P.N Nag, J.:—M/s Amrit Soap Company, the plaintiff, in a suit based on infringement of trade marks, copyright, passing off and for rendition of accounts of profits has filed this application seeking to restrain the defendant during the pendency of suit from manufacturing, selling, offering for sale or otherwise dealing in the washing soap under the impugned trade mark “BILLY” and artistic wrapper of the plaintiff and also from passing off its products of washing soap as and for the quality goods of the plaintiff under the trade mark “BILLY” and artistic wrappers.
2. The relevant facts necessary for determining the point of controversy has been set out by the plaintiff in the suit, inter alia, that the plaintiff firm is engaged in the well-established business of manufacturing and marketing of washing soaps since the year 1952. Since April 10, 1978 the plaintiff firm has been using the trade mark ‘BILLY” for its products of washing soaps for the purpose of indicating a connection in the course of the trade between the said product and the plaintiff firm. The plaintiff firm has applied to the Registrar of Trade Marks for registration of the trade mark “BILLY” in respect of their goods vide application dated 10th June, 1986 and the said application has been accepted by the Registrar of Trade Marks for advertisement in the Trade Marks Journal and the said mark of the plaintiff is bound to be registered under the Trade and Merchandise Marks Act, 1958 in due course. The plaintiff not only since 1978 has been using trade mark “BILLY” for its products of washing soaps but also has been using for the sale and marketing of products, artistic wrappers for packing purposes. The salient features of the artirtic wrappers have been referred to by the plaintiff in paragraph 5 of the plaint.
3. The plaintiff firm is a lawful proprietor of the impugned trade mark “BILLY” and also of the artistic wrapper and has got an exclusive right to the use thereof. The use of artistic wrapper for more than a decade in the market has earned the firm enviable goodwill in public and trade.
4. In the middle of October, 1988, however, it came to the notice of the plaintiff when the wrapper of the defendant came to the hand of the plaintiff that the defendant has also started marketing its products of washing soaps in quite similar wrappers and under the same trade mark “BILLY” as those of the plaintiff. The adoption and use of the said trade mark and impugned wrapper by the defendant for its products of washing soaps is an act of infringement of copyright of the plaintiff in the wrapper and the defendant is also guilty of passing its inferior quality goods as quality goods of the plaintiff under the said trade mark and artistic wrapper of the plaintiff of which the defendant is not entitled at all. By the use of the wrapper of the plaintiff, the defendant has since been passing off its inferior and substandard goods as and for the quality goods of the plaintiff.
5. In the present application filed by the plaintiff firm under order 39 rules 1 & 2 read with section 151 of the code of civil procedure the plaintiff has set out the same facts as in the suit.
6. The defendant firm has not filed the written statement in the suit. However, the defendant has filed the reply and thereby opposed the injunction application. The objections taken by the defendant are that the wrapper marked annexure A has been used by the plaintiff for the last two years and in the year 1988 another washing soap wrapper marked annexure B has been adopted by them and these wrappers are different from the wrappers of the defendant which are being used by the defendant firm continuously and extensively since November, 1987, which has been denied by the plaintiff in the rejoinder.
7. The other ground taken is that the use of trade mark “BILLY” and that of such wrapper are common in the trade of soaps and not only the defendant but so many other parties are using the trade mark “BILLY” along with the wrapper which is similar to that of the plaintiff and some of the parties referred to are: (i) Jyoti Gramodyog Samiti, Sunam, Distt. Sangrur, Punjab; (ii) Laxmi Soap Factory. Sunam, Distt. Sangrur, Punjab; (iii) Modi Gramodyog Samiti, Punjab; (iv) Jain Soap Factory, Punjab; (v) M/s Shiv Shakti Soap Factory, Punjab; (vi) M/s Anand Gramodyog Samiti, Amargarh, Distt. Sangrur, Punjab; and (vii) M/s Rakesh Soap Factory, Punjab. The question of jurisdiction of this court to try the suit has also been raised.
8. At the threshhold I propose to deal with the question of jurisdiction of this court a preliminary objection. In this connection reference is made to the averments in paragraphs 19 and 20 of the plaint wherein it is stated that both the parties are selling and offering for sale their products of washing soaps in Delhi also. In addition to this, the plaintiff has made an application before the Registrar of Trade Marks, Delhi for registration of its trade mark “BILLY” and such an application has been accepted by the Registrar of Trade Marks by advertisement in the Trade Marks Journal and the said mark is bound to be registered under the Trade and Merchandise Marks Act, 1959. Bill dated 6th November, 1988 has been filed with the list of documents by the plaintiff which shows that “BILLY” brand soap was sold to one Ashok Kumar in Delhi. In view of these facts that both the plaintiff and the defendant have been selling the goods within the territorial jurisdiction of Delhi, this Court has jurisdiction to try this suit. It is no doubt true that no sufficient material is available at this stage to substantiate that the goods are being sold by the plaintiff in Delhi but this matter would be gone into at the time of the trial of the suit. At this stage, it is sufficient that the specific averment in the plaint, whatever it may be worth, has been made that the plaintiff and defendant ate selling the goods within the territorial jurisdiction of Delhi. Therefore, in my opinion this court has territorial jurisdiction to try this suit.
9. In order to succeed in the injunction application, three factors must be kept in view, that is, the establishment of prima facie case, the balance of convenience between the parties and in case injunction is not granted this will cause irreparable injury to the petitioner. In order to show prima facie case, the plaintiff's counsel has referred to the wrappers of the plaintiff and the defendant placed on the record and strenuously urged that having regard to the colour, scheme, get up, lay out, style and arrangement of words the wrappers used by the plaintiff and defendant are strikingly deceptively similar and thereby the defendant is guilty of passing its inferior quality of goods to the buyers as of the plaintiff. There is good deal of force in this argument. Having regard to the deceptive similarity between the get up, scheme, colour, ink etc. of two competing wrappers gives the wrapper of defendant of overall effect of eleceptive similarity which prima facie constitute infringement of copyright of the plaintiff. The comparative description of the wrapper set out in the plaint which is amply reflected on a visual examination of the competing wrappers leaves absolutely no manner of doubt that the wrapper of defendant is deceptively similar to the wrapper extensively used by the plaintiff since 1978. The deceptive similarity is likely to cause confusion in the course of trade, particularly having regard to the class of people, ladies and domestic servants which constitute the buying public, in relation to washing soap. Therefore, the plaintion prima facie is entitled to protection at this stage.
10. The next question that arises for consideration at this stage is whether between the parties who has established the user of the trade mark and copyright at point of time irrespective of the ownership of such mark and copyright. In this connection there is a statement filed by the plaintiff from 1978-1987. The plaintiff has also filed photostat copies of the bills of sale of the soap of trade mark “BILLY” in the wrappers used by it from 19.10.1978 to 25.5.4987 A perusal of these documents clearly demonstrates that the plaintiff is selling the soap of trade mark ‘BILLY” with the distinctive artistic warpper of “'BILLY” from the year 1978 uptil now and continuing to sell the same under its trade mark and artistic wrapper. On the other hand, the defendant has admittedly claimed used of the trade mark “BILLY” with the device of “BILLY” in the indentical carton from November, 1987 which is about 10 years later. This has been admitted by the defendant in paragraph 2 of the preliminary objections of the reply. The law is pretty well settled that in order to succeed at this stage the plaintiff has to establish user of the aforesaid mark prior in point of time than the impugned user by the defendant. The plaintiff, therefore, is to succeed as he is prior user of the trade mark vis-a-vis the defendant.
11. It was next submitted by counsel for the defendant that the plaintiff has no right to use the trade make ‘BILLY” and artistic wrapper as so many other parties who are referred to earlier were also using the same trade mark. This contention of the defendant is wholly devoid of any force. In this connection it is sufficient to say that under the law it is the right of two parties before the court which has to be determined and, as already discussed, the plaintiff being prior user has the better and legal right to seek relief from this court.
12. In the light of what is discussed above, the prima facie case in favour of the plaintiff stands established. The use of the trade mark and artistic wrapper by the plaintiff much earlier to that of the defendant not only shows a prima facie case in plaintiff's favour but balance of convenience also lies in its favour. Furthermore, if the defendant firm is not restrained by means of interim injunction, it will continue to market its goods with the offending mark and wrapper with the result that the plaintiff will suffer irreparable loss and injury.
13. I would, therefore, grant an injunction restraining the defendant, during the pendency of the suit, from manufacturing, selling, offering for sale or otherwise dealing in the washing soap under the impugned trade mark “BILLY” and artistic wrapper of the plaintiff or under any other trade mark and artistic wrapper which may be similar and/or deceptively indentical to the trademark “BILLY” and artistic wrapper of the plaintiff and also from passing off its products of washing soap as and for the quality goods of the plaintiff under the trade mark “BILLY” and artistic wrappers which are quite similar and deceptively identical to the trade mark and artistic wrappers of the plaintiff.
14. With these directions, IA 8560/88 stands disposed of. No costs.
I A stands disposed of accordingly.