M.L. Bhat, J.
1. In a suit for infringement of Copy Right, passing off of trademark and trade name, etc., the plaintiff has made two applications for restraining the defendants from using his trade name and trademark, etc.
2. Facts relevant for the disposal of the interim applications are summarised as under : --
The plaintiff is a firm which conducts partnership business. It is manufacturing foot-wears and travelling luggage and conducts sale of manufactured goods such as footwear, travelling luggage, etc. The said sale is conducted under the trademark 'Rightway' with device of Foot in a distinctive manner. This trademark is used by the plaintiff since 1967. This trademark is written in a particular style and the plaintiff has applied for its registration under the provisions of law. The trade-mark and the goods sold by the plaintiff have acquired reputation with the public. Goods of the plaintiff are identified by the trade-mark under which they are sold because it has its own colour, scheme, design and label. Huge amount has been invested by the plaintiff on publicity of its trademark and trade namethroughout India. As a result of the plaintiffs investment, the plaintiffs trade-mark and trade name (sic) throughout India. As a result of the plaintiffs investment, the plaintiffs trade-mark 'rightway' has acquired goodwill and reputation and they conduct sales worth lacs of rupees. The defendants are said to be aware of all these facts and about the reputation the trade-mark and trade name of the plaintiff has acquired. They have started manufacturing and selling foot Ware under the trademark 'Rightway Foot ware' with a device of foot in exactly the same manner in which the plaintiff is using the trade-mark. The overall lay out, design, lettering style of 'Rightway' mark used by the defendants is identical with that which is used by the plaintiff and the defendants are therefore by deceptive means using the goodwill, reputation of the plaintiffs firm by using 'Rightway' label. The defdts. are misrepresenting the customers about the 'Rightway' trade-mark and trade name and are giving out that they are conducting business as associates of the pltff. The defendants are thereby passing off their goods as the goods of the plaintiff. These acts are said to be injurious to the interests of the plaintiff as they are intended to cause harm to the plaintiff and to their trade-mark. On this basis various reliefs restraining the defendants from using the trademark and trade-name is sought in the plaint.
3. The defendants have filed their written statement; they have denied the plaintiffs allegations. It is the case of the defendants that so many other people are using the label 'Rightway' in Leh. The defendants are not using the 'Rightway' as such but their firm is registered as 'New Rightway' which is different and distinct. Some time back the defendants used to purchase goods from the plaintiff and they were given the sign-board for their shop as 'Rightway Foot ware Leh'. Therefore, the plaintiff is now estopped from challenging the right of the defendants to use the name 'Rightway Foot ware'. It is stated that the plaintiff's trademark was not registered whereas the defendant's trademark as 'New Rightway Foot ware' is registered. Therefore, also the suit of the plaintiff is resisted.
4. Objections also have been filed to the interim applications in which use of trade-mark is justified and estoppel is set up as a defence.
5. Elaborate arguments were heard. Mr. Baig for the plaintiff has submitted that the defendants are passing off their goods under the trade name which is used by the plaintiff continuously for a number of years and notwithstanding its registration, its use cannot be made by the other side. His contention is that in passing off of action registration of mark is not relevant, what is relevant is use of trademark for a longer period. He has relied on an authority of the Delhi High Court in Century Traders v. Roshan Lal Duggar and Co. AIR 1978 Delhi 250. It has been held by the Delhi High Court that user of the mark prior in point of time than the impugned user by the defendants was relevant and not the registration of the mark. It is the case of the defdts. that when they were purchasing goods for sale from the plaintiff, they were given signboard for being exhibited in Leh. The signboard was 'Rightway Foot-ware' that means user of 'Rightway Foot-ware' by the plaintiff is prior in time. As to whether giving of signboard to the defendants would create estoppel against them is a matter which can be considered in the main suit after the evidence is brought, by the parties on record in support of their respective contentions. At this stage it is very difficult for this Court to uphold or reject the plea of estoppel raised by the defdts. A prima facie view of the facts, as set out in the pleadings and documents is to be taken. From the reading of the written statement it is crystal clear that use of trade name 'Rightway Foot-ware' is made by the plaintiff prior in time. Therefore, it is to be seen whether the defendants can pass off their goods under the same name to their customers and whether they can use it or not.
6. It is the case of the defendants that they have registered the trade mark as 'New Rightway Foot Wear' but the device of foot in a distinctive manner on the Rightway label used by the plaintiff is identical with the trade mark used by the defendants. As to whether this is a deceptive and uncalled for or is not so is to be determined at the trial.
7. Prima facie there appears force in the contention of Mr. Baig that the trademark and trade name of the plaintiff is used by the defendants in selling their goods and in passing off their goods at Leh. It will not be correct to say that other persons are using the same name,therefore, the defendants are also entitled to use the same name. We do not know under what circumstances and facts the other persons use the plaintiffs trade-name and trademark at Leh. If the plaintiffs allow anybody to use the same or create any agency, the defendants cannot raise any objection to that course. However, these are all matters for trial. The defendant has produced a photo-stat copy of a certificate indicating title of the work under Copy Right Act as 'New Rightway'. This certificate is purported to have been issued by the Deputy Registrar of Copy Right. The plaintiff also has a registration of their label 'Rightway' with a distinctive mark of foot on its left side. However, registration in this case may not be as important as the user of the label.
8. The point for consideration at this stage would be whether 'New Rightway' label used by the defdts. is deceptively similar with the label used by the plaintiff. 'Deceptively similar' has been defined by Section 2 of the Trade and Merchandise Marks Act, 1958. It says that a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. From the perusal of the two marks which were exhibited before me at the time of hearing of these petitions, I am convinced that trade name and trademark used by the defendants is deceptively similar to trade name and trademark used by the plaintiff. The defendants are passing off the goods to their customers under the same name which is violative of the plaintiffs interests. In this view of the matter, the plaintiff has made out a prima facie case in his favour.
9. In whose favour balance of convenience would lie is another consideration which is required to be taken note of. The plaintiff has been using the label 'Rightway' prior in point of time than its use by the defendants. Therefore his right of user of the said name appears to be superior and it will be equitable if the pltff. is permitted to use the said name and the said name used by him is not used by the defendants in passing off their goods, and in conducting their sale.
10. The plaintiff, therefore, is entitled to the ad interim relief and is entitled to seek protection. Accordingly I direct that thedefendants be restrained from using the trademark and trade name and the sign-board of the plaintiff which is 'Rightway Fool ware ' with a distinctive mark of foot on its left side. They are also restrained from using the signboard or trademark or trade name as 'New Rightway' because the same is deceptively similar and is likely to cause confusion in the minds of the customers to the detriment of the plaintiff. The defendants are further restrained not to pass off or sell their goods under the trade-name or trade-mark or the label 'Rightway' or 'New Rightway' with a distinctive mark of fool on its left side. This order will remain in force till the disposal of the suit.
11. Any observation made in this order shall not prejudice the parties in the main suit and shall not be construed as an expression of opinion on the merits of the suit.