Hon'ble Sunil Ambwani, J Hon'ble Aditya Nath Mittal, J
1. This is an appeal under Order 43 Rule 1 (r) read with Section 151 of Code of Civil Procedure arising from an order dated 22.08.2012 passed by the Additional District Judge, Court No. 14, District Varanasi, allowing the application under Order 39 Rules 1 and 2 CPC of the plaintiff, for injunction restraining the defendants from carrying on trade in PVC Pies with the name of 'G.K. DURO Plast' or with the name 'DP DURO Supreme' or that any name which is similar to that, fixing 4.10.2012, for framing of the issues.
2. We have heard Sri Manu Khare for the defendant-appellant. Sri Naveen Sinha assisted by Ashish Kumar Srivastava appears for the plaintiff-respondent.
3. The facts in brief are that the plaintiff filed a Suit No. 25 of 2011 in the Court of District Judge, Varanasi against Guru Kripa Manufacturing Private Ltd (defendant No.1) and Sri Hari Krishna Kishore Lal Singhal (defendant No.2) alleging that the plaintiff Company is incorporated under the Companies Act 1956, and is carrying on business of manufacturing and trading of PVC pipes as partnership firm. The partnership firm was taken over and merged in a private limited company under the name and style of M/s. Duro Pipe Industries Private Ltd. The Company is registered with Registrar of Companies, in West Bengal. The business of the plaintiff since its incorporation, as partnership concern is duly approved as small scale industry by the District Industries, Jaunpur, for which the Company is registered with the Trade Tax Department (U.P. and Central) as well as U.P Pollution Control Board . The plaintiff is regularly assessed by the office of Income Tax, Varanasi till the same was a partnership concern. After the incorporation of Private Limited Company, the income tax returns were submitted in Calcutta (West Bengal). The Central Excise Department has also registered the plaintiff's unit as manufacturing unit for which the plaintiff is duly assessed. It is further pleaded in the plaint that the plaintiff's product is manufactured and sold under the trade name 'Duro Supreme' with logo embossed as "DP" in a circle. Each and every product of PVC pipe manufactured in the plaintiff's factory has been widely advertised, exhibited and circulated by print media and other prominent places in the market for its users since 1994. The plaintiff is user of its trade name "DP" Duro Supreme since 1994 and has acquired substantial status, market, business, repute, goodwill and credit amongst users and manufacturers of PVC pipes. The status and goodwill of the plaintiff has become an eye sore amongst the directors of the defendant, resulting into calculated jealous, preconceived, evil design of coying out fraudulently as that of resembling to plaintiff's product.
4. In paras 7 to 16 of the plaint, it is stated by the plaintiff that the defendant company came into existence in the year 2009 vide certificate of incorporation obtained from the Registrar of Companies, U.P on 15.02.2009 with its factory situate at 307 Karwat, Ralhupur, New Dandi, District Chandauli where from the defendants are engaged in manufacturing selling and marketing their product widely propagating it to be plaintiff's by fraudulently embossing "GK" Duro plast. The defendants in utter disregard and in complete violation of plaintiff's trade mark "DP" Duro Supreme with malafide intentions to put the plaintiff into recurring business loss in the similar pattern, started manufacturing PVC pipe under disguised and deceptive name "GK" Duro plast with similar color and resemblance. The pleadings in paras 7 to 16 of the plaint are quoted as below:-
"7. That defendant's company could came in existence recently in the year 2009 and a certificate of incorporation was obtained by them from Registrar of Companies, U.P on 15.02.2009. The factory of defendants situate at 307 Karwat, Ralhupur, New Dandi District Chandauli, where from defendants are engaged in manufacturing, selling and marketing their produce widely propagating it to be plaintiffs by fraudulently embossing "GK" Duro plast.
8. That the defendant's in utter disregard in complete violation of plaintiff's trade mark "DP" Duro Supreme with malafide intentions to put plaintiff into recurring business loss in the similar pattern started manufacturing PVC pipe under disguised and deceptive name "GK" Duro plast with similar colouor and resemblance.
9. That the product of plaintiff having already acquired tremendous applaud amongst large number of PVC pipe consumers general public/ citizen and trading circle throughout India under the Trade Name and trade mark "DP" Duro Supreme having been conceived, adopted and invented by the plaintiff in most artistic manner using it exclusively to the knowledge of all concerned irrespective sec, religion, cast and greed uninterruptedly and extensively of which defendant have full notice, knowledge and information. The plaintiff had been widely advertising and circulating its product "DP" Duro Supreme in almost all widely acclaimed trade professional having large circulation throughout in India.
10. That the attention of the plaintiff was recently in the first week of May 2011 i.e. 04.05.2011, drawn to the fact that the identical product of the plaintiff bearing the identical trade name with identical packaging and color scheme as that of the plaintiff, was being sold/offered for sale by the defendant. All such sale was being conducted clandestinely. On 11.05.2011 plaintiff could purchased illegally marketed PVC pipe of defendants and then plaintiff repeatedly stated to the defendant not to indulge in such infringing and passing off activities but the defendant with malafide intention refuse to stop and abstain from there illegal, infringing and passing off activities and given threatening for the grave consequences hence, necessity and cause of action for the suit arose.
11. That the defendants are neither owner nor proprietor of the plaintiff's owned trade name and trade mark "DP" Duro Supreme and without any authority illegally using the plaintiffs owned trade name and trade mark for their products which is identical and similar to the plaintiff's owned trade name and trade mark as such the Plaintiff's trade mark, and trade name is infringed and passed of by the defendants which is barred under law.
12. That the adoption and use of the trade name and trade mark "GK" Duro plast by the defendant is visually, structurally and similar to the trade name and trademark "DP" Duro Supreme of the Plaintiff in respect of the similar product which leads confusion and deception amongst the PVC pipe consumers, public and traders and such a misrepresentation is calculated to cause damages and injury both to the plaintiffs business and as well as its goodwill and reputation, and due to the illegal, infringing and passing off activities of defendants the plaintiffs business is causing irreparable loss which cannot be calculated in terms of money.
13. That the trade mark and trade name is a visual symbol in the form of a word, a device or a label applied to articles of commerce with a view to indicate to the purchasing public that they are the goods manufactured or otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt in by other person. By virtue of this application the person who sales his goods under a particular trademark and trade name acquires a sort of limited exclusive right to the use of the mark in relation of those goods. Such a right acquired by use is recognized as a form of property in trademark and such right is protected under law.
14. That the plaintiff is exclusive owner of the trade name and trade mark "DP" Duro Supreme of its product PVC pipe, and legally authorized to use the said trade name throughout in India. The defendant has no right to infringe and pass off the plaintiffs lawful right relating to their owned trade mark and trade name and such activities are liable to be stopped/curbed immediately.
15. That the plaintiff is the sole proprietor and owner of trade name and trade mark "DP" Duro Supreme of its product PVC pipe as such the defendants or any other person has no right or authority to use or adopt the deceptive similar trade name and trade mark owned by the plaintiff.
16. That the cause of action of the present suit initially arose on 4-05-2011 when plaintiff could came to know about offending, infringing and passing off activities of the defendants ultimately on 11.05.2011 when plaintiff could purchased illegally marketed PVC pipe of defendants and immediately rushed to defendants to desist from their evil design and finally to stop their illegal, infringing and passing off activities but the defendants refused to desist their illegal, infringing within the jurisdiction for continence of this Hon'ble Court."
5. The plaintiff claimed the relief of decree of permanent prohibitory injunction to restrain the defendants, their servants, stockists, distributors, agents and retailers from interfering and creating nuisance in the manufacturing and trading in plaintiff's consumer produce PVC pipe in the trade name and trade mark "DP" Duro Supreme with its color, scheme and label and trading, selling, offering for sale, advertising, directly or indirectly the said product in the trade name and trade mark "DP" Duro Supreme owned by the plaintiff.
6. The suit was filed on 12.05.2011, with an injunction application, to restrain the defendants, their servant, stockists, distributors, agents and retailers not to interfere and create nuisance in manufacturing and trading in plaintiff's consumer product PVC pipe in the trade name and trade mark "DP" Duro Supreme with its color scheme and trading, selling, offering for sale, advertising, directly or indirectly the said produce in the trade name and trade mark "DP" Duro Supreme owned by the plaintiff till disposal of suit.
7. The defendant-appellant on being served with the notices, filed objections on 18.07.2011 along with an application under Order 7, Rule 11 CPC alleging that the plaintiff admittedly do not have their trade mark registered with Registrar of the Trade Mark under Section 23 of the Trade Marks Act, 1999 and thus the suit is barred under Sections 27 and 134 of the Act. In the plaint, the plaintiffs have not made any distinction between the 'infringing act' and 'passing off' action. The defendants do not make any product with the trade mark of "D.P Duro Supreme" or Supreme Classic" or "Reliance". A written statement and an additional written statement was filed by the defendants, denying the plaint allegations. The defendant also prayed for rejecting the plaint as barred under Section 27 of the Act. Paras 21 to 31 of the written statement of defendants-appellants is quoted hereunder:-
21. That at the very outset it is to be submitted that the plaintiffs do not have any registered trademark, much less, the one named and styled "DP Duro Supreme" relied upon by them before the Registrar of the Trade Mark, hence no suit can be instituted by them for the alleged "Infringement" activities for any relief whatsoever concerning it, although the defendants strongly repudiate and deny commitment of any such act of infringement by manufacturing PVC Pipes, under the name and style "GK Duro Plast".
22. That the plaintiffs have filed this suit falsely alleging that the defendants' activities constitute acts of infringing their trade mark and also of passing off. From the plaint it does not appear that any difference has been carved out or made by the plaintiffs between the "infringing act" and "passing off" action. Rather the self same acts of the defendants are alleged to constitute the "Infringement" and "Passing Off" actions both compositely and inextricably. However, the plaint allegations preponderingly gives stress on infringement of trademark only, when no suit is maintainable by the plaintiffs for it unless they have registered trade mark.
23. That the plaintiffs have deliberately concealed from the court one broad and important fact that they had already applied for registration of their trade mark "Duro Supreme" relating to their manufacturing of PVC Pipes before the Registrar of the trade mark which had been opposed by another company namely Dure Supreme (LABELE) on account of which the plaintiffs' trade mark could not be registered. This fact alone is sufficient to disentitle the plaintiffs for any relief in the suit as their conduct of concealment of the above fact is a fraud on court on their part and highly reprehensible.
24. That the plaintiffs are not the proprietors of the trade mark of their manufacturing business. They have no exclusive right in the "DP Duro Supreme" Trade Mark as such. This Trade Mark is neither artistic nor any invention of the plaintiffs. The word Duro Signifies the durability of the product which is descriptive as such of the quality of product and no proprietorship can be acquired of it on that account. Besides that there are several other manufacturers of the PVC pipe using the word "Duro" as given in the schedule at the end of the W.S.
25. That the defendants are manufacturing their own products of PVC Pipe under the trade mark "GK Duro Plast" along with other two trade marks "G.K. Shakti Plast" and G.K. Supreme". The word "GK" is an abbreviation of word "Guru Kripa" signifying their devotion and respect to their preceptor (Guruji) by virtue of whose mercy they are in the business field. The word "Duro" signifies the durability and the word "Plast" signifies the plastic material of which the PVC Pipe are made. This Trade name "GK Duro Plast" is neither visually nor phonetically nor structurally similar to the trade mark of the plaintiffs i.e. "D.P. Duro Supreme". The vast difference between the two sets, may be well appreciated on comparison by this Hon'ble Court for which the two sets of marks are quoted below for the Hon'ble Court to compare, at a glance.
"G.K" .Duro Plast of the defendants.
"D.P." Duro Supreme of the plaintiffs.
The difference between the two sets is well marked whether it is visual, structural or phonetic or pronunciation.
26. That it is totally incorrect to allege that the defendants have in utter disregard and in complete violation of the plaintiffs' trade mark "DP Duro Supreme" with malafide intentions to put the plaintiffs into recurring business loss in similar pattern started manufacturing PVC Pipes under disguised and deceptive name "G.K. Duro Plast" with similar colour and resemblance. It is respectively submitted that the defendants have not violated the plaintiffs' trade mark at all. The allegations of malafides also are all baseless and purposive. The defendants have never intended nor have caused any business loss to the plaintiffs nor the plaintiffs have given any instance or particular of such loss recurring or otherwise, in the plaint. There is nothing disguised or deceptive in the trade name of the defendants "G.K. Duro Plast" nor there is any resemblance or similarity in the two trade marks or colour combination. The Plaintiffs have no right to make any complaint or grievance on the defendants' own right to do and continue their own business even if it causes business rivalry or any competition is made against them.
27. That the plaintiffs have incorrectly written in their plaint that on 04-05-2011 their attention was drawn to the fact that identical product of the plaintiffs bearing identical trade name with identical packaging and colour scheme as that of the plaintiffs' was being sold/offered for sale by the defendants. Actually, such a date as 04-05-2011 is a manufactured date by the plaintiffs for the purposes of this suit, whereas, they had already been well aware of the defendants business of manufacturing PVC Pipe and its wide scale sales. The story of information given to plaintiffs' by some one unnamed is quite, vague and incorrect. Nothing was done by the defendants in connection with their aforesaid business secretly or clandestinely. Rather everything has been fair, open and to the knowledge of all concerned including the plaintiffs and their workers. The plaintiffs have also incorrectly written in the plaint that on 11.05.2011 they purchase illegally marketed PVC Pipes of the defendants and then they requested the defendants not to indulge in such infringing and passing off activities, whereupon the defendants with malafide intentions refused to stop and abstain from illegal infringing and passing of activities and also that the defendants had given threatening of grave consequences which cause necessity for the suit to the plaintiffs. The aforesaid facts written in the plaint are not only incorrect but are deliberately vague and cryptic also. Who amongst the plaintiffs made the alleged contact and with whom of the defendants for the aforesaid talks have all been kept concealed by the plaintiffs because it is false and is aimed at filling up the blank to suit to them in future. Whereas the reality in that behalf is that there is no similarity between the plaintiffs and the defendants trade marks packaging and colour scheme etc. No such talks as aforesaid had ever taken place between the plaintiffs and the defendants. The defendants had never illegally marketed their PVC pipes, nor the plaintiffs ever purchased any such pipes from the defendants. The defendants never threatened the plaintiffs of grave or dire consequences. The defendants' activities have never been infringing nor of passing off against the plaintiffs. The intention of the defendants had never been malafide towards the plaintiffs.
28. That the defendants are not at all using plaintiffs' trade name or trade mark in connection with their business. The product of the defendants and its get up also are neither identical with nor similar to that of the plaintiff. No confusion or deception are likely to be caused amongst the purchasers so much to as that the defendants are selling plaintiffs' goods. No misrepresentation is made by the defendants in any way at all. The defendants do not use any package, covering or wrappers for their products.
29. That it is denied that the plaintiffs' own products under the trade mark of "Duro Supreme" are distinguishable from the rest of the similar products of PVC pipes. The plaintiffs themselves have copied and imitated the trade mark of others as submitted above. Hence, it is incorrect to say that the plaintiffs have acquired any right to such trade mark and that they are enjoying any protection in law in connection therewith.
30. That the plaintiffs trademark is not well known trade mark as provided under the Trade Mark Act, hence there is no question of its popularity amongst all concerned as falsely written in the plaint.
31. That the channel of trade of the plaintiffs and defendants are quite different. Therefore, there is absolutely no chance or possibility or any confusion and deception amongst the consumers of the plaintiffs' product and the defendants' goods which they do with their own trade marks."
8. The plaintiff filed an application, for seeking amendment of the plaint under Order 6, Rule 17 CPC. By an order dated 5.4.2012. the application under Order 7 Rule 11 CPC filed by the defendant was rejected and the plaintiff's application under Order 6 Rule 17 CPC for amending the plaint was allowed. A Civil Revision No. 188 of 2012 was filed by defendant challenging the order dated 5.4.2012 of the trail court. The revision was dismissed by the learned Single Judge by an order dated 26.04.201 with observations that as regards infringement of trade mark is concerned, since Section 27 (1) of the Act clearly bars filing of the suit where the trade mark was not registered, the prayer could not be granted, however, that itself would not mean that the suit itself be rejected, if other relief is still available to the plaintiff. So far as amendment is concerned, the revisional court observed that the plaintiff could have filed a suit against 'passing off' as provided under Section 27 (2) of the Act and therefore relegating the plaintiff to file another suit would not be justified and therefore the amendment was rightly allowed.
9. The trial court, after discussing the evidence found that the plaintiff was manufacturing PVC pipes in the name of "D.P. Duro Supreme" since before 1992, and is thus found to be prior user of the trade mark. There are other manufacturers using the word 'Duro' and the trade mark, but they are using the word 'Duro' with different names such as Surya Duro, Duro Light, Duro Bal, Duro Plast. In all these names are two words whereas the plaintiff is using the trade mark with three words namely 'D.P. Duro Supreme'. The defendant is also using three words 'G.K. Duro Plast' and thus common use of word 'Duro' cannot be treated as to be similar on the use of words 'D.P' prior to the word supreme. The trial court further held that the ordinary persons, who are not highly educated, purchase the pipes by looking at the hologram. The judicial pronouncement do not provide any positive explanation to the use of trade mark. It is however necessary to look into the category of persons and the society to which they belong. The trade mark of the plaintiff is in the same area, and in both the trade mark three words are used. The colour of the trade mark is designed by the parties. The masons, contractors and similar kind of persons may not give attention to these details and thus the plaintiff being in prior business of the PVC pipes, the use of deceptively similar product will give rights to mainain passing off action to the plaintiff. So far as claim of 'good will' on the basis of paper and pamphlet is concerned, the trial court found that the defendant have not filed any documents to show that they had widely advertised the trade mark. They have also not organized any conferences, or made any advertisement in newspapers to claim any good will or adverse effect of their sale. In the circumstances, prima facie case was established by the plaintiff. So far as irreparable loss is concerned, the trial court relied upon the data of income tax returns, which demonstrated gradual reduction of income and profits of the plaintiff. Though the plaintiff cannot claim any compensation for loss of income, as compensation, even if a descriptive trade mark is used by the defendant, the loss may be attributed on account of such such deceptive use. The trial court also found the balance of convenience to be in favour of the plaintiff inasmuch as the defendant was using a deceptive trade mark for which the plaintiff has already applied for registration.
10. Sri Manu Khare, learned counsel appearing for the defendant-appellant submits that admittedly the trade mark used by the plaintiff-respondent is not registered. The plaintiff-respondent is not the owner of the registered trade mark. A false representation has been made by the plaintiff-respondent that he is the owner of the trade mark, using the prefix (R) in the advertisements and in the correspondences. A person who makes a false representation, in respect of a legal right is not entitled to any relief from the Court. Sri Khare submits that the trial court allowed the injunction beyond the prayers, originally claimed by the plaintiff in the plaint. There was no prayer made in the plaint, as it was originally presented, for restraining the defendants from trading, or using the trade mark and trading in the plaintiff's consumer product PVC in the trade name and trade mark, similar to the trade mark used by the plaintiff. Even in the injunction application, the prayers made were for restraining the defendants from interfering and creating nuisance in the manufacturing and trading in the plaintiff's consumer product PVC pipe in the trade name and trade mark "DP" Duro Supreme with its color scheme and trading, selling, offering for sale, advertising directly or indirectly the said product in the trade name and trade mark "DP" Duro Supreme owned by the plaintiff till disposal of the plaint. When an objection was taken and the written statement was filed, a new prayer was introduced in the rejoinder affidavit and subsequently an amendment was sought, which was allowed by the Court. Sri Khare submits that the amendment of the plaint has not cured the defect in the injunction application and the relief granted is beyond the prayer of the plaint. He further submits that the trial court has erred both in facts and in law and prima facie the trade mark used by the defendant is not similar to the trade mark used by the plaintiff. The plaintiff's trade mark was not registered. An action under Section 27 (2) of the Trade Marks Act, 1999 against any person for passing off goods is still maintainable, however, the condition is more stringent and that unless it is proved that the trade mark used by the defendant is similar to the trade mark of the plaintiff with prior using, a relief of injunction cannot be granted.
11. Sri Manu Khare further submits that the plaintiff is not the originator of the trade mark and the design. The word "Duro" is used by several manufacturers both in India and internationally. The letters "G.K." used by the defendant represents Guru Kripa, which is the name of the defendant company. The word "Duro" represents durability and the word "Plast" represents plastics. The three words used by the defendant are not deceptively similar to the trade mark used by the plaintiff. The plaintiff uses th words "D.P. Duro Supreme", which is entirely different and distinct trade mark used by the defendant. He submits that the trade mark used by the plaintiff has not given him any exclusivity over the name word "Duro", which is commonly used by other manufacturers of the product.
12. Sri Manu Khare has relied on T.V. Venugopal Vs. Ushodaya Enterprises Limited and another [2011 (4) SCC 85], in which the Supreme Court held that even assuming that the mark is a generic work, yet if it is found by the court that such a mark has attained distinctiveness and is associated with the business of the plaintiff for considerable time and thereafter the defendant adopts a similar work as one of his two marks to induce innocent users to use or buy the product of the defendant, which establishes dishonest intention and bad faith, the court would grant an injunction to protect the business of the plaintiff. The user of similar word by a competitor coupled with dishonest intention and bad faith, would empower a court to restrain such user/misuser to do equitable justice to the aggrieved party. Sri Khare submits that the word "Duro" has not been used by the appellant in exclusivity such as names of Benz, Mahindra, Caterpillar, Reliance, Sahara, Diesel, etc. The Supreme Court also laid down tests in T.V. Venugopal's case (supra) , for grant of injunction, are not satisfied in the present case.
13. Sri Khare has also relied upon judgment of the Supreme Court in Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories [AIR 1965 SC 980]; and of this Court in Victory Transport Co. Pvt. Ghaziabad Vs. District Judge, Ghaziabad [1981 - LAWS (All)-9-6]; judgment of Delhi High Court in Prem Singh Vs. M/s. Ceeam Auto Industries [AIR 1990 Delhi 333]. In all these cases, the principles of law for grant of injunction in passing off action has been reiterated.
14. In Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories (Supra), the Supreme Court held that where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusions that there is an imitation, no further evidence is required to establish that the plaintiff's right are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked difference, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial, whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff. Where the two marks are identical no other questions arise; for them the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered.
15. Sri Manu Khare further submits that the relief as constituted in the plaint and in the application, are in the nature of injunction and thus suit was to be filed in the lowest grade of the court, under Section 50 of CPC. The suit ought to have been filed in the Court of Civil Judge, Senior Division. It is only when the suit was for passing off action, it could be filed in the Court of District Judge.
16. Sri Navin Sinha, Senior Advocate, appearing for the plaintiff-respondent, on the other hand submits that the plaintiff's right has been affected on the basis of passing of goods under Section 27 (2) of the Trade Marks Act 1999 in which the court is required to be satisfied of the prior user and the deception, which is likely to cause to the public. The words 'deceptively similar' are defined under section 2 (h) of the Act and which means "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'. Sri Sinha has referred to the contents of paragraphs 7, 9, 12 and 16 of the plaint, which according to him fulfill the ingredients for grant of injunction in passing off action. The suit was filed on 12.05.2011. The amendment application was filed on 30.08.2011 and was allowed on 5.4.2012. The Civil Revision filed by the defendant-appellant was dismissed by the High Court on 26.04.2012. The injunction was granted by the trial court on 22.08.2012, after the plaint was amended. He submits that in any case there are sufficient pleadings in paragraph Nos. 6, 7, 8, 9,10, 11 and 12 of the plaint, for grant of injunction.
17. Sri Sinha, submits that the defendant-appellant is not challenging the findings of the trial court in the order granting injunction. The arguments have been confined to technical defects. The plaintiff has been using the trade mark "D.P. Duro Supreme" since 1992-93. The PVC pipes were manufactured by partnership firm. In the year 2003, the firm was constituted as a company. The defendant has applied for registration on 2.5.2011, under the signatures of Jaipal Singh, Advocate, for the registration of the trade name/trade mark "DP Duro Supreem", for manufacturing of PVC pipes and accessories, HDPE Pipe, PVC water tanks, PVC tanks. The application shows malafide intention and deceitful activities of defendant-appellant to use the plaintiff's trade mark of "D.P Duro Supreme". Sri Sinha has relied upon the principles of law settled by the Supreme Court in grant of injunction and passing off action. He has relied upon judgments of the Supreme Court in Amritdhara Pharmacy Vs. Satya Deo Gupta [AIR 1963 SC 449]; Parle Products (P) Ltd Vs. J.P. & Co., Mysore [AIR 1972 SC 1359]; Cadila Health Care Ltd Vs. Cadila Pharmaceuticals Ltd [AIR 2001 SC 1952]; Laxmikant Vs. Patel [(2002) 3 SCC 65] and Wander Ltd and Another Vs. Antox India P. Ltd [1990 (Supp) SCC 727], in support of his submissions.
18. We have considered the submissions and do not find any good ground to interfere with the order of injunction granted by the trial court. The suit for injunction was filed in the Court of District Judge and was transferred to the Additional District Judge, Court No.14, Varanasi. The pleadings in the suit in paragraphs 7 to 16 clearly demonstrated that the suit was filed for passing off action under Section 27 (2) of the Trade Marks Act,1999. The plaint thus was to be presented in the Court of District Judge, and was rightly entertained.
19. In the objections filed by the defendant-appellant and in their written statement, it was stated in para 28 that "the plaintiffs have no cause of action for the suit and as per plaint allegations, this Court has no jurisdiction also, to try the suit. Consequently, it is expedient that the application '6C', which is for grant of interim prohibitory order be rejected". The objections taken in para 28, at the first instance did not challenge the jurisdiction of the District Judge on the ground that the suit was not filed for passing off action, and for only injunction. A general objection cannot be treated as an objection to the filing of a suit in an appropriate court. In the present case, the plaint allegations clearly established that the suit was for passing off action under Section 27 (2) of the Act, which could be filed in the Court of District Judge, as the court of first instance.
20. It is admitted to both the plaintiff and defendant that the plaintiff's application for registration of trade mark is pending, which has not been allowed so far. The plaintiff's claim is not based under Section 27 (1) of the Act but is based under Section 27 (2) of the Act. Section 27 of the Trade Marks Act, 1999 is quoted as below:-
"Chapter IV EFFECT OF REGISATRATION
27. No action for infringement of unregistered trade mark. - (1). No person shall be entitled to institute any proceeding to prevent, or to recover damage for the infringement of an unregistered trade mark.
(2). Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof."
Section 27 (1) of the Act is in negative terms, and dis-entitles any person, who has not got their trade mark registered, to prevent or to recover damages for the infringement of an unregistered trade mark. Sub section (2) of Section 27, is however, based on common law rights of the trade mark. Under this sub Section, an action can be brought against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.
21. The principles of law, of which the passing off action may be brought, have been discussed in detail in Cadila Health Care Ltd Vs. Cadila Pharmaceuticals Ltd (Supra). The Supreme Court, considered the observations in Dyechem Ltd Vs. Cadbury (India) Ltd [2000 (5) SCC 573], that for grant of temporary injunction, the Court should go by the principles of prima facie case, apart from balance of convenience, on comparative strength of the case of either parties or consider if the plaintiff has raised a triable issue. Disagreeing with the observations in Dyechem's case (Supra), it was held in Cadila Health Care Ltd (Supra) that "as far as this Court (Supreme Court) is concerned, the decisions in the last four decades have clearly laid down that what has to be seen in the case of a passing off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion. The Supreme Court considering the binding precedent in Amritdhara's case (supra) and Durga Dutt Sharma's case (Supra) held that in an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated..
22. The Supreme Court cited with approval, the decisions of American Courts relating to medicinal products. In the case of American Cynamid Corporation Vs. Connaught Laboratories Inc., 231 USPQ 128 (2nd Cir. 1986), it was held as under:
"Exacting judicial scrutiny is required if there is a possibility of confusion over marks on medicinal products because the potential harm may be far more dire than that in confusion over ordinary consumer products."
23. In Blansett Pharmaceuticals Co. Vs. Carmick Laboratories Inc., 25 USPQ 2nd, 1473 (TTAB 1993), it was held as under:
"Confusion and mistake is likely, even for prescription drugs prescribed by doctors and dispensed by pharmacists, where these similar goods are marketed under marks which look alike and sound alike."
24. The Supreme Court held that public interest would support lesser degree of proof, showing confusing similarity in the case of trade mark in respect of medicinal product as against other non-medicinal product. The decisions of English Courts would be relevant in a country where literacy is high and the marks used are in the language which the purchaser can understand. In the words of Supreme Court:-
"What is likely to cause confusion would vary from case to case. However, the appellants are right in contending that where medicinal products are involved, the test to be applied for adjudging the violation of trade mark law may not be at par with cases involving non-medicinal products. A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and in some cases life itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the public health."
25. In Laxmikant V. Patel Vs. Chetanbhai Shah and another [(2002) 3 SCC 65], the Supreme held in para 13 as follows:-
"In an action for passing off it is usual, rather essential, to seek an injunction temporary or ad-interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly (ibid, para 16.16) passing off cases are often cases of deliberate and intentional misrepresentation, but it is well-settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing Off (1995 Edition, at p.3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing off. Likelihood of damage is sufficient. The same learned author states that the defendants state of mind is wholly irrelevant to the existence of the cause of action for passing off (ibid, paras 4.20 and 7.15). As to how the injunction granted by the Court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiffs distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name. (Kerly, ibid, para 16.97)."
26. In Wander Ltd and Another Vs. Antox India P. Ltd [1990 (Supp) SCC 727], the Supreme Court reiterated that in a passing off action, the plaintiff's right is independent of such a statutory right to a trade mark and is against the conduct of the defendant which leads to, or is intended or calculated to lead to deception. Passing off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception attempts to obtain an economic benefit of the reputation, which another has established for himself in a particular trade or business. The action is regarded as an action for deceit The tort of passing off, involves misrepresentation made by a trader to his prospective customers, calculated to injure, as a reasonably foreseeable consequence, the business or good-will of another which actually or probably, causes damages to the business or good of the the other trader, and which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so. The Supreme Court cited legal clarification by Lord Diplock:-
"Unfair trading as a wrong actionable at the suit of other traders who thereby suffer loss of business or goodwill may take a variety of forms, to some of which separate labels have come attached in English law. Conspiracy to injure a person in his trade of business is one, slander of goods another, but most protean is that which is generally and nowadays, perhaps misleadingly, described as 'passing-off'. The form that unfair trading takes will alter with the ways in which trade is carried on and business reputation and good-will acquired. .."
27. In the case at hand, we find that the passing off action particularly by the plaintiff was on the basis of prior user, and the use of logo of the plaintiff by the defendant on the same product viz., PVC pipes, which is likely to cause deception, and consequently harm the reputation and the business of the plaintiff. The trial court examined the trade marks used by the plaintiff and the defendant and arrived at a finding that though on close examination of the first and third words used by the defendant in the trade mark are different, the manner in which the word 'G.K.' has been used in a square and the word 'Plast' has been written and the placement of the words is likely to deceive the common people who purchase the PVC pipes. The trial court found that the masons and contractors who purchase the PVC pipes belong to common class of people, and these people are likely to be deceived by the use of the trade mark, which is deceptively similar to the trade mark of the plaintiff.
28. We have also examined the photographs of the trade marks used by the plaintiff and the defendant in which PVC pipes of the plaintiff is kept along with the PVC pipes of the defendant (Annexure-3 to the counter affidavit). On a careful scrutiny of the two marks, we find that if a trade make of the plaintiff is placed along side of the trade mark of the defendant, the persons possessing common intelligence, namely, masons and contractors are likely to be deceived by the placement of the first word in a square and the word 'DURO". The third word preceding the similar specifications of the PVC Pipes is also similar. We thus agree with the trial court's finding that the degree of resemblance, nature of goods and use of trade marks with similar number of words and design are likely to deceive the purchasers of the PVC pipes.
29. The plaintiffs have established that they are prior user inasmuch as they are using the trade mark since 1992-93 and they have established a reputation in the market. In the Directors' report of the plaintiff's Company, the financial result discloses that their net profit before tax and after tax is gradually decreasing, which shows the reduced sales in the market. The defendant has not supplied its balance sheet to demonstrate its turnover, sales and profits. It is admitted that the defendant had started manufacturing in the year 2009 and having failed to disclose its turn over and profit, the trial court did not commit any error in finding that the plaintiff is suffering loss of income every year on account of use of trade mark, and which can be attributed to the use of trade mark by the rival trader including the defendants.
30. The First Appeal From Order is dismissed.
Order Date :- 04.12.2012 nethra