IN THE HIGH COURT AT CALCUTTA Ordinary Original Civil Jurisdiction ORIGINAL SIDE BEFORE: THE HON’BLE JUSTICE SOUMEN SEN G.A.No.237 of 2016 C.S.No.7 of 2016 SKIPPER LIMITED VS. AKASH BANSAL & ORS. For the Petitioner : Mr. Mr. Mr. Mr. Mr. Mr. Mr. Ranjan Bachawat, Sr. Adv., Rudraman Bhattacharyya, Adv., Prithviraj Sinha, Adv., Siddhartha Das, Adv., Phiroze Edulji, Adv., Abhishek Bhutoria, Adv., Sourish Banerjee, Adv. For the Respondents : Mr. Debnath Ghosh, Adv., Mr. D. Mukherjee, Adv., Mrs. Shomrita Das, Adv. Hearing Concluded On :
19. 07.2017. Judgment On :
9. h August, 2017. Soumen Sen, J.:- The petitioner claims to be the proprietor of the word mark “BANSAL”.. The petitioner claims that petitioner has been manufacturing, selling and marketing metal pipes manufactured under the trade mark “BANSAL”. with the mark “SKIPPER”. suffixed thereto from 1981 without any interruption. The petitioner’s turn over during the last financial year was Rs.1300 crores. The petitioner applied for registration of word mark “BANSAL”. on 16th December, 2010 and the said mark has been registered in respect of pipes and tubes of metal and flexible pipes not of metal. The registration certificate is dated 29th May, 2015. The petitioner on 11th July, 2011 applied for registration of the word mark “SKIPPER BANSAL”. and “BANSAL SKIPPER”. and the said mark has been registered on 1st July, 2015. The petitioner has also applied for registration under class 6 and17 and the said marks have been registered in respect of both the classes on 1st July, 2015 and 5th October, 2015 respectively. On 6th September, 2010 the plaintiff has applied for registration of the word mark “BANSAL SKIPPER”. under class 17 and the said trademark has been registered on 22nd May, 2015. The plaintiff claims that by virtue of aforesaid registration the petitioner has acquired statutory right over the said trademark and is entitled to have exclusively used of the said trademarks. The petitioner alleged that on or about May 2015 the petitioner for the first time found that the products of the respondents were offered for sale under the mark “BANSAL ASTER”.. It is alleged that the “BANSAL ASTER”. is the combination of the petitioner's trademark “BANSAL”. and the mark “ASTER”. is deceptively similar to the mark “ASTRAL”. of M/s. Astral Pipes. The petitioner claims that both the petitioner and the said Astral Pipes are the market leaders in PVC pipes. It is contended that by combining the two words “BANSAL”. and “ASTER”. the respondents are trying to piggybank the goodwill and reputation of the petitioner and the said Astral Pipes. The plaintiff issued a cease and desist notice date 7th May, 2015. The respondents replied to the said notice by a letter dated 26th May, 2015. It is contended that the respondents wanted to discuss the matter relating to infringement. It is submitted on behalf of the plaintiff that adoption of the said mark by the respondents is dishonest and the respondents are not entitled to a plea of bona fide use of the said mark as in the affidavit in opposition and during argument the respondents took the defence of bona fide use of the offending and infringing marks. It is submitted that the respondents had applied for the mark “Bansal Aster”. on 8th January, 2015 claiming user since 3rd December, 2014. The name of the proprietor was given as Aakash Bansal claiming that he was carrying on proprietorship business under the name and style of “BANSAL ASTAR”.. Another application was filed on 20th May, 2015 for registration of the mark “BANSAL ASTAR”. claiming user since 3rd December, 2014. The application was in the name of a partnership firm called Bansal Polymers, partners of which were P.L. Bansal, Bikash Bansal and Aakash Bansal. After receiving of the cease and desist notice dated 7th May, 2015 a further application was made on 23rd June, 2015 antedating the user to 1st April, 2012. The said application was purportedly made by the partnership firm Bansal Polymers. Another application was made on the self-same date for registration of the device mark antedating the date of user to 1st April, 2012. The learned Senior Counsel referred to the applications made on behalf of the respondents submitted that this document would go to show that the change of date of user in the registration application is a fraudulent and dishonest attempt by the respondents to counter the cease and desist notice. According to the petitioner the defendant has failed to produce even an iota of evidence of bona fide use by the respondent of the impugned trademarks disclosed in any of their affidavits filed in the present proceedings. It is submitted that in the affidavit in opposition the respondents have failed to demonstrate the adoption of the impugned trademarks by them and no plausible defence on merits as against the claims of the petitioner has been disclosed in the said affidavit. The respondents have also failed to explain in the affidavit filed in this proceeding as to why they had filed two other applications antedating the dates of users. In dealing with the partnership deed disclosed by the respondents in the supplementary affidavit it is submitted that the partnership deed is of 2014 whereas the respondents claimed their user since 2012. The disclosure of certain purported highlighted brochures by the respondents only recent development and nonetheless would show the petitioner user the mark Bansal with regard to its pipes. The learned Senior Counsel has referred to the affidavit affirmed by one Jadumani Sahu on 1st August, 2016 in respect of aforesaid submission. The petitioner has referred to a supplementary affidavit affirmed on 7th September, 2016 and submits that it would be evident from the said affidavit that the respondents with a view to amicably settle the dispute suggested that they have proposed changes. The proposed change suggested by them was that they would use the mark A. Bansal Aster and trade on the BANSAL POLYMERS in relation to pipes manufactured and sold by the respondents. The respondents, however, claim that the mark Bansal has been coined and adopted by the respondents from their surname Bansal in a bona fide and honest manner without any knowledge and use of the petitioner’s mark “BANSAL”.. The respondent proposed use of the mark ASTAR BANSAL and/or A. BANSAL ASTAR in the manner disclosed in annexure B to the supplementary affidavit affirmed on 7th September, 2016. The learned Counsel for the petitioner argued that the change proposed by the respondents reeks of dishonesty in view of the fact the despite the proposed change “BANSAL”. remained prominent part of the name and by such proposed change it was apparent that the respondents had all intentions to use the name more as a trademark rather than their trade or business name. The adoption is dishonest in view of the fact that the respondents all alone had the mala fide intention to use the name more as a trademark and as its business name. It is submitted that the petitioner is not entitled to defence under Section 35 of the Trademarks Act, 1999 because the use of the mark is not bona fide. After receipt of the trademark application the respondents tried to antedate their application which shows their dishonesty. The respondents have failed to explain the reasons as to why in the said applications the user date was antedated. This clearly shows dishonesty on the part of the respondents. The petitioner has relied upon a decision of the Bombay High Court the reliance has been placed on the case of Kirloskar Diesel Recon Pvt. Ltd. & Ors. Vs. Kirloskar Proprietary Limited reported at 1997 PTC469 AIR1996Bombay 149 for the proposition that the defence of own name is not available to assume name or incorporate company in either infringement or passing an order of injunction. It is submitted that in order to take recourse under Section 35 of the Trade Marks Act 1999 the full or abbreviated name has to be used as opposed to use the name in piecemeal manner. It is submitted that in Kirloskar Diesel (supra) the Hon’ble Division Bench was considering a case of passing off in which a defence under Section 34 of the old Act corresponding to Section 35 of 1999 Act was taken. The Division Bench held that the defence under Section 34 of the old Act does not apply to artificial persons like incorporated company. In the case of incorporated company, the adoption of the name is by choice whereas in the case of natural person, the adoption of surname is not by choice. It is submitted that the Bombay High Court has held that it was not even necessary to establish fraudulent intention on the part of the defendants for passing an order of injunction. The decision of the Delhi High Court in Surjeet Book Depot vs. Surjeet Book Depot (P) Ltd. and Anr. reported at 1982 PTC297and the decision of the Bombay High Court in LokhandwalaConsturction Industries Pvt. Ltd. & Others vs. Lokhandwala Infrastructure Pvt. Ltd. & Another reported at 2016(1) MLJ221are relied upon for the proposition that when the plaintiff has the mark registered in its name it is not proper for anyone to use such name and until the mark is rectified the registration should hold the field. While a mark is registered it is not desirable that the other should imitate the same. It is argued that the defence of the respondents that the mark ‘Bansal’ is common to trade cannot also be countenanced and the respondents are not entitled to take such defence as they themselves have applied for registration of mark “Bansal”.. The decision of the Single Judge of this Court in Khadim India Ltd. vs. Lifestyle International Private Ltd. being G.A. No.409 of 2015, C.S. No.28 of 2015 is also cited for the proposition that until the removal of the trade mark there is a presumption as to the validity of the trademark and if two marks are similar and one of them is registered, the registered proprietor could bring an action to restrain use of the unregistered mark and no further evidence is required. The learned Senior Counsel has relied upon the decision of the Bombay High Court in Pidilite Industries Ltd. v. Jubilant Agri & Consumer Products Ltd. reported at 2014 (57) PTC617(Bom), (paragraphs 11.1, 11.4, 14.3, 15, 16.3, 17.1,
22) and submits that in the said decision a similar defence made by the respondents therein who had applied for label with the mark Marine and was claiming that Marine was common to trade was turned down. The High Court held that once a person applied for registration of mark he is precluded from contending that the same is descriptive or has become publici juris or common to trade. The learned Senior Counsel has also relied upon a Co-ordinate Bench decision of this Court in the case of R.R. Proteins And Agro Limited vs. Hari Shankar Singhania & Another reported at 2010 (3) CHN912in which our Court was dealing with a case where the plaintiff had registration of the label mark containing Arati where Arati was the dominant feature of the mark. The defendant was using the mark “Sandhya Arati”. and the getup of the defendant’s mark was completely different. The Hon’ble Justice Sanjib Banerjee considered the provisions of sections 17(1) and 17(2). Though the plaintiff’s registration showed that it was proposed to be used at the time of application, the said application predated the defendant’s use and the plaintiff was entitled to protection. The Hon’ble Justice Banerjee held that as long as the plaintiff’s mark was registered the same would be sufficient for the plaintiff to claim exclusivity in respect thereof. Though the label, packaging and get up of the defendants do not imitate or resemble the plaintiff’s other than the word “Arati”. being a part thereof, the Hon’ble Justice Banerjee held that in view of the provisions of Section 29 and Section 2(h) of the Trade Marks Act, if a mark so resembles the other as to be likely to deceive or cause confusion would constitute an act of infringement. It is a test by perception and a projection as to whether the mark complained of is likely to deceive or cause confusion. It has to be assessed through the eyes and ears of the prospective user of the goods or services; where the judge has to place himself in the position of a prospective customer and assess whether he would then be likely to be deceived or confused. On such basis Justice Banerjee granted an order of injunction both on account of infringement and passing off. The learned Senior Counsel has relied upon the decision of the Hon’ble Supreme Court in National Bell Co. vs. Metal Goods Mfg. Co. reported at AIR1971SC898for the proposition that common to trade in a case where the mark though descriptive has become distinctive by user. The learned Senior Counsel has also referred to Section 32 of the Trade Mark Act, 1999. The petitioner has registration over the mark “BANSAL”.. already an injunction over the trademark. There is The respondents are using it as part of their business name. Section 29(5) of the Trade Marks Act, 1999 reads as follows: “29(5) – A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered”. By virtue of the said Section use of the mark as corporate name also tantamount to infringement of the mark. Accordingly the petitioner has prayed for confirmation of the ex parte order of injunction passed on 13th January, 2016. The learned Senior Counsel has summarised his argument by contending that in view of the fact that there cannot be any dispute that the petitioner is the registered owner of the mark “Bansal”. in absence of any application for rectification of the trademark the defence of common user is not available and meritless. Inasmuch as the prior use of the mark by the petitioner is admitted and the mark is registered as word mark per se the petitioner in any event is entitled to use the mark in exclusion of others. The respondents have filed their affidavit in opposition and also two supplementary affidavits. The defence of the respondents are summarised below: The respondents namely, Akash Bansal, Radheshyam Bansal, Bikash Bansal are all carrying on business under the name and style of the mark “Bansal Polymers”. from Sitarampur, District Burdwan. The use of the trademark “Bansal Aster”. and trading name “Bansal Polymers”. is not infringement of the petitioner’s registered trademark “Skipper Bansal”. as use of the mark “Bansal”. by the respondent is protected under Section 35 of the Trademarks Act, 1999 being the surname of the respondents. The mark “Bansal Polymers”. has been adopted by the respondents in a bona fide and honest manner from their surname “Bansal”. and no other person other than Bansals are carrying on business under the name and style of “Bansal Polymers”.. The respondents are entitled to protection under Section 35 of the said Act. The respondents are using the trading name “Bansal Polymers”. and not “Bansal Skipper”.. The petitioner has never used the mark “Bansal”. in isolation and use of own surname by the respondents cannot be alleged as dishonesty or malafide. The mark “Bansal”. is a common surname and is used by various other entities in pipe industries in relation to GI and PVC pipes and the petitioner cannot claim exclusivity over the same. There cannot be any deception or confusion by use of mark “Bansal Polymers”. by the respondents as the respondents are carrying on business in Burdwan and the petitioner’s products are primarily sold in Kolkata, Midnapur and nearby areas. The mark used by the petitioner is “Skipper Bansal”. and the mark used by the respondents is “Bansal Polymers”. or “Bansal Aster”. which are not identical and there is no chance of deception or confusion as alleged. The mark “Bansal”. is used by the respondents is in conformity with trade practice and usage and is common to trade and the plaintiff cannot interfere with the right of the respondents to use their own surname. The petitioner is not using the mark “Bansal”. as their corporate name and has abandoned use of the said mark is view of the Scheme of Arrangement sanctioned by this Hon’ble Court. The learned Counsel has referred to the supplementary affidavit filed pursuant to order dated 11th July, 2016 and has referred to the deed of reconstitution partnership dated 17th April, 2013, search report on the mark Bansal, petitioners brochures and the excise-cum-tax invoice of the petitioner. It is submitted that the search report at pages 26-29 of the supplementary affidavit would show that the mark Bansal is common to trade. The petitioner’s brochure shows abandonment of the mark “Bansal”. by the petitioner and use of the mark “Skipper”. instead of the mark “Bansal”. is apparent from the current excise-cum-tax invoice. In dealing with the document disclosed by the petitioner in the affidavit in reply to the supplementary affidavit it is submitted that the document annexed to the said affidavit merely show that use of the brand “Skipper Bansal”. only at few pages. The brochures relied upon by the petitioner mainly deal with the brand Skipper and not Bansal. The cumulative effect of those disclosers by the petitioner at the highest would show that the plaintiff is using the mark Bansal along with Skipper in sporadic manner and in view thereof the petitioner cannot claim any exclusivity over a common surname Bansal. The learned Senior Counsel has referred to Section 35 of the Trade Mark Act, 1999 and submits that the said section is no uncertain terms permits anyone to carry on business in a bona fide manner under its own name and surname. The judgment of the Hon’ble Supreme Court in Precious Jewels & Another vs. Varun Gems reported at (2015)1 SCC160(paragraph 9-11):
60) PTC465(SC) has been relied upon for the aforesaid proposition. It is submitted that in the said decision it was held that:“A common surname ‘Rakayan’ used as part of the corporate name by the defendant firm ‘Neena and Ravi Rakayan’ cannot be restrained by an interlocutory order”.. It is submitted that even in case of corporation, protection has been given in relation to use of surnames. A man is entitled to use his own name honestly and fairly and if he does so, he cannot be restrained even if some confusion arises. A man must be allowed to carry on business in his own name or the name of his predecessor and if in the process some confusion arises that should not be a ground to restrain that man from carrying on business in his own name which is an inherent right of a man. In this regard reliance has been placed on the decision of K.C. Das Private Limited vs. K.C. Dass reported at 2011 (2) CHN (Cal) 703 paragraph 24 it is submitted that the ratio of the said judgment is in context of use and adoption of the mark “K.C. Dass”. used in relation to a partnership firm, which was subsequently taken over by a company “K.C. Dass Fashions Pvt. Ltd.”
. The plaintiff cannot claim any order of injunction restraining the defendant from using the name “Bansal”. as no injunction can be passed over the use of common surnames. It is submitted that judicial opinion on this point is consistent and in this regard reliance has been placed on Bagla & Co. v. Bagla Cosmetics reported at 2000 PTC355 Rajinder Kumar Aggarwal v. Union of India & Anr. reported at 2007 (35) PTC616 Goenka Institute of Education & Research v. Anjani Kumar Goenka & Anr. reported at AIR2009Del 139 and Jaggi Ayurvedic Pharmacy v. Jaggi Ayurvedic Research Foundation reported at 2010(42) PTC769(Del.) It is submitted that the aforesaid decisions would show that the Courts have refused to grant injunction in relation to common surnames, i.e., ‘Bagla’, ‘Aggarwal’, ‘Goenka’ and ‘Jaggi’. In response to the argument made by the petitioner that defence of bona fide use of one’s name is not available to the defendant in an action for passing off, it is submitted that the said argument is misconceived as Section 29(5) has been brought in within the ambit of infringement under the Trademarks Act, 1999 and in such scenario, the plaintiff cannot succeed in an action of passing off if the defendant is statutorily protected to use his own name under Section 35 of the said Act. In refuting the argument that in absence of an application for rectification and declaration to the effect that the registration of the mark impugned is invalid, the registered proprietor could bring an action to restrain use of an unregistered mark, a Full Bench decision of the Bombay High Court in Lupin Ltd. v. Johnson and Johnson reported at AIR2015Bombay 50 (FB) has been relied upon in which it was held that the phrase ‘prima facie’ in Section 31 cannot be treated as conclusive evidence. It is, thus, submitted that if in this proceeding, the defendants are able to establish that user of a common surname could not have been granted registration at all, mere registration of the mark “Bansal”. could not defeat the right of the defendants to question the validity of the said mark as ex facie a common surname “Bansal”. could not have been registered at all. It is submitted that in the instant case since the action for infringement of the registered mark is likely to fail in view of Section 29(5), the case of passing off may not also succeed more so as it is a word mark. It is submitted that in a fairly recent decision, a Division Bench of this Court in JSB Cement LLP v. Assam Roofing Limited & Ors. reported at 2017 SCC OnLine Cal 5180 has laid down the principle that a case of passing off may not succeed in the event an action for infringement is found to be not maintainable. It is submitted that in absence of any prayer or pleading in the plaint or the application for restraining the respondents from carrying on business under the name and style under the word mark “Bansal Polymers”., no relief can be granted in favour of the plaintiff as the law is well-settled that reliefs can only be allowed, there is a foundational pleading. In this regard, reliance has been placed upon the judgment of the Hon’ble Supreme Court in Ranbir Singh v. Executive Engineer reported at (2011) 15 SCC453 The respondents have accordingly prayed for dismissal of the petition. The right to use the word mark “Bansal”. by the defendants presumably on the strength that all the partners of the partnership firm “Bansal Polymers”. are having the common surname “Bansal”. has resulted in filing a suit by the plaintiff for infringement of its registered mark “Bansal”. in relation to its products. The parties have common field activity. The petitioner claims exclusive right to use the said word “BANSAL”. per se or in conjunction with “SKIPPER”. either as prefix or suffix on the strength that the petitioner has been manufacturing, selling and marketing metal pipes manufactures under the trade mark “BANSAL”. with the mark “SKIPPER”. suffix thereto from 1981 without any interruption. The said claim is resisted by the defendants on the ground that the defendant Nos.1 to 4 are all having the common surname “BANSAL”. and, accordingly, use of the said surname in relation to their trade business and products cannot be prevented. The petitioner applied for registration of the trade mark “BANSAL”. on 16th December, 2010 and the said mark has been registered in respect of pipes and tubes of metal and flexible pipes not of metal. The Registration Certificate is dated 29th May, 2015. The petitioner on 11th July, 2011 applied for registration of the word mark “SKIPPER BANSAL”. and “BANSAL SKIPPER”. and the said mark has been registered on 1st July, 2015. The petitioner has also applied for registration under classes 6 and 17 and the said marks have been registered in respect of both the classes on 1st July, 2015 and 5th October, 2015 respectively. On 6th September, 2010 the plaintiff has applied for registration of the word mark “BANSAL SKIPPER”. under class 17 and the said trademark has been registered on 22nd May, 2015. The petitioner alleged that in or about May, 2015, the petitioner for the first time found that the products of the respondents were offered for sale under the mark “BANSAL ASTER”.. The said mark “BANSAL ASTER”. is combination of petitioner’s trade mark “BANSAL”. and the word “ASTER”. is deceptively similar to the mark “ASTRAL”. of M/s. Astral Pipes. The petitioner claims that both the petitioner and the said Astral Pipes are the market leaders in PVC pipes. The plaintiff in view of the infringement of its mark issued a cease and desist notice dated 7th May, 2015 to which the respondents replied by a letter dated 26th May, 2015. The respondent in the reply had invited a discussion on the subject to resolve the dispute. However, in the affidavitin-opposition, the defendant has taken the plea of bona fide use of the surnames of the partners of the defendant No.5. The defendants contended that they have adopted the mark “BANSAL ASTER”. bona fide and honestly. The plaintiff has disclosed documents to show that the plaintiffs have been using the mark “BANSAL”. with suffix or prefix since 1981 and has considerable presence in the market. Even on the basis of the documents disclosed by the defendants in this proceeding, the defendant has failed to make out any prior user of the mark “BANSAL”. in relation to its products. The defendants appear to have antedated prior user of the word mark “BANSAL ASTER”. subsequent to the cease and desist notice. The issue that emerges for consideration is that whether the adoption of the word “BANSAL”. by the defendants are bona fide, honest and protected under Section 35 of the Trade Mark Act, 1999. The plaintiff contended that since the name “BANSAL”. has acquired considerable reputation and goodwill in the market in relation to the products for which the said mark was registered, the plaintiff is protected under Section 29(5) of the Trade Mark Act, 1999 and use of the said mark “BANSAL”. in any manner whether as a trade name or part of the trade name by the defendant constitutes infringement. Section 29 (5) of the Trade Mark Act, 1999 was absent in the earlier Act. The said Sub-Section brings the law in harmony with amendments to Sections 20 and 22 of the Companies Act, 1956 (now Sections 4(2) and 16 of the 2013 Act). This provision would prevent a person from adopting someone else’s Trade Mark as part of that person’s trade name or business name by enacting explicitly that such action will constitute infringement under this Act. This sub-Section would postulate the existence of the following circumstances for a plaintiff to file a suit for infringement:- 1. The plaintiff’s mark is a registered trade mark.
2. The defendant is using the plaintiff’s registered trade mark as his trade name or part of his trade name or name of his business establishment or part of such name.
3. The defendant’s business is in respect of goods or services in respect of which the trade mark is registered. All the three factors must exist in order to establish the plaintiff’s case. It may happen that the defendant is using the plaintiff’s registered mark as part of his trade or business name but is engaged in an altogether different line of business or in a business not related to the goods/services in respect of which the mark is registered. In such case, it may be difficult to invoke Section 29(5) and the plaintiff may have to proceed to file an action for passing off in terms of Section 27(2) of the Act. The legal position emerging from the catena of judicial decisions is that reputation or goodwill in business generally attaches with the trade name adopted by a business house. Such reputation or goodwill is required to be protected. Copying of the name by rival trader is likely to cause an injury to the business of the original adopter of the said name. In fact, no one is entitled to commence or carry on business in such a way as to represent it to be the business of someone else or being associated with such someone else. The defence to adoption of the word mark “Bansal”. either as a suffix or prefix was not only to ride on the goodwill of the plaintiff but also suggest that the product sold under the said mark are of the plaintiff. The line of business and the nature of products manufactured or traded are same. Section 35 broadly corresponds to the Article 6 (1) of the European Council Directive which reads thus:1. the trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade; 2. his own name or address; 3. indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or service; 4. the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts. Provided he uses them in accordance with honest practice in industrial or commercial matters. In Euromarket Designs Inc. v. Peters and Crate & Barrel, . F.S.R20(Ch D), the Chancery Division posed the following questions:1. Does the provision extend to legal persons other than natural persons, i.e. does it extend to companies?.
2. Does it extend to the protection even where the defendant is using his name as a trade mark?.
3. Does it matter if the work “limited”. or other word indicating incorporation is omitted?.
4. Does the name have to be one recognized in this country before the defence can apply?. JACOB J took the view that Article 6(1) does cover use of a company name. It has been suggested that companies are different from people because a company name can be chosen at will whereas the name of a person is pretty well fixed at birth and by usage. That is, of course, true but anyone who chooses a new company name knowing of an existing reputation in a registered mark, or indeed just knowing that the mark was registered and having no reason to suppose the registration as invalid, would be likely to be caught by the proviso. They would not be using the mark in accordance with honest practices in industrial or commercial matters. There cannot be any doubt that the newly inserted Section 35 of the present Act which corresponds to Section 34 of the Trade and Merchandise Marks Act, 1958 is an exception to the general rule that the registered proprietor of the trade mark has the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and could be a possible defence in an action under Section 29(5) of the present Act but before giving the benefit of the said section the Court must be sure that the defendant had adopted the offending mark bona fide and honestly. Section 35 is in the nature of an additional limit on the rights of registered proprietors and seeks to protect traders in their bona fide use of his own name or the name and place of business or of descriptive words. The law recognises and preserves the right which every man has to use his own name, provided that the user of it is not in any way fraudulent, and to apply to his goods any bona fide description of their character or quality. (See: Woodward Ld. v. Boulton Macro Ld., (1950) 32 RPC173 p.196) The section is intended to safeguard traders in cases where a registered trade mark consists of a personal name or the name of the place of business, or of descriptive words without the use of which other traders would find difficulty in describing their goods. The present section has no application to an artificial person such as an incorporated company. In cases of incorporated company the adoption of name by his choice whereas the case of a natural person the adoption of surname is not by choice. The defence that a man has a right to use his personal name is not available in passing off action. The statutory protection under Section 35 in respect of personal names is based on the common law principle that when the person has been using his own name for trading purposes, another person having the same name cannot ordinarily be prevented from using it bona fide for trading purposes. In the case of Electromobile Co. Ltd. v. British Electromobile Co. Ltd., Lord Halsbury, (1908) 25 RPC149at 154 similarly observed: “If in point of user a particular thing had become so identified with the proper name of a person who carried on business under his own name that he could establish, as a matter of fact, that the name had become associated with the particular manufacture, I do not deny that another person who set up in business under that name, although it might be that person’s own proper name, might be restrained from carrying on business under that name. But these are all questions of fact”.. If the use by the defendants of their own name was likely to deceive, then there would be no defence to the passing off action, no matter how honest and bona fide the user was. (See Bajaj Electricals Ltd. v. Metals & Allied Products, AIR1988Bom 167 (DB) In Brinsmead & Sons Ltd. vs. Brinsmead, (1913) 30 RPC493at 507 Buckley, L.J., after discussing the principles to be applied generally to passing off cases, said thus: “In the application of the principles which I have stated there is, in my opinion, no difference whatever where the true statement consists in an accurate statement of the defendant’s name as distinguished from any other true statement of fact, if of course you have evidence that from the use of his own name deception results. If a trader takes a name which is not his own name, but is that of a rival trader, and uses it in his trade, no doubt that is very strong evidence that he intends to deceive, and the Court will fasten upon that in any case in which it occurs; but if that is not so, if he is simply using his own name and it is proved that its use results in deception, he will be restrained even from using his own name, without taking such steps as will preclude the deception which, by hypothesis, is engendered by his using his own name. There are many authorities for this proposition.”
. Where a party is representing his goods as those of another, using his own name is not a defence. Bona fide use normally means honest use by the person of his own name without any intention to deceive anybody or without any intention to make use of the goodwill which has been acquired by another trader. (See Baume & Co. Ltd. v. Moore Ltd., (1957) RPC459at
463) The expression “bona fide use by a person of his own name”. occurring in the corresponding section 44 of the U.K. Act of 1905 was explained by FARWELL, J., in Harris (Calne) Ld. v. Harris, (1934) 51 RPC98thus: “It is said on behalf of the defendant that he is making a bona fide use of his own name, and he is, therefore, completely protected by Section 44. Now, Section 44 is in wide terms, and it does provide in terms that no registration shall interfere with any bona fide user by a person of his own name. The defendant here is using his own name. In my judgment, the only question which I have to determine upon this Section is whether such user is bona fide or not ...... I agree with the argument which has been addressed to me on behalf of the plaintiffs to this extent, that by using the words “bona fide”. in that Section it was not intended that the use should merely not be fraudulent, or deliberate with an intention to deceive, or anything of that kind by the person whose own name is being used. If in fact the use of the name does lead to the result that that person’s goods are being passed off as the goods of another, although that may not have been the intention of the person so using that name, and although he may have a perfectly honest reason for using it, yet if in fact the use of the name which the defendant makes is such that it leads, or must lead, to a misrepresentation that the goods of the defendant are the goods of the plaintiff, then in my judgment the defendant is not entitled to use his name, although it is his own name and although he has not, and may never have had any fraudulent intention.”
. In the case of Baume & Co. Ld. v. Moore (A.H.) Ld. (1957) RPC549 ROMER L.J.
dealing with the corresponding section 8 of the U.K. Act said thus: DANCKWERTS, J., said that he understood that “bona fide”. normally means the honest use by the person of his own name, without any intention to deceive anybody or without any intention to make use of the goodwill which has been acquired by another trader; and in that sense he acquitted the defendants of any want of bona fide in the present case. We agree with the learned Judge’s definition of the term “bona fide”. and we see no reason to attribute a different or special meaning to the phrase in its context in Section 8. The mere fact in itself that a trader is using his own name which too closely resembles a registered trade name of which he is aware does not prevent the user from being “bona fide”. provided that the trader honestly thought that no confusion would arise and it he had no intention of wrongfully diverting business to himself by using the name. The trust is that a man is either honest or dishonest in his motives; there is no such thing, so far as we are aware as constructive dishonesty. In our judgment if a trader is honestly using his own name, then no action will lie for infringement of trade mark and any rival trader who thinks himself aggrieved must sue, if at all, for passing off.”
. In the case of trading name which has become almost house-hold word and under which trading name a variety of activities are undertaken, a passing off can successfully lie if the defendant has adopted identical or similar trade name and even when the defendant does not carry on similar activities. Even if the defendant’s activities in such circumstance are remote, the same are likely to be presumed a possible extension of plaintiff’s business activities. No company is entitled to carry on business in a manner so as to generate a belief that it is connected with the business of another company, firm or individual. The same principle of law which applies to an action for passing off of a trade mark will apply more strongly to the passing off of a trade or corporate name of one for the other. Even if the defendants might have adopted the name (trade name) innocently, if there is probability of confusion in the business, an injunction will be granted against such use is a view which finds support in Laxmikant V. Patel vs. Chetanbhat Shah reported at AIR2002SC275 In this case the plaintiff was operating under the name and style ‘Muktajivan Studio’. The defendant who was earlier using the name ‘Gokul Studio’ later changed the name to ‘Muktajivan Studio’. Intention of the defendant to make use of business name of the plaintiff so as to divert the business to himself was apparent and the injunction was therefore, granted. The Court said:“The name of a business normally has attached to its goodwill, independent of the question of trade or service mark, and the courts will protect that goodwill. An action for passing off lies wherever the defendant company’s name, or its intended name is calculated to deceive, so as to divert business from the plaintiff or to occasion a confusion between two businesses. The ground is not to be limited to the date of the proceedings and the court will take into account the way in which business may be carried on in the future or in other words the possibility of diversion of business in future. The principal issue for decision would be whether the business of plaintiff run in a trade name also had come into existence prior to commencement of its user by the defendants and whether the trade name of plaintiff had acquired a goodwill creating a property in the plaintiff so as to restraint the use of similar word in the business name of a similar trade by the defendant – a competitor.”
. In Paragraphs 10, 12 and 13 the law on this issue was summarized. The said Paragraphs read:-
“10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policy in the world of business. Secondly, when a person accepts or intends to adopt a name in connection with his business or services which already belongs to someone else, it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.”
“12. In Oertil vs. Bowman (1957) RPC388(at page 397), the gist of passing-off action was defined by stating that it was essential for the success of any claim to passing-off based on the use of given mark or get-up has become by user in the country distinctive of the plaintiff’s goods, so that the use in relation to any goods of the kind dealt in by the plaintiff on that mark or get-up will be understood by the trade and the public in the country as meaning that the goods are the plaintiff’s good. It is in the nature of acquisition of a quasi-proprietary right to the exclusive use of the mark or get-up in relation to goods of that kind because of the plaintiff having used or made it known that using the same or somewhat deceptively similar mark, get-up or name in relation to goods not of plaintiff. The three elements of “passing-off”. action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff. In our opinion, the same principle, which applies to trade mark, is applicable to trade name.
13. In an action for passing off it is usual, rather essential, to seek an injunction temporary or ad-interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly (Ibid, para 16.16) passing off cases are often cases of deliberate and intentional misrepresentation, but it is well-settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing Off (1995 Edition, at p. 3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing off. Likelihood of damage is sufficient. The same learned author states that the defendant’s state of mind is wholly irrelevant to the existence of the cause of action for passing off (ibid, paras 4.20 and 7.15). As to how the injunctions granted by the Court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted that plaintiff’s distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name. (Kerly, ibid, para 16.97)”. In another decision of the Supreme Court in the case of Ramdev Food Products Ltd. vs. Arvindhbhai Rambhai Patel & Ors., reported at 2006 (8) SCC726 the Supreme Court has observed that the test for determining deceptive similarity in an infringement action would be the same as in the case of a passing off action. The Court observed that although the defendants might not be using the actual trademark 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 was held:“The law does not permit any only to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.”
. The collective provisions of Sections 27, 28, 29 and 34 of the Trade Marks Act, 1999 was considered in a resent judgment of Hon’ble Supreme Court in S. Syed Mohideen vs. P. Sulochana Bai reported at (2016) 2 SCC683 in the said decision it was held that the passing off right are superior to the rights conferred by registration. In this regard reference may be made to paragraphs 31.1 to 32.2 of the said report which reads: “31.1. Traditionally, passing off in common law is considered to be a right for protection of goodwill in the business against misrepresentation caused in the course of trade and for prevention of resultant damage on account of the said misrepresentation. The three ingredients of passing off are goodwill, misrepresentation and damage. These ingredients are considered to be classical trinity under the law of passing off as per the speech of Lord Oliver laid down in Reckitt & Colman Products Ltd. vs. Borden Inc., (1990) 1 WLR491 (1990) 1 All ER873(HL) Which is more popularly known as ‘Jif Lemon’ case wherein Lord Oliver reduced the five guidelines laid out by Lord Diplock in Erven Warnink Besloten Vennootschap v. J.
Townend & Sons (Hull) Ltd., 1979 AC731at p. 742: (1979) 3 WLR68 (1979) 2 All ER927(HL) to three elements (1) goodwill owned by a trader (2) misrepresentation, and (3) damage to goodwill. Thus the passing off action is essentially an action in deceit where the common law rule is that no person is entitled to carry on his or her business on pretext that the said business is of that of another. This Court has given its imprimatur to the above principle in Laxmikant V. Patel vs. Chetanbhai Shah, (2002) 3 SCC65 31.2. The applicability of the said principle can be seen as to which proprietor has generated the goodwill by way of use of the mark/name in the business. The use of the mark/carrying on business under the name confers the rights in favour of the person and generates goodwill in the market. Accordingly, the latter user of the mark/name or in the business cannot misrepresent his business as that of business of the prior right holder. That is the reason why essentially the prior user is considered to be superior than that of any other rights. Consequently the examination of rights in common law which are bases on goodwill, misrepresentation and damage are independent to that of registered rights. The mere fact that both prior user and subsequent user are registered proprietors are irrelevant for the purposes of examining who generated the goodwill first in the market and whether the latter user is causing misrepresentation in the course of trade and damaging the goodwill and reputation of the prior right holder/former user. That is the additional reasoning that the statutory rights must pave the way for common law rights of passing off.
32. Thirdly, it is also recognised principle in common law jurisdiction that passing off right is broader remedy than that of infringement. This is due to the reason that the passing off doctrine operates on the general principle that no person is entitled to represent his or her business as business of other person. The said action in deceit is maintainable for diverse reasons other than that of registered rights which are allocated rights under the Act. The authorities of other common law jurisdictions like England more specifically Kerly’s Law of Trade Marks and Trade Names, 14th Edition Thomson, Sweet & Maxwell South Asian Edition recognises the principle that where trade mark action fails, passing off action may still succeed on the same evidence. This has been explained by the learned author by observing the following: “15-033. A claimant may fail to make out a case of infringement of a trade mark for various reasons and may yet show that by imitating the mark claimed as a trade mark, or otherwise, the defendant has done what is calculated to pass off his goods as those of the claimant. A claim in passing off has generally been added as a second string to actions for infringement, and has on occasion succeeded where the claim for infringement has failed.”
. 32.1. The same author also recognises the principle that the Trade Marks Act affords no bar to the passing off action. This has been explained by the learned author as under: “15.034. Subject to possibly one qualification, nothing in the Trade Marks Act, 1994 affects a trader’s right against another in an action for passing off. It is, therefore, no bar to an action for passing off that the trade name, get up or any other of the badges identified with the claimant’s business, which are alleged to have been copies or imitated by the defendant, might have been, but are not registered as, trade marks, even though the evidence is wholly addressed to what may be a mark capable of registration. Again, it is no defence to passing off that the defendant’s mark is registered. The act offers advantages to those who register their trade marks, but imposes no penalty upon those who do not. It is equally no bar to an action for passing off that the false representation relied upon is an imitation of a trade mark that is incapable of registration. A passing off action can even lie against a registered proprietor of the mark sued upon. The fact that a claimant is using a mark registered by another party (or even the defendant) does not of itself present goodwill being generated by the use of the mark, or prevent such a claimant form relying on such goodwill in an action against the registered proprietor. Such unregistered marks are frequently referred to as “common law trade marks”.. 32.2. From the reading of the aforementioned excerpts from Kerly’s Law of Trade Marks and Trade Names, it can be said that not merely it is recognised in India but in other jurisdictions also including England/U.K (provisions of the UK Trade Marks Act, 1994 are analogous to the Indian Trade Marks Act, 1999) that the registration is no defence to a passing off action and nor the Trade Marks Act, 1999 affords any bar to a passing off action. In such an event, the rights conferred by the Act under the provisions of Section 28 have to be subject to the provisions of Section 27(2) of the Act and thus the passing off action has to be considered independent “Iruttukadai Halwa”. under the provisions of the Trade Marks Act, 1999.”
. In Law Society of England and Wales v. Griffiths reported at . R.P.C. 16 it was held: “(a) person who takes steps which will lead a person who acts in a particular way to conclude that his business is that of another is guilty of passing off just as much as a person who states that his business is that of another.”
. The name under which a business trades will almost always be a trade mark (or if the business provides services, a service mark or both). Independently of questions of trade or service mark, however, the name of a business (a trading business or any other) will normally have attached to it a goodwill that the courts will protect. An action for passing off will then lie wherever the defendant company’s name, or its intended name, is calculated to deceive, and so to divert business from the claimant, or to occasion a confusion between the two businesses. If this is not made out there is no case. The ground is not to be limited to the date of the proceedings; the court will have regard to the way in which the business may be carried on in the future, and to its not being carried on precisely as carried on at the date of the proceedings. Where there is a probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently and even though the claimant has decided no longer to use the name. Once the claimant has proved the elements necessary for passing off, and in particular deception of the public or its likelihood, the concept that the defendant escapes liability because he is making “bona fide”. use of his own name, is a difficult one. The precise nature and extent of this “defence”. are none too clear, the rather numerous authorities on the point being difficult to reconcile. The defence is certainly of very limited scope. Jacob L.J.
has made his scepticism as to the practical effect of the defence clear. “The Judge rightly observed that the passing off defence is narrow. Actually no case comes to mind in which it has succeeded. Because the test is honesty, I do not see how any man who is in fact causing deception and knows that to be so can possibly have a defence to passing off.”
. If the honest use of one’s own name is truly a defence to a passing off claim, then it must apply even if all other elements of the tort are made out by the claimant. This is understandably unattractive to the courts: if the use of by a defendant of a mark constitutes a misrepresentation leading to deception and damage (as it must be if passing off is to be established) the mere fact that through an accident of birth the mark used is the defendants own name would save the defendant from passing off. In modern trading conditions, any individual (or company) can adjust their trading style, if they so wish, so as to eliminate deception on the part of the public. In such circumstances, it is difficult to see the justification for upholding any absolute right to trade under one’s own name when balanced against the deception. The origins of the “defence”. lie in certain dicta of Romer J.
certainly the defence does not extent to allowing use of the trader’s own name in relation to goods so as to pass off: “To the proposition of law that no man is entitled so to describe his goods as to represent that the goods are the goods of another, there is no exception”. [See: Kerly’s Law of Trade Marks and Trade Names, 15th Edition]. This view was approved in Parker-Knoll v. Knoll International (1962) R.P.C. 265, at 279 In most of the cases relied upon by the defendants with regard to the use of common surname it could be seen that the parties were carrying on family business and disruption occurred in the said family business. In fact, Precious Jewels (supra) it would found that the defendants were carrying on their business in the full unabbreviated name. In K.C. Das (supra) the Hon’ble Division Bench has, on factual examination, found that the plaintiffs’ trademarks are not registered under serial No.25 for readymade garments and accordingly the field of activities were not same and similar. On that ground the appeal was allowed. However, the Hon’ble Division Bench in paragraph 24 of the report has considered the defendants’ plea of bona fide and honest users. The said paragraph reads:
“24. We are also quite conscious of the position of law that a man is entitled to use his own name honestly and fairly and if he does not do anything more, he cannot be restrained even if some confusion arises. A man must be allowed to carry on business in his own name or that of his predecessor and if in the process, some confusion arises, that should not be a ground to restrain that man from carrying on his business in such name which is an inherent right of a man. But if that person oversteps that right and does anything in excess of his aforesaid right which would result in deception, he should be restrained in an action of passing off.”
. In the instant case the defendants have failed to demonstrate any matter which would be sufficient to distinguish its product from those of the plaintiffs. In Lupin Limited (supra) it was held that in cases where the registration of trademark is ex facie illegal, fraudulent or shocks the conscience of the Court, the Court is not powerless to refuse to grant an injunction, but for establishing these grounds, a very high threshold of prima facie proof is required. The defendants have failed to demonstrate that the adoption of the mark by the plaintiff is fraudulent or illegal or shocks the conscience of the Court. In the instant case, the defendants have themselves applied for registration of the word mark “Bansal”.. It clearly shows that the defendants felt it necessary to have the word mark “Bansal”. registered in its favour. Moreover, both the plaintiff and the defendants are engaged in the same trade and business. The plaintiff has been using the said mark continuously and uninterruptedly since 1981. Undoubtedly, the plaintiff has been using the word mark “Bansal”. per se or in conjunction with the word “Skipper”. as a suffix or prefix continuously and uninterruptedly since 1981 and has acquired considerable goodwill and reputation in the market. The defendant has failed to offer any explanation for adoption of the said mark “Bansal”.. The defendants applied for its trade mark registration for the self-same mark “Bansal”. showing user since 2012 and 2014. The two applications for the registration of the trade mark contained different dates of its user by the defendants and no possible explanation for antedating for user after receiving the cease and desist notice. Even under Section 29(5) of the Trade Marks Act, 1999 using of a trade name or part of the trade name may constitute infringement. The defendants are carrying on business as a partnership firm. The defendants are not using unabbreviated names of the partners or any one of them which they could have done easily. As observed earlier Section 35 does not apply to juristic persons carrying on business in the assumed name. In other words a juristic entity is entitled to carry on business in the assumed name. Section 35 of the Trade Marks Act has no application even to a partnership firm duly constituted in the event it is found that the partnership firm is not using the name of the partners in an unabbreviated manner and the manner of user is likely to cause deception. There cannot be any doubt that even if the defendant could succeed in a plea of own name user under Section 35, which factually, however, the defendants have failed to establish, the fact remains that having regard to the common field activity, the use of the word mark “Bansal”. is likely to deceive and the defence of honest and bona fide user is not sustainable. G.A. No.237 of 2016 stands disposed of by confirming the interim order passed on 13th January, 2016 in terms of prayer (c) of the Notice of Motion. (Soumen Sen, J.)