Appeal From Order No.75 of 2004,Civil Appeal No.9702 of 2004

15th September, 2009

Petitioner Counsel: Shri. D. S. BHARUKA
Respondent Counsel: Shri. HEMANT SURVE

Cases Cited:
Ruston and Hornby Ltd Vs. Zamindara Engineering Co., AIR 1970 SC 1649 [Para 7]
Commissioner of Income Tax Vs. Jawaharlal Rastogi, AIR 1970 SC 1651 [Para 7]
Medlley Laboratories Pvt. Ltd., Mumbai Vs. Alkem Laboratories Ltd., 2002(3) Mh.L.J. 546 [Para 7]
Indohemic Health Specialities Pvt. Ltd. Vs. Naxpar Labs Pvt. Ltd., 2002(3) Mh.L.J. 744. [Para 7]
Harish Motichand Sariya Vs. Ajanta India Ltd., 2003(4) Mh.L.J. 291 [Para 7]
M/s. Satyam Infoway Ltd. Vs. M/s. Sifynet Solutions Pvt. Ltd., 2004(5) ALL MR 817 (S.C.)=2004 AIR SCW 3409 [Para 7]
Sia Gems and Jewellery Pvt. Ltd. Vs. Sia Fashion, Mumbai, 2004(1) Mh.L.J. 424 [Para 7]
Dhariwal Industries Ltd. Vs. M.S.S. Food Products, 2005 AIR SCW 1241 [Para 7]
Sony Kabushiki Kaisha (also) Trading as Sony Corporation Vs. Aashish Electronics, 2006(1) Mh.L.J. 175 [Para 7]
Ranbaxy Laboratories Ltd. Vs. Indkus Biotech (P) Ltd., 2006(2) Mh.L.J. 78 [Para 7]
Medley Pharmaceuticals Ltd. Vs. Winsome Laboratories Ltd., 2009(3) Mh.L.J. 942 [Para 7]
Deccan Bottling and Distilling Industries Pvt. Ltd., Aurangabad Vs. Brihan Maharashtra Sugar Syndicate Ltd., Nasik, 2009(2) Mh.L.J. 302 [Para 7]

JUDGMENT

JUDGMENT:- By this Appeal from Order the original plaintiff challenges the order dated 7th August, 2004, passed by the Additional District Judge, Aurangabad on application Exh.5 for temporary injunction filed in Regular Civil Suit No.1 of 2003.

2. The plaintiff/appellant has filed suit against the respondents for relief of perpetual injunction restraining them from selling safety matches, manufactured and marketed by them using the offending trade mark, which is similar to the trade mark on the safety matches manufactured by the plaintiff and for interim protection, application Exh.5 is filed.

3. As per plaintiff/appellant he is proprietor of distinctive trade mark consisting of word "PLUS-2" along with distinctive device of heart visual also having distinctive get up by out arrangement and colour scheme. Such trade mark is adopted by the plaintiff in the month of May, 1984. The plaintiff/appellant is doing his substantial business in the sale of safety matches under the trade mark "PLUS-2", particularly in the districts of Aurangabad, Beed and Ahmednagar. From March, 1984 to March, 2003, he has done business worth Rs.11,40,000/-. Recently, the plaintiff came to know that defendant No.1 was manufacturing safety matches bearing offending mark "PLUS-5" which is identical to the mark "PLUS-2" manufactured by the plaintiff. Due to use of offending similar trade mark, the customers are purchasing safety matches manufactured by defendant No.1 under his belief that they are purchasing safety matches with trade mark "PLUS-2". Defendant No.2 is dealer of defendant No.1. Defendant Nos.3 to 5 are retail sellers of goods at Aurangabad. The defendants are also passing off safety matches bearing offending mark "PLUS-5" as and for well known and reputed safety matches bearing trade mark "PLUS-2". Consequently, the plaintiff is subjected to heavy and irreparable loss to his reputation. It is also stated during arguments that in a raid effected by the Excise Officers, large quantity of boxes bearing mark "Plus-5" which is also identical to "PLUS-2" with minor changes is found.

4. Defendant No.1 filed written statement at Exh.30. Defendant No.2 has filed his say at Exh. 23. Defendant No.1 denied that he was doing business through defendant Nos. 2 to 5. According to him he is proprietor of distinctive trade mark consisting of word "PLUS-2" without arrow and round shape like apple fruit and logo of his personal photo to avoid multiplicity. So, there is no question of infringement and/or passing off by defendant No.1. The plaintiff has not registered the colour or design. The plaintiff is using different designs than of registered trade mark. Therefore, the plaintiff is not entitled to equitable relief. It is also stated that the device cross is the mark of Christian community and the figure "2" is common for all the public. Therefore, registered trade mark of plaintiff does not give him right to use "Cross" or figure "2" exclusively. Moreover, the plaintiff has also filed suit bearing No.1 of 1998 in the Court of Bangalore. Similar prayer for injunction was made in that suit. It is further stated that defendant has applied for the registration of his trade mark and that application is pending before the concerned authority when the written statement/say was filed. Admittedly thereafter his application for trade mark was allowed by the Registrar of Trade Mark. Even application u/s.125 of Trade Marks Act, 1999 against the same to the Intellectual Property Appellate Board (for short "the Appellate Board") was dismissed and now writ petition filed by the plaintiff/appellant is pending. Defendant No.2 has also taken same defence and denied that there is deceptive similarity between products of the plaintiff & defendant No.1. Prayer was made for dismissal of the suit. Defendant Nos.3 to 5 did not appear to file written statement.

5. After considering the documents and hearing of both sides, the Trial Court dismissed application Exh.5 and therefore this appeal from order is filed.

6. The Trial Court came to a conclusion that the product of the defendant No.1 is not deceptively similar to the product of defendant No.1. In para 19 the learned District Judge stated differences between marks used by both on the match boxes produced by them. It is also stated that the plaintiff ought to have adhered to the trade mark which was granted to him vide No.440971 on 30.07.1985, but he has changed labels. It is also noted that on the match boxes produced by defendant No.1 there is photograph of a person. The border of the label used by the plaintiff was not approved by the Registrar of Trade Mark. The registration is not in respect of colour, label and size of the label. There is difference in the kind of work and display of label. Therefore, the District Court believed that such deviation was not approved by the Registrar of the Trade Mark. In absence of registration of colour combination and size, the Trial Court refused to hold that there is case for grant of injunction. In para 15 of the impugned order the Trial Court came to a conclusion that prima-facie plaintiff has made drastic changes in the labels on the match boxes manufactured by him. Reference was also made to the suit filed at Bangalore and to averment that the Court therein has issued order of injunction and the suit is pending. However, no record is produced either in the Trial Court or before this Court. In absence of any evidence on record regarding any order by the Court at Bangalore, said fact was not believed and trusted.

7. The learned advocate for the plaintiff cited several authorities to explain what is passing off and deceptive similarity. They are as under :-

(1) Ruston and Hornby Ltd Vs. Zamindara Engineering Co., AIR 1970 S.C. 1649.

(2) Commissioner of Income Tax Vs. Jawaharlal Rastogi, AIR 1970 SC 1651.

(3) Medlley Laboratories Pvt. Ltd., Mumbai and anr. Vs. Alkem Laboratories Ltd., 2002(3) Mh.L.J. 546.

(4) Indohemic Health Specialities Pvt. Ltd. Vs. Naxpar Labs Pvt. Ltd. And anr., 2002(3) Mh.L.J. 744.

(5) Harish Motichand Sariya Vs. Ajanta India Ltd., 2003(4) Mh.L.J. 291.

(6) M/s. Satyam Infoway Ltd. Vs. M/s. Sifynet Solutions Pvt. Ltd., 2004 AIR SCW 3409 : [2004(5) ALL MR 817 (S.C.)].

(7) Sia Gems and Jewellery Pvt. Ltd. Vs. Sia Fashion, Mumbai, 2004 (1) Mh.L.J. 424.

(8) Dhariwal Industries Ltd. and anr. Vs. M.S.S. Food Products, 2005 AIR SCW 1241.

(9) Sony Kabushiki Kaisha (also) Trading as Sony Corporation Vs. Aashish Electronics and Ors., 2006(1) Mh.L.J. 175.

(10) Ranbaxy Laboratories Ltd. Vs. Indkus Biotech (P) Ltd., 2006(2) Mh.L.J. 78.

(11) Medley Pharmaceuticals Ltd. Vs. Winsome Laboratories Ltd. And anr, 2009(3) Mh.L.J. 942.

(12) Deccan Bottling and Distilling Industries Pvt. Ltd., Aurangabad Vs. Brihan Maharashtra Sugar Syndicate Ltd., Nasik, 2009(2) Mh.L.J. 302.

8. One of the major hurdles in the way of plaintiff/appellant is the judgment of the Appellate Board produced before this Court. The decision was given on 23rd February, 2007 in Case No.ORA/2/2006/TM/CH. It was application which was essentially between the plaintiff and defendant No.1. At the outset of the order passed by the Appellate Board, it is said that it is an application for removal of the mark "PLUS-5" of the 1st respondent (present respondent in this appeal from order), registered under No.1239557 dated 25.09.2003 in class 34 from the Register of Trade Marks under Section 47, 57 and 125 of the Trade Marks Act, 1999.

9. Section 47 of the Act is in respect of removal of a registered trade mark from register and imposition of limitations on registration of trade mark without bona fide intention to use it or consequence where it is not used for five years or more. Section 57 is in respect of power to cancel or vary registration and to rectify the register. Section 125 is in respect of application for rectification of register to be made to the Appellate Board in certain cases. So, the proceedings before the Appellate Board was application under Section 125 for rectification of register by the present appellant made to the Appellate Board for cancellation of registration of trade mark in favour of defendant No.1 (respondent No.1).

10. Present plaintiff/appellant has pleaded before the Appellate Board same case as is made out before this Court. As per para 4 of the order of the Appellate Board, it is further case of the plaintiff/appellant that in the year 1998, it had filed a suit against M/s. Anitha Match Works, restraining them from infringing their registered trade mark "PLUS-2" by using the offending trade mark "PLUS-5" and an order of injunction was passed and the said company stopped using the mark "PLUS-5". The applicant had subsequently modified the label by incorporating his own portrait on the side of the distinctive "PLUS- 2" artistic device. In that case respondent No.1 has also resisted application under Section 125 before the Appellate Board. One of the contention was that the present respondent No.1 was that the present appellant had not approached the said Appellate Board with clean hand and suppressed material fact of disclaimer imposed by the Registrar in the application. In para 28 of the order the Appellate Board considered whether the applicant for rectification has proved that the mark has been registered by committing fraud and that it has been registered in contravention of the provisions of Section 11 of the Trade Marks Act, 1999. In para 29 the issue whether the mark being registered in contravention to the provisions of Sections 9 and 11 of the Act was answered in the negative. It is held that the present appellant has failed in his attempt. The question of confusion or deception has not been substantiated by material evidence and that issue was also rejected.

11. Sub-Sections (1) (2) & (3) of Section 11 of the Trade Marks Act are as follows:-

"11. Relative grounds for refusal of registration - (1) Save as provided in section 12, a trade mark shall not be registered if, because of -

(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or

(b) its similarity to an earlier trade mark and the identify or similarity of the goods or services covered by the trade mark,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

(2) A trade mark which -

(a) is identical with or similar to an earlier trade mark; and

(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor,

shall not be registered if or to the extent the earlier trade mark is a well known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.

(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented -

(a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade; or

(b) by virtue of law of copyright.

(4) X x x x x x x x x x x x x x x "

12. The Appellate Board also considered Section 12 of the Act, which relates to registration in the case of honest concurrent use. Thus, the Appellate Board after considering the case of present appellant in detail has come to a conclusion that no confusion or deception has been substantiated by the grant of trade mark to respondent No.1 of "PLUS- 5". In para 31 of the order the Appellate Board came to a conclusion that the case was not covered by Section 47 of the Trade Marks Act. In para 32 it was observed that the Appellate Board was forced to make an observation about the attitude of the applicant with regard to modified label. The applicant having obtained registration for one mark (under No.440971) cannot make false statements that the modified label is also registered under No.440971 and said act of the applicant only goes to show the dishonest intentions of the applicant. With these observations in para 32 along with other observations the application for rectification of registered trade was dismissed.

13. So, the competent appellate authority confirmed the decision to issue registered trade mark in favour of respondent No.1 for using "PLUS-5" as trade mark in a proceeding wherein said trade mark was challenged by the present appellant. Admittedly, Writ Petition is filed in the Madras High Court and it is pending.

14. In this case, the Trial Court has also come to a conclusion that there is no evidence of infringement of trade mark or passing of and this is not a case to issue temporary injunction. In my opinion, granting temporary injunction by this Court in this appeal would be indirectly upsetting the decision of the Appellate Board in Application No.ORA/2/2006/TM/CH decided by order dated 23rd February, 2007, particularly when writ petition is pending before the Madras High Court. If this appeal is allowed and temporary injunction as prayed is granted, that would be preventing the respondent No.1 from using his registered trade mark. All material issues raised before this Court were in issue before the Appellate Board and now Madras High Court is seized with the matter. So, if any interim order is to be sought, it should be sought in the writ petition pending before the Madras High Court. Propriety demands that this Court should stay its hands when the order of the appellate Board and pendency of writ petition in Madras High Court is brought to its notice. In fact, the application for temporary injunction does not survive in view of the decision of the Appellate Board. This Court had specifically adjourned this Appeal From Order for parties to make statement about stage of the writ petition and about any interim order passed, but only statement made is that the writ petition is pending.

15. In the circumstances, this Appeal From Order is dismissed. Parties to bear their own costs.

16. In view of dismissal of this Appeal From Order, Civil Application No.9702 of 2004 does not survive and it is disposed of as such.

Appeal dismissed.