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Hindustan Embroidery Mills Pvt. Ltd. Vs. K. Ravindra and Co. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtMumbai High Court
Decided On
Case NumberO.C.J. Suit No. 510 of 1967
Judge
Reported in(1974)76BOMLR146
AppellantHindustan Embroidery Mills Pvt. Ltd.
RespondentK. Ravindra and Co.
DispositionAppeal allowed
Excerpt:
trade and merchandise marks act (xliii of 1958), sections 29, 27(2), 34--test for determining whether trade mark claimed by person not manufacturer of goods registrable under act--whether validity of registration of mark can be gone into on motion for interlocutory; injunction taken out by owner of mark--whether person can be restrained from using unregistered mark, having essential feature of another's registered mark, for which latter's application for registration pending--use of such unregistered mark whether infringement under section 29--when action for passing-off can be maintained.;the test for the purpose of determining whether a trade mark claimed by a person other than the manufacturer of the goods is registrable tinder the trade and merchandise marks act, 1958 is--is the trade.....vimadalal, j.1. this is a notice of motion taken out by the plaintiffs for an interlocutory injunction restraining the defendants from using the trade mark hemla in respect of embroidery goods or any other similar marks so as to infringe the registered trade marks of the plaintiffs, as also for an interlocutory injunction restraining the defendants from using the said trade mark on embroidery goods so as to pass off their goods as the goods of the plaintiffs.2. the plaintiffs' case is that they were registered under the companies act some time in the year 1941 and started using the trade mark hemla right from that time on the goods embroidered by them in their factory near amritsar. it is the plaintiffs' case that, in the year 1943, they got their trade mark hemla in cruciform, as shown.....
Judgment:

Vimadalal, J.

1. This is a Notice of Motion taken out by the plaintiffs for an interlocutory injunction restraining the defendants from using the trade mark HEMLA in respect of embroidery goods or any other similar marks so as to infringe the registered trade marks of the plaintiffs, as also for an interlocutory injunction restraining the defendants from using the said trade mark on embroidery goods so as to pass off their goods as the goods of the plaintiffs.

2. The plaintiffs' case is that they were registered under the Companies Act some time in the year 1941 and started using the trade mark HEMLA right from that time on the goods embroidered by them in their factory near Amritsar. It is the plaintiffs' case that, in the year 1943, they got their trade mark HEMLA in cruciform, as shown in annexture 'A' to the plaint, registered under the Trade Marks Act in respect of embroidery goods, tapes, laces and edgings. Some time in the year 1965, the plaintiffs also got registered the said trade mark HEMLA in cruciform in respect of shawls, and, in the course of the same year, they got registered the trade mark HEMLA in script form also in respect of shawls. Those two trade marks as registered are shown in annexure 'B' and 'C' to the plaint. In para. 7 of the plaint, it is stated that the plaintiffs manufactured and sold embroidery goods on a large scale throughout India for over twenty-five years '' under their trade marks HEMLA in its various forms,' and have acquired an enviable reputation for the high quality of their goods. It is further stated in the said paragraph that the total turnover of the plaintiffs' goods was over seven crores of rupees and that the trade mark HEMLA is associated by traders and the public with the goods of the plaintiffs. In para. 8 of the plaint, it is stated that the plaintiffs, in the course of their business, used to receive cloth from other traders also for the manufacture of embroidery goods, and, after doing embroidery work on the same, they used to affix their mark HEMLA as also their Tex. Mark No. 537 thereon, as required by the Cotton and Yarn (Control) Order, 1943. In para. 10 of the plaint, it is stated that the defendants are selling embroidery goods not manufactured by the plaintiffs under the trade mark HEMLA, and when the plaintiffs objected to the same the defendants filed a 'threats action' against the plaintiffs under Section 120 of the Trade and Merchandise Marks Act of 1958, being suit No. 439 of 1967 in this Court. The plaintiffs' case is that, by using identical marks, the defendants have been infringing the plaintiffs' registered trade marks, and also passing off their goods as the goods of the plaintiffs. The plaintiffs have, therefore, filed the present suit for a permanent injunction restraining the defendants from infringing their registered trade marks, and also for a permanent injunction restraining the defendants from using the trade mark HEMLA on embroidery goods so as to pass off their goods as the goods of the plaintiffs, as well as for damages and other ancillary reliefs. They have thereafter taken out the present Motion for the reliefs already set out above.

3. In addition to the facts stated in the plaint, it is necessary to refer to the background of the disputes between the parties. The controlling interest in the company, which is a private limited company, was held by a family consisting of two brothers Gurdayalsingh and Ramsingh, and the said company carried on its business on a large scale at a place near Amritsar for some years. Thereafter, the same two brothers founded another concern at Faridabad named Hernia Embroidery Mills Ltd. in or about August 1958 and started putting up factory premises there which were completed some time in the year 1960. According to the plaintiffs, the whole of those premises at Faridabad were thereafter rented out by the plaintiff-Co, which set up their own machinery therein and employed their own labour and manufactured their own goods under their own Tex. Mark in that factory. It may be mentioned that, according to the defendants, however, what was rented out to the plaintiff-Co, was only a part of the said premises at Faridabad. Thereafter, on April 20, 1960, an agreement was entered into between the plaintiff-Co. and the said Hernia Embroidery Mills Pvt. Ltd. which had their registered office at Faridabad, a copy of which is annexed to the affidavit in rejoinder to the present Motion and marked ' D'. Under the said agreement, the plaintiff-Co, was to sell, inter alia, embroidered goods to the said Hemla Embroidery Mills Pvt. Ltd. at wholesale market rates. It was further provided in the said agreement that as and when the plaintiff-Co, placed an indent with the said Hemla Embroidery Mills Pvt. Ltd., the latter were to make purchases for and on behalf of the plaintiff-Co, at market rates. It is the contention of the plaintiffs that the said agreement really constituted Hemla Embroidery Mills Pvt. Ltd. the agents of the plaintiffs for the purposes mentioned therein. It was stated by Mr. Shavaksha in the course of his arguments before me that, from the year 1962, in order to distinguish goods which the plaintiffs embroidered at their Faridabad factory from the goods embroidered by them at their Amritsar factory, the plaintiffs used the trade mark HEMLA in what has been called 'Chimney Form' on the goods which were made by the plaintiffs at the Faridabad factory which, according to them, they had rented out from the Hemla Embroidery Mills Pvt, Ltd. According to the plaintiffs, they however used to affix to the same their own ticket, a specimen of which is annexed to the affidavit in rejoinder and marked 'C', and their own Tex. Mark thereon. According to the plaintiffs, this state of affairs continued till the year 1964 when disputes and differences arose between the branches of the two brothers, Gurdayalsingh and Ramsingh, and a division was effected between them which was finalised on March 31, 1965. Pursuant to that division, the plaintiff-Co, and its factory near Amritsar came to the share of Gurdayalsingh's branch, and the concern of Hemla Embroidery Mills Pvt. Ltd. and its factory at Faridabad came to the share of Ramsingh's branch.

4. On April 25, 1965, a complaint was received by the plaintiffs from the firm of Thakersey Chhaganlal, who were the sole distributors of the plaintiffs in Bombay, complaining that goods bearing the plaintiffs' HEMLA trade mark were being sold by a concern named Ahuja Embroidery and that the said concern had received those goods from Messrs. Hemla Embroidery Mills Pvt. Ltd. of Faridabad. Messrs. Thakersey Chhaganlal, therefore, requested the plaintiffs to take legal action in the matter. Thereafter, the disputes between the parties, including the one relating to the right to use the disputed trade marks, were then referred to arbitration, but it is the contention of the plaintiffs that the said arbitration proceedings which had been commenced on August 18, 1965 had lapsed, as nothing had been done by the arbitrators till 1967. According to the defendants, towards the end of the year 1966, the plaintiffs' Manager came to the defendants' place of business and requested the defendants not to sell goods bearing HEMLA trade mark made by Messrs. Hemla Embroidery Mills Pvt. Ltd., and threatened the defendants that they would stop all traders from dealing in those goods. The present defendants, therefore, filed a 'threats action' under Section 120 of the Trade and Merchandise Marks Act, 1958, against the present plaintiffs on August 22, 1967, in para. 2 of which it was stated that the goods of Hemla Embroidery Mills Pvt, Ltd. were being sold under all the three marks, namely, HEMLA in cruciform, HEMLA in running script as well as the HEMLA Chimney mark. Under those circumstances, the present plaintiffs filed this suit against the defendants on August 29, 1967.

5. The suit, as framed, is an action both for infringement as well as in passing off. It will, therefore, be convenient to deal with the plaintiffs' case on this Motion on those two footings separately. The cruciform and the script marks mentioned above have admittedly been registered as the marks of the plaintiff-Co. It was sought to be contended in para. 10 of the affidavit in reply of Ravindra Charandas Kapadia filed on behalf of the defendants that the said marks have been wrongly registered, and the registration thereof being invalid, was liable to be revoked, and petitions for that purpose have already been filed by the defendants in the Delhi High Court by Thackersey Chhaganlal against the plaintiff. This contention of the defendants is based on the ground that, since the defendants are not the manufacturers of the goods, but merely do embroidery work on goods belonging to other parties, they are not the owners of the said marks and are not entitled to get them registered. Apart from the fact that, according to the plaintiffs, they do embroidery work not only on other people's goods but also on goods manufactured by themselves, the defendants' contention is erroneous as a proposition of law. The position is admirably set out in Sebastian on the Law of Trade Marks, 5th edn., page 4, where it is stated that the use of a trade mark is not in all cases intended to designate the maker of the substances to which it is attached, though that is frequently so; it might indicate some other person who has expended labour on the article, so that, as finished, it owes some portion of its value to him. Sebastian then proceeds to give illustrations from decided cases, in one of which a person who printed on cotton-cloth manufactured by another was held to be the owner of the mark, and in another, a bleacher who finished the goods which another had manufactured was also held to be the owner of the trade mark. It is further stated in Sebastian that, in the same way, a trade mark may serve to denote the importer or exporter, or to indicate that the goods have been examined and selected by a person of known ability. In Kerly on the Law of Trade Marks and Trade Names, 9th edn., p. 59, para. 61, it is stated that persons who execute work on goods which are never their own, such as dyers or finishers, often have trade marks of their own applied to the goods, and such parties are entitled to registration of those trade marks under the Trade- Marks Act. Reliance was sought to be placed by Mr. Shah for the defendants in support of his contention on this point on the decision of the House of Lords in the case of Aristae, Ld. v. Rysta, Ld. [1945] A.C. 68 in which facts were that the respondents were engaged in carrying on business as repairers of women's silk stockings by an undisclosed process of re-weaving or re-knitting so as to catch up the broken threads which had caused ladders in the stockings, with the result that the repairs were invisible. To that process the respondents had given the name 'Rysta'. Under that name, the respondents' process acquired a wide reputation, and upwards of 16 million pairs of silk stockings sent to them, generally not by the public but by laundries and stores, were repaired by them and thereafter returned to those laundries and stores, with a printed ticket or label bearing words indicating that they had been repaired by the 'genuine Rysta guaranteed hosiery repair process.' The respondents, who had neither made nor sold any stockings, filed an application for registration of the said trade mark 'Rysta' in respect of stockings and re-weaving repairs effected thereto. The appellants, who had for many years carried on business as manufacturers of and dealers in women's silk stockings under the registered trade mark 'Aristoc', gave notice of opposition to the respondents' application to the registration of the word 'Rysta' on the ground that it was calculated to deceive and lead to confusion with the appellants ' registered trade mark '' Aristoc'', and also on the ground that the respondents' use of the word 'Rysta' on the stockings to indicate that the stockings had been repaired by them was not user of the word as a trade mark, and that accordingly it could not be registered. The Assistant Comptroller, acting for the Registrar, authorised the application to proceed. The trial Judge discharged that order, and directed the Registrar not to proceed with the registration. On appeal, the Court of appeal reversed that order, and held that registration should be allowed. The appellants having appealed to the House of Lords, the decision of the Court of appeal was reversed, and it was held that a mark used on or in relation to goods so as to indicate the fact that they had been repaired by a particular person was not a '' trade mark'', and could not be registered under the provisions of the Trade Marks Act. On a careful scrutiny of the judgments of the learned Law Lords in the said case, however, in my opinion, this case, far from helping Mr. Shah, lays down a proposition of law which is against him. Reference is made in the judgment of Viscount Maugham (at p. 82) to an official ruling of the then Assistant Comptroller in the case of Bradford Dyers Association, Ld., in which it was held that there could be a proper mark upon cloth sent by the manufacturers to dyers for dyeing, on which the Assistant Comptroller in Aristae's case had relied. Viscount Maugham, however, pointed out that the Assistant Comptroller had not noticed that the decision in Bradford's case..seems only to have referred to dyeing of cloth in the course of the manufacture or the finishing of the goods before they reached the hands of the public, as to which it may be stated that dyeing goods in general is only one form of the finishing of goods before they reach the market. (p. 82).

Reference was made by Viscount Maugham (at p. 83) to the observation of the trial Judge that there was much to be said for the contention that a trade mark was never intended to be applicable to a process of repair applied to an article after it had passed into private hands, and the same learned Law Lord proceeded to sum up his discussion on this point (at p. 89) by stating that a registered trade mark has been understood as being used in relation to goods for the purpose of indicating the origin of the goods, in other words, for the purpose of indicating either manufacture or some other dealing with the goods in the process of manufacture or in the course of business before they are offered for sale to the public. The learned Law Lord rejected the argument that the new definition of a trade mark in Section 68(1) of the U.K. Trade Marks Act, 1938, had altered the essential nature of a trade mark which had, till then, been generally limited to indication of origin and had meant to extend its meaning to a, mere temporary connection with, the goods after they have come into the hands of the public. It is, therefore, clear that the test for the purpose of determining whether a trade mark claimed by a person other than the manufacturer of the goods is registrable is--Is the trade mark used in respect of something done in the process of manufacturing or finishing the goods before they reach the hands of the public, or is it some process applied to the goods after they have passed into the hands of the public, indicating a mere temporary connection with the goods, as, for instance, in the case of laundering or darning of the goods. Applying that test, there can be no doubt that a mark relating to the process of embroidering on goods before they are sold and pass into the hands of the public can be registered as a trade mark, and indeed, as far as our Act is concerned, that appears to be clear from the fact that 'embroidery' is mentioned in Item No. 26 in the 4th Schedule to the Trade and Merchandise Marks Act of 1958 which relates to classification of goods. In my opinion, therefore, there is no substance whatsoever in this contention of Mr. Shah.

6. It was then sought to be contended by Mr. Shah that, if there was some doubt in regard to the respective rights of the parties, having regard to considerations of balance of convenience, no interlocutory injunction should be granted, and reliance was placed in that connection on a passage from Kerly on Trade Marks, p. 655, para. 654. It is explained there that, by the expression 'balance of convenience' is meant the relative amounts of damage which are likely to result if the injunction is granted and the plaintiff ultimately fails, or if it is refused and he ultimately succeeds, and it is stated that where there is a substantial case to be tried, the application for interim injunction may be ordered to stand over to the hearing, upon the defendant undertaking to keep an account of his sales under the mark objected to. There is, however, a statement in the same paragraph which shows clearly that it is not the practice to consider the validity of the registration of the mark on a Motion for interlocutory injunction, and that, whilst a mark remains on the register (even wrongly), it is not desirable that others should imitate it. As far as the cruciform and script marks which have been registered are concerned, the same are registered admittedly in the name of the plaintiff-Co., and an injunction should, therefore, be granted restraining the defendants from infringing1 those marks. It was sought to be stated by the defendants at the hearing of the Motion before me that they are not selling goods bearing the cruciform or script marks, but are only selling goods bearing the Chimney mark, but that statement is false in view of the plaint in the 'threats action' (suit No. 493 of 1967) which they have filed in this Court, in para 2 of which it is stated in clear terms that Hernia Embroidery Mills Pvt. Ltd. manufacture and sell textile goods under all the said three marks, and in which a permanent injunction has been sought by the present defendants against the present plaintiffs in respect of all those three marks.

7. An argument was sought to be advanced by Mr. Shah to the effect that, even as regards the cruciform and script marks which have been registered by the plaintiffs, there has been concurrent user and that, therefore, an interlocutory injunction should not be granted, and in that connection, reliance was placed upon a statement in Kerly (at p. 655, para. 654). That contention of Mr. Shah was based on the fact that, at any rate, till the division was effected between the branches of Gurdayalsingh and Ramsingh on March 31, 1965, the mark was being used by both of them. That contention is, however, in my opinion, based on a misconception, in so far as it seeks to regard the use of the mark by the company as if it were the use of the mark by the two branches of the family who held the controlling interest in the company. It is a fundamental proposition which needs no authority that a company registered under the Companies Act is a legal entity distinct from the members composing it, and since it is not disputed that the cruciform and script marks have been registered in the name of the plaintiff-Co., it cannot possibly be said that there has been any concurrent user of those marks at any time prior to the formation of the Hernia Embroidery Mills Pvt. Ltd. which is a separate and distinct company. The fact that, after that company was formed, the plaintiff-Co, may have affixed the said marks on goods manufactured by them in the Faridabad factory of Hemla Embroidery Mills Pvt. Ltd. which had been rented out to them, cannot amount to concurrent user by Hemla Embroidery Mills Pvt. Ltd. There is, therefore, no substance in this contention of Mr. Shah also, and interlocutory injunction must be granted to the plaintiffs restraining the defendants from infringing the cruciform and script marks registered in the name of the plaintiff-Co.

8. That brings me to a consideration of the question as to whether interlocutory relief should be granted to the plaintiffs in respect of the Chimney mark also. It is an admitted position that the Chimney mark does not stand registered in the name of the plaintiff-Co., though the plaintiffs have now applied for its registration and that application is pending. The legal position, however, is that, even in such a case, if any essential feature of the plaintiffs' registered trade marks viz. cruciform and script trade marks, is reproduced or appears in the Chimney mark which has admittedly been used by the defendants, the defendants should be restrained from using the same. It is also pertinent to bear in mind that the word 'Hemla' which the Hemla Embroidery Mills Pvt, Ltd. are using in the said Chimney mark is a part of their own name, and the provisions of Section 34 of the Trade and Merchandise Act would therefore have to be considered in that connection. Two questions arise as far as the injunction sought by the plaintiffs in respect of the Chimney mark is concerned: (1) is the word. 'Hernia' an essential feature of the cruciform and script trade marks which have been registered in the name of the plaintiffs, and (2) is the use of the word 'Hernia' by the Hemla Embroidery Mills Pvt. Ltd. 'bona-fide' user of their own name within the terms of Section 34 of the Act.

9. Having regard to the fact that the goods of the plaintiff-Co, have admittedly had an enormous turnover, and having regard to the very nature of the cruciform and script trade marks registered in the name of the plaintiffs, it is, in my opinion, quite clear that the word 'Hemla' does form an essential feature of the said registered trade marks. Reference may be made in this connection to Section 29 of the Trade and Merchandise Marks Act, 1958, in which it has been enacted that a registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of trade a mark which is identical with 'or deceptively similar to', the registered trade mark. If the word 'Hemla' is an essential feature of the plaintiffs' registered trade mark, it is quite clear that the use of it, even in the form of the Chimney trade mark, would be deceptively similar to the registered trademark of the plaintiffs, in so far as it would be likely to deceive or cause confusion in the minds of the public in regard to the origin of the goods in question. In the case of de Cordova v. Tick Chemical Coy. (1951) 68 R.P.C. 108 it was laid down that a mark is infringed by another trader if, even without using the whole of it upon and/or in connection with his goods, he uses one or more of its essential features. It was further observed in the said case that the identification of an essential feature depends partly on the Court's own judgment, and partly on the evidence placed before it, that a trade mark is undoubtedly a visual device, but it is well-established law that the ascertainment of on essential feature is not to be by ocular test alone, and since words can form part, or indeed the whole, of a mark, it is impossible to exclude consideration of the sound or significance of those words. It was, therefore, held that if a word forming part of a mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader, for confusion is likely to result. It was further observed in the judgment in the said case that the likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side, and demonstrating how small is the chance of error in any customer who places his order with both the marks clearly before him, for orders are not placed under such conditions, and it is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. It is unnecessary for me to refer to the facts of that case, but what is important is that the Privy Council has laid down therein in clear terms that a trader cannot escape liability merely by contending that the two marks are visually different, if he has incorporated in his own mark an essential feature of the plaintiff's mark. The argument of Mr. Shah for the defendants in the present case that there is such dissimilarity between the Chimney mark and the registered marks of the plaintiffs viz. the cruciform and script marks, that there is no possibility of customers being deceived must, therefore, be rejected, haying regard to the conclusion at which I have arrived that the word 'Hemla' is an essential feature of the cruciform and script trade marks which have been registered in the name of the plaintiff-Co.

10. The next question that arises is whether the use of the word 'Hemla' by Hemla Embroidery Mills Pvt. Ltd. can be said to be protected by the pro- visions of Section 34, as being bona fide user of their own name. It is important in that connection to consider the decision of the House of Lords in the case of Parker-Knoll Limited v. Knoll International Limited [1962] R.P.C. 265 in which the facts were that the plaintiffs had registered the trade mark 'Parker-Knoll'. Parker-Knoll Limited having filed an action both for infringement of their registered trade mark 'Parker-Knoll', as well as in passing off, the trial Judge, Bussel J. granted injunctions to restrain infringement of the said trade mark as well as passing off by the use of 'Knoll' and 'Knoll International', on the ground that the essential feature of the plaintiffs' name was 'Knoll'. On appeal by the defendants to the Court of Appeal, it was held, (1) unanimously, that the injunction granted by Bussel J. in regard to infringement should be qualified so as to permit the bona fide user by the defendants of their full name 'Knoll International' or 'Knoll International Ltd.' by reason of the provisions of Section 8 of the U.K. Trade Marks Act, 1938, which, it may be stated, corresponds to Section 34 of our Act; (2) by a majority (Evershed M.R. dissenting) that the injunction in regard to passing off granted by Bussel J. should be qualified by the words 'without clearly distinguishing their goods from the goods of the plaintiffs'. On further appeal by the defendants to the House of Lords, it was held, (1) unanimously that the injunction in regard to infringement should stand as granted by the Court of Appeal; and (2) by a majority (Lord Denning and Lord Devlin dissenting) that the injunction in regard to passing off should also stand as granted by the Court of Appeal; and, in the result, the defendants' appeal was dismissed by the House of Lords. It is, however, necessary to refer to the relevant observations of Lord Denning in regard to infringement, and of Lord Hodson in regard to passing off. It was observed by Lord Denning (at p. 275) that the right of a party to use his own name is not confined to the use of his own name as the name of his business (e.g. over his shop front), but extends also to his use of it as a mark on his goods (e.g. by putting it on a label). It was further observed by him (on the same page) that the use of their own name by the defendants in the said case was entirely loan fide and that, if it was likely to cause confusion, that had to be endured, in view of the fact that the protection would extend to the defendants' use of their own name 'Knoll International Ltd.' as also to the natural abbreviation of it to 'Knoll International', omitting the word 'Limited'. Lord Denning further stated that he would not however extend the protection so as to authorise the further abbreviation to 'Knoll' alone without the word 'International', as the user which is protected is the honest user of a man's ordinary name--the-name by which he is usually known, and a further abbreviation which reduces it to less than his ordinary name is not protected if the likelihood of confusion is thereby increased. As already stated by me above, the decision of the House of Lords in regard to infringement was unanimous, and these observations of Lord Denning, therefore, represent the judgment of the House. As far as passing off is concerned, however, it is the observations of Lord Hodson, to which I will presently refer, that represent the view of the majority of the House. After having formulated the question as to whether the appellants described their goods in such a way as to be likely to mislead purchasers into believing that their goods were the goods of the respondents, Lord Hodson stated (at pp. 283-284) that the decision of that question depended on the fact as to whether the appellants, when they used the name 'Knoll International' were honestly using their own name. He then proceeded to observe that a false representation might be made innocently, and that absence of fraud was no defence to an action for passing off. He then dealt with the argument that was advanced on behalf of the appellants that the honest user of their own name in connection with their goods made the onus on the plaintiffs to satisfy the Court that such use by the defendants amounts to a false representation, a heavy one, and their further argument that the honest user by the appellants of their own name was a complete answer in law to the respondents' claim. After discussing the authorities on the point, Lord Hodson rejected both those arguments. It was however sought to be contended on behalf of the defendants in the present ease that they are wholesaler who would, in their turn, be selling, not directly to the public, but to retail dealers, and there is, no possibility of dealers being deceived or confused by the use of the Chimney mark with the word 'Hemla' in it. This contention of the defendants must be summarily rejected, for, as stated in Kerly on Trade Marks, para. 836 at p. 836, it is clearly not enough to show that retail dealers buying goods for re-sale would not be deceived, since they might themselves, fraudulently or carelessly, make use of the ambiguous character of the trade mark to deceive their customers, the ultimate purchasers.

11. Parker-Knoll's case discussed by me above, in my opinion, furnishes important guidelines for the purpose of deciding whether an injunction should be granted to the plaintiffs on this Motion, restraining the defendants from using the Chimney mark containing the word 'Hemla'. It is true that the defendants in the present case are not using their own name on the goods in question, but are selling goods manufactured by another concern viz. Hemla Embroidery Mills Pvt. Ltd., and it is contended that the word 'Hemla' is the name of the said Mills themselves. That, however, in my opinion, makes no difference for the purpose of the decision of this Motion, as the defendants cannot be in a position, better or worse than that in which Hemla Embroidery Mills Pvt. Ltd. themselves would be, if they were the defendants to the present suit. Following the principles laid down in the Parker-Knoll's case, I have come to the conclusion that, as far as the claim based on infringement of the plaintiffs' registered trade marks is concerned, the defendants should be restrained from selling goods bearing Chimney mark, or any other mark containing word 'Hemla' so as to infringe the registered trade marks of the plaintiffs, provided that this order is not to interfere with the sale by the defendants of goods on which Hemla Embroidery Mills Pvt. Ltd. have bona fide used their full name viz. 'Hemla Embroidery Mills', with or without the words 'Private Limited'.

12. It was lastly contended on behalf of the defendants that no interlocutory injunction should be granted to the plaintiffs because they are guilty of delay, and reliance was placed in support of that proposition on a passage in Kerly on Trade Marks (para. 655 at p. 655). The sequence of dates and events as stated by Mr. Sbavaksha on behalf of the plaintiffs, however, shows that there has been no improper delay on the part of the plaintiffs. It was only when the plaintiffs received Thakersey Chhaganlal's letter and telegram dated April 25, 1965, copies of which are annexed to the affidavit in rejoinder and marked 'A', that they came to know for the first time of the alleged infringement. Thereafter, the period from August 18, 1965 to February 22, 1967 was spent in arbitration proceedings in which the dispute related, inter alia, to the right to use the trade marks in question, which proceedings, according to the plaintiffs, have lapsed and proved infructuous. In February 1967, the plaintiffs adopted proceedings against Hemla Embroidery Mills Pvt. Ltd. in the Delhi High Court, and, according to the plaintiffs, they did not know of the present defendants or anybody else infringing or passing off their goods as the goods of the plaintiffs till the defendants themselves filed a 'threats action' against the plaintiffs, being Suit No. 493 of 1967, on August 22, 1967 in this Court. The present suit was filed within a week of the filing of that suit. On those facts, I am afraid, there is no improper delay, or, at any rate, no delay on the part of the plaintiffs, which remains unexplained, as the defendants have contended, and this argument of the defendants must, therefore, also stand rejected, and an injunction restraining the infringement of the plaintiffs' registered trade marks must be granted to them in terms stated above.

13. As far as the plaintiffs' claim based on passing off is concerned, it may be pointed out that Section 27(2) of the Trade and Merchandise Marks Act, 1958, lays down that nothing in the said Act is to affect rights of action against any person for passing off goods as the goods of another. The basis of a passing off action is a false representation by the defendant, but no such action can be maintained unless it is averred and proved, at any rate prima fade for the purposes of interlocutory relief, that the plaintiffs' goods have established a reputation in the market and are identified by the marks which they bear. As far as the cruciform and script marks of the plaintiffs are concerned, the necessary averments are to be found in para. 7 of the plaint, and there is material which can hardly be disputed to show that those marks have acquired great reputation in the market and are associated with the goods or business of the plaintiffs, and goods bearing the same have a very large turnover. Even on the basis of passing off, therefore, bearing in mind the principles laid down in Parker-Knoll's case, an injunction should be granted against the defendants restraining them from selling goods bearing the cruciform and script marks, or any colourable imitation thereof containing the word 'Hernia', so as to pass off their goods as the goods of the plaintiffs, without clearly distinguishing the same from the plaintiffs' goods. As far as the use of Chimney mark is concerned, however, T am afraid, there is not even an averment to be found in para. 7 of the plaint or elsewhere that the same has acquired any reputation in the market as indicating the goods of the plaintiffs. Mr. Shavaksha has relied on the words 'in its various forms' occurring in para. 7, but, I am afraid, that is not a sufficient averment for the purpose of an action in passing off as far as the Chimney mark is concerned. No injunction can, therefore, be granted to the plaintiffs in respect of the same on the basis of passing off.

14. In the result, I grant an injunction restraining the defendants, by themselves, their servants and agents, pending the hearing and final disposal of the suit, from selling goods bearing the cruciform and script marks or the Chimney mark or any other mark, containing the word 'Hernia', so as to infringe the registered trade marks of the plaintiffs, provided that this order is not to interfere with the sale by the defendants of goods on which the Hemla Embroidery Mills Pvt. Ltd. have bona fide used their full name, namely, 'Hemla Embroidery Mills', with or without the words 'Private Limited'. I also grant an injunction restraining the defendants, by themselves, their servants and agents, pending the hearing and final disposal of the suit, from selling goods bearing the cruciform or script mark, or any colourable imitation thereof, containing the word 'Hemla', so as to pass off the goods of the Hemla Embroidery Mills Pvt. Ltd. as the goods of the plaintiffs, without clearly distinguishing the same from the plaintiffs' goods.

15. The defendants must pay the plaintiffs' costs of this Motion.


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