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2014 DIGILAW 187 (ORI)

Eastern Bidi Works v. Kailash Chandra Agarwal

2014-03-21

R.DASH

body2014
JUDGMENT R. DASH, J. - This appeal is in challenge of the order dated 18.5.2013 passed in I. A. No. 250 of 2012 by the learned District Judge, Cuttack, refusing to grant interim injunction restraining the defendant-respondents from using the labels and wrappers mentioned in Schedule 'B' of the interim application to pass off its business and products as those of the plaintiff-appellants. 2. The appellants as plaintiffs in the suit before the learned District Judge have claimed that plaintiff No.1 is a private Limited Company manufacturing 'Bidis' in the trade name 'New Orissa Bidis' and selling the products under the said Trade name since 1945. The plaintiffs got the trade name registered under the Trade and Merchandise Marks Act 1958 which has now expired but the plaintiffs have filed a fresh application before the competent authority to get the Trade Mark registered in their name. They have also got registered the colour combination, get-up, design and the general layout of the labels and wrappers which are used for the purpose of package of the product under the Indian Copyright Act, 1957. It is claimed that due to good quality of the product, it had acquired a distinct reputation and goodwill amongst the 'Bidi' consuming public who used to purchase the product by having a look at the labels and wrappers used for the package of the product. Thus the labels and wrappers of the product have become the exclusive property of the plaintiffs and no one else is legally entitled to use or utilize the same. It is alleged that the respondent-defendant being an unscrupulous and dishonest person, taking advantage of the popularity and goodwill of the appellants' product started manufacturing cheap and Inferior quality of 'Bidi' and has been passing off the same as the appellants' product by using identical and, deceptively similar labels and wrappers with the Trade name "Nutan Orissa 'Bidi" which phonetically resembles to the plaintiffs' trade mark i.e. "New Orissa Bidi". It is alleged that for the last about 8-9 months preceding filing of the suit the sale of plaintiffs' product has been substantially reduced by 50%. On investigation, they came to know that the defendant has been passing off his products as that of the plaintiffs' and due to such illegal and unlawful action on the part of the defendant, the plaintiffs have sustained a huge loss of Rs. 5,00,000/-. On investigation, they came to know that the defendant has been passing off his products as that of the plaintiffs' and due to such illegal and unlawful action on the part of the defendant, the plaintiffs have sustained a huge loss of Rs. 5,00,000/-. Therefore, plaintiffs have filed a suit for damages with prayer for permanent injunction restraining the defendant from passing off his product by using the plaintiffs' labels and wrappers which are deceptively looking like that of the plaintiffs. 2. The defendant in his objection has denied all the allegations made by the plaintiffs. He has asserted that the labels and wrappers used for his product with the Trade name 'Nutan Orissa Bidis' is not similar to the labels and wrappers used by the plaintiffs. The Trade Mark name is also not phonetically similar. So, the case of passing off has not been made out by the plaintiffs. It is further asserted that the plaintiffs having not registered their trade mark for their brand product, they cannot claim any protection against use of any such trade mark as claimed by them. 3. Learned Court below having considered the submissions made on behalf of the parties and the material objects placed before it, observed that the defendant is producing 'Bidis' using labels and wrappers for the package of his product which are almost identical to the labels and wrappers used by the plaintiffs, resulting passing off of his product as the product of the plaintiffs. The learned lower Court further observed that even in the absence of registration of their trade mark, the plaintiffs can approach the Court to prevent passing off someone's product as their product. The learned lower Court has further observed that both the parties are selling 'bidis' using similar looking labels and wrappers but the use of the labels and wrappers by the plaintiffs is much prior to the defendant started selling his product learned Court below further held that the plaintiffs-petitioners have got a good prima facie case, the balance of convenience leans in their favour and they are likely to suffer irreparable injury. Despite of such observation, the learned lower Court has rejected the prayer for interim injunction solely on the ground that they have not come out with a case as to when the defendants-opposite party used the aforesaid labels and wrappers to pass off his product with further observation that they have not come to the Court with promptitude to redress their grievances. 4. The appellants challenge the impugned order contending that the observation on the promptitude-ness in filing the suit is contrary to the facts pleaded in the plaint as well as various pronouncement made by the apex Court in numerous cases. learned counsel for the respondent on the other hand submits that the labels and wrappers used for the package of respondent product are quite different from that of the appellants and both are not similar looking and that the appellants copyright registration has expired in 2002, for which they cannot institute any proceeding to prevent or to recover damages for the infringement of unregistered trade mark. 5. As per Section 134(1)(c) of the Trade Marks Act, 1999, no suit for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiffs Trade Mark, whether registered or unregistered, shall be instituted in any Court inferior to a District Court having jurisdiction to try the suit. It implies that suit for passing off can be filed in the appropriate forum for the use of a Trade Mark whether registered or unregistered. Undisputedly, the suit out of which the present appeal arises is one for passing off. It is not disputed that the appellants have a Trade Mark for its product 'New Orissa Bidi'. It is also not disputed by the respondent that his product "Nutan Orissa Bidi" is being sold in the market with labels and wrappers of particular style and design but his case is that the labels and wrappers used for his product, is totally different from that the appellants'. It is also not disputed by the respondent that his product "Nutan Orissa Bidi" is being sold in the market with labels and wrappers of particular style and design but his case is that the labels and wrappers used for his product, is totally different from that the appellants'. In his counter, the respondent has made a chart showing the distinct features differentiating the name, label and wrapper used for his product from that of the appellants' but the learned District Judge has observed in the impugned order that both the parties are selling similar product i.e., Bidi and the labels and wrappers used by the respondent-defendant by both of them are deceptively similar to each other. The learned lower Court has compared the relevant materials object produced before it and arrived at such a conclusion. It is also not in dispute that the appellants had started using labels and wrappers in selling their product much prior to the respondent-defendant. Under such circumstances, this Court finds that the learned Court below has rightly concluded that the appellant-plaintiffs have a good prima facie case, the balance of convenience lean in their favour and there is every likelihood to suffer irreparable loss. 6. In Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia 2004, (3) SCC 90, it is observed by the apex Court that in a suit for passing off, interim injunction should not have been refused merely 011 the ground of delay and laches. In Heinz Italia and another v. Dabur, India Ltd., 2007 (6) SCC 1 , the apex Court held that if it could be prima facie shown that there was dishonest intention on the part of the defendant in passing off goods, an injunction should ordinarily follow and the mere delay in bringing the matter to Court was not a ground to defeat the case of the plaintiff. In the case at hand the appellant-plaintiffs have pleaded that about 8-9 months before filing of the suit they first came to know that the defendant had been passing off its product. There is nothing on record to disbelieve that averment made in the plaint. Therefore, it cannot be said that the appellant had not approached the Court with promptness. Moreover, in view of the observation of the apex Court, denial of interim injunction merely on the ground of delay in bringing the action is not justified. 7. There is nothing on record to disbelieve that averment made in the plaint. Therefore, it cannot be said that the appellant had not approached the Court with promptness. Moreover, in view of the observation of the apex Court, denial of interim injunction merely on the ground of delay in bringing the action is not justified. 7. Considering the facts and submissions, this Court is of the considered view that the interim relief prohibiting the respondent-defendant from using identical or deceptively similar labels and wrappers to pass off his product ant to be granted. 8. In the result, the appeal is allowed. The impugned order is set aside. The petition for interim injunction is allowed. The respondent-defendant is restrained from using the labels and wrappers shown in Schedule B of the injunction petition for passing off his product "Nutan Orissa Bidi" till disposal of the suit. Appeal allowed.