else i.e. statement on the internet or newspaper. Statement or article either in the website or in the newspaper merely saying LOHIA GROUP cannot prima facie satisfy the cause that it has infringed or passed off the logo. Both are distinct and different. Moreover, Court has not enquired from the plaintiff/respondent whether the logo is registered under Section 9 of the Trade Marks Act, 1999 with the generic words “LOHIA GROUP” or not. The settled legal position is that one cannot have any monopoly right over the generic word. There is a distinction between generic word and common word. Where the mark is deceptively similar to recognize non-propriety name or generic name, the mark may come within the prohibition of Section 9 of the Act. Though normally the trade mark ought to be taken as a whole, but it is duty of the Court to find out whether the respective word/s, even being the generic word formed part and parcel of the logo or not. Even assuming the same is part and parcel of logo yet at the time of passing an order of injunction, the Court must be careful to see whether such logo is deceptively similar with the logo of appellant/defendant or not to come to an appropriate finding with regard to infringement of trade mark and passing off. The appellant/defendant has made two categorical statements. Firstly, the words LOHIA GROUP are generic words and secondly, they have not violated the same. The Court below has visualised that both the logos are different from each other yet came to a conclusion that if any order of injunction is passed, no one will be prejudiced in carrying on the business on the basis of available logos. We are of the view that such decision is totally perverse in nature. The Court below has visualised that both the logos are different from each other yet came to a conclusion that if any order of injunction is passed, no one will be prejudiced in carrying on the business on the basis of available logos. We are of the view that such decision is totally perverse in nature. Once the finding of the Court below is that if both of them are allowed to do business with the available logos and nobody will be prejudiced, no question had arisen for the Court below to pass an order of injunction inspite of such observation. Therefore, under no circumstances, the order impugned can be said to be sustainable. 15. Hence, the appeal is allowed. The order of injunction impugned in this appeal is set aside. The suit will be expedited and is required to be disposed of as early as possible within a period of three months from the date of filing the written statement, if not already filed and if filed from the date of communication of this order. 16. No order is passed as to costs. Hon’ble D.K. Arora, J.—I agree. ————