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2009 DIGILAW 978 (KAR)

M. S. Electricals v. Meenu Electric Co.

2009-12-08

A.S.BOPANNA

body2009
JUDGMENT A.S. Bopamna , J.— The Appellant herein is the Defendant in O.S. No. 25440/2008. The suit is filed by the Plaintiff seeking for judgment and decree for permanent injunction against the Defendant from infringing the Plaintiffs registered trade mark. In the said suit, application in LA. No. 1 was filed under Order 39 Rule 1 of Code of Civil Procedure seeking for temporary injunction. The trial Court after considering the rival contentions has allowed the application and granted temporary injunction by its order dated 01.12.2008. The Defendant therein is therefore questioning the said order before this Court in this appeal. 2. The brief facts are that the Plaintiff claims to carry on the business in manufacture and sale of electronic goods, electrical cables, control panels, single phase preventers, auto start units, copper winding wires etc. The business is said to have commenced on 01.06.1981 and the Plaintiff adapted the trade mark 'MEECO' for the goods manufactured by them. The said trade mark is registered under the provisions of the Trade Marks Act. 1999 (for short the 'Act') as No. 1721518 in Class-9. The trade mark is said to be renewed for a further period of ten years with effect from 05.11.2006. The artistic work 'MEECO' is also registered under the provisions of the Copy Right Act. 1957. The Plaintiff has also provided the details relating to the sales turnover from the year 1981 to 2008. The grievance of the Plaintiff is that the Defendant has adapted a similar trade mark "MEEKO" and applied for registration before the Trade Mark Registry. The Plaintiff has objected to the same. The Defendant did not contest the matter and the application came to be abandoned. The Plaintiff therefore contends that the Defendant cannot adapt a trade mark which is phonetically similar to the Plaintiffs trade mark and despite the same not being registered, the Defendant is using the same on high tech PVC cables, wires etc. The action of the Defendant therefore amounts to deceit and fraud. Hence, the Plaintiff has filed the said suit. 3. The Defendants however deny the case put forth by the Plaintiff. The Defendants contend that even prior to the application for trade mark and copy right by the Plaintiff the Defendants had already adapted the trade mark 'MEEKO' which is visually different from the mark of the Plaintiff. Hence, the Plaintiff has filed the said suit. 3. The Defendants however deny the case put forth by the Plaintiff. The Defendants contend that even prior to the application for trade mark and copy right by the Plaintiff the Defendants had already adapted the trade mark 'MEEKO' which is visually different from the mark of the Plaintiff. It is being used especially for high tension power cables and as such, they contend that it is being used on a different product since the Plaintiff is using 'MEECO' in respect of control panel, preventers, starters etc. Though technically they belong to the same genus, they are practically different. It is contended that there is no confusion in the market since the said two marks are being used for quite some time. It is contended that the trade mark registration, which had been applied for by the Defendant was abandoned for non-compliance of technical requirement and that alone will not amount to the Defendant abandoning the use of the trade mark itself. The sale turn over as claimed by the Plaintiff is denied by them and the Defendant, has also contended that the Plaintiff has not spent any money towards advertisement and business promotion and as such the Defendant cannot be prevented to take advantage of their own popularity. In effect, the case put forth by the Plaintiff is denied in toto. 4. In line with the rival contentions in the plaint and the written statement, the parties have also filed their respective application and objection statement while seeking for the interlocutory order of temporary injunction. The trial Court while considering the application has taken note of the rival contentions and has allowed the application of the Plaintiff. While considering the correctness or otherwise of the conclusion reached by trial Court in the limited scope available in an appeal under Order 43 Rule 1 of Code of Civil Procedure, this Court would only notice as to whether the trial Court has acted within the legal principles while considering the application for temporary injunction and as to whether the conclusion reached would suffer from perversity. 5. In this background, a perusal of the impugned order would indicate that the trial Court while framing the points for consideration was conscious of applying the tripod test. 5. In this background, a perusal of the impugned order would indicate that the trial Court while framing the points for consideration was conscious of applying the tripod test. While considering the prima facie case, the trial Court, has referred to the trade mark "MEECO" being used by the Plaintiff for its goods which included electric cables copper winding wires etc.. and that the said mark was registered with the Trade Mark Registry. From 01.06.1981. the mark was being used and application was made on 05.11.1996 for registration and the registration was ordered on 25.03.2005. In this regard, though the Defendant had contended in the written statement that certificate was not produced, in fact it was produced and the trial Court has noticed the same. The undisputed position that the Defendant on the other hand is using the mark 'MEEKO' was taken note of and it was also noticed that it is used in respect of similar goods since the Defendant is also selling electrical cables and installations. 6. In the said background, the trial Court has compared the two marks as a whole. Insofar as the phonetic similarity, there can be no dispute whatsoever. Even with regard to the visual similarity as noticed by the trial Court only the alphabet 'K' has been replaced instead of 'C' in the mark of the Plaintiff. Thus, having noticed that a similar mark has been adapted by the Defendant, the trial Court has taken note of the provisions in Sections 28, 29 and 31 of the Act. In the background of the prima facie conclusion that the marks are similar, the trial Court has considered the contention of the Defendant that the goods are different. However, the said contention has been rejected by the trial Court firstly because the Plaintiff and Defendant are dealing with certain of the similar products and also has noticed the legal position that even if the goods are different, a similar trade mark cannot be adapted. 7. While dealing with the contention of the Defendant that the Plaintiff is guilty of acquiescence, the trial Court has referred to the decisions in the case of Midas Hygiene Industries P. Ltd. and Another Vs. Sudhir Bhatia and Others, 2004 (2) SCALE 231 and in the case of Allergan INC. 7. While dealing with the contention of the Defendant that the Plaintiff is guilty of acquiescence, the trial Court has referred to the decisions in the case of Midas Hygiene Industries P. Ltd. and Another Vs. Sudhir Bhatia and Others, 2004 (2) SCALE 231 and in the case of Allergan INC. v. Milmenti of the Check Industries, [ 1999 (19) PTC 160 (Cal.) (DB)], wherein the aspect of deiay and acquiescence was considered and in view of the said decisions, the said contention was not accepted. The contention regarding bona fide user of the mark 'MEEKO' as claimed by the Defendant was also adverted to. The trial Court, in that regard has noticed that even though the Defendant had contended that they also had filed an application for registration and were using the mark from long time, the Defendant has not explained the circumstance for adapting the said mark. In that context, the trial Court was of the view that the mark has been adapted to take advantage of the reputation of the Plaintiffs mark 'MEECO' which is registered. The trial Court therefore was of the view that prima facie case for grant of injunction was made out. With regard to the aspect of irreparable injury and balance of convenience though there is no detailed discussion, the trial Court has consciously considered the same and held the same in favour of the Plaintiff. 8. The learned Counsel for the Appellant contended before this Court that the trial Court has not considered the matter appropriately since one of the issues framed in the suit is regarding delay, laches and acquiescence and that aspect has not been considered by the trial Court. In this regard, it is contended that the Defendant has been advertising the mark 'MEEKO' from the year 1997 as evident from the advertisements made in newspapers and the cost incurred towards the said expenses. It is further contended that while making the application for registration of the trademark, the Defendant/Appellant had indicated the same in the application stating that the mark was being used from 1994-1995. It is further contended that while making the application for registration of the trademark, the Defendant/Appellant had indicated the same in the application stating that the mark was being used from 1994-1995. It was further contended that the search report furnished by the Trade Marks Registry did not indicate the Plaintiffs mark as one of the marks and therefore even assuming that the Plaintiff has registered their mark, the Defendant is an honest, concurrent user and mere abandonment of the application for registration cannot have any adverse impact. 9. The learned Counsel for the Respondent however sought to justify the order passed by the trial Court. At the outset, it is contended that all aspects of the matter has been considered and when the exercise of discretion by the trial Court is based on the materials available on record and the same does not indicate perversity, this Court, should be slow to interfere. With regard to the contentions raised by the learned Counsel for the Appellant, it is pointed out that the same has been satisfactorily answered by the trial Court. It is further contended that when the Plaintiff has been using the trade mark from the year 1981 and have thereafter got the same registered with effect from 05.11.1996 would indicate that the Defendant is trying to take advantage of the popularity of the Plaintiffs mark. The similarity of the products is pointed out from the type of goods which has been indicated by the Defendant in their application seeking for registration. Hence, it is contended that the trial Court was justified, 10. In the background of the contentions, the manner of consideration as made by the trial Court, which is exhaustively noticed above would indicate that the trial Court has adverted to all the contentions which is similar to the nature of contentions which are advanced before this Court. On taking note of the said contentions, the trial Court based on the facts and material available in the instant case has come to the conclusion that there is deceptive similarity. In that circumstance, a perusal of the marks even though contended to be presented differently, since only the alphabet 'K' has been replaced with 'C' the deceptive similarity is visually also evident and with regard to the phonetic similarity, there can be no doubt whatsoever. In that circumstance, a perusal of the marks even though contended to be presented differently, since only the alphabet 'K' has been replaced with 'C' the deceptive similarity is visually also evident and with regard to the phonetic similarity, there can be no doubt whatsoever. Therefore, in a fact situation where the Plaintiffs mark is registered, the conduct of the Defendant in adapting the same amounts to infringement as rightly held by the trial Court. Though the Defendant had also made an application for registration, the fact that it is abandoned and not pursued further is a fact even though the learned Counsel for the Defendant/Appellant attempted to underplay the same. When the Defendant claims to have made the application in the year 1997 and if no registration is secured till now and if such application was apposed by the Plaintiff before the registry, the Defendant would not be entitled to contend regarding honest, concurrent user in terms of Section 12 of the Act in this proceedings at least at this interlocutory stage. Even on facts, though the trade mark of the Plaintiff was registered on 05.11.1996, the details furnished in the plaint regarding sales turnover is from the year 1981. Hence, even on that count, the Defendant's contention cannot be accepted. Though reference was made to the issue framed in the suit, the same is to be considered during the trial and prima facie with regard to the interlocutory temporary injunction, the said aspect has been adverted to the required extent by the trial Court. Further as noticed above, the trial Court has also referred to the decision of the Hon'ble Supreme Court and a Division Bench of the High Court of Calcutta to come to the conclusion that in the instant case, there is no delay and acquiescence. When the trial Court has referred to all these aspects of the matter arid has thereafter arrived at its conclusion, the same can never be termed as either arbitrary or perverse so as to call for interference regarding the finding relating to prima facie case. 11. When the trial Court has referred to all these aspects of the matter arid has thereafter arrived at its conclusion, the same can never be termed as either arbitrary or perverse so as to call for interference regarding the finding relating to prima facie case. 11. On the question of irreparable injury, since it is noticed that the Plaintiff and the Defendant are dealing With similar products and since the mark is phonetically similar and also keeping in view the class of customers of such products there is every possibility of confusion and the product of the Defendant being sold even though the customer may ask for the product of the Plaintiff. Further since the manner of sale would be different i.e., either in wholesale or retail, it would also be difficult to ascertain the actual loss and to compensate in terms of money. In any event, since the prima facie case with regard to the registered trade mark of the Plaintiff and the infringement of the same is established, if injunction is not granted, it would cause irreparable injury to the Plaintiff. The said analogy would equally apply while considering the balance of convenience. One mere aspect is that the mark is printed on labels and as indicated from the advertisement relied on by the Defendant themselves, the said labels are stuck on the colls while packing. That being so, the business of the Defendant as such would not be effected by the grant of injunction since all that the Defendant has to do is to use a different label on the product and even if certain print is to be made on the cable, a different mould is to be used for printing a different name and the production need not be stopped. As such, since the Defendant contends that its product is popular because of the quality of the product and its own reputation, the grant of injunction would not effect the Defendant. 12. Therefore, keeping all the above aspects in view, the trial Court was justified in passing the order dated 01.12 2008 in the manner in which it has done and the same does not call for interference. 12. Therefore, keeping all the above aspects in view, the trial Court was justified in passing the order dated 01.12 2008 in the manner in which it has done and the same does not call for interference. It is however made clear that all the observations made during the course of this order is limited only to the consideration of the interlocutory application and the same shall not weigh with the trial Court while ultimately considering the matter on merits based on the evidence that would be tendered by the parties. 13. In the result, the following: ORDER (i) The appeal in MFA No. 2133/2009 stands dismissed. (ii) The trial Court may consider the expeditious disposal of the suit itself. (iii) Misc. Civil No. 11814/2009 is disposed of as unnecessary. (iv) Parties to bear their own costs.