O.P. Dwivedi, J.
1.This order shall govern the disposal of IA.No. 6321/2000, which is under Order 39 Rules 1 and 2 CPC, filed by the plaintiff in suit No. 1376/2000 seeking ad interim injunction against the defendants restraining them from manufacturing and selling footwear under the trade mark v;wjor any other mark which may be deceptively similar thereto and from doing any other this as may lead to confusion and exception amounting to passing off the goods and business of defendants as and for those of the plaintiff. Plaintiff further seeks interim injunction restraining defendants from infringing the copyright in the artistic work titled v;wjhaving the particular lettering style, get-up, design, layout and plan.
2. The plaintiff M/s Three-N-Products has filed this suit under Section 105 and 106 of the Trade & Merchandise Marks Act, 1958 (for short the Act) and under Section 55 of the Copy Right Act 1957 pleading therein that the plaintiff which was earlier a partnership firm and later on converted into a Private Limited with effect from 1.1.1993, is a renowned manufacturer of cosmetic products including creams, skin care lotions, shampoos hair care treatment material, health care tea etc. On 1st April, 1984 plaintiff adopted the trade mark AYUR in respect of their afore mentioned goods and further the plaintiff is the registered proprietor of the trade mark AYUR in the following classes:
S.NO TRADE MARK TRADE MARK NO. CLASS1. AYUR 421919 32. AYUR 504095 53. AYUR 548522 164. AYUR 536257-B 295. AYUR 536258-B 306. AYUR 536261 33
3. Besides the plaintiff has also filed an application for registration of trade mark AYUR under No. 842840 in class 25 of schedule IV to the Rules. The plaintiff's artistic work AYUR is also registered under the provision of Copyright Act under No-53528/96 and the said registration is still valid and subsisting. It is pleaded that the plaintiffs are the owners of the artistic work titled AYUR having a distinctive get-up, lay out, plan and lettering style. The said artistic work is being continuously, extensively and exclusively used since the year 1984. The plaintiffs have given a vide publicity to the trade mark AYUR through various advertising media including T.V., Radio, Newspapers, Magazines, periodicals, etc and the goods sold under the impugned trade mark AYUR connote and denote the goods and merchandise of the plaintiffs origin and none else. The sales of plaintiffs goods under the trade mark AYUR runs into crores of rupees. The trade mark AYUR has acquired unique reputation and valuable goodwill in the eyes of the public.
4. It is alleged that in the month of June 1998, the plaintiff learnt about the piracy of the trade mark AYUR in relation to footwear by one M/s Bangri Footwear and one M/s K.K. Footwear. The plaintiff, thereupon, filed suit No. 1304/98 wherein a restraint order was issued against M/s Bangri Footwear and M/s K.K. Footwear restraining them from manufacturing and selling footwear under the trade mark AYUR or any other mark which may be deceptively similar thereto. The plaintiff has come to know in the 3rd week of June, 2000 that the defendant is manufacturing, selling and/or offering for sale footwears under the trade mark v;wj and have also imitated the artistic work of the plaintiff because over all appearance get up, layout, style are identical is and/or deceptively similar to those of plaintiffs registered trade mark v;wj It is alleged that all the essential features of the plaintiffs copy right has been copied and imitated on the products manufactured and marketed by the defendants which amounts to infringement of the trade mark and infringement of copy right. Such acts of the defendants are not only calculated to deceive the customers and to cause them to believe that the goods of the defendants are produced by the plaintiffs or that the defendants are in some way associated in business with plaintiffs and this is being done with malafide intention to take advantage of the goodwill and reputation of the plaintiffs trade mark. This act of the defendants amounts to passing off goods of defendants as those of the plaintiff. The defendants did not desist from this objectionable use of the plaintiffs trade mark on their goods despite plaintiffs request and hence the suit. Plaintiff seeks a permanent injunction restraining the defendants from using the trade mark v;wj in respect of their footwear and from using the artistic work and copy right in the said trade mark and also from passing off their goods as of those of the plaintiffs. Besides decree of rendition of accounts and for delivery of objectionable material for the purpose of destruction is also sought.
5. Along with the suit the plaintiff also filed an IA. being No. 6321/2000, under Order 39 Rules 1 and 2 CPC seeking ad interim injunction to the same effect. This Court vide its order dated 29th June, 2000 issued an ex parte, ad interim injunction as prayed. The defendants have contested the application. In their reply dated 1st December, 2000 they have pleaded that the trade mark AYUR is not registered in the name of the plaintiffs in respect of Shoes, chappals kid footwears, ladies footwear under class 25 of schedule IV of the Act. thereforee, there is no infringement of trade mark as such in view of Section 29 of the Act. It is further contended that the word AYR is of generic and descriptive nature as it denotes something relating to traditional Indian science of health or medicine known as Ayurved and such a generic and descriptive word cannot be registered as a trade mark under Section 9 of the Trade Mark Act. Besides it is contended that the goods of the defendants viz. footwear are vastly different from those of the plaintiff and there is no likelihood of confusion and deception being caused on any customer. It is further the case of the defendants that they are using the said trade mark AYUR in respect of their goods viz. Shoes, chappals, kid footwears, ladies footwear since 1994 so they are entitled to protection of Section 33 of the Act. It is also contended that the suit suffers from delay, acquiescence and latches on the part of the plaintiff is as much as the defendants are using the said trade mark AYUR on their footwear since 1994 and the plaintiffs have falsely alleged that they came to know about it only in the month of June 2000. Further, defendants have also applied for registration of the said trade mark AYUR in respect of foot wear vide No. 706162. Defendants business in the footwear has been consistently rising and their products have acquired good will and reputation in the market as is reflected from the sale figure details whereof are given in para 8 of the reply. Besides, there are so many other traders who are using the trade mark AYUR so the plaintiff cannot claim monopoly over the use of such a generic and descriptive word. It is thus contended that plaintiff has not made out prima facie case for exclusive use of the trade mark AYUR in respect of foot wear. The balance of convenience also lies in favor of the defendants who are already in business for last six to seven years as the injunction would practically ruin their business.
6. I have heard learned counsel for the parties and perused the record.
7. From the above recapitulation of the pleadings of the parties, the undisputed factual position which emerges is that although the plaintiffs are registered proprietors of the trade mark AYUR for various classes of goods enumerated in para 4 of the plaint, they are not holding any registered trade mark in respect of footwears which falls under class 25 of the schedule IV of the Act nor they are actually using it for footwear. So in view of Section 29 of the Act no case for infringement of registered trade mark in made out. What remains to be seen is whether, in the circumstances of the present case, an action for passing off is maintainable.
8. Going by the first principles, it can be said as a fundamental premises that whenever there is an attempt to imitate others trade mark, style or the artistic work, the idea is obviously to cash on the goodwill, reputation and popularity of the said trade mark. Even if the trade mark consists of a generic or descriptive word its use by some other person in exactly the same fashion and style would unmistakably mean that the latter is trying to exploit the name and fame already earned acquired by the trade mark and the style/design in which it is presented. Even a common language word with a meaning can be exclusively appropriated as a trade mark by a party if it is established that the word has acquired secondary significance that it to say, a different meaning other than the primary meaning in the language. Reference in this regard may be made to a decision of this Court in the case of Globe Super Parts v. Blue Super Flame Industries AIR 1986 Delhi 245 wherein it was held that even a common language word can be exclusively appropriated by party as a trade mark if the said word has acquired a secondary significance but in the case of a word which is coined, fancy, new or meaningless the claim to exclusive appropriation is sustainable without the need to prove existence of secondary significance. Secondary significance here would mean that the word has acquired a special meaning as denoting the goods of particular manufacturer or trader.
9. In that case the facts were that the plaintiff was manufacturing and marketing gas appliances since the year 1968 under the trade mark ' SUPERFLAME '. It was alleged that ' SUPERFLAME ' has become a distinctive mark for the plaintiffs business and that it has a considerable reputation in relation to the gas appliances. The word ' SUPERFLAME ' connotes the product of the plaintiff exclusively, thereforee, its use by any rival trader as part of its business name or in relation to its goods is likely to lead to confusion and deception and resultant passing off such trader's business and goods as the business and goods of the plaintiff. In that case the defendant concern ran a similar business under trade mark Blue Super Flame Industries. The defendant's contention was that the word Super Flame comprises of two common English words namely Super and Flame so nobody can claim monopoly or exclusive right over it. It was held by the learned single Judge of this Court that in the trade mark of the plaintiff the word ' SUPERFLAME ' is written as one single word starting with a capital 'S'. It is not descriptive of any natural object or phenomenon. Yellow Flame, Red Flame, Blue Flame do exist in nature but this cannot be said of Super Flame. ' SUPERFLAME ' is not part of ordinary language because ' SUPERFLAME ' as one word is not to be found in authoritative English language dictionary. Repelling the contention that the word ' SUPERFLAME ' is a common language word in para 73 of the judgment, it was observed as under:-
While dealing with appropriation of words either with reference to Trade Mark Law or Copyright Law, what has to be first seen is whether the word in question exists in the language. It is then to be seen whether the word in question is a combination of two or more words. The important thing to bear in mind is actually not whether it is a combination of two or more words but whether the word in question is used by the author/owner of its as the single word or not. It the author uses the word in question is a single word, I am of the view that it is not permissible to break up that single word into its component parts. I am further of the view that it is not permissible after the word has been broken up into its component parts to say that it consists of either two or more words, which are common language words. This so because what has to be seen in trade Mark Law is a 'connection in the course of trade', and in the copyright laws, what one is concerned is to determine whether the person who has created the new fancy or invented word combination has expended his skill and his labour upon the creation of the word combination. Any person who is desirous of identifying himself with a particular word, which he has created, does so only for the purposes of establishing the sole connection with the article to which it is applied. The skill of the person who creates a new word lies in making the word so simple that the simplest of those who would be interested in procuring the 'articles to which that word is applied, or those interested in purchasing the book to which the word/name has been given as a title would immediately register it in his mind for future reference.'
10. It was further observed that the mere fact that the word SUPERFLAME suggests a meaning by itself is its virtue and would not in any way denigrate amount of skill and labour spend in thinking it up and giving it expression. It is important to bear in mind that impugned trade mark in this case is v;wj written in Hindi which the defendants have stated using on their product viz. the footwear. The word v;wj which is the impugned trade mark does not find place in the Hindi language dictionary nor it is a common language word in Hindi. Learned counsel for the defendant referred to the Oxford Hindi English Dictionary wherein Hindi word vk;qj appears which means something relating to traditional Indian science of health and medicine viz.Ayurveda. It starts with a prolonged pronunciation of Hindi letter vk (a) which is different from the small pronunciation of v (a) appearing in the impugned trade mark. The next letter ;w has a prolonged pronunciation of (oo) in the impugned word v;wjwhereas in vk;qjit is a small pronunciation (U). vk;qj is a meaningful word in Hindi language meaning something relating to Ayurveda but v;wj is meaning less. Since v;wj is not a part of common Hindi language or dictionary it should be held to be an invented, corned, new word and the claim to its exclusive appropriation is sustainable without the need to prove the existence of any secondary significance, as propounded in the case of Globe Super Parts(supra).
11. Learned counsel for the defendant referred to a decision of learned single Judge of this Court in the case of Three N Products Pvt. Ltd., v. Pardesi General Store and Ors. 2000 PTC 489, wherein the plaintiff had filed an application under Order XXXIX Rules 1 and 2 CPC seeking interim injunction against Pardesi General Store & Ors and others who were marketing Ayurslim Tablets under an umbrella brand ayurvedic concepts. In that case the learned single Judge while dealing with the question as to whether Ayur is generic/descriptive or a fancy, invented word has observed that the word ayurvedic occurs in Oxford Hindi English dictionary as meaning the traditional Indian science of health and medicines. On a thorough study of said judgment, I find that learned single Judge has not recorded any specific finding that the word v;wj in Hindi is of generic or descriptive nature and thereforee incapable of exclusive appropriation by a party. Rather interim injunction in that case was declined because on a visual comparison of trade mark and logos learned single Judge came to the conclusion that there is no over all similarity between the two and products. The defendant's product was tablet whereas the plaintiff's product was a tumbler. Besides the trade names, the logos essential features art work, colour combination, lay out were also different.. Learned single Judge was of the view that there is no likelihood of nay confusion or deception being created in the mind of the purchaser. Ayur written in English can be as v;wj as well as vk;qj unless metrical prolongations intervals are also specified. If Ayur written in English is read as vk;qj in Hindi it could be argued that it is a generic or descriptive word denoting something relating to Ayurveda. But this does not apply to v;wj in Hindi. No customer having an elementary knowledge of Hindi. No customer having an elementary knowledge of Hindi will relate the word v;wj to Ayurveda. In the present case, the impugned trade mark v;wj in Hindi and no Ayur written in English which was the subject matter of comment in the case cited by learned counsel for the defendant. thereforee the said decision is no authority for the proposition that v;wj is not an invented word. For the reasons already given, I am of the view that v;wj is a invented word capable of exclusive appropriation by a party without proof of its having acquired secondary significance.
12. More over in the present there is ample proof indicating prima facie that plaintiff's trade mark v;wj has acquired a distinctive identity as denoting plaintiff's product. In para 8 or the plaint the plaintiff has given year wise sales and the the amount spent on advertisement right from 1984-85 to 1999-2000 which shows that the sales as well as the expenditure on advertisement has been steadily increasing year to year except the year 1985-86 and 1994-95 when the sales had shown a down ward trend. In the year 1999-2000 the plaintiff's sales amounted to Rs. 22.214.171.1241.00 and the expenditure on advertisement was to the tune of Rs. 46,68,865.00. Plaintiff has filed copies of the bills, cash memos and invoices showing sales of the various products under the trade mark v;wj right from the year 1985 onwards up to date besides several other bills from the different advertising agencies. Under the circumstances it can be safely inferred that over the years the plaintiff have built up a great reputation and good will in the said trade mark and a distinctive identity for its products in the market. thereforee, even if v;wj is held to be a common dictionary word it has become capable of exclusive appropriation by the plaintiff because it has earned enormous good will, reputation and distinctiveness which means a secondary significance as goods of the plaintiff and thereforee it appears to me that prima facie, the plaintiff is entitled for injunction against its mis-use in an action for passing off.
13. Learned counsel for the defendant referred to another decision of this Court in Relaxo Rubber Limited and Another v. Aman Cable Industries and another 1998 PCT (18) . In that case the plaintiff was the registered owner of the trade mark Relaxo for footwear. Defendant started using the same trade mark for manufacturing and selling PVC pipe. Learned single Judge in that case came to the conclusion that Relaxo is not an invented, fancy, new word. Rather it is just a variation of a common dictionary word relax which thereforee cannot be exclusively appropriated by a party. Some other cases which were cited on behalf of the plaintiff in that case related to the famous trade mark like Caltex, Bata, Benz were distinguished by the learned single Judge on the ground that all those trade marks were invented coined words thereforee in such cases injunction was granted by the Court although goods marketed by the parties were altogether different. For the same reasons other cases cited by the learned counsel for the defendant in this case viz. Nestle's Products Ltd. v. M/s Milkmade Corporation and Anr.- : AIR1974Delhi40 ; M/s Hindustan Pencils Ltd., v. Aptudet Industries 1991 PTC 204; United Brothers v. United traders 1997 (17) PTC 603; Vishnudas trading as Vishnuda Kishendas v. Vazir Sultan tobacco Co. Ltd 1996 (16) PTC 512 are clearly distinguishable from the present case because in all these cases the trade marks did not involve any new coined, invented words. In the present case the word v;wj has been held to be invented, coined word as it does not form part of the Hindi language dictionary nor it is a word of common Hindi language and is a meaningless word. Plaintiff can legitimately claim exclusive right to use such a word as its trade mark to he exclusion of all others, even though goods marketed by such other parties may be totally different. In the case of London Rubber Co. Ltd. v. Durex Products : 2SCR211 , the facts were that the respondent therein had applied for the registration of the trade mark in relation to the contraceptive manufactured and marketed by it. Respondent in that application claimed proprietorship in respect of the said trade mark by virtue of its user since 1928. This said application for registration was filed by the respondent on 28th May 1946. The appellant filed objections to the said application. The stand taken by the appellant was that they are well established manufacturers of surgical rubber goods and proprietor in India of trade mark Durex which they have been using in India since the year 1932. On 23rd December, 1946 the appellant also applied for registration of Durex in class 10 which application was granted on 11th July 1951 and the registration was renewed for further period of 15 years. On 24th July, 1954 Deputy Registrar over ruled the objection of the appellant and admitted the respondent's mark Durex to registration. Appellant preferred an appeal before the Calcutta High Court under Section 76 of the Trade Marks Act, 1940. T he said appeal was dismissed by the Division Bench on 9th March 1959. The appellant filed SLP before the Supreme Court. Hon'ble Supreme Court upheld the order of the Deputy Registrar and the High Court because it was found on facts that there was honest and concurrent user of the said trade mark by the respondent since 1928. Besides Durex was the name of the company itself and normally a company should be entitled to use is own name unless there be very cogent reason against it. Honest and concurrent user for such a long duration of time weighed heavily in the mind of the Court in allowing the registration. This case is also distinguishable form the present case on facts. In the present case the defendants started footwear business under the trade name v;wj only recently in the year 1994. Besides, the user of the trade mark v;wj which is identical with that of the plaintiff both in the trade names will as the artistic work cannot but be said to be dishonest. So the observations made by the Supreme Court in the case of London Rubber Co. Ltd (Supra) do not support the defendant's case in any way.
14. As already noticed the word v;wj is an invented, meaningless new word which neither finds pace in the Hindi language dictionary no it is a common language word. Besides it has assumed secondary significance as denoting the goods of the plaintiff. thereforee a passing off action in respect of its misuse can be maintained by the plaintiff.
15. Learned counsel for the defendant has contended that the field of activity of the parties in this case is totally different. The plaintiff deals in herbal cosmetics whereas the defendant is dealing in footwear. thereforee, there is not even a remote possibility of any confusion or deception being caused in the mind of an unwary purchaser that the footwear being marketed under the trade mark v;wj is a product of the plaintiff. In support of his contention learned counsel for he defendant cited the case of Sony Kabushiki Kaisha v. Shamrao Maskar and Ors.-Arbitration Law Reporter 1984 page 38 wherein the registration of similar trade marks for altogether different kinds of goods was permitted. It is no doubt true that earlier the test of field of activities being different was almost decisive. If the filed of activities of the parties were vastly different then the possibility of any confusion or deception being caused to an unwary customer was axiomatically taken to be nil but of late this line of thinking has under gone a sea change. In the case of Essel Packaging Limited and others v. Essel Tea Exports Limited 1999 (19) PTC 521, the facts were that plaintiff group of companies were carrying on business of manufacturing packaging material since 1992. After some times, the defendant also started the business of tea export under the name and style of Essel Tea Exports Limited. When plaintiff brought a suit for injunction restraining the defendant from passing off their business as that of plaintiff the main defense taken by the defendant was that they are entirely in different field of activity so there is no likelihood of any deception or confusion being caused to the customer and, thereforee, action for passing off goods or business is not maintainable. Repelling this contention Bombay High Court observed as under:-
14. In the present case also, one of the points which arises for determination is the controversy pertaining to common field by activity. It is the case of the Defendants herein that they are in the Tea Export Business whereas the Group of Companies of the Plaintiffs are not in Tea Export Business. IT is also contended that even one of the Companies which is in the Tea Export Business does not bear the name 'ESSEL' and in the circumstances, the Plaintiffs are not entitled to an interim injunction in passing off action. This argument was also advanced in the case of Kirloskar Diesel Recon. Pvt. Ltd. (supra) and it was rejected by Jhunjhunwala, J. by observing that the expression common field of activity is not conclusive for deciding whether there can be a passing off action although at one point of time the said test was treated as conclusive. With the passage of time the law on requirement of common field of activity in a passing of action has radically undergone a change Judge, there is no requirement for a common field of activity to found a claim in passing off because the real question in each of such cases is whether there is as a result of misrepresentation, a real likelihood of confusion or deception of the public and consequent damage to the plaintiffs is likely to be caused and if that is the text then the focus is shifted from the external objective text of making comparison of activities of parties to the state of mind of public in deciding whether it will be confused. Applying the text of misrepresentation, the learned single Judge Jhunjhunwala J. observed that the business activity of the Plaintiffs, namely, 'Kirloskar Group of Companies which vary from pin to piano as borne out from the object Clauses of the Memorandum of Association is likely to create confusion if the Defendants business activities are allowed to be carried out in the name of Kirloskar Diesel Recon Pvt. Ltd. because in the case of trading name which has become almost a household word and under which trading name a variety of activities are undertaken, a passing off can successfully lie if the defendant has adopted identical or similar trading name.
15. In the case of Bajaj Electrical Ltd. v. Metals & Allied Projects : AIR1988Bom167 , the Division Bench of this Court while granting injunction has observed that it is always in the interests of fair trading and in the interests of all who may wish to buy or to sell goods, the law recognises that certain limitations upon freedom of action are necessary and desirable. In some situations the law had to resolve what might at first appear to be conflicts between competing right. In solving the problems which have arisen there has been no need to report to any abstract principles but rather to the straight forward principles that trading must not only be honest but must not even unintentionally be unfair.
16.Now applying the text made out by the above two decisions of this Court to the facts of our case, the letters referred to here in above clearly indicate that the members of the public have been misled by the use of the word 'ESSEL' in the corporate name of the Defendants Essel Tea Exports Ltd. Apart from the letter, issuance of advertisement inviting public to participate in the issuance of shares and photograph of the advertisement issued by the Directors of the Defendants clearly indicate that the above tests laid down by this Court and fully satisfied. The facts have been narrated at length by this Court in earlier paragraphs.'
16. Likewise in several other cases where field of activities of the parties were different the action of passing off was entertained for using similar or deceptively similar trade mark. Reference in this connection be made to:-
1. AIR 1994 Delhi 329
Daimler Benz A.G.V. Hybo Hindustan(Mercedes Benz)
2. 1998 (18) PTC 545Ciba Geigy Limited and Anr. v. Surinder Singh and Ors.
3. (1983) F S R 155Lego System Aktiselskab and Anr. v. Lego M. Lemelstrich Limited.
4. 16 RPC 12The Dunlop Pneumatic Tyre Co., Ltd., v.The Dunlop Lubricant Co.,
5. Banga Watch Company v. N.V. Philliphs,Eindhoven, Holland and Anr.
6. : AIR1985All242 Bata India Limited v. Pyare Lal & Co.,
7. 2000 RPC 484C.A. Shimer (M) SPN BHD's Trade MarkApplication.
8. (1924) 41 RPD & TMC 74Harrods Limited v. R. Harrod Limited.
17. In these cases passing off action was entertained and the infringer were restrained from using the offending trade mark even though the goods produced by the two parties were altogether different. While dealing with the question of field of activities of two parties being different Division Bench of High court of Bombay in the case of 1998 (18) PTC 47 observed in para 61 as under:-
61. Taking into consideration various cases cited by both sides we are of the opinion that the crux of the passing off action lies in actual or possible or probable deception. The plaintiffs necessarily has to establish reputation and goodwill. In quia timet action he must also show the probability of the plaintiffs suffering damage either in trade or to his goodwill and reputation Deception may be of several kinds i.e. that the public may think that the goods manufactured by the plaintiffs or that there is some trade connection or association of the defendants with the plaintiffs it is also clear that the trans border reputation has been recognized by the Indian Courts and as a matter of a law it is not necessary to prove the actual sale, if by other material presence of the plaintiffs in India and good will and reputation in India is demonstrated. It is also clear to us that as a matter of law the 'common field of activity' is not required tube established. However, as the crux of passing off action lies in possible deception, the existence of common filed of activity is always a relevant consideration. If there is common field of activity, possibility of deception is very high and if there is no common filed of activity possibility may be less, but it cannot be laid down as a rule of l was that there can be no possibility at all. Thirdly and more importantly, all these issues ultimately will depend on the facts and circumstances and the material on record of each particular case, as to whether the plaintiff has established the goodwill or reputation, whether the plaintiff has established the trans-border reputation, whether the defendant has caused misrepresentation innocently or deliberately and whether the plaintiff has suffered damage or is likely to suffer damage in quia time action will be questions of fact to be determined by the Court. It is also clear that if it is shown that the defendant intended to deceived, the burden would be much lighter on the part of plaintiff. The existence of unexpected and unexplained similarities between the goods of the defendant and the plaintiff or lack of Explanationn or false Explanationn for adoption of name by the defendant, maybe extremely relevant.'
18. In the case of Alfred Dunhill Limited v. Kartar Singh Makkar and Ors. 1999 PTC 294, the facts were that the defendant had imitated the trade mark of multinational Alfred Dunhill Limited on different kind of goods. Learned single Judge of this Court in para 12 had observed as under:-
12. In the suit of instant nature, the real test is whether defendants have any right to represent their business as the business of plaintiff. It ultimately leads to the question as to why defendants were using the trade name DUNHILL to their products. The defendants have not, offered any Explanationn whatsoever as to why the mark DUNHILL was being used by them.The name DUNHILL is neither parental name of defendants nor in any way connected with them. As noticed earlier, the mark DUNHILL is attributable to the surname of Alfred DUNHILL. All of the goods marketed by plaintiff company are sold under the trade mark and trade name DUNHILL. The trade mark and trade name DUNHILL has become distinctive of the plaintiff's goods as a result of substantially exclusive and continuous use in commerce since 1893. Thus, in my opinion, the user of the trade name DUNHILL by defendants is indicative of their intent. It follows that defendants desire to market their goods under the name of mark DUNHILL with a view to trade upon and encash on the name, fame, reputation image and goodwill acquired by the plaintiff company.'
19. Several other authorities can be cited in support of the proposition that where a particular party is using a new, coined, fency, invented word as its trade mark which has acquired some good will and reputation, it can be exclusively appropriated by such party. The user of same or similar trade mark by any other trader will amount to passing off his goods or business as that of the first party unless of course such user by the other party appears to be innocent, honest. The intention of the trader in adopting the trade mark of an other trader is of paramount importance in such cases and if the intention appears to be dishonest viz. to encash upon the goodwill, reputation of the other's trade name an injunction to prevent passing off goods or business shall be granted no matter whether the goods marketed by them are similar or different. In the case of Apple Computer Inc. v. Apple Leasing & Industries 1992 (1) A L R 93 where both the parties were using the word Apple which by itself is not a invented word and were operating in different fields of activities, the learned single Judge of this Court had issued permanent injunction restraining defendants from using the word Apple or Apple Computers in the course of their trade because from the circumstances of the case the Court came to the conclusion that the user of the similar trade name by the defendants was not innocent. The Explanationn offered by the defendants regarding the use of the word Apple for their trade name which was similar to that of plaintiff was no found to be satisfactory. Rather it appeared that the defendants had adopted the word Apple Computer in their filed of activity with the intention of create subtle association between the plaintiff's Apple Computer and their own activities. In the case of Surjit Singh v. M/s Alembic Glass Industries Ltd., : AIR1987Delhi319 , another learned single Judge of this Court observed that if the adoption of similar trade mark by the defendant is found to be dishonest, it will certainly disentitle the defendants from any protection from the Court. Similar observation were made by the Division Bench of the High Court of Bombay in the case of Aktiebolaget Volvo v. Volvo Steels Limited 1998 (18) PTC 47.
20. In the present case defendants in their written statement have not offered any Explanationn whatsoever for adopting the trade mark v;wj in the same fashions and style as that of the plaintiff. The trade the defendant is an exact replica of the plaintiff's trade mark v;wj . It cannot be sheer co-incidence. Assuming that v;wj is a common dictionary word, its adoption by the defendant in exactly the same style, design, get up as that of the plaintiff would prima facie indicate that in doing so the defendant was motivated by the desire to cash on the popularity, goodwill and reputation of the said trade mark. Such user cannot be said to be honest, innocent user. In the case of Hindustan Pencils Pvt. Ltd., v. India Stationery Products Co- : AIR1990Delhi19 , learned single Judge of this Court held that if the Court comes to the conclusion that prejudice is likely to be caused to the general public who may be misled into buying the goods manufactured by the defendants thinking them to the goods of the plaintiff, then the injunction must be issued as such user of the trade mark by the defendant will be fraudulent. Similarly in the case Globe Super parts, v. Blue Super Flame Industries AIR 1986 Delhi 245, learned single Judge of this Court had issued permanent injunction restraining defendants from using the word 'superflame' in their business name.
21. Viewed in this legal and factual perspective, if stands established prima facie that the user of the trade v;wj mark by the defendants is dishonest as it is purely with the idea of exploiting the goodwill, reputation and popularity of the plaintiff's trade mark who are in the business since 1984 i.e. much before the defendants commenced their footwear business in 1994. In view of the law laid down in the cases referred to above, the factor alone should be sufficient to injunct the defendants. The trade mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else's reputation : AIR1994Delhi239 .
22. It was next contended by learned counsel for the defendant that there is an inordinate delay in filing the suit and this has given rise to some equities in favor of the defendants. It was submitted that granting injunction at this stage would lead to certain closure of defendant's business. The present suit was filed on 28th June 2000. According to the averments contained in para 18 of the plaint, plaintiff came to know for the first time in the third week of June 2000 that the defendants are misusing the said trade mark illegally. In the written statement the defendants have not disclosed any earlier point of time from which the knowledge of the misuse of the trade mark by the defendants could be attributed to the plaintiff. Thus prima facie their appears to be no delay on the part of the plaintiff in approaching this Court by filing the suit. The question of latches or acquiesces does not arise. It is not alleged by the defendants that the plaintiff had come to know about the use of the said trade mark by the defendants on any earlier point of time but the plaintiff ignored it or encouraged the defendants to carry on the misuse of the trade mark. In the case of Hindustan Pencils Pvt. Ltd., v. India Stationery Products Co. : AIR1990Delhi19 , it was held by this Court that if the defendant acts fraudulently with the knowledge that he is violating others rights in that trade mark, the relief of injunction will not be denied to the plaintiff even if there is an inordinate delay on the part of the plaintiff in taking action against the defendants because in such cases interest of the general public has to be safeguarded. It was further observed by this Court that where there is an honest concurrent user by the defendant then inordinate delay or laches may defeat the claim for damages or rendition of accounts but the relief of injunction should not be refused because it is the interest of the general public which is the third party in such cases, which has to be kept in mind. Inordinate delay and laches may be there because the plaintiff may not be aware of the infringement by the defendants as not being serious enough to hurt the plaintiff's business. This notwithstanding, if the Court comes to the conclusion that prejudice is likely to be caused to the general public who may be mislead into buying the goods manufactured by the defendants thinking them to be the goods of the plaintiff then an injunction must be issued.
23. As already noticed according to the averments contained in the plaint, the plaintiff came to know about the alleged misuse of the trade mark only in the 3rd week of June 2000. Thus there is no delay on the part of the plaintiff in filing the suit. The defense of acquiescence on the part of the plaintiff is not available to the defendants in this case as written statement does not contain any allegation to the effect that the plaintiff had come to know about the alleged misuse on any earlier point of time but had ignored the same or encouraged the defendants to continue the misuser.
24. It is also the contention of the defendants that many other parties have applied for registration of trade mark AYUR. The details of some of these pending applications are given in para (L) of the preliminary objection of the written statement of the defendants. It was, thereforee, contended that AYUR has become common word in the market in respect of various goods and thereforee plaintiff cannot claim exclusive right over the same. The defendants have not given the requisite particulars viz. name of the parties, the type of goods they are dealing in. In absence of such details it is not possible to conclude that the mere act of filing of application for registration will prove the actual user of the said trade mark by the said applicants. In the case of Century Traders v. Roshan Lal Duggar & Co : AIR1978Delhi250 it was held that mere presence of the trade mark in the register maintained by the trade mark registry did not prove its actual user by the person in whose name the mark was registered or sought to be registered. The other parties who are alleged to have applied for registration of the trade mark AYUR in respect of their goods are not before the Court nor they are claiming any relief against the plaintiff and vice a verse. Hence, the defense that other persons are also using trade mark is not available to the defendants ( Indian Shaving products Ltd. v. Gift Pack and another 1998 PTC 698.
25. At the time of the argument learned counsel for the defendants submitted that the defendants are ready and willing to change the art work/style of his trade mark v;wj so as to make it look different from plaintiff's trade mark and this plea is also contained in para (n) of the preliminary objections in the written statement filed by the defendants. This indicates that the defendants themselves have realised that the trade mark v;wj adopted by the defendants in the same design and style as that of the plaintiff is likely to cause confusion/deception in the mind of buyers that the goods marketed by the defendants are those of the plaintiff or defendants business is somehow associated or connected with that of the plaintiff. Moreover, in view of my findings that defendants use the trade mark will invite passing off action, the mere offer of changing the art work style or design will not be sufficient to meet the end of justice and the injunction as prayed by the plaintiff should be issued in the circumstances of the present case. Defendants are comparatively new entrants in the trade so the inconvenience caused to them in the changing their trade name would be much Lesser than the inconvenience that could be caused to the plaintiff by defendant's misuse of the trade mark and passing off their goods as that of the plaintiff. Further it will not be possible to evaluate exactly to what extent the defendant's misuse of the plaintiffs trade mark has adversely affected the plaintiff's business, its goodwill, reputation and popularity. Thus there would be no exact measure to determine the loss that would be caused to the plaintiff. thereforee, it can be safely inferred that irreparable loss would be caused to the plaintiff if the injunction as prayed for is not granted.
26. For these reasons the application being IA.No. 6321/2000, under consideration, is allowed. The defendants, their dealers, stockists are hereby restrained from manufacturing and selling footwear under the trade mark v;wj or any other mark which may be deceptively similar thereto and from doing any other thing as may lead to confusion and deception amounting to passing off the goods and business of defendants as and for those of the plaintiff and also from infringing the copy right in the artistic work titled v;wj during the pendency of the suit.
27. The observations made herein are only tentative in nature and nothing contained herein shall be taken to be expression of the opinion on the merits of the case which would be decided after trial.