1. This order disposes of I. A. S. 1032 and 1680 of 1972. The plaintiff has instituted a suit for permanent injunction restraining the defendant from infringing the plaintiff's registered trademark and copyright and from passing off his goods as those of the plaintiff. The plaintiff also claims rendition of accounts. The material facts as stated in the plaint are that the plaintiff is a manufacturer and seller of Dhoop and Agarbatti and is trading under the name and style of Mysorewala Sugandhit Dhoop Factory at Delhi. The plaintiff is manufacturing and selling dhoop under the trademark Sudershan that is in regular and continuous use since the year 1954. The plaintiff's trademark Sudershan is registered under the Trade and Merchandise Marks Act. 1958. The plaintiff also holds copyright registration relating to the artistic representation of its cartons pertaining to Sudershan Dhoop BATTI. It is alleged that by virtue of the aforesaid registration as well as by long and established user and wide publicity the plaintiff has acquired right to the exclusive use of Sudershan trade mark in relation to Dhoop Batti so much so that the use of any such or similar trade mark with or without any prefix or suffix by another trader is bound to cause confusion and dhoop of such manufacturer is liable to be associated with the plaintiff's goods and his business.
Defendant is also a manufacturer of dhoop and it is alleged that he has deliberately infringed the plaintiff's trademark Sudershan and has also copied artistic design relating to the plaintiff's cartons and wrappers. The defendant has introduced its dhoop with the trademark Sudershan prefixed by the word Vijay in small print on its cartons and wrappers. The defendant is also a printer as he is running his own Press and is printing infringing cartons, labels, seals and wrappers bearing Sudershan trade mark with the word Vijay in small size added thereto. The defendant is infringing the plaintiff's trade mark by printing the cartons at his own press and by using a mark which is a colourable imitation and deceptively similar to the plaintiff's Sudershan -DHOOP.
It is alleged that the defendant has deliberately copied the trade mark and the design of the wrapper and the cartons pertaining to the plaintiff in order to deceive the public and in order to earn profits to which he is not entitled and in order to trade upon the goodwill and reputation acquired by the plaintiff. The plaintiff has filed his cartons of Sudershan dhoop, which are marked A, and B, while the cartons of the defendant have been marked C and D. The plaintiff has also alleged that the defendant's business is of recent origin as compared to the old and established business of the plaintiff. The Plaintiff got his trademark registered on September 28 1960. The plaintiff claims a decree for permanent injunction restraining the defendant. Its servants, agents and representatives from infringing the trade mark Sudershan belonging to the plaintiff in relation to dhoop-batti. The plaintiff has also claimed an injunction restraining the defendant from reproducing, printing wrappers, cartons, labels, seals or artistic representation amounting to infringement of copyright.
2. The defendant has filed his written statement. The main defense of the defendant to the suit is that the registration of the trademark has been obtained by the plaintiff mala fide and illegally. The defendant says that he has been carrying on the business since 1952 and it is the plaintiff who is guilty of piracy of the defendant's trademark. It is denied that the plaintiff came into business in 1954. According to the defendant the plaintiff started his business in 1965. It is further stated that the defendant has been trading in dhoop and agarbatti since 1952 and has been selling dhoop and agarbatti under the trade name of Vijay Sudershan, Vijay Durga & Vijay Sudama in case of dhoop-batti and has been using the cartons, wrappers and other packing material since 1952. It is also claimed that the defendant's goods are distinguishable on account of cartons and packing materials used by him. It is further alleged that the defendant has by long and extensive use established a large sale and fair reputation in the quality of his goods. The plaintiff came into business very much later and clandestinely got registered his trademark with the object to pass off his goods as goods of the defendant. It is stated that the defendant intends to file a petition for the rectification of the register of trademarks. It was not denied that the defendant owned a printing press and printed his cartons, wrappers etc. for his use for the sale of dhoop.
3. In the replication filed by the plaintiff, it is stated that the defendant started business only in the year 1964-65. At this time the defendant applied for sales tax registration and obtained a sales tax registration number on January 22, 1965. The plaintiff states that he obtained his sales tax registration number on January 7, 1957.
4. In this suit the plaintiff has filed an application under Order 39, Rules I and 2 and Section 151 of the Code of Civil Procedure. The allegations made in this application are substantially the same as those made in the Plaint. The reply of the defendant is also substantially on the same lines as set out in the written statement.
5. I will first take up this application (I. A. 1032 of 1972). In support of his case the plaintiff has placed on the record a number of documents showing the advertisement of Sudershan Dhoop in a number of newspapers through advertising agencies. He has also filed bills relating to advertisement etc. A number of original bills of 1954, 1955 and 1956 regarding purchases made by the plaintiff have been filed. The plaintiff has also filed the certificate of registration of trademark, which shows that the trademark Sudershan Dhoop was registered on Sept-ember 28, 1960, and was renewed for a period of 7 years from September 28, 1967. The plaintiff has filed the original certificate of copyright registration in Suit No. 285 of 1972 which is pending in this Court. The defendant has not filed any document or material on the record of the suit to substantiate his allegations.
6. The parties have filed affidavits. The plaintiff in his affidavit has stated that the defendant started business only from January 1, 1965 as seller of dhoop and Agarbatti of various other manufacturers. It was in August 1970 that the defendant started the printing press. It was only recently that the plaintiff noticed that the defendant was infringing the plaintiff's trade mark by adopting Vijay Sudershan as the mark of his (defendant's) goods. The plaintiff has submitted that the sale of Sudershan Dhoop is of the order of Rupees 5,49,199.19 as per assessment of the last year. In reply the defendant's younger brother has filed an affidavit. It is not denied in the affidavit that the sales tax registration certificate was obtained in 1965 and the press was started in 1970. The defendant's total yearly turn over is stated to be about Rs. 2,25,000.00.
7. I have examined the plaintiff's cartons marked A and B and the defendant's cartons marked C and D. Prima facie there is great similarity between the two cartons. The colour scheme and the get up are similar. The word Vijay which is used as a prefix is in a small size. On viewing the impugned label vis--vis the label of the plaintiff, I think, there is bound to be confusion in the mind of a purchaser who wants to purchase Sudershan DHOOP. The word Vijaya is not likely to catch the eye of the purchaser for it is inconspicuous and an unwary purchaser is likely to think that the defendant's Vijay Sudershan Dhoop is the same Product as the plaintiff's Sudershan Dhoop and he is not likely to find that it is different from the plaintiff's dhoop. I think that in this case the sale of the impugned article amounts to injury to the plaintiff and, thereforee, it is necessary to prevent the mischief. Some temporary relief has to be grant plaintiff in order to safeguard his right against the irreparable injury, which may result to him. The plaintiff has placed sufficient material on the record including the certificate of registration of copyright and trademark. It appears that the plaintiff has certainly been carrying on business from 1960. The defendant on the record has placed no such material. He has not filed any details of advertisements or expenses incurred by him on making advertisements though in his pleadings it is averred that the defendant's dhoop is also an established product and that he has spent considerable amount an the advertisements. I do not set down in detail the resemblances between the plaintiff's cartons and the defendant's cartons lest it should amount to an expression of final opinion. The Supreme Court in Parle Products (P.) Ltd. v. J. P. & Co., Mysore, : 3SCR289 has laid down the test to determine the question when a trade mark, is deceptively similar to another. Their Lordships observed at page 1362:
'It is thereforee clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to Prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a Person usually dealing with one to accept the other if offered to him.' A little later it was observed: - 'After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes.'
8. The Supreme Court relied on the following passage in Karly's Law of Trade Marks and Trade Names (9th Edition paragraph 838):
'Two marks, when Placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison might well be deceived. If the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods, which bore the same mark as that, with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress. And in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that Persons dealing with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact detail of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own.'
9. The Court came to the conclusion that the two packets of biscuits 'Gluco' biscuits of the plaintiff and 'Glucose' biscuits of the defendant-were practically of the same size, the colour scheme of the two wrappers was almost the same; the design on both though not identical bore such a close resemblance that one can easily be mistaken for the other. It was held that any one who has a look at one of the packets today may easily mistake the other if shown on other date as being the same article which he had seen before.
10. The next question is what order should be made in such circumstances. There are various ways of doing justice between the plaintiff and the defendant. In an action for infringement of a registered trademark the Court can take security and put the parties on terms. In the present matter the sales have not been proved nor has any material been placed on the record as to know what are the sales of the plaintiff or the defendant. Merely figures of sales have been given. I think that this is a fit case, which calls for stoppage of the use of the impugned labels, cartons and wrappers etc. This is the view, which was taken by Hidayatullah. C. J. (As his Lordship then was) in Beniprasad Agarwal v. Hindustan Lever Ltd., Bombay, : AIR1958MP348 . The plaintiff has made out a prima facie case and on balance the interests of justice demand that an injunction should be issued. On comparison of the Plaintiff's registered trade mark with that of the defendant's impugned mark I have come to the tentative finding that there is a general similarity between the two which may in all probability deceive any unwary purchaser. Once the Court is satisfied that the impugned carton or mark of the defendant is a colourable imitation or is substantially similar so as to cause confusion in the mind of the Purchaser then, there is sufficient justification for restraining the defendant from continuing to make use of that label or mark. These principles seem to be well established: See Mohamed Minhajuddin v. Ahmed Khan, : AIR1959AP168 and Abdulla Khan V. B. Miskin Saheb, : AIR1960AP149 .
11. The learned counsel for the defendant has cited A R. Gangadhara and Co.. Nirmal v. Firm of Police Mallaih, Rajeswar and Co., Air 1962 AP 510 and has urged that on order of injunction restraining the defendant from carrying on business is not a proper one to be passed in a case like the present one as this will destroy the entire business of the defendant. I need not discuss this authority at length for each case has to be decided on its own facts. What the Court has to do is to safeguard as best as it can the interests of the plaintiff in, case he ultimately succeeds in establishing his case. On the facts of that case, the Court directed the defendant to give security.
12. In the facts of the present case an order directing the defendant to furnish security will not do complete justice. Nor in my view is it necessary to call upon the plaintiff to furnish security. As I have already said the defendant has not relied on any material facts from which it can be inferred that prima facie the registration of the plaintiff's trademark is invalid.
13. The certificate of registration of the trademark is Prima facie evidence of the validity thereof under Section 31 of the Act. The registration of the trade mark, if valid, elves to the registered proprietor of the trade mark under Section 28 of the Act the exclusive right to its use in relation to the goods in respect of which it is registered and further to obtain relief in respect of its infringement in the manner provided by the Act. Under Section 29(1) of the Act:
'29. (1) 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 trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.'
14. The expression 'deceptively similar' has now been defined in Section 2(d) of the Act of 1958 thus:
'2. (1) In this Act. unless the context otherwise requires: - (d) 'Deceptively similar': - A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other marks as to be likely to deceive or cause confusion;'
On an ocular examination it appears that there is close similarity and identity in the essential features of the two cartons. In my opinion the carton, mark and the label etc. of the defendant constitute a clear infringement of the plaintiff's registered trademark and of his statutory right to its exclusive use. The infringement of the registered trademark of the plaintiff committed by the defendant, being contrary to the provisions of Section 28, is illegal and defendant cannot be allowed to continue in its illegal activity. The balance of convenience is in favor of the plaintiff. The defendant has several other brands of dhoop and he can carry on his business of selling dhoop-batti in the other brands. As the defendant has failed to place material facts before the Court from which it can be inferred that the defendant has been using his trade mark since 1952, 1 have not considered it necessary to put the plaintiff on terms. The plaintiff ' has a statutory right to the exclusive use of the trademark. He complains of infringement. To protect his right in the property, far trademark is a property; an injunction should be issued in his favor.
15. I would, thereforee, accept the application, I. A. 1032 of 1972 and grant a temporary injunction to the, Petitioner restraining the respondent its servants, agents, representatives from manufacturing, selling or offering for sale or otherwise dealing in dhoop bearing the trade mark Sudershan with or without any prefix or suffix and from printing reproducing, using wrappers and cartons as are identical or deceptively similar to the wrappers and cartons of the petitioner.
16. The second application 1. A. S. 1680 of 1972 is under Section 111 of the Trade and Merchandise Marks Act. 1958. In this application it is asserted by the defendant that he has filed a petition under Section 107 of the Trade and Merchandise Marks Act in this Court for rectification of the register of trade marks on the ground that the trade mark in dispute is liable to be cancelled on the ground that the defendant's trade mark has been in use since 1952. The defendant has Prayed that under Section 111 of the Trade Marks Act the Proceeding in the suit be stayed pending the final decision of the petition under Section 107 filed by the defendant. In support of the application the defendant has filed an affidavit dated 9th November 1972. He has stated in the -affidavit dated he filed C. O. 12 of 1972 in the Registry of this Court on October 25, 1972 under Section 107 of the Trade Mark Act for rectification of the register of Trade Marks and for cancellation of the Plaintiff's registration. This C. O. 12 of 1972 is stated to have been admitted by the Registrar of this Court and notice has been issued to the respondent. C. O. 12 of 1972 is not before me but it is on the strength of this application that stay has been claimed. The plaintiff instituted the suit on July 18, 1972. The defendant filed his written statement on September 4. 1972. C. O. 12 of 1972 was filed on October 25, 1972.
17. Section 111 which deals with the stay of Proceedings where the validity of registration of the trademark is questioned is in the following terms:
'111. (1) Where in any suit for the infringement of a trade mark: -
(a) The defendant pleads that the registration of the plaintiff's trade mark is invalid; or
(b) The defendant raises a defense under clause (d) of sub-section (1) of Section 30 and the plaintiff pleads the invalidity of the registration of the defendant's trademark.
The Court trying the suit (hereinafter referred to as the Court) shall.
(i) If any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are Pending before the Registrar or the High Court, stay the suit pending the final disposal of such proceedings:
(ii) If no such proceedings are pending and the Court is satisfied that the plea regarding the invalidity of the registration of the plaintiff's or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the High Court for rectification of the register. (2) If the party -concerned proves to the Court that he has made any such application as is referred to in clause (b) (ii) of sub-section (1) within the time specified therein or within such extended time as the Court may for sufficient cause allow the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.
(3) If no such application 'as aforesaid has been made within the time so specified or within such extended time as the Court may allow, the issue, as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the Court shall proceed with the suit in regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the Court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.
(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the Court making any interlocutory order (including any order granting an injunction. directing accounts to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.'
18. There is a new provision. This section deals with the procedure in cases where the defendant in an action for infringement attacks the validity of the plaintiff's registration. If any rectification proceeding is already Pending before the Registrar or the High Court the action for infringement has to be stayed until the final disposal of the rectification proceeding under Section 111(1)(i). Under Section 111(1)(i) where no rectification proceeding is pending and the Court is satisfied that the contention as to validity is bona fide and prima facie sustainable, an issue as to validity will be raised to enable the party concerned to apply to the High Court for rectification. It was not disputed that under Section 111 the Court has the Power to grant interlocutory injunction etc., even where the issue as to the validity of registration is raised and the Court stays the proceeding in an infringement suit.
19. Mr. D. D. Sharma, the learned counsel for the defendant, submits that the suit is liable to be stayed under Section 111 and he emphasises the use of the word 'shall' in the section and submits that it is obligatory for the Court to stay the proceeding under Section 111 W. I do not agree with this contention because the scheme of the section shows that before the Court stays a -Proceeding in the infringement action, proceeding for rectification of the register under Section 111 must be pending on that date. The defendant cannot file an application subsequent to the institution of the suit under Section 111 and claim that the plaintiff's suit for infringement must be stayed. If no proceeding for rectification of the register is pending on the date of the institution of the suit by the plaintiff then Section 111 is attracted and a Court may adjourn the case for a period of three months in order to enable the defendant to apply to the High Court for rectification of the register. In that case the Court must be satisfied that the contention as to validity of the defendant's registration is bona fide and Prima facie sustainable. In the present case I am not satisfied that the contention as to validity raised by the defendant is bona fide or prima facie sustainable. No material has been placed on the record to Prove a prima facie case that the plaintiff's registration is invalid or that the defendant has been carrying on business since 1952 as alleged by him, The defendant obtained his sales tax registration number in 1965. He has not placed any material on the record to show what were his sales during the period from 1952 to 1965. No case at all has been made out to show that the defendant has any Prima facie and sustainable case for the cancellation of the plaintiff's registered trademark. Stay of action may be refused if particulars of concurrent user or prior user are not furnished.
20. In Formica International Ltd. v. Caprinhans (India) Pvt. Ltd. : AIR1966Cal247 it was held that if the plaintiff files a mixed action for infringement and Passing off and the two causes of action are combined and the defendant seeks to invoke the Provision of Section 111 the Court shall stay the suit so far as it relates to the infringement of the trade mark if the conditions of Section 111 are satisfied, but the Court can proceed to try the Passing off action. In the present case I am not prepared to stay even the infringement action as I am not satisfied that the petition under Section 111 is bona fide.
21. I would, thereforee, dismiss I. A. 1680 of 1972 with costs. The defendant will pay Rs. 100/- as costs of I. A. 1680 of 1972.
22. Order accordingly.