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Amar Soap Factory Vs. Public Gram Udyog Samiti - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtDelhi High Court
Decided On
Case NumberSuit No. 1500 of 1979
Judge
Reported inILR1985Delhi960
ActsCopyright Act, 1957 - Sections 62(2)
AppellantAmar Soap Factory
RespondentPublic Gram Udyog Samiti
Advocates: K.L. Aggarwal,; K.G. Bansal and; O.P. Narang, Advs
Excerpt:
(i) copyright act - section 62(2) read with section 20 of the code of civil procedure--it is enough if the plaintiff actually resides or works for gain within the jurisdiction of the court and it is not necessary for his residence to be a permanent one.;(ii) the person who files the application which is prior in time for the registration of his trade mark, in the absence of any other circumstances is entitled to have his mark registered.;(iii) trade and merchandise marks act, 1958--trade mark--the publication of an advertisement is enough to give cause of action for the infringement of trade mark--actual use of the mark is the test for proprietorship of the trade mark rather than the extent or duration of the use.;the suit was filed praying for perpetual injunction restraining the.....m.k. chawla, j. (1) in a suit for perpetual injunction restraining infringement of copyright, passing off, rendition of accounts, damages etc., the case set up by the plaintiff amar soap factory, in brief is that it. is a partnership firm consisting of four partners duly registered under the provisions of the indian partnership act; that shri surjit singh, one of the partners, is well acquainted with the facts of the case and authorised to file, sign and verify the pleadings for and on behalf of the firm; that the plaintiff is doing the business of manufacturing and selling of all kinds of scaps since the year 1960, continuously and extensively; that since then the plaintiff has been using a. distinctive trade mark recognised by the device of crosswords and called by the name of talwar.....
Judgment:

M.K. Chawla, J.

(1) In a suit for perpetual injunction restraining infringement of copyright, passing off, rendition of accounts, damages etc., the case set up by the plaintiff Amar Soap Factory, in brief is that it. is a partnership firm consisting of four partners duly registered under the provisions of the Indian Partnership Act; that Shri Surjit Singh, one of the partners, is well acquainted with the facts of the case and authorised to file, sign and verify the pleadings for and on behalf of the firm; that the plaintiff is doing the business of manufacturing and selling of all kinds of scaps since the year 1960, continuously and extensively; that since then the plaintiff has been using a. distinctive trade mark recognised by the device of crosswords and called by the name of Talwar Marka' for their products and have acquired a valuable goodwill; that the plaintiff firm is registered proprietor of artistic labe) entitled Talwar Marka' which is duly registered under No. A-7562/72 under the provisions of the Copyright Act; that the salient features of the plaintiff artistic label are that two side panels are having device of two swords placed in cross position; one side panel contained the bust portrait of two partners of the plaintiff firm that the overall colour scheme, get up, lay out, arrangement of words of plaintiff soap wrapper in unique and distinctive and its registration is valid, subsisting and effective throughout India; that the plaintiff has acquired exclusive rights for the use of trade mark 'Talwar Marka' and none is entitled to use and trade upon the plaintiffs trade mark; that the plaintiffs sales of soap under the impugned mark runs in lakhs of rupees; that the defendants are doing the business of manufacturing of E washing soap under the name and style of M/s. Public Gram Udyog Samiti and had adopted identical trade mark Tslwar Marka' sometime in the year 1977: that the plaintiff immediately served a notice dated 1-8-1977 through their attorney calling upon the defendants to desist the use of trade mark Talwar Marka' and consequently the defendants ceased to use the said marka; that the defendants have again started the-use of the impugned trade mark in the year 1979 and again a notice dt. 2-3-1979 calling upon the defendants to desist the use of the said trade mark was served; that the defendants inspire of the service of the notice have not cared to stop the manufacture and sale of soap under the impugned trade mark: that the plaintiff has already filed an application under No. 314116 in Class 3 for the registration of the trade mark Talwar Marka' along with the device of cross-swords under the provisions of Trade & Merchandise Marks Act: that the impugned application was advertised in the Trade Marks Journal No. 716 dated 1-4-1979, to which the defendant has filed an opposition that the similarity between the marks and wrappers of the plaintiff any newspaper being published or having circulation in Delhi; that even the alleged infringement of copyright does not confer any jurisdiction; that the suit of the plaintiff is barred by principles of acquiescence inasmuch as the plaintiff and defendant are trading in the nearby localities to the knowledge of each other; that the claim of the plaintiff over the proprietorship of the trade mark 'Talwar Marka' aic subjudice before the Competent Authority; that the defendants are using the said trade mark 'Talwar Marka' with the bust photos of two persons bonafidely, honestly and concurrently. On merits, they denied the averments that the trade mark of the plaintiff has become distinctive or has acquired valuable goodwill inasmuch as their trade mark is not at all known in the market and the same is under serious dispute between the parties; that the' trade mark Sword and device of cross swords is already registered in the name of The Ganesh Flour Mills Co. Ltd. under No. 113682 in respect of soaps, duly advertised in Trade Marks Journal No. 133 and as such the plaintiff cannot claim to be the proprietor of the impugned trade mark label; that the plaintiff's label is neither original in idea nor in its form of expression and as such they cannot claim to be the proprietor of the alleged artistic label; that the product of the plaintiff has not acquired any goodwill or reputation as alleged that the defendants are using their own trade mark Talwar Marker' which has acquired great reputation in the market and has become associated with the goods of the defendant since 1973; that the defendants have also. applied for the registration of its trade mark Talwar Marka' with the bust of two persons under the provisions of Trade & Merchandise Marks Act vice their application No. 329561 in class 3 which application has been advertised in the Trade Marks Journal; that the defendant's trade mark is not identical or similar to that of the plaintiff: that no cause of action has arisen against the defendants and as such their suit merits dismissal.

In the replication, plaintiff controverter the pleas raised by the defendants in their written statement and reiterated the facts as stated in the plaint. any newspaper being published or having circulation in Delhi; that even the alleged infringement of copyright does not confer any jurisdiction; that the suit of the plaintiff is barked by principles of acquiescence inasmuch as the plaintiff and defendant are trading in the nearby localities to the knowledge of each other; that the claim of the plaintiff over the proprietorship of the trade mark 'Talwar Marka' aic subjudice before the Competent Authority; that the defendants are using the said trade mark Talwar Marka' with the bust photos of two persons bonafidely, honestly and concurrently. On merits, they denied the averments that the trade mark of the plaintiff has become distinctive or has acquired valuable goodwill inasmuch as their trade mark is not at all known in the market and the same is under serious dispute between the parties; that thei trade mark Sword and device of cross swords is already registered in the name of The Ganesh Flour Mills Co. Ltd. under No. 113682 in respect of soaps, duly advertised in Trade Marks Journal No. 133 and as such the plaintiff cannot claim to be the properietor of the impugned trade mark label; that the plaintiff's label is neither original in idea nor in its form of expression and as such they cannot claim to be the proprietor of the alleged artistic label; that the product of the plaintiff has not acquired any goodwill or reputation as alleged that the defendants are using their own trade mark 'Talwar Marka' which has acquired great reputation in the market and has become associated with the goods of the defendant since 1973; that the defendants have also. applied for the registration of its trade mark Talwar Marka' with the bust of two persons under the provisions of Trade & Merchandise Marks Act vice their application No. 329561 in class 3 which application has been advertised in the Trade Marks Journal; that the defendant's trade mark is not identical or similar to that of the plaintiff: that no cause of action has arisen against the defendants and as such their suit merits dismissal.

In the replication, plaintiff controverter the pleas raised by the defendants in their written statement and reiterated the facts as stated in the plaint.

(4) On the pleadings of the panics, the following issues were franec - Issues:

1. Have Delhi Courts territorial jurisdiction to entertain and decide the present suit? (O.P.P.)

2. Is the plaintiff proprietor of trade mark 'Talwar Marka' in respect of washing soap? (O.P.P.)

3.Is the plaintiff proprietor of the wrapper entitled 'Talwar Marka'? (O.P.P.)

4. Does the use of trade mark and wrapper entitled 'Talwar Marka' by the defendant amount to passing of the goods as those of the plaintiff? (O.P.P.)

5. Have others been using the. trade mark having the device of cross-swords in question and if so, what is its effect? (O.P.D.)

6.Is the plaintiff entitled to rendition of accounts? (O.P.P.)

7.Relife.

Subsequently, order of this Court dated 20-2-83. the following additional issue was framed :

7.Whether the 'trade mark' 'Sword' and device of cross-swords is registered in the name of the Ganesh Flour Mills Co. Ltd. under No. 113682 in respect of soaps? If so, its effects'.

8.Relief.

(5) On 1-8-84 learned counsel for the defendants stated at the bar that all the documents filed by the plaintiff be read as evidence aid the defendants be presumed to be in continuous user of the trade mark in dispute. On this understanding, learned counsel for the plaintiff did not produce any evideace. The defendant examined Sh. Surinder Pal. the Secretary of the defendant Samiti, and closed the evidence.

(6) I have heard the arguments of the learned counsel for the parties and with their help gone through^ the record carefully. My findings on the issues are as under. Issue NO. 1

(7) 1 The onus of this issue has rightly been placed on the plaintiff. Paras No. 12 and 13 are the relevant paras in which the plaintiff has given the cause of action for the filing of the present suit against the deendant. As per the averment, the plaintiff came to know in month of December 1979 about the sale of the decedat soap under the infringing trade mark Talwar MARKA' with the device of .cross swords in Delhi and secomdly he in the newspaper 'Indian Express' dated' 512-79 was published from New Delhi. Besides the above two averment, the plaintiff also relied upon the issuance of Certificate Ex. D.W. 1113 under the Copyright Act in favor of to deiendant wherein against column No. 9 the defendant men publication of their mark in India in 1977. Reliance was also placed un issuance of a certificate by the Copyright Officice favor of the plaintiff 25-2-72. This certificat is also valid for throughout India. Reliance was also placed on the adverisment Ex. D.W. 119 of the plaictiffs trade mark in the Trade Marks Journal issued from 'Delhi wherein user has claimed from 15-6-62. Similarly the defendants also got their r. ^ mark advertised in the Trade Marks Journal (mark A) where in the user is shown from 1-1-1977. On the basis of these documentary evidence learned counsel submit that this Court has closed with the jurisdiction to entertain and try the present suit. On the ether hand, the learned counsel for the defendants subnet that the plaintiff has adopted a device to invoke the jurisdiction of this Hon'ble Court by getting advertisement issued in the Indian Express a.s well as by procuring Cash Memo No. 713 dated 9-12-79 issued by the Pritam Soap Factory for the sale of Talwar MARKA' soap. In support of his contention, learned counsel placed reliance M/s. Amar Soap Factory v. M/s. Public Gram Udyog Samiti

On the purchase of the stamp paper of Rs. 80 by Sh. K. L. Aggar wal on behalf of the plaintiff on 30-11-77. By which time, according to the learned counsel, neither the advertisement in the Indian Express has appeared nor the bill was in existence. So at the time- the stamp paper was purchased, there was no cause of action. Learned counsel also pointed out the date 10-12-79 in the plaint which is in. the ink. On the basis of these facts the contention of the learned counsel for the defendant is that the plaint was ready and after obtaining of the documents i.c, the advertisement and the bill it was filed. Before the filing of the suit, no attempt was made by the plaintiff to enquire from the office of the Indian Express as to on whose behalf the advertisement has appeared. By adopting these fraudulent device the plaintiff cannot be allowed to invoke the jurisdiction of this Court. Learned counsel also submit that the plaintiff cannot take advantage of the issuance of the certificate to the defendant under the Copyright act or the publication of the mark in the Trade Marks Journal as the only office which could issue such like certificate is the Delhi Office governing the Slate falling under the Northern part of India.

(8) As per the provision of section 20 Civil Procedure Code ., every smt has to be instituted in a Court within the local limits of whose jurisdiction the defendant at the time of the commencement of the suit actually or voluntarily resides or carries on business. However, section 62(2) of the Copyright Act is an exception. This provision alters the principles as laid down under section 29 C.P.C. and define the place where the plaintiff resides or carries on business as the place where the suit has to be filed. It is enough if the plaintiff actually resides or works for gain within the jurisdiction of the Court which is approached and it is not necessary for his residence to be a permanent one. Useful reliance can be placed on the unreported judgment of this Court in suit No. 122174 Manohar Lal Gupta v. State of Haryana and others, decided by M. S. Joshl. J. on 28-5-1976 and T.A. No. 1772173 in suit No. 524175 Gora Mal Hari Ram v. Ra^ Kumar and Bros., decided by S. S. Chadha. J on 26-4-1976. It is an admitted case uf the defendants that not only the plaintiff but they also applied for the registration of their respective trade marks before the Trade Mark Registry at New Delhi. Both the parties challenged the registration of the trade mark before the Copyright Board. Those proceedings have since been stayed, awaiting the decision of this Court as to who is the proprietor of the trade mark Talwar Marka

It may be that the plaintiff had already purchased the stamp paper prior to the publication of the advertisement as well as issuance of the cash memo, while the suit was filed subsequently but the court has to examine the situation which was in existence at the time of the filing of the suit. At this stage, it will not be possible for this Court to hold the malafide intention of the plaintiff in getting the advertisement published and the obtaining of the cash memo with an ulterior motive, there being no material on record. As at present advised the publication of the advertisement by itself is enough to give a cause of action to the plaintiff for the infringement of their trade mark by the defendants. This aspect came for consideration in a case reported as Kheshtrapal Sharma v. Pancham Singh Varma AIR 1915 All 262 (1). While discussing the question as to whether the publication of the advertisement by the respondent of his trade mark in papers, hand bills, and circulars published in the territorial jurisdiction of the Court where suit is being filed, is an encroachment of the applicant trade mark or not, the Division Bench of the Allahabad High Court answered the question in the affirmative by holding as under-

'FOR the purpose of this application we must, of course, assume that the applicant is entitled to the trademark which he claims and that the respondent's advertisment is calculated to induce people to believe that they will get from him the applicant's medicine.'

Reliance was also placed on several English Cases which lay down that a trade mark may be infringed by means of an advertisement. On the basis of the authorities, Hon'ble Judges M/s. Arnar Soap Factory v. M/s. Public Gram Udyog Samiti concluded that the plaintiff's trade mark has been infringed within the jurisdiction of the subordinate Judge of the place where the advertisement appeared. Similar observations came to be made in the case J.B. Stone and Co. Ltd. v. Sttelace . 1929 Rpc 406 (2). and in the matter of L&C; Hardmuth (Great Britain) Ltd. v. Bancroft & Partners Ltd. 1953 Rpc 479(3). This view was also taken by Prithvi Raj, J. in suit No. 660/77 Re; Jawahar Engineers (Pvt.) Limited v. Jawahar Enginering Company, decided on 23-8-1978.

(10) Furthermore, in order that the Courts at a particular place should have jurisdiction to trying a passing off action it is necessary to show that the defendants were responsible for sending out to that District, goods which were liable to deceive- interpeding purchaser- into believing that they were manufactured by the plaintiff. It is also not necessary that an actual attempt should be alleged on the defendant's 'part to sell goods as those of the plaintiff. It is sufficient that the defendants should be shown to be selling goods which are of similar nature to those of the plaintiff that a purchaser might infer a common origin. This test in the present case has been fully satisfied by the plaintiff.

(11) Faced with this proposition, learned counsel for the defendants contended that both the parties reside at Ludhiana, works for gain at Ludhiana, the plaintiff has not produced any convincing evidence of the defendants goods being sold outside Ludhiana and the alleged sale of single piece of soap will not confer jurisdiction on this Court to entertain the present suit. As already observed this argument is devoid of any substance in view of the fact of the defendant having advertised his mark in the newspaper widely circulated in Delhi and their having sold the product at Delhi. The parties may be residing or working for gain at Ludhiana but certainly the defendants have no right to get their goods sold within the Union Territory of Delhi. The bare denial of the defendant that they are not responsible for the advertisement in the newspaper is not by itself enough to deprive the plaintiff of their right to get the matter settled in this Court. No Explanationn is forthcoming as to why the defendants did not move in the matter after Coming to know of the publication of their mark in the newspaper. As per the admission of D.W.1 Sh. Surinder Pal, the defendants came to know of the publication in the Indian Express newspaper dated 5-12-79 when the plaintiff filed the present suit in this court, and even after coming to know of the publication the defendants did not send any letter to the newspaper for having published the same on behalf of the defendants. Even this witness has no guts to allege that the advertisement was given by the plaintiff in order to invoke the jurisdiction of this Court. In view of these circumstances, it cannot be held that this Court has no territorial jurisdiction to entertain the present suit.

(12) Even otherwise, the publication of the trade mark by the defendants in the Trade Marks Journal issued from Delhi can be said to be an infringement of the plaintiff's trade mark. Mark A is the advertisement which appeared in the Trade Marks Journal dated July 16, 1980 from Delhi. In view of the unreported Judgment in Suit No. 660177 Re: Jawahar Engineers (Pvt.) Limited v. Jawahar Engineering Company, decided by Prithvi Raj, J. on 23-8-78, the case of action in part can be said to have arisen in favor of the plaintiff in Delhi by the publication of the advertisement of the defendant's mark in the Trade Marks Journal and accordingly they are entitled to maintain the suit.

(13) As a result of the above discussion, I hold that the Delhi Courts have territorial jurisdiction to entertain and decide the present suit. This issue is, thereforee, decided in favor of the plaintiff and against the defendants. Issues NO. 5 & 7

(14) The defendant not only in his written statement but Also while appearing as D.W. I took up the stand that the trade M/s. Amar Soap Factory v. - - M/s, Public Gram Udyog Samiti mark a word and the device of cross sword is already requestered in the name of the Ganesh Flour Mills Company Ltd. under No. 113682 in respect of soaps duly advertised in the Trade Marks Journal No. 133. It is their further allegations that the plaintiff under these circumstances cannot claim to be the proprietor of the Talwar MARKA' label. In support of this contention, learned counsel for he defendant placed on record the certificate issued from the Trade Mark Registry in respect of the registered trade mark No. 113682 in class 3 in the name of The Ganesh Flour Mills Company Ltd. According to the learned coirnsel, the advertisement of the plaintiff's trade mark in the Trade Marks Journal Ex. Dwi 19 is identical with the trade mark already registered in the name' of The Ganesh Flour Mills Co. Ltd. and the plaintiff himself is being immitator cannot be allowed to have the relief of injunction asked for in the present suit. Reliance was placed on the provisions of Section 28 of the Trade Marks Act in this reward. On the other hand, the submission of the learned counsel for the plaintiff is that no such firm in the name of the Ganesh Flour Mills Co. Ltd., Dyalpur is in existence nor they have used this mark at any time. Admittedly, the onus of this issue was on the defendant. In my opinion, they have miserably failed to discharge this onus. The bare perusal of the certificate of the trade mark registry go to show that the aforesaid trade mark of Ganesh Flour Mills Co. Ltd. was last renewed for a period of seven years from 27-9-74; This Registration expired on 26-9-81. No worthwhile evidence has been produced if this very mark was got renewed at the expiration of the period by the Company or not. There is also nothing on record to show that The Ganesh Flour Mills Co. Ltd. at any time used this mark in respect of their product soaps. It is also not clear whether the alleged trade mark was meant for the washing soaps for which the plaintiffs have lodged their claim with the Trade Mark Registry. It is also not shown if at any point of time the soap under this trade mark were ever manufactured or sold in the market. No evidence has also been produced to show as to how the plaintiffs have copied the said trade mark aa neither the label nor Its colour scheme have been placed on record. The Company has not come forward to produce their books of accounts or the bills for having sold this product to a third person. In view of those circumstances, it is just not possible at this stage to infer from the production of the certificate that this mark was ever adopted or sold and if sold in what. type of labels and if: at all it was known to the public. As observed earlier, the period of the limitation of its mark having expired, the defendant cannot take advantage of the certificate.

(15) The defendant has also not led any other oral or documentary evidence on record to prove that any other person s using the impugned trade mark. D.W.1 while appearing for the defendant has not furnished any particulars about the name of the firm, the use of label and if so since when, by any person. Under these circumstances, I have no hesitation to hold that the defendant has .failed to discharge the onus of those issues and as such both .the issues are decided against the defendants. Issues NO. 2, 3,-and 4

(16) As these issues are.interconnected, they are being disposed of together.

(17) According to the allegations of the plaintiff, their firm has the exclusive right for the use of the trade mark and the wrapper Talwar MARKA'.They are the proprietors of the artistic label entitled Talwar MARKA' which is duly registered under No. A-7562/72 under the provisions of the Copy right Act. The said label is Ex. Public Witness 1/1. The defendant's label with the trade mark Talwar MARKA' is Ex DW1/A which according to the plaintiff has come in the market sometime in the year 1977. Before proceeding further it will be relevant to keep in mind that both the wrappers are exactly similar having same style, colour scheme and arrangement On one side of the two trade marks the photograph of one sikh gentleman and one non-sikh appear in the same manner. On the other side of the wrapper, there is a mention of Talwar MARKA' with the device of two cross swords, written in Urdu. On the third side of the wrapper Talwar MARKA' is written in Gurmukhi script and on the fourth side the Talwar MARKA' is written in vernacular language with a monogram of crosssword. According to the plaintiff, they are manufacturing and selling all kinds of soap's with the distinctive trade mark Talwar MARKA' since 1960. The plaintiff firm is also registered proprietor of the artistic label entitled Talwar MARKA' under he provisions of the Copyright Act and they have been using the wrapper with its mark since then. For the first time, their mark was registered for the whole of India in the year 1972. The defendant contest this claim and allege that nowhere in the plaint it has been mentioned that the plaintiff have been manufacturing washing soap or they are the proprietor of the trade mark Talwar MARKA' in their own right. In fact, according to the learned counsel the plaintiff himself is a Praetor of the label Talwar MARKA' with the device of cross sword and they cannot come forward and ask for the relief of injunction against the defendant using the same device of Talwar MARKA' on. their soap.

(18) Before deciding this controversy, it has 'to be kept in mind that the defendant admits the user of the trade mark Talwar MARKA' As to who among the parties has come first in the market for the manufacture and sale of the soap under the trade mark Talwar MARKA' is the question which now requires going into, and which of the party has copied the label. For the first time, the plaintiff served the defendant with a notice dated 1-8-77 vide Ex.D|WI|C. In this notice the plaintiff claims themselves to be the proprietor of the trade mark Talwar MARKA' on the device of cross sword in repect of soaps which stands registered under the Copyright Act. It is also alleged that the defendants have deliberately adopted a similar and/or identical trade mark in respect of similar description of goods i.e. soap with an intention to earn the valuable c and reputation of the plaintiff trade mark. Unfortunately in reply vide Ex. Dw I ID' the defendants instead of controverting the avernments, came forward with the plea that the said work of the plaintiff is not original in character and they have copied the said label from the get up and design of the label of the defendant. If that be the situation, certainly the defendant for reasons best known to them do not serve the plaintiff with any notice or file a counter claim. DW1 Sh. Surinder Pal, while appearing for the defendant, admitted in the cross-examination that there is no sikh gentleman holding the office of the Samiti and that the photograph of a Sardar appearing on their label Ex. DW1/A is not the officebearer of the defendant Samiti. Neither in the written statement nor while appearing for the defendant Surinder Pal furnished any Explanationn for inserting of a photograph of a sikh gentleman on their wrapper, whereas admittedly one of the partners of the plaintiff Sh. Surjit Singh is a sikh gentleman.

(19) Secondly, in the affidavit filed along with the reply to the plaintiff's application under Order 39 Rules I and 2 Cpc, Surinder Pal stated that the defendant soap being sold in the distinctive wrapper and under the artistic label has acquired invialable reputation which is evident from the sale figures. According to him, in the? year 1973-74 the sale figure of their. product was Rs. 1,29,895 which raised up to the figure of Rs. 7.89,437.50 in the year 1978-79. The intention of the defendant in filling the sale figure was to show that their product has acquired a valuable goodwill. However, while under cross-examination Surinder Pal was frank to admit that the defendants are using the trade marks Pari SOAP', Talwar MARKA', 'GEMINI', 'NIROL Soap and 'PRINCE SOAP'. He also admitted that the sale figures shown in his affidavit are the total sales of the soap manufactured by the defendants. It appears for that reason he did not bring along with him the books of accounts to show the exact sale of their product under the trade mark Talwar MARKA'. Out of the bill books produced by the defendants, Surinder Pal also admitted that the bill books relating to the year 1973 is different from the bill book relating to the year 1979. In view of these admissions, I do not propose to place any reliance on the sale figure of the defendant's product having acquired a reputation in the market.

(20) Unfortunately, the defendants have not challenged the plaintiff's registered trade mark Talwar MARKA' under the Copyright Act which is subsisting. Under section 48 of the' Copyright Act the register of Copyright has been held to be a primafacie evidence of the particulars entered therein and there is no reason to hold otherwise than that the plaintiff is not only the registered proprietor but also a prior user. It would be seen, thereforee, that as between two persons who applied to register the same mark or two nearly resembling mark, both marks being proposed to be used upon the same good a ordeserint the application which is prior in point of time, is, in the absence of any other circumstances, entitled to have his mark registered and to oppose the other mark being registered or if it has been registered, to have the entry expunged on the ground that it was wrongly made in the register. Admittedly, in the present case, the registered trade mark of the plaintiff has not been challenged by the defendants whereas the plaintiff has challenged the registration of the trade mark of the defendants which has since been published in the Trade Marks Journal. The proceedings before the Registrar, Trade Marks have since been stayed, awaiting the decision of the present suit.

(21) For the purpose of claiming the proprietorship of a trade mark it is not necessary that the mark should have been used for considerable length of time. As a matter of fact, a single actual use with intent to cohunesuch use 'to instant confers a right to such mark as a trade-mark. It is sufficient if the article with the mark upon it has actually become a vendible article in.the market with intent on the part of the proprietor to continue its production and sales.. It is not necessary that the goods should have acquired a reputation for quality under that mark. Actual use of the mark under such circumstances as showing an intention to adopt and use it as a trade mark is the test rather than, the extent or duration of the use. Even the priority in adoption an use .of a trade mark has been held to be a superior to priority for registration.

(22) In an action for passing off in order to succeed in getting an interim injunction the plaintiff has to establish user of the trade mark prior in point of time than the impugned user by the defendant.

(23) In the case in hand, the plaintiff not only proved by leading documentary evidence that he is the prior user. of the distinctive trade mark of Talwar Markov with the device of cross swords since 1960 but also the registered proprietor of the said trade mark under the Copyright Act. The plaintiffs are also in the continuous use of their product and intent to continue the same. The defendants having come in the trade subsequently with the similar trade mark having same colour scheme, get up, lay out and arrangement as that of the plaintiff's label can be said to be a delibrate attempt to deceive the unway class of purchaser to earn profit in illegal marner. In order to decide the question as to whether the plaintiff's right to a trade mark has been infringed in a particular case, the approach must not be that that in an action for passing off goods of the defendant as and for those of the plaintiff. In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two a'e to be considered. By placing the two marks side by side, it would be enough to assume 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. It is the case of the plaintiff that the. production of the plaintiff is generally purchased , illiterate persons, servants, workmen etc. and the sale of the goods by the defendants wrappers in question is likely to be passed off as. that of the plaintiff.

His apprehension appears to be justified, particularly when the 'defendant admit the similarity of the two designs. As per the provisions of the section 55 of the Copyright Act, where the Copyright in any work has been infringed, the owner of the Copyright is entitled to all such remedies by way of injunction damages, accounts etc.

(24) As a result of the above discussion, all the three issues are decided in favor of the plaintiff and against the defendants. Issue NO. 6.

(25) In para 11 of the plaint, it is alleged that the plaintiff is suffering financial loss as well as loss in its status and reputation due to the deliberate and illegal activities of the defendants. The plaintiff estimated the loss to his business to the tune of Rs. 1 lac. In sub para (iv) of para 15 the plaintiff also claimed the relief of rendition of defendants accounts of sales and profits earned by them on the sale of soap under the trade mark, wrapper entitled 'TALWAR MARKA'. Under Section 106 of the Trade & Merchandise Marks Act and as per the provisions of Section 55 of the Copyright Act, even though the plaintiff is entitled to claim the relief of 'accounts of the profits alleged to have been earned by the defendants by the sale of the soap under the infringed trade mark, but keening in view the long user of this product by both the parties, it will not be desirable to ask the defendants to render accounts, particularly when the defendants are selling soap under different trade marks. It will not be worth while to ascertain the sale of the soap under the impugned trade mark. It will be futile attempt to appoint a local Commissioner and to ascertain the sales under the impugned trade mark of the defendants This issue is, thereforee, decided against the plaintiff. Relief

(26) As a result of the above findings, the plaintiff succeeds and is granted a decree for permanent injunction against the defendants restraining them, their officers, servants, agents, representatives from infringing the plaintiff's registered copyright No. A-7562/72 by reproducing the plaintiff's artistic wrapper under the mark 'TALWAR MARKA'. The defendants, their servants, officers and agents are further restrained from manu facturing, selling, offering for sale or otherwise directly or indirectly dealing in soap under the trade mark 'TALWAR MARKA' with or without the device of swords. The relief of rendition of accounts is declined. However, in the circumstances of the case the parties are left to bear their own costs.


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