S.M Jhunjhunuwala, J.:— In the suit for permanent injunction to restrain the defendant from using the trade mark ‘Indals’, ‘INDAL’ or any other deceptively similar name to the registered trade mark ‘INDAL’ of the plaintiff and from passing off the goods of the defendant as for those of the plaintiff, as also from using the word ‘Inland’ or deceptively similar name as part of its corporate name and for other reliefs as prayed for in the plaint filed, the plaintiff has taken out the present Notice of Motion for temporary injunction in terms of permanent injunction as prayed for therein.
2. The plaintiff is manufacturer of aluminium paste and power and aluminium products and various chemical products. The trade mark ‘INDAL’ has been registered in the name of the plaintiff in Class 1 under Nos. 266620 and 266626 as of the 29th day of August, 1970 in respect of Alumina and alumina hydrato and carbon electrode paste, all being chemical substances for use in industry under Trade and Merchandise Marks Act, 1958. The defendant was originally incorporated and registered under the provisions of the Companies Act, 1956 in the name of “GURJAR GRAPHIC PVT. LTD.” with effect from 22nd October, 1986, the defendant's name has been changed to its present name. The defendant is a purely trading and/or service company and does not manufacture any goods. The defendant merely books orders for the products manufactured by foreign companies for and on behalf of Indian importers and actual users and earns commission and/or brokerage. The defendant also carries on business of domestic sales and exports of products manufactured in India, inter alia by its sister companies/firms i.e, Gurjar Graveres Pvt. Ltd., Albast Ross Chemicals (India) Ltd., Rosy Chemicals, etc., and sets as indenting exports agent for the said companies. The products manufactured in India by the defendant's said sister companies/firms are products used in the printing industry. The defendant, in the course of its business, does not use any trade mark.
3. The plaintiff claims that in the abbreviated form, the plaintiff is also known as ‘INDAL’ and the products of the plaintiff are known and sold under the said abbreviated name ‘INDASL’ and are famous in the market under the same name. According to the plaintiff, the adoption by the defendant of the name ‘INDALS’ is fraudulant and dishonest, the word ‘INDAL’ is deceptively similar to and is an infringement of the registered trade mark ‘INDAL’ of the plaintiff and that the defendant has fraudulently and dishonestly adopted the trade name ‘INDALS’ with a view to take benefit of the reputation and goodwill acquired by the plaintiff by its trade mark ‘INDAL’ and is passing off or likely to pass off or enable others to pass off its goods as of the plaintiff. The plaintiff apprehends that as a result of the use of the trade mark ‘INDAL’ by the defendant, members of the trade and the public are likely to presume that the defendant company is a subsidiary or sister concerns of the plaintiff or has connection with the plaintiffs company and thereby connect the products dealt with or supplied by the defendant with that of the plaintiff. To prevent grave and irreparable injury and harm being caused to the plaintiff, the plaintiff has filed the suit for the reliefs claimed and has taken out the present Notice of Motion therein.
4. The defendant has denied that in the abbreviated form, the plaintiffs company is known as ‘INDAL’. According to the defendant, the newspapers and periodicals which reproduce share market quotations, refer to the plaintiff by its abbreviated name “Ind. Alu.” It is also the case of the defendant that the defendant company is one of the group companies/firms owned and/or controlled by one Shantikumar Dalal and/or members of his family. The defendant has a sister company called Gurjar Gravures Pvt. Ltd. which inter alia, carries on business of manufacturing Rotary Nickel Screens suitable for Screen Printing. Due to similarity in the original name of the defendant and its said sister company, a lot of confusion was being caused amongst the persons dealing with the said companies. Since the surname of the said Shantikumar is Dalal’, which in the vernacular means ‘Agent’ or ‘Broker’ and since the defendant carried on trading business only as agent/indenting agent for foreign suppliers and/or as agent and/or exporter for and on behalf of its sister companies and earned only commission and/or brokerage, the original name of the defendant was changed to its present name. It is also the case of the defendant that the were Indals' is an acronyn for the words ‘Indian Dalals’ or ‘Dalals of India’. The defendant ??? present name bona fide and honestly as it signified that the defendant was owned and/or controlled by the family of Dalals and that it carried on only trading and/or agency business in import and export. The Registrar of Companies has approved the change in the name of the defendant under the provisions of the Companies Act, 1956 and a fresh certificate of incorporation consequent upon the change of the name was issued to the defendant by the Registrar of Companies. Maharashtra, Bombay. The defendant is a purely trading company and does not carry on any manufacturing activity. The defendant has not used nor it intend to use the word ‘Indals’ or ‘Indal’ as a trade mark. It is also the case of the defendant that the goods in respect of which the defendant acts as agent for the foreign suppliers and/or as indent or on behalf of Indian importers as also the goods manufactured by the defendant's sister companies/firms and exported by the defendant are mainly used in the printing industry and are totally different from the goods manufactured and sold by the plaintiff. There is no common field of activity between the respective businesses carried on by the plaintiff and the defendant. According to the defendant, there is no possibility of any deception or misrepresentation taking place by the defendant's use of the word ‘Indals’ as part of its corporate name. The use by the defendant of the word ‘Indals’ as part of its corporate name does not in any manner give the impression that the defendant is an agent and/or subsidiary or a sister company of the plaintiff. The defendant has further contended that the plaintiff is not entitled to any relief as against the defendant either in the suit or in the Notice of Motion.
5. Mr. Shah, the learned Counsel appearing for the plaintiff has submitted that in the facts and circumstances of the case, the defendant has adopted its present name to trade on the reputation of the plaintiff and to encash on its goodwill bypassing off the defendant's goods/products as those of the plaintiff. In his submission, there is no cogent reason given by the defendant in adopting its present name and that adoption of its present name by the defendant is fraudulant. In support of his submissions, Mr. Shah has put reliance on the case of (Legal and General Assurance Society Ltd. v. Daniel)1, reported in (1968) 9 R.P.C 253. In that case, an injunction was sought by Legal & General Assurance Society Ltd., a well known insurance company to restrain the defendants therein from carrying on the business of private investigators under the name ‘Legal & General Enquiry Bureau’ or any similar name likely to raise load the public into a belief that they were associated with the insurance company. Injunction was refused by the Trial Court on the balance of convenience on the ground that damage caused to the defendants, destruction of their goodwill, would be far greater than that caused to the plaintiffs. An undertaking to indicate in all future advertisements that there was no connection between the two businesses was not acceptable to the plaintiffs. On appeal to the Court of Appeal, it was held that the words “Legal & General” had become especially associated with the plaintiffs and were rarely used in combination except by them. The undertaking was not wide enough protection in view of the reliance on personal contract in the defendants' business. prima facie case having been made out, an injunction was granted.
6. Mr. Desai, the learned Counsel appearing for the defendant has submitted that the defendant has honestly and bona fide adopted its present name and that the explanation given by the defendant for change of its name is valid, just and proper. In his submission, there is no similarity in the names of the plaintiff and the defendant. The defendant being not manufacturer of any goods or product or user of any trade mark, the question of defendant infringing plaintiff's trade mark ‘INDAL’ does not arise. While submitting that in the facts and circumstances of the present case, the case of Legal and General Assurance Society Ltd. (supra) has no applicability. Mr. Desai has relied upon the case of (Deark Moculloch v. Lewis A. May (Produce Distributors) Ltd.)2, reported in 65 RPC 58 as also upon the decision of this Court on Notice of Motion No. 3028 of 1988 taken out in Suit No. 3198 of 1988 (Alkrin Laboratories Pvt. Ltd. v. Alokan (India) Ltd.)3, decided by B.N Sikrishna, J., on 27th November 1990. In the case of Derak Muculloch (supra), the plaintiff was a well known broadcaster on the Children's Hour Programme of the BBC under the name “Uncle Mac”. He was the director of that programme, and be also broadcast charitable appeals and wrote Children's books and made gramophone records under the same name. The defendants therein began selling a cereal food under the name “Uncle Mac”. The plaintiffs therein alleged that the defendants' trading under the name “Uncle Mac”, would cause confusion with himself and damage to his professional reputation. He contended that the defendants therein were trying to obtain the benefit of this name. The defendants therein contended that the name “Uncle Mac” was derived partly from the name of their subsidiary company. Maclive Foods Ltd. which was marketing the cereal, and “Uncle” was added to attract children who were the principal consumers of cereals. It was held that the plaintiff was not engaged in any degree in producing or marketing cereals and therefore, there could not be passing off by the defendants of any goods or business of the plaintiff and the action should be dismissed. In the case of Alken Laboratories P. Ltd. (supra), the plaintiff, the manufacturers of medicinal and pharmaceutical preperations were proprietors of trade marks “Aiken” and “ALFAKEM” in respect of medicinal and pharmaceutical prepations for human use. The defendant therein was originally incorporated in the name of “Punjab Alum Products Ltd.” and changed its name to “Alchem (India) Ltd.” on 11th November, 1987 and had a plan for the manufacture of Ferric Alum used for water purification as also for sizing of paper, paper boards, pigments, anti-perspirants and pesticides. The plaintiffs gave notice to the defendant calling upon the defendant to delete the word “Alchem” from its corporate name as, according to the plaintiffs, it was deceptively similar to their registered trade marks and user thereof amounted to passing off the defendant's goods and/or business as those of plaintiffs' goods and/or business and filed the suit to restrain the defendant from continuing to use the allegedly deceptively similar name. The defendant therein contended that the business pursued by the plaintiffs and the defendant were wholly dissimilar, the business of the defendant being of manufacture of “Ferric Alumina” or “Ferric Alum” used as an industrial chemical mainly for purification of water and as sizing material for sizing of paper boards, etc. The defendant therein further contended that the method of ordering the two products were also dissimilar in that while in the case of the plaintiffs' goods, the same were ordered in terms of bottles or boxes, the defendant's goods were ordered in terms of metric tonnes and the trade channels were also entirely different. It was further contended that the plaintiffs' goods were sold either in bulk directly to some customers or by retail through chemists, the defendant's goods were always sold in bulk directly to the customers and that the type of customers were different. The defendant therein denied that the defendant used the plaintiffs' trade marks in respect of the defendant's goods or that the defendant had any intention to use the same. The defendant therein contended that the name of the defendant was neither calculated to deceive nor likely to cause confusion with the registered trade marks of the plaintiffs. In the facts and circumstances of that case, Srikrishna, J., held that the goods manufactured by the defendant were totally different and fell in different class; the manner of ordering the goods was different; the trade channels of distribution were wholly distinct, and that the type of customers who ask for the goods of the defendant were different from the type of customer who ask for the plaintiffs' goods. There was no common linking factor between any of the products manufactured and sold by the plaintiffs under their registered trade marks and the “Ferrice Alumina” and “Feric Alum” manufactured by the defendant. In the result, Srikrishna, J., dismissed the motion of the plaintiffs.
7. In order to succeed in the action, the plaintiff is required to establish, prima facie, that—
i) the adoption of the present name by the defendant is dishonest and mala fide and has been with fraudulent intention to pass off its goods as those of the plaintiff;
ii) deception or confusion is being caused or likely to cause amongst the customers and/or members of the public by reason of the defendant adopting its present name and thereby there is imminent danger to the reputation and goodwill of the plaintiff;
iii) the defendant is in fact using plaintiffs Trade Marks or any mark deceptively similar to the registered marks of the plaintiff;
iv) the fields of activities of the plaintiff and the defendant are same or almost similar.
8. In the facts and circumstances of the case, it does prima facie appears that after obtaining approval from the Registrar of Companies under the provisions of the Companies Act, 1956, the defendant, for the reasons stated hereinabove which can not at this stage be said to be not genuine or unrealistic, adopted its present name as its corporate name and has been carrying on business in its present corporate name since 22nd October, 1986 without there being a single instance of confusion or deception being pointed out or established by the plaintiff. There does not appear to be imminent danger to the reputation or goodwill of the plaintiff by the defendant having the word ‘Indals’ as part of its corporate name as alleged or apprehended by the plaintiff. In fact, the defendant is not using any mark either similar to the plaintiffs mark or otherwise. The plaintiff is not known in its abbreviated form as ‘Indal’ or ‘Indals’. The defendant is not carrying on any manufacturing activity but is purely trading company carrying on business as agent for the foreign companies and/or as indenting agent for Indian importers and as an exporter, inter alia, for and on behalf of sister companies/firms of the defendant. The field of activity of the defendant is different than that of the plaintiff. The facts in the case of Legal and General Assurance Society Ltd. (supra) being different, the said authority relied upon by Mr. Shah has no applicability. In that case, on the facts thereof, it was held that the words “Legal & General” are less common, less descriptive, more specialised, and rarely used in combination except by the plaintiffs therein. It was also held therein that use of the words “Legal & General” by the defendants was calculated to lead to the belief that their business was in some way connected with the Legal & General Assurance Society and it was calculated to lead to confusion. On the contrary, facts in the case of Derek MC Cullosh (supra) as also in the case of Aiken Laboratories Pvt. Ltd. (supra) relied upon by Mr. Desai are similar to or nearer to facts in the instant case and ratio laid down in these cases apply to the facts of the present case. In the facts and circumstances of the case, even the balance of convenience is not in favour of the plaintiff.
9. In the result, the Notice of Motion is dismissed. However, in the facts and circumstances of the case, there shall be no order as to costs of the Motion.
Order accordingly.