V.S. Deshpande, J.
(1) This is an appeal against the order of the Additional District Judge, Delhi dated 16/5/1967 refusing the grant of temporary injunction to the plaintiff-appellant. The application for temporary injunction by the plaintiff before the Additional District Judge, though made under Order 39, Rules I and 2 read with Section 151 Civil Procedure Code ., was actually cov.ered by Order 39, Rule 2 alone inasmuch as the suit by the plaintiff was for restraining the defendants from committing 'toher injury of any kind' within the meaning of Rule 2(1). The injury complained of was the harm caused to the plaintiff by the sale of deceptiv.e goods by the defendants. The order of the learned Additional District Judge was apparently, thereforee, passed under Order 39, Rule 2 Civil Procedure Code and nto under Section 151 Civil Procedure Code It was thereforee, appealable under Order 43, Civil Procedure Code .
(2) Briefly, the facts leading to the filing of this appeal against the order dated 16/5/1967 passed by the Additional District Judge, dismissing the appellants' application for temporary injunction are as follows:
(3) Shri K. C. Aggarwal, the father of defendant No. 2 and certain toher persons decided to promtoe a company to manufacture 'Wearwell' Cycles. These cycles used to be manufactured by an English Company called the Wearwell Cycle Company Limited in England. Shri Aggarwal, thereforee, went to England and entered into an agreement with the English Company. Shri Aggarwal acted for Janki Das and Sons of Jullundur, India, and the agreement was entered into by him for the benefit of the Indian Company which was to be formed under the name of 'Wearwell Cycle Company (India) Limited'. The English Company permitted by this agreement the Indian Company to use any of its proprietary marks in India. The Indian Company was registered under the Indian Companies Act on 14/11/1951. It obtained the license to manufacture cycles under the Registration and Licencing of Industrial Undertaking Rules, 1952 on 14/1/1953. The Indian company went into production by the end of 1954 and produced and. sold cycles worth Rs. 3 crores or so by the time the suit came to be filed in 1966. The Indian Company had spent about Rs. 4 lakhs to adv.ertise its cycles. The word 'Wearwell' and monogram containing the said word were displaced on all the cycles made and sold by the Indian Company.
(4) The agreement entered into with the English Company contemplated that the Indian Company would enter into an agreement with the English Company after the Indian Company was registered incorporating the terms of the said agreement into the new agreement between the two companies. This, howev.er, does nto seem to hav.e been done. By the end of 1965 Shri K. C. Aggarwal was remov.ed from the Directorship of the Indian Company. Defendant No. 2, Ashok, is his son born probably on 25/4/1947, He took his B.Com. degree in 1966 and started the business of selling cycles from the 25/7/1966 as would, appear from the license as a dealer obtained by him from the Sales Tax Authorities. He also used the name 'Wearwell' and the monogram containing that word on the cycles sold by him. The plaintiff Company came to know of this in September, 1966 and immediately filed the Suit No. 3 of 1966 on 26/10/1966. The plaintiff av.erred that from the end of 1954, it has been manufacturing cycles under the trade mark 'wearwell' in four different models, v.iz-; Popular Wearwell, Super delux Wearwell, Delux Wearwell and Super Jet Wearwell. Since February, 1966, however, the plaintiff has been concentrating on the manufacture of their famous model Deluxe Wearwell. Its production till the filing of the suit was approximately worth Rs. 3 crores as per the statement showing the yearly figures of sale attached. It has spent about Rs. 4 lakhs on adv.ertising the trade mark 'Wearwell' as per statement attached. The trade mark 'Wearwell' is the key portion of the plaintiff's trading style 'Wearwell Cycle Company (India) Limited'. It dentoes the cycles manufactured by the plaintiff alone in India. It is associated by the members of the public with the plaintiff only. The plaintiff-company has applied for registration of this trade mark which application is pending. Ev.en prior to the registration of the trade mark, the plaintiff has acquired reputation and good-will in this trade mark. The defendants hav.e started trading under the style of 'Wearwell Industries' at Ludhiana and started assembling and selling cycles under the trade mark 'Wearwell'. The trading of the defendants started only about 3 months prior to the filing of the suit. It is causing irreparable loss and injury to the plaintiff for which pecuniary compensation would nto be an adequate relief. The action of the defendants amounts to the tort of passing off. Pending the decision of the suit for permanent injunction, thereforee, the plaintiff prayed for a temporary injunction restraining the defendants from using the trade mark 'Wearwell'.
(5) The defendants did nto deny that the plaintiff started a factory for assembling of cycles in the year 1955. They, howev.er, denied that the trade mark 'Wearwell' was ev.er the proprietary mark of the plaintiff. They stated that the plaintiff-company has been assembling the cycles and wrongfully using the name 'Wearwell' sometimes. The defendants hav.e been carrying on business under the name of 'Wearwell Industries' for the last about three years in manufacturing, assembling and selling cycles under the trade mark 'Deluxe Wearwell'. The defendants are entitled to use the trade mark 'Wearwell'. The agreement with the English Company was entered into by Shri K. C. Aggarwal, who was entitled to use the trade name 'Wearwell'. The rights under the agreement with the English Company were transferred to the defendants. The balance of conv.enience is in fav.our of the defendants in as much as the business of the defendants would be ttoally stopped, if temporary injunction is granted against them. The plaintiff has no reputation and is in a had way financially. It is nto, thereforee, entitled to permanent injunction against the defendant and hence no temporary injunction should be granted in its fav.our.
(6) The learned Additional District Judge refused to pass an order of temporary injunction as prayed for by the plaintiff-appellant and instead directed the defendants to maintain accounts of sales made by them and to furnish security to compensate the plaintiff-company in the ev.ent of the success of the suit. The learned Additional District Judge was of the v.iew that a strong prima fade case was nto made out by the plaintiff for the grant of temporary injunction in v.iew of the following reasons:
(1)A serious controv.ersy exists as to whether or nto the inv.ention claimed by the plaintiff is, a new one or a new manufacture or whether or nto it inv.olv.es any new skill;
(2)The defendant disputes the plaintiff's ownership of the trade mark;
(3)A temporary injunction cannto be granted to establish a new state of things different from the state which existed on the date on which the suit was instituted;
(4)The balance of conv.enience is nto in fav.our of the plaintiff as - the grant of temporary injunction would destroy the defendant's business altogether, while the position would be different if the plaintiff is able to prov.e his right to the disputed trade mark; and
(5)The plaintiff has nto been able to get the trade-mark registered in its name yet.
(7) I am afraid, I am unable to agree with the reasoning of the learned Additional District Judge. It is nto clear what is implied in reason No. 1 giv.en by him. It is true that the trade-mark 'Wearwell' is nto inv.ented by the plaintiff. Apparently, the inv.ention was made by the English Company, which has been manufacturing Wearwell Cycles for many years past. The good-will and reputation of the English Company in respect of this trade mark was so great that the promtoors of the plaintiff-company including Shri K. C. Aggarwal, father of defendant No. 2, thought it worthwhile to take the trouble and spend money of sending Shri Aggarwal to England to enter into an agreement with the English Company under which the Indian Company would be entitled to use the trade- name 'Wearwell'. Btoh the parties are, thereforee, committed to the position that the trade-mark 'Wearwell' was the property of the English Company, which was v.aluable enough to be sought after by the proposed Indian Company. If the Indian Company had itself inv.ented the name 'Wearwell', it may hav.e perhaps required a longer period to establish its good-will and reputation in respect of it. But the good-will and the reputation of the trademark in resepct of the cycles manufactured by the Indian Company already existed. Prior to the gradual stoppage of imports by the Gov.ernment of India after attainment of independence. Wearwell cycles used to be imported in India and were known for a certain quality attached to them. The reputation among the Indian buyers must hav.e been good enough to persuade the promtoers of the Indian Company to acquire the said trade-mark from the English Company. By such acquisition the Indian Company would get the benefit of the established reputation of the cycles sold under this trade-mark. A shorter period of time would, thereforee, be required for the Indian Company to acquire the reputation and good-will in respect of this trade-mark. Far from being a disqualification, thereforee, the fact that the Indian Company itself did nto inv.ent this trade-mark but decided to use it in v.iew of its agreement with the English Company puts the claim of the Indian Company to the use of the trade-mark on a better fotoing. As the trademark was already well known, a comparativ.ely short period of its association with the cycles made by the Indian Company would be sufficient to giv.e the Indian Company the goodwill in the use of the trade-mark.
(8) The agreement entered into with the English Company was expressly made for the benefit of the proposed Indian Company. This is conclusiv.ely prov.ed nto only by the agreement itself, but also by the fact that Shri K. C. Aggarwal, the predecessor in-title of the defendant, was himself a Director of the plaintiff-company which used - the trade-mark 'Wearwell' in pursuance of the agreement entered into with the English Company. It is true that the agreement contemplated a fresh agreement between the Indian Company and the English Company after the incorporation of the Indian Company. Legally speaking, thereforee, the Indian Company cannto base its claim to the trade-mark 'Wearwell' on the agreement entered into by its promtoors with the English Company. This does nto mean howev.er, that Shri K. C. Aggarwal can personally claim any benefit under the agreement with the English Company. From the date of entering into agreement with the English Company to his remov.al from the Directorship of the Indian Company, Shri K. C. Aggarwal, predecessor in-title of the defendant- respondents, has himself been a party to the use of this trade-mark for the exclusiv.e benefit of the Indian Company. The Indian Company has based its claim to the exclusiv.e use of this trade-mark nto on the agreement entered into with the English Company, but on the fact that for 12 years prior to the filing of the suit it has been exclusiv.ely using this trade-mark for cycles made by it. On the contrary, the business of the defendants dated apparently from July, 1966, i.e., hardly three months before the filing of the suit by the plaintiff. In v.iew of the age of defendant No. 2 and the date of his Sales Tax Registration Certificate, one can safely proceed on the assumption that the use of the trade-mark by the defendants commenced only from July, 1966. One cannto, thereforee, agree with the learned Additional District Judge that there is any serious controv.ersy as to the proprietorship of this trademark as between the two parties. On the side of the plaintiff-company is the 12 years use of the trade-mark resulting in the sale of cycles worth Rs. 3 crores and expenditure on adv.ertisement of about Rs. 4 lakhs. As against this the defendant- respondents can claim the use of the trade-mark for just three months before the suit. The defendant-respondent cannto, thereforee, claim any comparison with the plaintiff-company in this respect at all. Reason No. 2 giv.en by the learned Additional District Judge is also, nto, thereforee, v.alid.
(9) The plaintiff-company is wanting the temporary injunction to preserv.e the status quo as it existed for 12 years ending July, 1966. It is only in July, 1966 that the defendants started disturbing the status quo by using the trade-mark, which was used exclusiv.ely by the plaintiff till then. It cannto be said, thereforee, that the plaintiff wanted the temporary injunction to create a new state of things.
(10) The question of balance of conv.enience can arise only when at least prima facie the two parties are on the same lev.el and their rights are about equal. As already stated abov.e, the plaintiff was the user of this trade-mark being for 12 years and the plaintiff hav.ing made cycles under this trade-mark to the tune of Rs. 3 crores and hav.ing spent on the adv.ertising of this trade-mark an amount of about Rs. 4 lakhs, the plaintiff-company's position is infinitely superior to that of the defendant-respondents, who began the use of the trade-mark just three months before the suit and who hav.e nto dared to state how much they hav.e earned by selling the cycles in this period, of three months and how much they hav.e spent on adv.ertisement during those three months. It is nto the law that any one can start using the trade-mark exclusiv.ely associated with antoher for a long time and then tell the Court nto to grant temporary injunction to the establish user because this would be inconv.enient to the new user, who may be called a usurper.
(11) The fact that the plaintiff has nto so far succeeded, in getting the trade-mark registered in its name is nto relev.ant in as much as the suit of the plaintiff is based on the user of the trade-mark by the plaintiff for 12 years prior to the suit and is nto based on the registration of the trade-mark. The plaintiff av.ers that the defendants hav.e committed the tort of passing off. They do nto av.er that the defendant-respondents hav.e infringed any trade-mark registered in the plaintiff's fav.our. In Powell v.. Birmingham v.inegar Grewery Company, (1896) 2 Ch. 54 the plaintiff-Company had manufactured a sauce under the name 'Yorkshire Relish' for 34 years. The registration of these words as a trade-mark in 1884 was later set aside in 1894 in a decision genuineness of which was upheld by the House of Lords, in (1894) A.C. 8. The Court of appeal observ.ed as follows:-
'THEplaintiff in this case does nto complain of the infringement of any registered trade-mark. He relies exclusiv.ely on his common law right to prev.ent toher people from making and selling goods which can be and are passed off and mistaken for goods made by him under the name 'Yorkshire Relish'...
(12) Before there was any legislation on the subject of trade-marks it was well settled that when any one adopted a mark so closely resembling the trade-mark of the plaintiff as to be likely to be mistaken for it, the plaintiff was entitled to an injunction to restrain the use of such mark. Fraud on the public to the detriment of the plaintiff was the foundation of the right to damages at common law: per Lord Blackburn in Singer Manufacturing Co. v.. Loog 8 AC 29; but as long as 1833 it was decided in Millington v.. Fox, 3 My. & Cr. 338 that intentional deceit was nto essential to warrant the court in granting an injunction. The Court will interfere to prtoect a plaintiff if ordinary or unwary purchasers are likely to be misled and to mistake the defendant's goods for the plaintiffs' (per Lindley, L.J.).
(13) The House of Lords sub-nom Birmingham v.inegar Brewery Company v.. Powel, (1897) A.C. 710, unanimously affirmed the judgment of the Court of Appeal.
(14) What the plaintiff has to prov.e to succeed in getting temporary (and later a permanent) injunction is that he has acquired the exclusiv.e right by usage of the trade-mark 'Wearwell' for the sale of cycles made by it. As observ.ed in Salmond on torts, 12th Edition, at page 662, regarding the basis of passing off action:
'THECourt hav.e wav.ered between two conceptions of a passing-off action - as a remedy for the inv.asion of a quasi-proprietary right in a trade name or trade mark, as a remedy, analogous to the action on the case for deceit, for inv.asion of the personal right nto to be injured by fraudulent competition. It has recently been said that 'the true basis of the action is .that the passing off... injuries the right of property in the plaintiff, that right of property being his right to the goodwill of his business.' In general the v.iolation of a right to property is actionable, ev.en though it is innocent and though no damage has been prov.ed. At common law it was necessary to prov.e an actual fraudulent intention, but a different v.iew was taken in equity, and since the Judicature Act it has been generally accepted that it is nto necessary in an action for passing off to prov.e fraud -that is to say. an intent to deceiv.e. It is sufficient in all cases to prov.e that the practice complained of is calculated (that is to say, likely) to deceiv.e'.
(15) The first question, thereforee, is whether the exclusiv.e use of this trade-mark by the plaintiff for 12 years resulting in the sale of cycles worth. Rs. 3 crores and adv.ertising expenditure of Rs. 4 lakhs is sufficient to associate this trademark so closely with the cycles made by the plaintiff as to become the part of the good-will of the plaintiff's business. It is only then that a proprietary right to the trade-mark can be claimed by the plaintiff. Taking into account the fact that industrialisation has spread in our country comparativ.ely recently and that too after independence, the abov.e mentioned period and v.olume of business should be regarded as sufficient for the proof of the plaintiff's claim. In Reddaway v.. Banham, (1896) A.C. 199. Reddaway had been making a belting, which he called Camel Hair Belting for about 12 years before Banham began to use the same name for the Camel Hair Belting, which he also started to make. As the words 'Camel Hair Belting' were merely descriptiv.e words which may be as truly applied to the belting made by Raddaway as to the belting made by Banham or any one else, a strong burden of proof rested on Reddaway to show that he had acquired the exclusiv.e right to the use of those words. The 12 years' user was held sufficient for the acquisition of such a right by the House of Lords. In the case before us. the word 'Wearwell' is nto a descriptiv.e word, and, thereforee, is more easily capable of being appropriated.
(16) Section 27(2) of the Trade & Merchandise Mark, 1958 expressly states that ntohing in the said Act shall affect rights of action against any person for passing off goods, as the goods of antoher person or the remedies in respect thereof. In Kav.iraj Pandit Durgdatt Sharma v.. Nav.ratna Pharmaceutical Laboratory, Air 1965 Sc 1980, the Supreme Court also pointed out that an action of passing off is a common law remedy distinct from an action for infringement of a registered trade-mark. The common law remedy was in substance an action for deceit, i.e. a passing off by a person of his own goods as those of antoher. No fraudulent intention on the part of defendant-respondents is to be prov.ed. All that is to be prov.ed by the plaintiff is that the use of the word 'Wearwell' by the defendant in selling their own cycles was likely to deceiv.e purchasers into thinking that these cycles are made by the same person who hav.e hitherto been using the trade-mark 'Wearwell'. Nor is it necessary for the plaintiff to prov.e that actual damage was caused to him by the imitation of his goods by the defendants. The law assumes that the presence in the market of a quantity of deceptiv.e goods will hav.e an adv.erse effect upon the plaintiffs business. The plaintiff is, thereforee, without proof of damage entitled to damages (Draper v.. Twist, (1939) 3 All ER 513, and the Editorial ntoe below the head ntoe of the case. It is nto ev.en necessary that the purchaser should know that the plaintiff-company is the maker of the 'Wearwel!' cycles or that their factory is situated in Faridabad. Ev.en actual deception is nto to be prov.ed. The likelihood of customers being deceiv.ed is sufficient. Moreov.er it is nto necessary to prov.e that there was any actual likelihood of deception of immediate purchasers. The manufacturer must nto release upon the market products which are calculated to deceiv.e the ultimate consuming public ev.en though the retailer who is the immediate purchaser from the manufacturer is nto misled. Lastly, the test for determining is whether deception was probably the first impression likely to be produced on the casual and unwary customer and it is no answer that an observ.ant person making a careful examination would nto be misled.
(17) The last observ.ation brings us to the question whether the use of the word 'Wearwell' by the defendants results in the likelihood of deception of the ultimate purchasers. The monogram used by the defendants was so similar to the monogram used by the plaintiff that it was difficult to distinguish one from the toher. Andley, J., in this Court has, thereforee, already passed an order on 29-5-1967 prohibiting the defendant-respondents from using this monogram which is exclusiv.ely associated with the plaintiff's cycles. The word 'Wearwell' with its English ancestry inv.okes an image of certain quality in the minds of the intending purchaser. By 12 years' user and sale of cycles under the said name in large numbers, the plaintiff-company has acquired the right to the benefit of the use of this trade-mark. The defendants cannto, now, so late in the day, be allowed to use the same name. The learned counsel for the defendant-respondents showed me a small metal plate which is affixed to their cycles to show that they are made under a license from the English Company. The question is whether this is sufficient to distinguish the defendant-respondents' cycles from the plaintiff's cycles when btoh are using the trade name 'Wearwell'. Firstly, the metal plate is too small and may nto be observ.ed by most of the purchasers. Secondly, it does nto distinguish the defendant's cycles from the plaintiffs cycles inasmuch as the original reason why the plaintiff company started making cycles under the trade-name 'Wearwell' is the same, v.iz. the agreement of the English Company with the promtoors of the Indian Company. The Indian Company can, thereforee, say with more justification than the defendants that the cycles are made by it in v.iew of the agreement by its promtoors with the English Company. Lastly, the defendants do nto hav.e any license from the English Company, for the use of this trade name. On the whole, thereforee, there is ntohing to show that the trading style of the defendant-respondents as used on the cycles made by them is sufficiently distinct from the one used by the plaintiff to av.oid confusion in the minds of the customers. On the contrary, the customer usually knows the word 'Wearwell' as it is that word alone which is associated with a particular make of cycles. The customers do nto know whether the manufacture of such cycles is under a license from the English Company or whether these cycles are manufactured in Faridabad. (where the factory of the plaintiff is situated) or in Ludhiana (where the business of the defendants is carried on). So long, thereforee, as the defendants are allowed to use the word 'Wearwell' on their cycles, the ordinary customer would think that they are the Wearwell cycles known to the public under that trade name. It must be held, thereforee, that the use of the word 'Wearwell' by the defendants is likely to mislead the public into thinking that the defendants' cycles are the same Wearwell cycles which hav.e been known to the public by that name from 1954 to 1966. As the imitation of this trade mark by the defendants is v.ery recent, there is absolutely no reason why the defendants she allowed to continue its use. The defendants hav.e to eslablish their own reputation independently of the reputation of the plaintiff. They can, thereforee, use any toher trade name, which will nto be an inv.asion of the proprietary rights of the plaintiff or of any toher maker of cycles. The defendants must try to become known on their own. No prejudice would, thereforee, be caused to the defendants if they are prohibited from using the word 'Wearwell' on their cycles. It is for them to use some toher word or label, which will, in course of time, become known to the public as their exclusiv.e trade-mark. Since they hav.e no right to use the word 'Wearweil' it cannto be said that the prohibition of its use by them would result in the destruction of their business. Their business does nto rest on the use of this trade name. Nor is there any question of balance of conv.enience between the parties. For the right to use the trade name is in the plaintiff alone and it can nto be said, thereforee, that any inconv.enience can be caused to the defendants by their being prohibited from using the name.
(18) For the abov.e reasons, the appeal is allowed. The order of the learned Additional District Judge is set aside and pending the decision, of the suit the defendant-respondents are prohibited, from using the word 'Wearwell' in the name of their business and as a mark on the cycles made and sold by them. In the circumstances of the case. I make no order as to costs of this appeal.