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Kumar Electric Works and anr. Vs. Olympia Home Appliances (P) Ltd. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtDelhi High Court
Decided On
Case NumberLetter Patent Appeal No. 98 of 1990 and Suit No. 15 of 1990
Judge
Reported in1992(1)ARBLR409(Delhi); 48(1992)DLT555
ActsTrade and Merchandise Marks Act, 1958 - Order 39, Rule 1; Code of Civil Procedure (CPC), 1908 - Order 39, Rule 1
AppellantKumar Electric Works and anr.
RespondentOlympia Home Appliances (P) Ltd.
Advocates: K.L. Aggarwal and ; C.V. Francis, Advs
Cases ReferredYork Trailer Holdings Ltd. v. Registrar of Trade Marks
Excerpt:
.....- order 39 rules 1 and 2 of code of civil procedure, 1908 - plaintiffs acquired goodwill in use of trade mark 'olympus' in respect of electric/electronic home appliances - defendants adopted trade mark 'olympia' for their electric iron and other electrical home appliances - plaintiffs are prior user and their sales have been soaring - plaintiffs got their trade mark registered with regard to electric flat irons - likelihood of deception - refusal of injunction would cause irreparable loss and injury to plaintiffs and also tantamount to permit fraud being practiced on unwary customers - application under order 39 rules 1 and 2 allowed. - - the plaintiffs .claim that their trade mark in relation to their electric flat irons as well as in respect of all electrical and electronic goods..........this was all in the hoary past. far removed from their historical glory, and reduced to mere trade-marks, today olympus and olympia are locking horns in law courts. (2) the plaintiffs have been using 'olympus' as trade mark for their electrical and electronic home appliances since the yeairl983. they got it registered on february 17, 1984 in respect of electric flat irons included in class 9 which, admittedly, is still subsisting. they have also made an application for its registration in class 11 and 7 and i am told that the same stands accepted for advertisement in the' trade marks journal. the plaintiffs .claim that their trade mark in relation to their electric flat irons as well as in respect of all electrical and electronic goods has acquired such distinctiveness and.....
Judgment:

Jaspal Singh, J.

(1) Some of the greater Greek gods had their abode in Thessalay, a mountain named Olympus. Olympus of the Greek gods is however, not to be confused with Olympia which was a district in Elis where Olympic games in honour of Olympian Zeus were celebrated. This was all in the hoary past. Far removed from their historical glory, and reduced to mere trade-marks, today Olympus and Olympia are locking horns in law Courts.

(2) The plaintiffs have been using 'Olympus' as trade mark for their electrical and electronic home appliances since the yeaiRl983. They got it registered on February 17, 1984 in respect of electric flat irons included in class 9 which, admittedly, is still subsisting. They have also made an application for its registration in class 11 and 7 and I am told that the same stands accepted for advertisement in the' Trade Marks Journal. The plaintiffs .claim that their trade mark in relation to their electric flat irons as well as in respect of all electrical and electronic goods has acquired such distinctiveness and reputation that it has come about to be exclusively identified and recognised with their said products. However, their grievance is that the defendants have adopted the trade mark 'Olympia' for their electric iron and other electrical home appliances which, it is asserted, is identical and/or deceptively similar to their own trade mark 'Olympus'. The plaintiffs claim that they came to know of it only through an advertisement of December 22, 1989 appearing in the newspaper The Hindustan Times. Hence their suit for perpetual injunction accompanied by an application for interim relief. The defense set up is as follows :

'OLYMPIA electronics Ltd. which has been in existence for over twenty years, floated a separate company by the name of Olympia Home Appliances Pvt. Ltd. in 1987. It first commenced manufacturing and marketing Olympia Hair Dryer in 1988 and thereafter other home appliances. It is claimed that its products are, as compared to the products of the plaintiffs, of superior quality, have succeeded in capturing foreign and home markets and that in any case the mark in question is neither identical nor deceptively similar.'

(3) The question at this stage being only of a temporary injunction, what is to be seen is as to whether there is any misrepresentation and if there is, is it of such a nature as to give rise to a possibility of confusion in the mind of the purchasing public. It is argued, on behalf of the defendants, that neither there is any proof of the public or a segment thereof having been deceived nor of any damage having been caused and, in any case, there can be no such possibility since the trade marks are so different and distinguishable from each other and also as defendant's goods happen to be, in comparison, far superior in quality. The defendant company, I am told, is the sister concern of a big company which has won laurels in foreign lands. What is implied to be conveyed, obviously, is that as against the plaintiffs the defendant is a giant company. Of course, I am also told that Olympia is the company name, and that, in any case, there being number of other companies using Olympia as their trade mark and the plaintiffs having not registered even a faint murmur in protest against those companies, no relief can be granted.

(4) The stage .being for interim relief, the plaintiff is neither required nor expected to prove actual deception, nor, for that matter, the damage actually caused. The passing off injures the right of property which, in turn, is right to the goodwill of one's business. That right, if likely to be invaded by misrepresentation, requires to be protected. It is thus not the actual deception or damage, it is its likelihood which matters. To quote Dankwerts J. :

'THE right of action known as a passing off action is not an action brought by the member of the public who is deceived but the trader whose trade is likely to suffer from the deception practiced on the public but who is not himself deceived at all.'

(Ballinger v. Costa Brana Wine Co. Ltd. 1960 Ch. 262.

(5) Almost a century ago Lord Lansdale Mr said :

'Aman is not to sell his own goods under the pretence that they are the goods of another man; he cannot be permitted to practice such a deception, nor to use the means which contribute to that end. He cannot, thereforee, be allowed to use names, marks, letters or other indicia by which he may induce purchasers to believe that the goods which he is selling are the manufacture of another person.'

(6) The statement won the approval of Lord Scarman in Cadbury Schiveppes Ply. v. Pub Squash Co. Pty .(1981) 1 All Er 213. Even before the Cadbury case. Lord Diplock had finely brought out the elements of the modern tort of passing off [See : E. Erven Warmik v. Townend & Sons, (1979) 2 All Er 927] and following Lord Parker in A.G. Spalding v. A.W. Gamage Ltd., (1915) 32 Rpc 273, he said the right the invasion of which is the subject of passing off is 'the property in the business of goodwill likely to be injured by the misrepresentation.' The plaintiff thus need not, not at least at the stage of interlocutory relief, prove any actual deception or damage or loss. The mere likelihood of the injury would suffice.

(7) The defendants may be a part of a large, influential and prosperous family and in comparison the plaintiff may be, as is said, 'a small fry'. So what In the domain of law a big fish needs sanction to eat a small fish. What the law protects, (and I know I am echoing the words of Lord Diplock in Erven Warnim v. Townend .and Sons, (1979) 2 All Er 927) by a passing off action is a trader's property in his business or goodwill. And, what is good- will Lord Macnaghten tells us that it is 'the benefit and advantage of the good name, reputation and connection of a business...the attractive force which brings in custom'[I.R.C. v. Mailer & Co's Margrine Ltd. (1901) Ac 217, 223. These, then, are the principles and they do not change even where one party is a corporate giant and the other no where near it.

(8) There may have been other companies carrying the name of Olympia. They may have also been trading under that mark but there is no material to establish prima fade that they are trading in electric and electronic home appliances. In any case, if there is imitation, it hardly presents a defense. And, in support I cannot do better than quote the words of my brother Anil DeySingh,J. This is how he meets the situation;

'Animetation remains an imitation whether it is done by many. It acquires no legitimacy. A wrong is not righted by the following it musters.'

(The Tata Iron & Steel Co. Ltd. v. M/s. Mahavir Steel and Others, I.A. Nos. 6215 and 8804 of 1990 dated February 25, 1992)'.

(9) The central question still remains and it is as to whether the marks in question are deceptively similar or so deceptively similar as to cause confusion in the mind of the general public commonly purchasing or using them. I have no doubt Olympus and Olympia a r J phonetically so similar as to meet all those requirements. The plaintiffs have acquired a reputation/goodwill in the use of the trade mark Olympus in respect of electric/electronic home appliances. They are prior user and their sales have been soaring. The plaintiffs have even got their trade mark registered with regard to electric flat irons. To refuse injunction under the circumstances would not only cause irreparable loss and injury to the plaintiffs but also tantamount to permit fraud being practiced on unwary customers. This is a matter of principle on which the Court cannot refuse the injunction.

(10) True, it is stated that the plaintiffs are pirater and that M/s. Olympia Optical Company Ltd. la joint stock company of.Japan) is a registered owner of the trade mark Olympus and that for that reason they were not entitled to any relief. This very question arose in Kumar Electric Works v. Anju Electronics 1989 (2) L.R 133 and was turned down. I need, for the present, say no more.

(11) The contention that the defendant has derived Olympia from its own name is also of no consequence. The fundamental question is whether there is a likelihood of deception of the public by the use of the particular name. If there is such a likelihood, the action would lie. The cause of action is complete with the representation. The defendant cannot escape by using or abbreviating its own name so as to lead to deception and in support I lean heavily on the observation made in B.K. Engineering Company v. U.B.H.I. Enterprises (Regd.) Ludhiana, Air 1985 210. It was said.:

'EVEN if a man uses his own name as to be likely to deceive and so to divert business from the plaintiffs to the defendants he will be restrained. Pears' soap is the stock example of this. A man named William John Pears cannot set up a soap business and call his soap 'Pears Soap'. He is not entitled to abbreviate his own name so as to lead to deception. Parker-Knoll 1962-R.P.C. 265 per Lord Denning. Another example I gave in the course of arguments was of Hamam Soap. On the cake it is stamped 'A Tata Product'.

IS it open to a rival trader to call his soap 'Tata Soap' simply because Tatas do not make 'Tata Soap' as such by name The fundamental question is whether there is a likelihood of deception of the public by the use of a particular name. If there is likelihood the complainant can being an action against the deceiver, the maker of the representation.'

(12) During arguments reliance was placed on behalf of the defendants on General Electric Co. v. The General Electric Company (1972) 2 All Er 507 go also on York Trailer Holdings Ltd. v. Registrar of Trade Marks (1982) A11 Er 257. Both the judgments have no application. While the first relates to a case where both the parties were registered proprietors of trade mark, the second was a case for registration of the trade mark. The in fire approach ft as thus required to be different.

(13) For the reasons recorded above I allow the application under Order 39 rules 1 and 2 and restrain the defendant, its servants, agents, dealers, representatives from manufacturing, selling, offering for sale or otherwise dealing in electrical home appliances under the impugned trade mark 'Olympia' under its trading style, containing the word 'Olympia' and passing off its said products under the said trade-mark or under any other similar and/or deceptively identical trade mark as that of the plaintiff till the disposal of the suit.

(14) Needless to say the order shall not be read as an expression of opinion on the merits of the case.


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